Yes, the Trademark Office had a “comprehensive strategy” all along

Relax, folks, the Trademark Office had a “comprehensive strategy” to detect and block those questionable trademark filings all along. 

On August 11, 2021 the Inspector General of the Department of Commerce published a report entitled USPTO Should Improve Controls over Examination of Trademark Filings to Enhance the Integrity of the Trademark Register saying the Trademark Office has been letting far too many questionable trademark filings slip through. 

A week later the Acting Director of the USPTO published a blog article entitled USPTO’s comprehensive strategy to fight trademark fraud, letting readers know that the USPTO had a comprehensive strategy in place long ago to try to weed out those questionable filings.

Yes, the blog article says, of course we agree there are lots of questionable filings, but hey, way back in 2019 we set up a crack task force of IT types who were doing smart stuff to identify groups of questionable filings.

The Director says:

the examination process does not always efficiently lend itself to discovering wider patterns of fraud and improper behavior that often taint many applications at a time.

True.  One Examining Attorney, working on a single application, could not be expected to somehow drill down to figure out that in the US Postal Service database there is a lookup field that serves as a telltale that the applicant’s address is a Commercial Mail Receiving Agency.  This is the database field that instantly reveals if the applicant is using a UPS Store, or is using the street address of a US Post Office instead of coming out and saying that the mailing address that the applicant provided is a post office box.

The Director goes on to say:

Because multiple applications are often filed by a single entity using the same data elements but owned by multiple applicants, it is by tracking those common data points through our IT systems that we identify and fight back against these schemes. To achieve this result on the scale we need, in 2019 we created – and are now expanding – a special task force of attorneys, analysts, cyber investigators and IT personnel to investigate submissions that we suspect are violating U.S. rules of practice, representation rules, or USPTO’s terms-of-use.

As of February 2020, however, the task force that had been created in 2019 was not making use of the CMRA field in the USPS database to smoke out applicants who were using UPS Stores or street addresses of US Post Offices.  In February of 2020 I reminded the Trademark Office that this database was available for this purpose.  It is the sort of thing that computers are supposed to be good at!  It is the sort of thing that a “cyber investigator” should be good at.  It is the sort of thing that “IT personnel” should be good at.  See for example my February 2, 2020 blog article entitled Helping the Commissioner for Trademarks to smoke out non-domicile mailing addresses. 

But despite my numerous reminders to the Trademark Office, the Special Task Force continued to fail to use the CMRA field to smoke out applicants who were using non-domicile mailing addresses.

I published a series of blog articles that I imagined would sooner or later embarrass the Trademark Office into action.

• The Commissioner for Trademarks definitely discards the CMRA data that it receives from the USPS (February 7, 2020)
• Trademark Office misses a chance to demand that a trademark owner reveal where it sleeps at night (March 27, 2020)
• Trademark Office snoozes through it again (March 29, 2020)
• Trademark Office snoozes through yet another non-domicile application (March 31, 2020)

Nope.  Nobody at the Trademark Office used this super-easy way of smoking out non-domicile mailing addresses.  It’s the sort of thing that one or two competent computer programmers could code on a weekend, if given some pizza and soft drinks, and after finishing and testing the code, the programmers would have part of Saturday and all of Sunday left over.  But no, the Trademark Office continued to snooze through this.

I got really tired of this, because one of my pending trademark applications was colliding with a filing that looked a bit sketchy to me, that had been filed at a storefront mailing center in Colorado Springs, at a street address of 6547 North Academy Boulevard.  

I will point out that anybody sitting at home in their pajamas could have done exactly the same TESS search that I did next:

“(6547 )[OW] and (Academy)[OW] and live[ld]”

If you do this search, you will find no fewer than 2300 live US trademark applications for which the applicant has listed this Mail Center as its address.  Oh and as far as I can see no two of the applications have the same applicant.  But, this is interesting, at least 2000 of them have the same attorney.  Spot-checking, most of the marks are unpronounceable combinations of eight or so letters.

So I did four things with this list of 2300 live US trademark applications.

• First, I loaded them all into IP Badger, so that I would get notified if the Trademark Office were to mail out an Office Action thereafter.
• Second, I spot-checked the list and found that in the vast majority of cases, the Trademark Office had not taken any action about the fact of the address being a CMRA.
• Third, I dropped an email to a high-up person at the Trademark Office, to which was attached a spreadsheet listing the 2300 application numbers.
• Fourth, I published this blog article:  Let’s see if the Commissioner for Trademarks is now paying attention to CMRA information (July 31, 2021).

I then sat back and watched.

And wouldn’t you know it?  As of today, August 18, 2021, the Trademark Office has mailed out more than three hundred office actions in which an Examining Attorney points out that the address is a CMRA and says the applicant has to reveal where the applicant sleeps at night.

Most of the three hundred Office Actions predate the Inspector General’s report.

I wonder if it is mere coincidence that very few of the 2300 cases received Office Actions inquiring about the CMRA situation before August 18, 2021 (the date of my blog article), yet more than 300 of the cases received such Office Actions after that date?