eSignature Licitness for Trademark Assignment Agreement in United States

How to eSign a document: eSignature licitness for Trademark Assignment Agreement in United States

Hello, everyone, everyone. Thank you so much for joining us today for another of our trademark webinars. We're going to get started in just a couple of minutes. But as we always do, we're going to begin with a couple of housekeeping tips to make sure that everyone is on the same page before we get going. So I know it's going to - it's a question that's going to be asked because someone's going to ask it because everybody does it every single webinar: is this being recorded? And the answer is yes. This session is being recorded. It will be posted to the USPTO web site within about three to four weeks. We try to turn it around as quickly as possible. So you will have access to it in three weeks to a month, somewhere around there. The slides have already been made available to you, but if you didn't get a chance to download those, don't worry. They'll be available after the presentation as well. The same thing is true with captioning. If you happen to need captioning today, that is available as it is for all of our USPTO events. And the way that you access captioning on Livestream is you go up into the top right hand corner of the Livestream window. And there you'll see a couple of icons, one of which is the event's "Post" tab. And if you click on that, it looks kind of like a little filing cabinet with a little triangular play symbol on it. If you click on that, you're going to - it'll open up and show you various posts. There you'll see a link to the captioning that is available. You'll also see the email addresses that you might want to use today. One of them is TMFeedback@uspto.gov. That is the way that you contact us if you have a question that you want to ask. I know that the chat is currently available in Livestream, but it's going to go away in about 10 to 15 minutes. And the chat is really only there right now for you to let us know if you're having any audio issues. So Amy does not have access to the Livestream chat. So if you ask her a question through Livestream chat, she is not going to see it. She's not going to be able to answer it. So the way that you contact us and let Amy know that you have a question is to email TMFeedback@uspto.gov. And you can always access that email address and see it throughout the presentation today by clicking on that "Post" tab. Now, the great thing about Livestream is that it is kind of like a little DVR. So if you have to pause and step away for a minute, you can do that. You can pause, you can fast forward, you can rewind. But just keep in mind that when the session ends at 4:30 p.m. Eastern, that means that the feed is over. So you won't be able to be able to hang out and and watch after that time period. So if you have any technical issues after the chat goes away on Livestream, you can always email VirtualEvents@USPTO.gov. And we have a really great tech team here, and they'll be able to hopefully troubleshoot any audio issues that you might have. All right. Well, we are going to get started. So allow me to introduce you to Amy Cotton. She's the Deputy Commissioner for Trademark Examination Policy. And in this role, she oversees the offices of Trademark Policy, Petitions, and ID/Class, as well as the Trademark Assistance Center, the Office of Trademark Quality Review and Training, the Trademark Law Library, Customer Experience, and Trademark Outreach. She joined the USPTO in 1998 as a trademark examining attorney and then moved to the Office of Policy and International Affairs in 2001, where she served as senior counsel for trademarks since 2003, providing domestic and international policy advice to the USPTO and the U.S. government agencies and technical assistance to the global trademark offices. For nearly 20 years, Ms. Cotton has led the U.S. delegation to the World Intellectual Property Organization on trademark matters, including negotiations to conclude the Singapore Treaty on the Law of Trademarks and the Geneva Act of the Lisbon Agreement for the International Registration of Appellations of Origin and Geographical Indications. Prior to joining the USPTO, Ms. Cotton served as external affairs counsel at the American Intellectual Property Law Association. She's a member of the Virginia Bar and received her juris doctorate from Indiana University, Bloomington and her Bachelor of Arts from the University of Virginia. Ladies and gentlemen, this is Amy Cotton taking you through some trademark registration protection initiatives. -Good afternoon, everybody. Thanks, Jason. Um, well, I'm here to talk to you about one of the five initiatives of the trademarks organization within the USPTO. We certainly, as you know, are dealing with an enormous trademark application filing surge. That's our first priority. We're dealing with the implementation of the Trademark Modernization Act. We're working on IT modernization. And, of course, we're also working on trade- and evolving our organization to better deal with these waves of applications and all the different initiatives that we want to pursue. But they're - our fifth initiative is register protection. It is become extremely important to make sure that we are protecting the integrity of the trademark register. And I wanted to take you through the work that we've been doing on that. We've actually been working on this for over 10 years. So if you go back to 2009 in In re Bose, that decision came out of the Court of Appeals for the Federal Circuit, it made it more difficult to prove that a false statement of use should be considered fraud, if you recall. A finding a fraud, of course, voids that tainted class in the application or the registration. But it really established a clear sanction, and that's cancelation of the affected goods and services in that class when you make a false claim of use in a maintenance submission. Now, looking back, we were concerned at that time in 2009 that the impact of the case would be that we would see more false claims of use and maintenance submissions and then in applications. So in 2010, the USPTO convened a roundtable in conjunction with George Washington University called The Future of the Use- Based Register and we wanted to see if stakeholders shared our concern about the potential impact of that case. And they clearly did. So between the USPTO and the stakeholders, we came up with a variety of different suggestions for changes that we could make to the system to increase the duty of care of our applicants and disincentivize inaccurate statements. Now, stakeholders rightly indicated a significant concern that changes to address, you know, bad faith behavior might make it harder for good faith filers to use the system. So we were slow and deliberate as we started poking around at this issue. So 2012, we instituted a provision. We wanted to measure the volume of the inaccurate claims of use that we were seeing in Section 8 or 71 declaration filings. We established that Proof of Use Audit pilot program. Now, we made that program permanent in 2017. And that's the first of the events on our timeline and on the slides. Do we have the slides up? Here we go. There we go. So now, as you see on our timeline, the Post-registration audit program was made made permanent in 2017, but of course, our efforts dated back all the way to 2010 and 2012. But I couldn't fit that on the slides. Uh, the audit program had limited effect, in my view, because we did not originally impose a sanction for filing false claims of use other than just letting the goods and services go. A deletion at that point. Now, starting about 2018, 2019, we started seeing an increase, not just in these false claims of use that prompted the audit program, but in other things. We started seeing filings that include names, um, addresses, specimens of use, and suspicious attorney behavior. So we were seeing behavior that appeared designed to circumvent our rules of practice, our rules of representation, professional conduct, and our website terms of use. So our slow and conservative start to protecting the register from false claims of use back in 2012, it needed to accelerate and expand to address these other types of behavior. And you see that acceleration in this timeline. In 2019, USPTO increased the scrutiny of specimens of use. Uh, we also at that time stood up a special task force responsible for investigating improper behavior and scams. 2019, we implemented the U.S. Council rule. The rule that that is the practice of most other countries where we require foreign domiciliary is to be represented by a U.S. licensed attorney. 2019 also. We were busy in 2019. We implemented phase one of the USPTO.gov account login requirements that allow us to better track filing behaviors. But that all wasn't enough. Uh, the filing numbers were increasing and so too were suspicious filings. So in 2020, we shifted to a more aggressive mindset. We started thinking like a brand owner dealing with anticounterfeiters, and we started focusing on sanctions. How can we sanction the behavior that we don't want to see? In 2012, I'm sorry, 2021, we implemented a deletion fee for any goods or services deleted in the context of an examination of the maintenance filing, including as to the audit proceedings. 2021, we started issuing administrative sanctions against actors who are intentionally violating U.S. rules of practice, representation, or our our terms of use of our website. And also in 2021, as you know, we're now preparing to implement the provisions of the Trademark Modernization Act, which is, of course, the latest in a series of initiatives and tools that are all designed to increase the accuracy of submissions and the resulting integrity of the U.S. trademark register. But I'm going to tell you about each one of these initiatives. So, as I said, in 2012, we implemented the Post-registration audit program, and it was to test the claims of use, the accuracy of the claims of use in a Section 8 or 71 declaration. So as you know, registration may be audited if it meets two requirements, a Section 8 or 71 declaration is filed, and the registration includes at least either one class with four or more goods or services or two classes with two or more goods and services. Now, as you know, the process is the office action will invite the registrant to provide proof of use for two additional goods and services for per class. If the registrant does not either provide proof of use for the queried goods and services or delete those queried goods and services, then the examiner will issue a second action and request more proof of use on additional goods and services in that same class. If the registrant ends up having to delete the queried goods and services, the registrant must pay a deletion fee of $250 per class in response to that office action. So this deletion fee, keep in mind, is a is a feature of both the audit program and regular post-registration examination. More generally, we introduced the fee in 2021. It is a sanction for a false claim of use. Any time you delete in the context of a maintenance examination, you will have to pay that fee. And if you fail to pay it, you could lose the entire registration, not just the queried goods and services. How do you avoid the penalty? Keep your registration accurate as to those goods and services for which the mark remains in use. Now, why did we implement this deletion fee? Well, since 2017, we've issued 17,218 office actions. The deletion fee has remained - the deletion rate, sorry. The deletion rate has remained pretty steady since, uh, since the inception of the program in 2012. really. We're right about 50% deletion rate. They're only really slight deviations amongst, over time. And between a Section 1(a) registrant and a 44 or 66 registrant, there's not much, much daylight between them. Uh, what's troubling to me though is that 82% of the registrants involved in these audits who have been required to delete goods and services or have had their entire registrations, they had attorneys. Attorneys were representing these registrants where deletion was occurring, 50% of the cases are deletions and 82% of the registrants were represented. So these attorneys are responsible for filing maintenance documents that claimed use that was not substantiated when queried in the audit program. So perhaps maybe we've cleaned up the registrations that were audited, but the audit program alone was not incentivizing accuracy more broadly. We hope that the deletion fee will. And I tell you, it's it's a bit too early to tell whether it's changing maintenance filing behavior. It's going to take a while for those actions, a response to office actions where we required the deletion fee to come in to to see the behavior and see the effects. But anecdotally, our examiners are seeing more deletions at the filing of the Section 8s and 71s and slightly fewer deletions in the context of the examination of the declaration. So when we have more numbers to share on that, we certainly will do so. Now, the audit program and the deletion fee, those are aimed at maintenance filings. In 2019, we wanted to increase the scrutiny in parallel then with the claims of use in applications. Now, one suggestion that we routinely hear when we - the issue of claims abuse comes up - is that we should just simply change our rules and require one specimen of use for each good or services identified in the application, rather than just the existing rule, which requires one specimen for each class. Clearly, we did not implement that suggestion in the audit program for maintenance filings. It's a huge lift for everybody. It's a huge lift for applicants, attorneys, and examining attorneys. Now, the audit program solves this by randomly selecting filings for audit and then slowly ramping up the requirements for additional proof of use for multiple goods and services in the audited class if the registrant can't provide appropriate proof of use. So what's the analog in examination? Well, uh, TMEP 904.01, perhaps? It's the disparate goods inquiry that's set out in TMEP 904.01. So examining attorneys have the discretion to require additional specimens of use per class when the range of items is wide or contains unrelated articles. Now, we have heard calls, for instance, from the office of the Inspector General, the Department of Commerce, in a recent report, that we should issue more guidance that defines what we mean by a wide range of items or unrelated articles. And presumably the idea is that we should be encouraging examiners to use this discretion more. Now, we have to consider, though, that when we give the examining attorneys discretion to take an action, it certainly impinges on that discretion when we tightly prescribe the conditions under which they can exercise it. Those conditions start making that look more mandatory, right? And if the examiners were to start requiring additional specimens for long IDs in all cases, all applicants will be impacted, not just the bad faith ones. So we're certainly trying to avoid impacting those good faith actors. And so we issued guidance in 2019 to establish a policy that a , which is a digitally-altered, created, or mocked-up specimen, it creates an inference that the mark was not an actual use in commerce. Now, while this might seem obvious, if there's a specimen spec, then maybe it's probably not in use in commerce. But it was a significant policy shift for us because it allows then evidence of nonuse to be considered in examination. Um, while we had uh, let's see, let me go to the next one. While we had examination guidance dating back to 2014 on digitally-created specimens, it was more focused on making sure applicants provided us with the right kind of specimen, not whether they were trying to fool us. Our guidance emphasized requiring substitute specimens that were better showed the mark as it is in use in commerce, in situations where the original specimen appeared digitally-created or mocked-up. In 2018, 2019, we started seeing clearly images. And because we were allowing substitute specimens to overcome every specimen refusal, we started seeing better s. Our 2019 guidance told examiners to refuse registration when an image was clearly , and that they should then follow up with a request for information to make the applicant prove that the mark was in actual use. In the 2019 version, we did not allow the applicant to respond to the refusal with substitute specimens or to amend to Section 1(b). We forced applicants to respond to the requests for information, the RFI. Now, there was some backlash from both the stakeholders and examining attorneys that we were being too strict on good faith filers. So in 2020, we issued a revised guide that allowed the applicants to respond to a refusal and an RFI with substitute specimens or amend to 1(b) without having to provide the proof of use in response to the RFI. Now, the feedback we're getting now, for instance, from stakeholders and from the Office of the Inspector General again in that report, is that even when the images don't appear on their face, the examining attorney should nonetheless investigate whether the mark is in actual use in commerce by going to websites and trying to figure out whether they can buy the products online. Now, technically, the examining attorneys have the discretion to investigate if their Spidey senses are going off, based on the information in the record, but they're not required to do that. That would grind examination to a halt as examiners started going down online rabbit holes trying to investigate whether a mark is in use or not as to every goods or services in - good or service in the record. So to assist our examiners with collecting that evidence of nonuse, because the examiners are going to have a hard time trying to investigate nonuse in every case. So to assist that and get this evidence in front of the examiners, we opened up the Letter of Protest program. It allows of third parties to submit evidence of nonuse for our consideration under limited circumstances. So as a reminder, going back to letters of protest, typically, third parties cannot intervene in someone else's trademark application without filing an opposition at the TTAB. The Trademark Trial and Appeal Board. Now, the letter of protest procedure, which has been in place for a long time, allows third parties to send evidence to the USPTO regarding another's application. We review that evidence and we determine whether the evidence is relevant to a ground of refusal. And if so, we will forward that evidence to the examining attorney. Not argument. Evidence, right? This is a way that third parties can bring some evidence to our attention that we might otherwise have missed or we didn't have access to. Now, because our examining attorneys were not historically issuing refusals for nonuse, just a bad specimen refusal, we didn't allow for letters or protest to address nonuse issues, but that changed in 2019 when we opened that specimen protest mailbox, you might remember that, and we allowed third parties to submit evidence of the same image in an application being used by third parties in the marketplace without the trademark on it. Same image, no trademark. And suddenly that's appearing in our files. Also the same image appearing in multiple prior applications, all bearing different marks. Now, we took a conservative approach to the types of evidence that could be submitted so that the letter of protest procedure didn't become a proxy for a board proceeding. In late 2020, we published a rule change that essentially codified the letter of protest proceedings into regulations in anticipation, in anticipation of the implementation of the Trademark Modernization Act. The TMA allowed us to begin charging a fifty dollar fee for protests to recover costs. We were getting more and more protests. We needed we needed to cover our costs because it's work to to review these. But that meant we actually had to close the free specimen protest mailbox and move that process into the existing letter of protest process. So we did that. And as we did that, we also expanded the evidence that we'll consider in a letter of protest related to specimens. Because examiners are looking at evidence of nonuse, now, it's appropriate that third party protesters can also submit that evidence of nonuse for our consideration. So we will now consider evidence that a specimen was digitally-altered or created or evidence that demonstrates that a specimen was not in use on or prior to the date it was submitted. What we will not take is evidence that you can't find the product on the internet unless you have other evidence of nonuse. Such evidence standing alone doesn't tell us whether the goods bearing the mark were offered for sale at the time the applicant averred that it was offered for sale. Nor does it tell us whether the mark is in use, particularly if the goods and services are not ones that are sold online typically. So those who want to learn more about our letter of protest proceeding procedures, I'd encourage you to go to our website. I'll have a link at the end of the slides here. Go to the page called "Letters of protest practice tips" and that will provide information that I'm sharing with you today and generally, how the letter of protest process works. Now, we're still looking at ways to improve specimen examination, but it doesn't seem to us like more guidance is going to be a silver bullet here. So we're seeking more options that might not require so much time spent on investigation by our examining attorneys, but where that investigation could be done by others or automated, that sort of thing. Our primary focus, though, right now, is on bad faith submissions, including bad specimens, is our new and evolving administrative sanction processes, which pull cases out of examination for review and investigation. So let me tell you a little bit about that. Now, any time a new filing trend evolves, we arm our 700 examining attorneys with the legal policy guidance that they need to handle that trend. For years, they have been on the front line of their battle against individual bad faith actors. But when it comes to these larger schemes and scams that we're seeing in all kinds of trademark filings, individual examining attorneys are not in a position to be able to spot a filing trend or respond with a coordinated action across thousands of affected applications. For example, specimens often come in large waves of virtually identical specimens in applications listing different owners. Because the owners differ, they aren't grouped as copendings or companion applications when they are assigned for examination to to our examiners. And it makes it harder to detect the waves and handle those consistently. So to do to address that, in 2019, we created the special task force on improper activities. It's led by attorneys in Trademark Operations and Trademark Examination Policy. But they coordinate investigations with personnel from throughout the USPTO. Now, what are they investigating? A variety of things: false claims of use, applicants or registrants that cannot establish use in commerce, filing firms or applicants that submit or doctored specimens. They're looking at U.S. counsel circumvention, applications featuring false attorney names or false U.S. addresses. Submissions featuring U.S. attorney names that are real, but where the attorney is actually unaware that they have shown up in a file, that they've appeared in a file. They don't have a representation agreement with the client. We also are investigating offers to rent U.S. attorneys' bar credentials. We're looking into unauthorized practice of law. Non-attorney filing firms that provide advice or appear in submissions. We are looking at filing firms that forge signatures on declarations or applications. We're looking at trafficking in applications or registrations. Um, we've seen highjacking through unauthorized changes of correspondence address in our records. We see brands that are highjacked through unauthorized applications, using accurate company information, but with a different or unauthorized correspondence address snuck into that, to the application. And we've seen applicant stockpiling registrations for use on e-commerce platform storefronts. We're also looking into scam solicitations. These are those that are solicitations that are meant to appear as if they originate from the USPTO. They use our public information. Then they dupe applicants or registrants into paying for services that they don't need or that they never receive. Investigation process. The special task force takes in reports of suspicious filings from a variety of sources. We've got examining attorneys that are reporting possible fraudulent activity and applications through an internal mailbox. We've got our data analytics staff. They're looking for suspicious filing trends in the data. Law enforcement investigating criminal behavior. They'll they'll reach out to us. We also see the media reports that you see, calling out possible fraudulent behavior that affects U.S. applicants. We get customer complaints as they come through the Trademark Assistance Center, TAC. We see stuff coming in to TMScams@uspto.gov or TMpolicy@uspto.gov mailboxes. We see stuff in the petitions to the Director and we see stuff in letters of protest. So when we get those reports or when we discover things, we'll launch an investigation into those allegations of fraudulent activity. And we determine whether what the nature of the misconduct is and any - look for any available circumstantial evidence indicating the intent of the applicant. Now, some applicants simply misunderstand U.S. rules, and those cases can be handled by examining attorneys through office actions. Other applicants or representatives, upon investigation, appear to be trying to circumvent U.S. rules or abuse our electronic systems. Now, those folks might be subject to administrative or criminal sanctions. Now, there are three main avenues where we can look at sanctions against actors after we go through an investigation. So we have the Commissioner for Trademarks' authority to sanction violators of U.S. rules of practice, the Office of Enrollment and Discipline's authority to sanction violators of U.S. rules of professional conduct, and we see law enforcement's authority to pursue criminal prosecution of those violating criminal laws or who show up in U.S. applications or other submissions. Now, the one that the special task force has the most control over is the authority of the Commissioner for Trademarks. The authority is to manage and direct all aspects of the activities of the USPTO that affect the administration of trademark operations. So this includes the authority to impose sanctions on parties who file submissions and trademark matters in violation of USPTO rules of practice, professional conduct, or terms of use of our website. As part of our investigation process, though, the special task force will also collect evidence and refer appropriate cases to OED or to law enforcement. So when we discover a scheme, we identify affected applications and sequester unassigned applications into holding dockets, we direct the examining attorneys to suspend action on those those applications, and then we start collecting evidence and establish what rules have been violated or we think have been violated. Depending on the nature of those violations, we have two options for moving forward. We can direct the examining attorneys to issue the appropriate refusals or request information, or we can issue a show-cause order that directs the offending party to explain the conduct that appears to violate USPTO rules. It will identify potential sanctions and it will set a deadline for response. Now, after we evaluate the response, if we get one, we can then move to an order for sanctions. The sanctions include not considering or giving any weight to the affected submission, terminating the proceeding before the USPTO, including abandoning the application, precluding parties from filing on behalf of themselves or others in any trademark matter before the USPTO, referring practitioners to OED and terminating affected USPTO.gov accounts through which all electronic forms are filed. Now if a representative, an attorney, is implicated in the applications featuring the rule violations, Trademarks will refer to OED for investigation and possible discipline. Now, OED may investigate suspected violations of the rules of professional conduct by attorneys appearing before the USPTO. And the OED Director may issue warnings, institute formal charges against the practitioner, or enter into a settlement agreement with the attorney. OED also has the attorney - the authority to refer the attorney to his or her state bar for reciprocal discipline. Now, in cases involving criminal activity or suspected criminal activity, Trademarks will refer the matter to the Department of Commerce's Office of the Inspector General, who then may refer the matter to other law enforcement agencies. Now, using this administrative sanction process, most recently, the Commissioner for Trademarks has issued several orders for sanctions and we continue to issue show-clause orders, and these are all available on our website. I have a link at the end of this presentation. This first one on this slide, Mr. Ngo. In late 2020, we issued a show-cause order. And then an order for sanctions to this individual in Vietnam who was responsible for over three hundred changes of correspondence address in trademark registrations, primarily owned by banking institutions. Now, we have worked with our OCIO, our chief, um, uh, our folks over in I.T. and we locked all of his USPTO.gov accounts. We've taken additional measures to try to identify and block any new accounts he might try to open. Now we have, uh, log in requirements, phase two and phase three, that I'll explain later and we hope that'll make this process easier to lock down these accounts going forward. Now, we also issued, uh, a final order in late 20 - uh, let's see, it was late November 2020. We identified one application for a well known mark. It was filed in the name of the legitimate owner, but the correspondence address clearly belonged to somebody else. Um, we identified several more examples of that in the next few months, and we handled each of those case by case. But our investigation kind of showed that there was something going on here. There was a scheme. So we issued a show-cause order to the individual that was implicated in the USPTO.gov accounts filing these. We requested an explanation. After an unsatisfactory response, we issued an order for sanctions, we terminated those applications, and we have precluded this individual from making further submissions and locked his accounts. Uh, now recently in June, we issued a show-cause order to an IP firm in China. The order required evidence and information that would explain whether Ms. Zhang and her employees were authorized to practice before the USPTO and why your USPTO.gov accounts were used by thousands of applications featuring names, domicile addresses, and signatures. We're currently evaluating the response and determining next steps. Couple of other things I wanted to bring your attention to. I talked about OED, so I wanted to share some some information. Um, OED looks at attorney misconduct related to trademark schemes and scams, and they recently entered into a settlement agreement with Mr. Lou, a New York-licensed attorney based in China. Mr. Lou had a service agreement with the Shenzhen IP company to file U.S. applications on behalf of that that company's clients. Now, the agreement states, the OED agreement states that Lou did not personally advise nor personally enter his electronic signature on any of the thousands of applications in which he appeared. Now, OED had suspended Mr. Lou from practice before the USPTO and he's required to take corrective action before he can reappear on a probationary basis. Another order, actually, that just came out. Here, we have another settlement agreement with a U.S. attorney, a California-based attorney who has been providing trademark advice, or trademark legal services, since 2005. She had a service agreement with an Indian company to review and sign trademark applications that were prepared by the foreign company at a rate of one hundred dollars per hour. She was listed as an attorney of record in 2300 applications filed over a five-month period. She - the settlement agreement, you can go and look at it. There's a link at the end of my slides here. She reviewed and signed the applications, but said her reviews were sometimes inadequate and she did not take reasonable steps to ensure the applicants were properly advised. She has been, then, if you read the agreement, you'll see that she has been reprimanded, is on probation. She has to do trademark and ethics CLE and she must review the Trademark Manual of Examination Procedure. So we're pretty happy about that. And now we're going to move on. Misleading solicitations. Okay, so we're taking aggressive actions to stop bad actors, and we also need to warn our customers about these these what's going on there. We need to warn our customers about what we're seeing in the way of scams. What we're doing about it and what they can do to protect themselves. So we are really ramping up our web content to provide more information about our work and our resources and try to, you know, address those who have been affected by these schemes or who might be affected. So certainly look for more information on our website. We are ramping up efforts. It's a huge machine that we're trying to get started. So be patient with us as we try to make sure we are providing all the information that our customers need. Um, so one of these pages here, you'll see it, the scam alert page. It has a list of entities sending out potentially misleading solicitations that other customers have received and reported to us. And we have links to all of those examples of those solicitations on our website. Now, one of those I want to draw your attention to actually worked out pretty well for us. So, uh, law enforcement was investigating a mail fraud scheme and they came across that list on the last slide of our, uh, misleading solicitations. They were investigating a uh, scammer, Viktor Suhorukovs, who ran a three year multimillion dollar mail fraud scheme to defraud trademark holders, Suhorukovs' company, the Patent and Trademark Office, LLC. And I guess he was also running the Patent and Trademark Bureau, LLC, sent out renewal notices to holders indicating a renewal date that was earlier than what our records said. The notices included a QR code that linked to our site and asked holders to pay him their inflated renewal fees, which they did. 2900 victims fell for the scheme. The government agents who were investigating the scheme found the misleading solicitation that we had on our website, and that actually helped them find the scammer and go after him. The government actually was able to seize 2.4 million in Suhorukovs' assets that now can be used to compensate the victims of the schemes. The U.S. attorneys who were investigating asked for our assistance in identifying affected applicants. They had about 200 of their applicants, the victims of the scheme that they couldn't find. And we helped provide them information about where those applicants could be located so they could get the, uh, get some restitution from, uh, from the defendant in this case. So we're pretty happy that this guy has been sentenced to four years and ordered to pay 4.5 million in restitution. All right. Moving on. On our register protection initiatives now, we're at 2019: U.S. council rule. Um, I'm guessing that you're all familiar with this rule requiring foreign domiciliés to be represented by a U.S. licensed attorney in trademark matters before the USPTO. If I had to guess, the reason that you are familiar with it is all the media attention paid to it by those who are attempting to circumvent the rule. As you know, the U.S. council rule requires all applicants represented or unrepresented to provide us their domicile address so we can evaluate whether the council rule is triggered. Now, what we see, of course, are attempts to circumvent the rule. We see names, addresses located in the U.S., and we see U.S. attorneys who are - who have agreed to rent their attorney credentials to an applicant or a foreign filing firm to use to file in the United States. So what are we doing about these unacceptable addresses? Um, it's been a tough slog because if we rely on our examining attorneys to use Google Earth to try to investigate each and every address, to figure out really, is it a residence? Is it a real address? What is it? It's not the most efficient use of their time and their training. So we have implemented some automated queries. We're looking for P.O. boxes. We're looking for care of boxes. We're looking for commercial mail, receiving agency addresses. We flagged these as unacceptable. And we let our examining attorneys know that they need to to issue a refusal or a request for information or however they might want to handle it in order to get an acceptable address. We're also seeking ways to have an automated verification address, verification check upfront during the application stage or during pre-exam. So we're still looking at what is the most efficient way to do this with the least impact on good faith filers. All right, so what are we doing about the attorney misconduct, those who are trying to circumvent the U.S. counsel rule. As part of our investigation process, we identify attorneys that are seemingly involved in schemes who are violating our rules or they're violating ethics rules, and we collect evidence. And when appropriate, as I said, we refer them to OED or to law enforcement if there's criminal activity. Now, we have referred dozens of matters over to OED and a couple of matters over to law enforcement over the last year or two. Um, what we hear is that there are a lot of attorneys who are then being investigated, will claim ignorance of our signature rules, they'll claim they didn't know about their own ethics rules. They'll claim they didn't know a lot of the TMEP. We've actually had, um, have discussions, as I understand it, to try to point out where the TMEP is on our website to some of these attorneys who are violating their rules. Now, do they really not know or is that just uh when they're asked that's what they say? I don't know. Um, we're certainly going to continue to to press and investigate and discipline those who are circumventing our rules and violating their own rules of professional conduct. Um, you saw those two OED settlement agreements resulting from our referrals over to OED for specific practitioners. But uh, and you can track OED's uh, settlement agreement. You can even track their final orders if you go to our FOIA reading room. So FIOA reading room, USPTO, OED, you'll find a list of of all of those agreements or final orders. And one thing I would say is that it is possible, uh, for you all to file a grievance against an attorney. Uh, if you think that there are grounds for discipline of that that particular practitioner, and you are invited to file a grievance at OED@uspto.gov So if you find evidence of attorney misconduct and you want to let the OED folks know, please do so through OED@uspto.gov. Let's see. I'm looking to see if I, you know, I think we'll come to those questions at the end, that's a really long one. It'll take me a while to read. OK, moving on to the next initiative is mandatory account login. Again, in 2019, busy year, we began requiring a USPTO.gov account for filing any TEAS form, and that allows us to track filing behavior. Um, we have two more upcoming phases that I want to tell you about that will further increase the scrutiny. I'm sorry, further increase the security of our database and better tracking for us. So we're pretty happy about that. Phase two, identity verification. It's currently in beta testing. We're partnering with ID.me to authenticate the owners of USPTO.gov accounts used to file TEAS forms. The automated process requires a government photo ID - of government-issued photo ID. A USPTO.gov account that matches the ID. It requires a smartphone, computer, a tablet with a front-facing camera. It requires a Social Security number. And those without a Social Security number, such as foreign nationals, will be routed to an in-person video session to verify those identities. If you don't want to do the automated option, you can still do paper. You can do a paper notarized form, but obviously that will take a lot longer. Once we verify identities, we can terminate USPTO.gov accounts and then prevent new accounts by that same bad actor from being created, once the sanctions are imposed. So that will allow us to lock down accounts and hopefully keep them from popping back up again. Uh, let's see, uh, phase three, uh, of log in is role-based access controls. The USPTO it plans on assigning a limited number of roles to control and delegate access to TEAS form filings. The proposed rules are the, I'm sorry, the proposed roles are - I think I have a slide on this. Did I miss that? Yes, I did. Okay. Sorry about that. There we go. Uh, the roles, uh, U.S.-licensed attorney, a Canadian attorney or agent, attorney support staff, and trademark owner. Only authorized customers with those roles will be able to file TEAS forms related to the application or registration. What will this do for us? It will stop hijacking. It will stop the unauthorized changes of correspondence addresses that we see. And they have certainly gone down as - but it's a manual process for us and rather labor intensive. So to be able to have a way to stop that from happening and improve the security of our systems is much, much welcome from from our standpoint and hopefully from yours. All right. Now we're going to move on to our last stop on our register protection initiative timeline. It's certainly, well, not our last stop, it's our most recent stop. We're going to still continue to work on various initiatives to make sure that our register remains accurate and useful. Um, 2018, 2019. We faced a surge of applications and they had sketchy specimens in them. Congress asked us how they could help, how we - what we would need from a statutory perspective to respond to the trend and to deal with the overall concern about false claims of use in trademark applications and maintenance filings. Now, Congress passed the TMA and gave us until December 27th, 2021, to implement most of the proceedings necessitated by the statute. Now, we were in a hurry. We we normally would have issued a request for comments, and then we would have gone out with a notice of proposed rulemaking, and then we would have gone to a final rule. But we didn't have that kind of time. So we did a bunch of roundtables which are on our website. There's a link at the end to our TMA page which will link you to all of the roundtables that we had. In those consultations with stakeholders through the roundtables then we drafted a notice of proposed rulemaking and we issued it for public comments. We had more roundtables. And now the final rule is being drafted. Now, what's in the the the uh, the final rule? We've got the letter of protest procedure procedure. We got flexible response periods and nonuse cancelation proceedings. So those are the three main features of the TMA that are in the rule package. Um, letter of protest. It's the same proceeding that you've known for years. It's nothing has has changed. Um, just a few tweaks. Uh, the legislation authorized, as I said, to charge a fee of fifty dollars to cover our cost. And Congress imposed a two month time limit for sending the relevant evidence to the examining attorney. Everything remains the same as you've always known it. Uh, flexible response periods. Um, we offered three options in the NPRM. We got comments. Um, and let's see. I think I have a slide on that. So let's go there. No. Okay. I took that one out. Um. Let's see right now, you know, for an office action and examination, you've got a six-month response period. And that might be reasonable and necessary. I think it was started back when we had boats crossing with office actions and responses. So it's still maybe reasonable and even necessary for a particularly complex office action, but it's not necessary for all. And that time lag where applications are taking up space in our system longer than they need to. That means it's harder to clear marks. And it's particularly frustrating if the applications that are sitting there are suspicious ones. So we are looking for ways to increase the flexibility for us to move applications through the system more quickly and certainly to to move applications through for the benefit of our stakeholders to try to clear marks a little bit faster, get marks off the register. We are reviewing the comments on the various options that we presented as we develop the final rule. And just be aware, we did propose a delayed implementation date for flexible response periods. But we know we have docketing issues, you have docketing issues. And so we are taking that into account as to delaying implementation. So don't look for flexible response periods to be implemented December 2021, because it's not going to happen. Don't worry, it will be delayed. But I really want to focus on nonuse cancelation proceedings, because that's really where from a registered protection initiative the action is. OK, let's talk about nonuse cancelation. The first type of proceeding is expungement, um. The target of an expungement proceeding is a Section 1, a Section 44, or Section 66 registration that has never been used on some or all of the goods and services identified in the registration. There are three types of proceedings in which this new claim or new ground for cancelation is available. Number one, a petition initiated proceedings before the Director. Number two, a Director-initiated proceeding before the Director. And third, is a cancelation proceeding at the TTAB. Now, the first two types of proceedings here before the Director, they may be instituted in the window of time between year three and year 10 after registration. The third type of proceeding before the board is a bit different. The timing is different. The claim is available any time after the first three years post-registration. But it doesn't cut off at 10 years like the proceedings before the Director. So keep that in mind. An expungement proceeding is any time, post-registration three years. Okay. Now, a point of distinction here. The claim of expungement is fundamentally different from a claim of abandonment. Abandonment, as you know, requires nonuse, plus an intent not to resume use. Expungement does not look at the registrant's intent. We're not evaluating the intent of the registrant. It's an entirely new statutory basis for cancelation. It only evaluates whether the mark was used on the challenged goods and services prior to the date of filing of the expungement petition. It does not evaluate whether the mark was put into use as of the dates required by the statute. That is a question for reexamination proceeding, which let's turn to next. Congress created the second new proceeding before the Director called reexamination. The target is Section 1 registrations that were not in use as of the relevant date. The relevant date for purposes of this proceeding in a Section 1(a) is the application filing date. The relevant date for 1(b) applications is the later of the filing date of the amendment to allege use, the AAU, or the expiration of time to file the SOU, the statement of use. As for timing, a petition to request institution of proceedings for reexamination may be filed in the first five years after registration. There are two new types of proceedings before the Director in which this claim is available, as you see here, petition- initiated and Director-initiated. Note that I did not put the third proceeding before the Board for reexamination like I had it for expungement. Why? This is because this this ground already exists. This claim - ground for cancelation, nonuse as of the relevant date, is already there in Section 14. You can bring it at the TTAB. These reexamination proceedings before the Director do not affect the existing nonuse claim at the TTAB as to evidence or as to timing. There's no relationship. Now, let me walk you through the proceeding. Well, actually, let me tell you what the petition says first, hold on. OK, so the NPRM that you all hopefully reviewed very carefully and provided comments to us, which for which we really appreciate those comments. It lays out the matching procedures that will be followed in both expungement and reexamination proceedings. To start with, we're proposing a $600 per class fee. Now, that was a point of contention in the comments that we are looking at that in the final rule. The statute says any person may file a petition requesting that either expungement or reexamination proceeding be instituted. To file the petition, however, the petitioner must have a USPTO.gov account so we know who they are. Now, we might not know who the real party in interest is, but we know who the petitioner is. The petition must include a verified statement, as well as any dockery - documentary evidence of nonuse. The verified statement must identify the elements of the petitioner's investigation for nonuse. Where did you search? How did you search? When did you search? And what did you find as to each of the sources of information relied on? Now, the reasonableness of the search and the number and the nature of the sources the petitioner must search will be determined case by case, because, of course, industry sectors differ. Nonuse evidence is not going to be found in the same place for every industry sector. So there is no one, one-size-fits-all here, and the the the NPRM reflects that as to a case by case analysis. Now, once a complete petition is filed and has all of the required elements, a courtesy email notice of the filing of the petition will go to the registrant and the registrant's attorney, if we have one in our files. We want the registrant to be notified early that something is happening. The petition and the evidence will also be uploaded immediately into the Trademark Status and Document Retrieval system, TSDR, and it will be made public. OK. The procedures, how they go. Once that petition is submitted and is complete, the petitioner is entirely out of the process. It is the Director who decides whether the prima facie case is made based on evidence and information in the petition and our records, the electronic record of the involved registration. We're not just looking at the petition, we're also looking at our records. The Director has the authority to institute proceedings without a petition. If the Director has evidence of establishing a prima facie case. The same procedures as those listed here would apply to a Director-initiated proceeding, it just doesn't have the petition or the verified statement. If a prima facie case is established, the Director must institute proceedings. If a proceeding is instituted, the examiner will issue both a notice of institution and an office action that directs the registrant to respond within two months with proof of use of the mark on the challenged goods or services. Now, I said two months here, but of course, in our request, in our comments, we got a lot of different views as to how long that period would be. And we are looking at that in the final rule. So before you gasp at the two months, let's wait and see what the final rule says. Now, the registrant has three options for his or her response: provide evidence of use, excusable nonuse, or deletion. Now let's walk through those options, right? If the registrant provides an acceptable response, the proceedings are terminated. So everything's done. Now, if the registrant provides evidence of use, the registrant has to rebut the prima facie case with evidence of of use information, exhibits, affidavits, declarations that establish that the required use in commerce has been made on or in connection with the goods and services that are being challenged. Second, the registrant can provide evidence supporting excusable nonuse, but only in limited circumstances. The statute sets out that this only applies to a Section 44 or 66 registrant in the context of an expungement proceeding. This does not apply in reexamination. Now, third, the third option is deletion. A registrant may simply just delete all of the challenged goods and services in his or her response with immediate effect. And then we move on. Right? If the response is acceptable, if anyone of any one of those three is is is taken care of and it's acceptable, then we will terminate the proceedings and everybody goes home. OK, now what happens, though, in a second scenario here where the registrant's response is unacceptable. The examiner will issue a final action then that includes the examiner's decision that the registration should be canceled for each good or service for the registrant did not provide an acceptable response or for noncompliance with any requirement under the U.S. council rule, the electronic correspondence rule, or the domicile address rule. We will go final on a requirement under those three. The registrant must respond to the final action within two months with a request for reconsideration and a notice of appeal. Now, if that request for reconsideration contains acceptable proof of use or deletions, then we're done. We will terminate proceedings and walk away. But if not, the examiner's decision to cancel his appeal to the TTAB and then everything goes to the Board, regular timelines apply. Now we have a third scenario here. No response. Registrant does not respond. No response results in immediate cancelation for the goods and services on which the proceeding was instituted. Not the entire registration, just those where the proceeding was instituted. Unless, of course, the whole thing was challenged. Now, once the goods and services are ordered for cancelation, a petition for reinstatement is available, but only for an extraordinary situation. So if the office action was not received and there's an extraordinary situation for which it was not received, we can consider that in a petition for reinstatement. All right. Now, remember I said that any person may file, and that's in the statute. So there's no standing requirement for the petitioner. Now, that has raised some concerns that there may be abuse, and we totally understand that. But there are several provisions built into the statute or that we propose to implement that will help prevent the abuse. The Director is the gatekeeper and the Director makes the call on whether a prima facie case has been made. And neither the petitioner nor the registrant may appeal that determination. If the evidence of nonuse makes a prima facie prima facie case, and only then will proceedings be instituted. Secondly, estoppel. We have estoppel provisions. Goods and services for which use in commerce has already been established may not be subject to further expungement or reexamination proceedings. They can still be challenged at the Board. But in the context of these proceedings, if a registrant has provided acceptable proof of use for those goods and services that were challenged, those goods and services cannot be challenged again in these proceedings. Third. Administrative sanctions. Now, I just told you all about our administration - administrative sanctions process. So if we see that a petitioner is abusing these proceedings or harassing registrants, we can sanction them outside the context of these proceedings through the authority of the Commissioner for Trademarks that I told you all about. So if we were to discover that there was a problem, we could stop that petitioner from from filing future submissions in any any proceeding before the USPTO, and we could terminate their USPTO.gov account. And once we have phase two of our log in requirements, then we could certainly stop them from creating new accounts. So that is certainly a help. And lastly, relationship to other proceedings. Now, as a fourth measure here, we're proposing that expungement and reexamination proceedings be included among the types of proceedings for which suspension of action by the office or the TTAB is authorized. So your normal suspension rules will apply. Let's see. All right. Timeline. This is the TMA implementation timeline, so don't confuse this with the first one you saw for register protection. We're working on the final rule. It will lay out the implementation of the provisions in the TMA, and it will also identify the dates of entry into force of the various provisions. We are looking to publish this final rule in November, 2021. We again, we're planning on implementing the nonuse cancelation provisions by December 18th, hopefully, the weekend before Christmas. So it doesn't hit on Christmas. And of course, the statute mandates that we have to have expungement and reexamination in place by at least December 27, 2021. So look for that. Now, one public service announcement. Update your owner email and correspondence email addresses and all your registrations to make sure that you'll get notice of a filing of these particular petitions. We don't want anybody caught off guard, so make sure that you keep everything in your records accurate, in our records accurate, so that we can contact you if one of these were filed. And again, a plea: update your registrations as to only those goods and services that are in use. Use the Section 7 amendment proceeding and and delete any unused goods and services so that you don't get caught up in one of these proceedings. Lastly, I mentioned that we had a bunch of slides with links, and they actually go to each of the initiatives that I mentioned here today. These will be available as part of this recording and on our website. So so go and go back and take some time and look at all of these links. And here you can see the the the administrative sanction orders that we issue here. Now, keep in mind, this website is clunky and we're working on it. We certainly want to make it easier for you all to find what we're doing. And we are working on a web page overhaul, honestly, on all our protect - register protection initiatives so we can make it easier for everybody to find what they're looking for. These are the OED settlement agreements that were just talked about. If a party has been - has been excluded by an OED order, you'd find that here. And here's the Trademark Modernization Act link. And it has all the recordings and all the slides and all the information that we have to offer you on the Trademark Modernization Act. So that, my friends, is my presentation. And I'm going to throw it to Jason now. -All right, thank you very much, Amy. We are going to be moving now into the question and answer portion. So we're going to be joined here by Bob Lavache. But just a quick reminder, folks, for those of you who are sending in questions. The email address to use is TMFeedback@uspto.gov. We understand a couple of you might have sent some questions into another @uspto.gov email address. So we're trying to collect any questions that might have come to another email address. But please, if you could, send them to TMFeedback@uspto.gov. I know we've had a couple come in, so hopefully we have some good questions for Amy and Bob to answer. So let me give you a little bio on Bob, because he's now joining us and we want you to know who he is. He's the Senior Trademark Legal Policy Advisor in the USPTO's Office of the Deputy Commissioner for Trademark Examination Policy and is the assistant editor of the Trademark Manual of Examining Procedure. He started at the USPTO in 2005, working five years as a trademark examining attorney before becoming a Legal Policy staff attorney. His current responsibilities as Senior Trademark Legal Policy Advisor include managing the work of Legal Policy staff attorneys and developing trademark examination policy guidance. He also provides counsel on rulemaking and various trademark legal policy topics, including specimens of use, nontraditional marks, lawful use in commerce, geographic certification marks, practice before the USPTO, and statutorily protected matter. In addition, Bob serves as a liaison to the USPTO's Office of Enrollment and Discipline and assists with the enhancement of the USPTO's Trademark Electronic Application System. He's a graduate of the University of Miami and Cornell Law School and is a member of the bars of New York and the District of Columbia. So as you can tell folks, you are in really great hands. These are two people who really know what they're talking about. The experts in the field. So I'm going to turn it back to you two and let's hear some good answers to some of these good questions. -Okay. And I'm sorry I couldn't get to a lot of the questions as we were going through, but it was difficult to stay on track and address the questions at the same time. But we will turn to those now. The first question that we got is, is there a process for a third party to report a registration which should be audited? The - everybody wants to report somebody else's bad guy work, and that can be a little tough because you never know if it's a real or just somebody trying to harass somebody else. So we do have to be careful about the various inputs that that we we get. Now, with regard to a registration where, you know, because the registration has been issued and and we're not in a position to to, you know, look into that registration at this point, we would direct you to the expungement or reexamination proceedings that we will be implementing December 27th or actually should be December 18th. Well, we'll have to see what the date is at that point. But if you find that there is a registration where you believe that there is evidence of nonuse and you can find that evidence of nonuse and you have a prima facie case of nonuse, then we urge you to use that proceeding to take to take an action against that. That then, of course, gives that information to us. We look to see if you've made a prima facie case. And if you have made a prima facie case, then we will ask the registrant to provide proof of use. So that would be the mechanism by which you would address one of these. The proof of use audit program is is not something that third parties can opine on or give us a - ping us to to audit somebody. That's not how the program works. And I think you can appreciate that it could be used for harassment if we were to allow it to be used that way. So I appreciate the question, but definitely I think these reexamination proceedings will be helpful in that regard. OK, next question. -Before we get to the next one. -Yeah. Oh, go ahead. -Yeah, we could, but before we get to that, there was a related question about whether the letter of protest procedure could be used for registration. And the answer is "No." That is for pre-registration, um, during pendency of the application up until 30 days after its published for oppoaition. So, no. And under current audit procedures, uh, the audit is done on a random basis based on criteria of being met relating to the goods and services. -Right now, Bob, you were doing that stuttering thing, your connection isn't great, so I know you love that. -I do. -Okay. For those who didn't catch all that, because you're not a robot, the uh, the the issue is a letter of protest preceding is only available for applications, is not available for registrations. And so, you know, we're not we're not going to open up a registration because a letter of protest was filed, because that's not what the proceeding is for. So, uh, that was that was the long and short of