World Trademark Review Quoted Josh Gerben About Need to Address USPTO System Security

Many US attorneys have recently reported receiving emails asking to use their attorney name and information on a US trademark application for foreign applicant that they have not previously worked with.  Some believe this has happened in response to the USPTO proposal for requiring foreign applicants to use US attorneys for their trademarks.

Josh Gerben was quoted by the World Trademark Review about the USPTO’s need to update their systems has been spotlighted by these emails:

“While using a ‘local counsel’ is something that is commonly accepted (where a foreign counsel can manage a case and local counsel can advise and make the relevant filings), it would not be an acceptable arrangement to just let someone else use your name for the purposes of making filings with the USPTO”.

“In light of this potential rule change, I believe the USPTO needs to urgently add security to its filing system. It would be incredibly easy for a ‘bad actor’ to simply use an attorney’s name without his or her knowledge. […] The USPTO should immediately implement technology which would require a ‘log-in’ for attorneys so the identity of the person making the filing is at least verified through a password protected portal. I fully anticipate the fraudulent use of attorney names if no such security system is implemented.”


Source: Little, T.  “Urgent call for USPTO to secure filing system after warning sent to attorneys over solicitation email”.  February 24 2019.

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