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Trademark Access Fairness Questioned With New ID Requirement (2)

Dec. 20, 2021, 10:02 AMUpdated: Dec. 21, 2021, 2:00 AM

Small businesses, particularly those run by people of color and women, will have a harder time filing for trademarks when a new verification system that requires AI technology and a credit check goes into effect, attorneys say.

The U.S. Patent and Trademark Office will roll out the identity verification process on Jan. 8. Any attorney or business filing a trademark registration application will be required to use it effective April 9.

The agency has said identity verification will help deter fraudulent trademark filings.

Some attorneys, however, warn that the new system could block some entrepreneurs from registering trademarks, a requirement for even the smallest enterprises wanting to sell on the Amazon.com Brand Registry.

The electronic identification process includes a credit check and requires a government-issued ID. It also uses an artificial intelligence facial recognition system that has been criticized for incorrectly identifying people of color and women.

An alternative paper check process requires two forms of government-issued IDs and more time to complete.

“The idea that everyone has a smartphone, everyone has internet access, and even really a government-issued ID, it brings to bear the conversations we had around voter IDs, that there are folks who actually don’t have a driver’s license or some form of identification,” said Thomas Williams a clinical professor of law at Duke Law School’s Start-Up Ventures Clinic. “For those of us who have them it’s hard to believe that others don’t. But it’s a problem.”

Immigrants, survivors of domestic violence, people who were formerly incarcerated, and people who are experiencing homelessness might find it difficult to meet these requirements, but need trademark registration protection to stabilize their businesses and get them running, Williams said.

Commissioner for Trademarks David Gooder said the agency was working to make the system fair for all.

“The USPTO’s top priority is ensuring that all legitimate users have access to our vital patent and trademark registration system,” he said. “This means that the tools we use to protect our patent and trademark community strive to be inclusive, equitable, efficient and secure. We are committed to arming our stakeholders with accurate, transparent information about our authentication plans to address legitimate concerns.”

He added that the agency “recognizes that we all have a role to play in preventing patent and trademark fraud, and we look forward to further engaging with our stakeholders on these important issues.”

The PTO expects the electronic self-service process through ID.me to take around 15 minutes and says that applicants having problems with the verification can complete the requirement over a video conference.

The paper verification process involves providing two forms of identification to a notary and mailing notarized forms to the agency, which could take around two weeks, according to the PTO. The wait time, the need for notarization, and the requirement of two forms of identification make this option less than ideal, attorneys said.

Fraud Protection

The verification process is meant to ensure that the people filing trademark applications are real and could be held accountable for misconduct or abuse of the register, according to a PTO webinar. The enhanced safeguards come at a time of a rise in trademark fraud.

The information ID.Me collects through the process is secured, according to the agency, and the “soft” credit check is only used to verify identity and address, though the process won’t work if a filer doesn’t have credit or it’s frozen.

In that case, ID.me offers alternative ways to verify identity, a spokesperson for the company said.

Small business owners trying to file a trademark on their own will now face a “time suck in an already frustrating process,” said Erik M. Pelton, the founder and lead attorney at Erik M. Pelton & Associates LLP.

Pelton added that he’s pleased the trademark office is doing more to prevent fraud, but that this process only targets “a very, very small portion of scams and fraud that relate to trademark filings.”

Disproportionate Harm

Small business owners who find it difficult to meet the requirements will have to bear the cost of hiring a trademark attorney or not apply for a trademark registration at all, Williams said.

“The system is already relatively complicated, very complicated arguably if you’re not comfortable with it,” Williams said. “It just puts more distance between the folks who are in many ways the engine of our economy and the system they need to protect the thing they’re creating.”

The credit check could present issues for any entrepreneur who has experienced bankruptcy, said Julie MacDonell, the co-founder and CEO of Haloo, an online trademarking business, adding that groups who have faced discrimination or oppression will potentially have a harder time with the check.

“It’s an issue across the board,” MacDonell said, “but it’s disproportionately harming or preventing access to certain groups who have certainly lacked equal participation in the economy.”

The PTO will also require that the name on the account matches the filer’s government-issued identification, which poses issues for transgender filers who might live in states where they can’t easily change their name on their IDs, and women, who tend to change their names more than men, attorneys said.

The PTO said trademark filers can use a name that differs from the account name as long as it is truthful and meets the agency’s legal requirements.

Patent and Trademark Office staff also will help filers who use ID.me understand how it works and answer their concerns, the agency said.

ID.me

The system that the agency is using for facial recognition, ID.me, reportedly in some cases has failed to properly identify women and people of color seeking unemployment benefits.

ID.me in a statement denied that women and people of color were misidentified.

Blake Hall, CEO and founder of ID.me, said in a Dec. 17 statement to the PTO that women and people of color “are disproportionately underrepresented in data centric solutions alone like credit bureaus and data brokers.”

Hall said ID.me “is the first and only identity proofing provider that provides scalable and accessible identity proofing options for populations that are missing or underrepresented in records based solutions only.”

He added that “any perceived concerns about facial recognition and potential negative impacts on people of color, women, and/or transgender individuals are not supported by the evidence.”

Others, however, question the use of the technology.

The AI technology just isn’t accurate enough for this process, said Meredith Lowry, an intellectual property attorney at Wright Lindsey Jennings.

Several of the requirements—the state-issued ID, the credit check, the need for a Social Security number—combined with the potential facial recognition issues will present barriers for minority populations, groups the agency has wanted to help get better access, she said.

“All this is on top of the fact that it’s just something additional to do, and I’m not certain it’s going to solve the problem the trademark office is having,” Lowry said. “Who this is going to stop is small business owners.”

(Updated with comments from ID.me.)

To contact the reporter on this story: Samantha Handler in Washington at shandler@bloombergindustry.com

To contact the editors responsible for this story: Renee Schoof at rschoof@bloombergindustry.com; Andrew Harris at aharris@bloomberglaw.com; Meghashyam Mali at mmali@bloombergindustry.com