Trademarks – internetcases – Attorney Evan Brown

April 20, 2026 Right of Publicity, Trademarks, Unfair Competition

Keyword advertising as trademark infringement: court declines to rule it out

trademark infringement and sponsored ads

A Washington psychiatrist sued a competing nurse practitioner and her clinic for trademark infringement and misappropriation of his name and identity. Plaintiff David Penner, owner of the Olympia Center for TMS & Psychiatry in Thurston County, Washington, claimed that defendant Diana Wilcox and her competing clinic, Clear TMS+, used his registered OLYMPIA TMS trademark as a Google Ads keyword, causing his name to appear in advertisements for Clear TMS+ without his consent.

What each side asked for

Defendant moved for summary judgment on the trademark claims, arguing that plaintiff had abandoned the OLYMPIA TMS mark and that it was not entitled to protection. Plaintiff cross-moved for partial summary judgment, asking the court to rule that the mark was descriptive rather than generic, while reserving the question of secondary meaning for trial. On the name appropriation claim, plaintiff sought to hold defendant liable for the unauthorized commercial use of his name in its advertising.

The court’s bottom line

The court denied defendant’s motion for summary judgment on abandonment and ruled in plaintiff’s favor that the OLYMPIA TMS mark is descriptive. It left the question of secondary meaning, required to make a descriptive mark protectable, for the jury. On the name appropriation claim, the court allowed the claim to proceed to trial.

Abandonment: a question for the jury

On abandonment, the court found a genuine factual dispute because plaintiff presented evidence of continuous use of the mark through his website domain name, social media presence, and successive clinic names that all incorporated “Olympia” and “TMS.” The court applied the tacking doctrine, under which a trademark owner may modernize a mark over time while maintaining continuity, and concluded that a reasonable jury could find that plaintiff never truly abandoned the mark.

Descriptive, but maybe protected by secondary meaning

On descriptiveness, the court held that the mark answers the question “who are you?” rather than merely describing a category of services, placing it in the descriptive rather than generic category. Because the mark was on the USPTO’s Supplemental Register rather than the Principal Register, it carried no presumption of validity, meaning plaintiff must prove at trial that the mark has acquired secondary meaning, specifically that the public primarily associates “Olympia TMS” with plaintiff’s clinic rather than with TMS therapy as a general service.

A name used without permission

On the name appropriation issue, the court found sufficient evidence that defendant’s advertisements displayed plaintiff’s name without authorization, and determined that the number of unauthorized advertisements and the resulting damages were questions for the jury.

The question the court left open

One issue the opinion left notably unresolved is the precise mechanism by which plaintiff’s mark was allegedly infringed. The opinion indicates that defendant used “Olympia TMS clinic” as a keyword to trigger Google search advertisements, and that plaintiff’s personal name appeared in the resulting ads. But it does not clarify whether the mark itself appeared in the visible text of the ads that consumers actually saw, or whether it functioned only as a behind-the-scenes keyword trigger invisible to the public.

That distinction matters. A mark used only as a keyword trigger raises harder questions about whether consumers were ever actually exposed to it in a way that could cause confusion. The court does not engage with this threshold question.

David Penner MD PLLC v. Clear TMS+ PLLC, 2026 WL 1045235 (W.D. Wash. Apr. 17, 2026)

April 7, 2026 Cybersquatting, Trademarks

No restraining order in domain name dispute involving Robinhood founder

domain name dispute

A federal court in California has denied emergency relief in a cybersquatting case involving Vlad Tenev, the co-founder of Robinhood, the popular investment platform. The United States District Court for the Northern District of California declined to issue a temporary restraining order over the domain name vladtenev.com, but ordered the defendants to show cause why a preliminary injunction should not be entered.

Background of the dispute

Plaintiffs Robinhood Markets, Inc. and Vladimir Tenev brought suit against Libin Zhu and Dynadot Inc. after Zhu registered the domain name vladtenev.com and allegedly offered it for sale for $16,800. Plaintiffs asserted claims under the Lanham Act and the Anti-Cybersquatting Consumer Protection Act, along with unfair competition, common law trademark infringement, and violation of California’s right of publicity statute.

Before turning to federal court, Tenev pursued a Uniform Domain Name Dispute Resolution Policy proceeding. That effort was unsuccessful. The UDRP panel denied his claim in February 2026, a fact that influenced the court’s view of the timing of this lawsuit.

Requested relief

Plaintiffs asked the court to enter an ex parte temporary restraining order blocking the alleged cybersquatting conduct, requiring transfer of the disputed domain name, and prohibiting defendants from using or marketing the “VLAD TENEV” name or confusingly similar identifiers. They also sought an order to show cause regarding a preliminary injunction.

The court’s ruling

The court denied the request for a temporary restraining order. At the same time, it granted the request for an order to show cause and set a briefing schedule and hearing on whether a preliminary injunction should issue.

Key reasoning

The court found that plaintiffs had not shown a likelihood of success on their Lanham Act or ACPA claims. Personal names are treated as descriptive under trademark law and are protectable only if they acquire secondary meaning. That requires showing that the public primarily associates the name with a product or service rather than the individual. Here, the court found it implausible that “Vlad Tenev” functions primarily as a source identifier for public speaking services, rather than identifying Tenev himself, particularly given his prominence as a co-founder of Robinhood.

The court did conclude that plaintiffs raised serious questions under California Civil Code section 3344, which governs the right of publicity. But that alone was not enough to justify ex parte relief.

The court also emphasized delay. Plaintiffs were aware of the domain listing in early January 2026, pursued and lost the UDRP proceeding in February, and then waited more than a month after that adverse decision to seek a TRO. That delay undermined any claim of immediate and irreparable harm, which is required for emergency relief.

Takeaways

The decision underscores how difficult it can be to assert trademark rights in a personal name without strong evidence of secondary meaning, even for a well-known figure such as the co-founder of Robinhood. It also highlights a practical point about timing. Pursuing a UDRP proceeding does not eliminate the need to act quickly in court if emergency relief is sought.

Robinhood Markets, Inc. v. Zhu, 2026 WL 915291 (N.D. Cal. Apr. 3, 2026)

March 26, 2026 Cybersquatting, Trademarks

Oklahoma federal court keeps Paycom trademark, cybersquatting suit

domain name law

The United States District Court for the Western District of Oklahoma refused to dismiss Paycom trademark and cybersquatting suit against Pay.com entities, finding that the case could proceed in Oklahoma. Plaintiff sued defendants for trademark infringement, false designation of origin, trademark dilution, cybersquatting, common-law trademark infringement, unfair competition, and violation of the Oklahoma Deceptive Trade Practices Act. Plaintiff alleged that defendants used Pay.com and Paycom-related branding in a way that confused consumers, suggested an affiliation with plaintiff, and harmed plaintiff’s PAYCOM marks.

Dismissal request

Defendants asked the court to dismiss the case for lack of personal jurisdiction and also asked it to dismiss the cybersquatting claim for failure to state a claim. They argued that their online activity did not create sufficient Oklahoma contacts and that plaintiff had not adequately pleaded the elements of an Anti-Cybersquatting Protection Act (ACPA) claim.

Jurisdiction ruling

The court ruled that dismissal was not warranted. It held that plaintiff made a prima facie showing of specific personal jurisdiction in Oklahoma and also held that the amended complaint plausibly stated a cybersquatting claim, so defendants’ motion to dismiss was denied in full.

Why the court rejected dismissal

The court found that defendants had sent follow-up marketing emails directly to prospective Oklahoma merchants after those businesses began account applications through the pay.com website, and those contacts were enough to show purposeful direction toward Oklahoma that related to plaintiff’s alleged injuries. The court also found that defendants had not shown jurisdiction in Oklahoma would be unreasonable, and it concluded that the cybersquatting arguments turned on factual disputes and matters outside the pleadings that could not be resolved on a Rule 12(b)(6) motion.

Paycom Payroll, LLC v. Pay.com US, Inc., 2026 WL 810559 (W.D. Oklahoma, March 24, 2026)

June 30, 2025 Artificial Intelligence, Trademarks

Court limits use of trademark for forthcoming AI-powered agentic browser

tro trademark

A technology company sued artificial intelligence company Perplexity for trademark infringement and unfair competition. Plaintiff claimed exclusive rights to the mark COMET, which it used in connection with a range of technology and consulting services. Perplexity planned to launch an “AI-powered browser for agentic search” under the same name. Plaintiff asked the court to stop Perplexity from using the mark altogether. The court granted a preliminary injunction in part, allowing the browser to launch under the COMET mark, but blocking all other uses of the mark.

To decide whether to issue the injunction, the court applied the standard four-part test. A plaintiff must show a likelihood of success on the merits, a likelihood of suffering irreparable harm without an injunction, that the balance of equities favors relief, and that the injunction is in the public interest.

The court found that plaintiff was likely to succeed on its trademark infringement claim. Plaintiff owned an incontestable federal registration for the COMET mark. That gave plaintiff a strong position on ownership. The court then looked at the likelihood of confusion between the two uses of COMET by applying the Sleekcraft factors, taken from AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).

On the question of similarity of the marks, the court noted the marks were identical. That factor weighed heavily in favor of plaintiff.
On the element of proximity of the competing products, the court found that even though both parties used artificial intelligence and machine learning, their overall products served different functions, had different designs, and targeted different users. That factor favored defendant.
Concerning the strength of plaintiff’s mark, plaintiff convinced the court that it had built a strong reputation over the last seven years, but the court found that plaintiff’s mark was strong only in a more limited segment of the AI space. That factor moderately favored plaintiff.
In terms of marketing channels, there was some overlap in audience. Both companies appealed to AI developers and sophisticated users, and Perplexity had the resources to dominate certain markets. That factor slightly favored plaintiff.
The degree of care exercised by customers favored defendant, since the users of both products were more likely to be careful in making their choices.
The court found that intent only slightly favored plaintiff, and that it was not a critical factor at this early stage.
On actual confusion, the evidence was sparse and open to different interpretations, so the court considered this factor neutral.
On the likelihood of expansion, the court found in favor of plaintiff. It was concerned that Perplexity, as a company “seeking to become an AI juggernaut,” would eventually expand the COMET mark into new products that could directly interfere with plaintiff’s business. The court found this concern reasonable, and Perplexity’s testimony did little to calm those concerns.

The court also found that plaintiff would suffer irreparable harm if Perplexity expanded the use of the COMET mark beyond the browser. The harm could not be undone easily, and confusion in the market could damage plaintiff’s reputation and customer relationships.

On the balance of the equities, the court found that preventing Perplexity from launching the browser would create significant hardship. However, Perplexity had repeatedly promised under oath that it had no plans to use the mark for other services. Therefore, blocking those additional uses would not harm Perplexity. On the other hand, plaintiff would be harmed if Perplexity expanded use of the mark. The court explained that a broad, mistaken injunction would be more harmful than a narrow one that was mistakenly denied.

Finally, the court found that the public interest would be served by protecting plaintiff’s narrow slice of the artificial intelligence market from confusion. Since the risk of confusion was limited to that segment, the court tailored its injunction accordingly.

The court issued an order enjoining Perplexity from using the COMET mark on any service listed in plaintiff’s trademark registration. However, Perplexity was permitted to move forward with launching its AI browser under the COMET mark.

Comet ML Inc. v. Perplexity AI, Inc., 2025 WL 1822477 N.D. Cal. (June 30, 2025)

March 12, 2025 First Amendment, Trademarks

Bogus trademark infringement threats violated the First Amendment

trademark registration

In 2011, two women established a public Facebook group where parents and community members could discuss matters related to the Los Lunas, New Mexico school district. This online forum served as a space for open dialogue about local education issues for seven years before drawing administrative attention.

In 2018, the district’s superintendent discovered the group and became concerned about its content. Her specific worries included posts containing incorrect snow day information and criticism directed at one of the district’s middle school principals.

The superintendent then developed a legal strategy to address the concerning online group. She filed an application with the United States Patent and Trademark Office to register the mark LOS LUNAS SCHOOLS. The USPTO granted the registration on July 9, 2019 (Reg. No. 5798193).

Equipped with purported trademark rights, the school district’s legal counsel sent cease and desist letters to the operators of the “Los Lunas School District Parent Discussion Page.” These letters threatened trademark infringement litigation if the group continued to operate under its existing name.

The Facebook group administrators sued in federal court. Their claim asserted that these trademark infringement threats constituted retaliation for speech protected by the First Amendment. When the superintendent moved for summary judgment, the district court rejected her motion, finding that the district’s actions violated the plaintiffs’ “clearly established” constitutional rights.

On appeal, the Tenth Circuit Court affirmed the lower court’s denial of summary judgment. The appellate court’s reasoning drew from principles articulated in Beedle v. Wilson, 422 F.3d 1059 (10th Cir. 2005), saying that government officials violate the First Amendment when they threaten frivolous litigation to silence protected speech.

In Beedle, the court had determined that government entities cannot bring libel actions against private citizens who criticize them -such claims are legally frivolous by definition. Similarly, in this case, the court found the trademark infringement threats to be legally baseless because the Facebook group had used the district’s name solely for commentary about the district itself, without connection to any goods or services that would trigger Lanham Act protections.

The evidence demonstrated that the district was substantially motivated to threaten litigation specifically in response to protected speech. So the case can be viewed as a warning – at least for government officials – to not misuse intellectual property law seeking to achieve an objective for which the law was not intended.

Tachias v. Sanders, — F.4th —, 2025 WL 747688 (10th Cir., March 10, 2025)

December 22, 2024 Cybersquatting, Trademarks

Cybersquatting claim failed where there was a weak mark and no evidence of bad faith intent

acpa

Aspire Health Partners sued Aspire MGT under the Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125(d) (“ACPA”) over defendant’s registration and use of the domain name <aspirehealthgrp.com>. Plaintiff sought a preliminary injunction to stop defendant from using the disputed domain name, but the court denied the request. The court held that plaintiff failed to show that defendant acted with a bad-faith intent to profit from the use of the domain name, a key element of a cybersquatting claim under the ACPA.

To prevail on a cybersquatting claim under the ACPA, a plaintiff must demonstrate that (1) its trademark in the disputed domain name was distinctive when the domain name was registered, (2) the disputed domain name is identical or confusingly similar to that trademark, and (3) the defendant registered the disputed domain name with a bad-faith intent to profit. In this case, the court found plaintiff would not likely succeed on its cybersquatting claim because of deficiencies under the first and third element.

The court found that plaintiff’s mark was not distinctive but instead was descriptive as a “self-laudatory” type of mark. Citing to the well-known McCarthy treatise on trademark law, the court determined that the word “aspire” when applied to healthcare services was of the same sort of use as the word “best” or “super” that extolls some feature or attribute of services and thereby becomes descriptive in nature and likely too weak to be subject to trademark protection.

As for the lack of bad faith, the court found that plaintiff had only made a conclusory allegation on the topic. Looking at various factors that courts apply to determine bad faith under the ACPA, the court noted in particular, among other things, that defendant had used the domain name in connection with a bona fide offering of its goods and services, and had not been shown to possess any intent to divert customers form plaintiff’s website or any intent to transfer or sell the domain name for financial gain.

Three Reasons Why This Case Matters:

Legitimacy in Business Use: Using a domain name for legitimate business purposes can protect defendants against cybersquatting claims.
Trademark Strength: Descriptive trademarks often face greater challenges in cybersquatting cases without strong evidence of distinctiveness.
Evidence of Intent: Courts require clear proof of bad-faith intent to profit, not just similarity between domain names, to uphold a cybersquatting claim.

Aspire Health Partners, Inc. v. Aspire MGT LLC, 2024 WL 5169936 (M.D. Fla., Dec. 19, 2024)

December 18, 2024 Trademarks, Unfair Competition

When does a neighborhood name become a trademark?

neighborhood trademark
Stephanie Reveron sued multiple companies, including Zumiez, New Balance, Amazon, Etsy, Zazzle, and Redbubble, for trademark infringement. Plaintiff claimed that her trademarks, such as LES NYC and LOWER EAST SIDE were being improperly used on clothing and other products. She argued that defendants’ use of these marks created consumer confusion and amounted to unfair competition.

Defendants moved to dismiss the claims. They argued that their use of the words “Lower East Side,” “LES,” and similar phrases was protected under the “fair use” doctrine of trademark law. Specifically, defendants claimed they were using these terms descriptively to refer to the well-known geographic location in New York City, not as trademarks to identify the source of the goods.

The court dismissed certain claims but let others proceed. For certain defendants, such as New Balance, Etsy (partially), and Zazzle, the court found that the use of “Lower East Side” and similar terms clearly referred to the neighborhood, not to plaintiff’s brand. This use was descriptive, in line with the fair use defense, and did not infringe plaintiff’s rights. For others, such as Amazon and Redbubble, the court found that the use of the phrases—especially when stylized or prominently displayed—could plausibly be interpreted as trademarks, making dismissal inappropriate at this stage.

Why did the court reach this decision?

The court considered the fair use defense, which allows the use of trademark-protected words in a descriptive sense if done in good faith. The court reasoned that the phrases “Lower East Side” and “LES” are commonly understood as referring to the geographic location—a neighborhood in New York City. For most defendants, this descriptive use was clear, especially when the words appeared alongside other terms or images referencing the neighborhood. The court also noted that fair use often turns on context: when words appear on a product without clear descriptive meaning, the line between fair use and trademark infringement becomes less certain.

For defendants such as Amazon and Redbubble, the court found that more analysis was needed. In some cases, the terms “LES” or “Lower East Side” were stylized or prominently displayed in a way that might suggest they were being used as a brand identifier rather than in a purely descriptive sense. As a result, the court allowed those claims to move forward.

In short:

The court dismissed claims against most defendants because their use of the words “Lower East Side” and “LES” was descriptive and protected under the fair use defense. However, for some defendants, such as Amazon and Redbubble, the court allowed the claims to proceed because the use of the phrases could plausibly be seen as a trademark rather than a description of a location.

Three reasons why this case matters:

Clarifies Fair Use: The case highlights how courts apply the fair use defense when trademarks overlap with descriptive geographic terms.
E-Commerce Accountability: It raises questions about the role of online platforms, such as Amazon and Etsy, when third-party sellers offer potentially infringing products.
Balancing Trademark Rights: The case underscores the challenge of balancing trademark protections with the public’s right to use common words, such as neighborhood names, in a descriptive way

Reveron v. Zumiez, Inc. et al., 2024 WL 5131627 (S.D.N.Y. Dec. 17, 2024)

November 24, 2024 Litigation, Social Media, Trademarks

People tagging the wrong place on Instagram did not help prove trademark infringement

The City and County of San Francisco sued the Port of Oakland and the City of Oakland alleging trademark infringement and unfair competition. The dispute began when Oakland renamed its airport “San Francisco Bay Oakland International Airport,” which San Francisco claimed created confusion and harmed the brand of its own airport, San Francisco International Airport (SFO). San Francisco asked the court for a preliminary injunction to stop Oakland from using the new name while the case proceeded.

The court granted the motion in part, finding that the new name improperly implied an affiliation between the airports. However, it rejected claims that Oakland’s actions caused confusion during online ticket searches or at the point of sale. Social media evidence featured prominently in the case but ultimately did not sway the court’s decision.

San Francisco argued that social media posts demonstrated actual consumer confusion. For example, some users on platforms such as Instagram tagged images of SFO with Oakland’s new name, while others expressed uncertainty about which airport they were referencing. Despite these examples, the court found the evidence weak and unconvincing. It noted that most of the posts lacked context, such as whether the users were actual travelers or how their confusion affected any purchasing decisions. Additionally, the court questioned the sincerity of some posts, particularly where users repeated the same confusion across multiple platforms or appeared to joke about the issue.

While the court acknowledged that social media evidence could have value, it stressed the need for reliability. Without clear patterns or evidence of widespread confusion, the posts provided little support for San Francisco’s broader claims.

Three reasons why this case matters:

The Limits of Social Media Evidence: This case demonstrates that courts demand robust, contextualized proof when social media posts are used to argue consumer confusion.
Trademark Law in the Digital Age: The case highlights the challenges of protecting trademarks in a world where branding and consumer perception are shaped online.
Impacts on Regional Branding: The ruling underscores the importance of clear naming practices for public infrastructure, especially in areas with competing interests.

City and County of San Francisco v. City of Oakland, 2024 WL 5563429 (N.D. Cal., November 12, 2024)

September 29, 2024 Contracts, Cybersquatting, Licensing, Trademarks

Counterfeit lubricant case gets preliminary injunction based on defendant’s slick conduct

A German-based lubricant manufacturer sued a U.S.-based distributor, alleging that the distributor produced and sold counterfeit versions of its products with branding that closely resembled plaintiff’s trademarks. Plaintiff brought claims for trademark infringement, cybersquatting, unfair competition, and other related violations, moving for a preliminary injunction against defendant, which the court granted.

The parties initiated a business relationship in 2019, but they never formalized a distribution agreement. Although plaintiff sent a draft agreement outlining trademark rights and restrictions, it was never executed. Plaintiff asserted that the relationship involved a limited license for defendant to distribute plaintiff’s authentic products, but defendant registered a “GP” mark in the U.S. without plaintiff’s consent. According to plaintiff, this was an unauthorized move, and defendant falsely represented itself as the mark’s legitimate owner.

Plaintiff further alleged that defendant continued to produce and sell lubricants with packaging mimicking plaintiff’s design, misleading consumers into believing they were purchasing legitimate products. Defendant also registered several domain names closely resembling plaintiff’s, which were used to display content imitating plaintiff’s branding and operations.

The court found plaintiff’s evidence of irreparable harm and likelihood of success on the merits compelling, issuing an injunction to stop defendant’s operations and prevent further distribution of the alleged counterfeit goods.

General Petroleum GmbH v. Stanley Oil & Lubricants, Inc., 2024 WL 4143535 (E.D.N.Y., September 11, 2024).

April 10, 2024 Artificial Intelligence, Trademarks

Key Takeaways From the USPTO’s Guidance on AI Use

uspto ai

On April 10, 2024, the United States Patent and Trademark Office (“USPTO”) issued guidance to attorneys about using AI in matters before the USPTO. While there are no new rules implemented to address the use of AI, the guidance seeks to remind practitioners of the existing rules, inform of risks, and provide suggestions for mitigating those risks. The notice acknowledges that it is an effort to address AI considerations at the intersection of innovation, creativity and intellectual property, consistent with the President’s recent executive order that calls upon the federal government to enact and enforce protections against AI-related harms.

The guidance tends to address patent prosecution and examination more than trademark practice and prosecution, but there are still critically important ideas relevant to the practice of trademark law.

The USPTO takes a generally positive approach toward the use of AI, recognizing that tools using large language models can lower the barriers and costs for practicing before the USPTO and help practitioners serve clients better and more efficiently. But it recognizes potential downsides from misuse – some of which is not exclusive to intellectual property practice, e.g., using AI generated non-existent case citations in briefs filed before the USPTO and inadvertently disclosing confidential information via a prompt.

Key Reminders in the Guidance

The USPTO’s guidance reminds practitioners of some specific ways that they must adhere to USPTO rules and policies when using AI assistance in submissions – particularly because of the need for full, fair, and accurate disclosure and the protection of clients’ interests.

Candor and Good Faith: Practitioners involved in USPTO proceedings (including prosecution and matters such as oppositions and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB)) are reminded of the duties of candor and good faith. This entails the disclosure of all material information known to be relevant to a matter. Though the guidance is patent-heavy in its examples (e.g., discussing communications with patent examiners), it is not limited to patent prosecution but applies to trademark prosecution as well. The guidance details the broader duty of candor and good faith, which prohibits fraudulent conduct and emphasizes the integrity of USPTO proceedings and the reliability of registration certificates issued.

Signature Requirements: The guidance outlines the signature requirement for correspondence with the USPTO, ensuring that documents drafted with AI assistance are reviewed and believed to be true by the signer.

Confidentiality: The confidentiality of client information is of key importance, with practitioners being required to prevent unauthorized disclosure, which could be exacerbated by the use of AI in drafting applications or conducting clearance searches.

International Practice: Foreign filing and compliance with export regulations are also highlighted, especially in the context of using AI for drafting applications or doing clearance searches. Again, while the posture in the guidance tends to be patent heavy, the guidance is relevant to trademark practitioners working with foreign associates and otherwise seeking protection of marks in other countries. Practitioners are reminded of their responsibilities to prevent improper data export.

USPTO Electronic Systems: The guidance further addresses the use of USPTO electronic systems, emphasizing that access is governed by terms and conditions to prevent unauthorized actions.

Staying Up-to-date: The guidance reiterates the duties owed to clients, including competent and diligent representation, stressing the need for practitioners to stay informed about the technologies they use in representing clients, including AI tools.

More Practical Guidance for Use of Tools

The guidance next moves to a discussion of particular use of AI tools in light of the nature of the practice and the rules of which readers have been reminded. Key takeaways in this second half of the guidance include the following:

Text creation:

Word processing tools have evolved to incorporate generative AI capabilities, enabling the automation of complex tasks such as responding to office actions. While the use of such AI-enhanced tools in preparing documents for submission to the USPTO is not prohibited or subject to mandatory disclosure, users are reminded to adhere to USPTO policies and their duties of candor and good faith towards the USPTO and their clients when employing these technologies.

Likely motivated by court cases that have gotten a lot of attention because lawyers used ChatGPT to generate fake case cites, the USPTO addressed the importance of human-review of AI generated content. All USPTO submissions, regardless of AI involvement in their drafting, must be signed by the presenting party, who attests to the truthfulness of the content and the adequacy of their inquiry into its accuracy. Human review is crucial to uphold the duty of candor and good faith, requiring the correction of any errors or omissions before submission. While there is no general duty to disclose AI’s use in drafting unless specifically asked, practitioners must ensure their submissions are legally sound and factually accurate and consult with their clients about the representation methods used.

More specifically, submissions to the TTAB and trademark applications that utilize AI tools require meticulous review to ensure accuracy and compliance with the applicable rules. This is vital for all documents, including evidence for trademark applications, responses to office actions, and legal briefs, to ensure they reflect genuine marketplace usage and are supported by factual evidence. Special attention must be given to avoid the inclusion of AI-generated specimens or evidence that misrepresents actual use or existence in commerce. Materials produced by AI that distort facts, include irrelevant content, or are unduly repetitive risk being deemed as submitted with improper intent, potentially leading to unnecessary delays or increased costs in the proceedings.

Filling out Forms:

AI tools can enhance the efficiency of filing documents with the USPTO by automating tasks such as form completion and document uploads. But users must ensure their use aligns with USPTO rules, particularly regarding signatures, which must be made by a person and not delegated to AI. Users are reminded that USPTO.gov accounts are limited to use by natural persons. AI systems cannot hold such accounts, emphasizing the importance of human oversight in submissions to ensure adherence to USPTO regulations and policies.

Automated Access to USPTO IT Systems:

The guidance notes that when utilizing AI tools to interact with USPTO IT systems, it is crucial to adhere to legal and regulatory requirements, ensuring authorized use only. Users must have proper authorization, such as being an applicant, registrant, or practitioner, to file documents or access information. AI systems cannot be considered “users” and thus are ineligible for USPTO.gov accounts. Individuals employing AI assistance must ensure the tool does not overstep access permissions, risking potential revocation of the applicable USPTO.gov account or face other legal risk for unauthorized access. Additionally, the USPTO advises against excessive data mining from USPTO databases with AI tools. The USPTO reminds readers that it provides bulk data products that could assist in these efforts.