[E-trademarks] Notice of Data Security Incident

Fri Jun 7 19:29:59 UTC 2024

all the examples they provided are instances in which the
customer initiated contact/requested support, e.g. willingly provided their
own email or information for non-application purposes. Doesn't seem to
justify the use of applicant contact info provided within the scope of an
application when they're represented by an attorney.

<https://www.ioninlaw.com/>

JACLYN IONIN, ESQ.
Owner, Principal Attorney, Ionin Law
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  Trademark & Business Law
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[image: App Banner Image]

On Fri, Jun 7, 2024 at 1:12 PM Tim Ackermann via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> I did ask the USPTO office about this. For the sake of completeness, I am
> pasting in below my inquiries to the USPTO, along with its responses
> seeking to justify its violation of the rules.
> Tim Ackermann
> The Ackermann Law Firm
> *Inquiry 1:*
>  This is a result of the recent "data security incident that impacted
> domicile information in certain trademark application data made available
> between August 23, 2023, and April 19, 2024". The USPTO email I got is
> below.
>  I have seen an email that tells me that, at the same time I was notified
> by the USPTO, it also notified one of my clients directly (well, at least
> one). The USPTO notified my client by using the email that it has demanded
> clients include in the applicant information. That's the only way it had
> that email and had it tied to the relevant applications. What I do not
> understand is why the USPTO is violating its own rules to do so?
>  This notice concerned a pending application. The USPTO notification email
> should ONLY have come to me. I am counsel of record; I filed the
> application and thus am 'recognized' under R. 2.17(b). I am the only
> correspondent and the correspondence emails only come to me. The USPTO
> should not have contacted the client directly, because the USPTO is
> required by Rule 2.18 to "only" correspond with that recognized attorney,
> except under circumstances that do not apply (e.g. recognition is improper
> or has ended).
>  Can you please explain this violation of the Regulations?
> *Response 1:*
>
> Thank you for your question. Section 2.18 of our rules of practice
> concerns an application or registration proceeding and does not apply to
> notices like the data security incident notice. We determined that sending
> the notice to the owner addresses is the best way to ensure the notice is
> received by the affected parties.
> *Inquiry 2:*
> Where, in a statute or regulation, does the USPTO get the authority to
> exclude correspondence from the USPTO to applicants from the
> requirements imposed by the Federal Regulations?Rule 2.18 merely concerns
> "correspondence" -- it does not limit itself to the legal proceeding itself
> nor is it limited to "actions" by the USPTO. It says nothing about
> excluding "incident notices" or other correspondence the USPTO might prefer
> to exempt from the Rule. Moreover, this position is inconsistent with the
> USPTO's statement in 2019 when it changed the rules to require email
> addresses. It said:
>
>> The USPTO does not undertake double correspondence with both the
>> applicant or registrant and the attorney of record. Accordingly, if an
>> applicant or registrant is represented by an attorney, the USPTO
>> corresponds and conducts business only with the attorney. [
>> https://www.federalregister.gov/
>> <https://www.federalregister.gov/documents/2019/07/31/2019-16259/changes-to-the-trademark-rules-of-practice-to-mandate-electronic-filing> at
>> 37088]
>
> *Response 2:*
> It is not in conflict with our rules, nor is it unusual, for the USPTO to
> communicate directly with customers on matters that are outside the
> representation of their legal counsel. For instance, a customer who is
> represented by an attorney may communicate directly with the USPTO about
> administrative matters pertaining to that customer, such as details
> concerning their USPTO.gov account, stored fee payment information, and
> other matters related to the management of their personal information in
> USPTO systems. They also may communicate directly with the FOIA Office
> about filing a FOIA request or the Office of Enrollment and Discipline
> about filing a grievance. Because this is closely connected to the
> management of their personal information in USPTO systems, and has no
> bearing on the prosecution of the application or registration, this falls
> within the ambit of the Office’s authority to communicate directly with
> customers on these types of issues regardless of representation. This is
> supported by the fact that the communication comes from the CIO, and not
> the Commissioner for Trademarks.
>
> E:  tim at ackermannlaw.com
> P:  817.305.0690
> F:  214.453.0810
> W: ackermannlaw.com
> O: 1701 W. Northwest Hwy. Ste. 100
>      Grapevine TX 76051
>
>
> On Mon, May 13, 2024 at 10:23 AM Kevin Grierson <kgrierson at cm.law> wrote:
>
>> You’re not missing anything.  The PTO is behaving like a rogue agency
>> that doesn’t need to follow its own rules (or the APA, for that matter),
>> because the courts have been unwilling to hold it accountable in that
>> regard.
>>
>>
>>
>> *Kevin Grierson*
>>
>> [image: Mobile:]
>>
>>   757-726-7799
>>
>> [image: Fax:]
>>
>>   866-521-5663
>>
>> [image: Email:]
>>
>>   kgrierson at cm.law
>>
>>
>>
>> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On
>> Behalf Of *Tim Ackermann via E-trademarks
>> *Sent:* Monday, May 13, 2024 10:52 AM
>> *To:* Carl Oppedahl <e-trademarks at oppedahl-lists.com>
>> *Cc:* Tim Ackermann <tim at ackermannlaw.com>
>> *Subject:* Re: [E-trademarks] Notice of Data Security Incident
>>
>>
>>
>> EXTERNAL EMAIL
>>
>> And... it gets worse.
>>
>>  At the same time the USPTO notified me, it also notified (at least) one
>> of my clients. This was a client whose required chosen email address is one
>> that goes to them.
>>
>> I, of course, have no idea my client got this information (until asked
>> about it).
>>
>>  This is a pending application. Why would a client have received any
>> communication from the USPTO on this? I am counsel of record; I filed the
>> application and thus am 'recognized' under R. 2.17(b). I am the only
>> correspondent. The USPTO should not have contacted the client
>> directly, because the USPTO is required by Rule 2.18 to "only" correspond
>> with that attorney except under circumstances that do not apply (e.g.
>> recognition is improper or has ended).
>>
>>  Or am I missing something here?
>>
>>  Sincerely,
>>
>> Tim Ackermann
>>
>> The Ackermann Law Firm
>>
>> E:  tim at ackermannlaw.com
>> P:  817.305.0690
>> F:  214.453.0810
>> W: ackermannlaw.com
>> O: 1701 W. Northwest Hwy. Ste. 100
>>      Grapevine TX 76051
>>
>>
>>
>>
>>
>> On Tue, May 7, 2024 at 1:30 PM Tim Ackermann <tim at ackermannlaw.com>
>> wrote:
>>
>> FYI - the Office disclosed domicile information (again, I think). Then it
>> says this:
>>
>> You are receiving this notice because your email address is listed as the
>> contact for the trademark owner in at least one of these
>> applications. There is no action you need to take with the United States
>> Patent and Trademark Office (USPTO), but in the interest of full
>> transparency, we are bringing this matter to your attention.
>>
>>  "Full transparency" evidently does not include telling me WHOSE domicile
>> information the Office failed to protect.
>>
>> Tim
>>
>> Tim Ackermann
>>
>> The Ackermann Law Firm
>>
>> E:  tim at ackermannlaw.com
>> P:  817.305.0690
>> F:  214.453.0810
>> W: ackermannlaw.com
>> O: 1701 W. Northwest Hwy. Ste. 100
>>      Grapevine TX 76051
>>
>>
>>
>> ---------- Forwarded message ---------
>> From: *U.S. Patent and Trademark Office* <
>> subscriptioncenter at subscriptions.uspto.gov>
>> Date: Tue, May 7, 2024 at 1:16 PM
>> Subject: Notice of Data Security Incident
>> To:
>>
>>
>>
>> Having trouble viewing this email? View it as a Web page
>> <https://lnks.gd/l/eyJhbGciOiJIUzI1NiJ9.eyJidWxsZXRpbl9saW5rX2lkIjoxMDAsInVyaSI6ImJwMjpjbGljayIsInVybCI6Imh0dHBzOi8vY29udGVudC5nb3ZkZWxpdmVyeS5jb20vYWNjb3VudHMvVVNQVE8vYnVsbGV0aW5zLzM5YjAxZDUiLCJidWxsZXRpbl9pZCI6IjIwMjQwNTA3Ljk0NDQ0NTQxIn0.lPX5Tcez0j8ETMY8H5biSOPbRU22zmq98an3_yHu_zQ/s/3003983680/br/242027980700-l>
>> .
>>
>>
>> USPTO Alert
>>
>> [image: US Patent and Trademark Office]
>> Notice of Data Security Incident
>>
>> Dear valued customer,
>>
>> We recently identified a data security incident that impacted domicile
>> information in certain trademark application data made available between
>> August 23, 2023, and April 19, 2024. You are receiving this notice because
>> your email address is listed as the contact for the trademark owner in at
>> least one of these applications.
>>
>> There is no action you need to take with the United States Patent and
>> Trademark Office (USPTO), but in the interest of full transparency, we are
>> bringing this matter to your attention.
>> What happened and what information was involved?
>>
>> U.S. trademark law requires applicants to include their domicile
>> addresses in trademark applications. This helps us determine if applicants
>> are required to hire a U.S.-licensed attorney to represent them before our
>> agency (called the U.S. counsel rule
>> <https://lnks.gd/l/eyJhbGciOiJIUzI1NiJ9.eyJidWxsZXRpbl9saW5rX2lkIjoxMDEsInVyaSI6ImJwMjpjbGljayIsInVybCI6Imh0dHBzOi8vd3d3LnVzcHRvLmdvdi90cmFkZW1hcmtzL2xhd3MvdHJhZGVtYXJrLXJ1bGUtcmVxdWlyZXMtZm9yZWlnbi1hcHBsaWNhbnRzLWFuZC1yZWdpc3RyYW50cy1oYXZlLXVzP3V0bV9jYW1wYWlnbj1zdWJzY3JpcHRpb25jZW50ZXImdXRtX2NvbnRlbnQ9JnV0bV9tZWRpdW09ZW1haWwmdXRtX25hbWU9JnV0bV9zb3VyY2U9Z292ZGVsaXZlcnkmdXRtX3Rlcm09IiwiYnVsbGV0aW5faWQiOiIyMDI0MDUwNy45NDQ0NDU0MSJ9.58SI_D6d9vFd-QBeOLn3g5kVWrR0AzgNl590e31YpOU/s/3003983680/br/242027980700-l>).
>> The U.S. counsel rule is an important tool in combatting fraudulent
>> trademark filing activity.
>>
>> On April 19, 2024, we discovered there were domicile addresses that
>> should have been hidden from public view but which were inadvertently
>> exposed as we transitioned to a new IT system. These addresses appeared in
>> records that could have been retrieved through a bulk data set on our
>> website. This data set is typically used in academic and economic research.
>>
>>
>> At no point were the impacted domicile addresses visible when users
>> searched trademark records through our search system or our trademark
>> documents database.
>>
>> Importantly, this incident was not the result of malicious activity, and
>> we have no reason to believe that your domicile information has been
>> misused. Nevertheless, we take all data security concerns seriously, and
>> we’ve implemented corrective measures.
>> How we addressed the issue
>>
>> When we discovered the issue, we blocked access to the impacted bulk data
>> set, removed files, implemented a patch to fix the exposure, tested our
>> solution, and re-enabled access.
>> Moving forward
>>
>> We’re committed to data security and are taking steps to prevent
>> incidents like this from happening in the future. We sincerely regret this
>> error and are updating our process for creating and publishing bulk data
>> files. Additional testing, spot checks, and process improvements will help
>> us ensure domicile addresses in the bulk data are properly masked going
>> forward.
>> For more information
>>
>> We will not send additional notices or communications regarding this
>> incident. If you’re contacted about the incident by anyone you believe is
>> impersonating the USPTO, or if you have any questions or concerns, please
>> contact TMdomicile at uspto.gov.
>>
>> Sincerely,
>>
>> [image: Jamie Holcombe pen signature]
>>
>> Henry “Jamie” Holcombe
>> Chief Information Officer
>> U.S. Patent and Trademark Office
>>
>>
>>
>> [image: facebook]
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>> twitter]
>> <https://lnks.gd/l/eyJhbGciOiJIUzI1NiJ9.eyJidWxsZXRpbl9saW5rX2lkIjoxMDMsInVyaSI6ImJwMjpjbGljayIsInVybCI6Imh0dHA6Ly90d2l0dGVyLmNvbS91c3B0bz91dG1fY2FtcGFpZ249c3Vic2NyaXB0aW9uY2VudGVyJnV0bV9jb250ZW50PSZ1dG1fbWVkaXVtPWVtYWlsJnV0bV9uYW1lPSZ1dG1fc291cmNlPWdvdmRlbGl2ZXJ5JnV0bV90ZXJtPSIsImJ1bGxldGluX2lkIjoiMjAyNDA1MDcuOTQ0NDQ1NDEifQ.8xnrJivZ5gYD2pe41mzkdfrDjx5r5BuN7wwSxeNJ0TE/s/3003983680/br/242027980700-l>[image:
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>>
>>
>>
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