In a year too often filled with unforeseen developments of every kind, a final surprise for many who were not paying close attention has emerged from December’s marathon stimulus and budget negotiations. This week, Congress included a trio of notable and hotly debated intellectual property measures in its multi-trillion-dollar spending and relief package. These bills, if signed into law as expected, could fundamentally alter the manner in which intellectual property owners protect and enforce their rights.
On November 17, 2020, the USPTO enacted a rule that will adjust trademark fees and Trademark Trial and Appeal Board fees. This is the first time that trademark fees have been adjusted since 2017. In the final rule, the USPTO says that the increase in fees is intended to further USPTO strategic objectives by better aligning fees with costs, protecting the integrity of the trademark register, improving the efficiency of agency processes, and ensuring financial sustainability to facilitate effective trademark operations. The new fees will take effect on January 2, 2021.
O Canada. Ohhh, Canada! – Delays and Restrictions on Trademark Registrations
With the assistance of local Canadian counsel, we frequently assist U.S. parties that use their marks in Canada to pursue registrations for their marks with the Canadian Intellectual Property Office (CIPO). That process changed fairly significantly when revisions to Canada’s Trademarks Act took effect in June 2019. The most obvious changes, relating to new requirements for identifying and classifying goods and services, lengthened the registration process. Add in circumstances relating to COVID-19, and delays in Canada have become the thing of which legends are made. Indeed, CIPO is currently taking approximately two years for the initial review of an application.
Continue reading “U.S. Parties Seeking to Register Their Marks in Canada Currently Face Increased Delays and Added Potential Bars to Registration”
Nearly a year ago, we previewed the U.S. Supreme Court’s then-upcoming decision in Romag Fasteners, Inc. v. Fossil Group, Inc.—a case set to provide some much needed clarity on the question of whether plaintiffs in trademark infringement cases must demonstrate that defendants acted willfully in order for plaintiffs to recover defendants’ profits.
Justice Gorsuch delivered the opinion of the Court resolving the circuit split on this issue and holding that a plaintiff alleging trademark infringement under § 1125(a) of the Lanham Act is not required to prove willful infringement as a precondition to recovering lost profits. The Court reasoned that the clear and unambiguous language of the Lanham Act’s remedies provision only requires a precondition of willfulness when awarding profits for trademark dilution under § 1125(c), not trademark infringement under § 1125(a). The Court was careful to note that willfulness, though not a precondition to awarding profits, remains an important factor a court should consider when assessing damages. It simply is not, however, an “inflexible” threshold inquiry.
Whether you’re paying big bucks for a Kardashian or providing discount coupons to a local star, hiring “influencers” to promote your company, products or services has become commonplace. But it’s not yet common to contract with influencers for their services. And that’s a mistake! If you’re hiring an influencer, you should strongly consider a written agreement.
But first, what is an influencer?
An “Influencer” is: An individual who has the power to affect purchase decisions of others because of his/her authority, knowledge, position or relationship with his/her audience. For legal purposes, an influencer is anybody your company is compensating to post, print, or otherwise disseminate information for a commercial purpose.
The United States Patent and Trademark Office (USPTO) recently released a warning regarding email scams targeting owners of trademark applications and registrations. Unfortunately, misleading notices and solicitations are nothing new for those experienced with filing applications with the USPTO. Because filings with the USPTO are public, private companies are able to gather the contact information of trademark applicants and registrants. They use this information to send misleading letters and emails asking brand owners for substantial fees in order to renew or maintain trademark applications and registrations. These companies often go by names that sound like official government agencies, which increases the confusion and the likelihood that brand owners will be duped into responding to the solicitations.
What do you think of when you hear this lion’s roar
How about these five notes?
Or these words?
In 2017, we wrote about some of our favorite strategies for updating the ownership of global trademark portfolios. As we continue to support our clients during the pandemic, we’ve developed new strategies for documenting trademark ownership updates outside the U.S. Here, we share a few of these tips.
In this post, we focus on transferring — or assigning — trademark portfolios involving marks in multiple countries. Generally, the transfer of trademark rights from one entity to another must be documented with the trademark office in every country where the assignor owned marks. The requirements for recording a transfer vary by country but often involve submitting newly executed trademark assignment agreements, powers of attorney and other documents. These documents may also need to be notarized or legalized before submission.
Amidst public criticism and pressure from corporate sponsors, many well-known brands are taking a hard look at their trademarks and choosing to move in a new direction. These changes are impacting brands in various industries from sports teams, like the currently unnamed Washington NFL team, to retailers, like Trader Joe’s. While appeasing the call for change, an unfortunate consequence with which these brand owners must deal are trademark trolls.
The basic premise that a generic term is un-registrable is, at first glance, uncontroversial. If a key purpose of a trademark is to identify a particular source of goods or services, then it stands to reason that one cannot obtain a trademark registration for the name of that very category of goods or services. For example, it’s unlikely one could register the mark “Books” for a bookstore, or “Groceries” for a supermarket—doing so would effectively grant the owner a monopoly on the use of those very terms. But what if those ostensibly generic terms were part of a website domain?