Kelly M. Horein is an associate on the Trademarks team of the firm’s Intellectual Property Practice Group.
Kelly’s practice encompasses all aspects of brand management, including domestic and international trademark clearance, registration, and enforcement. When litigation is necessary, Kelly assists clients with disputes, including trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, and trademark litigation in federal court. In addition, Kelly prepares and negotiates intellectual property agreements, counsels businesses on website development and social media issues, and assists them with assessing product packaging for compliance.
The new ex parte expungement and reexamination proceedings, introduced by the Trademark Modernization Act, are intended to be efficient ways of removing improper trademark registrations from the register.
But will expungement or reexamination always be the best strategy for challenging a trademark registration?
The Nuts and Bolts of Expungement and Reexamination
You may remember our blog post here, discussing the Trademark Modernization Act of 2020, which became law at the end of last year. To implement the Trademark Modernization Act, the United States Patent and Trademark Office (USPTO) has proposed changes to the trademark rules of practice, which we begin to explore in the following post. Over the coming weeks and months, stay tuned for further commentary, insights and practice tips on these proposed changes!
According to Commissioner for Trademarks David Gooder, during a recent USPTO virtual roundtable event, “protecting the integrity of the US trademark register is, and will remain for some time, one of our top priorities.” Keeping the register clear of improperly obtained trademark registrations helps ensure that legitimate businesses can register their marks with the USPTO, and enforce those rights against infringers.
In February 2020, Faegre Baker Daniels and Drinker Biddle & Reath LLP combined to form one of the nation’s 50 largest law firms. Soon after the combination, Faegre Drinker shifted to a virtual work environment to protect our clients, colleagues and loved ones during the global COVID-19 pandemic. We nevertheless remained committed to the success of our clients in a challenging year, and focused on serving clients with our new firm’s combined capabilities.
This month marks not only the first year of Faegre Drinker, but also the inaugural year of TCAM Today – Faegre Drinker’s blog covering all things trademark, copyright, advertising and media. In 2020, Faegre Drinker’s team of more than 30 T-CAM professionals shared their insight on topics ranging from social media influencers to trademark trolls.
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.
On May 27, 2020, the United States Patent and Trademark Office announced updated measures granting relief for trademark owners impacted by the COVID-19 pandemic.
The deadline extensions that the USPTO announced through previous notices will expire on May 31.
The USPTO will now provide relief on a case-by-case basis for mark owners who have missed certain deadlines as a result of the pandemic. In particular, if mark owners have failed to timely submit responses or fees in connection with Office Actions, or failed to timely meet statutory deadlines, they may file a petition to revive an application or a petition to the director, as appropriate. The petition should explain that the delay in filing or payment was due to the pandemic. For now, if such a statement is included, the USPTO will waive the fees associated with filing the petition.
If the pandemic has interfered with filings with the Trademark Trial and Appeal Board, mark owners may make a request or motion, as appropriate, for an extension or reopening of time.
We’ll continue to post updates here. If you have missed a deadline and wish to better understand the steps you can take to continue protecting your trademark rights, please feel free to contact the Faegre Drinker trademark team.
Wondering why you haven’t received any updates on the progress of your client’s Madrid Protocol application designating Canada? After reading that question, are you wondering what on earth a Madrid Protocol application is?
Let’s take a step back. The Madrid system is a mechanism that facilitates the registration of trademarks in multiple jurisdictions around the world. One way to file trademark applications in multiple jurisdictions is to engage local counsel in each jurisdiction of interest and work with counsel to file individual applications. By using the Madrid system, however, a trademark owner can file a single international trademark application with the World Intellectual Property Organization (WIPO), and designate one or more jurisdictions based on just this one application.
If you own a U.S. trademark registration, chances are you’ve received official-looking solicitations offering to handle trademark services on your behalf in return for a fee. Read these notices carefully – more often than not, they don’t come from the United States Patent and Trademark Office (USPTO). Instead, they’re sent by private companies that have obtained your contact information from the publicly accessible USPTO trademark database. Worse than that, these notices may ask trademark owners to pay thousands of dollars in fees in exchange for services that aren’t even timely or necessary.
Businesses operating in the European Union may be familiar with the concept of “seniority.” By claiming seniority, an owner of an EU trademark registration may be able to claim prior rights based on existing national trademark registrations in EU member countries. To illustrate when a business might claim seniority, take the following example:
We tend to think that trademarks, in general, are pretty special.
However, a “special” trademark application has a … well … special meaning to the PTO. The PTO normally examines applications in the order it receives them, which can take about three to four months. That said, there are two ways to make an application “special” so that the PTO will pull the application out of order and expedite its initial examination.
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