The fourth blog post in our continuing series on The Trademark Modernization Act of 2020 (TMA) comes on the heels of the July 19, 2021, deadline for the public to submit comments on the proposed rules. As discussed by our TCAM blog here, here, and here, the majority of the TMA is to take effect on December 27, 2021, with the flexible response period provisions following in 2022. This blog post highlights some of the proposed rules relating to attorney recognition, revocation, and withdrawal.
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.
So you’re thinking about changing your company name, brand, or both. We usually like to allow at least a few months to identify the new name and initiate protection. To help you plan, here’s a high-level overview of significant steps in the process. Happy rebranding!
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.
“Please list your trademarks.”
For many companies this simple request is surprisingly difficult to answer. Sure, maybe they have a few registration certificates in a drawer, or a docket sheet from their outside counsel, but what exactly does it mean to “have” a trademark? And how many of them do you have? And why do so many companies only notice they have a trademark after a competitor starts to infringe it?
Last month, in her fantastic post on trademark audits, our colleague Emily Bayton discussed the critical first step any company must take in order to answer those questions: understanding the scope of the official parts of your portfolio. What registrations are in your name? What jurisdictions do they cover? What rights do you license? How is your portfolio managed, and should your approach be changed? Without a real inventory – married to a regular analysis of needs and future plans – trademark portfolios can remain stuck in the past, designed to fight old competitive battles and failing to capitalize on new opportunities.
New Year’s resolutions are often thought of as individual self-improvement goals that frequently include aspirational health and wellness, financial discipline, habit forming or breaking, and similar goals. But these aspirational, improvement-focused goals do not need to be limited to personal goals. In fact, the “New Year, New You” mantra applies equally to the business world. The new year is a great time to push the reflect and reset button and to use the results of this reflection to accomplish business goals, including goals related to the company’s trademark portfolio. Finding time in the new year to conduct reflection in the form of an in-depth review of your trademark portfolio (often referred to as a trademark audit) can be a meaningful and important exercise for a number of reasons, including ensuring there are no significant gaps in coverage or other issues associated with your trademark portfolio that could negatively impact your business, such as compliance issues with requirements and deadlines for maintaining trademark rights, chain-of-title concerns, or improper use of trademarks that could impact the company’s rights. In addition, an audit, when performed correctly, can also provide a critical roadmap for the company for its trademark portfolio going forward.
Updated May 29, 2020
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.
Faegre Drinker Biddle & Reath LLP (Faegre Drinker) launched global operations on February 1, 2020. Faegre Drinker is the combination of Faegre Baker Daniels, an international law firm with deep roots in the Midwest, and Drinker Biddle & Reath LLP, a full-service national law firm with storied East Coast origins.
With more than 1,300 attorneys, consultants and professionals in 22 locations across the U.S., U.K. and China, Faegre Drinker is one of the nation’s 50 largest law firms based on size and projected gross revenue.
We are very excited to introduce TCAMToday, Faegre Drinker’s successor to the DB®anding Blog. Our newly expanded team of over 30 T-CAM professionals will continue to provide fresh commentary on Trademark, Copyright, Advertising and Media topics ranging from anticounterfeiting to sweepstakes and promotions. Watch this space!
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.