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?
Before a mark can become registered in the United States, a trademark applicant must usually provide evidence that its mark is in use. Furthermore, to maintain the trademark registration the registrant must periodically show it is still using the mark in commerce. Unfortunately, the federal trademark registers are cluttered with marks that are not actually in use, and which potentially block legitimate trademarks from becoming registered. To address these issues, Congress enacted The Trademark Modernization Act of 2020 (TMA) as part of the coronavirus relief bill. See our discussion here. The TMA is to take effect on December 27, 2021, and the U.S. Patent and Trademark Office (USPTO) published its proposed rules to implement provisions of the TMA on May 18, 2021. The USPTO is accepting comments about the proposed rules until July 19, 2021.
Some of the proposed new procedures to streamline the removal of unused trademarks from the register are discussed here. The TMA also provides for flexible office action response periods during the prosecution of a trademark application, which the USPTO expects to go into effect on June 27, 2022. Currently, if an office action issues during the examination of a trademark application, an applicant must file a response within six months. The TMA, however, allows the Examiner to set a response period between 60 days and 6 months, with extensions available. For example, an Examiner may set a shortened period to respond to formalities such as amendments to identifications of goods and services or mark descriptions. To respond, however, to a more complex issue such as a likelihood of confusion refusal, an Examiner may set a longer response period to allow an applicant to investigate and gather evidence.
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.
While the legal industry is typically not known as being cutting edge when it comes to adopting innovative technologies, the U.S. Patent and Trademark Office (USPTO) is taking big steps forward on seeing whether artificial intelligence (AI) may be used during patent and trademark examination to create greater efficiency and consistency with respect to certain routine, high-volume tasks. AI, a technology that refers to “smart” machines that simulate human intelligence, is being examined in many industries to potentially eliminate redundant and routine tasks, and the USPTO is trying to determine whether AI is right for it. Does this mean that future USPTO examiners will be more like C3PO? No. But AI could handle more-routine tasks, which would allow examiners to focus on more-substantive matters related to the examination of trademark and patent filings.
We’ve all been there. Maybe we find it in reviewing the chain of title for trademarks during due diligence. Maybe it’s something that another company filed that has nothing to do with us. Or maybe someone on your team made a typo (yup, no one is perfect!). But, however it happened, it’s there, in the USPTO records: an assignment inadvertently recorded against a registration that was not actually part of the assignment; a security interest recorded against the wrong application number; or a name change was erroneously recorded as a merger. Regardless of why or what, the bottom line is the same: there is an error in the chain of title for the application or registration. Oops! Now what? How do we get that error fixed and removed from the USPTO trademark records?
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 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.
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?