Updates Regarding COVID-19 Impacts on Trademark Operations at the USPTO

Share

Updated May 29, 2020
[Kelly Horein]

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.

Continue reading

Faegre Drinker Goes Virtual to Combat COVID-19 Pandemic

Share

The Faegre Drinker Intellectual Property Team is committed to our clients and contacts during this difficult time. It was impossible to listen to the news of the last week and be unaffected as many ordinary things we take for granted changed so quickly. Because of the coronavirus pandemic, Faegre Drinker has asked our colleagues to work remotely until at least March 31, 2020. Like so many of you, our priority is protecting the health and safety of our colleagues, clients, visitors and their loved ones. We also want to do our part to contain the pandemic.

Continue reading

Will New FTC Endorsement Guidelines Make A #Hashtag of Influencer Advertising?

Share

In a world where social media influencers can wield more power over consumers than network media buys, the Federal Trade Commission’s (FTC) Endorsement Guides felt increasingly like a relic from an earlier era. While not wholly ineffective, the FTC’s formal guidance to businesses on the use of endorsements and testimonials in advertising was still a policy with roots in the limited media environment of the 1970s, the decade when the Guides originated. There were no Instagram influencers, no sponsored posts, and no hashtags in 1980, when the Guides were finally enacted, and even cable television was in its infancy. And despite important and well-intentioned 2009 amendments crafted during the early days of social media, so much has happened in the intervening years that the Guides never seemed fully engaged with the radical implications of a marketing environment where blurring the lines between advertising and reality is more often a feature rather than a bug.

Continue reading

Tips for Using Data Privacy Compliance to Enhance Your Brand

Share

Companies in 2020 must comply with more data privacy laws than ever before. Effective on January 1, the California Consumer Privacy Act (CCPA) contains the most complex data privacy compliance requirements in U.S. history. Some other states have their own requirements, and more states are following suit; many are considering data protection laws while their legislatures are in session.

Compliance with the CCPA and other relevant privacy laws and industry standards involves much more than a brief privacy law update and presents multiple opportunities for customer engagement. Consider using those opportunities to enhance your relationship with your customers. How companies handle consumer data has already become one way in which consumers evaluate whether to do or continue doing business with a particular company. Poorly handled data privacy issues quickly create negative customer experiences, online reviews, and bad press. Differentiate your company by handling customer data — and customer relationships — with intentionality and care.

Continue reading

Restricted Access to WHOIS Data Jeopardizes Brand Owners Online

Share

As many brand owners know, WHOIS data is the publicly available information on who has registered a particular internet domain name. In layman’s terms, WHOIS records are akin to land title or property tax records: a record of who owns the internet property of domain names available in .com, .net and other generic top-level domain (gTLD) spaces. Each WHOIS record contains basic contact information for the domain name registrant: name, address, phone number, email address and certain other technical attributes. Since the dawn of the internet, gTLD registrars and registries – those companies who sell domain names – have collected contact information from all registrants at the time of registration.

Continue reading

Introducing TCAMToday – a Faegre Drinker℠ blog on T®ademark, ©opyright, Advertising & Media

Share

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!

BIG TRUSS: A Playoff Story of Opportunism at the Trademark Office

Share

As a trademark attorney, devoted Baltimore Ravens fan, and furtive TMZ reader, I couldn’t help but notice this story authored recently, describing how Mark Ingram’s aspirations of registering BIG TRUSS in the US Trademark Office are (potentially) being blocked by someone who applied to register the phrase first.

For those uninitiated, “Big Truss” is the pet name for Ravens quarterback Lamar Jackson, coined by Mark Ingram, Ravens running back.  Mark and Lamar’s well-documented bromance is one for the ages.  The phrase first captured public attention when Mark Ingram uttered it in a November 21, 2019 press conference, although the origins of “Truss” appear to date back much further, to a 1991 album by Public Enemy, as this fascinating Baltimore Sun article explains.  The BIG TRUSS application blocking Mr. Ingram’s attempts to register the phrase was filed on December 13, 2019 – 3 weeks after the aforementioned press conference, and candidly, a lifetime in the trademark world.

Continue reading

Don’t Miss Notices from the Canadian Intellectual Property Office regarding Madrid Protocol Trademark Applications

Share

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.

Continue reading

It’s Perfect! Or, Perfecting Security Interests in Intellectual Property

Share

In our recent post, we discussed the Seven Secrets of Security Interests relevant for owners or buyers of intellectual property.  But after an IP owner grants a security interest in intellectual property, how do you make it official?

Welcome to the mysterious world known as perfection.  That’s a fancy word for filing the right documents with the correct organizations so everyone knows that the lender has that security interest in intellectual property – and to make sure that the lender has priority over other parties who might have a future interest in the IP.

Continue reading

High Court TM Profit Award Standard May Be Coming

Share

On June 28, the U.S. Supreme Court granted certiorari in Romag Fasteners Inc. v. Fossil Inc. et al., agreeing to weigh in on the question of whether plaintiffs in trademark infringement cases must demonstrate that defendants acted willfully in order for plaintiffs to receive a portion of defendants’ profits.

Whether willfulness is a prerequisite to an award of defendants’ profits in trademark infringement cases is a question that has deeply divided the U.S. circuit courts. Half of the circuits have answered the question in the affirmative.[1] The other half have answered the question in the negative.[2] These latter circuits that do not require a threshold showing of willfulness merely view willfulness as one of many factors considered in fashioning an equitable remedy.

Continue reading