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.
“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.
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.
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.