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Trademark owners should be aware of several recent USPTO updates that may significantly affect them. Most notably, the United States Patent and Trademark Office has recently implemented the Trademark Modernization Act. Passed in December 2020 — and effective as of December 18, 2021 — the Act will have a substantial impact on trademark policies and proceedings moving forward. While the Act’s main objective is to remove trademark registrations that are no longer in use, it also provides individuals and businesses with new tools to safeguard their marks.
As part of the Consolidated Appropriations Act signed into law on December 27, 2020, the Trademark Modernization Act was introduced to strengthen the federal trademark register’s accuracy. The Act also provides trademark owners with more ways to fight infringement and oppose trademark applications and registrations. The four key aspects of the Trademark Modernization Act that trademark owners should know about include the following:
Under the Act, new ex parte expungement and reexamination proceedings offer a more efficient and cost-effective way to challenge a trademark registration based on non-use. Although the two proceedings are similar, an expungement proceeding can be brought when the mark was never used in connection with the goods or services indicated in the registration. Expungement proceedings may only be brought between the third and tenth anniversaries of the trademark registration.
A reexamination proceeding can be brought at any point up to the fifth anniversary of the mark’s registration. However, the main difference between the two types of proceedings is that in a reexamination proceeding, the challenger alleges the mark was not used in connection with the goods or services at the time the owner purported to the USPTO that it was.
Under the Act, the amount of time an applicant has to respond to a refusal is reduced from six months to between sixty days and six months. Ultimately, trademark owners will need to act quickly and keep track of any applicable deadlines. If an applicant requires an extension, it will come with a fee.
For decades, the USPTO has informally allowed any party to submit evidence to challenge a third party’s application by submitting a letter of protest. But now, there are specific guidelines to follow. The procedure for submitting letters of protest and the information that must be included in them is clearly outlined in the Act. Additionally, the Act states the amount of time the USPTO has to consider letters of protest and allows a fee to be charged for submission.
For a court to grant injunctive relief to a trademark owner, it must be shown that the harm cannot be remedied with monetary damages. In other words, a trademark owner must demonstrate that they’ve suffered irreparable harm. While courts have acknowledged the presumption of irreparable harm for many years, certain jurisdictions began to follow the precedent established by a 2006 U.S. Supreme Court case that concerned patent ownership. Because of the Act, injunctions should be easier to obtain for trademark owners.
At the USPTO’s Trademark Public Advisory Committee quarterly meeting, the Deputy Commissioner for Trademark Operations addressed the surge in trademark application filings that has taken place over the past year. The substantial increase in filings has slowed down the process of clearing marks and examining them. However, the USPTO reported that it is currently dealing with the backlog and hopes to reduce the six-month first action pendency time during 2022.
At the meeting, the USPTO also discussed the procedures for verifying U.S. counsel. Importantly, under the U.S. counsel rule, foreign domiciled applicants or parties in a trademark proceeding must be represented by an attorney in the U.S. In an effort to combat instances in which applicants attempt to circumvent the U.S. counsel rule, the USPTO has set up a task force to investigate false attorney names and addresses — in addition to false claims of use and fake specimens.
If you’re a business owner or entrepreneur, it is critical to have an experienced trademark attorney by your side who can ensure your mark is adequately safeguarded, and your interests are protected. Located in Ann Arbor, Michigan, the Trademark Lawyer Law Firm, PLLC offers high-quality legal services to trademark owners in a wide variety of industries. Providing an extensive range of trademark services, we are dedicated to helping ensure our clients’ entrepreneurial successes. Contact us today to schedule a free 15-minute consultation.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
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