Written by Marissa B. Lewis Yesterday, Congress’s omnibus spending and COVID-19 relief bill, H.R. 133, was signed into law. Buried in the legislation are two new acts that potentially have sweeping implications for intellectual property owners. The Trademark Modernization (“TM”) Act and the Copyright Alternative in Small-Claims Enforcement (“CASE”) Act introduce measures that are poised to significantly impact the way that trademark and copyright owners … Continue reading Another COVID-19 Surprise: Important New Trademark and Copyright Legislation Buried In Spending and Relief Package
Written by Eleanor M. Lackman and Samantha W. Frankel The U.S. Supreme Court has held that a generic word combined with “.com” is entitled to federal trademark registration if consumers perceive the combined mark as nongeneric. United States Patent & Trademark Office v. Booking.com B. V., No. 19-46, 2020 WL 3518365 (U.S. June 30, 2020). In an 8-1 decision, the Court held that because Booking.com … Continue reading SCOTUS Rejects Per Se Rule Against Trademark Protection for Generic.com Terms
A recent precedential opinion from the U.S. Patent & Trademark Office Trademark Trial and Appeal Board (TTAB), Shannon DeVivo v. Celeste Ortiz, Opposition No. 91242863 (TTAB Mar. 11, 2020), challenges the well-established concept that a single title of a book cannot be a trademark, leaving a wide opening for those who seek to register terms previously considered non-registerable.
In the DeVivo proceeding, Celeste Ortiz sought to register the term ENGIRLNEER for cups and mugs, lanyards, and shirts and sweatshirts. Shannon DeVivo, the owner of two pending trademark applications for the term for children’s books, notebooks, and a website offering information to young women and girls seeking careers in stem cell research opposed the application, citing likely confusion. On an accelerated case procedure, the TTAB sustained the opposition, partly relying on the fact that DeVivo had used ENGIRLNEER on the cover of a single book, which the TTAB surprisingly found to be a trademark use. Continue reading “Judging a Book by Little More than Its Cover: TTAB Finds that Single Book May Meet Trademark-Use Test”
The USPTO Extends Certain Trademark Deadlines Amid COVID-19 Disruptions
The United States Patent and Trademark Office (“USPTO”) announced earlier this week a thirty-day extension of certain trademark deadlines due to the ongoing COVID-19 pandemic. The extension applies broadly to trademark deadlines that fall between March 27, 2020 and April 30, 2020, including, in particular:
- Responses to office actions, including notices of appeal from a final refusal;
- Statements of use or requests to extend the time to file a statement of use;
- Notices of opposition or requests to extend the time to file a notice of opposition;
- Priority filings;
- Transformations of international registration into a national trademark application;
- Affidavits of use or excusable nonuse; and
- Renewal applications.
Your Trademark and the COVID-19 Outbreak
This week, the U.S. Patent and Trademark Office (USPTO) announced that it considers the effects of the Coronavirus outbreak to be an “extraordinary situation” within the meaning of 37 CFR 2.146 for affected trademark applicants and trademark owners. In response, it is waiving the petition fees (set by regulation, rather than statute) that it normally charges to revive an abandoned trademark application and to reinstate a canceled or expired trademark registration if they were abandoned or canceled/expired as a result of the impact of the Coronavirus outbreak. Other trademark-related deadlines and fees will not change.
Specifically, the USPTO is waiving the petition fee to revive an abandoned application or to reinstate a canceled or expired registration if it was abandoned or canceled/expired “due to an inability to timely respond to a trademark-related Office communication as a result of the effects of the Coronavirus outbreak.” A petition must be accompanied by a statement that explains “how the failure to respond to the Office communication was due to the effects of the Coronavirus outbreak.” Continue reading “COVID-19 Triggers Savings”
On February 15, 2020, the United States Patent and Trademark Office’s (USPTO) new rules will go into effect (84 Fed. Reg. 37081) requiring applicants, registrants, and parties to a proceeding before the Trademark Trial and Appeal Board (TTAB) to provide their own email address to receive USPTO correspondence, and file all trademark submissions electronically using the Trademark Electronic Application System (TEAS), with limited exceptions. In addition, the new rule amends the requirements for specimens in accordance with the Trademark Act and precedential case law.
Requirement to Provide Applicant, Registrant and Party Email Address
As of February 15, 2020, applicants, registrants, and parties to a proceeding before the TTAB, will be required to provide and maintain their own valid email address for receipt of correspondence from the USPTO. This requirement is in addition to the attorney address that is already required. The applicant’s, registrant’s, or party’s email address will be publicly displayed along with other contact information already available in the USPTO’s public database. Continue reading “New USPTO Guidelines for Electronic Filings and Specimens”
The U.S. Patent and Trademark Office (USPTO) published a new rule on July 2, 2019, requiring trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings whose domicile is not located within the United States or its territories to be represented before the USPTO by a U.S.-licensed attorney as of August 3, 2019. Domicile is typically defined as the permanent legal place of residence of an individual or the headquarters of an entity. The rule does not retroactively apply to applications filed before August 3, 2019, but impacts such applications if an office action is issued on or after August 3, 2019, requiring the applicant to designate a U.S.-licensed attorney to respond. This rule is intended to streamline trademark registrations and reduce the potential of invalidations by providing the USPTO a more efficient way to enforce statutory and regulatory requirements.
Here are 10 ways to build a rock-solid foundation for your new company and avoid constructing a masterpiece on top of quicksand:
- Make sure your company’s name isn’t already taken. As a starting point, search the name on Google and other Internet search engines. Then search the U.S. Patent and Trademark Office website (uspto.gov). Important: repeat this process each time you pick the name of a new product or service.
- Check if the domain name you want is available – if so, get it. Create Twitter, Facebook and Instagram accounts for your company, and start using them. Continue reading “Intellectual Property Tips”