USPTO Expands Random Audit Program

On July 29, 2019, the USPTO hosted a panel discussion outlining the details of its newly-expanded random audit program, as part of its ongoing efforts to declutter the U.S. federal trademark Register.

Originally launched as a pilot program in 2012, the Random Audit Program was made permanent in November 2017, requiring additional proof of use for goods and services covered by over 4,600 registrations. The USPTO has now announced that it plans to expand the program to audit approximately 5,000 registrations each year and has reemphasized that the U.S. trademark registration system protects only those trademarks and service marks actually in use in U.S. commerce – and can not be used as a reservation of rights system.

What Kinds of Registrations are Subject to Audit? Continue reading

USPTO Published Final Rule Mandating Complete Trademark Electronic Filing

Today the USPTO published the long-awaited final rule mandating “complete end-to-end” electronic filing in all trademark matters. “Changes to the Trademark Rules of Practice to Mandate Electronic Filing,” 84 Fed. Reg. 37081 (July 31, 2019); additional details can be found on the Federal Register’s summary page. The rule becomes effective on October 5, 2019.

Continue reading

Are There Deadlines to File Copyright Infringement Suits?

This article is the second in a series, analyzing the Supreme Court’s decision in Fourth Estate Public Benefit Corp. v., LLC., issued on March 4, 2019.

In the briefing submitted to the Supreme Court in connection with the Fourth Estate case, the petitioner argued that a determination that the registration certificates were required before filing suit would dramatically constrict a copyright owner’s ability to stop infringements and enforce its rights in court, given the statutory time limit in which to file suit. Fourth Estate Public Benefit Corp. v., LLC, No. 17-571, 2019 WL 1005829 at ¶ 20 (U.S. Mar. 4, 2019).  The Court dismissed this concern as “overstated,” noting that “the average processing time for registration applications is currently seven months.” Id.

However, the presence of a three-year statute of limitations on filing copyright infringement actions should instruct copyright owners to be diligent in policing their rights and seeking registration as soon as possible – or at least as soon as possible after infringement has occurred (if the infringed work was not already registered), so that the owner is not precluded from recovering its actual damages or enjoining further infringement. 17 U.S.C. § 507(b) (“No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.”) (emphasis added).

When Does a “Claim” Accrue?

The date when a copyright infringement claim accrues is also the subject of a circuit split – so copyright owners must also pay attention to the rule that applies in their jurisdiction. Continue reading

Copyright Registration Certificate Must be “In Hand” Before Filing Infringement Suit

This article is the first in a series, discussing the Supreme Court’s decision in Fourth Estate Public Benefit Corp. v., LLC. issued on March 4, 2019.

Resolving a long-standing circuit split over whether copyright owners must have a copyright registration certificate in hand before filing a copyright infringement suit, the U.S. Supreme Court has ruled that it’s not sufficient to have simply filed a completed application, but that the Copyright Office must act on the application, either to grant or to refuse registration, before a copyright owner can commence a lawsuit to combat infringement. Fourth Estate Public Benefit Corp. v., LLC, No. 17-571, 2019 WL 1005829 (U.S. Mar. 4, 2019).

Copyright Registration – “Keys to the Courthouse”

Registration of a copyright in a work has long been considered the “keys to the courthouse” for copyright owners – meaning that while creative works written after 1978 were automatically protected by the Copyright Act (Eldred v. Ashcroft, 537 U.S. 186, 195 (2003) (confirming that “federal copyright protection . . . runs from the work’s creation”)), their owners could not sue for infringement until those works were registered with the Copyright Office. 17 U.S.C. § 501(b) (providing a private right of action for infringement of a copyright); id. § 411(a) (requiring registration before copyright owner was permitted to institute suit).

Incentives to Prompt Registration – Before Infringement

The Act provides several additional incentives for owners to apply for registration with the Copyright Office as soon as possible. In particular, if a work that has been registered is later infringed, the rights holder could recover statutory damages of up to $30,000 per work infringed (or up to $150,000 per work if the infringement were proven to be willful) and could recover its reasonable attorneys’ fees incurred in connection with enforcing its rights if it prevails in the case. Id. §§ 504(c), 505. Statutory damages and attorney’s fees are not available unless the work had been registered before the infringement occurred or within three months after first publication of the work. Id. § 412(2).

Prior Circuit Split – “Registration” versus “Application” Approaches

Until now, federal courts were split on the issue of whether a registration certificate was required (the “registration approach”) or whether it was sufficient to have submitted a completed application with the mandatory deposit copies and the correct filing fee to the Copyright Office for consideration (the “application approach”) before filing a complaint in federal court. Fourth Estate, 2019 WL 10055829, ¶ 4 (confirming that certiorari was granted to “resolve a division among U.S. Courts of Appeals on when registration occurs in accordance with § 411(a)); see also Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612, 615-16 (9th Cir. 2010) (collecting cases and noting circuit split); Zaslow v. Coleman, 103 F. Supp. 3d 657, 663 (E.D. Pa. 2015) (“Courts are divided over whether merely applying to the Copyright Office (the ‘application’ approach), or whether the Office issuing the registration (the ‘registration’ approach), sufficiently satisfies § 411.”). Continue reading

Why Trademark Filers Should Keep Their Correspondence Addresses Updated

The USPTO recently issued updated guidance to trademark filers about letters of protest and requesting duplicate certificates of registration, and slipped in a revision relating to how rights holders will be notified of communications from the USPTO. See Examination Guide 3-18 (Sept. 18, 2018). This guidance has now been codified in the updated Trademark Manual of Examining Procedure (“TMEP”), released October 31, 2018.

All trademark applicants are required to designate a contact person, authorized to receive correspondence from the USPTO on the applicant’s behalf.  Under the new rules, this Correspondent must also designate an email address to be used for official correspondence with the USPTO.

Prior to the release of this Examination Guide, however, if notices the USPTO sent to the email address of record for the Correspondent on the file were returned as “undeliverable”, the USPTO would send a paper copy of that message to the Correspondent’s physical mailing address, and thereby attempt to deliver the message through alternate means:

“If outgoing e-mail to a primary e-mail correspondence address of record is returned as undeliverable, the USPTO will send a paper copy to the correspondence address of record.  See TMEP §§ 304–304.09 regarding e-mail communications.” TMEP § 403 (Oct. 2017).

On May 30, 2018, the USPTO issued a Notice of Proposed Rulemaking, outlining new requirements for trademark filers to make all submissions to the Office electronically, except in certain, very narrowly defined, circumstances. Amid the straightforward requirements, there was also a single sentence on the top of page four of the notice, that confirmed that paper copies will no longer be mailed to filers after an email directed to the Correspondent of record is returned to the Office as undeliverable.  See Changes to the Trademark Rules of Practice to Mandate Electronic Filing (“Trademark Rules”), published at 83 Fed. Reg. 24701 (PTO-T-2017-0004, May 30, 2018).

During the public comment period, the ABA-IPL Section submitted comments to the proposed Trademark Rules which explained the concern:

“The Section would be concerned if the USPTO does ‘not attempt to contact the correspondent by other means’ when an email transmission fails. Email addresses frequently change as companies adopt new domain names and as staff turns over. Further, technical issues due to hardware malfunction, software bugs, or malicious cyber-attacks increase the chances for electronic communication to be disrupted. Therefore, the Section strongly encourages the USPTO to continue its practice of attempting to contact the correspondent by other means if the address of record is undeliverable, including physical correspondence by mail. TMEP §§ 403, 717.01 (Oct. 2017).”

ABA-IPL Section Letter to Hon. Mary Boney Denison at 3 (Aug. 20, 2018).

The September 18, 2018 Guidance from the USPTO (as now embodied in TMEP) confirmed that the USPTO will no longer send out paper copies of correspondence to applicants or registrants by regular mail if delivery to the email address of record (for the Correspondent) fails. See Updated Version of TMEP §§ 403, 717 (Oct. 31, 2018) (compare with the prior versions – §§ 403, 717 (Oct. 2017)). Instead, the USPTO rests the obligation on the trademark filers to keep their contact information updated.

As a result, trademark filers should be diligent in keeping their correspondent’s address updated and frequently check TSDR for any necessary updates that need to be made to their records so that no reminder emails – or other emails requiring a response – are missed.