Category Archives: USPTO Operations

USPTO Announces Appointment of New Commissioner of Trademarks

by Christina Frangiosa

The USPTO has just announced that the U.S. Secretary of Commerce Wilbur Ross appointed a new Commissioner of Trademarks, David Gooder, who is scheduled to start on March 2, 2020. The prior Commissioner, Mary Boney Denison, retired at the end of 2019, before a successor had been named. (See TPAC Annual Report, 2019 at 3.) As a result, Deputy Commissioner, Meryl Hershkowitz, has been serving in the position of Acting Commissioner since January 1, 2020.

According to the USPTO’s February 5, 2020 press release, Mr. Gooder previously served as Chief Trademark Counsel for Brown-Forman Corporation and previously as Managing Director and Chief Trademark Counsel at Jack Daniel’s Properties. Before that, he practiced “trademark, copyright and entertainment law at Graham & James in Los Angeles and Luce Forward in San Diego.” (See Press Release.)

On Friday, February 7, the USPTO will hold its quarterly Trademark Public Advisory Committee meeting – which currently shows Deputy Commissioner Meryl Hershowitz as providing the operations update for the Trademark Office. We assume that there will be some mention of Mr. Gooder’s appointment and an identification of some of the initiatives that he would be addressing when he assumes his role.

We also note that the Trademark Office recently postponed the implementation of the Mandatory Electronic Filing Rule until February 15, 2020 and previously announced that it would be providing guidance to the Trademark bar about how this rule will affect specific practices, such as providing direct email addresses and phone numbers for trademark owners. (See December 10, 2019 Webinar on the impact of the mandatory electronic filing rule change).

For reference, the USPTO posts notices of changes to its trademark practice rules on its Recent Postings page, but the pertinent ones relating to the Mandatory Electronic Filing Rule and the Mandatory U.S. Counsel Rule are linked below.

MANDATORY ELECTRONIC FILING RULE

MANDATORY US COUNSEL RULE

  • Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants 31498-31511 [2019-14087] [Electronic version][PDF] (2Jul2019)
  • Notice of Proposed Rulemaking, Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants, 4393–4403 [2019–02154] [TEXT] [PDF] (15Feb2019)

USPTO Delays Effective Date for Mandatory eFiling of All Trademark Filings

by Christina Frangiosa

Today the US Patent and Trademark Office (USPTO) announced that it was delaying the effective date of the new rule requiring the electronic filing of all trademark documents and the provision of accurate email addresses for purposes of correspondence with the USPTO relating to all applications and registrations. The new effective date will be December 21, 2019.

The USPTO explained that the delay was intended to provide the USPTO with more time to prepare internally for implementation and to allow the public more time to “fully comprehend the nature of, and prepare to comply with, the new requirements before they are effective.” Supplementary Information, Sept. 24, 2019.

For more information about the requirements of the Rule, please note the following:

USPTO Expands Random Audit Program

by Christina Frangiosa

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

by Christina Frangiosa

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 …