USPTO and Copyright Office Jointly Seek Public Comment on NFTs and IP

by Christina Frangiosa

On November 23, 2022, the U.S. Patent and Trademark Office (“USPTO”) and the Copyright Office issued a joint request for public comment regarding the interplay between non-fungible tokens (NFTs) and intellectual property law and policy issues.

This request for comment comes in response to a June 9, 2022 letter sent by Senators Patrick Leahy (D-VT) and Thom Tillis (R-NC) on behalf of the Senate Committee on the Judiciary, Subcommittee on Intellectual Property to the USPTO and the Copyright Office, which letter requested that the agencies undertake a study of IP law and policy issues relating to NFTs, and more broadly consider “how best to secure [IP] rights for emerging technologies”. The letter requested a reply by July 9 – and completion of this study by no later than June 9, 2023.

In particular, the Senators requested that the joint study “address the following list of non-exclusive factors”, and invited the agencies to add additional topics for review: Continue reading …

What to Expect from the U.S. Trademark Application Process

by Christina Frangiosa

[Updates an earlier Post from December 30, 2015]

So, you’ve decided to launch a brand name in the U.S. and are contemplating registering it in the U.S. Patent & Trademark Office (“USPTO”).  What can you expect?  Not every application is the same, so there will be variations in exactly what happens in the prosecution of your application, but hopefully this article will serve as a “Trademark 101 Primer” to describe the basic process overall.  (Note – this post is for general information purposes only and does not provide any specific legal advice.  Contact your trademark attorney to discuss any areas of specific concern.)

Basics

What is a Trademark?  It’s a word, phrase, symbol or design, or a combination of words, phrases or designs, that identifies and distinguishes the source of the goods of one party from those of others.  A service mark performs the same function as a trademark, but applies to the source of a service rather than of a product.  (For simplicity, this post refers to trademarks and service marks collectively as “trademarks.”)

How Valuable is a Good Trademark?  The value of a good trademark lies in its ability to convey to the public a single source of a particular good or service.  The key is to develop a mark unique enough that customers associate it with your goods or services – and only your goods and services.  While temptingly simple, choosing a mark that just describes your goods and services will not create any trademark value.  Customers won’t know to distinguish your goods from others in the same market.  Instead, pick something that’s arbitrary, or otherwise completely unique.  Even coin a new word or phrase as the new brand for your goods or services.  Avoid choosing words with simple dictionary meanings, which you might be planning to use exactly as they are defined – because the risk is that you may be selecting a generic term, which can never develop any trademark meaning.

Can Rights Develop Based on Use?  Federal registration is not a requirement to protect trademarks in the U.S. – instead, rights in a particular trademark can be established simply based on use in connection with particular goods or services in the marketplace (aka “common law trademark rights”).  Nevertheless, federal registration offers more comprehensive protection than reliance upon common law rights, including providing nationwide notice of the owner’s claim to the mark and some other valuable presumptions. Continue reading …

New Response Deadlines for Trademark Office Actions on the Horizon (and Changes to Attorney Recognition)

by Christina Frangiosa

Revised November 14, 2022 to take into account a new Federal Register Notice published by the USPTO on October 13, 2022. Originally published Aug. 12, 2022

On November 17, 2021, the USPTO published its Final Rule relating to the implementation of the Trademark Modernization Act (TMA) (part of the Consolidated Appropriations Act of 2021, Pub. L. No. 116-260 (Dec. 27, 2020) – 2,126 pages long (!) – see p. 1020 for the text of the TMA).  Nov. 17, 2021 Final Rule, “Changes To Implement Provisions of the Trademark Modernization Act of 2020,” 86 FR 64300, pp. 64300-64334 (also available in PDF form).

Prior posts on this blog previously described the two new TTAB proceedings created by the TMA (i.e., expungement and ex parte reexamination based on allegations of non-use) as well as the new non-use grounds for cancellation. This post addresses the changes in the standard deadlines to respond to an Office action issued by the Trademark Office (either during the application process or in connection with post-registration filings) (aka “flexible response periods”) and withdraws the USPTO’s stated intention to change the “attorney recognition rules” under 37 C.F.R. § 2.17(g).   Some key points are summarized below regarding these two provisions, but we recommend reading the full Final Rule (35 pages) and the USPTO’s updated Trademark Modernization Act Page in order to get a more complete picture of these two aspects of the amendments.

Flexible Response Periods

The TMA amended 15 U.S.C. § 1062(d) to permit the USPTO to reduce the periods of time to respond to Office actions to between 60 days and 6 months, although the final response periods had to be set by regulation, rather than the whim/discretion of any individual Examining Attorney on a case-by-case basis.   Prior USPTO requests for public comment on proposed rulemakings offered several options for these response periods.

In its Final Rule, the USPTO outlined the final selection: Instead of the traditional six (6) months we’ve always had to respond to any Office action issued by the USPTO, applicants for certain types of applications shall have an initial three (3) month period to respond, but a single-three (3) month extension is available upon request and payment of additional government fees ($125 for TEAS applications or $225 for paper filings).  See pages 7 and 17 of the Final Rule discussing the flexible response periods (and public comments received) in more detail, and page 26 discussing amendments to 37 C.F.R. § 2.6 for new fees to be imposed as of December 3, 2022.  (NB: October 13, 2022 Federal Register Notice changed the effective date from December 1 to December 3).  Failure to file a response to the Office action or to request the extension and pay the fee before the initial three-month period expires will result in abandonment of the application.

UPDATED:  This same three-month period (followed by a single-three-month extension upon timely request and payment of the fee) will also apply to post-registration Office actions but only after October 7, 2023.

In contrast, however, applications filed under Section 66 (Madrid Protocol) are not subject to the shorter response period (plus extension and additional fee) apparently because of U.S. treaty obligations; those applicants can still rely on the original six-month response period.

37 C.F.R. § 2.93 (relating to responding to Office actions issued in connection with the new reexamination proceedings) has already been updated to reflect the deadline to respond and the new fee requirements for extensions. We would anticipate that the regulations implementing the flexible response periods generally will track the language of 37 C.F.R. § 2.93(b)(1).

Given the differences in response deadlines for Office actions issued in different kinds of cases, it will be very important to confirm (quickly, after an Office action is received) which response period applies so that complete responses or requests for extension (and payment of the required fee) can be accomplished timely.

As the Deputy Commissioner for Trademark Operations, Dan Vavonese confirmed during the Trademark Public Advisory Committee (TPAC) Meeting on July 29, 2022, this amendment will go into effect on December 1, 2022.  (NB:  October 13, 2022 Federal Register Notice delayed the implementation of this Rule until December 3). Continue reading …

More on the USPTO’s New Expungement and Reexamination Proceedings

by Christina Frangiosa

Since the Trademark Modernization Act (TMA) was enacted in December 2020 (see prior post), certain of its provisions have gone into effect, and others are on the immediate horizon. For context, see the Consolidated Appropriations Act of 2021, Pub. L. No. 116-260 (Dec. 27, 2020) – 2,126 pages long (!) – and specifically p. 1020 for the text of the TMA.

Most recently, on November 17, 2021, the USPTO published its Final Rules relating to the implementation of the TMA, which primarily focus on the implementation of the new TTAB proceedings (expungement and ex parte reexamination based on allegations of non-use) as well as the new non-use grounds for cancellation.  The Rules also address letters of protest, flexible deadlines to respond to Office actions, recognition of attorneys representing trademark owners, and related fee setting (which will be covered in separate posts).

This post provides a brief update on the new expungement and reexamination proceedings.

The USPTO has continued to update its online guidance regarding the changes to Trademark Office procedure that result from the TMA.  In particular, the USPTO provides a quick reference guide explaining which proceedings are useful for which purpose and the relevant timelines for filing.  Initiating one of these proceedings requires electronic filing: https://www.uspto.gov/trademarks/apply/expungement-or-reexamination-forms.

The USPTO also published a recorded webinar on March 29, 2022 to walk through the new proceedings – along with the USPTO’s slide deck from that March 29 webinar.

Since the implementation of the new proceedings, and at the request of various stakeholder groups, the USPTO has published two tracking tools:

Next time:  Flexible Response Times and Expiration of Recognition of Attorney Representation Following Registration

TTAB Refused Registration for Commonplace Phrase That Fails to Function as a Trademark

by Christina Frangiosa

In order for a word, phrase or other device to operate as a trademark, it must convey to purchasers or potential purchasers a single source of the goods or services in connection with which the mark is used – or, simply put, it must be a “source indicator” for those goods and services.  This is true whether the trademark owner seeks to simply use a mark at common law or to apply for registration of the mark with the U.S. Patent and Trademark Office (“USPTO”).

In a recent decision, the USPTO’s Trademark Trial and Appeal Board (“TTAB” or “Board”) affirmed the Trademark Office Examining Attorney’s refusal to register the mark DESIGNED, SOURCED, AND BUILT IN THE USA in connection with the following goods:

Class 1:  “a wide variety of chemicals for a wide variety of industrial uses”;

Class 5:  “Hand-sanitizing preparations; disinfectants”;

Class 10:  “Face masks for use by health care providers; surgical masks; human face protectors, namely, transparent face shields for use in the medical and dental fields; sanitary masks for medical wellness purposes; respiratory masks for medical purposes; masks for use by medical personnel”; and

Class 20:  “Freestanding sneeze guards, namely, plastic shields for protection between retail clerks and customers; plastic shields to isolate retail clerks from customers; plastic shields to guard retail clerks against sneezes and coughs of customers; plastic dividers for protection between retail cashiers and customers”.

In re NuGeneration Technologies, LLC, 10 TTABVUE, Ser. No. 88852858, 88866690 (TTAB Apr. 7, 2022) (non-precedential) (appeal consolidated under Ser. No. 88852858); see also application file histories at Ser. Nos. 88/852,858 (Classes 1 and 5, filed March 30, 2020) and 88/866,690 (Classes 10 and 20, filed April 9, 2020).  Both applications were filed on an “intent to use” basis, but Applicant did not submit evidence of any use in commerce for either application.

The Examining Attorney essentially refused registration of the mark DESIGNED, SOURCED, AND BUILT IN THE USA on the grounds that it failed to function as a trademark – in particular because “the wording is merely informational and constitutes a commonplace phrase that is widely used in the marketplace.”  10 TTABVUE 2 (Ser. No. 88/852,858).

In affirming the refusal to register the mark, the Board agreed with the Examiner that the phrase simply conveyed “information to the consumer to support American made goods and services” that also “taps into the American consumer’s desire to purchase products of higher quality and better design, that are durable and sourced locally, ensuring safety & quality at every step of the supply chain.”  Id. at 16-17.

The Board disagreed with the Applicant’s position that the Examiner’s evidence of common usage of separate components of the mark (e.g., “designed in the USA” and “sourced in the USA”) was insufficient to show that the longer phrase, DESIGNED, SOURCED AND BUILT IN THE USA was in “widespread use.” Id. at 14.  In so doing, the Board explained that the evidence of use of these components, spanning multiple industries in connection with varied products, was “sufficient to show a marketing environment where consumers are accustomed to the use of these similar informational phrases by businesses.”  Id.

By way of comparison, the Board pointed to other marks that had been refused registration as commonly-used phrases in business that convey support for an American ideal – and do not operate as an indication of a single source of specific goods or services:

  • GOD BLESS THE USA – Ser. No. 87/168,719 (In re Lee Greenwood, 2020 USPQ2d 11439, at *3 (TTAB 2020) (considered simply an “expression of patriotism, affection, or affiliation” with the US))
  • INVESTING IN AMERICAN JOBS – Ser. No. 86/261,962 (In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1156 (TTAB 2019))
  • PROUDLY MADE IN THE USA, Ser. No. 74/375,437 (In re Remington Prods., 3 USPQ2d 1714, 1715 (TTAB 1987)) *Westlaw account required to access this decision.

Interestingly, the Board relied on the analysis in the 1987 Remington decision for the proposition that, “[i]t is common knowledge that today’s American marketplace has a surplus of foreign-made goods and that American manufacturers are anxious to encourage purchasers to give preference to American products.”  Id. at 16 (quoting In re Remington Prods., at 1715).  Despite the passage of 35 years, this marketplace reality remains the same today.

Refusal to register the phrase DESIGNED, SOURCED AND BUILT IN THE USA was affirmed as “merely informational matter” that would not be perceived “as a source of Applicant’s goods.”  Id. at 17.  Essentially, the Board concluded that this phrase failed to function as a trademark that would allow the “relevant public, i.e., purchasers or potential purchasers of Applicant’s goods” to perceive the phrase as “identifying the source or origin of Applicant’s goods.”  See id. at 5.

Recommended Additional Reading:

  • USPTO’s Trademark Manual of Examining Procedure (TMEP) § 904.07(b) (Whether the Specimen Shows the Applied-for Mark Functioning as a Mark)
  • TMEP § 1202.04 (Informational Matter)
  • TMEP § 1202.17(c) (Failure to Function)
  • TMEP § 1301.02(a) (Matter that Does Not Function as a Service Mark)