USPTO Announces Webinar on Avoiding Trademark Scams

by Christina Frangiosa

On February 27, 2024, the USPTO announced a new webinar on avoiding scams directed to trademark owners, called “Trademark practitioners:  Avoid attorney scams and bad behavior” – to be held March 19, 2024 from 2pm ET to 3:30pm ET.  There’s no cost to attend, but you do need to register in advance:  https://www.uspto.gov/about-us/events/trademark-practitioners-avoid-attorney-scams-and-bad-behavior.

Even though the session appears to be directed specifically to “trademark practitioners” (i.e., outside trademark attorneys, their paralegals, in-house trademark attorneys and their paralegals, etc.), I would expect this session to also be relevant for corporate or business attorneys (in private practice or in-house), business owners and their compliance staff, and any other trademark owner interested in learning more. Continue reading …

USPTO Schedules Listening Session on Duration of Attorney Recognition

by Christina Frangiosa

On Tuesday, September 26, 2023 at 2pm Eastern, the USPTO will hold a Public Listening Session regarding one of the remaining portions of the Trademark Modernization Act that has not yet been implemented: the duration of the USPTO’s recognition that an attorney represents an applicant/registrant for purposes of communications regarding the client’s trademark records.  Changes to Duration of Attorney Recognition; Notice of Public Listening Session and Request for Comments, 88 Fed. Reg. 54305 (Aug. 10, 2023) (PDF version) (the “Notice”).

Interested parties had until September 22, 2023 (updated from Sept. 18) to advise the USPTO that they’d like to present at the Listening Session, currently scheduled in the Clara Barton Auditorium at the USPTO on September 26, 2023 between 2pm and 3:30pm EST.  Seating is limited if you’re planning to attend in person, but the session will be simulcast (advanced registration was required by Sept. 22, whether you planned to attend in person or virtually).  Written comments will be accepted through October 6, 2023 through the comment portal. Id. Continue reading …

USPTO Proposes New Trademark Filing Fees and Requests Public Comment

by Christina Frangiosa

On May 8, 2023, USPTO Director Kathi Vidal submitted to the Trademark Public Advisory Committee (“TPAC”) the USPTO’s proposed revisions to its trademark prosecution and TTAB fee tables.  The USPTO’s Fee Setting and Adjustment page has been updated to include Director Vidal’s Letter (“Letter”), the full Table of Proposed Fee Adjustments (“Fee Table”), Executive Summary, Background Information and a table comparing Current, Proposed and Unit Costs embedded in trademark fees (“Unit Costs”).  The proposed increases in these trademark fees resulted from the USPTO’s “comprehensive trademark fee review” and were deemed necessary “to increase aggregate revenue and refine certain fees to efficiently finance ongoing operations.” See Letter at 1. Continue reading …

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 …