Feb 16, 2023 (Newsletter Issue 3/23)Review of Notorious Markets for Counterfeiting and Piracy ReleasedOn 31 January 2023, the Office of the United States Trade Representative (USTR) released the findings of its 2022 Review of Notorious Markets for Counterfeiting and Piracy (NML). The NML highlights online and physical markets that reportedly engage in or facilitate substantial trademark counterfeiting or copyright piracy.
The NML examines the impact of online piracy on U.S. workers. It also identifies 39 online markets and 33 physical markets that are reported to engage in or facilitate substantial trademark counterfeiting or copyright piracy. For example, 6 Chinese online markets including AliExpress, Baidu Wangpan, DHgate, Pinduoduo, Taobao and the WeChat ecosystem have been named.
The complete list can be seen hereSource: www.ustr.gov Nov 17, 2022 (Newsletter Issue 16/22)New Deadline to Respond to Office Actions for ApplicationsBeginning on 3 December 2022, trademark applicants will have three months (with a possible three-month extension), instead of the current six months, to respond to office actions issued during the examination of a trademark application at the United States Patent and Trademark Office (USPTO). This change only applies to office actions issued on or after December 3.
This new response period will not apply to post-registration office actions on 3 December 2022. Changes to the post-registration response period will be implemented on 7 October 2023.
For more information, please click here Source: www.uspto.gov Oct 20, 2022 (Newsletter Issue 15/22)12th Edition of Nice Classification Adopted SoonThe United States Patent and Trademark Office (USPTO) issues a final rule to incorporate classification changes adopted by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement). The Nice Classification simplifies and streamlines the drafting of goods and services in trademark applications for customers around the world. This rule adds new services to, or deletes existing services from, the class headings for Class 36 and Class 45 to further define the types of services appropriate to the classes.
These changes are included in the Nice Classification, 12th edition, version 2023 (NCL 12-2023), which takes effect on 1 January 2023. It will also be available in the USPTO’s Trademark Next Generation ID Manual on 1 January 2023.
For more information, please click hereSource: www.uspto.gov Jul 14, 2022 (Newsletter Issue 9/22)Identity Verification for USPTO.gov Account Holders to Be Mandatory in AugustStarting 6 August 2022, the United States Patent and Trademark Office (USPTO) will require identity verification for USPTO.gov account holders using the Trademark Electronic Application System (TEAS) and TEAS international (TEASi).
For more information, see the published Federal Register Notice and the Director's blog.Source: www.uspto.gov Jun 30, 2022 (Newsletter Issue 8/22)TTAB Manual of Procedure UpdatedThe United States Patent and Trademark Office (USPTO) informs that the June 2022 update of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) is now available on the Trademark Trial and Appeal Board (TTAB) webpage under "Practice and procedure" here
The revision includes precedential citations to legal opinions from the TTAB and the Federal Circuit made between February 28, 2021, and March 4, 2022. The modification reflects changes due to the Trademark Modernization Act of 2020, including a new Chapter 1300 “Ex Parte Appeals from Expungement or Reexamination of Registration Proceedings.”Source: www.uspto.gov Jun 02, 2022 (Newsletter Issue 7/22)New Guide Clarifying Examination Evidentiary Standard for Marks Refused as GenericThe United States Patent and Trademark Office (USPTO) issued a new examination guide titled ”Clarification of Examination Evidentiary Standard for Marks Refused as Generic”.
This update to the guidance clarifies USPTO’s terminology in the Trademark Manual for Examination Procedures (TMEP) regarding the examining attorney’s burden when making a genericness refusal. The guide also clarifies that the standard for an examining attorney to establish a prima facie case of genericness is the same as for other refusals, namely, there must be sufficient evidence to support a reasonable predicate for the refusal under the applicable legal standard.
To access the new guide, please click here or visit the USPTO’s Examination Guides webpage here Source: www.uspto.gov May 19, 2022 (Newsletter Issue 6/22)Electronic Registration Certificates to Be Issued SoonThe United States Patent and Trademark Office (USPTO) will begin issuing electronic trademark registration certificates on June 7, 2022. Upon issuance, the electronic registration certificate will be the official registration certificate. After the USPTO begins issuing electronic registration certificates, trademark owners will have the option to order paper “presentation” copies for a fee. They will also continue to be able to order certified copies of their trademark registrations.
For more information, please see here Source: www.uspto.gov Feb 10, 2022 (Newsletter Issue 2/22)Identity Verification for USPTO.gov Account Holders to Be Mandatory SoonOn January 8, 2022, the United States Patent and Trademark Office (USPTO) introduced identity verification for USPTO.gov account holders using the Trademark Electronic Application System (TEAS) and TEAS international (TEASi).
There are two different methods for customers available to verify their identities:
- paper identity verification process
- online via ID.me
The USPTO advises that starting April 9, 2022, identity verification will be required for USPTO.gov account holders to file through TEAS and TEASi.
For more information, please click hereSource: www.uspto.gov Dec 02, 2021 (Newsletter Issue 17/21 )USPTO Implements Trademark Modernization ActThe United States Patent and Trademark Office (USPTO) has published implementing regulations for the Trademark Modernization Act (TMA) of 2020.
For individuals, businesses, and the USPTO it becomes easier to clear away unused registered trademarks from the federal trademark register. Further, the USPTO can move applications through the registration process more efficiently.
The final rule
- establishes ex parte expungement and re-examination proceedings for cancellation of a registration when the required use in commerce of the registered mark has not been made;
- provides for a new non-use ground for cancellation before the Trademark Trial and Appeal Board (TTAB or Board);
- establishes flexible Office action response periods;
- amends existing letter-of-protest rule to indicate that letter-of-protest determinations are final and non-reviewable;
- sets fees for petitions requesting institution of ex parte expungement and re-examination proceedings as well as for requests to extend Office action response deadlines;
- amends the provisions on the suspension of USPTO proceedings and attorney recognition in trademark matters.
A new rule is added to address procedures regarding court orders cancelling or affecting registrations.
Most revisions to the Trademark rules take effect on December 18, 2021, some already came into force on December 1, 2022, such as the shorter response time for official acts. Petitions requesting institution of proceedings for re-examination or expungement will be accepted on or after December 27, 2021.
For more detailed information, visit the USPTO website hereSource: www.uspto.gov Oct 20, 2021 (Newsletter Issue 15/21)
New Mailing Address for USPTO Deposit Account Replenishments
The United States Patent and Trademark Office (USPTO) has issued a final rule to amend the rules of practice to update the address for the replenishment of a deposit account by mail.
From December 15, 2020, through December 14, 2021, deposit account replenishments addressed to the old address are forwarded to the new address. Deposit account replenishments submitted electronically are not affected by these mailing address changes.
Source: www.uspto.gov
Jul 01, 2021 (Newsletter Issue 13/21)TBMP 2021 Update AvailableThe United States Patent and Trademark Office (USPTO) informs that the June 2021 update of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) is now available on the Trademark Trial and Appeal Board webpage under "Policies & procedures" here.
This update incorporates relevant case law issued between March 1, 2020, and February 28, 2021. It also includes updates on requirements for new fees in connection with briefs and oral hearings as well as the change in nomenclature from "standing" to file an opposition or cancellation under the Trademark Act to "entitlement to a statutory cause of action."Source: www.uspto.gov Jun 17, 2021 (Newsletter Issue 12/21)Final Rule on Representation of Others Before USPTOThe United States Patent and Trademark Office (USPTO) has amended the rules regarding representation of others before the USPTO set forth in 37 C.F.R. part 11 by issuing a final rule effective June 25, 2021.
This rulemaking more closely aligns the USPTO Rules of Professional Conduct with the American Bar Association (ABA) Model Rules of Professional Conduct. It also improves clarity by revising various deadlines, procedures concerning the registration exam, and provisions for reinstatement. It makes non-substantive changes to improve the readability of various provisions. Finally, the rule adds a show-cause mechanism for those rare instances where registration has been issued based on fraud, mistake, or material misrepresentation.
For more information on the final rule, please click hereSource: www.federalregister.gov May 20, 2021 (Newsletter Issue 10/21)Feedback on New Proposed Rules of the TMA SoughtOn May 18, 2021, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking on "Changes To Implement Provisions of the Trademark Modernization Act (TMA) of 2020". The USPTO is seeking feedback on the new proposed rules.
The proposed rules address:
- Two new ex parte proceedings to cancel registered trademarks for nonuse
- A new ground for cancellation of a registration before the Trademark Trial and Appeal Board
- Shorter response times for office actions
- Letter of protest practice
- Attorney recognition until revocation or withdrawal
- Attorney withdrawal requirements
- Court orders concerning registrations
The USPTO will be holding public roundtables to explain the proposed rules and answer questions. Feedback can be submitted until July 19, 2021 at www.regulations.gov.
Further information on the public roundtables will be provided on the TMA webpage of the USPTO website hereSource: www.federalregister.gov May 20, 2021 (Newsletter Issue 10/21)China IPR Toolkit Updated by USPTOThe United States Patent and Trademark Office (USPTO) published an updated version of the China Intellectual Property Rights (IPR) Toolkit to reflect the recent changes made to China’s intellectual property (IP) related laws and government structure.
It highlights the differences between the U.S. and Chinese IP rights legal systems and provides general guidance for businesses and practitioners to better understand the basics of the IP landscape in China. Source: www.uspto.gov Jan 28, 2021 (Newsletter Issue 2/21)Trademark Modernization Act SignedOn December 27, 2020, the Trademark Modernization Act of 2020 (TMA) was signed making several changes to the Lanham Act. The TMA provides new procedures to challenge applications and registrations with inaccurate claims of use. It will be implemented by December 27, 2021.
Major changes are the following:
-Two new ex parte post-registration proceedings to cancel unused trademarks
The TMA introduces the Expungement proceeding, which provides that any party may petition the USPTO to expunge a registration for a trademark that has never been used in commerce. This new procedure must be brought between three to ten years after the registration date.
Further, the TMA implements the Re-examination proceeding, which provides that any party may petition the USPTO to re-examine any registration on the grounds of non-use as of the date of the registrant’s declaration under oath that the mark is in use for up to five years from the date of such declaration.
- New ground for cancellation proceeding
The TMA provides a new ground which is substantively equivalent to the expungement claim that a registered trademark has never been used in commerce, as described above, but may be brought at any time following three years from registration.
- Flexible response periods for office actions
The TMA enables the USPTO to shorten Office Action response deadlines from the current six-month period to a time period ranging from 60 days to six months. The applicant may request extensions to have the full six months. The Director may set the number, length and fee for extensions of time by rule.
- Third-party submissions during examination (Letters of Protest)
The TMA provides statutory authority for the longstanding USPTO Letter of Protest practice that allows third parties to submit evidence to the USPTO, prior to registration, regarding a trademark’s registrability. The TMA sets a two-month deadline for the USPTO to act on these submissions and authorizes the Office to charge a fee for them. The TMA also provides that the USPTO's decision on whether to include the evidence in the application record is final and non-reviewable.
- Creating a uniform rule establishing a rebuttable presumption of irreparable harm
The TMA also provides that a trademark owner seeking injunctive relief is entitled to a rebuttable presumption of irreparable harm upon a finding of infringement or a likelihood of success on the merits. This uniform rule will help trademark owners enforce their rights against infringers in federal court. No rulemaking is necessary to give effect to this provision.
The USPTO has created an informational webpage on the TMA, identifying key provisions, and an email box to ask questions and provide feedback. The webpage will be updated as additional information becomes available. To enter the website, please hereSource: www.uspto.gov Nov 19, 2020 (Newsletter Issue 19/20)
Official Fees to Be Increased
The United States Patent and Trademark Office (USPTO) is setting and adjusting Trademark and Trademark Trial and Appeal Board (TTAB) fees.
As of January 2, 2021, the filing fee is USD 350 per class when using TEAS Standard and USD 250 per class when using TEAS Plus.
Source: www.uspto.gov
Nov 05, 2020 (Newsletter Issue 18/20)Trademark Examination Guide on Specimens Updated / New Exam Guide on Generic.com TermsOn October 30, 2020, the USPTO informed that they have issued an update to the trademark examination guide titled “Examination of Specimens for Use in Commerce: Digitally Created/Altered or Mockup Specimens.”
The updated guide addresses examination guidelines regarding digitally created or altered and mockup specimens. In particular, the updated guide revises the procedures for requests for information about the use in commerce of such specimens.
The guide can be found here
Further, on October 28, 2020, the USPTO informed that they have issued a new examination guide titled "Generic.com Terms after USPTO v. Booking.com."
The guide sets out procedures for examining applications for generic.com terms, which are any combination of a generic term and generic top-level domain designating an entity or information, such as “.com” or “.biz.”
These procedures were updated in light of United States Patent and Trademark Office et al. v. Booking.com B. V.
The guide can be found hereSource: www.uspto.gov Jul 09, 2020 (Newsletter Issue 11/20)TBMP 2020 Update AvailableThe United States Patent and Trademark Office (USPTO) informs that the June 2020 update of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) is now available on the Trademark Trial and Appeal Board webpage under „Policies & procedures” here.
The revision describes current practice and procedure under the applicable authority and relevant case law reported between March 1, 2019, and February 29, 2020. Source: www.uspto.gov Jun 25, 2020 (Newsletter Issue 10/20)COVID-19 Prioritized Examination Program IntroducedOn June 12, 2020, the United States Patent and Trademark Office (USPTO) announced a new COVID-19 prioritized examination program for certain trademark and service mark applications.
Under this new program, the USPTO will accept petitions to advance the initial examination of applications for marks used to identify qualifying COVID-19 medical products and services. Additionally, the USPTO will waive the fee for such petitions.
To qualify for the new program, the application must cover a product that is subject to U.S. Food and Drug Administration (FDA) approval for use in the prevention and/or treatment of COVID-19 or a medical or medical research service for the prevention and/or treatment of COVID-19.
For more information, please click hereSource: www.uspto.gov Jun 11, 2020 (Newsletter Issue 9/20)New Trademarks Examination Guide on Cheeses/Processed MeatsThe USPTO has issued a new examination guide titled Marks Including Geographic Wording that Does Not Indicate Geographic Origin of Cheeses and Processed Meats. The guide sets out procedures for examining applications for cheeses and processed meats in which the mark includes geographic wording that does not indicate geographic origin, but otherwise may be a generic designation for such goods.
The guide can be found hereSource: www.uspto.gov Jun 11, 2020 (Newsletter Issue 9/20)
Relief for Trademark Fees/Deadlines on Case-by-Case Basis
The USPTO has waived certain fees under existing authority, through the March 16, 2020 Notice, and has extended certain Trademark and Trademark Trial and Appeal Board (TTAB) deadlines twice under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), through the March 31, 2020 Notice and the April 28, 2020 Notice. These extensions have expired on May 31, 2020.
The USPTO informed that some stakeholders will continue to require relief, particularly small businesses and individuals. Under the CARES Act authority and its existing authority in Trademark and TTAB matters, the USPTO will direct relief to those who need it on a case-by-case basis, as described below:
- Applicants who were unable to submit a timely response or fee in response to an Office communication should file a petition to revive the application. See 37 CFR §§ 2.6(a)(15), 2.66.
- Applicants who missed the 36-month statutory deadline for filing a Statement of Use, and therefore their application has been abandoned, should use the TEAS “Petition to the Director” form. See 37 CFR § 2.146.
- Registrants who missed a statutory deadline, resulting in a cancelled/expired registration, or who were unable to submit a timely response or fee in response to an Office communication regarding a registration, should use the TEAS “Petition to the Director” form. See 37 CFR § 2.146.
Source: www.uspto.gov
Apr 02, 2020 (Newsletter Issue 5/20)No Original Handwritten Signature RequiredThe USPTO considers the effects of COVID-19 to be an "extraordinary situation" within the meaning of 37 CFR 1.183 for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners. Therefore, the USPTO is waiving the requirements of 37 CFR 1.4(e)(1) and (2) for an original handwritten signature for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card. The Office notes that the requirements of 37 CFR 1.4(e)(1) and (2) are the only USPTO requirements for original handwritten, ink signatures, and the USPTO has no other requirements for original handwritten, ink signatures.
For more information, please click hereSource: www.uspto.gov Feb 20, 2020 (Newsletter Issue 2/20)Electronic Filing Mandatory Now / Exam Guide UpdatedThe USPTO informed that the mandatory electronic filing rule is now effective as of 15 February 2020. All communications with the USPTO in trademark matters will be electronic, except in limited circumstances. This means trademark applicants and owners will need to keep valid electronic contact information on file with the USPTO for the life of their registration.
The revised examination guide was issued on 7 February 2020. It removes the requirement that an applicant represented by counsel must regularly access and review the email account provided.
For more information, please click hereSource: www.uspto.gov Oct 21, 2019 (Newsletter Issue 15/19)E-Filing for Trademark Submissions Mandatory SoonThe United States Patent and Trademark Office (USPTO) informs that electronic filing for trademark submissions will become mandatory with limited exceptions as of December 21, 2019.
Trademark applicants and registrants will be required to:
- File their trademark applications and documents concerning trademark applications and registrations online using the USPTO's Trademark Electronic Application System (TEAS).
- Provide and maintain an accurate email address for receiving correspondence from the USPTO about their particular application or registration.
- Provide and maintain an accurate postal address to ensure that the USPTO can contact them if their email correspondence address doesn't work.
With limited exceptions, paper and fax submissions will no longer be accepted. Email submissions will continue to not be accepted. Only informal communication regarding your application or registration can be done by email.
For more Information, please click hereSource: www.uspto.gov Oct 10, 2019 (Newsletter Issue 14/19)
USPTO Portable Media Device Policy Changing
Beginning October 1, 2019, the USPTO will prohibit the use of personal removable media storage devices, including USBs, with any USPTO computer, docking station, or monitor.
Such devices include:
- Portable disk drives such as USB drives or memory cards
- Digital versatile discs (DVDs)
- Read/write compact discs (CDs)
- Devices that can operate as removable media storage devices (e.g. PDAs, digital cameras, and Apple iPods).
Visitors who need to share files with USPTO employees must transmit their data via email, cloud-based, or secure-file sharing services.
Source: www.uspto.gov
Oct 10, 2019 (Newsletter Issue 14/19)Changes to the TEAS / TEASi to Be Implemented SoonThe USPTO informs that changes to the Trademark Electronic Application System (TEAS) and TEASi (international) will be implemented on October 26, 2019 as a part of their effors to build a more secure Trademark filing System.
To access and file forms, customers will need to log in to a USPTO.gov account with a two-step authentication. These measures will allow the Office to better track filing activity and reduce misuse of our electronic forms.
Furthermore, TEAS orTEASi sessions will time out after 30 minutes.
For further information, please view hereSource: www.uspto.gov Sep 19, 2019 (Newsletter Issue 13/19)Exam Guide on U.S.-Licensed Attorney Requirement RevisedThe USPTO issued the revised exam guide “Requirement of U.S.-Licensed Attorney for Foreign-domiciled Trademark Applicants and Registrants (September 2019)” after receiving requests for additional clarification regarding implementation of the final U.S.-licensed attorney rule.
To access the revised Exam Guide 4-19, please click hereSource: www.uspto.gov Aug 07, 2019 (Newsletter Issue 10/19)Electronic Filing Mandatory SoonThe USPTO has published a new rule in the Federal Register requiring electronic filing for trademark submissions which becomes effective on October 5, 2019.
Trademark applicants and registrants will be required to file online using the USPTO's Trademark Electronic Application System (TEAS). Applicants and registrants will need to provide and maintain an accurate email address for receiving correspondence from the USPTO.
Paper and fax submissions will no longer be accepted. Email submissions will continue to not be accepted.
For more information, please click hereSource: www.uspto.go Aug 07, 2019 (Newsletter Issue 10/19)New Examination Guide on Specimen ExaminationThe USPTO published a new examination guide titled "Examination of Specimens for Use in Commerce: Digitally Created or Altered and Mockup Specimens" which can be accessed here
This guide supplements existing guidance on examination of specimens to provide additional guidance regarding specimens that appear not to be in use in commerce because they are digitally created/altered or otherwise mocked up.Source: www.uspto.go Jul 11, 2019 (Newsletter Issue 9/19)Foreign Applicants Need Local U.S. Agent SoonOn July 2, 2019, the United States Patent and Trademark Office (USPTO) announced a new rule requiring all foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be represented by an attorney who is licensed to practice law in the United States.
The requirement applies to all trademark applicants, registrants, and parties whose permanent legal residence or principal place of business is outside the United States. These applicants, registrants, and parties are required to have a U.S.-licensed attorney represent them at the USPTO in all trademark matters.
Additionally, U.S.-licensed attorneys representing anyone before the USPTO in trademark matters are required to confirm they are an active member in good standing of their bar and to provide their bar membership information.
This new trademark rule has an effective date of August 3, 2019. For a more information, please check here
Source: www.uspto.gov Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. Registration The Government United States of America has notified WIPO in accordance with new Rules 27ter(2)(b) and 40(6) of the Common Regulations, which entered into force on February 1, 2019.
According to the said notification:
- new Rule 27bis(1) of the Common Regulations, providing for the possibility to file a request for division, is not compatible with the law of the Contracting Party and does not apply to it; and,
- the law of the Contracting Party does not provide for the merger of registrations of a mark.
As a result, the Office will not present to WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Feb 28, 2019 (Newsletter Issue 3/19)Requirement of U.S. Attorney for Foreign TM Applicants ProposedThe United States Patent and Trademark Office (USPTO) published a proposal to change federal trademark law to require foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to use an attorney who is licensed to practice law in the United States (see here).
The requirement applies to trademark applicants, registrants, and parties who have a permanent legal residence or a principal place of business outside the United States. The proposed changes would require these applicants, registrants, and parties to hire an attorney who is licensed to practice law in the United States to represent them at the USPTO.
In addition to the above proposed change, U.S.-licensed attorneys representing anyone before the USPTO in trademark matters would be required to confirm that they are an active member in good standing of their bar and provide their bar membership information.
Any U.S.-licensed attorney who has an active bar membership and is in good standing, regardless of where the attorney resides (including outside the United States), can continue to represent foreign and domestic trademark applicants and registrants at the USPTO.
The USPTO is taking comments from the public on this proposed rule until March 18, 2019. Comments can be forwarded to TMFeedback@uspto.gov. Dec 13, 2018 (Newsletter Issue 21/18)Change in Procedure of USPTO's Trademark CorrespondenceStarting December 7, 2018, the USPTO uses email communication for notices such as for trademark abandonment notices instead of postcards or paper notices if the user has authorized email communication.
It is important to provide and to maintain an accurate email address in order to not miss official trademark correspondence.
To sign up for email correspondence, or to change an email address on record with the Office, the 'TEAS Change of Correspondence Address form' should be used hereSource: www.uspto.gov Dec 13, 2018 (Newsletter Issue 21/18)TMEP October 2018 AvailableOn October 31, 2018, the USPTO issued the October 2018 Trademark Manual of Examining Procedure (TMEP). This revision clarifies USPTO trademark policies and practices and includes relevant Trademark Trial and Appeal Board and court decisions reported before September 15, 2018.
The TMEP October 2018 version replaces the October 2017 version.
To access the TMEP October 2018 version, please click here. A complete list of changes, can be seen in the Change Summary hereSource: www.uspto.gov Dec 13, 2018 (Newsletter Issue 21/18)
Electronic Exchange of Priority Certificate Documents for Design Applications with KIPO
The Korean Intellectual Property Office (KIPO) and US Patent and Trademark Office (USPTO) agreed to electronically exchange priority certificate documents for design applications starting December 1, 2018.
Source: www.pkkim.com
Jul 24, 2018 (Newsletter Issue 13/18)June Update of Manual of Procedure of the TBMP Available NowThe United States Patent and Trademark Office (USPTO) informs that the June 2018 update of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) is now available on the Trademark Trial and Appeal Board webpage. The revision describes current practice and procedure under the applicable authority and relevant case law reported between March 3, 2017, and March 2, 2018.Source: www.uspto.gov Jun 28, 2018 (Newsletter Issue 12/18)
Changes to Trademark Rules of Practice To Mandate Electronic Filing Proposed
The United States Patent and Trademark Office (USPTO) proposes to amend the rules of practice in trademark cases and the rules of practice in filings pursuant to the protocol relating to the Madrid Agreement concerning the international registration of marks to mandate electronic filing of trademark applications and submissions associated with trademark applications and registrations, and to require the designation of an email address for receiving USPTO correspondence.
USPTO asks for comments which need to be received by July 30, 2018, to ensure the Office’s consideration. Comments can be submitted to TMFRNotices@uspto.gov
Source: www.uspto.gov
Jun 14, 2018 (Newsletter Issue 11/18)USPTO Fake Specimen Informant ProgramThe USPTO launched a new pilot program where anyone can submit evidence of false specimens, with certain limitations and criteria. To submit to the new program, concerned individuals, companies, or anyone else may submit an e-mail to the USPTO’s special pilot program email address.
The e-mail must include either:
1. Objective evidence of third party use of the identical image without the mark in question. For example, this could include the page of a stock image website or other website showing the underlying image without the alleged trademark superimposed on the image or
2. The prior registration numbers and/or serial numbers of applications in which all use identical images of objects, mockups of websites, etc., all bearing different marks.
These protest emails must be received no later than the 30th day after publication for opposition.
For more information, please check hereSource: www.gerbenlaw.com Feb 28, 2018 (Newsletter Issue 4/18)Practice Tip on Section 2(d) and Foreign Entity DesignationsThe United States Patent and Trademark Office (USPTO) informs that the final version of a new Practice Tip “Section 2(d) and Foreign Entity Designations: When Different Entity Terminology Identifies the Same Owner" is now available.
This Practice Tip is intended to minimize unnecessary Section 2(d) refusals by clarifying when an examining attorney may presume that an applicant owns a conflicting prior registration or application, despite differences in the terminology used to identify the owner’s entity type in the respective records. Source: www.uspto.gov Nov 07, 2017 (Newsletter Issue 19/17)New TMEP AvailableThe United States Patent and Trademark Office (USPTO) informs about that the October 2017 Trademark Manual of Examining Procedure (TMEP) is now available. This revision clarifies USPTO trademark policies and practices and includes relevant Trademark Trial and Appeal Board and court decisions reported before Sept. 1, 2017.
This revision supersedes prior versions of the TMEP, examination guides, or any other statement of USPTO policy to the extent that there is any conflict.
Please see the Change Summary or a complete list of changes.
Source: www.uspto.gov Sep 20, 2017 (Newsletter Issue 16/17)New Examination Guide Available NowThe United States Patent and Trademark Office (USPTO) informs on its website that the Exam Guide 2-17, "Merely Informational Matter," is now available on the Trademark Examination Guides page, along with the response to public comments on an earlier draft of the guide.
The guide clarifies the policies and procedures for examining certain types of proposed marks that consumers would view as merely communicating information other than the source of goods/services and thus fail to function as marks.
To help in determining whether a proposed mark functions as a mark, the guide:
- creates categories for some types of matter that may be considered merely informational
- sets forth relevant case law
- identifies when an examining attorney must refuse registration or require a disclaimer
- discusses an applicant’s response options
- provides over 20 pages of examples illustrating the concepts covered
This new exam guide supplements the current policies and procedures set out in Trademark Manual of Examining Procedure (TMEP) §1202.04.
Source: www.uspto.gov
Jul 25, 2017 (Newsletter Issue 14/17)New Rule on Revivals, Reinstatements, PetitionsThe United States Patent and Trademark Office (USPTO) has issued a final rule titled "Revival of Abandoned Applications, Reinstatement of Abandoned Applications and Cancelled or Expired Registrations, and Petitions to the Director."
The rule has been published in the Federal Register (82 Fed. Reg. 29401) and became effective on July 8, 2017.
The changes will permit the USPTO to provide more detailed procedures regarding the deadlines and requirements for requesting revival, reinstatement, or other action by the Director. These rules will thereby ensure that the public has notice of the deadlines and requirements for making such requests, facilitate the efficient and consistent processing of such requests, and promote the integrity of application/registration information in the trademark electronic records system as an accurate reflection of the status of applications and registrations.
For more information, please see here
Source: www.uspto.gov Jun 28, 2017 (Newsletter Issue 12/17)Updated TBMP AvailableThe United States Patent and Trademark Office (USPTO) informs that they have issued an updated Trademark Trial and Appeal Board Manual of Procedure (TBMP), which describes current practice and procedure under the applicable authority. The new TBMP is available on the Trademark Trial and Appeal Board webpage here
The update incorporates amendments to the Trademark Rules of Practice, Trademark Act and Federal Rules, and relevant case law between September 30, 2016, and March 3, 2017.
Source: www.uspto.gov
May 31, 2017 (Newsletter Issue 10/17)Comments on Streamlined Cancellation Procedure RequiredThe United States Patent and Trademark Office (USPTO) is exploring the possibility of a streamlined version of trademark cancellation proceedings before the Trademark Trial and Appeal Board (TTAB). Streamlined proceedings would enable third parties to more efficiently challenge marks they believe are not in use in commerce.
The streamlined proceedings would:
- Be limited to the grounds of abandonment and nonuse;
- Permit discovery only as to standing;
- Require each party to submit its proof with its pleading; and
- Move on an accelerated schedule.
The comments should be submitted no later than August 14, 2017.
More information can be seen here
Source: www.uspto.gov May 17, 2017 (Newsletter Issue 9/17)
Forecasting Tool by USPTO Implemented
The United States Patent and Trademark Office (USPTO) has implemented the Forecasting tool for trademarks.
The USPTO is the first IP office outside the EU to adopt the tool as one of its forecasting methodologies. Twenty-one EU IP offices across the EU Intellectual Property Network use the Forecasting tool already.
Source: www.euipo.europa.eu
May 17, 2017 (Newsletter Issue 9/17)New TMEP AvailableThe USPTO has issued the April 2017 Trademark Manual of Examining Procedure (TMEP). This revision clarifies USPTO trademark policies and practices and includes relevant Trademark Trial and Appeal Board and court decisions reported before March 1, 2017.
This revision supersedes prior versions of the TMEP, examination guides, or any other statement of USPTO policy to the extent that there is any conflict. For a complete list of changes, please see here.
Source: www.uspto.gov Feb 22, 2017 (Newsletter Issue 4/17)Effective Date for Rule Relating to Proving Use or Continued Use of Registered Trademarks DelayedOn January 19, 2017, the USPTO issued a notice of final rulemaking entitled “Changes in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases” in the Federal Register, 82 Fed. Reg. 6259. The effective date of this rule has been delayed until March 21, 2017, in accordance with the memorandum of January 20, 2017, from the Assistant to the President and Chief of Staff, entitled “Regulatory Freeze Pending Review.” See 82 Fed. Reg. 10273.
Source: www.uspto.gov Feb 01, 2017 (Newsletter Issue 3/17)Changes to Examination of Affidavits or Declarations of Continued Use or Excusable NonuseThe USPTO is changing its rules regarding the examination of affidavits or declarations of continued use or excusable non-use of trademarks filed under Section 8 of the Trademark Act, and on affidavits or declarations of use in commerce or excusable non-use under Section 71 of the Act, effective February 17, 2017.
The new rules will allow the USPTO to require additional proof of use to verify that a trademark is in use in commerce in connection with particular goods/services identified in the registration, unless excusable non-use is claimed in whole or in part.
The USPTO issued a notice of final rulemaking entitled “Changes in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases" in the Federal Register, 82 Fed. Reg. 6259, on January 19, 2017.
Source: www.uspto.gov
Jan 25, 2017 (Newsletter Issue 2/17)Official Fees Changed/TTAB Final Rule Effective On January 14, 2017, the Trademark final fee rule became effective. The new fee schedule will primarily impact trademark applicants and registration owners who use paper filings. The fee for filing a trademark application on paper increased e.g. from USD 375 to USD 600 per class.
More moderate is the increase of e-filings which will be now USD 400 per class using the regular Trademark Electronic Application System (TEAS Regular) option. The fees have been increased by USD 75. More information, see here
Further, the USPTO informs that the TTAB final rule became effective on January 14, 2017 too. The TTAB chart summarising the rule changes.
Source: www.uspto.gov Jan 11, 2017 (Newsletter Issue 1/17)Correction to Final Rule Revising the Rules of Practice On October 7, 2016, the USPTO published in the Federal Register a final rule revising the Rules of Practice before the Trademark Trial and Appeal Board (TTAB) that will become effective January 14, 2017: 81 Fed. Reg. 69950.
The USPTO has now issued a correction to the final rule, published on December 12, 2016, in the Federal Register: 81 Fed. Reg. 89382.
The rules affected by the correction are: 37 CFR 2.123(a), 2.124, 2.126(c), and 2.145(d)(1) and (d)(3).
Source: www.uspto.gov
Jan 11, 2017 (Newsletter Issue 1/17)11th Edition of Nice Classification AdoptedUSPTO informs that the Nice Classification, Eleventh Edition, version 2017 (NCL 11-2017), became effective as of January 1, 2017.
More information of the class headings and a link to noteworthy changes can be seen here
Source: www.uspto.gov
Nov 09, 2016 (Newsletter Issue 20/16)Comments on Proposed Rule Changes RequiredOn October 28, 2016, the U.S. Patent and Trademark Office published a Federal Register notice seeking written comments on proposed changes to the rules for revival of abandoned trademark applications, reinstatement of abandoned applications and cancelled or expired registrations, and other petitions to the Director. The Office proposed the changes "to provide more detailed procedures regarding the deadlines and requirements for petitions to revive an abandoned application" and to "codify USPTO practice regarding requests for reinstatement of applications that were abandoned, and registrations that were cancelled or expired, due to Office error".
The notice stated that these changes should help achieve the Office’s goal of promoting the integrity of the information in the trademark electronic records system by (1) providing an accurate reflection of the status of live applications and registrations, (2) clarifying the time periods in which applications or registrations can be revived or reinstated after abandonment or cancellation, (3) clarifying the deadline for requesting that the Director take action, and (4) facilitating the efficient and consistent handling of such requests.
Written comments must be received by December 27, 2016.
For more information, please see here
Source: www.ipo.org Nov 09, 2016 (Newsletter Issue 20/16)Nice Classification Changes Soon AdoptedThe USPTO has issued a final rule to incorporate classification changes adopted by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. The rule entitled "International Trademark Classification Changes" published in the Federal Register today (81 Fed. Reg. 76,867 (November 4, 2016)), and will become effective January 1, 2017.
Source: www.uspto.gov Oct 26, 2016 (Newsletter Issue 19/16)TTAB Revisions to Rules of Practice ChangedOn October 7, 2016, the Trademark Trial and Appeal Board (TTAB or Board) of the U.S. Patent and Trademark Office (USPTO) published changes to its Rules of Practice.
The USPTO published a Notice of Proposed Rulemaking, suggesting extensive changes to the TTAB’s Rules of Practice on April 4, 2016. After undertaking numerous outreach efforts to effected members of the trademark bar and their clients, the TTAB published its package of the final Rules changes at 81 Fed. Reg. 69950. The revised rules take effect on January 14, 2017.
Some of the chief revisions to the Board’s Rules of Practice include:
1. All filings with the TTAB must be submitted electronically through its Electronic System for Trademark Trials and Appeals (ESTTA), unless excused via Petition to Director of the USPTO.
2. Instead of the Plaintiff, the TTAB will once again undertake the responsibility for service on the Defendant of the initial pleading in the proceedings (such as the Notice of Opposition or Petition for Cancellation), and service will be by e-mail.
3. Service of all papers (by the TTAB and by the parties on each other) must be by e-mail.
4. As is presently the limitation on interrogatories, requests for production and requests for admissions will be limited to 75 in number. One additional comprehensive admission request will be permitted for authentication of the adverse party’s produced documents. Parties may seek leave from the TTAB to exceed these limitations upon a showing of good cause.
5. Parties will have the right to submit trial testimony by declaration or affidavit. However, an adverse party shall have the right to take testimonial depositions to cross-examine each declarant/affiant.
6. The minimum character size for written submissions to the TTAB will increase from 11 point font to 12 point font.
7. All discovery must be completed during the discovery period. Therefore, discovery requests must be served sufficiently in advance of the discovery deadline so that the responses are due on or before the deadline.
8. The requirements for Notices of Reliance have been updated to reflect current TTAB practice (for example, printouts of Internet documents).
For further information, please click here
Source: Quarles & Brady LLP, USA Oct 26, 2016 (Newsletter Issue 19/16)Official Trademark Fee AdjustmentThe USPTO is amending its rules to set, increase or decrease certain trademark fees, effective January 14, 2017.
USPTO informs that the fee adjustments will allow the Office to recover the aggregate estimated cost of the Trademark and Trademark Trial and Appeal Board (TTAB) operations and USPTO administrative services that support Trademark operations. The rule will further USPTO strategic objectives by:
1.) better aligning fees with the full cost of relevant products and services;
2.) protecting the integrity of the register by incentivizing more timely filing or examination of applications and other filings, and more efficient resolution of appeals and trials;
3.) promoting the efficiency of the process, in large part through lower-cost electronic filing options.
A notice has been issued of the final rulemaking entitled "Trademark Fee Adjustment" in the Federal Register, 81 Fed. Reg. 72694 on October 21, 2016.
For further information on the Trademark fee changes page, please click here
Source: www.uspto.gov Jul 12, 2016 (Newsletter Issue 13/16)Deposit Accounts and Electronic Funds Transfer Accounts Need to Be MovedThe Financial Manager is the USPTO’s new online fee payment management tool. USPTO informs that the deadline to move existing USPTO deposit accounts and electronic funds transfer (EFT) accounts to Financial Manager has been extended through July 2016. A new date will be announced later, and by that deadline all deposit accounts and EFT accounts must be stored in Financial Manager in order to be used for payments.
Customers may continue to pay as a guest (i.e. without logging in and using a payment method stored in Financial Manager), but will be limited to using only a credit/debit card. For an easy move, please click on the 'Financial Manager Quick Start Guide' here
Source: www.uspto.gov Jun 28, 2016 (Newsletter Issue 12/16)Comments to Changes of Use Requirements WantedOn June 22, 2016, the USPTO issued a notice of proposed rulemaking entitled "Changes in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases" in the Federal Register at 81 Fed. Reg. 22. Comments are due on or before August 22, 2016.
The USPTO proposes to revise the rules in parts 2 and 7 of title 37 of the Code of Federal Regulations to allow the USPTO - during the examination of affidavits or declarations of continued use or excusable nonuse filed pursuant to sections 8 or 71 of the Trademark Act, 15 U.S.C. 1058, 1141k - to require the submission of information, exhibits, affidavits or declarations, and additional specimens of use as may be reasonably necessary for the USPTO to verify the accuracy of claims that a trademark is in use in connection with the goods/services listed in the registration.
This will benefit the public by helping the USPTO assess and promote the integrity of the trademark register by encouraging accuracy in the listing of goods/services for which use or continued use of the mark is claimed. The proposed rules also facilitate the cancellation of registrations by the USPTO of marks that were never in use or are no longer in use, and for which acceptable claims of excusable nonuse were not submitted.
Source: www.uspto.gov May 31, 2016 (Newsletter Issue 10/16)New Payment Tools Launched by USPTOThe USPTO launched two new online fee payment tools to the public: The Financial Manager and the Patent Maintenance Fees Storefront. For more information, please click here
Source: www.uspto.gov May 31, 2016 (Newsletter Issue 10/16)Comments to Proposed Fees Adjustment WantedOn May 27, 2016, the USPTO issued a notice of proposed rulemaking relating to trademark fee adjustment in the Federal Register. Comments are due on or before July 11, 2016 to the USPTO’s notice, which was published at 81 Fed. Reg. 103.
The rule proposes to set or increase certain trademark fees, as authorized by the Leahy-Smith America Invents Act. The proposed fees will allow the Office to recover the aggregate estimated cost of the Trademark and Trademark Trial and Appeal Board (TTAB) operations and USPTO administrative services that support Trademark operations.
Source: www.uspto.gov May 18, 2016 (Newsletter Issue 9/16)New Status Feature LaunchedOn May 7, 2016, the USPTO launched a new status feature in TSDR called the TM5 Common Status Descriptors. This feature provides status of applications and registrations at the USPTO using a uniform set of icons and terms that were cooperatively developed by the TM5. Please find more information here
Source: www.uspto.gov Mar 02, 2016 (Newsletter Issue 4/16)Courtesy Email Reminders by USPTOHolders of international registrations designating the United States of America receive courtesy email reminders of the requirement to file affidavits of continued use in commerce by the United States Patent and Trademark Office (USPTO).
To avoid invalidation of protection under the law of the US, holders of US registrations as well as holders of international registrations containing a designation of the US are required to periodically affirm, in an affidavit, the continued use in commerce (or claim excusable non-use) of a mark with respect to the goods and services for which the mark has been granted protection. This affidavit must be filed directly with the USPTO.
As of January 2015, holders of US registrations and of international registrations designating the US receive a courtesy email from the USPTO reminding them of the upcoming deadline to file an affidavit of continued use in commerce if the holders have:
- a “live” registration on the date the reminder is sent,
- provided a valid email address to the USPTO, and
- authorised email communication with the USPTO.
These reminders are sent on the start date of the period to file the affidavit of continued use to the email addresses on record with the USPTO. The reminders identify the mark and indicate, inter alia, the deadline to file the said affidavit, as well as the grace period deadline and the filing fee per class. No reminders are sent by regular mail and no follow-up emails are attempted for undeliverable emails. Any failure by the USPTO to provide the courtesy email reminders or any non-receipt of such reminders will not excuse a holder who fails to meet its statutory obligations.
Holders are encouraged to use the USPTO Trademark Application Electronic System (TEAS) Change of Correspondence Address Form to indicate, update, or delete the email addresses to which the USPTO can send courtesy email reminders. Holders need to enter the corresponding US application serial or US registration number which can be found in the statement of grant of protection. Holders cannot enter the international registration number.
For further information on the requirement to file an affidavit of continued use (or excusable non-use), please check here and here
Source: www.wipo.int Jan 20, 2016 (Newsletter Issue 1/16)Nice Classification Tenth Edition, 2016 Version ImplementedAs of January 1, 2016, the Nice Classification, Tenth Edition, version 2016 (NCL 10-2016), became effective.
For further information, please click here. Changes to the class headings and a link to noteworthy changes are available here
Source: www.uspto.gov Nov 25, 2015 (Newsletter Issue 18/15)
New USPTO Regional Office Opened
The USPTO announced that a new Regional United States Patent and Trademark Office has been opened in Texas. The new office is located in the Terminal Annex Federal Building in Dallas.
It will provide outreach services for inventors and entrepreneurs in Alabama, Arkansas, Louisiana, Mississippi, New Mexico, Oklahoma, Tennessee and Texas. Further, the office will assist the USPTO in fostering and protecting innovation.
Services will be readily accessible to all applicants and the office will serve as a hub of education and outreach to the Southwest region.
Source: www.uspto.gov
Nov 11, 2015 (Newsletter Issue 17/15)Trademark Manual of Examining Procedure UpdatedOn October 30, 2015, the USPTO issued the October 2015 Trademark Manual of Examining Procedure (TMEP), which incorporates USPTO trademark practice and relevant case law reported prior to October 1, 2015.
The policies stated in this revision supersede any previous policies stated in prior editions, examination guides, or any other statement of USPTO policy, to the extent that there is any conflict.
More information on the October 2015 TMEP Highlights can be seen here
Source: www.uspto.gov Jul 14, 2015 (Newsletter Issue 11/15)TBMP 2015 UpdateThe Trademark Trial and Appeal Board (TTAB) announces that the 2015 update to the Trademark Trial and Appeal Board Manual of Procedure (TBMP) is available online in a searchable version and in pdf.
To access the TTAB website, please click here
Source: www.uspto.gov Jun 30, 2015 (Newsletter Issue 10/15)Changes in Requirements for Collective Trademarks and Service MarksThe USPTO has issued a final rule relating to Changes in Requirements for Collective Trademarks and Service Marks, Collective Membership Marks, and Certification Marks. The rule published in the Federal Register today (80 Fed. Reg. 33,170 (June 11, 2015)), and will become effective July 11, 2015.
This rule primarily codifies current USPTO practice and provides the public more transparent and detailed guidance regarding registering and maintaining registrations for these types of marks.
It contains a new requirement for owners of certification marks filing registration maintenance documents with the USPTO to include certification standards, in the event the standards were not previously provided or have changed. This rule will help ensure that the public record contains current information about what standards are being used to certify goods under the mark.
The rule also includes some amendments that do not specifically refer to certification or collective marks because, in adding detail regarding these types of marks, some broader changes were required to create consistency, to streamline the rules, and to consolidate text and add headings for ease of use. A link to the final rule is available under 'Recent Final Rules' at http://www.uspto.gov/trademark/laws-regulations
Source: www.uspto.gov Jan 28, 2015 (Newsletter Issue 2/15)Changes to Trademark Rules of PracticeThe United States Patent and Trademark Office (‘‘Office’’) is revising the Trademark Rules of Practice and the Rules of Practice in Filings Pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks to benefit the Public by providing greater clarity as to certain requirements relating to
- representation before the Office
- applications for registration
- examination procedures
- amendment of applications
- publication and post publication procedures
- appeals, petitions
- post registration practice
- correspondence in trademark cases
- classification of goods and services
- procedures under the Madrid Protocol
For the most part, the rule changes are intended to codify existing practice.
This rule is effective February 17, 2015.
For more information, please check the announcement and the Rules of Practice.
Source: www.uspto.gov Jan 13, 2015 (Newsletter Issue 1/15)Official Fees ReducedThe USPTO has issued a notice reducing certain trademark fees. As of January 17, 2015, the filing fee for new electronic applications will be reduced by USD 50 to USD 225 per class. The filing fee for a renewal application will be reduced by USD 100 to USD 300 per class.
For further information on reduced fees and TEAS application filing options, please click here
Source: www.uspto.gov Jan 13, 2015 (Newsletter Issue 1/15)The Nice Classification, Tenth Edition, Version 2015 Became EffectiveAs of January 1, 2015, the Nice Classification, Tenth Edition, version 2015 (NCL 10-2015), became effective. Changes to the class headings and a link to noteworthy changes are available here.
To see a comprehensive list of all the new or changed entries, on or after January 1, 2015, please use the following search strategy in the USPTO’s ID Manual: “20150101” or search by the “Effective Date” field in IDM-NG.
Source: www.uspto.gov Nov 11, 2014 (Newsletter Issue 17/14)Trademark Manual of Examining Procedure UpdatedThe USPTO issued the October 2014 Update of the Trademark Manual of Examining Procedure (TMEP) on 30 October 2014. It incorporates USPTO trademark practice and relevant case law reported prior to 1 October 2014. The policies stated in this revision supersede any previous policies stated in prior editions, examination guides, or any other statement of USPTO policy, to the extent that there is any conflict.
To access the October 2014 TMEP Highlights please click here
For a listing of all the changes, please access here
Source: www.uspto.gov May 16, 2014 (Newsletter Issue 8/14)Reduction of Application and Renewal Fees ProposedThe USPTO has issued a notice of proposed rulemaking relating to the reduction of certain application and renewal fees (79 FR 26664 (9 May 2014)). The notice proposes a new application filing option, to be known as TEAS Reduced Fee (“TEAS RF”= Trademark Electronic Application System Reduced Fee), which will reduce the fee for applications filed using the regular TEAS application form if the applicant authorizes e-mail communications and agrees to file all responses and other documents electronically during the prosecution of the application. In addition, the notice proposes to reduce the fee for TEAS Plus applications and the fee for a TEAS application for renewal of a registration.
The full notice is available under “Proposed Rules” here. Comments must be received by 23 June 2014 to ensure consideration.
Source: www.uspto.gov Mar 04, 2014 (Newsletter Issue 4/14)Notice of Proposed RulemakingThe USPTO has issued a notice of proposed rulemaking relating to changes in requirements for collective trademarks and service marks, collective membership marks, and certification marks.
These proposed rules primarily codify current USPTO practice and provide the public more transparent and detailed guidance regarding registering and maintaining registrations for these types of marks. A new requirement is proposed for owners of certification marks filing registration maintenance documents with the USPTO to include certification standards, in the event the standards were not previously provided or have changed. This proposed rule will help ensure that the public record contains current information about what standards are being used to certify goods under the mark. The notice also includes some proposed amendments to rules that do not specifically refer to certification or collective marks because, in adding detail regarding these types of marks, some broader changes were required to create consistency, to streamline the rules, and to consolidate text and add headings for ease of use.
The full notice can be viewed here. Comments must be received by 21 May 2014 to ensure consideration.
Source: www.uspto.gov Feb 04, 2014 (Newsletter Issue 2/14)Proposed Rule to Trademark PracticeThe USPTO has issued on 23 January 2014 a notice of proposed rulemaking relating to miscellaneous changes to trademark-related rules of practice. The notice proposes a variety of minor rules changes to modernize and clarify the trademark rules, update cross references, and eliminate requirements now deemed unnecessary. Comments must be received by 23 April 2014 to ensure consideration.
To access the full notice please click here
Source: www.uspto.gov Jan 21, 2014 (Newsletter Issue 1/14)Nice Classification UpdateOn 1 January 2014, the Nice Classification, Tenth Edition, version 2014 (NCL 10-2014), became effective. Changes to the class headings are available here and noteworthy changes to the Nice Classification System under the Nice Agreement, Tenth Edition, version 2014 can be seen here.
Source: www.uspto.gov Dec 17, 2013 (Newsletter Issue 18/13)
Submissions to TM ID Suggest Mailbox
On January 1, 2014, the USPTO will publish new and updated goods and services identifications and classifications in the USPTO ID Manual to reflect the Nice Classification, Tenth Edition, version in force effective January 1, 2014. In order to implement these changes, no additional entries to the ID Manual will be uploaded after December 12, 2013. Suggestions to the TM ID Suggest mailbox that are submitted and approved between Tuesday, December 10, 2013 and Monday, January 6, 2014 will be added to the Manual and become effective on Thursday, January 9, 2014.
Source: www.uspto.gov
Oct 15, 2013 (Newsletter Issue 15/13)USPTO Operation StatusThe United States Patent and Trademark Office (USPTO) announced that during the general government shutdown which began October 1, 2013, the office will remain open, using prior year reserve fee collections to operate as usual for approximately four weeks. They continue to assess their fee collections compared to their operating requirements to determine how long they will be able to operate in this capacity during a general government shutdown. USPTO will provide an update as more definitive information becomes available.
Should USPTO exhaust these reserve funds before the general government shutdown comes to an end, the office would shut down at that time, although a very small staff would continue to work to accept new applications and maintain IT infrastructure, among other functions. Should a USPTO shutdown become necessary, details of the agency’s plan for an orderly shutdown are available on page 83 of the United States Department of Commerce’s shutdown plan. Please check here
Source: www.commerce.gov Jul 16, 2013 (Newsletter Issue 11/13)Electronic Official Gazette ImprovedThe United States Patent and Trademark Office has posted a beta version of a new and improved electronic Official Gazette (eOG) at http://eog-test.etc.uspto.gov/. This version is in a tagged XML format and permits tailored searching, downloads and a variety of additional features.
USPTO appreciates feedback under https://www.surveymonkey.com/s/83BN9PK.
Source: www.uspto.gov Nov 06, 2012 (Newsletter Issue 16/12)New Version of TMEP OnlineThe United States Patent and Trademark Office (USPTO) issued the Trademark Manual of Examining Procedure (TMEP), with an effective date of October 31, 2012. The current version of the TMEP is now identified by the month and year in which it is issued. This is a change from prior versions, which were identified using edition and revision numbers.
USPTO informed that the new online interface, which was made available for preview in September, is now the exclusive interface and search tool for the TMEP. A Highlights document that includes some of the changes set forth in the October 2012 TMEP is also available on the USPTO website.
For more information on the TMEP, please click here
Source: www.uspto.gov Sep 27, 2012 (Newsletter Issue 14/12)
Trademark Manual of Examining Procedure Updated
The United States Patent and Trademark Office (USPTO) announced that a new online version of the 8th edition of the Trademark Manual of Examining Procedure (TMEP) with a new search tool is available. The new version replaces the current online version when the next revision of the TMEP is issued in October 2012.
The new online version is part of a system that will make it easier to revise, update, and publish the TMEP on a more frequent basis to ensure that the latest changes to statutes, rules, procedures, and examining practices are published and available to users.
The new online version features a redesigned user interface and a search system that enables users to conduct highly focused queries using advanced search syntax including Boolean, proximity, and wild-card search capabilities. A “search history” tool allows quick access to a record of searches conducted during a search session. And a flexible interface, whereby users can make various preference changes for browsing the Table of Contents, displaying and viewing search results, and adjusting font sizes and screen setups, makes it easier to navigate across content areas, search results, and viewed documents.
Source: www.uspto.gov
Sep 27, 2012 (Newsletter Issue 14/12)
Patent Reform Now Implemented
The United States Patent and Trademark Office (USPTO) announced that numerous provisions of the Leahy-Smith America Invents Act of 2011 went into effect. The new rules will spur innovation and economic growth by streamlining the patent application process and introducing new procedures to ensure patent quality. Seven reforms to U.S. patent law went into effect one year after the signing of the bipartisan patent reform legislation on September 16, 2011.
Some of the new rules are as follows:
- Three new administrative trial provisions - inter partes review, post-grant review, and the transitional program for covered business method patents - will offer third parties timely, cost-effective alternatives to district court litigation to challenge the patentability of an issued patent.
- The supplemental examination provision allows applicants to submit additional information relevant to the patentability of an issued patent to the Office in a new procedure that may protect the patent from an inequitable conduct charge.
- The inventors oath and declaration provision that for the first time allows assignee filing of a patent application.
- The citation of prior art and written statements provision will enable the Office to treat the claims in a patent consistent with how a patent owner represents its claims to the courts or in other Office proceedings.
Source: www.uspto.gov
Sep 02, 2012 (Newsletter Issue 13/12)
Release version 2.0 of Trademark Status and Document Retrieval (TSDR)
The United States Patent and Trademark Office (USPTO) has released version 2.0 of Trademark Status and Document Retrieval (TSDR).
The new features in TSDR 2.0 include:
- A new “Assignment Abstract of Title Information” section that allows users to both review trademark assignment details and filter assignment data by conveyance type.
- A TSDR document viewer that allows users to simultaneously review multiple documents (e.g., the Office action and subsequent responses) in separate windows.
- A listing of the application’s notice of allowance date.
- URLs featuring file-specific identifiers (serial number, registration number, etc.) that allow for direct access to specific case data and documents. These direct links to trademark application and registration data will make TSDR 2.0 function more like “old” TARR. Entry of the URLs shown in TSDR into the address bar of an Internet browser will result in the display of the requested status data or documents.
- Hyper-links to “parent” or “child” applications of cases that have divided.
On September 8th, all existing direct (static) hyper-links displaying TDR information will be redirected to TSDR. Soon thereafter, the web pages at http://tarr.uspto.gov/ and http://tdr.uspto.gov/ will no longer be accessible.
Questions can be send to TSDR@uspto.gov.
Source: www.uspto.gov
Sep 02, 2012 (Newsletter Issue 13/12)Public Comment Period on TM Fees Announced The United States Patent and Trademark Office (USPTO) has issued a notice seeking public comment on the possibility of adjusting trademark application fees so as to lower the fees for all applicants willing to file and communicate electronically with the USPTO.
The efficiencies achieved by trademark electronic filing and communications have put the USPTO in a position to potentially reduce the overall collection of trademark application fees. The Office wishes to adjust the fees in a way that further promotes efficiency both for users and the USPTO.
Comments are also being sought on the possibility of increasing fees on applications based on paper, currently only 1% of trademark applications, given that these applications are more costly and burdensome for the USPTO to process.
For further information, please check the notice here. Responses can be sent to TMFRNotices@uspto.gov until October 15, 2012.
Source: www.uspto.gov Sep 02, 2012 (Newsletter Issue 13/12)
Direct Link to Trademark Official Gazette Page
The United States Patent and Trademark Office (USPTO) is committed to continuous improvement of its online systems. Beginning September 4, 2012, trademark applicants who have authorized communications by e-mail will receive a direct link to the page on which their mark in the “Trademark Official Gazette Publication Confirmation” notice issued on the date the mark publishes in the Trademark Official Gazette (TMOG). This will allow applicants to access the page in the TMOG where the mark publishes, rather than having to download the entire TMOG.
On the publication date or shortly thereafter, applicants should review the information that appears in the TMOG for accuracy. To request correction of any USPTO data-entry error after publication, applicants need to e-mail the requested correction to TMPostPubQuery@uspto.gov.
The post-publication amendment form is needed for applicant amendments or corrections after publication (but before issuance of a Notice of Allowance or registration, including if an extension of time to oppose has been filed). The form is available at http://teasroa.uspto.gov/ppa/.
Source: www.uspto.gov
Jun 25, 2012 (Newsletter Issue 10/12)
New Patent and TM Resource Center
The United States Patent and Trademark Office (USPTO) announced that the University of New Hampshire School of Law Library, which was designated as the Concord Patent and Trademark Resource Center (PTRC.) on January 30, 2012, is now open to serve the intellectual property (IP) needs of the public.
Currently, PTRC designated libraries can be found in 46 states, the District of Columbia and Puerto Rico. This network of more than 80 public, academic, state and special libraries assists a variety of customers including inventors, intellectual property attorneys/agents, business people, researchers, entrepreneurs, students and historians.
In addition to offering free electronic services and resources designed to support the intellectual property needs of local and state patrons, the Concord Patent and Trademark Resource Center will employ USPTO-trained librarians to provide customer assistance on the use of the agency’s patent and trademark databases and public seminars on intellectual property topics for novice and experienced users. UNH was the first law school in the U.S. to offer a patent law and prosecution program and the recently opened Franklin Pierce Center for Intellectual Property offers a growing menu of academic, professional and practice programs and activities.
Source: www.uspto.gov
Jun 25, 2012 (Newsletter Issue 10/12)
Assessment of Accuracy of Register
The U.S. Patent and Trademark Office (PTO) implemented a pilot study program in order to assess the accuracy and integrity of the register effective June 21, 2012. The two-year pilot study applies to use-based applications as well as maintenance filings or amendments made in connection with the registered marks. As a result of this pilot study program, your use-based application or existing registration in the U.S. may be subjected to additional proofs of use inquiries and/or requirements.
The study permits the random selection of up to 250 cases per year for further scrutiny insofar as marks that are actually in use in the U.S. and so as to verify the accuracy of identifications of goods and services. The PTO may require additional proofs of use per class and/or other information and materials to support use of mark. In such instances, the applicant/registrant will have at least six months within which to comply with the request.
Source: Silverberg Goldman & Bikoff, LLP, Washington, U.S.
Jun 25, 2012 (Newsletter Issue 10/12)New gTLD Name Applications RevealedThe Internet Corporation for Assigned Names and Numbers (ICANN) has revealed the list of applicants for new generic Top-Level Domain (gTLD) names.
A total of 1,930 new gTLD applications were received during the application period of the new generic Top-Level Domain program. The applications will now be subject to a public comment, objection period and evaluation system.
A 60-day comment period has started, allowing anyone in the world to submit comments on any application, and the evaluation panels will consider them. Objection against an application needs to be filed until January 13, 2013.
To asscess the full list of the new applications, please click here
Source: www.icann.org Mar 06, 2012 (Newsletter Issue 4/12)
Official Warning
The United States Patent and Trademark Office (USPTO) has issued an official warning.
One or more private companies not affiliated with the USPTO but using a name which appears to be "official" or somehow related to the USPTO or the United States Government has been directly contacting trademark owners around the world.
These companies offer to provide (for a fee) (1) legal services, (2) trademark monitoring services, (3) recording trademarks with U.S. Customs and Border Protection, and (4) to “register” the marks in the company’s own private registry. The companies may appear to be using official government documents and they request payments. They may display your trademark and its serial number or registration number, or refer to a section of the U.S. Code or other government agencies. They may appear to be warning you that your trademark registration is going to expire.
The USPTO does not send any solicitations for payment of fees. All official USPTO correspondence will be from United States Patent and Trademark Office in Alexandria, Virginia. If it comes by e-mail, it will be from the domain “uspto.gov.” It is rare for the USPTO to contact a trademark owner represented by an attorney. Please read all such correspondence very carefully. If you have any doubts about correspondence you receive concerning your trademark, please do not send any payment without first asking us whether it is legitimate.
Misleading correspondence can be forwarded to the USPTO, at TMFeedback@uspto.go, subject=solicitations. When doing so, please let the USPTO know if you thought the letter was an official communication and whether you mistakenly paid any fees.
Source: Arnstein & Lehr LLP, USA
Jan 23, 2012 (Newsletter Issue 1/12)TM Status Document Retrieval The USPTO introduced a new system, Trademark Status and Document Retrieval (TSDR 1.0) in December 2011.
The new system TSDR 1.0 redefines the way Trademark status data and all documents will be displayed to the public. It reengineers the existing functionality that the current systems TARR and TDR had provided and adds new features, providing access to one place for viewing, printing, and downloading snapshots of the data the USPTO stores about a trademark application or registration.
For more information on the new system, please click here Dec 01, 2011 (Newsletter Issue 14/11)New Patent Reform Act AdoptedPresident Obama signed the America Invents Act on September 16, 2011. The introduction of the new patent system is a historical event and an adjustment to the rest of the world.
The new system creates a “first- inventor-to-file” system, replacing the current “first-to-invent” system. The new law will continue giving inventors in the U.S. a “Limited Inventor Grace Period” of 12 months with the possibility to be granted patent of an innovation which is already disclosed in the U.S.
Improvements of the Law:
The new law will consider foreign priorities, even if these are in other languages than English. This will allow filing of so-called Provisionals redundant. Also, it is introduced a Post-Grant Review within 9 months of grant.
The new system is expected to reduce the process time for applications despite that the number of applications has increased. However, this remains to be seen, especially as both the old law and the new law will exist parallel for at least 20 years. Thus, new patent applications filed prior to the adoption of the new law will to be included and handled under the old system, whilst new patent applications filed after the adoption of the new law will be encompassed and examined under the new patent system.
Source: United States Patent and Trademark Office, www.uspto.gov
GROTH & CO KB, Sweden United States National Trademark protection is governed by a federal law in force since 1946 commonly referred to as “The Lanham Act”. It applies throughout fifty U.S. states as well as any territory under United States jurisdiction and control, including the United States Virgin Islands (VI), American Samoa (AS), Guam (GU) and Puerto Rico (PR).
Each individual state in the United States also has their own trademark laws but their registration system is more for purposes of notice to third parties of local rights. Such registered rights have little substantive effect except to alert third parties of potential local uses that could be considered "common law" uses. Unregistered use of a trademark, known as common law use, without registration, may prevent junior conflicting rights in the geographic area of use.
If a mark is deemed “merely descriptive” (which includes geographic descriptiveness and descriptiveness as a surname) it is not registrable on the Principal Register unless it is shown to have acquired secondary meaning as a trademark; however, merely descriptive marks may be eligible for registration on the Supplemental Register, provided the mark is already in use in the United States. If a mark registered on the Supplemental Register can later prove to have shown acquired distinctiveness, it may then be registered on the Principal Register. While the Supplemental Register does not have all of the advantages of registration on the Principal Register, it can be advantageous in alerting third parties to claims of trademark rights. Further, it can be cited by an Examiner against a later filed application that would be confusingly similar. Moreover it allows the use of a registration symbol in connection with the trademark.
Once registered, a “federal trademark registration” is protected throughout all U.S. states and territories. Individual U.S. states also permit registration of a trademark under state law. Such registrations provide legal rights only within the boundaries of one state and, subject to the actual use of the mark, may be preempted by rights granted by a federal registration. The United States follows the first-to use system. Trademark law is based on the principles of "common law". The USA is a member of the Madrid Protocol.
Nice classification, 12th edition, with local exceptions for various goods and services (see https://www.uspto.gov/trademarks/trademark-updates-and-announcements/nice-agreement-current-edition-version-general-remarks)
Registered marks may include fanciful, arbitrary, suggestive and distinctive words, names, symbols, acronyms, letters, numbers, devices, slogans, colours or colour combinations, three-dimensional forms, the three-dimensional form of a good or its packaging, sound marks, holograms, motion marks and smell marks and any combination of the mentioned signs. Further, taste and touch are theoretically registrable.
Colours alone, product design, and certain other marks, including surnames, geographic indications, and any “merely descriptive” mark must demonstrate secondary meaning (acquired distinctiveness) before being permitted to register. Marks deemed to be generic terms for the subject goods or services cannot be registered on either the Primary Register or Supplemental Register.
The following trademark types are registrable: trademarks, service marks, collective marks, and certification marks.
A federal trademark application is filed at the U.S. Patent and Trademark Office (USPTO), based on use or intent to use, or on a foreign registration or application. Trademark applications must be filed electronically through TEAS, except under limited circumstances.
Multiple-class applications are possible.
All foreign-domiciled trademark applicants, registrants, and parties whose permanent legal residence or principal place of business is outside the United States are required to have a U.S.-licensed attorney represent them at the USPTO in all trademark matters. The U.S.-licensed attorneys representing anyone before the USPTO in trademark matters are required to provide their name, postal address, and email address, a statement confirming their active membership in good standing of their bar, and their bar membership information. An appointment of a US representative requires a simple power of attorney or some documentation providing that the representative has the authority to act on behalf of the applicant.
Trademark applicants and registrants are also required to provide and maintain an accurate email and domicile address for the applicant or registrant.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Applications that conflict with prior trademarks will be refused but the owners of cited earlier marks are not notified of this action. Marks deemed to be “merely descriptive” in the examination can be registered if distinctiveness is proven to have been acquired by use. This can typically be shown by five years’ use in commerce in the United States, by an existing registration on the Principal Register of the same mark for closely related goods, or by other survey, market, or consumer evidence.
The processing time from first filing to registration is approximately 9-16 months if no refusals occur. The processing time can vary depending on a variety of factors including the basis for the filing. The first examination occurs approximately three months after filing.
The Office may issue an Office Action on a trademark application, which typically requires a trademark applicant to respond within six months to respond to the action. Effective December 1, 2022, the time to respond to office actions will be shortened to three months (excluding Madrid Section 66(a) applicants). Applicants will be able to extend the time by three months up to a maximum of six months from the Office action issue date, upon timely request and payment of a fee of USD 125.00 for extension requests filed via TEAS and USD 225.00 for permitted paper-filed requests. To be considered timely, a request for extension of time must be received by the Office on or before the deadline for response set forth in the Office action.
Once any objections are resolved, or if no objections are issued, the application is approved for publication and published once in the “Official Gazette”. If the application was filed based on use in United States commerce (called Section 1(a)) or on a foreign registration (called Section 44(e)) and no opposition has been filed during the 30-day opposition period, the registration will be issued.
Applications based on foreign registrations (via the Paris Convention) or under the Madrid Protocol do not require a specimen of, and Affidavit attesting to use until the sixth anniversary of the date of registration. For applications filed based on intent to use in interstate commerce in the United States or international commerce with the United States, after allowance will be given six months to provide specimen of use and an Affidavit attesting to use (extendible for five additional six-month terms) before. After the statement of use is submitted and accepted, the registration is issued.
National:The opposition period is 30 days from the publication date of the application. The period is extendable up to 180 days from the date of publication.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
A trademark registration is valid for a full term of 10 years from date of registration, if an Affidavit of Use and specimen of use is filed between the 5th and 6th year after the date of U.S. registration.
After 5 years of continuous use of the mark in the U.S., the registrant can elect to claim an “incontestability” status, making the registration subject to fewer legal theories that could result in cancellation. An Affidavit of Use and proof of use must be filed between the 9th and 10th year post registration for trademark renewal. Then the registration can be renewed for subsequent 10-year periods.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereElectronic filing is mandatory for trademark applications. The filing fee is USD 350 per class when using TEAS Standard and USD 250 per class when using TEAS Plus. This filing option applies to simplified applications using predetermined goods and services.
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Practical details on trademark licensing are available in our publication
hereOnline you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
If you like to purchase all available information for this country, click the order button.
The total price is
49.00 EUR. A PDF-Download will be sent to you electronically.
Further practical details are available in our publication on this topic
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Jan 24, 2023
Ladas & Parry LLP, New York, USA
