With the President’s signing of the Consolidated Appropriations Act for 2021 on December 27, 2020, several important updates to U.S. intellectual property law have been adopted.
Trademark Act Amended
The Trademark Modernization Act (“TMA”) makes significant amendments to the Lanham Act, which will become effective December 27, 2021. The TMA generally aims to reduce deadwood on the register of trademarks by providing for summary expungement. But the Act also made some noteworthy amendments to trademark prosecution and enforcement procedures. A summary of some of the highlights include:
- New Ex Parte Expungement Proceeding. A third party, or the Trademark Office, may petition to expunge a registration on the basis that the mark has never been used in commerce on or in connection with some or all of the goods or services recited in the registration. The proceeding is only available for registrations that have been registered for more than three years but less than 10 years.
- Response Deadlines for Trademark Office Actions May be Shortened. The current response time for all Office Actions is six months. The TMA allows the response period to be shortened to a period that is at least sixty days, provided extensions of
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Before adopting a new trademark or filing an application for federal trademark registration, it is wise to conduct clearance searching. There are various purposes behind clearance. These include 1) dispute avoidance; 2) ensuring the mark as strength; 3) evidence of diligence and good housekeeping.
Dispute Avoidance. First and foremost, searching helps assess whether the chosen mark is likely to trigger a dispute with someone who already adopted the same or a similar mark. Importantly, trademark conflicts are not limited to the use of an identical mark for an identical product or service. Instead, the legal analysis typically focuses upon whether the existence of two similar marks in the marketplace might lead consumers to assume that the products come from the same source or that the sources have a relationship or are otherwise associated with each other. Furthermore, contrary to popular belief, trademark rights are effective upon the first use of a mark on a commercial product or service. Marks need not be registered. Therefore, the best way to avoid a dispute is to search the landscape of other users in the marketplace to be sure someone else didn’t hatch your great branding idea before you did.
Strength Assessment… Keep reading
A trademark’s value can be lost or weakened when a trademark owner fails to protect or police rights in the marketplace. Even improper and/or inconsistent use of a mark can hamper a trademark owner’s ability to enforce exclusive rights in a selected brand. Even if you own a federal trademark registration, the exclusive rights you own are not “self-executing,” and as the trademark owner, you are ultimately responsible for policing the marketplace, and sometimes your own use, to safeguard against losing rights.
Here are some of the top tools every trademark owner should consider incorporating into its trademark enforcement strategy:
1. Include Proper Notices Of Ownership and Registration of Trademarks. If your mark is not registered, but you have a good faith belief that you own a mark exclusively, you should use “TM” with your mark. This symbol tells the world that you believe yourself to be the rightful mark owner.
Once registered, you should use one of the following forms of notice in connection with each use of the registered trademark, which relates to the types of goods or services described in the Certificate of Registration: ®, Reg. U.S. Pat. & Tm. Off., or Registered in … Keep reading
Trademark rights are jurisdictional, meaning a trademark registration issued in the U.S. may be all but worthless in trying to stop infringement in say, Australia. If you do business outside of the U.S., pursuing trademark registrations in other countries may be valuable. U.S. trademark owners have several options with respect to pursuing international trademark rights and the best choice for your company depends on a few factors, including your goals and budget. As a very general rule we often tell clients that, subject to any budgetary constraints, it makes sense to try to obtain trademark protection in those countries where your company currently trades AND where you intend to trade (meaning generate sales/shipments) in the next 18-36 months.
The main paths to pursuing trademark registration in other countries are:
- to file separate national/regional (where available) applications directly with each local intellectual property office in the country or region of interest; or
- where feasible, file a single application via the World Intellectual Property Office (“WIPO”), designating the individual countries and regions of interest.
The One Size Fits All Approach – Filing Through WIPO using the “Madrid System”
- Can be Less Expensive, But Rights Will be Narrower and Vulnerable
One filing … Keep reading
The process to apply for a federal trademark registration is a separate and more involved examination process than registering a business name with a state’s Secretary of State. The U.S. Patent and Trademark Office (“USPTO”) conducts a months-long examination of every trademark application to ensure all statutory and regulatory requirements are met and that the mark does not conflict with an already registered or earlier-for applied mark. We have summarized the benefits of trademark registration and the process below:
Benefits to a Federal Trademark Registration
In the U.S., trademark registration is not necessary to protect or enforce your exclusive rights in your brand. You may be able to protect unregistered trademarks under so-called “common law” trademark rights based on your use and reputation of the mark in commerce. However, common law trademark rights are much more limited than the rights afforded to federally registered trademark rights. Federal registration of your mark confers a number of benefits upon the trademark owner, including the following:
- presumption of validity of the registration, ownership of the mark, and exclusive use of the mark in commerce;
- presumption of continuous use of the mark since the filing date of the application;
- incontestability of the mark
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A relative outlier compared to the trademark regimes in most of the world, the United States Patent and Trademark Office (“USPTO”) only permits registrations to be maintained for goods and services that are actually being provided in the U.S. and only allows registrations to issue based on a future “intent to use” in limited circumstances. In other words, under the U.S.’s trademark system, trademark owners are not entitled to grab additional registered rights beyond the scope of their actual business activities in the U.S. While previously the Office was somewhat lenient in accepting claims, more recently the USPTO appears to be cracking down on applicants to ensure consistency on the U.S. Register. A few emerging examination trends demonstrate this trend:
BROAD CLAIMS BASED ON INTENT TO USE
Previously: Applications based solely on the applicant’s stated bona fide intent to provide all claimed goods and services were accepted based on this representation alone.
Recently: The USPTO has started requiring applicants of seemingly unrelated goods and/or services to justify how they could have a bona fide intent to provide various, disparate goods and/or services and explain to the office their business plans to support such a claim.
BROAD CLAIMS … Keep reading
Highlights of Brazil’s LGPD
Brazil became the latest country to draw inspiration from Europe’s General Data Protection Regulation (“GDPR”) and adopt its own national comprehensive legal framework for personal data regulation, called the Lei Geral de Proteção de Dados (“LGPD”). A comparison of some of the key topics covered by the GDPR and LGPD are summarized below:
||May 25, 2018
||August 15, 2020 (but enforcement will not begin until August 1, 2021)
||Up to the higher of €10 M or 2% of global annual revenue from preceding financial year
||Up to the lesser of 50 M reals or 2% of Brazilian sourced revenue from preceding financial year
||Personal data processing activities when:
1. Controller or processor is established in the EU, regardless of whether the processing takes place in the EU or not;
2. the data refers to individuals located in the EU when offering goods or services to such data subjects or monitoring their behavior;
3. carried out by a controller not established in the EU, but in a place where Member State law applies by virtue of public international law.
|Personal data processing activities when:
1. carried out
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Effective August 17, 2020, the U.S. Copyright Office will begin providing a special group registration option for “short online literary works” such as poems, short stories, articles, essays, columns, blog entries, and social media posts. This new registration option will allow applicants to cover up to 50 works with a single application and one filing fee.
In order to qualify for group registration for short online literary works:
- There must be 50-17,500 words in each work;
- Each work must be created by the same individual or individuals (if created jointly);
- Each creator must be named as the copyright claimant for each work; and
- Each work must be published online within a three-calendar-month period.
This new group registration option provides a streamlined, cost-effective path for influencers, bloggers, and other online content creators to register the copyright to their creative works. While copyright registration is not technically required to own the copyright to one’s creative works, under U.S. law, copyright owners cannot file a lawsuit against infringement until they have received a registration, or refusal to register, from the U.S. Copyright Office. Owning a registration prior to a creative work being infringed may also provide options for the owner … Keep reading
The U.S. Trademark Office announced its intent to increase various filing fees, and assess new categories of fees, in response to its continually increasing operational expenses. The last time the U.S. Trademark Office changed its fee schedule was January 2017.
Fortunately, the Office has also indicated that it will not implement its proposed fee changes until October 2020 at the earliest. Even then, the notice suggests that it would weigh its operational needs against the state of the U.S. economy before moving forward with the fee adjustments.
Below is a summary of many of the highlights of the proposed filing fee changes for electronic filings (which the U.S. Trademark Office continues to encourage through lower filing fees compared to filing by paper):
Two new categories of fees are worth noting as they may significantly impact trademark portfolio management strategies.
New Fees Assessed for Delayed Requests for Reconsideration
For the first time, the Office is proposing to assess fees for submitting a Request for Reconsideration where such a request is filed more than three months from the issue date of a Final Action. Under U.S. trademark practice, if the Office raises an objection, the applicant will have six months … Keep reading
On August 4, iconic guitarist Neil Young sued the Trump Campaign, claiming that Trump’s unauthorized use of his songs Rockin’ in the Free World and Devil’s Sidewalk at various rallies, including at the Tulsa rally on July 20, violated Young’s copyrights in those songs. In filing his complaint, Young joins an elite crowd of artists who have complained about the purported unauthorized use of songs when the artist and the writer were not otherwise aligned politically. Reagan, GW Bush, and McCain (among others) have all had to defend claims brought by, respectively, Bruce Springsteen, John Mellencamp, and Heart suggesting that use of their songs were unauthorized violations of their copyrights (and other rights) in those songs.
Fundamentally, Young claims that he owns the copyrights in the songs used by the campaign and the campaign used them without authorization. Accordingly, he argues that he should be awarded an injunction against continued use, and damages for the prior violations.
These claims have a simple elegance and on their face. But anyone who has dealt with music performance rights and licensing knows that there is almost nothing simple about those concepts. Indeed, the world of music licensing is among the … Keep reading