Trademark Modernization Act: What You Need to Know

Congress passed the Trademark Modernization Act of 2020 on December 27th. It will become effective one year after its passage and aims to support businesses’ marketing and branding decisions in relation to their trademark registrations. As it introduces significant revisions to the Lanham Act, it provides new ways to challenge pending applications and existing registrations at the Trademark Office.

Because courts across the country took various positions regarding whether infringement created irreparable harm, the Act clearly restores a rebuttable presumption of irreparable harm to obtain injunctive relief for a trademark violation. The Act also establishes new procedures for third parties to challenge fraudulent applications and registrations.

Trademark owners will have new options in their brand protection arsenal but should also be aware that these procedures could open their trademark applications and registrations to new types of challenges from competitors. This stands as a pertinent reminder of the importance of trademark preclearance, monitoring, and enforcement.

For any questions about trademark filing procedure and the best path to protect your trademarks, please contact Gavin Law Offices, PLC. As a team that specializes in trademark filing and maintenance, we’re here when you need us.

(This is not intended as legal advice. Contact a lawyer for assistance in your particular situation.)

Will Trademark Holders Lose Rights in the UK?

By Elionas2 from Pixabay

While the United Kingdom formally withdrew from the European Union early last year, the Brexit transition period officially ended on December 31, 2020.  During the transition period, European Trade Mark Registrations (EUTMs) still extended to the UK and provided EUTM owners protection in the country.  Although as of January 1, 2021 EUTMs are no longer protected in the UK, the UK Intellectual Property Office (UK IPO) has created “comparable trade marks” for all registered EUTMs.  These comparable trade marks have the same legal status as if they were originally applied for and registered in the UK.  Owners of registered EUTMs did not need to request that any such comparable rights were created – this process was automatic.  Moving forward, the below points may be helpful in navigating trademark protection in the UK:

  • Pending EUTM applications – Any EUTM applications still pending on January 1, 2021 will need to be re-filed as new UK trade mark applications. Applicants may file new UK applications by September 30, 2021 to maintain the filing date and priority date of their EUTM applications.  The UK trade mark must be identical and cover the same goods and services as the EUTM.  UK trade mark application filing fees will apply, and the UK application will be subject to the same review process as any other UK trade mark application.
    • Because filing dates are important outside of the US, applicants with pending EUTM applications should aim to file within the 9 -month period after January 1, 2021 to ensure they are able to claim the same filing/priority dates in the UK as their EUTM applications. This process will not be automatic and requires action by applicants/counsel.
  • Address for Service in the UK – Those wishing to apply to register a trade mark in the UK should note that an address for service in the UK is required for new applications. Under the UK IPO’s new rule, owners of UK comparable trade marks will not need to change their address for service for 3 years if their new comparable trade marks were created from registered EUTMs.  After January 1, 2024, comparable trade mark owners will need to change their address for service to the UK only if their right is subject to proceedings (if your right is challenged and your address for service is outside the UK, the UK IPO will ask you to provide an address in the UK to engage in those proceedings).  Interestingly, this 3-year exception for comparable trademarks does not apply to comparable trade marks created from international registrations designating the EU under the Madrid Protocol.
    • This rule will limit businesses/individuals from filing UK trade mark applications themselves if they do not have a UK address. Owners of comparable UK trade marks may want to look into whether their existing EU counsel has an office in the UK.  Otherwise, such owners will need to appoint a new representative in the UK by January 1, 2024.  If your comparable UK trade mark was created from an EU designation under a Madrid Protocol application, the 3-year exemption period does not apply and you may need to appoint a representative with a UK address for service now.
  • Use Requirements – For EUTMs, an owner may use a mark in any member state of the EU to demonstrate use across the EU. Because the UK is no longer part of the EU, those applying for a UK trade mark will need use the mark in the UK in order to demonstrate use and may not rely on use in the EU.  For those with existing EUTM registrations that created comparable UK trade marks, the UK IPO will consider previous use in the EU.  However, owners of new UK comparable trade marks should note that marks become vulnerable to cancellation proceedings in the UK on the grounds of non-use after five years.  Thus, owners should put their marks to use in the next few years in the UK (if not already in use) if they wish to maintain their UK trade mark registrations and to avoid becoming vulnerable to cancellation proceedings.

For other questions, Gavin Law Offices is glad to advise on EU and UK trademark matters.

– Courtney Reigel, Esq.

U.S. Trademark Office to Increase Filing Fees for 2021

The United States Trademark Office recently announced that it will increase a number of its filing fees on January 2, 2021.  The increases apply to a wide variety of filings, including the fees for initial trademark applications.  We have included the most noteworthy increases below:

  • TEAS Standard Trademark Application: $350 per class
    Up from $275 per class
  • TEAS Plus Trademark Application (pre-approved goods and services): $250 per class
    Up from $225 per class
  • Section 8 (filed with both 8 & 15 and Renewal filings): $225 per class
    Up from $125 per class 
  • Petition to cancel/Notice of opposition filed through ESTTA: $600 per class
    Up from $400 per class
  • Initial 90-day extension requests for filing a notice of opposition, or second 60-day extension requests for filing a notice of opposition, filed through ESTTA: $200 per application
    Up from $100 per application
  • Petition to the Director filed through TEAS: $250
    Up from $100 

For the full list of fee increases, please visit: https://www.uspto.gov/trademark/laws-regulations/updated-trademark-ttab-fees-processes.

The U.S. Trademark Office will also implement a new fee for deleting goods, services, and/or classes from a registration after submitting a Section 8 declaration, but before the declaration is accepted, at a rate of $250 per class.

In light of the increased filing costs, Gavin Law Offices will work with clients who wish to take advantage of the lower filing fees to complete filings before the end of the year.  If you are considering a new trademark application or have maintenance filings due in the next year, we can help you complete such filings before January 2, 2021.  Please reach out as early as possible to ensure that we have enough time to get preclearance and/or the necessary documentation completed before the increase date.

  • – Rina Van Orden, Esq.

Trademark Maintenance During Business Interruptions

During this unpredictable time, we have a few practical trademark maintenance tips that could save “future you” time and money. Foundationally, trademark rights are maintained via use of the mark in commerce. For federally registered marks, this use is evidenced in maintenance filings during the lifecycle of the trademark. However, use in commerce may be difficult, if not impossible, during pandemic-related shutdowns. Typically, periods of non-use of a mark can leave a trademark owner without evidence to support a registration’s maintenance filings and may also leave a trademark vulnerable to claims of cancellation or abandonment.

The good news is that the Lanham Act, the law governing federal trademark rights, has a built in safeguard that allows owners to avoid unnecessary and unwanted results in light of unforeseen events, like, for example, global pandemics…

In the event that you have a U.S. Trademark Office maintenance filing due in the coming months, our team is ready to assist you. Just as important, trademark owners that may not have maintenance filings due, but who experience interruptions in operations, should note the following for their records:

  1. The date that use of the mark stopped (or your “non-essential” business had to cease operations);
  2. The approximate date when you hope to resume use (or resume operations); and
  3. Documentation of the facts that lead to non-use (for example, an order from local or state government) and affirmation that you intend to use your trademark when those special circumstances are relieved. (37 C.F.R.§2.161)

We recognize that the health and safety of your family and community is your top priority during this difficult time. We will do our part to help you focus on what matters most by providing our expertise on the path forward for your business.

For further information regarding your trademarks, please feel free to contact us.

-Elizabeth Sewell, Esq.