The recent U.S. Supreme Court decision in Iancu v. Brunetti will likely not be the last word on the subject of scandalous trademarks being granted registration. That certainly suggests there is room for further interpretation in the future, especially if Congress elects to amend the Lanham Act. Further, four Justices voiced some degree of concern about scandalous marks being granted registration.
This month’s dramatic announcement by the U.S. Patent and Trademark Office that all foreign domiciled trademark applicants, registrants and parties to USPTO trademark proceedings will now be required to retain U.S. counsel is expected to result in the most significant practical change to domestic trademark prosecution practice in years.
For casual observers, this new rule — set to be effective on Aug. 3, 2019 — may have arrived as an unexpected, or even shocking, development. After all, with this announcement, literally tens of thousands of active, foreign-domiciled participants in the trademark processes of the USPTO will suddenly now require representation by a U.S. attorney, altering years of common practice.
Moreover, the time from announcement to implementation — only 32 days — is remarkably short for agency action of any kind, let alone a new rule set to transform the role of trademark practitioners in relation to a massive class of new clients.
We are tickled pink when we get to work with trademark registrations that issued before we were born. (We won’t say when that was.) It’s nifty to be the steward of a trademark that has stood the test of time and that may endure long after we’ve headed off to the Great Principal Register in the Sky (no Supplemental Register for us, no sirree).
But what if your old, venerable logo is due for some sprucing up? Please don’t immediately assume that a logo refresh means that you will need to start over with a new trademark application and allow your old logo registration to lapse. You may be able to amend your national U.S. trademark registration to cover the most current version of your logo, so long as the new logo isn’t a “material alteration” of the original registered logo. This allows you to preserve your original priority date that is associated with your old registration! (Note: this won’t work for registrations obtained in the USA via the Madrid Protocol. Sorry.)
This post is for those who gain pleasure from tidying up. It’s springtime here in DC, so let’s roll up our sleeves and declutter! Your trademark portfolio, that is. You’ll gain a sense of accomplishment AND you can humble-brag about your magical money-saving skills.
Businesses operating in the European Union may be familiar with the concept of “seniority.” By claiming seniority, an owner of an EU trademark registration may be able to claim prior rights based on existing national trademark registrations in EU member countries. To illustrate when a business might claim seniority, take the following example:
What? A trademark lawyer suggesting that you needn’t always conduct a full-scale trademark search before you file a new trademark application? Isn’t that tantamount to driving without a seat belt? Hear us out.
You’ve acquired a new trademark portfolio. Hooray! But wait … as you’re sorting through the marks you’re now handling, you notice some errors and inconsistencies in the owners’ information.
We tend to think that trademarks, in general, are pretty special.
However, a “special” trademark application has a … well … special meaning to the PTO. The PTO normally examines applications in the order it receives them, which can take about three to four months. That said, there are two ways to make an application “special” so that the PTO will pull the application out of order and expedite its initial examination.
A trademark assignment is the transfer of ownership of a mark. This usually entails having the owner transfer all its rights, title and interest in a given mark to a third party.
Sounds pretty straightforward, right? Well, imagine you’re not just assigning one trademark to a third party – instead you’re transferring an entire portfolio containing hundreds of marks in dozens of countries. Generally, this transfer of rights must be documented – or recorded – with the trademark office in every jurisdiction where marks have been assigned. Otherwise, the outdated Trademark Office records relating to the ownership of a mark could cause issues, like blocking new applications filed in the new owner’s name. The requirements for assigning trademarks and recording this transfer of rights often vary by jurisdiction, so handling the transfer of a global trademark portfolio can become a major undertaking.