As Fall comes to an end and we’ve consumed enough pumpkin pie to last us until next year, we remind you of the pumpkin vs. squash advertising debate that is more mind-boggling than what Grandma brought to your Thanksgiving feast.

To wit, canned pumpkin is not always canned pumpkin.  Canned pumpkin is sometimes packed from field pumpkin, sometimes packed from certain varieties of squash, and sometimes packed from a mixture of the two.  Since 1938, the Federal Trade Commission (FTC) has advised canners that it will not enforce the use of “pumpkin” or “canned pumpkin” for products that consist of certain varieties of squash alone or mixed with field pumpkin. In its Compliance Policy Guide, the FTC states, “In the absence of any evidence that this designation misleads or deceives consumers we see no reason to change this policy.”

More legally speaking (for those inclined following Turkey Coma Day), the FTC explains that it considers “the designation ‘pumpkin’ to be in essential compliance with the ‘common or usual name’ requirements of sections 403(i)(l) and 403(i)(2) of the Federal Food, Drug, and Cosmetic Act, and the ‘specifying of identity’ required by section 1453(a)(1) of the Fair Packaging and Labeling Act.”  Whatever that really means, we’re all happy that canned pumpkin tastes like it does so we can get our once-a-year fix.  Happy Thanksgiving weekend everyone.

Today, the USPTO issued regulations implementing the provisions of the Trademark Modernization Act of 2020 (“TMA”).  The Regulations can be found here.

Practitioners should review the Regulations as soon as possible to familiarize themselves with the new Rules.  Practitioners should take notice that the majority of the of the provisions take effect December 18, 2021.  However, a handful of provisions, such as those relating to flexible periods to respond to office actions, will not take effect until December 1, 2022.

Earlier this month, the Federal Trade Commission (FTC) announced that it is now using its Penalty Offense Authority to remind companies not to use fake online reviews or other deceptive endorsements and that stiff penalties (up to $43,792 per violation) will apply if they do.

The FTC sent a Notice of Penalty Offenses letter to a list of over 700 companies, which the FTC described as “an array of large companies, top advertisers, leading retailers, top consumer product companies, and major advertising agencies,” but also noted was not an indication that any company has engaged in unlawful conduct.  The Notice provides a reminder not to use a number of practices, such as:

  • Falsely claiming an endorsement by a third party.
  • Misrepresenting whether an endorser is an actual, current, or  recent user.
  • Using an endorsement to make deceptive performance claims.
  • Failing to disclose an unexpected material connection with an endorser.
  • Misrepresenting that the experience of endorsers represents consumers’ typical or ordinary experience.

As a reminder, under Section 5 of the FTC Act, which prohibits deceptive advertising, the FTC conducts investigations and can bring cases involving endorsements.  The FTC also publishes Endorsement Guides to provide guidance to companies that use endorsements to advertise their products/services.

The U.S. Copyright Office (“USCO”) is expanding the right to repair digital devices via exemptions to the Digital Millennium Copyright Act (“DMCA”)’s rules governing access to devices and software, which includes automobiles and medical devices.  Enacted in 1998, the DMCA works to prohibit people from circumventing technological measures used by copyright owners to control access to protected works.  Essentially, the purpose of the law is to protect digital works from piracy.

The USCO’s move comes after years of complaints from consumers that products have a limited lifespan and are typically more expensive to repair than purchasing a new product, which is not only expensive for consumers, but creates waste from the growing number of unused products.  At the same time, manufacturers contend that they are now more limited in protecting their ownership rights, including employing the use of anti-jailbreaking features, and there is a concern that consumers might be able to access proprietary information more easily.

The USCO recommends “anti-circumvention” exemptions every three years, so we will likely see developments on the right to repair well into the future as our society becomes more and more dependent on technology.  The USCO’s recommendation can be found here.

All TTAB practitioners are familiar with the heightened standard of proof required to prove fraud before the USPTO.  However, many forget that proving an intent to deceive the USPTO, not the falsity of the statement or its materiality, is the lynchpin of every fraud claim.  In a recent decision, the TTAB reminded practitioners of this critical fact.

Petitioner Jason Green commenced a cancellation proceeding against a registration for the mark OMNI BIOTIC for food supplements, claiming priority and likelihood of confusion with his common law mark OMNIBIOTICS for supplements.  Green also asserted a fraud claim against Respondent based on Green’s allegation that Respondent did not have a bona fide intent to use the OMNI BIOTIC mark when it filed its Section 66(a) application that matured into the subject registration.

The TTAB dismissed Green’s likelihood of confusion claim finding that he failed to show, by a preponderance of the evidence, that he used his OMNIBIOTICS mark in the United States before Respondent used its OMNI BIOTIC mark in the United States.  The TTAB further ruled that, although minimal, Respondent’s sales in the United States were sufficient to establish priority.

The TTAB similarly found Green’s fraud claim deficient.  To show fraud, Green needed to prove that (1) Respondent made a false representation to the USPTO, (2) the false representation was material to the registrability of the subject mark, (3) Respondent had knowledge of the falsity of the representation, and (4) Respondent made the representation with intent to deceive the USPTO.  Decision, at p. 40.

Green alleged that Respondent had perpetrated a fraud on the USPTO because it introduced “no documentary evidence to show any intention of [sic] plans for using its mark in the United States at the time of filing the OMNI BIOTIC mark.”  Id., at p. 41.  The TTAB discounted this argument, noting, at the outset, that it did not need to decide whether Respondent had a bona fide intent because “that is not the claim before us.”  To the contrary, Green asserted fraud.  Accordingly, the TTAB held, “[E]ven if Respondent materially misrepresented to the USPTO that it had a bona fide intention to use the mark in commerce, Petitioner must show that the false representation was made with a ‘knowing intent to deceive.’”  Id., at p. 42 (emphasis added).

The TTAB dismissed Green’s fraud claim, finding he made no effort to establish that Respondent had a “knowing intent to deceive.”  Id.  Instead, he simply assumed the existence of such intent based on the fact that Respondent purportedly made “knowingly false material representations of fact.”  Id.  The TTAB concluded: “Absent proof of the requisite intent to mislead the PTO, ‘even a material misrepresentation would not qualify as fraud under the Lanham Act.’” Id. at p. 43.

Takeaway:  Proof of a knowingly false material representation of fact is not enough to prove fraud; petitioner must present sufficient evidence to establish that respondent made the knowing and false representation for the express purpose of deceiving the USPTO.

The decision is Jason Green v. Institut Allergosan Pharmazeutische Produkte Forschungs-und Vertriebs GmbH, Cancellation No. 92069600 (TTAB Sept. 1, 2021) (non-precedential).

In a recent precedential decision, the Trademark Trial and Appeal Board (“TTAB”) cautioned practitioners to be careful what they ask for and to draft their filings accordingly.

On September 8, 2021, the TTAB denied Applicant Grüne Erde Beteiligungs GmbH’s (“Grüne Erde”) motion for relief from judgment following its express abandonment of its opposed multi-class application to register the following mark:

Grüne Erde expressly abandoned the subject application as part of a settlement to resolve a pending opposition filed against only the Class 3 goods recited in the application.  Although Opposer opposed registration of Grüne Erde’s mark in only one of the seven classes in the application, Grüne Erde did not move to divide the unopposed classes into a separate application.

Pursuant to the parties’ agreement, Opposer filed a Stipulated Withdrawal of Application and Dismissal of Opposition drafted by Grüne Erde.  The Stipulation included the following statement and the signature of counsel of record for both parties:

The parties to this opposition have reached an agreement and respectfully request that the Board enter an appropriate Order withdrawing the application without prejudice and dismissing the opposition without prejudice.

(emphasis added).

Based on the unambiguous language of the Stipulation, the TTAB issued an Order deeming the subject application abandoned in its entirety.

Grüne Erde filed a motion for relief from judgment under Fed. R. Civ. P. 60(b)(1), claiming the “‘the parties did not have a true meeting of the minds when determining the scope of the agreement to resolve the application;’ that ‘Applicant believed the parties’ agreement was only with respect to abandonment of the only opposed class, the goods in Class 3, whereas Opposer [sic] believes the entire application was to be abandoned;’” and that it would, therefore, be appropriate to vacate the TTAB’s Order because of this failure of agreement.  Decision, at p. 3.

The TTAB denied Grüne Erde’s motion, stating that, although Fed. R. Civ. P. 60(b)(1) provides that a party may be relieved from a final judgment, order or proceeding because of “mistake, inadvertence, surprise, or excusable neglect,” Trademark Rule 2.68 unequivocally precluded the relief Grüne Erde sought—namely, the withdrawal of an express abandonment.  Id., at pp. 4-5.

Put plainly, draft stipulations and, in particular, express abandonments with a critical eye to ensure that you carve out any necessary exceptions or limitations to the abandonment.  The TTAB will not be forgiving and no relief from the abandonment will be obtained.

The decision is Rwachsberg Holdings Inc., et al. v. Grüne Erde Beteiligungs GmbH, Opposition No. 91253866 (TTAB Sept. 8, 2021).

On September 1, 2021, the Food and Drug Administration’s final “intended use” rule will go into effect.  The update is meant to clarify the “intended use” regulations for pharmaceutical products and medical devices.  According to the FDA, this “should reduce manufacturer and stakeholder uncertainty regarding the scenarios in which specific types of evidence may or may not show a product is intended for a drug or device use.”  The updates now provide that a manufacturer’s mere knowledge of an off-label use does not carry with it a new labeling obligation or create new “intended uses.”  However, the FDA can look to “any relevant source” of evidence when determining whether a company intended to market a drug or medical device for off-label use.  You can read more about the FDA’s rule change here.

Since the start of the Covid-19 pandemic, the United States Patent and Trademark Office (USPTO) has seen a surge in trademark filings by 40%, which is the greatest number of new applications in trademark history. This rise in filings can at least partially be attributed to foreign entities. Many foreign manufacturers that want to sell to U.S. consumers have been told that they must have a U.S. registered trademark for their product to be prioritized on e-commerce sales platforms. Although foreign manufacturers are aware of the USPTO’s policies, they still try to find a way to get around them, such as hijacking the credentials of U.S. licensed attorneys or using questionable U.S. attorneys who don’t pay attention to their paperwork. Unfortunately, this has driven the USPTO to crack down on its policies. Because of the rise in applications, the USPTO has had to employ new strategies and tactics to combat fraudulent trademarks and trademark related scams, instead of relying on the good faith intentions of its customers. The USPTO has created a special task force consisting of attorneys, analysts, cyber investigators and IT personnel, to investigate suspected fraudulent applications. Those suspected of fraud will be required to submit more information to support their filing(s) and if their response is inadequate, they will be sanctioned. This task force along with other tools employed by the USPTO has had a positive impact on accuracy. To read more about the strategies and tactics being employed by the USPTO, see its blog post here.

ICYMI, a new Trademark Manual of Examining Procedure (TMEP) was released by the United States Patent and Trademark Office (USPTO) last month.  The July 2021 revision replaces and supersedes the October 2018 version, and it incorporates final rules, examination guides, and Supreme Court decisions that have issued since then.  A change summary is available here.

The TMEP is a necessary tool for trademark practitioners.  As summarized on the USPTO’s website, “The Manual is published to provide trademark examining attorneys in the USPTO, trademark applicants, and attorneys and representatives for trademark applicants with a reference work on the practices and procedures relative to prosecution of applications to register marks in the USPTO. The Manual contains guidelines for Examining Attorneys and materials in the nature of information and interpretation, and outlines the procedures which Examining Attorneys are required or authorized to follow in the examination of trademark applications.”

If you have not yet downloaded and saved a copy of the July 2021 TMEP, you can do so here.

Whether the United States Patent and Trademark Office (USPTO) possessed trademark registrations for its own trademarks was honestly not something I had ever thought about before.  But then I received a link to the Director’s Forum blog earlier this month telling me that the Department of Commerce had recently filed for federal registration of the USPTO’s marks with the USPTO.  It appears the reason for doing so after so many years is based on the increase in misleading solicitations and trademark filing scams.  Simply put, the USPTO wants to be able to take legal action against scammers who impersonate it.

trademark brandind advertising copyright conceptIngesting humor into the blog, the USPTO said, “We recognize the intrigue and irony of filing for federal registration of the USPTO marks…with the USPTO. It’s a big reason why the Department of Commerce is filing the application on our behalf, just as it has for its other bureaus.”  Federal agencies that own federal trademark registrations apparently include the Internal Revenue Service, the Environmental Protection Agency, the Food and Drug Administration, the Federal Aviation Administration, the National Aeronautics and Space Administration, the National Oceanic and Atmospheric Administration, the Department of Homeland Security, the National Park Service, and branches of the U.S. military.

As the blog summarizes, “We firmly believe that it’s never too late to do the right thing, and doing everything within our power to protect our trademark customers is the right thing.”