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In a recent precedential decision, the TTAB confronted the issue of timeliness of discovery requests served in opposition and cancellation proceedings—namely, whether Eastern Standard Time (EST) controls the timeliness of service of such discovery requests, regardless of the geographic location of the serving party.  While not a particularly exciting legal issue, it is no doubt one having ramifications for all TTAB practitioners.

In Island, LLC v. JBX Pty. Ltd., Defendant JBX argued Plaintiff Island’s discovery requests were untimely because Island served the requests after midnight EST on the last day for written discovery.  Island disputed JBX’s claim, arguing it timely served the discovery requests from California before midnight Pacific Standard Time (PST).

Under applicable Board Rules, parties must serve discovery requests in sufficient time to require responses before the close of discovery.  37 CFR § 2.120(a)(3).  In this case, discovery closed on January 2, 2021.  Because the answering party receives 30 days to respond to discovery requests, Island needed to serve its discovery requests on or before December 3, 2020.

Island served its discovery requests from California via email on December 3rd, at 11:43 PM PST, or 2:43 AM EST on December 4th JBX’s time.  JBX objected to the timeliness of the discovery requests and Island filed a motion to compel.

Eastern Time governs documents filed with the USPTO.  See 37 CFR § 2.195(a).  See also TBMP § 109.  The TTAB, however, noted that neither Rule § 2.195(a) nor TBMP § 109 reference an Eastern Time deadline, or any other time zone issue in the context of documents that are served between or among the parties, but that are not filed with the TTAB.  [Opinion, at p. 4].  For discovery, timeliness is determined on when a document is served, not when it is received.  37 CFR § 2.120(a)(3).

Trademark Rule 2.119, which governs the requirements for service, does not state whether a specific time zone controls the timeliness of service or whether timeliness is based on the serving party or the receiving party.  37 CFR § 2.119.  The TTAB, however, concluded that a review of its practice demonstrates that the date of service is determined in terms of when the document is transmitted for service.  [Opinion, at p. 5].  “In particular, ‘[w]henever a party to an inter partes proceeding before the [TTAB] is required to take some action within a prescribed period of time after the service of a submission upon that party by another party to the proceeding, and the submission is served by first-class mail, Priority Mail Express®, or overnight courier, the date of mailing or of delivery to the overnight courier will be considered the date of service.’”  TBMP § 113.05.

The TTAB further noted that it also permits a party who, because of a technical problem or extraordinary circumstances cannot serve discovery by email, to serve its discovery by a manner described in Trademark Rules 2.119(b)(1)-(b)(4).  37 CFR § 2.119(b)(1)-(b)(4).  See also TBMP § 403.02.  Thus, a party who meets the requirements to serve discovery requests by, for example, overnight courier will have timely served its discovery requests if it delivers them to the overnight courier thirty-one days before the close of discovery. [Opinion, at p. 6]. “And this is so even though the responding party would receive the discovery requests thirty (rather than thirty-one) days before the close of discovery.”  [Id.].  The answering party’s responses are still due based on the date of service, even though it does not receive the benefit of additional time to respond due to the manner of service.

Based on this analysis, the TTAB concluded that the date of service is to be based on when the document in question is submitted for transmission of service.  [Id.].  Island served its discovery requests by email from California.  Thus, the time zone in California applied to determine the timeliness of service of the discovery requests.  Because Island served the requests on December 3rd before midnight PST, the TTAB concluded Island timely served the discovery requests.  [Id.].

The case is Island, LLC v. JBX Pty. Ltd., 2021 USPQ2d 779 (TTAB 2021) (precedential).

Throughout this summer, the United States Patent and Trademark Office (USPTO) is offering its series of virtual webinars dubbed “Trademark Basics Boot Camp.”  The series appears to be tailored to small business owners and entrepreneurs and is broken up into eight modules focused on discrete topics.  Registration for the upcoming modules listed below, as well as access to other past and future modules, is available here.

The USPTO is also offering a separate upcoming event geared toward the restaurant industry.  The free two-hour virtual event, titled “Don’t burn your brand: intellectual property for restaurants,” is set for July 19.  It will include an overview of trademarks, patents, copyrights, and trade secrets in the food-service industry and will cover topics ranging from trademark basics to choosing, filing, and registering trademarks.  Registration for the event is available here.

Don’t miss these opportunities for free information and advice on trademarks and other intellectual property – valuable ways to protect and promote your brand – from the USPTO itself.

For the first time in nearly three years, the USPTO will be adjusting its fees for Trademark Registrations and for filing fees related to proceedings involving the Trademark Trial and Appeal Board (TTAB). Some fee increases are minimal (e.g., only about 10% increase to file an ex parte appeal). However, other fee increases are substantial, at least one fee increasing by 250%. In addition, the USPTO has added a variety of new fees for various actions.

Notable increases or new fees include:

  • The TEAS Standard Filing Option (used to file an initial application for a trademark) will increase from $275 to $350.
  • The filing a section 8 or 71 declaration (post registration) will increase from $125 per class to $225 per class.
  • A new fee for deleting goods, services, and/or classes from a registration will be added and cost $250 per class.
  • Petitions to the Director will increase from $100 to $250.
  • A new fee for letters of protest to the Director will be added and cost $50.
  • Petitions to the TTAB to cancel a mark as well as Notices of Opposition will increase from $400 per class to $600 per class.
  • A new fee to file appeal briefs in an ex parte appeal will be added and now cost $200 per class.
  • A new fee to request an oral hearing with the TTAB will be added and now cost $500 per proceeding.

These fee changes and others become effective January 2, 2021. Thus, to save some on your legal fees it is best to address your trademark issues sooner than later. Remember, Hindsight is 2020.

Our colleague, Melissa Scott, recently wrote an alert on an opinion from the Ninth Circuit Court of Appeals about access to attorneys’ fees in copyright infringement cases.  The underlying copyright dispute in Doc’s Dream, LLC, v. Dolores Press, Inc., et al. related to the video recordings of a deceased minister’s sermons, but the significant holding relates to the fee-shifting provision in the Copyright Act.

34126235 - copyrightThe district court held that attorneys’ fees were not available to the accused infringer for the declaratory judgment claim on which it was granted summary judgment because the claim did not require construction of the Copyright Act.  The Ninth Circuit reversed, holding that the Copyright Act expressly allows for a discretionary award of attorney’s fees in “any civil action under this title” and that the request for declaratory relief raised multiple aspects of, and invoked, the Copyright Act.  Melissa notes two takeaways from the Ninth Circuit’s holdings:

  • The fee-shifting provision of Section 505 applies to “any civil action under” the Copyright Act.
  • Any action that “turns on the existence of a valid copyright and whether that copyright has been infringed” sufficiently invokes the Copyright Act as to allow for the discretionary award of attorneys’ fees.

For a full summary of the case and holdings, read Melissa’s alert here.

Nearly every week it seems as though the Federal Trade Commission (FTC) is sending out a new round of warning letters to companies marketing products and therapies as effectively treating or preventing COVID-19.  We previously wrote blog posts here and here about sets of such letters, and our colleague, Marissa Koblitz Kingman, recently wrote an alert about the Department of Justice (DOJ) and Food & Drug Administration (FDA) closely monitoring such conduct as well.  In that alert, Marissa discusses a DOJ complaint against a Utah man and two companies for allegedly selling a fake cure for COVID-19 and the DOJ’s plan to work closely with the FDA to shut down schemes to promote and sell COVID such products.

These federal agency actions serve as a cautionary reminder for any company contemplating the sale of products or the use of promotional materials that connect products to COVID-19. If doing so, or intending to do so, legal counsel should be consulted.

By all accounts, and as predicated by multiple news outlets earlier this month, COVID-19 may have a substantial and chilling effect on advertising.  Adweek, for example, wrote an article in early March predicting how the coronavirus would disrupt the global advertising industry, not merely by major events being cancelled but also by a potential decrease in advertising spend and by new challenges in advertising production.  However, Adweek poignantly notes that TV advertising may not suffer as consumers increasingly choose to engage in social distancing at home.

A more recent article by Digital Doughnut explains how ecommerce and digital marketing is being affected.  The article predicts an increased shift to online shopping but also a potential reduction in the availability of goods, which could lead companies to withhold advertising dollars.  Ending the article, Digital Doughnut provides some salient advice:  “For brands, the key to mitigating the impact of coronavirus lies in putting the customer at the heart of marketing and keeping an eye on changing customer behaviour, particularly in response to changing ecommerce trends.” It’s advice like this that has resulted in CEOs of countless major companies sending emails to consumers assuring them of their commitment to consumer health, safety, and well-being.

Some brands are choosing to close their retail stores in an effort to minimize social interaction and keep their own employees healthy, and certain companies (particularly restaurants and bars) are being forced to close.  If not open, why advertise?  Yet other brands (think those selling disinfecting/sanitizing products, staple food items, video conferencing services, and, strangely, toilet paper) seem to be thriving without having to spend a single extra advertising dollar. I also personally wonder if Covid, Inc., the Arizona-based A/V connectivity solutions company, has seen a positive or negative effect from internet search traffic.  Then of course there is Constellation Brands, the company that owns the Corona beer brand, which has been the subject of countless internet articles, prompting the company to issue a press release at the end of February confirming its strong performance despite the virus.

As the coronavirus continues to spread and as news continues to unfold about its effect on the human population and on the operation of small businesses, we’ll likely see additional impacts on brands, advertising, and consumer behavior.

Earlier this month, the United States Patent & Trademark Office’s (USPTO) finalized and announced a rule requiring foreign trademark applicants to be represented by a United States licensed attorney when applying for a US trademark registration .  The rule covers individuals with a permanent legal residence outside the US or its territories and entities with their principal place of business outside the US or its territories.  There is no change to the rule for domestic trademark applicants, who are still not required to be represented by an attorney.

According to the USPTO, the rule is intended to (1) increase USPTO customer compliance with US trademark law and USPTO regulations, (2) improve the accuracy of trademark submissions to the USPTO, and (3) safeguard the identity of the US trademark register.  In explaining the rule, the USPTO articulated, “We discovered an increasing number of foreign trademark applicants, registrants, and parties are filing inaccurate and possibly fraudulent submissions with the USPTO that do not comply with U.S. trademark law or the USPTO’s rules. Often, these submissions are made with the assistance of foreign individuals or entities not authorized to represent applicants at the USPTO.”  It appears the USPTO’s action came as a result of the increasing number of questionable, inaccurate, or potentially fraudulent Chinese applications specifically.

The rule becomes effective August 3, 2019.

The Federal Trade Commission (FTC), which enforces federal consumer protection and antitrust laws with the goal of promoting competition while protecting consumers from fraud, deception, and unfair business practices, has enforcement or administrative responsibility over dozens of laws, including the Consumer Review Fairness Act (CRFA). The CRFA is designed to protect consumers’ ability to share their honest opinions about a business or its goods/services, and it thus prohibits form contract terms that disallow or penalize consumers from freely posting negative reviews, including on social media. This week, the FTC announced that it issued complaints and proposed settlements against two rental home companies that had included illegal non-disparagement provisions in their form customer contracts. Like with its other recent CRFA enforcement actions, the FTC will require future compliance as well as notification to the customers who were subject to the prohibited terms.

38772807 - little girl hand touch touch pad notebookAs summarized by the FTC, it is illegal for a company to prohibit or punish customers from leaving negative reviews or to give up their intellectual property rights in their reviews but it is lawful for that same company to prohibit or remove a review that:

  1. contains confidential or private information – for example, a person’s financial, medical, or personnel file information or a company’s trade secrets;
  2. is libelous, harassing, abusive, obscene, vulgar, sexually explicit, or is inappropriate with respect to race, gender, sexuality, ethnicity, or other intrinsic characteristic;
  3. is unrelated to the company’s products or services; or
  4. is clearly false or misleading.

If a company violates the CRFA, it can be subject to fines and/or court orders. The FTC’s advice?  “The wisest policy: Let people speak honestly about your products and their experience with your company.”

 

Earlier this month, the Federal Circuit ruled that trademark rulings from the International Trade Commission (“ITC”) do not have preclusive effect.  This means that ITC actions do not bar district court cases, that ITC trademark rulings are not binding on district courts, and that parties are not estopped from raising arguments they’ve raised in front of the ITC to a district court.

Above The Fold - The Fox Rothschild Advertising Law BlogThe ITC is an independent quasi-judicial federal agency that, pursuant to Section 337 of the Administrative Procedure Act, has the authority to conduct investigations, hold trial proceedings, and make determinations on intellectual property disputes.  According to the ITC’s website, “Section 337 investigations conducted by the U.S. International Trade Commission most often involve claims regarding intellectual property rights, including allegations of patent infringement and trademark infringement by imported goods. Both utility and design patents, as well as registered and common law trademarks, may be asserted in these investigations. Other forms of unfair competition involving imported products, such as infringement of registered copyrights, mask works or boat hull designs, misappropriation of trade secrets or trade dress, passing off, and false advertising, may also be asserted. Additionally, antitrust claims relating to imported goods may be asserted.”

The ITC may grant remedies in the form of exclusion orders directing Customs to stop the import of infringing products and cease and desist orders directed to importers and others.  ITC cases generally move more quickly than district court cases and monetary damages are not involved.

 

Earlier this month, at the request of the United States Patent and Trademark Office, the Federal Circuit Court of Appeals officially set a trademark registration requirement by making an earlier ruling precedential.  That previously-unpublished ruling, which affirmed an earlier Trademark Trial & Appeal Board ruling, clarified the specific types of sales transaction information that are needed on a trademark applicant’s website to satisfy the “use in commerce” requirement for obtaining a trademark.

In evaluating “use in commerce,” the Federal Circuit distinguished between a website that merely advertises a product and a website that provides information important to buying the product.  Ultimately, the Federal Circuit affirmed that a website would need to display the product’s price range, minimum quantity requirement, acceptable payment methods, and shipping method.

As a result of this ruling, each trademark applicant should ensure that the proper detail is available on its website before filing for trademark registration when it plans to rely on its website to satisfy the “use in commerce” requirement.