On March 5, 2021, the U.S. Trademark Trial and Appeal Board (“TTAB”) issued a precedential decision affirming refusal of SolarWindow Technologies, Inc.’s application to register the word mark POWERCOATINGS. The decision is a cautionary tale, for counsel and applicants alike, of the potential future ramifications of allowing an application to go abandoned following a TTAB decision if the applicant intends to continue using the mark and may consider filing a future trademark application for the mark in connection with the same goods or services.

In 2014, SolarWindow filed an application to register the POWERCOATINGS mark in connection with the same goods at issue in the current proceeding (the “Prior Application”). In 2016, the TTAB affirmed the examining attorney’s refusal to register the subject mark on grounds of descriptiveness. SolarWindow failed to appeal the TTAB’s decision and the TTAB deemed the Prior Application abandoned (the “Prior Decision”).

Less than two years after the Prior Decision, SolarWindow filed the subject application seeking to register the same mark in connection with the same goods at issue in the Prior Application. This time, the examining attorney refused registration of the subject mark on two grounds: (1) the subject mark is merely descriptive under Section 2(e)(1) of the Trademark Act; and (2) the doctrine of res judicata precluded relitigation of the descriptiveness issue based on the TTAB’s Prior Decision. SolarWindows appealed the refusal and the TTAB ultimately ruled that the Prior Decision was a final judgment on the merits of the question of descriptiveness and that the prerequisites for res judicata had been satisfied.

Under the doctrine of res judicata (or claim preclusion), “a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies based on the same cause of action.” In re Bose Corp., 476 F.3d 1331 (Fed. Cir. 2007). Res judicata is not applicable if not all of the questions of fact involved in the latter proceeding were determined in the prior proceeding. [Decision, at p. 6]. Relying on its prior decision in In re Honeywell Inc., 8 USPQ2d 1600 (TTAB 1988), the TTAB concluded that, to excuse application of the doctrine of res judicata to the Subject Application, SolarWindow needed to demonstrate “a material change in the relevant conditions or circumstances.”  [Id., at p. 8].

The TTAB held that SolarWindow failed to satisfy this burden because (1) only 20 months had passed since abandonment of the Prior Application, and (1) SolarWindow did not identify any new facts arising after the Prior Decision showing a “material change of circumstances or conditions.” [Id., at pp. 8-9]. The TTAB acknowledged that SolarWindow had attached evidence to its response to the examining attorney’s refusal on grounds of descriptiveness. However, SolarWindow failed to specify how these “additional facts” presented new circumstances or “whether the evidence [SolarWindow] relied] upon was unavailable when the [TTAB] previously adjudicated the question of descriptiveness of the subject mark in the Prior Decision.  Instead, SolarWindow merely raised a “new argument” it could have presented during the prosecution of the Prior Application. [Id., at p. 9]. The TTAB found this argument insufficient to avoid the doctrine of res judicata, stating, “It was incumbent upon [SolarWindow] to put its best foot forward by presenting during prosecution of the Prior Application all arguments that it believe could overcome the descriptiveness refusal.” [Id., at pp. 9-10]. As a result, the TTAB affirmed the examining attorney’s refusal of registration.

In view of the TTAB’s decision, it is critical that, when applying to register a mark that the USPTO previously refused in connection with the same goods or services, counsel and applicants identify new facts, postdating the prior refusal, that demonstrate a “material change of circumstances or conditions.” Failure to do so will likely result in the application of res judicata and refusal of the latter application. New arguments that the applicant could have raised during the prosecution of the earlier application will not fly.

The decision is In re SolarWindow Technologies, Inc., Serial No. 87819480 (TTAB Mar. 5, 2021).

The United States Government is the largest single purchaser of goods and services in the world, spending over $550 Billion dollars a year. It has long been the policy of the United States to purchase buy American. Indeed, the Buy American Act, which promotes domestic purchasing of goods and services, was signed into law in 1933.

Yet, there has been a lot of recent Presidential Executive Orders directed to this same goal. For example, between January 31, 2019 and January 14, 2021, President Trump signed Executive Orders related to strengthening buy-American preferences for infrastructure projects, maximizing use of American-made goods, products, and materials, and encouraging buy American policies for the U.S. Postal Service. Within the first week of President Biden’s administration, he too signed an Executive Order on “ensuring the future is made in all of America by all of America’s workers.”

The problem these orders are trying to fix is that while the law and preference is to buy American, the Buy American Act allows for various exceptions, including when domestic items are not available at a reasonable cost or where trade agreements waive this requirement. There are also several loopholes, like what it even means to buy American. For example, in an effort to prevent companies from importing largely foreign-made goods and selling them as American made after minor assembly or making minor tweaks, Biden’s executive order orders federal agencies to reevaluate the thresholds used to determine U.S. content. Regardless of what impact this has on trade and the Government’s spending, the Government’s decision could impact what “made in America” means. If your company uses “made in America” or similar slogans on their products or in their advertising campaigns, it may be wise to pay attention. A legal statement today may by the subject of a false advertising claim tomorrow.

 

The pandemic relief and economic stimulus legislation that hurriedly passed Congress at the tail end of 2020, named the Consolidated Appropriations Act of 2021 (“the Act”), resulted in major changes to American trademark and copyright law.  Specifically, the Act included three intellectual property bills:  the Trademark Modernization Act of 2020, the Copyright Alternative in Small-Claims Enforcement Act of 2020 (the “CASE Act”), and the Protecting Lawful Streaming Act (the “PLSA”).  As summarized in a recent client alert written by two of our colleagues, the new laws will make it easier for brand owners to obtain injunctive relief, create new procedures to challenge trademark registrations, establish a copyright small claims procedure, and make illegal streaming of copyrighted material a felony.

On the trademark front, our colleague and frequent blog contributor, Melissa Scott, has already posted a detailed summary of the Trademark Modernization Act, which can be found here.

On the copyright front, the Act includes two relevant changes.  First, the CASE Act establishes a new voluntary alternative dispute resolution process for copyright infringement disputes before the U.S. Copyright Office.  Parties will be able to bring certain claims before a new Copyright Claims Board, which will operate somewhat like a federal court and will have the power to facilitate settlement or resolution on the merits.  Second, the PLSA amends the main federal criminal code to cover “Illicit digital transmission services.”  It is intended to close a loophole and impose a felony on digital transmission services that make copyrighted works available via “streaming” (rather than “downloading” a copy), which is now the primary method audiences consume entertainment.

Overall, businesses should be prepared to understand these changes and how they may affect their trademarks and copyrighted works.

The Biden administration brings with it a changing of the guard at the United Stated Patent and Trademark Office (USPTO). As is customary for at least the last several decades, the USPTO’s leaders have resigned at or near the end of each presidential term. President Trump’s appointees have followed this custom. Indeed, both the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, Andrei Iancu, and his Deputy Secretary and Director, Laura Peter, announced last week that they would be stepping down. Peter acknowledged that such resignations are “customary upon a change of administration” in her announcement.

Iancu and Peter implemented new policies that many patent owners appreciated. For example, under their leadership the USPTO issued new guidelines on patent eligibility and adopted a new claim construction standard in post-grant proceedings (mirroring the standard used by District Courts). In addition, the rate at which the USPTO instituted post-grant proceedings—usually challenges to the validity of patents brought by third-parties—began to drop under their leadership.

While a big shake-up at the USPTO is not anticipated, Biden has yet to announce his pick to replace either Iancu or Peter. As is common with these positions, appointments are not expected for several months and a confirmation will not likely occur until mid-2021. Until new appointees are confirmed by the Senate, the Commissioner for Patents, Drew Hirshfeld, will step into Iancu’s role in leading the USPTO and senior counsel Coke Stewart will temporarily cover Peter’s role. For now, we wait to see who Biden nominates and what this signals for the future of the USPTO.

On December 27, 2020, Congress signed the Trademark Modernization Act of 2020 (the “Act”), which had rare bipartisan support, into law.

The Act makes substantive changes to the Lanham (Trademark) Act that will better protect the relevant consuming public from confusion regarding the source of goods and services, and implement procedures that the United States Patent and Trademark Office (“USPTO”), and trademark owners and applicants, can use to address fraudulent trademark filings in a more expeditious and less expensive manner. Additionally, the Act resolves the circuit split surrounding the presumption of irreparable harm in trademark infringement cases, which will reduce the evidentiary burden on trademark owners for obtaining injunctive relief.

Authority to Shorten Office Action Response Times

The Lanham Act previously required a trademark applicant to respond to an office action issued during examination within 6 months. See 15 U.S.C. § 1062(b). Under the Act, however, trademark examiners will have greater flexibility in setting response deadlines for office actions. The Act has amended the Lanham Act to authorize the USPTO to shorten response deadlines to between 60 days and 6 months, so long as applicants can obtain extensions of time to respond, up to the traditional 6-month period. The USPTO will require applicants to support requests for an extension of time with payment of a filing fee.

Third Party Submission of Evidence During the Examination Process

The Act also codifies the existing letter of protest procedure, which allows third parties to submit evidence during the examination of a trademark application that bears on the registrability of the subject mark, including, without limitation, evidence that the applicant’s claims of use of the subject mark are false and/or inaccurate. Under the earlier, informal procedure, there was no filing fee and there was no specific deadline for submission of the evidence to the trademark examiner.

Under the Act, the Director of the USPTO will have 2 months to review evidence submitted with a letter of protest. Further, the USPTO will establish, by regulation, appropriate procedures for the consideration of evidence submitted with a letter of protest, and may choose to institute a filing fee for the letter of protest.

Ex Parte Challenges to Registrations

With some limited exceptions, a trademark owner must use a mark in interstate commerce in the United States before the mark can qualify for registration. One of the Act’s primary goals is to reduce the issuance of registrations falsely claiming use of a mark that the registrant has not used in the requisite manner.

In recent years, the USPTO has seen a significant uptick in the number of registrations issued and/or maintained for marks that registrants either never used or no longer use, as required under U.S. trademark law. The issuance and maintenance of such registrations is, in many instances, the product of doctored photos or marketing materials that trademark applicants or owners have submitted to the USPTO falsely claiming that the subject mark is currently in use. The USPTO has noticed a higher rate of incidence of this problem in connection with applications and registrations owned by persons or entities located in China.

The existence of these “unused” marks on the federal trademark registers is particularly damaging to new market participants, who want to develop a brand for their products and services, and obtain protection for viable marks, but find their path to registration blocked by unused marks. Under the prior system, proving that a party fraudulently secured registration of a mark, such that the USPTO can cancel the registration, required a person to commence a trademark cancellation proceeding—a lengthy and expensive proposition.

To address this issue, the Act establishes two new procedures to review and cancel existing registrations for marks that registrants never used in interstate commerce or marks that registrants no longer use in interstate commerce.

Ex Parte Expungement

The Act has amended the Lanham Act to allow any person to file a petition to expunge a registration on the ground that the registrant has never used the subject mark in commerce or in connection with some, or all, of the goods or services recited in the registration. If the petition sets forth a prima facie case of nonuse, the Director of the USPTO will forward the petition to the registrant and an expungement proceeding would commence.

These expungement proceedings will primarily target registrations issued under Section 44(e) or Section 66(a) of the Lanham Act. It will also be available to third parties after the fifth anniversary of a registration’s issuance.

Ex Parte Reexamination Proceedings

The Act has amended the Lanham Act to allow any person to file a petition to reexamine a use-based registration on the ground that the subject mark was not used in commerce on or in connection with some or all of the recited goods or services “on or before the relevant date.” This mechanism will allow the USPTO to reexamine the accuracy of the registrant’s averment of use as of the filing date of that averment. Reexamination proceedings will not be available to challengers once the subject registration passes its fifth year of registration.

Unless the USPTO implements regulations including such a requirement, a party will not need to prove standing to initiate expungement or reexamination proceedings. Instead, any person can initiate expungement or reexamination proceedings by submitting a petition to the Director of the USPTO that sets forth evidence or testimony establishing a prima facie case of nonuse of a mark in commerce as of the “relevant date.”  The Act requires that the petitioner supply evidence of a reasonable investigation as part of the petition to the Director. While the Act does not currently specify what constitutes a “reasonable investigation,” the Act charges the Director with creating regulations that (1) define what constitutes a reasonable investigation, and (2) identify the types of evidence that establish a prima facie case.

The Act defines the “relevant date” as:

  • The date on which the registrant filed an averment of use to support an application filed with a Section 1(a) basis; and
  • The third anniversary of a registration issued under either Section 44(e) or Section 66(a).

Alternatively, the Act allows the Director to initiate reexamination or expungement proceedings, on his or her own initiative, within the appropriate time window, if information creating a prima facie case of nonuse comes to the Director’s attention.

Regardless of how a prima facie case of nonuse as of the relevant date is established, the Director shall initiate the appropriate proceeding and require the registrant to come forward with documentary evidence to the contrary. If the Director deems the registrant’s responsive showing inadequate, the Director will strike the goods or services in connection with which use in commerce did not exist as of the relevant date from the registration, subject to the applicant’s right to appeal to the Trademark Trial and Appeal Board. However, if the Director finds the responsive showing adequate, that determination will have preclusive effect barring all further ex parte challenges to the registration—regardless of the identity of any subsequent challenger.

Clarification of the Presumption of Irreparable Harm in Trademark Infringement Cases

Finally, the Act also amends the Lanham Act to resolve a circuit split that arose following the U.S. Supreme Court’s ruling in eBay, Inc. v. MercExchange LLC, 547 U.S. 388 (2006), and that restores injunctive relief in trademark cases.

Prior to eBay, if a trademark owner prevailed in an infringement lawsuit, the trademark owner was entitled to a presumption that the court would enjoin the competitor’s continued use of confusingly similar marks to avoid causing further consumer confusion. In eBay, the Supreme Court held that no presumption of entitlement to an injunction existed in the patent context. Thereafter, a circuit split developed on whether a presumption of irreparable harm exists if a trademark owner proves a trademark violation.

The Act amends the Lanham Act to clarify that a rebuttable presumption of irreparable harm exists if a trademark owner proves a trademark violation, or shows a likelihood of success on the merits in the context of motions for temporary restraining orders or preliminary injunctions.

Key Takeaways

The reexamination and expungement procedures should prove invaluable to third parties seeking to invalidate registrations based on false claims of use.  The procedures will streamline the cancellation process and result in quicker resolutions than a trademark cancellation proceeding. Further, the procedures would save third parties significant time and expense by requiring the USPTO to take the laboring oar on the issue of cancellation.

Unlike in a cancellation proceeding, once a party submits its initial evidence to the USPTO, the USPTO should handle all work for expungement and reexamination proceedings—i.e., demanding additional evidence from the registrant. If the registrant fails to provide the requested evidence, the USPTO can cancel the registration entirely, or in part for specific goods or services recited in the registration.

Moreover, the expungement and reexamination proceedings could prove effective deterrents to parties seeking to submit fraudulent evidence of use of a mark to secure registration in the USPTO.

Additionally, the Act provides courts and litigants with  clarity regarding the showing of irreparable harm necessary to support a request for injunctive relief in litigation under the Lanham Act.  This clarification should significantly reduce the incentive for forum shopping under prior law.

Two of our colleagues, Patricia Flanagan and and Alex Braunstein, recently wrote an alert on trademark and copyright changes that have been included in the most recent stimulus package. The Consolidated Appropriations Act of 2021, which was signed into law on December 28th, makes significant changes to American intellectual property laws via its inclusion of the Trademark Modernization Act of 2020 (TM Act); the Copyright Alternative in Small-Claims Enforcement Act of 2020 (CASE Act); and an amendment to Title 18 of the United States Code that adds Section 2319C titled “Illicit digital transmission services.”

As the alert points out, a few highlights of these new laws include:

  • Clarifying that a reputable presumption of irreparable harm exists for trademark violations, making it easier for trademark owners to obtain injunctive relief
  • Implementing new procedures for addressing false use claim problems
  • Establishing a new voluntary alternative dispute resolution process for copyright infringement disputes before the U.S. Copyright Office
  • Making illegal streaming of copyright material a felony

For a full summary of the changes included in the Consolidated Appropriations Act of 2021, you can read Patricia and Alex’s alert here.

The Federal Trade Commission (FTC) recently released its analysis showing that the number one way scammers have extracted money from defrauded consumers is through gift cards.  In its press release, found here, the FTC stated that that consumers have spent almost $245 million since 2018 on gift cards that went to scammers.  The FTC’s data analysis is located here. Scammers will convince consumers that they need to pay the scammer (for example, by claiming to be a government agency that needs to be paid off to avoid penalties, or by claiming to be a business offering special promotional pricing for a service) and that the payment needs to be made in gift cards.  They will then have the consumer go to an outlet to purchase a gift card and provide the scammer with the PIN on the cards.  Reports to the FTC indicate that eBay is the gift card of choice for scammers.

To try to combat this, the FTC has rolled out new materials that retailers can place at their front counters, which can be found here.  The FTC’s advice to consumers, though, is straightforward: “Whenever someone demands to be paid with a gift card, that’s a scam. Gift cards are for gifts, not for payment. If you paid someone with a gift card by giving them the numbers on the card, keep the card and your receipt, and report it to the card issuer immediately.”

Can landlords, whose tenants infringe on others’ trademarks, be held liable for trademark infringement? According to the 11th Circuit, the answer is yes. In Luxottica Group v. Airport Mini Mall, LLC, the 11th Circuit determined that a landlord whose tenants sell counterfeit goods can be liable for contributory trademark infringement if the landlord either stayed willfully blind to or had knowledge of the tenant’s infringing actions.

In its decision, the 11th Circuit assessed whether Airport Mini Mall’s (“AMM”) actions constituted contributory trademark infringement. Under the Lanham Act, a defendant may be liable for contributory infringement if (1) another entity commits direct trademark infringement, and (2) the defendant either intentionally induces the infringement, has actual knowledge of the infringement, or has constructive knowledge of the infringement. To support a showing of constructive knowledge, a plaintiff can demonstrate that a defendant remained “willfully blind” to the infringing actor’s unlawful conduct, which takes place when a defendant suspects wrongdoing but fails to investigate it. Importantly, the 11th Circuit determined that “a landlord may be contributorially liable for its (sub)tenants’ direct trademark infringement if the landlord intentionally induces the infringement or knows or has reason to know of the infringement while supplying a service (such as space, utilities, or maintenance) that facilitates it.”

During AMM’s time as landlord of the shopping center in question, the mall experienced three law enforcement raids that seized alleged counterfeits of Luxottica’s products. Even more, during AMM’s tenure, Luxottica sent two letters notifying AMM that its subtenants may be selling counterfeit products. Despite those events, however, AMM failed to determine whether their tenants’ products were in fact counterfeits, did not terminate their leases, and even renewed the leases of multiple potentially infringing tenants. As a result of these actions, the 11th Circuit determined that AMM was willfully blind and responsible for contributory infringement: “even if liability for contributory trademark infringement requires the defendant to have knowledge of specific acts of direct infringement, the evidence in this case was sufficient for a reasonable jury to find that the defendants had at least constructive knowledge of (or were willfully blind to) specific acts of direct infringement by their subtenants.”

If you are a landlord, it is likely best to avoid renting commercial space to tenants undertaking infringing behavior, and if you’re notified of such behavior, it is likely best to avoid staying “willfully” blind to that infringement. Otherwise, you could ultimately find yourself liable to those businesses enforcing their trademarks or other intellectual property rights.

On December 1, 2020, the TTAB continued its recent trend of decisions refusing to register marks on the ground of failure-to-function. In another precedential decision, the TTAB refused Applicant Lee Greenwood’s (“Greenwood”) application to register the phrase GOD BLESS THE USA for use in connection with “accent pillows; decorative centerpieces of wood” and “decorative wall hangings, not of textile,” finding that the applied-for phrase failed to function as a trademark. In a double-blow, the TTAB refused to enter Greenwood’s proposed amendment of the mark to THE LEE GREENWOOD GOD BLESS THE USA, ruling that such an amendment constitutes a material alteration of the proposed mark.

Failure-to-Function

On the issue of failure-to-function, the examining attorney argued that Greenwood’s original proposed mark fails to function as a trademark because GOD BLESS THE USA is “a common patriotic message, analogous to and synonymous with ‘God Bless America.’” [Decision, at p. 6]. In support of this position, the examining attorney presented evidence from more than 36 third-party websites showing that the phrase GOD BLESS THE USA is commonly used on a wide array of goods. [Id.].

The TTAB noted that the critical inquiry in determining whether a proposed mark functions as trademark is how the relevant public would receive the proposed mark. [Id., at p. 4]. In considering this inquiry, the TTAB found Greenwood’s case “reminiscent of” the case of D.C. One Wholesaler v. Chien. [Id., at p. 8].

D.C. One Wholesaler involved common use of the phrase “I ♥ DC” on a wide range of goods, including apparel, keychains, and commuter cups. [Id.]. In that case, the TTAB found that the “‘widespread ornamental use of the phrase by third parties “is part of the environment in which the [proposed mark] is perceived by the public and … may influence how the [proposed mark] is perceived.’” [Id., at p. 9 (quoting D.C. One Wholesaler, 120 USPQ2d 1710, 1716 (TTAB 2016)].

Relying on precedent, the TTAB ruled, “the phrase GOD BLESS THE USA is displayed, not as a source indicator, but as an expression of patriotism, affection, or affiliation with the United States of America.” [Id.]. In so ruling, the TTAB expressly rejected Greenwood’s argument that the public would commonly recognize the phrase GOD BLESS THE USA as referring to his signature song—a country song that has been downloaded no less than 2.5 million times. [Id.]. Despite Greenwood’s talent and fame as a country singer, the TTAB cautioned that, because there are no limitations to the channels of trade or classes of consumer of the goods identified in the subject application, the relevant consumers are members of the general public, who may, or may not, be music aficionados. [Id., at p. 10]. Thus, the TTAB held that Greenwood’s proposed mark GOD BLESS THE USA is “devoid of source-identifying significance and therefore fails to function as a trademark.” [Id.].

Materially Altering the Proposed Mark

As an alternative argument, Greenwood proposed amending his application to include his registered mark THE LEE GREENWOOD COLLECTION. Greenwood argued that his registered mark appears close to his applied-for mark GOD BLESS THE USA on the specimens of use he provided to the USPTO. [Decision, at p. 11]. The examining attorney rejected Greenwood’s proposal, noting that Trademark Rule 2.72 allows an applicant to amend the description or drawing of the mark only if “the proposed amendment does not material alter the mark.” [Id., at p. 12].

In further support of his position, Greenwood relied on ownership of a registration for the mark THE LEE GREENWOOD COLLECTION for use with the same goods recited in the subject application, and maintained that he is allowed to amend the proposed mark to include his previously registered mark because the TMEP states, “An amendment adding an element that the applicant has previously registered for the same goods or services may be permitted.” [Id. (quoting TMEP § 807.14(b))].

The TTAB considered various precedents regarding this issue and concluded that, under current law, “the key comparison is between the proposed amendment and the drawing of the mark in the original application.” [Id., at p. 21]. More specifically, the crucial question is whether the old and new forms of the mark create “essentially the same commercial impression.” [Id.].

A person must answer this question of fact regarding commercial impression from the viewpoint of the ordinary consumer. [Id., at p. 22 (citing, inter alia, DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012)]. The TTAB noted that ordinary consumers, unfamiliar with registrations on the Principal Register, could conceivably view the addition of an applicant’s previously registered matter as a significant change from the mark as originally filed. [Id., at p. 22].

The TTAB ultimately held that “previous registration of matter added in a proposed amendment is not an exception to the rule against material alteration; it is a factor to be considered in determining whether the alteration is material.” [Id.]. Reviewing the proposed alteration in this case, the TTAB agreed with the examining attorney that the addition of THE LEE GREENWOOD COLLECTION to GOD BLESS THE USA would materially alter the original mark. [Id., at p. 23]. Thus, the TTAB rejected Greenwood’s proposed amendment to the subject application.

The decision is In re Lee Greenwood, Serial No. 87168719 (TTAB December 1, 2020) (precedential).

Today I attended the United States Patent and Trademark Office’s (USPTO) virtual webinar on trademark trends and current developments in the United States and in Israel.  Among the speakers were Andrei Iancu, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and David Gooder, the Commissioner for Trademarks at the USPTO.

Mr. Iancu provided opening remarks about the importance of intellectual property to world economics – for job creation, growth of existing companies, new business formation, and improving economies around the world. He noted that September 2020 was the biggest filing month in the USPTO’s history and that the fiscal year ending in September 2020 was the highest filing year in the USPTO’s history. He sees this growth continuing, due in part to the Covid-19 pandemic motivating people to create new companies, brands, and products, and he also referenced the growth of ecommerce and the shift to online retail. He explained that bad faith filings continue to plague the USPTO, in response to which the USPTO has taken a number of steps including requiring foreign filers to have US counsel (see our prior blog post here). He said, among other things, that intellectual property must be predictable, reliable, and enforceable – something with which companies and practitioners likely agree.

Mr. Gooder provided some tips for trademark applicants and common mistakes to avoid in trademark applications. He mentioned the need to use real specimens for showing use in commerce (see our prior blog post here) and proposed using more than one specimen when filing a use-based application. He suggested really knowing what the goods/services at issue are and volunteering a disclaimer when appropriate.  With respect to the Acceptable Identification of Goods and Services Manual (ID Manual), he advised using IDs only from the manual and making sure the ID reflects the end product (not the format of the specimen). He also explained that examiners truly try to help applicants get their marks approved and that picking up the phone is an easy way to connect with them.

Overall, the United States portion of the webinar was informative and interesting. It would be nice if the USPTO did them more often, whether in tandem with other countries or individually.