Updates from the Trademark Public Advisory Committee

The Trademark Public Advisory Committee (TPAC), a small group of senior trademark industry professionals who advise the Director of the United States Patent and Trademark Office (USPTO) and the Commissioner for Trademarks, held its second public meeting of the fiscal year on February, 72020.

PROSECUTION PRACTICE UPDATES

U.S. Counsel Requirement Task Force. The Office has assembled a special task force to enforce its new United States counsel requirement. It is concerned with the entirely new category of related misconduct that has arisen since the Office began requiring foreign-domiciled parties have United States licensed attorneys. Some foreign-domiciled parties have supplied the names of attorneys with whom they have no such relationship. Others have identified entirely fictitious attorneys. In response, the task force will be reviewing weekly data analytics reports to identify suspicious surges in foreign representation. It will also receive information from examining attorneys regarding suspicious applications.Meanwhile, attorney trademark practitioners should regularly monitor trademark records for uses of their own credentials to which they have not consented.

Marijuana Trademarks.The Office continues to implement procedures for examining trademarks for marijuana-related goods and services. These were generally refused until recently, but as of December 20, 2018, the new Farm Bill has legalized the sale of several forms of non-intoxicating cannabis products. In response, the Office issued Examination Guide 1-19, which outlines how marks related to these products should be examined. In particular, only applications covering hemp-derived goods with less than 0.3% THC are registerable. These applications must also state in the identification of goods and services that the hemp-derived goods have less than 0.3% THC and may only have been field or claim use as early as December 20, 2018.

Mandatory E-Filing.All new trademark applications made on or after February 15, 2020 must be filed electronically through the Trademark Electronic Application System (TEAS), with a few exceptions. Although the vast majority of trademark applicants already use TEAS, they must now also submit an email address for the trademark owner.Previously, many trademark owners using attorneys or correspondents would omit an email address for the sake of avoiding unwanted solicitation. However, under the new system, email addresses will not be displayed in the owner information on the Trademark Status and Document Retrieval (TSDR) system, they will nevertheless be listed in the accompanying trademark filings. To comply with this requirement, trademark practitioners should solicit regularly monitored, public-facing email addresses from their clients to use with future trademark filings moving forward, which will be used by the Office only if an attorney or correspondent is not otherwise listed.

Growth and performance of the USPTO. Trademark filings continue to increase and the Office expects 692,000 new applications for the year 2020, an increase of around 20,000 applications from the previous year, and an increase of 3% in the number of foreign filings in 2019. In response, the Office has been recruiting more Examining Attorneys. Acting Commissioner for Trademarks Meryl Hershkowitzcredits this hiring with improving the Office’s performance indicators in the first quarter of 2020.

Filing Trends.The number of appeals, opposition filings and petitions to cancel have increased through the first quarter of the 2020 fiscal year, but extensions of time to oppose have decreased. The Office and the Trademark Trial and Appeal Board are considering recruiting more full-time law clerks and student interns to address this increase of filings.

POLICY AND INTERNATIONAL AFFAIRS UPDATE

Fair Licensing Access for Government (FLAG) Act (H.R. 1999/S. 963). Congress is expected to pass the FLAG Act with bipartisan support. This act would allow governments to seek federal trademark registrations for their flags, coats of arms and other official insignia. To date, it has been particularly difficult for local governments to either commercialize these symbols or to prevent their exploitation by third parties. If the FLAG Act passes, they will have the same rights as traditional trademark owners to seek remedies for infringement in federal district court and to impound infringing articles at the border.

Trademark Licensing Protection Act of 2019 (S. 2439/H.R. 4164). Congress is currently considering legislation that would prevent trademark quality control from being used as evidence of an employee-employer relationship between a licensor and either its licensee or its licensee’s employees. This legislation could be particularly relevant to franchisors, whose licensing activities have been used to establish such a relationship under the Fair Labor Standards Act.

Senate Subcommittee on Intellectual Property. This subcommittee has actively engaged with the Office after being reinstated in 2019. It conducted a hearing on December 3,2019 during which it took testimony on a number of important subjects,including: the epidemic of fraudulent applications originating from China; the costs of improperly maintained registrations and the Office’s efforts to “de-clutter”the register; and the Office’s need for Examining Attorneys specialized in particular Nice classes of goods and services to effectively examine certain applications.

Rise of trademark labeling restrictions. Chile, Mexico and Peru, among others, have implemented or are actively considering restrictions on the advertisement of foods marketed to children that are high in fat or sugar. These might prohibit the use of colorful characters (such as Tony the Tiger, Keebler Elves or Trix rabbit)on food packaging, mandate the inclusion of information about the health risks associated with the consumption of certain foods, or restrict where certain products may be advertised.

Anti-counterfeiting campaign. In November 2019, the USPTO and the National Crime Prevention Council (NCPC) kicked off the Go for Real Campaign, a five-year educational anti-counterfeiting campaign. The goals of the campaign are to raise public awareness about the importance of intellectual property and the danger of purchasing counterfeit goods, and Change attitudes and purchasing behaviors of consumers of all ages, with specific focus on teens, tweens and their parents.

IT UPDATES

Artificial Intelligence in Image Searching. The Office continues to consider how AI might be used to facilitate image searches in the federal trademark register. WIPO and other jurisdictions have incorporated this technology into the functionality for their online databases. The Office has historically remained reticent to do the same for fear that the technology would be unreliable, to the detriment of unsophisticated trademark customers. Recently, however, the Office has been conducting market research to seek expertise in AI capabilities for both searches of images as well as identifications of goods and services.No concrete plans have been made, however.

 

BOARD PRACTICE UPDATES

Expanded Input for the Standard Protective Order. A slightly revised Standard Protective Order came into effect on February 5, 2020. Changes focused on improving readability and clarity of the order itself. The Board had tried to engage stakeholders in a discussion of changes to the handling of Attorneys’ Eyes Only information under the order for nearly two years. Despite strong opinions as to whether these documents should be visible to in-house counsel, no clear preference emerged and the Board opted not to change the order.

Expedited Cancellation Pilot Program. The Board continues to conduct a pilot program for expedited non-use cancellations, in an effort to test possible mechanisms for a new streamlined proceedings. The default rate for cancellations remains very high at 44%, increasing to 49% when cancellation is coupled with more claims than abandonment. The Board will continue to consider what amount of discovery really is necessary in these proceedings.

INTERNAL USP TO CHANGES

Swearing-In of New TPAC Members. Dinisa Hardley Folmar, Jennifer L. Kovalcik, and Susan M. Natland were formally sworn in as new members of TPAC. Ms. Folmar is the Head of Intellectual Property at The Hershey Company. Ms. Kovalcik serves as Vice President Technology & Intellectual Property Counsel for Community Health Systems. Ms. Natland is a Partner and Co-Chair of the Trademark and Brand Protection Group at Knobbe Martens. In addition to the new members, Elizabeth Roth Escobar, the former Vice Chair, is now serving as TPAC Chair, with Christopher Kelly assuming the role of TPAC Vice Chair.

Trademark Staffing. The Office continues to achieve all of its pendency and quality goals, with the addition of a new class of examining attorneys in 2020. The Office did not achieve its goal of adding 100 Examining Attorneys at the end of 2019 but managed to add 47 new Examining Attorneys in the first two months of 2020. The Office intends to continue increasing the number of Examining Attorneys over the next year by adding another 100 attorneys by the end of this year.

Budget and Spending.The Office collected $343.9 million dollars in fees during 2019. This number is slightly under the Office’s expectations, but still represents an increase from last year’s total trademark fee collections. The USPTO plans to release a final rule adjusting trademark-related fees in the summer after evaluating public comments.

Please feel free to reach out with any questions or comments about the work being done by the Trademark Public Advisory Committee and we would be pleased to share your feedback with the United States Patent and Trademark Office. If any of the above topics are of interest and you would like more information, we would be delighted to hear from you. Otherwise, we look forward to sharing updates from the next TPAC meeting, which will take place on April 17, 2020, as well as to keeping you apprised of other intellectual property developments.

We hope that this overview provides you with timely insight into important developments within the trademark community in the United States. Please feel free to reach out to us if you have any questions regarding these developments. For further information regarding the content of this article, please contact Brian Winterfeldt or David Rome of Winterfeldt IP Group at brian@winterfeldt.law,  david@winterfeldt.law or at +1.202.759.5833.

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