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Category: News

Office Action Response Deadline Change

Trademark owners will soon have a shorter office action response deadline.

SpaceX flies over Phoenix after launching from Vandenberg

SpaceX flies over Phoenix after launching from Vandenberg

Beginning December 3, 2022, the Trademark Office will cut the normal six-month response period to just three months.

When a trademark application undergoes examination, the Trademark Office sends an office action to raise and address issues with the application.  Until now, applicants have had 6 months to respond to the action.  This was codified in Trademark Office regulations.

Now, applicants have less time.  As part of the implementation of the Trademark Modernization Act, applicants will now have to respond within 3 months of the issue date of the office action.  However, applicants can “buy back” the full months by paying a $125 extension fee.  This will let them have the full 6 months for a response, but applicant have to file the request before the 3-month office action response deadline ends.

This system is similar to the one that the Patent Office uses.  In the Patent Office, the 6-month office action response deadline is shortened to 3 months, and applicants must pay extension fees for individual months.  The extensions are purchased in single-month increments, so applicants can buy an extension for the fourth month, or for five months, or for six months.  The extensions under the patent system are not due preemptively; applicants request them when filing the response in the fourth, fifth, or sixth months.

Not all trademark applications will actually have the abbreviated office action response deadline.  Applications filed into the US through the Madrid Protocol will continue to retain the 6-month response period.  More information is available from the USPTO here.



Sovereign Immunity for Copyright Infringement

Pictographs by the Fremont People, Jones Hole Creek, Utah

Pictographs by the Fremont People, Jones Hole Creek, Utah

An author is petitioning the Supreme Court for the second time, arguing that Texas A&M should be liable for copyright infringement after copying an important page from his book.

The case raises questions that the Court has touched upon before:

  • Are the Aggies protected by sovereign immunity?
  • Are the states fee to commit copyright infringement without penalty?
  • Did Texas make an unauthorized taking of the copyrighted work?
  • Is copyright infringement never a taking?
  • Is there any other type of liability here?

In 2020, the court decided Allen v. Cooper, holding that sovereign immunity protected states from copyright infringement claims. This case affected the author’s first petition to the Court.  Now he is trying again, challenging sovereign immunity for copyright infringement and its relationship to the Constitution.

Sovereign immunity is the sometimes qualified protection given to states to infringe on the rights of others. Policy decisions underpin much of sovereign immunity.  But should it allow a state entity – like Texas A&M University – to copy someone else’s hard work and creative expression?  Should Texas A&M be subject to copyright infringement despite the policy?

More available here at Patently-O.



Crumbl Cookies Trademarks

Riding up to Big Mountain, UT

Riding up to Big Mountain, UT

Earlier this year, Crumbl Cookies sued two competitors.  Crumbl started in Logan, Utah, not far from where I happen to be writing this today in Bountiful, Utah.  Crumbl sells large ornate cookies in pink boxes and has a menu that rotates periodically.  Crumbl feels that other companies have tried to jump into the same space, trade off their goodwill and reputation, and compete unlawfully.

Crumbl sued Crave Cookies and Dirty Dough for trademark infringement, trade dress infringement, and unlawful competition.  The CEO of Dirty Dough published the trademark complaint on his LinkedIn and Facebook pages, so this post addresses that action only.

Essentially, the complaint boils down to Crumbl’s claim that “Dirty Dough … sells and promotes cookies using packaging, decor, and presentation that is
confusingly similar to Crumbl’s established and successful trade dress and brand identity.”

Crumbl claims it has certain intellectual property rights in its business, including:

  • Delivery services for its scratch-made gourmet cookies
  • Packaging in oblong pink boxes that have “no extra space”
  • The color pink
  • The CRUMBL COOKIES logo, featuring a “whimsical, outlined-shaped drawings, including a cookie with a bite taken out of it”
  • Seamless ordering expiring on the Crumbl app
  • Weekly rotating menus

Crumbl will have to establish that it actually has these rights, which will involve arguing that others don’t.  One challenge for Crumbl will be differentiating and delineating its packaging, cookie styles, menus, etc. from those of other cookie companies.  This could be quite difficult.  It will involve defining the market, defining the products, defining the customers, identifying the features or characteristics that make its product unique among its competitors, and other things that are highly fact dependent and may require a great deal of expert work.

Crumbl will then need to argue that Dirty Dough is infringing its rights.  The complaint makes a first pleading on this, for example, by suggesting that the two companies use the same channels of trade including storefronts, websites, and social media accounts.  Of course, for that example, what company doesn’t sell through those channels?  Crumbl attempts to paint the companies as similar because they both use pictures on their respective Facebook pages showing cookies laid flat, shot from above.  Crumbl argues that the two companies both use a cookie image with a bite taken out.  Crumbl even presents in its complaint side-by-side photos of cookies decorated in a similar fashion, such as with a white swirl pattern, chocolate candy bar, or sprinklers:

Crumbl Cookies compared to Dirty Dough cookies

Crumbl on the left, Dirty Dough on the right

These are all going to be difficult arguments.  Certainly, Crumbl has grown quickly and become well-known in Utah.  However, whether it has the sort of fame and exclusivity necessary to exercise the rights it claims it has is an entirely other story.  The case will take a great deal of time to develop, and will probably twist and turn as evidence is exchanged, experts testify about cookie marketplaces and packaging practices, and the parties focus on some arguments more than others.  At this stage, it is far too early to tell what will happen, but this case and the Crave case do establish one thing: they show would-be competitors that Crumbl is not afraid to go to the mat.



Identity Verification at Trademark Office

On January 8, 2022, the United States Patent and Trademark Office will introduce “identity verification” for registered USPTO.gov users.

Thanksgiving in Phoenix

Thanksgiving in Phoenix – we eat outside!

Before 2019, “anyone” could file a trademark application, so long as they knew how to submit trademark correspondence through mail, fax, or the Trademark Office’s online TEAS filing system. In 2019, the Trademark Office began requiring that users log in to a USPTO.gov account. Now, those users must complete a one-time identity verification step to ensure that their USPTO.gov accounts correspond to biographical information for the actual user.

The intent is to deter so-called “bad actors” who make fraudulent filings at the Trademark Office. This is part of the USPTO’s ongoing process of protecting the validity and integrity of the Trademark Office’s records. The Trademark Office has fallen victim to fraudulent filings in a few ways. For example, some legitimate trademark applications have been co-opted or stolen by people filing without the applicant’s authorization. As another example, in the summer of 2021, the Trademark Office issued an order force-abandoning perhaps 10,000 trademark applications because the filing attorney’s office had fraudulently signed applications in rapid succession, at odd hours, in the names of different applicants spread across the globe, sometime filing hundreds of applications within minutes of each other.

The identity verification tool is provided by ID.me. However, the Trademark Office website does not yet detail how the verification process works other than to say it will take less than 15 minutes. Some things that will be needed:

  • Smartphone or computer
  • Government-issued ID
  • Social security number
  • “Selfie” – yes the Trademark Office actually says it wants a “selfie.”
  • Soft credit check permission – unclear if your credit will need be thawed or unlocked if frozen.

Only trademark applicants, US attorneys, and Canadian attorneys will be able to complete the verification process. Support staff, such as paralegals and secretaries, will be sponsored by verified attorneys. Attorneys outside the US and Canada will not be able to complete the identity verification, because they are not allowed to file US trademark applications at all. The Trademark Office a few years ago changed the rules to prohibit foreign attorneys from acting is US trademark applications.

For more information about identity verification, the USPTO is hosting a webinar on December 14, 2021.



Student Athlete Trademarks, Names, Images, and Likeness

Mountain Biking in Bountiful, Utah

Mountain Biking in Bountiful, Utah

Student athletes will now be allowed to profit from their performance and influence.

Until this year, the NCAA prohibited college students from making money for playing sports. However, this month, Florida began allowing students to benefit financially from their performance and the money and attention that brings. California signed the Fair Pay to Play Act (“FPPA”), going into effect in 2023 and affecting schools that make $10 million or more in media rights each yeah. Colorado will allow students to profit from their name, image, and likeness in 2023 as well. Discussion and legislation are working through most of the other states and Congress as well. Rather than being directly paid to play, most rules allow student athletes to accept brand relationships, sponsorships, and other promotional arrangements.

Social Media Influence

Companies seeking sponsorships opportunities are looking for not just outstanding athletes but also influencers who reach a large audience.

A large audience means widespread brand promotion. It also means targeted promotion; the right sponsors may be able access specific demographics through the student’s socials. Those demos may be ones that they cannot otherwise target. This represents a tremendous opportunity for the sponsor and thus can create great value for the student. Knowing this positioning will be incredibly important for any student athlete negotiating a deal.

The Student’s Opportunity

Most athletes become famous long before they turn professional. While professional athletes have an insanely high level of fame, many of them were famous or at least well-known in college, and some in high school. A student who captures the value of their athletic performance while they are still in college builds their brand early and realizes a longer income life.

Some student athletes don’t turn professional, either because they aren’t quite good enough or because there is no professional league for their sport. For them, college may be the only time that they would be able to profit from their performance. Doing so may be an opportunity to make money from their sport before graduating and entering the more normal workforce.

Potential Challenges

Student athletes and the colleges they attend may become competitors. For example, a school that has a contract with Nike to outfit its players in Nike gear only will not be too happy with a student who individually takes a deal to rep Adidas. How does this conflict resolve? In California, the FPPA prohibits the student from closing a deal with a competing sponsor. The NCAA may adopt a similar policy. This potential conflict could be in any number of fields: nutrition, beverages, shoes, athletic and protective equipment, mobile services, etc. This will restrict the student’s opportunities and will require competent representation to negotiate those limitations.

Protecting Name, Image, and Likeness

Being popular on social media is just one aspect of building value. Look at any highly successful professional athlete and you will find a portfolio of trademarks protecting them.

It may seem strange, but a person doesn’t necessarily own their name. Simply having a name does not alone give someone the right to prevent other people from using it. If a student athlete doesn’t actively pursue protection, then there are only a few ways in which they can prevent others from using their name, image, and likeness (“NIL”).

Filing a trademark application is perhaps the easiest, most straightforward, and most definite way to protect a student athlete’s brand. Trademarks can cover the student’s name, nickname, any logo they adopt, or a catchphrase or slogan used on or off the field. Some marks that come easily to mind:

Johnny Manziel’s Trademark

Lance Armstrong’s Former Foundation’s Trademark

Tim Tebow’s Logo

Michael Phelp’s Logo

Jeremy Lin’s Trademark

Serena Williams’ Logo

While filing a trademark application is an easy step, it is one that still requires careful planning. The student and their attorney must consider how the student’s fame is likely to be used, how it will leverage the most value, and consequently how a trademark application should be filed to capture that. Further, once filed, the application needs to be properly processed through the Trademark Office. Once the mark is registered, the student will want to monitor for unauthorized use of their properties.

Some athletes will also want to consider seeking international protection, either because they will play internationally or because they expect their fame to extend beyond the boundaries of the US.

Lastly, owning trademarks protecting one’s name, image, or likeness is just the start – the student athlete will likely want and need guidance in negotiating deals with companies. Representation – either with a registered agent or attorney – will serve the athlete well in ensuring that they take the fullest advantage of their performance.

If you are a college student with questions about how to protect your influence, please feel free to contact trademark attorney Tom Galvani.



Juneteenth at the Patent and Trademark Office

The United States Patent and Trademark Office is closed today, June 18, 2021, for the first federal holiday of Juneteenth National Independence Day.  Federal employees have the day off.  The electronic filing systems remain open for business for all those who still wish to file applications, responses, and other communications with the Patent and Trademark Office.



Fee Changes at the Trademark Office

Piestewa Peak, Phoenix

Piestewa Peak, Phoenix

In October, the Patent and Trademark Office raised most of its patent-related fees. Now, the other side of the building is raising its fees on trademark actions. The changes will become effective January 2, 2021. As with patent fees, these are the first trademark fee increases in almost three years, but they are being instituted in during a pandemic where many are struggling to meet their financial obligations.

The fee changes may reflect higher processing and examination costs for certain types and phases of applications, but they also incentivize certain behaviors. Fore example, the Office has long differentiated the fees between paper applications, electronic applications presenting customized information (“TEAS Standard” applications), and electronic applications adopting standardized or suggested wording (“TEAS Plus” applications). These changes continue that trend.

All fee changes can be viewed here.  Below I cover the fees for some of the more-commonly used actions.

Adjusted Fees

  • TEAS Standard trademark application filing fee increases from $275 to $350 per class
  • TEAS Plus trademark application filing fee increases from $225 to $250 per class
  • TEAS Plus applications that fail to meet the Plus standards will be assessed $100 penalties per class instead of $125 penalties per class
  • The fee to file a paper application increases from $600 to $750. Nobody should be filing paper applications anymore.
  • Petitions to revive an abandoned trademark application increase from $100 to $150
  • Ex Parte Appeals to the Board increase from $200 to $225 per class
  • Section 8 maintenance filing fee increase from $125 to $225 per class
  • Petition to cancel fee increases from $400 per class to $600 per class
  • Notice of opposition fee increases from $400 per class to $600 per class
  • 90-day extension requests for filing a notice of opposition increase from $100 to $200

New Fees

  • Deleting a class, or goods or services from a class, will now incur a $250 fee per class, if that deletion is made after a Section 8 filing is made. There is no fee if the deletion is made in a Section 7 filing before the Section 8 filing.
  • Filing a letter of protest against a third-party trademark application now incurs a $50 fee

 



Fee Changes at the Patent Office

Florida River, Colorado

Florida River, Colorado

The Patent Office has raised many of its fees.

The Office attempted to soften this fee increase by explaining that it is the first raise in almost three years, it nevertheless comes in the midst of a pandemic where many are struggling to meet their financial obligations. Larger companies may not be greatly affected, but smaller companies, start-ups (especially self-funded ones), and independent inventors are disproportionately impacted by these fee changes. It is somewhat disappointing to see Office continue with these changes despite the current economic situation of most Americans.

Nevertheless, the Patent Office is largely self-funded and budgeted, and it is not immune to rising operational costs. As a consequence of mandated internal reviews of fees, costs, and revenues, the Office determined that fee adjustments were necessary to adjust to increasing costs and to provide necessary resources for its internal operations. In setting fees, the Office attempts to not just cover its current costs but its projected costs for the next several years. Thus, the hike feels steep now because it is, in part, set to off-set future fees. Most fees increased by approximately 5 percent, though some increased by quite a bit more.

Below I cover the fees for some of the more-commonly used actions. There are a number of changes to fees that I have not included here (more info is available at this link).  I’ve quoted the below fees at the small entity rate.

Adjusted Fees

  • Provisional Application Filing Fees increased from $140 to $150
  • Utility Patent Application Filing Fees increased from $785 to $830
  • Track One Requests for Expedited Examination increased from $2,000 to $2,100
  • Rocket Docket requests increased from $450 to $800
  • Design Patent Application Filing Fees increased from $480 to $510
  • International Application Transmittal Fees increased from $120 to $130
  • International Application Search Fees increased from $1,040 to $1,090
  • International Preliminary Examination Fees increased from $300 to $320
  • Extensions for Responses increased $10 to $80, depending on the length of extension
  • Terminal Disclaimers increased from $160 to $170
  • RCE fees increased from $650 to $680
  • Notice of Appeals increased from $400 to $420
  • Petitions to Revive Abandoned Applications increased from $1000 to $1050
  • Utility Patent Issue fees increased from $500 to $600
  • Design Patent Issue fees increased from $350 to $370
  • 3.5 Year Maintenance Fees increased from $800 to $1,000
  • 7.5 Year Maintenance Fees increased from $1,800 to $1,880
  • 11.5 Year Maintenance Fees increased from $3,700 to $3,850
  • Maintenance Fee Surcharge (for late maintenance payments) increased from $80 to $250

New Fees

  • Non-DOCX Filing Surcharge is a new fee at $200. The Office is beginning to require patent application documents be filed in DOCX format. This surcharge will not go into effect into 2022, however.

Discontinued Fees

  • The Office dropped fees for a bunch of actions and reports that are very infrequently used.


Podcast: Being an Engineer – First to File, Secrecy & Fast-Tracking Patents

Windy Point on Mt. Lemmon

Aaron Moncur of Pipeline Design & Engineering recently interviewed me for his podcast Being an Engineer.  We talk a little about my early engineering time, but mostly about the transition from engineering to law and the basics of patent protection. Please have a listen:

Being an Engineer – First to File, Secrecy & Fast-Tracking Patents

Pipeline Design and Engineering designs elegant products for its customers.  They are experts in the fields of mechanical engineering & product development.  Aaron hosts the Being an Engineer podcast as a forum for engineers and those who work with them to share and learn about how others solve problems engineers face each day, and about the delightful idiosyncrasies that make engineers breed unique.  Aaron graced me in as a past engineer.  I share some ideas about when you may think it is time to jump the engineering ship, how much fun Laplace Transforms can be, how to protect a new soda bottle design, and why the Patent Office expedites patent applications for those over 65.

 



CORONAVIRUS: Patent Office Form For COVID-19 Statement

Getting hotter in Phoenix

As discussed earlier, the Patent and Trademark Office is extending certain deadlines where a delay in filing a paper or paying a fee was due to the COVID-19 outbreak.  Initially, the guidance from the USPTO was to include a specific statement in a filing and make it conspicuous.

The Office has now created a fillable PDF form which contains this statement.  The form can be filled and filed directly to the PTO with its own Doc Code.  Upon filing, it should be easily identified by the Patent Office and processed accordingly.

The form is available here.  Please note: this is a patent form; it looks like the other forms used by the Patent Office.  I’m not aware of any crossover between patent and trademark forms.  It could probably be shoehorned into use as a trademark form, but only with modification, as the fields in the upper half of the form are specific to patent applications and issued patents.  However, you may still be better using the “miscellaneous statement” section of TEAS filings to make your COVID-10 statement in a trademark application or trademark registration.