Happy holidays and welcome to the 2017 New Year edition of Trademark Red Tape, our periodic round-up of trademark news and happenings at the United States Patent & Trademark Office. Here are the highlights:
- Fraudulent Trademark Solicitations. Trademark attorneys and their clients alike have been plagued by an increasing number of fraudulent trademark solicitations over the past few years. These solicitations, which are sent under official-sounding names such as the United States Trademark Registration Office and the Register of International Patents and Trademarks, have the appearance of invoices for official trademark fees. These fake invoices routinely trick unsuspecting trademark applicants into paying scammers, usually for nothing in return, or sometimes for the dubious honor of having their marks listed in a useless trademark directory. The USPTO has for several years now provided a list of known fraudsters. Recently, the Department of Justice announced that two men masquerading as the “Trademark Compliance Center” and the “Trademark Compliance Office” pled guilty of stealing more than $1.6 million from trademark applicants and registrants. It’s nice to see some of these shady entrepreneurs get their just deserts, but there are surely others ready to jump in and fill the void, so remain vigilant!
- New TTAB Rules. As we previously discussed, the new Trademark Trial and Appeal Board (TTAB) rules have now been made final, and will go into effect January 14, 2017. Among the sweeping changes to TTAB practice include new electronic filing requirements, changes to service, updated discovery requests and, as we mentioned previously, expanded use of testimony by declaration. The USPTO has published a chart summarizing the rule changes. Note that the rules apply to all cases, new and pending.
- Fee Increases. As a friendly reminder, new USPTO trademark fees also go into effect on January 14, 2017. To encourage efficiency, fees for paper filings are increasing dramatically, and regular Trademark Electronic Application System (TEAS) filing fees will also go up. TTAB filing fees are rising across the board, and brand new fees have been introduced for obtaining extensions of time to oppose. The USPTO has published a chart summarizing the fee changes.
- Improving the Accuracy of the Federal Registry. As we have previously reported, the USPTO is taking several steps to “clean up” the federal registry. First, it will be making permanent the post-registration pilot program, which spot-checks certain maintenance filings to require additional specimens of use for identified goods. Second, the USPTO will be updating the declaration accompanying all applications to improve “readability,” the (very optimistic) hope being that applicants will think twice before filing applications identifying goods and services for which no use or bona fide intent to use exists. Finally, the USPTO continues to explore new and/or updated procedures for canceling registrations for marks that either (a) are no longer in use or (b) have never been used. We will be monitoring these efforts and will report further developments.
We’ll be back later in 2017 with additional updates.