Trademarks

Will Trademark Holders Lose Rights in the UK?

Posted on by Gavin Law Offices

By Elionas2 from Pixabay

While the United Kingdom formally withdrew from the European Union early last year, the Brexit transition period officially ended on December 31, 2020.  During the transition period, European Trade Mark Registrations (EUTMs) still extended to the UK and provided EUTM owners protection in the country.  Although as of January 1, 2021 EUTMs are no longer protected in the UK, the UK Intellectual Property Office (UK IPO) has created “comparable trade marks” for all registered EUTMs.  These comparable trade marks have the same legal status as if they were originally applied for and registered in the UK.  Owners of registered EUTMs did not need to request that any such comparable rights were created – this process was automatic.  Moving forward, the below points may be helpful in navigating trademark protection in the UK:

  • Pending EUTM applications – Any EUTM applications still pending on January 1, 2021 will need to be re-filed as new UK trade mark applications. Applicants may file new UK applications by September 30, 2021 to maintain the filing date and priority date of their EUTM applications.  The UK trade mark must be identical and cover the same goods and services as the EUTM.  UK trade mark application filing fees will apply, and the UK application will be subject to the same review process as any other UK trade mark application.
    • Because filing dates are important outside of the US, applicants with pending EUTM applications should aim to file within the 9 -month period after January 1, 2021 to ensure they are able to claim the same filing/priority dates in the UK as their EUTM applications. This process will not be automatic and requires action by applicants/counsel.
  • Address for Service in the UK – Those wishing to apply to register a trade mark in the UK should note that an address for service in the UK is required for new applications. Under the UK IPO’s new rule, owners of UK comparable trade marks will not need to change their address for service for 3 years if their new comparable trade marks were created from registered EUTMs.  After January 1, 2024, comparable trade mark owners will need to change their address for service to the UK only if their right is subject to proceedings (if your right is challenged and your address for service is outside the UK, the UK IPO will ask you to provide an address in the UK to engage in those proceedings).  Interestingly, this 3-year exception for comparable trademarks does not apply to comparable trade marks created from international registrations designating the EU under the Madrid Protocol.
    • This rule will limit businesses/individuals from filing UK trade mark applications themselves if they do not have a UK address. Owners of comparable UK trade marks may want to look into whether their existing EU counsel has an office in the UK.  Otherwise, such owners will need to appoint a new representative in the UK by January 1, 2024.  If your comparable UK trade mark was created from an EU designation under a Madrid Protocol application, the 3-year exemption period does not apply and you may need to appoint a representative with a UK address for service now.
  • Use Requirements – For EUTMs, an owner may use a mark in any member state of the EU to demonstrate use across the EU. Because the UK is no longer part of the EU, those applying for a UK trade mark will need use the mark in the UK in order to demonstrate use and may not rely on use in the EU.  For those with existing EUTM registrations that created comparable UK trade marks, the UK IPO will consider previous use in the EU.  However, owners of new UK comparable trade marks should note that marks become vulnerable to cancellation proceedings in the UK on the grounds of non-use after five years.  Thus, owners should put their marks to use in the next few years in the UK (if not already in use) if they wish to maintain their UK trade mark registrations and to avoid becoming vulnerable to cancellation proceedings.

For other questions, Gavin Law Offices is glad to advise on EU and UK trademark matters.

– Courtney Reigel, Esq.

U.S. Trademark Office to Increase Filing Fees for 2021

Posted on by Gavin Law Offices

The United States Trademark Office recently announced that it will increase a number of its filing fees on January 2, 2021.  The increases apply to a wide variety of filings, including the fees for initial trademark applications.  We have included the most noteworthy increases below:

  • TEAS Standard Trademark Application: $350 per class
    Up from $275 per class
  • TEAS Plus Trademark Application (pre-approved goods and services): $250 per class
    Up from $225 per class
  • Section 8 (filed with both 8 & 15 and Renewal filings): $225 per class
    Up from $125 per class 
  • Petition to cancel/Notice of opposition filed through ESTTA: $600 per class
    Up from $400 per class
  • Initial 90-day extension requests for filing a notice of opposition, or second 60-day extension requests for filing a notice of opposition, filed through ESTTA: $200 per application
    Up from $100 per application
  • Petition to the Director filed through TEAS: $250
    Up from $100 

For the full list of fee increases, please visit: https://www.uspto.gov/trademark/laws-regulations/updated-trademark-ttab-fees-processes.

The U.S. Trademark Office will also implement a new fee for deleting goods, services, and/or classes from a registration after submitting a Section 8 declaration, but before the declaration is accepted, at a rate of $250 per class.

In light of the increased filing costs, Gavin Law Offices will work with clients who wish to take advantage of the lower filing fees to complete filings before the end of the year.  If you are considering a new trademark application or have maintenance filings due in the next year, we can help you complete such filings before January 2, 2021.  Please reach out as early as possible to ensure that we have enough time to get preclearance and/or the necessary documentation completed before the increase date.

  • – Rina Van Orden, Esq.

Trademark Maintenance During Business Interruptions

Posted on by Gavin Law Offices

During this unpredictable time, we have a few practical trademark maintenance tips that could save “future you” time and money. Foundationally, trademark rights are maintained via use of the mark in commerce. For federally registered marks, this use is evidenced in maintenance filings during the lifecycle of the trademark. However, use in commerce may be difficult, if not impossible, during pandemic-related shutdowns. Typically, periods of non-use of a mark can leave a trademark owner without evidence to support a registration’s maintenance filings and may also leave a trademark vulnerable to claims of cancellation or abandonment.

The good news is that the Lanham Act, the law governing federal trademark rights, has a built in safeguard that allows owners to avoid unnecessary and unwanted results in light of unforeseen events, like, for example, global pandemics…

In the event that you have a U.S. Trademark Office maintenance filing due in the coming months, our team is ready to assist you. Just as important, trademark owners that may not have maintenance filings due, but who experience interruptions in operations, should note the following for their records:

  1. The date that use of the mark stopped (or your “non-essential” business had to cease operations);
  2. The approximate date when you hope to resume use (or resume operations); and
  3. Documentation of the facts that lead to non-use (for example, an order from local or state government) and affirmation that you intend to use your trademark when those special circumstances are relieved. (37 C.F.R.§2.161)

We recognize that the health and safety of your family and community is your top priority during this difficult time. We will do our part to help you focus on what matters most by providing our expertise on the path forward for your business.

For further information regarding your trademarks, please feel free to contact us.

-Elizabeth Sewell, Esq.

IP Rights in Halloween Costumes

Posted on by Gavin Law Offices

When I was growing up, I, like many children, wore homemade costumes of my favorite characters for Halloween – saving my parents money versus the store-bought alternatives, but certainly costing my mother time.  With a rise in intellectual property protection efforts by companies large and small in recent years, you may be wondering if your handmade creations might put you at risk for an infringement claim from one of the more over-zealous intellectual property enforcers (here’s looking at you, Disney).  As a lawyer, I am nigh physically incapable of saying “have no fear,” but I think I’m comfortable with a reassuring “have very little fear!”

The four areas of intellectual property protection that could apply to a Halloween costume are publicity rights and trademark, copyright, and patent protection.  I will address each in turn:

Publicity Rights

Should your costume include elements that could be used to identify a particular person, you may be violating such person’s publicity rights.  For example, a costume of Albert Einstein was the subject of a publicity rights lawsuit in 2010.  Publicity rights laws vary from state to state, and typically prevent unauthorized reproduction or use of a person’s likeness (which may include name, image, portrait, picture, signature, or other identifying elements) for commercial or advertising purposes.  The purpose of such laws is to prevent unauthorized parties from trading off the likeness of others without fair compensation.  Therefore, unless you plan on using your homemade costume in an advertising (e.g. in an advertisement for your small business) or commercial (e.g. manufacturing, producing, or selling your costumes) sense, you are likely not at risk for violating your costume subject’s publicity rights.

Trademark

Trademark owners have an affirmative duty to police their marks against unauthorized use by a third party.  However, trademarks by their definition are used as source identifiers for goods or services being sold in commerce.  Like the commercial and advertising aspects discussed above regarding publicity rights, trademark protection seeks to prevent parties from benefiting or trading off the trademarks of others for financial or reputational gain.  Thus, recreating a protected design, logo, image, etc. in a homemade costume that will be used for personal use only (and likely for one night only), presents very minimal risk of liability for trademark infringement.

Copyright

Unlike publicity rights and trademark laws, federal copyright protection extends to any reproduction of a protected work.  However, the Copyright Act specifically carves out exceptions for “fair use” reproductions.  Surprisingly, Halloween costumes are not directly addressed; however, the statutory factors to be considered in determining whether or not a fair use exception applies include “the purpose and character of the use, including whether such use is of a commercial purpose;” and, “the effect of the use on the potential market for or value of the copyrighted work.”  17 U.S.C. § 107(1), (4).  Again, the law focuses on commercial, rather than personal, use of the potentially infringing work.  Also, practically speaking, damages in many copyright claims are based on lost profits to the copyright owner, meaning sales of the infringing work that should be attributed to the rightful copyright holder.  Again, so long as your costume is made and used for your or your family’s personal use only, your use of the copyrighted material is very likely a “fair use.”

Patent

Patents prohibit any recreation of the patented design and, in general, apply to innovative designs.  This may sometimes apply to costumes.  For example, a patent exists for a costume that can be modified for comfort according to the outside temperature.  The U.S. laws concerning patents also consider what are known as “design patents.”  Design patents lack the exception of fair use but are only in effect for fourteen (14) years, and only protect unique and original designs separate and apart from a functional aspect of a costume.  This mains that no one can have a patent on a purple suit, but could have a design patent on a distinctive and ornamental patterned suit.  While it is unlikely that your recreated costume would run afoul of a design patent, the possibility is higher than in the other areas discussed above, particularly as there is no exception or commercial requirement.  The practical risk is even lower, as patent owners are unlikely to be patrolling neighborhoods (outside of their own trick-or-treating efforts) looking for infringers.  Furthermore, design patents are not the preferred method of protection in many cases, as the protection expires after a much shorter period (consider the fact that patent protection for designs is only 14 years, versus the “lifetime of author plus 75 years” protection applied to copyrights).

Conclusion

Avoid the urge to market, mass produce, and sell your wonderful homemade “wears” and devote the energy you may have used worrying about infringing on Marvel’s intellectual property to how many candy corns you can fit in your mouth at one time!  This author is pro-candy corn, but if that offends you to your core, consider Skittles and/or M&Ms instead.  Happy Halloween!

-Fred Freeman, Esq.