With an increase in both the number of trademark applications and fraudulent trademark applications over the last several years, the USPTO has recently instituted several additional filing requirements, increased most filing fees, and added new fee categories.
On November 18, 2024, the United States Patent and Trademark Office (“USPTO”) officially published its Final Rule for filing and maintenance fee increases for 2025 (the “Final Rule”). In so doing, the USPTO added new fee categories and increased many of its existing fees. The purpose of the changes and increases, according to the Final Rule outlining the same, is to “provide the agency with sufficient financial resources to facilitate the effective administration of the U.S. trademark system.” It is noted in the Final Rule that many of the fees have not increased for over 20 years. The fees discussed below are the USPTO fees only. Of course, the fees mentioned below are just the government fees, and legal fees are extra.
Chair of Olshan’s Intellectual Property Law Group and Co-Chair of the firm’s Brand Management & Protection Group Mary Grieco and associate Morgan Spina published a New York Law Journal article entitled “The Long Road To Settling a Trademark Case: Proactive Steps for Success” about the lengthy, and often expensive, legal proceedings surrounding trademark disputes.
As online sales take over the retail market, it is essential to show strong trademark use of the marks on retail websites to maintain brand identity and support the trademark filings. There are specific requirements in the way one uses the mark on a website so that the USPTO will accept it as trademark use. For trademark owners that sell products as well as run a retail store, there can be applications for the online retail store services and also for the goods sold, assuming those goods are branded with the trademark owner’s trademark. An online retail store that sells the brands of others and not its own brand would not be able to use the website in support of an application for goods.
“If one of us is not free to celebrate ‘Taco Tuesday,’ then none of us are free to celebrate ‘Taco Tuesday.’”
In a somewhat whimsical, but still serious, trademark cancellation proceeding filed on May 16, 2023, Taco Bell is seeking to cancel the registration of the trademark TACO TUESDAY, which has been owned by Spicy Seasonings, LLC (dba Taco John’s) since 1989. Taco Bell is not seeking trademark protection of its own for the phrase. Rather, Taco Bell is arguing that no one should own the phrase, and everyone should be entitled to use it.
Taco Bell states that it is “not ...
Russia’s invasion of Ukraine has caused chaos throughout the world and heartbreaking death and suffering to the people of Ukraine. In today’s global economy, the war has also resulted in consequences and instability beyond what is seen on the daily news. With sanctions from most Western countries and Russia’s own actions internally, global brands may begin losing their valuable intellectual property rights in Russia.
Olshan's Brand Management & Protection Group is presenting an hour-long webinar on Wednesday, April 13, 2022 on Understanding U.S. Trademark Registrations.
Multinational corporation, 3M Company (“3M”), has filed a string of lawsuits alleging trademark infringement against distributors of its 3M-branded N95 respirator masks. N95 respirator masks have become crucial in the fight against COVID-19. 3M has supplied healthcare workers and other first responders with 3M-branded N95 respirators. 3M’s recent lawsuits target false and deceptive price-gouging on the part of unauthorized third-party distributors, seeking to take advantage of the heightened demand for N95 respirators during the COVID-19 pandemic. Interestingly, these lawsuits do not allege that the defendants are selling counterfeit products. Instead, 3M alleges that the defendants, unauthorized resellers, are implying a direct relationship with 3M when selling 3M-branded products at inflated prices.
Resolving a circuit split, the Supreme Court (the “Court”) has held that willfulness is not a precondition for disgorgement of an infringer’s profits from the infringement in a trademark infringement case. In Romag Fasteners, Inc. v. Fossil Group, Inc., the Court considered willfulness as but one of the factors that may be considered in deciding whether or not to award an infringer’s profits to a trademark holder, rejecting the premise that a showing of willfulness is required before an infringer’s profits may be awarded.
Almost all intellectual property offices throughout the world have used an online filing system for some time, which allows IP owners and attorneys the ability to file the required prosecution and maintenance documents online. In addition, many government intellectual property offices, including the United States Patent and Trademark Office (“USPTO”) have been set up to allow employees to work remotely. Therefore, while the physical offices of intellectual property government agencies are likely closed or are operating with minimal on-site staff, we do not foresee any major disruptions.
In today’s global marketplace, it is more important than ever to make sure your brand is protected around the world. Failing to do so could prevent you from entering a key marketplace, or even worse, could allow an unscrupulous individual to create a business in another country that directly mimics your business. One of the first steps in protecting your brand is obtaining trademark protection in countries in which you do business or intend to do business. Unfortunately, this can be an expensive endeavor for brand owners as trademark protection is territorial and, with very few exceptions, must be handled on a country-by-country basis. Each country will have its own governmental filing fees, and the filings will generally need to be handled by an attorney who is licensed to practice in that country.
Olshan Advertising Partner Andrew Lustigman spoke at prestigious American Association of Law Schools’ (“AALS”) annual meeting
The California Supreme Court currently is considering an appeal that will have broad-reaching consequences for policyholders that face allegations of patent and trademark infringement.
Trademark Owners Should Act to Register Their Trademarks with the Trademark Clearinghouse.
Olshan's Andrew Lustigman is featured in Digiday's article, "Brands Biggest Legal Problems in Digital".