The U.S. Patent and Trademark Office  (USPTO) has adapted to the COVID-19 era.  Yet, performance challenges in certain operational areas remain.  This is the conclusion of the USPTO FY 2020 Annual Report.  Our previous article on TTAB statistics in the age of COVID-19 may be found here.

TTAB FY 2020 performance.   The TTAB is responsible for the adjudication of trademark opposition, trademark cancellation, and ex parte appeals. The USPTO fiscal year commences on October 1 and ends on September 30 of the following calendar year.

Fiscal year (FY) 2020 had its pre-COVID operational challenges from day one.  These included:

  • a backlog of cases from FY 2019;
  • an increase in TTAB filings by trademark owners;
  • a steep escalation in motion practice;
  • a significant increase in cases ready for decision (RFD); and
  • the ratio of RFD trial cases to Trademark Appeals was heavily titled towards trial cases

In 2020, the Board continued to address its backlog of cases, hiring more attorneys and judges to its staff.  In total, brought on more than 40 combined attorneys and judges.  This is the highest level ever.   As a result, by third-quarter, decisions on the merits and motions were all processed within goals.  Total annual goals, however, were not met.

Strategic Initiatives.  FY 2020 also had certain strategic goals realized.  For example, the Trademark Board completed a two-year pilot program to encourage early resolution of trademark cancellation cases.  This early resolution model is for trademark cancellation cases involving abandonment or non-use claims.   The TTAB also commenced an analysis of Accelerated Case Resolution (“ACR”) cases to determine its effectiveness to date over a several year period.  This is for the purpose of encouraging litigants to utilize ACR, which in theory could be less expensive and lengthy than traditional proceedings.   Whether ACR is preferred for cancellation and opposition proceedings is the subject of future articles.

The Board also began outlining a new pilot project, expected to begin in FY 2021.  This project will focus on having pre-trial conferences with parties in selected cases.  Other TTAB enhancements include a new digital Reading Room where users can search TTAB opinions.

Conclusion.  The U.S. Trademark Trial and Appeal Board has made significant progress over the past year.  It has adapted well to having its employees work virtually due to COVID-19.  The transition of more TTAB employees to a virtual work environment will likely continue even after the pandemic.  What will remain, however, are certain case management inefficiencies that result from Board practices that have remained unchanged over the years.

COVID-19 has not significantly impacted TTAB filings in fiscal year (FY) 2020.   It has, however, negatively impacted some performance goals. That is the conclusion of the FY 2020 report posted by the U.S. Patent and Trademark Office.  Our previous article on TTAB activities during COVID may be found here.

A.  FY 2020- TTAB filings:  (trademark oppositions and trademark cancellations)

2020 fiscal year filing information is reflected below.  The percentage change from  fiscal year 2019 is reflected in parentheses.

  1.  Extensions of time to oppose:  18,983  ( -7.8%)
  2.  Trademark oppositions:  6,712  ( -3.5%)
  3.  Trademark cancellations: 2,501 (+ 3.1%)
  4.  Appeals:  3,487 (+4.6%)

B.  FY 2020 -TTAB operations

FY 2020 TTAB operational statistics are shown below as compared to FY 2019 (in parentheses):

  1.   Cases ready for decision:  681  (-8.5%)
  2.   Cases decided: : 729 (+ 12.%)
  3.   Average pendency of trials: 17.7 weeks (+15.7%)
  4.   Cases awaiting decision: 126 (-38.8%)
  5.   Number of decision issued: 1072 (+7%)
  6.   Number of motions resolved by issued decision: 1337 (+8.6%)
  7.   Average pendency of contested motions:  12.4 weeks (+7.8%)

Conclusion:   Based on FY 2020 statistics,  COVID-19 has not had a significant impact on filing activities.  In fact, trademark cancellation filings have increased 3.1% for the year.  Trademark opposition filings are down, but only 3.1%.  This reflects almost the same percentage as the increase in cancellations year over year.  Not surprising is the increase in the average pendency of trials.  This TTAB performance metric now stands at 17.7 weeks.   Delays are never a good thing; it represents a 15.7% increase over last year.   Same holds true with respect to average pendency of contested motions.  This is now up to 12.4 weeks; a 7.8% increase. What seems to be a wildcard is the number of cases awaiting a decision.  This is down 38.8% which is a major decrease.

Publisher’s comment:  Could it be that COVID-19 delays have created a bottleneck in pending cases and TTAB performance goals?   More importantly, will the bottleneck get worse over the coming three to six months?  Time will tell.

Recent TTAB filing statistics reveal that COVID-19 has not substantially impacted U.S. trademark opposition filings.  While trademark opposition filings are slightly below pace compared to last year, trademark cancellation activities are on the rise.  This is good news for brand owners and practitioners everywhere.  Our previously reported summary of 2019 TTAB statistics may be found here.

2020 year to date (YTD) filing information (which includes three quarters) with percent changes over the same time period last year are reflected below:

  1.  Extensions of time to oppose:  14,399  (YTD -6.4%)
  2.  Trademark oppositions:  5,045 (YTD -3.3%)
  3.  Trademark cancellations: 1,865 (YTD + 2.5%)
  4.  Appeals:  2,495 (YTD – no statistical change)

In addition, 2020 YTD TTAB internal case pendency and other relevant statistics are as follows:

  1.   Cases decided:  487 (YTD- no statistical change)
  2.   Average appeal pendency: 13 weeks (YTD + 2.4%)
  3.   Average pendency of trials: 18 weeks (YTD +17.6%)
  4.   Cases awaiting decision: 194 (YTD -5.8%)
  5.  Trial cases- average pendency: 149.7 weeks (YTD -6.8%)
  6.  ACR trial cases- average pendency: 93.5 weeks (-25.9%)
  7. # of ACR cases decided:  13 cases (compared to 27 total ACR cases for fiscal year 2019
  8. Contested motions- average pendency: 11.8 weeks (YTD + 2.6%)
  9. Number of cases with motions awaiting decision: 199 (-17.8%)
  10. Number of contested motion decisions issued:  781 (+3.9%)
  11. Number of contested motions resolved by decision: 977 (YTD + 5.8%)

Conclusion:   Based on year to date statistics,  COVID-19 has not had a significant impact on filing activities.  In fact, trademark cancellation filings have increased 2.5% over the same time period last year.  Trademark opposition filings are only slightly down.  What has increased significantly, however, is the average pendency of trials (+17.6% over last year).  This could be due, in part, to consented motions of time to extend trial dates due to COVID-19 related disruptions earlier this year.  The second key indicator is the number of contested motion cases awaiting decision, which have decreased 17.8% over last year’s reporting period.  Again, this could be due to COVID-19 disruptions as opposed to increased TTAB efficiencies in ruling on contested motions.

 

The impact of COVID-19 TTAB filing activities is still too soon to tell.   But recent TTAB statistics provide a glance as compared to YTD activities from the preceding yearly period.

TTAB filings from October 2019 through March 2020 are summarized below.  The percentage change over the same period in 2019 is reflected in parentheses:

  • Trademark oppositions filed:   3,480   (N.A.)
  • Trademark cancellations: 1, 286 (+6%)
  • Extensions of time to oppose: 9,694 (-5.4%)
  • Appeals: 1,666 (N.A.)

Of note is the increase in the length of time and number of cases awaiting final decision:

  • Average pendency of appeals:  15.7 weeks (+23.6%)
  • Cases decided:  301 (-7.5%)
  • Average pendency of trials: 20.4 weeks (+33 %)
  • Awaiting decision at end of period 211 (+2.4%)
  • Cases ready for decision: 321 (-13.7%)

Our summary of 2019 TTAB filing statistics may be found here.   We will have to wait a few months to receive updated statistics on the full impact of COVID-19 on trademark opposition and trademark cancellation filings.

The USPTO has issued COVID-19 updates for trademark owners and counsel.  This supersedes the March 31, 2020 notice previously reported here.

The USPTO continues to view the Coronavirus outbreak to be an extraordinary situation within the meaning of 37 CFR Section 2.146 for affected trademark applicants and owners.  Therefore, it has issued the following updates to its earlier rules to provide relief in certain situations:

Response due dates.   Relief continues for a limited time period if accompanied by a statement that the failure to act was due to COVID-19.  Exemptions to deadlines are only for those matters due between March 27, 2020 and May 31, 2020.  In these situations, the matter will be deemed to be timely filed if submitted on or before June 1, 2020.   Eligible matters include but are not limited to:

  • responses to office actions;
  • statements of use or requests for extensions of time to file a statement of use;
  • notice of trademark opposition or request for extension of time to file a notice of opposition;
  • affidavit of use or excusable non-use
  • trademark renewal applications

Waiver of fees.  Relief will still be granted in the form of a waiver of the petition fee to revive an abandoned application or reinstate a cancelled or expired registration.  To be eligible, the abandonment or trademark cancellation must have taken place between March 16, 2020 and May 31, 2020.  In all cases, a statement must be submitted indicating that the failure to timely file was a result of COVID-19 delays or disruptions to business.   The petition must be filed no later than two months after the issue date of abandonment or cancellation.  If the applicant or owner did not receive notice of the original action, the petition must be filed no later than six months after the trademark cancellation or abandonment.

Additional notices.  The USPTO remains open for the filing of trademark opposition and trademark cancellation documents.  The business of the Office has not been drastically impacted, since the vast majority takes place electronically.   That being said,  the Office remains closed for in-person transactions and arguments before the U.S. Trademark Trial and Appeal Board (TTAB) until further notice.

Editor’s comment.   Trademark filings and actions before the U.S. Trademark Trial and Appeal Board continue without major disruption.  This is true both in terms of the number of new applications filed, as well as TTAB activities.   Trademark opposition and trademark cancellation statistics will be discussed in a future post.

 

We recently spoke with Amy Chan, principal of the Trade Marks team of Spruson & Ferguson to discuss how COVID-19 has impacted trademark opposition and cancellation procedures in Singapore and Malaysia.

1.  How has the COVID-19 pandemic impacted Singapore and Malaysia policies and procedures regarding trademark oppositions, cancellations, and invalidations? 

IP Offices in Singapore and Malaysia are taking steps to protect the well-being of their employees, customers and stakeholders and are closed during this period. The teams will continue to work from home and all Singapore trademark deadlines are extended to 7 May 2022 and 15 May 2020 for Malaysia trademark deadlines. There is no major disruption to procedures regarding trademark oppositions, trademark cancellations and invalidations in Singapore which are still being filed online and e-appointments/case management conference are being conducted via telephone calls. However, all opposition proceedings in Malaysia are suspended until the IP Office reopens.

2.  Have you seen any changes in trademark enforcement activities in Singapore and Malaysia over the past month due to COVID-19? 

Given the current health and economic situation, there seem to be a shift in priorities and clients are putting trademark enforcement activities and other non-critical actions on hold for the time-being as it is not possible to prosecute with the Courts and relevant agencies being closed during this period.  

3.  When faced with COVID-19 business uncertainties, what can we as members of the international trademark community be doing to keep trademark enforcement efforts top of mind for our clients who wish to do business in Singapore and Malaysia?

With the surge in e-commerce and online shopping during this period, we should stay connected with our clients and focus should be placed on addressing online counterfeiting activities, such as educating consumers. Most e-commerce marketplaces have implemented initiatives to minimise or stop infringement on their platforms. Enforcement efforts in e-commerce is an area worthy of long-term attention.

Editor’s Note:  Participating authors of COVID-19 global trademark opposition and trademark cancellation updates are from a wide variety of firms, many of whom we know and others by reputation.  This post focused on Singapore trademark and Malaysia trademark developments.  If you would like to contribute insight on trademark opposition developments in your own country, please contact us.

We recently spoke with Patricio Albornoz, senior associate at Bomchil Abogados in Buenos Aires, to discuss how COVID-19 has impacted Argentina trademark opposition and cancellation rules and procedures.

1. How has the COVID-19 pandemic impacted your national trademark office’s policies and procedures regarding trademark oppositions, cancellations, and invalidations? 

The National Institute of Industrial Property (INPI) issued INPI Resolution No. RESOL-2020-16-APN-INPI # MDP, to suspend all deadlines related to any Argentina trademark opposition, notifications, and Office Actions, then clarifying by Official Note that the suspension included all deadlines running as of March 12, 2020, as well as those initiated after that date. Yesterday, the suspension was extended until April 26, 2020 inclusive. Both suspensions are without prejudice to the acts that the interested parties wish to fulfill and can do so by digital means.  In fact, the Trademark Office is prepared to work remotely and we continue to file applications, oppositions, renewals, etc. Trademark application analysis by the TMO is taking place on a regular basis.

2. Have you seen any changes in trademark enforcement activities in Argentina over the past month due to COVID-19? 

Besides cease and desist letters (postal services are working), enforcement activities that are not performed entirely online are virtually suspended. Our Federal Civil and Commercial Courts also are under special recess until April 26, 2020, except for a few issues related to urgent health matters. Most of our colleagues and us are mainly collecting evidence when possible as well as notarizing it (notarial activities are partially restricted by government COVID rules too), in order to start formal proceedings when possible.

3. When faced with COVID-19 business uncertainties, what can we as members of the international trademark community be doing to keep trademark enforcement efforts top of mind for our clients who wish to do business in Argentina and elsewhere?

In my opinion, our role must be the one of raising awareness regarding these matters (through general newsletters and circulars and also with tailor-made communications addressing our clients with matters of their specific interest), together with an optimistic approach to the “day after”. We need to maintain the idea among our clients and communities that trademark enforcement is also a priority even more in this time of uncertainty and that the companies that sustain proactive policies regarding their IP protection will be rewarded in the near future.

Editor’s Note:  Participating authors of COVID-19 global trademark opposition updates are from a wide variety of firms, many of whom we know and others by reputation.  If you would like to contribute insight on trademark opposition developments in your own country, please contact us.

We recently spoke with Martin Hermida, intellectual property consultant at ClarkeModet in Uruguay, to discuss how COVID-19 has impacted Uruguay trademark opposition and cancellation rules and procedures.

1. How has the COVID-19 pandemic impacted your national trademark office’s policies and procedures regarding Uruguay trademark oppositions, cancellations, and invalidations?

The COVID-19 pandemic has not affected the procedures regarding trademark oppositions, cancellations, and invalidations to this day.  The most important reason for this is that all the procedure (filing of writs and proof) is done by electronic means. No deadline has been suspended for this reason and the Trademark Office is working remotely. The only change produced by the COVID-19 issue is that the office is not attending any personal or public hearings or meetings.

2. Have you seen any changes in trademark enforcement activities in Uruguay over the past month due to COVID-19?

We have received more inquiries about anti-counterfeiting in Uruguay.  We believe this is a strong consequence of the pandemic and a first attempt of brand owners to reduce the level of losses in a context of great economic volatility. However, the measures that can be taken to attack these issues usually involve legal actions, which are suspended in our country until April 30th .

3. When faced with COVID-19 business uncertainties, what can we as members of the international trademark community be doing to keep trademark enforcement efforts top of mind for our clients who wish to do business in Uruguay and elsewhere?

In our opinion, it is highly important to explain and convey that Uruguay is taking all measures to guarantee the rights of trademark owners and applicants. As I mentioned before, the Uruguay Trademark Office is still operational and no procedure has been suspended, including deadlines or official actions. Uruguay stands out for having a serious legal system which offers plentiful guarantees and the effects of the pandemic have not made this situation change, nor is it expected to occur.

Editor’s Note:  Participating authors of COVID-19 global trademark litigation updates are from a wide variety of firms, many of whom we know and others by reputation.  If you would like to contribute insight on trademark opposition developments in your own country, please contact us.

We recently spoke with Blake Knowles, principal partner at Spruson & Ferguson, to discuss how COVID-19 has impacted Australia trademark opposition and cancellation rules and procedures.

1.  Thank you for your time, Blake.  How has the COVID-19 pandemic impacted IP Australia’s policies and procedures regarding trademark oppositions, cancellations, and invalidations? 

IP Australia has facilitated remote working for some time now, and is well placed to continue operations during the current pandemic. IP Australia has indicated it will consider COVID-19 related disruptions when considering any request for an extension of deadlines (provided that such deadlines can be extended under Australian law). However, face to face hearings will not be conducted for the foreseeable future. This should not cause a major disruption as many hearings are now heard by telephone or video conference, or on the basis of written submissions only. Certain actions involving Plant Breeders Rights have also been suspended, such as submission of plant specimens to the Australian Cultivar Registration Authority, and examination of field trials that involve domestic flights or overnight stays.  For further information, see:

https://www.ipaustralia.gov.au/about-us/news-and-community/news/business-continuity-and-coronavirus-disease-covid-19-outbreak

2. Have you seen any changes in trademark enforcement activities in Australia over the past month due to COVID-19? 

There has been no noticeable change at this stage with regards to Australia trademark opposition and enforcement activities.  However, it is expected that some clients will defer taking action in relation to non-critical matters given the current health and economic situation. Australian trade mark filings have dropped through January-March relative to previous years by approximately 17% (Jan-March 2019 – 17,204 filings, Jan-March 2020 – 14,293 filings).

3.  When faced with COVID-19 business uncertainties, what can we as members of the international trademark community be doing to keep trademark enforcement efforts top of mind for our clients who wish to do business in Australia and elsewhere?

Firms should continue to keep clients abreast of developments in trademark law and recent trademark enforcement decisions, including by regular circulars and updates.

The current economic situation may encourage a higher rate of trademark infringement, as potential infringers assume that many companies will tighten their IP enforcement of their IP budget. It is important that such infringers be detected and dealt with early, before gaining any momentum in the marketplace.

Editor’s Note:  Participating authors of COVID-19 global trademark litigation updates are from a wide variety of firms, many of whom we know and others by reputation.  If you would like to contribute insight on trademark opposition developments in your own country, please contact us.

The U.S. Trademark Office has issued updated rules due to the ongoing coronavirus pandemic. The new rules are part of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act).  These rules are in addition to those previously reported here.

CARES Act overview.   Section 12004 of the CARES Act may toll, waive, adjust, or modify and deadlines due to the coronavirus.  The relevant factors to determine whether such relief should be granted include if the coronavirus emergency:

  1.  materially affects the functioning of the Trademark Office;
  2.  materially affects the rights of applicants, registrants, trademark owners, and others appearing before the Trademark Office;
  3.  prevents applicants, registrants, trademark owners, and others from filing a document or fee with the Trademark Office

Deadlines eligible for relief.   The Director of the USPTO has determined that the coronavirus emergency has directly impacted the rights of individuals, companies, and law firms doing business before the Office.  It has also recognized that the virus has caused disruptions to businesses as well as law firms who represent clients in trademark matters.   Accordingly, a person who is unable to meet a trademark deadline due to COVID-19 may be eligible for waiver of certain due dates for:

  • responses to office actions;
  • statement of use or request to file an extension of time for a statement of use;
  • notice of opposition or request for extension of time to file a notice of opposition;
  • certain priority filing bases governed by statute;
  • affidavits of use or excusable nonuse; and
  • trademark renewal applications

Time period affected.   The relief outlined above applies to any deadlines that fall between March 27, 2020 and April 30, 2020.  Deadlines for this period will be extended for 30 days from the initial date it was due if accompanied by a statement that failure to act resulted from:

  • office closures
  • cash flow interruptions
  • inaccessibility to files
  • travel delays
  • personal or family illness

or similar circumstances that have materially interfered with deadlines or payments.

TTAB deadlines.   U.S. Trademark Trial and Appeal Board deadlines are not impacted by the above rules.  Instead, parties seeking relief may do so by filing a motion for extension of time or reopening of a date.  Such motions be accompanied by a statement that sets forth the reasons for the relief requested.

Should you require additional information regarding U.S. trademark office deadlines impacted by the coronavirus, please contact us.