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.

The USPTO has issued a policy about the coronavirus and trademark deadlines.

According to the statement, the USPTO considers the effects of the Coronavirus to be an “extraordinary situation” within the meaning 37 CFR 1.183 and 37 CFR 2.146 for affected trademark owners.  While the new guidelines waive certain fees, they do not waive statutory deadline requirements.

Business before the USPTO.   Until further notice, all oral arguments before the U.S. Trademark Trial and Appeal Board and all other in-person interviews and other business before the USPTO are suspended.  In the alternative, hearings and interviews will be conducted by phone or videoconferencing.  Normal email communications with USPTO staff and other electronic filings will not be affected.

Trademark deadlines.  The following statutory trademark-related time periods are not extended and statutory fees are not waived:

  1.  the 36-month period set forth in 15 U.S.C. § 105l(d) within which a statement of use must be filed and the associated fee(s);
  2.  the periods set forth in 15 U.S.C. §§ 1058, 114 l(k) for filing affidavits of continued use or excusable nonuse and the associated fee(s);
  3.  the period set forth in 15 U.S.C. § 1059 for filing a renewal and the associated fees; and
  4.  the periods set forth in 15 U.S.C. §§ 1063 and 1064 for filing a trademark opposition or trademark cancellation proceeding

Reinstatement policy.   For trademark applications or registrations that have been cancelled or abandoned due to the Coronavirus, the USPTO will waive fees to revive the application or reinstate the registration.   This is because USPTO fees are set by regulations, not by statute, giving the USPTO direct authority to use its discretion.  In the above situations, the trademark owner must include a statement that the missed deadline was due to impacts of the coronavirus.  Such petitions to revive or reinstate must be made within two months after the issuance of the notice of trademark abandonment or trademark cancellation.

Handwritten signatures.  The USPTO has waived the requirement for original, handwritten signatures for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card.  In both situations, copies of handwritten signatures will be accepted.   The USPTO has no other requirements for handwritten signatures and electronic signatures for routine filings will continue to be accepted.

Bottom line:  Statutory filing deadlines are not waived due to the coronavirus outbreak.  In the case of trademark opposition or trademark cancellation matters that require an extension, parties are encouraged to seek consent from the adverse party.   If there is no consent, parties can still move the TTAB to extend or reopen certain dates based on existing regulatory standards of what constitutes “good cause” or “excusable neglect.”   Should you have any questions about these policies, please contact our office.

A recent trademark opposition found no likelihood of confusion between two apparel trademarks.

In Garan Incorporated and Garan Services Corp. v. Manimal LLC , the Opposer is the owner of the well-known GARANIMAL brand of children’s clothing.  The applicant sought registration of the mark MANIMAL for a wide variety of men’s women’s and children’s clothing, including shirts and pants.  In its notice of trademark opposition, the Opposer relied on eight trademark registrations for its GARANIMAL Mark.

In determining whether a likelihood of confusion existed between the parties’ marks, the Board compared the Opposer’s mark most similar to Applicant’s mark for in part identical goods.  This was Registration No. 0954125 of the mark GARANIMAL for “children’s shirts and pants.”   If the opposition could not be sustained based on this mark (which as closest in its identification of goods to the Applicant’s goods), then the opposition would not be successful for any of the other registrations.  The Board proceeded with its analysis of the likelihood of confusion factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)  (the “DuPont factors.”).  Two key considerations are the similarity of the marks and similarity of goods.  In this case, the Board analyzed the similarity of the marks last.

  1.  Similarity of the goods.  It is sufficient for finding a likelihood of confusion that Opposers establish that any item encompassed by the identification of goods within a particular class in the application and registration are related.  Since the Applicant’s goods encompassed in part Opposer’s goods, this factor weighs in favor of the Opposer.
  2.  Similarity of channels of trade and class of consumers.  Because the goods described in the application and Opposers’ registration both encompass shirts and pants, they are therefore legally identical in part.  In such situations, the Board presumes that the channels of trade and classes of purchasers are the same.  This factor weighs in favor of the Opposer.
  3.  Length of time without actual confusion.  Here, the absence of any reported actual confusion was not highly persuasive because the Applicant’s use of its mark was not appreciable and continuous.  Moreover, since the use was not in the same markets, there was not a reasonable opportunity for confusion to occur.
  4.  Strength of opposer’s mark.  The fifth DuPont factor enables Opposers to expand the scope of protection afforded its pleaded mark by adducing evidence of the fame of its mark.  This is shown by sales, advertising, and length of use.  The sixth factor, which is related, affords Applicant the opportunity to restrict the Opposer’s evidence of strength by adducing evidence of the number and nature of similar marks on similar goods that already exist.  To determine strength (the fifth factor), the Board looks at the mark’s inherent strength based on the nature if the mark itself, and its commercial strength, based on its marketplace recognition.  The latter is analyzed at the point that the Opposer’s mark is asserted in litigation to prevent the Applicant’s use.   Here, the Board concluded that the GARANIMAL Mark was inherently distinctive and original for purposes of strength.  It further concluded that commercial sales of goods and advertising under the mark have been substantial since it was first introduced in 1972.
  5.  Similarity or dissimilarity of the marks.   This factor looks at the similarity of both marks in terms of sight, sound, and commercial impression.  Where, as here, the goods are similar, then the degree of similarity between the marks need not be as great for purposes of finding a likelihood of confusion.  Here, the Board found that the Applicant’s mark was sufficiently different than the Opposer’s in part because the Opposer placed the letter “m” before “animal” to create a combination of “man” and “animal.”  This together with third-party registrations of marks for apparel that contained the word “animal” made the Board conclude that the marks were dissimilar.

Conclusion:   In trademark opposition proceedings, one DuPont factor may be dispositive and outweigh all others.  This is particularly true when the factor is the similarity of dissimilarity of the parties’ marks.  Using this reasoning, the Board therefore concluded that there was no likelihood of confusion between Applicant’s MANIMAL mark for clothing with Opposer’s GARANIMAL mark for clothing.

 Key takeaway:  It is important to note that the Board is limited to the identification of goods set forth in the applicant and the Opposer’s registration in its comparison of certain DuPont Factors.  These factors are  the similarity of the goods, similarity of the channels of trade, and class of consumers.  It may not consider how the parties actually use their goods in the marketplace in assessing these factors.  The similarity of the marks and similarity of the goods factors are often given added weight over all others.

TTAB filing statistics for 2019 reveal an increase in contested proceedings combined with greater delays in rendering final decisions.

The data, made available by the U.S. Trademark Trial and Appeal Board, reflects an increase in activity by litigants in both trademark opposition and trademark cancellation proceedings.   Our 2018 summary is found here.  Relevant 2019 data compiled by the U.S. Trademark Trial and Appeal Board is below.  The numbers in parentheses reflect the rate of change over fiscal year 2018.

Oppositions  (+7.1%)

  • 2019:  6,955
  • 2018:  6,496

Cancellations  (+7. 7%)

  • 2019:  2,426
  • 2018:  2,253

Extensions of time to oppose  (+6.7%)

  • 2019:  20,502
  • 2018:  19,208

Appeals (+3.4%)

  • 2019:  3,333
  • 2018:  3,223

The increase in filing activity across all proceeding types has apparently placed a greater burden on TTAB staff resources.  This fact combined with a greater number of motions being contested has lead to greater delays in rendering decisions:

Number of decisions on motions issued (-7.4%)

  • 2019:  1002
  • 2018:  1082

Average pendency of decision (+17%)

  • 2019:  11.5 weeks
  • 2018:  9.4 weeks

No. cases with motions awaiting decision  (+46.7%)

  • 2019:  242
  • 2018:  165

With an increase in filings and contested motion practice, an increase in the number of matters awaiting final decision is not surprising.   Yet, the Board has been able to decide more cases in 2019 as compared to 2018 results:

Cases decided (11.3%)

  • 2019:  651
  • 2018:  585

Most notably, the average pendency of trial decisions (from the time a case is ready for decision until a written decision is rendered) has experienced significant delays:

Pendency of Trial Decisions (+61%)

  • 2019:  15.3 weeks
  • 2018:  9.5 weeks

The number of appeals and trial proceedings awaiting decision have also increased:

Awaiting decision at end of period  (+58.5%)

  • 2019:  206
  • 2018:  130

Conclusion.  While the TTAB’s reported data is quite useful, it does not reflect the underlying causes for the delays in both motion and trial decisions.  It could be that an increased volume in initial filings combined with a greater tendency of parties to file contested motions is one of the causes.  This is particularly true in situations where parties cannot resolve discovery differences that result in increased (and sometimes unnecessary) motion practice.   Given current trends, it may be beneficial for both the Board and parties to reexamine how to improve participation in Accelerated Case Resolution (ACR) as well as other rules designed to streamline proceedings for greater efficiencies.