Non profit trademark owners can be protective about their brand names, too.

Competing Alzheimer’s foundations recently battled it out in a trademark opposition before the Board.  In the end, the Board was more charitable to the Opposer, ruling in its favor on its likelihood of confusion claim.

Background.  In Alzheimer’s Disease and Related Disorders Association, Inc. v. Alzheimer’s New Jersey, the Applicant sought to register the design composite mark ALZHEIMER’S NEW JERSEY WALK TO FIGHT ALZHEIMER’S.  The services were for a wide variety of charitable foundation and fundraising in International Class 36.  Opposer took issue with Applicant’s mark, and filed a notice of opposition.   As the Board indicated,

For thirty years between 1985 and 2015, Opposer and Applicant were affiliated, and since 1998 the parties’ relationship was governed by a Statement of Relationship which granted to Applicant a non-exclusive license to use Opposer’s trademarks

The Opposer relied on its prior rights and registration for the word-mark WALK TO END ALZHEIMER’S  (with “WALK” and “ALZHEIMER’S disclaimed) for charitable foundation and related services in International Class 36.   In addition, the Opposer also relied on an application for unregistered, common law trademark rights in and to the composite design mark  WALK TO END ALZHEIMER’S (with the words ALZHEIMER’S ASSOCIATION) in smaller font.  The Opposer had disclaimed “WALK,” “ALZHEIMER’S,” and “ASSOCIATION.”

In its answer, the Applicant denied the allegations, arguing that the claims were barred under the prior registration defense, also known as the Morehouse defense.  Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715, 717 (CCPA 1969).  The Applicant based its defense on ownership of the following registered marks:

  • Reg. No. 5053635 of the mark WALK TO FIGHT ALZHEIMER’S (with “WALK” and “ALZHEIMER’S” disclaimed) for charitable fundraising services in International Class 36; and
  • Reg No. 5373234 of the composite design mark ALZHEIMER’S NEW JERSEY, the depiction of the state of New Jersey, and WALK TO FIGHT ALZHEIMER’S with a sneakers design (with all of the foregoing disclaimed of the words “to fight” and the sneakers design).  The mark, like the others, was for charitable fundraising services in International Class 36.

The issues presented before the Board were (a) whether Opposer had established that Applicant’s Mark is likely to cause confusion with Opposer’s Marks; (b) whether Opposer had established that Applicant’s Mark was likely to dilute Opposer’s Marks; and (c) whether the Applicant’s Morehouse defense warranted dismissal of the Opposition.

Analysis.   Below is a summary of the main issues that the Board addressed.

  • Standing.   In any proceeding before the Board, an Opposer must establish its entitlement to a statutory cause of action.  This concept is formerly known as “standing.”  To do so, the Opposer must show that its opposition is within the zone of interests protected by 15 U.S.C. Section 1063, and that is has a reasonable belief that it will be damaged by registration.   Standing is a low threshold before the Board.  Here, since Opposer is relying on its own valid trademark registrations as a basis for the opposition, it has met its burden that is has a legitimate interest to oppose the Applicant’s trademark application.
  • Morehouse Defense.   The Morehouse defense, also known as the prior registration defense, is an equitable defense that can be invoked by an Applicant.  It applies where an Applicant owns a prior registration for the same or substantially identical mark for the same mark and substantially similar goods or services for which is it now applying.  In theory, this defense can be successful since there already exists a registration that would damage Opposer.  In other words, allowing the later-filed application of the Applicant to issue would not add to Opposer’s injury.   Here, the Board did not accept Applicant’s defense as for it to be applicable it requires that the Plaintiff not be able to cancel the prior registration.  Since here, the prior registration is less than five years old, the Opposer still has the ability to procure trademark cancellation of the mark under Section 2(d) of the Trademark Act.

Likelihood of Confusion.  In any Section 2(d) case, the Opposer must establish priority rights and a likelihood of confusion.  Priority rights can be established by introducing into evidence of a prior trademark registration, prior use as a trade name or common law rights that predate the Applicant’s rights.  Finally, priority can also be established through evidence of use analogous to trademark use.  In this case, Applicant did not challenge Opposer’s priority.   With regard to likelihood of confusion, any one factor may be determinative. Yet, two key considerations are similarity of the marks and similarity of the goods or services.

  • Similarity of the marks.  Here, the Board confined its analysis between Applicant’s mark and Opposer’s pleaded logo mark.  This is due to the fact that Opposer’s pleaded logo mark is the most similar to Applicant’s mark.  Opposer argued that the parties’ marks have identical commercial impressions.  Both involve Alzheimer’s charitable fundraising walks, share common core words (Alzheimer’s and walk),  and contain dominant purple backgrounds.  Applicant argued that the words should be accorded greater weight, and that each mark contains additional wording the key wording is merely descriptive.  Nonetheless, the Board found in comparing the marks, the two had quite similar visual and word elements.  Therefore, it concluded that the marks were similar in appearance, commercial impressions, and meaning.
  • Similarity of the services.  With regard to the similarity of the services of the parties, the Board found that charitable fundraising services and fundraising in the nature of walks for Alzheimer’s are legally identical.  Accordingly, this factor weighed in favor of a finding of likelihood of confusion.  As to the similarity of the channels of trade, since the Opposer relied on its common law rights, the analysis was confined to those trade channels that Opposer had established on the record.  Where, as here, the Applicant did not limit its trade channels in it application, it is presumed that its services move in all channels of trade and are available to all classes of purchasers.  Therefore, based on the evidence presented, and due to the fact that the parties’ services offered under their respective marks are offered on at least one common social media platform, it was found that the trade channels overlapped.

The Board reviewed the strength of the Opposer’s ALZHEIMER’s Mark, as this could have a bearing on the likelihood of confusion analysis.  The Board noted that Opposer’s log mark is comprised of several elements, including colors.  While Opposer’s mark had some disclaimed matter, Applicant did not demonstrate that the overall conceptual strength of Opposer’s log mark as a whole was weak.  Furthermore, while the Board recognized the existence of numerous other “Alzheimer’s walk” marks, the purple color component of Registrant’s mark constituted a large visual component that was not impacted by other third-party marks introduced by Applicant that did not include the dominant color purple for Alzheimer’s charity services.

Holding.  Based on all of the relevant likelihood of confusion factors, the Board held in favor of Opposer and entered judgment in its favor in accordance with Section 2(d) of the Trademark Act.

U.S. trademark expungement and reexamination proceedings are now available.  This constitutes a major development in U.S. trademark practice.  A result of the U.S. Trademark Modernization Act., the new rules became effective December 18, 2021.

As ex parte proceedings, trademark reexamination and expungement have the potential to be more efficient and less expensive than trademark cancellation and opposition proceedings.  The takeaway?  To avoid challenges to registrations, trademark owners must remain vigilant.

Here’s what you need to know:

1. Trademark Expungement.  A party may request cancellation of some or all of the goods or services in a registration if it is shown that the registrant never used the trademark in connection with those goods or services.  A U.S. trademark expungement proceeding must be instituted between three and ten years after the registration date.  Until December 27, 2023, however, a proceeding may be requested for any registration at least three years old, regardless of the ten-year limit.

2. Trademark Reexamination.  This is available to seek cancellation of some or all of the goods or services in a use-based registration.  The grounds for doing so are that trademark was not use use in commerce with those goods or services on or before one the following particular dates:

  • if the underlying application was filed based on use, the relevant date will be the filing date of the application;
  • if the underlying application was filed based an intent to use, the relevant date is the later of the date that an amendment to allege use was filed or the date the deadline to file a statement of use expired.

This new procedure must be requested within the first five years after registration.

Here are facts common to both trademark expungement and reexamination:

  • Who can Petition.  Any person may file a petition with the USPTO to request institution of an expungement or reexamination proceeding. You’re not required to identify the name of the real party in interest on whose behalf the petition is filed, but the Director has authority to require that information in particular cases. For example, while an attorney can file the request in their name instead of their client’s name, the Director may require the attorney to provide the client’s identity. Foreign-domiciled petitioners are required to obtain U.S. counsel in order to file a petition.
  • How to file.   Submit a Petition for Expungement or Reexamination requesting that the USPTO Director institute a proceeding to cancel some or all of the goods or services identified in a trademark registration for which the trademark either has never been used in commerce for expungement or was not used in commerce before a particular relevant date for reexamination.

The request must include a verified statement that a reasonable investigation was conducted.  This requires a concise factual statement as well as evidence supporting a prima facie case of non-use.  In the event the Request does not satisfy the filing requirements, the USPTO will issue a letter that gives the petitioner 30 days to complete the petition.  The USPTO will make the request and evidence of record through the Trademark Status and Document Retrieval (TSDR) system.  All future correspondence involving the petition will be viewable in TSDR.

Practice tip:  Just because a petition is filed in either type of proceeding does not mean that the Trademark Office will act on it.  In fact, if a Petitioner fails to establish a prima facie case for a trademark expungement or trademark reexamination, the USPTO will decline to institute a proceeding.  If the initial burden is satisfied, the USPTO will commence the proceeding.  It is therefore important that all petitions are throughly investigated and documented.

This is a second-part of an article regarding U.S. Trademark Opposition strategies.

U.S. trademark opposition proceedings need not be expensive or protracted.  This is one of the surprising conclusions for global trademark owners who seek to protect their rights in the United States.

Commencement of action.  Under U.S. law, trademark applications that have been approved by the Examining Attorney are published in the Official Gazette of the USPTO.  During the publication period, any third-party has 30 days to oppose the trademark application on a wide variety of grounds.  Alternatively, the potential Opposer can request extensions of time to file the opposition of up to 90 days.

Phases of Proceeding.  United States trademark oppositions are primarily heard before the U.S. Trademark Trial and Appeal Board (TTAB), the adjudicative body of the USPTO.   The proceeding has three distinct phases:

  1.  Pleadings.  The complaint is called a Notice of Opposition, in which the Opposer sets forth a short and plain statement of its legal standing and grounds for opposing the subject application.The Notice of Opposition should set forth in short detail, the grounds for the opposition.  Typical grounds include:  (a) likelihood of confusion with a preexisting trademark registration or common law rights of the Opposer; (b)  the Applicant’s mark, when used in association with the goods, is merely descriptive and thus not capable of registration on the Principal Register; and (c) the Applicant had a lack of bona-fide intent to use its mark on some or all of the goods at the time of the filing of its application.   Once the Notice of Opposition is filed, the Applicant will file its Answer, together with any affirmative defenses that it wishes to plead.  In some cases, the Applicant may, if warranted, file a petition to cancel the Opposer’s U.S. trademark registrations that form the basis of the notice of opposition.
  2.  Discovery.  This is the phase of the case where the parties are permitted to seek relevant information or documents from the other party that support its claims and defenses.  These may include interrogatories, requests for production of documents, and requests for admissions.  Either party is also entitled to take discovery depositions of relevant witnesses, including third-parties.  A party can object to any discovery request that it deems to be harassing or outside the scope of relevant issues of the proceeding.  This being said, parties are obligated to respond in good-faith to any and all proper discovery requests, and should not interpose objections on any meritless grounds or for the purpose to delay proceedings.
  3.  Trial.  In the TTAB, trial testimony is submitted via written declarations and by Notice of Reliance, together with any documentary exhibits.  The Federal Rules of Evidence govern the proper way to introduce evidence and what is required to do so.  In addition, TTAB trial testimony procedure that is specific to opposition and cancellation proceedings may be found in the Trademark Board Manual of Procedure (TBMP).

Helpful hint:  Consider an early settlement.  The discovery conference provides a good opportunity for the parties’ counsel to freely discuss the merits of their clients’ respective positions and likelihood of success.  During this time, they will also discuss any possible settlement options.  In over 94% of cases, the contested proceeding settles before a full trial on the merits.  Accordingly, it is vitally important for trademark practitioners to be familiar with U.S. Trademark Trial and Appeal Board practice and procedure.  By doing so, trademark counsel can assist its clients in creating opportunities for an early settlement that furthers their legal and business goals.

Third-parties routinely seek extensions of time to file a Notice of Opposition against pending trademark applications.  The time to oppose a trademark application is 30 days from the date of publication.   An additional 30-day extension will be granted upon request, while 90 day extensions must allege good cause.

Below is a list of representative trademark opposition extension requests and Notice of Opposition proceedings filed for the week of August 9, 2021:

APPLICANT TRADEMARK APPL. NO. POTENTIAL OPPOSER
DS Double Sisters LP SERIOUSLY SIMPLE 90035076 Unilever Global IP
Herkules Equipment Corp. ENKON 90038961 Engcon Holding AB
North American Marketing, Inc. POLYPHENOL-C 90059130 E. & J. Gallo Winery
RL Brands, LLC CHEF IQ 88831911 Bloomberg L.P.
El Cinco, Inc. DILLINGER 90091726 AOVM Companies
Radix IoT, LLC RADIX IOT 90165341 Radix DLT Limited
Washington Wine Group EVERGREEN 90187983 Luxco, Inc.
G.A. Fleet Associates SHARKFIN 90259888 Reliance Worldwide
Platini Love Epic DR. EPIC 90370257 Epic Games, Inc.
APPLICANT TRADEMARK APPL. NO. POTENTIAL OPPOSER
Ronieke Smith HEAVEN’S ARMOR 90307404 Under Armour, Inc.
Jiahu Xu FUZMOPAR 90376470 FCA US LLC
N Squared Technologies QUIN 90380632 Quin B.V.
Sarepta Technologies SANGENTRI 90382648 Novartis AG
UAMG Content, LLC BILLIONAIRE U. 90394028 Majestas Sarl
Spectrum Brands, Inc. VIERA 90498049 VIEGA Holding GmbH
Momentive, Inc. G 90529599 MoneyGram Payment Systems
Clicked-In LLC CLINKED-IN 90246737 LinkedIn Corporation
Elevated Business Brands SMASHVILLE HOT CHICKEN 90243939 Smashburger IP Holder

Editor’s Note:  To discuss how to respond to a Notice of Opposition or extension request to file an opposition proceeding with the TTAB, please contact us.

U.S. trademark opposition proceedings can be done within a reasonable time and budget

TTAB proceedings have a reputation for being extremely costly and time consuming.  Yet, this is not necessarily true.  Depending on your goals, it is possible to favorably resolve a TTAB contested proceeding in a relatively short amount of time and within a reasonable budget.  Here’s just one important fact to consider:

While the cost of a fully-litigated trial on the merits before the U.S. Trademark Trial and Appeal Board can be $75,000 or more, approximately 95% of trademark cancellation and opposition cases settle before trial.

Below are some additional facts to keep in mind if you have a contested proceeding before the Board:

1.  Jurisdiction.   The U.S. Trademark Trial and Appeal Board (TTAB) is limited to deciding issues of registration only.  Accordingly, it only has the authority to either cancel an existing trademark registration or refuse a trademark application from maturing to registration.  The TTAB cannot order a party to cease using its trademark in commerce.  Nor does it have the authority to award attorney’s fees or damages.

2.  Duration of proceeding.  While it is not uncommon for TTAB proceedings to last one to two years, this is generally true in the following limited circumstances:

  • one or more parties file a potentially dispositive motion that suspends proceedings
  • the parties agree to suspend proceedings to engage in settlement discussions
  • the parties consent to extend all applicable discovery and trial dates for various scheduling reasons
  • the TTAB administrative backlog to rule on motions further delays the proceedings

3.  Costs.  The costs of opposition proceedings vary depending on how far into the process the case proceeds and whether it can be resolved prior to trial.  Since approximately 95% of all Board proceedings settle before trial, costs can be greatly reduced the earlier the parties are able to negotiate an amicable settlement.   Quite often, it is possible for parties to settle the matter between the initial discovery conference and the opening of the discovery period.  In such cases, costs can be as little as US US$5,000-US$7,500.   If the full discovery period is undertaken without settlement, discovery can range between US$25,000 on the low side to US$60,000 on average.  The trial phase, including witness declarations, exhibits and briefing has an average range of approximately US$20,000-US$35,000.

4.  Discovery period.  Discovery is often the most expensive phase of an Opposition proceeding.  Discovery is where the parties gather evidence from the other party that supports or refutes its claims.  Typical discovery tools include:

  • Interrogatories
  • Requests for production of documents
  • Requests for admissions
  • Depositions

The discovery period usually lasts seven to eight months, and includes the opportunity to designate expert witnesses, which is rare in Board proceedings.  The discovery period can be extended by consent of the parties, or suspended in instances where there is a motion pending before the Board.  If discovery is suspended for the Board to rule on a motion, the current backlog for the Board to issue a ruling is approximately 4-5 months.  Discovery can also be extended by consent of the parties to engage in settlement discussions.  At the end of the discovery period, or any time prior, either party may file a motion for summary judgment on any or all issues.  This is an expedited process wherein the moving party asks the Board to make a final and early ruling based on the fact there exist no genuine issues of material fact and that the Board should rule on the merits as a matter of law.

5.  Settlement.  Oppositions and trademark cancellation proceedings can be withdrawn with the consent of the other party.  This usually occurs in cases where a settlement is achieved.   Examples of settlement terns include:

  • the applicant agrees to withdraw its application;
  • restricts the goods in its identification; and/or
  • consents to use-based restrictions

If an Opposer unilaterally withdraws an opposition without the consent of the Applicant, then judgment will enter against the Opposer in favor of the Applicant and the application will proceed to registration.   This could hurt the Opposer’s attempts to enforce the same mark against third-parties in the future.  The Board has no authority to award attorney’s fees or damages so that would not be an issue of concern.

Editor’s Note:  if you are an international company or foreign trademark associate that has questions about TTAB proceedings, please contact us.

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.

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.