By Kyle Jahner
Trademark attorneys will begin the new year test-driving new procedural tools for clearing suspect trademark registrations out of their clients’ path in 2022.
Another top trademark issue in the year ahead will be online platforms facing pressures to purge counterfeits.
The trademark expungement and reexamination procedures designed to implement last year’s Trademark Modernization Act became operational Dec. 18.
The procedures allow anyone to challenge registrations for trademarks in a streamlined proceeding by saying the marks claimed by the applicant were never used, or weren’t used when first claimed.
Congress tasked the U.S. Patent and Trademark Office with crafting the details to clear “driftwood” from the registry—illegitimate registrations that can block applicants seeking similar marks. Attorneys say it should provide a quick path that simplifies the removal of fraudulent marks from the registry.
“It’s going to streamline prosecution in a lot of cases,” intellectual property attorney Joshua Jarvis of Foley Hoag LLP said. “It’s just nice to have another arrow in the quiver.”
Other attorneys worry the procedures could be abused, or extend an already substantial backlog for trademark examiners.
The PTO has already begun hiring examiners to deal with a long wait times for trademark examinations. But it will take months to get new hires up to speed, said trademark attorney Jennifer Fraser of Dykema Gossett PLLC.
“It’s not just something you can flip on like a light switch and address the surge,” said Fraser, a former examiner.
Fraser also said the new processes could be weaponized against legitimate trademark owners.
Attorneys said many businesses—especially older, non-customer-facing ones like business-to-business and manufacturing—may find it difficult to find proper documentation if an adversary challenges them.
Trademark attorney Julia Anne Matheson of Potomac Law Group said acceptable specimens showing use dating to applications filed in the distant past aren’t something companies regularly keep.
“No company does that,” Matheson said. “I think it could be a bloodbath.”
Fraser said a petition to the Trademark Trial and Appeal Board that doesn’t draw a response can ax clearly fraudulent marks faster.
But Jarvis said respondents can substantially draw out TTAB proceedings, while TTAB grounds like abandonment can be more complicated to prove than non-use. He said abuse should be curbed by the $400 filing fee and a rule barring filing against a mark that’s already survived a challenge.
Marsha Gentner of Dykema added that the PTO itself can initiate the new proceedings to ax registrations, and that the agency has indicated it’s “going to be pretty aggressive.”
Another top issue for 2022 will be trademark infringement and counterfeiting on online marketplaces, and potential liability for platforms.
A legal safe harbor doesn’t shield retail and social media platforms from liability for their users’ trademark infringement the way the law protects the platforms from copyright liability. Companies like
The platforms want to maximize sales, but also have incentives to maintain the perception that products on their site are legitimate, attorneys say.
“There is a lot of pressure mounting on whether these types of platforms are doing enough to make sure counterfeit products are not making it to consumers,” trademark attorney Danny Awdeh of Finnegan Henderson Farabow Garrett & Dunner LLP said, citing “legislative pressure, court cases, and advances in technologies that may be due for breakthroughs in the next year.”
Awdeh worked on a case involving trademark claims against Amazon by Israeli gun accessory company Maglula Ltd. that settled in early December. The judge rejected Amazon’s argument at summary judgment that it only functioned as a third-party platform for Chinese counterfeiters. The order said Maglula notified Amazon several times of the knockoffs to no avail, and said it’s “simply not a case where Amazon can deflect liability.”
The Shop Safe Act—which would extend liability to platforms for some third-party counterfeits—will be a bill to watch, trademark attorney Monica Riva Talley of Sterne, Kessler, Goldstein & Fox PLLC said. She worries limiting liability to “goods that implicate health and safety” could hinder the proposal’s effectiveness, arguing that liability shouldn’t hinge on the type of product sold.
The conundrum of cannabis trademarks will also remain an area of interest to trademark lawyers in 2022.
Several states have legalized recreational marijuana use, but it remains a federal crime to possess it, so the trademark office can’t register trademarks to cover cannabis products.
The lack of trademark registration limits options for businesses selling cannabis or its derivatives to effectively protect their brand, and consumers can’t be assured of who made a product.
Fraser said that “with each passing year there’s more interest in legalizing marijuana federally,” pointing to increasingly bipartisan congressional support for federal legalization. Even just removing it from the Schedule I list of drugs could open the doors to trademarks, she said.
“When it does become legal, it’s going to be like the 1990s computer trademark filing gold rush,” Fraser said.
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