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Year in Review: 2014 USPTO Trademark Highlights
Practical Law Legal Update 2-594-3126 (Approx. 5 pages)
Year in Review: 2014 USPTO Trademark Highlights
by Practical Law Intellectual Property & Technology
| Published on 06 Jan 2015 • USA (National/Federal) |
A collection of the year's most noteworthy United States Patent and Trademark Office (USPTO) trademark developments, including filing fee reductions, new and revised practice manuals and the debut of maintenance deadline reminder e-mails for trademark owners. This feature includes useful links for practitioners.
This Update collects 2014's most important USPTO trademark developments and includes useful links for trademark practitioners. It demonstrates Practical Law's continuing commitment to provide transactional practitioners with useful and timely practice updates.
Lower Fees and New Reminder E-mails
The most significant USPTO trademark updates last year included a drop in trademark filing fees and the announcement of a new deadline reminder system.
In December, the USPTO announced that it was lowering its fees for:
- Certain electronically filed trademark applications.
- Trademark registration renewals.
- Requests to transform an extension of trademark protection to the US into a US application.
The USPTO expects that in addition to lowering the costs of federal trademark registration, the new fees will encourage more electronic filings and improve USPTO efficiency. For more details about these fee reductions, which take effect on January 17, 2015, see Legal Update, USPTO Reduces Fees for Trademark Applications and Renewals.
In October, the USPTO announced that it will begin sending courtesy e-mail reminders to trademark registration owners for upcoming post-registration maintenance filing deadlines. The USPTO will remind registration owners of Section 8 and Section 71 declaration and Section 9 renewal deadlines, but only if they have:
- Live registrations on the date of sending.
- Provided a valid e-mail address to the USPTO.
- Authorized e-mail communication.
Trademark counsel should:
- Use the USPTO's Trademark Electronic Application System (TEAS) Change of Correspondence Address and Change of Owner's Address Forms to ensure that all contact information for registration owners is accurate.
- Advise clients to continue to be aware of unsolicited communications from trademark monitoring and document-filing services that are not affiliated or associated with the USPTO.
For more details about these reminders, which the USPTO plans to begin sending in late January 2015, see Legal Update, USPTO Will Send Trademark Registration Maintenance Reminder E-mails.
New Examination Guides
In 2014, the USPTO debuted several examination guides to highlight policies and procedures in developing subject areas. The most noteworthy of these guides include:
- The Geographic Certification Marks Examination Guide. This guide:
- describes the application requirements for geographic certification marks;
- explains the analysis for determining whether a mark functions to certify regional origin; and
- discusses the relevant considerations for Section 2(d) likelihood of confusion determinations involving geographic certification marks.
- The Service Mark Specimens Examination Guide. This guide:
- reviews the requirements for service mark specimens;
- discusses typical examination issues and explains relevant potential refusals;
- addresses the common types of specimens submitted with modern technology-related services; and
- provides examples of service mark specimens.
Revised Practice Manuals
In 2014, the USPTO also issued revised versions of its most commonly used practice manuals, including:
- The Trademark Manual of Examining Procedure (TMEP). The updated TMEP incorporates new precedential case law and new or revised procedures, including:
- updated and clarified tests applied in determining whether a mark is disparaging; and
- clarified procedures for determining whether an activity is a separately registrable service, with new guidance regarding clinical trials.
For more information about the revised TMEP, see Legal Update, USPTO Issues Revised Version of Trademark Manual of Examining Procedure. - The Trademark Trial and Appeal Board Manual of Procedure (TBMP). The revised TBMP incorporates updates procedure applicable in opposition, cancellation and other TTAB proceedings and includes:
- amendments to the Lanham Act, the Trademark Rules of Practice, the Federal Rules of Civil Procedure and the Federal Rules of Evidence; and
- references to recent TTAB, US Court of Appeals for the Federal Circuit and other federal court cases.
- The Trademarks Acceptable Identification of Goods and Services Manual. Though the prior version of the ID Manual is still available, the USPTO launched this new version, named the Trademarks Next Generation Acceptable Identification of Goods and Services Manual (IDM-NG), in beta format to encourage user feedback. The IDM-NG features:
- advanced searching options;
- results returned in a sortable table; and
- relevance ranking of entries that correlate to the search criteria.
Other Noteworthy Developments
As it has done in prior years, in January 2014 the USPTO published a summary of noteworthy changes to the international trademark classification system introduced by the publication of the updated Nice Classification, Tenth Edition, and the effect of those changes on the USPTO's ID Manual and examination practice.
Important 2014 revision include changes to the following categories:
- Electronic data storage. Services involving electronic data storage are now classified as Class 42.
- Updating and maintenance of data in computer databases. Services involving these categories are now classified in Class 35.
- Search engine optimization and website traffic optimization. These services are now classified in Class 35 because the primary function or purpose of these services is to promote, advertise or market the websites of others by improving these websites' visibility in search engine results.
- Providing online non-downloadable videos. While services such as these are now classified in Class 41 regardless of the video's subject matter, USPTO policy still requires that the video's subject matter be specified.
The USPTO has already published a 2015 update about the Nice classification changes that went into effect this month, which include the classification of 3D printers and liquid nicotine solutions for electronic cigarettes. For more information about the 2015 changes, see Legal Update, Nice Classification System Updated, Impacting USPTO Trademark Identification and Classification.