By Erik Pelton®

This year – despite the cliché – has been unprecedented in many ways; it featured the COVID-19 pandemic, lockdowns, quarantines, masks, and social distancing, as well as protests in the street, a presidential election, economic volatility, and much more. And trademarks have been along for the ride. While there were not, in my opinion, any major court developments affecting trademark owners, there have been many other events and changes that have impacted the world of trademarks over the past 12 months. Here is my run-down of the most important trademark developments this year:

COVID-19. The year’s biggest story impacted trademarks in a few different ways. The USPTO’s operations continued virtually and online despite the IT challenges brought on by COVID-19 lockdowns. And despite a dip in filings during the spring, the pace of filings continued to grow in summer and fall. The number of applications filed, and registrations granted in FY2020 both grew over the prior year, to the highest in history. There are now more than 2,000,000 active U.S. trademark registrations!

Hundreds of trademark applications filed this year referenced masks, COVID, quarantine, social distancing, and other pandemic topics. It is very like that a large percentage of them will be denied as failing to function to indicate the source of goods or services, or as being informational or ornamental.

When Congress passed the CARES Act in late March, it featured provisions allowing the USPTO to extend some deadlines for applicants and registrants for a few months. The USPTO also created a program to expedite review of applications related to pharmaceuticals and devices that are used for COVID-19.

When application filings dipped in the spring, the USPTO announced budget cuts, including huge cuts to the IT budget (approximately $100 million). But filings rebounded, including a record number from China.

New USPTO Commissioner of Trademarks. In early March, just before the first pandemic lockdowns, David Gooder began serving as the Commissioner for Trademarks, following the retirement of former Commissioner Mary Boney Denison at the end of last year.

Black Lives Matter themed trademark filings. The summer protests following the killing of George Floyd also led to dozens of trademark filings related to the protest topics. Like the coronavirus filings, many or most will likely be refused as common phrases or for failing to function as indicators of source.

Established, but offensive, brands change names. Never before have some many brands backed away from names or name origins that were offensive. Uncle Ben’s, Eskimo Pie, Aunt Jemima, Washington Redskins, and Cleveland Indians are some of the brands began name changes or removed items from their logo in 2020. Changing decades of history and legal rights is not a simple task, as demonstrated by the football team’s temporary (or not?) switch to Washington Football Team amidst a flurry of speculative (in my opinion) trademark applications filed by others seeking to profit from a name change.

Conferences went virtual. All major trademark conferences moved to virtual platforms in 2020, including INTA and the ABA-IPL’s Annual Spring Meeting, and the much-anticipated debut of Alt Legal Connect. It remains to be seen whether the increased use of meeting tools for conferences and video discussions will change the way that conferences are presented moving forward.

Proposed legislation stalled. In the last year, several hearings on Capitol Hill have focused on trademark matters, and the Trademark Modernization Act was proposed in the House in early March. The proposed legislation was in part to help combat fraudulent specimens and bad faith filings and would have created expungement and reexamination procedures. But given the pandemic and election this year, the Bill looked like it wouldn’t go anywhere this year… until it appeared in the Coronavirus Response And Relief Supplemental Appropriations Act that was passed by Congress on December 21, 2020. Given the timing, stay tuned for more details and analysis in early 2021 (assuming it becomes law).

Supreme Court decides Booking.com is not generic. The decision is not likely to impact many brand owners, but the highest court in the land found that the addition of “.com” to a generic word could make a mark highly descriptive (and thus registrable) rather than generic (and thus unprotectable). A word of caution: attempting such a mark without a budget of millions of dollars is not recommended.

New USPTO trademark fees effective January 2, 2021. What is quite likely the largest trademark fee increase in U.S. history will go into effect on January 2, 2021, at the USPTO. I remain very concerned about the impact of these fee changes and increases on small businesses. Many fees are going up, and several new fees have been created including fees for letters of protest, for some requests for reconsideration, and for hearings at the Trademark Trial and Appeal Board. For more details, see my post at https://www.erikpelton.com/2021usptofeeincrease/.

Scams continue, spreading to email and text. Unfortunately, there were few developments to report this year regarding the persistent scammers who target trademark owners. Even a pandemic cannot slow them down. There was one criminal case brought, but there are still a plethora of scams circulating, and this year some twists on the swindles involved text messages, emails, and impersonating attorneys. Trademark owners are advised to remain vigilant, as the new USPTO login, counsel, and other requirements have not reduced the scammers efforts; trademark owners should carefully examine all solicitations regarding their trademarks and ignore those for meaningless publications and questionable renewal services. For more, see Is This a Trademark Scam?®.

Looking ahead to 2021. Given the unpredictability and zaniness of 2020, who knows what 2021 will have in store for the world of trademarks? The main story I will be following will be the impact of the fee increases, and whether it results in measurable drops in number of new applications from small businesses, the percentages of registrations renewed, and/or the numbers of appeals filed.

 

© 2020 Erik M. Pelton & Associates, PLLC. All Rights Reserved.

Erik Pelton® has been making trademarks bloom since 1999® as the founder of Erik M. Pelton & Associates®, a boutique trademark law firm in Falls Church, Virginia. The firm has registered more than 3,000 U.S. trademarks for clients and has represented hundreds of parties in trademark disputes.

Past issues of Top Trademark Trends:


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