Top Trademark Trends of 2021

By Erik Pelton®

2021 was a busy year in the world of trademarks. The uncertainties of COVID in a second year couldn’t stop huge application filing numbers and many developments in the world of trademarks. Here are what I found to be the most important trademark issues of the year:

Trademark Modernization Act of 2020 (“TMA”) goes into effect. The TMA was passed as part of the COVID relief bill in December 2020. The act took effect on December 18, 2021, and its main aim is to help declutter the federal register of trademarks that are no longer or were never in use. The key changes are:

  • Codifying the Letter of Protest procedure for challenging applications by third parties.
  • A shortened Office Action response time of 3 months (previously 6 months), with an extension available for a fee, effective December 1, 2022.
  • Two new ex parte proceedings to allow for potential cancellation of trademarks not properly used in commerce. An expungement proceeding allows for cancellation, in whole or in part, of a trademark registration between three and ten years old if the mark has never been used in commerce with some or all of the registered goods and/or services. A reexamination proceeding allows for a cancellation, in whole or in part, of a trademark registration within five years of issuance if the mark was not being used in commerce with some or all of the goods/services on or before asserting use with the USPTO (generally the filing date or statement of use submission).

Scams continue. Trademark scams continued to proliferate, despite some increased efforts to crack down. One fraudster was sentenced for crimes related to trademark scams, and the World Trademark Review helped expose another set of scams operating from abroad. In December, the USPTO sanctioned a Chinese firm that has been involved in more than 15,000 filings for fraudulent activities and ordered all of their filings to be terminated. Despite these steps, trademark applicants and registrants continue to be bombarded with scam mailings and communications. For more, read the article Olivia Muller and I recently wrote for the American Bar Association: The Growing Threat of Trademark Scams.

Mega META announcement. The biggest individual brand story of the year was Facebook’s announcement of its new META brand. The result was several potential controversies regarding rights in the name, as well as a slew of filings by others for marks that include the term “META” or “METAVERSE.”

USPTO filing numbers and backlog. The record numbers of filings from 2020 and 2021 led to unprecedented backlogs at the USPTO. Initial filings currently take 7+ months to be reviewed, approximately double the normal time frame in recent years. As of December 2021, filings are still high but have slowed in recent months. 2021 is still likely to be another record year for US trademark filings, despite the increased USPTO filing fees implemented in January.

NFT trademarks. Trademark filings related to non-fungible tokens (NFTs) exploded in 2021. Major brands across industries – including Marvel, KISS, UFC, Nike, and many more – filed for trademarks to cover new products and services in the metaverse. 2022 is likely to see even more developments in this field. There have not yet been enough disputes or cases to fully understand the relationship between trademarks and the world of NFTs, but if consumers and brands are viewing them as a digital products, it certainly makes sense to protect brands that operate in the world of non-fungible tokens.

What will 2022 have in store? We will begin to gauge the impact of the TMA on the register, and whether it is significant, in the next year. The USPTO will also be enhancing its login procedures in 2022 which could help crack down on a few scammers – and presumably will also give the USPTO more details to track fraudsters using its online services. The USPTO has also announced its intention to begin issuing only digital registration certificates, with paper ones available upon request for a fee. For the latest developments o­n trademark scammers, check, Is This a Trademark Scam?®. I will also be watching closely to see how the USPTO chooses to spend the abundance of filing fees it has received due to the recent filing volume and fee increases of January 2021; hopefully a significant portion will be devoted to enhanced IT systems both internally and for external users. The USPTO’s key trademarks systems are still not mobile formatted, there is no useful trademark mobile phone app from the USPTO, and the filing forms are archaic by modern standards – perhaps 2022 will bring improvements to those systems.

© 2021 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 3,500 U.S. trademarks for clients and has represented hundreds of parties in trademark disputes.

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