It’s 2023’s World IP Day! World IP Day is celebrated on the 26th of April each year. This day was established 23 years ago today by the World Intellectual Property Organization (WIPO) to bring awareness of what IP (Intellectual Property) is, to recognize how IP impacts our lives, to celebrate innovators, creators and entrepreneurs globally, and to encourage activities that promote innovations and creativity in our lives. The term “Intellectual Property” generally encompasses patents, copyrights, trademarks, trade secrets and designs. Each year, a theme is chosen and this year’s global theme is “Women in IP: Accelerating Innovation and Creativity”. In choosing this topic, WIPO celebrates the ‘can do’ attitude of women inventors, creators, and entrepreneurs around the world and their ground-breaking work.
Women are shaping the world with their creativity, drive, imagination, reliability, and hard work. Women across the world have overcome hurdles and have succeeded and achieved their goals to bring their intellectual property to us all. The number of woman innovators, creators and entrepreneurs is growing, and there are more and more women-owned businesses each day. We proudly recognize and celebrate this progress and as IP attorneys, we work with women inventors, creators, and entrepreneurs in helping them with the guidance and knowledge to identify, build upon and protect their valuable IP.
This year USPTO is hosting an event with many organizations including WIPO, INTA, AIPLA and the ABA-IPL Section just to name a few to celebrate the work of women around the world and in raising awareness about why it is so important to encourage more women to participate in the IP system. A live stream to this event here: https://www.eventbrite.com/e/2023-world-ip-day-tickets-591525497687 .
Oliver & Grimsley, LLC is very honored to sponsor the Brigance Brigade Foundation’s upcoming Race For ALS, which kicks off ALS Awareness Month. This is the 11th annual 5.7k Championship Race and 1.57 Mile Family Run/Walk, which takes place on April 29, 2023, at the Maryland Zoo. We also want to extend our congrats to Brigance Brigade Foundation as they celebrate 15 years in their mission in helping those battling with ALS.
O.J. Brigance is a former NFL football player for the Baltimore Ravens, Super Bowl Champion and currently a Baltimore Ravens executive. Upon O.J.’s diagnosis of ALS in 2007, he and his wife, Chanda Brigance created the Brigance Brigade Foundation which is dedicated to helping those individuals and families who are battling ALS – by providing support and financial grants to assist in increasing access to caregiving services, equipment and home modifications for all accessibility for people living with ALS. The Foundation has been going strong for 15 years in helping those living with ALS.
Happy 15th Year Anniversary Brigance Brigade!! All of us at Oliver & Grimsley are honored to have the opportunity to work with such an amazing organization, and to annually sponsor the Brigance Brigade Foundation’s Race for ALS.
Click on the link for more information on the race!
Historically, trademark applicants have generally had six (6) months to respond to an Office Action issued by the United States Patent and Trademark Office (“USPTO”) for the response to be considered timely. This is a lengthy period, but at times, this lengthy time period could be beneficial to a client from a strategic standpoint.
However, the USPTO recently shortened this response period significantly beginning this month. For USPTO Office Actions issued as of December 3, 2022, applicants have three (3) months to respond to an USPTO Office Action. This shortening will be very helpful in moving applications along faster and in removing applications where applicants do not respond. For instance, at times a previously filed trademark application may be blocking registration for another applicant’s mark. Although one may sense that the blocking previously filed application will not be able to reach registration successfully (either due to an office action, going out of business, etc.), that previously filed application will sit on the record for six (6) months, and then for an additional two (2) month revival period. Meanwhile, the subsequent applicant’s trademark application sits on suspension throughout this time period, except in certain situations where there is a successful effort in getting the previously filed applicant to abandon its application or consent to the subsequent applicant’s registration. By cutting the response period in half, the previously filed application can be removed from blocking others who are seeking registration.
At times, however, applicants may need more time than 3 months to respond or the prior 6-month response may be beneficial for the applicant from a strategic standpoint. Thankfully, the USPTO will still allow an applicant to have the full six (6) months to respond to its Office Action; however, to obtain this additional time period, an applicant must request a three (3) month extension and pay a fee for the extension, which is currently $125.
For the time being, this shortened response period applies to trademark applications only – preregistration, and not post-registration office actions. The USPTO will not implement this shortened time-period for post-registration Office Actions until October 7, 2023.
From a practitioner’s standpoint, it will be important to advise clients of this shortened time frame upon receipt of an office action, and to advise clients that the remaining three (3) month period is still available when needed, but at an additional cost. Further, practitioners will want to ensure that their internal docketing and deadline systems are updated to reflect the shortened time-period, so that they are up to date on their clients’ trademark applications. If you have any questions, please feel to contact Kimberly Grimsley or Jennifer Mumm.
Bridge the GapSci, LLC is a nonprofit organization that came to fruition in 2015 when five Ph.D. students at Penn State had a vision of helping younger generations in West Africa to learn about science by delivering research supplies to schools. In fact, they pitched this idea at Pennsylvania State University’s Ag Springboard competition and won the first place prize of $7,500 to fund their venture. They then traveled to Ghana, a country in the subregion of West Africa, to begin forming relationships with schools that lacked working equipment or any equipment at all, as is prominent throughout the country. By getting students tools they needed at no cost to the schools, the five then-doctoral students hoped that the opportunity to work hands-on in science could lead to more opportunities for the children in Ghana.
Shortly after winning Penn State College’s Ag Springboard competition, the team at Oliver & Grimsley began working with Bridge the GapSci as a pro-bono client.
COVID-19 had a significant impact on Bridge the GapSci’s efforts in that travel was banned to various countries, including Ghana, but these delays did not discourage them. In June of this year, they were successful in their first shipment of school supplies and science kits to St. Gregory Senior High School in Budaburam, Ghana. They hope to continue their efforts with St. Gregory Senior High School and to expand to more and more schools in the region. Through their tremendous commitment and efforts, co-directors and present-day doctors Sarah Afua Owusu Cannon, Josephine Garban, Shawntawnee Collins, Jamaal James, and Kerry Belton have created an organization that will undoubtedly help make progress toward a better future.
Oliver & Grimsley is honored to work with them throughout this mission and we look forward watching them continue in this incredible mission. You can follow their journey on Facebook.
Oftentimes, Oliver & Grimsley will hear from our trademark clients about letters they received regarding their marks coming from what appear to be official sources. These letters will ask that clients make a payment, upwards of hundreds of dollars or more, and indicating their marks are about to expire, or offering to provide some other service such as adding the mark to a directory. These letters are all under the guise of being from “The United States Trademark Center,” or even the “Patent and Trademark Office,” which are third parties that are unaffiliated with the United States Patent and Trademark Office. When we hear from a client of ours about these letters, we know that the letters are from companies that have no connection with the official U.S. Patent and Trademark Office; rather, these are companies that are attempting to mislead new trademark applicants and registrants into thinking the notice is official, and trying to scam trademark holders into paying hundreds of dollars or more to them for unnecessary or overinflated services.
If you have filed for a federal trademark registration on your own, it can be very difficult to know what is legitimate. Any correspondence regarding deadlines is sent from the United States Patent and Trademark Office (USPTO), and is typically sent via email with an @uspto.gov email address. If you have an attorney of record listed on your trademark application or registration, and your attorney is listed as the attorney of record and the correspondent on your application, official communications from the USPTO will go directly to your attorney of record on your behalf rather than being sent directly to you. Thus, in this situation, it should be a red flag if you receive a notice, as your attorney should be receiving all communications from the USPTO for you. In addition, these companies will sometimes try to use similar names to the USPTO to purposefully confuse any recipient. Below are some examples of scam companies that the USPTO lists on its website:
In an attempt to curb the growing number of these scams, one step that the USPTO is taking is seeking federal trademark registration of its own name. Applications were filed by the Department of Commerce on the USPTO’s behalf to register “USPTO” and “UNITED STATES PATENT AND TRADEMARK OFFICE,” as well as applications for two design marks in order to cover the USPTO’s logos. By seeking federal trademark protection, the USPTO hopes to broaden its legal options for dealing with such infringers, as it warns that these scams are becoming more sophisticated as they multiply.
When you receive unfamiliar notices like the examples listed above that request money or any solicitation for services regarding your trademark, it is important to look into who exactly is sending it. You can check the link provided by the USPTO to see if it is one of these misleading scams they are already aware of, or a call to a trademark attorney can also be very helpful, as they will almost immediately recognize a scam. Also, know that if you have an attorney listed as the attorney of record and correspondent on your trademark applications or registrations, you should not be receiving such correspondence, as your attorney would be receiving all official communications on your behalf. In addition, if you have an attorney overseeing your trademarks, your attorney can assist by keeping track of your deadlines for you.
Bridge the GapSci, LLC is a nonprofit organization that came to fruition in 2015 when five Ph.D. students at Penn State had a vision of helping younger generations in West Africa to learn about science by delivering research supplies to schools. In fact, they pitched this idea at Pennsylvania State University’s Ag Springboard competition and won the first place prize of $7,500 to fund their venture. They then traveled to Ghana, a country in the subregion of West Africa, to begin forming relationships with schools that lacked working equipment or any equipment at all, as is prominent throughout the country. By getting students tools they needed at no cost to the schools, the five then-doctoral students hoped that the opportunity to work hands-on in science could lead to more opportunities for the children in Ghana.
COVID-19 had a significant impact on Bridge the GapSci’s efforts in that travel was banned to various countries, including Ghana, but these delays did not discourage them. In June of this year, they were successful in their first shipment of school supplies and science kits to St. Gregory Senior High School in Budaburam, Ghana. They hope to continue their efforts with St. Gregory Senior High School and to expand to more and more schools in the region. Through their tremendous commitment and efforts, co-directors and present-day doctors Sarah Afua Owusu Cannon, Josephine Garban, Shawntawnee Collins, Jamaal James, and Kerry Belton have created an organization that will undoubtedly help make progress toward a better future.
