by Kim Grimsley | Dec 27, 2022 | Intellectual Property, Trademarks
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.
by Kim Grimsley | Sep 20, 2021 | Client Spotlight, Intellectual Property, Trademarks
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.
by Kim Grimsley | Aug 30, 2021 | Intellectual Property, Tips, Trademarks
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.
For more information about trademarks, please contact Kim Grimsley at kim@olivergrimsley.com or Jennifer Mumm at Jen@olivergrimsley.com.
by Kim Grimsley | Jul 27, 2021 | Case law, Intellectual Property, Trademarks
Earlier this month, the Lanham Act saw its 75th Anniversary. On July 5th, 1947, the Lanham Act, also known as the Trademark Act, went into effect after being signed by President Harry S. Truman the year prior. The Lanham Act created the modern day national trademark registration system and enforced federal protections for trademark holders. Expanded upon throughout the decades, it has been a critical piece of trademark legislation for the last seventy-five years.
Trademarks are around us every day – they present themselves on the toothpaste we use in the morning to the garbage bags we take out at night. The idea of trademarks dates back to before the common era, wherein manufacturers of goods would leave identifying symbols on their products. Artifacts from Rome have been found with engraved marks of initials and names of what are presumed to be the makers. Historians note that blacksmiths who made swords for the Roman Empire were the first to use trademarks.
Prior to the Lanham Act, federally enforced trademark legislation was somewhat ineffective and state statutes held most of the burden. In addition, trademarks did not expire, regardless of their use. Once the Lanham Act was enacted, it provided the procedures for federally registering trademarks and maintaining those registrations. The Lanham Act also gives trademark holders federal jurisdiction in enforcing their rights to the mark against infringers, including unregistered trademark infringement. In addition, the Lanham Act provides a cause of action for trademark dilution, cybersquatting, unfair competition and false advertising. An example of the use of the Lanham Act in enforcing rights against false advertising claims is seen in General Mills, Inc. v. Chobani, LLC, 158 F. Supp. 3d 106 (N.D.N.Y. 2016); Chobani, LLC v. Dannon Company, Inc., 157 F. Supp. 3d 190 (N.D.N.Y. 2016). In 2016, yogurt makers Dannon and General Mills (Yoplait) sued their yogurt competitor Chobani for violations under the Lanham Act for commercials that featured products from the brands in poor light. The ads mentioned ingredients such as sucralose being used in Dannon Light & Fit Greek yogurt and potassium sorbate in Yoplait Greek 100 and implied both were not safe for consumptions; and the court ordered Chobani to pull the ads containing the false message.
The Lanham Act is an important piece of legislation in the world of trademarks. The United States Patent and Trademark Office (USPTO) celebrates the anniversary today with a webinar featuring guest speakers such as Senator Chuck Grassley of Iowa, Senator Chris Coons of Delaware, Representative Ted Deutch of Florida and more.
For more information about trademarks, please contact Kim Grimsley at kim@olivergrimsley.com.
by Kim Grimsley | Apr 26, 2021 | In the News, Intellectual Property
Happy World IP Day! World IP Day was created 21 years ago and is celebrated on April 26th each year. It is a day to raise awareness of IP (Intellectual Property, which includes trademarks, copyright, trade secrets and patents) and how IP impacts daily life. Each year, the World Intellectual Property Organization (WIPO) chooses a new theme. This year, WIPO’s theme is “IP and SMEs: Taking your Ideas to Market” which highlights how Intellectual Property helps small and medium-sized enterprises (SMEs) grow and thrive.
In a video message from WIPO’s Director General Daren Tang, he describes small and medium-sized enterprises as “unsung heroes” noting that SMEs make up 90% of all companies worldwide and 70% of global employment. A link to his message and the WIPO page on World IP Day is found at https://www.wipo.int/ip-outreach/en/ipday/.
Intellectual property is extremely valuable to SMEs to assist in their value and growth. As IP attorneys, we work with SME’s on a day in day out basis to provide our clients with the guidance and knowledge to identify, build upon and protect their valuable intangible IP assets.
