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.
On June 30, 2020, the United States Supreme Court rendered its opinion in the landmark trademark case United States Patent and Trademark Office, et al. v. Booking .com.591 U.S. (2020). This decision may be helpful for those who wish to seek a federal trademark registration where the primary mark includes a top level domain (TLD) identifier, such as “.com” and where the domain name itself may be generic or highly descriptive of the service offered at that domain. Prior to this decision the United States Patent and Trademark Office (PTO) had taken the position that such marks would not be eligible for registration because of the generic nature of the term(s) preceding the TLD portion of the domain (the portion preceding .com). However, certain issues, such as the issue of “consumer perception,” as discussed below, will most certainly be the subject of debate and dispute between these trademark applicants and the PTO.
In this case the online travel agency Booking.com sought to register the trademark BOOKING.COM related to its website for lodging reservations and related services and was denied registration by the PTO. The PTO determined that BOOKING.COM was a generic term not entitled to federal trademark registration. Generic terms can never be registered because they merely identify the class of service or product being offered and not the source of that product or service. Accordingly, it was the PTO’s position that BOOKING merely identified the class of service of making or “booking” a lodging reservation and .COM referred to a website.
Booking.com appealed the PTO’s decision to the District Court which ruled in Booking.com’s favor. The PTO then appealed this decision to the Court of Appeals which also ruled in Booking.com’s favor. The PTO made its final appeal to the Supreme Court which agreed to hear the case.
Affirming both the District Court and Court of Appeals, the Supreme Court, in an 8-1 decision, held that “[a] term styled “generic.com” is a generic name for a class of goods or services only if [emphasis added] the term has that meaning to consumers.” Thus, if it is determined that consumers do not find “generic.com” to be generic to a class of goods or services, but rather unique to goods or services of the entity seeking the trademark, the mark is eligible for registration. In this case, it was determined by the lower courts and uncontested by the PTO before the Supreme Court that consumers did not think BOOKING.COM referred to online hotel-registrations as a class, but rather specifically to the online travel agency Booking.com. Thus, BOOKING.COM, for online lodging registration services, is entitled to federal trademark protection on the principal trademark registry.
As a result of this Supreme Court decision, consumer perception will determine whether a “generic.com” mark can be a registered trademark. The question that will be asked with every such trademark application is “what do consumers think ‘generic.com’ means?” This begs the question, “how do we determine what consumers think something means?” The Supreme Court gives us some insight into this issue by stating that “[e]vidence…can include not only consumer surveys, but also dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning.” The Supreme Court does offer a word of caution with regard to surveys. “Surveys can be helpful evidence of consumer perception but require care in their design and interpretation.”
There will now likely be a flurry of trademark applications for “generic.com” marks in the wake of the Supreme Court’s decision. While the ruling is certainly favorable to trademark applicants, consumer perception and the method(s) used to try and determine what consumers think something means should be carefully considered beforehand.
We are very pleased to welcome Adam G. Holofcener as an associate with the Firm. We have worked with Adam the last few years in his position as the Executive Director of the non-profit organization Maryland Volunteer Lawyers for the Arts (MDVLA), whose mission and work we are proud to support. Adam is currently splitting his time between us and the MDVLA. In Adam’s work with MDVLA, Adam has worked with many artists, entertainers, lawyers and related businesses in the Baltimore metro area on entertainment law issues.
Adam’s practice with us focuses on Trademarks, Entertainment Law, and general business and corporate issues. Prior to joining Oliver & Grimsley, Adam was a staff attorney at the California Monitor, a program of the California Attorney General that assisted homeowners struggling with foreclosure under the National Mortgage Settlement. Adam has a license to practice law in Maryland and in California (currently inactive).
You can contact Adam at firstname.lastname@example.org.
More Countries Join the Madrid Protocol – Next Up: India
Effective July 8, 2013, India will join the Madrid Protocol – the international registration trademark system. This is on the heels of Colombia, Mexico, New Zealand and Philippines, which have all joined the Madrid Protocol within the past 12 months.
The Madrid Protocol is one of the two treatises of the Madrid System (or the International Trademark System), which allows a trademark owner to seek international registration with one filing. Businesses are growing worldwide today and as such, more and more businesses are finding they need international protection. Under the Madrid Protocol, international registration is a more simplistic and cost-effective means of providing trademark owners with the ability to obtain trademark protection in up to 90 designated countries with only one trademark application filing. Registration under the Madrid Protocol is beneficial from a management standpoint as well as the international trademark registration can be managed more easily since only one step will serve to record any changes in the trademark registration, such as a change in ownership or even the address of the owner.
Thus, if your company wants to obtain trademark protection in fifteen15 countries, rather than having to file, pay for and manage 15 trademark filings in various countries, a trademark owner can obtain trademark protection in 15 countries with simply one application filing. Not only is this cost effective in filing fees, but also it is also cost-effective in the time spent in preparing and filing the trademark application. Although filing under Madrid Protocol is beneficial to all trademark owners no matter how small or large the company may be, smaller businesses that once thought international trademark protection was just not feasible from a cost perspective can now realistically move toward international trademark registration and protection on a global basis under the Madrid Protocol.
For more information, please contact Kim Grimsley at email@example.com.