5 Trends to Watch in 2022 for Trademark and Brand Management

1. Reviews, expungements and cancellations based on fraud – Since Congress passed the bipartisan Trademark Modernization Act of 2020, trademark owners and trademark practitioners have been waiting for the Trademark Office to launch “modern” procedures designed to reduce clutter in the Federal Register and pave the way for new demands. As of December 18, 2021, the main new procedures are expungement and reexamination procedures which, according to the Trademark Office, “are intended to allow third parties to bring to the attention of the USPTO the non-use of registered marks”. The Trademark Office’s Examination Guide 1-21 speaks for itself in terms of the practical details of these procedures, which are effectively a hybrid of a letter of protest and an audit to purposes of pressure testing on claims of use. Are these procedures really becoming “faster, more effective and less expensive alternatives?” »[s] to contested adversarial annulment proceedings” remains to be seen. Throughout 2022, trademark practitioners will closely monitor the USPTO Director’s case-by-case determination of (i) concise factual statements and documentary evidence constituting “a sufficiently comprehensive search” to determine whether the registered trademark relevant has never been used in commerce, and (ii) determine whether a prima facie case of non-use has been established based on the concise factual statement and documentary evidence. Proving a negative – lack of use – to the satisfaction of the USPTO Director could be a deceptively simple task that, in some cases, requires more effort and evidence than initiate cancellation proceedings. Similarly, trademark practitioners will observe, if any, which proceedings initiated by the Director are successful.

Even with two new options unrelated to the Trademark Trial and Appeals Board for challenging registrations with allegations of questionable use, the outcome of the ongoing United States Court of Appeals review for the Federal Circuit of the decision 2021 Chutter, Inc. v. The Commission’s Great Management Group, LLC will likely affect the calculation between reconsideration/expungement proceedings and cancellation proceedings. After the Board granted a record number of successful fraud claims in rescission and objection proceedings during the Medinol era (2003 – 2009) while employing an erroneous standard of negligence (“knew or should have known”) ), after the landmark CAFC decision in 2009 and the reversal of the Bose Board of Directors (requiring a specific intent to deceive instead), brand fraud claims and decisions have been extremely quiet. . Indeed, during the Bose legacy that spanned more than a decade and up to the Board’s 2021 precedent ruling in Chutter, the Board had only upheld one claim of fraud under the many standard. higher specific intent to deceive from the CAFC. In Chutter, the Board held that reckless recklessness in making a false statement under Section 15 to obtain incontestability should not only invalidate the incontestability, but also require the cancellation of the underlying registration . If the CAFC upholds this standard of reckless non-compliance, cancellations based on fraud could once again become the weapon of choice to challenge allegations of use in recordings, particularly because allegations of fraud can lead to full cancellation. of a registration, not just cancellation as far as the goods are concerned. or services for which there has been or is no use.

2. Changes to the USPTO Office Action Response Period – Trademark practitioners before the USPTO have historically enjoyed long response times to administrative actions compared to most of their non-US counterparts. As part of the implementation of the Trademark Modernization Act, effective December 1, 2022, for all U.S. applications not related to the Madrid Protocol, the usual six-month administrative action period will be divided into two three-month periods. The first three-month period is the default period. The second three-month period is available only upon request and upon payment of an official fee of $125. Of course, plaintiffs represented by counsel will also incur professional costs associated with preparing and filing the three-month extension application. Whereas, for multi-class filings, the USPTO has generally charged formal fees per class (e.g., application fee, use filing fee, and time extensions to file filing filing fee). use), it’s unclear if the official $125 fee is per class or per application. In the latter case, it may swing the best practice pendulum from multiple single-class applications to multiple-class applications to reduce official fees in case an extension of the desktop action response period is needed. .

3. CBD and Marijuana Brand Management Strategy – The number of branded CBD and marijuana products increased significantly in 2021 and will likely continue to do so in 2022. Throughout 2021, the USPTO refused to register trademarks used for marijuana products ( under the Controlled Substances Act) and brands used for ingestible CBD products. (under the Federal Food, Drug, and Cosmetic Act). In 2022, pressure will likely increase on the USPTO to delicately balance the statutory business requirement for federal registration with the consumer protection goals of the Lanham Act.

4. Brand management strategy of new technologiesy – One of the most popular collectibles of 2021 was digital artwork and audio files embedded in blockchain technology, usually in the form of so-called non-fungible tokens or NFTs. In October and November 2021, NFTs entered the standard USPTO lexicon through 12 new pre-approved product and service identifications in the USPTO Trademark ID Manual. Recognizing that trademarks are generally not used as an indicator of the source of the authentication tokens themselves, but the digital assets to which the authentication tokens are affixed, the USPTO correctly identified these products as downloadable music and media files class 9 “authenticated by non-fungible tokens”. (NFT). At the same time, many brand owners of durable goods such as footwear, clothing, jewelry, and watches have launched or were planning to launch “virtual goods” simulating their hard goods and have sought to register these “virtual goods”. equipment’ in class 9 (electrical and scientific equipment). virtual appliances) and “virtual environments” of virtual goods in Class 41 (entertainment and educational services). While services and physical goods have been split across multiple trademark classes allowing for peaceful coexistence in the trademark registry, the convergence of corresponding “virtual goods” and NFT-backed collectibles, all in Class 9, creates a land rush in this brand class and could create brand battles in 2022 and beyond. For example, the proverbial Alpha Airlines and Alpha faucets who have peacefully co-existed in unrelated classes for years may be forced to fight for class 9 priority for their virtual goods and/or NFT-backed collectibles.

5. NIL College Athlete Brand Management Strategy – One of the biggest sports stories of 2021 was the National Collegiate Athletic Association’s adoption of a policy allowing college athletes to market their names, images and likenesses. Of course, trademarks enjoy many rights under federal law that name, image, and likeness rights lack under disparate state laws. It was therefore not surprising that there was a rush of trademark applications, as many college athletes were asked to develop and apply for registration of word marks and logos, particularly marks “to the test of time” that could support transferring to another college and enrolling in professional athletics. In 2022, the commercialization of these marks will be a focus, to see if intent-to-use applications result in registrations and if the cost of securing these rights is outweighed by the revenue from commercializing these rights. . This data will likely shape long-term brand management strategies for college athletes. It will also be interesting to see if the limited combinations of player numbers and initials lead to priority battles in the USPTO.

Cathy W. Howerton