On September 18 we participated in the 7th Annual American Bar Association, Intellectual Property Law Section “Trademark Day” held at the United States Patent and Trademark Office (USPTO) headquarters in Alexandria, Virginia. This annual gathering is an opportunity to meet other trademark practitioners, it’s also an opportunity to meet and interact with USPTO managing attorneys and other USPTO officials. We also participated in a live hearing of the Trademark Trial and Appeal Board.

One of the highlights of the event was the State of the Trademark Office by Mary Boney Denison, Commissioner for Trademarks. Ms. Boney Denison indicated that trademarks performance measures have improved year to date with a reduction in examination time to an average 2.3 months from date of filing to the first office action, that’s an improvement from 2018. She also indicated that although today 99% of trademarks are filed electronically, a final rule-making was recently issued that will make using the electronic filling mandatory for all trademark filings and require communication with the USPTO via email.

She also introduced several initiatives the USPTO will be implementing in the following months. Proof-of-use audit program, this program launched in 2017 is now permanent and will subject trademark registrations, at the time of renewal to an audit process that will require submission of proof of use for additional goods/services in registration to ensure that register accurately reflects marks that are in use in the United States for all goods/services identified in registrations.

She gave an update on the implementation of the new rule that requires foreign-domiciled trademark applicants and registrants to be represented by a U.S.-licensed attorney to file trademark documents with the USPTO. After its implementation on August 3, new trademark filings from unrepresented foreign applicants have been reduced considerably. Also, The commissioner has excluded specific foreign practitioners from appearing before the USPTO.

As to Misleading solicitations, trademark owners have been targeted by unscrupulous parties who obtain their info from the USPTO databases and offer them services, often holding themselves out to be acting on behalf of the USPTO. The USPTO is implementing interagency working group to combat fraudulent solicitations to trademark owners. In addition, the USPTO is actively working with the Justice Department to prosecute these criminals. As a result, the USPTO in conjunction with the Justice Department, recently secured a guilty plea where two men pled guilty to stealing $1.66 million from U.S. trademark applicants and registrants; a third man was convicted in a jury trial.

Trademark fee changes announced. On August 2019, the Director of the USPTO notified of the Office’s intent to set or adjust trademark related fees. The proposed government filing fees for trademark filings will be increased in some instances 11% others up to 27%. The renewal fees will also be increased up to 80%. Also, new fees will be added to combat fraudulent filings, such as a $100 fee per good or service deleted on a registration as result of a Post Registration Audit, now there is no fee. The Appeal fees will also be increased an average 50% and new fees such as Summary Judgement Motions, Requests for Oral Hearings, and Request for Reconsideration fees of $500 and $400 respectively will be added. Appeals refer to oppositions/cancellations or denial of registrations. These proposed fees are expected to be implemented in the second quarter of 2020.

I have helped countless businesses protect their trademarks in the United States and foreign jurisdictions. I’d like to help you too!

Please contact our office if you wish to receive trademark information on how protect your brand int the United States and foreign jurisdictions.

Augusto Perera, Esq.
Intellectual Property, Business and Legal Affairs Attorney

Augusto Perera, P.A.
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Coral Gables, FL 33134

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