- The Pendulum Swings Back Toward Trademark
Rights – The counterbalance to the strong legal
rights enjoyed by trademark owners is the First Amendment's
protection of expressive and artistic rights through doctrines such
as the "Rogers test," nominative fair use, and
aesthetic functionality. In 2023 and 2024, several interesting
battles between trademark rights and First Amendment rights were
won (at least temporarily) by trademark owners—against dog
toys, handbag NFTs, wavy-soled shoes, and vintage college t-shirts.
Likewise, the U.S. Supreme Court rejected the argument that a
trademark referencing an individual could be registered without
that individual's consent as a form of expression. In 2025, the
legal community will be watching for the effects of this
"winning streak" for brand owners, including whether
there is an uptick in enforcement activity.
- Whose Burden Is It Anyway? – The
Trademark Trial and Appeal Board is generally the first-instance
decisionmaker for resolving disputes over the registrability of a
trademark. In an opposition, where a prior rights owner objects to
the registration of an application, the Board typically will
evaluate whether the segment common to both marks is unique or
commonplace, and the key evidence is the number and nature of
similar trademarks used with similar goods or services in the
marketplace. In some instances, the alleged commonality of the
shared element is evidenced through third-party registrations
incorporating the same (or similar) shared component for the same
(or related) goods or services. Practically speaking, a trademark
registration is only a snapshot of whether a mark/goods or
mark/services combination was in active use on a particular date,
not the magnitude of the use (then or now) or whether the
mark/goods or mark/services combination remains in use. Over the
past few years, the Board has grappled with whether the party
asserting the third-party registrations (typically the defendant)
must prove the third parties' uses of the marks before such
registrations are probative evidence or whether the registrations
are presumed probative unless proven otherwise (typically by the
plaintiff). In 2023, the Board's reviewing court opined that,
at least for registrations for identical marks, "absent proof
of non-use, use could be assumed." In 2025, we will likely
begin to see the Board's application of this opinion to
trademark oppositions and cancellations.
- U.S. Trademark Office Fees Go Up . . . Processing Times
Come Down? – On Jan. 18, 2025, the U.S. Patent and
Trademark Office's (USPTO) fee changes took effect. According
to the USPTO, the fee changes are intended to promote innovation,
provide more options for brand owners, and cover increasing
internal costs. The USPTO has now added additional structure and
penalties for overly lengthy identifications (IDs) and those that
fall outside the pre-approved list. The new fee structure further
encourages the use of pre-approved identifications of goods and
services and succinct identifications of goods and services,
charging an add-on fee for both "free form" IDs and IDs
over 1,000 characters. The new fee structure also introduces an
ominous $100 "insufficient information" fee for new
applications. Considering examiners spend a lot of time addressing
ID issues, practitioners will be tuned into whether the new fee
structure affects the composition of IDs in trademark applications
and whether this leads to a meaningful change in the average
processing time for trademark applications. Complicating matters,
President Donald Trump issued an executive order requiring federal
employees to return to the office full-time, potentially
counteracting the USPTO's current telework policy. This could
impact many USPTO examiners, some of whom live far from Washington,
D.C. and most of whom have no physical office to return to.
Accordingly, reductions in processing times could be offset by the
USPTO's potential loss of experienced personnel.
- Rough Waters Ahead for Cuban-Owned Trademarks?
– The so-called Cuban Embargo often elicits strong
reactions for and against it. But it has been and remains the law
of the land. The Cuban Embargo presents unique challenges for
trademark applications and registrations owned by Cuban entities.
For example, can a Cuban entity establish the requisite bona
fide intent to use lawfully required for a valid trademark
application? Can a Cuban entity establish excusable non-use for the
purposes of maintaining trademark registrations for unused marks?
Does a Cuban entity have "standing" (known as entitlement
to a statutory cause of action in the Trademark Trial and Appeal
Board) to oppose trademark applications or cancel trademark
registrations on absolute grounds such as descriptiveness and
primary geographic significance? All of these questions are at
issue in pending Trademark Trial and Appeal Board proceedings
between U.S.-based cigar manufacturer Kretek International and
Cuban state-owned tobacco companies and could affect the future of
many trademark records and trademark conflicts. These topics are in
the trademark community's current focus especially following
the late-2024 enactment of the "No Stolen Trademarks Honored
in America Act," which could not only strike a final blow to
the Cuban government's efforts to wrestle the U.S. rights to
the Havana Club brand from Bacardi but increase scrutiny of all
trademark records owned by Cuban state-owned entities.
- Dew Trademark Damages Pierce the Corporate Veil? – In an ongoing trademark battle between competing Dewberry real estate development companies, the trial court awarded the plaintiff damages for not only the infringing actions of the defendant, but the infringing actions of the defendant's legally separate (but affiliated) companies. The damages award totaled nearly $43 million. The Fourth Circuit affirmed that the reach of the damages award could include the defendant's non-party affiliates. In 2024, the Supreme Court granted certiorari and the parties completed briefing and oral arguments. Trademark practitioners eagerly await the Supreme Court's decision and its aftereffects, while noting the possibility that the Court could sidestep the merits and decide the case based on the non-argument of certain issues in the earlier stages of litigation.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
