Welcome to the inaugural issue of the Fross Zelnick Minute! Please enjoy a curated set of short- form alerts and developments in our fields: trademark, copyright, design patent, and data privacy.
It is a quick read aimed for even the busiest of our clients and friends. For more detail, color, or perspective, don't hesitate to reach out to us. As we strive to provide you with the information most relevant to your practice and business, we would appreciate your feedback.
USA
United States Patent and Trademark Office (USPTO) Fee Increases:
The USPTO raised fees for many routine trademark filings on January 18, 2025, and is imposing a new fee structure and surcharges for national applications. Fees for applications filed pursuant to Sections 1 and 44 of the Lanham Act will range from $350 to $650/class depending on application attributes. National applications that identify more than 1000 characters in a class will incur additional surcharges. Due to the variability of the new fee structure, we suggest that clients budget $650/class.
The USPTO is simultaneously implementing a new platform called "Trademark Center" for filing national U.S. trademark applications.It is discontinuing use of the traditional TEAS platform for these applications, as only the "Trademark Center" platform will be programmed to calculate national application fees and surcharges.The TEAS platform will still be used for all other filings however, including applications for International Registrations based on U.S. basic applications and registrations.
The filing fee for applications under Section 66 (extensions of protection of an International Registration) will be $600/class with no surcharges, and this new fee will take effect February 18, 2025.
Other increased fees are:
- Pre-Registration Allegations of Use $150/class
- Post-Registration Declarations of Use (Section 8 & 71) $325/class
- Renewals (Section 9) $325/class
- Incontestability (Section 15) $225/class.
For more information, see our news alert .
The "No Stolen Trademarks" Legislation Signed Into Law
On December 1, 2024, former President Joe Biden signed into law H.R. 1505, the "No Stolen Trademarks Honored in America Act of 2023," which modifies how United States courts recognize rights in marks, trade names, and commercial names that were confiscated by the government of Cuba decades ago in the Cuban Revolution.The new law prohibits U.S. courts and executive branch agencies, including the U.S. Patent and Trademark Office, from enforcing or validating confiscated trademarks if the mark has been used in connection with a confiscated business or asset. Thus, a Cuban entity could not register a confiscated mark in the USPTO. Under the new law, the prohibition does not apply if the original trademark owner, or a successor, has expressly consented to the enforcement action.The prohibition applies only if the entity asserting the trademark rights knew or should have known, when it acquired the rights, that the mark was the same or substantially similar to one connected to a confiscated business or asset.
Read the text of the new legislation.
DATA PRIVACY
New State Comprehensive Privacy Laws:
As 2025 begins without a federal comprehensive privacy law, eight more state comprehensive privacy laws will go into effect, thus bringing the expanding patchwork of state privacy laws to sixteen. With the laws of New Hampshire, Delaware, Iowa, Nebraska, and New Jersey, effective in January, and Tennessee, Minnesota and Maryland coming into play in the second half of the year, companies doing business in the United States should be aware of these new laws, determine whether they are covered by them and, if so, consider their obligations under them. While most of these new laws follow in large part the existing state privacy frameworks, several contain notable provisions that merit attention. A review of privacy compliance programs in light of the following statutes is recommended.
Delaware Personal Data Privacy Act:
Delaware's new comprehensive privacy law ("DPDPA"), effective January 1, 2025, applies to entities that (1) conduct business in Delaware or produce products or services targeted to residents of Delaware, and (2) have controlled or processed personal data of at least 35,000 Delaware consumers during the prior calendar year (10,000 consumers for entities that derive 20% or more revenue from the sale of personal data). This consumer threshold is one of the lowest among state privacy laws. So, businesses must be attentive to the possible applicability of this law. Notably, the DPDPA differs from most other state laws insofar as it does not exempt non-profit organizations (with several exceptions) or public higher education institutions. Additionally, the DPDPA does not provide an entity-level exemption for HIPAA-covered entities and business associates—only for certain data covered under HIPAA—so businesses that process HIPPA-related data should be mindful of the law's requirements.
New Jersey Data Privacy Act:
New Jersey's new comprehensive privacy law ("NJDPA") went into effect on January 15, 2025, and covers companies that (1) do business in New Jersey and (2) process the personal data of at least 100,000 New Jersey residents (25,000 residents for entities that derive revenue from the sale of personal data). While some exemptions may be available, the NJDPA does not exempt nonprofits that meet the threshold requirements. Notable under the NJDPA: (1) consumer consent is required to process "sensitive data," which includes "financial information," such as a consumer's account number, account log-in, financial account, or credit or debit card number, in combination with any required security code, access code, or password that would permit access to a consumer's financial account; and (2) consent from the data subject is required to process personal data of consumers at least 13 years old and younger than 17 years old for purposes of targeted advertising, sale of personal data, or legally significant profiling.
INTERNATIONAL
Canada: CIPO Pilot Project – Random Checks for Non-Use Cancellation – Are Your Marks in Use?
In January 2025, the Canadian Intellectual Property Office initiated a pilot project to tidy up the Register. On a monthly basis, the CIPO, on its own initiative, will be randomly contacting trademark owners seeking proof of use for marks that have been on the Register for over three years. Absent the requisite evidence of use, the CIPO will then issue non-use cancellation proceedings under Section 45 of the Trademarks Act. Trademark owners will need to submit evidence that the subject mark has been used for each of the goods or services covered or, in "exceptional circumstances," to provide justification for non-use. Absent such evidence, the registration will be cancelled in whole or in part. Trademark owners should now check their Canadian portfolios for use status, in anticipation of receiving a CIPO notice to produce evidence of use. See detailed information on the CIPO Section 45 initiative and evidence preparation guidelines .
United Kingdom: SkyKick v. Sky– Bad Faith – Is Your Coverage Too Broad?
Trademark owners are, understandably, buzzing about the implications of the UK's Supreme Court decision in SkyKick UK Ltd and another v. Sky Ltd and others [2024] UKSC 36, issued on November 13, 2024. Bottom Line: Broad specifications of goods and services can subject a registration to potential invalidation, in whole or in part, based on a bad faith finding of no requisite genuine intention to use for certain goods/services at the time of filing. Key Takeaways: Applicants will need to be more focused on specifications, limiting their filings more closely to those goods and services they offer and/or intend to offer and making sure to keep records of actual use and/or genuine intent to use, at the application stage. In addition, given the potential for invalidation of existing registrations (in whole or in part), applicants must take great care when relying on such registrations in contested proceedings. Of particular interest to owners of well-known marks is the court's finding that reliance on such status would not justify claiming overbroad coverage. What's Next: The UK Intellectual Property Office will be considering potential changes in policy that could involve closer attention at the application stage to very broad specifications and consideration of possible bad faith. We are watching this space!
Libya: Substantial Increase in Official Trademark Renewal Fees
Recent decree No. 586 (2024), issued by Libya's Ministry of Economy, substantially increases the cost of trademark renewals. Applicants for renewal must now submit financial statements supporting the status and value of their marks. Importantly, renewal fees will now be calculated at US$2000 for each year of the 10-year term, resulting in an increase to $20,000 per renewal. There appears to be confirmation that this increase would not affect renewals that have already been filed and are pending. Given such a dramatic, and extraordinary, hike in fees, however, interested parties are actively reaching out to the relevant authorities to encourage them to modify this decree. Many practitioners are hoping this unusually sharp increase does not stand in its current form. We are monitoring the situation for further developments. Stay tuned!
Additional important news from Libya: Ministerial Decision No 2, effective January 15, 2025, revokes all trademark applications filed between April 2 and September 2, 2024, due to suspension of operations of the Trademark Office during that period. Applicants affected by this Decision should refile as soon as possible, as the priority of the initial application will be lost.
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.
