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Intellectual Property

What is the Trademark Modernization Act of 2020?

What is the Trademark Modernization Act of 2020?

Amanda Milgrom
Amanda Milgrom

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Trademark practitioners, it is time to get excited! Trademark applicants? Registrants? You can get excited, too! The United States Patent and Trademark Office (USPTO), the office that decides who can own the rights to a mark, word, or design logo, has proposed long-needed changes to the trademark rules of practice via the Trademarks Modernization Act (TMA).

If you practice trademark law, you are well aware that much of the process can be antiquated, slow, and inefficient. The proposed changes are intended to make the trademark process more efficient and to allow businesses new ways to remove unused marks from the register. The TMA amends the Lanham Act (which governs trademark law) in three key ways, all of which will be discussed in more detail below.

1. New Tools to Remove Inaccurate Claims of Use

The USPTO has proposed two new methods by which an entity can cancel an unused registration: expungement and reexamination. These tools would provide faster and less expensive alternatives to the current inter partes cancellation proceeding before the Trademark Trial and Appeal Board (TTAB).

Expungement – Third parties would be able to request the cancellation of some or all of the goods and services in a registration based on the fact that the registrant never used the mark in commerce in association with those particular goods and services. An expungement proceeding must be requested between three to ten years after the registration date.

Reexamination – Third parties would be able to request the cancellation of some or all of the goods and services in a registration based on the fact that trademark was not used in commerce with those goods and services on or before a particular date. A reexamination proceeding must be requested within the first five years after a registration.

Either of these tools offers a less expensive, less burdensome, and faster alternative to a cancellation proceeding.

2. Proposed Changes to Existing Procedures

New ground for TTAB cancellation proceeding – The proposed changes under the TMA would add a new ground for cancellation: the trademark has never been used in commerce.

Shorter three-month response period for office actions – Under the TMA, applicants and registrants will be required to respond to office actions within three months (instead of the current six-month period). Practitioners, you will likely be excited about this change, as it would promote efficiency in examination and would speed up the registration process significantly.

Third-party submissions during examination (letters of protest) – The TMA would provide statutory authorization for the USPTO letter of protest practice. This practice allows third parties to submit evidence to the USPTO, prior to a mark’s registration, regarding the registrability of the mark. The TMA would set a two-month deadline for the USPTO to act on these letters.

The TMA became law on December 27, 2020, and will take effect on December 27, 2021. It is currently open to the public for comment until July 19, 2021. You can submit comments at www.regulations.gov. Enter docket number PTO-T-2021-0008 on the homepage and click search. Please reach out to Milgrom & Daskam with further questions.

ABOUT THE AUTHOR

PARTNER & EXECUTIVE DIRECTOR

 

Amanda Milgrom represents individuals and businesses of all sizes in various litigation matters regarding employment, intellectual property, and business disputes. She practices employment law, representing employees in discrimination lawsuits and counseling employers on best practices, drafting employee handbooks, and putting together suites of employment contracts.

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What is the Trademark Modernization Act of 2020?

Trademark practitioners, it is time to get excited! Trademark applicants? Registrants? You can get excited, too! The United States Patent and Trademark Office (USPTO), the office that decides who can own the rights to a mark, word, or design logo, has proposed long-needed changes to the trademark rules of practice via the Trademarks Modernization Act (TMA).

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Intellectual Property

How to Protect Your Designs with Patents and Trade Dress

How to Protect Your Designs with Patents and Trade Dress

Laura Marmulstein

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Designs are in everything—the computer you are currently looking at, the clothes you are wearing, the chair you are sitting on, the bottle you are drinking out of (and the list goes on).

There is value to having a product that looks different from anything else on the market. People often want things simply because they look cool or are unique. And wouldn’t it be cool if you could be the exclusive producer of that unique, cool-looking product? With the right protection, you can. There are several ways to protect a design, including design patents and trade dress.

Design Patents

Design patents protect new, original, and ornamental designs for articles of manufacture (35 U.S.C. § 171). In other words, they protect the way a product looks. Specifically, a design patent can protect the configuration or shape of a product and/or its surface ornamentation. An example of a product protected by a design patent is depicted below—which I’m sure you recognize as Apple’s iPhone.

U.S. Design Patent No. D593,087

A design patent gives the owner the right to prevent others from making, using, or selling a product that appears “substantially the same” as the patented product, as determined by an “ordinary observer, giving such attention as a purchaser usually gives.” Gorham Co. v. White, 81 U.S. 511, 528 (1871). An product may appear substantially the same as a patented product if a buyer purchases the infringing product thinking it was the patented product. Id.

As an example, the products depicted in the right two columns of the table below were found to be nearly identical to and to infringe on the Crocs footwear design protected by U.S. Patent No. D517,789, as represented by the drawings in the left column. Crocs, Inc. v. Int’l Trade Com’n, 598 F.3d 1294, 1304 (Fed. Cir. 2010). In this case, the court found that “an ordinary observer…would be deceived into believing the accused products are the same as the patented design.” Id.

A design patent provides the owner with a limited monopoly lasting fifteen years from the date the patent is granted. Once the patent term expires, the patented article falls into the public domain, meaning that anyone can use or sell it. A patent term cannot be extended; however, it is possible to effectively extend the monopoly through other means of design protection, such as trade dress.

Trade Dress

Trade dress is the non-functional physical detail and design of a product or its packaging, which indicates or identifies the product’s source and distinguishes it from the products of others. Trade dress is usually defined as the “total image and overall appearance” of a product, or the totality of the elements, and “may include features such as size, shape, color or color combinations, texture, graphics.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 (1992).

When a company continuously uses a design, the public may come to recognize the design as exclusively coming from that company. For example, without seeing a company name for the images below, you likely recognize the product designs as Apple products. These products are protected by trade dress.

Apple has developed a strong reputation in the electronics industry, and consumers know they will get a certain quality product with Apple products. As such, consumers will continue to buy products simply because they come from Apple. A design protected by trade dress has associated value by serving as an indicator of a particular quality product coming from a particular source, influencing purchasers to buy it.

A trade dress owner can prevent others from producing products with designs that are likely to cause consumer confusion. Likelihood of confusion exists when another’s product design or packaging is so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source. See TMEP § 1207.01.

For a design to be protected by trade dress, the public must associate the design with a source or producer of goods or services, rather than just the product itself. A product design is not capable of functioning as a trademark without a showing of secondary meaning, i.e., that the public associates the trade dress with a source or producer, rather than just the product itself. See, e.g., Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 216 (2000). For this reason, it often takes time to acquire trade dress protection for a product design. Product packaging, on the other hand, may not require time to show it has acquired source-identifying function. See, e.g., Samara Bros. at 215 (“product packaging…normally is taken by the consumer to indicate origin.”).

During the time it takes to develop trade dress protection for a product design, the design can be protected by a design patent (so long as it is novel, non-obvious, and ornamental). Once the design has acquired source-identifying function, the design can also be protected by trade dress. In this manner, a design can be protected by both a design patent and trade dress. When the design patent expires fifteen years after its grant date, the design will still be protected by trade dress so long as the public continues to associate the design with its source or producer.

As an example, Coca-Cola has obtained numerous design patents on its unique bottle shape, including U.S. Design Patent Nos. D63,657 and D105,529, shown below. The Coca-Cola bottle is also protected by trade dress, as the public readily recognizes the bottle as Coca-Cola’s product. Coca-Cola registered the trade dress with the U.S. Patent and Trademark Office in 1977 under U.S. Registration No. 1057884, which is depicted in the far right image below. While the design patents provided Coca-Cola a fourteen-year monopoly (design patent term changed from fourteen years to fifteen years in 2015) on the bottle designs, Coca-Cola was able to effectively extend this monopoly through trade dress protection, which still exists today.

U.S. Pat. No. D63,657

U.S. Pat. No. D105,529

U.S. Reg. No. 1057884

In conclusion, design patents and trade dress provide valuable protection, and you should consider these forms of intellectual property protection when designing a product.

Disclaimer: This article is intended for scholarship and educational purposes only. The images used in this article were taken from publicly available documents on the U.S. Patent and Trademark website (tsdr.uspto.gov and portal.uspto.gov/pair/PublicPair) and Google Patents (patents.google.com). The image used from Crocs, Inc., is from a publicly available case accessed through Westlaw (next.westlaw.com). We believe incorporating images showing examples of design patents and trade dress is necessary to adequately convey the information to educate the general public. We believe our use of these images constitutes fair use. If you are the copyright owner of any of these images, please feel free to contact us at info@milgromlaw.com

ABOUT THE AUTHOR

ASSOCIATE

Laura counsels clients on legal issues related to intellectual property, including patents, trademarks, and copyrights. Laura helps clients build strong intellectual property portfolios, taking into account various types of protection options, such as utility and design patents, including both U.S. and foreign, trademark and trade dress registrations, and copyright registrations.

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What is the Trademark Modernization Act of 2020?

Trademark practitioners, it is time to get excited! Trademark applicants? Registrants? You can get excited, too! The United States Patent and Trademark Office (USPTO), the office that decides who can own the rights to a mark, word, or design logo, has proposed long-needed changes to the trademark rules of practice via the Trademarks Modernization Act (TMA).

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