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Intellectual Property Insights from Fishman Stewart
Volume 20, Issue 19

Trademark Office Issues Guidance on new Registrations

By Zachary Grant

In Fish Tank Volume 20–Issue 7, we examined the landmark SCOTUS decision United States Patent and Trademark Office v. B.V. regarding the registrability of “” trademarks. In short, Justice Ginsburg’s majority opinion struck down the per se Trademark Office rule that a generic term combined with a generic top-level domain, such as “.com,” results in a combination that is generic and therefore not eligible for registration. Examples of these “” marks are “” for travel booking services, “” for wine products, and “” for legal information. The Supreme Court found that the strict legal rule disregards consumer perception and does not comport with trademark statutes or past practices of the Trademark Office. Therefore, the Supreme Court held that the per se rule is abolished in favor of a more lenient standard that allows for the registration of “” marks if the trademark applicant can demonstrate that its “” mark has acquired trademark meaning in the eyes of consumers.

Since that decision, the Trademark Office has issued guidance on how it will analyze “” marks for federal registration. Significantly, the administration noted that applicants should not expect guaranteed registration for their “” marks. Although the rule for generic domain names is no longer per se, an applicant must be prepared to overcome a refusal to register by showing that relevant consumers would understand the mark to function as a brand name rather as a generic term.

The type of evidence an applicant could present to show that its “” functions as a mark includes surveys attesting to the fact that consumers recognize the “” as a mark and not a generic term, the duration and extent of advertising using the “” as a brand rather than as a generic term, and other evidence supporting the applicant’s position that consumers recognize the “” as a mark and not a generic term.

If you have any questions about the new registration guidelines or would like help in submitting a trademark application, Fishman Stewart attorneys are ready to assist.

New Trademark Registration Fees

The United States Patent and Trademark Office (“USPTO”) announced government fee increases to its trademark application process and its Trademark Trial and Appeal Board (“TTAB”) services effective January 2, 2021. In a final rule issued November 17, 2020, the USPTO stated that the changes are necessary to further the administration’s strategic objectives to better align fees with the costs of operation, protect the integrity of the trademark register, improve the efficiency of the agency, and ensure financial sustainability to facilitate effective trademark operations. The USPTO carefully weighed economic conditions and potential hardships when making the changes and delayed the development of the restructuring due to economic downturn cause by the COVID-19 pandemic. Many of the government fees will increase upwards of 50%, and several of fees increased by 100% or more. Additionally, several new fees are to go into effect. A summary of fee changes can be found HERE. If you have any questions about the new fee structure or would like help efficiently registering or defending your mark, Fishman Stewart attorneys are ready to assist.

DBusiness Magazine Honor

Fishman Stewart is proud to announce DBusiness Magazine has included Barbara Mandell on the list of 2021 “Top Lawyers!”

Barbara has been named to the list of attorneys who are recognized in the specialty area of Intellectual Property – Litigation for excellence in their field. Barbara is a partner at the firm. She has over 30 years’ experience in complex litigation.Her practice is focused on litigating, arbitrating, and counseling her clients on patent, trademark, and licensing matters as well as antitrust law. She is also an American Arbitration Association Commercial Panel Member. See Barbara L. Mandell’s biography.