Category Archives:Trademark Law

USPTO Further Extends Certain Patent and Trademark-Related Timing Deadlines under the CARES Act to June 1, 2020

By Salvatore Fazio, Esq.

On April 28, 2020, United States Patent and Trademark Office USPTO director Andrei Iancu circulated a communication further extending USPTO deadlines to file certain trademark and patent-related documents or fees pursuant to Section 12004 of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act).

Deadline Extensions

The USPTO has further extended all deadlines which fall between March 27, 2020, and April 30,2020 until June 1, 2020 for any[1]:

Trademark

  1. response to an Office action, including a notice of appeal from a final refusal, under 15 U.S.C. § 1062(b) and 37 C.F.R. §§ 2.62(a) and 2.141(a);
  2. statement of use or request for extension of time to file a statement of use under 15 U.S.C. § 1051(d) and 37 C.F.R. §§ 2.88(a) and 2.89(a)
  3. notice of opposition or request for extension of time to file a notice of opposition under 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and§ 2.102(a);
  4. priority filing basis under 15 U.S.C. § 1126(d)(l) and 37 C.F.R. § 2.34(a)(4)(i)
  5. transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a);
  6. affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. §2.160(a)
  7. renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182; or
  8. affidavit of use or excusable nonuse under 15 U.S.C. § l 141k(a) and 37 C.F.R. § 7.36(b);

Patent

  1. reply to an Office notice issued during pre-examination processing by a small or micro entity;
  2. reply to an Office notice or action issued during examination or patent publication processing;
  3. issue fee;
  4. notice of appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31;
  5. appeal brief under 37 C.F.R. § 41.37;
  6. reply brief under 37 C.F.R. § 41.41;
  7. appeal forwarding fee under 37 C.F.R. § 41.45;
  8. request for an oral hearing before the Patent Trial and Appeal Board (PTAB or Board) under 37 C.F.R. § 41.47;
  9. response to a substitute examiner’s answer under 37 C.F.R. § 41.50(a)(2);
  10. amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection under 37 C.F.R. § 41.50(b);
  11. maintenance fee, filed by a small or micro entity;
  12. request for rehearing of a PT AB decision under 3 7 C.F.R. § 41.52;
  13. request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c) or 41.127(d); or
  14. petition to the Chief Judge under 37 C.F.R. § 41.3.

It is important to note that the extended waiver of deadlines requires a statement from the practitioners, petitioners, applicants, trademark and patent owners, or other persons associated with the delayed filings and/or fees that they were personally affected by the COVID-19 outbreak. A non-exhaustive list of examples of reasons for COVID-19-related excusable delays includes office closures; cash flow interruptions; inaccessibility to files; travel delays; personal or family illness; or other similar circumstances materially interfering with timely filing or payment of fees. As to the form, the USPTO does not require such statements  to be verified or to be provided in affidavit or declaration form.

Waiver of Fees for Petitions to Revive

Trademarks

The Notice further provides that applicants or a registrants whose trademark applications have become abandoned or whose registrations were canceled/expired due to a COVID-19 related- inability to timely submit a filing or payment in reply to an Office communication having a due date of May 31, 2020 or earlier can elect for the USPTO to waive the petition fee to revive the abandoned application or reinstate the canceled/expired registration.

Patents

Similarly, if due to the COVID-19 outbreak  applicants and owners that were unable to timely submit a filing or payment in reply to an Office Communication having a due date of May 31, 2020 or earlier, causing their application to be abandoned or causing the termination of reexamination prosecutions, the UPSTO may waive the petition fee for filing a petition for the revival of such abandoned patent applications when the applicants or owners file a petition to revive and a provide a statement that the delay was due to the COVID-19 outbreak.

For any intellectual property-related questions including USPTO deadline extensions under the CARES Act, feel free to reach out to us via phone or email.

For the April 28, 2020 Notice of Waiver of Trademark-Related Timing Deadlines Under the CARES Act, click here.

For the April 28, 2020 Notice of Extended Waiver of Patent-Related Timing Deadlines under the Act and Other Relief Available to Patent Applicants and Patentees, click here.

For the USPTO’s answers to COVID-19-extension-related frequently asked questions:

Click Here for Trademarks

Click Here for Patents


[1] Certain restrictions may apply to the deadline extensions listed. To view copies of the notices, please click on the links provided in this blog entry.

Wu-Tang Clan opposes trademark application for “Woof-Tang Clan”

Recently, Robert Diggs, p/k/a RZA, opposed a trademark application for the mark WOOF-TANG CLAN.[1] RZA is one of the leaders of the hip-hop group WU-TANG CLAN and alleges to be the owner of multiple trademark registrations containing the mark WU-TANG CLAN.[2] The applicant Woof-Tang Clan, LLC (“Applicant”) is a New York business entity which filed a trademark application for the mark WOOF-TANG CLAN for dog walking services and pet sitting.[3] Applicant’s website touts itself as “the illest group of dogs in New York City.”[4]

In his Notice of Opposition, RZA makes several arguments why the WOOF-TANG CLAN application should not be allowed registration.[5] First, RZA alleges that the WOOF-TANG CLAN mark falsely suggests a connection with RZA, who is known to be associated with the WU-TANG CLAN.[6] RZA further alleges that the WU-TANG CLAN trademarks have been used prior to Applicant’s mark and that Applicant’s mark would cause consumers to be confused as to whether Applicant is affiliated with RZA or the WU-TANG CLAN.[7] RZA’s last argument is that the WU-TANG CLAN trademarks are famous, and thus, Applicant’s mark is likely to dilute the distinctive value of the WU-TANG CLAN trademarks.[8]

The deadline for the Applicant to respond to RZA’s claims is currently set on Christmas day.[9] One of the issues yet to be determined is whether the Applicant knew of the WU-TANG trademarks prior to filing an application, and thus intentionally attempted to siphon off of the goodwill of WU-TANG.[10] This coincides with RZA’s argument that the WU-TANG CLAN marks are famous.[11] However, the burden will still be on RZA to establish the fame of the WU-TANG CLAN marks. If RZA’s arguments are successful it is likely that Applicant’s application will be denied registration.

We will be monitoring the status of this case. Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Partner

[1] See, Robert Diggs v. Woof-Tang Clan, LLC, Opposition No. 91237820 (TTAB Nov. 15, 2017).
[2] Id.
[3] Id.
[4] See, http://www.wooftangclan.com/services.html
[5] See, Robert Diggs v. Woof-Tang Clan, LLC, Opposition No. 91237820 (TTAB Nov. 15, 2017).
[6] Id.
[7] Id.
[8] Id.
[9] Id.
[10] Id.
[11] Id.

KERRYGOLD initiates trademark lawsuit against competing butter brand

Recently, the companies responsible for manufacturing and distributing butter under the trademark KERRYGOLD (“Plaintiffs”) filed a trademark infringement lawsuit against Eurogold USA, LLC and Old World Creamery, LLC (“Defendants”).[1] The dispute revolves around Plaintiffs’ allegations that the Defendants plan to sell Irish butter products under the mark IRISHGOLD.[2] According to  Plaintiffs, the parties were in negotiations for the Defendants to package Plaintiffs’ Irish butter products under the KERRYGOLD mark in Wisconsin, but negotiations broke off and Defendants decided to sell their own products under the IRISHGOLD mark.[3] Although Plaintiffs’ KERRYGOLD products are sold throughout the United States, such products have not been widely available in the state of Wisconsin due to the state’s specific requirement that any butter sold in the state bear a Wisconsin or federal grade mark.[4] The problem for Plaintiffs is that its KERRYGOLD products are inspected and graded in Ireland.[5] As a result, Plaintiffs had sought to enlist Defendants’ help in selling its KERRYGOLD products in Wisconsin.[6]

According to Plaintiffs, the Defendants’ IRISHGOLD mark would be presented to the marketplace with a similar font and color scheme found in Plaintiffs’ KERRYGOLD branded butter and would also be sold in packages containing two 4 oz. sticks, which is the same way that Plaintiffs sell their KERRYGOLD butter products.[7] Plaintiffs have alleged that they own several federal trademark registrations for the mark KERRYGOLD, using different fonts, logos and variations.[8] Plaintiffs have also alleged that Defendants’ proposed use of the IRISHGOLD mark would cause consumers to mistakenly believe that this product was authorized by Plaintiffs.[9] Plaintiffs pointed to a specific instance where on April 7, 2017, the Chicago Tribune allegedly published a news story discussing the imminent sale of butter under the IRISHGOLD mark but used a photograph of Plaintiffs’ KERRYGOLD butter.[10]

As a result, simultaneously with the filing of the Complaint, Plaintiffs filed motions for a temporary restraining order and for a preliminary injunction.[11] On or about April 13, 2017, the Eastern District of Wisconsin granted the Plaintiffs’ Motion for Temporary Restraining Order which temporarily prevents the Defendants from using their IRISHGOLD mark.[12] This Order is only temporary in nature, and thus, the Court ordered that an additional court hearing will be held on Plaintiffs’ Motion for Preliminary Injunction.[13] One of the issues yet to be determined is whether Plaintiffs’ KERRYGOLD mark is considered a famous mark, and thus, can support a claim for trademark dilution.

We will be monitoring the status of this case. Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Partner

[1] See, Ornua Foods North America, Inc., et. al. v. Eurogold USA, LLC, et. al., Case No. 17-cv-00510-JPS, at Docket Entry No. 4 (E.D. Wis. April 10, 2017).
[2] Id.
[3] Id.
[4] Id.
[5] Id.
[6] Id.
[7] Id.
[8] Id.
[9] Id.
[10] Id.
[11] Id.
[12] See, Ornua Foods North America, Inc., et. al. v. Eurogold USA, LLC, et. al., Case No. 17-cv-00510-JPS, at Docket Entry No. 24 (E.D. Wis. April 10, 2017).
[13] Id.