- 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.
About the Authors:
Stephen Baird® is a member of Greenberg Traurig, LLP’s Global Trademark and Brand Management Group, and oversees the group’s robust Minneapolis practice. He protects companies’ most important brands and other intellectual property assets by designing efficient, creative, tailored legal strategies to advance their most important business objectives.
Joel Feldman is Co-Chair of Greenberg Traurig, LLP’s Global Trademark and Brand Management Group and an adjunct professor of law in trademarks. He creates bespoke brand management strategies for some of the world’s famous and infamous brands (and everywhere in between) and zealously protects those brands against threats and nuisances.
Susan Heller is Co-Chair of Greenberg Traurig, LLP’s Global Trademark and Brand Management Group. She helps her clients monetize and optimize their critical IP assets through strategic and creative positioning, management, and enforcement of their worldwide trademark, copyright and domain name portfolios and extensive collateral product licensing.
Candice E. Kim is Co-Chair of Greenberg Traurig, LLP’s Global Trademark and Brand Management Group. She counsels clients on trademark prosecution, licensing, enforcement, and TTAB opposition and cancellation proceedings, with an emphasis on global brand expansion and management through strategic trademark filing, protection, and enforcement programs.