Ride the Wave don’t get wiped out by it. If you have ever surfed a wave, you know how powerful, the energy of a wave can be. Just like a surfer who knows that they are not going to change the power of a wave but, instead, use it to their advantage, our litigators use the power of the law applied to the facts of our clients’ case to help them ride the wave and not get wiped out. Therefore, whether the wave is big or small, we will work with you to obtain the best result by understanding and navigating the law and facts of your case.

Wendy B. Mills has battled some of the largest law firms in the United States and even with their enormous resources, she has been able to determine the best strategy to achieve the most advantageous outcome for her clients. For more information, review our areas of practice or contact us to see how we can help.

Attorneys are often hired to defend against allegations raised in cease and desist letters or issue cease and desist letters against alleged trademark, copyright and/or patent infringers. Of course, cease and desist letters are not limited to allegations of infringement, but for purposes of this article, we are discussing only cease and desist demands relating to allegations of infringement. Often, a cease and desist letter is a helpful tool to begin settlement discussions to resolve a dispute before it becomes necessary to incur the expense and burden of a lawsuit. If the respective parties are reasonable in their respective demands or expectations, there is greater potential to resolve disputes without litigation. However, when a party takes the initiative in issuing a cease and desist letter, the party receiving the cease and desist letter may respond by filing a preemptive lawsuit seeking among other things, a Declaratory Judgment of Non-Infringement under Federal Trademark, Copyright, Patent and/or Unfair Competition law. 28 U.S.C. § 2201, et seq.

By filing the lawsuit first, the party that would have otherwise been the Defendant in a lawsuit as the alleged infringer now becomes the Plaintiff. Further, if the parties are in different jurisdictions and the lawsuit is brought in the alleged infringing parties’ jurisdiction, a question of personal jurisdiction over the defendant may arise and often adds considerable cost to any lawsuit. Accordingly, the decision to issue a cease and desist letter is more complex than many parties realize.

The above-referenced issues are not intended to be exhaustive, but merely examples of potential issues associated with issuing a cease and desist letter with respect to intellectual property infringement allegations.

**Nothing herein is intended to be legal advice and does not create an attorney-client relationship.

The United States Patent and Trademark Office (“USPTO”) has made a series of changes to the Trademark Manual of Examining Procedure (“TMEP”) since the beginning of 2017. The first wave of changes was enacted on January 14, 2017, and is primarily documented here. A second major change, effective as of February 17, 2017, concerns what the USPTO may require proving that marks and registrations are actually in use in commerce in the United States. The official press release for this change can be found here. 

January Changes 

In January, the TMEP was amended in many small ways. This change included several small, but important, changes. For example, Section 301 has been amended to make it mandatory for documents in Trademark Trial and Appeal Board (“TTAB”) proceedings to be filed using the Electronic System for Trademark Trials and Appeals (“ESTTA”). Similarly, Section 306.01 was amended to update which types of correspondence with the USPTO may not be filed by facsimile transmission. These types of correspondence are applications for registration, drawings submitted under 37 C.F.R. § 2.51, 2.52, 2.72, or 2.173, requests for cancellation or amendment of a registration, certificates of registration surrendered for cancellation or amendment, correspondence that must be filed with the TTAB, Madrid-related correspondence submitted under 37 C.F.R. § 7.11, 7.14, 7.21, 7.23, 7.24, or 7.31, and documents that are statutorily required to be certified. 

Another significant January update to the TMEP regards the filing and processing fees the USPTO collects. For example, the fee for electronically filing an application through TEAS Regular was previously $325 (per class) but is now $400 per class. However, an applicant may pay a reduced filing fee of $225 if they file a complete application using the USPTO’s TEAS Plus form, file certain communications regarding the application through TEAS, and agree to receive electronic communications concerning the application according to TMEP Section 819. Filing a Notice of Opposition or Petition to Cancel through ESTTA previously cost $300 per class, but now costs $400 per class. Various miscellaneous service fees were also updated, such as removing the previous fee to establish a deposit account. The January changes also includes changes to the paper filing fees.  

February Change 

The second change, enacted on February 17, allows the USPTO to require more proof of use than before to verify the accuracy of claims that a trademark is used in commerce. Specifically, the USPTO “may require the submission of information, exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary for the USPTO to ensure that the register accurately reflects marks that are in use in commerce in the United States for all the goods/services identified in the registrations.” Based on the Department of Commerce’s press release, this will “benefit the public because it will facilitate the USPTO’s ability to assess and promote the integrity of the trademark register by encouraging accuracy in the identification of goods/services for which use in commerce or continued use is claimed.” This will also aid the USPTO in cancelling the registration or marks that either were never used in commerce or are no longer in use.  

This change follows the results of an exhaustive “proof of use” pilot program that was completed in mid-2014, which focused on assessing and promoting the accuracy and integrity of the trademark register. This program involved the random selection of 500 registrations and required the owners to “submit proof of use of their marks for additional goods/services per class, in addition to the one specimen per class submitted with their affidavits, and to verify use of the additional goods/services during the statutory filing period.” 51% of the selections registrations failed to supply the additional proof necessary.  

Overall, the recent changes to the TMEP are aimed at streamlining the application process and ensuring that newly registered marks are strong and actually in use. By lowering the filing fee for filing using the TEAS Plus form and agreeing to receive electronic communications, the USPTO is incentivizing faster, greener application processes. Requiring additional proof of a mark’s use in commerce will allow the USPTO to conduct a more thorough screening process of new marks, which in turn benefits consumers by providing more clarity with regards to the source of commercial goods.  

**Nothing herein is intended to be legal advice and does not create an attorney-client relationship.

We understand that the confusion or “Fog of Litigation” can cause anxiety. It is understandable that clients are overwhelmed when faced with trying to understand the law, how the facts apply to the law and whether damages may be recoverable. We are here to help navigate the fog of litigation and reduce anxiety by explaining the process and working with clients to form a comprehensive litigation strategy. 

**Nothing herein is intended to be legal advice and does not create an attorney-client relationship.

Intellectual Property (IP) owners need to construct barriers to protect their trademarks and copyrights by registering them with the United States Patent and Trademark Office (USPTO) or United States Copyright Office. Thereafter, they must watch for possible copyright infringements or trademark innfringements and take action through the Courts or through the USPTO Trademark Trial and Appeal Board (TTAB) to protect the intellectual property.

In today’s ever-changing marketplace, intellectual property is becoming more and more an integral part of everyday business. Working to create strategies to develop, protect and increase the value of a businesses’ intellectual property is increasingly more important to its bottom line. Intellectual property can add value to the business, serve as collateral for loans, generate streams of revenue through licensing royalties and provide a competitive edge in this fast-paced and complex economy. 

For Defendants facing allegations of trademark Infringement or copyright Infringement, they must also construct defensive barriers against such allegations. Thus, we help Defendants strategize and construct strong defensive barriers. For more information on how we can help protect your intellectual property see our practice areas or for immediate assistance call or contact us.

**Nothing herein is intended to be legal advice and does not create an attorney-client relationship.

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