Candace Smith & Lindsay Burley: New Trademark Rules May Help Farmers Selling Under Their Own Brand

New Trademark Rules May Help Farmers Selling Under Their Own Brand

Candace Smith & Lindsay Burley Steptoe & Johnson, PLLC

A trademark can be an important asset for any business, including cattle farmers and producers, selling under their own brand. This month, the Trademark Modernization Act (TMA) will become effective and should prove favorable to farmers who wish to register their own brands with the U.S. Patent and Trademark Office (USPTO). In general, registration of brand names and logos used on goods and services with the USPTO helps prevent other businesses from using the same or substantially similar logos. The length of time trademark registrations can remain on the USPTO’s Principal Register, however, may unfairly prevent other people from branding their businesses as they wish, especially if the registered trademarks are not in use. Currently, owners of registered trademarks are required to file a Declaration of Use and/ or a Declaration of Excusable Nonuse to the USPTO between the fifth and sixth years after the registration date, between the ninth and tenth years after the registration date, and every ten years after that. With each maintenance filing or renewal, a registrant must submit proof of use of the mark accompanied by a sworn statement that the mark is still being used with the goods or services named in the registration. The goal of these requirements is to free up unused marks so that others can register them. However, the problem with the current system is that it allows an unused mark to remain registered (and off limits for other business) for nearly a decade. The TMA offers two additional tools designed to address this problem by simplifying the removal of such trademarks. The first tool, ex parte reexamination, allows any party to petition for reexamination of a registered trademark on the basis that the mark was not actually in use in commerce or in connection with some or all of the goods or services covered by the registration on or before the relevant date. In other words, an individual who wants to use a registered trademark can challenge the registration by showing the trademark owner was not actually using the mark as the owner claimed in the trademark application. The second tool the TMA offers to address this problem is ex parte expungement. This process allows individuals to file a petition for expungement to the Director of the USPTO after three years of registration on the basis that the mark was never used in commerce or in connection with the goods or services listed in the registration. With this petition, the individual must also submit a verified statement stating that he or she conducted a “reasonable investigation” that the mark was not used. The Director will review the petition and decide whether to institute an expungement proceeding. Registering and protecting a trademark can be difficult. An attorney can help you with the initial trademark registration to ensure your business has a trademark or logo that represents your brand. If the trademark that you want to use is already registered, an attorney can help you determine if an ex parte reexamination or ex parte expungement process could help you get quicker access to the mark. Alternatively, an attorney can also help you protect your trademark if someone claims you have not sufficiently used your registered trademark.

These materials are public information and have been prepared solely for educational purposes. These materials reflect only the personal views of the authors and are not individualized legal advice. It is understood that each case is fact-specific, and that the appropriate solution in any case will vary. Therefore, these materials may or may not be relevant to any particular situation. Thus, the authors and Steptoe & Johnson PLLC cannot be bound either philosophically or as representatives of their various present and future clients to the comments expressed in these materials. The presentation of these materials does not establish any form of attorney-client relationship with the authors or Steptoe & Johnson PLLC. While every attempt was made to ensure that these materials are accurate, errors or omissions may be contained therein, for which any liability is disclaimed.

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