Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board
The United States Patent and Trademark Office (USPTO or Office) published a request for comments in the Federal Register on October 20, 2020, seeking public comment on considerations for instituting trials before the Office under the Leahy Smith America Invents Act (AIA). Through this document, the USPTO is extending the period for public comment until December 3, 2020.
Trademark Fee Adjustment
The United States Patent and Trademark Office (Office or USPTO) is setting or adjusting certain trademark fees, as authorized by the Leahy-Smith America Invents Act (AIA), as amended by the Study of Underrepresented Classes Chasing Engineering and Science Success Act of 2018 (SUCCESS Act). The changes will allow the USPTO to continue to recover the prospective aggregate costs of strategic and operational trademark and Trademark Trial and Appeal Board (TTAB or Board) goals (based on workload projections included in the USPTO fiscal year (FY) 2021 Congressional Justification), including associated administrative costs. They will also further USPTO strategic objectives by better aligning fees with costs, protecting the integrity of the trademark register, improving the efficiency of agency processes, and ensuring financial sustainability to facilitate effective trademark operations. USPTO has weighed carefully current economic conditions and the potential hardship that the fee increase could create for businesses and individuals. The Office paused development of the fee rule because of uncertainty about the economy earlier this year. The latest economic data point to continued recovery in many sectors of the economy. Because of this and the relatively small annual cost to businesses and individuals from USPTO's trademark applications and maintenance fees, the Office has decided to finalize the fee rule for implementation in January 2021.
Secondary Trademark Infringement Liability in the E-Commerce Setting
On January 24, 2020, the Department of Homeland Security (DHS) released its Report to the President of the United States titled ``Combating Trafficking in Counterfeit and Pirated Goods'' (DHS Report). The report responded to the April 3, 2019, Presidential Memorandum titled ``Memorandum on Combating Trafficking in Counterfeit and Pirated Goods'' (Presidential Memorandum). Among the action items identified in the DHS Report was action 9, titled ``Assess Contributory Trademark Infringement Liability for E-Commerce.'' In order to implement this action item, the United States Patent and Trademark Office (USPTO) is seeking information from intellectual property rights holders, online third-party marketplaces and other third-party online intermediaries, and other private sector stakeholders, on the application of the traditional doctrines of trademark infringement to the e-commerce setting. More specifically, the USPTO seeks input on the application of contributory and/or vicarious trademark infringement liability (secondary infringement liability) to e-commerce.
Sovereign Immunity Study
At the request of Senators Thom Tillis and Patrick Leahy, the United States Patent and Trademark Office (USPTO) is undertaking a study of the extent to which patent or trademark rights holders are experiencing infringement by state entities without adequate remedies under state law, and the extent to which such infringements appear to be based on intentional or reckless conduct. The USPTO seeks public input on these matters to assist in preparing the study.
International Trademark Classification Changes
The United States Patent and Trademark Office (USPTO) issues this final rule to incorporate classification changes adopted by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement). These changes are listed in the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), which is published by the World Intellectual Property Organization (WIPO), and will become effective on January 1, 2021.