Developments in Trademark and Copyright Process and Procedure - McDermott

2023 IP Outlook: Developments in Trademark and Copyright Process and Procedure


Throughout 2022, the procedural rules of the US Patent and Trademark Office (PTO) and the newly formed Copyright Claims Board (CCB) underwent several developments. The PTO outlined a new administrative process for addressing fraudulent trademark submissions, shortened the response time for trademark office actions and tested procedural rules for the Trademark Modernization Act. Meanwhile, the US Copyright Office issued new rules that govern CCB procedure. These developments should help businesses obtain intellectual property protection more efficiently in 2023.

In Depth

Under its new guidelines, the PTO can now sanction suspicious trademark filings based on an investigation triggered by information from examining attorneys, data analytics or internal sources. The PTO appears to be capitalizing on this new power and has already sanctioned three entities, which are controlled by one company and collectively defrauded more than 5,500 trademark applicants.

Looking ahead: This new process aims to protect small entities from exploitation during the filing process and will likely help larger corporations avoid trademark trolls.

In implementing the Trademark Modernization Act, the PTO shortened the response time for office actions from six months to three months, except for post-registration office actions and office actions for Madrid Protocol applications. The change in response time went into effect on December 3, 2022.

Looking ahead: With this change, the trademark application process will be significantly shortened. Businesses can expect to see the registration of their mark happen at a faster pace.

The PTO tested its new procedural rules for expungement and reexamination under the Trademark Modernization Act. Since its implementation in December 2021, the PTO has received more than 130 petitions under these new rules, and at least 50 proceedings have been initiated. The new procedures are significantly less costly than traditional PTO proceedings and, if they continue to operate successfully, offer a cost-effective way to get a quick decision on canceling a mark.

Looking ahead: Corporations can expect to spend less time and money on fighting to cancel unused marks in pursuit of their own registrations.

The Copyright Office also clarified the procedural rules for the CCB, an administrative forum for copyright claims seeking up to $30,000 in damages. The CCB saw significant use in 2022, with at least 150 cases filed. The Copyright Office detailed how companies can designate agents, how libraries can opt out of CCB proceedings, how law students can represent clients in the CCB, and how the CCB will handle cases referred from a district court. These procedural rules were implemented in June 2022 when the CCB began hearing cases.

Looking ahead: Corporations should be aware that although CCB proceedings can be instituted against them, they may opt out and choose to litigate in a federal district court instead.