We have highlighted some of the notable developments in the Trademark protection world in 2023.

If you require more information or have any questions on any of the points highlighted, please do not hesitate to reach out using the contact details provided below.

Meanwhile, your trademark is federally protected and gives you the right to stop any unauthorized use of the same name in the entire country.

Proposal to Increase Trademark Fees

On May 8, 2023, the United States Patent and Trademark Office (USPTO) issued a proposal to increase all Trademark related fees.

According to this proposal, the basic Trademark Application fee will move from $250 to $350 and most of the other fees will increase by about 20% – 100%.

If approved, these new fees may come into effect by November 2024.

Trademark Datasets

On July 11, 2023, USPTO released the 2022 updates to the Trademark Case Files Dataset and The Trademark Assignment Dataset.

The Trademark Case Files Dataset contains detailed information on 12.1 million trademark applications filed with or registrations issued by the USPTO between January 1870 and February 2023 and the Trademark Assignment Dataset contains 1.29 million trademark assignments, involving 2.28 million unique trademark properties, recorded by the USPTO between March 1952 and January 2023.

Classification of Goods and Services

On August 2, 2023, USPTO issued a final rule to incorporate the 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).

The USPTO is revising § 6.1 of 37 CFR part 6 to incorporate classification changes and modifications, as listed in the Nice Classification (12th ed., ver. 2024), published by WIPO.

A notable modification is the class heading for Class 3 which is aligning the English class heading with the French class heading as follows:

 “cleaning, polishing, scouring and abrasive preparations” is replaced with “cleaning, polishing and abrasive preparations.”

This rule is effective on January 1, 2024.

Trademark Manual Examining Procedure (TMEP)

On November 3, 2023, The USPTO released the November 2023 version of the Trademark Manual of Examining Procedure (TMEP).

The TMEP contains guidelines for examining attorneys and outlines the procedures that examining attorneys are required to follow in the examination of trademark applications.

The 2023 TMEP version supersedes prior versions and some of the changes includes, the examination procedures for reviewing domicile addresses, when and how to apply for the issuance of a registration certificate in the name of an assignee or in an applicant’s new name, when to assign companion applications, the circumstances under which an action may be suspended etc.

A complete listing of the changes is provided by the USPTO in the “Index to Changes in TMEP November 2023” document.

Trademark Search System

The USPTO introduced a new cloud-based Trademark Search system with basic and advanced search options, finally retiring the old Trademark Electronic Search System – TESS in November 30, 2023.

Trademark Litigation

The United States Supreme Courts handed down some notable decisions in a couple of Trademark cases, like Abitron Austria GmbH et. Al v Hetronic International and Jack Daniels v VIP.

Particularly, on June 8, 2023, the Supreme Court issued a unanimous ruling In Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023). Dismissing Jack Daniel’s argument on the Roger’s case, found Jack Daniel’s Trademark was used by VIP as an identifier of source and therefore infringed on Jack Daniel’s Trademark. This is despite the fact that VIP used the Trademark as a Parody.

VIP Products LLC, produced a dog toy, “Bad Spaniels” shaped similarly to the Jack Daniel’s whiskey bottle and label, but had the inscription “Old No. 2 on your Tennessee carpet”. Instead of Jack Daniel’s “Old No. 7 Brand Tennessee Sour Mash Whiskey”.

This decision is a big win for brand owners. It gives them the ability to fully harness the benefits of their Trademarks by limiting unauthorized use in the marketplace.

GV Legal PLLC – www.gv-legal.com – connect@gv-legal.com  –  + 1 212.210.1693

Moji Onabanjo –  mojisola@gv-legal.com