Once the patent application is filed, we wait for the first office action on the merits. This is when the USPTO Examiner substantively reviews the patent application. Now, the Patent Office has updated the First Office Action Estimator. After entering the patent application serial number, the estimator will provide an estimate for a first office action to be issued (e.g., 30 months). The estimate is not guaranteed but is a good general timeframe for patent applicants to gauge expectations.
Setting expectations for first office review timing is important for the applicant. First, if the expectation is too long, there are options to accelerate the review of a patent application. The most common option is to pay an increased filing fee where the patent office will review the application approximately six months from the filing date of the application, and the target is to either grant or issue a final (second) rejection by the one year anniversary of the filing date. Another option to accelerate the patent office review are petitions to make special, the basis of which may include: applicant’s age (over 65), health, prospective manufacture, infringement, and environmental quality (to name a few). It is critical to be accurate in these petitions as they are often used as grounds to try and invalidate patents during litigation.
Second, if an applicant becomes aware of a potential infringement of the patent application proposed claims (as written), the applicant can preserve its provisional rights. Although similar in name to a provisional patent application, provisional rights are unrelated. If an applicant sends notice to the potential infringer of the published patent application, and the claims are in substantially the same form at issuance, applicant preserves its provisional rights and may be able to secure damages from the notice date, as opposed to when the patent issues.
Third, knowing when a patent will issue is important if the applicant is aware of infringement of the invention covered by the patent claims. A patent infringement lawsuit can only be filed once the patent issues. Often, once a patent application receives a Notice of Allowance, the applicant and its attorneys can start preparing a federal complaint for patent infringement, if infringement is occurring. Once the issue fee is paid, the applicant (soon to be patent holder) will be prepared to file its lawsuit in federal court on the day the patent issues.
For questions about your invention or the patent application/litigation process, please contact Greg Popowitz and the Intellectual Property team at Assouline & Berlowe PA.
The Eleventh Circuit, in a case of first impression, clarified that in Georgia, which may have similar exemptions for garnishments in other states in the circuit (including Florida), a Roth IRA is exempt from the bankruptcy estate.
The 11th Circuit held:
As noted above, a debtor’s property is excluded from his bankruptcy estate pursuant to federal law if: (1) the debtor has “a beneficial interest in a trust”; (2) the interest has a restriction on transfer; and (3) the restriction is enforceable under either state or federal law. See § 541(c)(2); Upshaw, 542 B.R. at 622. Roth IRAs meet all three requisite elements. No one contests that, just like a traditional IRA’s corpus, a Roth IRA’s corpus qualifies as a beneficial interest in a trust. And, pursuant to both the 2006 and the 2016 amendments to the exemptions provision, Roth IRAs have a restriction on transfer that is enforceable under state law. The Bank offers no viable reason why Roth IRAs should not be treated like traditional IRAs in the context of bankruptcy estate exclusion. In re: TIMOTHY RUSSELL HOFFMAN, Debtor. TIMOTHY RUSSELL HOFFMAN, Plaintiff-Appellant, v. SIGNATURE BANK OF GEORGIA, Defendant-Appellee., No. 20-12823, 2022 WL 203415, at *4 (11th Cir. Jan. 24, 2022)
Eric N. Assouline, Esq.
ASSOULINE & BERLOWE
Full opinion downloaded from Westlaw below:
2022 WL 203415
Only the Westlaw citation is currently available.
United States Court of Appeals, Eleventh Circuit.
In re: TIMOTHY RUSSELL HOFFMAN, Debtor.
TIMOTHY RUSSELL HOFFMAN, Plaintiff-Appellant,
SIGNATURE BANK OF GEORGIA, Defendant-Appellee.
Appeal from the United States District Court for the Northern District of Georgia D.C. Docket No. 3:19-cv-00095-TCB
*1 Appellant-Debtor Timothy Hoffman appeals the district court’s affirmance of the bankruptcy court’s order granting Appel-lee-Creditor Signature Bank of Georgia’s (the Bank) objection to Hoffman’s claimed bankruptcy estate exemptions. The Bank ob-jected to Hoffman’s claimed exemptions of various retirement accounts. The bankruptcy court granted the Bank’s objections as to Hoffman’s Roth Individual Retirement Accounts (IRA), concluding that Roth IRAs—unlike traditional IRAs and 401(k) accounts—are not excluded from bankruptcy estates. The district court affirmed the bankruptcy court’s order.
This appeal presents an issue of first impression for this court: Are Roth IRAs excluded from Georgia debtors’ bankruptcy estates pursuant to federal law? Because we answer the question in the affirmative, we reverse the district court’s affirmance of the bankruptcy court’s order and remand for further proceedings con-sistent with this opinion.
Timothy Hoffman is a retired U.S. Air Force Colonel and private pilot. Hoping to help his son-in-law pursue his dream of opening a restaurant, Hoffman guaranteed a loan of approximately $432,000 with the Bank. The restaurant ultimately failed, resulting in Hoffman defaulting on his loan from the Bank and filing for Chapter 7 bankruptcy.
In his bankruptcy schedules, Hoffman disclosed an interest in the following retirement accounts: (1) Traditional IRA, (2) Roth Conversion IRA, (3) Roth Contributory IRA, and (4) Fidelity 401(k). Hoffman claimed all of the accounts as exempt on his bankruptcy Schedule C.1
The Bank filed an objection in the bankruptcy court to Hoffman’s claimed exemptions, asserting that his retirement accounts either were not qualified retirement plans or did not otherwise qualify as exempt. In reply, Hoffman maintained that all of his retirement accounts are legally exempt. Specifically regarding the Roth IRAs, Hoffman asserted that they either were excluded from the estate pursuant to 11 U.S.C. § 541(c)(2), or, if not excluded, were exempt under O.C.G.A. § 44-13-100(a)(2)(E).2 As to exclusion, Hoffman argued that Georgia’s revised garnishment statute applies to Roth IRAs. Accordingly, Hoffman contended that the court should revisit precedent analyzing a prior version of Georgia’s garnishment statute—a version that applied only to traditional IRAs.
The bankruptcy court entered a final order overruling the Bank’s objections as to Hoffman’s traditional IRA and 401(k) account but sustaining the objections as to Hoffman’s two Roth IRAs. Regarding Hoffman’s Roth IRAs, the bankruptcy court acknowl-edged that Georgia’s garnishment statute underwent an expansive overhaul but noted that there appeared to be no recent authority addressing the contention that Roth IRAs should be excluded under § 541(c)(2).3
*2 Hoffman appealed the bankruptcy court’s ruling that the un-distributed funds in his Roth IRAs are not excluded from his bankruptcy estate. The district court agreed with the bankruptcy court’s assessment, declining to rule otherwise on an issue of first impression. Hoffman timely appealed.
This appeal requires us to determine what is properly included in, and excluded from, the property of a bankruptcy estate. After a careful review of the record and with the benefit of oral argument, we reverse the ruling of the district court. Statutory interpretation as well as the development of caselaw in this area con-vince us that IRAs—whether they be traditional IRAs or Roth IRAs—are excluded from the bankruptcy estates of Georgia debtors pursuant to the Bankruptcy Code and Georgia’s garnishment statute. This conclusion follows naturally from the applicable law and statutory amendments, an overview of which we provide be-low.
We act as a second court of review in bankruptcy appeals, independently examining the factual and legal determinations of the bankruptcy court and applying the same standard of review as the district court. In re Brown, 742 F.3d 1309, 1315 (11th Cir. 2014). When, as here, the district court affirms the bankruptcy court’s order, we consider the bankruptcy court’s decision directly. Id. Because the sole issue in this case is a pure question of law—the proper construction and interpretation of the Bankruptcy Code—we conduct a de novo review. See In re Meehan, 102 F.3d 1209, 1210 (11th Cir. 1997).
The Bankruptcy Code provides that property of a bankruptcy estate includes “all legal or equitable interests of the debtor in property as of the commencement of the case.” 11 U.S.C. § 541(a)(1). The Code, however, “excludes from the bankruptcy estate property of the debtor that is subject to a restriction on transfer enforceable under ‘applicable nonbankruptcy law.’ ” Patterson v. Shumate, 504 U.S. 753, 755 (1992) (quoting § 541(c)(2)). “[A]pplica-ble nonbankruptcy law” has been interpreted to include “any relevant nonbankruptcy law”—whether it be federal or state law. Id. at 759.
On appeal, Hoffman contends that his Roth IRAs should be excluded from his estate pursuant to 11 U.S.C. § 541(c)(2). Section 541(c)(2) provides that “[a] restriction on the transfer of a beneficial interest of the debtor in a trust that is enforceable under applicable nonbankruptcy law is enforceable in a case under this title.” Thus, a debtor’s property is excluded from his bankruptcy estate pursuant to § 541(c)(2) if three elements are met: (1) the debtor has “a beneficial interest in a trust”; (2) the interest has a restriction on transfer; and (3) the restriction is enforceable under either state or federal law. See id.; see also In re Upshaw, 542 B.R. 619, 622 (Bankr. N.D. Ga. 2015).
The relevant state law here is the exemptions provision of Georgia’s garnishment statute, O.C.G.A. § 18-4-6 (exemptions provision). Georgia’s current exemptions provision provides that “[c]ertain earnings or property” may be exempt from the process of garnishment. Id. § 18-4-6(a)(1). One such example of exempt property concerns funds from an IRA: “Funds or benefits from an individual retirement account or from a pension or retirement program shall be exempt from the process of garnishment until paid or otherwise distributed to a member of such program or beneficiary thereof.” Id. § 18-4-6(a)(2).
*3 We have found that the prior version of the exemptions provision, § 18-4-22(a),4 “clearly constitutes ‘applicable nonbankruptcy law’ ” and that the prohibition on garnishment is an enforceable restriction on transfer for the purposes of 11 U.S.C. § 541(c)(2). See Meehan, 102 F.3d at 1211–12. We therefore concluded that an IRA established under 26 U.S.C. § 408—a traditional IRA—is excluded from a debtor’s estate under § 541(c)(2) because it is exempt from garnishment pursuant to Georgia law. Id. at 1211–14.
At the time that we decided Meehan, traditional IRAs were the only type of IRAs in existence. It was not until the following year, 1998, that Roth IRAs were created with the enactment of 26 U.S.C. § 408A. Section 408A(a) instructs us that “a Roth IRA shall be treated for purposes of this title in the same manner as an individual retirement plan.”
In 2005, eight years after Meehan and seven years after the creation of Roth IRAs, the Bankruptcy Court for the Northern District of Georgia considered whether Meehan’s reasoning should extend to a Roth IRA. See In re Bramlette, 333 B.R. 911, 914 (Bankr. N.D. Ga. 2005). The Bramlette court declined to extend Meehan’s reasoning, finding that Roth IRAs should be included in a debtor’s bankruptcy estate when they were not statutorily exempt from garnishment. Id. The court reasoned that the exemptions provision “applies only to an individual retirement account within the mean-ing of 26 U.S.C. § 408 and Georgia law provides no similar protec-tion for a Roth IRA established under 26 U.S.C. § 408A.” Id.
However, in April 2006—the year after Bramlette was decided—the Georgia Assembly amended the exemptions provision to include IRAs listed under 26 U.S.C. § 408or§ 408A. The amended statute stated that “funds or benefits from an individual retirement account as defined in Section 408 or 408A … shall be exempt from the process of garnishment.” O.C.G.A. § 18-4-22(a) (amended 2016) (current version at § 18-4-6).
A decade later, in 2016, the Georgia Assembly further amended the exemptions provision, now codified at § 18-4-6, to state that “[f]unds or benefits from an individual retirement account … shall be exempt from the process of garnishment.” O.C.G.A. § 18-4-6(a)(2). Georgia’s current exemptions provision thus no longer differentiates between a traditional IRA and a Roth IRA, referring solely to “an individual retirement account.” See id.
We find that the development of the caselaw in this area and the subsequent amendments to the Georgia Code reflect the Georgia Assembly’s intention to clarify that both traditional IRAs as defined in 26 U.S.C. § 408and Roth IRAs as defined in § 408A are exempt from garnishment, thus subjecting IRAs to a restriction on transfer by state statute, see Meehan, 102 F.3d at 1211–12, and mak-ing both types of IRAs eligible for exclusion under the Bankruptcy Code. The current version of the exemptions provision compels this result. By no longer listing the kinds of retirement accounts that are exempt from garnishment, and instead exempting “individual retirement account[s],” there is no basis for us to conclude that Georgia intended to treat traditional IRAs differently than Roth IRAs for the purpose of garnishment. It is undisputable that a Roth Individual Retirement Account, by its very name and defini-tion, is “an individual retirement account.” SeeO.C.G.A. § 18-4-6(a)(2); see also26 U.S.C. § 408A(a) (noting that Roth IRAs shall be treated “in the same manner” as IRAs for the purposes of this title).
*4 As noted above, a debtor’s property is excluded from his bankruptcy estate pursuant to federal law if: (1) the debtor has “a beneficial interest in a trust”; (2) the interest has a restriction on transfer; and (3) the restriction is enforceable under either state or federal law. See§ 541(c)(2); Upshaw, 542 B.R. at 622. Roth IRAs meet all three requisite elements. No one contests that, just like a traditional IRA’s corpus, a Roth IRA’s corpus qualifies as a beneficial interest in a trust. And, pursuant to both the 2006 and the 2016 amendments to the exemptions provision, Roth IRAs have a restriction on transfer that is enforceable under state law. The Bank offers no viable reason why Roth IRAs should not be treated like traditional IRAs in the context of bankruptcy estate exclusion.
We accordingly now hold that Roth IRAs are excluded from a Georgia debtor’s bankruptcy estate pursuant to federal law. The judgment of the district court is therefore reversed, and the case is remanded so that the district court may reverse the order of the bankruptcy court.
One of the many forms a debtor has to complete when filing for bankruptcy is Schedule C: The Property You Claim as Exempt. Schedule C is where debtors list all of the legally exempt property that they want to keep.
The bankruptcy court also found that a Roth IRA is exempt under O.C.G.A. § 44-13-100(a)(2)(E), but only to the extent that it is reasonably necessary for the support of the debtor and his dependents. The court concluded that Hoffman’s Roth IRAs were not exempt under state law, and thus properly included in the estate, because the funds were not reasonably necessary to support him and his wife. Hoffman does not take issue with this alternative finding on appeal. Instead, Hoffman argues only that his Roth IRAs should be excluded from the bankruptcy estate pursuant to federal law (11 U.S.C. § 541(c)(2))—not that they should be exempt under state law (O.C.G.A. § 44-13-100(a)(2)(E)).
The Florida Senate is considering a bill 634, which would allow a court to take judicial notice of information contained in certain mapping websites, subject to objections, which must be overruled unless the court finds, by a preponderance of evidence, “that the material sought to be admitted does not fairly and accurately portray what it is being offered to prove or that it otherwise should not be admitted into evidence under the Florida Evidence Code.
The text of the bill is proposed is currently as follows:
1 A bill to be entitled
2 An act relating to judicial notice; creating s.
3 90.2035, F.S.; authorizing courts to take judicial
4 notice of certain information taken from web mapping
5 services, global satellite imaging sites, or Internet
6 mapping tools upon request of a party; requiring
7 parties who intend to offer such information into
8 evidence to file a notice of intent containing
9 specified information; authorizing parties to object
10 to the admissibility of such information; requiring
11 courts to overrule such objection unless certain
12 findings are made; providing construction; providing
13 an effective date.
15 Be It Enacted by the Legislature of the State of Florida:
17 Section 1. Section 90.2035, Florida Statutes, is created to
19 90.2035 Judicial notice of information taken from web
20 mapping services, global satellite imaging sites, or Internet
21 mapping tools.—
22 (1)(a) Upon request of a party, a court may take judicial
23 notice of an image, map, location, distance, calculation, or
24 other information taken from a web mapping service, a global
25 satellite imaging site, or an Internet mapping tool, if such
26 image, map, location, distance, calculation, or other
27 information indicates the date on which the information was
29 (b) A party intending to offer such information in evidence
30 at trial or hearing must file notice of such intent within a
31 reasonable time, or as defined by court order, which notice must
32 include a copy of the information and specify the Internet
33 address where such information may be inspected.
34 (2)(a) A party may object to the admissibility of the
35 image, map, location, distance, calculation, or other
36 information taken from a web mapping service, a global satellite
37 imaging site, or an Internet mapping tool within a reasonable
38 time or as defined by court order.
39 (b) The court shall overrule the objection unless the court
40 finds by a preponderance of evidence that the material sought to
41 be admitted does not fairly and accurately portray what it is
42 being offered to prove or that it otherwise should not be
43 admitted into evidence under the Florida Evidence Code.
44 (c) If the court overrules the objection, the court must
45 take judicial notice of the information and admit the
46 information into evidence.
47 (3) This section does not affect, expand, or limit
48 standards for any matters that may otherwise be judicially
50 Section 2. This act shall take effect July 1, 2022.
Eric N. Assouline, Esq.
ASSOULINE & BERLOWE, P.A.
Miami - Ft. Lauderdale - Boca Raton
The Florida House of Representatives has a bill pending that may codify the common law tort of tortious interference. The body of the bill is as follows:
1 A bill to be entitled
2 An act relating to unlawful activities under the
3 Uniform Commercial Code-Sales; creating s. 672.617,
4 F.S.; defining the terms “business relationship” and
5 “person”; specifying that it is unlawful for a person
6 to cause a breach or violation of, or the refusal or
7 failure to perform, a lawful contract or intentionally
8 and unjustly interfere with or disrupt a business
9 relationship; authorizing an injured person to bring a
10 civil cause of action; authorizing injunctive relief
11 and specified damages; prohibiting causes of actions
12 from being brought for specified contracts; providing
13 an effective date.
15 Be It Enacted by the Legislature of the State of Florida:
17 Section 1. Section 672.617, Florida Statutes, is created to
19 672.617 Unlawful activities; cause of action; damages.—
20 (1) As used in this section, the term:
21 (a) “Business relationship” has the same meaning as in s.
23 (b) “Person” has the same meaning as in s. 61.503.
24 (2) It is unlawful for any person, by inducement,
25 persuasion, misrepresentation, intimidation, or other means, to:
26 (a) Cause the breach or violation of, or the refusal or
27 failure to perform, a lawful contract by any party thereto; or
28 (b) Intentionally and unjustly interfere with or disrupt a
29 business relationship.
30 (3) Any person injured as a result of a violation of this
31 section may bring a civil cause of action for treble damages,
32 injunctive relief, or any other appropriate relief in law. The
33 court may issue a temporary or permanent injunction to prevent a
34 violation of this section. The issuance of an injunction does
35 not affect the availability of damages under this section. The
36 court shall award a prevailing plaintiff reasonable attorney
37 fees and costs.
38 (4) A civil cause of action may not be brought under this
39 section for the enforcement of a contract under s. 542.335.
40 Section 2. This act shall take effect July 1, 2022.
Notably, the statue provides for treble damages and attorneys’ fees, but only for a prevailing plaintiff.
On January 21, 2022 from 12-1pm EST, the South Palm Beach County Bar Association is presenting a virtual CLE on Gender Identity and Sexual Orientation Discrimination in the Workplace and Beyond. The agenda includes a history of discrimination protection, the case of Bostock v. Clayton County, and how to address employees and customers.
The speakers for the CLE are The Honorable Judge Rand Hoch, William M. Julien, and Tammy K. Fields, Esq.
The Copyright Alternative in Small-Claims Enforcement (CASE) Act of 2020 established the Copyright Claims Board (CCB). The CCB is a new administrative court housed within the United States Copyright Office that is set to go into effect on December 27, 2021. The CCB is designed to provide a cheaper and more efficient venue over federal court to litigate certain copyright infringement claims. The CCB will have three full time judges (a/k/a Copyright Claims Officers) appointed by the Librarian of Congress, with at least two full time attorneys to support their efforts.
The CCB will hear certain civil based copyright claims, counterclaims, and defenses. Examples include infringement claims, declaratory relief actions of non-infringement, and claims for misrepresentation related to a Digital Millennium Copyright Act (DMCA) takedown notice. While the CCB can award monetary damages and help settle claims and counterclaims, the CCB can only rule on copyright infringement claims for underlying copyrighted works that are already registered. This is in line with the Fourth Estate SCOTUS case requiring registration, not merely application, before brining a federal action of copyright infringement. If there is pending federal litigation on the underlying copyright, the federal court would need to grant a stay and permit the CCB to proceed.
Procedurally, the filing party (claimant) must initiate one of more claims for the CCB to review. If in compliance, the CCB will permit the proceeding to move forward. Then the claimant has 90 days to serve the accused infringer (or respondent) with a copy of the filed claim and notice, and file proof of service with the CCB.
Notably, a respondent must affirmatively “opt out” of the CCB proceeding within 60 days after being served or they will have effectively consented to have the case heard before the CCB and lose their right to litigate the case in federal court. If the CCB case proceeds, it is designed to move forward with limited discovery, no formal motion practice, and no in-person hearings. Different than federal court (prior to the pandemic at least), all appearances are virtual using Internet based technology.
The CCB is limited to awarding $30,000 maximum for each proceeding. For claims based on timely registered copyrighted works (i.e. entitled to statutory damages), the claimant is eligible to an award of $15,000 in statutory damages per work infringed, with a total of $30,000 possible in one proceeding (excluding attorneys fees and costs).
In a change from existing law, the CASE Act allows for statutory damages for works not timely registered. In this case, a claimant is only eligible for an award of $7,500 in statutory damages per work infringed, with a maximum of $15,000 in any one proceeding (again, excluding attorneys fees and costs). Prior to the CASE Act, a copyright owner could only recover statutory damages if the works were registered before the infringement started or within three months of publication.
The claimant can also elect to recover actual damages and profits up to $30,000 (excluding attorneys fees and costs), in lieu of statutory damages. Attorneys fees and costs are potentially recoverable, with a cap of $5,000, but only in cases where the opposing party has demonstrated “bad faith”.
Notably, while the CCB cannot consider whether a party infringed a copyright work “willfully” when assessing an award of statutory damages, it can consider whether the party agreed to mitigate the alleged infringing activity as an additional factor when awarding statutory damages.
If you are thinking about initiating a claim before the CCB, or if you have been served with a CCB claim and notice, the attorneys at Assouline & Berlowe are here to assist in your Intellectual Property needs.
As of January 1, 2021, every public employer, contractor, and subcontractor in the State of Florida is required to enroll in and use the E-Verify system in order to verify the identity and confirm the eligibility of all new employees. No public contract can be entered without registering for and using the E-Verify system. See Fla. Stat.§ 448.095
The statute requires that if a covered contractor enters into a contract with a subcontractor, the subcontractor must provide the contractor with an affidavit stating that the subcontractor does not employ, contract with, or subcontract with an unauthorized alien. The contractor must maintain a copy of the foregoing affidavit for the duration of the contract.
The statute requires that any public employer, contractor, or subcontractor who believes in good faith that a person or entity with whom it is contracting has knowingly violated the statute must terminate the contract with the person or entity. In the event a public employer believes in good faith that a subcontractor has violated the statute, but the contractor has complied, the employer must promptly notify the contractor and order the contractor to immediately terminate the subcontractor. The statute expressly states these actions shall not constitute a breach of contract, and any action challenging such a termination must be filed within twenty (20) calendar days of the contract’s termination.
2. PRIVATE EMPLOYERS
Pursuant to this same statute, once an offer of employment is accepted, private employers must also verify employment eligibility for any employee(s) hired after January 1, 2021 (however, if a person is a contract employee retained by a private employer, the private employer must verify the employee’s employment eligibility upon the renewal or extension of his or her contract).
Private employers may either use the E-Verify system or require the new-hire to provide the same documentation that is required by the USCIS on its Form I-9 (Employment Eligibility Verification). Private employers are required to retain such documentation for three (3) years after the initial date of employment.
If a private employer violates the verification requirements, it must provide an affidavit, to the Department of Economic Opportunity stating that:
the private employer will comply with the statute;
the private employer has terminated all unauthorized aliens in this state; and
the employer will not intentionally or knowingly employ an unauthorized alien in this state.
Failure to provide such an affidavit within thirty (30) days of the Department’s Request will result in the appropriate licensing agency suspending all applicable licenses held by the employer until it provides the affidavit. Failure to comply with the affidavit requirements three (3) times within 36 months will result in permanent revocation of all licenses held by the employer specific to the location where the unauthorized alien performed work, or if the employer does not hold a license specific to that location, licenses pertaining to the primary place of business will be revoked.
For any questions, please feel free to contact Labor and Employment Law Attorneys Ellen Leibovitch and Giancarlo Cellini at Assouline & Berlowe.
On December 18, 2021, the Trademark Modernization Act (TMA) goes into effect. What does this mean to brand holders? A lot.
The TMA creates two new ex parte procedures to cancel unused registered trademarks: expungement and reexamination. The purpose of these new procedures is to provide a faster and more efficient process compared to current inter partes cancellation proceedings at the Trademark Trial and Appeal Board (TTAB). Typically, numerous registrations active at the USPTO have either some or all of the services/products listed that are no longer in use. The TMA’s objective is to remove some of this “deadwood” from the trademark register.
For an expungement proceeding, any party may request cancellation of all or some of the goods/services in a registration because they were never used in commerce (a critical requirement under US trademark law). In most cases, the proceeding must be requested between three and ten years from the registration date. For reexamination proceedings, any party may request cancellation of all or some of the goods/services in a use based registration on the basis that the brand was not used for the goods/services before the filing date for an “actual use” application, or the statement of use date for an “intent to use” application. Both these new procedures will be critical for trademark owners to understand so they continue to use their brands, or voluntarily delete unused goods/services from their registration.
Aside from these new procedures, the TMA changes a few existing trademark procedures. First, expungement has been added as a ground in cancellation proceedings, along with the existing grounds for cancellation of non-use and abandonment. Second, a shorter three month period to respond to office actions, down from the prior six month period. After three months, the applicant can request a single three month extension for a $125 filing fee. If there is no response or extension request, the application will go abandoned. The USPTO announced that the implementation of the shortened three month shortened time period for responses has been delayed until December 2022 due to updates to their IT system.
Lastly, the TMA provides statutory authority for the long standing “letter of protest” practice that allows third parties to submit evidence to the USPTO, before registration, that is relevant to a ground for refusal during examination. The TMA provides a two month period for the USPTO to act on a letter of protest, continue the filing fee requirements, and provides that a Director’s decision for a letter of protest is final and non-reviewable.
The TMA will create additional considerations for trademark applicants and registrants as they apply for, and continue to use their brands in commerce. Contact Greg Popowitz and the attorneys at Assouline Berlowe to help navigate through the trademark prosecution process, and any impacts on trademark litigation.