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5 Trends to Watch in 2021 for Trademark & Brand Management

  1. Trademark Modernization Act – The bipartisan Trademark Modernization Act of 2020, passed by Congress on December 21, 2020, is intended to bolster the United States Patent and Trademark Office’s (USPTO) initiatives to ensure the accuracy and integrity of the Trademark Register. The Act invites interested parties to scrutinize use claims within trademark applications and registrations through an augmented letter of protest procedure and two new types of post-registration challenge –ex parte expungement proceedings (after the third anniversary of the registration date) and petitions for re-examination. The Act also resolves a circuit split regarding the requisite irreparable harm showing necessary for trademark-related injunctive relief by codifying a rebuttable presumption of irreparable harm for trademark violations. All eyes will be on the USPTO’s and federal court system’s implementation of the new Act and the efficacy of the new procedures.

  2. U.S. trademark applications filed by Chinese applicants – According to reports, nearly half of new U.S. trademark applications are filed by Chinese applicants, and an appreciable number of these applications are believed to rely on doctored photographs to demonstrate actual use of the applied-for mark. While the USPTO has enacted procedures to combat specious use claims, some of these procedures have proven onerous on U.S.-based applicants as well. Likewise, the high volume of China-based applications has lengthened examination times and created obstacles to the bona fide adoption and registration of marks by U.S.-based applicants. Trademark practitioners will closely follow the USPTO’s procedural efforts to accept bona fide China-based applications, reject fraudulent China-based applications, and minimize disruption to U.S. applicants.

  3. Marijuana and CBD brand management strategy – Notwithstanding the proliferation of legal marijuana and CBD products being sold within many states and the growing value of associated brand names, the USPTO has consistently refused to register brands used for marijuana products (under the Controlled Substances Act) and brands used for ingestible CBD products (under the Federal Food, Drug, and Cosmetic Act). In 2021, the pressure will grow on the USPTO to delicately balance the lawful commerce requirement for federal registration with the consumer protection goals of the Lanham Act.

  4. Impact of consumer perception on trademark registrability – On June 30, 2020, the U.S. Supreme Court held that B.V. was entitled to register BOOKING.COM as a service mark for travel accommodations even though BOOKING was a generic term, because consumers perceived BOOKING.COM in its entirety as a trademark, not as a generic designation. Owners of similar marks are now incentivized to seek or re-seek registration of their marks, and will be watching how the USPTO, including the Trademark Trial and Appeal Board, implements the Supreme Court’s decision and evaluates new applications for generic-dot-com marks. Creative trademark counsel will also be looking for opportunities to apply the Supreme Court’s emphasis on consumer perception in the In re decision to attempt to reverse the USPTO’s growing trend of issuing and affirming failure-to-function registration refusals without an underlying examination record of genericness.

  5. The U.S. Supreme Court’s forthcoming Arthrex decision and the effect, if any, on the Trademark Trial and Appeal Board (TTAB) – Most trademark registration disputes (either between an applicant and an examiner or an applicant and an interested third party) are resolved by the Trademark Trial and Appeal Board (TTAB), which describes itself as “a neutral body that functions like a court for trademark matters at the USPTO.” In 2021, the U.S. Supreme Court will decide whether the Patent Trial and Appeal Board’s (PTAB) judges may continue to be appointed by the Secretary of Commerce rather than appointed by the President with the advice and consent of the Senate. If the Supreme Court holds that the PTAB’s judges have been improperly appointed, that may lead to a challenge of the TTAB’s judges as well, which would have a seismic effect on proceedings related to trademark registration.

About the Authors

Susan Heller is chair of Greenberg Traurig, LLP’s Global Trademark and Brand Management Group. She helps her clients monetize and optimize their critical IP assets through strategic and creative positioning, management, and enforcement of their worldwide trademark, copyright and domain name portfolios, and extensive collateral product licensing.

Joel Feldman is vice chair of Greenberg Traurig, LLP’s Global Trademark and Brand Management Group. He creates bespoke brand management strategies for some of the world’s famous brands and zealously protect those brands against wrongdoers.

Candice E. Kim is a member of Greenberg Traurig, LLP’s Global Trademark and Brand Management Group, and oversees the group’s thought leadership initiatives. She counsels clients on trademark prosecution, licensing, enforcement, and TTAB opposition and cancellation proceedings, with an emphasis on global brand expansion and management through strategic trademark filing, protection, and enforcement programs.

Stephen Baird is a member of Greenberg Traurig, LLP’s Global Trademark and Brand Management Group, and oversees the group’s strategic business development initiatives. He protects companies’ most important brands and other intellectual property assets by designing efficient, creative, tailored legal strategies to advance their most important business objectives.