Experts from Birch, Stewart, Kolasch & Birch, LLP (BSKB) and Haseltine Lake LLP (HL) were invited to speak at a joint seminar organized by Top Team on November 28, 2018. They presented a variety of topics including the “Trademark Use in Commerce” requirement and the Post Registration Proof of Use Audit Program in the US; Brexit’s Impact on EU trademarks and designs, and an Update on EPO’s Guidelines for Examination.
Robert J Kenny, the senior partner of BSKB, began with the concept of “trademark use in commerce”, the basis for establishing and maintaining trademark rights in the US. He explained the use requirement at different business stages, covering the intent-to-use, extension of international registration and other possible filing/registration bases, as well as the declarations of use under section 8 and section 71. Kenny used real-world examples to demonstrate what constitutes an acceptable specimen of use. He also gave practical suggestions on how to avoid trademark conflicts before the actual use day of a trademark.
The next speaker Michael T. Smith, the Inside Counsel of BSKB, focused on the Post Registration Proof of Use Audit Program, which was officially launched in November 2017 by the USTPO. He talked about the background of the audit program. In July of 2012, the authority began randomly selecting 500 registrations for which owners had filed six-year declarations of use (Section 8 or 71 affidavits of continued use). Those owners were asked to submit proof of use for at least two additional goods or services per class.
It turned out that 253 of the selected registrations (51%) were not able to verify the previously claimed use. 175 (35%) of the registrations had goods and/or services removed; and 80 (16%) were canceled in their entirety because the registrants didn’t even respond. The program improved the integrity of the trademark register by allowing the USPTO to cancel audited registrations with unsubstantiated use claims or remove unsupported goods and services from others and later made the new Post-Registration Proof of Use Pilot Program permanent last November. Smith also shared his opinion about how to respond to the audit under different scenarios.
The following topics were presented by two partners of Haseltine Lake LLP (HL). As everyone knows, the UK and EU have agreed a Brexit deal in November. If the deal is passed by the UK Parliament and signed before the exit day (March 29, 2019), there will be a transition period, extending to the end of 2020, for the UK to enact and implement the supporting legislation. If it’s not, EU law will cease to apply on 29 March 2019, i.e., EU trade marks and designs will be no longer in effect in the UK.
On the base of the 585-page draft withdrawal agreement and the “No-Deal” guidance released earlier, Mr. Michael Conway talked about the Brexit effect on EU trademarks and Registered Community Design (RCD), such as the potential risks, exhaustion of rights, key differences in practice between the UK and EU, cross-border trade and custom procedure, etc. He also offered useful suggestion for how to maintain the continuity of protection of granted trade marks and RCDs.
Later on, Dr. Daniel Chew provided an update on the EPO Guidelines for Examination released in November 2018. He stressed the importance of familiarity with the guidelines which set out the day to day practice for examiners and enable patent attorneys to understand how an examiner is likely to approach an issue. Because, in his observation, examiners refer to case law quoted only in the guidelines. He also briefed the audience the key changes to the former edition.
Jia Lin, the attorney at law of Top Team, shared about invalidation cases involving the “well-known” trademarks in Taiwan and overseas. She recapitulated the related Supreme Administrative Court ruling, decided in 2017, in which the definition, Likelihood of Confusion and Dilution of “well-known” trademarks prescribed in Trademark Act §30(1)(11) were further clarified. She also spoke about different academic opinions and the possible amendment to the Act.
BSKB has been providing a full range of intellectual property law services to clients since 1976 and now become one of the top five IP law service firms in the United States. Its knowledgeable attorneys and agents are particularly experienced in the fields of chemistry, electronics and IT, mechanical engineering and life sciences/biotechnology. Robert J. Kenney has achieved a personal record as the attorney of Trademark Records (surpassing 5000 trademark applications and registrations in USPTO) this July. Michael T. Smith has practiced in the intellectual property field since 2001, focusing on patent prosecution, trademark litigation and other inter partes matters.
Haseltine Lake was established in 1850 and it is now widely regarded as one of the major IP law firms in Europe, with offices in Bristol, London, Glasgow, Munich, Sittard-Geleen, and Guangzhou. Michael Conway leads the firm’s Designs Group and regularly advises clients on registered and unregistered design matters and he speaks English, German and Spanish with basic competence in Mandarin. As a registered UK and European Patent attorney, Dr. Daniel Chew has a PhD degree in mobile and satellite communications and specializes in electronic patent matters, particularly in mobile and communications systems inventions.
