• Rule Changes Impact Trademarks
  • August 11, 2017 | Authors: Lawrence D. Coppel; Marjorie A. Corwin; Christopher R. Rahl
  • Law Firm: Gordon Feinblatt LLC - Baltimore Office
  • Recent rule changes at the United States Patent and Trademark Office (PTO) can create peril for an inattentive trademark owner or secured party. In its effort to become paperless, the PTO has revised certain rules and has taken it upon itself to serve papers where a trademark application is being opposed or a trademark registration is being cancelled. The PTO uses the address of record as filed with the PTO. Previously, the parties seeking to oppose an application or cancel a registration were responsible for serving process. But if the address is wrong, the trademark owner will not know that its mark is being challenged. The PTO's failsafe is to publish a notice of opposition or cancellation in its Official Gazette, but many trademark owners and lienholders do not regularly survey this weekly PTO publication and may miss the opportunity to protect their trademark application or registered trademark. If the owner does not receive the notice of the opportunity to fight against an opposition or cancellation, the trademark registration will be nullified, and the inattentive party will lose its valuable rights of trademark registration. The important point to remember is that trademark owners should be certain that their address listed on the records of the PTO is current. If a trademark has been assigned, or the owner has moved, the owner should update its address at the PTO promptly. For a lienholder where registered trademarks are part of the collateral, the loan or lien documents should create an affirmative obligation on the borrower to keep all registration information current. For more information concerning this topic, please contact Ned Himmelrich.