2015 Trademark Updates

Here are some important trademark cases and administrative activity for 2015.

TTAB findings can preclude litigating “likelihood of confusion.” In a dispute over two soundalike trademarks, SEALTIGHT and SEALTITE, the Supreme Court ruled that a finding of likelihood of confusion by the Trademark Trial and Appeal Board (TTAB) could preclude litigating the same issue in court. The judgment of the Eighth Circuit was reversed and the case was remanded for further proceedings. B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. __ (2015).

“Tacking” is a question of fact for jury. “Tacking” occurs when a trademark owner seeking to prove priority (that is, that it was first to use a mark) relies on earlier altered use of the mark to prove first use. In this case, Hana Bank claimed that its use of HANA OVERSEAS KOREAN CLUB could serve as its basis for priority for HANA BANK. At issue was whether tacking was a question of fact for the jury or whether a judge could make the decision. The Supreme Court unanimously held that trademark tacking presents a question of fact appropriate for jury determination. Hana Financial v. Hana Bank, 574 U.S. ___ (2015)

TEAS system reconfigured. The Trademark Electronic Application System reconfigured its application system, lowering some fees and creating a new TEAS application option. Here is the current status of the TEAS system:

An electronic filing is $225 to $325 per class (depending on which filing option you choose); a paper filing—should you prepare a paper application on your own—is $375. Your TEAS options are:

  • TEAS Plus – This is the least expensive approach with a filing fee of $225 per class of goods and/or services. The USPTO also considers this the “strictest” application and requires: (1) payment of the filing fee for all classes listed in the application; (2) an identification of goods and/or services taken directly from the USPTO Trademark ID Manual; and (3) authorization to communicate electronically. If you use TEAS Plus, you must pay an additional fee of $50 per class if, at any time during the examination of the application, the USPTO decides you did not meet the requirements.
  • TEAS Reduced Fee (TEAS RF) - The new TEAS RF filing option has a filing fee of $275 per class. The big difference between it and TEAS Plus is that TEAS RF applicants do not need to select an identification of goods and/or services from the Trademark ID Manual (as well as satisfy a few other TEAS Plus requirements at the time of filing). However, like TEAS Plus, an applicant who files a TEAS RF application but does not satisfy the relevant requirements will be required to submit an additional processing fee of $50 per class of goods or services.
  • TEAS Regular - The TEAS Regular filing option has a filing fee of $325 per class. TEAS Regular applicants have the same requirements as TEAS RF except they don’t have to communicate electronically and don’t have to pay an additional $50 per class if the application does not satisfy the relevant requirements.

Renewal fee reduced. The fee to electronically renew a trademark registration was reduced by $100, to $300 per class of goods/services.

Tenth edition of Nice Classification System. As of January 1, 2015, the Nice Classification, Tenth Edition, version 2015 (NCL 10-2015), became effective. Changes to the class headings and a link to noteworthy changes are available at www.uspto.gov/trademarks/notices/NiceClassSchedule2015.jsp.