Litmus Law PLLC

A Royal Mistake? Meghan Markle, Duchess of Sussex and a budding entrepreneur, has seemingly made a series of missteps in conjunction with choosing the right trademark to represent her brand.?She has faced barriers at the USPTO and has been publicly criticized in her attempts to adopt a trademark to represent her crown jewel: her lifestyle brand. Markle originally filed a vast number of trademark applications for AMERICAN RIVIERA ORCHARD. However, this mark inevitably received a geographic descriptiveness refusal by an Examiner at the USPTO, as “American Riviera” is a known nickname for the city of Santa Barbara, California. To make matters worse, the mark was also considered to be potentially confusingly similar to the already existing mark ROYAL RIVIERA.?The owner of the ROYAL RIVIERA registrations allegedly filed a letter of protest against Markle’s AMERICAN RIVIERA ORCHARD mark. Perhaps due to the tumultuous situation with AMERICAN RIVIERA ORCHARD, Markle has launched a rebrand using AS EVER, with a logo including a palm tree and two birds. However, the AS EVER mark, particularly its logo, has also created conflict. Markle has now been publicly accused of copying the coat of arms of the Spanish town Porreres by the town’s mayor, who is threatening to sue. In addition, there are multiple existing brands already operating under the name AS EVER, particularly a well-known clothing brand.?All of this could cause trouble for Markle in the attempt to register her trademark (in addition to the social media uproar). This series of “royal” mistakes highlight the importance of conducting a search before filing trademark applications to identify all potentially problematic third parties, as well as strategically evaluating how the mark will be perceived to the public. Failing to do your due diligence to investigate potential barriers in the process of registering your trademark(s) could lead to a royal headache. #USPTO #Trademark #IP #IntellectualProperty

We are happy to announce that Janice Housey will be hosting a second Table Topic at the INTA 2025 Annual Meeting in San Diego! ? The second topic for which Janice will be a Table Topics Moderator is “Let’s Navigate Together: Is an IR Always the Best Ticket?” held at the following date/time: ? Wednesday, May 21: Lunch 1:00 pm - 3:00 pm (PST) ? We hope to see you at INTA 2025 in San Diego! ? ? #INTA #Trademark #IP #IntellectualProperty

We are excited to announce that Janice Housey will be a Table Topics Moderator at the INTA 2025 Annual Meeting in San Diego! ? If you’ve never attended a Table Topic at the INTA Annual Meeting, they are a great opportunity to expand your knowledge in a particular IP topic, as well as expand your trademark network. ? Janice will be the Table Topics Moderator for the topic “Reclaiming Tribal Power: IP Strategies for Combatting Cultural Appropriation,” held at the following date/time: ? Tuesday, May 20: Breakfast 8:00 am to 10:00 am (PST) ? We hope to see you at INTA 2025 in San Diego! #INTA #Trademark #IP #IntellectualProperty

Should I Represent Myself before the Trademark Trial and Appeal Board? …… Probably Not. The Trademark Trial and Appeal Board ("TTAB") is more informal than federal court and only has the power to decide registrability of trademarks, although the implications of a TTAB decision on the merits can be more far-reaching.?The TTAB Manual of Procedure is a well-developed guide to practice before the TTAB.?Therefore, it may be tempting to forego legal counsel and handle a matter pro se.?However, this is usually a mistake.?The rules that govern trademark proceedings are complex, the Federal Rules of Civil Procedure and the Federal Rules of Evidence are (mostly) applicable, and there are a number of strategy points, dates to track, and other legal considerations.?While the Board may grant some leniency to pro se parties, the Board will expect such parties to understand the rules and meet deadlines.?Critically, there is no authority for the TTAB to waive statutory requirements. In a recent case handled by Litmus Law, the Registrant chose to defend itself via its principal in connection with a TTAB cancellation action.?While this Defendant was able to file an Answer to the Petition, join the required discovery conference (with the participation of a TTAB interlocutory attorney), and even attempted a Motion for Summary Judgment, the legal hurdles proved to be insurmountable.?While focused on the cancellation action, Defendant allowed its registration at issue to be cancelled by the USPTO for failure to file a required maintenance document.?Therefore, the challenged registration which was blocking our client’s application was cancelled and the bar to registration based upon Defendant's registration was removed, thus Litmus Law’s client’s application will be allowed to proceed in due course. #USPTO #Trademark #IP #IntellectualProperty

The next installment of Litmus?Law’s?webinar?series is entitled?“Strategies for New USPTO Application Fees.” We hope you can join us for this 30-minute session to discuss the impact of the USPTO fee changes on new applications.?We will review how these changes may impact new filings and our strategies and tips for filing new applications that may help you or your clients to control costs amid the new surcharges. ? The webinar will be held virtually on Microsoft TEAMS at the following dates and times: ? January 16, 2025 at 7 a.m.?(Eastern time) ? January 27, 2025 at 9 a.m.?(Eastern time)? ? If you are interested in attending, please contact Katie at [email protected] for more information or to get the TEAMS invite. You may wish to attend both if you would like a greater understanding of the changes, as the first one will be right before the fee changes (which come into effect January 18) and the second one will be after we have had a little experience with the changes. Also, if you would like to be added to our mailing list so that you can be notified of future webinars, let us know! ? If none of these times are convenient and four or more people at your organization are interested, please contact Katie at [email protected] to schedule a private webinar session at a time of mutual convenience. ? ? #USPTO #Trademark #IP #IntellectualProperty

Happy Holidays to all of Our Clients and Colleagues! We would like to take a moment to express our gratitude to our colleagues and clients. Despite all of the challenges at the U.S. Trademark Office this year, our clients have helped us to remain grounded throughout it all.?We also want to reaffirm that our commitment to providing consistent and excellent service is unwavering. We truly appreciate our clients navigating this complex time with us! The holiday season is also the perfect time to prioritize giving back and serving your community. We at Litmus Law had the opportunity to participate in a local “Angel Tree” program earlier this month, in which we provided presents to children of families that could not afford gifts for the holidays. We encourage you to also share ways you have enriched the holidays. We are grateful to everyone with whom we have had the pleasure to work in 2024, and we hope to follow you into the next! #USPTO #Trademark #IP #IntellectualProperty

With the coming of a new year, it is a good time for reflection.?Several months ago, Litmus Law conducted a client survey in hopes of gaining client feedback. While attorneys often believe that they know what clients want/should want, we wanted to know what actually matters the most to our clients and how we are addressing these needs. We are pleased to report the following particularly notable results:? - 100% of respondents would recommend Litmus Law to others. - 100% of respondents are satisfied or extremely satisfied as a client of Litmus Law. - Respondents consistently positively rated the value of services offered for the fees charged. - Respondents favorably ranked Litmus Law on the following qualities in particular: responsiveness, expertise in U.S. intellectual property law, and reliability. - Litmus Law has already implemented 1 change as a result of comments made on the survey. Litmus Law values your feedback on how we can work to improve our practice. If you did not have a chance to respond to the survey or have further comments and would like to send us your feedback, we always welcome the same. #USPTO #Trademark #IP #IntellectualProperty

It’s official – the USPTO’s proposal to increase trademark fees has been released and will take effect on January 18, 2025. These changes will increase many trademark fees and has the potential to dramatically increase fees for new applications. ? The increase in the filing fees for new applications is difficult to predict, as the USPTO has revealed that there will be 19 examination points (e.g., mark description, translation of mark, ownership of prior registrations, consent of an individual) that can trigger deficiency surcharges of $100 PER CLASS. You can find the full list of these datapoints at https://lnkd.in/ekstnPgP. These fees are in addition to the fees for not using the pre-approved goods and services list. The base application fee will be $350 per class.?However, not using the pre-approved goods/services found in the ID Manual will cost applicants $200 per class, and any recitation containing non-approved goods/services exceeding 1000 characters will be $200 per class for EACH group of 1000 additional characters. ?It is noteworthy that the “character count” includes spaces and punctuation! The pre-approved list can be found at https://lnkd.in/dBuSKJq. ? If you are considering filing a new application, we strongly recommend that you do so immediately to avoid these surcharges. For applications after January 18, we strongly advise using the USPTO’s Trademark ID Manual to avoid incurring significant additional charges and asking for our Memo containing further information about the surcharges. For maintenance documents, the official fees for renewals will increase from $525 per class to $650 per class. The official fees for a Declaration of Continued Use will increase from $225 per class to $325 per class. The optional Declaration of Incontestability will increase from $200 per class to $250 per class. As such, if the maintenance period has already opened for your trademark registration, or will open before January 18, we recommend filing your maintenance documents as soon as possible to avoid these fee increases. ? For detailed information and strategy considerations, please ask for our USPTO Fee Changes & Filing Strategies Memo, which will also be in the Client Section of the Litmus Law website. ? #USPTO #Trademark #IP #IntellectualProperty #TrademarkFees

Happy Thanksgiving from Litmus Law! ? In?the U.S., we?are getting ready to?celebrate the Thanksgiving holiday by taking the time to reflect?and express gratitude. ? We wanted to take a moment to express?how truly grateful we are for our clients. From each of us at Litmus Law, thank you for entrusting us to be your legal professionals. We?appreciate being?the firm that you?have?selected to handle your trademark needs! ? Litmus Law is committed to offering our clients excellent service this holiday season (just as we hope to do all year round)! ? #Trademarks #IP #IntellectualProperty

We finally have a brief update regarding the USPTO’s proposal to increase trademark fees that was announced earlier this year. ? As a reminder, the USPTO proposed to substantially increase trademark fees in fiscal year 2025, which were originally supposed to take effect as early as October 1, 2024. The fees are expected to rise as much as 400% (and on average around 50%). We now know that these fee adjustments are still predicted, but there is still not an exact date chosen that they will be instituted. According to the Trademark Assistance Center, the USPTO expects to finalize and publish the final rule on the trademark fee adjustments in the coming months. We expect that there will be at least 60 days notice before the increases are effective. ? This is one more reason to initiate any filings that you may be considering early. This may be particularly relevant for maintenance filings, if the period has opened or will open shortly.?Once the new fees are announced, there is likely to be a flurry of activity, particularly if the fees are rising by as large a percentage as expected. We will keep you updated! ? #USPTO #Trademark #IP #IntellectualProperty #TrademarkFees