The United States Patent and Trademark Office (USPTO) seeks input and guidance through public advisory committees. Members serve a three-year term. (Trademark Public Advisory Committee (TPAC) | USPTO; Patent Public Advisory Committee (PPAC) | USPTO). The Committees were created by statute in the American Inventors Protection Act of 1999 to provide advice on the management of the patent and the trademark operations, review of the policies, goals, performance, budget and user fees of the patent and trademark operations, respectively, and advise the director on these matters. As the acting USPTO Director Derrick Brent stated, "The Patent and Trademark Public Advisory Committees are vital in helping our agency advance innovation, with PAC members serving as fierce advocates for the immense value of intellectual property protection in our society and strengthening our service to all stakeholders.”
Members typically have professional experience with the USPTO and represent a wide range of industries. Many different careers and backgrounds are represented. Current members for the patent and the trademark public advisory committees include representatives from companies such as IBM, The Estee Lauder Cos., Mattel, Cruise, Briston Myers Squibb, Schneider Electric, Alt Legal, ExploraMed Development, Cisco Systems and UL Solutions as well as lawyers from Elgion IP, Pattishall McAuliffe Newbury Hilliard & Geraldson, Knobbe Martens Olson & Bear and Loeb & Loeb along with professors or instructors at Howard University School of Law, University of Arizona, The George Washington University Law School, University of North Carolina School of Law. Appointments to the Public Advisory Committees are made by the Secretary of Commerce.
If you are interested, see the following link for information regarding the nomination process and requirements: Public Advisory Committees | USPTO.
Victory for Universities and Sport Teams
Trademark fans and sport teams have been keeping an eye on the Middle District of Pennsylvania; specifically, they have been watching a dispute between Pennsylvania State University (Penn State) and Vintage Brands, an online retailer of merchandise featuring designs and images sourced from vintage sports memorabilia, such as old tickets or pennants, that are in the public domain.
Vintage Brand has been involved in similar litigation in the past, but those cases settled before verdict. This case involving Penn State presented the first opportunity for a jury to answer a hotly-contested issue: can trademark law provide protection of iconic names and imagery or is such protection only provided when the names and imagery are used as a brand identifier? In this case, the brand owner Penn State had a robust and well-enforced licensing program, thereby providing strong factual support in its claim of economic and reputational harm. Vintage Brand argued that the imagery and design merely evidence support for Penn State not that Penn State had authorized the gear and that its disclaimers were effective and dispelling any connection. The verdict came in for Penn State on Nov. 19, 2024. The jury, rejecting nominative fair use and aesthetic functionality, found willful infringement of Penn State’s trademarks such as the name, seal and lion logos. Based on sales of 1,269 infringing products, the jury awarded the University $28,000 in compensatory damages.
This case is only one of many examining ornamental use and trademark law. Other courts, including one in the Northern District of Texas involving Baylor University and Vintage Brands, have taken conflicting approaches. Given the split in legal authority across the circuits, it is likely that there will be additional legal developments.
More Changes at the USPTO
In addition to the filing fee increases, effective Jan. 18, 2025, and discussed in detail here, USPTO Increasing Trademark Filing Fees Effective Jan. 18, 2025, the USPTO is also changing how you file. While available for the last six months as an optional way to file, beginning Jan. 18, 2025, the Trademark Center will become the sole way to apply for a trademark registration. You can click here Trademark Center beta is here | USPTO, for instructions and a summary of the changes. Parsons’ intellectual property attorneys are available if you have any questions regarding the upcoming changes. Please reach out.
Margaret McGann is a shareholder with more than 20 years of experience in trademark law and applying it to brand development, maintenance and enforcement. With a strong team of experienced paralegals and associates, she can efficiently serve both your simple and complex trademark needs and help you ascertain those needs. To discuss the preceding information or related topics, call (801.532.1234) or send an email to mmcgann@parsonsbehle.com.
