IP Blog

The United States Patent and Trademark Office (“USPTO”) recently announced that it has canceled more than 100,000 unused goods and services from federal trademark registrations. Generally, this means that many registration records listed goods and services the owner was not selling or otherwise using in commerce, and those listings may have stood in the way of others seeking to register a trademark. With those listings gone, there is more room for businesses that are actually using their marks in commerce.

The cancellations were accomplished through two types of proceedings established by the Trademark Modernization Act, each addressing a different defect. In an expungement proceeding, the registration may be canceled in whole or in part where the evidence shows that the mark has never been used in commerce with some or all of the goods or services listed in the registration. In a reexamination proceeding, the question is whether the mark was in use in commerce as of the relevant date, which is determined by the filing basis of the underlying application. Once either of these proceedings is instituted, the registrant may rebut with evidence of use or voluntarily delete the challenged goods or services.

According to the USPTO, the volume of these cancellations has more than doubled in just over a year. Therefore, Registrants should audit their trademark registration portfolios, and work with counsel as necessary to consider whether any issues/defects require immediate attention or should instead be addressed the next time a maintenance or renewal filing is due for the registration.

At the same time, these types of proceedings are an opportunity for applicants seeking to register a trademark. A registration blocking a new application may cover goods or services the registrant never offered. In that situation, an applicant may seek to institute an expungement or reexamination proceeding. The fees associated with these procedures may be significantly lower than those of a cancellation proceeding before the Trademark Trial and Appeal Board. Accordingly, where a clearance search reveals a blocking registration with a suspiciously broad identification, these proceedings are worth evaluating with counsel, before an applicant abandons a preferred mark or accepts a narrowed identification.

The Firm routinely conducts trademark clearance searches, prosecutes federal trademark applications, and can represent both petitioners and registrants in ex parte expungement and reexamination proceedings.

About the Author: Victor Bruzos is a Registered Patent Attorney and Of Counsel at Malloy & Malloy, P.L. His practice concentrates on patent and trademark prosecution, including trademark clearance, federal and foreign trademark applications, and proceedings before the Trademark Trial and Appeal Board. He prosecutes patent applications across artificial intelligence, software, electronics, medical devices, biotechnology, and defense technologies, and also handles copyright and trade secret matters. Mr. Bruzos is available to meet with clients in the firm’s Boca Raton and Miami offices, as well as in Jacksonville, Orlando, and Tampa.

A plaintiff with a trade secret claim is often put in the precarious position of deciding when to bring its claim, balancing considerations of statutes of limitations issues with sufficient pre-filing investigation. The Federal Circuit recently clarified that waiting to obtain enough facts to prove (versus plausibly allege) a trade secret claim can be fatal to the claim itself.

In Insulet Corp. v. EOFlow, Co., 176 F.4th 1347 (Fed. Cir. 2026), the court faced a scenario where competing companies designed and manufactured adhesive, wearable insulin patch pumps. As with many trade secret claims, the case involved the hiring of Plaintiff’s employees by the Defendant and allegations of misappropriation for the benefit of their new employer. As it relates to the timing of bringing the action, Plaintiff alleged these actions occurred between March and May 2018, but waited to bring suit until August 2023 despite a three-year limitations period.

Both parties moved for summary judgment on the limitations issue. The district court agreed with Plaintiff that the Merck standard applied, i.e., that the statute begins to run when a plaintiff actually discovered or should have discovered the underlying facts. Defendant had argued for an “inquiry-notice” standard, i.e., that the limitations period begins to run when the plaintiff or a reasonably diligent plaintiff would have begun an investigation that would allow it to discover facts of misappropriation.

The Federal Circuit reversed. In a divided decision, the Federal Circuit agreed with Defendant. Essentially, the court held that a plaintiff may rely on circumstantial evidence to establish access to the trade secrets and similarities between those secrets and the accused product. Ruling that Plaintiff had sufficient knowledge to make its allegations of misappropriation in at least March 2019, the Federal Circuit held that the limitations period expired and reversed the district court’s decision, including a significant jury award and entry of permanent injunction.

Based on this ruling, parties should contact experienced intellectual property counsel upon learning of a possible trade secret misappropriation.

Zac Davis is an intellectual property attorney at Malloy & Malloy whose practice primarily focuses on intellectual property litigation and disputes. He also assists clients with trademark and copyright prosecution matters, in addition to helping protect their valuable trade secrets. Mr. Davis is based in the firm’s Miami office, but is available to meet clients in any of the firm’s offices in Miami, Boca Raton, Jacksonville, Orlando, or Tampa.

Recently, some public figures have been exploring trademark law as a potential tool to protect distinctive aspects of their voice and likeness from unauthorized AI-generated uses. In particular, trademark filings for “sensory” marks by Matthew McConaughey for his iconic “ALRIGHT ALRIGHT ALRIGHT” phrase (e.g., Reg. No. 8,070,191), and by Taylor Swift for recognizable spoken phrases and imagery (e.g., Serial No. 99/784,980) illustrate how celebrities are attempting to use trademark registrations to strengthen protection against misuse of their identities. As AI technology continues to evolve, such trademark strategies may become an avenue not only for entertainers, but also for other prominent individuals seeking to control commercial uses of their voice and likeness.

Cleo Suero is an intellectual property attorney at Malloy & Malloy. Her practice focuses on protecting and enforcing intellectual property rights, with experience spanning trademark and copyright prosecution, disputes, litigation, and related agreements. Ms. Suero is available to consult with clients in the Firm’s Miami office.

A trademark application is reviewed by a U.S. Patent and Trademark Office (“USPTO”) Trademark Examining Attorney on a variety of grounds, but most notably on whether there is a conflict with a prior-registered mark.  A §2(d) refusal – so named because of the applicable section of the Lanham Act – is a determination that the applied-for mark may not be registered because it “so resembles a mark [previously] registered” that it is “likely to cause confusion, or to cause mistake, or to deceive.”  That decision, however, is based on many subjective factors, including the similarity of the marks in appearance, sound, connotation, and commercial impression, the similarity (or relatedness) of the goods or services under the marks, the similarity of the channels of trade, the strength of the prior-registered mark, and many others.

A recent article by The TTABlog® reported an affirmance rate of approximately 86% for 2026 thus far for §2(d) refusals of trademark applications on appeal to the Trademark Trial and Appeal Board (“TTAB”).  This around 4% lower than the 90% affirmance rate seen last year. If refused, a trademark applicant may appeal to the TTAB, and these most recent statistics suggest around a 14% chance of reversing the §2(d) refusal.

Given the tremendous deference that the TTAB gives to the mostly-subjective opinion of an individual USPTO Examining Attorney in issuing a §2(d) refusal, trademark searching prior to filing a trademark application continues to be extremely valuable, often providing an experienced trademark attorney with valuable information about how best to tailor a trademark application to be more likely to avoid this type of refusal in the first place.

Kelly Malloy is a Registered Patent Attorney and assists with a wide range of Intellectual Property and Franchise matters from the firm’s Miami office. Ms. Malloy’s practice heavily focuses on trademark portfolio management, at the core of which is trademark prosecution. She routinely responds to Office Actions issued by the U.S. Patent and Trademark Office (“USPTO”) against trademark applications, including refusals on the basis of likelihood of confusion under Section 2(d) of the federal Lanham Act. She also assists clients with trademark clearance, trademark applications, foreign trademarks, trademark licensing, and franchising, in addition to patent and copyright matters.

When a USPTO Examining Attorney takes the position that a mark is merely descriptive of an applicant’s goods or services and issues a refusal on that basis, the applicant normally has an opportunity to submit arguments and evidence in support of registration directly to the Examining Attorney. If unsuccessful, the applicant may seek review of the Examining Attorney’s refusal(s) before the TTAB. However, recent statistics suggest that there is less than a 10% chance of reversing a refusal based on mere descriptiveness.

A recent article by The TTABlog® reported an affirmance rate of over 90% for 2026 thus far for refusals of trademark applications on appeal to the Trademark Trial and Appeal Board (“TTAB”) due to mere descriptiveness based on Section 2(e)(1) of the federal Lanham Act. This is slightly higher than historic rates for recent years. For example, in 2024, the TTAB affirmance rate for refusals based on Section 2(e)(1) was just under 88%.

In general, the law discourages the registration of terms that merely describe an ingredient, quality, characteristic, function, feature, purpose, or use of a trademark applicant’s applied-for goods or services because, e.g., competitors may have the right to use such wording to describe their goods or services.

Given the technical and nuanced issues that can arise during the trademark application process, experienced intellectual property counsel should be consulted and engaged to assist with the process.

Kelly Malloy is a Registered Patent Attorney and assists with a wide range of Intellectual Property and Franchise matters from the firm’s Miami office. Ms. Malloy’s practice heavily focuses on trademark portfolio management, at the core of which is trademark prosecution. She routinely responds to Office Actions issued by the U.S. Patent and Trademark Office (“USPTO”) against trademark applications, including refusals on the basis of mere descriptiveness under Section 2(e)(1) of the federal Lanham Act. Her clients include small to medium-sized businesses as well as large corporations, major universities, and non-profit organizations.

USPTO Director John Squires has been active since taking office, including through recent precedential and Director Review decisions shaping Patent Trial and Appeal Board (PTAB) practice.

In a recent informative decision involving Tesla, the USPTO allowed several inter partes review (IPR) petitions to proceed against patents directed to vehicle gear selection control technology. Notably, the Office applied recent Director guidance concerning discretionary denial and found that Tesla’s U.S. manufacturing activities weighed in favor of allowing the IPRs to proceed.

The decision reflects an emerging focus under Director Squires on the relationship between PTAB proceedings, domestic industry, and American manufacturing. For patent owners and accused infringers alike, the development serves as a reminder that evidence concerning U.S. manufacturing, domestic investment, and related commercial activity may now play an increasingly important role in PTAB strategy.

Tyler J. Litwak is an intellectual property attorney at Malloy & Malloy whose practice includes patent, trademark, copyright, trade secret, and related dispute matters. He assists clients with U.S. and international IP protection, enforcement, infringement issues, and IP-focused agreements, and is available to meet with clients in the Firm’s Miami, Boca Raton, and other South Florida offices.

Fender, one of the world’s largest musical instrument manufacturers, has reignited attempts to protect its Stratocaster guitar body style, which has seen countless iterations and “homages” over its seven-decade existence. In recent memory, Fender attempted to enforce copyright and trade dress rights in the United States, which was largely unsuccessful, and resulted in other manufactures continuing to offer “S-Type” guitar bodies similar to the Stratocaster.

Recently, however, Fender successfully obtained a default judgment in a German regional court that recognized copyright in and to the Stratocaster guitar body style. Seeking to capitalize on this, Fender reportedly sent cease-and-desist letters to several manufacturers regarding the copyright status of the Stratocaster in Germany. This led Thomann, one of Europe’s largest guitar manufacturers, to file the equivalent of a declaratory judgment action in German federal court, in which it seeks a decision that the Stratocaster is not actually subject to copyright protection, in order to resolve the dispute.

The case is in its early phases, and Fender has not yet responded.

The Firm routinely assists its clients in similar matters of copyright and trade dress infringement, and has experience overseeing and managing international disputes, including in Europe.

W. John Eagan is a Boca Raton-based Registered Patent Attorney with Florida Bar board certification in intellectual property law, and has experience in matters of patent and trademark prosecution and litigation, along with international portfolio management.  He is also available to meet with clients in the firm’s Miami, Tampa, Orlando, and Jacksonville offices

International franchisors with business interests in Mexico should take notice that new regulations to the country’s Federal Law for the Protection of Industrial Property were published recently in its Official Gazette of the Federation. These new regulations, which take effect on July 22, 2026, include important updates to franchise disclosure requirements in Mexico.

One of the primary updates to these requirements is the extent of substantive information available to prospective franchisees in the Franchise Disclosure Document (“FDD”), which is a detailed document provided to prospective franchisees prior to the engagement of a franchisor-franchisee relationship. The total number of disclosure requirements will increase from ten (10) to fourteen (14), providing for the franchisor’s disclosure of supplemental financial, demographic, as well as business structure and history-related information, among other data.

Franchisors with Mexican FDDs should review and update their materials prior to this date.

Kelly M. Malloy handles franchise matters from the Miami office of Malloy & Malloy. She routinely drafts franchise agreements and franchise disclosure documents as part of setting up franchise models for new franchisors.  In addition, she represents prospective franchisees as they consider joining other franchise systems to advise on the contractual commitments and negotiate terms.  Ms. Malloy also has an extensive trademark practice involving trademark searches and trademark application in the United States and around the world.  Beyond that, she is a registered patent attorney with a substantial technology practice conducting patent searches and filing patent applications.  Ms. Malloy is available to meet with clients in the firm’s offices in Miami, Boca Raton, Jacksonville, Orlando, and Tampa.

The Federal Circuit, which has exclusive jurisdiction over appeals in patent litigation, recently issued a precedential ruling expounding on the factors that may be considered in determining entitlement to an award of attorney fees under Title 35 of the United States Code.  The trial case comprised an infringement lawsuit brought under a patent that had already been partially invalidated in an inter partes review (“IPR”).  In addition to dismissing the action and imposing sanctions against the plaintiff’s counsel, the Southern District of Florida awarded the defendant attorney fees under 35 U.S.C. § 285 (“Section 285”), which provides for fees to the prevailing party in an “exceptional” patent case.

In reversing the award, the appellate court held the rationale used by the district court to be “legally deficient or inadequately supported by the record.”  In particular, the Federal Circuit noted that even a meritless lawsuit on its own may not be “not legally sufficient” to trigger fees under Section 285.  The defendant’s other bases (i.e., the plaintiff’s loss at the IPR, other failed lawsuits brought under the same patent, and the possible existence of a license allowing the defendant to practice the invention) also failed to convince the Federal Circuit, particularly given the lack of a supporting record. As such, the court reversed the award of fees.  With this ruling designated as precedential, the bar for attorney fees in patent litigation remains high.

Max Matiauda is an intellectual property lawyer and Registered Patent Attorney at Malloy & Malloy’s Miami office.  He regularly represents clients throughout Florida in patent infringement litigation and other patent disputes, as well a broad range of intellectual property matters, including patent searches, patent applications, trademark searches, trademark applications, trademark litigation, and other intellectual property disputes.