1 / 5

Trademark Prosecution Luncheon

Trademark Prosecution Luncheon. May 15, 2014. USPTO. April 2014 version of TMEP published – clarifications/ revisions regarding: Trade dress examination gTLD marks Examples of unacceptable statements in describing a mark or disclaimer, e.g. can’t exclude a color that isn’t in the drawing

cody-johnson
Download Presentation

Trademark Prosecution Luncheon

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

E N D

Presentation Transcript

  1. Trademark ProsecutionLuncheon May 15, 2014

  2. USPTO • April 2014 version of TMEP published – clarifications/ revisions regarding: • Trade dress examination • gTLD marks • Examples of unacceptable statements in describing a mark or disclaimer, e.g. can’t exclude a color that isn’t in the drawing • Partial abandonment treatment • Filing multiple assignments with the same execution date – requires manual review • others

  3. USPTO Proposes Fee Reductions – Really! • Fee reductions if efiling is used AND if Applicant authorizes email communications • Regular app - $325  $275/class (“TEAS Reduced Fee”) • Teas Plus - $275  $225 • Renewal - $400  $300 • Paper fee unchanged • Written comments due by June 23rd

  4. FRANKNDODD (not by Shelley) • M&F applied to register FRANKNDODD for  “Providing legal information relating to legislation • refused b/c identifies living individuals – REVERSED: • combines surnames into single expression, used by media to refer to the “Dodd-Frank Act”, not individuals • “FrankNDodd” or “FrankenDodd” is not a recognized nickname • proposed mark reverses order of names and adds “N,” resulting in negative allusion to “Frankenstein” monster, • relevant consuming public would understand “FrankNDodd” refers to “Dodd-Frank Act” • In re Morrison & Foerster LLP, 110 USPQ2d 1423 (TTAB 2014)

  5. Opposition Estoppel? • “Courts give preclusive effect to the final determinations of an administrative agency so long as the agency was acting in a judicial capacity and resolved issues of fact properly” C&N Corp. v Kane, 953 F.Supp.2d 903 (E.D. Wis. 2013) • But see B&B Hardware, Inc. v. Hargis Indus., 716 F.3d 1020 (8th Cir. 2013) – TTAB Decision not binding because “it ignores a critical determination of trademark infringement, than being the marketplace usage of the marks and products.”

More Related