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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

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Trademark Prosecution Luncheon

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  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.”

  6. Patent ProsecutionLuncheon May 15, 2014

  7. Conflict of Interest • Baker Botts is being sued for malpractice by Axcess International - $50M • Axcess hired Baker Botts to draft patent applications for RFID technology • Baker Botts also represented Savi Technology • Axcess International and Savi are competitors in the RFID industry

  8. Conflict of Interest • Baker Botts did not tell Axcess that it represented Savi • Axcess claims that Baker Botts’ either didn’t check for conflicts or should have realized the conflict sooner • Axcess could have gotten broader claim coverage if it had different counsel

  9. Conflict of Interest • Baker Botts argues that it was not obligated to tell Axcess about its representation of Savi • There can never be a conflict of interest in straight patent prosecution because it is not an adversarial process

  10. Electronic Priority Document Exchange (PDX) Participating Countries in PDX • United States (USPTO) • European Patent Office (EPO) • Japan (JPO) • Korea (KIPO) • World Intellectual Property Organization (WIPO) WIPO Digital Access Service (DAS) • International Bureau • Spain • United Kingdom • Australia • Finland • Denmark • Sweden • China

  11. Problems • Issues with USPTO retrieving electronic versions of certified copies • China has not been issuing certified copies of foreign applications after 16 months past filing

  12. Do I file a bypass continuation application or national phase application? • Foreign priority country is not part of the PDX • Recommended to file a regular US national phase application (35 USC 371) • Do not need certified copies of foreign priority documents

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