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Examination Updates

Examination Updates. Sharon R. Marsh Deputy Commissioner for Trademark Examination Policy April 2011. Disclaimer Practice. Section 6 of the Trademark Act The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable

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Examination Updates

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  1. Examination Updates Sharon R. Marsh Deputy Commissioner for Trademark Examination Policy April 2011

  2. Disclaimer Practice • Section 6 of the Trademark Act • The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable • No disclaimer… shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter, or his right of registration on another

  3. Disclaimer Practice • About two-thirds of new applications receive an Office action • There is a disclaimer requirement in 30% of first Office actions • Of the one-third of applications that do not require an Office action, many times a disclaimer is entered by Examiner’s Amendment

  4. Disclaimer Practice • Canada • Australia • United Kingdom • Israel

  5. Disclaimer Practice • TMEP § 1213 • 1213.05 “Unitary” Marks • 1213.05(a) Compound Word Marks • 1213.05(a)(i) Telescoped Words • 1213.05(a)(ii) Compound Words Formed with Hyphen or Other Punctuation • 1213.05(b) Slogans • 1213.05(c) “Double Entendre” • 1213.05(d) Incongruity • 1213.05(e) Sound Patterns • 1213.05(f) Display of Mark • 1213.05(g) Marks with Design Elements Replacing Letters

  6. Disclaimer Practice • LIGHT ‘N LIVELY for reduced calorie mayonnaise: unitary • LEAN LINE for low calorie foods: not unitary • SEARS BLUE SERVICE CREW for retail store services: unitary • ZOGGS TOGGS for clothing: not unitary

  7. Disclaimer Practice Principal Register – Disclaimer of NUTRITION Principal Register – Disclaimer of KIDS Disclaim "BANKERS ASSOCIATION" on Principal Register under Section 2(f) or on Supplemental Register Disclaim “LEMONS” and the pictorial representation of the lemon on the Principal Register under Section 2(f) or the Supplemental Register

  8. Grade or Model Designations • TMEP §1202.16 • Subject matter used solely as a model, style, or grade designation within a product line does not function as a trademark

  9. Grade or Model Designations In re Burco, Inc., Ser. Nos. 78-140350, 78-140375 (TTAB 2005)

  10. Grade or Model Designations See Saab-Scania Aktiebolang v. Sparkomatic Corp., 26 USPQ2d 1709, 1712 (TTAB 1993) (stating in an opposition proceeding that although the mark is a model designation, it is also used in the manner of a trademark).

  11. New TMEP Collaboration Tool

  12. International • Standing Committee on Trademarks • Trademarks and the Internet • Madrid Working Group • Nice Agreement • 10th edition of Nice Classification

  13. Statements of Use • Amendments to Allege Use • May be withdrawn prior to approval of a mark for publication 37 C.F.R 2.76(h) • Statements of Use • Cannot be withdrawn 37 C.F.R 2.88(g) • One “insurance” extension may be filed during the 6-month period in which the SOU is filed, but total extension time cannot exceed 36 months from the issuance of the Notice of Allowance 37 C.F.R 2.89(e)(1)

  14. Statements of Use • By maximizing use of the “insurance extension,” the applicant can have a period of almost a year after the statement of use is filed to create, use, and file substitute specimens, or otherwise perfect the statement of use. • http://www.uspto.gov/trademarks/notices/maximizing_corrected.jsp

  15. Statements of Use • January 1, 2011....... Notice of Allowance issues • July 1, 2011.……….. applicant files first extension request • July 2, 2011……. applicant files the statement of use • July 23, 2011…. Ex Atty issues Office action • January 1, 2012...applicant files insurance extension • January 23, 2012..applicant files a Response to the Office action, stating that an insurance extension request has been filed, and that amended use dates and a new specimen will be submitted • February 1, 2012..Ex Atty issues a final refusal; applicant has until August 1, 2012 to file a new specimen with dates of use that are not later than July 1, 2012 

  16. gTLDs • ICANN meetings • Applications at the USPTO .art .eco .athens .golf .baby .kids .bank .movie .books .music .buy .tix .casino .vote

  17. Letters of Protest • Filed by third party • Protester cannot contact the Examining Attorney directly • Letters of Protest are not created by the Trademark Act or Regulations • Policies and procedures are set by the office

  18. Purpose • To bring facts relevant to the registrability of the mark to the attention of the Office • Intent is to achieve this without causing unnecessary delay in the examination process or compromising the objectivity of the ex parte examination process • See In re BPJ Enterprises, Ltd., 7 USPQ2d 1375 (Comm’r Pats. 1988)

  19. Standards • Before publication: the evidence is relevant and may support any reasonable ground for refusal appropriate in ex parte examination • After publication: clear error; the evidence establishes a prima facie case for refusal of registration

  20. Post Publication • Generally must be filed within 30 days of publication • See In re BPJ Enterprises, 7 USPQ2d 1375 (Comm’r Pats. 1988) • Exceptions are made only in unusual circumstances, where the protestor could not have obtained the information earlier • Litigation not filed until after 30 days following publication • Evidence of descriptiveness did not arise until after 30 days following publication See, In re G. Heileman Brewing Co., Inc., 34 USPQ2d 1476 (Comm’r Pats. 1994)

  21. Letter of Protest Statistics • Total filed FY 2008 = 878 • Total filed FY 2009 = 998 • Total filed for FY 2010 = 1005 • About 40% of filings resulted in further action by the Examining Attorney

  22. Subject Matter • Must relate to issue that can be prosecuted to its legal conclusion by the Examining Attorney in the course of ex parte examination • Most common issues are likelihood of confusion, descriptiveness, and pending litigation

  23. Opposition Period • Does not stay or extend the opposition period • Requests for extension of time to oppose • Motions to suspend the opposition

  24. Recourse after Denial of LOP • No request for reconsideration of denial of Letter of Protest • Protestor may file a petition to the Commissioner for review of the Administrator’s decision under 37 C.F.R. §2.146(a)(3) • Standard of review is clear error or abuse of discretion. • No new evidence may be submitted with petition.

  25. Copies of LOPs • Any party may request a copy of a Letter of Protest

  26. Thank You • Questions? • sharon.marsh@uspto.gov • www.uspto.gov

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