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Trademark Review | July 2012
 

Trademark Review | July 2012

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The July 2012 Trademark Review is out! ...

The July 2012 Trademark Review is out!

"New PTO Program Can Require Applicants to Submit Additional Evidence of Trademark Use"

"Update on New Generic Top-Level Domains"

"No 'Can Dew'"

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    Trademark Review | July 2012 Trademark Review | July 2012 Document Transcript

    • VOLUME 2 | ISSUE 3 MARCH 2012 Trademark Review VOLUME 2 | ISSUE 7 JULY 2012New PTO Program Can Require Applicants to Submit AdditionalEvidence of Trademark UseThe USPTO has instituted a two-year pilot program which began June 21, 2012. The PTO will issue a post-registration office actionfor 500 randomly selected registrations requiring additional specimens showing trademark use. The owners of these randomlyselected registrations must respond by the earlier of 6 months from the date of the action or the time remaining for filing thenext maintenance declaration. Responses must include a specimen for at least two additional goods or services covered by theregistration. The PTO will cancel the registration for failure to respond to the action. In addition, the PTO may cancel those goodsand services in the registration for which inadequate specimens are provided. The PTO can also take additional action to requireproof of use of the mark on other goods and services covered by the registration.Update on New Generic Top-Level DomainsICANN has released the list of over 1,900 generic top-level domain name (gTLD) applications. The new gTLDs will allow establishedorganizations to operate their own top-level domain names, expanding top-level domains from the current twenty-two extensions(which include .com, .net and .org) to potentially hundreds more. Almost anything can be registered (such as .internet, .retail,.computer, etc.). The organization controlling the gTLD can be as exclusive as it wishes in determining what second-level domainnames it will allow to be attached to its gTLD. The list of new gTLD applications can be found here: http://newgtlds.icann.org/en/program-status/application-results. The next step in this process will include the opportunity for rights owners to object to anypotential new gTLD that might violate its trademark rights.No “CAN DEW”PepsiCo prevailed on summary judgment that use of the phrase “CAN DEW” on fruit flavored soft drinks would create a likelihoodof confusion with PepsiCo’s MOUNTAIN DEW mark. The Trademark Trial and Appeal Board noted the lack of evidence showingthat “DEW” is not arbitrary when used on the parties’ goods. The Board also noted that although “CAN DEW” may be seen as anovel spelling of “Can Do” there was no evidence that consumers would take it as such, or that it would distinguish CAN DEW fromMOUNTAIN DEW. The Board also relied on the results of PepsiCo’s survey which found that 47.8 percent of those surveyed thoughtthat “CAN DEW” would have been made by PepsiCo. PepsiCo Inc. v. Prirncci, Opposition No. 91187023 (TTAB June 28, 2012). In This Issue • New PTO Program Can Require Applicants • No “CAN DEW” to Submit Additional Evidence of Trademark Use • Update on New Generic Top-Level Domains
    • Knobbe Martens Offices Orange County San Diego San Francisco Silicon Valley Los Angeles Riverside Seattle Washington DC© 2012 Knobbe Martens Olson & Bear LLP, a Limited Liability Partnership including Professional Corporations. All rights reserved. The information contained in thisnewsletter has been prepared by Knobbe, Martens, Olson & Bear, LLP and is for general informational purposes only. It does not constitute legal advice. While every efforthas been made to ensure the accuracy of the information contained in this newsletter, Knobbe Martens Olson & Bear LLP does not guarantee such accuracy and cannot beheld liable for any errors in or any reliance upon this information. Transmission of this newsletter is neither intended nor provided to create an attorney-client relationship,and receipt does not constitute an attorney-client relationship. You should seek professional counsel before acting upon any of the information contained in this newsletter. Who We Are Over 95% of our litigators hold technical degrees, including electrical engineering, computer science, mechanical engineering, chemistry, chemical engineering, biochemistry, biology, and physics. Many of our litigators are former Federal Circuit or district court clerks. With eight offices, Knobbe Martens represents clients in all areas of intellectual property law. • Exclusive practice in the area of intellectual property since 1962 • M  ore than 250 lawyers, many of whom have advanced degrees in various technologies • I nternationally recognized leaders in IP across a vast spectrum of technology areas knobbe.com 2