August 2014 Trademark Prosecution Lunch Presentation

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August 2014 Trademark Prosecution Lunch Presentation

August 2014 Trademark Prosecution Lunch Presentation

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  • 1. Trademark Prosecution Luncheon August 21, 2014
  • 2. USPTO – Enhanced Assignment Filing • New Conveyance Types – Entity conversion – Merger and change of name • Specify the order of transactions that occur on the same day • Resubmission form to correct omissions or errors
  • 3. Post Registration Proof of Use Pilot Program • Randomly selected 500 registrations where proof of continued use was due – required to prove use for 2 extra goods/services per class – If response was incomplete or requested deletion, then further inquiry • 50% of trademark owners failed to prove previously claimed use – 34% deleted questioned goods/services – 16% failed to respond  cancellation • Foreign based registrations ~76% failure; use base registrations ~44% failure
  • 4. Acronyms Aren’t Automatically Descriptive • TTAB: RBAM not merely descriptive of management and consulting services in the field of engineering even though "risk-based asset management" is descriptive, – Acronym website showed "risk-based asset management" as one meanings for RBAM, but did not indicate widespread exposure – third-party use of RBAM didn’t show RBAM alone unless it earlier appeared in the form “risk-based asset management (RBAM)” This "may suggest that the writer would not expect readers to understand the acronym without explanation." • insufficient evidence to show that RBAM is understood by relevant customers. • In re Life Cycle Engineering, Inc., Serial No. 85692710 (August 4, 2014) [not precedential].
  • 5. Famous McFamily? • McDonald's prevailed against the mark BioMcDiesel for "biodiesel fuel." (biodiesel fuel is made from used fryer grease) • TTAB didn’t conclude that biodiesel fuel and restaurant services are related, but some association exists between the goods/services plus fame of Mc family for food and non-food items supports that consumers would likely believe there is an association • McDonald’s Corporation v. Joel D. Joseph, Opposition No. 91194117 (July 14, 2014) [not precedential].
  • 6. Is It A Trademark? • No Court opinion, but a number of secondary sources (USA Today, Wikipedia) say its in the public domain. • No registrations on that exact phrase and the USPTO has rejected attempts to register the phrase “As Seen On TV” as generic. • Third level sources (legal articles, blogs, etc.) also agree.
  • 7. Is It A Trademark? • No Court opinion, but a number of secondary sources (USA Today, Wikipedia) say its in the public domain. • No registrations on that exact phrase and the USPTO has rejected attempts to register the phrase “As Seen On TV” as generic. • Third level sources (legal articles, blogs, etc.) also agree.