January 2014 Prosecution Luncheon
Upcoming SlideShare
Loading in...5
×

Like this? Share it with your network

Share
  • Full Name Full Name Comment goes here.
    Are you sure you want to
    Your message goes here
    Be the first to comment
    Be the first to like this
No Downloads

Views

Total Views
320
On Slideshare
156
From Embeds
164
Number of Embeds
2

Actions

Shares
Downloads
0
Comments
0
Likes
0

Embeds 164

http://www.uspatent.com 163
http://translate.googleusercontent.com 1

Report content

Flagged as inappropriate Flag as inappropriate
Flag as inappropriate

Select your reason for flagging this presentation as inappropriate.

Cancel
    No notes for slide

Transcript

  • 1. Trademark Update January 16, 2014
  • 2. Applicant Must Pay PTO Fees • District court review of an ex parte appeal decision by the TTAB • Section 1071 (b)(3) – In any case where there is no adverse party ... all the expenses of the proceeding shall be paid by the party bringing the case, whether the final decision is in favor of such party or not. • Applicant must pay PTO’s expenses (including attorneys’ fees), win or lose • This particular case = over $36,000 (after losing on Summary Judgment) • Shammas V. Focarino (E.D.Va. Jan. 2014)
  • 3. District Court Reverses TTAB Descriptiveness Rejection • TTAB found INTELLIGENCE QUARTZ merely descriptive of watches – Consumers will understand the mark to mean that the watch contains a quartz component controlled by a computer chip • In actuality, the quartz is not controlled by a computer chip, rather the quartz oscillates to provide a time base for the device • Mark does not convey an immediate idea, requires imagination and multistep reasoning, therefore suggestive • Timex Group USA, Inc. v. Focarino (E.D.Va. Dec. 2013)
  • 4. 668-Word Trademark • Applicant sought to register mark for cartoon strips and other printed matter • Examiner refused registration for “failure to function” as a trademark, TTAB affirmed: – Proposed mark is “simply too great to be a useful means for consumers to differentiate one source from another.” • Distinguished from McDonald’s registration: – TWOALLBEEFPATTIESSPECIALSAUCELETTUCECHEESEPI CKLESONIONSONASESAMESEEDBUN • In re Prema Jyothi Light, Serial No. 76293326 (2013)