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Prosecution Luncheon January 2012
Prosecution Luncheon January 2012
Prosecution Luncheon January 2012
Prosecution Luncheon January 2012
Prosecution Luncheon January 2012
Prosecution Luncheon January 2012
Prosecution Luncheon January 2012
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Prosecution Luncheon January 2012

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Topics covered in this month’s trademark group presentation include the opening of the registration period for new gTLDs, landrush availability of .xxx domains, and other TTAB case law updates.

Topics covered in this month’s trademark group presentation include the opening of the registration period for new gTLDs, landrush availability of .xxx domains, and other TTAB case law updates.

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  • 1. Prosecution Group Luncheon January 2012
  • 2. USPTO – Trademarks <ul><li>Trademark Status and Document Retrieval (TSDR 1.0) – integrated status and file history database </li></ul><ul><li>Email language clarification </li></ul><ul><ul><li>Notification of Notice of Publication  </li></ul></ul><ul><ul><li>Notification of “Notice of Publication” </li></ul></ul><ul><ul><li>Notice of Publication  </li></ul></ul><ul><ul><li>Official Gazette Publication Confirmation </li></ul></ul><ul><li>Statistics: 75% of trademarks efiled; First action pendency 3.2 months; disposal pendency 10.2 months </li></ul>
  • 3. New gTLDs – Application Window Open <ul><li>April 12, 2012: New gTLD application window closes. </li></ul><ul><li>Early May, 2012: Public Application Information posted by ICANN. </li></ul><ul><li>April - November, Application Review, Evaluation and an Objection period . </li></ul><ul><li>Challenge options if: </li></ul><ul><li>String Confusion Objections – LOC - a competing TLD operator </li></ul><ul><li>Legal Rights Objections – TM owner claiming infringement </li></ul><ul><li>Limited Public Interest – contrary to public norms/morality recognized under international law (anyone can object) </li></ul><ul><li>Community Objections - substantial objection from a targeted community (established institution w/n community) </li></ul>
  • 4. Want to register: you.xxx? <ul><li>Open registration is now available for unblocked .xxx domains </li></ul><ul><li>Are you an adult entertainer ? a registrant needs to certify that they are a member of the &quot; sponsoring community &quot; in order to have a .xxx website.  </li></ul><ul><ul><li>The sponsoring community is people/companies involved in the adult entertainment industry and associated vendors, agents, etc.  </li></ul></ul><ul><li>The registrars do not audit this self-certification, but if you are challenged and are not using the domain name as part of the sponsoring community, domain name will be cancelled. </li></ul><ul><li>Distinction: a blocking reservation w/o use is okay (either in the Sunrise period or which can still be done), but that differs from registration and USE of a .xxx domain name. </li></ul>
  • 5. <ul><li>Mattel wins on SJ that mark was not used as a trademark because only used as a title on a single work </li></ul><ul><ul><li>same content on VHS and DVD not different works </li></ul></ul><ul><li>Mattel, Inc. v. The Brainy Baby Company, LLC , 101 USPQ2d 1140 (TTAB 2011) [precedential]. </li></ul>
  • 6. Applicant Proves Bona Fide Intent Without Evidence <ul><li>Applicant applied for TEXAS BIG BITES for &quot;organic pastries&quot; </li></ul><ul><ul><li>Applicant did not have business plans, advertising, sales records, or list of customers </li></ul></ul><ul><li>Opposer submitted Applicant's interrogatory responses indicating that Applicant has continuously used its mark on cookies for the past decade, has sold these cookies through personal contacts in Maryland and Florida, and has sold them to coffee shops and &quot;personal customers.&quot; These were not &quot;organic&quot; cookies, however. Applicant stated that she was looking for appropriate organic ingredients. </li></ul><ul><ul><li>TTAB: opposer submitted evidence that applicant had been selling cookies, albeit not organic cookies, under its mark prior to the filing of its application, and that applicant was searching for the proper organic ingredients to use in its organic cookies. Furthermore, applicant’s lack of documents could be explained by applicant’s lack of sophistication with respect to starting a business. </li></ul></ul>
  • 7. HANGBOARD Is Not Generic For ?? <ul><li>Applicant filed to register HANGBOARD for snowboards, sleds </li></ul><ul><li>Board reversed the refusal to register the mark on the Supplemental Register. </li></ul><ul><li>Applying the In re Gould test for compound words: </li></ul><ul><ul><li>HANGBOARD is more analogous to a compound word than a phrase, therefore dictionary defs of the parts may prove genericness of the whole </li></ul></ul><ul><ul><li>EA submitted definitions of HANG and BOARD, which would lead one to conclude that a &quot;hangboard&quot; is a &quot;board that hangs,&quot; or &quot;a board from which one hangs.&quot; </li></ul></ul><ul><li>TTAB: these definitions do not adequately establish that HANGBOARD is generic for the identified goods, since Applicant's product is neither. </li></ul><ul><ul><li>Internet excerpts submitted by the Examining Attorney used the terms &quot;hangboard&quot; and &quot;hangboarding,&quot; sometimes with initial caps on the two words, but this mixed evidence was insufficient to prove of genericness. </li></ul></ul><ul><li>In re SEI Manufacturing, Inc. , Serial No. 78648865 (December 5, 2011) [not precedential]. </li></ul>

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