July 2011 Trademark Lunch

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Topics covered in this month’s Trademark Group presentation include:
• US Patent and Trademark Office (USPTO) is now emailing acceptance of 8 & 15 declarations,
• a proposed rule to permit the USPTO to require more than one specimen for declarations of use,
• .XXX domain names,
• a review of the case concerning John Dillinger’s right of publicity,
• a case concerning the MUSCLE MAIZE trademark is descriptive, and
• a case concerning word reversal in trademarks.

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July 2011 Trademark Lunch

  1. 1. Prosecution Group Luncheon Trademarks July, 2011
  2. 2. Practice Announcements <ul><li>USPTO emailing acceptance of 8 & 15 declarations as of 7/3/11 </li></ul><ul><li>Proposed PTO Rule: to permit the Office to require more than one specimen for declarations of use after registration. Comments are due by September 12, 2011. </li></ul>
  3. 3. Handouts <ul><li>Changes to assignment form – CPS </li></ul><ul><li>Guidance forms for SOU, declarations of use/incontestability, renewal and specimens </li></ul><ul><li>.XXX Domain Names - Announcement to clients and offer to submit their trademark to be excluded </li></ul>
  4. 4. John Dillinger – a deal you could refuse <ul><li>Dillinger, LLC sues Electronic Arts </li></ul><ul><li>for references to “Dillinger Tommy </li></ul><ul><li>Gun” in video games based on </li></ul><ul><li>The Godfather </li></ul><ul><li>Indiana’s statute does not apply to personalities that died before Indiana ROP statute was passed in 1994 (predicts IN Sup. Ct. interpretation) </li></ul><ul><ul><li>Creating rights after death would greatly expand potential liability under the statute </li></ul></ul><ul><ul><li>Assets created after death would frustrate probate law including tax collection and creditors </li></ul></ul>
  5. 5. MUSCLE MAIZE is Descriptive of ?? <ul><li>Dictionary definitions of &quot;muscle&quot; and &quot;maize,&quot; third-party registrations with MUSCLE disclaimed, and website evidence convinced TTAB that MUSCLE MAIZE is merely descriptive of &quot;dietary and nutritional supplements&quot; </li></ul><ul><ul><li>MUSCLE MAIZE &quot;would immediately describe, without conjecture or speculation, a significant characteristic or feature of such goods, namely, that they are dietary or nutritional supplements that contain maize starch intended to promote muscle growth and recovery .&quot; </li></ul></ul><ul><li>In re Nutraquest, Inc. , Serial No. 77729645 (July 7, 2011) [not precedential]. </li></ul>
  6. 6. Word Reversal Not Reversible <ul><li>Application for TEKSTONE opposed by Registrant of STONETEC – both by vinyl flooring (identical goods) </li></ul><ul><li>TTAB: </li></ul><ul><ul><li>&quot;the transposition of terms is not always sufficient to distinguish the resulting marks.&quot; </li></ul></ul><ul><ul><li>the transposition does not &quot;add anything which would change the commercial impression fostered by these marks.&quot; They are similar in sound and appearance, and &quot;engender the same suggestive connotations inasmuch as they both reference stone technology .&quot; </li></ul></ul><ul><li>StonCor Group, Inc. v. Metroflor Corporation , Opposition No. 91194599 (June 24, 2011) [not precedential]. </li></ul>

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