Trademark Prosecution Luncheon October 2012

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Topics covered in this month’s trademark group presentation include recent trademark statistics, examination guidelines on specimens, and recent changes to the federal dilution statute.

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Trademark Prosecution Luncheon October 2012

  1. 1. Prosecution Group Luncheon Trademarks October 2012
  2. 2. FY 2012: Trademark Stats• 1.8 million registered marks in continuous use• 415,000 total new classes (4.1% increase in filings)• Quality results – exceeded targets• First action pendency – between 2.5 and 3.5 months• Pendency to registration at historical low – under 12 months
  3. 3. Trademark Office Rules• Examination Guide on Webpage Specimens as “Displays” Associated with the Goods – Webpage display must:  Show picture of goods  Show mark – associate mark with goods  Provide info necessary to order - Online ordering - Contact Applicant to place an order – Specifically identify specimen as “display”• Draft version – Comment period ends October 31, 2012
  4. 4. Does Congress Make Typo’s?• Previous version 1995: – Federal registration is a bar to state and federal dilution claims – Most believe it was intended only to bar state dilution claims• Correction 2012: – Federal registration is a bar to state dilution claims• Not retroactive

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