Trademark September 2010 Prosecution Lunch
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Trademark September 2010 Prosecution Lunch

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Topics covered in this month’s trademark prosecution presentation include a discussion of the latest Trademark Public Advisory Meeting, potential changes to the Trademark Electronic Search System......

Topics covered in this month’s trademark prosecution presentation include a discussion of the latest Trademark Public Advisory Meeting, potential changes to the Trademark Electronic Search System (TESS), a Trademark Trial and Appeal Board (TTAB) update, case discussions concerning disclaimers as well as packaging that failed to function as a trademark, and a discussion of TTAB case that concerns discovery issues.

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  • 1. Prosecution Lunch September 2010
  • 2. Trademark Public Advisory Mtg.
    • Concerns about unauthorized practice of law by document mgmt services and others
    • eFiling- rule coming w/higher fees for paper filings
    • Plans to increase examiner telecommuting
    • Next generation IT coming
  • 3. Trademarks Next Generation
    • TESS system attacks – plans to implement word recognition system, like PAIR
    • USPTO has increased number of allowed connections to TESS
    • Plans to implement 10x bandwidth increase for USPTO in 2011
    • “TDR 2.0” cloud hosting of TM file histories to allow faster access
  • 4. TTAB Updates
    • TBMP- new version due early 2011
    • TTAB case filings down: appeals down 20%, Oppositions down 16%, Cancellations down 15%
    • TTAB pendency up – avg. to trial 260 weeks
    • 97% of cases don’t got to trial
    • New pilot program likely w/ TTAB judges participating in settlement conferences
  • 5. “ unique unitary phrase”
    • Applicant filed on CORPORATE FUEL for business advisory services. Examiner required disclaimer of “corporate”
    • Examiner: “the term CORPORATE “describes the intended users of applicant’s services
    • Applicant: “As there is no such thing as ‘corporate fuel ,’ Applicant’s unusual combination of the adjective ‘CORPORATE’ to modify the noun ‘FUEL’ creates a coined phrase which has no specific meaning other than to playfully hint to Applicant’s consumers that its services will provide the unique fuel or energy needed to launch them past their competitors.”
  • 6.
    • A mark is unitary if it creates a single, distinct commercial impression . If the matter that comprises the mark or relevant portion of the mark is unitary, no disclaimer of an element, whether descriptive, generic, or otherwise, is required. TMEP §1213.05
    • “ [H]ere the words CORPORATE FUEL do create a single unitary phrase that is the name of an imaginary thing. The word CORPORATE does not stand alone creating its own separate commercial impression . Rather, consumers would receive the phrase CORPORATE FUEL as a play on actual types of fuel, like jet fuel or diesel fuel.”
    • In re Corporate Fuel Partners, LLC , Serial No. 78705685 (August 27, 2010) [not precedential].
    TTAB Reverses
  • 7. Failure To Function As A TM
    • “ [C]ommon geometric shapes …, when used as background for the display of word marks, are not regarded as trademarks for the goods to which they are applied absent evidence of distinctiveness of the background design alone .”
    • "the purchasing public would be unlikely to regard the black trapezoid applicant seeks to register as identifying and distinguishing applicant's adhesives and indicating source .“
    • In re DAP Brands Company , Serial No. 77116207 (August 30, 2010)[not precedential].
  • 8. No Document Dumping
    • Amazon opposed AMAZON VENTURES
    • for financial services. In discovery Amazon claimed that it does not have a database that would allow it to find its own trademark applications and registrations that identify finance-related services. Produced 31,000 pages of unindexed documents .
    • Board said that Amazon was trying to "hide the ball" - discovery "should not be treated as a shell game ."
    • Ordered to provide index w/n 30 days and provide narrative answers to two interrogatories.
    • Amazon Technologies, Inc. v. Jeffrey S. Wax , Opposition No. 91187118 (August 31, 2010) [precedential].
  • 9. Prosecution Lunch September 2010