July 2016 Trademark Prosecution Lunch Update

1. Prosecution Luncheon
July 2016

2. USPTO
• Proposal: require submission of sufficient specimens of
use to ensure accuracy
– Random audits up to 10%, to require additional
specimens in multi-good §8 declarations
– USPTO will specify which goods
• Proposal: increase fees
– Paper filing of app $600/class (+$225)
– TEAS App: $400/class (+$75)
– Misc. other fees increase $100-$200 (SOU, renewal,
incontestable, grace period, etc.)
– Various TTAB fees increase
 Opp. or Cancellation $500 (+$200)
 30 EOT free; EOT +60 days $100

3. Selling Illegal Products Not Use In Commerce
• App: HERBAL ACCESS for "retail store services
featuring herbs” – actually sells marijuana
• Sale of marijuana is illegal under federal law.
• Presumed lawful commerce, unless:
– Violation indicated on the record (Ct. or agency
finding); or
– Per se violation
• Legal selling of a product within a given state is
irrelevant
• In re Morgan Brown, Serial No. 86362968 (July 14, 2016)
[precedential].

4. FIRST TUESDAY
• App: FIRST TUESDAY for “lottery services”
• Descriptiveness refusal affirmed
• Applicant: multi-step reasoning process:
– [t]o connect the mark FIRST TUESDAY to lottery services,
a consumer must be told that Applicant issues new instant
scratch-off games on the first Tuesday of every month.
• TTAB: mark must be considered in the context of the goods or
services – USPTO should look at labels, pkg., advertising
– Applicant's specimens of use and website indicate that new
games begin on the first Tuesday of each month.
– Consumers encountering FIRST TUESDAY will understand that it
describes "an important feature" of applicant's services
In re North Carolina Lottery, Serial No. 86411401 (July 12, 2016) [not
precedential].

5. Do You Know BJNI?
• App: BJNI for “mineral water” refused as
geographically descriptive
– Small village in Armenia,
– Cited Wikipedia entry: <3,000 pop.; medieval
fortress & church
• TTAB: insufficient evidence that “generally
known geographic location” to US consumers
– Wikipedia entry had “some probative value” but
needed more
In re Vili Group Inc., Serial No. 86285733 (July 14, 2016)
[not precedential].