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August 2017 Prosecution Lunch

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August 2017 Prosecution Lunch

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August 2017 Prosecution Lunch

  1. 1. Practice Group Luncheon August 2017
  2. 2. Matal v. Tam (“The Slants” Decision) • U.S. Supreme Court rules that the “disparagement” clause is unconstitutional – violates First Amendment – Trademarks are not government speech • “Scandalous and immoral” provision of the Trademark Act is still intact – In re Brunetti, currently suspended at the CAFC
  3. 3. USPTO Examination Guideline • Disparagement - Gone: – TMEP provisions no longer apply – Suspended applications will be removed from suspension and examined under other grounds – If rejected in the past, file a new application • Scandalous – On Hold: – TMEP sections still apply – Suspensions will remain in place until CAFC issues decision (In re Brunetti)
  4. 4. USPTO Examination Guideline “Merely Informational Matter” • **Cannot be overcome with acquired distinctiveness or amending to the Supplemental Reg., similar treatment as generic refusal** • (1) Matter that is used merely to convey information: – Likely to also receive descriptiveness rejection – Examples:  SPECTRUM for illuminated switches  WHY PAY MORE? for grocery services  PASTEURZIED for face cream • (2) Widely-used slogans / messages: – DRIVE SAFELY, THINK GREEN, MADE IN THE USA, ONE NATION UNDER GOD • (3) Religious quotes: – JOHN 3:16, THE LORD IS MY SHEPHERD I SHALL NOT WANT, AN EYE FOR AN EYE
  5. 5. Third-party Evidence in Ex Parte Cases • Applicant’s evidence was persuasive: – TOPDOC: descriptive of physician referral services – Applicant submitted hundreds of 3rd-party registrations with “TOP”- noun treated as suggestive, not descriptive – TTAB reversed refusal – mark is suggestive • Applicant’s evidence was not persuasive: – FURNITUREBOBS rejected based on BOB’S DISCOUNT FURNITURE – Applicant submitted third-party registrations and actual uses of “Bob” and “furniture” – TTAB: In actuality, Applicant only cited to 5 uses of “Bob” and “furniture” (without other significantly distinguishing elements) – TTAB: evidence does not show “widespread and significant use” enough to render the cited mark so weak that the public will be able to distinguish between the marks
  6. 6. will.i.am Black Eyed Peas • Applied to register “I AM” for cosmetics, jewelry – Limitation: “all associated with William Adams, professionally known as will.i.am” – Rejected based on prior registration for same mark / same goods – TTAB: limitation is meaningless, confusion is likely – CAFC affirms • How does this compare to “affinity merchandise” court cases? – Even when marks / goods are identical, the uses do not cause confusion when the goods are “associated with” the source of entertainment (ex: Survivor band v. Survivor show) – Differences:  Ex parte v. contested court case  No evidence that he goes by “I AM”  Protect prior registrant / avoid the issue

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