February 2014 Trademark Prosecution Lunch Presentation

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February 2014 Trademark Prosecution Lunch Presentation

  1. 1. Prosecution Luncheon February 13, 2014
  2. 2. USPTO – TM Withdrawal Form • may use form to request withdrawal. Removes info from the attorney and correspondence fields when a POA has ended, such as when there has been a change in ownership. • If attorney of record is being replaced by an existing associate attorney (i.e. attorney of record is leaving a firm), then the “Replacement of Attorney of Record with Another Already-Appointed Attorney” form should be used.
  3. 3. Class Header ONLY Gets “Ordinary Meaning” • Applying "Ordinary-Meaning" test, TTAB aff’d refusal of the mark FIAT 500 (Madrid App) for: "retail store services and on-line retail store services featuring a wide variety of consumer goods of others" – the wording exceeded the scope of the original recitation of services: "advertising services; business management; business administration; office functions" • Although the proposed language would fall within Class 35, it is not encompassed by the original recitation of services even though the original recitation is identical to the class heading for Class 35. • In re Fiat Group Marketing & Corporate Communications S.p.A., Serial No. 79099154 (January 31, 2014) [precedential].
  4. 4. The Phantom Has Left The Building • Aff’d refusal of mark for vehicle axles," in which the "44 shown in broken lines represents that any number with at least two digits may be used,” on the ground that applicant was seeking to register multiple marks – contrasted with In re Dial-A-Mattress, where the phantom element was a telephone area code, "of which ... there are limited possible combinations." • In re Dana Limited, Serial No. 85447797 (January 30, 2014) [precedential].
  5. 5. Rendering Services Requires Performance • Petition to cancel GRANTED for PLAYDOM for certain entertainment services - the registration was void ab initio because Registrant had not used the mark in the rendering of the services prior to filing his Section 1(a) application. – The display of the advertising in the sale or advertising of the mark does not alone constitute use of the service mark in commerce, absent rendering of the services. • Playdom, Inc. v. Couture, Cancellation No. 92051115 (February 3, 2014) [not precedential].
  6. 6. Rendering Services Requires Performance • Petition to cancel GRANTED for PLAYDOM for certain entertainment services - the registration was void ab initio because Registrant had not used the mark in the rendering of the services prior to filing his Section 1(a) application. – The display of the advertising in the sale or advertising of the mark does not alone constitute use of the service mark in commerce, absent rendering of the services. • Playdom, Inc. v. Couture, Cancellation No. 92051115 (February 3, 2014) [not precedential].

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