January 2016 Trademark Prosecution Lunch

1. Prosecution Luncheon
Trademark
January 2016

2. USPTO
• 10th ed. Of NICE Classification effective Jan.
1, 2016
• TMEP Oct. 2015 update
• USPTO shutdown – Dec. 22-27
– All days considered a “Federal holiday”
– Waiver of rule to file electronically to maintain
TEAS-PLUS status, won’t incur $50 fee

3. Preclusive effect – B&B Hardware
• D. Ct. Maryland dismissed infringement
complaint.
• TTAB had granted summary judgment in an
opposition brought by Ashe against PNC's
application, ruling that PNC and not Ashe had
priority of use.
• The determination of priority in an opposition
is the same as for purposes of an infringement
claim.
• Ashe v. PNC Financial Services Group, Inc., Case No.:
PWG-15-144 (D. Md. November 17, 2015).

4. Prove Your Bona Fides
• Applicant failed to produce any pertinent
documentation.
• Submitted, website showing the history of the
company and its products and services, but
marks did not appear on the webpages
• Needed: current business plans, ongoing
discussions, or promotional activities to
corroborate its claim of a bona fide intent.
• SJ GRANTED
• Tekni-Plex, Inc. v. Selig Sealing Products, Inc., Oppositions Nos.
91214508 and 91215874 (November 25, 2015) [not precedential].

5. Manuals Aren’t Goods
• Aff’d: refusal to register IPOD for [user
manuals] as not "goods in trade."
• Incidental if item:
– (1) is simply a conduit or necessary tool useful only in
connection with the primary goods or services;
– (2) is so inextricably tied to and associated with the
primary goods or services as to have no viable
existence apart therefrom; and
– (3) is neither sold separately from nor has any
independent value apart from the primary goods or
services.
• In re Apple, Inc., Serial No. 78521891 (November 13,
2015) [not precedential].

6. Small Town ≠ Interstate Commerce?
• Opp: FLATIZZA for "pizza," - Applicant operated a
single restaurant in Bothell, WA (pop. 35k)
• No evidence of:
– out-of-state customers.
– not listed in any travel or restaurant guide.
– No advertising evidence
– No evidence that any viewers accessed website,
– the business plan and menu mock-ups were for
internal use only.
• speculation to assume that out-of-state travelers
would travel 3 miles off the Interstate to restaurant,
• Doctor’s Associates Inc. v. Janco, LLC, Opposition No. 91217243
(January 7, 2016) [not precedential].

7. Prosecution Luncheon
Trademark
January 2016