May 2014 Trademark Prosecution Luncheon Presentation

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May 2014 Trademark Prosecution Luncheon Presentation

  1. 1. Trademark Prosecution Luncheon May 15, 2014
  2. 2. USPTO • April 2014 version of TMEP published – clarifications/ revisions regarding: – Trade dress examination – gTLD marks – Examples of unacceptable statements in describing a mark or disclaimer, e.g. can’t exclude a color that isn’t in the drawing – Partial abandonment treatment – Filing multiple assignments with the same execution date – requires manual review – others
  3. 3. USPTO Proposes Fee Reductions – Really! • Fee reductions if efiling is used AND if Applicant authorizes email communications – Regular app - $325  $275/class (“TEAS Reduced Fee”) – Teas Plus - $275  $225 – Renewal - $400  $300 • Paper fee unchanged • Written comments due by June 23rd
  4. 4. FRANKNDODD (not by Shelley) • M&F applied to register FRANKNDODD for “Providing legal information relating to legislation • refused b/c identifies living individuals – REVERSED: – combines surnames into single expression, used by media to refer to the “Dodd-Frank Act”, not individuals – “FrankNDodd” or “FrankenDodd” is not a recognized nickname – proposed mark reverses order of names and adds “N,” resulting in negative allusion to “Frankenstein” monster, – relevant consuming public would understand “FrankNDodd” refers to “Dodd-Frank Act” • In re Morrison & Foerster LLP, 110 USPQ2d 1423 (TTAB 2014)
  5. 5. Opposition Estoppel? • “Courts give preclusive effect to the final determinations of an administrative agency so long as the agency was acting in a judicial capacity and resolved issues of fact properly” C&N Corp. v Kane, 953 F.Supp.2d 903 (E.D. Wis. 2013) • But see B&B Hardware, Inc. v. Hargis Indus., 716 F.3d 1020 (8th Cir. 2013) – TTAB Decision not binding because “it ignores a critical determination of trademark infringement, than being the marketplace usage of the marks and products.”
  6. 6. Opposition Estoppel? • “Courts give preclusive effect to the final determinations of an administrative agency so long as the agency was acting in a judicial capacity and resolved issues of fact properly” C&N Corp. v Kane, 953 F.Supp.2d 903 (E.D. Wis. 2013) • But see B&B Hardware, Inc. v. Hargis Indus., 716 F.3d 1020 (8th Cir. 2013) – TTAB Decision not binding because “it ignores a critical determination of trademark infringement, than being the marketplace usage of the marks and products.”

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