1. Trademark Prosecution
Luncheon
May 15, 2014

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. 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. 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. 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. 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.”