(@loser.gary)

Chapter 800 - Application Requirements

Online Search to Comply with 15 USC 1052

The Lanham Act states: "§ 2 (15 U.S.C. § 1052). Trademarks registrable on the principal register; concurrent registration No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— * * * (d) Consists of or comprises a mark which so resembles a mark... more »

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-8 votes
3 up votes
11 down votes
(@kevingrierson)

Discuss this Discussion Tool

Delete TMEP 1109.17

TMEP 1109.17 Prohibits the withdrawal of a statement of use (in effect, you can’t convert back to a 1(b) application after converting to 1(a)). So far as I can tell, there is no statutory basis for this, and it is inconsistent with the office’s practice of permitting an application originally filed on a 1(a) basis to be converted to a 1(b) application if the specimen submitted with the 1(a) application is rejected by... more »

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20 votes
20 up votes
0 down votes
(@acandeloro)

Webpage Specimens as Displays Associated With the Goods

Specimens for companies selling to industry

We have some clients that sell goods to industry, not the general public. They advertise on their website but do not sell through their website, nor is there any brick and mortar place their goods are sold. I would like to see this sitation addressed in the examination guidelines.

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4 votes
4 up votes
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(@balajiperiasamy)

Discuss the Format of the TMEP

TMEP 708 - Priority Action

The benefit of "Priority Action" has not not been clearly given under TMEP 708.01. Responding to a priority action within 2 months will give priority handling of the response. But this is not explained anywhere under the TMEP.

 

Source: http://www.uspto.gov/trademarks/teas/response_forms.jsp

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6 votes
6 up votes
0 down votes
(@kevingrierson)

Section 904.03 Material Appropriate as Specimens for Trademarks

Changes to specimen requirements

I think perhaps it's time for the PTO to re-examine it's requirement that specimens must be in the form of labels and tags, etc. Perhaps thirty years ago it was unheard of for consumers to purchase goods without physically inspecting them. That is no longer the case today. A substantial portion of consumer purchases are made by customers over the web, who never see a physical product until it is delivered to them.... more »

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4 votes
5 up votes
1 down votes
(@karencushman)

Discuss the Format of the TMEP

Format of the TMEP - Indexing

I think that indexing in the TMEP could be improved and more cross references added. For instance, if you want to look up "Abandonment" in the index, all you get is "Abandonment of application" and numerous related subtopics. You don't get any references to "Abandonment of mark" or "Abandonment, presumption of."

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8 votes
8 up votes
0 down votes
(@petersloane)

Discuss the Format of the TMEP

Color claim and description of mark

TEAS requires applicants to describe the colors, and where they appear, in a color mark and to describe the features of a design mark. However, TMEP §808.01, as well as 37 C.F.R. §§2.37 and 2.52, do not seem to require providing such information at the time of filing. The Trademark Law Treaty Implementation Act of 1998 eliminated several minimum requirements necessary to receive a filing date in order to make it easier... more »

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3 votes
3 up votes
0 down votes
(@pchestek)

Incapable Information Matter Examination Guide

Subject Matter Insufficiently Defined

If this is a legitimate basis for refusal, it should not apply in cases where the proper refusal is merely descriptive or generic, which should be stated expressly in the guide. Beyond that, the guide does not provide any guidance on what the distinction is between "incapable" versus "merely descriptive," "generic," "ornamental" or "use as a mark." As noted by others, saying that the matter "merely [] imparts information"... more »

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2 votes
3 up votes
1 down votes
(@petersloane)

Discuss the Format of the TMEP

Use by related party

Section 1201.03(a) states (in its title and text) that use by a related party “must” be disclosed in an application. But the Section then proceeds to say that that use by a related party “should” be disclosed in an application under §§1(a) and (b). Is it mandatory or permissive? Either way, since TEAS forms reference use by a related party in the alternative, there may be no need to affirmatively disclose the fact.... more »

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6 votes
6 up votes
0 down votes
(@allisonstricklandricketts)

Chapter 1200 Substantive Examination of Applications

1207.01(d)(i) Doubt Resolved in Favor of Registrant

Sometimes, an entity that owns a prior registration finds that a later application for its mark is blocked by an intervening third-party registration. It submits arguments pointing out that its own earlier registration was not cited to block the intervening registration, so in fairness its new application should not be blocked by the intervening registration. Usually, such arguments are not successful, and a final refusal... more »

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6 votes
6 up votes
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(@esheehan)

Service Mark Specimen Examination Guide

AIPLA Comments on Service Mark Specimens

The American Intellectual Property Law Association (AIPLA) is pleased to have the opportunity to present its views with respect to the U.S. Patent and Trademark Office’s (USPTO) Draft Examination Guide concerning Service Mark Specimens which was posted to the USPTO website at http://www.uspto.gov/trademarks/notices/IdeaScale_ServiceSpecimens.jsp. AIPLA supports the USPTO’s attempt to clarify a complex area of service... more »

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2 votes
2 up votes
0 down votes
(@miriamrichter)

Discuss the Format of the TMEP

Protecting Dead Celebrities per 1203.03(a)

Given the current legal issues regarding the rights to publicity and the rights to privacy and the ability for these rights to continue after death (in certain states and circumstances), it would be extremely helpful for those of us who are charged with protecting the names and images of deceased natural persons, if the miscellaneous statement section was amended to include dead persons as well. This would not require... more »

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0 votes
2 up votes
2 down votes
(@allisonstricklandricketts)

Discuss this Discussion Tool

Insertion of random text at end of posts

In a post today, the system added a couple of words to the end of my post: the words "just now" were added to the end of a comment on indexing of the TMEP. I experienced a similar occurrence with a post in the past, but thought it was a typo/mistake on my part. But today I double-checked to make sure there were no words at the end of the post before hitting "submit," and there were not; but after pressing submit, the... more »

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2 votes
2 up votes
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