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 »
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.
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 »
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 »
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 »
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 »
The new grounds for refusing trademarks as merely informational can in practice result in denial of the Supplemental Register for merely descriptive trademarks because by definition such descriptive terms provide information about the goods
It appears that the USPTO wishes to increase the “solemnity” of the trademark application declarations in response to the Section 8 & 71 pilot project that revealed more than half of all renewals included at least partially overbroad statements of continued use. Considering that these declarations are already made under penalty of perjury, I am not sure how big an impact the increasing solemnity might have on the problem. ...more »
I do not support the proposed changes.
Does the date of first use actually have to be the date of first use? Is it possible to select a date after the date of first use and still provide a true and correct submission?
I suggest implementation of a procedure to allow applications blocked by prior-pending marks to move along more rapidly once the earlier mark registers, especially in the following hypothetical situation: > On day one, Alpha files for mark ABC for shirts. > On day two, Beta files for mark ABC for shirts. The application is blocked by Alpha’s earlier application. > On day three, Alpha files for mark ABC for sweaters. ...more »
New decision - relevant to unity of control section and presumably TMEP will be updated to incorporate it in time: In re Wacker Neuson SE, Serial No. 79060553 (T.T.A.B. December 28, 2010) [precedential] (reversing a 2(d) refusal when the applicant and owner of the cited mark were related in a corporate family (wholly owned subsidiaries of a joint parent)).
Another means for ordering (other than a Shopping Bag or Cart) can be provided through online "Inquiry Forms," particularly for technical goods for which the customer must provide product specifications or must inquire about the product specifications described on the webpage before making a purchase decision. Such forms should be deemed to constitute a "means for ordering" the goods, since such inquries are ofte the ...more »
Favicons appearing in the url heading should be discussed. I believe that they should qualify as prominent usage, because they directly associate the mark with the goods, and create a strong impression in the minds of purchasers.
If a page header prominently displays the mark, it should qualify as "sufficiently near". Also, as page headers appear on all cite pages, usage in a page header increases prominence.