By Leonora Hoicka (IBM Associate General Counsel, IP Law), Lisa Ulrich (IBM Senior Attorney, IP Law), and Jenny Greisman ( IBM Attorney, IP Law) IBM thanks the United States Patent and Trademark Office (Office) for the opportunity to comment on the Draft Examination Guide on Incapable Informational Matter (1/19/2017). The following comments discuss IBM’s concerns with respect to having informational matter as a separate ...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 »
Trademark selection criteria upgrade is now justified in terms of time and clarity of requirements for application approval.
That will automatically drive a simpler process downstream.
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
This is a test idea. Please treat it as a sandbox for commenting and voting.
The proposed requirement for relaxation of the currently strict rules against registration of gTLDs makes sense. The AIPLA comments that special rules for registration of gTLDs as trademarks or servicemarks are not needed. The proposed Examination Guideline would allow registration of gTLDs upon proof of : (a) prior registration for an identical mark for the same services or goods, (b) proof that consumers would associated ...more »
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 »
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.
This idea is submitted to request that the USPTO discontinue the practice that causes words enclosed in brackets in an identification of goods in a newly filed TEAS application to be automatically deleted from the application by TEAS. I am aware that brackets traditionally have been, and still are, used to show goods that have been deleted from a registration. But when a new application is filed, the use of this common ...more »
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 »
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 »
This issue is in the Rules so cannot be addressed just in the TMEP, but here goes. 37 C.F.R. §2.161. requires the following of a declaration of excusable non-use: (2) If the registered mark is not in use in commerce on or in connection with all the goods or services in the registration, set forth the date when use of the mark in commerce stopped and the approximate date when use is expected to resume; and . . ." For ...more »