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Examination of Specimens for Use in Commerce: Digitally Created/Altered or Mockup Specimens [Revised]

Diligence for web specimens trending idea

Several bullet points in Section III reference some signs that a webpage specimen may be fake, including missing information or signs that the mark is only used outside U.S. commerce. Given that applicants and registrants are now required to provide a URL and access date for web specimens, it seems reasonable to direct examining attorneys to conduct some limited diligence before issuing an Office Action. A sentence like... more »

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(@castlewood.strategies) kudos icon +

Marks Including Geographic Wording that Does Not Indicate Geographic Origin of Cheeses and Processed Meats

Exam guide regarding generic terms is a positive development trending idea

We are fully supportive of the examination guide published by the U.S. Patent and Trademark Office (US PTO) titled "Marks Including Geographic Wording that Does not Indicate Geographic Origin of Cheeses and Processed Meats" (the Exam Guide).

First, as fully described in the Background statement published with the Exam Guide, the US PTO correctly notes that two federal agencies, the U.S. Food and Drug Administration (FDA)... more »

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(@lasse.t.laine) kudos icon +

Marks Including Geographic Wording that Does Not Indicate Geographic Origin of Cheeses and Processed Meats

Trademark and quality specifying identity terms

The text seems semantically clear. I myself could use my philosophical proposal for a Subject term ( the same theoretical, semantical ground which I used in my student paper 1974 for my proposal for a more abstract Subject logic). Thus the "Subject term" would be the Trademark in question- for example, BRIE, concerning such kind of cheese from this geographical region- and the "Subject variables" bound by the Subjet term... more »

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(@sdouglass) kudos icon +

Practice Tip: Section 2(d) & Foreign Entity Designations

The Practice Tip needs to be more specific

The problem is that the Examining Attorneys treat Appendix D as the sole and exclusive list of acceptable entities. The examples in Example 4 make clear that "corporation" is equivalent to "joint stock company" or GmbH -- but this should be stated expressly in the Practice Tip, and also at the top of Appendix D. The Appendix should indicate that any type of limited liability corporate entity can be referred to as a "corporation,"... more »

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(@allisonstricklandricketts) kudos icon +

Practice Tip: Section 2(d) & Foreign Entity Designations

TEAS drop-down lists of corporate entity types

It would be better if the list of corporate entity types that are available to be selected from the drop-down list in TEAS were limited to the corporate entity types that exist in the jurisdiction in which the corporate applicant exists. The list is extremely long at present and you have to scroll down through numerous corporate entity types that are not applicable to find the correct one. So, for example, if the applicant... more »

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(@allisonstricklandricketts) kudos icon +

Practice Tip: Section 2(d) & Foreign Entity Designations

Sources of comprehensive worldwide corporate entity type info

TMEP Exhibit D is incomplete and should be replaced with a comprehensive source of worldwide corporate entity formation information. For example, Martindale-Hubbell offers a free law digest that provides corporate entity information in virtually all jurisdictions. See https://www.lexisnexis.com/legalnewsroom/lexis-hub/b/legaltoolbox/archive/2009/09/10/martindale_2d00_hubbell-law-digests-now-available-for-your-free-use.aspx?Redirected=true.... more »

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(@lisaulrich) kudos icon +

Incapable Information Matter Examination Guide

IBM Comments to the Examination Guide on Informational Matter

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 »

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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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Incapable Information Matter Examination Guide

Supercedes Section 2(e)(1)

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

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(@erikpelton) kudos icon +

Declarations of Use

Comments regarding proposed changes to declaration format

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 »

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Declarations of Use

IPO Comments on Declarations of Use

Intellectual Property Owners Association (IPO) submits these comments in response to the USPTO’s proposed “reformatting” of the declaration and signature portion of the applications for registration, allegations of use, and post-registration affidavits or declarations of continued use or excusable non-use.

Based on past roundtables and discussions with the Office, it is IPO’s understanding that the main impetus for... more »

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(@kathleen.petrich) kudos icon +

Declarations of Use

Proposed teas declarations of use may have merit, but needs work

I like the idea of increased solemnity of declarations for new and infrequent filers, and particularly, for pro se applicants. The current teas formatting of the declaration averments are often lost on the declarant/applicant where diligent trademark counsel has not gone over the declaration statements prior to signing. Having an enhanced format (e.g., check the box of declaration statements format) could be a good... more »

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