(@sdouglass)

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)

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)

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)

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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(@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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3 up votes
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(@erikpelton)

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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(@intellectualpropertyowners)

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)

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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(@cdonahue)

Declarations of Use

Wording open to interpretation

The proposed wording "formed after an inquiry reasonable under the circumstances" and "evidentiary support” is open to a wide range of interpretation. It is questionable what benefit is provided by its inclusion when it is so ambiguous. The phrasing "..specimens show the mark as used on or in connection with the goods/services…" may convey the incorrect impression that the specimen has to show use of the mark on or... more »

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(@allisonstricklandricketts)

Declarations of Use

Plain Writing Act of 2010

I do not believe this proposed "reformatting" of the trademark declaration complies with the Plain Writing Act of 2010 (the Act) (Public Law 111-274), which the President signed into law on October 13, 2010. As defined in the Act, plain writing is writing that is clear, concise, well-organized, and consistent with other best practices appropriate to the subject or field and intended audience. See OMB Guidance of April... more »

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(@allisonstricklandricketts)

Repeating-Patterns Examination Guide

Showing Acquired Distinctiveness for a Repeating Pattern Mark

The draft examination guide says that evidence of five years' use will be insufficient to overcome a refusal on the basis that a repeating pattern mark is not inherently distinctive; actual evidence will always be required. The guide cites to TMEP 1212.05(a) which states: "For matter that is not inherently distinctive because of its nature (e.g., nondistinctive product design, overall color of a product, mere ornamentation,... more »

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