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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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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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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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Repeating-Patterns Examination Guide

Repeating Patterns should not be inherently distinctive

Repeating Pattern Marks Registration
December 18, 2014 Comments and Suggestions by
J. Thomas McCarthy, Senior Professor
University of an Francisco
Founding Director, McCarthy Institute of IP
jtmccarthy2@comcast.net
Comments on Draft of December 11, 2014 for Examination Guide for Repeating Patterns

The guideline conflates the two different requirements of whether a designation serves as a trademark at all and whether... more »

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Service Mark Specimen Examination Guide

IPO Comments

Comments submitted by IPO on 7/16/2014:

Intellectual Property Owners Association (IPO) thanks the United States Patent and Trademark Office (PTO) for the opportunity to provide input regarding the Draft Examination Guide for Service Mark Specimens (“Draft Guide”). We agree in large part with the Draft Guide, but have concerns that some of the language that addresses marks associated with both goods and services may result... more »

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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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Service Mark Specimen Examination Guide

I. C. Other Specimen Considerations and Issues

The Examination Guide states that "materials such as press releases ... are not acceptable because they do not demonstrate the required use of the mark by the applicant." (TMEP Sec. 1301.04). However, press releases are in fact issued by the applicant, and are akin to advertisements. Press releases display the mark and explain the launch of a new service; typically, the press release is issued contemporaneously with the... more »

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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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3 up votes
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Chapter 1100 Intent-to-Use Applications and Requests to Divide

Post Publication Petition to Amend Basis

Section 806.03(j)(ii) states that a petition to amend the basis (from 1(b) to 44(e)) will not be granted if the amendment does not apply to all the goods/services; it is necessary to delete the goods that are not part of the request or file a request to divide. Why? It seems to me that if you can file an application with some goods based on Section 1(b) and some based on Section 44(e), you should be able to petition... more »

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Discuss the Format of the TMEP

2. Registry Agreement/ICANN Contrac

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 »

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3 votes
4 up votes
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Geographic Certification Marks

Does Examination Guide 13 comply with TRIPs Article 22?

I have a general comment on Examination Guide 13 which I am not sure fits any of the specific questions you have. Essentially I wonder whether, to the extent that the certification mark system is part of the implementation of the Article 22 TRIPS obligations, the US is in compliance with those obligations.
This comment does not address whether trademarks can or cannot properly implement Article 22 commitments. Rather... more »

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Geographic Certification Marks

Comments on Geographic Certification Marks

On behalf of the Consortium for Common Food Names (CCFN), thank you for the opportunity to comment on Draft Examination Guide 13, concerning the examination of geographic certification marks (guidelines). CCFN has a great interest in this area and is active in the discussion of domestic and international policy concerning the relationship between trademarks, geographical indications and generic terms. Our organization... more »

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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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