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 »
Incapable Information Matter Examination Guide
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