TMEP 1109.17 Prohibits the withdrawal of a statement of use (in effect, you can’t convert back to a 1(b) application after converting to 1(a)). So far as I can tell, there is no statutory basis for this, and it is inconsistent with the office’s practice of permitting an application originally filed on a 1(a) basis to be converted to a 1(b) application if the specimen submitted with the 1(a) application is rejected by... more »
I think perhaps it's time for the PTO to re-examine it's requirement that specimens must be in the form of labels and tags, etc. Perhaps thirty years ago it was unheard of for consumers to purchase goods without physically inspecting them. That is no longer the case today. A substantial portion of consumer purchases are made by customers over the web, who never see a physical product until it is delivered to them.... more »
New decision - relevant to unity of control section and presumably TMEP will be updated to incorporate it in time: In re Wacker Neuson SE, Serial No. 79060553 (T.T.A.B. December 28, 2010) [precedential] (reversing a 2(d) refusal when the applicant and owner of the cited mark were related in a corporate family (wholly owned subsidiaries of a joint parent)).
The Trademark Act merely requires that a mark be used in commerce. It does not say that the mark must be used on the goods. This section is a common sense alternative to the overly-rigid standard set by the Trademark Rules. If a mark is used on invoices received by the buyer, that is a good use under the Trademark Act. It should also be good use under the Trademark Rules and the TMEP.
Sometimes, an entity that owns a prior registration finds that a later application for its mark is blocked by an intervening third-party registration. It submits arguments pointing out that its own earlier registration was not cited to block the intervening registration, so in fairness its new application should not be blocked by the intervening registration. Usually, such arguments are not successful, and a final refusal... more »
It would be nice if references to the statutes, regulations and cases that are cited in the TMEP were all active hyperlinks to that underlying material.
I think that indexing in the TMEP could be improved and more cross references added. For instance, if you want to look up "Abandonment" in the index, all you get is "Abandonment of application" and numerous related subtopics. You don't get any references to "Abandonment of mark" or "Abandonment, presumption of."
I suggest implementation of a procedure to allow applications blocked by prior-pending marks to move along more rapidly once the earlier mark registers, especially in the following hypothetical situation: > On day one, Alpha files for mark ABC for shirts. > On day two, Beta files for mark ABC for shirts. The application is blocked by Alpha’s earlier application. > On day three, Alpha files for mark ABC for sweaters.... more »
In a post today, the system added a couple of words to the end of my post: the words "just now" were added to the end of a comment on indexing of the TMEP. I experienced a similar occurrence with a post in the past, but thought it was a typo/mistake on my part. But today I double-checked to make sure there were no words at the end of the post before hitting "submit," and there were not; but after pressing submit, the... more »
This section should be updated with at least the three cases below that were designed as precedent of the TTAB. I also list three other cases that were not so designated that are nonetheless relevant to this section - I'm including them for the benefit of other users. In re Royal BodyCare, Inc., 83 USPQ2d 1564 (TTAB 2007) (reversing refusal to register NANOCEUTICAL, holding mark was used in a manner that creates a... more »
Please note that this discussion board provides a forum for public suggestions and discussion relating to the TMEP. Although the USPTO moderates this discussion board, the USPTO generally will not respond to the comments. However, the comments will be reviewed and considered by TMEP editorial staff in connection with periodic updates of the TMEP.
it woudl be helpful to have a section in the manual instructing on how to submit a request under the trademark office's Consistency Initative Program. Currently, the TMEP does not even mention the program.
The TMEP says, "Color marks are never inherently distinctive," citing Wal-Mart Stores, Inc. v. Samara Bros., Inc. This is partly incorrect. Single colors are never inherently distinctive. See Qualitex Co. In contrast, no reported case prevents a color *combination* from being inherently distinctive. For example, a baby blue barbecue grill is not inherently distinctive. See Qualitex. In contrast, a baby blue and... more »
This section does not address the situation where one party does not directly owns the other but owns it through an intermediate subsidiary, that is, the other party is a subsidiary of a subisdiary. In that situation there should be unity of control as well and a declaration should not be necessary. That situation should be mentioned in the section.
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 »