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 »

Submitted by (@erikpelton)

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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 »

Submitted by (@intellectualpropertyowners)

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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 »

Submitted by (@kathleen.petrich)

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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 »

Submitted by (@cdonahue)

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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 »

Submitted by (@allisonstricklandricketts)

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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 »

Submitted by (@allisonstricklandricketts)

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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 »

Submitted by (@jtmccarthy2)

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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 »

Submitted by (@tmpolicy)

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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 »

Submitted by (@esheehan)

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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 »

Submitted by (@sdouglass)

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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 »

Submitted by (@loser.gary)

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