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 »
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
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 »
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 »
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 »
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 »
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 »
I do not support the proposed changes.
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 »
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 firstname.lastname@example.org 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 »