Chapter 1200 Substantive Examination of Applications

Submitted by (@allisonstricklandricketts)

1207.01(d)(i) Doubt Resolved in Favor of Registrant

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 »

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Section 904.03 Material Appropriate as Specimens for Trademarks

Submitted by (@kevingrierson)

Changes to specimen requirements

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 »

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Chapter 1200 Substantive Examination of Applications

Submitted by (@allisonstricklandricketts)

New TTAB decision In re Wacker Neuson SE

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)).

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Webpage Specimens as Displays Associated With the Goods

Submitted by (@acandeloro)

Specimens for companies selling to industry

We have some clients that sell goods to industry, not the general public. They advertise on their website but do not sell through their website, nor is there any brick and mortar place their goods are sold. I would like to see this sitation addressed in the examination guidelines.

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Webpage Specimens as Displays Associated With the Goods

Submitted by (@mburke)

"Contact Us" and "Where to Buy" Buttons

On behalf of a foreign client that does not necessarily sell its goods directly to consumers in the United States, or through ordinary retail outlets, we question why "Contact Us" or "Where to buy" tabs that provide contact info for resellers, wholesalers or distributors but do not provide a direct link to the company for purchasing are always inadequate as evidence that the website is not used as a means for purchasing ...more »

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Webpage Specimens as Displays Associated With the Goods

Submitted by (@mburke)

Online Inquiry Forms

Another means for ordering (other than a Shopping Bag or Cart) can be provided through online "Inquiry Forms," particularly for technical goods for which the customer must provide product specifications or must inquire about the product specifications described on the webpage before making a purchase decision. Such forms should be deemed to constitute a "means for ordering" the goods, since such inquries are ofte the ...more »

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Declarations of Use

Submitted by (@erikpelton)

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 »

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Chapter 1200 Substantive Examination of Applications

Submitted by (@mark.pohl)

TMEP misstates the law

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 »

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Chapter 1200 Substantive Examination of Applications

Submitted by (@mm00001)

1201.07(b)(i) When Either Applicant or Registrant Owns All of th

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.

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