According to random audits by the United States Patent and Trademark Office (USPTO), over half of active trademark and service mark registrations include some goods or services that are not actually being used in commerce. Registrations with goods or services not in use may block mark owners from registering their own marks that are in use. As part of a response to this concern, the Trademark Trial and Appeal Board (TTAB) is piloting a program for cancellation proceedings limited to abandonment and/or nonuse claims with no counterclaims.
The program implements a procedure for addressing registrations or classes not use, which can save petitioners time and money. Click here for more information on this pilot program from the TTAB. A recent precedential case that was part of the pilot program also provides further insight, TV Azteca, S.A.B. de C.V. v. Jeffrey E. Martin, 128 U.S.P.Q.2d 1786 (TTAB 2018).
When applying for trademark/service mark registration with the U.S. Patent and Trademark Office (USPTO), an examining attorney reviews the application to determine whether it complies with applicable statutes and rules. If there are any substantive, technical, or procedural deficiencies, the examining attorney will likely issue an Office Action letter explaining any of these refusals. One of these refusals can be based on the proposed mark failing to function as a trademark because the proposed mark merely communicates information about the goods/services, uses widely used commonplace, social, political, or religious messages, or directly quotes passages or citations from religious texts. Some examples include: “I ♥ DC” for clothing items; “ONCE A MARINE, ALWAYS A MARINE” for various clothing items; “BRAND NAMES FOR LESS” for retail store services; and “PROUDLY MADE IN THE USA” for electric shavers.
The U.S. Patent and Trademark Office (USPTO) recently issued a guide for aiding in the determination of whether a proposed mark functions as mark. The guide creates categories for types of matter that may be considered merely informational, discusses when an examining attorney must refuse registration or require a disclaimer, provides applicant response options, and illustrates case law examples. For example, under applicant response options, should the applicant receive this type of refusal, the applicant must show that the public perception of the proposed mark is that of a source indicator. Evidence of the applicant's use as a mark or exclusive use in the relevant marketplace for the goods/services under the mark can be supportive towards overcoming this refusal.
The USPTO will shortly launch its new fee payment system called the Financial Manager. The Financial Manager is designed to be a seamless online fee payment management system. Accordingly, under the new system, users will be able to virtually manage, store and review payment methods. Additionally, the system will generate and download transaction reports, assign user permits, and provide notifications for administrative matters.
March is National Women’s History Month. Women have been instrumental in shaping the story of technological America. Their ingenuity, resilience, and willingness to challenge old norms has played an integral role in American innovation and technology.
The United States Patent and Trademark Office (“USPTO”) is in quest to deliberate on issues concerning protections from disclosure for communications between patent applicants and their patent advisors. More specifically, the USPTO is commencing a discussion on whether and to what extent the U.S. Courts should recognize privilege for communications between U.S. patent practitioners and their clients in foreign jurisdictions; U.S. applicants and their "non-attorney" U.S. patent agents; and between foreign patent practitioners and their clients.
The United States Patent and Trademark Office (USPTO) has declared that copyrighted materials are crucial to the Patent System and should not be threatened as copyright infringement. These remarks come in at an opportune time as the USPTO sought to intervene in a copyright infringement suit against Defendant McDonnell Boehnen Hubert & Berghoff LLP, whose patent prosecution attorneys have been sued by Plaintiff Publishers for using their copyrighted material in patent applications.
According to the documents produced in response to a recent USPTO FOIA request, the Sensitive Application Warning System (SAWS) is “designed as an information gathering system to apprise various areas of the PTO of the prosecution of patent applications that include sensitive subject matter.” “Sensitive” subject matter, in this case, has rather broad scope including applications disclosing frivolous, silly, or controversial subject matter, especially subject matter generating extensive media coverage. A 1989 memo initially detailing the SAWS project was publicized in 2006, but the most recent FOIA request provides additional insight, including USPTO internal memoranda to each technology center outlining specific topics for each center as well as protocol for flagging and reviewing “sensitive” applications.
In a 2-1 landmark decision, the United States Patent and Trademark Office cancelled six (6) "WASHINGTON REDSKINS" federal trademark registrations finding that the name “Redskins” is “disparaging to Native Americans” at the respective times they were registered, in violation of Section 2(a) of the Trademark Act.
A new rule proposal signed by Michelle Lee, deputy director of the United States Patent and Trademark Office, would require disclosure of the true owner of patents and patent applications.