Trademark Prosecution Luncheon

May 15, 2014

USPTO

• April 2014 version of TMEP published – clarifications/ revisions regarding:– Trade dress examination– gTLD marks– Examples of unacceptable statements in

describing a mark or disclaimer, e.g. can’t exclude a color that isn’t in the drawing

– Partial abandonment treatment– Filing multiple assignments with the same

execution date – requires manual review– others

USPTO Proposes Fee Reductions – Really!

• Fee reductions if efiling is used AND if Applicant authorizes email communications– Regular app - $325 $275/class (“TEAS

Reduced Fee”)– Teas Plus - $275 $225– Renewal - $400 $300

• Paper fee unchanged• Written comments due by June 23rd

FRANKNDODD (not by Shelley)

• M&F applied to register FRANKNDODD for  “Providing legal information relating to legislation• refused b/c identifies living individuals – REVERSED:

– combines surnames into single expression, used by media to refer to the “Dodd-Frank Act”, not individuals

– “FrankNDodd” or “FrankenDodd” is not a recognized nickname

– proposed mark reverses order of names and adds “N,” resulting in negative allusion to “Frankenstein” monster,

– relevant consuming public would understand “FrankNDodd” refers to “Dodd-Frank Act”

• In re Morrison & Foerster LLP, 110 USPQ2d 1423 (TTAB 2014)

Opposition Estoppel?

• “Courts give preclusive effect to the final determinations of an administrative agency so long as the agency was acting in a judicial capacity and resolved issues of fact properly” C&N Corp. v Kane, 953 F.Supp.2d 903 (E.D. Wis. 2013)

• But see B&B Hardware, Inc. v. Hargis Indus., 716 F.3d 1020 (8th Cir. 2013) – TTAB Decision not binding because “it ignores a critical determination of trademark infringement, than being the marketplace usage of the marks and products.”