Response to Office Actions in the U.S Patent  Trademark Office, Trademark Division

Response to Office Actions in the U.S Patent Trademark Office, Trademark Division PowerPoint PPT Presentation


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Response to Office Actions in the U.S Patent Trademark Office, Trademark Division

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1. Response to Office Actions in the U.S Patent & Trademark Office, Trademark Division November 17 and 19, 2003

4. Section 8 Affidavits When: Between 5th and 6th year; Within 6 months after the expiration of the 6th year by paying additional fee. AND: Between 9th and 10th year and each successive 9th and 10th year; Or within 6 months after expiration of 10th year by paying additional fee.

5. Section 8 Affidavits What: Statement that the mark is currently in use; Accompanied by specimen for each class. Or: Statement of excusable non-use.

6. Section 15 When: Between the 5th and 6th anniversary following any 5 year period of continuous use where the registration has not been challenged; What: Affidavit stating the mark has been in continuous use for prior 5 years on the goods/services identified; No adverse decision re: the mark; No pending cases challenging the mark; Fee. Usually done in conjunction with the first Section 8 Affidavit

7. Section 15 Why: Incontestability Not absolute, but very valuable: E.g. Cannot challenge on descriptive grounds or likelihood of confusion. Can be challenged for: Fraud Genericness Abandonment. See www.uspto.gov

8. Section 9: Renewals When: Within 1 year of each 10 year period Or within 6 months following with payment of additional fee. What: Request to renew. Fee. Done in conjunction with the second Section 8 Affidavit See www.uspto.gov

11. The Trademark Manual of Examining Procedure TMEP See www.uspto.gov

12. Responding to Office Actions 2(d): Likelihood of Confusion Possible responses: Argue against citation; Petition to cancel; Purchase the mark. Arguing against the citation Argue the DuPont factors: Dissimilarity of the marks Dissimilarity of goods/services Dissimilarity of trade channels Purchase condition—impulse v. careful purchase Fame of prior mark Include 3rd party registrations showing a crowded field Actual confusion Long time use without actual confusion

13. 2(d) Likelihood of Confusion (cont.) Case Law Word of caution Point out the market place realities that makes the likelihood of confusion less likely Examining Attorney might not have a strong opinion on this issue—don’t panic or be discouraged They are sometimes merely to obtain from you a justification for letting the mark pass to registration Make sure the record is complete before the appeal to the TTAB

14. 2(e)(1) Descriptiveness/ Misdescriptiveness Possible responses: Argue against refusal 2(f) Amend to supplemental registration Most effective arguments in support of position: Alternate meanings Trademark office practice (look at the register) How it is actually used Presumption of registrability Relationship between descriptive and misdescriptive Relationship between misdescriptive & deceptive Relationship to generic terms

15. 2(e)(2) & 2(e)(3)Geographically descriptive or deceptively misdescriptive Possible responses: Argue against refusal 2(f) Amend to supplemental registration Understanding the refusal: Mark must “primarily” geographical Must be a goods/place association.

16. 2(e)(2) & 2(e)(3) –cont. Most effective arguments against refusal: Mark is not primarily geographical because: Other meanings; No meaning to consuming public (obscure place names); No commercial activity; Combination removes geographic meaning No goods/place association Relationship to deceptiveness refusal under 2(a) Materially affect purchasers decision

17. 2(e)(4): Primarily merely a surname Possible responses: Argue against refusal 2(f) Amend to Supplemental Registration Understanding the refusal Primary significance of the mark must be a surname significance Consequently: Surname plus descriptive, suggestive or arbitrary matter is not subject to the refusal; Surname plus generic matter is, however. E.g. Hamilton Pharmaceuticals

18. 2(e)(4): Surname (cont.) Surname with a distinctive design element is not subject to refusal Double surnames, e.g. Schaub-Lorenz, not subject to refusal Possessives (McDonald’s), preceded by initials (J.C. Higgins), with title (Mlle. Revillon) are all subject to refusal

19. 2(e)(4): Surname (cont.) Best arguments in support of position: Other meanings for the word: e.g Hunt Has geographical significance: e.g. Fairbanks Rare surname: e.g. Garan Phonetic equivalent of non-surname term—not too effective

20. 2(f) Secondary Meaning Effective to register marks that have been refused under Section 2(e): Descriptive Geographic descriptive or misdescriptive Surname To avoid disclaimer (in certain circumstances) Effective to show: Ornamental matter functions as a mark Functional matter functions as a mark

21. 2(f) Secondary Meaning Not effective against: 2(a) refusals: disparaging, deceptive, etc. Generic terms or so highly descriptive as to be incapable De jure functional refusal Not available for ITU applications, with one exception Nature of 2(f) evidence: Prior registrations for same mark on related goods 5 years continuous and exclusive use Evidence of distinctiveness

22. 2(f) Secondary Meaning Evidence of distinctiveness: Long use Advertising expenditures Affidavits of distinctiveness Surveys, consumer research, etc.

23. 2(f) in part To avoid a disclaimer requirement Where mark as a whole may be descriptive but you have acquired distinctiveness only as to a part of the mark

24. Disclaimers Required when otherwise unregistrable matter forms part of a mark Cannot disclaim entire mark Usually reserved for the 2(e) refusals and generic matter, although surnames will not be required to disclaimed One can oppose on the grounds that someone else did not disclaim matter

25. Disclaimers Arguments against disclaiming: Slogans Incongruity (e.g. Mr. Microwave) Double entendre Otherwise unitary with registrable portion of the mark E.g. BUDBEER; BUD-BEER; 2(f) in part Consider removing the matter entirely Issue: should you volunteer disclaimers? E.g. Mission: Bermuda Triangle

26. Misc. Refusals Ornamental “Secondary source” Practice in the trade Functionality of Configurations De jure v. de facto funtionality Goes to superiority of the design

27. Specimens Mark doesn’t match the mark on the specimens Must either replace specimens or amend the mark (but cannot make a material alteration of the mark!) Specimens do not show use in relation to the identified goods and services Can amend goods or services (but only a narrowing) or submit substitute specimens (but must have been in use prior to the filing date of the application). Don’t help the examining attorney with their refusal e.g. Killarney’s Red Lager

28. Services Most common and problematic refusal: activities do not constitute a service Service must be: A real activity Performed for the benefit of another Not merely an ancillary activity E.g. Advertising services E.g. Contests

29. Dealing with the PTO Understand the interests of the Examining Attorney: they are best served by a perfect application! They want to register marks. You can press a point, but don’t be argumentative Personal interviews: Useful or not? Risks of going over the head of Examining Attorney Ultimately, treat the Examining Attorney with the same respect you would want to be treated

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