In USPTO v. Booking.com, the Supreme Court held a term styled "generic.com" can be federally registered as a mark if evidence supports that consumers consider the term to not mean a generic name of a class of goods or services.
Booking.com provides travel-reservation services and sought federal registration of the domain name: "Booking.com." The USPTO refused registration because it considered it a generic name for online hotel-reservation services. The courts below the Supreme Court sided with Booking.com.
It should be noted, the Supreme Court expressly rejected the USPTO's argument for a per se rule when a generic term (e.g., booking) is combined with an Internet-domain name suffix like “.com,” the resulting combination remains generic. Thus, we may see trademark surveys being filed in support of domain names.
Copyright © 2020 Robert Moll. All rights reserved.
Showing posts with label trademark. Show all posts
Showing posts with label trademark. Show all posts
Monday, July 13, 2020
Saturday, August 10, 2019
USPTO - Foreign-domiciled Trademark Applicants and Trademark Registrants Require US Attorney
On August 3, 2019, the USPTO announced:
"If you are a foreign-domiciled trademark applicant, registrant, or party to Trademark Trial and Appeal Board proceedings, in all U.S. trademark matters you must now be represented by an attorney who is licensed to practice law in the United States. This includes Canadian applicants, registrants, and parties.
In addition to this change, U.S.-licensed attorneys representing anyone before the USPTO in trademark matters are now required to confirm they are an active member in good standing of their bar and to provide their bar membership information.
Learn more about this federal trademark law change."
Copyright © 2019 Robert Moll. All rights reserved.
"If you are a foreign-domiciled trademark applicant, registrant, or party to Trademark Trial and Appeal Board proceedings, in all U.S. trademark matters you must now be represented by an attorney who is licensed to practice law in the United States. This includes Canadian applicants, registrants, and parties.
In addition to this change, U.S.-licensed attorneys representing anyone before the USPTO in trademark matters are now required to confirm they are an active member in good standing of their bar and to provide their bar membership information.
Learn more about this federal trademark law change."
Copyright © 2019 Robert Moll. All rights reserved.
Friday, December 7, 2018
WIPO - World Intellectual Property Indicators 2018 - Global IP Activity
WIPO recently published the World Intellectual Property Indicators 2018. It is detailed 231-page look at global IP (e.g., patent and trademark) activity:
From the Foreword:
"Against the backdrop of solid economic growth worldwide, global intellectual property (IP) filing activity set new records in 2017. Patent filings around the world reached 3.17 million, representing a 5.8% growth on 2016 figures. Trademark filing activity totaled 12.39 million, up 26.8% on 2016. Industrial design filing activity exceeded 1.24 million. China remained the main driver of global growth in IP filings. From already high levels, patent filings in China grew by 14.2% and trademark filing activity in China by 55.2%. These high growth rates propelled China’s shares of global patent filings and trademarks filing activity to reach 43.6% and 46.3%, respectively. Japan (+24.2%) and the United States of America (+12.6%) also saw strong growth in trademark filing activity. However, both of those countries recorded almost no growth in patent filings. The Republic of Korea saw a decline in filing activity for patents and trademarks for the second consecutive year. Other notable trends include large increases in trademark filing activity in the Islamic Republic of Iran (+87.9%), the United Kingdom (+24.1%) and Canada (+19.5%). With regard to industrial design filing activity, the United Kingdom (+92.1%), Spain (+23.5%) and Switzerland (+17.9%) saw double-digit growth in 2017."
Copyright © 2018 Robert Moll. All rights reserved.
From the Foreword:
"Against the backdrop of solid economic growth worldwide, global intellectual property (IP) filing activity set new records in 2017. Patent filings around the world reached 3.17 million, representing a 5.8% growth on 2016 figures. Trademark filing activity totaled 12.39 million, up 26.8% on 2016. Industrial design filing activity exceeded 1.24 million. China remained the main driver of global growth in IP filings. From already high levels, patent filings in China grew by 14.2% and trademark filing activity in China by 55.2%. These high growth rates propelled China’s shares of global patent filings and trademarks filing activity to reach 43.6% and 46.3%, respectively. Japan (+24.2%) and the United States of America (+12.6%) also saw strong growth in trademark filing activity. However, both of those countries recorded almost no growth in patent filings. The Republic of Korea saw a decline in filing activity for patents and trademarks for the second consecutive year. Other notable trends include large increases in trademark filing activity in the Islamic Republic of Iran (+87.9%), the United Kingdom (+24.1%) and Canada (+19.5%). With regard to industrial design filing activity, the United Kingdom (+92.1%), Spain (+23.5%) and Switzerland (+17.9%) saw double-digit growth in 2017."
Copyright © 2018 Robert Moll. All rights reserved.
Wednesday, December 5, 2018
USPTO - Trademark Manual of Examining Procedure (TMEP)
This Fall the USPTO announced publication of the latest Trademark Manual of Examining Procedure (TMEP):
"This revision clarifies USPTO trademark policies and practices and includes relevant Trademark Trial and Appeal Board and court decisions reported before Sept. 15.
This revision supersedes prior versions of the TMEP, examination guides, or any other statement of USPTO policy to the extent that there is any conflict.
For a complete list of changes, see the Change Summary."
Copyright © 2018 Robert Moll. All rights reserved.
"This revision clarifies USPTO trademark policies and practices and includes relevant Trademark Trial and Appeal Board and court decisions reported before Sept. 15.
This revision supersedes prior versions of the TMEP, examination guides, or any other statement of USPTO policy to the extent that there is any conflict.
For a complete list of changes, see the Change Summary."
Copyright © 2018 Robert Moll. All rights reserved.
Sunday, December 31, 2017
IP Watchdog: What Mattered in 2017: Industry Insiders Reflect Biggest Moments in IP
IP Watchdog: What Mattered in 2017: Industry Insiders Reflect Biggest Moments in IP does a nice job of using industry experts to highlight the key events in patent law in 2017.
Copyright © 2017 Robert Moll. All rights reserved.
Copyright © 2017 Robert Moll. All rights reserved.
Thursday, November 3, 2016
TTAB - Enhancements to Trademark Trial and Appeal Board Proceedings
Today, Chief Administrative Trademark Judge Gerard F. Rogers posted on the TTAB rule changes:
"The Trademark Trial and Appeal Board (TTAB) announced the culmination of an in-depth outreach effort to stakeholders focused on enhancing the Board’s appeal and trial processes. In a Notice of Final Rule-Making (NFRM), published in the Federal Register on October 7, 2016, the USPTO said new rule changes will benefit the public by providing more clarity in the rules, flexibility for parties involved in Board proceedings, and increased procedural efficiency. At the same time, the rules further a USPTO strategic objective to increase end-to-end electronic processing of trademark matters, which reduce costs to the USPTO and the public, and helps avoid errors that may creep into records during manual entry of data contained in paper filings.
The last major set of TTAB rule changes took effect in 2007. Since then, there have been case law developments, changes in the Federal Rules of Civil Procedure, and the rollout of the USPTO’s Accelerated Case Resolution (ACR) process. Therefore, it is an ideal time to update the rules to make the benefits of ACR available to all parties, as well as to promote electronic filing and communication. The rule changes, major provisions of which are summarized below, reflect significant input from the Trademark Public Advisory Committee, individual stakeholders, and professional associations, and have been well-received since publication in the Federal Register.
One of the most overarching rule changes involves the Board assuming responsibility for service of the complaint filed to initiate an inter partes proceeding. This rule change shifts responsibility for service of the complaint in an opposition or cancellation proceeding from the plaintiff to the Board, in an effort to reduce the responsibilities of litigants during the commencement of a proceeding.
Another exciting change is the Board moving exclusively to use of electronic filings and communication. In this new all-electronic environment,instead of mailing hard copies of institution orders and complaints, the Board forwards an order by email, with a link to both the proceeding file and the complaint, as displayed in the Board’s electronic docketing system known as TTABVUE. The rule changes also mandate that parties file documents through ESTTA, the Board’s electronic filing system. That requirement results in cost-savings to the USPTO and to private litigants, and will increase the efficiency with which the Board can process matters. Finally, filings and papers are now required to be exchanged between parties by email, with exceptions made for technical problems or extraordinary circumstances; and to allow the parties flexibility, they may agree to alternate methods of communication or exchange of documents and information that work best in their particular circumstances.
Reflecting recent amendments to the Federal Rules of Civil Procedure, new discovery provisions in the rule changes help curtail abuse and reduce litigation expense for stakeholders. The number of requests for production of documents and requests for admission are now limited to 75, paralleling the current limitation on interrogatories. To avoid disadvantaging parties that use requests for admission to authenticate produced documents, the changes provide for one comprehensive request for admission to the producing party to seek authentication of identified documents or specification of those documents which cannot be authenticated. This option facilitates introduction of produced documents at trial by notice of reliance, rather than through painstaking witness identification and testimony, thereby providing the parties more flexibility during trial. Finally, the rule changes afford the parties substantial flexibility to stipulate to various limitations on discovery in terms of duration, number of requests, and the elimination of discovery altogether.
Additionally, the rule changes establish new deadlines in discovery, paving the way for another significant change -- a requirement that motions to compel discovery or to determine the sufficiency of responses to requests for admission be filed prior to the deadline for plaintiff’s pretrial disclosures. These revisions help parties avoid the expense and uncertainty that arise when discovery disputes erupt on the eve of trial and ensure parties make pretrial disclosures and engage in trial preparation only after all discovery issues have been resolved. As with the timing of motions relating to discovery disputes, motions for summary judgment must be filed prior to the deadline for plaintiff’s pretrial disclosures. This avoids disruption of trial planning and preparation which can occur by filing such motions late in the process.
ACR procedures have proven particularly effective at streamlining trial proceedings. These include agreements to limit discovery and to shorten trial periods or the time between trial periods, and stipulations to certain facts or to the admissibility of documents or other evidence. Accordingly, parties are still able to enter into stipulations regarding proffers of testimony, but the rules allow any party unilaterally to choose to present trial testimony by affidavit or declaration, subject to the right of cross-examination by the adverse party or parties.
Finally, the rule changes include expanding the parties’ options through which evidence is submitted during trial. Parties may now make of record, via notice of reliance, pleaded registrations and registrations owned by any party by submitting a current copy of information from the USPTO electronic database records showing current status and title; and the rule changes codify this option. In addition, parties may now also use the notice of reliance method for submitting internet materials.
The rule changes become effective January 14, 2017, and apply to all proceedings pending at that time or begun thereafter. All employees at the Board, including our 243 information specialists and paralegals, our 245 attorneys, and our judges, have been involved in identifying these improvements, and we strongly believe that these changes help streamline our trial proceedings and avoid unnecessary expense and complications for parties involved in our cases. We continue to welcome any feedback you have on TTAB trial proceedings in order to increase clarity, efficiency, and effectiveness of our processes."
Copyright © 2016 Robert Moll. All rights reserved.
"The Trademark Trial and Appeal Board (TTAB) announced the culmination of an in-depth outreach effort to stakeholders focused on enhancing the Board’s appeal and trial processes. In a Notice of Final Rule-Making (NFRM), published in the Federal Register on October 7, 2016, the USPTO said new rule changes will benefit the public by providing more clarity in the rules, flexibility for parties involved in Board proceedings, and increased procedural efficiency. At the same time, the rules further a USPTO strategic objective to increase end-to-end electronic processing of trademark matters, which reduce costs to the USPTO and the public, and helps avoid errors that may creep into records during manual entry of data contained in paper filings.
The last major set of TTAB rule changes took effect in 2007. Since then, there have been case law developments, changes in the Federal Rules of Civil Procedure, and the rollout of the USPTO’s Accelerated Case Resolution (ACR) process. Therefore, it is an ideal time to update the rules to make the benefits of ACR available to all parties, as well as to promote electronic filing and communication. The rule changes, major provisions of which are summarized below, reflect significant input from the Trademark Public Advisory Committee, individual stakeholders, and professional associations, and have been well-received since publication in the Federal Register.
One of the most overarching rule changes involves the Board assuming responsibility for service of the complaint filed to initiate an inter partes proceeding. This rule change shifts responsibility for service of the complaint in an opposition or cancellation proceeding from the plaintiff to the Board, in an effort to reduce the responsibilities of litigants during the commencement of a proceeding.
Another exciting change is the Board moving exclusively to use of electronic filings and communication. In this new all-electronic environment,instead of mailing hard copies of institution orders and complaints, the Board forwards an order by email, with a link to both the proceeding file and the complaint, as displayed in the Board’s electronic docketing system known as TTABVUE. The rule changes also mandate that parties file documents through ESTTA, the Board’s electronic filing system. That requirement results in cost-savings to the USPTO and to private litigants, and will increase the efficiency with which the Board can process matters. Finally, filings and papers are now required to be exchanged between parties by email, with exceptions made for technical problems or extraordinary circumstances; and to allow the parties flexibility, they may agree to alternate methods of communication or exchange of documents and information that work best in their particular circumstances.
Reflecting recent amendments to the Federal Rules of Civil Procedure, new discovery provisions in the rule changes help curtail abuse and reduce litigation expense for stakeholders. The number of requests for production of documents and requests for admission are now limited to 75, paralleling the current limitation on interrogatories. To avoid disadvantaging parties that use requests for admission to authenticate produced documents, the changes provide for one comprehensive request for admission to the producing party to seek authentication of identified documents or specification of those documents which cannot be authenticated. This option facilitates introduction of produced documents at trial by notice of reliance, rather than through painstaking witness identification and testimony, thereby providing the parties more flexibility during trial. Finally, the rule changes afford the parties substantial flexibility to stipulate to various limitations on discovery in terms of duration, number of requests, and the elimination of discovery altogether.
Additionally, the rule changes establish new deadlines in discovery, paving the way for another significant change -- a requirement that motions to compel discovery or to determine the sufficiency of responses to requests for admission be filed prior to the deadline for plaintiff’s pretrial disclosures. These revisions help parties avoid the expense and uncertainty that arise when discovery disputes erupt on the eve of trial and ensure parties make pretrial disclosures and engage in trial preparation only after all discovery issues have been resolved. As with the timing of motions relating to discovery disputes, motions for summary judgment must be filed prior to the deadline for plaintiff’s pretrial disclosures. This avoids disruption of trial planning and preparation which can occur by filing such motions late in the process.
ACR procedures have proven particularly effective at streamlining trial proceedings. These include agreements to limit discovery and to shorten trial periods or the time between trial periods, and stipulations to certain facts or to the admissibility of documents or other evidence. Accordingly, parties are still able to enter into stipulations regarding proffers of testimony, but the rules allow any party unilaterally to choose to present trial testimony by affidavit or declaration, subject to the right of cross-examination by the adverse party or parties.
Finally, the rule changes include expanding the parties’ options through which evidence is submitted during trial. Parties may now make of record, via notice of reliance, pleaded registrations and registrations owned by any party by submitting a current copy of information from the USPTO electronic database records showing current status and title; and the rule changes codify this option. In addition, parties may now also use the notice of reliance method for submitting internet materials.
The rule changes become effective January 14, 2017, and apply to all proceedings pending at that time or begun thereafter. All employees at the Board, including our 243 information specialists and paralegals, our 245 attorneys, and our judges, have been involved in identifying these improvements, and we strongly believe that these changes help streamline our trial proceedings and avoid unnecessary expense and complications for parties involved in our cases. We continue to welcome any feedback you have on TTAB trial proceedings in order to increase clarity, efficiency, and effectiveness of our processes."
Copyright © 2016 Robert Moll. All rights reserved.
Saturday, October 29, 2016
TTAB - Trademark Trial and Appeal Board Rules Change on January 14, 2017
The Trademark Trial and Appeal Board Rules (TTAB) has amended its rules of practice for all cases pending on or filed after January 14, 2017. For the amended rules see Notice of Final Rulemaking (NFRM) and summary chart.
Copyright © 2016 Robert Moll. All rights reserved.
Copyright © 2016 Robert Moll. All rights reserved.
Thursday, December 24, 2015
USPTO - Major Power Outage and Service Interruption on December 22-25, 2015
The USPTO stated it had "a
major power outage on December 22, 2015, damaging equipment that
required the subsequent shutdown of many of its online and IT systems. This
includes its filing, searching, and payment systems, as well as the systems
used by examiners across the country. As of December 24, the USPTO estimates
that these systems will be impacted through at least the Federal holiday on
Friday, December 25, 2015."
"The USPTO web site at http://www.uspto.gov/blog/ebiz/ reports that under this emergency situation, it will consider each day from Tuesday, December 22, 2015, through Thursday, December 24, 2015, to be a “Federal holiday within the District of Columbia” under 35 U.S.C. § 21 and 37 C.F.R. §§ 1.6, 1.7, 1.9, 2.2(d), 2.195, and 2.196. Any action or fee due on these days will be considered as timely for the purposes of, e.g., 15 U.S.C. §§ 1051(b), 1058, 1059, 1062(b), 1063, 1064, and 1126(d), or 35 U.S.C. §§ 119, 120, 133, and 151, if the action is taken, or the fee paid, on the next succeeding business day on which the USPTO is open (37 C.F.R. §§ 1.7(a) and 2.196).
A subsequent notice is anticipated to be issued as needed if the USPTO’s systems are not fully operational by Monday, December 28, 2015.
Correspondence
Under 37 C.F.R. §§ 1.6(a)(2), 2.195(a)(4), and 2.198, certain correspondence deposited in the Priority Mail Express® service of the United States Postal Service (USPS) in accordance with 37 C.F.R. §§ 1.10 or 2.198 will be considered filed on the date of deposit (as shown by the “date accepted” on the mailing label) with the USPS.
Thus, any paper or fee properly deposited in the Priority Mail Express® service of the USPS on Tuesday, December 22, 2015, Wednesday, December 23, 2015, or Thursday, December 24, 2015, in accordance with 37 C.F.R. §§ 1.10 or 2.198, will be considered filed on its respective date of deposit in the Priority Mail Express® service of the USPS (as shown by a “date accepted” on the mailing label).
Under 37 C.F.R. §§ 1.6(a)(4) and 2.195(a)(2), patent- and trademark-related correspondence transmitted electronically to the USPTO will be considered filed in the USPTO on the date the USPTO received the electronic transmission.
Thus, any patent- or trademark-related correspondence transmitted electronically to the USPTO on Tuesday, December 22, 2015, Wednesday, December 23, 2015, or Thursday, December 24, 2015, will be considered filed in the USPTO on the date the USPTO received the electronic transmission.
Patent correspondence successfully received by the USPTO through the Electronic Filing System (EFS-Web) and filed in compliance with the EFS-Web Legal Framework will receive the date indicated on the Acknowledgement Receipt.
Trademark filings properly filed through TEAS, TEASi, and ESTTA will receive the date indicated in the e-mail confirmation sent at the time of a successful filing.
Status updates will be issued on the USPTO systems alert page (www.uspto.gov/blog/ebiz/) as they become available, as well as on the USPTO Facebook (www.facebook.com/uspto.gov (link is external)) and Twitter (www.twitter.com/uspto (link is external)) accounts.
For further questions, contact the Patents Electronic Business Center (PEBC) by telephone at 1-866-217-9197 or by email at ebc@uspto.gov. PEBC hours of operation Monday through Friday, from 6 a.m. to midnight."
Copyright © 2015 Robert Moll. All rights reserved.
"The USPTO web site at http://www.uspto.gov/blog/ebiz/ reports that under this emergency situation, it will consider each day from Tuesday, December 22, 2015, through Thursday, December 24, 2015, to be a “Federal holiday within the District of Columbia” under 35 U.S.C. § 21 and 37 C.F.R. §§ 1.6, 1.7, 1.9, 2.2(d), 2.195, and 2.196. Any action or fee due on these days will be considered as timely for the purposes of, e.g., 15 U.S.C. §§ 1051(b), 1058, 1059, 1062(b), 1063, 1064, and 1126(d), or 35 U.S.C. §§ 119, 120, 133, and 151, if the action is taken, or the fee paid, on the next succeeding business day on which the USPTO is open (37 C.F.R. §§ 1.7(a) and 2.196).
A subsequent notice is anticipated to be issued as needed if the USPTO’s systems are not fully operational by Monday, December 28, 2015.
Correspondence
Under 37 C.F.R. §§ 1.6(a)(2), 2.195(a)(4), and 2.198, certain correspondence deposited in the Priority Mail Express® service of the United States Postal Service (USPS) in accordance with 37 C.F.R. §§ 1.10 or 2.198 will be considered filed on the date of deposit (as shown by the “date accepted” on the mailing label) with the USPS.
Thus, any paper or fee properly deposited in the Priority Mail Express® service of the USPS on Tuesday, December 22, 2015, Wednesday, December 23, 2015, or Thursday, December 24, 2015, in accordance with 37 C.F.R. §§ 1.10 or 2.198, will be considered filed on its respective date of deposit in the Priority Mail Express® service of the USPS (as shown by a “date accepted” on the mailing label).
Under 37 C.F.R. §§ 1.6(a)(4) and 2.195(a)(2), patent- and trademark-related correspondence transmitted electronically to the USPTO will be considered filed in the USPTO on the date the USPTO received the electronic transmission.
Thus, any patent- or trademark-related correspondence transmitted electronically to the USPTO on Tuesday, December 22, 2015, Wednesday, December 23, 2015, or Thursday, December 24, 2015, will be considered filed in the USPTO on the date the USPTO received the electronic transmission.
Patent correspondence successfully received by the USPTO through the Electronic Filing System (EFS-Web) and filed in compliance with the EFS-Web Legal Framework will receive the date indicated on the Acknowledgement Receipt.
Trademark filings properly filed through TEAS, TEASi, and ESTTA will receive the date indicated in the e-mail confirmation sent at the time of a successful filing.
Payment Processing
The USPTO system outage has affected the ability for customers to process
Patent Maintenance Fee payments and submit Deposit Account replenishments
online via the Finance Online Shopping Page. Available alternatives include
the following:
Patent Maintenance Fees: Pay
by wire or mail as instructed at www.uspto.gov/patents-maintaining-patent/maintain-your-patent.
The payment date will be the date received at the USPTO unless you are using
the certificate of mailing procedure set forth in 37 CFR 1.8 or the USPTO
Priority Mail Express procedure set forth in 37 CFR 1.10.
Deposit Account Replenishment: Replenish
by wire or mail as instructed at www.uspto.gov/learning-and-resources/fees-and-payment/deposit-accounts/deposit-account-replenishment-options.
Note that replenishments will be processed as of the date received, but deposit
account balances will not reflect these replenishments until USPTO systems
are restored.
Public and Private Patent Application Information Retrieval (PAIR) are
also impacted.Status updates will be issued on the USPTO systems alert page (www.uspto.gov/blog/ebiz/) as they become available, as well as on the USPTO Facebook (www.facebook.com/uspto.gov (link is external)) and Twitter (www.twitter.com/uspto (link is external)) accounts.
For further questions, contact the Patents Electronic Business Center (PEBC) by telephone at 1-866-217-9197 or by email at ebc@uspto.gov. PEBC hours of operation Monday through Friday, from 6 a.m. to midnight."
Copyright © 2015 Robert Moll. All rights reserved.
Sunday, November 3, 2013
USPTO Publishes Updated Trademark Manual of Examining Procedure
On October 30, 2013, the USPTO published the updated Trademark Manual of Examining Procedure (TMEP). I am a patent attorney, however, when I do have a trademark question this is a great place to start. Here's a web link to the TMEP by chapters and also as zip files in PDF and HTML.
Copyright © 2013 Robert Moll. All rights reserved.
Copyright © 2013 Robert Moll. All rights reserved.
Wednesday, September 4, 2013
USPTO - IP Awareness Assessment
If you are interested in knowing more about IP without receiving a legal bill from your attorney, you may want to check out this new feature on the USPTO web site. The USPTO and the National Institute of Standards and Technology Manufacturing Extension Partnership developed an online IP Awareness Assessment which covers IP strategies, best practices, international IP rights, IP asset tracking, licensing technology to others, and using technology of others. It covers five categories of IP: copyright, design patents, trademarks, trade secrets, and utility patents. The assessment is free and takes 10-30 minutes.
Copyright © 2013 Robert Moll. All rights reserved.
Copyright © 2013 Robert Moll. All rights reserved.
Subscribe to:
Posts (Atom)