TMEP 6 TH EDITION: Highlights of Changes. December 7, 2009

Transcription

1 TMEP 6 TH EDITION: Highlights of Changes December 7,

2 TMEP 6 th Edition Incorporates Exam Guides since the TMEP 5 th Edition: Letters of Protest Description of the Mark Section 2(b) Flags/Coats of Arm/Other Insignia Madrid ID Issues Doctrine of Foreign Equivalents Deceptive Marks Geographically Deceptive Marks Slide 2

3 TMEP 6 th Edition Incorporates January 2009 miscellaneous changes to the Rules of Practice in Trademark Cases Incorporates new CAFC or TTAB precedent since the TMEP 5 th Edition, reported prior to September 1, 2009 Includes miscellaneous revisions throughout the TMEP resulting from review of the chapters, suggestions, etc. Slide 3

4 APPLICATION FILING DATE Clear Drawing TEAS Applications The image file attached to the mark information field or a standard character mark in the mark information field controls if a different mark appears elsewhere in the application. TMEP and Slide 4

5 Mark Information Field Slide 5

6 Mark Information Field Slide 6

7 Image File Slide 7

8 APPLICATION FILING DATE Identification of Goods/Services Only goods and/or services listed in the proper field on a TEAS or TEAS Plus application will be considered for determining whether the application meets the requirements for receipt of a filing date. TMEP Slide 8

9 Drawings and Descriptions Trade Dress Applications Drawing may not contain elements that are not part of the mark Elements that are not part of the mark or show placement: use dotted lines Photographs can be acceptable TMEP (c)(i) Slide 9

10 Drawings and Descriptions Trade Dress Applications The dotted lines depict placement of the mark... The mark consists of a red stripe Slide 10

11 Drawings and Descriptions Trade Dress Applications Matter that is functional or shows only placement should not be disclaimed Matter that is capable of acquiring distinctiveness may be disclaimed TMEP (c)(i) Slide 11

12 SUBSTANTIVE ISSUES Substantive Refusals in 1(b), 44 and 66(a) Applications Substantive refusals based on failure to function as a mark, lack of distinctiveness, or ornamentation may be issued in a 1(b), 44 or 66(a) application when the drawing and description of the mark clearly indicate that the refusal is warranted. TMEP 1202; (b)(ii) and (e). Slide 12

13 SUBSTANTIVE ISSUES Substantive Refusals in 1(b), 44 and 66(a) Applications The drawing is: The description of the mark is: The mark consists of a repeating diamond shaped pattern to be applied to the entire surface of the goods. A refusal based on ornamentation under 1, 2 and 45 of the Trademark Act is appropriate in a 1(b), 44 or 66(a) application. Slide 13

14 SUBSTANTIVE ISSUES Substantive Refusals in 1(b), 44 and 66(a) Applications Substantive refusals based on failure to function as a mark may be issued when the record clearly and unequivocally indicates that the refusal is warranted. TMEP (c); (a)(iii); (f); (a)(iii) and (a). Slide 14

15 SUBSTANTIVE ISSUES Substantive Refusals in 1(b), 44 and 66(a) Applications Example: Applicant is a law firm and the identification of goods states: holiday greeting cards. A refusal based on no goods in trade under 1, 2 and 45 of the Trademark Act is appropriate in a 1(b), 44 or 66(a) application. Slide 15

16 Republication Required after entry of any acceptable post-publication amendment that Expands applicant s rights or Requires notice to third parties Not required when amendment limits applicant s rights New TMEP (a) and (b) Slide 16

17 EXAMINATION PROCEDURE Unnecessary 2(f) Claim or Disclaimer Does applicant wish to delete the statement or to rely on it? Inquiry may be made by telephone or . If no response to telephone or message within a week, enter Note to the File and approve for publication without deleting the 2(f) claim or disclaimer. TMEP (d) and (c) Slide 17

18 Duplicate Applications A 66(a) application is not a duplicate of another 66(a) application based on a different international registration. TMEP 703 Slide Slide 9 18

19 Designating/Withdrawal of Domestic Representative Must be in writing Who can sign? If set forth in initial application, a person properly authorized to sign on behalf of applicant If filed apart from the initial application, someone with legal authority to bind applicant TMEP 610 and Slide 19

20 Suggestions on the TMEP? Write to Commissioner for Trademarks Attention: Editor, Trademark Manual of Examining Procedure P.O. Box 1451 Alexandria, VA Slide 20

21 NEW RULES: SIGNATURE, RECOGNITION OF REPRESENTATIVES AND CORRESPONDENCE Rules changes will take effect on December 28, 2009 (74 FR 54898) Generally codify and clarify existing practice on representation of others before the USPTO in trademark cases, who can sign various trademark filings, and how/with whom the USPTO will correspond in trademark cases Slide 21

22 Signature Rules -- Highlights Documents must be personally signed (Rule (a) & (c)) Verifications must be signed by the owner or a person properly authorized to verify facts on behalf of the owner (Rule 2.193(e)(1)) Slide 22

23 Signature Rules -- Highlights Must be signed by someone with legal authority to bind or a qualified practitioner: Responses Amendments to Applications or Registrations Requests for Express Abandonment Reconsideration Requests Requests to Divide Correction or Surrender of Registration Changes to Correspondence Address Petitions under Rule Revocation of Domestic Representative or new designation separate from initial application Slide 23

24 Attorney Revocation Rules -- Highlights A revocation must be signed by the individual applicant, registrant, or party to a proceeding, or by someone with legal authority to bind a juristic applicant, registrant, or party (Rules 2.19(a)(1) and 2.193(e)(3)) A written request to change the correspondence address does not revoke a power of attorney (Rules 2.18(a)(7) and 2.19(a)(3)) A new power of attorney that meets the requirements of Rule 2.17(c) will be treated as a revocation of the previous power2.19(a)(4) Slide 24

25 Attorney Withdrawal Rules -- Highlights Withdrawal cannot prejudice the client, and request must contain, inter alia, averments regarding notice to the client, return of documents OR a representation that prior cocounsel is continuing to represent the client (Rule 2.19(b)) A domestic representative may withdraw, in a written document signed by an individual domestic representative, or by someone legally authorized to bind a juristic domestic representative (TMEP 610) Slide 25

26 Where to Learn More USPTO website Trademarks News and Notices page contains the final rulemaking notice from the Federal Register -- /notices/finalrule pdf Slide 26

27 Thank you Slide 27