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.

Published in Trademark

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.

Published in Patent

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.

Published in Patent

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.

Published in Patent

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.

Published in Copyright

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.

Published in Patent

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.

Published in Trademark

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.

Published in Patent
Thursday, 09 January 2014 23:13

USPTO Allows “And/Or” Claim Language

In what many will consider a blow to English grammar, a recent decision by the Patent Trial and Appeal Board found an applicant's "and/or" claim language valid.

Published in Patent

Under Section 32 of the Leahy-Smith America Invents Act (AIA) which became law in 2011, the USPTO is required to work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist “financially under-resourced independent inventors and small businesses.”  In keeping with its obligations, the United States Patent and Trademark Office (USPTO) has announced a new charter agreement placing the burgeoning regional pro bono efforts in the hands of a newly-formed central advisory council. Specifically, the AIA Pro Bono Advisory Council has been formed to assist existing regional programs and offer assistance to new programs so that they can operate under a central framework.

Published in Patent
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