Presenting a live 90-minute webinar with interactive Q&A Responding to Trademark Office Actions: Assessing Response Alternatives and Persuading the Examiner Overcoming Challenges With Descriptiveness, Likelihood of Confusion, Blocking Citations, and More THURSDAY, AUGUST 18, 2016 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific Today’s faculty features: John N. Jennison, Jennison & Shultz , Arlington, Va. Lisa M. Willis, Department Attorney, Kilpatrick Townsend & Stockton , New York The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10 .
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Responding To Trademark Office Actions John N. Jennison Lisa M. Willis Jennison & Shultz, P.C. Kilpatrick Townsend & Stockton LLP john@jennisonlaw.com LWillis@kilpatricktownsend.com
Actions to Take Upon Receipt of a USPTO Action • Pull & Review the File • Docket the Response Deadline • Carefully Review the Action and Determine All of the Issues Raised • Determine if Issues Raised Were Expected. • Prepare to Respond to All Issues Raised by Trademark Examining Attorney • Understand what Examining Attorney Needs to Approve the mark. Her actions will be reviewed. Some informal matters (e.g., identifications) may be "word- smithed" through informal email exchanges or telephone discussions. • Review your correspondence with your client Advise client of action in accordance with previous instructions • 6
INFORMAL ISSUES NO CONFLICTING MARKS NOTED “The Examining Attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 704.02." But other issues are raised that must be addressed before approval of the application for publication. These issues may be resolved with a Priority Action or an Examiner's Amendment. 7
INFORMAL ISSUES Typical informal issues are: Disclaimer Prior Ownership Claim of Registration Signature Drawing Mark Description Specimen Identification of Goods or Services Incorrect Classification 8
DISCLAIMER "Applicant must disclaim the word FLORIDA because it is primarily geographically descriptive of the origin of applicant's goods and or services, and thus is an unregistrable component of the mark. The word FLORIDA is a generally known geographic place of location, See TMEP §§ 1201.02 et seq. The goods and/or services for which applicant seeks registration originate in this geographic place of location as shown by applicant's address. See TMEP §§ 1201.03. Purchasers are likely to believe the goods originate in this geographic place or location because a goods association is presumed when the goods come from the place named in the mark. TMEP §§ 1210.04 et seq. " In re Societe Generale des Eaux Minerales de Vittel S.A. , 824 F.2d 957, 050, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); In re Joint-Stock Co. "Baik" , 80 USPQ2d 1305, 1309 (TTAB 2006); §§ 121.01(a), 1210.06(a), 1213.03(a). "Applicant must disclaim the word "JUICE" because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant's goods and/or services, and thus is an unregistrable component of the mark." See 15 U.S.C. §§ 1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppendahl & Larson LLP, 373 F. 3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§ 1213, 1213.03(a). Response: Submit a standardized disclaimer: No claim is made to the exclusive right to use "FLORIDA" or "JUICE" apart from the mark as shown. 9
PRIOR OWNERSHIP CLAIM OF REGISTRATION(S) "If Applicant owns U.S. Registration No. 10000, 10001 and others, then applicant must submit for the application record a claim of ownership of these registrations. See 37 C.F.R. § 2.36; TMEP § 812." Response: Submit a standardized claim of ownership of registrations: Applicant is the owner of U.S. Registration Nos. 10000 and 10001 and others. 10
SIGNATURE Signed Declaration Required "Applicant must submit a written statement attesting to the facts set forth in the application, and confirming that applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date. This statement must be dated and signed by a person authorized to sign under 37 C.F.R. § 2.33(a), and verified with a notarized affidavit or signed declaration under 37 C.F.R. § 2.20. 15 U.S.C. § 1051(b)(3)(B); 37 C.F.R. §§ 2.34(a)(2)(i), (a)(3)(i) and (a)(4)(ii); TMEP § 804.02, 806.01(b), 806.01(c), 806.01(d) and 1101. No signed verification was provided with the application." 11
SIGNATURE (cont.) Response: Submit properly signed and dated declaration: The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. § 1051(b), 1126(d) or 1126(e), he/she believes applicant to be entitled to use such mark in commerce; that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date ; that the facts set forth in the application are true and correct; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true. _____________________________ (Signature) _____________________________ (Print or Type Name and Position) _____________________________ (Date) 12
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