Presenting a live 90-minute webinar with interactive Q&A Trademark Examiner Teleconferences and Communications Strategies: Preparing for and Conducting Examiner Communications to Advance Trademark Prosecution TUESDAY, JULY 11, 2017 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific Today’s faculty features: Laurie B. Marshall, Founder, Marshall Law Group , New York Carl J. Spagnuolo, Partner, McHale & Slavin , Palm Beach Gardens, Fla. Brian M. Taillon, Intellectual Property Attorney, McHale & Slavin , Palm Beach Gardens, Fla. 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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Communications With TM Office Examiners Overview of Reasons for Communications Carl Spagnuolo 5
TYPICAL REASONS TO ENGAGE IN EXAMINER COMMUNICATIONS 1). Prior to filing new application to learn hypothetically latest treatment of certain aspects of trademarks or identifications of goods or services. 2). In response to receiving a formal Office Action in effort to either narrow scope of refusals or to have refusals withdrawn. 3). Initiated by Examiner seeking to dispose of perceived “issues” with application via Examiner’s Amendment alleviating the need for the issuance of a formal Office Action 6
A. OFFICE ACTIONS OVERVIEW: • Office Actions are issued on, (informal) statistically, nearly 85-90% of all applications. 7
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GROUNDS FOR REFUSAL: • 15 U.S.C. 1052 (Section 2 of the Lanham Act): Trademarks registrable on principal register • No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it — 10
15 U.S.C. 1052 Sec. 2(d) • Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: 11
15 U.S.C. 1052 2(e) • Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional. 12
15 U.S.C. 1052 2(c) • Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow. 13
15 U.S.C. 1052 2(a) • Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States. 14
Actual Office Action 2(d) • -- Section 2(d) Refusal – Likelihood of Confusion -- Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2066526. Trademark Act Section 2(d), 15 U.S.C. § 1052(d); see TMEP §§ 1207.01 et seq. See the attached registration. Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. § 1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co. , 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc. , 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc. , 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc. , 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co. , 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co. , 476 F.2d at 1361- 62, 177 USPQ at 567. 15
Actual Office Action – SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE • The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods in International Class 13. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq. A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods. In re Gyulay , 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc. , 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd. , 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b). It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods to be merely descriptive. It is enough if the term describes one attribute of the goods. In re H.U.D.D.L.E. , 216 USPQ 358 (TTAB 1982); In re MBAssociates , 180 USPQ 338 (TTAB 1973). 16
Actual Office Action Section 2(c) Consent of Party Named in Trademark If the name shown in the mark identifies a particular living individual, the applicant must submit a written consent from that individual, authorizing the applicant to register the name. If the name does not identify a living individual, the applicant should state so for the record. Trademark Act Section 2(c), 15 U.S.C. Section 1052(c); TMEP sections 813 and 1206. The applicant may adopt the following, if applicable. • The name BO DIDDLEY is identifies a living individual whose consent is of record. 17
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