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Trademark Prosecution Luncheon

Trademark Prosecution Luncheon. August 21, 2014. USPTO – Enhanced Assignment Filing. New Conveyance Types Entity conversion Merger and change of name Specify the order of transactions that occur on the same day Resubmission form to correct omissions or errors.

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Trademark Prosecution Luncheon

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  1. Trademark ProsecutionLuncheon August 21, 2014

  2. USPTO – Enhanced Assignment Filing • New Conveyance Types • Entity conversion • Merger and change of name • Specify the order of transactions that occur on the same day • Resubmission form to correct omissions or errors

  3. Post Registration Proof of Use Pilot Program • Randomly selected 500 registrations where proof of continued use was due – required to prove use for 2 extra goods/services per class • If response was incomplete or requested deletion, then further inquiry • 50% of trademark owners failed to prove previously claimed use • 34% deleted questioned goods/services • 16% failed to respond  cancellation • Foreign based registrations ~76% failure; use base registrations ~44% failure

  4. Acronyms Aren’t Automatically Descriptive • TTAB: RBAMnot merely descriptive of management and consulting services in the field of engineering even though "risk-based asset management" is descriptive, • Acronym website showed "risk-based asset management" as one meanings for RBAM, but did not indicate widespread exposure • third-party use of RBAM didn’t show RBAM alone unless it earlier appeared in the form “risk-based asset management (RBAM)” This "may suggest that the writer would not expect readers to understand the acronym without explanation." • insufficient evidence to show that RBAM is understood by relevant customers. • In re Life Cycle Engineering, Inc., Serial No. 85692710 (August 4, 2014) [not precedential].

  5. Famous McFamily? • McDonald's prevailed against the mark BioMcDieselfor "biodiesel fuel." (biodiesel fuel is made from used fryer grease) • TTAB didn’t conclude that biodiesel fuel and restaurant services are related, but some association exists between the goods/services plus fame of Mc family for food and non-food items supports that consumers would likely believe there is an association • McDonald’s Corporation v. Joel D. Joseph, Opposition No. 91194117 (July 14, 2014) [not precedential].

  6. Is It A Trademark? • No Court opinion, but a number of secondary sources (USA Today, Wikipedia) say its in the public domain.   • No registrations on that exact phrase and the USPTO has rejected attempts to register the phrase “As Seen On TV” as generic.   • Third level sources (legal articles, blogs, etc.) also agree.

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