Prosecution Group Luncheon

January 2013

Nice Agreement 10th ed. Version 2013

• developed to classify, most entries are not sufficiently definite to use in an identification of goods and/or services.– A finished product is in principle classified

according to its function or purpose.– Services are in principle classified according to

the branches of activities specified in the headings of the service classes.

Review of Comments Regarding Amending the First Filing Deadline for Declarations of Use

• 8/16/12: the USPTO invited public comment on a potential change to amend the first deadline for Sect. 8 Declarations of Use, to between the third and fourth years after registration

• The comments reveal concerns regarding registrations that are no longer in use for some or all of the goods/ services listed, but the predominant sentiment was that the deadline should not be shortened. 

• the USPTO is currently conducting a post-registration pilot program to gather information regarding the accuracy of identifications of goods/services for registered marks

Medical Purchasers are Sophisticated?

• TTAB Board reversed a refusal to register OVATION for vascular stents over OVATION for hip joint prosthesis.

• The identify of the marks and the inherent strength of the cited mark weighed heavily against Applicant

• involved goods are "relatively unrelated." They are technologically distinct, cannot be substituted for each other, and are not used together in a single medical procedure. Although a medical products company might produce both products, nothing in the record indicated that these goods are more closely related than they would be to other medical products.

• TTAB: “any reasonable decision to purchase goods of applicant or registrant would in all likelihood involve a person having specialized expertise in orthopedic or vascular medicine, as appropriate.”

• In re TriVascular, Inc., Serial No. 77941535 (November 27, 2012) [not precedential].

YouTube isn’t in Commerce?

• App sought to register ACTIVE REASONER for "audio recordings featuring music" in class 9. His specimen consisted of a screen shot of his YouTube webpage

• EA refused the specimen as failing to show the mark for goods in commerce.

• TTAB aff’d: "in the absence of a 'download' link or the equivalent thereof, applicant’s specimen on its face fails to show use of his mark in commerce for the identified goods."

• In re Rogowski, Serial No. 77083475 (December 11, 2012) [precedential].

Tinseltown is not Geographically Descriptive• EA refused TINSELTOWN (for clothing) as geographically

descriptive, (a nickname for Hollywood) • TTAB: "Tinseltown" refers both to the Hollywood section

of Los Angeles and to the motion picture industry for which it is famous. – In fact, the examining attorney's evidence "suggests

that it is the latter meaning, namely, that of the movie industry, that may be the primary denotation of the term Tinseltown."

• EA failed to establish that the primary significance of TINSELTOWN is a geographic location.

• (Precedent: HOLLYWOOD previously found not merely a geographic location)

In re Topson Downs of California, Inc., Serial No. 85067696 (December 4, 2012) [not precedential].