Trademark Prosecution LuncheonAugust 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

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

Acronyms Aren’t Automatically Descriptive• TTAB: RBAM not 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• In re Life Cycle Engineering, Inc., Serial No. 85692710 (August 4, 2014) [not precedential].

Famous McFamily?

• McDonald's prevailed against the mark BioMcDiesel for "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• McDonald’s Corporation v. Joel D. Joseph, Opposition No. 91194117 (July 14, 2014) [not precedential].

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.