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Advanced Trademark Prosecution: Challenging Third-Party Registration Evidence

Wednesday, April 10, 2013 at 12:30PM EST

Trademark Examining Attorneys frequently rely upon third-party registration evidence to establish that the relevant goods/services are sufficiently related to cause confusion. However, these third-party registrations are subject to several important limitations that applicants can often invoke to challenge their probative value and admissibility. In some cases, applicants may even offer third-party registration evidence of their own to rebut the grounds for refusal entirely. This presentation will review several effective and often overlooked strategies for responding to third-party registration evidence and ensure that applicants will have the best chance of overcoming a likelihood of confusion refusal.

Mark Donahey is an Associate Attorney with Erik M. Pelton & Associates, PLLC, a boutique trademark law firm located in Falls Church, Virginia, where Mark’s practice is focused on trademark prosecution,Trademark Trial and Appeal Board appeals, and inter partes disputes.Mark is a member of the Virginia State Bar and a 2009 graduate of George Mason University School of Law.

SPACE IS LIMITED

COST TO PARTICIPATE

  • Fee Waived for AIPF Member Attorneys
  • Fee Waived for In House Counsel/Corporate Managers
  • $100 per Telephone Line for Non AIPF Member Practicing Attorneys

CLE credit may be available for an additional fee

for AIPF membership information, see here

 

Selecting and Protecting your Brand

Posted by ipelton on: November 15th, 2011

Why are trademarks such valuable assets to businesses? What types of trademarks are effective? How are trademarks protected and registered? How do domain names affect trademarks? Why use an attorney to protect your trademark?

Learn about these subjects and more in an audio interview with associate Mark Donahey on the “Solo Talk” radio program hosted by Donna Amos

For more audio interviews, see our audio page.

For video presentations, see our video page.

TPAC Quarterly Meeting Summary – August 2011

Posted by ipelton on: August 24th, 2011

The Trademark Public Advisory Committee of the USPTO met last week (Friday, August 19, 2011)  in Alexandria, Virginia at the agency’s headquarters. Associate Mark Donahey provides the following report summarizing some of the key points from the meeting :

NEW CHAIRMAN & NEW MEMBERSDeputy Director Teresa Rea introduced three new additions to the Committee:

  • Maury Tepper serves as the new chairman of TPAC, replacing John Farmer. Mr. Tepper has been appointed to the TPAC on two previous occasions and has served more than 6 years on the committee. He also has served on the Board of Directors of INTA and currently serves as the chair of INTA’s US Legislation Subcommittee.
  • Jody Haller Drake is a new member of TPAC. She is a Partner of Sughrue Mion, PLLC and was both an Examining Attorney and Senior Attorney with the USPTO. She is a frequent speaker for INTA as serves as the Chair of AIPLA’s Trademark Relations Committee. 
  • Cheryl Black is also a new member of TPAC.  She is a Partner with Goodman Allen & Felletti, PLLC of Richmond, VA. She has previously served as an Examining Attorney for 6 years and as a Staff Attorney for the Commissioner of Trademarks for 9 years.  Her experience included work regarding the revisions to the TMEP and implementation of the Madrid Protocol.

TM OPERATIONS UPDATEby Debbie Cohn, Commissioner of Trademarks

  • Performance Measures:  Trademark filings are up, with a projected increase of 4% over last year.  Measures of pendency, quality and efficiency largely meet or exceed trademark goals.
  • Hiring:  Trademarks just completed making offers to 13 new examining attorneys who will start in September. She said Trademarks plans to do more hiring later in the year, contingent on continued trends in application filings.  Notably, all but one of the new examining attorneys previously served as an examining attorney.
  • Disclaimer Practice Roundtable:  Recent changes in the UK and Canada eliminating disclaimer combined with the fact that 30% of USPTO office actions include disclaimer requirements prompted the USPTO to hold a roundtable discussion of U.S. disclaimer practice on of on June 21. Based on the positive opinion many participants expressed about current U.S. disclaimer practice, the Commissioner announced there will not be any changes. Instead, the USPTO plans to provide further clarification of disclaimer policy by publishing a new examination guide that will eventually be incorporated into the TMEP.  
  • Trademark Dashboard: Improvements to the Trademark Dashboard have recently been rolled out.  The PTO received a lot of feedback from users since the Dashboard launched last May.  The improvements were added in response to these suggestions. 
  • Focus Group About Lack of Email Adoption: Last June, the USPTO invited several practitioners who do not authorize official PTO correspondence by email to take part in a focus group on the topic.  Trademarks will implement two changes as a result of the discussion.  First, they will move ahead with introducing an option to provide up to four additional email addresses that will receive courtesy copies of all correspondence. There will still only be one “official” correspondence address. Second, the PTO will begin sending earlier electronic notices of publication.  This change is intended to ensure that all the same notices are sent to electronic filers as to paper filers.
  • Assignment System: Enhanced searching and viewing of trademark assignment documents now available via USPTO.gov!
  • Telework Enhancement Act Pilot Project: Trademark will be launching a seven year telework pilot program soon that is expected to permit about 25% of the trademark examining corps to move away from the DC area and come back to the USPTO only as needed.
  • TMEP: The next revisions are expected in October. Some changes based on discussions and comments posted through the new Idea Scale system are being considered.
  • ID Manual: The USPTO is gradually working on improving ID listings to make them more user friendly and remove redundant listings.
  • Upcoming Trademark Trilateral on December 5-7: The PTO will host representatives from the UK and Japan later this year to discuss their trademark practices. Korea and China have also been invited to join as members. Korea has accepted, but no response yet from China yet.  Offices get. TPAC member Kathryn Barrett Park asked whether there is a role for the public to attend, observe, or ask questions at the Trilateral.  The Commissioner answered that there normally is not.  However, this year the PTO is considering adding a user group session to which some trademark associations would be invited. She said it is in the early stages of planning and would take only a small amount of the meeting.
  • Trademark Litigation Study: At the last TPAC meeting, the Commissioner was asked whether the USPTO was taking any steps to implement the recommendations it made in its report to Congress regarding trademark litigation tactics and their effects on small businesses. At that time, the PTO was awaiting feedback from Congress. Though Congress still has not responded, the Commissioner announced that the USPTO will begin taking steps on their own to engage the private sector to get involved in providing free or low cost advice to small businesses to understand cease and desist letters, litigation tactics, and their trademark rights.  The USPTO is initiating outreach to Bar groups now.
  • Trademark Expo: In October the USPTO will host its annual Trademark Expo aimed at educating people about value of trademarks in the marketplace.  In the past they have had 16-17 exhibits, but this year there will be approximately 30 exhibitors.  Last year about 13,ooo people walked through. Kathryn Barrett Park asked whether there would be something at the expo to fulfill the USPTO’s obligation to educate small businesses on policing trademarks and other issues. The Commissioner stated that there would definitely be some lectures on that topic as part of the Expo.

RULEMAKING AND INTERNATIONAL POLICY by Sharon Marsh

  • Examination of Post-Registration Maintenance Documents: Ms. Marsh reported that last year’s roundtable on implications of the Bose decision highlighted the importance of the accuracy of the register and this may be affected by the different set of rules that apply during initial examination of applications compared to examination of post registration maintenance documents. On July 12, the PTO issued proposed rulemaking to harmonize initial and post-registration examinations by permitting examiners to as for additional information, affirmations, and exhibits during examination of maintenance documents when it is necessary for proper examination or to review the accuracy of the register. It would also permit the office to ask for additional specimens in appropriate cases. The PTO is awaiting comments on the proposed rules, which are due from the public by September 12, 2011.
  • New Exam Guide: The PTO is planning to issue exam guide for Grade and Model Numbers.  Ms Marsh said it will be extremely detailed and will cover all the case law.
  • Madrid Protocol Meeting:  There will be a meeting this fall with group from WIPO that is very interested in hearing any problems stakeholders in the US are having in Madrid Administration. WIPO is also very interested in increasing level of participation in Madrid system from US trademark holders. In preparation, the PTO may take steps to gather information from US user groups about how Madrid could be changed to be more useful to them.

TTAB UPDATE by Chief Judge Rogers

  • New personnel:  Two new Administrative Trademark Judges have been appointed to the TTAB.  Tom Shaw was formerly associate solicitor at the PTO, and he served 10 years as a managing attorney. The Board worked very closely with him during the recent TBMP revisions. Linda Kuczma of Banner & Witcoff is the former President of the Intellectual Property Law Association of Chicago.  Judge Rogers noted that she has been intimately involved in the Lefkowitz National Trademark Moot Court Competition, “which is near and dear to Board’s heart.”
  • TTAB Filings:  Judge Rogers reported some increases in new filings, often resulting from the increases in trademark applications seen by the PTO.  In the third quarter of the fiscal year, Appeals are down from last year, extensions of time to oppose are up slightly, Oppositions are up slightly, and Cancellations are down slightly.
  • Pendency and Backlog: Pendency improved in June, but moved up slightly in July. According to Judge Rogers, “As we work off older cases and reduce the backlog, pendency might take bumps up periodically.”  The average total pendency for a trial case for Q3 was 270 weeks.  The Board is exceeding its goals for contested motions – averaging 9 weeks per motion – due in large part to increased use of phone conferences by interlocutory attorneys. The backlog of motions awaiting decisions is manageable for the current staff, but Judge Rogers stated that, “We’ll have to keep an eye on filings to determine whether we need to modify the interlocutory staff.  We don’t know whether we are going to see large increases or sustained increases.”
  • Precedential Decisions:  Judge Rogers expects that the Board will finish the year with fewer precedential decisions that usual.  However, several have been issued in the last few weeks, bringing the Board closer to its normal pace.  Judge Rogers explained that usually one judge reviews all decisions to determine whether or not they should be classified as precedential, but he recently suspended this practice because he wanted to use that extra judge for writing decisions to help reduce pendency.
  • ACR:  Earlier this year, the Board posted suggestions that AIPLA made about ACR on the website in hopes that others would submit their own as well.  But no other suggestions have been made.  Therefore, the Board started preparing its own list of ACR options, which the Board is nearly ready to post. Judge Rogers explained that the Board’s suggestions will take a different approach than the AIPLA. Specifically, the Board’s suggestions are based on how much time parties want to spend before the Board. The traditional trial schedule gets you out of the Board in two years without any extensions. The Board’s options provide for terms that speed up the average proceeding, at minimum by agreeing to abide by existing trial schedule.  The goal is to allow attorneys to tell their clients with greater certainty what to expect with regard to time before the Board.
  • TBMP Revisions: The Board expects to have a new revision of the TBMP ready to go about the time of the anniversary of the last revisions.  Judge Rogers reminded attendees that the Board has a mailbox designated for comments about the TBMP (TBMPComments@uspto.gov) and encouraged everyone to use it. The Board is also in the process of implementing Idea Scale for TBMP, just as Trademarks did for TMEP.  The Board will likely implement it for just one section to start with, perhaps Section 1200 regarding ex parte appeals. Judge Rogers still hopes to have a full time person dedicated to keeping TBMP revised in the future.
  • Comments on Settlement Negotiations:  The Board received comments from 3 firms, 4 individuals, and 4 organizations in response to its recent inquiry regarding the need for greater Board involvement in settlement negotiations.  All comments have been posted on the Board’s website. In general, most comments viewed the discovery conference requirement as an improvement, but also viewed discovery as a necessary step before settlement can be discussed in detail. They therefore argue against anything holding off discovery. According to Judge Rogers, the consensus view was that any involvement by the Board should be upon consent of the parties. Recusal and maintenance of confidentiality remains a major concern of the parties. Judge Rogers noted that there was some support for the Board to limit the number of extensions and suspensions.
  • Future event: The Board has secured a couple dates in November at the USPTO for a possible outreach event for stakeholders to discuss improvements of processing time. Judge Rogers doesn’t know yet whether it would be a roundtable or stakeholder conference yet.

LEGISLATIVE UPDATE – by Dana Colarulli

  • Patent Reform Bill:  The bill has passed the House and should be taken up by the Senate shortly after they return from August recess.  Final action could happen within days or be pushed out as far as a week.  The PTO has already created a website in preparation for implementing the reforms in the bill: (uspto.gov/AmericaInventsAct). The most relevant part of the bill to Trademark operations have to do with the increased authority for the PTO to set and keep fees. “There’s a good argument that the PTO should be treated separately,” he said, “and it would operate more efficiently if it is.”
  • Other Pending Legislation and Developments: Colarulli is watching a number of other bills very closely to determine what the appropriate position of the Department of Commerce would be, including the Protect IP Act and a House bill to extent copyright protection to fashion designs. They are also monitoring ICANN Developments regarding new TLDs. 

CFO UPDATE  – by Anthony Scardino & Bruce Kisluik

According to Scardino, “Fiscal 2012 is six weeks away, and we don’t know what will happen.”  He said it is likely no appropriations bill will be passed, and it is likely there is going to be on a continuing resolution instead.  The CFO is taking steps now to make sure the PTO can operate on whatever is passed, whether it is a continuing resolution for six weeks, a year, or whatever else happens.   The CFO office is running scenarios for 2012 to see what various continuing resolutions and/or funding anomalies will do.  Scardino summed it up by saying, “The more funding we have, the more hiring we can do.  The more hiring we do, the more our backlog goes down.” 

NEXT TPAC MEETING: November 18, 2011. Chairman Tepper noted that the TPAC has an obligation to issue an annual report to the President, which they are preparing now. “I hope you will enjoy reading it as much as we have enjoyed writing it,” he said.

MATERIALS: Much of the presentation materials from the meeting are available online as well:

 

Trademark Dilution – new video from Erik M Pelton & Assoc

Posted by ipelton on: August 8th, 2011

Our monthly video series continues with a discussion about trademark dilution:

Keeping busy in 2011 – recent firm activity roundup

Posted by admin on: January 25th, 2011

I hope your 2011 is off to as busy a start ours! Here is a round up of some recent firm activities:

  • Our iPhone application, Apptorney®, was featured in an article on Top 10 Legal Predictions for 2011! and its discussion of the likely boom in law firm apps
  • My “Top 10 Trademark Trends in 2010″ article was featured on JD Supra’s The Legal Year in Review: What Lawyers Are Saying
  • I have been invited to speaking at the SOCIALEX conference in Washington DC, in March. The conference will explore the legal aspects of social media, and my talk will discuss intellectual property issues related to social media use.  For more information visit the conference website.

  • My recent interview with KIVA B&C Talk Radio discussing intellectual property protection and other issues facing start ups is featured here
  • Trademark professionals attending the International Trademark Association’s 2011 annual conference in San Francisco can sign up to attend the “Table Topic” discussion I will be hosting on Trademark Settlement Agreement Tips
  • My recent interview about law firm branding with noted law firm consultant Ed Poll of Law Biz®  has been posted
  • Associate Mark Donahey was recently appointed to the Economic Development Committee of the National Small Business Association
  • I was recently selected to the Board Directors for the Falls Church Chamber of Commerce
  • We were asked by the U.S. Small Business Administration (SBA) Office of Advocacy to participate in a public roundtable on the USPTO’s request for comments regarding the impact of trademark litigation tactics on small business
  • I have been appointed to the editorial board of the American Bar Association’s Section of Intellectual Property 2011 Annual Review of Intellectual Property Law Developments

On top of all that, in the first three weeks of the year, our clients received 10 new trademark registrations!