The document summarizes several topics related to new top level domain names (gTLDs) and intellectual property law. The application process for new gTLDs will reopen for five days in June, with objections starting later. Over 2000 applicants so far cover a variety of types like industries, brands, and charities. Applications will be processed in batches starting early 2013. A new clearinghouse will handle objections and reservations. Watch out for solicitations regarding reserving names.

1. Prosecution Group Luncheon
May 2012

2. New Top Level Domain Names (gTLDs)
• Process suspended, will reopen for five days – June ??
• “Reveal Day” delayed – starts objection period
• More than 2000 applicants so far …
– Types, new business models?
 industry (.bank, .bike, .ski, .health, .gay, .movie)
 brand (.canon, .deloitte, .hitachi)
 charitable (.eco, .green, .fam)
– Will be processed in batches, 1st operating early 2013?
Next batch in 2014?
• New “Clearinghouse” for objections, sunrise reservations/
blocks, details TBD???
• Watch out for solicitations/warnings offering to reserve/
block/ register for your clients

3. John Walsh’s
• Suggestion that willful blindness may be
enough in recent article by TTAB Judge

4. Can’t Kutt the Reverse Rap
• Rapper Melvin "Kutt" Calhoun applied
for KUTT CALHOUN for clothing
• Rejected in view of Supplemental Registration
for the mark CALHOUN for "sports shirts.“
• Kutt claimed his fame coupled with the
weakness of the cited mark (surname), makes
confusion unlikely.
• Backfired – fame would exacerbate rather
than obviate confusion – reverse confusion
• In re Melvin Calhoun, Jr., Serial No. 77946290 (April 27,
2012) [not precedential].

5. You Can Fall off the wagon –
but not the Horse
• Design for clothing opposed by Polo
• Fame of “POLO” conceded
• Respondent intended to "parody the elite in
society as embodied by the sport of polo."
• TTAB: parody is not a defense if the marks
are otherwise confusingly similar …
“parodying a life style is not a parody of a
trademark.”
• PRL USA Holdings Inc. v. Thread Pit, Inc., Cancellation
No. 92047436 (May 14, 2012) [not precedential].

6. Quick Path Information Disclosure Statement
pilot program (QPIDS)
• IDS submissions post-payment of issue fee
– Examiner will consider, reopen prosecution only where
necessary to address an item in the IDS
– Otherwise, return to issue
– Utility or reissue application, issue fee paid but not yet
issued
• Submission via EFS-Web
• Effective May 16, 2012, through September 30, 2012

7. PTO On The Clock
• Good News: backlog of unexamined cases
down ~10% (-71K cases) since early 2011
• Bad News: wave heads downstream
– RCE backlog up 50% (+28K cases)
– BPAI backlog up 25% (+5.5K cases)
• BPAI: backlog growing, but more slowly
– 911 disposals in Mar. 2012
– 1,343 new appeals docketed

8. Mayo Fallout—Software Next?
• WildTangent v. Ultramercial (U.S., No. 11-962, May 21)
• US 7,346,545 (internet distribution of copyrighted
products)
• FC (Rader): patent-eligible under Section 101
– Computer used to perform the method
– Programming complexity required
– “[M]ere idea that advertising can be used as a form of
currency is abstract . . . the '545 patent does not simply
claim [that] age-old idea . . . . Instead, [it] discloses a
practical application of this idea."
• S.Ct.: grants cert., vacates, remands

9. Recapture Rule in Reissue
• In re Youman, No. 2011-1136 (Fed. Cir. May 8, 2012)
• Rule: cannot regain in reissue that given up in prosecution to avoid art
• Three step test:
– Determine in what aspect reissue claims are broader than issued claims
– Determine whether broader aspects relate to surrendered subject matter
– Determine whether surrendered matter has crept into reissue claims
• Rejects view that any broadening of added limitation invokes rule
– Elimination of a limitation added during prosecution is recapture
– Modification of that limitation may not be
• Reissue claims must be materially narrowed relative to surrendered matter
– Cannot recapture full scope of what was surrendered
– Narrowing “must render the reissue claim narrower than it is broader in a
manner pertinent to the subject matter surrendered during prosecution”

10. Anticipation Basics
In re Montgomery, No. 2011-1376 (Fed. Cir. May 8, 2012)
• Fundamentals of anticipation
– Broadest reasonable interpretation of claims during examination
– Reference must disclose every limitation (expressly or inherently)
• Broadest reasonable interpretation
– Consistent with, in light of specification as understood by POSA
– Question of law (de novo review)
• Inherent result must inevitably result from disclosure, not by
probabilities or possibilities
• Anticipation “requires an enabling disclosure, not “actual creation
or reduction to practice”

11. AIA Update
• Rules on post-grant procedures in process
– Focus on efficiency, cost-effectiveness
– Technical, administrative expertise within PTO
– Board expansion: 120+ judges, many from
outside PTO
• Judicial Panel on Multidistrict Litigation
(“JPML”): AIA does not affect authority to
transfer and centralize patent litigation
– In re Bear Creek Tech., Inc. (J.P.M.L. May 2,
2012)