2. Trademark Office Announcements
âą Online ID Manual enhanced â more examples,
more quick tips and guidance
âą RFC for draft guidelines on examination of
gTLDs (10/23/13)
âą RFC for potential change in policy for postregistration amendments of goods/services
based on changes in technology (e.g. audio
tapes to music recordings, printed magazines
to online publications, installed software to
software as a service) (12/1/13)
3. âSuperâ Trademarks â arenât
âą App for SUPERJAWS for machine and hand
tools, including âjawsâ for precision clamping
and âmetal vice jawsâ â rejected as descriptive
âą There is no per se rule for how USPTO should treat word
âsuperâ when used in composite mark,
â if âsuperâ is combined with word that names goods or
services, or principal component, grade or size thereof,
mark will be considered merely descriptive,
â if âsuperâ is joined with suggestive term, combination
remains suggestive of products and services;
âą consumers would readily understand that âSuperjawsâ mark
describes superior vice system for grasping and holding
workpieces.
âą
In re Positec Grp. Ltd., 108 USPQ2d 1161 (TTAB 2013)
4. Donât Disparage Yourself
âą Band applied to register THE SLANTS
âą USPTO denied as disparaging to persons of
Asian descent.
âą EA relied on dictionary definitions, online articles,
and applicant's own webpage and Wikipedia.
â The band tried to âown the stereotypeâ
â even if applicant is willing to take on the disparaging term as a
band name, that does not mean that all members of the
referenced group share his view
âą In re Simon Shiao Tam, Serial No. 85472044 (September 26, 2013)
[precedential].
5. Did You Hehr That Mahk?
âą JIN-JA for herbal tea â rejected as merely descriptive
âą Applicant contended that JIN-JA is an arbitrary term with
no recognized meaning in English, and that U.S.
consumers would not recognize or pronounce Jin-Ja as
"ginger."
âą EA - the mark is the phonetic equivalent of "ginger,"
particularly as pronounced by persons with non-rhotic
accents (i.e., a Boston accent)
âą SPLIT Decision â majority found insufficient evidence,
dissent suggested Examiners supply more evidence when
arguing based on regional accents
âą In re Canada Enterprises LLC, Serial No. 85026331
(September 27, 2013) [not precedential].
8. After Final Pilot Program 2.0.
âą The original pilot program has been relaunched.
âą To be eligible for consideration under AFCP 2.0, you
must:
ï§ file a response under 37 CFR §1.116, which includes a request
for consideration under the pilot (Form PTO/SB/434) and
ï§ amend at least one independent claim that does not broaden
the scope of the independent claim in any aspect
ï§ be willing to interview
9. Pre and Post AIA - Design Patent Priority
âą Review
â No provisional application priority
â May be a continuing application of a utility, U.S.
or PCT
â A design application must be filed within six
months of the foreign application to be entitled to
foreign priority
ï§ 35 USC §§119(a)-(d), 172
â No design application priority for PCT
applications
11. Timeline
Feb 25, 2005
Sunbeam introduces
Cook & CarryÂź
designing around
application with clips
on lid.
Supplier confirms
receipt
Feb 8, 2005
March 2006
June 2010
Hamilton Beach
Purchase Order
Hamilton Beach files
Patent application â
discloses clips on
cooker
Hamilton Beach files
Patent application â
claims clips on lid.
12. Purchase order
February 8, 2005: Hamilton Beach issues
purchase order to foreign supplier for
manufacture of Stay or GoÂź slow cooker.
February 25, 2005: Supplier confirms receipt of
purchase order via email and notes it will
begin production of the slow cookers after
receiving Hamilton Beachâs ârelease.â
March 2006: First patent application.
13. Hamilton Beach v. Sunbeam Products
35 U.S.C. § 102(b) Pre-AIA:
A person shall be entitled to a patent unless â
(b) the invention was patented or described in a
printed publication in this or a foreign country
or in public use or on sale in this country,
more than one year prior to the date of the
application for patent in the United States, . . .
14. On-Sale Bar
Two conditions must be satisfied before the
critical date:
1. The claimed invention must be the subject of
a commercial offer for sale; and
2. The invention must be ready for patenting.
Question of law based on underlying factual
findings.
Pfaff v. Wells Elecs., Inc., 525 U.S. 55 (1998)
15. â. . .on sale in this country. . .â
A commercial offer for sale made by a foreign entity
that is directed to a United States customer at its
place of business in the United States may serve as
an invalidating activity.
A commercial offer for sale under 102(b) is âone which
the other party could make into a binding contract by
simple acceptance.
In re Caveny, 761, F.2d 671 (Fed. Cir. 1985)
Grp. One Ltd. V. Hallmark Cards, Inc., 254 F.3d 1041 (Fed. Cir. 2012)
16. Ready for patenting
An invention is ready for patenting if the claimed
invention is:
1. Reduced to practice; or
2. Depicted in drawings or other descriptions âthat
were sufficiently specific to enable a person skilled
in the art to practice the invention.
This does not require a detailed âelement-by-element
analysis on the prototypes and products samples
on which it was working prior to the critical date.â
Pfaff
17. Purchase order
February 8, 2005: Hamilton Beach issues
purchase order to foreign supplier for
manufacture of Stay or GoÂź slow cooker.
Offer to buy
February 25, 2005: Supplier confirms receipt of
purchase order via email and notes it will
begin production of the slow cookers after
receiving Hamilton Beachâs ârelease.â
Offer to sell â it is at this point that the
commercial offer for sale was made.
Hamilton Beach could make into a binding
contract by simple acceptance.
19. Fair Use of References at the USPTO
âą Magistrate judge in Minnesota finds that the
copying and use of copyrighted reference at
the USPTO is fair use.
âą â[T]his Court concludes that [defendant] Is
entitled to the fair use defense as a matter of
law and recommends that the District Court
grant [defendant]âs motion for summary
judgmentâ
JEFFREY J. KEYES, United States Magistrate Judge in American Institute of Physics,
John Wiley & Sons, Inc., and Wiley Periodicals, Inc., v. Schwegman Lundberg &
Woessner, P.A., and John Doe Nos. 1-10