August 2014 Trademark Prosecution Lunch Presentation

1. Trademark Prosecution
Luncheon
August 21, 2014

2. 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

3. 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

4. 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2014) [not precedential].

5. 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No. 91194117 (July 14, 2014) [not precedential].

6. 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.

7. 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.