1. Trademark Prosecution
Luncheon
May 15, 2014

2. USPTO
• April 2014 version of TMEP published –
clarifications/ revisions regarding:
– Trade dress examination
– gTLD marks
– Examples of unacceptable statements in
describing a mark or disclaimer, e.g. can’t
exclude a color that isn’t in the drawing
– Partial abandonment treatment
– Filing multiple assignments with the same
execution date – requires manual review
– others

3. USPTO Proposes Fee Reductions – Really!
• Fee reductions if efiling is used AND if
Applicant authorizes email communications
– Regular app - $325  $275/class (“TEAS
Reduced Fee”)
– Teas Plus - $275  $225
– Renewal - $400  $300
• Paper fee unchanged
• Written comments due by June 23rd

4. FRANKNDODD (not by Shelley)
• M&F applied to register FRANKNDODD for
“Providing legal information relating to legislation
• refused b/c identifies living individuals – REVERSED:
– combines surnames into single expression, used by
media to refer to the “Dodd-Frank Act”, not
individuals
– “FrankNDodd” or “FrankenDodd” is not a recognized
nickname
– proposed mark reverses order of names and adds
“N,” resulting in negative allusion to “Frankenstein”
monster,
– relevant consuming public would understand
“FrankNDodd” refers to “Dodd-Frank Act”
• In re Morrison & Foerster LLP, 110 USPQ2d 1423 (TTAB 2014)

5. Opposition Estoppel?
• “Courts give preclusive effect to the final
determinations of an administrative agency so
long as the agency was acting in a judicial
capacity and resolved issues of fact properly”
C&N Corp. v Kane, 953 F.Supp.2d 903 (E.D. Wis. 2013)
• But see B&B Hardware, Inc. v. Hargis Indus., 716 F.3d
1020 (8th
Cir. 2013) – TTAB Decision not binding
because “it ignores a critical determination of
trademark infringement, than being the
marketplace usage of the marks and products.”

6. Patent Prosecution Luncheon
May 15, 2014

7. Conflict of Interest
• Baker Botts is being sued for malpractice by
Axcess International - $50M
• Axcess hired Baker Botts to draft patent
applications for RFID technology
– Baker Botts also represented Savi Technology
– Axcess International and Savi are competitors in
the RFID industry

8. Conflict of Interest
• Baker Botts did not tell Axcess that it
represented Savi
• Axcess claims that Baker Botts’ either didn’t
check for conflicts or should have realized the
conflict sooner
• Axcess could have gotten broader claim
coverage if it had different counsel

9. Conflict of Interest
• Baker Botts argues that it was not obligated to
tell Axcess about its representation of Savi
• There can never be a conflict of interest in
straight patent prosecution because it is not
an adversarial process

10. Electronic Priority Document Exchange (PDX)
Participating Countries in PDX
• United States (USPTO)
• European Patent Office (EPO)
• Japan (JPO)
• Korea (KIPO)
• World Intellectual Property Organization (WIPO)
• Finland
• Denmark
• Sweden
• China
• International Bureau
• Spain
• United Kingdom
• Australia
WIPO Digital Access Service (DAS)

11. Problems
• Issues with USPTO retrieving electronic
versions of certified copies
• China has not been issuing certified copies of
foreign applications after 16 months past filing

12. Do I file a bypass continuation application or
national phase application?
• Foreign priority country is not part of the PDX
– Recommended to file a regular US national
phase application (35 USC 371)
 Do not need certified copies of foreign priority
documents