Prosecution Luncheon July 2016

USPTO Proposal: require submission of sufficient specimens of use to ensure accuracy Random audits up to 10%, to require additional specimens in multi-good §8 declarations USPTO will specify which goods Proposal: increase fees Paper filing of app $600/class (+$225) TEAS App: $400/class (+$75) Misc. other fees increase $100-$200 (SOU, renewal, incontestable, grace period, etc.) Various TTAB fees increase Opp. or Cancellation $500 (+$200) 30 EOT free; EOT +60 days $100

Selling Illegal Products Not Use In Commerce App: HERBAL ACCESS for "retail store services featuring herbs” – actually sells marijuana Sale of marijuana is illegal under federal law. Presumed lawful commerce, unless: Violation indicated on the record (Ct. or agency finding); or Per se violation Legal selling of a product within a given state is irrelevant In re Morgan Brown, Serial No. 86362968 (July 14, 2016) [precedential].

FIRST TUESDAY App: FIRST TUESDAY for “lottery services” Descriptiveness refusal affirmed Applicant: multi-step reasoning process: [t]o connect the mark FIRST TUESDAY to lottery services, a consumer must be told that Applicant issues new instant scratch-off games on the first Tuesday of every month. TTAB: mark must be considered in the context of the goods or services – USPTO should look at labels, pkg., advertising Applicant's specimens of use and website indicate that new games begin on the first Tuesday of each month. Consumers encountering FIRST TUESDAY will understand that it describes "an important feature" of applicant's services In re North Carolina Lottery, Serial No. 86411401 (July 12, 2016) [not precedential].

App: BJNI for “mineral water” refused as geographically descriptive Do You Know BJNI? App: BJNI for “mineral water” refused as geographically descriptive Small village in Armenia, Cited Wikipedia entry: <3,000 pop.; medieval fortress & church TTAB: insufficient evidence that “generally known geographic location” to US consumers Wikipedia entry had “some probative value” but needed more In re Vili Group Inc., Serial No. 86285733 (July 14, 2016) [not precedential].