Trademark Prosecution Luncheon May 15, 2014

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

USPTO Proposes Fee Reductions – Really! Fee reductions if efiling is used AND if Applicant authorizes 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

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)

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 (8 th 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.”