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Changes in Requirements for Signature of Documents, Recognition of Representatives, and Establishing and Changing the Correspondence Address in Trademark Cases
The United States Patent and Trademark Office (‘‘Office’’) is revising the Trademark Rules of Practice to set forth the requirements for signature of documents filed in the Office, recognition of representatives, and establishing and changing the correspondence address in trademark cases.
The U.S. Patent and Trademark Office Releases the 6th Edition of the TMEP
On October 13, 2009 the U.S. Patent and Trademark Office released the latest version of the TMEP. To view the latest edition Click Here.
USPTO Launches New Web Site
The USPTO has launched its new Web site at www.uspto.gov. Since the launch of the beta site this past May, the USPTO’s Office of the Chief Information Officer (OCIO) worked to incorporate comments and feedback from internal and external users to make the Web site more user-friendly and organized based on tasks that customers perform regularly.
The USPTO homepage is a prominent site for IP practitioners, inventors and other stakeholders as both a source of information and as a place to conduct business. The new Web site purportedly offers a simple and clean design that significantly improves navigation and functionality. At the same time, the design now adds information and explanations about the patent and trademark application process, and much more, in an effort to make it easier for visitors to find the information they are seeking.
Among the new features and properties included in the new design are:
Improved navigation paths
New search capability and Web2.0 functionality
Self -service area for quick access to information services, and data products
Call out boxes for links and downloads, and much more.
Needless to say, over the next few weeks, users may experience some minor frustrations finding certain information on the site as the pages from the previous site are migrated to the new one. Recall, it is everything you should come to expect from the U.S. Federal Government.
So if you have any questions, concerns or comments, please email webmaster@uspto.gov.
Tips from the Insider: USPTO Releases New Examination Guides on Deceptiveness Refusals
The U.S. Patent and Trademark Office has released two new examination guides concerning refusals issued for Deceptiveness and Geographically Deceptiveness Refusals.
Read The Full Texts for the Examination Guides >>> Click Here
USPTO Changes the Method of Issuance and Content of Notices of Publication in Trademark Applications
On October 6, 2009, the USPTO will begin sending electronic Notices of Publication to trademark applicants who have authorized e-mail communication with the USPTO. The new emailed Notices of Publication will contain the same information as the updated Notices of Publication sent via mail in other cases, but will have clickable hyperlinks to allow applicants to access the Trademark Official Gazette (OG).
All Notices of Publication, including those sent on paper and post cards, will now invite applicants to review the publication information contained in the OG and take the appropriate steps to correct any inaccurate information prior to registration or the issuance of a Notice of Allowance.
Notices of Publication issued by email will be sent on the publication date. This is a change from the current practice where the notices are mailed three (3) weeks before the date of publication. Paper notices will continue to be mailed prior to publication.
This new approach should benefit both applicants and the USPTO. For example, issuing Notices of Publication via email will allow applicants to receive the notice almost immediately and will save the USPTO the cost and time of mailing paper notices to applicants who have already authorized email communication with the Office. All Notices of Publication will still be accessible either for direct viewing or downloading via the Trademark Document Retrieval (TDR) system, which is available 24 hours a day, seven days a week, 365 days a year. Additional notices may be sent via email in the future, based on the success of the project to issue electronic Notices of Publication.
Samples of the New Reformatted Certificates of Registration Available
Samples of the newly reformatted Certificate of Registrations are now available at the USPTO's web site.
The USPTO has announced significant changes among the senior management team of its Patent organization. After 35 years at the USPTO, Commissioner for Patents John Doll has announced his intention to retire from the agency on October 2. Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos has, in turn, nominated longtime USPTO executive Robert (“Bob”) Stoll to the position of Commissioner for Patents, and has named Margaret (“Peggy”) Focarino Deputy Commissioner for Patents.
David Kappos Confirmed as Patent and Trademark Office Director
The U.S. Senate has confirmed David Kappos as the new Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO).
Over a 20-year career, David Kappos has accrued deep knowledge of the patent system and broad respect from professionals across the field – including the biotech, life sciences and high tech sectors. Most recently, he was the vice president and assistant general counsel for intellectual property at IBM. Specifically, Kappos managed IBM’s patent and trademark portfolios – protecting and licensing intellectual property worldwide.
He takes control of an office that provides incentives to encourage technological advancement and helps businesses protect their investments, promote their goods and safeguard against deception in the marketplace. The office continues to deal with a patent application backlog of more than 770,000, long waiting periods for patent review, information technology systems that are regarded as outdated and an application process in need of reform.
Recently, Kappos has served on the Board of Directors of the American Intellectual Property Law Association, the Intellectual Property Owners Association, and the International Intellectual Property Society. He also has been the Vice President of the Intellectual Property Owners Association. He has held various leadership positions in intellectual property law associations in Asia and the U.S. and has spoken widely in Asia, Europe and the U.S. on intellectual property topics.
Kappos received his bachelor’s degree in electrical and computer engineering from the University of California-Davis in 1983, and his law degree from the University of California Berkeley in 1990. He joined IBM in 1983 as a development engineer and has served in a variety of roles before taking his current position, including intellectual property law attorney in IBM’s Storage Division and Litigation group, IP Law Counsel in IBM’s Software Group, assistant general counsel for IBM Asia/Pacific, IBM Corporate Counsel and assistant general counsel.
Announcing beta.uspto.gov
The USPTO is pleased to announce the beta test release of its new Web site will remain open for an additional period of about six weeks. The new site has been redesigned to improve the look and feel, as well as to enhance the user experience with improved navigation. The USPTO’s goal is to make the Web site technologically up-to-date, user-friendly, and responsive to customer feedback.
Notice of Reformatted Trademark Registration Certificate
The United States Patent and Trademark Office (‘‘Office’’) is reformatting the certificates of registration issued for registered marks.
To streamline the issuance of registration certificates, pursuant to 15 U.S.C. 1057(a), 1093 and 37 CFR 2.151, and forpurposes of cost containment, modernization and efficiency, the Office will be reformatting the certificates of registration for marks registered both on the principal register and the supplemental register. Specifically, (1) the certificates will be printed on standard-size 81⁄2 by 11-inch paper, rather than the custom-size paper on which they are currently printed; (2) the folder that is part of the current certificate will be eliminated; (3) the signature of the Director and the seal of the Office, which currently appear on the folder, will appear on the first page of the reformatted certificate; and (4) registration maintenance information, which currently appears on the folder, will appear on the final page of the reformatted certificate. The Office intends to begin issuing the reformatted certificates in September 2009. In advance of the change, the Office will post on its Web site an example of the reformatted certificate in August 2009.
USPTO Opens Exhibit of Michael Jackson’s Patent and Trademarks
The United States Patent and Trademark Office (USPTO) and the National Inventors Hall of Fame and Museum are presenting a special exhibit featuring material from Michael Jackson’s patent and trademark applications. The exhibit is free and open to the public starting Wednesday, July 15 and runs through Labor Day.
Mr. Jackson is the co-inventor of a “system for allowing a shoe wearer to lean forwardly beyond his center of gravity by virtue of wearing a specially designed pair of shoes which will engage with a hitch member movably projectable through a stage surface.” Included in the patent application is an original sample of Michael Joseph Jackson’s signature and drawings of his invention.
The exhibit will also feature an example of Mr. Jackson’s registered trademarks, including United States Registration No. 1,908,209, which provides exclusive rights to use the words, “MICHAEL JACKSON,” on, “sound recordings; namely, pre-recorded phonograph records, audio tapes, compact discs, videotapes, and motion picture films featuring music and entertainment.”
The museum is open to the public Monday through Friday 9 am to 5 pm, Saturday Noon to 5:00 p.m. (closed on Sundays and federal holidays). The museum is in Alexandria, Virginia at the United States Patent and Trademark Office. It is located in the atrium of the Madison Building, 600 Dulany Street, Alexandria, VA, and is easily accessible from the King Street and Eisenhower Avenue Metro stations (Blue Line and Yellow Line). USPTO Museum Info: (571) 272-0095. Admission is free of charge.
USPTO Seeking Requests for Proposals for Intellectual Property Initiative
The United States Patent and Trademark Office is seeking proposals from parties interested in performing policy studies, conferences, and other development programs in support of fair international protection of intellectual property rights. The USPTO intends to issue joint projects and/or cooperative agreements to conduct these programs.
Click Here for More Information on How to Submit a Proposal.
Commerce Secretary Gary Locke Takes Key Step to Address Patent and Trademark Office Challenges
U.S. Commerce Secretary Gary Locke has announced the appointment of former U.S. Patent and Trademark Office (USPTO) official and long-time patent professional Nicholas Godici to look at ways to strengthen the management structure of the USPTO and provide an up-to-date assessment of the challenges the office faces. Godici, hired by current Acting Under Secretary for Intellectual Property and USPTO Director John Doll at Locke’s request, will work with USPTO officials to identify areas of concern and to assist in the transition to a new director. He will serve as a consultant for a period of up to 180 days.
President Obama nominated David Kappos, a patent professional with more than 20 years of experience, to be the next USPTO director on June 18.
“I’m counting on Nick to use his decades of experience to help us strengthen the management of the USPTO and identify the areas most in need of attention by the new director,” Locke said.
President Obama Announces Intent to Nominate David Kappos as Patent and Trademark Director
President Barack Obama has announced his intent to nominate David Kappos, an experienced patent professional with more than 20 years of experience, as the new Under Secretary of Commerce for Intellectual Property and Director of the U.S Patent and Trademark Office (USPTO).
“The United States Patent and Trademark Office faces significant challenges, and it needs an experienced leader like David at the helm,” U.S. Commerce Secretary Gary Locke said. “He will be a strong voice for patent reform and I have tasked him to reduce dramatically the unacceptably long time the office takes to review patent applications.”
Over a 20-year career, Kappos has accrued deep knowledge of the patent system and broad respect from professionals across the field – including the biotech, life sciences and high tech sectors. He is currently vice president and assistant general counsel for intellectual property at IBM. Specifically, Kappos manages IBM’s patent and trademark portfolios – protecting and licensing intellectual property worldwide.
If he is confirmed by the U.S. Senate, Kappos will take control of an office that provides incentives to encourage technological advancement and helps businesses protect their investments, promote their goods and safeguard against deception in the marketplace. The office continues to deal with a patent application backlog of more than 770,000, long waiting periods for patent review, information technology systems that are regarded as outdated and an application process in need of reform.
Fraud Alert: Trademark Watching Services
For Immediate Release.
Applicants for and registrants of U.S. Trademarks are reminded that the U.S. Patent and Trademark does not require or sell trademark monitoring services.
Recent activities by companies purporting to be official government agencies selling “required” monitoring services to U.S. trademark holders have been on the rise.
U.S. trademark holders are reminded that they are not required to purchase these services and in no way do the companies offering the same have any affiliation with any official U.S. government agency.
The National Trademark Expo Held at the U.S. Patent and Trademark Office
The U. S. Patent and Trademark Office presented the National Trademark Expo on May 8th and 9th at the agency's campus in Alexandria, Virginia. The event highlighted the importance of trademarks in the global economy.
"We all encounter thousands of trademarks every day," noted Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO John Doll. "The Expo is a fun way to put into perspective the value of a brand name to a company and the importance of trademarks to consumers so we know what to expect in the quality of a product or service."
The Expo featured educational workshops for adults and children, and a story time provided by Hooray for Books!, an Alexandria local business.
Also on hand for the gala opening were the U.S. Air Force Band Ceremonial Brass Quintet, 14 exhibitors and a cast of 25 costumed trademark characters.
Visitors to the Expo learned about the many different kinds of trademarks such as sound, design and color, and will also learn about the history and evolution of trademarks, some of which are more than 100 years old.
This year's collection of costumed trademark characters was the largest in the history of the Expo, including some that rarely make appearances outside their home venues. The all star cast, in alphabetical order, included Beetle Bailey, Betty Boop, Crayola Crayons, Curious George, Dennis the Menace, Energizer Bunny, Faux Paw the Techno Cat, Hershey's Kisses, Hershey Bar, Maisy, McGruff, Mr. Jelly Belly, Olive Oyl, Peter Rabbit, Pillsbury Doughboy, Popeye, Smokey Bear, Sprout, the Cat in the Hat and the Grinch.
A large inflatable of the Dr. Seuss "Cat in the Hat" hat and hand design welcomed visitors to the Expo. The hat and hand design was created by Universal Studios for the movie launch and was its first appearance outside of Universal.
Black and White or White and Black Now Approved
The U.S. Patent and Trademark Office (“Office”) amended § 2.52(b) to provide that special form drawings of marks that do not include color “should” appear in black and white rather than such “must” show the drawing in black and white. The rule was amended to give examining attorneys discretion to accept a drawing that show a mark in white on a black background as opposed to the standard black on white background if the new format will assist in more accurately depicting the mark.
Applications Required to Be in English
The U.S. Patent and Trademark Office has amended § 2.21(a) to require that an application under Sections 1 or 44 of the Act must be filed in the English language.
ETEAS Plus Applications Must Maintain a Valid Email Address
The U.S. Patent and Trademark Office (“Office”) now requires a TEAS Plus applicant to maintain a valid e-mail correspondence address in order to maintain TEAS Plus status. If the email address changes, the Applicant must notify the Office of the new email address. If the Applicant chooses to receive correspondence on paper, the applicant must pay the processing fee required by §§ 2.6(a)(1)(iv) and 2.23(b) to convert the application to a regular TEAS filing.
New Requirement for Color Drawings
The USPTO began accepting color drawings on November 2, 2003. As of this date, the Office will no longer accept black and white drawings with a color claim, or drawings that show color by use of lining patterns. 37 C.F.R. §2.52(b)(1).
Color drawings must be accompanied by the following:
(1) a color claim naming the colors that are a feature of the mark; and
(2) a separate statement describing where the color(s) appear on the mark.
A color drawing will not publish without both of these statements. A properly worded color claim would read as follows:
"The color(s) [name of colors] are claimed as a distinctive feature of the mark."
A properly worded description would read as follows:
"The color(s) [name of colors] appear in [specify portion of mark in which the colors appear].
If the color claim or description is unclear or ambiguous, the examining attorney will require clarification. An applicant may supplement the required written description of the color contained in a mark with a reference to a commercial color identification system. The written description of the mark must include a generic description of the color, in addition to the reference to the commercial color identification system.
New Rule Setting Forth Partial Abandonment
Trademark Rule 2.65(a), 37 C.F.R. §2.65(a), has been amended to provide that if a refusal or requirement is expressly limited to only certain goods/services, and the applicant fails to file a response to the refusal or requirement, the application shall be abandoned only as to those particular goods/services.
Partial abandonment applies only where the USPTO action expressly states that a refusal or requirement is limited to only certain goods/services or certain class(es). If the action contains any requirement or refusal that applies to all the goods/services, and the applicant fails to respond, the entire application will be abandoned.
The rule applies to all Office actions issued on or after November 2, 2003, regardless of the filing date of the application. It does not apply to Office actions issued before November 2, 2003.
Partial abandonment may also occur when an applicant fails to file a complete response to a final refusal or final requirement that is limited to only certain goods/services or certain class(es). If an applicant files an incomplete response to a nonfinal action that is limited to only certain goods/services or certain class(es), the examining attorney should issue a final action, making all outstanding requirements and refusals final. See TMEP §718.03 et seq. regarding incomplete responses.
