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 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

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 (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.”

Patent Prosecution Luncheon

May 15, 2014

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

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

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

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)

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

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