商標登録insideNews: NY Attorney Suspended for Filing Over 18,000 U.S. Trademark Applications for Chinese Agents Without Proper Review | natlawreview.com

NY Attorney Suspended for Filing over 18,000

NY Attorney Suspended for Filing Over 18,000 U.S. Trademark Applications for Chinese Agents Without Proper Review Wednesday, August 3, 2022 In a Final Order (Proceeding No. D2022-16) released July 12, 2022, a New York attorney was suspended from practice for filing approximately 18,300 U.S. trademark applications for Chinese agents without proper review. 

情報源: NY Attorney Filed Over 18,000 U.S. Trademark Applications

Proceeding No. D2022-16 Attorney Suspended for Filing
商標登録insideNews: Proposal to require foreign-domiciled trademark applicants and registrants to use a U.S.-licensed attorney | USPTO

danger flag

米国特許商標庁 (USPTO) 商標_動画 (embedded) vol.35

USPTO 動画 (identity verification)

1.Mandatory trademark identity verification, 1:34:57 youtube icon

Mandatory trademark identity verification

In this recorded webinar, we (USPTO) take an in-depth look at how user roles help regulate unauthorized trademark submissions and how you can determine the right role for your filing situation.

USPTO 動画 uspto-entrance
米国特許商標庁/USPTO Alexandria Virgina, USA

商標登録insideNews: USPTO Will Ramp Up Identity Verification Rules for Trademark Filers Starting in August 6 | ipwatchdog.com
usptoexternal site icon2

商標登録insideNews: The EUIPO Provides Guidance on Metaverse, NFT-Focused Trademarks | thefashionlaw.com

Filing For Metaverse and NFT

Brands ranging from Louis Vuitton, Gucci, and Valentino to Nike and adidas have made headlines over the past year after filing applications for registration for use of their famous trademarks in the virtual world, either reflecting existing use or seemingly indicating their intent to use such marks in the metaverse or in connection with non-fungible tokens (“NFTs”). Not limited to fashion and luxury names, brands across industries (think: KFC to the City of Beverly Hills) have followed the lead set by Nike last year…

情報源: The EUIPO Provides Guidance on Metaverse, NFT-Focused Trademarks

Filing For Metaverse

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商標登録insideNews: USPTO Will Ramp Up Identity Verification Rules for Trademark Filers Starting in August 6 | ipwatchdog.com

USPTO ID process from Aug. 6

Starting August 6, 2022, the USPTO will require all trademark filers to verify their identities in order to file electronic trademark forms.

情報源: USPTO Will Ramp Up Identity Verification Rules for Trademark Filers Starting in August

Identity verification for trademark filers

To better protect our customers from scams and fraudulent activities related to the trademark register, earlier this year the United States Patent and Trademark Office (USPTO) introduced identity verification for USPTO.gov account holders who use the Trademark Electronic Application System (TEAS) and TEAS international (TEASi). To complete this one-time process, customers can choose to verify their identities through a paper identity verification process or online via ID.me. USPTO ID process Identity verification for trademark filers | USPTO

USPTO ID process

商標登録insideNews: Identity verification for trademark filers | USPTO

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米国特許商標庁/USPTO Alexandria Virgina, USA

商標登録insideNews: Trademark Trial and Appeal Board Manual updated to include new precedents | USPTO

TBMP update

The June 2022 update of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) is now available on the Trademark Trial and Appeal Board (TTAB) webpage under “Practice and procedure.” The revision includes precedential citations to legal opinions from the TTAB and the Federal Circuit made between February 28, 2021, and March 4, 2022. The modification reflects changes due to the Trademark Modernization Act of 2020, including a new Chapter 1300 “Ex Parte Appeals from Expungement or Reexamination of Registration Proceedings.”

情報源: Trademark Trial and Appeal Board Manual updated to include new precedents | USPTO

(TBMP update)

tbmp update

TBMP Chapter 1300 Ex Parte Appeal in Expungement or Reexamination Proceedingpdf icon Updates also affect Chapters 300, 1200.

米国商標近代化法 (TMA, Trademark Modernization Act 2020)の概要

商標登録insideNews: Changing application information after approval for publication | USPTO

US Changable Application Info

You can change some information in your trademark application after your examining attorney approves your trademark for publication and before your trademark is registered.

情報源: Changing application information after approval for publication | USPTO

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米国特許商標庁/USPTO Alexandria Virgina, USA

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商標登録insideNews: USPTO 一般名称として拒絶される商標の審査基準を明確化する新しい審査ガイドを発行 | TMfesta.com

Examination Guide 1-22 Issued

USPTO(米国特許商標庁)は、最近、「Clarification of Examination Evidentiary Standard for Marks Refused as Generic(一般名称として拒絶された商標の審査基準の明確化について)」と題する新しい審査ガイド「Examination Guide 1-22」を発行した。このExamination Guideは、主登録簿または予備登録簿への登録を拒絶する目的で、審査官が出願商標の一般名称性に関する一応の事実を立証するために、適用される法的基準の下で商標の一般名称性を認めるための「妥当な論理(reasonable predicate)」(すなわち、合理的根拠)を裏付ける十分な証拠がなければならないことを明確にしている。

情報源: 米国:一般名称として拒絶される商標の審査基準を明確化する新しい審査ガイド(Examination Guide)を発行 - USPTO – TMfesta.com

Examination Guide

Examination Guide 1-22. Clarification of Examination Evidentiary Standard for Marks Refused as Generic. May 2022.

Examination Guide 1-22
Examination Guide 1-22
Clarification of Examination Evidentiary Standard for Marks Refused as Generic May 2022

This examination guide makes clear that for an examining attorney to establish a prima facie case that an applied-for mark is generic, for the purpose of refusing to register the mark on the Principal or Supplemental Register, there must be sufficient evidence to support a “reasonable predicate” (i.e., reasonable basis) for finding the mark generic under the applicable legal standard. The standard for an examining attorney to establish a prima facie case of genericness is the same as for other substantive refusals.

Prior USPTO examination guidance suggested a heightened, “clear evidence” standard for an examining attorney to establish a prima facie case of genericness. Any heightened standard would be inconsistent with both (1) the standard for third parties to challenge the registration of marks as generic and (2) the “reasonable predicate” meaning of “prima facie case” in the context of other refusals in examination.1

This examination guide clarifies that an examining attorney does not bear a greater burden in supporting a position that an applied-for mark is generic beyond the evidentiary showing required by the relevant legal test.

This revision does not change the nature or types of evidence needed to demonstrate genericness. Examining attorneys still consider the term’s primary significance to consumers (i.e., that the relevant consumers would use or understand the applied-for matter as indicating a class of goods or services with which it is used).2 Likewise, the sources of relevant evidence continue to include “dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning,” including relevant and probative consumer surveys.3

This guidance supersedes any previous USPTO guidance on this topic to the extent there are any conflicts. The Trademark Manual of Examining Procedure (TMEP) will be updated to reflect the “reasonable predicate” standard.

Background

Generic terms are ineligible for federal registration.4 In the context of inter partes proceedings at the Trademark Trial and Appeal Board, a party opposing or petitioning to cancel a registration on genericness grounds must prove its claim by a preponderance of the evidence.5 But to refuse applied-for marks as generic in examination, the USPTO previously used the term “clear evidence.”6 As a result, there was confusion as to whether the standard for a third party to remove a presumptively valid registered mark from the register was lower than the standard for the USPTO to prevent the mark from being registered in the first place.

Though Federal Circuit precedent adopted the “clear evidence” language used by the USPTO in its examination guidance, either by citing directly to the TMEP, or through indirect citation to one or more cases that relied upon the TMEP, there is no statutory basis for applying a heightened standard.7

In 1987, the Federal Circuit decided the first case to refer to “clear evidence” in the context of a genericness refusal, In re Merrill Lynch, Pierce, Fenner, and Smith, Inc.8 The Court cited to § 1305.04 of the First Edition of the TMEP (Revision 6(1983)) as requiring a showing based on “clear evidence of generic use.”9 The cited discussion in § 1305.04 related to certification marks indicating regional origin. This section stated in pertinent part: “In order to refuse registration on the ground that matter is generic, there must be a substantial showing by the Examining Attorney that the matter is in fact generic. This is particularly true for indications of regional origin. The showing must be based on clear evidence of generic use, not on fragmentary uses or possible infringing uses.”10 Read in context, the term “clear” was meant to convey the ordinary meaning of the term, not an evidentiary burden.

In subsequent cases involving genericness refusals, the Federal Circuit cited to Merrill Lynch, its later decisions citing that case, and/or the TMEP, which was revised after Merrill Lynch, for the “clear evidence” standard.11 The Federal Circuit further interpreted “clear evidence” to have an evidentiary burden meaning of “clear and convincing evidence”12 that was not intended by the TMEP and is inconsistent with the preponderance of the evidence burden the Federal Circuit requires to prove claims that a registered mark is generic in the inter partes cancellation context. Moreover, for other types of refusals, the Federal Circuit has consistently held that to make a prima facie case supporting a particular refusal, the examining attorney must set forth a “reasonable predicate”13 or basis for the finding or conclusion underpinning the refusal.14

To resolve the confusion, the USPTO will no longer use the terminology “clear evidence” in the TMEP to refer to the examining attorney’s burden to supportgenericness refusals.

NOTE
1 See, e.g., H. Rep. No. 116-645, at 15 (2020) (explaining that “[t]he meaning of ‘prima facie case’ in the context of the bill [the Trademark Modernization Act],” which created new ex parte proceedings to cancel registrations, “is intended to have the same ‘reasonable predicate’ meaning that that term has been given in the context of trademark examination”); see generally In re Pacer Tech., 338 F.3d 1348, 1351, 67 USPQ2d 1629,
1632 (Fed. Cir. 2003) (“to meet its prima facie burden, the PTO must, at a minimum, set forth a ‘reasonable predicate’ for its position of no inherent distinctiveness”) (citation omitted); In re Loew’s Theatres, Inc., 769 F.2d 764, 768, 226 USPQ 865, 868 (Fed. Cir. 1985).
2 See TMEP § 1209.01(c).
3 USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2307 n.6, 2020 USPQ2d 10729, at *7 n.6 (2020).

4 See 15 U.S.C. §§ 1052, 1064, 1091(a), and 1127; see also Booking.com, 140 S. Ct. at 2303, 2020 USPQ2d 10729, at *3-4 (“The name of the good itself (e.g., ‘wine’) is incapable of ‘distinguish[ing] [one producer’s goods] from the goods of others’ and is therefore ineligible for registration. . . . Indeed, generic terms are ordinarily ineligible for protection as trademarks at all.”) (citations omitted).
5 See, e.g., Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 965, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015) (“In an opposition or cancellation proceeding, the opposer or petitioner bears the burden of proving genericness by a preponderance of the evidence.”), citing Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 641-42, 19 USPQ2d 1551, 1554 (Fed. Cir. 1991).
6 TMEP § 1209.01(c)(i).
7 Cf. 15 U.S.C. § 1064 (referencing “[t]he primary significance of the registered mark to the relevant public” as the test).
8 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987). In its 1999 decision in In re Am. Fertility Society, 188 F.3d 1341, 1346, 51 USPQ2d 1832, 1835 (Fed. Cir. 1999), the Court expressly acknowledged that the “clear evidence” burden stated in Merrill Lynch derived from its reading of § 1305.04 of the TMEP: “We quoted the Trademark Manual of Examining Procedure as requiring . . . ‘clear evidence of generic use.’”
9 828 F.2d at 1571, 4 USPQ2d at 1143.
10 TMEP § 1305.04, (1st ed., rev. 6 1983).
11 See In re Steelbuiliding.com, 415 F.3d 1293, 1296, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (quoting Am. Fertility); In re Hotels.com, L.P., 573 F.3d 1300, 1302, 91 USPQ2d 1532, 1533-34 (Fed. Cir. 2009) (quoting TMEP § 1209.01(c)(i) (4th ed. 2005)); In re Nordic Naturals, Inc., 755 F.3d 1340, 1342-43, 111 USPQ2d 1495, 1497 (Fed. Cir. 2014) (quoting Merrill Lynch and TMEP); In re Louisiana Fish Fry Products, Ltd., 797 F.3d 1332, 1335, 116
USPQ2d 1262, 1265 (Fed. Cir. 2015) (quoting Merrill Lynch); and In re Cordua Restaurants, Inc., 823 F.3d 594, 600-601, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (citing, among other sources, TMEP § 1209.01(c)(i)).
12 See In re Hotels.com, L.P., 573 F.3d 1300, 1302, 91 USPQ2d 1532, 1533-34 (Fed. Cir. 2009).
13 For example, to establish a prima facie case that a design of an adhesive container cap is not inherently distinctive, the court held that the USPTO must “set forth a ‘reasonable predicate’ for its position” and found that evidence of “design patents showing other adhesive container cap designs are sufficient prima facie evidence from which one could conclude that [applicant’s] design is not unique or unusual in the relevant field and therefore not inherently distinctive.” In re Pacer Tech., 338 F.3d 1348, 1350-52, 67 USPQ2d 1629, 1631 (Fed. Cir. 2003); (quoting In re Loew’s Theatres, Inc., 769 F.2d 764, 768, 226 USPQ 865, 868 (Fed. Cir. 1985) (stating that in making its prima facie case that a mark is primarily geographically deceptively misdescriptive, the USPTO must establish a “reasonable predicate” for its conclusion that the public would be likely to make the goods/place association in question).
14 The Federal Circuit also has held that an examining attorney’s prima facie case for a refusal must be rebutted by “competent evidence,” which requires “proof by preponderant evidence.” See, e.g., In re Becton, Dickinson & Co., 675 F.3d 1368, 1374, 102 USPQ2d 1372, 1376-77 (Fed. Cir. 2012).

(2022.6.5追記)

The United States Patent and Trademark Office recently issued an Examination Guide clarifying the standard for refusing trademark applications on

情報源: New Lower Trademark Examination Evidentiary Standard for Genericness Refusals at the USPTO | IP Intelligence

商標登録insideNews: USPTO Updates Examination Guide for Proof of Trademark Use | Seyfarth Shaw LLP – JDSupra

examination guide
米国特許商標庁/USPTO Alexandria Virgina, USA

商標登録insideNews: Trademark e-registration certificate issuance moved to May 24 | USPTO

E-Registration Certificate Re-scheduled to Start May 24th

Our Trademark and IT teams are accelerating our transition to electronic registration certificates. Starting May 24, approximately two weeks earlier than previously announced, we will begin issuing electronic registration certificates. The new date accelerates the benefits of the electronic certificates and addresses a recent paper vendor disruption. Due to the disruption, the USPTO will not issue registration certificates between May 10 and May 23.

情報源: Trademark e-registration certificate issuance moved to May 24 | USPTO

certificate

商標登録insideNews: Electronic registration certificates | USPTO (Scheduled June 7)

E-Registration Certificate Re-scheduled to Start May 24th uspto-entrance
米国特許商標庁/USPTO Alexandria Virgina, USA

商標登録insideNews: Lamar Jackson Files A Trademark: NFL World Reacts | The Spun

NFL Ravens QB filed TM

Ravens quarterback Lamar Jackson is keeping himself busy this offseason. According to Josh Gerben of Boardroom, the former MVP has filed a trademark

情報源: Lamar Jackson Files A Trademark: NFL World Reacts – The Spun

Word Mark YOU 8 YET?
Goods and Services IC 025 G & S: Footwear; Headwear; Undergarments; Bottoms as clothing; Tops as clothing IC 043. G & S: Restaurant services
Standard Characters Claimed
Serial Number 97409761
Filing Date May 13, 2022
Current Basis 1B
Owner (APPLICANT) Jackson, Lamar

NFL Ravens QB filed TM

商標登録insideNews: NFLワシントンの新ニックネームはコマンダース 旧名はレッドスキンズ(2020年に廃止) | Sponichi Annex スポーツ
商標登録insideNews: ブレイディ、新たに2つの商標登録を出願 | NFL JAPAN.COM