Category Archives: Trademarks

Top 10 Ways to Preserve Your Trademarks

by Christina Frangiosa

On Friday (April 16), during the Pennsylvania Bar Institute‘s Fourth Annual IP Institute, I delivered a presentation on Top 10 Ways to Preserve Your Trademark, co-presented with Rex A. Donnelly of RatnerPrestia in its Wilmington, DE office.

I will be uploading both the article and PowerPoint presentation that we co-developed to my firm’s web site as quickly as feasible, and you are welcome to review them there. In sum, however, the topics we covered were:

  1. Choose a Mark You Can Protect
  2. Register Your Mark
  3. Be Truthful with the Trademark Office
  4. Keep Using Your Mark
  5. Maintain Your Registration
  6. Update Your Protection
  7. Use Your Mark Correctly
  8. Make Sure Others Use Your Mark Correctly
  9. Police for Infringement and Dilution
  10. License Your Mark Wisely

(I had responsibility for topics 3,4,5,7 and 9 – and wrote the sections for topics 3,4,6,7 and 9 in the article (Mr. Donnelly and I swapped topics 5 and 6 the morning of our presentation)). I also attended many of the presentations by my colleagues, and was particularly impressed with the “Mock” hearings (Mock Markman Hearing, Mock Preliminary Injunction Argument, Mock TTAB Cancellation Hearing), which were all presided over by judges currently sitting on the bench. I hope the course planners expand those sessions to additional topics next year.

I welcome your comments.

UPDATE on 5/7/10: The published article and the accompanying slides are now available on my firm’s web site. The direct links are here: “Top 10 Ways to Preserve Your Trademark,” Pennsylvania Bar Institute’s Fourth Annual IP Institute (April 16, 2010), co-written with Rex A. Donnelly of RatnerPrestia – (with presentation slides).

Fraud on the PTO – A Trademark Perspective

by Christina Frangiosa

Last Friday (April 9), during the American Bar Association Intellectual Property Law Section conference, I delivered a presentation on Trademark Prosecution Ethics, and in particular, the history and current status of the fraud in the procurement theory used to cancel registrations (or oppose applications) when material misrepresentations have been made to the Patent & Trademark Office during the application or renewal process.

I plan to upload both my article and my PowerPoint presentation to my firm’s web site as quickly as feasible, and you are welcome to review them there. In sum, however, my conclusions were as follows:

“While the test for determining that an applicant’s or registrant’s conduct in filing an application or maintaining trademark registrations was fraudulent has become more stringent, applicants, registrants and their counsel still face some pitfalls in the process. Indeed, although certain amendments of an inaccurate filing may be accepted (provided that no challenge to the validity of the application or registration has yet been filed), it is clear that both the TTAB and the Federal Circuit discourage carelessness in preparing these filings.

Accordingly, applicants and registrants are strongly encouraged to do at least the following to avoid increasing the risk of claims or counterclaims of fraud on the USPTO, and thus, loss of a pending application or a particular registration:

  • Conduct appropriate due diligence to ensure that the marks sought to be registered (or renewed) qualify as “in use” or validly subject to the “intent to use” process;
  • Ensure that the intended signatory for the declaration has the appropriate level of personal knowledge to support the allegations of use or intent to use, exclusive right to use the mark and other averments of fact;
  • Ensure that any licensees upon whose use the applicant/registrant will rely to maintain the registration properly use the mark in commerce and provide sufficient evidence to the applicant/registrant to support the maintenance filing; and
  • Undertake proper due diligence before filing an Opposition or Cancellation proceeding to ensure that the trademark or service mark forming the basis of a challenge to another application or registration does not have any exposure to a counterclaim for fraud on the USPTO and thus at risk for cancellation during the pendency of the proceeding.

Note that undertaking these preparations cannot completely moot claims of fraud on the USPTO, but they lend support and reasonableness to a potential response that no “intent to deceive” can be demonstrated by clear and convincing evidence. Finally, this entire line of cases confirms that the USPTO, TTAB and Federal Circuit Court of Appeals have strong interests in ensuring that the trademark Register be kept current and accurate, and demonstrates a disfavor of carelessly filed and unreliable factual statements about the use or non-use of trademarks and services marks in active use in U.S. commerce.

I welcome your comments.

UPDATE on 4/20/10: The slides from the presentation can be found on the ABA’s IPL Section site.

UPDATE on 5/7/10: The published article and the accompanying slides are now available on my firm’s web site. The direct links are here: “Ethics in Trademark Application Prosecution: Alleging ‘Fraud in the PTO’ After In re Bose,” ABA Intellectual Property Law Section 25th Annual Conference (April 9, 2010) – (with presentation slides).

SDNY Orders TAVERN ON THE GREEN Service Mark Cancelled for Fraud

by Christina Frangiosa

In a recent decision, the United States District Court for the Southern District of New York granted the City of New York’s motion for summary judgment, thus cancelling the City’s former licensee’s service mark registration for the mark TAVERN ON THE GREEN in connection with restaurant services on the ground that the registration was fraudulently procured. City of New York v. Tavern on the Green, L.P. et al., Nos. 09 Civ. 9224, 09 Civ. 9254, slip op. at 3 (S.D.N.Y. Mar. 10, 2010) (ECF Document No. 40). Access to a valid PACER account may be required to access the court filings cited in this blog entry. Alternatively, see Justia’s docket report – sometimes they make public filings available on their site.

Case Background

In 1934, the City of New York opened a restaurant in Central Park called “Tavern on the Green” and hired various vendors over time to run the restaurant pursuant to operating agreements. Id. at 4. The restaurant closed periodically for renovation and “improvements,” and the City paid substantial portions of the renovation costs. Id. For instance, in 1956, the restaurant closed for a $400,000 renovation project, which enabled the restaurant to expand its inside seating capacity from 300 to 720 and for which the City covered approximately 80% of the cost. Id.

In 1973, the City entered into a license agreement with Warner LeRoy (and thereafter Tavern on the Green, L.P. to whom LeRoy’s interest in the agreement was transferred) to operate “Tavern on the Green” as a restaurant and cabaret. Id. at 5. Several key terms in this first license agreement between these parties were: 1) the licensee’s ability to change the name of the restaurant upon written approval from the City’s representative; 2) the City’s ability to approve (or reject) any manager that the licensee hired to run the restaurant; 3) the requirement that the licensee hire “a sufficient number of trained attendants” (presumably waiters/servers) and 4) the requirement for the attendants to wear “a City-approved uniform.” Id. at 5-6. The parties also agreed that certain renovations were to be completed before the defendant could open the restaurant for business. Id. at 5. The agreement was renewed in 1976 and the restaurant re-opened for business 1978. Id. & n.2.

In 1985, the parties re-negotiated the terms of their agreement to add the following new provisions: 1) that the City could regulate the times and manner of operation; 2) that the City could inspect the facility at any time; 3) that City approval was required for all signs and solicitations for business; and 4) that the food served by LeRoy would be “pure and of good quality.” Id. at 7. Removed from this revised agreement was LeRoy’s ability to change the name of the restaurant, even if he obtained written approval from the City. Id. at 6. After this agreement was executed, the City exercised its rights to govern the hours of operation and the types of events the occurred on the premises several times. Id. at 7.

LeRoy’s Service Mark Application

In 1978, LeRoy filed a trademark application for the mark TAVERN ON THE GREEN in connection with restaurant services on behalf of a joint venture that had been formed to operate the restaurant (“the joint venture”) and claimed a date of first use of August 31, 1976, which corresponded to the date on which the restaurant was re-opened after the 1973 renovations were completed. Id. As part of his application package, he signed a declaration that confirmed that the joint venture had the right to use this mark and “to the best of his knowledge and belief, no other person, firm, corporation or association has the right to use said mark in commerce, either in the identical form or in such near resemblance thereto as to be likely . . . to cause confusion, to cause mistake, or to deceive. . . .” Id. at 8. However, LeRoy did not disclose the 1973 agreement to the USPTO, nor did he inform the City of New York that he had applied for registration of this mark. Id. The application was ultimately approved and registered in 1981 (Reg. No. 1,154,270) without a single opposition. Id.

In 1986, the joint venture filed a Section 15 affidavit, claiming incontestability of the mark based on continued use throughout the preceding five years. The USPTO acknowledged that the affidavit had been filed, and the record was updated to reflect the joint venture’s claim of incontestability pursuant to 15 U.S.C. § 1065. (Once a registrant can demonstrate incontestability of its mark, third parties will be limited in the grounds that they can allege in a petition to cancel the registration.) The City apparently did not become aware of the registration until 2006, and immediately thereafter requested that LeRoy and the joint venture assign all rights in the mark to the City. Id. at 8. LeRoy declined.

In 2007, the joint venture filed a second application for registration of the mark TAVERN ON THE GREEN in connection with “cooking oils, salad dressings and dipping oils.” Although the City requested two extensions of time to oppose this application, registration ultimately issued in September 2008 unopposed (Reg. No. 3,494,658).

The Dispute at Bar

Neither LeRoy nor his estate is individually named as a defendant in this case, but both of his companies are. (Mr. LeRoy apparently passed away in 2001, but his rights in the mark passed to the companies.) The companies (collectively referred to as “Debtors”) sought protection of the bankruptcy court under Section 11 in September 2009, and thereafter initiated an adversary proceeding to obtain a declaration of their exclusive right to use the mark for restaurant services, and to prevent the City from using the name for itself. Id. at 10. In November 2009, the City filed a motion to withdraw the bankruptcy reference, which motion the U.S. District Court for the Southern District of New York granted on December 3, 2009. (ECF Document No. 9).

Both parties filed cross motions for summary judgment. The Debtors sought a declaration that they had the exclusive right to use the mark in connection with restaurant services, and an injunction against the City’s continued use of the mark in commerce. City of New York v. Tavern on the Green, L.P. et al., Nos. 09 Civ. 9224, 09 Civ. 9254, slip op. at 3 (ECF Document No. 40). For its part, the City’s motion for summary judgment sought: 1) a declaration of its prior rights in the mark under New York state law; 2) cancellation of Debtors’ registration based on a “fraud in the procurement” theory; and 3) cancellation of the Debtors’ registration for use of the mark in connection with the various oils. Id.

Cancellation of LeRoy’s Registration in TAVERN ON THE GREEN (Restaurant Services)

Ultimately, the Court granted the City’s motion for summary judgment with respect to the TAVERN ON THE GREEN registration in connection with restaurant services, and ordered that the registration be cancelled based on LeRoy’s commission of fraud in procuring the registration without disclosing the City’s prior rights or the limitations on LeRoy’s own rights as a result of the license agreement. As to the second registration, in connection with various oils, the Court concluded that evidence was not presented sufficient to justify cancellation of this registration, and determined that the motion for summary judgment on this point was “premature.”

In reaching its decision, the Court evaluated the City’s claim of a prior right to the mark TAVERN ON THE GREEN in connection with restaurant services based on New York common law of unfair competition. It explained that “in order to establish a protectable right to a trade name under New York law, the City must proffer undisputed facts that show that the defendants are unfairly attempting to exploit the efforts of another to create goodwill in that trade name.” Id. at 11. The Court concluded that the City indeed had prior rights – predating those of the registrant by 35 years – such that the mark, “‘Tavern on the Green’ was closely associated in the public mind with a building owned by the City and located in New York’s Central Park.” Id. at 13, 14.

The Debtors argued that the repeated closures of the facility for renovation and improvement – particularly the closure in 1973 that coincided with the awarding of the concession lease to LeRoy – constituted a break in the City’s use of the mark, such that it should not be able to claim continuous use since 1934. Id. at 15. The Court disagreed, noting that “[r]enovations usually signify an intention to continue operations, which the 1973 Agreement makes clear by contemplating renovations in the transition from the prior licensee to the Debtors.” Id. Thus, the Debtor’s claim to “incontestibilty” as a result of its 1985 filing with the USPTO was not valid as against the City – because of the City’s prior rights. Id. at 16.

The Court also considered the City’s claim that LeRoy had procured the registration fraudulently when he applied in 1978 for registration of the service mark. After finding that the failure to disclose the license agreement demonstrating that LeRoy’s rights in the mark were limited was a material fact, the Court concluded that “the deliberate omission in a trademark application of information regarding another’s right to use the mark applied for is a material omission justifying cancellation of the mark.” Important to the Court’s consideration was its expectation that trademark applicants owed “uncompromising candor” to the USTPO when they file their applications. Id.

Court’s Dismissal of Debtor’s Laches Defense

In addition to denying the City’s claim for prior rights in the trademark, the Debtors raised a defense of laches, claiming that the City had waited too long to file its claim for cancellation. In dismissing the Debtor’s argument rather summarily, the Court confirmed that the Lanham Act clearly provided for cancellation at any time when the claimant can demonstrate fraudulent procurement. Id. at 20; see 15 U.S.C. § 1064.

Impact on Other Decisions

This opinion serves as a reminder that the declarations required to be signed in connection with trademark applications need to be reviewed carefully before applicants sign them. Not only must an applicant confirm that the descriptions of goods or services associated with the application are accurate (see Medinol and Bose lines of cases, covered in prior blog entries here), but also must confirm that no one else has the right to use the mark in connection with the goods or services identified in the application. Failure to read carefully and affirm the accuracy of the statements made in the application can result in a loss of registration or in a determination that another entity has more senior rights that may override any investment (no matter how significant) the applicant has made in the mark.

ICANN Seeks Independent Proposals relating to WHOIS Data

by Christina Frangiosa

The Internet Corporation for Assigned Names and Numbers (ICANN) has issued public requests for proposals for the following studies relating to WHOIS data:

* WHOIS Misuse studies (deadline to respond – November 27, 2009 – has closed).
* WHOIS Registrant Identification studies (deadline to respond – December 22, 2009).

In both instances, the susbtantive study would begin in early 2010, with a completion goal of June 2010 or December 2010, to coincide with regularly-scheduled ICANN meetings.

There are apparently two other studies that ICANN will pursue, but requests for proposals have not yet been issued. See Generic Names Supporting Organization. These two are Proxy and Privacy Services and Implications of non-ASCII Registration Data in WHOIS records. See ICANN Policy Update ¶ 11 (Nov. 2009) (summary description of the first three study areas and related links).

The ICANN Staff is currently managing a fifth study area, which seeks to determine the feasibility of addressing public concerns of deficiencies in the WHOIS service, including with regard to “data accuracy and reliability, as well as in other technical areas noted in recent SSAC reports, such as accessibility and readability of WHOIS contact information in an IDN environment.” See Generic Names Supporting Organization.

Background of Concerns about WHOIS Data

WHOIS data can generally be defined as the full contact information for domain name registrants, including contacts for administrative and technical purposes. A WHOIS record relating to an individual domain name can also include the IP address of the associated web site, date of creation, renewal and expiration of the domain name, and the name of the registrar used to register and maintain the domain name.

Legitimate Uses of WHOIS Data

There are several legitimate uses of WHOIS data, among them the enforcement of intellectual property rights and criminal law enforcement. Accurate WHOIS information is necessary, for instance, to determine whom a trademark owner should contact if there are concerns about unfair competition or that the domain name may be infringing upon the holder’s existing rights. This information may also be used by law enforcement agencies to police instances of fraud, identity theft and other crimes. See e.g., Federal Trade Commission Press Release, FTC Calls for Openness, Accessibility in WHOIS Database System, Continues to Recommend Enactment of the US SAFE WEB ACT, Sept. 20, 2006 (prepared statement also available); Federal Trade Commission Press Release, Accuracy of “WHOIS” Internet Database Essential to Law Enforcement, FTC Tells Congress, May 22, 2002 (prepared statement also available). There may be other legitimate business reasons to use the WHOIS registration data to contact the owner of a particular domain.

Several years ago, the results of searches of the WHOIS database for domain name owners provided robust contact information. Recently, however, the amount of information that appears in WHOIS search results has been significantly limited, most likely due to public concern about the protection of private information and conformance with other jurisdictions’ privacy laws, including foreign privacy laws such as the EU Directive 95/46/EC (officially, the “Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data,” available in multiple languages and formats through the European Commission Justice and Home Affairs page).

The method of performing WHOIS searches also has changed recently, particularly to block automated search engines (i.e., crawlers and bots) from harvesting the data contained in the records. Specifically, each time you perform a search, you are prompted to manually enter the characters that appear within a graphic image – something the automated search tools apparently cannot do.

Related Legislation

In 2004, Congress enacted the Fraudulent Online Identity Sanctions Act, Pub. L. No. 108-482 (Dec. 23, 2004) (codified in scattered sections of Titles 15 and 18). The Act did not create an independent right of action, but it provided certain enhancements to existing civil and criminal causes of action: specifically, 1) it provided a rebuttable presumption of “willfulness” if a trademark infringement action is brought against a registrant who has supplied false registration information in connection with the domain name in question (15 U.S.C. § 1117); and 2) if the registrant had been convicted of a felony (“other than offense of which an element is the false registration of a domain name”) in which the domain name at issue was registered and used in the course of committing the crime, the maximum penalty for the offense shall either be doubled or increased by 7 years, whichever is less. 18 U.S.C. § 3559. While this Act has apparently not had any wide-reaching impact, the mere fact that it was enacted demonstrates the value placed on the accuracy of this database.

Dispute Resolution

In addition, under certain circumstances, a plaintiff filing a complaint against a domain name in U.S. federal court (an “in rem civil action”) may serve the complaint by: “sending a notice of the alleged violation and intent to proceed under [15 U.S.C. § 1125(d)(2)(A)] to the registrant at the postal and e-mail address provided by the registrant to the registrar” and by “publishing notice of the action as the court may direct promptly after filing the action.” 15 U.S.C. § 1125(d)(2)(A)(ii). In this instance, the “registrant” is the person or entity who registered the domain name.

A problem arises, however, when a plaintiff attempts to contact directly the domain name owner through the “postal and e-mail address provided by the registrant to the registrar” if no such valid addresses are displayed in the WHOIS results. Specifically, if plaintiffs or their counsel attempt to reach out to the domain name owner – short of instituting litigation – to investigate whether infringement or unfair competition claims would be legitimate, the lack of valid contact information can be a significant barrier to resolution. If domain name owners invoke the private WHOIS or proxy services to shield their contact information, then it may not be possible to resolve valid claims about the legitimacy and/or non-infringement of the domain name without the investment of substantial extra time and cost. See Ian J. Black, “Hidden Whois and Infringing Domain Names: Making the Case for Registrar Liability,” 2008 U Chi. Legal F. 431, 432 (2008); see also Network Solution’s explanation of its private registration services (which provides alternate contact information to prevent the delivery of spam e-mails and telemarketing phone calls to the registrant, but distinguishes itself from proxy services in that it allows the registrant to remain the domain name owner and be listed in the public WHOIS database).

Similar service problems occur when a plaintiff relies on the Uniform Dispute Resolution Policy adopted by ICANN to arbitrate a domain name dispute. The Rules for UDRP Proceedings provide for service of a domain name dispute complaint through the e-mail addresses for the administrative, technical and billing contacts, to the postmaster of the domain name, and any other e-mail address the defendant identifies in response. Although the domain name dispute resolution provider (and not the plaintiff) is responsible for this service (see Rules ¶ 2(a)), the absence of valid or readily-discernable e-mail addresses for the domain name holder can create problems in reaching a resolution of a dispute short of filing an arbitration complaint.

In both instances, pre-complaint discussions between the parties – or between counsel for the parties – is much more difficult when the contact information for the domain name holders is hidden. Certainly, parties can appeal to the registrars for permission to see the underlying contact information, but whether the registrar must disclose this information, and the timing of their disclosure, is not clear.

In some cases, proof of a valid dispute (e.g., service of a subpoena on the registrar) may be required before such information is released. See, e.g., Domains By Proxy’s explanation of legal issues associated with a private registration and its Proxy Agreement, ¶ 4 (providing that Domains by Proxy “has the absolute right and power, in its sole discretion and without any liability to You whatsoever, to . . . [among other remedies]: . . . ii. Reveal Your name and personal information that You provided to DBP when: A. Required by law, in the good faith belief that such action is necessary in order to conform to the edicts of the law; B. To comply with a legal process served upon DBP; or C. In order to comply with ICANN rules, policies or procedures.”) (emphasis added).

Invasive/Objectionable Uses of WHOIS Information

In its request for proposal, ICANN identified several inappropriate uses of WHOIS data that have spurred the investigation into the extent of Misuse: for example, “generation of spam, abuse of personal data, intellectual property theft, loss of reputation or identity theft, loss of data, phishing and other cybercrime related exploits, harassment, stalking or other activity with negative personal or economic consequences.” Terms of Reference for WHOIS Misuse Studies, Sept. 25, 2009, at 1; see also id. at 5 (providing definitions of e-mail spam, postal and telephone spam, phishing, abuse of personal data and identity theft).

Other Organizations Concerned about CyberCrimes and Consumer Protection
(as identified in ICANN’s Terms of Reference for WHOIS Misuse Studies RFP)

Cybercrime Researchers:
* Anti Phishing Working Group
* Privacy Rights Clearing House
* Online Trust Alliance (AOTA)

Consumer Protection, Regulatory, and Law Enforcement Organizations:
* U.S. Federal Trade Commission
* FBI/NWCC Internet Crime Complaint Center (IC3)
* Identity Theft Assistance Center (ITAC)

Resources for Conducting WHOIS Searches

Most domain name registrars offer a WHOIS search tool that they use in connection with determining whether a domain name you wish to register is actually available. Sometimes, the link to the WHOIS tool is hidden on a particular page, so you may need to hunt to find it. A few examples of the over 500 domain name registrars currently authorized to register new US domain names are: GoDaddy.com, Network Solutions, Inc., PrivateDomains and Register.com. Registration fees vary wildly between registrars, so if you are conducting a WHOIS search with the expectation of registering a domain name, shop around for the best deal that provides you with all of the tools that you need (such as web site hosting, development of web pages, e-mail management, etc.) before making a decision about which registrar to search for availability and registration of a domain name.

If you conduct a WHOIS search and find that a particular domain was registered through a particular registrar, you may wish to view the registrar’s specific WHOIS report because they sometimes contain more information about the domain name owner than the report that you find from another WHOIS tool.

Note that if you conduct a WHOIS search for a domain name through certain registrars, they may put the domain on “hold” for a short period if the domain name is available. Network Solutions describes this as a customer service benefit, allowing a customer to come back up to four days later to register a domain name that they searched. See Network Solutions Adds Customer Protection Measure. During the four-day hold period, the domain name can only be registered through Network Solutions. Id. This “hold” service may not be what you intended when you performed the WHOIS search, so be aware that the possibility exists before you conduct your search.

In addition, here are some other available tools for WHOIS searching:

* Domain Tools – offers basic WHOIS searching, as well as some other custom tools that are available for a fee.

* DomainIt – also provides a WHOIS Privacy registration. Explanation of the service (which masks your contact information and randomizes your e-mail address) can be found here. Among the reasons identified for registering the domain using this privacy service is the prevention of spam and identity theft, as ICANN raised in its own reports, above.

* InterNic’s WHOIS tool can search for domain names with the following gTLDs: .aero, .arpa, .asia, .biz, .cat, .com, .coop, .edu, .info, .int, .jobs, .mobi, .museum, .name, .net, .org, .pro, and .travel. The most commonly used in the US for general purposes are .com, .org and .net. (Note that the .edu extension generally is restricted to educational institutions.)

* Ripe NCC – WHOIS database that covers European domains, as well as those in the Middle East, Central Asia and northern Africa.

* Universal Whois Searches – also provides links to country code TLDs registrars for purposes of country-specific WHOIS searches.

* WIPO’s summary of procedures for resolving domain name disputes re ccTLDs (country code Top Level Domains). Click on the relevant country code link and you will be brought to the appropriate site for registry, WHOIS and dispute resolution. You can also access various international trademark databases through WIPO to search for potentially competing applications/registrations before filing for registration of your own mark.

USPTO Trademark Public Advisory Committee Meeting Tomorrow

by Christina Frangiosa

On November 20, 2009, the U.S. Patent & Trademark Office’s Trademark Public Advisory Committee will be holding a public meeting to discuss, among other things, the impact that the Federal Circuit’s recent decision in the In re Bose Corp. case will have on the USPTO’s “Trademark Operation.” (More information on the In re Bose Corp. case and some of its predecessors in the Medinol line of cases can be found in my prior blog entries.)

The meeting will be webcast, and runs from 9:00am – 12:00pm Eastern Time. You can also dial in by phone to hear the audio only, if you prefer. (Instructions for participating and the proposed agenda can be found here.)

Based on the published agenda, the segments relevant to the In re Bose opinion will likely be the following:

* 10:15 a.m. (20 minutes) – Discussion with TTAB Judge Gerard Rogers regarding TTAB matters, including “What steps has the TTAB taken, and what steps (if any) does it plan to take, in the wake of the Federal Circuit decision in In re Bose Corp.”

* 10:35 a.m. (60 minutes) – Discussion with Trademarks Commissioner Lynne Beresford about “what steps the Trademark Operation should take, if any, in the wake of the [In re Bose Corp. decision] to minimize the amount of ‘deadwood’ on the trademark registers.” Some of the suggested subtopics in this category are:

“* Should any special action be taken regarding applications claiming a large
number of goods/services?
* Should proof of mark usage be required on each
item of goods/services?
* Should there be a procedure by which a third party
can require an interim proof of use of a mark by a mark registrant on some or
all goods/services covered in a registration?”

Also of interest in this section is the discussion of a proposal to update TMEP (the USPTO’s Trademark Manual of Examining Procedure) on a continuous basis.

If you cannot participate in the meeting, but are interested in reading about it afterward, the transcript will likely be posted on TPAC’s main page at some point after the meeting concludes. Transcripts from prior meetings can also be found there.