Author: Carl

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Is someone tampering with your US trademark registrations?

Erik Pelton
Erik Pelton

One of the smartest trademark practitioners in the US is Erik Pelton.  Erik regularly shares his knowledge and experience on the E-Trademarks listserv and on his blog.  He is a long-standing sponsor of Meet the Bloggers.  Here is something that he posted on the listserv the other day:

I recently came across a peculiar situation for the first time:  a person not affiliated with Applicant filed a correspondence change with the USPTO via TEAS. The only change was to add an additional email address to the record. They did this just before the registration issued.

My guess is that they were trying to game the Amazon Brand Registry system, which I believe automatically generates a link sent to the trademark registration email address(es) of record when creating a new account.

I filed via TEAS to change the correspondence to remove the email; and then the same email address was used to do it a second time. To add to the issue, the email address used is from a secure private email domain (tutanota.com).

My client and I have reached out the USPTO (who has responded quickly, I am pleased to share!) and to Amazon to warn them about this. I suspect it has happened to others who may not be aware.

If anyone has any additional information or experience about this issue, please share.

I had never heard of this until Erik posted this to the listserv.  Prompted by Erik’s posting I surfed around a bit to try to learn what might be going on.  I actually signed up for the Amazon Brand Registry and I can confirm that the trademark hijacking risk that Erik described does exist.  Here is what I learned. Continue reading “Is someone tampering with your US trademark registrations?”

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A new Best Practice – reporting docx

A year ago or so, the USPTO started a beta-test of its system in which docx files play an important role.  In the best-test system, an applicant was permitted to file a patent application in docx format rather than PDF format.  Likewise, the applicant had the opportunity to receive some documents from the USPTO in docx format in addition to PDF format.  Our firm was among the beta-testers of this docx system.

Now, as of September 10, 2017, these features have been made available to all USPTO customers (not merely the beta-test users).  This offers a new Best Practice for reporting to clients.

Continue reading “A new Best Practice – reporting docx”

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Russia joins Hague Agreement!

Mr. Alexandr Alimov (left) deposits the instrument of ratification with WIPO’s Director General Francis Gurry (Photo: WIPO)

Russia has joined the Hague Agreement.

On November 30, 2017, the Government of the Russian Federation deposited its instrument of ratification of the Hague Agreement with WIPO’s Director General Francis Gurry.  The Hague Agreement will thus enter into force in the Russian Federation on February 28, 2018.

Continue reading “Russia joins Hague Agreement!”

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ISA/RU search fee for US filers increases today

It will be recalled (see blog post of November 3, 2017) that the search fee to be paid by a US filer selecting ISA/RU was scheduled for a fee increase today, December 6, 2017.

The fee increase, from $482 to $698, has indeed taken place.

You do not need to worry about accidentally paying the incorrect fee amount, because EFS-Web and ePCT have both been updated to reflect this new fee amount.

As of today the various searching authorities available to those who file in RO/US, ranked by the amount of the search fee, are:

  • EP – $2238
  • US – $2080
  • AU – $1688
  • SG – $1552
  • JP – $1372
  • KR – $1114
  • US – $1040 (small entity)
  • IL – $963
  • RU – $698
  • US – $520 (micro entity)

There are many factors in addition to price which a filer might wish to take into account when selecting an International Searching Authority.

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Time to first Office Action in PPH?

A blog reader posted this comment recently:

I’m less interested in how long it takes to get PPH decisions, and more interested in how long it takes to get a first Office Action when using PPH. It doesn’t help my client to be able to say that an application is on the PPH track. It helps my client to have an issued patent. Do you know of any data regarding this? I don’t see anything useful at https://www.uspto.gov/corda/dashboards/patents/main.dashxml

This reader is correct that the USPTO dashboard is silent on this particular delay, namely how long it takes, after the grant of a PPH petition, to receive a first Office Action.

We’ve tracked such pendency over many hundreds of PPH cases on our docket.  I’ll try to answer the reader’s question and offer some practice tips.

Continue reading “Time to first Office Action in PPH?”

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ePCT webinar Tuesday

This coming Tuesday is the third of a four-part series of webinars about ePCT.

Part 3.  Follow-on filings.

  • Best Practice for doing a 92bis change as an Action.
  • Best Practice for doing an Article 19 Amendment as an Action.
  • Best Practice for filing a Demand.

For more information or to register, click here.

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A chance to save a little money on PCT search fees

Readers will recall (perhaps from my blog post of October 13) that the search fee for ISA/EP will increase (for US filers) on December 1, 2017.   This offers an opportunity to save a little money.  If your client is planning to file a PCT application in the next week or two, and is planning to pick ISA/EP, consider filing it on November 30 rather than December 1.  This will save $139 in search fees.

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Keeping track of time zones

click to enlarge

A long time ago we had a special clock with four time zones.  We correspond a lot with clients in China.  And we often need to keep track of when it will be midnight at the USPTO or at WIPO.  The four-zone clock helped us keep track of these things.

But the special clock was noisy.  It clicked as the second hand advanced, and somehow the clicks really carried through the office.  Not only that, but all four of the clock faces clicked and the clicks were never quite simultaneous across the four faces.  So there were 240 clicks per minute.  We eventually scrapped that clock.

Now we have a new four-zone clock as you can see in the photograph.  The clocks are silent.  And the clocks synchronize their time with WWV.

Two of the clocks (the two in the middle) automatically update themselves for Daylight Saving Time.  The one on the right will require manual adjustment four times per year (see blog article).