Bluesky: @oppedahl.com
There’s a fellow who years ago filed a trademark application for “listserv”. It registered, and by now he has filed three renewals including an incontestability statement. You can see the TSDR record here. The term has long since become generic.
The registrant’s web site uses the term as a noun, as you can see in this screen shot.
My firm sponsors many listservs, some of which are listed here.
(Updated to reflect Article 14(5) Declaration.)
Starting today, a trademark owner in Brazil can file a Madrid Protocol application to pursue protection in one or more Offices outside of Brazil.
And starting from today, a trademark owner outside of Brazil can file a new Madrid Protocol application designating Brazil.
I had previously posted that starting from today, a trademark owner outside of Brazil who already has an International Registration can file a Subsequent Designation to Brazil. This is stated too broadly. Brazil’s Instrument of Accession includes an Article 14(5) Declaration, which provides that a “sub des” can only be filed with respect to Brazil for an IR that was registered on or after today, that is, on or after October 2, 2019.
The two-letter code for Brazil is “BR”.
Right on schedule, the National Institute of Industrial Property of Argentina (“INPI-AR”) has indeed today joined the DAS system. INPI-AR is now operating as an Accessing Office in DAS with respect to patents and utility models and industrial designs. Here is an excerpt from an exemplary Certificate of Availability from DAS showing availability of a design application:
Readers will recall that I blogged about this on August 19, 2019.
This welcome development brings the number of participating DAS Offices as of October 1, 2019 to twenty-four.
About forty-six comments have been filed in response to USPTO’s recent notice of proposed rulemaking regarding patent fees. One of the comments is filed by “Seventy-three patent practitioners”. Here is the opening paragraph of their letter:
We write as patent practitioners to comment on a Notice of Proposed Rulemaking (NPRM), Setting and Adjusting Patent Fees During Fiscal Year 2020. The signatories are members of several email listserv groups, a community of patent practitioners. The signatories taken together filed about 20,000 patent applications at the PTO during the past ten years, and paid about $50 million in fees to the PTO in the past ten years.
I am honored to be among the signers of that letter.
On a quick skim, it appears that every comment to this NPRM (including the comment cited above) that touches in any way on the non-DOCX surcharge is critical of USPTO’s effort to try to force applicants to file patent applications in DOCX format through imposition of a $400 penalty for failure to do so.
In future blog articles I will try to excerpt and summarize some of the views expressed in the comments.
Yet another intellectual property office has joined DAS for industrial designs. IP Australia will become both an Accessing Office and a Depositing Office for designs on November 1, 2019.
This brings to nine the number of Depositing Offices for designs. This brings to eight the number of Accessing Offices for designs. The Accessing Offices for designs are:
Conspicuously absent among the ID5 are:
(Update on March 1, 2020: since the date of this blog article, WIPO has updated its Participating Offices web page to say that INPI’s participation that will commence on March 2, 2020 is only as to national patent applications, not also as to PCT applications.)
I am fascinated to see the following information on the DAS page of the WIPO web site:
What this says is that starting on March 2, 2020 (a mere five months from now), the RO/AR will be a Depositing Office for the WIPO DAS system. What is interesting about this is that for RO/AR to be a Depositing Office, the RO/AR would have to exist by March 2, 2020. And for RO/AR to exist, Argentina would have to join the PCT by March 2, 2020. So I guess the DAS people at WIPO know something that I don’t about Argentina’s plans to join the PCT.
Malaysia has joined the Madrid Protocol. The Protocol will enter into force for Malaysia on December 27, 2019.
Malaysia deposited its Instrument of Accession on September 27, 2019. This brings to 122 the number of members of the Madrid system.
Malaysia joined the PCT on August 16, 2006. If Malaysia were to join the Hague Agreement, it would then achieve the trifecta for international filing systems.
The two-letter code for Malaysia is “MY”.
Starting from December 27, a trademark owner in Malaysia can file a Madrid Protocol application to pursue protection in one or more Offices outside of Malaysia. And starting from that date, a trademark owner outside of Malaysia can file a Subsequent Designation to Malaysia (or can file a new Madrid Protocol application designating Malaysia).
I was on airplanes much of last week when this petition got filed and that is my excuse for missing it. I have now had an opportunity to read the petition, filed by the Software Freedom Conservancy and signed by professional colleague Pamela Chestek. I am in awe of the amount of work and wordsmithing that went into this petition, which is well written both as a legal document and as a get-your-attention plain-English document. This petition communicates, much more clearly and directly than anything I have written (see blog article and blog article), the wrongheadedness and harmfulness of the recent rulemaking and drafting of examination guidelines by the Trademark Office at the USPTO relating to forcing applicants to reveal their domicile addresses.
My hope is that decisionmakers in the office of the Commissioner for Trademarks will read this petition and will take it to heart.
Executive summary: I received a nice phone call from a high-up person in the office of the Commissioner for Trademarks at the USPTO about the post office box policy. Continue reading “The Trademark Office and Post Office Boxes”
WIPO provides a very nice statistics lookup tool on its web site. I used that tool to make this pie chart showing the International Searching Authorities that were chosen in 2018 by filers in RO/US. Continue reading “Which ISAs do US filers choose?”