John L. Welch of TTABlog fame has coined three initialisms that have enriched the lives of all trademark practitioners. Continue reading “Helpful initialisms – WYHA? WYHO? WYHP?”
e-filing at WIPO – you get an extra hour
It’s that time of year again. People in the US who sometimes e-file stuff at the International Bureau at WIPO will have memorized exactly what the local time is that works out to being midnight in Switzerland … and for the next week, the answer to this question will be different from the usual answer. Continue reading “e-filing at WIPO – you get an extra hour”
Still another fax bites the dust
Now comes the news that on January 1, 2020, the Swiss Federal Institute of Intellectual Property will turn off its fax machine. Continue reading “Still another fax bites the dust”
October 14 will be a holiday at the USPTO
Monday, October 14, 2019 will be a federal holiday in the District of Columbia. This means the USPTO will be closed. This means that any action that would be due at the USPTO on October 14 will be timely if it is done by Tuesday, October 15, 2019.
“Listserv” is generic
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.
Today is the day for Brazil and Madrid Protocol
(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”.
Malaysia has joined the Madrid Protocol
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).
Maybe this will prompt corrective action by the Trademark Office
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.
The Trademark Office and Post Office Boxes
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”
Ohio State University’s trademark application fares poorly
Readers will recall my blog articles here and here and here about Ohio State University’s ill-fated attempt to obtain a trademark registration for the word “the”. Now there is an Office Action which you can see here.
As I predicted, the Examining Attorney refused registration because the specimens of use show the mark as “merely ornamental”.
And as I also predicted, the Examining Attorney also refused registration in view of the earlier trademark filing by clothing designer Marc Jacobs. Continue reading “Ohio State University’s trademark application fares poorly”