CAFC Reverses TTAB's "MONEY MART" Decision Due to Error in Assessing Priority

In a non-precedential ruling, the CAFC reversed the Board's decision [here] denying cancellation of registrations for the mark MONEY MART in standard character form for loan financing, check cashing services, not including pawn shop services, and for the mark in design form (below) for pawn shop and pawn brokerage services, concluding that the Board had erred in denying petitioner's claim of priority. The Board had found that Respondent Dollar Financial had priority because of earlier use of the MONEY MART mark for "loan financing services," which encompass pawn shop services. Wrong, said the court. Brittex Financial, Inc. v. Dollar Financial Group, Inc. Appeals Nos. 2021-1370 and 2021-1449 (Fed. Cir. November 23, 2021) [not precedential].

Petitioner Brittex claimed use of the mark MONEY MART for pawn brokerage services since 1993. Dollar began using MONEY MART for "certain services in 1984 that fit under the the labels 'loan financing, check cashing, and electronic fund transfer services,'" and it owned a 2007 registration for the mark for "loan financing" services.

The Board found that Brittex was the first to offer pawn brokerage and pawn shop services under its mark MONEY MART PAWN (1993). However it found that those services were "covered or encompassed by loan financing," and so Dollar had priority (1984). Because Dollar's registration was more than five years old, Dollar had the exclusive right to use the mark in connection with those services. Having decided the priority issue in Dollar's favor, the Board denied the petition for cancellation.

The CAFC, however, ruled that "the Board's conclusion regarding priority cannot stand." "Brittex, not Dollar, was the first to use that mark in connection with pawn brokerage and pawn shop services."

The Board set forth no sound basis for drawing a different conclusion. The evidence readily showed, of course, that one part of pawn brokerage and pawn shop services is one kind of “loan financing.” But the Board did not cite any authority, or offer legal support, for using that fact to strip Brittex of its facial priority. *** Even as a general matter, the Board provided no support for the notion that a registrant has priority as to a specific service it was second to offer just because it was first to offer a different specific service that is a species of a genus that covers both specific services.

Moreover, pawn brokerage and pawn shop services "integrate two different components, only one of which can be labeled 'loan financing'—the lending, but not the retail sale of collateral." So if the Board found that this "mixed-character business" is covered by "loan financing services," that was "unreasonable and unsupported by the evidence."

However, the Board did not err in denying Dollar's Morehouse defense - i.e., that because of Dollar's earlier registration for loan financing services, Brittex could not be damaged by registration of Dollar's mark for pawn-related services. A Morehouse defense requires that the prior registration be for the same mark and the same services as the mark in the challenged registration. Here, as the court concluded, the services are not the same.

And so the CAFC reversed and remanded the case to the TTAB for further proceedings.

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TTABlogger comment: The Morehouse defense very rarely works, but here is a case where it did.

Text Copyright John L. Welch 2021.

TTAB Posts December 2021 (Video) Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled eight (VIII) oral hearings for the month of December 2021. The hearings will be held via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.

December 1, 2021 - 11 AM: In re Solar Foundations USA, Inc., Serial No. 88206624 [Refusal to register SOLAR FOUNDATIONS USA for "installation of solar energy systems and alternative energy products for residential and commercial use, namely, foundations and racking systems for ground mount solar arrays" and "design of solar energy systems and alternative energy products for residential and commercial use, namely, support structure and racking systems for ground mount solar arrays" [USA disclaimed] on the ground of genericness.]

December 2, 2021 - 10 AM: In re Jasmin Larian, LLC, Serial No. 87522459 [Refusal to register the three-dimensional design shown below, for "handbags" under Sections 1, 2, and 45 of the Lanham Act on the ground that the design is a generic configuration.]

December 7, 2021 - 11 AM: Made in Nature, LLC v. Pharmavite LLC, Oppositions Nos.  91223683, 91223352, and 91227387 [Section 2(d) opposition to registration of NATURE MADE for, inter alia, snack bars containing dried fruits and fruit juice, on the ground of likely confusion with the registered mark MADE IN NATURE for dried fruits and vegetables, snack products, and fresh fruit.]

December 8, 2021 - 1 PM: Eazy-PZ LLC v. Ez Etail, Inc., Cancellation No. 92064031 [Petition for cancellation of a registration of the mark EZPZ for "on-line retail store services featuring a wide variety of consumer goods of others" on the ground of likelihood of confusion with the registered mark EZ PZ for "On-line retail gift shops; On-line retail store services featuring downloadable electronic books; On-line wholesale and retail store services featuring products for infants babies, and small children."]

December 9, 2021 - 10 AM: In re Six Continents Limited, Serial Nos. 88430142 and 88430162 [Refusal to register ATWELL SUITES, in standard character and stylized form, for various hotel-related services [SUITES disclaimed] on the ground that the proposed mark is primarily merely a surname under Section 2(e)(4).]

December 14, 2021 - 11 AM: In re Lincoln Global, Inc., Serial No. 87896781 [Section 2(d) refusal of PYTHONXOS for "software for controlling the operation of a robotic or automated welding or plasma cutting machine system" on the ground of likelihood of confusion with the registered mark PYTHON for “electric arc welding torches and parts therefor."]

December 15, 2021 - 1 PM: Flex Ltd. v. Bad Elf, LLC, Opposition No. 91254336 [Section 2(d) opposition to registration of FLEX for "Global positioning system (GPS) apparatus; Global positioning system (GPS) receivers" in view of the identical mark registered for custom manufacture of electronics, engineering services and new product development services.]

December 16, 2021 - 2 PM: Belay Mortgage Group, Inc. v. DFB Corporation, Opposition No. 91251959 [Opposition to registration of BELAY FINANCIAL for "banking services; Financial trust operations; Mortgage banking; Mortgage lending" [FINANCIAL disclaimed] on the ground of likely confusion with the common law mark BELAY MORTGAGE GROUP for mortgage brokerage services.]

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TTABlog comment: Any predictions? Any WYHAs?

Text Copyright John L. Welch 2021.

Ted Davis: 2021 Annual Review of U.S. Federal Case Law and TTAB Developments

In connection with his latest presentation at the recent INTA Annual Meeting, Ted Davis offered his "Annual Review of U.S. Federal Case Law and TTAB Developments." Thank you, Ted, for permitting me to post this link.

Ted Davis

As a companion piece to my presentation, here is a link to my outline of CAFC and TTAB decisions for the past 14 months.

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Text Copyright John L. Welch 2021.

Holiday Reading: The Trademark Modernization Act of 2020 and Newly-Issued Implementing Regulations

The USPTO has issued its final regulations under the Trademark Modernization Act of 2020. [pdf of Act here]. The new rules [pdf here] go into effect on December 18, 2021, except for the implementation of the shorter response period for office actions, which will go into effect on December 1, 2022. Petitions requesting institution of proceedings for reexamination or expungement will be accepted on or after December 27, 2021.

The Office states that, under the new provisions, individuals, businesses, and the USPTO itself will now have new tools to clear away unused registered trademarks from the federal trademark register, and the Office will have the ability to move applications through the registration process more efficiently. A summary of the new provisions may be found here at the USPTO website.

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TTABlogger comment: Note that the new "nonuse" ground for cancellation will not affect the current ground of abandonment.

Text Copyright John L. Welch 2021.

TTABlog Test: Is "SAMSUNG WIZ" for Smartphones Confusable with "THE WIZ" for Consumer Electronics Retail Services?

P.C. Richard & Son opposed an application to register SAMSUNG WIZ for "smartphones; tablet computer[s]," alleging a likelihood of confusion with its registered marks THE WIZ and NOBODY BEATS THE WIZ for retail store services featuring consumer electronics. The Board wasted little time in finding the goods and services to be related, but what about the marks? Are they close enough? And how strong is THE WIZ anyway? How do you think this came out? P.C. Richard & Son Long Island Corp. v. Samsung Electronics Co., Ltd., Opposition No. 91222405 (November 9, 2021) [not precedential] (Opinion by Judge Karen Kuhlke)

Goods/Services: The Board has often recognized that confusion is likely from the use of the same or similar marks for goods and for services involving those goods. See, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1307 128 USPQ2d 1047, 1052 (Fed. Cir. 2018). Opposer sells both smartphone accessories and tablet computers in its stores. Thus, the channels of trade and classes of consumers overlap.

Since the goods and services in the application and pleaded registration are unrestricted, the Board must assume that the goods and services are offered to ordinary purchasers who exercise no more than ordinary care in their purchasing decisions.

Strength of Opposer's Mark: Opposer claimed that its marks are famous, but its evidence fell short. It did not provide sales figures under each mark, and there was no evidence regarding commercial impressions, social media following, or third-party mentions.

Applicant Samsung argued that the term WIZ is conceptually weak, pointing to a dictionary definition (a wizard or a skilled person) and to third-party registrations and uses for marks that incorporate the word WIZ, for a variety of electronics goods and services. The Board found that the third-party registrations, although not diminishing the commercial strength of Opposer's THE WIZ mark, "do underscore the somewhat suggestive and laudatory nature of the word WIZ in connection with electronic goods as something that is very good, something possessing skill." The Board concluded that WIZ is "somewhat suggestive" for a variety of electronic goods.

Seventeen examples of third-party use of "WIZ" in connection with electronic goods and services tended to show the commercial weakness of "WIZ."

Overall, we find both some conceptual and commercial weakness for the word WIZ in the mark(s) THE WIZ (and NOBODY BEATS THE WIZ) in connection with retail store services in the field of consumer electronics and accessories. We accord the word WIZ in Opposer’s THE WIZ mark a somewhat restricted scope of protection

The Marks: The Board found that SAMSUNG is clearly the dominant portion of applicant’s mark, in view of its position at the beginning of the mark and the great commercial strength of the SAMSUNG mark, as revealed by the record evidence. Furthermore, WIZ is somewhat suggestive and weak in connection with the involved goods and services.

The Board concluded that applicant's mark engenders a different overall commercial impression than opposer's mark, sufficient to avoid likely confusion. "In connection with Applicant’s goods, WIZ is modified by SAMSUNG, it is an electronic SAMSUNG product that is a wiz, by comparison, THE WIZ for retail stores featuring electronic products connotes a person or store that is a wiz."

We are cognizant of Opposer’s argument that if Opposer were to sell the Samsung tablet computer on Opposer’s own retail website using its SAMSUNG WIZ trademark, Opposer’s customers would be confused. Considering the amount of WIZ marks used and registered in connection with electronic goods and services, we find that tends towards a mere theoretical possibility, given the dominant element in Applicant’s mark.

Conclusion: Balancing the relevant DuPont factors,the Board found "the differences between the marks sufficient to avoid likely confusion despite the relatedness of the goods and services, and trade channels, in particular given the differences in overall commercial impression." And so, it dismissed the opposition.

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TTABlogger comment: Well, somebody beat the Wiz!

Text Copyright John L. Welch 2021.

TTABlog Test: Are Dietary Supplements Related to Skincare Products Under Section 2(d)?

The USPTO refused registration of the proposed mark MANSBRAND for "dietary supplements; erectile dysfunction supplements; male enhancement supplements; herbal supplements; health supplements; health booster supplements; muscle building supplements; and nutraceuticals for use as a dietary supplement," finding confusion likely with the registered mark MANBRAND SKINCARE for "[n]on-medicated skincare products for men, namely, face wash, face lotion, eye cream, body wash, shampoo” [SKINCARE disclaimed]. The marks are too close for comfort, but what about the goods? How do you think this appeal came out? In re Local Holdings, Serial No. 88515551 (November 17, 2021) [not precedential] (Opinion by Judge Cynthia C. Lynch).

As to the marks, the Board rejected applicant's argument that "[t]he plural form of MAN (Mans or man’s) is important, creating the commercial impression of products that can be useful for manly men,” because "nothing about the plural or possessive form produces that impression." Instead, it found the two terms to be nearly identical [not surprisingly] and concluded that the marks convey a similar appearance, sound, connotation, and commercial impression.

As to the goods, Examining Attorney Alexandra El-Bayeh submitted various evidence demonstrating the relatedness of these goods, including third-party registrations identifying both supplements and skin care products, and third-party websites offering same. "The evidence shows that these products are promoted together as part of a wellness regime that includes skincare and dietary, health, or muscle-building supplements."

Applicant's attempts to read limitations into the channels of trade (registrant sells only on-line via monthly subscription) and the sophistication of relevant consumers (discerning customers seeking a solution to a male-oriented issue) did not stand up, the Board pointing out for the umpteenth time that the application and cited registration contain no such limitations. "The retail website evidence in the record reflects that these types of products can be inexpensive and are sold through general consumer retail websites. Thus, we find that they do not necessarily involve elevated care in purchasing."

And so, the Board affirmed the refusal to register.

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TTABlogger comment: How did you do?

Text Copyright John L. Welch 2021.

Precedential No. 30: TTAB Reverses Descriptiveness Refusal of TAVERNA COSTERA, Declining to Apply Doctrine of Foreign Equivalents

Because the ordinary American purchaser would not stop and translate a mark comprising words from different languages, the TTAB reversed a Section 2(e)(1) mere descriptiveness refusal of TAVERNA COSTERA for “restaurant, cafe, and bar services.” The Board found that applicant’s mark, at most, suggests a “fusion of cuisines.” However, because TAVERNA is a recognized English language word referring to a type of restaurant, disclaimer of that word was required. In re Taverna Izakaya LLC, 2021 USPQ2d 1134 (TTAB 2021) [precedential] (Opinion by Judge Cynthia C. Lynch).

The examining attorney contended that TAVERNA COSTERA translates to “coastal tavern,” and applicant did not dispute the descriptiveness of that term for restaurant services. Instead, applicant maintained that the doctrine of foreign equivalents should not be applied because consumers would take the mark “as it is” rather than translating it. See Palm Bay, 73 USPQ2d at 1696 (“When it is unlikely that an American buyer will translate [a] foreign mark and will take it as it is, then the doctrine of foreign equivalents will not be applied.”). Because the first word is understood in English, the applicant argued, it is “exceeding likely” that the average consumer would not stop to translate COSTERA, “particularly since the Spanish word COSTERA is pronounceable in English.” The Board agreed:

Given that ordinary consumers would recognize the first word in Applicant’s mark not only as an English word – but one that connotes a Greek café and Greek cuisine – those consumers would not be inclined to stop and translate the next word in the mark from Spanish.

The Board observed that courts and the TTAB have frequently ruled that consumers would not “stop and translate" marks comprised of terms in multiple languages, “often finding that the marks combine the different languages for suggestive purposes to create a certain commercial impression:” e.g., LE CASE for jewelry boxes; GLACÉ LITE for ice cream products. The Board therefore refused to apply the doctrine of foreign equivalents.

The Board noted that the subject application includes a statement in the Translation field that “[t]he English translation of TAVERNA COSTERA in the mark is COASTAL TAVERN”, as well as a Miscellaneous Statement that “the word TAVERNA is Greek and Italian, while the word COSTERA is Spanish.” Not to worry. “The record makes clear that the application’s 'translation' statement is not in fact a literal and direct 'translation,' as commonly understood, from a particular foreign language into English; rather, it is an attempt to fit the square peg of a multi-language mark into the round hole of the 'translation' in the application form.”

And so, the Board reversed the refusal to register but required that the applicant disclaim the descriptive English term TAVERNA.

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TTABlogger comment: So if you take the word "taverna" and slap on a foreign word, you've got a registrable mark for restaurant and bar services? 

Text Copyright John L. Welch 2021.

TTAB Affirms Genericness Refusal of "LETTERS & NUMBERS" for . . . . Guess What?

The Board affirmed a refusal to register the proposed mark LETTERS & NUMBERS (in standard character form) on the Supplemental Register, finding it to be generic for printed and electronic publications "in the field of educational and entertainment materials targeted to children on the topic of alphanumeric characters and symbols." Dictionary evidence, applicant's specimen of use and its response to Examining Attorney Tracy Fletcher's request for information, and numerous third-party uses of the same or equivalent terms convinced the Board that the purported mark defines "the type of good (e.g., 'letters and numbers books'), or the integral, paramount or key aspect" of the goods. In re Brand Design Company, Inc. d/b/a DBA House Industries, Serial No. 87658330 (November 16, 2021) [not precedential] (Opinion by Judge Jonathan Hudis).

Applicant and the examining attorney agreed that the genus of goods at issue is "downloadable and printed children’s educational publications on the topic of alphanumeric characters and symbols," and that the relevant public comprises ordinary consumers of these goods. The question, then, was "whether the relevant public understands the proposed mark primarily "to refer to 'downloadable and printed children’s educational publications on the topic of alphanumeric characters and symbols.'" 

Applicant argued that "[a]t best, the evidence supplied by the Office is probative to show that the terms 'letters' and 'numbers,' alone or in combination, may be merely descriptive of relevant topics for, or used descriptively in titles of, educational publications and programs, making its registration appropriate for the Supplemental Register." The Board disagreed:

The Examining Attorney provided numerous examples showing that educational product companies and the relevant purchasing public refer to LETTERS & NUMBERS as a type of learning tool or a key aspect of learning tools – including flash cards, toys, games, instructional books, software apps, wall charts, worksheets, workbooks, tracing sheets, posters, interactive videos – for the understanding and formation of alphanumeric units of the alphabet and numerical integers. We find the third-party examples of LETTERS & NUMBERS, and equivalent terms, do not simply designate the purpose or use these items, but rather define the type of good (e.g., “letters and numbers books”), or the integral, paramount or key aspect of the featured items.

The Board concluded that the record evidence clearly shows the term LETTERS & NUMBERS to be generic for applicant’s identified goods.

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TTABlogger comment: Would the stylized form of the mark be registrable with a disclaimer of the words?

Text Copyright John L. Welch 2021.

TTABlog Test: How Did These Recent Section 2(d) Appeals Turn Out?

The TTAB (Tee-Tee-Ā-Bee) recently decided the appeals from the three Section 2(d) refusals described below. No hints today. How do you think they turned out?  [Answer in first comment].

In re Institute of Management Accountants, Serial No. 88626624 (November 9, 2021) [not precedential] (Opinion by Judge Linda A. Kuczma) [Section 2(d) refusal of IMA EXCEL 365: TIPS IN TEN for "a series of online courses demonstrating new excel features helpful to management accountants and financial professionals," in view of the registered mark EXCEL for computer spreadsheet software.]

Argo AI, LLC, Serial No. 88814288 (October 10, 2021) [not precedential] (Opinion by Judge Christopher Larkin) [Section 2(d) refusal of GROUND TRUTH for "On-line journals, namely, blogs featuring autonomous vehicle technology" in view of the registered mark GROUNDTRUTH for various services, including "On-line journals, namely, blogs featuring information written by and for members of local communities around the globe."]

In re BFY LLC, Serial No. 88190652 (November 12, 2021) (Opinion by Judge George C. Pologeorgis)[not precedential] [Section 2(d) refusal of SLEEPEEZ for "Homeopathic pharmaceuticals for use in the treatment of children's sleeping problems; Medicated candies for use in the treatment of children's sleeping problems," in view of the registered mark SLEEPEASE for "Homeopathic preparations in the nature of an oral spray for the treatment of insomnia and symptoms of insomnia such as wakefulness, restlessness, caffeine sensitivity, emotional stress and anxiety."

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TTABlog comment: How did you do? See any WYHAs?

Text Copyright John L. Welch 2021.

USPTO Issues Regulations Implementing the Trademark Modernization Act of 2020 (TMA)

The USPTO today issued regulations [pdf here] implementing the provisions of the Trademark Modernization Act of 2020 (TMA). Many of the provisions will be effective as of December 18, 2021. THe rules for flexible response periods to office actions will take effect on December 1, 2022.

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Text Copyright John L. Welch 2021.

New Nonuse Provisions of Trademark Modernization Act May Significantly Impact Non-US Trademark Owners

Here is a Trademark Alert published by Wolf Greenfield yesterday, regarding the Trademark Modernization Act of 2020 ("TMA"), and focusing particularly on the "nonuse" provisions and their impact on non-US owners of US registrations.

In large part, the Trademark Modernization Act (TMA), signed into law by then President Trump on December 27, 2020, will take effect on December 27, 2021. Driven by a rising concern regarding the proliferation of applications and registrations (particularly emanating from China) for trademarks that are not actually in use in United States commerce, the TMA requires the United States Patent and Trademark Office (USPTO) to implement new procedures that will allow third parties to more readily challenge pending applications and issued registrations that may be spurious. The new provisions may have a significant impact on non-US trademark owners and may require a fresh look at their trademark portfolios in order to avoid these new avenues of attack.

• Registrations for marks unused for any three-year period are more easily cancelled.
• Evidence of efforts to commence or restart use is no longer relevant in nonuse challenges. 
• Nonuse provisions require frequent audits and possibly new filings.
  

BACKGROUND

Under current practice, challenges to pending applications are limited in scope, and challenges to registrations require costly cancellation proceedings. Pursuant to the TMA, the USPTO will broaden the range of evidence that a third party may submit for consideration during examination of a pending application (including evidence of nonuse) and will streamline procedures for challenging issued registrations.

In keeping with the focus on clearing the Trademark Register of so-called “deadwood,” the USPTO will encourage owners of registrations to remove goods and services for which the mark is not being used at the time of maintenance or renewal, by charging a fee to a registrant who is required to remove goods or services from the registration due to nonuse.

These changes will help clear the way for legitimate trademark users to obtain registration of their marks without being blocked by specious applications or registrations.

WHAT YOU NEED TO KNOW

Of particular import are two new ex parte procedures for challenging a registration on the ground of nonuse of the registered mark for some or all of the identified goods or services.

In a procedure called reexamination, directed at registrations that issued based on alleged use of the mark, a challenger may submit evidence to show that the mark was not in use either as of the day the underlying application was filed, or as of the day a statement of use was filed. The petition for reexamination must be filed prior to the fifth anniversary of the registration. In addition, the Director of the USPTO may institute a reexamination on his or her own initiative. A successful challenge will result in removal of the “unused” goods and services from the registration.

In a procedure called expungement, a registration may be challenged, between the third and tenth anniversaries of the registration, on the ground that the registered mark was never used in commerce for some or all of the identified goods or services. Again, the Director of the USPTO may institute an expungement proceeding on his or her own initiative. A successful challenge will result in removal of the “unused” goods and services from the registration.

In the traditional inter partes context, the TMA adds a new claim of nonuse that will be available for challenging a registration at any time, based on nonuse of the registered mark for any three-year period after registration. In the case of a registration issued under Sections 44(e) and 66(a) of the Lanham Act, the registration will not be cancelled if the owner can prove “special circumstances” that excuse the nonuse.

WHAT TO CONSIDER

For non-US owners of registrations that are not based on actual use, the new ex parte expungement proceeding and the new nonuse cancellation claim will represent a major change in the viability of their registrations. Under current law, a claim of abandonment may be made against a registration when a mark has not been used and there is an intention not to commence or resume use. A registration owner may defeat the abandonment claim by showing an intent to commence use in the US, for example by proving their efforts to license the mark or find distributors for the products or services. Under the new provision, such proof of an intention to commence use will not immunize an owner from expungement or nonuse cancellation.

Non-US registration owners would be wise to recognize that these changes in US law require a re-assessment of their trademark portfolios. For a registration that is more than three years old, and as to which the registered mark has not been used, the owner may want to consider filing a new application to register. For applications that are pending, the owner may want to delay issuance of the United States registration until a time when the owner is ready to put the mark into use; this can be achieved, at some cost, by including in the application a Section 1(b) intent-to-use basis. Once the application receives a Notice of Allowance, the applicant may either drop the Section 1(b) basis and let the registration issue, or postpone issuance for up to three years by filing timely requests for extension of time (including government fees) to submit proof of use.

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TTABlogger comment: New regulations implementing many of the provisions of the TMA will be issued soon by the USPTO.

Text Copyright John L. Welch 2021.