Friday, May 06, 2005

TTABlog: Friday Flotsam and Jetsam (Issue No. 2)

Welcome to the second issue of "Friday Flotsam and Jetsam," an occasional vehicle for clearing out my "things-to-blog" folder and for posting a few irrelevant photographs that I like.

Searching the TTABlog: In case you didn't know it, the TTABlog is completely word-searchable by utilizing the search box at the upper left corner of the blog. For example, put in the word "TrafFix" (or "traffix"), and Google will provide a list of the TTABlog entries that include that word. In addition, I posted a quarterly index at the end of March 2005, and an end-of-year index at the close of 2004, categorizing the blog entries by subject matter.

Post Office Square
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TMEP 4th edition now available: On April 29th, the PTO posted the 4th and latest revision of the Trademark Manual of Examining Procedure (here). Strangely, at that link, the manual is referred to as the "Trademark Manual of Examination Procedures," which appears to be a typographical error. See, for example, the Forward, where the work is referred to by its usual name.

The Top Ten TTAB Decisions of 2004: My annual Top Ten article will be appearing in the May 9th issue of the National Law Journal (in the Intellectual Property insert), which I believe will be distributed at the INTA Annual Meeting in San Diego. This is the fourth consecutive year that NLJ has carried my annual list. NLJ, however, chooses its own title, for better or worse. Two years ago my "Top Ten TTAB Decisions of 2002" was rather anticlimactically dubbed "TTAB issued no earthshaking decisions last year."

Meanwhile, my application to register the trademark THE TOP TEN TTAB DECISION OF 20** remains mired in the PTO. On July 23, 2003, the Examining Attorney refused registration on the ground of mere descriptiveness, and he also deemed the mark unregistrable because it purportedly contains a "phantom" element. I responded to that office action, and subsequently filed an Amendment to Allege Use. The PTO has yet to take up the file again. (For a discussion of the TTAB's evolving position on "phantom" marks, see Section IB of my article entitled "The TTAB in 2004: What Was Hot, What Was Not.")

José Cancela, New England Revolution
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More reading material: Looking for something to read on the flight to INTA San Diego? Thanks to The Trademark Blog, here's a link to a new article by Uli Widmaier entitled "Use, Liability, and the Structure of Trademark Law," 37 Hofstra Law Review 693 (2005). In brief, Mr. Widmaier's thesis is that recent decisions in the Internet realm have improperly extended the reach of trademark law, and that courts need to return to the fundamental trademark principle that use of a mark as a mark is a prerequisite for all trademark claims. That, my friends, is an extremely terse summary of this 107-page article.

Electronic Hearing Room: On April 27, 2005, the PTO announced the launch of a "state of the art" electronic facility available for hearing TTAB appeals and contested cases. (Link). Attorneys will be able to present their arguments to the Board while the judges see the attorneys on a large plasma screen and receive evidence electronically. Many law firms reportedly have the necessary equipment to enable such hearings; alternatively, attorneys may participate from the PTO Depository Libraries in Sunnyvale, California; Detroit, Michigan; and College Station, Texas (Texas A&M).

The TTABlog wonders, what's next for the Board? Internet streaming of TTAB arguments? Podcasts? C-Span? American Idol-type electronic voting for best oral argument? (Randy: "Hey dawg, you really brought it today!" Paula: "What can I say? You're a pleasure to listen to!" Simon: "Frankly, I can hear a better argument on any evening in any pub in England.")

Text and photographs ©John L. Welch 2005. All Rights Reserved.


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