What are the Legal Implications of a §44(e) Foreign-Based U.S. Trademark Registration? – Florida Patent Lawyer Blog

Written by Mark Terry  Obtaining a U.S. trademark registration based on a foreign registration under §44(e) has its benefits, but what happens after the U.S. registration is obtained? Is the validity and/or status of the U.S. registration tied to the foreign registration? Is the foreign-based U.S. registration subject to the same provisions that apply to all other U.S. registrations? As a Florida Trademark Lawyer, I am often asked these questions by savvy clients seeking U.S. trademark protection for their foreign trademark registrations. We all know there are benefits to filing a U.S. trademark application under §44(e) claiming priority to a foreign

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Enablement Rejections of the Patent Office Can Be Rebutted Using Affidavits – Florida Patent Lawyer Blog

Written by Mark Terry  In an educational opinion today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner’s 35 U.S.C. § 112, first paragraph, rejection as failing to comply with the enablement requirement on the grounds that the Appellant provided sufficient “evidence” that the Examiner was wrong. As a Florida Patent Attorney that deals with § 112 rejections frequently, this BPAI decision illustrates a plan of attack for Appellants. See the BPAI decision in Ex Parte Schaefer here . The Appellant, a chemical company, was appealing a 35 U.S.C. § 112, first paragraph, enablement rejection wherein the Examiner concluded that one

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PTAB Reverses a 35 U.S.C. §102 Rejection Today: This is Why They Did It

Written by Mark Terry  This is a great Patent Trial and Appeal Board (PTAB) decision that highlights in one, short decision the main arguments every patent practitioner should make when responding to a 35 U.S.C. §102 anticipation rejection. In  Ex Parte Farkas, the PTAB reversed an Examiner’s anticipation rejection based on the following main reasons: Concepts do not anticipate Missing element by element analysis Elements not arranged in the same way We explain each one below. It is often the case that when issuing a 35 U.S.C. §102 anticipation rejection, the Examiner cannot find one or more of the claim elements in the

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Stay Away From the Non-Analogous Art Argument – Florida Patent Lawyer Blog

Written by Mark Terry  Today’s Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Michelle illustrates just how useless the non-analogous art argument really is. Not to beat a dead horse, since much has been written about the uselessness of this argument by my fellow patent prosecution bloggers , but seriously, don’t use this argument anymore. I have yet to see it succeed even once. The Ex Parte Michelle case involved a telecommunications network claim rejected under 35 U.S.C. 103(a) for being obvious. The Appellant tried his hand at the “non-analogous art” defense. The Board summarily dismissed this argument in one sentence:

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The Importance of Evidence in Office Action Responses

Written by Mark Terry      It is often the case that the U.S. Patent and Trademark Office (USPTO) will issue a 35 U.S.C. § 103 obviousness rejection based on what an Examiner believes is material that is known to a person of ordinary skill in the art. That is, the Patent Examiner will often state that such-and-such claim element (or some combination of claim elements) are well known to a person of ordinary skill in the art (POSITA). As a patent practitioner, you can respond with “attorney argument” and/or you can respond with hard evidence. The attached Patent Trial and Appeal Board (PTAB)

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U.S. Patent Office Reverses Rejection of Key Macrovision Invention – Florida Patent Lawyer Blog

Written by Mark Terry      Today, the Board of Patent Appeals and Interferences (BPAI) reversed an Examiner’s 35 U.S.C. § 102(e) anticipation rejection of a key Macrovision patent application directed to watermarks for videos. As a Miami Patent Attorney who reads BPAI decisions almost daily, I enjoyed the Ex Parte Ryan decision because it showed a rare smack-down of a Patent Examiner (as far as BPAI smack-downs go). At issue in this case was whether the cited reference, Collier, disclosed a method for inserting watermarks into a video. Collier, however, did not disclose inserting watermarks into a video but rather detecting watermarks in a video. In a rare

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The Term GREEN Deemed Descriptive by U.S. Trademark Office – Florida Patent Lawyer Blog

Written by Mark Terry    Last week, the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office issued the In re Calera Corp decision, which deemed the term GREEN to be merely descriptive of an environmentally friendly product or service. As a Miami Trademark Attorney, I found this decision interesting in light of the increasing number of GREEN trademarks and service marks that I see in use in every day life. At issue was an applicant’s trademark GREEN CEMENT associated with an environmentally friendly brand of cement. The Trademark Office’s examining attorney refused to register this mark under the premise that

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Rebutting a presumption of abandonment of a trademark due to “non-use” – Florida Patent Lawyer Blog

Written by Mark Terry    What constitutes abandoning a trademark, thereby opening the door for someone else to use it? How long can you cease use of a trademark without losing trademark rights? These are common questions I field regularly as a Miami Trademark Attorney. And the answer depends on a few factors. The landmark case often cited in trademark abandonment disputes is Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990), which involved the abandonment of a cigarette brand. We all know that two years of non-use of a mark is prima facie abandonment.

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Abandonment-Based Trademark Cancellation Proceedings At the U.S. Trademark Office – Florida Patent Lawyer Blog

Written by Mark Terry    Can you cancel an active U.S. Trademark Registration that has been abandoned? As a Trademark Attorney practicing in Miami, Florida, I’ve been asked this question more than once by a client wanting to clear the path for their own registration. The Trademark Act provides for the cancellation of a registration if the registered mark has been abandoned. See Section 14 of the Trademark Act, 15 U.S.C. §1064. Under Section 45 of the Trademark Act, 15 U.S.C. §1127, a mark is considered abandoned when “its use has been discontinued with intent not to resume such use.” The definition of

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