Trademark Manual of Examination Procedure

January 2016 Trademark Prosecution Lunch Update

March 6, 2016

The January 2016 trademark section of the prosecution lunch featured updates concerning changes to the NICE classifications, recent updates to the Trademark Manual of Examination Procedure (TMEP), and the December 2015 United States Patent and Trademark Office (USPTO) shutdown. In addition, there is discussion of the recent B&B Hardware case that concerns the preclusive effect of an opposition as to priority of use. There is also discussion of the recent non-precedential Tekni-Plex, Inc. v. Selig Sealing Products, Inc. case which concerns the requirements for showing a bona fide intent to use a trademark. As noted recently in the In re Apple, Inc. (nonpresidential) case, the USPTO refused to register the IPOD mark for user manuals because it was not used for “goods in trade.” A case concerning the evidence required to show proof of use of the mark in interstate commerce is also highlighted. A copy of the presentation can be downloaded here.