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 There is also discussion of the recent non-precedential Tekni-Plex, Inc. v. Selig Sealing Products, Inc. case which concerns the requirements for showing a bona fide intent to use a trademark.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.

Prosecution Luncheon November 2012

December 3, 2012

This month our Patent Prosecution Group Luncheon discussed the increasing problem of Non-USPTO solicitations, the new versioning scheme for the TMEP, prior illegal use in the context of registering a trademark, assignment of trademark rights, a new case on objective indicia of nonobviousness, and when a “lease” is a “sale” under section 271(a) of the patent statute. To download a copy of the presentation click here.

Patent and Trademark Office Introduces a Web Site for Receiving Public Feedback on Patent and Trademark Examination Procedures

January 20, 2011

The US Patent and Trademark Office (USPTO) has instituted two on-line discussion tools that allow the public to provide input on ways to improve the Manual of Patent Examining Procedure (MPEP) and Trademark Manual of Examining Procedure (TMEP).  Only a few chapters in the MPEP and TMEP are currently receiving commentary, but it is expected that other chapters will soon be included in the program.

More information about the program can be found at  Additional information and links for providing comments to the MPEP can be found at and for the TMEP at