PHOSITA

Authored by Alyssa Novak, May 20, 2016 at 7:09 am
TRADEMARK, USPTO

On April 30, the USPTO issued the April 2016 Trademark Manual of Examining Procedure (“TMEP”). The TMEP contains policy and procedural material for examining attorneys in the USPTO, trademark applicants, and attorneys and representatives for trademark applicants. The revised TMEP includes precedential and relevant case law reported since October 2015 and clarifies existing procedure. The revision supersedes any previous policies stated in prior editions, examination guides, or any other statement of USPTO policy, to the extent that there is any conflict.

The updated TMEP includes the following highlights:

-        The use of type font designations such as ARIAL or TIMES NEW ROMAN in a description is not critical to an understanding of the mark, and therefore unnecessary for an accurate and complete description.

-        Registered marks designating commercial color-identification systems, such as PANTONE, may appear in connection with a color identifier in the description of the mark, because such third-party use is an intended use of commercial color identification system terminology.

-        Applicants must attest to dates of use of a mark that are on or before the date the application was signed in §§ 1(a), 1(b), and 1(c)-based applications, which require proper statement of current use of the mark; applicants may not allege use that has not yet occurred.

-        Generally, an identification for “computer software” will be acceptable as long as both the function/purpose and the field of use are set forth.

-        Generally, a signatory identified as “manager,” “member,” “principal,” or “owner” may be presumed to have the authority to sign on behalf of a domestic or foreign LLC.

For a complete list of all sections with changes, see “Index to Changes in TMEP April 2016,” which is posted as part of the TMEP.