By now I've worked on hundreds of patent applications... I've written about mundane inventions like beach towel weights to sophisticated inventions like treatment for cancer, and everything in between. If you were to ask me what type of inventions are my least favorite to work on, I'd tell you, "business methods" without missing a beat.
I say business methods for a couple of reasons. First, these methods often sound complicated, but the result is always the same: make more money by moving money around. There are many ways to move money around, and it's such an abstract concept to transfer money from one account to another. Nothing really changes when money is transferred. Sure, you see the numbers in different accounts change. But that's all it is. Numbers.
I hope you haven't forgotten about me! I've been working on an article for another blog and well, you know.
Anyhow, I saw this article on Huffington Post the other day. The article is about a trademark application that was rejected because the USPTO deemed it "vulgar." The trademark was "COMFYBALLS" for men's underwear, which has a special pouch to cradle the male genitals.
If you're not aware, not everything can be a federally registered trademark. According to Section 1203.01 of TMEP, or Section 2(a) of the Trademark Act, there is an absolute bar to the registration of immoral or scandalous matter. Sounds harsh.
How do you determine if something is scandalous? You look to its ordinary and common meaning. In re Riverbank Canning Co., 95 F.2d 327, 328 (CCPA 1938). This may be established by referring to court decisions, decisions of the TTAB, (and I love this one) dictionary definitions (does urban dictionary count?). In re McGinley, 660 F.2d 481, 485 (CCPA 1981). Whatever the ordinary and common meaning, it must be shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation. Id at 486. AND, the meaning must be determined in the context of the current attitudes of the day. In re Mavety Media Group Ltd., 33 F.3d 1367 (Fed. Cir. 1994).
This week, I interviewed an Examiner and filed a response to a non-final Office Action. The next day, I found out that another person in my office filed his own response to the same non-final Office Action. My first reaction was, "Ugh. Why." Then I was like, "Ok, what do I do about this."
As I do every time I don't know what to do, I skimmed through the MPEP. But MPEP didn't really have what I needed, so I called the Examiner. He told me to call customer service at USPTO. Normally, I don't like calling customer service because I'm never really sure if they're giving me the right answer. But the Examiner did tell me to call so I did. (For once, I didn't have to wait like 30 minutes, so I didn't really mind.) Funny though, because when I spoke to a customer service representative, he told me that I should call the Examiner. (Good ol' talk to this guy, no, talk to that guy game).
Well, calling the Examiner back wasn't a bad idea because he's the one examining this application, so I was happy to go with whatever he wanted to do. So here's the rule when there is no rule:
Ask the Examiner and if whatever he or she says sounds reasonable to you, go with it.
And just for good measure, here's another rule: Write down (make it look all official) whatever you discussed with the Examiner and submit it as a transmittal letter. This is good to do so that the Examiner can't come back later and say, "Hey, we never discussed this, or whatever." Also, it makes you look like you know what you're doing. Sort of. Fake it 'til you make it. Don't worry. Everyone does it.
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