I visit the USPTO website so much that finally decided to save it as my homepage. Lame? A little. Anyways, I’ve noticed for a while now that the USPTO website includes a tab for kids. I never bothered to click on it because I’m not a kid, and I usually don’t have the time to explore the website extensively.
This morning, I was reading the January issue of ABA Journal, and what do I see on page 13? An article about the kids section of the USPTO website (titled, “Mommy, What’s a Patent?”). So I decided to check it out.
If you remember from one of my previous articles, I wasn't a huge fan of the After Final Consideration Pilot (AFCP) program. It was launched May of 2013, and it expired by the end of September 2014. Well, it's back, and it will be around through September 30, 2015.
Apparently, AFCP now has a new feature designed to enhance communication between the Office and applicants. Like before, AFCP gives examiners more time to search and consider responses after final rejection. Examiners will be able to use the additional time to also conduct an interview with applicants, which is supposedly a plus since applicants don't have the right to an interview after final rejection. But for me, it's not a big plus because I've never had problems scheduling an interview after final rejection.
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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