Notes From Judge Seeherman’s Presentation at the 8/28/07 LO 101 Law Office Meeting
Goal: Make it Easy for the TTAB to Affirm your Refusal
Building a Record
Ø Weed out the “noise” (irrelevant articles);
Ø Highlight the search terms;
Ø If using KwiK function, be sure results not too truncated. If they are, print most probative articles in Full format;
Ø Nexis Search strategy sometimes useful;
Ø U.S. sources are better than foreign (exceptions: well known publications specific to a particular field, e.g., Financial Times of London, and some technical publications – may need evidence to show the publication is a leader in its field and well-read by the relevant practitioners in the U.S.);
Ø TTAB assumes USPTO is submitting best evidence, therefore, few articles is an indication that there is not much evidence.
Ø Submit actual web pages, not Google search summaries as evidence of what is on the website (Google search summaries may be useful to show the number of “hits”);
Ø Avoid foreign websites (exceptions: technical websites specific to a particular field – may need evidence to show that website is often read by relevant practitioners in the U.S.);
Ø Wikipedia should not be used alone to prove anything. Like any evidence, it is rebuttable;
Ø TTAB cannot take judicial notice of on-line-only dictionaries, acronym listings, etc. If asking the TTAB to take judicial notice of a definition in the brief, use an on-line source that has a print version (Merriam-Webster, American Heritage Dictionary, etc.).
3rd Party Registrations
Ø Do not use Registrations based on 44(e) or 66(a);
Ø Do not use applications;
Ø Do not use House marks (Sears, Amazon.com, etc.) to prove relatedness of goods in 2(d) cases;
Ø Best to use real-world evidence, so go to the websites of some of the 3rd party registrants and use the website as evidence
The record must be Complete as of the filing of the Notice of Appeal. Applicant may file a Notice of Appeal after the 2nd Office Action, whether final or not (assuming new issue not raised in 2nd action). If the record is not complete and examining attorney wants to put in additional evidence, the examining attorney would have to ask for remand. A Remand will be granted for good cause, for example, to put in additional evidence not previously available, or to raise a new issue or refusal, or because a new examining attorney assigned to case and the new attorney needs to add additional evidence, or raise a new line of argument.
Requests For Reconsideration
Ø Examining attorney may put in additional evidence even if the request is denied;
Ø Examining attorney cannot raise a new issue;
Ø If, in a Request for reconsideration, applicant raises a new issue, or submits new evidence that is not cumulative and needs to be discussed, we may grant the Request and issue a non-final refusal per TMEP section 715.03(b).
Ø Give reasons why the refusal should be affirmed;
Ø Respond to all of applicant’s arguments;
Ø There are 13 DuPont factors, not just 2. Discuss all relevant factors. See TMEP section 1207.01;
Ø Refer to the evidence of record in specific, not general terms. If there is a great deal of evidence, highlight the most probative evidence in your brief;
Ø When discussing 2(e)(1) refusals, articulate why the mark is descriptive e.g., “The mark is descriptive because it immediately tells consumers A, B, and C.”;
Ø When objecting to evidence because not timely filed, Judge Seeherman suggested also arguing in the alternative as to why the evidence is not persuasive. However, other judges believe that if the examining attorney discusses the evidence at all, even in the alternative, the evidence comes in. Your call;
Ø Be very clear as to what issues are outstanding. If not all classes or all goods/services are being refused, clearly indicate which classes or goods/services are being refused.