News & Analysis as of

United States Patent and Trademark Office Office Actions

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Sterne, Kessler, Goldstein & Fox P.L.L.C.

Does the United States Patent Office Protect Unpublished Applications When Searching the Internet and Artificial Intelligence...

Short answer: Yes, but… Short answer: Yes, but… Many practitioners in sensitive technology areas file patent applications with non-publication requests or may abandon their applications if examination is not going well...more

Fish & Richardson

USPTO Updates Deadline to Respond to Trademark Office Actions

Fish & Richardson on

The United States Patent and Trademark Office (USPTO) has updated the deadline to respond to Office Actions for trademark applications. As of December 3, 2022, trademark applicants now have three months (instead of the...more

Womble Bond Dickinson

USPTO to Shorten Deadline to Respond to Trademark Office Actions to Three (3) Months Effective December 3, 2022

Womble Bond Dickinson on

U.S. trademark practitioners will no longer have a six-month window to respond to Office Actions issued by the United States Patent and Trademark Office (“USPTO”) on certain pending trademark applications. As of DECEMBER...more

BakerHostetler

Important Changes in USPTO Trademark Practices to Take Effect on Dec. 3, 2022

BakerHostetler on

As part of the Trademark Modernization Act of 2020 (reported in the IP Intelligence Blog on Dec. 23, 2021), beginning on Dec. 3, trademark applicants will have three months (with a possible three-month extension) to respond...more

Venable LLP

U.S. Trademark Applications Hit the Fast Track - At Least in Theory

Venable LLP on

​​​​​​​The United States Patent and Trademark Office (USPTO) recently enacted a rule change that will impact all trademark applications filed nationally in the United States (rather than through the Madrid Protocol)....more

Dunlap Bennett & Ludwig PLLC

The Supplemental Register

You have probably heard of trademarks and trademark registrations, but never the Supplemental trademark register. If you have heard of the Supplemental Register, then you have likely received an Office Action from the USPTO...more

Dorsey & Whitney LLP

Final Rules for Trademark Modernization Act in Effect This Weekend - New Nonuse Procedures Available and Shortened Office Action...

Dorsey & Whitney LLP on

Attention trademark practitioners: the finalized rules implementing the 2020 Trademark Modernization Act (“TMA”) go into effect this weekend, on December 18, 2021. Significantly, this marks the availability of three new...more

Williams Mullen

Trademark Modernization Act of 2020: What Brand Owners Should Know

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In case you missed it, President Trump signed the Trademark Modernization Act of 2020 (TMA) into law on December 27, 2020. The TMA, which garnered bi-partisan support and was included in the COVID-19 Economic Relief Bill,...more

Perkins Coie

Trademark Modernization Act of 2020: Three New Year’s Gifts for Brand Owners

Perkins Coie on

The Trademark Modernization Act of 2020 (TMA) was signed into law on December 27, 2020, making several changes to the Lanham Act that have important effects on trademark owners’ brand protection programs. Consistent with the...more

Foley & Lardner LLP

After-Final Response Does Not Stop PTA Clock

Foley & Lardner LLP on

In Intra-Cellular Therapies, Inc. v. Iancu, the Federal Circuit agreed with the USPTO’s Patent Term Adjustment (PTA) calculation that charged a deduction for “applicant delay” for time after the applicant filed a first...more

Dorsey & Whitney LLP

Tom Brady Gets Sacked at the USPTO

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Love him or hate him, everyone agrees that NFL Quarterback Tom Brady is terrific, except the USPTO.  Earlier this year, Mr. Brady’s company filed to register the trademark “Tom Terrific” for t-shirts and various other...more

White and Williams LLP

Foreign Trademark Applicants and Registrants Must Now Be Represented By US Counsel

White and Williams LLP on

Effective August 3, 2019, all foreign-domiciled trademark applicants, registrants and parties to proceedings before the Trademark Trial and Appeal Board must be represented by an attorney who is licensed to practice law in...more

Dorsey & Whitney LLP

Will TTAB’s First Precedential Decision of 2018 Lead to Better Quality Examination of Statements of Use?

Dorsey & Whitney LLP on

In January 2015, Pitney Bowes filed an intent-to-use trademark application for the logo shown here for use with mailing services, including postal delivery, parcel delivery, and delivery of mail to post offices for posting...more

Ward and Smith, P.A.

The United States Patent Office Totally Rejected Your Claims? Don't Panic!

Ward and Smith, P.A. on

In my almost 17 years of practice before the United States Patent and Trademark Office ("PTO"), by far the most common telephone call I receive from inventors is a frantic inquiry about an Office Action received from the PTO...more

Nutter McClennen & Fish LLP

New USPTO P3 Program for After Final Office Actions Is Useful Hybrid of Pre-Appeal and AFCP Programs

The Post-Prosecution Pilot Program, dubbed “P3” by the United States Patent and Trademark Office (USPTO), offers applicants a new, and arguably improved, path through the after-final landscape. P3 provides applicants the...more

Womble Bond Dickinson

A Response to Rejections Under 35 USC §101

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Here is an argument we are using in response to rejections under 35 USC §101 that allege the claims are directed to an abstract idea and are patent ineligible. This is useful in Office action responses, and appeals. The...more

Womble Bond Dickinson

Hi-Tech Accuses Dynamic of Trademark Infringement and False Claims of Steroid Powered Products

Womble Bond Dickinson on

On September 28, 2015, Hi-Tech Pharmaceuticals, Inc. (“Hi-Tech”), a Georgia corporation, brought a trademark infringement action against Dynamic Sports Nutrition, LLC d/b/a Anabolic Research (“Dynamic”), and Brian Clapp...more

Womble Bond Dickinson

Logic, Arguments and Patents

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Patent prosecution involves one side arguing for, and another side arguing against, the validity of claims in a patent application. This takes the form of a written discourse, in which an Examiner for the USPTO (United...more

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