Mitchell Front, senior attorney, trademark examining operation for the USPTO, said common errors made in the US include not fully stating citizenship and entity, not filing a translation or fully explaining a color claim and description properly, and not obtaining a consent to register the name and likeness of a living individual. “The more specific and more accurate you are in your application the better we can analyze it,” he said.
Hiroki Aso, trademark examiner, International Trademark Division at the JPO, said that examiners most often reject claims for four reasons: having an overly vague or broad description, similarity to a previously registered mark, reasonable doubt about intention to use and a lack of distinctiveness. The JPO still does not accept registrations for sounds, smells and colors.
During the meeting, trademark practitioners also expressed concern about the USPTO’s approach to classifying trademarks. For example, if a Madrid registration covers a surgical gown in class 25 for clothes, the USPTO (which would classify the trademark in class 10 for medical apparatus) will not allow the applicant to switch the registration to a different class.
Lynn Sullivan, an attorney with Leydig, Voit & Mayer in Chicago, explained a problem she experienced when WIPO accepted a registration for a trademark for a leasing company in class 35. The USPTO classifies those goods in class 36 and would not allow a transfer or for the registration to stay in class 35. “If WIPO classifies it there you should leave it there,” Sullivan told the INTA Daily News.
Alan Datri, senior counselor, Office of the Assistant Director General at WIPO, provided an update on recent and pending accessions to the Madrid System and the latest developments.
Brand owners with further questions can go to the WIPO booth (100), the USPTO booth (509, 511) and the Japan External Trade Organization booth (831).
