Topics discussed in this month’s prosecution group meeting include the recent U.S. Chamber of Commerce study finding that industries that depend on intellectual property rights account for more than $5 trillion of the country’s gross domestic product, the USPTO’s pilot “Deadwood” project, and the ICANN list of applied-for generic top level domains (gTLDs).

1. Prosecution Group Luncheon
June 2012

2. USPTO Report: Intellectual Property-Intensive
Industries Contribute $5 Trillion, 40 Million Jobs to
U.S. Economy
• virtually every industry either produces or uses IP
• IP-intensive industries (75) accounted for about
$5.06 trillion in value added, or 34.8% of U.S.
gross domestic product (GDP), in 2010.
• IP-intensive industries directly accounted for 27.1
million American jobs, or 18.8% of all
employment in the economy, in 2010.
• Avg weekly wages for IP-intensive industries
were $1,156 42% higher than the $815 weekly
wages in non-IP-intensive private industries.

3. USPTO Amends Rules For Specimens of Use,
Launches Pilot "Deadwood" Project
• The PTO has revised the Rules regarding specimens of
use, and has launched a pilot study to review a number of
registrations at the Section 8 or renewal stages.
– USPTO can upon request, require additional
specimens, information, exhibits, and affidavits or
declarations deemed reasonably necessary to examine
a post registration affidavit or declaration of continued
use, an allegation of use ( 1(a) or 1(b)), or an
amendment to a registered mark.
• These new Rules go into effect on June 22, 2012.

4. ICANN “REVEAL DAY” June 13th
• ~2000 applicants for gTLDs
• a rough list of the most-filed for strings:
.APP 13
.INC 11
.HOME 11
.ART 10
.LLC 9
.BLOG 9
.BOOK 9
.MUSIC 8
.MOVIE 8
.DESIGN 8
.WEB 7
.HOTEL 7
Review list for conflicts?

5. Not-so-Initial Disclosures
• Opposer first identified a potential witness in pre-trial
disclosures. In its initial disclosures, Spier had identified
another person who later left the company.
1) the surprise to the party against whom the
evidence would be offered;
2) the ability of that party to cure the surprise;
3) the extent to which allowing the testimony would
disrupt the trial;
4) the importance of the evidence; and
5) the non-disclosing party’s explanation for its failure
to disclose the evidence.
• TTAB granted motion to strike – should have updated
• Spier Wines (PTY) Ltd. v. Ofer Z. Shepher, Oppositions Nos.
91182155 and 91182825 (June 12, 2012) [precedential].