This document summarizes several topics discussed at a prosecution group luncheon in January 2013, including changes to the Nice Agreement for classifying goods and services, concerns about shortening the deadline for filing declarations of use under Section 8, a case finding that purchasers of medical devices are sophisticated, a case finding that YouTube is not commerce for trademark purposes, and a case finding that TINSELTOWN is not geographically descriptive for clothing.

1. Prosecution Group Luncheon
January 2013

2. Nice Agreement 10th ed. Version 2013
• developed to classify, most entries are not
sufficiently definite to use in an identification of
goods and/or services.
– A finished product is in principle classified
according to its function or purpose.
– Services are in principle classified according to
the branches of activities specified in the
headings of the service classes.

3. Review of Comments Regarding Amending the First
Filing Deadline for Declarations of Use
• 8/16/12: the USPTO invited public comment on a potential
change to amend the first deadline for Sect. 8
Declarations of Use, to between the third and fourth years
after registration
• The comments reveal concerns regarding registrations
that are no longer in use for some or all of the goods/
services listed, but the predominant sentiment was that
the deadline should not be shortened.
• the USPTO is currently conducting a post-registration pilot
program to gather information regarding the accuracy of
identifications of goods/services for registered marks

4. Medical Purchasers are Sophisticated?
• TTAB Board reversed a refusal to register
OVATION for vascular stents over OVATION for
hip joint prosthesis.
• The identify of the marks and the inherent
strength of the cited mark weighed heavily
against Applicant

5. • involved goods are "relatively unrelated." They
are technologically distinct, cannot be substituted
for each other, and are not used together in a
single medical procedure. Although a medical
products company might produce both products,
nothing in the record indicated that these goods
are more closely related than they would be to
other medical products.
• TTAB: “any reasonable decision to purchase
goods of applicant or registrant would in all
likelihood involve a person having specialized
expertise in orthopedic or vascular medicine, as
appropriate.”
• In re TriVascular, Inc., Serial No. 77941535
(November 27, 2012) [not precedential].

6. YouTube isn’t in Commerce?
• App sought to register ACTIVE REASONER
for "audio recordings featuring music" in class
9. His specimen consisted of a screen shot of
his YouTube webpage
• EA refused the specimen as failing to show
the mark for goods in commerce.
• TTAB aff’d: "in the absence of a 'download'
link or the equivalent thereof, applicant’s
specimen on its face fails to show use of his
mark in commerce for the identified goods."
• In re Rogowski, Serial No. 77083475 (December 11,
2012) [precedential].

7. Tinseltown is not Geographically Descriptive
• EA refused TINSELTOWN (for clothing) as geographically
descriptive, (a nickname for Hollywood)
• TTAB: "Tinseltown" refers both to the Hollywood section
of Los Angeles and to the motion picture industry for
which it is famous.
– In fact, the examining attorney's evidence "suggests
that it is the latter meaning, namely, that of the movie
industry, that may be the primary denotation of the
term Tinseltown."
• EA failed to establish that the primary significance of
TINSELTOWN is a geographic location.
• (Precedent: HOLLYWOOD previously found not merely a
geographic location)
In re Topson Downs of California, Inc., Serial No. 85067696 (December
4, 2012) [not precedential].