October 22, 2009
Previously published on Fall 2009
On July 13, 2009, the USPTO issued a notice of new guidelines regarding the examination of trademarks that are considered deceptive under the Lanham Act. The notice refers to Trademark Examination Guides 01-09 and 02-09, issued on May 11, 2009, which list and discuss case law with respect to: elements of a refusal, evidentiary issues with respect to the refusal, and procedures for issuing refusals.
Guide 01-09 provides examination procedures for deceptiveness refusals of non-geographic marks. Guide 02-09 provides examination procedures for refusals of geographically deceptively misdescriptive marks.
In both guides, for example, an inquiry regarding the refusal has been changed from “Is the misdescription likely to affect the decision to purchase?” to: “Is the misdescription likely to affect a significant portion of the relevant consumers’ decision to purchase?” The USPTO notice indicates that the guides supersede any inconsistent sections of the Trademark Manual of Examining Procedure (TMEP).
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