VOLUME 2 | ISSUE 3 MARCH 2012

Trademark Review

VOLUME 2 | ISSUE 7 JULY 2012

New PTO Program Can Require Applicants to Submit Additional Evidence of Trademark UseThe USPTO has instituted a two-year pilot program which began June 21, 2012. The PTO will issue a post-registration office action for 500 randomly selected registrations requiring additional specimens showing trademark use. The owners of these randomly selected registrations must respond by the earlier of 6 months from the date of the action or the time remaining for filing the next maintenance declaration. Responses must include a specimen for at least two additional goods or services covered by the registration. The PTO will cancel the registration for failure to respond to the action. In addition, the PTO may cancel those goods and services in the registration for which inadequate specimens are provided. The PTO can also take additional action to require proof of use of the mark on other goods and services covered by the registration.

Update on New Generic Top-Level DomainsICANN has released the list of over 1,900 generic top-level domain name (gTLD) applications. The new gTLDs will allow established organizations to operate their own top-level domain names, expanding top-level domains from the current twenty-two extensions (which include .com, .net and .org) to potentially hundreds more. Almost anything can be registered (such as .internet, .retail, .computer, etc.). The organization controlling the gTLD can be as exclusive as it wishes in determining what second-level domain names it will allow to be attached to its gTLD. The list of new gTLD applications can be found here: http://newgtlds.icann.org/en/program-status/application-results. The next step in this process will include the opportunity for rights owners to object to any potential new gTLD that might violate its trademark rights.

No “CAN DEW” PepsiCo prevailed on summary judgment that use of the phrase “CAN DEW” on fruit flavored soft drinks would create a likelihood of confusion with PepsiCo’s MOUNTAIN DEW mark. The Trademark Trial and Appeal Board noted the lack of evidence showing that “DEW” is not arbitrary when used on the parties’ goods. The Board also noted that although “CAN DEW” may be seen as a novel spelling of “Can Do” there was no evidence that consumers would take it as such, or that it would distinguish CAN DEW from MOUNTAIN DEW. The Board also relied on the results of PepsiCo’s survey which found that 47.8 percent of those surveyed thought that “CAN DEW” would have been made by PepsiCo. PepsiCo Inc. v. Prirncci, Opposition No. 91187023 (TTAB June 28, 2012).

In This Issue• New PTO Program Can Require Applicants to Submit Additional Evidence of Trademark Use

• Update on New Generic Top-Level Domains

• No “CAN DEW”

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© 2012 Knobbe Martens Olson & Bear LLP, a Limited Liability Partnership including Professional Corporations. All rights reserved. The information contained in this newsletter has been prepared by Knobbe, Martens, Olson & Bear, LLP and is for general informational purposes only. It does not constitute legal advice. While every effort has been made to ensure the accuracy of the information contained in this newsletter, Knobbe Martens Olson & Bear LLP does not guarantee such accuracy and cannot be held liable for any errors in or any reliance upon this information. Transmission of this newsletter is neither intended nor provided to create an attorney-client relationship, and receipt does not constitute an attorney-client relationship. You should seek professional counsel before acting upon any of the information contained in this newsletter.

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