MONDAY, 31 OCTOBER 2016
Last Friday, this blogger had the opportunity to attend the very practical and informative IR-USPTO seminar held by MARQUES for the last session of the 3 European cities tour in Amsterdam, Munich and London.
Tove Graulund - a Life Member of MARQUES and of the International Trade Mark Law & Practice Team- introduced the panel of specialist speakers to a full house of 35 attendees:
- Gavin Stanton, Partner at the hosting firm Penningtons Manches LLP, opened the floor with some background on drafting UK applications and filing IR's, reminding the audience that 97% of the applications get provisional refusals. The equivalent introductions were made by Dutch and German lawyers in the first two respective seminars
- Karen Strzyz is an USPTO expert on the Madrid Protocol implemented in the US since 2003. She started by putting into perspective that 84% of US domestic applications are also the object of Office Actions(OA) and proceeded to explain with insider knowledge how to deal efficiently with OAs. Thanks to the interactive format of the seminar, attendees could voice their concerns on MM2 discrepancies or ask Karen how the actual forms get processed- did you know that the USPTO never receives the MM18 form sent to WIPO? Key takeaways from her presentation included a reminder to use the USPTO Voluntary Amendment Form (an often overlooked tool to avoid OA's) ; Karen also encouraged everyone to sign up for the Madrid Highlights Special Edition USPTO (see here)
- André Ntamack is Head of Quality and Training Section, Madrid Registry at WIPO. He covered the IB's practical tips to avoid refusals when filing the MM2 form including: Claim of standard character; Color claim and color location statement; Translation; Description of the mark; Disclaimer; Identification of goods and services. The latter is probably one the more delicate exercise for non US practitioners - in that regard trade mark lawyers were invited to use the WIPO Madrid Goods and Services Manager (MGS) to improve predictability - guaranteed to "change our lives"! Italy and France were respectively the 4th and 8th top user countries of the MGS, whereas the UK was lower in the ranking ..surely after this Seminar, UK practitioners will be amongst the first users as well.
This is a highly recommended Seminar for all practitioners who work with the Madrid System on a daily basis. MARQUES wishes to take this great seminar to other European cities- a special request from Spain has already been received. Class 46 readers are welcome to email Tove at email@example.com or MARQUES to provide their suggestions where the Seminar should be held in 2016!
The "rockstars" of the USPTO/IR seminar during their last performance in London