Prosecution Group Luncheon

June 2012

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.

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.

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 7Review list for conflicts?

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; and5) 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].