19
Jul/11

Somewhat Arcane PTO Practice Pointer Re Bracketed Language In IDs


Pardon me, but I have to slip into trademark-speak for this one: So we’re filing a US application that will be the basis for a Madrid.  We wanted to use eTeas Plus but one of the check-off IDs was populating the form with bracketed advisory language (as in “Non-downloadable software [but not such and such type of non-downloadable software]”).  As  the eTeas plus form doesn’t allow editing the ID (by design), my concern was that if we were to then use the auto-populate function when applying to WIPO, the bracketed language, if  included in the IR,  would set off a cascade of office actions from the national offices.  Why not use the non-auto-populate method of applying to WIPO, and delete the bracketed language, you may ask?   Well, some of the talmudists here were concerned that deleting the bracketed language would have the effect of widening the ID, and therefore the app would be rejected at the IB level.  My view is that brackets are for advisories, while parentheses are for limitations, so deleting the brackets would not widen the ID.  Nevertheless, tempers were flaring and wagers were being made, so we took the easy way out and contacted the PTO.  turns out that including the brackets is a programming bug that will be fixed.  The bracketed language will not appear in the final US registration, nor will it be transmitted to WIPO.  Hat tip to Craig M. at the PTO for setting us straight.

Sorry to reveal the wonky interior of the otherwise glamorous world of international trademarks.

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