TM TM TM TM TM TM Pharmaceutical Trade Marks Group May 2014 "We do spend so much time waiting that one can only wonder that we ever manage to do anything else. We wait 9 months in the womb to be born, then we wait to have our nappies changed, we wait to grow up and impatiently we wait to go to school only to equally eagerly wait to leave school, we anxiously wait for our exam results, then we wait to complete our education, we frantically wait for a good job, then we wait to find a suitable mate, we wait to have a family, we wait for promotion, we wait for our children to grow up, then we thankfully wait for them to leave home, we wait for them to marry and present us with grandchildren, we wait for retirement, we wait for great grandchildren, and finally, even after we are dead some of us wait for ressurection. Sitting in the lounge of Zurich airport yesterday after a very productive committee meeting, I was reminded of the entertaining speech delivered by our Honorary President Mr. Derek Rossitter at the excellent dinner held in Old Hall, Lincoln's Inn on March 16th prior to the PTMG Spring conference. With his permission, and my thanks, I hereby reproduce the most salient section of his speech as I can honestly say that no-one says it better than Derek. Editorial: Just waiting. . . . Incisive, relevant, thought provoking and funny comments such as these can thankfully not be reduced to 140 characters! As 10,000 of the world's trade mark practitioners begin the long haul to Hong Kong for the INTA conference, I wish you safe travels and productive waiting in airport lounges..... Derek concluded his speech by explaining that his technique was to recite poetry, in particular the famous "Mock Turtle's Song" by Lewis Carroll. In between all these waitings we wait for trains, buses, wait for people aptly called waiters, wait for other people, wait for good news, and so on ad infinitum, and of course we alway wait at traffic lights. Is it perhaps waiting itself that fills the void between what we term productive activities ? Perhaps waiting actually IS the productive activity and what we fondly imagine to be the productive intervening activity is in fact really the void? Do you ever wonder what it is that people who have just missed their bus and are sitting waiting for the next one (well knowing it is not due for at least another thirty minutes) are thinking ? Are they counting slowly up to six thousand ? Are they in a selfinduced trance perhaps ? What DO we all do to fill those unforgiving minutes ? " Vanessa US Law Update The US Trademark Trial and Appeal Board (TTAB) recently granted a petition to cancel the mark FLANAX for tablets of naproxen sodium by the owner of the same mark in Mexico. The owner sold FLANAX (naproxen sodium) in Mexico, but the owner did not sell FLANAX in the US. Instead, it sold the product in the US under a different mark, ALEVE. As a result, a third party registered the FLANAX mark in the US and began selling FLANAX (naproxen sodium) in the US. In its petition to cancel this US registration, the owner of the Mexican mark alleged that the registrant was using the FLANAX mark in the US to misrepresent to US consumers that the source of the registrant’s products was the same as the product sold in Mexico James Thomas, Merck & Co., Inc., Whitehouse Station, NJ, USA under the Mexican mark. The TTAB held that the owner of the Mexican mark could bring the cancellation action to protect its Mexican FLANAX mark even though it did not allege any use of the FLANAX mark in US commerce. The TTAB ultimately found that the registrant had indeed used the mark FLANAX to misrepresent the source of the corresponding goods and granted the petition to cancel the registration (Bayer Consumer Care AG v Belmora LLC). The US Patent and Trademark Office (USPTO) issued a new Examination Guide revising its policy and procedure relating to the USPTO’s handling of applications for marks comprising a generic top-level domain name (“gTLD”). The Guide sets The Examination Guide is available at the USPTO website at http://www.uspto.gov/trademarks/resourc es/Trademark_Exam_Guides.jsp. out when a mark consisting of a gTLD may be registered for domain-name registry operator and registrar services. Unlike its previous position that did not allow the registration of such marks for such services if it consisted solely of a TLD, the USPTO acknowledges that in light of the program to introduce new gTLDs, some gTLDs may be able to serve as source identifiers. .