In a recent Board Decision, the Petition for Cancellation was dismissed because Petitioner relied on its common law rights while alleging likelihood of confusion and priority, and was unable to prove acquired distinctiveness (secondary meaning) for its mark LITTLE NOTES for announcement cards; greeting cards; note cards; postcards and greeting…
In a recent precedential decision, the Trademark Trial and Appeal Board (the “Board”) denied a petition to cancel for failure of the petitioner to prove technical trademark use or use analogous to trademark use before respondent’s priority date, see JNF LLC v. Harwood International Incorporated, 2022 USPQ2d 862 (TTAB 2022)…
If you are an owner of either a supplemental registration or of common law rights, and you are challenging another party before the TTAB based on priority and likelihood of confusion, you would face similar hurdles. Only a trademark registration on the principal register will receive all the rights provided…
Recently I had the opportunity to virtually meet with David Gooder, the Commissioner for Trademarks of the United States Patent & Trademark Office. It was a unique opportunity and it afforded me the time to discuss an issue with the Commissioner that I believe has caused many of my clients…
The case I am blogging about today, illustrates why federal registration is so important and how failing to register a mark can have devastating effects for your business. See Jean Leon, S.L. v. La Scala Restaurants, Corp., Opposition No. 91241804 (July 22, 2020) [not precedential], where an opposition was sustained…
If the parties are disputing priority rights, and one party is relying on use-analogous-to-trademark use or trade name use, public use of the mark is necessary. Although, technical trademark use is not necessary another standard is applied to determine if there has been a sufficient and substantial impact on the…
In the United States trademark common law rights are significant rights that cannot be overlooked. Our trademark system recognizes legal rights from trademark registration and from trademark use in commerce. Common law trademark rights can be used to prove priority in a priority determination and such rights can be the…
Janco, LLC (the “Applicant”) applied to the United States Patent & Trademark Office (the “USPTO”) to register the mark FLATIZZA for pizza in international class 30. Doctor Associates, Inc. (the “Opposer”) filed an opposition with the Trademark Trial and Appeal Board (“the Board” or the “TTAB”) claiming prior use of…
Failure to conduct a proper trademark clearance search can cause significant legal issues for a trademark owner at some point in the future. It is our practice to continually reiterate and encourage our clients to take the time to conduct a proper full U.S. trademark search before filing an application…
A recent decision of the Trademark Trial and Appeal Board (the “Board”) highlights what the Board looks for when determining which user of the trademark has priority of use. See Parley, LLC v. Vi-Jon, Inc., Cancellation No. 92055751 (February 27, 2015). One common issue often raised in cancellation proceedings is…