In two recent precedential decisions of the Trademark Trial and Appeal Board (the “Board”), it was determined that the proposed trademark CLEAR for footwear, lingerie, and other related clothing items and for purses and other types of handbags was deceptively misdescriptive of the goods. See In re Dolce Vita Footwear,…
In 2014, the Trademark Trial and Appeal Board (“TTAB or the “Board”) issued a decision (not precedential) wherein it declared that the proper basis for refusing a mark that is a title of a single creative work is Section 2(e)(1) of the Trademark Act and not sections 1, 2 &…
My clients frequently inquire about using a geographic term as part of a trademark. Incorporating geographic words into a trademark places the applicant in a position where the application may be refused. There are two primary refusals often issued by Examining Attorneys at the United States Patent & Trademark office…
A couple of weeks ago, the Board issued a decision (although not precedential) that will be helpful to those applicants submitting Responses to Office Actions to surname refusals, see In re Fair Isaac Germany GmbH, Serial No. 87424333 (May 28, 2019). This case is interesting because it reverted back to placing…
In a recent decision issued by the U.S. Court of Appeals for the Federal Circuit (“CAFC”), the CAFC affirmed the Trademark Trial and Appeal Board’s decision (the “Board”) to refuse a specimen under the Lanham Act. See In re Siny Corp., 2019 USPQ2d 11362 (Fed. Cir. 2019) [precedential]. The court…
Applicant was seeking to register the mark HONEYHOLE SANDWICHES in standard characters with a disclaimer on “sandwiches” for “restaurant with bar specializing in serving proprietary unique sandwiches, local beers, and alcohol in a vibrant eclectic environment”. The Examining Attorney refused the application due to a likelihood of confusion with the…
Since the precedential decision of In re Bay State Brewing Co., 119 USPQ2d 1958 (TTAB 2016), the Board has more carefully reviewed Consent Agreements. Some may say the TTAB has since been scrutinizing Consent Agreements, seeking to find very detailed reasons for why confusion will not occur between two sources in…
In this recent Trademark Trial and Appeal Board decision, In re Fowles Wine Pty Ltd., Serial No. 79157017 (September 15, 2017) [not precedential], the Board affirmed the refusal of the Examining Attorney. The interesting aspect to this decision is one of the grounds for refusal was failure to function as…
A precedential decision from earlier this year reinforces the fact that Consent Agreements may not always tip the scales in favor of trademark registration. A consent agreement is a type of coexistence agreement submitted to Examining Attorneys at the United States Patent & Trademark Office (“USPTO”) in an attempt to…
Florists’ Transworld Delivery Inc. (the “Applicant”) attempted to register its mark, a slogan, SAY IT YOUR WAY for two types of services. Only one service is at issue on appeal before the Trademark Trial and Appeal Board (the “Board”). The Examining Attorney refused the application for “creating an on-line community…