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…
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…
Trademark applicants should be mindful of the statements made during a trademark prosecution at the United States Patent & Trademark Office (“USPTO”). In fact, an applicant’s words may be used against them in a later proceeding before the Trademark Trial and Appeal Board (the “Board”) or in a court. A…
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…
Equitable considerations play a role in the Trademark Trial and Appeal Board’s (the “Board”) deliberations when determining whether or not to grant a Petition to Cancel a trademark registration. See Teledyne Technologies, Inc. v. Western Skyways, Inc., 78 USPQ2d 1203 TTAB (2006) [precedential], where the Board denied a cancellation petition…
If an organization is offering products or services under a trademark in another country or plans to enter a market abroad in the future, consideration should be given to registering your trademark in that country. There should be an inquiry as to whether the mark is currently in use in…
In a recent case at the Trademark Trial and Appeal Board (the “Board” or “TTAB”), Watercraft Superstore, Inc. (the “Applicant”) took a different approach in convincing the Board that the subject trademark had acquired distinctiveness. See In re Watercraft Superstore, Inc., Serial No. 86369831 (August 26, 2016) [not precedential], where the…
The Internet Corporation for Assigned Names and Numbers (“ICANN”) adopted The Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) to resolve any disputes that arise between parties over the registration and use of domain names. The Policy was adopted by all ICANN accredited registrars and is incorporated by…
There are many reasons to encourage applicants to select inherently distinctive trademarks. Adopting a mark that is merely descriptive will not allow an applicant to acquire the majority of benefits granted by federal trademark registration. In addition, an applicant selecting a descriptive mark must demonstrate that the mark has acquired…
On first glance, this decision appears to be an unexpected result especially in light of the prior registration owned by the Appellant for the word mark CHURRASCOS for the same restaurant services. However, when viewing general principles of trademark law, maybe the outcome is not so unexpected. Regardless of your…