The Trademark Modernization Act (“TMA”) was enacted on December 27, 2020, and most rules go into effect on December 27, 2021. Many believe that the Trademark Act of 1946 needed this update. Two of the most significant rule changes include creating ex parte procedures for petitioning the Director for expungement…
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…
In a recent reversal by the Trademark Trial and Appeal Board (the “Board” or the “TTAB”), In re Just a Pinch Recipe Club, LLC, Serial No. 88463841 (April 15, 2021) [not precedential], it becomes evident that just because two trademarks share terms, this may not be enough to find a…
As most already know, the United Kingdom (UK) left the European Union (EU) on January 31, 2020. The UK remained within the EU’s structure for trademarks during this transition period. The transition period will end on December 31, 2020. New UK “comparable rights” will be created. After the transition period,…
Since about 90 percent or more of 2(d) cases appealed are affirmed by the Trademark Trial and Appeal Board (the “Board”), it is unlikely that the Board disagrees with the Examining Attorney’s conclusions. However, the Board did not see eye to eye with the Examining Attorney on this recently decided…
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 See Jean Leon, S.L. v. La Scala Restaurants, Corp., Opposition No. 91241804 (July 22, 2020) [not precedential], where an opposition was sustained…
On June 30, 2020, the U.S. Supreme Court issued a long-awaited significant decision in trademark law. Justice Ginsburg wrote the majority opinion. The United States Patent and Trademark Office (“USPTO”) refused registration to the applicant, Booking.com B.V. (“Booking.com”) on several trademark applications involving services for travel reservations in classes 39…
A frequently asked question in my practice is what filing basis should our company rely on in applying for a U.S. trademark application. As many readers may know there are multiple filing bases and to learn more about the basic information for each filing basis, please review our web page…
A recent decision from the U.S. Court of Appeals from the Federal Circuit (“CAFC”) reminds trademark owners that adopting marks that are merely descriptive may require a high level of proof to register on the Principal Register. See In re JC Hospitality LLC, Appeal Nos, 2018-2048 and 2018-2049 (Fed. Cir.…