This question, although it seems basic is a good question that is frequently asked, and should be thoroughly understood before proceeding with trademark registration. The concepts of trademark law namely use, protection, enforcement, and distinctiveness are all interrelated. A trademark owner can save time, expense, and effort by adopting an…
Many clients inquire about whether an acronym or an abbreviation can function as a trademark. The answer to this inquiry will depend on several factors. The first question is does the acronym or abbreviation stand for specific wording. If it does, is the specific underlying wording merely descriptive of the…
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…
Last week the U.S. Supreme Court issued its long awaited decision in Iancu v Brunetti 588 U.S. ____, 2019 USPQ2d 232043 (2019). The Lanham Act Section 2(a) states that trademarks should be refused on the Principal Register if the trademark consists of immoral or scandalous matter. Erik Brunetti was seeking…
A couple of weeks ago, the Board issued a decision (although not precedential) that will be helpful to those applicants submitting Responses to Office Actions to surname refusals, see In re Fair Isaac Germany GmbH, Serial No. 87424333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…
A recent case from the Trademark Trial and Appeal Board (the “Board” or “TTAB”) focuses attention on part of the Lanham Act, which is not often the subject of many Board Decisions. Section 2(c) prohibits registration of a mark if it consists of or comprises a name, portrait, or signature…
This recent precedential decision by the Trademark Trial and Appeal Board (“TTAB” or the “Board”) cautions applicants to be in a position to show documentary proof contemporaneous with the trademark filing date that there was a bona fide intent for use of the proposed mark. See A&H Sportswear Co., Inc.…
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…
In a rare reversal by the Trademark Trial and Appeal Board (the “Board” or the “TTAB”), it was determined that there was no confusion among the marks NABOSO (English translation barefoot) and BAREFOOT for overlapping goods. See In re Naboso Technology, LLC, Serial No. 87236262 (February 27, 2019) [not precedential],…
As a trademark practitioner, I hope this decision issued by the Trademark Trial and Appeal Board (the “Board” or “TTAB”) is an indication that the Board will be tougher on inconsistent examination by Examining Attorneys at the USPTO. See In re The Random Acts of Kindness Foundation, Serial Nos. 87245967,…