Articles Posted in Trademark News Stories

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 and reexamination of registrations that have allegedly failed to meet the mandatory “use in commerce” requirement. A third party can initiate either of the two new proceedings or the Director can initiate the proceedings. The fee set for filing a Petition to the Director for either expungement or reexamination is $400 per class and the Petitions should be filed through TEAS. Once filed the Petitions will be uploaded into the registration record and visible in TSDR.

The USPTO will send an email notification to the Registrant or Registrant’s attorney once the Petition is filed. The Director will then determine if the Petition has made a prima facie case of nonuse and if so, institute one of the two proceedings. If this occurs the Petitioner will have no further involvement. This determination is final and non-reviewable. The proceeding is set forth in an Office Action. The Office Action must be responded to within three months but the Registrant may extend the response time for one additional month for a fee of $125.

The Registrant will need to provide evidence of use to rebut the prima facie case of nonuse. Documentary evidence of use will most probably take the form of specimens of use. However, if the issue focuses on an Allegation of Use or Statement of Use from years ago, and the specimen of use is no longer available, then declarations can be submitted to explain how the mark was used at the relevant time.

Evidence will vary based on whether the proceeding is for reexamination or expungement. Reexamination focuses on registrations that alleged use of the mark. The Petitioner or the Director will submit evidence that the mark was not in use on certain dates either as of the date the application was filed or as of the date the Statement of Use was filed. The Registrant must show use of the mark with the goods or services before the relevant date. The Petition must be filed before the fifth anniversary of the registration.

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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, all EU trademark rights holders will be granted comparable rights in the UK. These comparable rights will also exist for marks that designated the EU in an International Registration through the Madrid Protocol. For more information on International Registrations, see our webpage entitled, International Trademark Filings and our webpage entitled, Madrid Protocol Trademark Filings. The UK Trademark Office will not require any additional examination of the trademark registration, nor will there be any additional fees due.

The comparable rights in the UK will maintain the same filing date, priority date and renewal dates as the EU registration. The trademark registration number will be the eight-digit number of the EU registration preceded by the letters UK. The UK Intellectual Property Office requires that a trademark applicant maintain a UK address for service. However, there will be certain exceptions made for EU registered trademarks for a limited time period which will enable right holders ample time to provide the UK Trademark Office with this information.

Please note that any trademark applications pending with the EU at the end of the transition period will not be allowed comparable rights. Instead, there will be a grace period of nine months where the EU trademark application will be given an opportunity to be re-filed in the UK. If the applicant takes advantage of the nine month “grace period” and re-files in the UK, then it can maintain the same priority filing date as the EU application. However, The UK Trademark Office will require a new period for opposition of the application filed during the grace period.

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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, B.V. (“”) on several trademark applications involving services for travel reservations in classes 39 and 43.  The USPTO concluded that BOOKING.COM was a generic name for online hotel reservation services. The case made its way from the District Court, to the Fourth Circuit and finally to the U.S. Supreme Court.

The U.S. District Court for the Eastern District of Virginia ruled that BOOKING.COM was not generic, but descriptive of booking services for hotel reservations. It also held that BOOKING.COM acquired secondary meaning for hotel services. The USPTO only appealed the District Court’s holding that BOOKING.COM was not generic. The Court of Appeals for the Fourth Circuit affirmed the District Court’s decision, and the USPTO petitioned the Supreme Court to review the decision.

A generic name is one that is the name of the class of products or services, and therefore will be refused trademark registration at the USPTO. The parties did not dispute that the term “booking” was generic for hotel reservation services. The USPTO’s decision was based on its position that a generic term added to a “.com” will not change the meaning of the term, it will still be generic. The U.S. Supreme Court disagreed. The Supreme Court pointed out that consumers do not perceive the term BOOKING.COM to indicate hotel services as a class. The relevant meaning of a term is its meaning to consumers. In addition, since the term BOOKING.COM is a compound term, its meaning must be evaluated from the perspective of the mark as a whole and not in its isolated parts. Lastly, the mark must be able to function as a source indicator and distinguish’s services from the services of a competitor.

Although, the USPTO was enunciating a per se rule that the combination of a generic term with a “.com” (or other top-level domain) would be generic, its previous practice and actions did not support this far reaching policy. Justice Ginsburg pointed out several registrations on the Trademark Register in conflict with this general rule, U.S. RN 3,601,346 ART.COM on the Principal Register for  “[o]nline retail store services” offering “art prints, original art, [and] art reproductions”), and U.S. RN 2,580,467 DATING.COM on the Supplemental Register for dating services. The Supreme Court could not find policies or precedents to support this sweeping rule.

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As of August 3, 2019, all trademark applicants that are foreign domiciled must have a U.S. licensed attorney file its trademark applications at the United States Patent and Trademark Office (“USPTO”), and act as its representative at the Trademark Trial and Appeal Board (“TTAB” or “Board”). This rule also applies to Canadian trademark filers, attorneys and agents. Many countries around the world have a similar rule, and the USPTO has decided to follow suit for several reasons. It is in the public interest to maintain a Trademark Register that accurately reflects those marks that are in use in U.S. commerce for the goods and services identified in the registrations. An accurate Trademark Register will not only protect consumers, but will allow U.S. businesses to grow their companies while being able to invest in their brands with the security that the USPTO maintains and monitors the integrity of the Trademark Register. Lastly, prospective applicants rely on the Trademark Register to provide critical information on trademark clearance.

A frequently asked question in my practice is what does it mean to have a foreign domicile? An individual or an entity can have a foreign domicile. This means that such domicile is not located in the U.S. or its territories. An individual’s domicile is the place a person lives or resides, and the individual views the domicile as its principal home. An entity also maintains a domicile and that is where it has a principal place of business. A principal place of business is where the entity’s officers or senior management directs and controls the operating activities of the company. Applicants and Registrants must maintain current addresses for their respective domiciles.

The USPTO will be proactive if they discover a domicile address outside the U.S. without representation by a licensed U.S. attorney, and the Trademark Office will issue an Office Action. This applies to post registration as well. The Office Action will require the applicant or registrant to appoint a U.S. attorney. It should be noted that currently, P.O. Boxes as domicile addresses are generally not acceptable any longer. Although, if there are multiple owners and one owner has a U.S. domicile then a U.S. licensed attorney is not required. Foreign domiciled applicants who submit an application based on Section 66(a) (a Madrid application) must also appoint a U.S. licensed attorney. Applications filed through the Madrid Protocol are submitted with the International Bureau of the World Intellectual Property Office, and then transmitted to the USPTO. However, the current Madrid application does not have a provision to designate a U.S. attorney, therefore until it does, the USPTO will not enforce the appointment of U.S. trademark counsel prior to publication. But, if the Examining Attorney issues an office action in a 66(a) application, then the Examining Attorney will require an appointment of a U.S. attorney.

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While more U.S. states will consider marijuana legalization in 2018, the United States Patent & Trademark Office (“USPTO”) remains steadfast in refusing registrations to cannabis-related marks, when the goods or services will violate the federal Controlled Substances Act. Since about 1970, marijuana has been classified as a Schedule I drug under the Controlled Substance Act. In the mid 1990s some states started to allow marijuana for medical use, and in 2012 Colorado and Washington were the first two states to permit marijuana for recreational use (other states have followed). This leaves a difficult situation for marijuana related businesses because the state and federal laws are at odds.

For a trademark to mature to registration, the use of the mark in commerce must be lawful. If the products or services are illegal under federal law then, use of the mark will not be lawful in commerce. This means an applicant would not be able to file either a 1(a) use application or a 1(b), intent-to-use trademark application with the USPTO if the goods or services were not lawful. If the Examining Attorney believes the goods or services are marijuana related, additional inquiries will be made, and a detailed factual description of the goods and services will be required. In addition, the applicant will need to confirm that all the goods and services comply with federal law, including the Controlled Substances Act. The trademark applicant will also be asked if the identified goods and services involve the possession, sale or provision of marijuana, marijuana based preparations, or any marijuana derivatives. Lastly, there will be an inquiry as to whether the goods and services are lawful pursuant to the Controlled Substances Act.

The TTAB issued an important precedential decision in July 2016,  see In re Morgan Brown, 119 USPQ2d 1350 (TTAB 2016) [precedential]. The Applicant applied to register the mark HERBAL ACCESS for retail store services featuring herbs. However, evidence demonstrated that the Applicant’s services included using the mark to also provide marijuana which is an illegal substance and is in violation of the federal Controlled Substances Act. The problem was that the wording of the identification in the trademark application included “herbs” and marijuana is an herb. Therefore, the goods included the sale of a good that is illegal, and thus use is unlawful.

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The United States Patent & Trademark Office (“USPTO”) has continued its efforts to rid the Trademark Register of marks that are not in use. This would include marks that have been abandoned or were not in use as of the filing date of the trademark application, or at the time of the filing of the Statement of Use or Allegation of Use (“non-use”). The USPTO has proposed streamlining the procedures that eliminate registrations not in use, by creating an expedited cancellation procedure that could be initiated at the Trademark Trial and Appeal Board (“TTAB” or the “Board”).

The streamlined cancellation proceeding would require that the party initiating the procedure have proof of standing and abandonment or non-use. The USPTO intends to reduce the fee to file this expedited cancellation proceeding. This streamlined process will limit discovery, eliminate hearings before the TTAB, and shorten the trial schedule. The Board intends to issue decisions in an expedited time frame as well. If there is a default judgment, the proceedings could be completed in as little time as 70 days. While the full-blown streamlined process could take approximately 170 days.

The USPTO has reached out to the intellectual property community for feedback and comments. There appears to be support for this proposed streamlined cancellation procedure. This process could certainly benefit parties that have evidence that a mark is not in use, and yet do not have a limitless budget to accommodate the high costs of inordinately lengthy cancellation proceedings. In addition, it will address depletion of marks, and aim to improve the congestion of the Trademark Register. There were comments indicating concern that the response time of 40 days may be too short, since the respondent would have to produce evidence of use on the list of goods and services identified in the registration. The balance here will require ensuring that the proposed procedure remain expedited compared to the current cancellation proceeding, while still ensuring the respondent receives due process and a fair opportunity to respond to the allegations.

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Now that Melania Trump is to assume the role of First Lady of the United States on January 20, 2017, her trademark troubles may have just begun. Melania Trump has hired a law firm in Slovenia to stop the use of her name on numerous products without her consent. Similar to the laws of the United States, use of the name Melania Trump without Ms. Trump’s authorization for commercial purposes is a violation of the law in her native country. Since Donald Trump was elected President of the United States, various products in Slovenia have commenced use of Melania Trump’s name such as shoes, underwear, candy, cakes, etc. In Slovenia, not only did these products use Melania Trump’s name, some also placed her image on the packaging. I wouldn’t be surprised if the United States Patent & Trademark Office (“USPTO”) also starts to receive applications trying to take advantage of the recent fame of Melania Trump.

The soon to be First Lady, already owns several trademark registrations and one pending  trademark application with the USPTO. There is a registration in the name MELANIA for watches and jewelry, a second registration for the mark MELANIA in international class 3 for various cosmetic products, and a third registration for MELANIA TRUMP for jewelry and cosmetic goods. The earliest filing date of the three applications was in 2009 and the latest trademark application was filed in August 2016.

As anticipated, there was also a trademark application filed for the mark MELANIA DIET, but not filed by Melania Trump. This application was filed on July 20, 2016 seeking to brand weight reduction services. On November 16, 2016 a refusal was issued by the USPTO. The refusal states that based on Trademark Act Section 2(c), 15 U.S.C. §1052(c) a name in a trademark would identify a living individual if the person bearing the name will be associated with the mark when used on the goods or services because the person is so well known that the purchasing public would reasonably assume a connection with the person and the goods or services. See our web page entitled, Trademarks That Falsely Suggest A Connection With Other Persons, where we discuss similar cases involving the famous model Twiggy, Beyonce’s famous infant Blu Ivy Carter and numerous applications trying to incorporate President Obama’s name such as The Obama Collection, Bronx Obama, and The Obama Collection.

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William Adams (aka “”) member of the well-known music group, The Black Eyed Peas filed a trademark application for the mark I AM at the United States Patent & Trademark Office. The trademark application identified products in international class 3 including but not limited to cosmetics, fragrances, beauty products and personal care products. The Examining Attorney refused registration on the ground of likelihood of confusion. The cited mark was a prior registration for the identical trademark I AM for perfume in international class 3. William Adams appealed to the Trademark Trial and Appeal Board (the “Board” or the “TTAB”) and after filing the appeal assigned the trademark application to, llc (the “Applicant”). See In re, llc Serial No. 85044494 (TTAB October 7, 2015).

The Applicant insisted that the language included in the identification of goods distinguished the goods from those cited in the prior registration. Specifically, the identification of goods states that the goods are “associated with William Adams, professionally known as ‘’ “. The Applicant alleges that the marks are marketed differently, the cited mark is not famous, and most importantly the goods identify Applicant’s founder “”. The Applicant further argues that since the goods are exclusively associated with the famous front man of the band, The Black Eyed Peas ( there cannot be confusion with the cited mark I AM for perfume.

The primary inquiry with a likelihood of confusion analysis is the cumulative effect of differences in the essential characteristics of the goods and differences between the marks. The test is the recollection of the average consumer. Likelihood of confusion will be found if there is any confusion with any items included in the identification of goods that could possibly cause confusion between the sources of the goods. See Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393 (TTAB 2007). In making the determination as to the relatedness of the goods, the evaluation must be based on the language used in the identification of the goods or services.

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This blog post is a follow-up to our post entitled, Has One Of Tiffany And Company’s Trademarks Become Generic? posted on February 14, 2014. The U.S. District Court for the Southern District of New York answered the question we asked in our previous post after a two year court battle and the answer is no. Costco Wholesale Corporation (“Costco), the discount retailer displayed the term TIFFANY next to several diamond rings for sale, none of which were manufactured by Tiffany & Co. (“Tiffany”). Tiffany filed a lawsuit alleging trademark infringement, false advertising, unfair competition, counterfeiting, and dilution among other claims.

Costco counterclaimed alleging that the term Tiffany is generic for ring settings with six prongs. A trademark can become generic if the meaning becomes associated with the category of goods and services and the mark can no longer distinguish the goods and services on the basis of source. Essentially, Costco was alleging that the public had appropriated the term Tiffany to mean all rings with a particular setting type. See our blog post of February 14, 2014 where we discuss the legal concept of genericide.

Tiffany offered a significant amount of evidence to rebut Costco’s genericism claim. Among the evidence was a study of consumers. The study consisted of a survey administered to 464 men and women over the age of 21. The studied group received training for the survey. The group was first given a list of words and was asked to identify which words were brand names and which were descriptive terms. Then, they were each given a context to evaluate whether the term Tiffany was a brand name or a descriptive term. Nine out of ten of the prospective consumers considered Tiffany to be a brand identifier. Costco submitted evidence to rebut the survey. However, Costco was unable to raise a material issue of fact with respect to whether the primary significance of the Tiffany mark to the relevant public was a generic descriptor or a brand identifier. Therefore, the Court held that the counterclaim would be dismissed.

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Google announced a new branding identity to the world on September 1, 2015. Read more about Google’s logo update on its official blog. Certainly other brands look to Google to take the lead in innovative branding. Whether you love or hate the new Google logo, it was updated for some very practical reasons. The font has changed in the GOOGLE word mark. In addition, the lower case “g” icon is replaced with the upper case “G” which identifies most of its apps. Google’s trademark modifications are strategic and purposeful design changes that accommodate users who are moving away from laptop use and are moving towards use on a tablet, mobile phone, or other smaller devices, such as a watch. These new marks signify that Google believes that the momentum towards mobile media is here to stay.

Google’s choice of font style in conjunction with the bright primary colors of the new logo will be easier to read in smaller fonts and on smaller devices. In addition to the GOOGLE mark being redesigned, the company introduced a new mark, the “G” logo. The new upper case “G” logo incorporates the four primary colors found in the word mark, improving the aesthetic look and increasing the bold visual appearance for smaller screens. Now if there comes a time when the GOOGLE mark is too small in visual appearance, the company has the option of using the “G” logo mark as an alternative.

In addition, to the two new marks Google introduced to the world, a third animated mark was launched. See Google’s official blog page and view the new animated mark, click on the play button for the video and the animated mark appears towards the end of the short video . This mark is also based on the primary colors of the GOOGLE word mark. It contains four dots blue, red, yellow and green that move about in several different patterns before coming back together to form the GOOGLE word mark or the “G” logo.

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