A term is generic, and thus unprotectable, if the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a whole. That is the precedential clarification presented by the Federal Circuit Court…
Reverse Confusion – When the Junior User Becomes Bigger than the Senior User
Reverse confusion often occurs in one of two ways. In the first way, a smaller business pursues legal action against a large company that uses the smaller company’s trademark in an authorized way or uses a similar mark in its advertising. As a result, the public mistakenly begins to think that the larger company is…
Podcast on Trademark Law Basics
A podcast on US trademark law is available at the LINK.
Evaluating Non-English Words in USA Trademark Matters
Applications to register a trademark that includes non-English word involve some very complicated issues that require the assistance of knowledgeable legal counsel. It is also beneficial for people who are interested in registering this type of mark to understand some of the important details about how these marks exist. Translation Requirement Applications to register a…
Protecting Your US Trademark Rights Through US Customs and Border Patrol
A large number of intellectual property owners understand that it is important to register their copyrights and trademarks to make sure that their marks end up with proper protection. Many mark holders, however, fail to understand that it is also important to record their marks with the US Customs and Border Patrol. The reason why…
§44 U.S. Trademark Applications Based on Existing Foreign Trademarks
Businesses often grow brands with the intention of eventually expanding their global recognition. For non-US based companies the US can be viewed as the largest or next-largest economy for its brand(s) to grow. As a result, the number of new trademark applications filed in the US Patent & Trademark Office (USPTO) has expanded significantly over…
A Brief Guide to the Supplemental Registry at the USPTO
Established in 1946, the Supplemental Register is a secondary register for trademarks and is maintained by the United States Patent and Trademark Office. The Supplemental Registry was created to allow domestic registration for trademarks that do not meet all of the requirements necessary for registration on the Principal Register. To be considered eligible for registration…
Specimens Can Render A Trademark Merely Descriptive
Text from an application’s own specimen of use (“specimen”) can render a trademark merely descriptive of the features of its goods or services, and thus unregistrable. That is the ruling from the precedential August 10, 2017 Federal Circuit opinion In Re: North Carolina Lottery. This opinion presents a case study of what (and what not)…
The Importance of Not Waiting to Protect Your Trademark
One of the most critical pieces of advice that all business owners should follow is to sufficiently police unauthorized uses of their trademark rights. Failure to do so can result in companies losing much of the value in their trademarks. Importantly, unauthorized uses of trademark rights must be addressed soon after notification of such infringement.…
Weak Trademarks: Descriptiveness
As you might already know by now, registering a trademark with the United States Patent & Trademark Office (USPTO) is one of the best ways—if not the best way—to protect your trademark rights within the United States. However, the USPTO does not approve all trademark applications. Sometimes, the proposed marks are not strong enough, so…
THE TM LAWYER 