Loosened Exceptional Case Standard Keeps Expanding

In 2014, the United States Supreme Court loosened the exceptional case standard in patent infringement cases. Because the Patent Act and Trademark Act are similar, often times a decision involving one of these Acts will influence the jurisprudence of the other Act. The loosening of the exceptional case standard is one of those decisions. It …

Number 1 Misconception When Searching Trademarks

We talk to a number of naming firms and serial entrepreneurs who conduct their own preliminary trademark searchers each year. And every year we observe the same misconception. Non-lawyers place far too much emphasis on International Class Numbers and ignore the relatedness of the goods. This is also the flaw in every trademark search tool …

Insurance Company Win Makes Coverage More Difficult

2019 is shaping up to be a pretty unfriendly year for trademark infringement plaintiffs. A pending Supreme Court decision and case involving insurance for advertising injury could make trademark infringement costs prohibitive for millions of small businesses leaving them without a realistic avenue for recourse when their trademarks are being infringed. When small businesses cannot …

Lessons from a Rare Trademark Refusal Reversal

The Trademark Trial and Appeal Board issues a trademark refusal reversal only about 10% of the time. So when a trademark refusal reversal occurs it is worth spending some time figuring out what lead to the reversal. Soletanche Freyssinet applied to register the mark CMC (in standard characters) for “non-metallic underground columns for land stabilization …

USPTO’s Strength Decision Supported by Substantial Evidence

The United States Court of Appeals for the Federal Circuit recently held that the USPTO’s strength finding was supported by substantial evidence when only 8 third-party registrations with no evidence of use were offered by the trademark applicant. The USPTO refused registration of JS ADL LLC’s ARTISAN NY & Design mark in connection with a …

Louis Vuitton Get’s It Half Right and Loses APOGEE Appeal

Louis Vuitton Malletier appears to employ a common trademark application filing strategy, which is to prepare the trademark application with broad goods descriptions. From there the broad description can be narrowed in an attempt to avoid a registration refusal should the Trademark Office issue an office action. We dare to say that most trademark applicants …

Minimum Third-Party Registration Trend Bites The Trademark Office

It’s not often, but sometimes the Trademark Office relies on the trademark weakness argument to support a decision to refuse registration of a mark. In 2018, we talked about the emergence of a trend requiring a trademark applicant to offer at least 10 relevant, third-party registrations in order to demonstrate conceptual weakness. This trend carried …

Coping with the New Reality of Vulgar Trademarks

The last ban against vulgar trademarks fell recently. The U.S. Supreme Court struck down the ban on trademarking immoral and scandalous material on the ground that it was a form of discrimination against a viewpoint, which violates the First Amendment. The U.S. Supreme Court previously held that the ban on trademarking disparaging material also violated …