Will the Trailblazer Benefit from Residual Goodwill in the U.S.?

The Chevy Trailblazer is making its comeback to the United States after a ten-year hiatus. Chevy stopped production of the SUV in the U.S. in 2009, but did that effectively stop its trademark rights in the TRAILBLAZER mark as well? Likely not if Chevy can benefit from the concept of residual goodwill (also known as …

Advertising Copy and the Value a TM Attorney Can Provide

The obvious service a trademark attorney provides is to evaluate the availability of prospective names and taglines as trademarks or service marks. After the prospective name is searched and the trademark attorney has delivered the opinion on its availability, then the focus turns to filing and prosecuting the trademark application. Leaving the trademark attorney to …

Service Mark Strength Can’t Be Established By A Strong Trademark

Trademark strength for likelihood of confusion purposes is often misunderstood for fame in the context of dilution. The two concepts are different with fame for dilution being difficult to achieve. The common mistake service mark owners make is to assume that because their rights are strong for particular goods or services that this strength transfers …

New Consideration For A Trademark Licensee

The United States Supreme Court recently decided an issue involving trademark licenses in bankruptcy that for years had split the lower courts. Prior to this decision, when a trademark licensor entered bankruptcy it had a choice to either continue with any existing trademark license agreements or terminate the agreements. The effect was trademark licensors would …

Abusive Trademark Applications Muddy the USPTO Database

Andrei lancu – the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office – recently testified before a Congressional oversight committee that he could use help tackling the problem of abusive trademark applications. From 2013 to 2018, the USPTO reported an 1100% increase in trademark applications from …

The Board Throws Another Curveball on the Strength Factor

The strength factor in the likelihood of confusion analysis is very important, and it’s not easy to establish either way. The strength analysis becomes even more difficult when the Trademark Trial and Appeal Board throws curveballs. Friedman and Wieder Enterprises Inc. applied to register the mark HULA DELIGHTS (in standard characters) for “gift baskets featuring …

Brand Name for Hemp Products May Be Protected

The United States Patent and Trademark Office recently announced that it will accept trademark applications for hemp-based products. This is a departure from last year when we discussed strategies for brand name owners to secure some trademark protection for any cannabis-based product. Last year, all products containing any part of the cannabis plant were illegal …

PopSockets Tries to Convert Bona Fide Sellers Into Counterfeiters

In an interview for Vox, David Barnett – the founder of PopSockets – said that he saw the first counterfeit product in about 2016. In 2017 and 2018 he claims to have been Amazon’s best takedown customer because his company was taking down 1,000 – 2,000 listings every day from marketplaces around the world. PopSockets …

Trademark Strength is the Most Misapplied Factor

The two most talked about likelihood of confusion factors are the: (1) similarity of the marks; and (2) relatedness of the goods or services. While these factors possess their own intricacies, trademark applicants seem to misapply the trademark strength factor the most. The misapplication of this factor then leads trademark applicants to make poor filing …