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 …

Video Conferencing is a Related Service to E-mail

The Trademark Trial and Appeal Board relied on evidence in the real world marketplace to conclude that video conferencing is a related service to the electronic transition of messages like e-mail. This decision is a good reminder that intuition about whether certain goods or services are related can lead to wrong decisions. InFocus Corporation filed …

No Brand Extension When Giving Branded Clothing to Employees

Companies give branded clothing items to their employees to wear during the performance of their job. Make the branded clothing stylish enough and the employee may just wear it out socially as well. Brand extensions are helpful to increasing the conceptual strength of the mark, so being able to extend a brand to clothing or …

Brand is Not Just a Marketing Expense, It’s a Company Opportunity

Brand is commonly thought of as the marketing department’s responsibility. And if the marketing expense is high, that should translate into a high brand valuation. But brand is not just a marketing responsibility. Truly Inc. published a podcast with Tracy Chong – co-founder of Strata Insights – about a brand method she helped create called …