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 …

Trademark Review Places COVFEFE Decision in the Top 7

It is hard to forget the moment when then Candidate Trump tweeted late one night “Despite the constant negative press covfefe.” This tweet sparked a nationwide debate about the word “covfefe.” Not only did this word spark a debate, but it also caught the eye of some opportunists. One of those opportunists was John E. …

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 …

Three Tips for Reviewing Search Results with Broad Descriptions

The USPTO’s Acceptable Identifications Manual has been a blessing and a curse. It is a blessing because trademark applicants can find pre-approved goods or services description that accurately covers their actual goods or services, which eliminates one potential Office Action (i.e., registration refusal) the Trademark Office could issue against a pending trademark application. However, the …

Improper Strength Analysis Sinks Another Trademark Applicant

The strength analysis trend of a 10 third-party registration minimum to establish the conceptual weakness of a trademark rolls on. In the most recent Trademark Trial and Appeal Board case, seven third-party registrations were insufficient, and so were the statements of one trademark owner. Shin-Kyu Choi applied to register the mark PRINCE KONG (in standard …

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 …

Nestle is Next to Battle the First Sale Doctrine

Nestle USA, Inc. filed a lawsuit against Market Centre, Inc. for selling in the United States genuine product purchased in Mexico from Nestle Mexico, S.A. de C.V. The goods sold in the U.S. is considered a grey market good. Société des Produits Nestlé S.A. is the owner of the NESTLE and other trademarks in the …

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 …