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Surname Refusals - Rarity Alone Will Not Defeat a Refusal To Register

A mark that is “primarily merely a surname” cannot be registered on the Principal Register per Section 2(e)(4) of the Trademark Act, 15 U.S.C. § 1052(e)(4). Even though a surname may be rare, in In re Weale Care, LLC, Serial...more

Marks That Are Opposites Sometimes Attract Refusal of Registration

When considering a likelihood of confusion, one might naturally think a mark is registrable that is an antonym (opposite) of a registered mark. This was not the result in In re Sugar Free Specialties, LLC, Serial No. 90706411...more

Chicago Cubs score home run in their opposition against a stylized version of the letter “C”

In many countries, marks such as single letters or numerals are considered nondistinctive. This is not so in the US, which has a very broad definition of what comprises a trademark in 15 U.S.C. Section 1127...more

While CBD is Widely Available, Registering Marks for Ingestibles with CBD is Not

In two recent decisions, the Trademark Trial and Appeal Board (TTAB) made it abundantly clear that attempting to register a mark for ingestibles containing cannabidiol (CBD) likely will be an exercise in futility. In In...more

Actual Use, Not Preparations For Use, Of A Service Mark Is Necessary For The USPTO To Register It

If you desire to register a service mark asserting use that is preparatory for the rendering of your services, your application will fail in the U.S. Patent and Trademark Office (USPTO). Instead, the services must be actually...more

SY Custom, Inc. v. The Tailory, LLC: How To Fail Proving a Genericness Case Before the TTAB

Recently, the Trademark Trial and Appeal Board (TTAB) decided against a petitioner seeking to cancel a registration on the Supplemental Register in SY Custom, Inc. v. The Tailory, LLC, Cancellation No. 92070568 (TTAB Aug. 12,...more

Considering a Common Phrase as a Trademark? Don’t Expect it to be Registrable.

There have been a number of recent Trademark Trial and Appeal Board (TTAB) cases involving phrase marks. In all instances, the phrases have been refused registration not because of descriptiveness or misdescriptiveness of any...more

CAFC Holds the Lack of a Property Interest in a Trademark Does Not Prevent the Commencement of a Cancellation Proceeding

The Court of Appeals for the Federal Circuit (“CAFC”), in a 2-1 vote, held in Australian Therapeutic Supplies Pty., Ltd. v. Naked TM, LLC, Appeal No. 2019-1567 (Fed.Cir. July 27, 2020), that a property interest in a mark is...more

Is It ‘Anything Goes?’ – The US Expansive View of Trademarks Supports a Wide Variety of ‘Nontraditional Trademarks.’

“Trademark” is broadly defined in Section 45 of the Lanham Act, 15 U.S.C. §1127, as “any word, name, symbol, or device, or any combination thereof” that identifies and distinguishes goods and indicates source. ...more

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