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Category Archives: Trademark Prosecution

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Let’s Set the Record Straight….the Redskins Still Own the REDSKINS Trademarks

Posted in Counterfeits, Disparaging Marks, Section 2(a), Trademark, Trademark Infringement, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller The overwhelming public reaction to the US Trademark Trial and Appeal Board’s June 18 decision canceling six REDSKINS trademark registrations on grounds that the mark disparaged Native Americans has been impressive. However, news articles, op-ed pieces, informal commentary, and anecdotal stories all evidence wide range confusion about and a misunderstanding… Continue Reading

“REDSKINS” US Trademark Registrations are Canceled for Disparaging Native Americans

Posted in Disparaging Marks, Section 2(a), Trademark, Trademark Trial and Appeal Board

Written By: Susan Neuberger Weller A three-judge panel of the US Trademark Trial and Appeal Board (TTAB), for the second time and in a 2-1 decision, has held that the REDSKINS trademark used in connection with professional football and related services by the Washington Redskins National Football League team was disparaging to a substantial composite… Continue Reading

Houston, We Have a Problem: City Petitions the US Supreme Court to Register Its Official Seal as a Trademark

Posted in Color, Emoticon, Legislation, Product Configuration, Section 2(b), Trademark, Trademark Prosecution, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller The City of Houston, Texas has filed a Petition For Writ Of Certiorari with the Supreme Court of the United States asking the Court to interpret Section 2(b) of the Lanham Act to determine whether it prohibits a government entity from federally registering its own flag or coat of arms… Continue Reading

How Much “Intent” is Enough to Support an “Intent to Use” Trademark Application?

Posted in 15 U.S.C. 1051(b), Intent-To-Use Applications, Trademark Prosecution, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller For many years now, the US Trademark Office has accepted trademark applications based upon a “bona fide intent to use” the applied-for mark on all the goods and/or to provide all of the services listed in the application at the time of filing.  Unlike in many other countries, a US… Continue Reading

TTAB Refuses to Register “The Slants,” Finding it to be “Disparaging”

Posted in Section 2(a), Trademark, Trademark Prosecution, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller Racial and ethnic disparagement is a hot topic at the Trademark Trial and Appeal Board these days. While a decision is still pending in the latest cancellation action involving the long disputed WASHINGTON REDSKINS professional football team marks, the Board in In re Simon Shiao Tam, recently affirmed a federal… Continue Reading

Oops! Assignment of Intent-to-Use Trademark Applications: Easy But Not Simple

Posted in 15 U.S.C. 1051(b), Assignment, Intent-To-Use Applications, Trademark, Trademark Prosecution, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller  The language in the Trademark Act is very clear on the issue of assignment of intent-to-use applications.  In a recently issued precedential opinion, the Trademark Trial and Appeal Board has held, once again, that Section 10(a)(1) of the Act really means what it simply states, namely, that prior to filing… Continue Reading

Hells Angels and Toys “R” Us Settle “Death Head” Trademark Litigation

Posted in 15 U.S.C. 1051(b), Dilution, Fraud, Intent-To-Use Applications, Trademark, Trademark Infringement, Trademark Prosecution

Written by: Susan Neuberger Weller When I think of the Hells Angels, what immediately comes to mind are  a notorious gang of men in leather on Harley-Davidson motorcycles, the 1960’s counterculture, and news reports of illicit activity. When I think of Toys “R” Us, what immediately comes to mind are Barbie® dolls, Candyland® board games,… Continue Reading

RG3 and Common Law Trademark Rights: What You Don’t Know Can Hurt You

Posted in Common Law Marks, Trademark, Trademark Infringement, Trademark Prosecution, Trademark Searching, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller  Following in the footsteps of many sports and entertainment celebrities, the Washington Redskins’ quarterback Robert Griffin III, through his company Thr3escompany LLC, filed a number of US trademark and service mark applications for various marks including his full name as well as his nickname RGIII, sometimes used as RG3. The… Continue Reading

Trademark Protection in the European Community Expanded to 28 Countries

Posted in Trademark, Trademark Prosecution

Written by: Susan Neuberger Weller It took eight years of negotiations, but Croatia will  finally join the  European Community effective  July 1, 2013. This is good news for those who  own or seek trademark and design protection through the European Community system since protection will now be expanded to cover  28 Member States. These member states will… Continue Reading

Why Can’t I Use My Own Name? : Trademarks and Surnames

Posted in Section 2 (e) – Surnames, Surnames, Trademark

Written by: Susan Neuberger Weller  There are many “myths” that float about in the general public about what can and cannot function as a trademark. For example, people often tell me that they “know” that “common words” can never be protected as trademarks. That, of course, is totally false. Common words can absolutely function as… Continue Reading

Are Dr. Dre’s Claims of Likelihood of Confusion and Dilution Enough to “Beat” His Opponents?

Posted in Dilution, Section 2(d), Trademark, Trademark Infringement

Written by Susan Neuberger Weller Rapper Dr. Dre and the company he co-founded, Beats Electronics, LLC, are on the offensive at the US Trademark Trial and Appeal Board challenging a multitude of third-party applications for marks which consist of or contain the word “Beat”. The company owns a number of trademark registrations for use of… Continue Reading

Pattern Designs on US Navy Uniforms and Fabric Are Non-Functional Protected Trademarks

Posted in Product Configuration, Section 2(e) - Functionality, Trademark, Trademark Prosecution, Trademark Trial and Appeal Board

Written by Susan Neuberger Weller A recent TTAB case addresses the issue of functionality and protection of design.  In the case In re Navy Exchange Service Command, (“NEXCOM”), the TTAB issued a non-precedential decision on September 29, 2012 in which it reversed the Examining Attorney’s refusal to register four irregular block-shaped, multi-colored pixilated pattern design… Continue Reading

Should Section 8 Affidavits of Continued Use be filed at Year Three?

Posted in Section 8 Affidavit, Trademark, Trademark Prosecution

Written by Susan Neuberger Weller The U.S. Patent and Trademark Office on August 16 filed a request for comments regarding amending the first filing deadline for affidavits or declarations of use or excusable nonuse. 77 Fed. Reg. 49,425, and also published a notice of inquiry indicating that it was considering a fee adjustment for trademark applications…. Continue Reading

Avoid a “Heart Attack”: Promptly Register Your Trademarks

Posted in Intent-To-Use Applications, Litigation, Trademark, Trademark Infringement, Trademark Prosecution

Written by Susan Neuberger Weller On July 6, 2012, in Lebewohl v. Heart Attack Grill, LLC , a New York Judge made it possible, in the words of the Wall Street Journal, for people to continue to “Order Up a Heart Attack” in, at least, Las Vegas and Manhattan.  Since 2004, the Second Avenue Deli, a… Continue Reading

Hershey Thinks Outside the Box (or the Candy Wrapper) in Seeking Trademark Protection for a Product Shape

Posted in Product Configuration, Trademark, Trademark Prosecution, Trademark Trial and Appeal Board

Written by Susan Neuberger Weller On July 2, 2012, the U. S. Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB” or “Board”) granted Hershey’s request to register the design and shape of a chocolate bar as a trademark on the Principal Register. The design was described as “a configuration of a candy bar… Continue Reading

Letters of Protest: A Tool To Avoid The “Trademark Bully” Label

Posted in Letters of Protest, Section 2(d), Trademark, Trademark Bullying

Thanks to DuetsBlog for providing an update on the EAT MOR CHIKIN v. EAT MORE KALE dispute that was the subject of our prior post.  As we reported in December, the Trademark Office issued an office action on the pending trademark application for EAT MORE KALE for t-shirts, etc. and determined that “no similar registered or pending marks … would… Continue Reading

PRETZEL CRISPS: The Importance of Evaluating A Trademark’s Strength

Posted in Trademark, Trademark Bullying, Trademark Prosecution

The New York Times had an interesting article about the ongoing dispute between Princeton Vanguard and Frito-Lay over Princeton Vanguard’s attempts to obtain a federal trademark registration for the mark PRETZEL CRISPS.  You know Pretzel Crisps – the thin, crunchy pretzel crackers that seem to go perfectly with any type of dip.  Well, the company that makes Pretzel… Continue Reading

LINSANITY: The Trademark

Posted in Anticybersquatting, Domain Name, Section 2(a), Section 2(c), Trademark Prosecution

On the heels of recent attempts to trademark a celebrity baby name comes the story of an attempt to obtain trademark protection for the name of a sports celebrity.  Well, a variation of a sport celebrity’s name.  This time, two trademark applications were filed last week for the mark LINSANITY — as in the current craze caused by Jeremy Lin, a player… Continue Reading

BLUE IVY CARTER: What to Get a Child Who Has Everything? A Trademark Registration.

Posted in Intent-To-Use Applications, Section 2(a), Section 2(c), Section 2(d), Trademark, Trademark Prosecution, Uncategorized

Since the birth last month of their first child, Blue Ivy Carter, Beyoncé and Jay-Z are no doubt experiencing the typical joys of first-time parenthood.  Those first looks, smiles and coos.  But they are struggling with at least one parenting issue that most of us don’t have to worry about:  trademark protection for their baby’s name.  Beyoncé’s company, BGK… Continue Reading

The Trademark Audit: A Necessary Legal Checkup

Posted in Trademark, Trademark Prosecution

Written by Christine Baker A few weeks ago, we said goodbye to 2011, welcomed 2012 and made some New Year’s resolutions – whether it be to shed a few extra pounds, to quit smoking or to complain less and laugh more.  While it is great to make New Year’s resolutions for your personal life, it’s also a… Continue Reading

Section 1(b) Intent-To-Use Applications: Evidence of Bona Fide Intent Required

Posted in 15 U.S.C. 1051(b), Intent-To-Use Applications, Trademark Prosecution, Trademark Trial and Appeal Board

Written by Christine M. Baker If you’re familiar with the federal registration of trademarks and service marks in the United States, you know that U.S. trademark law allows an applicant to seek registration of a mark based on either actual use of a mark in interstate commerce  (15 U.S.C. Sec 1051(a)) or on a bona fide… Continue Reading