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
Category Archives: Trademark Prosecution
Subscribe to Trademark Prosecution RSS FeedAre Dr. Dre’s Claims of Likelihood of Confusion and Dilution Enough to “Beat” His Opponents?
Posted in Dilution, Section 2(d), Trademark, Trademark InfringementWritten 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 BoardWritten 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 In the case In re Navy Exchange Service Command, (“NEXCOM”), the TTAB issued a non-precedential decision on September 29, 2012 in which it reversed the Examining Attorney’s refusal to register four irregular block-shaped, multi-colored pixilated pattern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 ProsecutionWritten 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 ProsecutionWritten 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 BoardWritten 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 BullyingThanks 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 ProsecutionThe 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 ProsecutionOn 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, UncategorizedSince 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 ProsecutionWritten 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 BoardWritten 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
