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Category Archives: Trademark Trial and Appeal Board

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Washington Redskins Challenge the Constitutionality of Section 2(a) of the Lanham Act

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

Written by: Susan Neuberger Weller The Washington Redskins trademark controversy is far from over. Despite the fact that certain news and sports commentators and mainstream newspapers and organizations have announced that they will no longer use the term “Redskins” when reporting on the National League football team, and the fact that a variety of public… Continue Reading

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

OOHRAH! A Few Good Trademarks: The U.S. Military’s Trademark Campaign

Posted in Trademark, Trademark Infringement, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller Recently, there was an interesting article in the The New York Times discussing the current state of military trademarks. Many people might think that federal and state government entities and agencies cannot, do not, or should not own exclusive rights in trademarks used in connection with commercialized products and services. However,… 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

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

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

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

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