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Trademark Registration Descriptive Trademarks

Vicente LLP

How to Choose a Trademark for Your Cannabis Brand

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Building a strong and distinctive brand identity for your business is crucial for driving sales, fostering consumer loyalty, and standing out in any industry, and more so for emerging and rapidly evolving sectors such as...more

McDermott Will & Emery

Hot Mess? Second Circuit Douses Injunction Based on Weak Mark

The US Court of Appeals for the Second Circuit reversed a district court’s grant of preliminary injunction for abuse of discretion based on an erroneous evaluation of the strength of the “inherently descriptive” marks at...more

Partridge Snow & Hahn LLP

Choosing a Strong Trademark: The Foundation for Creating a Distinctive Brand

A “trademark” is any word, phrase, logo or design that identifies the source of goods or services. Trademarks are used to distinguish one’s products and services from those of another. The strength of a trademark depends on...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - March 2024: Piling Up Successes by Avoiding Descriptive Dangers

Joining a series of precedential decisions about descriptiveness, the Trademark Trial and Appeal Board recently affirmed a refusal to register Sheet Pile, LLC’s (“Applicant”) mark ZPILE on the Principal Register, on the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - March 2024

Welcome to the March 2024 issue of Sterne Kessler’s MarkIt to Market® newsletter. This month, we discuss the IPR Center’s efforts to stop global IP theft and address counterfeiting on both home and foreign turf; a recent TTAB...more

McDermott Will & Emery

All That Glitters: Use of Registered Mark To Describe Watch Color Was Fair Use

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The US Court of Appeals for the Second Circuit affirmed a district court’s grant of summary judgement to a luxury-watchmaker defendant, holding that its use of a registered and incontestable trademarked term was fair use...more

AEON Law

Patent Poetry: Trademark Denied for “ChatGPT”

AEON Law on

The US Patent and Trademark Office (USPTO) has denied OpenAI’s applications to trademark “ChatGPT” and “GPT.” The Final Office Action states, “Registration is refused because the applied-for mark merely describes a...more

Dunlap Bennett & Ludwig PLLC

Hitched On Technical Grounds: TTAB Litigation Insights From Universal Life Church Monastery Storehouse V. American Marriage...

Trademark litigants should heed the cautionary tale in this case – develop your arguments or risk waiving them. The United States Court of Appeals for the Federal Circuit continued its recent scrutiny of the practices of the...more

Foley & Lardner LLP

Brand Selection Primer for Emerging Healthy F&B Companies

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Branding is critical for emerging companies in the healthy food and beverage (“F&B”) space. Strong brands can help companies stand out from competitors and build trust and loyalty with customers. For emerging companies, a...more

Dechert LLP

Drawing the Line: Insights on the limits of stylised descriptive trade marks in the UK

Dechert LLP on

The VIA Art Fund opposition and appeal decisions provide an important reminder for those seeking to enforce registered trade mark rights in the UK. While incorporating a figurative element to a descriptive mark can enhance...more

Cozen O'Connor

Amendments to the Québec Charter of French Language – What Brand Owners Need to Know

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On May 13, 2021, the Québec government introduced Bill 96, An Act respecting French, the official and common language of Québec (the Bill), proposing significant amendments to Québec’s Charter of the French Language (the...more

Whitcomb Selinsky, PC

The Descriptive Requirement of Trademark Law

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The Trademark Trial and Appeal Board (TTAB) decided the  case of Yuzu Labs Public Benefit Corporation, 2017 WL 3102592. The TTAB is an administrative board that deals with issues arising out of the United States Patent and...more

Dunlap Bennett & Ludwig PLLC

The Supplemental Register

You have probably heard of trademarks and trademark registrations, but never the Supplemental trademark register. If you have heard of the Supplemental Register, then you have likely received an Office Action from the USPTO...more

Dunlap Bennett & Ludwig PLLC

How To Select a Strong Trademark

Learn how to select a strong trademark. What makes a strong trademark vs. a weak trademark and the different types: generic, descriptive, suggestive, arbitrary, and fanciful....more

Knobbe Martens

What’s in a Name?: Third Party Use of a Descriptive Term Without Secondary Meaning Can Undermine Assertions of Substantially...

Knobbe Martens on

GALPERTI, INC. v. GALPERTI S.R.L. Before: Moore, Prost, Taranto. Appeal from the Trademark Trial and Appeal Board. Summary:  Evidence of use of a term even without a showing of secondary meaning, by any third party,...more

Vicente LLP

Cannabis Trademarks 101

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In an industry that runs on innovation and differentiation, a cannabis brand’s identity is among its most valuable—and most prone to copying—assets. It’s a common myth that cannabis industry brands cannot get trademark...more

Fox Rothschild LLP

TTAB Cautions Applicants: Change Of Conditions Or Circumstances Is Necessary To Excuse Application Of Res Judicata

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On March 5, 2021, the U.S. Trademark Trial and Appeal Board (“TTAB”) issued a precedential decision affirming refusal of SolarWindow Technologies, Inc.’s application to register the word mark POWERCOATINGS. The decision is a...more

Dunlap Bennett & Ludwig PLLC

Trademarks 101

So, you’ve taken the leap. You’re starting a business. Congrats! You’re excited; you’re ambitious; the world is your oyster. Perhaps you’re building an app, or maybe a new clothing line? Or maybe you’ve created an animal...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Practice Tips: Fair Use of a Trademark (Part I)

One of the first things entrepreneurs will need to do when branding new companies is to seek and obtain trademark protection.  In addition, companies may at times seek to use third party trademarks without formally licensing...more

Fox Rothschild LLP

PTO Offers Guidance Following The Decision In USPTO v. Booking.com

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Last month, the U.S. Patent and Trademark Office (PTO) issued a guidance document describing how they plan on following the Supreme Court’s recent decision in U.S. Patent and Trademark Office v. Booking.com. This document...more

Burns & Levinson LLP

What It Takes to Register a Trademark

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The process to apply for a federal trademark registration is a separate, and more involved examination process, than registering a business name with a state’s Secretary of State. The U.S. Patent and Trademark Office...more

International Lawyers Network

Generic.com — Registrable In Canada?

The U.S. Supreme Court recently confirmed that a “generic.com” term may be eligible for federal trademark registration in the U.S., in certain circumstances. We will review the relevant decisions, discuss the Canadian legal...more

Locke Lord LLP

Supreme Court Holds that Booking.com Isn’t Generic

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In U.S. Patent and Trademark Office v. Booking.com B.V., the Supreme Court held that a term that combines a generic word with “.com” is not generic if consumers perceive the term to signify the source of a product and thus...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - June 2020: Breaking News: Booking.com Prevails in Genericness Challenge

The June 30th Supreme Court decision in Booking.com held that generic terms coupled with top-level domain names can be eligible for trademark registration. This decision is a win for brand owners as it reinforces how – in the...more

Jaburg Wilk

Generic.Nope: Supreme Court Deems BOOKING.COM a Distinctive, Registrable Mark

Jaburg Wilk on

The U.S. Supreme Court has ruled that Booking.com B.V., the owner of the hotel-reservation website of the same name, is entitled to register the mark BOOKING.COM with the United States Patent and Trademark Office (“USPTO”)....more

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