News & Analysis as of

Trademark Registration Trademark Application Descriptive Trademarks

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

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

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

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

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

Burns & Levinson LLP

What It Takes to Register a Trademark

Burns & Levinson LLP on

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

Morrison & Foerster LLP

Landmark Trademark Protection Case Before Supreme Court

United States trademark law makes a strong distinction between “descriptive” and “generic” terms. The former are potentially accorded substantial benefits, while the latter can never be entitled to protection and are not...more

Akerman LLP - Marks, Works & Secrets

The Joint is Just a Music Joint, Not a Trademark

The Federal Circuit in In re JC Hospitality LLC recently affirmed the United States Patent and Trademark Office, Trademark Trial and Appeal Board’s refusal to register the service mark THE JOINT for a venue offering...more

Snell & Wilmer

Prosecuting a U.S. Trademark Application

Snell & Wilmer on

Prosecution of a U.S. trademark application is the process by which an application moves through the United States Patent and Trademark Office (“USPTO”) after being filed. Prosecution is often a more lengthy and costly...more

Akerman LLP - Marks, Works & Secrets

How Many Types of Wines Are There: BIG SIX? Really?

The Trademark Trial and Appeal Board recently affirmed the refusal to register a trademark application for BIG SIX for wine on the ground that the term is generic or descriptive of wines. In re Plata Wine Partners, LLC,...more

Smart & Biggar

Year-end Round-up: Notable Trademark Case Law From 2018

Smart & Biggar on

There were many interesting trademark cases coming out of 2018, a few of which are discussed below. The scope of Canada’s anti-dilution remedy (section 22 of the Trademarks Act) is not limited to a defendant’s use of a...more

Neal, Gerber & Eisenberg LLP

Client Alert: #FreeRapunzel: Trademark Trial and Appeal Board Loosens Standing Requirements

In denying a doll maker’s motion to dismiss a mom’s opposition to the registration of the trademark RAPUNZEL, the Trademark Trial and Appeal Board (TTAB) has relaxed the already liberal standard for what constitutes a “real...more

Akerman LLP - Marks, Works & Secrets

Rapunzel May Be Released From Trademark Monopoly Tower

Rapunzel potentially was released from the trademark monopoly tower, not by her hair, but by trademark opposer and law professor Rebecca Curtin....more

Fenwick & West LLP

Is ‘Zero’ Generic or Descriptive? Coca-Cola Loses Battle on Appeal to Federal Circuit

Fenwick & West LLP on

If you have ever had a Coke Zero, what do you understand ZERO to mean – “zero calories,” “zero sugar,” “zero carbohydrates” or some combination of each? If your friend who never had a Coke Zero asked you what the difference...more

Fenwick & West LLP

Intellectual Property Bulletin - Fall 2018

Fenwick & West LLP on

In This Issue - Gender Diversity in Patenting: Current Landscape and Recommendations - The gender gap in patenting is a current challenge that companies face. While this issue seems pervasive, companies and lawyers can...more

Akerman LLP - Marks, Works & Secrets

The Skinny on “Thins”

According to the Federal Circuit, the skinny on the term “Thins” is that it may be generic for thinly cut snack crackers. Real Foods Pty Ltd. V. Frito-Lay North America, Inc., (October 4, 2018 Fed. Cir.)....more

Ward and Smith, P.A.

Tranquil Beaches and Simple Trademarks … and the Dangers Swirling Below

Ward and Smith, P.A. on

Trademark clearance and registration—sounds like an additional legal expense, right? Unfortunately, this potential cost is the reason many individuals and businesses forgo the trademark clearance and registration process...more

Hogan Lovells

U.S. – Reframing the Test for Genericness in the Soft Drink Wars

Hogan Lovells on

Royal Crown Co., Inc. v. The Coca-Cola Co., 2018 WL 3040163 (Fed. Cir. June 20, 2018) - In late June, the Federal Circuit issued  an opinion in the year-long litigation between Royal Crown Co., Inc. (“RC”) and The...more

Snell & Wilmer

Considerations When Using Descriptive or Generic Trademark Terms

Snell & Wilmer on

I. Adding Distinctive Terms or Logos to a Descriptive or Generic Term Will Not Protect the Descriptive or Generic Term. A descriptive trademark1 is one that immediately brings to mind a use, purpose, function,...more

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