Tag Archives | acquired distinctiveness

Five Years: Most Relevant Time Period for Considering Third Party Trademark Use, Federal Circuit Says

Converse filed a complaint at the International Trade Commission (ITC) seeking an order blocking the importation of several shoes that Converse alleged to infringe Converse’s trade dress rights in three design elements on the mid-sole of Converse’s All Star shoes.

Converse asserted trade dress rights in the “design of the two stripes on the midsole of the shoe, the design of the toe cap, the design of the multi-layered toe bumper featuring diamonds and line patterns, and the relative position of these elements to each other.”

Here, the design elements of the shoe are product design trade dress, for which the owner must show that these design elements have acquired distinctiveness in the relevant market place. If the owner fails to show acquired distinctiveness, then it does not have trademark …

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Protecting Descriptive Marks: Principal Register and Supplemental Register

The USPTO maintains two registers of trademarks. The main register is the principal register while the other is the supplemental register. Most trademark applications seek registration on the principal register. Registration on the principal register provides the trademark owner with more rights and benefits than the supplemental register.

Principal Register

The advantages of owning a registration on the Principal Register, include that the registration on the Principal Register:

  • Provides exclusive nationwide right to use the mark in commerce on or in connection with the goods/services listed in the registration where there was no prior use by others (15 U.S.C. §§ 1057(b), 1115(a));
  • Is constructive notice to the public of the registrant’s claim of ownership of the mark (15 U.S.C. §1072);
  • Provides a legal presumption of the registrant’s ownership of the mark (15 U.S.C.
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$200M in Annual Sales Under Highly Descriptive Mark Insufficient to Establish Trademark Rights

When you have a highly descriptive mark, even hundreds of millions of dollars in annual sales under the mark may not be enough to establish trademark rights.

magnestiaMagnesita Refractories Company (MRC) applied to register the mark MAGNESITA in two trademark applications for refractory products in class 19 and for online services related to using refractory products in class 37.

The USPTO found that the mark was generic for refractory products in class 19, and the appeals court agreed in In re Magnesita Refractories Company, 2016-2345 (Fed. Cir. 2017).

The court also found that MRC failed to show that the mark acquired distinctiveness in connection with the class 37 services. A mark has acquired distinctiveness when “the primary significance of the term in the minds of the consuming public is …

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