Tag Archives | trademark

Google’s Trademark Survives Genericide Attack Despite Use as a Verb

Google’s trademark was attacked by two individuals who claimed that the GOOGLE trademark was generic for the act of internet searching in the case of Elliott v. Google, Inc., No 15-15809 (9th Cir. 2017). The owner of a valid trademark can become the “victim of genericide,” which occurs when the public appropriates a trademark and uses it as a generic name for a type of goods or services regardless of the source. If this happens, as it did for ASPIRIN and THERMOS, the trademark owner can loose its rights in the mark.

Here, the plaintiffs claimed that the public’s use of google as a verb, e.g. “I googled it,” showed that the trademark was generic. The plaintiff’s claimed that a word can only be used in a trademark sense …

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Lapse of Trademark Registration is Not Abandonment of All Trademark Rights

CrashDummiesYou search the trademark database at the USPTO and find that your competitor’s trademark registration was canceled because the competitor did not file renewal documents and fees. You jump at the chance to grab their trademark by filing your own trademark application on their mark. Did you succeed in grabbing up rights in their trademark? Not necessarily.

Common law trademark rights can be obtained by use of the trademark in business/commerce alone without a federal registration. Therefore lapse of a trademark registration does not automatically result in a loss of all trademark rights.

This principle is demonstrated in the case of Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387 (Fed. Cir. 2010).

Crash Dummies Fight

Mattel owned a trademark registration on CRASH DUMMIES for toys. Mattel …

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Reviving Dead Brands of Others: Trademark Windfalls

DURAFLAMEKingsford-Clorox owned the trademark Duraflame for artificial firelogs. Kingsford-Clorox decided to get out of the firelog business and wanted to write off the goodwill associated with the Duraflame mark for accounting purposes. So it published a notice in the Wall Street Journal announcing the abandonment of the Duraflame trademark effective on the date of publication.

Two companies scrabbled to grab the Duraflame trademark, which resulted in the case of California Cedar Products Co. v. Pine Mountain Corp., 724 F.2d 827 (9th Cir.  1984). California Cedar won rights in the Duraflame mark because it was the first to use the Duraflame trademark after the mark was abandoned.

WindFall of Goodwill in Picking Up an Abandoned Trademark

When one company abandons a trademark, any other person or entity can grab the abandoned …

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Trademarks Have Different Meanings: Responding to a Trademark Cease and Desist

“‘PLAYERS’ for shoes implies a fit, style, color and durability adapted to outdoor activities. ‘PLAYERS’ for men’s underwear implies something else, primarily indoors in nature.” – Trademark Trial and Appeals Board.

PlayersTrademarkBritish Bulldog Ltd. applied to register the trademark PLAYERS on the goods of men’s underwear. The trademark examiner  refused to register the mark claiming that it conflicted with a previously registered mark PLAYERS for the goods of shoes.

But the appeals board overturned the refusal and found that there was no likelihood of confusion between the marks in the case of In re British Bulldog, Ltd., 224 U.S.P.Q. 854 (TTAB 1980).

How could identical marks not be in conflict when used on items that a person wears, e.g. underwear and shoes?

Was it because the goods of underwear …

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Trademarks Sound Similar: Responding to a Trademark Cease and Desist

TrademarkSimilar_CapitalCityBank_CitibankCapital City Bank filed a trademark application on its name “Capital City Bank” for banking services without a logo or special form claim. Citigroup filed an opposition based on its Citibank trademarks. Citibank presented evidence that the Citibank brand was one of the most valuable brands in the world. But, Citigroup lost.

When there was a clear over lap of “City Bank” and “CitiBank” between the marks, how could one of the most valuable brands loose?

The problem was that the court concluded that the marks were not similar for trademark infringement purposes.

Not similar? Not similar enough in Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344 (Fed. Cir. 2011).

Sometimes Slight Spelling Differences Matter, Many Times They Don’t

Many times slight spelling differences between …

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The Trademark is Descriptive: How to Respond to a Trademark Cease and Desist

Descriptive_Weak_TrademarkFrederic Towers began using the term “The Professional Portfolio System” in November 1982 for a computer-based portfolio valuation system.

Advent Software obtained a registration for the term “The Professional Portfolio” for computer programs used in the field of financial management. Advent first used the term in December 1983, more than one year after Towers’ first use.

Towers petitioned to cancel Advent’s trademark based on the similarities of the marks and the similarities of the goods, but lost.

Usually rights to use a mark go to the person or entity that first started using the mark in commerce. Here, Towers was first.

So why did he lose?

Because Towers’ mark was descriptive and therefore weak. This is the result in the case of Towers v. Advent Software, Inc., 913 F.2d 942 …

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The Trademark is Weak: How to Respond to Trademark Cease and Desist

Domino_v_DominosPizzaDomino is a trademark for and a brand of sugar. Sugar is a type of food. Domino’s Pizza is a trademark for a pizza restaurant chain. Pizza is a food.

Amstar, which owned the Domino sugar brand at the time, sued Domino’s Pizza alleging trademark infringement over the use of the term Dominos. But Amstar lost.

Why? Similarity of the marks and similarity of the goods is usually a good start to making a strong case of trademark infringement. Here, there was a similarity between the marks, e.g. “Domino.” And, there was an arguably similarity between the goods, e.g. food.

Yet, Amster lost because, in part, the Domino mark was weak in relation to food generally.

Many Third-Party Uses for Similar Goods: Weak Trademark Rights 

Why was the “Domino” mark weak? It was weak …

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Responding to Trademark Cease & Desist: Priority – The I Was First Defense

TrademarkPriorityDaniel Group obtained a federal registration on service mark “ServicePerformance.” But Daniel Group failed when it demanded and then sued claiming trademark infringement to stop Service Performance Group from using that name for similar services. Why did it fail?

Because the Daniel Group was not first to use the words “Service Performance” in business for its services. Service Performance Group began using its name 9 years before Daniel Group received its federal trademark registration.

Daniel Group did not have “priority of use.” So its trademark claim failed even though it had a federal registration and Service Performance Group did not (the space vs. no space between Service and Performance had no impact in this case).

A federal trademark registration is not bullet proof against prior users. This is the case of Daniel

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Gov’t Says Prove It: Trademark Application Specimens

Proof_SpecimenProve it! The specimen requirement in a federal trademark application is the government’s way of saying “you said you are using the mark, now prove it.” The USPTO requires that you submit a specimen showing the mark as it is used on or with the goods or services at some point in the trademark application process. The specimen is simply an example of how the mark is used.

The specimen requirements for goods are different from the specimen requirements for services.


For goods, the specimen must show the mark on (1) the goods, (2) containers or the displays associated with the goods, or (3) the tags or labels affixed to the goods. Trademark Manual of Examining Procedure (TMEP) 904.03. Containers associated with the goods can be the retail packaging …

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Trademark Conflict? Found My Trademark Registered for Different Goods or Services

If during preliminary trademark searching you find a mark that is registered at the U.S. Patent and Trademark Office, you may wonder whether that will block your ability to obtain a trademark registration or to use your trademark with your particular goods and services. If the goods or services provided under the registered mark are sufficiently different from the goods or services that you intend to provide under your mark, then there might not be a conflict between the registered mark and your proposed mark.

Trademark rights usually don’t extend to all goods and services. But instead trademark rights extend to the goods and services for which the mark is registered or used and similar goods and services. There is an exception to this rule for famous marks, such as …

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