Archive | Trademarks

Reversing Order of Words of a Mark and Consistent Use of a Mark

CAGE_PHConventus Orthopaedics applied to register two marks CAGE PH and PH CAGE for surgical implants. The Examining attorney refused registration on the basis that each mark was descriptive. The Examining attorney argued that PH was descriptive for proximal humerus (bone). The TTAB reversed finding that there was not enough evidence to show that PH was descriptive.

What’s interesting about this case is that the applicant applied to register CAGE PH (No. 86534128) and its reversed/transposed order PH CAGE (No. 86534174). This is unusual. Normally you want to use a mark consistently in order to properly build trademark rights. Inconsistent use of a mark can negatively impact your trademark rights.

Further, the TTAB has said that reversing or transposing the elements/words of a mark does not avoid a conflict when the overall commercial impression …

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Name with Dictionary Definition Involving Illegal Activity: How Will it Play with the Jury

ContrabandYesterday, I wrote about Contraband Sports LLC’s lawsuit for declaratory judgement that its four finger weight lifting glove does not infringe Fit Four LLC’s design patent D652,607. If this case goes to trial, could there be any difficulty arising out of Contraband’s name?

On one hand, a party’s name should have no bearing, merits-wise, on whether or not it infringes a patent. On the other hand, does Contraband’s name have a negative connotation that could impact the jury?

The Oxford English dictionary provides one definition of “contraband” as “goods that have been imported or exported illegally.” Merriam-Webster’s dictionary provides an other definition of the term as “illegal or prohibited traffic in goods.” Dictionary.com provides a definition of the term as “anything prohibited by law from being imported or exported.”

Say …

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Stats Require Context to Support Assertion that Mark is Famous: $33M Sales, $1.8M Marketing Not Enough

KUHL_KUL_Marks

Daniel Shuff applied to register the mark KU:L for bicycles. Alfwear Inc opposed the application based on its registered marks KUHL, KÜHL, and KUUL for lip balm, fabrics clothing, including rugged outdoor clothing.

Alfwear attempted to show that its mark was famous. But showing that a mark is famous is hard. A famous mark must have extensive public recognition and renown. Aflwear presented evidence that:

  1. it had used the KÜHL mark since 1993,
  2. it used the mark on 200 styles of outdoor clothing per year,
  3. it had $33 million in retail sales in 2012,
  4. it sold over 1 million pairs of pants in 2015,
  5. it spent about 1.8 million a year between 2012 and 2016 marketing and advertising,
  6. it sold its products in over 1000 retailers through out the US, including in REI, Scheels,
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Spaces and Plurals Unlikely to Distinguish Trademarks

NEXTHOMESMainstream Property Group, LLC applied to register the mark NEXT HOMES  for providing assisted living facilities as well as for providing long-term care facilities and short term rehab facilities for seniors. NextHome, Inc. opposed the application based on its NEXTHOME mark, which was registered for real estate brokerage services.

The Board found that the only differences between the marks were (1) the space between “Next” and “Homes” and (2) the HOMES in the applicant’s mark is plural while the opposer’s mark has HOME singular. The Board concluded that “these minute changes do not distinguish the marks.”

The Board went on to find that there was a likelihood of confusion between the marks because the opposer provided its real estate brokerage services to seniors.

Minor differences, such as word spacing or …

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Bar on Registrating Disparaging Trademarks Violates the First Amendment

TheSlantsSimon Tam a member of the rock group “The Slants.” Tam applied to register the mark The Slants. But the USPTO refused registration under section 2(a) of the Lanham Act asserting that the mark was disparaging. In June of 2017, the Supreme Court found the section 2(a) prohibition on disparaging marks violated the First Amendment in Matal v. Tam, No. 15-1293 (2017). It is an important ruling in the Federal Circuit’s decision striking down the bar on registration of immoral and scandalous marks, so I’m going back to review it now.

Tam’s Aim to Reclaim Ethnic Slur

Tam chose the name “The Slants” to reclaim and take ownership of stereotypes about people of Asian ethnicity. The band draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes. It has …

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Bar on Registering Immoral or Scandalous Trademarks Violates First Amendment

fuctErik Brunetti acquired ownership of a trademark application to register the mark FUCT for apparel. The USPTO refused to register the mark under section 2(a) of the Lanham Act asserting that it was immoral or scandalous. But the Federal Circuit found that the provision banning registration of marks comprising immoral or scandalous matter violated the First Amendment. In re Brunetti, no. 2015-1109 (Fed. Cir. 2017). This clears the way for FUCT to register, unless the government appeals this ruling.

The Brunetti case follows the Matal v. Tam, No. 15-1293 (2017) case where the Supreme Court struct down as violating the First Amendment another provision of section 2(a), which barred the registration of marks consisting of material that is disparaging. The outcome in Brunetti is not surprising in light of …

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Problems Using the Registered Trademark Symbol with Products or Services Sold in a Foreign Country

R-in-a-circle-trademark

Your trademark is registered in the United States. But you sell goods/services under that trademark both in the US and in foreign countries. Should you use the registered trademark symbol, R enclosed in a circle, i.e. ®, next to the mark on or in connection with the goods/services sold in foreign countries?

Maybe not, unless you registered the mark in the foreign countries where it is used and those foreign countries allow for the use of R in a circle.

When a trademark is registered in the US and the mark is used in the US on or in connection with goods/services described in the registration, US law provides that the owner of the registration can and should indicate that the mark is registered. See 15 U.S.C. 1111. That indication …

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Timing Considerations for Deciding What Goods and Services to Designate in an Intent-to-Use Trademark Application

When you file an intent-to-use trademark application you must designate the goods and services in the application. What should those goods and services be? This should be easy to answer, right? Its the goods and services that you intend to sell or render in connection with the trademark.

But, it might not be that easy to answer when you have a lot of different types of products or services that will be launched over a period of time. Should all of those be listed? Maybe. One factor to consider is the timing of when you plan to launch each of the planned products or services. This timing then can be compared to the probable deadlines you will encounter in your trademark application.

Trademark Deadlines

Presently, it takes about 9.5 months, on average, …

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Punctuation Differences Alone Usually Do Not Distinguish Trademarks

BodysBoyd Coddington’s Hot Rods & Collectibles filed an application to register the trademark BOYD’S for apparel. But the USPTO examining attorney refused the registration based on a likelihood of confusion with the prior mark BOYDS for clothing. The TTAB affirmed the refusal finding the marks were virtually identical and the apostrophe was inconsequential in comparing the marks. Boyd Coddington’s Hot Rods & Collectibles, Inc., No. 78913114 (TTAB 2008).

Similarly, Sears filed an application to register CROSS-OVER for bras. The USPTO Examining Attorney refused registration based on the mark CROSSOVER for ladies’ sportswear. The TTAB found that the marks were legally equivalent and the hyphen was of “no legal significance.” In re Sears, Roebuck & Co., 2 USPQ2d 1312 (TTAB 1987).

Simple punctuation alone usually does not distinguish marks because marks are compared …

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Sharply Different Meanings of Marks Avoids Confusion

PrayThenSlayWhen considering whether two trademarks are similar for conflict purposes, the marks are considered in their entireties, including their appearance, sound, and commercial impression. Sometimes one of those attributes stands out to distinguish the marks even when similarities exist in the other attributes.

Manuel Tellez applied to register the mark SLAY OR PREY for apparel. The USPTO Examining Attorney refused registration based on a likelihood of confusion with Registration no. 5,066,234 for the mark PRAY THEN SLAY (and design) for t-shirts.

On appeal, the Board reversed the Examining Attorney’s refusal to register, finding the two marks had sharply different meanings.

The Board acknowledged that the appearance and sound of the marks were somewhat similar because (1) the marks shared the term “slay” and (2) “pray” and “prey” of the marks were …

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