On My Mind Blog

Two decisions by the Trademark Trial and Appeal Board (TTAB) illustrate the difficulty of predicting whether a likelihood of confusion will be found when comparing virtually identical marks for different goods or services.  What would you think?

If your mark is found to describe any of the goods or services identified in your application for registration, and they are in the same class as other goods or services identified in your application, the registration may be refused for that entire class.

If you advertise a service, take preliminary steps to render the service, or both, and apply to register the service mark in the U.S. Patent and Trademark Office (USPTO) based on a claim that you have commenced use of the mark before you actually are in a position to offer the service in U.S. commerce, your application may be rejected.

When one party’s trademark is used ornamentally on another party’s product, that use may be protected by the aesthetic functionality defense, or that use may be a trademark infringement.  But how do you know?

Garan Services Corp. filed an intent to use application to register MATCH STUDIO in plain lettering for “clothing, namely tops and bottoms.”   It disclaimed the exclusive right to use the word “STUDIO” apart from the mark as a whole.  The Examining Attorney refused registration on the ground that there would be a likelihood of confusion with the existing registered mark MATCH for “clothing . . .woven bottoms and tops . . . .”  Garan appealed to the Trademark Trial and Appeal Board (TTAB).

Choosing a trademark with an appealing connotation normally is desirable.  But if the mark conveys a plausible but false idea about some aspect of the goods or services, it may be considered to be deceptive. The dividing line is not always obvious.

A trademark owner should exercise caution to avoid paying a scam artist who sends a trademark notice requiring payment of a substantial "fee." 

Can your application to register an updated version of your previously registered mark be accepted despite a third party’s coexisting similar registered mark? Two decisions of the Trademark Trial and Appeal Board (TTAB) say “perhaps.”

When can the U.S. Patent and Trademark Office require you to make a disclaimer in your application to register a mark, what does it mean, and when can you resist doing so? 

You’re checking your mail and discover an official-looking notice from a “domain registration” company, notifying you that your domain name is about to expire.  If that occurs, says the notice, you could lose your domain and your customers.