On My Mind Blog

A “deceptively misdescriptive” mark is a mark that merely describes an aspect of the goods or services for which it is used.  However, those goods or services do not in fact possess that aspect (misdescription) although consumers are likely to believe they do (deception).

Such a mark cannot be registered on the Principal Register of the U.S. Patent and Trademark Office unless it has acquired distinctiveness through use (known as acquiring a “secondary meaning”).

A U.S. trademark registration may be cancelled for abandonment if, among other things, (1) the mark has not been used in U.S. commerce, and (2) there is not an intent to resume (or to commence) its use.  “Use” means “the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.”  Nonuse of a mark for three consecutive years creates a presumption of its abandonment.  We discussed these rules in our article entitled “Abandonment Rules Clarified for Madrid Protocol Extensions to the U.S.”

Will the sale in the U.S. of four saxophones over a three-year period be sufficient to rebut a nonuse abandonment claim?

The Trademark Trial and Appeal Board (TTAB) saw green when an applicant tried to register a particular shade of green (Pantone 2297C) on the Supplemental Register (for descriptive marks capable of designating the source of a product or service) as a trademark applied to the legs of a “construction and surveyor tripod.” 

You may have obtained a U.S. registration of a mark you claim to have used in commerce.  Nevertheless, a third party may petition the U.S. Patent and Trademark Office to cancel your use-based registration requiring you to present direct proof that goods or services under the mark actually were provided in commerce (regulated by Congress, or in one state but affecting interstate commerce, or in more than one state, or between the U.S. and another country) at the time you applied to register your mark.

The U.S. Trademark Act prohibits the registration of marks that are likely to be confused with other marks that have either been registered with the U.S. Patent and Trademark Office (USPTO) or are in use by another entity in the United States. 15 U.S.C. §1052(d).

Generally, the word element is considered dominant in a composite mark consisting of words and design elements.  However, such a mark can be found to differ sufficiently from a competitor’s mark if, for example, the word and design elements present a distinguishing cohesive narrative.

A non-U.S. party can obtain a U.S. trademark or service mark registration based on a home country registration and without use of the mark in the U.S. However, a Declaration of Use or Excusable Nonuse must be filed in the U.S. within six years after the date of registration plus a 6-month grace period.  If that Declaration is not filed, that U.S. registration will be cancelled and given no further effect after the end of the six-year period.

The line between a merely descriptive term and a generic term can be difficult to draw.  We previously wrote about this in “Avoid Selecting a Generic Term as Your Trademark.”

The U.S. Trademark Act prohibits a mark that is “primarily merely a surname” from registration on the Principal Register.  15 U.S.C. § 1052(e)(4).  The issue is whether the primary significance of the mark as a whole to the purchasing public is as a surname, which is a question of fact.

The term GPT stands for “generative pretrained transformer,” which software developers understand to refer to a machine learning algorithm that is pre-trained to produce human-like text in response to human prompts.

The Trademark Trial and Appeal Board (TTAB) rarely reverses an Examining Attorney’s refusal to register a mark on likelihood of confusion grounds.  In this case, the TTAB did just that.