A trademark is supposed to identify the source of the goods for which it is used and to distinguish them from the goods of others.  Do you think the word “THE,” standing alone, has those qualities when it appears on clothing?

The Ohio State University (Ohio State) and Marc Jacobs Trademarks, L.L.C. (Marc Jacobs) both believe that THE identifies and distinguishes their respective identical clothing items.

Side-by-side doorknob hanging signs—left says “OPEN”; right says “CLOSED”.

Under a decision by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit), if you enter into a contract requiring disputes to be resolved by lawsuits brought in a specified court, you may be precluded from challenging the validity of a patent or trademark in a proceeding in the Patent Trial and Appeals Board (PTAB) or the Trademark Trial and Appeals Board (TTAB) of the U.S. Patent and Trademark Office (USPTO).

If you file a U.S. application to register a service mark based on its use in commerce, take care to select an acceptable specimen of use to support that application.

 : Bottom of a blue water bottle displaying the molded letters PVPW

Unacceptable Specimen of use of PVPW for water delivery services

Section 45 of the Trademark Act says that a service mark is used in commerce “when it is used or displayed in the sale or advertising of services.” This has been interpreted as requiring, at a minimum, that there be some direct association between the mark and the services so that purchasers would perceive the mark as identifying the services.

Reclining female‘s lower legs with a brown pump on one foot and a blue and white sneaker on the other foot.

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?

sketch with three wires with pigeons clustered on them and one pigeon separated from the others.

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).

A red arrow pointing down and left with the word “LIE” above a green arrow pointing up and right with the word “TRUTH.”

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.

Rubber stamp with red borders around the red word WARNING over a white background

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

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