• Posts by William Borchard
    Counsel

    Bill advises on domestic and international trademark matters at the highest level.  His practice consists of counseling clients and handling domestic and international trademark and copyright matters including clearance ...

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?

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?

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." 

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.”

In choosing a mark or its form of display, do not mimic a distinctive famous mark.  If your mark is likely to dilute the famous mark’s distinctiveness by blurring or tarnishment, you may be prevented from registering, or even using, your similar mark regardless of the purpose of your mark, the goods or services for which it is to be used, or a lack of likely confusion.

A phrase sometimes can be registered as a trademark even though it also conveys a message.

 Book cover displaying the name Lori Allen, her picture, SAY YES TO WHAT’S NEXT, and How to Age with Elegance and Class While Never Losing Your Beauty and Sass

The U.S. Patent and Trademark Office (USPTO) rejects many applications to register a phrase as a trademark on the ground that the phrase fails to function as a trademark because it is merely informational or is a well-recognized and widely used concept or sentiment that would not be understood by the public to be a source indicator.

Posted in Trademarks

If you adopt a recognized or widely used concept or sentiment as your trademark, don’t expect to have the exclusive right to use it or to register it even if you use it in a traditional trademark manner.

Whether an ordinary purchaser would think so in the real world was not relevant to this trademark registrability analysis.

Posted in Trademarks

If you are thinking of registering a variation of a famous trademark for use as your own mark, think again.

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