• 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 ...

The Zeta Tau Alpha Sorority, which dates back to 1898 and is popularly known as ZTA, was refused registration of ZTA for jewelry (claiming use since at least 1915) and clothing items (claiming use since at least 1940), despite its ownership of an existing 2001 registration of this mark for association services, because of a 2020 registration of ZTA for a variety of housewares and kitchen items owned by a Chinese company (claiming use since 2019).  The Trademark Trial and Appeal Board (TTAB) affirmed this refusal.  Why did this happen, and how can you avoid the same result?

Bottle labeled as “Electrolyte Salt High Performance Rehydration” dietary supplement tablets below the trademark SuperSalt with Super in white letters and Salt underlined and in green letters

A trademark combining two words may evoke its own unique commercial impression—separate from the meanings of its component words--and be inherently registrable as a unitary term.  But if each component word is merely descriptive or laudatory, the combination mark may retain the same meaning as its component words and may not be registrable on the Principal Register (which is for marks that are inherently distinctive) unless the mark has acquired a source identification distinctiveness (called “secondary meaning”).

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).

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.

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