On My Mind Blog

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.

We previously wrote that boundaries exist in trademark proceedings where the marks are similar but the services differ (“Services Have Boundaries in Trademark Proceedings.”)  Correspondingly, whether or not the goods or services are similar, boundaries exist where the marks differ, even when the complainant’s mark is famous.

What is the Supplemental Register in the U.S.?  Why apply to register a mark on the Supplemental Register?  Can a registration on the Supplemental Register block the registration of a confusingly similar mark?

Do you think that the following marks in German and French, both for chocolate and both meaning “thank you,” are likely to be confused?

In order to succeed in challenging the registration of a service mark on the ground that it is likely to cause confusion with your identical or similar mark, you must show that the respective services overlap, are complementary, or at least are within the zone of natural expansion of your services.

The Trademark Trial and Appeal Board (TTAB) affirmed the refusal of an intent to use application to register BOSTON STRONG as a service mark for entertainment services related to volleyball and to sporting events in general.  This decision was based on the ground that this alleged mark fails to function as a source indicator because it consists of a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.

If an element of a composite mark does not present a separate and distinct commercial impression, an application to register that element is said to be a “mutilation” of the mark and cannot be separately registered.

Does the initial letter in the following mark create a separate and distinct commercial impression?

The first user of a mark for particular goods or services has superior rights against a subsequent user of the same or similar mark for any goods or services that purchasers might reasonably expect to be within the normal expansion of its business.

But can the first user register its mark for goods or services in its zone of natural expansion after an intervening user has used the same or a similar mark for those goods or services?