On My Mind Blog

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).

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?

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.

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.

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.

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.