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." 

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.”

When can the U.S. Patent and Trademark Office require you to make a disclaimer in your application to register a mark, what does it mean, and when can you resist doing so? 

SCAM on a slanted red rectangle above ALERT on a horizontal black rectangle

You’re checking your mail and discover an official-looking notice from a “domain registration” company, notifying you that your domain name is about to expire.  If that occurs, says the notice, you could lose your domain and your customers.

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.

Tempting as it may be to adopt a trademark that is the common name for your product, that may not be the best idea because you cannot prevent others from using a word, or a combination of words, that consumers regard as a product name rather than as an indicator of its source.

The Swiss watch maker Wenger S.A. showed how close to the line you can come and still have protectable rights.  It sought to register SWISS MILITARY, which it had used since 1989, as its trademark for “watches of Swiss origin.”

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.

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