On My Mind Blog https://www.cll.com/OnMyMindBlog Tue, 12 May 2026 16:44:05 -0400 “CHATGPT” Held Merely Descriptive But Nevertheless Registrable as a Mark https://www.cll.com/OnMyMindBlog/chatgpt-held-merely-descriptive-but-nevertheless-registrable-as-a-mark William M. Borchard OnMyMindBlog/chatgpt-held-merely-descriptive-but-nevertheless-registrable-as-a-mark Thu, 16 Apr 2026 09:00:01 -0400 woman holding iphone with chatgpt

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.

]]> GOOD TIMES for Bourbon Trademark https://www.cll.com/OnMyMindBlog/good-times-for-bourbon-trademark William M. Borchard, Louis S. Ederer OnMyMindBlog/good-times-for-bourbon-trademark Thu, 09 Apr 2026 09:00:02 -0400 Good Times Bottle

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.

]]> Marks Have Boundaries in Trademark Proceedings https://www.cll.com/OnMyMindBlog/marks-have-boundaries-in-trademark-proceedings William M. Borchard OnMyMindBlog/marks-have-boundaries-in-trademark-proceedings Thu, 19 Mar 2026 09:00:03 -0400 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.

]]> The U.S. Supplemental Register https://www.cll.com/OnMyMindBlog/the-u-s-supplemental-register William M. Borchard OnMyMindBlog/the-u-s-supplemental-register Thu, 05 Feb 2026 09:00:04 -0500 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?

Hands holding a small sign

]]> Life is Like a Box of “Thank You” Chocolates https://www.cll.com/OnMyMindBlog/life-is-like-a-box-of-thank-you-chocolates William M. Borchard OnMyMindBlog/life-is-like-a-box-of-thank-you-chocolates Mon, 15 Dec 2025 09:00:05 -0500 Do you think that the following marks in German and French, both for chocolate and both meaning “thank you,” are likely to be confused?

DankeMerci

]]> Splitting the Baby in U.S. Trademark Law: The Second Circuit Affirms Trademark Co-Ownership Verdict in Zioness Movement v. The Lawfare Project https://www.cll.com/OnMyMindBlog/splitting-the-baby-in-u-s-trademark-law-the-second-circuit-affirms-trademark-co-ownership-verdict-in-zioness-movement-v-the-lawfare-project Joel Karni Schmidt OnMyMindBlog/splitting-the-baby-in-u-s-trademark-law-the-second-circuit-affirms-trademark-co-ownership-verdict-in-zioness-movement-v-the-lawfare-project Tue, 21 Oct 2025 09:00:06 -0400 In the Old Testament, King Solomon proposed to resolve a dispute between two women who both claimed to be the mother of an infant by declaring that the baby should be cut in two, with each woman receiving half. When one mother immediately objected and begged Solomon to give the baby to the other woman to save its life, Solomon determined that she was the true mother and awarded her custody.  

]]> Services Have Boundaries in Trademark Proceedings https://www.cll.com/OnMyMindBlog/services-have-boundaries-in-trademark-proceedings William M. Borchard OnMyMindBlog/services-have-boundaries-in-trademark-proceedings Thu, 16 Oct 2025 09:00:07 -0400 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.

]]> BOSTON STRONG Fails to Function as a Mark for a Volleyball Team https://www.cll.com/OnMyMindBlog/boston-strong-fails-to-function-as-a-mark-for-a-volleyball-team William M. Borchard OnMyMindBlog/boston-strong-fails-to-function-as-a-mark-for-a-volleyball-team Thu, 21 Aug 2025 09:00:08 -0400 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.

]]> What May Constitute a Trademark “Mutilation” https://www.cll.com/OnMyMindBlog/what-may-constitute-a-trademark-mutilation William M. Borchard OnMyMindBlog/what-may-constitute-a-trademark-mutilation Thu, 08 May 2025 09:00:09 -0400 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?

Verrica word

]]> Trademark’s Zone of Natural Expansion is Defensive Not Offensive https://www.cll.com/OnMyMindBlog/trademarks-zone-of-natural-expansion-is-defensive-not-offensive William M. Borchard OnMyMindBlog/trademarks-zone-of-natural-expansion-is-defensive-not-offensive Thu, 24 Apr 2025 09:00:10 -0400 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?

Money Mart

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