View Post

Top Office Actions Refusals and Strategies to Get Your Trademark Application Approved

In Trademarks by Stacey Kalamaras

Have you recently applied for a trademark with the United States Patent and Trademark Office (USPTO) and received an Office Action, and aren’t sure how to respond or what this means?  An Examiner with the USPTO will review your application to make sure it complies with all rules and regulations.  If there are any issues with your application or your …

View Post

The “Scoop” on the TTAB’s Latest Trademark Refusal

In Trademarks by Stacey Kalamaras

Last week the Trademark Trial and Appeal Board denied (in a precedential opinion) the trademark SCOOP on grounds of merely descriptiveness, failure to function as a trademark, and for inadequate specimen provided by the trademark owner.  Since the TTAB opinion was issued as precedential, the details of the opinion provide significant learning and guidelines for all trademark owners and applicants. …

View Post

U.S. Supreme Court Strikes Down “Immoral or Scandalous” Clause as Unconstitutional

In Trademarks by Stacey Kalamaras

On June 24, 2019, in the Brunetti case, a decision consistent with its 2017 Tam decision (read here), the U.S. Supreme Court in a 6-3 decision held that the U.S. Patent and Trademark Office (PTO) could no longer refuse federal registration that “consists of or comprise immoral or scandalous trademarks” holding that such a refusal by the PTO of such …

View Post

USPTO Rule Change Requires U.S. Attorneys Represent Foreign Trademark Applicants

In Trademarks by Stacey Kalamaras

UPDATED SEPTEMBER 23, 2019 On July 2, 2019 the United States Patent and Trademark Office (“USPTO”) formally adopted a new rule requiring that all foreign trademark applicants must be represented by U.S. counsel.  The new rule went into effect on August 3, 2019.  Below, we explain the rationale for the new rule and how it affects foreign trademark owners. Summary Beginning …

View Post

Happy Birthday, America!

In Trademarks by Stacey Kalamaras

Can you use AMERICA in your trademark? Can you use the word “America” in your trademark? Well, the short answer is yes, but you may need secondary meaning. In honor of the Fourth of July, we thought we would post about the trademark rules regarding using AMERICA and AMERICAN in trademarks. When the word AMERICA or AMERICAN appears in a …

View Post

Best Practices for Submitting Trademark Specimens of Use

In Trademarks by Stacey Kalamaras

Last week the Trademark Trial and Appeal Board affirmed the refusal of a specimen for retail store services featuring medical devices,” finding that the specimens the trademark owner submitted were unacceptable to establish a connection between the mark and services. Below, we provide best practices for submitting trademark specimens of use to supports your application. Specimen Refused for “Retail Services” …

View Post

Trademark Application Filing Tips

In Trademarks by Stacey Kalamaras

Remember that just because you can file your own trademark applications doesn’t mean you should. When you file a trademark application, it is the start of a legal proceeding, and as such you may want to have the help and experience of competent trademark counsel to guide you through the process. Numerous reports have found that by hiring trademark counsel …

View Post

Are your blog, website and social media in compliance?

In Advertising by Stacey Kalamaras

My sister, a new small business owner, was surprised to learn that a blog is subject to the regulations of the Federal Trade Commission (FTC) for deceptive advertising.  I realized that she was likely not alone in her lack of understanding that blogs, website copy and all social media posts used to promote your small business are in fact forms …

View Post

What are Generic Trademarks? Can I Register One?

In Trademarks by Stacey Kalamaras

Yesterday, the Trademark Trial and Appeal Board (TTAB) upheld a ruling on a generic trademark, and in the past year or so, a number of generic trademarks have been refused for registration. What is a generic trademark and why can’t a business owner register a generic trademark? To answer that question, it’s important to first understand the different types of …

View Post

U.S. Supreme Court Says Copyright Owners Need a Registration Before Suing

In Copyrights by Stacey Kalamaras

On March 4, 2019, a unanimous U.S. Supreme Court (“SCOTUS”) finally put to rest the split among the Federal Circuits that a copyright owner may file suit once the U.S. Copyright Office registers a copyright.  Previously, some Circuits had allowed lawsuits once an application had been filed with the Copyright Office. Writing for the Court, Justice Ginsberg said that the …