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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. …

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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 …

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

In Trademarks by Stacey Kalamaras

Last week on July 2, 2019 the United States Patent and Trademark Office formally adopted a new rule requiring that all foreign trademark applicants must be represented by U.S. counsel.  The new rule goes into effect on August 3, 2019.  Below, we explain the rationale for the new rule and how it will affect foreign trademark owners. Summary Beginning August …

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Happy Birthday, America!

In Trademarks by Stacey Kalamaras

Can you use 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 trademark, the mark will likely be refused as either …

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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. Specimen Refused for “Retail Services” We have written many times that poor specimens are among the most common objections to …

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Trademark Application Filing Tips

In Trademarks by Stacey Kalamaras

Remember that just because you can file your own trademark application 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 …

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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 …

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How to Protect Your Trademark

In Trademarks by Stacey Kalamaras

Trademarks are valuable intellectual property assets in that they are the only form of intellectual property that effectively has no term.  Although trademarks must be renewed every ten years, so long as a trademark is properly used in interstate commerce in connection with its registered goods and/or services, a trademark can be active for as long as it is in …

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Top 10 Trademark Questions Answered – Part 3

In Trademarks by Stacey Kalamaras

Over the past two weeks, we have highlighted six tips based on questions we are most frequently asked.  This week we wrap up our three-part series and discuss issues like how to properly use and enforce trademark rights. If we didn’t answer your most frequently asked question, please visit our FAQs on our website or contact us for more information. …

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#COVFEFE Does Not Function as a Trademark

In Trademarks by Stacey Kalamaras

Who can forget when President Trump made this tweet: “Despite the constant negative press covfefe”?  No one knew what it meant, and the tweet became instantly infamous. That same day, May 31, 2017, an enterprising trademark applicant, filed a U.S. trademark application for #COVFEFE in Class 25 for hats; T-shirts, and other clothing items; however, last week the Trademark Trial …