A frequently asked question in my practice is what filing basis should our company rely on in applying for a U.S. trademark application. As many readers may know there are multiple filing bases and to learn more about the basic information for each filing basis, please review our web page…
A recent decision from the U.S. Court of Appeals from the Federal Circuit (“CAFC”) reminds trademark owners that adopting marks that are merely descriptive may require a high level of proof to register on the Principal Register. See In re JC Hospitality LLC, Appeal Nos, 2018-2048 and 2018-2049 (Fed. Cir.…
American University (“Petitioner”), a college located in Washington, DC filed a petition with the Trademark Trial and Appeal Board (the “Board” or “TTAB”) to cancel the mark AUK American University Of Kuwait & Design for educational services for college level courses. The grounds for cancellation were likelihood of confusion and…
The Trademark Trial and Appeal Board (the “Board” or “TTAB”) recently reversed a refusal to register a mark on the grounds of likelihood of confusion. See In re Marathon Tours, Inc., Serial No. 86086458 (January 23, 2020) [not precedential]. In this case, it was a bit surprising that the Board…
In a recent Trademark Trial and Appeal Board (the “Board” or “TTAB”) decision a refusal is reversed based on the second DuPont factor. On the last day of December 2019, the Board issued a decision stating that the “related services doctrine (services provided in connection with the same goods) has…
In a recent Trademark Trial and Appeal Board (the “Board”) decision the Board granted the petition in part for partial cancellation for the mark POLO GIRL for the following services, “[e]ntertainment in the nature of ongoing television programs in the field of polo sports events, and polo lifestyle in International…
As of August 3, 2019, all trademark applicants that are foreign domiciled must have a U.S. licensed attorney file its trademark applications at the United States Patent and Trademark Office (“USPTO”), and act as its representative at the Trademark Trial and Appeal Board (“TTAB” or “Board”). This rule also applies…
In a recent case decided in November 2019, the Trademark Trial and Appeal Board (the “Board” or the “TTAB”) sustained an opposition filed by Baccarat S.A. on various grounds including likelihood of confusion. The applicant was seeking to register the mark BACCARAT in standard characters for alcoholic beverages, namely vodka.…
Section 18 of the Trademark Act (15 U.S.C. §1068) provides a plaintiff with a basis to restrict or limit the goods or services in a registration based on grounds of likelihood of confusion. Section 18 applies to inter partes proceedings. It is unclear as to whether Section 18 would also…
In a recent reversal by the Board, emphasis was placed on the importance of du Pont factor number six; see In re Simpson Industries, Inc., Serial No. 87635385 (October 7, 2019) [not precedential]. This likelihood of confusion factor, the number and nature of similar marks in use on similar goods,…