Robert Horowitz

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Marks That Are Opposites Sometimes Attract Refusal of Registration

By Robert Horowitz on December 20, 2022 Posted in Trademark

When considering a likelihood of confusion, one might naturally think a mark is registrable that is an antonym (opposite) of a registered mark. This was not the result in In re Sugar Free Specialties, LLC, Serial No. 90706411 (TTAB Dec. 7, 2022) (not precedential). In Sugar Free Specialties, the applicant sought registration of “SMALL WINS” … Continue Reading

Chicago Cubs score home run in their opposition against a stylized version of the letter “C”

By Robert Horowitz on July 26, 2022 Posted in Trademark

In many countries, marks such as single letters or numerals are considered nondistinctive. This is not so in the US, which has a very broad definition of what comprises a trademark in 15 U.S.C. Section 1127: A trademark is any word, name, symbol, or design, or any combination thereof, used in commerce to identify and … Continue Reading

While CBD is Widely Available, Registering Marks for Ingestibles with CBD is Not

By Robert Horowitz on February 23, 2022 Posted in Trademark

In two recent decisions, the Trademark Trial and Appeal Board (TTAB) made it abundantly clear that attempting to register a mark for ingestibles containing cannabidiol (CBD) likely will be an exercise in futility. In In re Harbor Hemp Company LLC, SNs 88377702 and 88377730 (TTAB Jan. 27, 2022) [not precedential] and In re AgrotecHemp Corp., … Continue Reading

Actual Use, Not Preparations For Use, Of A Service Mark Is Necessary For The USPTO To Register It

By Robert Horowitz on January 4, 2022 Posted in Service Mark, USPTO

If you desire to register a service mark asserting use that is preparatory for the rendering of your services, your application will fail in the U.S. Patent and Trademark Office (USPTO). Instead, the services must be actually rendered in connection with the mark for a registration to be granted. In In re Alessandra Suuberg, SN … Continue Reading

Thinking of Registering a Service Mark That Primarily Benefits Your Company? Think Again

By Robert Horowitz on November 15, 2021 Posted in Trademark, USPTO, USPTO Litigation

If you are contemplating registering a service mark that primarily benefits your company and not others, don’t bother; it will be refused registration. This issue was recently addressed by the Trademark Trial and Appeal Board (TTAB) in In re California Highway Patrol, SN 88796327 (TTAB Nov. 4, 2021) [not precedential] (CHiP). In CHiP, the TTAB … Continue Reading

SY Custom, Inc. v. The Tailory, LLC: How To Fail Proving a Genericness Case Before the TTAB

By Robert Horowitz on August 24, 2021 Posted in Trademark

Recently, the Trademark Trial and Appeal Board (TTAB) decided against a petitioner seeking to cancel a registration on the Supplemental Register in SY Custom, Inc. v. The Tailory, LLC, Cancellation No. 92070568 (TTAB Aug. 12, 2021) (not precedential). The mark involved was THE TAILORY for “custom tailoring or dressmaking.” The case is noteworthy about how … Continue Reading

Good Faith De Minimis Use of a Mark May Defeat a Claim of Trademark Abandonment in the Fifth Circuit

By Robert Horowitz on May 11, 2021 Posted in Trademark

In Perry v. H.J. Heinz Company, et al. (No. 20-30418 5th Cir. April 12, 2021), the U.S. Court of Appeals for the Fifth Circuit dealt with the issue of whether de minimis use can defeat a claim of trademark abandonment. It can, provided that such use is not made in good faith and not simply … Continue Reading

Considering a Common Phrase as a Trademark? Don’t Expect it to be Registrable.

By Robert Horowitz on February 16, 2021 Posted in Trademark

There have been a number of recent Trademark Trial and Appeal Board (TTAB) cases involving phrase marks. In all instances, the phrases have been refused registration not because of descriptiveness or misdescriptiveness of any kind, but because they fail to function as trademarks due to their informational characteristics and widespread use. This blog provides the … Continue Reading

CAFC Holds the Lack of a Property Interest in a Trademark Does Not Prevent the Commencement of a Cancellation Proceeding

By Robert Horowitz on August 10, 2020 Posted in Trademark

The Court of Appeals for the Federal Circuit (“CAFC”), in a 2-1 vote, held in Australian Therapeutic Supplies Pty., Ltd. v. Naked TM, LLC, Appeal No. 2019-1567 (Fed.Cir. July 27, 2020) (accessible at http://www.cafc.uscourts.gov/node/26425), that a property interest in a mark is unnecessary for a cancellation petitioner to establish a statutory right to commence a … Continue Reading

The theory of “trademark neutralization.” What is it and will it likely be adopted in the US?

By Robert Horowitz on November 11, 2019 Posted in Trademark

Have you heard of the theory of “trademark neutralization?” It was developed by the European Union (EU) General Court and the European Union Court of Justice (“CJEU”) in 2006 (Case No. C-361/04 (ECJ Jan. 12, 2005)) holding PICASSO/PICARO not confusingly similar and was followed in Case C-206/04 (ECJ Mar. 23 2006) holding SIR/ZIRH not confusingly … Continue Reading

Is it ‘anything goes?’ – The US expansive view of trademarks supports a wide variety of ‘nontraditional trademarks.’

By Robert Horowitz on April 4, 2019 Posted in Trademark

“Trademark” is broadly defined in Section 45 of the Lanham Act, 15 U.S.C. §1127, as “any word, name, symbol, or device, or any combination thereof” that identifies and distinguishes goods and indicates source. The same definitional breadth applies to service marks, certification marks and collective membership marks. The Supreme Court has supported such breadth where … Continue Reading

Trademark practice tip: Request Interlocutory Attorney attendance at discovery/settlement conferences in opposition proceedings to avoid costs of motions to strike affirmative defenses

By Robert Horowitz on January 29, 2015 Posted in Uncategorized

In trademark opposition proceedings the affirmative defense of failure to state a claim is commonly pleaded, yet it is often an inappropriate affirmative defense. Other affirmative defenses that are severely limited in opposition proceedings include laches (consideration of this affirmative defense is taken as of the time an application is published for opposition purposes, not … Continue Reading