Tag Archives: trademark registration

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by the Trademark Trial and Appeal Board (TTAB) in In re California Highway Patrol, SN 88796327 (TTAB Nov. 4, 2021) [not precedential] (CHiP).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

SCOTUS Livestreams Oral Arguments on BOOKING.COM Trademark Registerability

By Deborah A. Wilcox and Christina Moser on May 5, 2020 Posted in Trademark

On Monday, we listened in real time to the livestreamed Supreme Court oral arguments in the trademark registration case United States Patent and Trademark Office v. Booking.com B.V. Because of COVID-19, the arguments were done telephonically, but with the added twist of a live broadcast. The event itself was remarkable, considering the impact of the … Continue Reading

Kanye West Denied Trademark Registration for ‘SUNDAY SERVICE’ Mark

By C. Dennis Loomis on October 23, 2019 Posted in Trademark

Global rap icon Kanye West is one of the most visible and controversial personalities on the contemporary scene. He has long been recognized as one of the best rap creators and performers of his generation. More recently, his prominence has transcended the world of music with his highly publicized embrace of President Donald Trump, making … Continue Reading

New USPTO Rule Will Require Foreign Trademark Owners Be Represented by U.S.-Licensed Attorney

By Katina Banks on July 24, 2019 Posted in Trademark

On Aug. 3, a new regulation promulgated by the U.S. Patent and Trademark Office (USPTO) will take effect and require all trademark applicants, registrants and parties to trademark proceedings that are domiciled outside the United States to be represented by an attorney who has a license to practice law in the U.S. Consequently, individuals and … Continue Reading

Supreme Court Finds Lanham Act Disparagement Clause Unconstitutional Under First Amendment

By Jessica Watkins on June 22, 2017 Posted in Trademark

In a victory for the Asian-American rock band The Slants, the Supreme Court ruled on June 19 that the ban on the registration of disparaging trademarks under Section 2(a) of the Lanham Act violates the First Amendment. The ruling follows a lengthy battle by The Slants as to whether it could obtain a federal trademark … Continue Reading

Protecting a Scent Makes Sense

By Erin Caldwell on May 5, 2017 Posted in Trademark

Although seldom seen in applications or registrations, a scent that identifies the source of a good or service may be eligible for protection as a trademark. Registration of a scent mark carries many of the same requirements that apply to a word mark or a design mark. The scent must be used in commerce.[i] Also, … Continue Reading