Tag Archives: TTAB

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

Photo of Robert HorowitzBy Robert Horowitz on 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 In In re Harbor Hemp Company LLC, SNs 88377702 and 88377730 (TTAB Jan. 27, 2022) [not precedential] and In re AgrotecHemp Corp., … Continue Reading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

Photo of Robert HorowitzBy Robert Horowitz on 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

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by the Trademark Trial and Appeal Board (TTAB) in In re California Highway Patrol, SN 88796327 (TTAB Nov. 4, 2021) [not precedential] (CHiP).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

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

Photo of Robert HorowitzBy Robert Horowitz on 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

The Federal Circuit Weighs In on Evidentiary Considerations for Famous Marks and Analyzes Third-Party Usage

Photo of Jason OliverBy Jason Oliver on Posted in Trademark
The Court of Appeals for the Federal Circuit recently held that the Trademark Trial and Appeal Board (TTAB) erred in concluding that there is no likelihood of confusion between Omaha Steaks International’s registered trademarks and Greater Omaha Packing Company’s (Greater Omaha) GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF trademark. Most significantly, the Federal Circuit held … Continue Reading

Registration of “Phantom Marks” Denied

By Charlie Lyu on Posted in Trademark
“Phantom marks” are trademarks that contain a variable element, such as the mark T.MARKEY TRADEMARK EXHIBITION 2***, in which the asterisks represent elements that change to indicate different years. Trademark Manual of Examining Procedure (TMEP) § 1214.01 (Apr. 2017). While a phantom mark refusal would not be necessary in this example, the Trademark Office generally … Continue Reading

New TTAB Rules of Practice

By Jessica Watkins on Posted in Trademark
On Jan. 14, 2017, the Trademark Trial and Appeal Board (TTAB) Rules of Practice were amended in what the United States Patent and Trademark Office described as an effort “to benefit the public by providing for more efficiency and clarity in inter partes and ex parte proceedings.” The first such amendment in roughly nine years, … Continue Reading

TTAB Retreats From Precedential Houndstooth Mafia Decision

Photo of Jacqueline LesserBy Jacqueline Lesser on Posted in Trademark
Trademark proceedings are contentious proceedings, but the battle for registration of the HOUNDSTOOTH MAFIA trademark has been largely overshadowed by the now-ended dispute between the Trademark Trial and Appeal Board (TTAB) and the reviewing U.S. District Court for the Northern District of Alabama. After a three-year struggle, the TTAB vacated The Board of Trustees of … Continue Reading

Favoring a Holistic Approach, the Federal Circuit Overturns TTAB Decision to Refuse Paw Print Logo

By Maryanne Stanganelli on Posted in Uncategorized
Last week, the United States Court of Appeals for the Federal Circuit reviewed a TTAB decision that had refused outdoor apparel company Jack Wolfskin’s application to register its paw print logo. Jack Wolfskin Ausrustung fur Draussen GmBH & Co. KGaA v. New Millennium Sports SLU, 14-1789 (Fed. Cir. August 19, 2015). New Millennium Sports SLU … 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

Photo of Robert HorowitzBy Robert Horowitz on 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
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