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Category Archives: USPTO

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Trolling for an Inventive Method for Patent Enforcement

Posted in Genericide, Idea Protection, Infringement, Law Suits, Loss of Rights, Patents, SoapBox, Squirrelly Thoughts, Technology, USPTO

In the wake of Jon Stewart and Stephen Colbert leaving their respective shows on Comedy Central for newer pastures, John Oliver has emerged as a new beacon of political humor and satire.  If you haven’t watched his show, and especially if you considered the former two as having an obvious political slant, you should check… Continue Reading

Big Green Egg on Hunt for TM Registration

Posted in Advertising, Articles, Branding, Marketing, Non-Traditional Trademarks, Patents, Product Configurations, Sight, Trademarks, USPTO

As it turns out, four days after Easter, the USPTO refused registration of the Big Green Egg’s claimed exclusive rights in the shape and color of its popular barbecue smoker and grill: As you will recall, we wrote about this product configuration trademark application, back in December of last year. Here are the challenges raised… Continue Reading

Coke Walks Tightrope in ZERO Branding

Posted in Articles, Branding, Food, Genericide, Infringement, Law Suits, Loss of Rights, Marketing, Trademarks, TTAB, USPTO

As you may recall, last September we wrote about Coca-Cola’s Significant Interest in Zero Marks, discussing Coca-Cola’s defense of a trademark infringement suit brought by an individual named Mirza Baig, who claimed rights in “Naturally Zero” for Canadian natural spring water, and Coca-Cola’s contrasting attempts to own and federally-register various marks containing the term ZERO… Continue Reading

Bringing Down the Bauhaus for Trademarks?

Posted in Advertising, Almost Advice, Articles, Branding, Loss of Rights, Marketing, Non-Traditional Trademarks, Product Configurations, Trademarks, TTAB, USPTO

We’ve been spilling a lot of digital ink lately on the topic of non-traditional trademark protection and how the functionality doctrine serves as an absolute bar for such protection. As you know, for some time, we’ve been stressing the importance of close collaboration between trademark and marketing types when it comes to forming public communications… Continue Reading

On Unintended Consequences: Will the B&B SCOTUS Ruling Encourage Trademark Bullies?

Posted in Almost Advice, Articles, Branding, Civil Procedure, Infringement, Law Suits, Trademark Bullying, Trademarks, TTAB, USPTO

Last week, while I was preparing for and had the unique opportunity of arguing a real, live TTAB final hearing on the merits, outside the TTAB’s typical oral hearing location (because it was selected by the TTAB to be part of the ABA’s IPLSpring continuing education conference in Bethesda, Maryland), the Supreme Court issued its… Continue Reading

Actually Resisting the Temptation to Tout Function and Hopefully Own a Trademark

Posted in Advertising, Almost Advice, Articles, Branding, Loss of Rights, Non-Traditional Trademarks, Patents, Product Configurations, Product Packaging, Sight, Technology, Trademarks, TTAB, USPTO

Continuing our ramp up toward the launch of our Strategies for Owning Your Product Designs webinar next week, I’ve been thinking a lot about the Morton-Norwich factors — the common analysis for determining whether a product design or feature can be owned as a trademark or whether it is functional and part of the public… Continue Reading

Fear the Brow, or Fear the Trademark Specimen?

Posted in Advertising, Branding, Famous Marks, Fashion, Infringement, Loss of Rights, Social Media, Trademarks, TTAB, USPTO

Celebrity has its advantages in the trademark world. Slogans and taglines are big business for famous athletes, which in turn has led to some entertaining trademark applications: JOHNNY FOOTBALL and LINSANITY, to name a couple. As Martha noted in 2012, Anthony Davis sought to capitalize on his distinctive appearance and “The Brow” nickname with four… Continue Reading

Easy as 1, 2, 3, 4, 5 — and Functional Too?

Posted in Articles, Non-Traditional Trademarks, Product Configurations, Sight, Trademarks, USPTO

Welcome to another edition of newly filed configuration trademark applications at the USPTO, here is the latest; it is quite a specimen: The question for the day though is whether the claimed mark actually functions as a trademark to indicate that the goods come from a single source. The claimed mark is described this way:… Continue Reading

Single-Letter Trademark Battles: Who Gets the W for “W”?

Posted in Advertising, AlphaWatch, Articles, Branding, Fair Use, Infringement, Social Media, Trademark Bullying, Trademarks, TTAB, USPTO

How much trouble can a double-U make?  If you’ve been following this blog over the years, you know the answer: quite a lot. This blog has written extensively on the trials and tribulations that may accompany single-letter trademark applications, and the letter “W” in particular.  You may then conclude, quite correctly, that a whole lot… Continue Reading

Deck Stacked Against HOUSE OF CARDS

Posted in Television, Trademarks, USPTO

No spoilers here, I promise.  Like many Americans since it was released on Friday, I’ve been binge-watching Season 3 of House of Cards.  If you haven’t watched the program, available only on Netflix, it’s a riveting drama of political intrigue with stellar acting featuring Kevin Spacey and Robin Wright.  The promise of another House of… Continue Reading

All-Star Tips To Avoid Infringement Litigation

Posted in Agreements, Branding, Counterfeits, Famous Marks, Fashion, Infringement, International, Trademarks, USPTO

Shoes are always in the news. From a fashion standpoint, Nike has made headlines this week, with a re-release of the Classic Cortez running shoe (aka, the Forrest Gump shoe) along with the second edition of the LeBronald Palmer.  And yes, the LeBronald Palmer is exactly what it sounds like, LeBron James creating a shoe… Continue Reading

The NORTH STAR Guides One to Trademark Issues

Posted in Trademarks, USPTO

Minnesota is known as the North Star State – L’Étoile du Nord.  The state of hipsters, unique dining experiences, bitter cold winters, gorgeous summer nights, and fantastic craft brewers also has an impressive craft cocktail scene.  One of its stars has been Johnny Michaels, formerly barman at La Belle Vie, a restaurant that is consistently… Continue Reading

Trademarks That Violate Public Policy

Posted in Articles, Branding, First Amendment, Law Suits, Marketing, Trademarks, TTAB, USPTO

As our friend John Welch reported last week, the place to be on March 10, 2015, is Washington, D.C., at the 25th Annual “PTO Day,” sponsored by the Intellectual Property Owners Association: John will be part of the panel update on TTAB practice, and I’ll be providing the overview of Section 2(a) of the Lanham… Continue Reading

Samsung Boards Brandverbing Bandwagon

Posted in Advertising, Articles, Branding, Genericide, Loss of Rights, Marketing, Technology, Trademarks, USPTO

Samsung appears to be the most recent brand to board the brandverbing bandwagon with its Galaxy Note 4 advertising campaign, asking the critical question: Do You Note? Samsung has federally-registered in the U.S. the trademark GALAXY NOTE for smart phones, mobile phones, and tablet computers — note the absence of a disclaimer of NOTE, meaning… Continue Reading

Get to the Chopper: A Service Mark on a Helicopter?

Posted in Advertising, Branding, Marketing, Non-Traditional Trademarks, Product Configurations, Television, Trademarks, USPTO

When a business uses its trademark in connection with an ordinary billboard advertisement, should it try to register the billboard as another trademark unto itself?  I venture that nearly every trademark attorney would say no.  But what if the billboard was a helicopter? MedLegal Network, out of Santa Monica, California, promotes personal injury and worker’s… Continue Reading

The Controversial SAWS of “Justice”

Posted in Articles, Patents, Trademarks, USPTO

What if the Trademark Office took Taylor Swift’s controversial new trademark applications and stalled examination of them, preventing them from getting approved, despite having no legitimate basis to refuse their registration, because of the potential for public scrutiny? Taking that a step further, what if there was an unregulated government program that in cases like… Continue Reading

Lights Shining On Configuration Trademarks?

Posted in Articles, Branding, Marketing, Non-Traditional Trademarks, Product Configurations, Sight, Trademarks, USPTO

As our loyal readers know, we love bringing non-traditional trademarks within your sights for consideration, even if they’re hanging from the ceiling, so here’s another to explore:                   The claimed mark is described as “a three-dimensional configuration of a chandelier having three sides and 10 globes. The… Continue Reading

Would You Feel Friendly Toward Freddy?

Posted in Articles, Branding, Food, Infringement, Marketing, Trademark Bullying, Trademarks, USPTO

As the brand manager or trademark counsel for Friendly’s, would you be friendly toward Freddy’s? I remember the Friendly’s restaurant chain when we lived in Columbia, Maryland, back in the days when I clerked for a Senior Judge on the Court of Appeals for the Federal Circuit in Washington, D.C., so at my first sighting… Continue Reading

BLACKHAWK Down: Registration Refused Based on Relatedness of Wine & Beer

Posted in Squirrelly Thoughts, Trademarks, TTAB, USPTO

While the Minnesota state legislature ponders whether consumers should be able to purchase liquor on Sundays within the state, the U.S. Trademark Trial and Appeal Board (TTAB) has once again concluded that consumers are likely to be confused that beer sold under one mark comes from the same source as wine (or another liquor) sold… Continue Reading

As the Trademark Fraud Pendulum Swings

Posted in Articles, Law Suits, Trademarks, TTAB, USPTO

Once upon a time, and for decades thereafter, trademark fraud claims were highly disfavored. They were criticized as unproductive litigation diversions — “often pled,” but “rarely proven.” To succeed — during that lengthy period of time — the alleged fraud had to be “proven to the hilt,” with “clear and convincing evidence,” leaving nothing to… Continue Reading

Topics of Conversation for Your College Football Playoff Party

Posted in Branding, Famous Marks, Goodwill, Guest Bloggers, Marketing, Mixed Bag of Nuts, Trademarks, TTAB, USPTO

- Draeke Weseman, Weseman Law Office, PLLC On Monday, the University of Oregon and The Ohio State University will play in college football’s first College Football Playoff championship game. DuetsBlog has previously covered the trademark issues surrounding BCS Properties’ attempt to register College Football Playoff as a trademark in connection with college football playoff games… Continue Reading

Apple Turnover Trade Dress Totally Flipped

Posted in Articles, Food, Law Suits, Loss of Rights, Non-Traditional Trademarks, Product Configurations, Sight, Trademarks, USPTO

As if we all haven’t already indulged a little too much over the holidays, we chose our first day back to write about non-traditional trademark protection for the configuration of single-serving apple pie pastries. It’s OK, don’t worry, if the Blossom pastry to the left is tempting, you always can get back on track tomorrow!… Continue Reading