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Category Archives: USPTO

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The USPTO Says “Yes” But the TTB Says “No” To LSD

Posted in Almost Advice, Branding, First Amendment, Idea Protection, Marketing, Product Packaging, Trademarks, USPTO

Government approval of commercial speech has been a hot topic of discussion by trademark nerds here and elsewhere in light of recent decisions regarding the Redskins and The Slants marks.  As those decisions proceed up through the appeal channels to the Supreme Court, attention has been drawn to whether or not a trademark registration certificate… Continue Reading

Hope Springs Eternal – Even for Baseball Trademark Disputes

Posted in Branding, Infringement, Law Suits, Trademarks, USPTO

Across the United States this week, fans rejoiced as baseball returned. Teams took to the diamond and played the first games to count since last year’s World Series. Players, coaches, and fans all turned the page on last season, starting with a clean slate and an undefeated record. But while the players battled on baseball… Continue Reading

Is BETTER BURGER a Done Deal for Chipotle?

Posted in Advertising, Articles, Branding, Food, Idea Protection, Marketing, Squirrelly Thoughts, Trademarks, USPTO

When it comes to a big company’s trademark filings, the publicly available and freely searchable Trademark Office database can provide great fodder for the media. But don’t believe everything you read: an intent-to-use trademark application is far from gospel. Chipotle Mexican Grill, Inc. stoked the flames of speculation with an application for the mark BETTER BURGER earlier… Continue Reading

March Isn’t Just for Madness, It’s For CRAFTNESS

Posted in Articles, Branding, Food, Marketing, USPTO

Here’s hoping your 2016 brackets did better than mine last week, but this has been quite a crazy and exciting tournament thus far.  As a Marquette fan, the Indiana–Notre Dame–Wisconsin area of the bracket has been quite disheartening.  And the buzzer beaters galore this tournament have left many faces looking somewhat like Indiana coach (and… Continue Reading

Scandalous and Disparaging Marks: The Race to the Trademark Office Is On

Posted in Advertising, Branding, Idea Protection, Infringement, Loss of Rights, Non-Traditional Trademarks, Squirrelly Thoughts, Television, Trademarks, TTAB, USPTO

Owners of scandalous, immoral, or disparaging marks are on notice: now is the time to place your $275 bet with the USPTO. And soon, the Trademark Office database may be “NSFW.” Last Thursday, the USPTO issued Examination Guide 01-16 to address the impact of recent federal court decisions on Section 2(a) of the Trademark Act. That section prohibits registration of… Continue Reading

On Protecting “My Pillow” as Your Trademark: They Say, When You Make Your Bed, You Might Just End Up Sleeping in It

Posted in Advertising, Articles, Branding, Marketing, Trademarks, USPTO

We had some great questions from the audience during the Mastering U.S. Trademark Registration Practice seminar in Minneapolis a few weeks ago. During the session on genericness, someone asked about MyPillow, expressing amazement that it could be federally-registered. Having now seen the MyPillow television advertisement probably a dozen times since then, I’ve finally gotten around… Continue Reading

Primarily Merely a Drumpf

Posted in Branding, Social Media, Social Networking, Television, Trademarks, USPTO

This presidential election cycle has been nothing if not entertaining.  Mr. Trump has been a particular favorite among late night T.V. hosts. In one particular 20-minute monologue, Last Week Tonight host John Oliver berated the Donald, and in doing so, brought to light a historical quirk of the Trump name.  It would seem that the… Continue Reading

Consent or Not, No Trademark Registration for Brewer’s TIME TRAVELER BLONDE Mark

Posted in Agreements, Almost Advice, Branding, Product Packaging, Trademarks, TTAB, USPTO

When an application has been refused registration in view of another’s prior filed mark, one way to resolve the issue is through a consent agreement wherein the registrant consents to the registration and the parties set out the reasons why the parties believe that there is no likelihood of consumer confusion between the marks.  A… Continue Reading

Are Registrations for Product Configuration Trademarks for Suckers?

Posted in Fair Use, Famous Marks, Food, Idea Protection, Infringement, Non-Traditional Trademarks, Product Configurations, Trademarks, USPTO

As a kid, I loved candy. But as an adult, who happens to be an intellectual property attorney, I still love candy. So you can bet your sweet tooth that I was feeling a sugar rush when I came across a pending application to register the claimed mark shown below: The application was filed by… Continue Reading

Dude, It’s Gotten GNARLY for Beer and Wine

Posted in Agreements, Almost Advice, Branding, Infringement, Marketing, Product Packaging, Trademarks, TTAB, USPTO

Trademark issues regarding breweries and wineries are increasingly intertwined as both breweries and wineries grow, flower, and spread out throughout the country.  I have talked before about the issues relating to a perceived likelihood of confusion between marks on beer used by breweries and marks on wine used by wineries (see here, here, and here)…. Continue Reading

The Strategic Use of TTAB Proceedings to Advance Trademark Registration Efforts

Posted in Almost Advice, Articles, Trademarks, TTAB, USPTO

Yesterday we wrote about how petitions for partial cancellation under Section 18 of the Lanham Act can be creative and powerful tools when an applicant is confronted with likelihood of confusion registration refusals under Section 2(d), based on over-broad federal registrations. Today, we’re speaking about this important tool that should be found in any trademark… Continue Reading

Thinking Outside Section 2(d) Refusals

Posted in Articles, Infringement, Loss of Rights, Trademark Bullying, Trademarks, TTAB, USPTO

Section 2(d) of the Trademark Act is the statutory basis for refusing registration based on likelihood of confusion with another mark. It is invoked on an ex parte basis by USPTO Examining Attorneys, and it is also raised in the context of inter partes cases between adversaries. When an applicant seeking to register its mark… Continue Reading

Snoop Dogg’s Branded Cannabis Among the First, But the Stakes Will Get Higher

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

–Jason Voiovich, Chief Customer Officer, Logic PD Who among you is surprised that Snoop Dogg was among the first to create his own marijuana brand? Or that the distinguished list of early entrants includes Willie Nelson and Melissa Etheridge? Like me, you are probably not shocked. Recreational marijuana is “legal” in four states. Medicinal use… Continue Reading

Watch the Informational Refusals, Please!

Posted in Advertising, Articles, Audio, Branding, Look-For Ads, Marketing, Non-Traditional Trademarks, Sound, Trademarks, USPTO

Let’s suppose you conduct sightseeing tours using a tram car, maybe on the boardwalk in New Jersey. Maybe even a famous tram car service you’ve operated since 1949? Let’s further suppose your passengers may get on or off anywhere along the route, as it travels along Wildwoods Boardwalk. Would you think you could own a… Continue Reading

Will USPTO Director Michelle Lee’s Signature Adorn a SLANTS Certificate of Registration?

Posted in Articles, Branding, Copyrights, Trademarks, TTAB, USPTO

Let’s hope not, for a variety of reasons. In other words, let’s hope the Supreme Court straightens out the unfortunate ruling last week that the federal government is powerless to deny requests to federally register marks on grounds that they consist of or comprise racial slurs or other matter that may disparage persons. The CAFC… Continue Reading

Did the Federal Circuit Just Save the Redskins’ trademark registrations?

Posted in First Amendment, Trademarks, USPTO

Yesterday the Federal Circuit issued its decision in In re Tam, an appeal filed by a musician whose application to register the mark THE SLANTS had been refused registration on the ground that it was disparaging to Asian Americans. The Trademark Trial and Appeal Board (TTAB) relied on the same provision to cancel the registrations… Continue Reading

Jelly Belly Seeks Registration of Candy Shape

Posted in Articles, Branding, Food, Look-For Ads, Marketing, Non-Traditional Trademarks, Product Configurations, Sight, Trademarks, USPTO

Last week Jelly Belly Candy Company filed a non-traditional trademark application with the USPTO to federally register the shape of its Jelly Belly candies. The claimed mark is drawn like this: And, described like this: “The mark consists of a candy having a rounded squat kidney-like shape, with one longer side being a continuous arc… Continue Reading

Another Cliche Color Trademark Calamity?

Posted in Advertising, Articles, Branding, Fashion, Goodwill, Infringement, International, Law Suits, Marketing, Non-Traditional Trademarks, Product Packaging, Sight, Technology, Trademark Bullying, Trademarks, USPTO

Techdirt is crying foul (again) and this time, wrapping the “trademark bully” mantle around the magenta-colored neck of the T-Mobile brand for enforcing its color trademark against OXY. While I certainly don’t have the details of the dispute (and it appears Techdirt doesn’t either), and OXY hasn’t produced the actual demand correspondence, given the distinctiveness… Continue Reading

Samsung Seeks an Edge in Smart Phone Wars through Federal Registration

Posted in Infringement, Non-Traditional Trademarks, Product Configurations, Technology, Trademarks, USPTO

For years, Samsung and Apple have battled over intellectual property rights associated with each party’s smart phones. Apple sued Samsung in 2011 and the jury found that Samsung had infringed Apple’s trade dress, design patents, and utility patents. On May 15, 2015, the Federal Circuit upheld the findings regarding infringement of design and utility patents,… Continue Reading

PATRÓN Tequila Bottle Design Enforcement?

Posted in Advertising, Articles, Branding, Dilution, Famous Marks, Infringement, Marketing, Non-Traditional Trademarks, Product Packaging, Sight, Trademarks, TTAB, USPTO

When we write about non-traditional trademark enforcement here on DuetsBlog, we almost always are referring to the protection of non-traditional marks like product configurations, product containers, product packaging, color marks, scent marks, tactile marks, and other non-verbal indications of source for a product or service. But, today we’re adding a little twist to our normal… Continue Reading

Imitating MILANO Cookies? Pepperidge Farm Remembers.

Posted in Articles, Branding, Dilution, Fair Use, Famous Marks, Food, Infringement, Look-For Ads, Marketing, Non-Traditional Trademarks, Product Configurations, Product Packaging, Taste, Trademarks, USPTO

When a company puts “DISTINCTIVE” on its own packaging, its usually a sign that it highly values its trade dress and product configuration rights. That’s certainly the case for Pepperidge Farm and its Milano cookies. The commercial bakery giant has taken aim at Trader Joe’s, the popular grocery chain, for selling house-branded “Crispy Cookies” that… Continue Reading