A 'trademark' is a legal term that represents the source of a product or service and includes any name, brand, packaging, logo and sound that causes the consumer to associate the good/service with the source.  Many businesses seek to formerly register their marks through the United States Patent and Trademark Office to enhance the value and geographic reach of their mark(s) through the fifty states and US territories Read More

Key Points A merely descriptive mark is one which the mark is deemed to be merely descriptive of the specified goods and services.   Such marks are not registrable on the Principal Register but they may be registered on the Supplemental Register.  They may later be registrable on the preferred Principal Register upon a showing of acquired distinctiveness. However, the USPTO’s requirements for meeting this showing to Read More

So the applicant for registration of a trademark has met the threshold requirements:  1) there is no likelihood of confusion with existing marks; 2) the mark is not merely descriptive of the goods/services; and 3) the mark is not generic.  Will the mark be registered? Not always.  One registration requirement that many find confusing is the USPTO’s specimen requirement.  A specimen is documentary proof showing how Read More

The Moral of the Blog:   Perhaps one of the most misunderstood requirements for obtaining and maintaining the registration of a service or trademark is that the mark’s recited services/goods must be being offered in commerce to maintain a viable registration.  Otherwise, the registered mark is subject to cancellation by the USPTO as this blog discusses. A Little Personal Background.  Wolfie Read More

Background & Current Issues.  Trade secrets have historically been an outlier in the area of intellectual p This blog, part 1 of a 2-part series on the cancellation of federally registered trademarks, focuses on the cancellation of registered trademarks by operation of law.  The maintenance of federally registered trademarks should be part of a strategic planning approach for protecting and enhancing the value of Read More

Take Home Points A distinctive registered trademark can become generic over time meaning it is no longer protectable as a registered mark. Such a mark can also be subject to cancellation. Ceasing the opportunity to overcome negative press can alleviate bad press in the court of public opinion. In 1978, the trademark TACO JOHN’S  was registered with the USPTO.  In 1989, the owner of the TACO JOHN’S mark Read More

The blog provides a detailed analysis of the U.S. Supreme Court’s June 29, 2023 decision in Abitron Austria v. Hetronic International, a case which involves international trademark rights.   Justice Sotomayer’s concurrence, reading more like a dissent, is, in this commentator’s opinion, the correct legal application of the Lanham Act. Quick Overview of Abitron’s Take Home Points: More than ever before, trademark Read More

Key Points:  Product packaging and product design may qualify for trademark protection as trade dress. However, different sections of the Lanham Act apply. Product packaging may be granted trademark registration under the Lanham Act on inherently distinctive grounds if the other requirements for trademark registration are met. A product design may be granted trademark registration under Section 2f of the Lanham Act Read More