On My Mind Blog

To be registrable, a trademark must identify and distinguish an applicant’s goods from those of others and indicate the source of those goods.

When an Examining Attorney or an opposer challenges a phrase on the ground that it fails to function as a trademark, the burden is on the challenger to prove the phrase is merely informational or is a common phrase (ordinarily used in the industry).  We previously covered this in “Refuting a ‘Failure to Function’ Refusal to Register a Trademark” concerning a case in which the Trademark Trial and Appeal Board (TTAB) reversed an Examiner’s failure-to-function refusal to register MAKE YOUR PASSION YOUR PAYCHECK for clothing.

The Pennsylvania State University v. Vintage Brand, LLC, No. 4:21-cv-01091 (M.D. Penn. Nov. 19, 2024) is an important case.

This case concerns whether or not a trademark owner’s rights are infringed when its trademarks are used without authorization on merchandise for consumers to express their allegiance to the institution or brand.  This issue is significant for academic institutions, sports teams, motion picture studios, and others who offer services and who also sell or license merchandise displaying their trademarks.

This article is about a 2024 decision by the U.S. Court of Appeals for the First Circuit arising out of the “trial of the century” in 1892 in which a jury acquitted Lizzie Borden of all charges that she had murdered her father and stepmother.  This sparked the rhyme,

Lizzie Borden took an axe
And gave her mother forty wacks
And when she saw what she had done
She gave her father forty-one.

A bed and breakfast named “Lizzie Borden House” is operated in Fall River, Massachusetts by US Ghost Adventures, LLC.  Ghost Adventures also provides ghost tours, and it owns incontestable federal service mark registrations for “restaurant and hotel services” of the name LIZZIE BORDEN and of a notched hatchet blade design.