On My Mind Blog

The U.S. District Court for the Central District of California (Court) reversed a decision by the Trademark Trial and Appeal Board (TTAB), which had affirmed a ruling by the U.S. Patent and Trademark Office (PTO).  Unlike the lower tribunals, the Court held that SPECTACLES is not generic for “smart glasses,” although the Court held that this term is “highly descriptive” of these goods.

In a detailed 60-page opinion, the Court explained the differences between generic names and descriptive trademarks.  The Court concluded that the evidence in this case, particularly the traditional Teflon survey evidence, failed to support the genericism determinations reached by the TTAB and the PTO.

At one time, retail store activities were not considered “services” when the store sold only its own goods.  Today, however, the name of a retail store, whether brick-and-mortar or online, may be considered a service mark despite its sale of only its own goods.

Is WHOLESALEHOME merely descriptive of a “cloth for wiping or dusting” sold at wholesale through the internet, or is it registrable with a meaning distinct from its elements?

Is the word DAILY a merely descriptive component of the service mark DAILY MIND for “mental health services” offered with a daily frequency, or is DAILY MIND a registrable unitary mark with a meaning distinct from its elements? 

Sometimes a company feels that another trademark owner is pressuring it excessively to drop the company’s application to register its trademark or to change to a different trademark.  This may provoke the defense that the company is the victim of “trademark bullying,” and that the trademark owner should not get the relief it seeks because of its unclean hands.  Will this defense work?

If a mark is in active use only by your operating company, but a registration of the mark is owned by its subsidiary, special steps may be necessary to register that mark, or even to preserve your exclusive rights in it.

Specimen of Hex-Shaped Dice Box

The U.S. Patent and Trademark Office (USPTO) generally refuses to register the configuration of a product as a trademark when that the configuration either is functional or does not identify a single source.  The Trademark Trial and Appeal Board (TTAB) usually affirms that refusal.

In the unusual case discussed below, the USPTO approved a configuration trademark.  That application was opposed upon publication, but the TTAB dismissed the opposition.  This case is instructive as to how to succeed in registering a product configuration trademark under appropriate circumstances.

About nine years ago, we posted a blog about “How a company name can be a trademark.”  Now, the Trademark Trial and Appeal Board (TTAB) has again clarified the reverse--a trade name used solely as a company designation cannot be registered as a trademark.

A previous Blog post discussed “How to Preserve U.S. Rights in a Registered Trademark that is Not in Use.”  

Now, a precedential decision by the Trademark Trial and Appeal Board (TTAB) is instructive as to the reverse—how to cancel a U.S. registration for an abandoned trademark.

The Trademark Trial and Appeal Board (TTAB) appears to have increased the standard of evidence to support a refusal to register a slogan as a trademark, on the ground that it fails to function as a mark.

Merely offering your goods under a trademark on a website or in a store is insufficient to support an allegation that you have used your trademark in U.S. commerce for a trademark application.  You must actually sell or transport the goods bearing the mark to an unrelated party through U.S. interstate (or foreign) commerce.  Similarly, shipment of goods bearing the mark from a manufacturer to the trademark owner, without more, is not sufficiently public to qualify as use for a trademark application.  These use requirements were clearly applied by the Trademark Trial and Appeal Board (TTAB), which cancelled a registration for nonuse.