2021, Registration and Service Mark - Intellectual Property Pulse

Thinking of Registering a Service Mark That Primarily Benefits Your Company? Think Again

JD Supra Law

NOVEMBER 16, 2021

If you are contemplating registering a service mark that primarily benefits your company and not others, don’t bother; it will be refused registration. 4, 2021) [not precedential] (CHiP). By: BakerHostetler

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Thinking of Registering a Service Mark That Primarily Benefits Your Company? Think Again

IP Intelligence

NOVEMBER 15, 2021

If you are contemplating registering a service mark that primarily benefits your company and not others, don’t bother; it will be refused registration. 4, 2021) [not precedential] ( CHiP ). The TTAB affirmed the refusal to register, denying registration under sections 1, 2, 3 and 45 of the Trademark Act.

Service Mark

Service Mark Registration Trademark Business

Thinking of Registering a Service Mark That Primarily Benefits Your Company? Think Again

LexBlog IP

NOVEMBER 15, 2021

If you are contemplating registering a service mark that primarily benefits your company and not others, don’t bother; it will be refused registration. 4, 2021) [not precedential] ( CHiP ). The TTAB affirmed the refusal to register, denying registration under sections 1, 2, 3 and 45 of the Trademark Act.

Service Mark

Service Mark Registration Trademark Business

The TTAB: Service Mark Use Requires More Than Just Preparation

Above the Fold

DECEMBER 21, 2021

On December 10, 2021, the TTAB issued a precedential decision reminding trademark practitioners and applicants that service mark use requires that an applicant actually render the services recited in the trademark application; mere preparation to render the services is insufficient. 10, 2021).

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Actual Use, Not Preparations For Use, Of A Service Mark Is Necessary For The USPTO To Register It

IP Intelligence

JANUARY 4, 2022

If you desire to register a service mark asserting use that is preparatory for the rendering of your services, your application will fail in the U.S. Instead, the services must be actually rendered in connection with the mark for a registration to be granted. Patent and Trademark Office (USPTO).

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Service Mark Registration Trademark Advertising

"A S LIVE FOREVER" Fails-to-Function as a Service Mark for Online Retail Store Services, Says TTAB

The TTABlog

MAY 29, 2024

The Board observed that "[t]he critical inquiry in determining whether a proposed mark functions as a trademark is how the relevant public perceives the term sought to be registered." 2021 WL 839189, at *13. Simply calling A S LIVE FOREVER a brand cannot transform an otherwise unregistrable designation into a registrable mark."

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Actual Use, Not Preparations For Use, Of A Service Mark Is Necessary For The USPTO To Register It

LexBlog IP

JANUARY 4, 2022

If you desire to register a service mark asserting use that is preparatory for the rendering of your services, your application will fail in the U.S. Instead, the services must be actually rendered in connection with the mark for a registration to be granted. Patent and Trademark Office (USPTO). ” Id.

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TTABlog Quarterly Index: October - December 2021

The TTABlog

DECEMBER 31, 2021

35: TTAB Grants MIRAGE BRANDS Cancellation Petition Due To Likelihood of Reverse Confusion On Remand from the CAFC, TTAB Denies Petition for Cancellation of "NAKED" Registration for Condoms TTABlog Test: Three Recent Section 2(d) Inter Partes Cases - How Did They Come Out? [Yes] Precedential No. Lack of Bona Fide Intent: Precedential No.

Registration

Registration Cinema Trademark Reporting

Precedential No. 34: TTAB Affirms Nonuse Refusal - Service Mark Use Requires Rendering of the Services, Not Just Preparation

The TTABlog

DECEMBER 13, 2021

Applicant Suuberg made preparatory measures to use the mark but never rendered the services before her filing date. 88234650 (December 10, 2021) [precedential] (Opinion by Judge Albert Zervas). What is the first use date for the restaurant's services? Welch 2021. In re Alessandra Suuberg , Serial No. See Stawski v.

Service Mark

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TTAB Denies Petition to Cancel "ONEPACKET" Registration: Failure to Prove Nonuse

The TTABlog

JULY 16, 2021

Respondent's rope-a-dope defense proved to be successful in this cancellation proceeding aimed at a registration for the mark ONEPACKET (standard form) for computer-related services. 92069714 (July 2, 2021) [not precedential] (Opinion by Judge Linda A. What if the registrant has no intent one way or the other?

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Precedential No. 33: TTAB Reverses Failure-to-Function Refusal of "FOLLOW THE LEADER" for Credit Card and Travel Services

The TTABlog

NOVEMBER 27, 2023

Sections 1, 2, 3, and 45 of the Lanham Act provide the statutory basis for a refusal to register subject matter that does not function as a trademark or service mark. A threshold question in evaluating the registrability of a trademark or service mark is whether the proposed mark meets the source indication requirement.

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Three Recent TTAB Oppositions Sustained on the Ground of Non-use

The TTABlog

FEBRUARY 1, 2024

Here are three recent TTAB rulings, each sustaining an opposition based upon non-use of the opposed service mark. For a service mark, the services must be rendered in order to qualify as "use in commerce" as defined in Section 45 of the Lanham Act. Substring, LLC , Opposition No. Cavalier Rescue of Alabama, Inc.

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Hark! The Herald Trademarks Sing: A Holiday Trademark Extravaganza

LexBlog IP

DECEMBER 19, 2023

CHRISTMAS became a registered trademark for “Christmas Ornaments and Decorations of the Non-Electrical Type” way back in 1966 (Registration No. ” Scrooge wasn’t the only one who had that idea: a business owner registered ALWAYS CHRISTMAS & Design as a service mark in 1995 (Registration No.

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Trademark Registration Registering Trademarks Service Mark

Precedential No. 23: F**K Fails to Function As a Source Indicator for Jewelry, Bags, and Retail Services, Says TTAB

The TTABlog

AUGUST 29, 2022

Sections 1 and 2 provide for registration of "trademark[s] by which goods of the applicant may be distinguished from the goods of others." Section 3 states that service marks are registrable "in the same manner and with the same effect as trademarks." are not registrable." of Kentucky v. Brunetti controls here.

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Get 2 Go Sued for Alleged Trademark Infringement of getGo®

Indiana Intellectual Property Law

AUGUST 18, 2021

Per the Complaint, Plaintiffs have used the getGo® trademark since at least March 2013 and have sought and secured federal trademark registrations for various getGo® trademarks and logos as set forth below (the “getGo® Marks”). Registration No. Service Mark Registrations, Nos.

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TTAB Confirms Characters Can Be Registered as Trademarks If The Characters Function as Trademarks

LexBlog IP

SEPTEMBER 11, 2023

In doing so the Board held that video game characters are not per se registrable without a showing that they function as marks. Color was not claimed as part of the mark. [1] ” Instead, Applicant argued that any display of the character on the specimens submitted to support registration suffices to show use as a trademark.

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Precedential No. 26: TTAB Denies "HAPPIEST HOUR" Cancellation Petition for Failure to Prove Priority Via Technical or Analogous TM Use

The TTABlog

SEPTEMBER 23, 2022

Petitioner JNF LLC was undoubtedly unhappy with the result of its petition to cancel a registration for the mark HAPPIEST HOUR for bar and restaurant services. JNF claimed prior use of THE HAPPIEST HOUR for the identical services, but it failed to prove priority. Carson , 2021 USPQ2d 1057, at *21. See Couture v.

Service Mark

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The Third Circuit Limits Preclusive Effect of the TTAB Rulings

LexBlog IP

SEPTEMBER 28, 2021

On September 17, 2021, the Third Circuit held in Beasley v. In 1997, Beasley obtained a New Jersey state service mark for THE EBONYS. Patent & Trademark Office (“PTO”) (THE EBONYS, Registration No. 4,170,469 [the “’469 mark”]).

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TM infringement and false advertising claims related to putative open source software "fork" succeed

43(B)log

SEPTEMBER 16, 2021

PureThink, LLC, 2021 WL 2483778, No. May 18, 2021) Neo4j specializes in graph database management systems. It has trademark registrations for the word mark “NEO4J.” Neo4j, Inc. 5:18-cv-07182-EJD (N.D. I still don’t know what that means, but ok.]

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Full Of Sound And Query, Signifying Something: Recent Noise Over Acoustic Trademarks

LexBlog IP

SEPTEMBER 29, 2022

Here in a nutshell is the query the Court addressed: 16 Under Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character shall not be registered. ”; see also ILN Today, July 15, 2021. .” ”; see also ILN Today, July 15, 2021. ” Ardagh at par. Duck Boat Tours, Inc.

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Intellectual Property Pulse

Thinking of Registering a Service Mark That Primarily Benefits Your Company? Think Again

Thinking of Registering a Service Mark That Primarily Benefits Your Company? Think Again

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Thinking of Registering a Service Mark That Primarily Benefits Your Company? Think Again

The TTAB: Service Mark Use Requires More Than Just Preparation

Actual Use, Not Preparations For Use, Of A Service Mark Is Necessary For The USPTO To Register It

"A S LIVE FOREVER" Fails-to-Function as a Service Mark for Online Retail Store Services, Says TTAB

Actual Use, Not Preparations For Use, Of A Service Mark Is Necessary For The USPTO To Register It

TTABlog Quarterly Index: October - December 2021

Precedential No. 34: TTAB Affirms Nonuse Refusal - Service Mark Use Requires Rendering of the Services, Not Just Preparation

TTAB Denies Petition to Cancel "ONEPACKET" Registration: Failure to Prove Nonuse

Precedential No. 33: TTAB Reverses Failure-to-Function Refusal of "FOLLOW THE LEADER" for Credit Card and Travel Services

Three Recent TTAB Oppositions Sustained on the Ground of Non-use

Hark! The Herald Trademarks Sing: A Holiday Trademark Extravaganza

Precedential No. 23: F**K Fails to Function As a Source Indicator for Jewelry, Bags, and Retail Services, Says TTAB

Get 2 Go Sued for Alleged Trademark Infringement of getGo®

TTAB Confirms Characters Can Be Registered as Trademarks If The Characters Function as Trademarks

Precedential No. 26: TTAB Denies "HAPPIEST HOUR" Cancellation Petition for Failure to Prove Priority Via Technical or Analogous TM Use

The Third Circuit Limits Preclusive Effect of the TTAB Rulings

TM infringement and false advertising claims related to putative open source software "fork" succeed

Full Of Sound And Query, Signifying Something: Recent Noise Over Acoustic Trademarks

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