Trademark Registration

  • Rights and Priorities: Foreign Trademark Applicants and Section 44

    Rights and Priorities: Foreign Trademark Applicants and Section 44

    Anthony Cartee

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    Foreign Trademark Applicants – Breaking Down Section 44: How Foreign Trademark Applicants Can Obtain U.S. Trademark Protection Section 44 of the U.S. Trademark Act, also known as the Lanham Act, provides an important and convenient avenue for foreign trademark owners to apply for trademark registration in the United States. Foreign trademark applicants have two options under this Section of the Lanham Act, they can file a Section 44(e) application and use their foreign registration as the basis for obtaining a U.S. registration, or they can file a Section 44(d) application and rely on their foreign application to secure a priority… Read More

  • A Rose By Any Other Name … But Likely Not a Trademark

    A Rose By Any Other Name … But Likely Not a Trademark

    Anthony Cartee

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    Trademark a plant? Trademarks have helped create value for all sorts of products. However, may a living thing such as a plant variety that you have bred and created be trademarked? Can You Trademark a Plant? Generally, the answer is no. It is nearly impossible to trademark a plant. Varietal or cultivar names are designations given to cultivated varieties or subspecies of live plants or agricultural seeds and they amount to the generic name of the plant or seed by which such variety is known to the consumer. In re Pennington Seed Co. (2006) 466 F.3d 1053. The Ineligibility of… Read More

  • Trademark Modernization Act of 2020: Increasing Protective Measures

    Trademark Modernization Act of 2020: Increasing Protective Measures

    Anthony Cartee

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    What is the Trademark Modernization Act of 2020? The COVID-19 pandemic has brought about significant changes across our lives, including—believe it or not—in the realm of trademark law. On December 27, 2020, the “Trademark Modernization Act of 2020” (the “Act”) became law, as part of a COVID-19 relief and spending bill. If you are thinking about embarking on the journey to owning a trademark or are currently a trademark owner, here are some of the most important aspects you need to know about the recently passed bill. How Does the Trademark Modernization Act of 2020 Fight Fraudulent Applications? First and… Read More

  • When Unprotected Elements In Trademarks And Copyrights Get You In Hot Water

    When Unprotected Elements In Trademarks And Copyrights Get You In Hot Water

    Anthony Cartee

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    Trademark and Copyright Issues to Consider With Sales of Athletic Goods and Apparel When can a generic design rise to an infringement of intellectual property rights? A common and growing occurrence comes when one takes an attribute of a famous athlete (like a number), puts it with that athlete’s team color scheme, and the next thing you know, someone is claiming a likelihood of confusion. Such apparel that strive to simply use generic designs, but combine well-known elements that might implicate the rights of a famous athlete or clubs best beware that they are touching on issues that go into… Read More

  • Do Two Generics Make a Trademark Registration?

    Do Two Generics Make a Trademark Registration?

    Anthony Cartee

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    SCOTUS Ruling In USPTO v. Booking.com Opens The Door For Generic Domain Owners To Register Their Trademark The U.S. Patent and Trademark Office (USPTO) has believed that “generic.com” domain names were almost always generic and therefore not registrable under trademark law. However, the Supreme Court’s nearly unanimous decision in USPTO v. Booking.com (2020) 591 U.S. ___, earlier this year has rejected that per se rule, which means such generic combinations have the potential to become protectable trademarks. Under the Lanham Act, a mark must be distinctive in order to obtain protection. As such, generic terms alone cannot be protected as… Read More

  • The ‘Deceptively Misdescriptiveness’ Rejection

    The ‘Deceptively Misdescriptiveness’ Rejection

    Anthony Cartee

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    The ‘Deceptively Misdescriptiveness’ Rejection Deceptively Misdescriptiveness – There are many reasons your trademark application may be denied. One of the more unique reasons is something called “deceptively misdescriptiveness.” Your first question is probably “what does that even mean?” A mark is considered deceptively misdescriptive if it describes an ingredient, quality, characteristic, function, or feature of the goods and or services and the description conveyed by the mark is both false and plausible. Trademark Manual of Examining Procedure §1209.04. For example, the mark “Pink Fur” would be considered deceptively misdescriptive of the goods if the goods sold are a line of… Read More

  • Trademark Registration Process Part 3

    Trademark Registration Process Part 3

    Anthony Cartee

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    The Trademark Registration Process Part 3 Trademark Registration Process Part 3 – In Trademark Registration Part 2 of the trademark registration process we looked at the process for obtaining Federal registration of a mark.  Today, in tademark registration process part 3, we conclude with some miscellaneous, but still important, issues in the trademark registration process. State Registration The first step in the the trademark registration process is state registration.  State trademark registration is not as ‘strong’ as federal registration, mainly because there isn’t the kind of strong examination for conflicts with prior marks or abandoned or cancelled marks that there… Read More

  • Can Government Entity Trademark Insignia?

    Can Government Entity Trademark Insignia?

    Anthony Cartee

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    Can Government Entity Trademark Insignia? Government Entity Trademark Their Insignia? – Today we look at an interesting case, In Re City of Houston, before the United States Court of Appeals for the Federal Circuit.  This case consolidated two cases, one brought by the city of Houston, Texas, and the other by the government of the District of Columbia, that asked the same basic question.  In both cases the local governmental entity sought federal trademark registration of their official insignia, e.g. their seal. Background of the Cases Both Houston and DC – each a government entity – sought to trademark their seals as… Read More

  • The Trademark Registration Process Part 2

    The Trademark Registration Process Part 2

    Anthony Cartee

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    Registration Process for Trademark Part 2 Registration Process – Part 2 – Once the use in commerce (or intent to use) requirement is satisfied by the aspiring trademark registrant, the next step is to file an application for Federal registration with the United States Patent and Trademark Office (“USPTO” or “Trademark Office”).  The use requirement is referred to as the “basis for filing” by the USPTO. Trademark Application The registration process trademark application covers formalistic requirements that identify both the filer and necessary details about the trademark.  For instance the name of the filer, correspondence address, drawing of the mark, type… Read More

  • The Trademark Registration Process – Part 1

    The Trademark Registration Process – Part 1

    Anthony Cartee

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    The Trademark Registration Process Trademark Registration Process – How does one go about registering a trademark?  What are some of the requirements in order to obtain protection?  There are many steps and several issues to consider, but overall the process is not arcane or excessively complicated (unlike, for instance, the steps necessary to obtain a utility patent).  Federal Trademark registration is handled by the United States Patent and Trademark Office. Trademark Search To be registrable, a trademark cannot already be owned by someone else.  Thus the first step is to conduct a trademark search.  Various private companies and even some attorneys offer… Read More