Trademarks

  • 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

  • No Damages, Big Problem: Infringement Claims Lacking Cognizable Injury

    No Damages, Big Problem: Infringement Claims Lacking Cognizable Injury

    Anthony Cartee

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    No Damages, No Case? The Importance of Cognizable Damages in Trademark Infringement Claims In a highly competitive marketplace, established companies sometimes use a variety of means to suppress emerging companies and its branding that may or may not threaten their own market share. Often, lawsuits for trademark infringement claims end upon enjoining the defendant infringer. However, companies always press for monetary damages as well, but a prevailing plaintiff is not automatically entitled to such an award. See 15 U.S.C. § 1117(a). As an accused infringer, it is important to be aware of options that may be useful in defending yourself… Read More

  • Nominative Fair Use: One Defense Against a Brand Bully

    Nominative Fair Use: One Defense Against a Brand Bully

    Anthony Cartee

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    Understanding Brand Bullies On top of today’s extremely competitive market, small businesses may be also dealing with a “brand bully.” Also known as a trademark bully, a brand bully is a company that resorts to litigation and uses its trademark rights to harass and intimidate another business without a sound legal basis. These companies often file oppositions against marks or the use of their alleged mark that would not directly or substantially damage them. The brand bullies primarily rely on their “fame” or “strength” of their marks, and the smaller business’s lack of resources for prolonged litigation. Typically, these brand… 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

  • Trademark Ornamental Refusals – What to Consider

    Trademark Ornamental Refusals – What to Consider

    Anthony Cartee

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    Trademark Ornamental Refusals – What to Consider Sometimes, the USPTO will issue eccentric and unusual refusals to a trademark application. One such refusal is called an ornamental refusal. If you receive a trademark ornamental refusals, it means your registration of your applied-for mark has been refused because your mark is essentially merely decorative. That is, your mark does not clearly identify the source of your goods and distinguish them from the goods of others, which is required for proper trademark use. In some situations, a mark can still be registered even if it is used in an ornamental or decorative… Read More

  • Renewing Your Trademark-Excusable Non-Use

    Renewing Your Trademark-Excusable Non-Use

    Anthony Cartee

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    Renewing Your Trademark-Excusable Non-Use Renewing Your Trademark – Even after you have successfully registered a mark with the US Patent and Trademark Office, you are not done in ensuring your mark stays registered and protected. Your trademark application must be renewed 5-6 years after your first registration in order to maintain that registration. You must also renew the year before every ten-year period after the date of registration. Typically, when you renew a trademark, one of the requirements is showing that you have used the mark in commerce continuously since it has been registered. Absent a showing of “use,” your… 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