Trademarks

  • 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

  • The Primarily Merely a Surname Rejection

    The Primarily Merely a Surname Rejection

    Anthony Cartee

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    The Primarily Merely a Surname Rejection Primarily Merely a Surname – You’ve submitted a trademark application and after many months, you finally receive news from the USPTO—but it’s an Office Action. There are several reasons you may receive a rejection from the USPTO for a trademark application, the most popular one being a Section 2d—“likelihood of confusion” rejection. However, there are many other rejections, including sound, appearance, meaning, commercial impression, the mark is seen as merely descriptive or deceptively misdescriptive, geographically descriptive, merely ornamental, and more. Another reason for rejection may be because the mark is “primarily merely a surname.”… Read More

  • TV-Streaming Service Provider May Seek Compulsory Copyright Licenses

    TV-Streaming Service Provider May Seek Compulsory Copyright Licenses

    Anthony Cartee

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    TV-Streaming Service Provider May Seek Compulsory Copyright Licenses TV-Streaming Service Provider May Seek Compulsory Copyright Licenses – In what may be considered a surprise decision, a federal judge ruled that online television streaming service, FilmOn Air X, may be treated as a cable company by allowing it the same compulsory copyright licenses that broadcast companies receive. FilmOn offers content from cable companies like Fox, NBC, and the like. FilmOn captures broadcast television signals and transmits them to its users through the internet, enabling them to watch on their web-enabled devises. Multiple cable companies sued FilmOn based on the premise that… Read More

  • Amazon Faces Trademark Infringement Claim

    Amazon Faces Trademark Infringement Claim

    Anthony Cartee

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    Amazon Faces Trademark Infringement Claim Amazon Faces Trademark Infringement Claim – The U.S. Court of Appeals for the Ninth Circuit found that internet-based retail giant Amazon.com could be misleading consumers by displaying a watchmaker’s competing products when users search for its watches (read the full opinion here). Multi Time Machine Inc. (“MTM”), a luxury, military style watchmaker, brought a trademark infringement claim asserting Amazon violated its trademarks by displaying a rival brand’s products when customers searched for “MTM” watches. This case, which came on appeal after Amazon won a motion for summary judgment in the District Court, is unique in that… Read More

  • TTAB Decisions have Preclusive Effect on Later Litigation

    TTAB Decisions have Preclusive Effect on Later Litigation

    Anthony Cartee

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    TTAB Decisions Have Preclusive Effect on Later Litigation TTAB Decisions – In yet another intellectual property-focused case, the Supreme Court has ruled that a decision by the Trademark Trial and Appeal Board (TTAB) may have a binding, preclusive effect on later litigation in a federal district court. The opinion came with a narrowed focus, allowing preclusion for issues adjudicated by the TTAB that are “materially the same” to those the parties take to the federal court, if the “other ordinary elements of issue preclusion” are also met. (Read the full opinion here) The parties in B&B Hardware v. Hargis Industries… Read More

  • Oprah Wins Round Two Trademark Infringement Case

    Oprah Wins Round Two Trademark Infringement Case

    Anthony Cartee

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    Oprah Wins Round Two – Trademark Infringement Case Oprah Winfrey claimed a second victory against motivational speaker Simone Kelly-Brown in a trademark battle over the phrase “Own Your Power.” Kelly-Brown and her company, Own Your Power Communications, claimed Winfrey, and other named Defendants infringed on her trademark under both federal and state laws, and included a slew of other related claims. (Read the opinion here) Oprah Winfrey first won this case on a motion to dismiss, but the U.S. Court of Appeals for the Second Circuit vacated the court’s order with respect to Plaintiffs’ trademark infringement, false designation of origin,… Read More

  • USPTO to Increase Efficiency & Decreased Filing Fees

    USPTO to Increase Efficiency & Decreased Filing Fees

    Anthony Cartee

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    Decreased Filing Fees & Increased Efficiency Promises USPTO Decreased Filing Fees – In what should come as great news to attorneys and their clients, the United States Patent and Trademark Office (USPTO) has amended several regulations that will increase electronic processing of trademark applications while reducing application fees. To achieve this, the USPTO will offer additional electronic application processing through the Trademark Electronic Application System (TEAS) and will communicate with registrants via email. The USPTO said that the ease of electronic filing through TEAS and email communication will streamline and simplify procedures for all users. (Read the USPTO’s Final Rule… Read More

  • Trademarking Food – Pizzeria Makes Case

    Trademarking Food – Pizzeria Makes Case

    Anthony Cartee

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    Trademarking Food – Pizzeria Makes Case Pizzeria Makes its Case for Trademarking Food – A federal court in Texas ruled that flavors of a pizza chain’s food and its plating techniques lacked trademark and trade dress protection. The pizza chain, New York Pizzeria, Inc. (NYPI) alleged that Ryandir Syal, a restaurateur, along with other defendants, obtained NYPI’s trade secrets and additional information through a series of other illegal acts. Syal then used the information for a business in direct competition with NYPI, while allegedly infringing on NYPI’s intellectual property. The court’s decision came after Syal made a motion to dismiss… Read More

  • PODS Beats U-Haul – Trademark Infringement Case              

    PODS Beats U-Haul – Trademark Infringement Case              

    Anthony Cartee

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    What began as a trademark infringement case, developed into a battle of possible “genericide” when two popular moving and storage companies went head-to-head in federal court. Back in 2012, PODS sued U-Haul for trademark infringement for its use of “pods” under both state and federal laws. U-Haul countered that it was not infringement, because pods has become a generic term and has lost its distinctiveness in the market. Read More