USPTO

  • Gruyere, But Not Gruyere: The Ongoing Battle of Generic Terms and Geographic Indicators

    Gruyere, But Not Gruyere: The Ongoing Battle of Generic Terms and Geographic Indicators

    Anthony Cartee

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    Gruyere cheese, But Not Gruyere cheese – Can U.S. dairy retailers label cheese as “Gruyere” even if it is not produced in the Gruyère region of Switzerland and France? According to a recent decision from a Virginia federal court, the answer is yes — at least for now. The Virginia Court upheld an administrative decision from the Trademark Trials and Appeals Board (TTAB), which determined that “gruyere” has become a generic term to describe a type of cheese, rather a term to certify that the cheese is produced in the Gruyère region of Switzerland and France. This means that the… 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

  • 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

  • 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

  • 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