By James Juo. The USPTO may refuse to register a trademark application under Section 2(d) of the Lanham Act if there is a likelihood of confusion with another existing trademark registration under the thirteen-factor test from In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). The second DuPont […]
By James Juo. Trademarks that create a double entendre or double meaning are not merely descriptive.[1] See., e.g., In re Tea and Sympathy Inc., 88 USPQ2d 1062, 1064 (TTAB 2008) (THE FARMACY not merely descriptive because it is a play on the “farm-fresh” characteristics of applicant’s herbs and organic products used for medicinal purposes.); Colonial […]
By James Juo. “Under the doctrine of foreign equivalents, foreign words from common, modern languages are translated into English to determine … descriptiveness.… When it is unlikely that an American buyer will translate the foreign mark and will take it as it is, then the doctrine of foreign equivalents will not be applied.” Palm Bay […]
By James Juo. A defendant sometimes will file a motion to dismiss, and then move to stay discovery pending a decision on the motion to dismiss on the theory that if Defendant prevails on its motion to dismiss, the cost of discovery incurred in the meantime may be unnecessary. In the U.S. District Court for […]
By James Juo. New trademark regulations of the U.S. Patent and Trademark Office (“USPTO”) to implement the provisions of the Trademark Modernization Act (TMA) of 2020 have been published in the Federal Register. Most of the revisions to the trademark rules will take effect on December 18, 2021, but implementation of a shorter three-month response […]