By James Juo. The term “reverse confusion” has been used to “describe the situation where a significantly larger or more prominent newcomer ‘saturates the market’ with a trademark that is confusingly similar to that of a smaller, senior registrant for related goods or services.” In re Shell Oil Co., 992 F.2d 1204, 1207 (Fed. Cir. […]
By James Juo. Trademark rights may extend beyond the specific goods or services offered in connection with a trademark to include a “natural zone of expansion” which grants a senior user of a mark superior rights as to “any goods or services which purchasers might reasonably expect to emanate from it in the normal expansion […]
By James Juo. In a use-based application under Section 1(a) of the Trademark Act, the applied-for the mark must be in use in commerce with all the goods and services listed in the application as of the application’s filing date. See Couture v. Playdom, Inc., 778 F.3d 1379 (Fed. Cir. 2015) (“To apply for registration […]
By James Juo. Section 2(a) of the Trademark Act prohibits the registration of a mark that consists of or comprises matter that may falsely suggest a connection with “persons, living or dead, institutions, beliefs, or national symbols.” 15 U.S.C. § 1052(a); see also In re Sauer, 27 USPQ2d 1073 (TTAB 1993) (finding registration of BO […]
By James Juo. In trademark practice, a letter of protest (“LOP”) may be filed by a third party with the U.S. Patent and Trademark Office (“USPTO”) against a pending trademark application when that third party has information that may be a factual basis to refuse registration of that trademark. The USPTO will deny a letter […]