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“Action” of “Withholding” Claims in Patent Prosecution

A pre-GATT patent application, i.e., filed prior to June 8, 1995, would be entitled to a patent term of seventeen years from the date of issuance. Otherwise, the issuing patent would be entitled to a patent term of twenty years from the earliest claimed filing date (and 1995 is more than twenty years ago). That […]

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Mixed-Use DOCK BLOCKS Genericness

“‘A generic name—the name of a class of products or services—is ineligible for federal trademark registration.’” In re GJ & AM, LLC, 2021 USPQ2d 617, at *4 (TTAB 2021) (quoting U.S. Pat. & Trademark Off. v. Booking.com B.V., 140 S. Ct. 2298, 2020 USPQ2d 10729, at *1 (2020)). In H. Marvin Ginn Corp. v. Int’l […]

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Duplicative-Litigation Doctrine Against the Same

The duplicative-litigation doctrine prevents plaintiffs from “maintain[ing] two separate actions involving the same subject matter at the same time in the same court . . . against the same defendant.” Walton v. Eaton Corp., 563 F.2d 66, 70 (3d Cir. 1977) (en banc). In patent infringement cases, whether patent-infringement complaints involve the same subject matter (such as […]

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Use of Comic Book Character as Analogous to Trademark Use

Priority between competing trademarks for purposes of a Section 2(d) likelihood of confusion analysis may be established through prior use analogous to trademark use, such as advertising brochures, trade publications, catalogues, newspaper advertisements and Internet websites that created a public awareness of the designation as a trademark as the source of the relevant goods. See […]

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Cleaner for Concrete Related to Laundry Pretreatment

In a likelihood of confusion analysis under Section 2(d), two key considerations are the similarities between the marks and the relatedness of the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 […]

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