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New Shortened Statutory Period for Trademark Office Actions

Beginning on December 3, 2022, trademark applicants will have three months (with a possible three-month extension), instead of the current six months, to respond to office actions issued by the United States Patent and Trademark Office (USPTO) during the examination and prosecution of the trademark application. The USPTO fee for requesting a three-month extension of […]

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Generic Responsive Ads

“Generally, where the matter sought to be registered identifies [services] that are a primary or central focus of the [business], we have considered the term to be generic.” In re Cordua Rests. LP, 100 USPQ2d 1227, 1231 (TTAB 2014) (citations omitted) (bracketed words in original), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); […]

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Cheeky Genericness

A generic term “is the common descriptive name of a class of goods or services” and is unregistrable. Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015); H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. […]

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Defensive GOO of Incontestability

Owning an incontestable trademark registration can provide a defense to infringing the trademark of another. “The ‘defensive’ aspect of incontestability is reflected in the language of both § 15 and § 33(b) [of the Lanham Act].” 6 J. McCarthy, McCarthy on Trademarks and Unfair Competition § 32:141. Under Section 15, a registrant acquires an incontestable […]

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ARMANI May Be Famous, But AX Is Not

Likelihood of confusion under Section 2(d) of the Lanham Act is analyzed at the USPTO using the thirteen so-called DuPont factors. In context of an opposition proceeding, the fifth DuPont factor enables an Opposer to expand the scope of protection afforded its pleaded mark by adducing evidence of “[t]he fame of the prior mark (sales, advertising, […]

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