Category Archives: Trademark

IT’S ABOUT THE FABRICS, Not the Finished Clothing

A specimen “must in some way evince that the mark is ‘associated’ with the goods and serves as an indicator of source.” In re Sones, 590 F.3d 1282 (Fed. Cir. 2009); In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992) (specimen must show “direct association” with goods). Trademarks are used in commerce when […]

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“Will and Kate” No False Association

A trademark may be refused registration by the U.S. Patent and Trademark Office (“USPTO”) if it falsely suggests a connection with another person or institution. Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), in relevant part, prohibits registration of “matter which may … falsely suggest a connection with persons, living or dead, institutions, […]

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Distinguishing CLOVER with “Made in Texas”

Under Section 2(d) of the Lanham Act, the U.S. Patent and Trademark Office (“USPTO”) may refuse to register a trademark because of a likelihood of confusion with an existing registration. One possible response is to argue that consumers are likely to distinguish such marks from one another based on minute differences if there is a […]

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No Disclaimer for Unitary MONKIE KID

The U.S. Patent and Trademark Office may require a disclaimer of an unregistrable component of an applied-for trademark that is otherwise registerable. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332 (Fed. Cir. 2015); In re Stereotaxis Inc., 429 F.3d 1039 (Fed. Cir. 2005); In re Am. Furniture Warehouse Co., 126 USPQ2d 1400 (TTAB […]

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Consumer Perception of the Color Auburn

The test for deceptive misdescriptiveness of a trademark under Section 2(e)(1) of the Lanham Act has two parts. 15 U.S.C. § 1052(e)(1). First, whether the matter sought to be registered misdescribes the goods or services. In order for a term to misdescribe goods or services, “the term must be merely descriptive, rather than suggestive, of […]

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