Category Archives: Trademark

Fictitious places are not geographically misdescriptive

By James Juo. A trademark application may be refused by the USPTO on the ground that the proposed mark is primarily geographically misdescriptive of the identified goods, under Section 2(e)(3) of the Trademark Act (the “Act”), 15 U.S.C. § 2(e)(3).[1] To support a Section 2(e)(3) misdescriptiveness refusal against a trademark application, the USPTO must prove […]

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Incontestable Fraud on Trademark Office?

By James Juo. The bar for proving fraud on the Trademark Office in seeking to cancel a trademark registration is high. In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) (“there is no fraud if a false misrepresentation is occasioned by an honest misunderstanding or inadvertence without a willful intent to deceive”). In order […]

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Cliffs Notes Version of Flora-Bama

By James Juo. It is well-established that trademark law must be applied narrowly to artistic works to avoid conflict with First Amendment interests. This recently came to a head in MGFB Properties, Inc. v. ViacomCBS, Inc., No. 5:19-cv-00257 (N.D. Fla. Sept. 22, 2021), a dispute between the “regionally famous” Flora-Bama beach bar and lounge, and […]

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Geographically Descriptive Parma

By James Juo. A trademark application may be refused by the USPTO on the ground that the proposed mark is primarily geographically descriptive of the identified goods, under Section 2(e)(2) of the Trademark Act (the “Act”), 15 U.S.C. § 2(e)(2).  The three-part test for geographical descriptiveness under Section 2(e)(2), absent a showing of acquired distinctiveness, […]

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Proving a Weak Mark Convincingly

By James Juo. In applying for a trademark registration, the U.S. Patent and Trademark Office (“USPTO”) may refuse registration under Section 2(d) of the Lanham Act because of a perceived likelihood of confusion with another entity’s existing trademark registration. One argument often made to overcome such as rejection is that the marks are weak formatives […]

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