Category: Trademark

On February 19, 2015, the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (the Board) denied the registration of the mark KARMA CRAFT BEER because it was found to be likely confused with KARMA FINE BEVERAGES. The Board’s written opinion also touched on many procedural deficiencies with the case, which reminds trademark […]

It is a contract between two parties that governs the parties’ use of certain trademarks. These agreements are often referred to by a number of names, and are sometimes called co-existence or consent agreements. The primary purpose for entering a concurrent use agreement is to permit a mark to achieve registration. For example, lets assume […]

Inter parte proceedings before the Trademark Trial and Appeal Board largely consist of trademark opposition and cancellation proceedings. These proceedings are similar to federal civil lawsuits, but the procedure is different. For an explanation of the process, continue reading. What Happens After a Notice of Opposition or Petition to Cancel is Filed? After the Notice […]

Trademark opposition and cancellation proceedings are administrative proceedings that are similar to a lawsuit in federal court. The first question in any opposition or cancellation proceeding is whether the opposer or petitioner has standing. We reviewed the standards for standing here. Now we will address the substantive merits of trademark opposition and cancellation proceedings. Grounds […]

A trademark opposition proceeding is an administrative proceeding, similar to a civil federal lawsuit, before the Trademark Trial and Appeal Board (TTAB) in which one party seeks to prevent another from registering a trademark. To understand trademark opposition proceedings, you must first understand the trademark process as whole. You can read our summary of the […]

The Trademark Trial and Appeal Board (TTAB) is an administrative body within the United States Patent and Trademark Office (USPTO) that is responsible for hearing and deciding certain kinds of trademark issues. Specifically, the TTAB hears appeals from the USPTO examining attorney decisions that trademarks should not be registered. Further, the TTAB hears inter partes […]

Many family businesses carry the family name. The family name comes to serve as a symbol of trust and recognition. But can you obtain federal trademark registration of your family name? Many businesses that apply for trademark registration will receive an Office Action refusing to register a mark because it is “merely a surname” under […]

The majority of Office Actions issued refuse to register marks under Section 2(d) of the Lanham Act based on a likelihood of confusion with a registered mark. Here, the examining attorney may refuse to register a mark it determines so resembles a registered mark that is likely to cause confusion, mistake, or to deceive. The […]

Trademark registration is a valuable asset and when companies invest in securing federal trademark registration, they want to obtain a full registration of the exact mark submitted. But many times businesses attempting to register a trademark and are meet with an Office Action requiring that certain components of the mark be disclaimed. In most cases […]

The United State Patent and Trademark Office (USPTO) allows individuals to register domain names as trademarks under certain circumstances. This can be valuable for online entities because while domain names are protected against theft and cybersquatting, a domain name that is a registered trademark would also receive powerful federal trademark protection. Generally, a domain name […]