Law Offices of Nikki Siesel PLLC

A frequently asked question in my practice is what filing basis should our company rely on in applying for a U.S. trademark application. As many readers may know there are multiple filing bases and to learn more about the basic information for each filing basis, please review our web page entitled, Determining Which Filing Basis Is Appropriate For Your U.S. Trademark Application [ 921 more words ] https://www.newyorktrademarkattorneyblog.com/relying-on-fo/

A recent decision from the U.S. Court of Appeals from the Federal Circuit ("CAFC") reminds trademark owners that adopting marks that are merely descriptive may require a high level of proof to register on the Principal Register. See In re JC Hospitality LLC, Appeal Nos, 2018-2048 and 2018-2049 (Fed. Cir. February 28, 2020) , where the CAFC agreed with the Trademark Trial and Appeal Board's (the "Board") decision finding the mark THE JOINT (in standard character format) merely... descriptive of "restaurant, bar, and catering services" and "entertainment services, namely live musical performances, shows and concerts, and nightclub services." The CAFC determined that substantial evidence supported the Board's conclusions, on the grounds of merely descriptiveness and not acquiring distinctiveness, but did not address the Board's finding of genericness. [ 590 more words ] https://www.newyorktrademarkattorneyblog.com/a-high-level-/ See more

American University ("Petitioner"), a college located in Washington, DC filed a petition with the Trademark Trial and Appeal Board (the "Board" or "TTAB") to cancel the mark AUK American University Of Kuwait & Design for educational services for college level courses. The grounds for cancellation were likelihood of confusion and priority, and nonuse, and counterclaims were asserted by American University of Kuwait ("Respondent"). [ 789 more words ] https://www.newyorktrademarkattorneyblog.com/american-univ/

The Trademark Trial and Appeal Board (the "Board" or "TTAB") recently reversed a refusal to register a mark on the grounds of likelihood of confusion. See In re Marathon Tours, Inc., Serial No. 86086458 (January 23, 2020) . In this case, it was a bit surprising that the Board justified its decision based solely on the marks being sufficiently different while finding the other relevant factors weighing in favor of finding a likelihood of confusion. [ 682 more words ] https://www.newyorktrademarkattorneyblog.com/weak-and-desc/

In a recent Trademark Trial and Appeal Board (the "Board" or "TTAB") decision a refusal is reversed based on the second DuPont factor. On the last day of December 2019, the Board issued a decision stating that the "related services doctrine (services provided in connection with the same goods) has no application here." See In re Costa Farms LLC, Serial No. [ 657 more words ] https://www.newyorktrademarkattorneyblog.com/ttab-reverses/

In a recent Trademark Trial and Appeal Board (the "Board") decision the Board granted the petition in part for partial cancellation for the mark POLO GIRL for the following services, "[e]ntertainment in the nature of ongoing television programs in the field of polo sports events, and polo lifestyle in International Class 41". See American Polo Association, LLC v. Elizabeth Scripps [ 685 more words ] https://www.newyorktrademarkattorneyblog.com/trademarks-ca/

As of August 3, 2019, all trademark applicants that are foreign domiciled must have a U.S. licensed attorney file its trademark applications at the United States Patent and Trademark Office ("USPTO"), and act as its representative at the Trademark Trial and Appeal Board ("TTAB" or "Board"). This rule also applies to Canadian trademark filers, attorneys and agents. Many countries around the world have a similar rule, and the USPTO has decided to follow suit for several reasons. [ 647 more words ] https://www.newyorktrademarkattorneyblog.com/u-s-licensed-/

In a recent case decided in November 2019, the Trademark Trial and Appeal Board (the "Board" or the "TTAB") sustained an opposition filed by Baccarat S.A. on various grounds including likelihood of confusion. The applicant was seeking to register the mark BACCARAT in standard characters for alcoholic beverages, namely vodka. Baccarat ("opposer") pleaded ownership of 20 of its registrations for the mark BACCARAT, some of the goods included, crystal, glasses, cups, vases, decanters, carafes, champagne buckets, jewelry, candle sticks, and tea pots. [ 656 more words ] http://www.newyorktrademarkattorneyblog.com/fame-continues/

Section 18 of the Trademark Act (15 U.S.C. 1068) provides a plaintiff with a basis to restrict or limit the goods or services in a registration based on grounds of likelihood of confusion. Section 18 applies to inter partes proceedings. It is unclear as to whether Section 18 would also apply in civil actions. A recent case coming out of the U.S. [ 638 more words ] http://www.newyorktrademarkattorneyblog.com/partial-cancel/

In a recent reversal by the Board, emphasis was placed on the importance of du Pont factor number six; see In re Simpson Industries, Inc., Serial No. 87635385 (October 7, 2019) . This likelihood of confusion factor, the number and nature of similar marks in use on similar goods, has been growing in importance since the decision in Juice Generation, Inc. [ 835 more words ] http://www.newyorktrademarkattorneyblog.com/the-6th-du-pon/

Receiving an Office Action that refuses your trademark application can be overwhelming. Most importantly, trademark applicants should be armed with knowledge of the general rules that apply so effective arguments can be crafted for a response to the Office Action. A common mistake is that applicants submit the wrong type of arguments in reply to a 2(d) Likelihood of Confusion Refusal. [ 932 more words ] http://www.newyorktrademarkattorneyblog.com/how-to-overcom/

In 2014, the Trademark Trial and Appeal Board ("TTAB or the "Board") issued a decision (not precedential) wherein it declared that the proper basis for refusing a mark that is a title of a single creative work is Section 2(e)(1) of the Trademark Act and not sections 1, 2 & 45 of the Lanham Act. See our blog post entitled, [ 787 more words ] http://www.newyorktrademarkattorneyblog.com/ttab-determine/

This question, although it seems basic is a good question that is frequently asked, and should be thoroughly understood before proceeding with trademark registration. The concepts of trademark law namely use, protection, enforcement, and distinctiveness are all interrelated. A trademark owner can save time, expense, and effort by adopting an inherently distinctive mark and ensuring it is registered on the Principal Register with the United States Patent and Trademark Office. [ 838 more words ] http://www.newyorktrademarkattorneyblog.com/why-registrati/