How To Select a Strong Trademark
Building a strong and distinctive brand identity for your business is crucial for driving sales, fostering consumer loyalty, and standing out in any industry, and more so for emerging and rapidly evolving sectors such as...more
The US Court of Appeals for the Second Circuit reversed a district court’s grant of preliminary injunction for abuse of discretion based on an erroneous evaluation of the strength of the “inherently descriptive” marks at...more
A “trademark” is any word, phrase, logo or design that identifies the source of goods or services. Trademarks are used to distinguish one’s products and services from those of another. The strength of a trademark depends on...more
Joining a series of precedential decisions about descriptiveness, the Trademark Trial and Appeal Board recently affirmed a refusal to register Sheet Pile, LLC’s (“Applicant”) mark ZPILE on the Principal Register, on the...more
Welcome to the March 2024 issue of Sterne Kessler’s MarkIt to Market® newsletter. This month, we discuss the IPR Center’s efforts to stop global IP theft and address counterfeiting on both home and foreign turf; a recent TTAB...more
The US Court of Appeals for the Second Circuit affirmed a district court’s grant of summary judgement to a luxury-watchmaker defendant, holding that its use of a registered and incontestable trademarked term was fair use...more
The US Patent and Trademark Office (USPTO) has denied OpenAI’s applications to trademark “ChatGPT” and “GPT.” The Final Office Action states, “Registration is refused because the applied-for mark merely describes a...more
Trademark litigants should heed the cautionary tale in this case – develop your arguments or risk waiving them. The United States Court of Appeals for the Federal Circuit continued its recent scrutiny of the practices of the...more
Branding is critical for emerging companies in the healthy food and beverage (“F&B”) space. Strong brands can help companies stand out from competitors and build trust and loyalty with customers. For emerging companies, a...more
The VIA Art Fund opposition and appeal decisions provide an important reminder for those seeking to enforce registered trade mark rights in the UK. While incorporating a figurative element to a descriptive mark can enhance...more
On May 13, 2021, the Québec government introduced Bill 96, An Act respecting French, the official and common language of Québec (the Bill), proposing significant amendments to Québec’s Charter of the French Language (the...more
You have probably heard of trademarks and trademark registrations, but never the Supplemental trademark register. If you have heard of the Supplemental Register, then you have likely received an Office Action from the USPTO...more
Learn how to select a strong trademark. What makes a strong trademark vs. a weak trademark and the different types: generic, descriptive, suggestive, arbitrary, and fanciful....more
GALPERTI, INC. v. GALPERTI S.R.L. Before: Moore, Prost, Taranto. Appeal from the Trademark Trial and Appeal Board. Summary: Evidence of use of a term even without a showing of secondary meaning, by any third party,...more
In an industry that runs on innovation and differentiation, a cannabis brand’s identity is among its most valuable—and most prone to copying—assets. It’s a common myth that cannabis industry brands cannot get trademark...more
On March 5, 2021, the U.S. Trademark Trial and Appeal Board (“TTAB”) issued a precedential decision affirming refusal of SolarWindow Technologies, Inc.’s application to register the word mark POWERCOATINGS. The decision is a...more
So, you’ve taken the leap. You’re starting a business. Congrats! You’re excited; you’re ambitious; the world is your oyster. Perhaps you’re building an app, or maybe a new clothing line? Or maybe you’ve created an animal...more
One of the first things entrepreneurs will need to do when branding new companies is to seek and obtain trademark protection. In addition, companies may at times seek to use third party trademarks without formally licensing...more
Last month, the U.S. Patent and Trademark Office (PTO) issued a guidance document describing how they plan on following the Supreme Court’s recent decision in U.S. Patent and Trademark Office v. Booking.com. This document...more
The process to apply for a federal trademark registration is a separate, and more involved examination process, than registering a business name with a state’s Secretary of State. The U.S. Patent and Trademark Office...more
The U.S. Supreme Court recently confirmed that a “generic.com” term may be eligible for federal trademark registration in the U.S., in certain circumstances. We will review the relevant decisions, discuss the Canadian legal...more
In U.S. Patent and Trademark Office v. Booking.com B.V., the Supreme Court held that a term that combines a generic word with “.com” is not generic if consumers perceive the term to signify the source of a product and thus...more
The June 30th Supreme Court decision in Booking.com held that generic terms coupled with top-level domain names can be eligible for trademark registration. This decision is a win for brand owners as it reinforces how – in the...more
The U.S. Supreme Court has ruled that Booking.com B.V., the owner of the hotel-reservation website of the same name, is entitled to register the mark BOOKING.COM with the United States Patent and Trademark Office (“USPTO”)....more
In an 8-1 decision delivered by Justice Ginsburg, the Supreme Court declined to adopt a per se rule that combining a generic term with “.com” necessarily yields a generic mark ineligible for federal trademark registration....more