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Descriptive Trademarks United States Patent and Trademark Office Trademarks

McDermott Will & Emery

Hot Mess? Second Circuit Douses Injunction Based on Weak Mark

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - March 2024

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

AEON Law

Patent Poetry: Trademark Denied for “ChatGPT”

AEON Law on

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

Whitcomb Selinsky, PC

The Descriptive Requirement of Trademark Law

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The Trademark Trial and Appeal Board (TTAB) decided the  case of Yuzu Labs Public Benefit Corporation, 2017 WL 3102592. The TTAB is an administrative board that deals with issues arising out of the United States Patent and...more

Dunlap Bennett & Ludwig PLLC

The Supplemental Register

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

Vicente LLP

Cannabis Trademarks 101

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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

Dunlap Bennett & Ludwig PLLC

Trademarks 101

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

Fox Rothschild LLP

PTO Offers Guidance Following The Decision In USPTO v. Booking.com

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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

Burns & Levinson LLP

What It Takes to Register a Trademark

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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

Perkins Coie

Sustainable Apparel: Using Trademarks to Communicate Ecological Commitments

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Consumers today are increasingly conscious of environmental issues. A recent study found that 50% of CPG (consumer packaged goods) growth from 2013 to 2018 came from sustainably marketed products. Younger generations in...more

International Lawyers Network

Generic.com — Registrable In Canada?

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

Locke Lord LLP

Supreme Court Holds that Booking.com Isn’t Generic

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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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - June 2020: Breaking News: Booking.com Prevails in Genericness Challenge

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

Jaburg Wilk

Generic.Nope: Supreme Court Deems BOOKING.COM a Distinctive, Registrable Mark

Jaburg Wilk on

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

Blank Rome LLP

What’s It to You?: SCOTUS Looks to Consumers in Examining “Generic.com” Trademarks

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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

Seyfarth Shaw LLP

Isn’t It Ironic? SCOTUS Rules BOOKING.COM Eligible for Trademark Registration

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On June 30, the Supreme Court, in an 8-1 decision, issued a highly anticipated decision in United States Patent and Trademark Office et al. v. Booking.Com B.V. answering the question whether a trademark consisting of a...more

Polsinelli

Booking.Com Secures Key Trademark Win From Supreme Court – Internet Domain Name Marks Aren’t Always Generic

Polsinelli on

In the ruling handed down this week in United States Patent and Trademark Office v. Booking.com B.V., No. 19-46, the United States Supreme Court voted 8-1 to affirm lower court rulings holding the trademark applications for...more

Ballard Spahr LLP

Booking.com Not Generic: Supreme Court Holds Combined Generic Terms Can Be Eligible for Trademark Registration

Ballard Spahr LLP on

The Supreme Court held June 30, 2020, in United States Patent and Trademark Office v. Booking.com B.V., that a generic term combined with a generic internet-domain suffix is not per se ineligible for trademark registration....more

Knobbe Martens

A Mark Styled "Generic.Com" May Be Trademark Eligible

Knobbe Martens on

Before the Supreme Court of the United States. On Writ of Certiorari from the United States Court of Appeals for the Fourth Circuit. Summary: A term styled "generic.com" is not necessarily generic and can be eligible for...more

McGuireWoods LLP

Supreme Court Trademark Ruling Shows You Can’t Judge a Book(ing) by Its .Com

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The U.S. Supreme Court on June 30, 2020, decided U.S. Patent & Trademark Office v. Booking.com B.V., handing a win to Booking.com and holding that whether a generic term combined with a “.com” domain name results in a generic...more

Stinson LLP

Supreme Court Holds “Generic.com” Marks are Not Per Se Generic

Stinson LLP on

In an 8-1 decision issued Tuesday, the Supreme Court declined to adopt the per se rule urged by the U.S. Patent and Trademark Office (USPTO) that when a generic term is combined with a domain name like “.com,” the resulting...more

McCarter & English, LLP

Book It: Supreme Court Holds Booking.com Is Registrable As A Trademark

How appropriate that the first-ever Supreme Court case to consider whether trademarks used on the internet can be registered should also be the first in which oral argument was conducted remotely. The issue in this historic...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - May 2020: One of These Things is Not Like the Other: Limiting Disclaimers Within Classes of Services

In a precedential decision earlier this month, the TTAB found that a disclaimer of a term is required as to all services in a Class if it is descriptive as to any services in that Class. This decision appears to contravene...more

Akerman LLP - Marks, Works & Secrets

The Parameters of Generic Marks: Booking.com before the Supreme Court

The Lanham Act (“Act”) makes it clear that generic terms cannot be registered as trademarks. But can an online business create a protectable trademark by adding a generic top-level domain (e.g., “.com”) to an otherwise...more

Cadwalader, Wickersham & Taft LLP

Booking.com – Justices Persevere through First-Ever Conference Call Oral Argument to Hear Arguments as to Registrability of .Com...

On Monday, May 4, 2020, for the first time in its 231-year history, the Supreme Court heard oral arguments through a telephone conference call, allowing the attorneys to present arguments while complying with shelter-in-place...more

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