How To Select a Strong Trademark
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
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 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
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
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
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
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
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
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
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
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
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
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
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
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
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
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
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
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
On Monday, we listened in real time to the livestreamed Supreme Court oral arguments in the trademark registration case United States Patent and Trademark Office v. Booking.com B.V. Because of COVID-19, the arguments were...more