Tag: TTAB

The Prior Registration Puzzle: Overcoming Registration Refusals Based on Intervening Third-Party Marks

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Many trademark attorneys practicing for an appreciable length of time have encountered the following scenario:

  1. Your client owns a registration for a mark (the “Anchor Registration”);
  2. Your client refrained from opposing registration of a similar third-party mark (the “Intervening Mark”) because it saw a low likelihood of confusion;
  3. Your client’s subsequently filed applications in the Trademark Office for the mark depicted in the Anchor Registration (or a virtually identical mark) were refused registration based on the Intervening Mark; and
  4. Attempts to obtain consent from, or coexist with, the Intervening Mark owner were unsuccessful for some reason.

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College T-shirts and Trademarks – Ornamental or Protectable?

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As college freshmen head to campus for the start of classes, there is one vital campus bookstore purchase before classes begin: a T-shirt bearing the college’s logo. This purchase is not only a rite of passage for freshmen; it also touches on an important concept in trademark law: ornamental use of trademarks on T-shirts.

What is ornamental use?

Under sections 1, 2, and 45 of the Trademark Act, the United States Patent and Trademark Office (“PTO”) can refuse registration of a trademark on the ground that the applied-for matter is decorative and therefore does not function as a mark because it is merely ornamentation. In re Peace Love World Live, LLC, 127 U.S.P.Q.2d 1400 (TTAB 2018). Ornamental matter can include words, designs, slogans, or trade dress.

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