Category: Trademarks


How to Successfully Defend a Merely Descriptive Rejection of a Trademark

Written by: Mark Terry In an informative decision today, the Trademark Trial and Appeal Board (TTAB) reversed a Trademark Examining Attorney’s merely descriptive rejection. The In re Fujarek case, which I prosecuted, illustrates how to successfully defend a mere descriptiveness rejection of a trademark at the Trademark Office. As background, the Applicant’s mark was VOICE and the description of goods and services were “broadcasting services, namely, radio and television broadcasting by satellite and mobile phones, via a global computer network”. The Examining Attorney had issued a mere descriptiveness refusal, which we appealed to the TTAB. In reversing the mere descriptiveness

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Polaroid: A Trademark’s Life After Bankruptcy(ies)

Written by Mark Terry Did we used to shake the film that came out of the Polaroid camera or did we wave it in the air? Everyone had their own technique to make the picture appear faster, I suppose. Regardless, the concept of Polaroid instant film made it into the pop culture – even making its way into an Outkast song (“… shake it like a Polaroid picture!”). But then Polaroid filed for bankruptcy in 2001 … and again in 2008! Did that mean the end of the iconic Polaroid brand? Far from it.             Land, the inventor of the Polaroid

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Would you have appealed this 101 Rejection?

Written by Mark Terry             In an homage to John Welch’s well-known TTAB Blog, today we ask “Would you have appealed this 35 U.S.C. § 101 rejection?             In a straightforward decision today, the Board of Patent Appeals and Interferences (BPAI) affirmed an Examiner’s 35 U.S.C. § 101 rejection of a computer program product claim based on the disclosure of a transitory medium in the specification. This blog post highlights a very common rejection for software-related claims.             Recall that “A transitory, propagating signal . . . is not a process, machine, manufacture, or composition of matter [under 35 U.S.C. § 101] and,

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The Value of Trademarks as Personal Brands

Written by Mark Terry  Michael Jackson’s unfortunate passing highlighted his international fame and the value of the Michael Jackson brand. What was surprising to many was that Michael Jackson had major financial troubles before his death, which is why he decided to go on his final “This Is It” tour. Michael Jackson’s music and products generated large amounts of income before his death, but I was stunned to see the magnitude of his earnings after his death. Since his death, the Michael Jackson brand, as reported by Billboard, has generated over $1 Billion from sales and a record deal. Much of

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Update on the Aftermath of In re Bose and Fraud on the Trademark Office

Written by Mark Terry  What has happened in the courts and the Trademark Trial and Appeal Board (TTAB) since In re Bose? Surprisingly, not much. As a trademark attorney in Miami with a large trademark docket, fraud on the trademark office is a topical issue I continually follow. You are well aware that last year’s Bose decision – In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) – has completely changed the criteria for finding fraud on the Trademark Office. The Bose fraud criteria can be summed up as follows: “in order to prove fraud, [the charging party] must show that [1] a statement was false, [2]

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How to Respond to a Merely Descriptive Trademark Rejection

Written by Mark Terry  When marketing a product or service, brand recognition is a key component to success.  The goal is to keep consumers coming back for your company’s brand name because they recognize it as identifying the goods or services your company provides.  Companies often opt for a trademark that tends to be descriptive of the product provided so that consumers will quickly and easily identify the trademark with the product.  This article discusses the test for merely descriptive rejections from the United States Patent and Trademark Office (“PTO”), options for responding to an Office Action from PTO that asserts a

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The Standing Requirement in Cancellation Proceedings before the U.S. Trademark Office – Florida Patent Lawyer Blog

Written by Mark Terry  Can anyone commence a trademark cancellation proceeding before the U.S. Patent and Trademark Office? Must you have a tie or other relation to the mark being canceled? As a Trademark Lawyer practicing in Miami, Florida, I’ve been asked this question more than once by a client who desires to cancel a U.S. trademark registration. On the issue of standing to institute a cancellation proceeding, 15 U.S.C. § 1064 [Section 14 of the Trademark Act] states that a petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be

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Presenting at the 11th International Litigation and Arbitration Conference – Florida Patent Lawyer Blog

Written by Mark Terry  I was honored to present today at the 11th International Litigation and Arbitration Conference at the beautiful Biltmore Hotel in Miami, Florida. We discussed various aspects of international law, with my focus being on trademark issues relating to import/export of goods. A common phone call I receive from clients relates to the halting of goods at a port by Customs and Border Protection due to trademark issues. It usually sounds like this: “Mark, my goods were stopped at the port due to a trademark issue. Help!” Often, the problem relates to missing paperwork regarding permission or authorization to use a registered

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Nautica Successfully Opposes GET NAUTI Trademark – Florida Patent Lawyer Blog

Written by Mark Terry  Last week, the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office agreed with Nautica Apparel’s that the GET NAUTI trademark should not be registered. As a Miami Trademark Lawyer, this case is interesting because it illustrates the criteria an opposer must meet when seeking to oppose the registration of a trademark that may negatively affect him. This case involved the well-known and registered NAUTICA trademarks which have been historically used in connection with a variety of products, such as clothing and toiletries, dating back many years. Recently, a party applied to

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What are the Legal Implications of a §44(e) Foreign-Based U.S. Trademark Registration? – Florida Patent Lawyer Blog

Written by Mark Terry  Obtaining a U.S. trademark registration based on a foreign registration under §44(e) has its benefits, but what happens after the U.S. registration is obtained? Is the validity and/or status of the U.S. registration tied to the foreign registration? Is the foreign-based U.S. registration subject to the same provisions that apply to all other U.S. registrations? As a Florida Trademark Lawyer, I am often asked these questions by savvy clients seeking U.S. trademark protection for their foreign trademark registrations. We all know there are benefits to filing a U.S. trademark application under §44(e) claiming priority to a foreign

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