Category: Trademarks

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The Term GREEN Deemed Descriptive by U.S. Trademark Office – 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 issued the In re Calera Corp decision, which deemed the term GREEN to be merely descriptive of an environmentally friendly product or service. As a Miami Trademark Attorney, I found this decision interesting in light of the increasing number of GREEN trademarks and service marks that I see in use in every day life. At issue was an applicant’s trademark GREEN CEMENT associated with an environmentally friendly brand of cement. The Trademark Office’s examining attorney refused to register this mark under the premise that

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Rebutting a presumption of abandonment of a trademark due to “non-use” – Florida Patent Lawyer Blog

Written by Mark Terry    What constitutes abandoning a trademark, thereby opening the door for someone else to use it? How long can you cease use of a trademark without losing trademark rights? These are common questions I field regularly as a Miami Trademark Attorney. And the answer depends on a few factors. The landmark case often cited in trademark abandonment disputes is Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990), which involved the abandonment of a cigarette brand. We all know that two years of non-use of a mark is prima facie abandonment.

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Abandonment-Based Trademark Cancellation Proceedings At the U.S. Trademark Office – Florida Patent Lawyer Blog

Written by Mark Terry    Can you cancel an active U.S. Trademark Registration that has been abandoned? As a Trademark Attorney practicing in Miami, Florida, I’ve been asked this question more than once by a client wanting to clear the path for their own registration. The Trademark Act provides for the cancellation of a registration if the registered mark has been abandoned. See Section 14 of the Trademark Act, 15 U.S.C. §1064. Under Section 45 of the Trademark Act, 15 U.S.C. §1127, a mark is considered abandoned when “its use has been discontinued with intent not to resume such use.” The definition of

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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 refusal, the first thing the TTAB

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