Download Prosecution Group Luncheon

Prosecution Group Luncheon
Trademark Updates
October, 2011
Specimen for Financial Services
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when a service mark is used in advertising, the specimen must show an
association between the mark and the services. "A specimen that shows only
the mark, with no reference to the services, does not show service mark
usage.”
“In other words, while [the sign] may indicate a source, it is a source in a
vacuum unconnected to any service, at least without prior knowledge of an
existing client. *** Upon seeing this sign, it could be literally for anything that
one might find in an office park.”
In re R & B Receivables Management, Inc., Serial No. 77855168 (September 23, 2011) [not precedential].
“A Brand Name law firm”
– Merely Descriptive
• Applicant filed for A BRAND NAME LAW FIRM for "legal services”
• EA: "brand name" is a "feature, characteristic, function or purpose of
applicant's legal services," that "law firm" merely describes the
services, and that the combination is merely descriptive.
• Applicant: the mark is a double entendre because BRAND NAME
also means widely familiar, well-known notable, famous, a
household name, "the standard in the industry."
• TTAB: although applicant’s mark has a second meaning, it is a
laudatory descriptive one, and whichever meaning that
one would ascribe to the mark, it is merely descriptive of the
identified legal services.
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In re Collen IP Intellectual Property Law, P.C., Serial Nos. 77513717 and 77513748
(September 18, 2011) [not precedential].
Trade Name Rights
• Applicant relied on rights in PLATEFRAME for license plate frames to
cancel the mark "PRETTYPLATEFRAMES" for the same goods
– PLATEFRAME is a weak mark, but
– “Based upon [the] evidence showing ad copy prominently
displaying the PLATEFRAME mark and goods, and specifically
the extensive magazine advertisements between October 2003
and November 2005, we find that petitioner’s mark had acquired
sufficient trade identity rights prior to the application filing date for
respondent’s involved registration, and hence, petitioner has
shown its priority.”
• MacNeil Automotive Products, Limited v. Theresa Harris, Cancellation
No. 92051000 (September 2, 2011) [not precedential].