Judging a Book by Little More than Its Cover: TTAB Finds that Single Book May Meet Trademark-Use Test

Written by Eleanor M. Lackman and Adé Jackson

A recent precedential opinion from the U.S. Patent & Trademark Office Trademark Trial and Appeal Board (TTAB), Shannon DeVivo v. Celeste OrtizOpposition No. 91242863 (TTAB Mar. 11, 2020), challenges the well-established concept that a single title of a book cannot be a trademark, leaving a wide opening for those who seek to register terms previously considered non-registerable.

In the DeVivo proceeding, Celeste Ortiz sought to register the term ENGIRLNEER for cups and mugs, lanyards, and shirts and sweatshirts.  Shannon DeVivo, the owner of two pending trademark applications for the term for children’s books, notebooks, and a website offering information to young women and girls seeking careers in stem cell research opposed the application, citing likely confusion.  On an accelerated case procedure, the TTAB sustained the opposition, partly relying on the fact that DeVivo had used ENGIRLNEER on the cover of a single book, which the TTAB surprisingly found to be a trademark use. Continue reading “Judging a Book by Little More than Its Cover: TTAB Finds that Single Book May Meet Trademark-Use Test”

Multicolor Marks On Product Packaging Can Be Inherently Distinctive

Written by Alesha M. Dominique and Sofia Castillo

On April 8th, the U.S. Court of Appeals for the Federal Circuit, in In re Forney Industries, Inc., held that multicolor marks can be inherently distinctive when used on product packaging.

In 2014, Forney Industries (“Forney”), a company that manufactures tools and accessories for welding and machining, applied to register a multicolor mark for its packaging and labels consisting of a black banner immediately followed by the color yellow, progressively fading into red. The trademark examining attorney refused to register the multicolor mark after concluding it was not inherently distinctive, and required that Forney Industries submit “sufficient proof of acquired distinctiveness.” The Trademark Trial and Appeal Board (TTAB) affirmed the refusal, and Forney appealed to the Federal Circuit.

Continue reading “Multicolor Marks On Product Packaging Can Be Inherently Distinctive”

USPTO Extensions

The USPTO Extends Certain Trademark Deadlines Amid COVID-19 Disruptions

Written by Alesha M. Dominique and Marissa B. Lewis

The United States Patent and Trademark Office (“USPTO”) announced earlier this week a thirty-day extension of certain trademark deadlines due to the ongoing COVID-19 pandemic.  The extension applies broadly to trademark deadlines that fall between March 27, 2020 and April 30, 2020, including, in particular:

  • Responses to office actions, including notices of appeal from a final refusal;
  • Statements of use or requests to extend the time to file a statement of use;
  • Notices of opposition or requests to extend the time to file a notice of opposition;
  • Priority filings;
  • Transformations of international registration into a national trademark application;
  • Affidavits of use or excusable nonuse; and
  • Renewal applications.

Continue reading “USPTO Extensions”

New USPTO Guidelines for Electronic Filings and Specimens

Trademark, Patent, USPTO, TTAB, TEAS, Email
Photo Credit: istock.com/rs-photo

By Alesha M. Dominique and Dima S. Budron

On February 15, 2020, the United States Patent and Trademark Office’s (USPTO) new rules will go into effect (84 Fed. Reg. 37081) requiring applicants, registrants, and parties to a proceeding before the Trademark Trial and Appeal Board (TTAB) to provide their own email address to receive USPTO correspondence, and file all trademark submissions electronically using the Trademark Electronic Application System (TEAS), with limited exceptions.  In addition, the new rule amends the requirements for specimens in accordance with the Trademark Act and precedential case law.

Requirement to Provide Applicant, Registrant and Party Email Address

As of February 15, 2020, applicants, registrants, and parties to a proceeding before the TTAB, will be required to provide and maintain their own valid email address for receipt of correspondence from the USPTO.  This requirement is in addition to the attorney address that is already required.  The applicant’s, registrant’s, or party’s email address will be publicly displayed along with other contact information already available in the USPTO’s public database. Continue reading “New USPTO Guidelines for Electronic Filings and Specimens”

Foreign Trademark Applicants and Registrants Are Now Required to be Represented by U.S. Attorneys

Photo credit: istock.com/Man at Work

By Alesha M. Dominique and Dima S. Budron

The U.S. Patent and Trademark Office (USPTO) published a new rule on July 2, 2019, requiring trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings whose domicile is not located within the United States or its territories to be represented before the USPTO by a U.S.-licensed attorney as of August 3, 2019. Domicile is typically defined as the permanent legal place of residence of an individual or the headquarters of an entity. The rule does not retroactively apply to applications filed before August 3, 2019, but impacts such applications if an office action is issued on or after August 3, 2019, requiring the applicant to designate a U.S.-licensed attorney to respond. This rule is intended to streamline trademark registrations and reduce the potential of invalidations by providing the USPTO a more efficient way to enforce statutory and regulatory requirements.

Continue reading “Foreign Trademark Applicants and Registrants Are Now Required to be Represented by U.S. Attorneys”