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October 2011 Trademark Group Luncheon


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Topics covered in this month’s trademark group presentation include a recent decision involving the sufficiency of a service mark specimen, a recent decision rejecting a descriptive mark on two grounds, and a recent decision finding trade name rights in an admittedly weak mark.

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October 2011 Trademark Group Luncheon

  1. 1. Prosecution Group Luncheon Trademark Updates October, 2011
  2. 2. Specimen for Financial Services <ul><li>when a service mark is used in advertising, the specimen must show an association between the mark and the services . &quot;A specimen that shows only the mark, with no reference to the services, does not show service mark usage.” </li></ul><ul><li>“ 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.” </li></ul><ul><li>In re R & B Receivables Management, Inc. , Serial No. 77855168 (September 23, 2011) [not precedential]. </li></ul>
  3. 3. “ A Brand Name law firm” – Merely Descriptive <ul><li>Applicant filed for A BRAND NAME LAW FIRM for &quot;legal services” </li></ul><ul><li>EA: &quot;brand name&quot; is a &quot;feature, characteristic, function or purpose of applicant's legal services ,&quot; that &quot;law firm&quot; merely describes the services, and that the combination is merely descriptive. </li></ul><ul><li>Applicant: the mark is a double entendre because BRAND NAME also means widely familiar, well-known notable, famous, a household name, &quot; the standard in the industry .&quot; </li></ul><ul><li>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. </li></ul><ul><li>In re Collen IP Intellectual Property Law, P.C. , Serial Nos. 77513717 and 77513748 (September 18, 2011) [not precedential]. </li></ul>
  4. 4. Trade Name Rights <ul><li>Applicant relied on rights in PLATEFRAME for license plate frames to cancel the mark &quot; PRETTYPLATEFRAMES &quot; for the same goods </li></ul><ul><ul><li>PLATEFRAME is a weak mark, but </li></ul></ul><ul><ul><li>“ 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.” </li></ul></ul><ul><li>MacNeil Automotive Products, Limited v. Theresa Harris , Cancellation No. 92051000 (September 2, 2011) [not precedential]. </li></ul>