Understanding Trademark Genericism Trademark law exists to protect distinctive marks that identify the source of a particular good or service. However, when a trademark becomes so widely known that it no longer acts as a source identifier, but the mark primarily describes the product in which it is being used, it risks becoming “generic” and …
Category: trademark
Note on the Useful Articles Doctrine in Copyright
Copyright law broadly protects creative works and the human endeavors required to create an original work of authorship. However, creativity should not be confused with utility. A dictionary definition for “creativity” is “ability to make or otherwise bring into existence something new.” A definition for “utility” is “the quality or state of being useful.” A …
Understanding the Doctrines of Natural Expansion and Tacking
A recent Court of Appeals for the Federal Circuit case sheds light on two little-known trademark doctrines: the doctrine of natural expansion and the doctrine of tacking. Both can be useful arguments in an ex parte application. However, both require very specific sets of facts in order to apply them properly in a response. In …
Understanding Trademark Distinctiveness
The concept of distinctiveness is important under trademark law because it is one of the requirements for a federally registered mark. Distinctiveness goes to the strength of the mark. In theory, the more distinctive a mark, the more likely it is capable of identifying and distinguishing against all other sources of goods and services used …
Thoughts on Elster and the Names Clause
Eight months after the U.S. Supreme Court held in the Elster case that so-called Names Clause under Section 2(c) of the Lanham Act, the federal trademark law, prohibited the use of a living person’s name in a proposed mark without that person’s consent, we are still seeing many applications filed raising Section 2(c) issues. What …
USPTO Trademark Fees Increasing This Month
Although USPTO fees typically increase, for different matters, every two years, this year’s increases are sweeping. According to the USPTO, policy rationales for the fee increases included in the published final rule: These rationales appear in line with forcing application efficiency, with most of the burden being carried by the applicant. Five to ten years …
A Tale of Two Airports
The ongoing saga between two of the Bay Area’s major airports continues as Oakland International Airport (OAK) filed an appeal on December 12, 2024, on the order for preliminary injunction granted to San Francisco International Airport (SFO) by a federal district judge ordering it to desist from using “San Francisco Bay Oakland International Airport,” which …
DEA Confirms Cannabis Rescheduling
It was announced that the U.S. Drug Enforcement Administration (DEA), the federal agency responsible for enforcement of federal drug laws, will take up the recommendation from the U.S. Health and Human Services (HHS), and reschedule marijuana (cannabis) from the current Schedule I to Schedule III under the Controlled Substances Act (CSA). Rescheduling will have major …
Limitations on Federal Trademark Law Reach: No Extraterritoriality Under Lanham Act
This posting reviews the last IP case decided by the U.S. Supreme Court in its 2022 term. As mentioned before, the keyword among these cases is “limitation.” The consensus of the Court is that there are limitations on the breadth of particular areas of IP law. These limitations will affect the IP holder’s rights, as …
Limitations of the 1st Amendment in Trademark Cases: the Dog Toy Case
Reviewing the last U.S. Supreme Court 2022 term, the highest court decided several high-profile cases involving intellectual property rights. The keyword among these cases – two trademark, one copyright, and one patent – is “limitation.” What does this mean? The various laws implicated by these opinions do not operate in a vacuum and work in …