USPTO Issues New Exam Guide for Generic Domains

Last week, the USPTO issued its long overdue exam guide from SCOTUS’ June 30, 2020 decision in the Booking.com case (read our blog post on the case here). The Booking.com case rejected the USPTO’s bright line rule that “generic.com” trademarks should be automatically refused on grounds of genericness. As is customary when a USPTO rule is struck down by SCOTUS, …

What Is Bona Fide Intent?

There has been a lot of talk lately about what the true meaning of “bona fide intent” means under the Lanham Act, given the plethora of recent applications filed by trademark squatters in an effort to profit from the Washington Redskins’ name change. It is against U.S. policy to file trademark applications merely to reserve a trademark. The applicant must …

What the Fauci?

In late March, we advised that a large number of COVID and CORONA VIRUS trademark applications had been filed at the USPTO.  In fact, more than 200 such applications have been filed, and it’s likely not one of them will be approved for registration. We explained the terms are not able to function as a trademark. But, last week, Dr. …

What Is Trademark Use in Commerce?

In order to qualify to register your client’s trademark at the USPTO, it must be using the trademark in commerce. But, what exactly does “use in commerce” for a trademark mean? Trademark Use in Commerce Trademark “use in commerce” is a legal term of art and refers to any use generally that crosses state lines. In short, it is any …

Who Owns Your Trademark - Trademarkabilities

Who Owns Your Trademark?

The answer is not as simple as you might think.  Ownership is a threshold issue at the USPTO and yet many applicants get this wrong on their application. If the application is filed in the name of the wrong trademark owner, it may result in your trademark being worth less than the piece of paper it is printed on.  Below, …

The Importance of Trademark Searching - Trademarkabilities

The Importance of Trademark Searching

Congratulations!  Your client has decided on a new name for its company or brand.  Before you apply for a federal trademark, it’s important to conduct a trademark search to make sure the trademark is available.  What kind of trademark searching should you do? Preliminary v. Full Availability Searches Searching USPTO records is a good first step. This will let the …