The TTAB: Service Mark Use Requires More Than Just Preparation

JD Supra Law

On December 10, 2021, the TTAB issued a precedential decision reminding trademark practitioners and applicants that service mark use requires that an applicant actually render the services recited in the trademark application; mere preparation to render the services is insufficient.

Actual Use, Not Preparations For Use, Of A Service Mark Is Necessary For The USPTO To Register It

IP Intelligence

If you desire to register a service mark asserting use that is preparatory for the rendering of your services, your application will fail in the U.S. Instead, the services must be actually rendered in connection with the mark for a registration to be granted.

Insiders

Sign Up for our Newsletter

This site is protected by reCAPTCHA and the Google Privacy Policy and Terms of Service apply.

Actual Use, Not Preparations For Use, Of A Service Mark Is Necessary For The USPTO To Register It

JD Supra Law

If you desire to register a service mark asserting use that is preparatory for the rendering of your services, your application will fail in the U.S. Instead, the services must be actually rendered in connection with the mark for a registration to be granted.

The TTAB: Service Mark Use Requires More Than Just Preparation

Above the Fold

On December 10, 2021, the TTAB issued a precedential decision reminding trademark practitioners and applicants that service mark use requires that an applicant actually render the services recited in the trademark application; mere preparation to render the services is insufficient.

The TTAB: Service Mark Use Requires More Than Just Preparation

LexBlog IP

On December 10, 2021, the TTAB issued a precedential decision reminding trademark practitioners and applicants that service mark use requires that an applicant actually render the services recited in the trademark application; mere preparation to render the services is insufficient.

Thinking of Registering a Service Mark That Primarily Benefits Your Company? Think Again

JD Supra Law

If you are contemplating registering a service mark that primarily benefits your company and not others, don’t bother; it will be refused registration.

Thinking of Registering a Service Mark That Primarily Benefits Your Company? Think Again

IP Intelligence

If you are contemplating registering a service mark that primarily benefits your company and not others, don’t bother; it will be refused registration. Section 1053 (which, generally, provides that service marks used in commerce are registrable like trademarks) and Section 45, 15 U.S.C.

Actual Use, Not Preparations For Use, Of A Service Mark Is Necessary For The USPTO To Register It

LexBlog IP

If you desire to register a service mark asserting use that is preparatory for the rendering of your services, your application will fail in the U.S. Instead, the services must be actually rendered in connection with the mark for a registration to be granted.

Precedential No. 34: TTAB Affirms Nonuse Refusal - Service Mark Use Requires Rendering of the Services, Not Just Preparation

The TTABlog

In a somewhat muddled decision, the Board affirmed a refusal to register the proposed mark HAVE SOME DECENCY for various charitable fund raising services on the ground that the mark was not in use as of the applicant's Section 1(a) filing date. Applicant Suuberg made preparatory measures to use the mark but never rendered the services before her filing date. What is the first use date for the restaurant's services?

PROCEDURE OF TRADEMARK SEARCH

Biswajit Sarkar Copyright Blog

A trademark search is made in the Indian Trademark Registry database, similar word marks, as well as phonetically similar names in a specific class can be comprehensively searched. As per Nice Classification, Class 1- 34 deals with various goods, and Class 35-45 deals with services.

PROCEDURE FOR TRADEMARK REGISTRATION IN INDIA

Biswajit Sarkar Copyright Blog

Word mark. Device mark. Description of the Goods or Services. Classification of the Goods or Services-. Trade Mark & Service Mark Trademark UncategorizedPreparation/ Filing of Trademark Application (s/18 of the Trademarks Act, 1999).

Amazon wins trademark case

Biswajit Sarkar Copyright Blog

Blogs Intellectual Property Trade Mark & Service Mark TrademarkOn January 27, 2021, the UK Intellectual Property Enterprise Court (IPEC) dismissed a patent infringement lawsuit against Amazon, the e-commerce retailer.

Amazon wins trademark case

Biswajit Sarkar Copyright Blog

Blogs Intellectual Property Trade Mark & Service Mark TrademarkOn January 27, 2021, the UK Intellectual Property Enterprise Court (IPEC) dismissed a patent infringement lawsuit against Amazon, the e-commerce retailer.

Trade Dress: What It Is and How to Protect It

JD Supra Law

Trade Dress Is Either a Trademark or Service Mark. Trade dress” functions as either a trademark or service mark.

Protect Your Goodwill: Allowing Third Parties to Use Your Trademarks

JD Supra Law

Insurers naturally allow their agents and other third parties to use their trademarks and service marks. But unless you set clear guidelines for third-party use of your brands, this can be risky.

The Trademark Counterfeiting Act

JD Supra Law

In the United States, trademarks, service marks, certification marks, and collective marks are protected not only under civil law pursuant to the Lanham Act, but also under criminal law pursuant to the Trademark Counterfeiting Act, 18 U.S.C.

Which trademark or copyright symbol do I use?

Erik K Pelton

TM – Unregistered mark, used with products and tangle items. One of the most common questions I get is about which symbol to use. Here is a handy cheat sheet I made: ® – a.k.a “circle-R” – Registered trademark with the USPTO.

Domain Name Dispute Settlement

Kashishipr

1) Identical to or confusingly similar : The domain that is in question must be identical to or confusingly similar to a name, trademark, or service mark in which you have rights.

Cybersquatting – A Menace in Digital India

Biswajit Sarkar Copyright Blog

It can be done under the following grounds: -the Registrant’s domain name is identical to or similar to a name, trademark, or service mark in which the Complainant has ownership; -the Registrant has no entitlement or legitimate interests in the web domain; and.

Third Circuit Joins Sister Courts in Ruling TTAB Decisions May Not Have Preclusive Effect

IP Watchdog

In the mid-1990s William Howard joined the band, and in 1997, Beasley obtained a New Jersey state service mark for THE EBONYS. 4,170,469 (the ‘469 mark) for THE EBONYS, as a federal trademark. .

TTAB Dismisses MANDALAEVERYWEAR Opposition; Opposer Proved Prior Advertisement But Not Prior Rendering of Services

The TTABlog

Opposer James Barnard claimed prior use of the mark MANDALA for business consulting and branding services, and alleged likelihood of confusion with the Applicant's proposed mark MANDALAEVERYWEAR for marketing consulting services.

Get 2 Go Sued for Alleged Trademark Infringement of getGo®

Indiana Intellectual Property Law

According to the Complaint, Giant Eagle acquired the Rickers convenience store chain in 2018 and eventually rebranded those stores under the getGo® marks. Further, Giant Eagle claims it has spent millions of dollars to advertise and promote its services using the getGo® Marks.

Role of Trademark Lawyer in India

Biswajit Sarkar Copyright Blog

Primarily, a trademark distinguishes the goods and services of one trader from those of others. To sum up, the role of a trademark lawyer in India involves providing a range of legal and other services in relation to the creation, registration, and maintenance of trademarks and service marks.

Trademark lawyer in India

Biswajit Sarkar Copyright Blog

Primarily, a trademark distinguishes the goods and services of one trader from those of others. To sum up, the work of a trademark lawyer involves providing a range of legal and other services in relation to the creation, registration, and maintenance of trademarks and service marks in India.

Advertising injury coverage may exist even when gravamen of underlying complaint is TM

43(B)log

Vitamin Energy, LLC v. Evanston Ins. Co., -- F.4 th , 2022 WL 39839, No. 20-3461 (3d Cir.

Trademarks vs. Copyrights for Startups

TraskBritt Intellectual Property

Unlike patent laws, in the US, the law conveys immediate copyright and trademark rights once your trademark is used in association with products or services and your original content is written down or recorded. A trademark is always associated with specific goods and services.

Around the IP Blogs

The IPKat

Trade marks The EUIPO Observatory launched an awareness campaign entitled “Risks and Damages Posed by IPR Infringement in Europe”. It is part of the annual Pan-European Media Campaign and also marked World Anti-Counterfeiting Day on 8 June. These feet were made for walking.

TTABlog Quarterly Index: October - December 2021

The TTABlog

TTABlog Test: Is "SAMSUNG WIZ" for Smartphones Confusable with "THE WIZ" for Consumer Electronics Retail Services? Section 2(e)(1) - Mere Descriptiveness: TTABlog Test: Is ZERO MEAT Merely Descriptive of Animal, Fish, and Poultry Certification Services?

Welcome Back to TM Incapability and Merely Informational USPTO Refusals

DuetsBlog

Welcome back to another edition of Merely Informational and Incapable Marks. finally was added to its menu of marks. As predicted, the USPTO found Welcome Back to be merely informational and incapable of performing a trademark function for take-out restaurant services.

Importance of Nice Classification

IP and Legal Filings

The Nice Agreement, concluded at Nice in 1957, revised at Stockholm in 1967 and at Geneva in 1977, and amended in 1979, establishes a classification of goods and services for the purposes of registering trademarks and service marks (the Nice Classification).

Music 52

Dastar doesn't bar allegedly false advertising about source of planned development services

43(B)log

Defendants' letter allegedly copied text from LStar Trademark infringement: LStar never specified what its trademarks or service marks were. Not every word on a label or ad is a mark. Some service/product confusion also going on here.] LStar Development Gp.,

TTAB Denies Petition to Cancel "ONEPACKET" Registration: Failure to Prove Nonuse

The TTABlog

Respondent's rope-a-dope defense proved to be successful in this cancellation proceeding aimed at a registration for the mark ONEPACKET (standard form) for computer-related services.

Trade Dress Protection: Laws and Its Relevance

IP and Legal Filings

In other words, the external appearance or characteristics of the product or service must be exclusive to a brand in a manner that would help the consumers distinguish one brand from another. However, trade dresses and their protection may fall under the ambit of the Trade Marks Act, 1999.

Law 52

"NAMX" Not Confusable with "NYMEX" for Electronic Financial Services, Says TTAB

The TTABlog

In this nearly-six-year-old opposition proceeding, the Board rejected the New York Mercantile Exchange's Section 2(d) claim, concluding that confusion is not likely between opposer's NYMEX mark and applicant's mark NAMX , both for various electronic financial services.

TM infringement and false advertising claims related to putative open source software "fork" succeed

43(B)log

It has trademark registrations for the word mark “NEO4J.” They also regularly used the Neo4j Mark as a hashtag on Twitter. So too with defendant’s iGov’s use of the Neo4j Mark in its email address and URL. Neo4j, Inc. PureThink, LLC, 2021 WL 2483778, No. 5:18-cv-07182-EJD (N.D.

The Third Circuit Limits Preclusive Effect of the TTAB Rulings

LexBlog IP

In 1997, Beasley obtained a New Jersey state service mark for THE EBONYS. 4,170,469 [the “’469 mark”]). In 2013, Beasley filed a petition with the TTAB to cancel the ’469 mark, contending that Howard had defrauded the PTO.

What’s in a number? A discussion of two decisions concerning rights in telephone numbers

IP Whiteboard

According to section 454B of the Telecommunications Act 1997 (Cth), “Determination of a person as the numbering scheme manager does not confer any property rights in numbers used in connection with the supply of carriage services in Australia.”. Domain Name Dispute Resolution Policy ( Policy ): the Disputed Domain Names were identical or confusingly similar to a name, trademark or service mark in which the Complainant had rights; and.

Trademark Symbols ®, ™, ? – An Overview

LexBlog IP

“TM” ( ) and “SM” (℠) are used when a trademark is used in commerce with goods and/or services. Below, I break down in greater detail what these marks mean. On Windows, press ALT + 0174 to insert a registered mark symbol.