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.

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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.

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.

Lotus-Shaped Acupressure Mat Product Design Lacks Acquired Distinctiveness and Fails to Function as a Service Mark

The TTABlog

The mark comprises "a three-dimensional configuration comprising a stylized lotus flower." Because a product configuration cannot be inherently distinctive, the sole issue was whether the proposed mark had acquired distinctiveness. Maybe a food item for restaurant services?

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.

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

LexBlog IP

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 1127 (which provides the definition of “service mark”).

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?

Types Of Trademarks And Its Importance

IP and Legal Filings

A trademark works as an instrument to claim any sort of mark as your own. These include wordmarks, service marks, certification marks, and many more. Word Mark- A wordmark may include a word, a combination of words, slogans, taglines, or numerals.

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.

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.

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.

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.

Protection of Trademarks in Cambodia

IP and Legal Filings

Cambodian trademark law defines a “mark” as any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise. Non-traditional non-visible marks, such as sound, smell, gestures and motion, are not capable of being registered.

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.

Trademark and Its Regulations

IP and Legal Filings

The registration of your product holds enormous significance as it ensures your mark isn’t misrepresented in the market, safeguards your goodwill, ensures control over advertising and branding, and the list can go on.

"GET ORDAINED" Fails to Function as a Source Indicator for Ordination-Related Services, Says TTAB

The TTABlog

Applicant’s own use of “Get Ordained” to convey the ordinarily-understood meaning of the words, i.e. “become ordained” or “become a minister,” is strong evidence that Applicant’s consumers will perceive “get ordained” not as a service mark but rather for the commonly understood meaning of the words.

SCIENTIFIC STUDY OF GOD

Patently-O

The USPTO refused to register Glascoe’s mark SCIENTIFIC STUDY OF GOD for use as a service mark when “analyzing the process of creating a human being, the earth, the universe and its environment.” In re Glascoe (Fed. 2022).

Precedential No. 33: #LAW Fails to Function as a Source Indicator for Legal Referral Services, Says TTAB

The TTABlog

The Board upheld a refusal to register the proposed mark #LAW for legal referral services, finding that the term, as used on Applicant Pound Law's specimens of use, fails to function as a source indicator.

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. .

What are well known trademarks?

Biswajit Sarkar Copyright Blog

It means only the registered proprietor of Amul, i.e. Kaira District Cooperative Milk Producers can register the word Amul for any class of goods or services. Marks that have achieved such status and reputation are known as well known trademarks.

Call for Nominations for IPLAC Creator of the Year

Chicago IP

Trademark Law: A powerful branding program that combines a strong trademark or service mark and a memorable advertising and marketing campaign.

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.

Precedential No. 26: TTAB Denies "HAPPIEST HOUR" Cancellation Petition for Failure to Prove Priority Via Technical or Analogous TM Use

The TTABlog

Petitioner JNF LLC was undoubtedly unhappy with the result of its petition to cancel a registration for the mark HAPPIEST HOUR for bar and restaurant services. JNF claimed prior use of THE HAPPIEST HOUR for the identical services, but it failed to prove priority.

Protection of Trademarks in Philippines

IP and Legal Filings

Similarly, registering trademarks is based on a first-to-file (or first-to-use, depending on the country), so rights holders should consider how to obtain patent and trademark protection before introducing their products or services to the Philippine market. Introduction.

Trademark: What’s In it for You?

Velocity of Content

In contrast, trademarks in the United States —in some instances referred to as service marks or trade names—are created by use by a person “in commerce”; technically, no government approval is required.

SUCKS’ Luck Sucks: Federal Circuit Affirms Refusal to Register.SUCKS for Failure to Function

IP Intelligence

The examining attorney and the Board refused registration of both versions for failure to function as a mark. Such evidence included examples from Vox Populi’s website, get.sucks, using.SUCKS to identify a product (domain names ending in.SUCKS) rather than a provider of services.

"MADE FOR YOU LAB-GROWN DIAMONDS" Fails to Function as a Trademark For Diamonds, Says TTAB

The TTABlog

The Board upheld a refusal to register the proposed mark MADE FOR YOU LAB-GROWN DIAMONDS , in standard character and design form, for 'diamonds; jewelry" [LAB-GROWN DIAMONDS disclaimed], finding that the phrase fails to function as a trademark. Applicant's "mark" failed that test.

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.

copying competitor's website & reviews creates (c), TM, false advertising problems

43(B)log

30, 2022) Plaintiff, d/b/a Logan Car Service, has offered limousine and transportation services primarily in the Greater Boston area since the 2000s and uses logancarservice.com to do so. The actionable alleged misrepresentation is that defendant performed the relevant services.

TTABlog Quarterly Index: July - September 2022

The TTABlog

13th DuPont Factor Saves Four "GAIA" Marks For Supplements From Section 2(d) Refusal Precedential No. TTABlog Test: Is HI-FI Confusable With HIGH FIDELITY for Overlapping Marketing Services ? E-mail subscriptions to the TTABlog are available.

Precedential No. 22: TTAB Grants Petition to Cancel CHENOA FUND Registration for Mortgage Services Due to Non-Ownership

The TTABlog

The Board granted a petition for cancellation of a registration for the mark shown below for mortgage financing services, finding that Petitioner CBC Mortgage was the first and only user of the mark for those services. Respondent TMRR created and promoted the mark but it did not use the mark in rendering mortgage services, nor was it permitted to do so by the agreement between the parties. TMRR created the mark CHENOA FUND and the logo.

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.