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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.

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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.

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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.

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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.

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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.

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How to Protect a Trademark or Service Mark for a Brewery or Beer Name

JD Supra Law

With excellent craft beers, breweries have become highly popular in the Washington, D.C. metropolitan area and throughout the United States and are most often visited during spring, summer, and fall.

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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.

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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”).

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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.

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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?

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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.

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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.

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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).

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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.

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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.

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The International Registration Of The Madrid System (WIPO)

JD Supra Law

My previous blog post, “What are the Types of Trademarks,” explained the distinction between Trademarks, Service Marks, State Marks, Federal Marks, and Common Law Marks, which are common types of protection for marks in the United States.

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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.

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Hashtag or Pound? One Law Firm’s Quest to Trademark #law

JD Supra Law

Is it “hashtag law,” as the PTO examiner suggested would be the most common understanding, or “pound law,” as alleged by the unsuccessful registrant of #law as a service mark. How would you pronounce #law?

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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.

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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.

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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.

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Precedential No. 9: Business Card Specimen Does Not Prove Use of Collective Membership Mark, Says TTAB

The TTABlog

Section 4 of the Trademark Act provides for registration of a collective membership mark, defined as a trademark or service mark adopted by a collective and used by members to indicate membership in the collective.

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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.

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Trademark Prosecution in Bangladesh

Selvam & Selvam Blog

The Bangladesh trademark office follows the 10th edition of the NICE Classification and has a list of accepted goods and services. You can file a trademark application in classes 1-34 for goods or classes 35-45 for services.

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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).

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"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.

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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.

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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. .

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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.

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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.

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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.

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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.

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"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.

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TTAB Affirms Mere Descriptiveness Refusal of HUMAN DATA MARKETPLACE for Online Sale of Data Assets

The TTABlog

The pro se applicant argued, without success, that the proposed mark is suggestive rather than merely descriptive because "HUMAN could refer to any number of ambiguous interpretations about the mark, especially if HUMAN is used as a noun."

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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.

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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.

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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.

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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.

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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.

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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.

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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.

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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.