Trademark Blog

Legally Identical Trademarks

Posted by Brandon Selinsky on Sep 14, 2017 8:58:22 AM

 

In re Trilliant Food and Nutrition, LLC, 2017 WL 3102593

 

The Trademark Trial and Appeal Board (TTAB) decided this case. The TTAB is an administrative board that deals with issues arising out of the United States Patent and Trademark Office (USPTO). The TTAB oversees opposition, cancellation, interference, and concurrent use hearings. The TTAB also hears appeals for trademark application rejections from USPTO Trademark Examining Attorneys. 

Legally Identical Trademarks Background 

Trilliant Food and Nutrition, LLC (Trilliant) submitted an application for trademark registration of the mark “ENRG.” Trilliant sought to register this mark on the Principal Register under International Class 30, a category that includes “coffee, tea, cocoa and artificial coffee.” Trilliant sought to register the ENRG mark for “coffee for use in single-serve brewing machines.” 

The Trademark Examining Attorney (TEA) rejected Trilliant’s application for the ENRG mark, because of similarities to an existing trademark. The existing mark, ENERGI for coffee and tea, was already registered on the Principal Register under International Class 30. Relying on 15 U.S.C. 1052(d) of the Trademark Act, the TEA elaborated that the Trilliant mark was “likely to cause confusion, to cause mistake, or to deceive.” 

After receiving the TEA’s decision, Trilliant protested and requested another review. The TEA rejected this request, refusing to reconsider the initial decision. As a result, Trilliant appealed to the TTAB. 

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Topics: Trademark Law

Deceptively Misdescriptive Trademarks

Posted by Brandon Selinsky on Sep 8, 2017 12:39:34 PM

 

Gruma, S.A.B. de C.V. and Azteca Milling, L.P. vs

Instamasa Sociedad Anonima 2017 WL 3102595

 

The Trademark Trial and Appeal Board (TTAB) decided this case. The TTAB is an administrative board that deals with issues arising out of the United States Patent and Trademark Office (USPTO). The TTAB oversees opposition, cancellation, interference and concurrent use hearings. The TTAB also hears appeals for trademark application rejections from USPTO Trademark Examining Attorneys. 

Background on Deceptively Misdescriptive Trademarks 

Instamasa Sociedad Anonima (ISA) submitted an application for trademark registration of the mark “INSTA MASA.” ISA sought to register this mark under International Class 30, a category that includes “flour and preparations made from cereals, namely, tortillas, tamales, arepas.” ISA sought to register the INSTA MASA mark for “dry corn flour product,” sometimes referred to as “masa.” 

 

 ISA submitted a disclaimer with their trademark application. That disclaimer explained that ISA was only using MASA in connection with the larger mark of INSTA MASA. Otherwise, ISA was not seeking to register MASA on its own. 

 

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Topics: Trademark Law

Trademark Settlement Agreements

Posted by Brandon Selinsky on Sep 6, 2017 8:42:53 AM

 

Mylan Inc. v. Medikit, LLC, 2017 WL 3102600

The Trademark Trial and Appeal Board (TTAB) decided this case. The TTAB is an administrative board that deals with issues arising out of the United States Patent and Trademark Office (USPTO). The TTAB oversees opposition, cancellation, interference and concurrent use hearings. The TTAB also hears appeals for trademark application rejections from USPTO Trademark Examining Attorneys. 

Legal Background 

Medikit, LLC submitted an application for trademark registration of the mark “EPI-KIT” for “injectable pharmaceuticals for treatment of anaphylactic reactions.” Medikit sought to register this mark under International Class 5, a category that includes “pharmaceuticals and other preparations for medical or veterinary purposes.” 

Mylan Inc. owns a registered trademark for EPIPEN. Mylan’s mark also refers to “injectable pharmaceuticals for treatment of anaphylactic reactions” under International Class 5. 

Relevant to this discussion is a 2004 settlement agreement between Medikit and Mylan. Medikit attempted to register the EPI-KIT mark back in 2002. Mylan opposed that registration. To resolve the dispute, both parties entered into a settlement agreement. 

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Topics: Trademark Law

Denial of a Similar Trademark

Posted by Brandon Selinsky on Sep 1, 2017 1:31:33 PM

 

Pan American Properties, Corp., 2017 WL 3102585

 

The Trademark Trial and Appeal Board (TTAB) decided this case. The TTAB is an administrative board that deals with issues arising out of the United States Patent and Trademark Office (USPTO). The TTAB oversees opposition, cancellation, interference and concurrent use hearings. The TTAB also hears appeals for trademark application rejections from USPTO Trademark Examining Attorneys. 

Similar Trademarks Background 

Pan American Properties, Corp. (Pan American) submitted an application for trademark registration of the mark “G SHOT.” Pan American sought to register this mark on the Principal Register under International Class 33, a category for “alcoholic beverages (except beers).” 

The Trademark Examining Attorney (TEA) reviewed Pan American’s application for the G SHOT mark. Then the TEA rejected the G SHOT application. 

Korea Ginseng Corp. (Korea Ginseng) already registered their G-SHOT mark for “non-alcoholic energy drinks containing red ginseng.” The G-SHOT mark is on the Principal Register under International Class 32, a category that includes “beers” and “other non-alcoholic beverages.” 

The TEA determined that Pan American’s requested mark was too similar to Korea Ginseng’s registered mark. Referencing 15 U.S.C. 1052(d) of the Trademark Act, the TEA concluded that the Pan American mark was “likely to cause confusion or mistake or to deceive.” 

After receiving the TEA’s decision, Pan American protested and requested another review. The TEA rejected this request, refusing to reconsider the initial decision. As a result, Pan American appealed to the TTAB. 

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Topics: Trademark Law

Trademark Likelihood of Confusion

Posted by Brandon Selinsky on Aug 22, 2017 1:53:09 PM

Ironclad Performance Wear Corp., 2017 WL 3102591

The Trademark Trial and Appeal Board (TTAB) decided this case. The TTAB is an administrative board that deals with issues arising out of the United States Patent and Trademark Office (USPTO). The TTAB oversees opposition, cancellation, interference, and concurrent use hearings. The TTAB also hears appeals for trademark application rejections from USPTO Trademark Examining Attorneys. 

Background 

Ironclad Performance Wear Corp. (Ironclad) submitted an application for trademark registration of the mark “IVE.” Ironclad sought to register this mark for “protective work gloves” on the Principal Register under International Class 9. 

The Trademark Examining Attorney (TEA) reviewed Ironclad’s application for the IVE mark. Then the TEA rejected the IVE application. 

The Kindred Co Pty Ltd (Kindred) already registered EB & IVE on the Principal Register. Kindred registered EB & IVE under several categories – International Class 14 for jewelry, International Class 24 for linens and International Class 25 for various clothing items. 

The TEA determined that Ironclad’s requested mark was too similar to Kindred’s registered mark. Referencing 15 U.S.C. 1052(d) of the Trademark Act, the Ironclad mark was “likely to cause confusion.” 

After receiving the TEA’s decision, Ironclad protested and requested another review. The TEA rejected this request, refusing to reconsider the initial decision. As a result, Ironclad appealed to the TTAB. 

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Topics: Trademark Law

The du Pont Factors

Posted by Brandon Selinsky on Aug 21, 2017 12:31:35 PM

In re Sansa Corporation (Barbados) Inc., 2017 WL 3102589

The Trademark Trial and Appeal Board (TTAB) decided this case. The TTAB is an administrative board that deals with issues arising out of the United States Patent and Trademark Office (USPTO). The TTAB oversees opposition, cancellation, interference, and concurrent use hearings. The TTAB also hears appeals for trademark application rejections from USPTO Trademark Examining Attorneys. 

Background 

Sansa Corporation (Barbados) Inc. (Sansa) submitted an application for trademark registration of the mark “KICK” in standard characters. Sansa sought to register this mark on the Principal Register under International Class 34, a category that includes “tobacco; smokers' articles; matches” and “tobacco substitutes (not for medical purposes).” 

The Trademark Examining Attorney (TEA) reviewed Sansa’s application for the KICK mark. Then the TEA rejected the KICK application, due to similarities with two existing trademarks. 

Medallion Brands International Co. (Medallion) already registered KICK in typed drawing form on the Principal Register under International Class 34 for “cigarettes.” Additionally, Evolv, LLC (Evolv) already registered KICK in standard characters on the Principal Register under International Class 9 and International Class 34 for technology related to “electronic cigarettes.” 

The TEA determined that Sansa’s requested mark was too similar to registered marks for Medallion and Evolv. Referencing 15 U.S.C. 1052(d) of the Trademark Act, the Sansa mark was “likely to cause confusion, mistake or deception.” 

After receiving the TEA’s decision, Sansa protested and requested another review. The TEA rejected this request, refusing to reconsider the initial decision. As a result, Sansa appealed to the TTAB. 

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Topics: Trademark Law

The Descriptive Requirement of Trademark Law

Posted by Brandon Selinsky on Aug 14, 2017 2:51:26 PM

Yuzu Labs Public Benefit Corporation, 2017 WL 3102592

 

The Trademark Trial and Appeal Board (TTAB) decided this case. The TTAB is an administrative board that deals with issues arising out of the United States Patent and Trademark Office (USPTO). The TTAB oversees opposition, cancellation, interference and concurrent use hearings. The TTAB also hears appeals for trademark application rejections from USPTO Trademark Examining Attorneys.

 

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Topics: Trademark Law

The Power of the Trademark Examining Attorney

Posted by Brandon Selinsky on Aug 10, 2017 1:53:45 PM

 

ABK Betriebsgesellschaft der Aktienbrauerei Kaufbeuren GmbH WL 3102594 - 2017

 

The Trademark Trial and Appeal Board (TTAB) decided this case. The TTAB is an administrative board that deals with issues arising out of the United States Patent and Trademark Office (USPTO). The TTAB oversees opposition, cancellation, interference, and concurrent use hearings. The TTAB also hears appeals for trademark application rejections from USPTO Trademark Examining Attorneys. 

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Topics: Trademark Law

Functions of the Trademark Trial and Appeal Board

Posted by Brandon Selinsky on Aug 7, 2017 2:08:00 PM

 

Trademark Law - re; Spatz Laboratories, 2017 WL 3102590

 

The Trademark Trial and Appeal Board (TTAB) decided this case. The TTAB is an administrative board that deals with issues arising out of the United States Patent and Trademark Office (USPTO). The TTAB oversees opposition, cancellation, interference and concurrent use hearings. The TTAB also hears appeals for trademark application rejections from USPTO Trademark Examining Attorneys. 

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Topics: Trademark Law

Advice on Protecting Trademarks in the Healthcare Industry

Posted by Brandon Selinsky on Jun 16, 2017 12:26:29 PM

Advice on Protecting Trademarks in the Healthcare Industry

Due to a growing need for medical care, the healthcare industry is one of the most rapidly expanding areas of business in the United States. As old healthcare companies try to maintain a secure trademark in the industry, newer healthcare companies are able to create a point of identification for consumers. If you are interested in protecting trademarks in the healthcare industry, there are some recommended steps that you should follow.

 

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Topics: Trademark Law

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