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Eric Perrott, Esq.

/Eric Perrott, Esq.

About Eric Perrott, Esq.

Eric is a trademark and copyright attorney committed to providing high-quality legal services for any sized budget. Eric’s experience with online marketplaces like Amazon, Etsy and eBay help client protect and enforce their trademarks against infringers, counterfeiters and listing hijackers.

Correctable and Incorrectable Errors in Trademark Ownership

These materials were originally presented by Eric Perrott to the American Bar Associations’s Committee on USPTO Operations Relating to the Trademarks and Ex Parte Trademark Practice as a part of their “brown bag” trademark discussions. As trademark attorneys, we have all needed to sift through complicated ownership structures to attempt to figure out exactly who [...]

January 22nd, 2017|

TTAB Generic Trademark Refusal: PC LAPTOPS is Generic for Computers and Computer Retail Stores

Generic words for goods and services can never gain trademark protection. Think THE BANK for a bank, FARMER’S MARKET for, say, a farmer’s market, or PC LAPTOPS for computers. The TTAB’s affirmed an examiner’s refusal, holding that the phrase PC LAPTOPS is generic for computer products and services. PC Laptops LLC filed two different applications to register PC LAPTOPS for “computers, laptops, and portable computers” and “retail store services in the field of computer hardware and software.” In both cases, the examining attorney issued a 2(e)(1) refusal based on genericness. The applicant appealed these refusals to the TTAB. As the TTAB stated, generic terms are “terms that the relevant purchasing public understands primarily as the common or class name for the goods and/or services” and are, by definition, unable to function as trademarks.  An examining attorney has to prove genericness by “clear evidence” and, according to the TTAB, the examining attorney clearly did. The TTAB looked at three factors: (1) the genus of the goods and services, (2) the relevant public and (3) pubic perception. For the first two factors, the Board found that the genus of the goods were the goods stated on the applications, mainly, computers, and found that the general publish is the relevant consumers. For the third factor, the Court looked at dictionary definitions, articles, blog posts, and other relevant evidence showing PC LAPTOPS being used as a generic phrase. It also looked for any evidence that the phrase PC LAPTOPS had any other meaning unrelated to computer goods and services. […]

December 21st, 2014|

TTAB Descriptive Trademark Refusal: CURBSIDE DELIVERY Descriptive for Grocery Delivery Services

In re Phoenix Intangibles Holding Company, Serial No. 85849629 (November 7, 2014) [not precedential] The Trademark Trial & Appeal Board delivered their opinion affirming an Examining Attorney’s refusal of applicant’s mark CURBSIDE EXPRESS for “retail and on-line grocery store services featuring home delivery” on the grounds that the mark was “merely descriptive.” Under Section 2(e)(1) of the Lanham Act, a mark is “merely descriptive” if it conveys an “immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services” in the context of the Applicant’s goods and services. The applicant Phoenix Intangible Holding Company argued that “it would take some imagination to associate … [CURBSIDE] with delivery services….” The Trademark Examiner, however, successfully argued that the phrase “curbside delivery” was a term of art in the delivery industry and that CURBSIDE EXPRESS merely described Phoenix’s goods. The Examiner presented evidence showing descriptions of several companies “curbside” delivery, showing that “curbside is a term of art in the delivery industry meaning delivering goods to a customer’s home, but not bringing them inside the home for the customer.” […]

December 16th, 2014|