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Ex Parte Appeals

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Trademark Applicants Who Appeal to District Court Must Pay USPTO Attorney Costs, Fourth Circuit holds in Shammas v. Focarino

There are multiple avenues for an applicant to appeal a Trademark Trial and Appeal decision, but the Fourth Circuit held that applicants who choose to appeal to a District Court must pay the United States Patent and Trademark Office’s attorney’s fees and related expenses. On April 23, 2015, the United States Court of Appeals for [...]

TTAB Reverses Examiner’s Refusal, Finding That Unorthodox Proof of Commercial Use Was Valid

When a trademark applicant seeks to submit a statement of use to the USPTO, it must provide a specimen that shows the mark being 'used in commerce'. This specimen must be a substantially exact representation of the mark as used on or in connection with the goods and/or services. In In Re Kristin A. Harris, [...]

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 [...]

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In re Phoenix Intangibles Holding Company, Serial No. 85849629 (November 7, 2014) [not precedential] The Trademark Trial & Appeal Board delivered their opinion affirming an Examining Attorney’s refusal of applicant’s mark CURBSIDE EXPRESS for “retail and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.” […]