If you are considering filing a new trademark application or maintaining an existing registration, you may want to file your submission before the end of 2020. The United States Patent and Trademark Office (USPTO) will increase its fees for trademark applications, post-registration maintenance filings, and certain filings with the Trademark Trial and Appeal Board (TTAB).Continue Reading
WhatsApp Inc. has filed an opposition to WhatsPay doing business as OmegaSoft Technology LLC’s proposed “WHATSPAY” trademark and accompanying design. After extending its deadline to file the opposition, WhatsApp contended that the filing before the Trademark Trial and Appeal Board (TTAB) is timely.The opposition stated that OmegaSoft is a South Carolina company. It allegedly filed an application in January, seeking to use its WHATSPAY trademark for “downloadable computer software for use as an electronic wallet.”
Opposition
Number: 91265489 Filing Date: 10/19/2020
Status: Pending Status Date: 10/19/2020
ESTTA Tracking number: ESTTA1089623
Grounds for Opposition
Priority and likelihood of confusion Trademark Act Section 2(d)
No use of mark in commerce before application or amendment to allege use was filed Trademark Act Sections 1(a) and (c)
False suggestion of a connection with persons,living or dead, institutions, beliefs, or national symbols, or brings them into contempt, or disrepute Trademark Act Section 2(a)
The U.S. Court of Appeals for the Federal Circuit ruled yesterday that Australian Therapeutic Supplies Pty. Ltd. has “a real interest” in cancelling the registration for NAKED for condoms, owned by Naked TM, LLC.
A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905:
(1)Within five years from the date of the registration of the mark under this chapter.
(2)Within five years from the date of publication under section 1062(c) of this title of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905.
(3)At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.
(4)At any time if the mark is registered under the Act of March 3, 1881, or the Act of February 20, 1905, and has not been published under the provisions of subsection (c) of section 1062 of this title.
(5)At any time in the case of a certification mark on the ground that the registrant (A) does not control, or is not able legitimately to exercise control over, the use of such mark, or (B) engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies:
Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in paragraphs (3) and (5) of this section any mark registered on the principal register established by this chapter, and the prescribed fee shall not be required. Nothing in paragraph (5) shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant. Such uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied.
The United States, Mexico, and Canada have reached an agreement on a modernized, high-standard Intellectual Property (IP) chapter that provides strong and effective protection and enforcement of IP rights critical to driving innovation, creating economic growth, and supporting American jobs.
The Supreme Court sided with Booking.com on Tuesday, green-lighting the booking accommodations website to trademark the generic term associated with their domain name.
On 30th June 2020 Supreme Court of the United States (SCOTUS) in United StatesPpatent and Trademark Office et al. v. Booking.comdealt with the issue of whether the combination of generic terms is also generic for the purpose of trademark registration. SCOTUS by an overwhelming majority (8 judges) held otherwise i.e. such combination is not generic in nature. The sole dissenting opinion was written by J Breyer who held respondent’s Trademark as generic in nature.
In 2017, the USPTO initiated an aggressive auditing program of U.S. trademark registrations at the time of maintenance filings. The goal of the program is to ensure the accuracy and integrity of the U.S. register by removing or narrowing registrations that include claims beyond the scope of the registrant’s actual use of its mark in U.S. commerce. The Office is on pace to audit 5000 registrations in 2020 so registrants who have not been tagged as yet should be prepared for an audit in the future.
A new trademark filing suggests that a Cadillac perfume and cologne line might be on the horizon.General Motors has filed to trademark “Cadillac” in association with two goods and services categories:Room fragrances; perfumes and colognes; non-medicated soaps for personal useCandles
