Prosecution Group Luncheon Trademark Updates October, 2011

Specimen for Financial Services when a service mark is used in advertising, the specimen must show an association between the mark and the services. "A specimen that shows only the mark, with no reference to the services, does not show service mark usage.” “In other words, while [the sign] may indicate a source, it is a source in a vacuum unconnected to any service, at least without prior knowledge of an existing client. *** Upon seeing this sign, it could be literally for anything that one might find in an office park.” In re R & B Receivables Management, Inc., Serial No (September 23, 2011) [not precedential].

“A Brand Name law firm” – Merely Descriptive Applicant filed for A BRAND NAME LAW FIRM for "legal services” EA: "brand name" is a "feature, characteristic, function or purpose of applicant's legal services," that "law firm" merely describes the services, and that the combination is merely descriptive. Applicant: the mark is a double entendre because BRAND NAME also means widely familiar, well-known notable, famous, a household name, "the standard in the industry." TTAB: although applicant’s mark has a second meaning, it is a laudatory descriptive one, and whichever meaning that one would ascribe to the mark, it is merely descriptive of the identified legal services. In re Collen IP Intellectual Property Law, P.C., Serial Nos and (September 18, 2011) [not precedential].

Trade Name Rights Applicant relied on rights in PLATEFRAME for license plate frames to cancel the mark "PRETTYPLATEFRAMES" for the same goods –PLATEFRAME is a weak mark, but –“Based upon [the] evidence showing ad copy prominently displaying the PLATEFRAME mark and goods, and specifically the extensive magazine advertisements between October 2003 and November 2005, we find that petitioner’s mark had acquired sufficient trade identity rights prior to the application filing date for respondent’s involved registration, and hence, petitioner has shown its priority.” MacNeil Automotive Products, Limited v. Theresa Harris, Cancellation No (September 2, 2011) [not precedential].