Jerry Jakubovic

Analysing the impact of survey evidence on acquired distinctiveness rulings

To be placed on the Principal Register, designations which have been alleged to be descriptive or generic must achieve significance in the minds of the public as identifying the applicant’s goods or services – a quality called “acquired distinctiveness or “secondary meaning.” The amount and character of evidence required to establish acquired distinctiveness depends on the facts of each case and on the nature of the mark for which registration is sought. In this connection, recent decisions such as United States Patent and Trademark Office v Booking.com B.V. and In re Guaranteed Rate, Inc. continue to highlight the impact of survey evidence (or the lack thereof).

Jerry Jakubovic, November 06, 2020

US: TTAB prohibits registration of mark with US flag design

In In re Alabama Tourism Department, the Trademark Trial and Appeal Board (TTAB) issued an uncommon refusal to register under Section 2(b) of the Lanham Act the mark shown below owned by the Alabama Tourism Department (ATD), on the ground that the mark includes a simulation of the United States flag. In doing so, the TTAB sent a reminder that the benefits of federal registration may not be available to marks incorporating flag designs.

Jerry Jakubovic, June 26, 2020

Trademark - rubber stamp with binder in the office

US: Petition to cancel on the ground of abandonment fails despite the lack of traditional use

Evidence of non-use of a mark for three consecutive years constitutes a prima facie showing of abandonment, triggering a rebuttable presumption that a mark was abandoned without intent to resume use. The rebuttable presumption then shifts to the party contesting an abandonment claim to submit evidence of use during the alleged period of non-use in situations where its registration basis is either Section 1(a) or 44(e) of the Trademark Act. However, in the circumstance of a ‘never-used’ mark registered on the basis of Trademark Act Section 66(a), an intent to begin use is acceptable evidence to rebut the presumption of abandonment. This distinction played a key role in a decision recently rendered by the Trademark Trial and Appeal Board (TTAB) in Wirecard AG v Striatum Ventures B.V.

Jerry Jakubovic, April 16, 2020

Jerry Jakubovic

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