Posts Tagged: "descriptive trademarks"

On February 28th, the Court of Appeals for the Federal Circuit (CAFC) affirmed the Trademark Trial and Appeal Board’s (TTAB) decision to refuse registration of two trademark applications belonging to JC Hospitality LLC (JC). Both applications sought to register the mark THE JOINT under different classes of services (Class 41 and Class 43). See In re JC Hospitality. The CAFC agreed with the TTAB that the marks were merely descriptive of JC’s services, and lacked any showing that the marks acquired distinctiveness as source identifiers.

On Friday, November 2nd, the Court of Appeals for the Eighth Circuit issued a decision in Sturgis Motorcycle Rally, Inc. v. Rushmore Photo & Gifts, Inc., et. al. which reversed various parts of the lower court’s decision in the trademark infringement case brought by Sturgis, which claimed to own trademarks covering merchandise related to a well-known motorcycle rally which has taken place in Sturgis, SD, going back to 1938. While the appellate court affirmed the district court’s denial as a matter of law to the defendants’ as to Sturgis’ claims of deceptive trade practices, false advertising and trademark infringement claims, the Eighth Circuit reversed the lower court’s findings that various marks asserted by Sturgis were valid because it found that Sturgis didn’t provide the jury with sufficient proof regarding validity.

Although running an early-stage startup is exhilarating, do not let your brand name protection be swallowed up by all the excitement. Neglecting to properly secure a trademark for your company and products can lead to expensive consequences in the future, such as being forced to rebrand just as you’re gaining traction or being unable to stop infringers from using your brand name. Below are 5 of the most common mistakes businesses make with trademarks and what you can do to avoid them.

Trademarks protect distinctive marks, such as brand names, logos, and designs.  This protection allows a trademark holder to exclude others from using the mark without permission of the owner. The following includes important, basic information about trademarks, as well as how start-ups can protect their trademarked intellectual property.

From a legal standpoint, a trademark that has no relation to the product or services offered will be the strongest type of mark. For example, trademarks such as “Google” for a search engine, “eBay” for online auctions and “Bose” for audio equipment make excellent and strong trademarks. Descriptive marks provide less trademark protection because if a term is descriptive it can be used by anyone else selling the same goods or providing the same services… Many sales and marketing people will gravitate toward descriptive marks for products and services hoping that potential customers will immediately identify the product or service being offered. This approach leads to a weak or sometimes even unprotectable trademarks.

The Ninth Circuit Court of Appeals ruled on May 16, 2017 that Google has not become a victim of its own success – that is, its Google trademark is still an enforceable brand for an online search engine and has not become generic.

The Federal Circuit affirmed the TTAB, noting that substantial evidence supported the TTAB’s findings. Where, as here, the disputed term is highly descriptive, the TTAB acted within its discretion in refusing to accept evidence of five years’ use as prima facie evidence of distinctiveness.