The United States Patent and Trademark Office (USPTO) has released its “ADVANCED PRACTICE TIPS FROM THE TTAB,” tips for the Trademark Trial and Appeals Board (TTAB). It provides “an overview of operations with which those appearing before the Trademark Trial and Appeal Board (TTAB or Board) are most likely to interact.” The link is here: https://cdn2.hubspot.net/hubfs/454850/TTAB%20Tips%202017%20Revised%20Feb.%207-1.pdf.
It was bound to happen that someone would take a swipe at Google, claiming that the registered trademark should be cancelled because people use the word as a verb in a “generic” and “indiscriminate” way, which constitutes “genericide.” The Ninth Circuit Court of Appeals rejected the effort. Here is a synopsis of the Ninth Circuit’s reasoning, as posted by Justia:
“U.S. Court of Appeals for the Ninth Circuit Opinions
Elliott v. Google, Inc.
Opinion Date: May 16, 2017
Judge: Richard C. Tallman
Areas of Law: Intellectual Property, Internet Law, Trademark
A claim of genericness or “genericide,” where the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source, must be made with regard to a particular type of good or service. Plaintiffs petitioned for cancellation of the GOOGLE trademark under the Lanham Act, 15 U.S.C. 1064(3), based on the ground that it is generic. The Ninth Circuit affirmed the grant of summary judgment in favor of Google, Inc., holding that plaintiffs failed to recognize that a claim of genericide must always relate to a particular type of good or service, and that plaintiffs erroneously assumed that verb use automatically constitutes generic use; the district court correctly framed its inquiry as whether the primary significance of the word “google” to the relevant public was as a generic name for internet search engines or as a mark identifying the Google search engine in particular; the assumption that a majority of the public uses the verb “google” in a generic and indiscriminate sense, on its own, could not support a jury finding of genericide under the primary significance test; and plaintiffs have failed to present sufficient evidence in this case to support a jury finding that the relevant public primarily understands the word “google” as a generic name for internet search engines and not as a mark identifying the Google search engine in particular.
You can read the entire opinion here: http://cdn.ca9.uscourts.gov/…/opini…/2017/05/16/15-15809.pdf.
Eric Goldman’s analysis can be found here: http://blog.ericgoldman.org/…/google-gets-big-ninth-circuit…
Our Santa Barbara firm is growing, and we are looking to immediately hire a full-time, career oriented attorney with 3 – 14 years’ experience to join the team. We have an eclectic practice, the foci of which are entertainment (filmed entertainment, music, publishing, and licensing), non-patent intellectual property (trademarks, copyrights, and trade secrets), Internet, business, and litigation in state and federal courts. We work with entrepreneurs, start-ups, and maturing companies, serving as outside general counsel, and represent a wide variety of businesses, including multi-media companies, music publishing companies, film and music producers, artists, photographers, songwriters, and others. We are looking for someone wanting a high quality, high energy, low key environment, who values relationships, innovation, and technology; is resourceful; and operates (or is willing to operate) on the principle that “THERE IS NO BOX.” Law review, great writing skills, and/or equivalent problem-solving and collaboration skills are highly valued here. We are willing and able to mentor the right person in any areas that may be needed. A book of business (small, medium, or large) is welcomed, although not necessary. This position is open now. Please let us know if you are the right person or know someone who is. You may send resumes and writing samples to email@example.com. Please view our website at mbergerlaw.com and our LinkedIn profile at https://www.linkedin.com/in/matthewberger/ for more information about who we are and what we do.
Lately, there is a heightened awareness of trademarks, but many people have no idea whether the name they have chosen for their business is or contains someone else’s trademark. Keep in mind that (a) one acquires trademark rights by using a name in commerce, (b) the first to use the name has superior rights to those who come later, and (c) registration with the United States Patent and Trademark Office (USPTO) is not a prerequisite for obtaining enforceable rights in a trademark.
This became a reality for a client, who already had printed business cards, filed and published a fictitious business name statement, obtained a Board of Equalization License, began negotiating a lease in the business name, and drafted a business plan. We were consulted to form an LLC and found that the name was available with the Secretary of State’s office. Most would have concluded at that time that all was well and filed the Articles of Organization to register the LLC. We went further and looked at the USPTO website, and found that someone had filed an application to register the trademark of the exact name in the exact class of goods and services. While it would have been possible to register the LLC with the Secretary of State, it would have been an infringement of prior user’s trademark to actually do business under that name. Thus, it was back to the drawing board to select a new name.
It is critically important to clear your business name before you spend a lot of money, time, and energy. We suggest that a basic search be conducted and, if the name is clear, a full commercial trademark search then be conducted to ascertain its availability. The full commercial search will find registered marks, applications for registration, common law trademarks (those that have been in use but are not formally registered), and domain names. We also recommend that, as soon as you have cleared the name, acquire the Internet domain name in order to ensure that you have the rights on the Internet to your own trade name.Matthew I. Berger Law Group, A Professional Corporation (805) 456-1200 10 E. Islay Street
Santa Barbara, CA 93101