By James Juo. “Under the doctrine of foreign equivalents, foreign words from common, modern languages are translated into English to determine … descriptiveness.… When it is unlikely that an American buyer will translate the foreign mark and will take it as it is, then the doctrine of foreign equ...
By James Juo. A defendant sometimes will file a motion to dismiss, and then move to stay discovery pending a decision on the motion to dismiss on the theory that if Defendant prevails on its motion to dismiss, the cost of discovery incurred in the meantime may be unnecessary. In the U.S. District...
By James Juo. New trademark regulations of the U.S. Patent and Trademark Office (“USPTO”) to implement the provisions of the Trademark Modernization Act (TMA) of 2020 have been published in the Federal Register. Most of the revisions to the trademark rules will take effect on December 18, 2021, b...
By James Juo. There have been increasing concerns about low-cost trademark filing entities such as Trademark Terminal, ranging from providing incorrect application information to charging inflated filing fees. Moreover, such companies often are based overseas despite claiming to be based in the U...
By James Juo. Arbitration clauses in license agreements and other contracts are common. The question of whether a particular dispute falls within the scope of what the parties had agreed to arbitrate is known as “arbitrability.” A court should not assume that the parties agreed to arbitrate arbit...
Because the description of services was essentially employee recruiting services for Applicant itself, the TTAB found that “Applicant performs the activities in the description of services primarily for its own benefit [that is, to fill out its ranks],
By James Juo. The U.S. District Court for the District of Colorado has granted summary judgment of trademark infringement against an unauthorized reseller in Otter Products, LLC v. Triplenet Pricing Inc., No. 19-cv-000510 (D. Colo. Nov. 10, 2021). Plaintiff Otter manufactures and sells mobile dev...
By James Juo. A trademark must function as an identifier of the source of the applicant's goods or services. In re DePorter, 129 USPQ2d 1298, 1299 (TTAB 2019) (citing Sections 1, 2 and 45 of the Trademark Act). “The Trademark Act is not an act to register mere words, but rather to register tradem...
By James Juo. One cannot obtain trademark rights in generic terms, such as “soda” for soft drinks. “Generic terms are common names that the relevant purchasing public understands primarily as describing the genus of goods or services being sold. They are by definition incapable of indicating a pa...
By James Juo. When faced with a Section 2(d) refusal to register a mark in view of a pre-existing registration, one possible response is to argue there is no likelihood of confusion because the marks are weak based on third-party registrations and uses. The case of In re Garan Services Corp., Ser...
By James Juo. A specimen showing the manner in which a trademark is seen by the public is necessary to obtain a federal trademark registration with the U.S. Patent and Trademark Office (“USPTO”). TMEP 904. Section 1(a) of the Trademark Act requires a specimen for each class, showing use of the ma...
By James Juo. Typically, a company owns its own trademarks; but sometimes a founder of the company will own the trademarks and the company uses the marks as a licensee. A court may recognize that “use of a mark by a licensee pursuant to a controlled licensing agreement is a use which may properly...
By James Juo. A trademark application may be refused by the USPTO on the ground that the proposed mark is primarily geographically misdescriptive of the identified goods, under Section 2(e)(3) of the Trademark Act (the “Act”), 15 U.S.C. § 2(e)(3).[1] To support a Section 2(e)(3) misdescriptivenes...
By James Juo. At the end of patent litigation, a district court may award reasonable attorneys' fees to the prevailing party in “exceptional cases.” 35 U.S.C. § 285. If the district court find the case to be “exceptional,” then the district court exercises its discretion to determine whether to a...
By James Juo. For purposes of anticipation under 35 U.S.C. § 102 for patent validity with respect to utility patents and applications, “whether a reference is analogous art is irrelevant to whether that reference anticipates.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). In Schreiber, a...
By James Juo. The bar for proving fraud on the Trademark Office in seeking to cancel a trademark registration is high. In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) (“there is no fraud if a false misrepresentation is occasioned by an honest misunderstanding or inadvertence without a willful in...
By James Juo. Colorado has a fundamental policy of voiding contractual noncompete provisions that do not fall within one of the statutory exceptions. Any covenant not to compete which restricts the right of any person to receive compensation for performance of skilled or unskilled labor for any e...
The October issue of the Colorado Lawyer magazine has published an article entitled “Have You Considered Ford Lately?” written by Thomas P. Howard LLC attorney James Juo about the evolving jurisprudence on specific personal jurisdiction in the U.S. Supreme Court and the Tenth Circuit's traditiona...
By James Juo. It is well-established that trademark law must be applied narrowly to artistic works to avoid conflict with First Amendment interests. This recently came to a head in MGFB Properties, Inc. v. ViacomCBS, Inc., No. 5:19-cv-00257 (N.D. Fla. Sept. 22, 2021), a dispute between the “regio...
By James Juo. A trademark application may be refused by the USPTO on the ground that the proposed mark is primarily geographically descriptive of the identified goods, under Section 2(e)(2) of the Trademark Act (the “Act”), 15 U.S.C. § 2(e)(2). The three-part test for geographical descriptivenes...
By James Juo. In applying for a trademark registration, the U.S. Patent and Trademark Office (“USPTO”) may refuse registration under Section 2(d) of the Lanham Act because of a perceived likelihood of confusion with another entity's existing trademark registration. One argument often made to over...
By James Juo. Typically, the mere misspelling of a word as a phonetic equivalent is not sufficient to change a merely descriptive term into an inherently distinctive trademark. In re Carlson, 91 USPQ2d 1198, 1200–1201 (TTAB 2009) (finding “URBANHOUZING” to be a phonetic spelling of “urban” and “h...
By James Juo. The United States Department of Justice (“DOJ”) announced on September 15, 2021 that Viktors Suhorukovs, a citizen of Latvia, has been sentenced to more than four years in federal prison and ordered to pay over $4.5 million in restitution after pleading guilty to mail fraud in a mul...
By James Juo. What's in a name? Well, a “trade name” is not the same thing as a “trademark.” It's the difference between your company name and your brand. To take one example, Doctor's Associates Inc. was the name of the company that later branded its sandwich shops as SUBWAY. From a legal perspe...
By James Juo. One way to settle a trademark opposition is by agreeing to abandon the application in dispute. In Rwachsberg Holdings Inc. and Apollo Health and Beauty Care Inc. v. Grüne Erde Beteiligungs GmbH, Opposition No. 91253866 (TTAB Sept. 8, 2021), Rwachsberg Holdings and Apollo Health and ...
Louisville, CO | Denver, CO | Aurora, CO | Littleton, CO | Centennial, CO | Parker, CO | Watkins, CO | Westminster, CO | Arvada, CO | Golden, CO | Boulder, CO | Brighton, CO | Longmont, CO | Loveland, CO | Black Hawk, CO | Idaho Springs, CO | Larkspur, CO | Monument, CO | Fort Collins, CO | Colorado | Springs, CO | Pueblo, CO | Breckenridge, CO