This past year featured a number of significant trademark decisions by the U.S. Court of Appeals for the Federal Circuit affecting practice before the United States Patent and Trademark Office (PTO). The court recalibrated the analysis for determining whether a mark is primarily geographically deceptively misdescriptive, discussed the application of the federal dilution statute to opposition proceedings, and reviewed the use of dictionary definitions to support an “immoral” and “scandalous” refusal. The Trademark Trial and Appeal Board overruled its precedent involving the analysis of the issue of descriptiveness in the context of marks used on publications and provided additional guidance as to whether an opposition or cancellation proceeding states a claim for relief.
Key Trademark Decisions Relating to PTO PracticeJournal of the Patent and Trademark Office Society (2004)
Citation InformationJeffrey M. Samuels and Linda B. Samuels, Key Trademark Decisions Relating to PTO Practice, 86 Journal of the Patent and Trademark Office Society 247 (2004).