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Warhol’s use of Prince’s photo (taken by Lynn Goldsmith) was not entitled to fair use. In a David versus Goliath battle, the Supreme Court issued a landmark ruling against Andy Warhol’s Foundation last week.

SCOTUS: No “Fair Use” Defense in Warhol Use of Prince Photograph
SCOTUS found that Andy Warhol’s commercial use of Goldsmith’s photograph of Prince did not entitle the Foundation to a fair use defense to copyright infringement. The Court found that Goldsmith’s earlier photo and Andy Warhol’s use served the same commercial purpose – as a magazine illustration. Goldsmith’s photo can be found here, as well
Continue Reading No Fair Use for Warhol Prince Photo

Starting on December 3, 2022, the new deadline for trademark Office Actions is three months. Recently, the United States Patent and Trademark Office (“USPTO”) amended its Rules of Practice under the Trademark Modernization Act (“TMA”) of 2020. The new rules shorten the old, six-month deadline to three months.

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Starting on December 3, 2022, the new deadline for trademark Office Actions is three months.

Continue Reading New Deadline for Trademark Office Actions

Arbitrary trademarks are common dictionary words that are unrelated to the goods or services sold under the trademark.

Think of “APPLE” for computers or “SHELL” for gasoline.

Both terms have common dictionary meanings, but that meaning is unrelated to the goods or services provided. An arbitrary trademark is one of five other United States Patent and Trademark Office (“USPTO”) trademark types.

Other types include:

  • Fanciful (or “Coined”)
  • Suggestive
  • Merely Descriptive
  • Generic

Examples of Arbitrary Trademarks

Below, I listed several trademarks that are arbitrary:

APPLE® is an example of an arbitrary trademark because it is a common word unrelated to
Continue Reading Arbitrary Trademark: What You Should Know (Video)

A fanciful trademark is the strongest trademark type and, in addition to providing examples below, we define it as one that is “coined” for the purpose of serving as a trademark. Of the four types of trademarks, fanciful trademarks receive the most protection from trademark infringement since:

  • they did not previously exist in connection with the sale of a good or service; and,
  • carry no prior meaning.
  • EXXON is an example of a fanciful trademark because it was created solely to function as a trademark and has no meaning.
    Generally, there are four times of trademarks:

    • Fanciful or Arbitrary
    • Suggestive

    Continue Reading Fanciful Trademark: A Comprehensive Explanation

    There are 45 total Trademark Classes, also known as “International Classes” or simply “Classes.” The United States Patent and Trademark Office (“USPTO”) categorizes trademarks by “Classes.” The classification system is critical because trademarks identify a source of goods and/or services that distinguish the trademark from others.

    A video of me explaining the trademark classes.Each trademark must fall into one or more International Class of goods and/or services. In fact, applicants may use the International Class system to see what other marks exist in similar Classes. By checking the Trademark Classes, a trademark owner can reduce the odds of a Likelihood
    Continue Reading Trademark Classes – Complete 45 International Classes List (Video Update)

    A minor can register a trademark only if the minor’s “domicile” state allows the minor, in the minor’s individual capacity, to (1) enter into legal agreements, or to (2) sue another or to face a suit. TMEP § 803.01. Here, the “domicile” state is the state that one intends to make their “principal home.” See 37 C.F.R § 2.2(o); see also TMEP § 803.05(a).
    For example, if the minor may contract, then the minor can file trademark applications with the United States Patent and Trademark Office (“USPTO”) as the “Applicant.”

    A minor can register a trademark only
    Continue Reading Can a Minor Register a Trademark?

    Yes, you can trademark a hashtag (#) symbol for name, brand, logo, or slogan “only if it functions as an identifier of the source of the applicant’s goods or services.” TMEP § 1202.18. The United States Patent and Trademark Office (“USPTO”) explains that a hashtag is registrable only if it functions as a source identifier. It also says that a hashtag trademark cannot exist not merely as a way to foster discussion or searches on social media.

    In plain English, that simply means that a hashtag must indicate the source of goods and/or services sold under it.
    Continue Reading Can You Trademark a Hashtag?

    Trademark Class 41 involves entertainment and education services.

    As an overview, the United States Patent and Trademark Office (“USPTO”) divides all goods and services into 45 distinct categories (also called “International Classes”). Trademark Classes 1 to 34 deal with goods, whereas Classes 35 to 45 involve services. This gives applicants a greater degree of predictability when applying for a trademark since they can search for conflicting names in the same or similar Trademark Class.

    If you want to trademark a brand for education, blogging, sports, or entertainment services, select Trademark Class 41.

    Trademark Class 41 is a popular class encompassing
    Continue Reading Trademark Class 41: Education and Entertainment Services

    Yesterday, the United States Patent and Trademark Office (“USPTO”) sanctioned Trademark Terminal’s owners. Per the order, the USPTO plans to terminate all the trademark applications they filed.

    In email, the USPTO stated that from abroad, Trademark Terminal “fraud[ulently] filed . . . over 5,500 trademark applications.” As such, the USPTO imposed sanctions against Abtach Ltd., 360 Digital Marketing LLC, and Retrocube LLC, (the “Sanctioned Companies”). According to the USPTO, these “Sanctioned Companies” operate Trademark Terminal from outside of the United States.

    The USPTO sanctioned Trademark Terminal, so if you filed a trademark with Trademark Terminal, the USPTO
    Continue Reading Trademark Terminal Sanctioned, USPTO Cancels Applications

    A trademark Statement of Use (“SOU”) is a sworn statement that provides United States Patent and Trademark Office (“USPTO”) proof of use in commerce via (1) a specimen and (2) a $100 fee/Class. If you filed a Section 1(b) Intent to Use application, you will need to file a Statement of Use before the USPTO allows you to register.

    Below, I explain:

  • what a Statement of Use is,
  • when to file it,
  • what documents you must provide, and
  • the trademark Statement of Use fee.
  • If you filed a Section 1(b) Intent to Use application, you will need to provide
    Continue Reading Trademark Statement of Use: What Is It?

    The three distinct trademark symbols are the registered trademark symbol “R” (®), the small “TM” () symbol, and the “SM” (℠) symbol.

    Overview: Which Trademark Symbol Should I Use?

    Here, the circled “R” (®), “TM” (), and “SM” (℠) symbols tell the world what IP rights you claim.

    You may use the circled “R” (®) only after successfully trademark registration. In fact, you do not need to use it, but it is wise idea. Put the ® to the upper right of your trademark. This provides notice to the public that you claim trademark registration in that
    Continue Reading Trademark Symbols ®, ™, ℠ – An Overview (Updated)

    In 2022, the cost to file and trademark a name at the United States Patent and Trademark Office (“USPTO”) is $250 per International Class of goods and/or services. However, if a custom description is necessary, the cost to trademark a name is $350 per Class.

    Table of Contents

    Continue Reading How Much is the Cost to Trademark? (2022 Update)

    Table of Contents

    Continue Reading International Trademark Classes Guide: All 45 Classes

    In 2021, trademark filings for non-fungible tokens (“NFTs”) reached a record high. The high volume trademark filings represent explosive interest in the new digital asset economy, digital art, and Web3. However, based upon the data available from the United States Patent and Trademark Office (“USPTO”), trademark filings increased dramatically since March 2021.

    How Many NFT Trademarks Were Filed in 2021?

    As of December 2021, applicants filed 1,505 separate trademark applications during the entire calendar year.

    In contrast, 2020 saw only a paltry 15 separate NFT trademark filings. The table below shows the number of trademarks filed, not registered.

    Trademark Filing
    Continue Reading NFT Trademark Filings Soar in 2021

    Whether you can file a trademark for an NFT depends on whether the NFT is part of a larger collection or series. If the collection sells specific goods and/or services, it may receive trademark protection. Trademarking an NFT at the United States Patent and Trademark Office (“USPTO”) is the first step in securing your intellectual property (“IP”).

    Whether you can trademark a non-fungible token or NFT depends upon whether the NFT is part of a collection that serves as a source indicator.

    Can NFTs Receive Trademark/IP Protection?

    A trademark is a source indicator for specific Goods and/or Services that distinguishes
    Continue Reading Can You Trademark an NFT?

    Under current U.S. law, a trademark can last as long as its owner renews and continues to use it. In other words it could last forever, provided that proof of use is shown and the owner files a renewal. Below, I explain how long a trademark may be good for your business and your renewal dates.

    How Long is a Trademark Good For in the U.S.?

    As explained above, a trademark may last forever. However, the owner must file for either a declaration and/or renewal within clear “anniversaries” or “time-frames.” The trademark registration date starts the clock ticking
    Continue Reading How Long Does a Trademark Last in the U.S.?