Book Description

This treatment tracks development of the registration and prosecution of nontraditional marks in the U.S. Patent & Trademark Office and challenges to their validity in the courts. Addressed are: USPTO practices concerning each type of nontraditional mark and authority for registering them; decisions of the TTAB, federal courts, and U.S. Supreme Court; considerations and issues unique to nontraditional marks, such as proper identification, functionality and patent/public domain doctrines, acquired distinctiveness standards, and dilution protection; and applicable procedural and evidentiary matters that often arise in litigation, including effective proof of distinctiveness, available grounds to challenge nontraditional marks, burdens of proof, and evidence of third party use. Also included in a five-part Appendix are excerpts of pages from editions of the Official Gazette of the USPTO showing published product design, color, scent, sound, and motion marks.

Content Highlights

• Authority for Claiming Rights • Drawing and Identification Requirements • Specimens Required • Recognition of Vaguely Stated Claims • Claiming Inherent Distinctiveness • Two Pesos / Wal-Mart Dichotomy • Consequences of Registering Without Reliance on Section 2(f) • Proof of Acquired Distinctiveness • Primary Significance Test • Standard and Factors of Functionality • Patent / Public Domain Argument • Expansion and Limitations of Rights • Grounds to Challenge Nontraditional Marks • Evidence of Third-Party Use • Published Marks