With businesses engaging in increasingly more commerce over the internet, it is crucial to understand the consequences of displaying, using, and transferring another entity’s works online. Enter The Digital Millennium Copyright Act (DMCA) of 1998, which was signed into law by President Clinton to keep pace with the new realities of internet technology and commerce. The Act sought to protect intellectual property rights while simultaneously advancing the growth and development of e-commerce.

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On March 4, 2019, the United States Supreme Court resolved a longstanding split among the circuit courts concerning what exactly the copyright registration prerequisite to filing a copyright lawsuit means – whether an application to register is sufficient or an actual issued registration is required. The Supreme Court chose the latter holding that a copyright owner must first obtain a copyright registration certificate from the Copyright Office before filing a copyright infringement suit.

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The United States Copyright Office has denied a copyright submission over the “Carlton dance,” which was a routine first popularized on the hit 90s show, “The Fresh Prince of Bel-Air.”

Alfonso Ribeiro, the actor who played Carlton on the show, submitted three copyright applications over his dance routine to the U.S. Copyright Office. So far, two of the applications have been rejected and one is still under consideration.


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A generic trademark or brand name is one that—due its popularity or common usage—has become synonymous with a general class of products or services. Famous trademark-turned- generic product names include Thermos and Velcro.

Under U.S. trademark law, generic trademarks can never be federally registered and protected under the Lanham Act (the Trademark Act of 1946) because the mark name refers directly to the class of a product or service it belongs to and is incapable of distinguishing that good or service from other goods or services on the market. Generic names must remain in the public domain, free for the public to use. Moving up the trademark scale of distinguishable marks, descriptive trademarks can be protected from public use if an applicant can show that they have acquired distinctiveness.


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In a precedential Trademark Trial and Appeal board (TTAB) decision, the Board held that an applied-for trademark consisting of multiple colors on product packaging, without any distinct shape, pattern or design, can never be inherently distinctive. See In re Forney Industries, Inc., Serial No. 86269096 (September 10, 2018). Applicant Forney Industries, Inc. sought to register a color scheme on the Principal Register, consisting of a black banner above a yellow to red color gradient for use on the product packaging of its various metal hardware and other small welding tools.

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This is part 3 of a 3 part blog. Please click here to read Part 1 – Generic Marks. Please click here to read Part 2 – Merely Descriptive & Geographically Descriptive


A mark can be refused registration if it bears a significant resemblance to a government insignia. In In re Shabby Chic Brands LLC, 122 USPQ2d 1139 (TTAB 2017), Shabby Chic Brands, LLC sought to register an image of “an ornate, feathered crown” for a variety of furniture and decorative housewares. The Trademark Examining Attorney refused registration based on Section 2(b) of the Lanham Act, which prohibits registration of marks that “consist of or comprise the flag or coat of arms or other insignia. . . of any foreign nation.” The Examining Attorney believed the proposed mark resembled the official emblem of the Prince of Wales, according to the illustration filed in accordance with the Paris Convention.


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This is part 2 of a 3 part blog. Please click here to read Part 1 – Generic Marks. Please click here to read Part 3 – Government Insignia & Surname


Trademarks are also non-registrable under the Lanham Act if the mark, when used in connection with applicant’s goods or services, is merely descriptive of them. 15 U.S.C. § 1052(e)(1). In a recent case, In re Houston Bites, LLC, Serial No. 87170141, applicant Houston Bites LLC attempted to register “Houston Bites” for services identified as “providing a website featuring non-downloadable photographs regarding restaurants, food and beverages.” The examining USPTO attorney refused registration on the ground that the mark was merely descriptive of the service in question: providing a website of photos related to light meals and snacks located in Houston, Texas. Houston was merely descriptive of applicant’s location, and a dictionary entry that defined “bites” as light meals or snacks bolstered the notion that the word bites was merely descriptive of what applicant’s services provided images of. If all individual components of the mark were descriptive, then the composite mark was also descriptive and not registrable.
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Trademarks are product differentiators that help consumers recognize familiar brands that customers have come to associate with a certain perceived level of goodwill, reputation, quality, taste, consistency, and style. A form of shorthand, a unique signature of sorts, a trademark signals to consumers the source or origin of a particular good or service.

Walking into a McDonalds, we know how a cheeseburger is going to taste. Seeing a red and white striped curved awning with green domes that extend above the awning, we can expect to enjoy custard ice cream or Italian ice from Rita’s Italian Ice. Coffee served in a cup with a two tailed mermaid is, as we all know, from Starbucks.


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This is part 1 of a 3 part blog. Please click here to read Part 2 – Merely Descriptive & Geographically Descriptive. Please click here to read Part 3 – Government Insignia & Surname.


Despite being used lawfully in commerce, a trade or service mark may be refused registration by the United States Patent and Trademark Office (“USPTO”) under Section 2 of the Trademark Act of 1946 (the “Lanham Act”) if the proposed mark is “generic,” “merely descriptive or deceptively misdescriptive,” or likely “to cause confusion” with another registered or used mark.


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Courts recognize four trademark categories within which every mark must fall: (1) Generic marks, (2) Descriptive marks, (3) Suggestive marks, and (4) Arbitrary or Fanciful marks.[i] At the far end on the spectrum, warranting the greatest level of trademark protection, stands arbitrary or fanciful marks—those words which offer no inherent description of the product. On the opposite end of the spectrum lies generic marks—those made up of common descriptors to which courts afford no trademark protection.[ii]

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