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Can the word ‘THE’ acquire trademark protection?

The Ohio State University from the state of Ohio filed a trademark application bearing the serial number 88571984 with the USPTO (United States Patents and Trademarks Office) in 2019 to seek protection of the word ‘THE’. The user date of the application dated back to the year 2005 and had been filed in respect of “Clothing, namely, t-shirts, baseball caps and hats” under Class 25. The trademark is that of a label which comprises the word ‘THE’ in bold letters and the logo Ohio State University beneath it. However, the process was off to a rocky start as the University had...

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Whether the addition of “.com” to a generic term qualifies for trade mark protection?

In the year 2011, Booking.com, a travel and hotel accommodations company, filed four trade mark applications for Booking.com. The USPTO rejected the said applications on account of the mark being too generic, in the year 2016. The Lanham Act specifically prohibits the registration of generic trade marks. Generic trade marks are common terms used to name products or services, for example, a brand of shoes called "shoes". Generic trade marks describe a product and hence these marks do not qualify for any protection. However, drawing reference to the evidence presented before the lower Courts, it was observed that the consumers viewed...

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Can the Registrar of Trade Marks pass a non speaking order without communicating the grounds for refusal?

Intellectual Property Attorneys Association v. The Controller General of Patents, Designs and Trademarks & Anr: The Intellectual Property Attorneys Association (hereinafter referred to as Petitioner), aggrieved by the non-speaking orders passed by the Controller General of Patents, Designs & Trade Marks (hereinafter referred to as Respondent) while refusing registration of the trade mark applications, approached the Delhi High Court, contending that the said refusals were in violation of Section 18(5) of the Trade Marks Act, 1999. The Court analysed Section 18 and Rule 36 to arrive at a decision in the case: Section 18 deals with application made for the registration of a...

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By Dr. Vinod Surana Overview A patent is an exclusive right granted by a sovereign authority for an invention. It can be a product, process, a novelty or an improvement, or a solution to a problem. It plays an essential role in encouraging innovation and developments across all sectors. Inventors gain exclusive rights to the process or design for a fixed period (which varies per jurisdiction), In exchange, the creator must provide particulars regarding the invention. Patents both incentivize and protect companies in research and development. The exclusivity granted by patents allows monopolistic production and sales of a creator’s work; absent that right...

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