Thursday, March 13, 2008

Prof. Randazza explains Ornamental Use vs. Trademark Use as only he can

I’ve written previously about trademark applicants who seemingly confuse ornamental use with trademark use. (See prior posts on GIRLICIOUS, the "Smiley Cookie," and ALASKA GROWN.)

But I particularly enjoyed reading Prof. Marc Randazza’s own take on this common misunderstanding by trademark applicants in his blog post yesterday (link here) on The Legal Satyricon with respect to the pending intent-to-use trademark application for the mark COCKAHOLIC as well as the pending opposition filed by a woman who claims prior user rights for having already used the same mark on T-shirts. See Benee Hudson v. Sports-Aholic, Inc., Opposition No. 91181581 (T.T.A.B. Filed December 22, 2007).

I also share Marc’s surprise that the PTO, being so uptight these days with respect to marks comprising "immoral or scandalous matter," even allowed the mark to be published in the first place (the PTO did not even issue a single office action).

Also worth reading are Marc’s opinions about "immoral or scandalous" rejections under Section 2(a). Check out his postings on two decisions last year by the Trademark Trial and Appeal Board -- first to uphold a Section 2(a) rejection of the mark YOU CUM LIKE A GIRL and then three weeks later overturning a similar Section 2(a) rejection and approving for registration the mark CUMBRELLA.