Silvia Legal Discoveries

[商标】TTAB 商标驳回应对策略与成功案例分享

Sun, 27 Jul 2025 12:12:05 -0700

导言：商标驳回与TTAB 上诉，企业如何应对？

本律所经常为客户处理来自美国专利商标局（USPTO）的商标驳回通知及商标审判与上诉委员会（TTAB）的异议或上诉程序。许多案件属于第 2(d) 条款中的混淆可能性驳回。

但并非所有驳回都是因为相似性问题。有些是因为商标本身过于描述性或缺乏显著性，尤其在初创企业、线上平台、内容服务商中较为常见。本文将结合真实案例与第 2(f) 条款策略，帮助您理解如何突破这类挑战。

案例一：口号类语句无法作为商标注册

在 AlphaKappa Alpha Sorority v. Stroll to the Polls, Inc.（TTAB 案号91267937，2025 年 7 月17 日）一案中，商标申请人为一句用于选民动员的口号申请注册商标，适用于服装商品。

尽管该语句被印在衣物标签内侧，TTAB 仍认为它在社交媒体和宣传中广泛使用，更像是一种大众信息，而非品牌标识。

要点总结：如果消费者将某短语理解为信息或社会理念，而非某一公司品牌，该标语可能被认为“缺乏商标功能性”，从而被撤销。

案例二：描述性但可注册的商标 —— Ghostwritten Inc.

在 Inre Ghostwritten LLC（案号98199104，2025 年 7 月11 日）中，USPTO以“Ghostwritten”为常用术语为由，拒绝其注册为出版服务的商标。

但 TTAB 认为该术语不够具体，并未直接描述申请人的服务，申请人也说明其并不提供代写业务。最终 TTAB 认为该标志足够模糊，具备显著性，予以注册。

要点总结：即便商标带有描述性词语，只要不是直接描述服务或商品核心特征，仍有可能获得注册.

我们客户实务案例：应对第2(e) 条驳回

我们曾代理某客户申请一个由创新词组加“live”构成的商标。USPTO 起初认为该名称仅描述了一种“现场直播销售”形式，属于描述性。

我们指出该平台提供的是长期运营的电商直播服务，非短期促销。并提交了市场使用、品牌投资、类似商标已注册的先例等证据。最终 USPTO 撤销驳回。

要点总结：若能证明使用场景独特、市场认知度高，即便面对描述性驳回，也可通过合理策略成功注册。

什么是第2(f)条申请？描述性商标的应对方法

根据 The Lanham Act 第 2(f) 条规定，若商标本身具描述性，申请人可以提交“已获得识别性”的证据以支持注册申请。

适用情形：
- 商标在美国持续、独占性使用五年以上
- 提供广告、销售额、媒体曝光等认知度证据
- 可附消费者声明、市场调查或类似注册先例

Introduction: What to Know About Trademark Refusals and TTAB Challenges

Our trademark law firm has handled a growing number oftrademark refusals and TTAB (Trademark Trial and Appeal Board) disputes for business clients before the United States Patent and Trademark Office (USPTO). Many of these matters involve Section 2(d) refusals, where the USPTO believes two marks are too similar.

But not all trademark refusals are based on likelihood ofconfusion. Some are based on whether the trademark is too descriptive or too generic. These are common challenges, especially for startups and online platforms. In this article, we explain how businesses can respond to these issues with real world TTAB case examples and strategies such as a Section 2(f) claim for acquired distinctiveness.

TTAB Case Example: When a Slogan Fails to Function as a Trademark

In Alpha Kappa Alpha Sorority v. Stroll to the Polls, Inc., Opposition No. 91267937 (TTAB July 17, 2025), the Board denied registration of a phrase used in voter outreach campaigns. The trademark application covered clothing items, but the Board found that consumers would see the phrase as a message, not as a source identifier.

Even though the slogan appeared on the inside collar of the items, it was already widely used across websites, merchandise, and social media. The TTAB concluded that the phrase was informational and failed to function as a trademark.

This Digital Human has been created by our artist using different AI softwares. She moves, talks, and answers questions. But what kind of right do we have over her?

Is this digital human protected by copyright law?

No. This has been created by AI, even though our artist has been involved in the whole process. At this moment, the USCO doesn’t grant protection for AI generated work. Therefore, we cannot apply for copyright protection.

Is what she is saying protected?

It depends. This is what is called the input issue, which has 2 sides. Where does she get the information from? If it is from the global internet, she might have issues, the information is probably protected. But if what he is saying is solely our composition, we are free from risks, and can seek protection for our work, as it has been generated by ourselves.

Can we get any kind of protection for her?

Yes, we can. First, the trademark is protectable. Including the trade...Read More

[Technology] Can AI own copyright?

Sun, 26 Mar 2023 14:16:14 -0700

The field of artificial intelligence (AI) is rapidly evolving and expanding, with a wide range of new applications and technologies emerging every year. As a result, copyright law is beginning to adapt and change to keep up with these developments, raising important questions about who owns the copyright to works created by AI systems.

One of the key issues in this area is the question of authorship. Traditionally, copyright law has always assumed that creative works are produced by human authors, and that those authors have a natural right to own and control their works. However, as AI systems become more sophisticated and capable of producing their own original works, this assumption is being challenged.

For example, in 2018, a painting created by an AI system sold at auction for $432,500, raising important questions about who owns the copyright to that painting. Does the AI system itself own the copyright, or does it belong to the person or company that developed and trained the system? Alternatively, can copyright law be extended to give the AI system some kind of legal personality, with the right to own and control its own works?

Another important issue in this area is the question of fair use. In the context of AI, fair use is becoming more complex and difficult to define, as AI systems are capable of reproducing and remixing large amounts of content in ways that are difficult to predict...Read More

[Startup] New York LLC & Delaware S Corporation

Sun, 05 Mar 2023 08:59:10 -0800

A New York LLC (Limited Liability Company) and a Delaware S Corporation (S corp) are both popular business structures that provide liability protection to their owners. However, there are some key differences between the two:

Formation

LLCs are formed at the state level and are governed by state laws. To form a New York LLC, you must file Articles of Organization with the New York Department of State. S corps, on the other hand, are formed under federal law, but they must be registered in the state where they do business. To form a Delaware S corp, you must file Articles of Incorporation with the Delaware Secretary of State.

Taxation

LLCs are typically taxed as pass-through entities, meaning that the company's income is not taxed at the business level. Instead, the income "passes through" to the owners, who report it on their personal tax returns. S corps are also pass-through entities, but they have to meet certain requirements, such as having no more than 100 shareholders and only one class of stock. S corps may also be subject to state-level taxes in addition to federal taxes.

Management

LLCs can be managed by their owners (known as members) or by managers appointed by the members. S corps, on the other hand, are managed by a board of directors elected by the shareholders. The board of directors is responsible for making major business decisions and appointing officers to manage day-to-day operations.

Compliance

LLCs have less formal compliance requirements than S corps. For example, LLCs do not have to hold annual meetings or keep minutes of those meetings, whereas S corps are required to do so. However, both LLCs and S corps must file annual reports with their state's governing agency and keep their business records up to date.

In summary,

Luxury fashion brand Hermès International SA has emerged victorious in a lawsuit against digital artist Mason Rothschild over his creation and sale of non-fungible tokens (NFTs) featuring digital images of the company's iconic Birkin luxury handbag covered in cartoonish fur.

Hermès argued that Rothschild's sale of the NFTs violated their rights to the "Birkin" trademark, a claim that a Manhattan federal jury agreed with, awarding the company $133,000 in damages.

The case examined how NFTs, which have surged in popularity over the past two years, should be viewed through the lens of intellectual property law. The ruling could set a precedent for future cases that test the line between art and consumer products. Rothschild had created and sold 100 MetaBirkin NFTs in late 2021, priced at around $450 each, with resale values skyrocketing to tens of thousands of dollars.

Courtesy of Sotheby's Gold Togo Birkin 25 Gold Hardware, 2020 (left) | @MetaBirkins 'The Creation' (right)

During the trial, Rothschild argued that his NFTs were works of art protected by the First Amendment, similar to Andy Warhol's silk-screen prints of Campbell's soup cans. However, Hermès argued that the MetaBirkins were more like consumer products subject to strict trademark laws that protect brands from copycats and those looking to capitalize on their goodwill. Hermès filed the suit after observing that some media outlets had incorrectly identified the MetaBirkins as being a...Read More

[Contract] A Practical Guide to Use Loan-out Companies by Creatives

Mon, 12 Sep 2022 21:06:31 -0700

If you are a self-employed creative and start to sign contracts with entertainment / publishing companies, you’ve probably heard about “loan-out” companies and the advantages of owning one. Indeed, a loan-out company or corporation could shield you from many liabilities, bring tax benefits and serve as your personal IP house.

Please allow me to explain.

The most common entity of a loan-out company is an S Corporation owned by an artist, where the artist is both the shareholder and an employee of the corporation. With this structure, artist's liabilities are limited within a shareholder’s liabilities, rather than being fully personally liable for potential damages claimed from breach of contract or infringement.

Following the Tax Cuts and Jobs Act of 2017, it is difficult for a freelancer to deduct taxes for all business expenses in personal income tax returns. Thankfully, you can still deduct the related expenses using a loan-out company. However, a loan-out company also incur some costs on social security and other maintenance.

[Pro Bono] Supplying the Supply Chain Shortage of Pro Bono Legal Service

Mon, 22 Nov 2021 06:14:02 -0800

The term Pro Bono is short for Pro Bono Publico, which means “for the public good” and is used for professional work undertaken voluntarily and without payment.

The American Bar Association explains our role perfectly:

“Model Rule 6.1 states that lawyers should aspire to render--without fee--at least 50 hours of pro bono publico legal services per year, with an emphasis that these services be provided to people of limited means or nonprofit organizations that serve the poor. The rule recognizes that only lawyers have the special skills and knowledge needed to secure access to justice for low-income people, whose enormous unmet legal needs are well documented. Nearly every state has an ethical rule that calls upon lawyers torender pro bono services.”

As an attorney, I am grateful for having the skills and knowledge to serve and advocate for people with unmet legal needs. In this holiday season and until December 31, 2021, Sun & IP Law Office, PLLC is offering five (5) hours of Pro Bono legal services to two (2) new clients for matters related to copyright, trademark and entertainment contracts. I am also offering low fee services for low-income artists with 20% net revenue of which being donated to the New York Public Library.

Make inquiry at IP@SUNIPLAW.COM. Happy holidays!

Sincerely,

Silvia Sun, Esq.

Trade secrets is one of the pillars of intellectual property. While copyright laws protect the expression of ideas, trade secret laws protect the abstract ideas, especially when a product is in the making and valuable ideas are being exchanged in meetings. The most effective way to protect trade secrets is traditionally through contractual relationships, e.g., signing non-disclosure agreements and confidential agreements with business partners and employees.

At the same time, trademark and copyright registrations can offer additional protections to the intellectual properties surrounding a trade secret, such as a product brand name in developing or computer source code in developing.

However, challenges remain in using trademark and copyright registrations for work that contains trade secrets, mainly because trademark and copyright registrations are public records and each require certain document to be deposited publicly. If any confidential material becomes part of public record, it is no longer protected under trade secret laws as its confidential nature is destroyed.

When applying for copyright registrations in the U.S., applicant is required to deposit a copy of the original work with the Library of Congress. If any work contains trade secrets, for example, confidential...Read More

[Interview] Q & A with China Southwest University of Political Science and Law

Mon, 21 Jun 2021 16:24:39 -0700

As you might know, I went to several law schools in my 20s. The first law school is my college, Southwest University of Political Science and Law in China. Lately, I've been fortunate enough to have connected with my college alumni through a series of online panel discussions. As part of the series, a few student volunteers interviewed me with the following questions. The interview is in Mandarin and please proceed with Google Translate if you may. Original article is here.

孙筱云本期分享的主要内容包括：

专业选择, 职业规划,人生方向。

感谢校友会让世界各地的我们有机会聚在一起。我很荣幸有这次机与大家分享我的个人经历，也希望向优秀的校友们学习。

—— 孙筱云

专业选择

Q：结合您本科和LLM的经历，您为什么选择读JD？

A：其实我读了LLM之后，觉得这是一个很general的项目，随后就对知识产权法产生了非常大的兴趣。我当时的想法是特别想做商标或者版权这一块，但觉得可能自己能力有一些不足，所以想进一步提高专业能力，多学习一下这方面的课程，所以就选择了一个比较侧重知识产权法的JD项目去继续学习。

Q：您LLM就读于伊利诺伊大学法学院，JD就读于叶史瓦大学本杰明.卡多佐法学院，您认为这两个学校在校友、就业、学校支持、机会、综合性等方面分别都有什么优势？

A：两者的优势不同，像伊利诺伊大学香槟分校，