The US Patent & Trademark Office Trademark Trial & Appeal Board found that a consumer did not have standing to oppose an application for registration because the consumer failed to establish a commercial interest and injury...more
Addressing a refusal to register for failure to function as a trademark, the Trademark Trial & Appeal Board (Board) reversed, finding that the evidence of consumer perception of “100% THAT BITCH” did not demonstrate that the...more
The Trademark Trial & Appeal Board (Board) addressed, for the first time, whether the deletion of goods and services as a result of a post-registration audit during a cancellation proceeding triggers Trademark Rule 2.134 and...more
The US Patent & Trademark Office (PTO) recently issued Examination Guide 1-22, Clarification of Examination Evidentiary Standard for Marks Refused as Generic (Guide 1-22), which amends the PTO’s stance on the appropriate...more
The US Patent and Trademark Office (PTO) recently published its final rules implementing provisions of the Trademark Modernization Act of 2020 (TMA). Most changes are effective as of December 18, 2021, but certain changes...more
12/2/2021
/ Corporate Counsel ,
Ex Parte ,
Ex Partes Reexamination ,
Expungement ,
Final Rules ,
Trademark Litigation ,
Trademark Modernization Act (TMA) ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
Addressing for the second time whether the design of a chocolate-dipped, stick-shaped cookie was eligible for trade dress protection, the US Court of Appeals for the Third Circuit held again that the product configuration was...more
2020 was a year like no other, so you’d be forgiven if the year’s biggest headlines in trademark law didn’t quite catch your attention. In 2020, the US Supreme Court shaped trademark jurisprudence through a trio of notable...more
1/22/2021
/ Coronavirus/COVID-19 ,
Counterfeiting ,
Economic Stimulus ,
Electronic Filing ,
Enforcement ,
Fraud ,
Injunctive Relief ,
Lanham Act ,
New Legislation ,
Online Marketplace ,
SCOTUS ,
Trademark Ownership ,
Trademark Registration ,
Trademarks ,
USPTO
Addressing the Supreme Court of the United States’ ruling in USPTO v. Booking.com B.V., the US Patent and Trademark Office (PTO) recently issued guidance on the examining procedures for “generic.com terms.” (Examination Guide...more
11/12/2020
/ Acquired Distinctiveness ,
Appeals ,
Booking.com ,
Domain Name Registration ,
Domain Names ,
Generic Marks ,
Lanham Act ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
United States Patent and Trademark Office v Booking.com BV
Trademark jurisprudence in 2019 may be best summarized in two words: questions and answers. Decisions handed down at the district court level have teed up key questions that are poised to be answered by the United States...more
The US Court of Appeals for the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision to cancel a registration after the TTAB refused to consider the registrant’s reply brief and the evidence included in...more
Expressly adopting for the first time a test to determine whether a manufacturer or distributor is the owner of an unregistered trademark in the absence of a contractual ownership clause, the US Court of Appeals for the Third...more
In Depth -
In efforts to enhance the US Patent and Trademark Office (USPTO) electronic filing system and to “assess and promote the accuracy and integrity of the trademark register,” the USPTO has ushered in changes that...more
Addressing the validity of, and likelihood of confusion between, two data-driven analytic software companies’ “Collective”-formative trademarks, the US Court of Appeals for the Second Circuit disagreed with the district...more