The United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) recently dismissed Luxco, Inc.’s (“Luxco”) opposition to registration of the mark TEQUILA (in standard character format) by an...more
The United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) cancelled the registration for the mark PORTÓN last week, finding it to be confusingly similar to the senior mark PATRÓN. Patrón...more
The United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) modified its treatment of the “family of trademarks” doctrine in the recent case In re LC Trademarks, Inc., Serial No. 85890412...more
1/16/2017
/ Ex Parte ,
Fast-Food Industry ,
Franchises ,
Hitachi ,
Intellectual Property Protection ,
Popular ,
Technology Sector ,
Trademark Application ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
The Federal Circuit recently provided additional guidance concerning whether an applied-for mark is generic in In re Cordua Restaurants, Inc., (May 13, 2016). This case stemmed from the United States Patent and Trademark...more
In response to the United States Patent and Trademark Office’s (“USPTO”) petition for writ of certiorari in to the U.S. Supreme Court In re Tam (“THE SLANTS” case), the owners of the Washington Redskins filed their own...more
5/2/2016
/ Blackhorse v Pro-Football ,
Disparagement ,
Due Process ,
Fifth Amendment ,
Football ,
Native American Issues ,
NFL ,
Petition for Writ of Certiorari ,
Redskins ,
The Slants ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
On April 20, 2016, the United States Patent and Trademark Office (“PTO”) filed a petition for a writ of certiorari to the Federal Circuit seeking Supreme Court review of that Court’s decision in In re Tam, 117 USPQ2d 1001...more
4/25/2016
/ Disparagement ,
First Amendment ,
Free Speech ,
Lanham Act ,
Petition for Writ of Certiorari ,
SCOTUS ,
Strict Scrutiny Standard ,
The Slants ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
Unconstitutional Condition ,
USPTO
In a decision bound to impact trademark prosecution practice in the future, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) recently found that a consent agreement between a...more
Recently, a District Court judge issued a scathing rebuke to the United States Patent and Trademark Office in Board of Trustees of the University of Alabama et al. v. Houndstooth Mafia Enterprises LLC, (N.D. Alabama February...more
In a ruling bound to please 15 year-old boys everywhere, the USPTO Trademark Trial and Appeal Board (“TTAB”) reversed the Examining Attorney’s refusal to register the trademark NUT SACK DOUBLE BROWN ALE (in standard character...more
11/5/2015
/ Beer ,
Breweries ,
Corporate Counsel ,
Lanham Act ,
Offensive Language ,
Trademark Act ,
Trademark Application ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO ,
Wine & Alcohol ,
Young Lawyers
In The North Face Apparel Corp. v. Sanyang Industry Co., Ltd., Opp. No. 91187593 (September 18, 2015), the Trademark Trial and Appeal Board (“TTAB”) handed The North Face Apparel Corp. (“The North Face”) significant victories...more
9/30/2015
/ Automotive Industry ,
Fashion Branding ,
Fashion Design ,
Fashion Industry ,
Motion to Amend ,
Retail Market ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks
The number of successful oppositions against trademark applications based on a claim that the applicant had “no bona fide intent to use” has been increasing in recent years. On September 10, 2015, in Swiss Grill Ltd. v. Wolf...more
The Trademark Trial and Appeal Board recently re-designated as precedential its May 12, 2015 decision that affirmed refusal to register a mark because the applicant’s specimens – showing the proposed mark in plural form,...more
Recently, the Trademark Trial and Appeal Board (the “TTAB”) held that an unsuccessful opposer was precluded from later pursuing a cancellation against the same trademark owner, even though the opposer assumed a different...more
8/12/2015
/ B&B Hardware v Hargis Industries ,
Claim Preclusion ,
Corporate Counsel ,
Digital Downloads ,
Digital Media ,
Music Industry ,
Podcasts ,
SCOTUS ,
Trademark Act ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Trial and Appeal Board ,
Trademarks ,
Webcasts ,
Webinars ,
Young Lawyers
This case arose from GS Enterprises, LLC’s (“GS”) opposition to the registration of Juice Generation, Inc.’s (“Juice Generation”) trademark. In finding a likelihood of confusion with GS’s marks, the Board below reasoned that...more
H.J. Heinz Co. (“Heinz”) filed a federal lawsuit recently against Boulder Brands USA (“Boulder”) seeking to vacate and reverse a Trademark Trial and Appeal Board decision finding that Boulder’s SMART BALANCE trademark is not...more
On May 8, 2015, the Trademark Trial and Appeal Board (the “Board”) issued a resounding blow to trademark applicants who seek to register others’ trademarks as parodies. In New York Yankees Partnership v. IET Products and...more
The Supreme Court issued its second trademark ruling of the term on Tuesday, ruling that federal court decisions on “likelihood of confusion” sometimes can be precluded by earlier rulings about trademark registrability issued...more
The Supreme Court issued its second trademark ruling of the term on Tuesday, ruling that federal court decisions on “likelihood of confusion” sometimes can be precluded by earlier rulings about trademark registrability issued...more
In Couture v. Playdom, Inc., the Federal Circuit held that the use of a mark on a website to offer services is not use in commerce sufficient to support an actual-use service mark application. As a result, the Court affirmed...more
In Couture v. Playdom, Inc., the Federal Circuit held that the use of a mark on a website to offer services is not use in commerce sufficient to support an actual-use service mark application. As a result, the Court affirmed...more
On July 1, 2014, the Supreme Court granted certiorari to review the Eighth Circuit’s decision in the case B&B Hardware, Inc. v. Hargis, Inc. (2013). B&B Hardware owns a registered mark for SEALTIGHT for self-sealing nuts and...more