News & Analysis as of

Generic Appeals

McDermott Will & Emery

No Bull: Historically Generic Term Can Become Non-Generic

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The US Court of Appeals for the Federal Circuit affirmed Trademark Trial & Appeal Board rulings, finding that a previously generic term was not generic at the time registration was sought because at that time the mark, as...more

McDermott Will & Emery

The Fondues and Don’ts of Certification Marks

McDermott Will & Emery on

The US Court of Appeals for the Fourth Circuit affirmed a summary judgment grant in favor of the opposers of a certification mark application for the trademark GRUYERE to designate cheese that originates in the Gruyère region...more

Ladas & Parry LLP

Gruyere Cheese is Gruyere Cheese... Even in the United States

Ladas & Parry LLP on

On March 3rd, the United States Court of Appeals for the Fourth Circuit in Virginia upheld a ruling that cheese labeled GRUYERE can be used to legally describe cheese made from outside the Gruyere region of Switzerland and...more

Fox Rothschild LLP

Selection Of Federal Circuit Review Of A TTAB Decision Does Not Bar District Court Review Of A Later TTAB Decision Issued In The...

Fox Rothschild LLP on

On March 17, 2021, in a matter of first impression, the United States Court of Appeals for the Fourth Circuit held a party appealing a decision of the United States Trademark Trial and Appeal Board (“TTAB”) may seek review of...more

ArentFox Schiff

Court Holds that TTAB Appellant Gets Only One Bite at the Apple When Selecting Forum for Appeal

ArentFox Schiff on

The loser of a trademark opposition or cancellation proceeding at the United States Trademark Trial and Appeal Board (TTAB) has two avenues for appealing the decision: (1) to the United States Court of Appeals for the Federal...more

Knobbe Martens

Patent Claim Reciting a List “Consisting Essentially of” Is Indefinite Where the Basic and Novel Property of the Invention Is...

Knobbe Martens on

HZNP Medicines LLC, Horizon Pharma USA, Inc. v. Actavis Laboratories UT, Inc. Before Prost, Newman, and Reyna.  Appeal from the District Court for the District of New Jersey. Summary: Claims using “consisting...more

International Lawyers Network

Federal Circuit Reminds Us That Extrinsic Considerations Are Narrowly Construed in Trademark Matters

2018 saw a number of important trademark cases decided across the United States. Two cases illustrated the similarities between genericness analysis and one of the likelihood of confusion factors considered by the Trademark...more

Knobbe Martens

Impax Laboratories Inc. v. Lannett Holdings Inc.

Knobbe Martens on

Federal Circuit Summaries - Before Lourie, Dyk, and Taranto. Appeal from the District Court for the District of Delaware. Summary: A passing reference in the prior art to a formulation containing the claimed active...more

Smart & Biggar

No Section 8 Liability for Valid and Infringed Patent in NEXIUM Proceeding

Smart & Biggar on

What happens when a patentee is unsuccessful in a prohibition application under the Patented Medicines (Notice of Compliance) (PMNOC) Regulations against a generic entrant, but subsequently prevails in an infringement action...more

Akerman LLP - Marks, Works & Secrets

No Twist on Pretzel Crisps on Remand

In a 54 page decision issued on September 6, 2017, the Trademark Trial and Appeal Board (the “Board”) ended (again) a long-standing dispute between snack food makers Frito-Lay, Inc. (“Frito”) and Princeton Vanguard, LLC...more

Foley & Lardner LLP

Conflict Between Granting a Preliminary Injunction and Staying the Case Pending Appeal of the Injunction

Foley & Lardner LLP on

In Fresenius Kabi USA, LLC v. Fera Pharmaceuticals, LLC, et al., Case No. 15-3654 (D.N.J.) the district court recently denied Fresenius’s motion to dismiss Fera’s antitrust counterclaims, but simultaneously decided to sever...more

Knobbe Martens

RED GOLD for Jewelry: Obviously Generic (Or Maybe Not…)

Knobbe Martens on

On March 24, 2017, the U.S. Court of Appeals for the Ninth Circuit ruled that the term “red gold” may not be a generic term for jewelry and watches, and thus, may serve as a trademark. Specifically, the Ninth Circuit found...more

Ladas & Parry LLP

“Poisonous Divisionals” Poisoned In The EPO

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For the past few years there has been fear that the law on priority claims in the European Patent Office (EPO) could result in a divisional application becoming prior art against its parent if the divisional application...more

McDermott Will & Emery

“Churrascos” Is Generic for Restaurant Services

On appeal from the Trademark Trial and Appeal Board (TTAB), the US Court of Appeals for the Federal Circuit affirmed the TTAB’s refusal to register a stylized form of the mark CHURRASCOS for restaurant services, finding that...more

Katten Muchin Rosenman LLP

The Katten Kattwalk - Issue 08

The Katten Kattwalk discusses legal issues in the fashion industry affecting the trademarks, patents and copyrights associated with companies, brands and products. Letter From the Editor - Fashion Week has come and...more

McDermott Will & Emery

Two Generics Can Make a Mark - Princeton Vanguard, LLC v. Frito-Lay North America, Inc.

The U. S. Court of Appeals for the Federal Circuit vacated and remanded for further proceedings the decision of the Trademark Trial and Appeal Board (TTAB or Board) cancelling the registration of the mark PRETZEL CRISPS,...more

Sheppard Mullin Richter & Hampton LLP

Summary of Recent Precedential Trademark Trial and Appeal Board Decisions

In the past two months, the Trademark Trial and Appeal Board has issued three opinions citable as Board precedent. The following is a brief summary of each opinion and its precedential impact....more

McDermott Will & Emery

A Combination of References Need Only Provide a “Reasonable Expectation of Success”

Hoffmann La-Roche Inc. v. Apotex Inc. - Addressing the validity of a dosing regimen patent in Abbreviated New Drug Application (ANDA) litigation, the U.S. Court of Appeals for the Federal Circuit affirmed a lower...more

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