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Secondary Meaning

Weintraub Tobin

Connect 4: Trade Dress Infringement and Secondary Meaning

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You are likely familiar with the children’s game, Connect 4, in which players drop red and black checker pieces into an upright rack trying to get four of their pieces in a row to win. Some of you may have even seen enlarged...more

Dorsey & Whitney LLP

In-N-Out Trade Dress Dispute Part III: To Squirt, or Not to Squirt?

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Welcome to the final chapter of our Burger War Trilogy. In our earlier installments, Part I and Part II, we discussed the secondary meaning surveys proffered by both parties in this trade dress dispute. We now turn to...more

Dorsey & Whitney LLP

In-N-Out Burger Trade Dress Dispute Part II: Where’s The Beef?

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Last week we introduced our readers to the imbroglio featuring the burger behemoth In-N-Out, who accused upstart Doll N’ Burgers of infringing In-N-Out’s registered and unregistered trade dress. Typical of these sorts of...more

Dorsey & Whitney LLP

Doc Martens Gives the Boot to Likelihood of Confusion Expert in Trade Dress Dust-Up

Dorsey & Whitney LLP on

We’ve discussed a number of cases lately where flimsy consumer surveys were tossed out as unreliable under Daubert. This latest installment presents a slightly different twist....more

Weintraub Tobin

The Briefing by the IP Law Blog: Sushi Restaurants Battle for Control over Hand Roll Trademark

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Sushi Nozawa, LLC, owner of the popular sushi destination Sugarfish, is challenging the HRB Experience LLC over use of the term “Hand Roll Bar.” IP Attorneys Scott Hervey and Josh Escovedo discuss the lawsuit, including...more

Knobbe Martens

Pencil Shaped Chalk Holder Is a Non-Copyrightable Idea

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Lanard Toys Limited v. Dolgencorp LLC, Ja-Ru, Inc., and Toys “R” US - Before Lourie, Mayer, and Wallach. Appeal from the District Court for the Middle District of Florida. Summary: A useful article is not copyrightable...more

Dorsey & Whitney LLP

Booking.com Heads to the High Court

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Last Friday, the U.S. Supreme Court granted the USPTO’s writ of certiorari to review traveling website company Booking.com’s trademark application for “booking.com”. The TMCA previously covered developments in this case here....more

McDermott Will & Emery

Fiesta’s Over for Trademark Claims Without Proof of Secondary Meaning

The US Court of Appeals for the First Circuit found that it had jurisdiction despite an arguably improper notice of appeal, and that the trademark owner waived its right to submit new evidence and failed to prove that the...more

Ballard Spahr LLP

What’s "Kicking" at the ITC – the All Star Sneaker Battle

Ballard Spahr LLP on

One of the biggest trademark cases in 2018 addressed the issue of secondary meaning in product design—specifically, Converse’s rights in its signature Chuck Taylor® All Star® shoe. In Converse v. ITC, the Federal Circuit...more

McDermott Will & Emery

Trademark Owner’s Fate Sealed Tight After Finding of Fraud on PTO

Addressing the issue of collateral estoppel, the US Court of Appeals for the Eighth Circuit upheld a ruling dismissing a trademark owner’s second infringement lawsuit against the same defendant after a finding that the...more

McNees Wallace & Nurick LLC

McNees 2018 in Review – Trademarks, Copyrights and Patents

From big name brawls, to new legislation, to the year of inter partes review, 2018 was a hallmark year for intellectual property law. With so many interesting and informative updates, 2018 has set the bar high for 2019. Let’s...more

McDermott Will & Emery

Surname or Suds? SCHLAFLY Mark Has Acquired Distinctiveness

The US Court of Appeals for the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision that the SCHLAFLY mark had acquired secondary meaning and met the requirements for registration. Bruce S. Schlafly...more

McDermott Will & Emery

Sturgis Motorcycle Rally: A Long and Bumpy Ride

Addressing issues relating to validity of registered and common law trademarks, the US Court of Appeals for the Eighth Circuit upheld a jury verdict finding infringement of two registered marks and reversed a verdict finding...more

McDermott Will & Emery

An All Star Trademark Opinion

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Addressing core issues of trademark law, including evidentiary presumptions afforded to registered trademarks and considerations in determining whether trademarks have acquired secondary meaning, the US Court of Appeals for...more

Knobbe Martens

Federal Circuit Weighs In on Converse's Midsole Trade Dress

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On October 30, 2018, the Federal Circuit weighed in on Converse’s Chuck Taylor trade dress infringement lawsuit. As reported in If the IP Fits, Wear It: IP Protection For Footwear – a U.S. Perspective, Converse filed over 30...more

Knobbe Martens

Schlafly v. The Saint Louis Brewery, LLC

Knobbe Martens on

Federal Circuit Summary - Before Newman, Mayer, and Stoll. Appeal from the Trademark Trial and Appeal Board. Summary: Words that are primarily a surname can be registered as trademarks if they have acquired secondary...more

Cozen O'Connor

The Federal Circuit Redefines Secondary Meaning and Infringement for Product Trade Dress in Converse

Cozen O'Connor on

On October 30, 2018, a divided Federal Circuit issued a decision in Converse, Inc. v. ITC, whereby it created a new test for secondary meaning and placed limits on trade dress infringement. The Federal Circuit found...more

Jones Day

Trademark and Trade Dress: What to consider for secondary meaning?

Jones Day on

As explained in a recent Jones Day Commentary, the Federal Circuit clarified the tests for determining secondary meaning and trade dress infringement. Converse v. ITC, No. 16-2497 (Fed. Cir. Oct. 30, 2018). First, the Federal...more

Akin Gump Strauss Hauer & Feld LLP

The Federal Circuit Vacates and Remands An International Trade Commission Final Determination in A Trademark-Based Investigation

• The Federal Circuit issued a rare precedential decision in an appeal from a trademark- and trade dress-based ITC investigation. • In its decision, the Federal Circuit reiterated that the act of trademark registration does...more

Hogan Lovells

Federal Circuit revives Converse’s Chuck Taylor trademark and infringement claims

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In a recent decision that illustrates the relevance of timing in evaluating the question of secondary meaning, the Court of Appeals of the Federal Circuit breathed new life into Converse’s “Chuck Taylor” sneaker design...more

Knobbe Martens

Converse, Inc. v. ITC

Knobbe Martens on

Federal Circuit Summary - Before Judges Dyk, O’Malley, and Hughes. Appeal from the United States International Trade Commission. Summary: Registered trade dress carries a presumption of secondary meaning only...more

Knobbe Martens

Can Ear Plugs Tune Out Color? Bright Green Color For Ear Plugs Not Functional

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Moldex-Metric, Inc. filed a trademark infringement lawsuit against McKeon Products.  Moldex-Metric asserted that McKeon infringed its unregistered trade dress consisting of a bright green color for foam ear plugs by using a...more

Burns & Levinson LLP

What’s In a Name?

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Question: What do Sean Combs, J.K. Rowling, LeBron James, Lionel Messi, and Mark Wahlberg have in common? Two things, actually. First, they are all listed on the Forbes 2017 Celebrity 100 List; second, they all have gone to...more

Knobbe Martens

The Top Hits: Fashion Cases with a Big Impact

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Over the last year, there have been some significant trademark and copyright cases in the fashion industry. Below are summaries of recent cases all brand owners should know and understand. These cases touch on important...more

Knobbe Martens

These Boots Are Made For Walkin’: Trade Dress and the Distinctive Look of a Boot Sole

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Airwair, the owner of the Dr. Martens brand, recently launched a series of lawsuits in the Northern District of California to enforce the trade dress of its “iconic boots and shoes.” One lawsuit was filed in October against...more

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