News & Analysis as of

Trademark Application Acquired Distinctiveness Trademark Registration

McDermott Will & Emery

Sole Searching: Trade Dress Hopes Booted as Functional, Nondistinctive

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The US Court of Appeals for the Fourth Circuit affirmed a district court’s summary judgment grant in a trademark dispute, finding that the district court did not err in concluding that a subset of design elements lacked...more

Erise IP

What’s Trending in Trademarks, February 2024: Fruity Pebbles Denied Color Mark, Captain Cannabis Cancellation, Trader Joe’s vs....

Erise IP on

Every month, Erise’s trademark attorneys review the latest developments at the U.S. Patent and Trademark Office, in the courts, and across the corporate world to bring you the stories that you should know about: Fruity...more

Womble Bond Dickinson

Lowering Bar on Footboard Does Not Lower Burden for Proving Acquired Distinctiveness of Bed Frame, Says Trademark Office

Womble Bond Dickinson on

Charity seeking to register product designs as trademark icon not met the “very high burden” for showing acquired distinctiveness - On September 1, 2023 the Trademark Trial and Appeal Board (TTAB) issued a nonprecedential...more

Whitcomb Selinsky, PC

Geographically Descriptive Trademarks: What You Need To Know

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Why can't I use my hometown as my brand? A trademark is part of your branding, a way to identify the source of your product or service. In many ways, the stronger the brand, the stronger the trademark. However, there are...more

Ladas & Parry LLP

TTAB Confirms that Building Design Marks Lack of Distinctiveness

Ladas & Parry LLP on

In In re Palacio Del Rio Inc (Serial Nos 88412764 and 88437801), the Trademark Trial and Appeal Board (TTAB) has issued an opinion affirming the refusal of two building design mark applications by Palacio Del Rio Inc (PDR) –...more

McDermott Will & Emery

Strike 1: Priority. Strike 2 :Likelihood of Confusion. Strike 3: You’re Out under Section 2(d).

McDermott Will & Emery on

The Trademark Trial & Appeal Board affirmed the rejection of three trademark applications, finding that the applied-for marks would cause confusion with a record-setting major league baseball player. Major League Baseball...more

International Lawyers Network

High Court of Delhi holds that acquired distinctiveness is necessary for obtaining registration of a shape mark

In today’s age, the importance of brands (and in turn trademarks) cannot be undermined. It is through brands that businesses (be it domestic or international) are able to thrive and flourish in various highly competitive...more

McDermott Will & Emery

It’s Not in the Bag: TTAB Refuses to Register Generic Handbag Design

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Ending a hard-fought three-year campaign to secure registration of a popular handbag, the US Patent & Trademark Office (PTO) Trademark Trial & Appeal Board designated as precedential its decision refusing registration of the...more

Knobbe Martens

The Battle of Brooklyn: Lack of Concrete Injury and Prior Collaboration Doom TTAB Actions

Knobbe Martens on

BROOKLYN BREWERY CORPORATION V. BROOKLYN BREW SHOP, LLC - Before Judges Dyk, O’Malley, and Hughes. Appeal from the Trademark Trial and Appeal Board. Summary: A challenger must demonstrate an injury in fact to have...more

Hogan Lovells

Put a cork in it: EU General Court says sound file of "opening a carbonated beverage" not registrable as a sound mark

Hogan Lovells on

The typical crack and fizz sound that occurs when opening a carbonated beverage is not registrable as a sound mark as it lacks any distinctive character. This was decided by the General Court of the European Union (GC) in a...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - January 2021

[co-author: Joseph Diorio, Law Clerk] The January 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses: a recent non-precedential TTAB decision on background designs; the Trademark Modernization Act;...more

Jones Day

JONES DAY TALKS®: Women in IP: 2020 in Review and a Look Toward 2021

Jones Day on

Jones Day's Meredith Wilkes and Anna Raimer discuss 2020's most significant developments in trademark law and preview what's to come in 2021, including possible progress in Washington on the highly anticipated Trademark...more

Morrison & Foerster LLP

Landmark Trademark Protection Case Before Supreme Court

United States trademark law makes a strong distinction between “descriptive” and “generic” terms. The former are potentially accorded substantial benefits, while the latter can never be entitled to protection and are not...more

Akerman LLP - Marks, Works & Secrets

The Joint is Just a Music Joint, Not a Trademark

The Federal Circuit in In re JC Hospitality LLC recently affirmed the United States Patent and Trademark Office, Trademark Trial and Appeal Board’s refusal to register the service mark THE JOINT for a venue offering...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - January 2020: That's Not My [Sur]name

In a non-precedential opinion issued this month, the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board affirmed the refusal to register Jos. A. Magnus & Co., LLC’s mark MAGNUS for “whiskey, gin, and...more

Womble Bond Dickinson

Intellectual Property Considerations and Guidance for Start-Ups: Trademarks

Womble Bond Dickinson on

Trademarks protect distinctive marks, such as brand names, logos, and designs. This protection allows a trademark holder to exclude others from using the mark without permission of the owner. The following includes important,...more

Mintz - Trademark & Copyright Viewpoints

Significant 2018 Trademark Decisions

This year the Supreme Court, United States Court of Appeals for the Federal Circuit, and the Circuit Courts penned a number of opinions impacting trademark law. Here are some key takeaways from the past year...more

Dorsey & Whitney LLP

Registration of Color Trademarks on Product Packaging: The TTAB Lays Down Some Black and White Rules

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Obtaining trademark registration for color trademarks can be a complicated undertaking. In a recent precedential opinion, the Trademark Trial and Appeal Board in In re Forney Industries, Inc. weighed in on the registrability...more

Fenwick & West LLP

Is ‘Zero’ Generic or Descriptive? Coca-Cola Loses Battle on Appeal to Federal Circuit

Fenwick & West LLP on

If you have ever had a Coke Zero, what do you understand ZERO to mean – “zero calories,” “zero sugar,” “zero carbohydrates” or some combination of each? If your friend who never had a Coke Zero asked you what the difference...more

Fenwick & West LLP

Intellectual Property Bulletin - Fall 2018

Fenwick & West LLP on

In This Issue - Gender Diversity in Patenting: Current Landscape and Recommendations - The gender gap in patenting is a current challenge that companies face. While this issue seems pervasive, companies and lawyers can...more

Akerman LLP - Marks, Works & Secrets

The Skinny on “Thins”

According to the Federal Circuit, the skinny on the term “Thins” is that it may be generic for thinly cut snack crackers. Real Foods Pty Ltd. V. Frito-Lay North America, Inc., (October 4, 2018 Fed. Cir.)....more

Akerman LLP - Marks, Works & Secrets

TTAB Guidance on Disclaimers and Acquired Distinctiveness: “Furniture Warehouse” Must Be Disclaimed, But “American” Need Not

In a precedential decision, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (“TTAB” or the “Board”) affirmed a refusal to register the logo...more

Ladas & Parry LLP

Cheerios Yellow Box Rejected For Trademark Registration

Ladas & Parry LLP on

In a precedential decision on August 22 2017, the Trademark Trial and Appeal Board (TTAB) in In re General Mills IP Holdings II, LLC (Serial 86757390) held that the applicant did not provide sufficient evidence to support the...more

McDermott Will & Emery

The Cheerios Challenge of Registering Color Marks

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The Trademark Trial and Appeal Board (TTAB) delivered a primer on demonstrating the acquired distinctiveness of product packaging or trade dress, including color marks, in refusing registration of a trademark application for...more

Dorsey & Whitney LLP

Booking it to the District Court

Dorsey & Whitney LLP on

A recent decision out of the federal district court for the Eastern District of Virginia overturned in part the Trademark Trial and Appeal Board’s decision that the mark “Booking.com” is not registrable on the basis that the...more

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