News & Analysis as of

Trademark Cancellation Appeals Trademark Litigation

Linda Liu & Partners

A Preliminary Analysis of the Strategies That Can Be Adopted in Trademark Refusal Appeal Cases Where Trademarks Are Identical or...

Linda Liu & Partners on

China, which has enjoyed the reputation of being the “World’s Factory” and an “Important World Market” for many years, has also topped the global list in trademark applications for 20 consecutive years. Due to China National...more

McDermott Will & Emery

Trademark Trial & Appeal Board Gets a DuPont 101 Lesson

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Addressing errors in the Trademark Trial & Appeal Board’s likelihood of confusion analysis in a cancellation action, the US Court of Appeals for the Federal Circuit vacated and remanded, holding that the Board erred by...more

McDermott Will & Emery

SHAZAM! CAPTAIN CANNABIS Registration Defeated by Prior Analogous Trademark Use

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Addressing the issue of analogous trademark use, the Trademark Trial & Appeal Board designated precedential a September 6, 2022, decision in which the Board cancelled a registration for CAPTAIN CANNABIS based on the...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit’s Determination on Whether Fraudulent Conduct in Obtaining Incontestable Status Warrants the Mark’s Cancellation

In Great Concepts, LLC, v. Chutter, Inc., the Federal Circuit decided on whether the Trademark Trial and Appeal Board can cancel a trademark based on the inclusion of false statements in a declaration to obtain an...more

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

MarkIt to Market® - October 2023: A Limit to Cancel Culture? Federal Circuit Finds Fraud in Connection with Section 15 Declaration...

In 2021, the Trademark Trial and Appeal Board cancelled Great Concepts, LLC’s trademark registration for the mark DANTANNA’S for restaurant services under Section 14, after finding that counsel for the Registrant committed...more

Bradley Arant Boult Cummings LLP

Cancellation of a Registered Mark Based on Fraud in Section 15 Affidavit Not Allowed

On Wednesday, a divided panel of the Federal Circuit issued a precedential decision reversing the USPTO’s cancellation of a registered trademark (Great Concepts, LLC v. Chutter, Inc., No. 2022-1212). As detailed in the...more

McDermott Will & Emery

Standing Challenge Brews Trouble in Trademark Dispute

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Addressing for the first time Article III standing in a trademark case, the US Court of Appeals for the Federal Circuit held that hypothetical future injury is insufficient to establish standing to oppose a trademark...more

Saiber LLC

Defendant Sings the Blues as Third Circuit Decides Claim Preclusion Based on Prior TTAB Decision Does Not Apply in Matter of First...

Saiber LLC on

In a recent precedential opinion, Beasley v. Howard, ___ F.4th ___ (3d Cir. 2021) (publication pending), the United States Court of Appeals for the Third Circuit determined, in an issue of first impression, that trademark...more

McDermott Will & Emery

TTAB Cancellation Proceedings Not Preclusive in District Court, Even Between Same Parties

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Addressing the preclusive effect of judgments by tribunals with limited jurisdiction, the US Court of Appeals for the Third Circuit held that trademark cancellation proceedings before the Trademark Trial & Appeal Board (TTAB)...more

McDermott Will & Emery

TTAB Judicial Appointments are Determined Constitutionally Sound

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Addressing for the first time whether the Supreme Court of the United States’ recent decision in United States v. Arthrex, Inc. also applied to the Trademark Trial and Appeal Board (TTAB), the US Court of Appeals for the...more

Hogan Lovells

EUIPO: Repeat trademark applications for the same classes can equate to bad faith

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In July, the Second Board of Appeal of EUIPO declared the MONOPOLY trade mark invalid to the extent that the underlying application covered goods and services for which the trade mark was already registered. Such filings...more

Hogan Lovells

CJEU: Sweet victory for well-known trademark against registered design

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In its judgment C-693/17 earlier this year, the CJEU confirmed a decision of the GC in design invalidity proceedings, in which the proprietor of a trademark protecting the image of product packaging successfully took action...more

Bennett Jones LLP

AT&T's GO PHONE Trademark Registration Saved by Roaming Services Offered in Canada

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A recent decision involving an AT&T trademark demonstrates how the global reach of technology businesses can sometimes result in a blurring of markets and make documentation of trademark use in Canada difficult to retrieve...more

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