News & Analysis as of

Trademark Cancellation Trademark Registration Trademarks

Farella Braun + Martel LLP

In Limited Cases, Foreign Trademarks Can Affect U.S. Registration Rights

It is a basic tenet of trademark law that rights are jurisdictional. Trademark owners only have rights in the mark in the jurisdictions in which they have registered (or, in some cases, used) the mark....more

Knobbe Martens

Zoned Out: The Zone of Natural Expansion Doctrine Can Only Be Used Defensively

Knobbe Martens on

DOLLAR FINANCIAL GROUP, INC. v. BRITTEX FINANCIAL, INC. [OPINION] - Before Prost, Taranto, and Hughes.  Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board. The zone of natural...more

McDermott Will & Emery

Zone of Natural Expansion Is a Shield, Not a Sword

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The US Court of Appeals for the Federal Circuit upheld a Trademark Trial & Appeal Board decision to partially cancel trademarks, ruling that an opposition challenger could not use the zone of natural expansion doctrine to...more

International Lawyers Network

Can U.S. Trademark Registrations Be Cancelled for Genericness?

Suppose that you have obtained a U.S. trademark registration for your trademark on goods or services for your business. Can your trademark registration be cancelled with the U.S. Patent and Trademark Office based on...more

Smart & Biggar

Upcoming changes to Canada’s trademarks regime: what brand owners and their counsel need to know

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On April 1, 2025, long-awaited amendments to Canada’s Trademarks Act and Trademarks Regulations will come into force. The purpose of the amendments is to discourage abuse of Canada’s trademarks regime and to improve the...more

International Lawyers Network

Katy v Katie: The Importance of Reputation and Early Brand Protection

Pop star Katy Perry has successfully appealed a Federal Court ruling over the use of an Australian designer’s trade mark registration for the words KATIE PERRY. The recent decision by the Full Court of the Federal Court...more

McDermott Will & Emery

Rules Are Rules, Especially in Trademark Proceedings

The Commissioner for Trademarks recently issued a precedential decision terminating a reexamination proceeding for the registrant’s failure to respond within a statutory time period, where there was insufficient justification...more

Seyfarth Shaw LLP

THREE PEAT: Why Pat Riley’s Trademark Portfolio Makes Him a Chiefs Fan for the Super Bowl

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As the Kansas City Chiefs prepare to face the Philadelphia Eagles in Super Bowl LIX, they aren’t just battling for another championship—they’re chasing history. A win would cement their place in the record books as the first...more

Blake, Cassels & Graydon LLP

Prove It or Lose It: Trademark Registrar Initiates Proof-of-Use Proceedings

The Registrar of Trademarks (Registrar) can now request that owners of trademarks registered with the Canadian Intellectual Property Office (CIPO) submit proof of use of certain trademarks or face expungement of those marks...more

Dorsey & Whitney LLP

Canada: Updates on Language Requirements for Trademarks in Quebec and Cancellation Pilot Project for Trademark Registrations

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Our friendly neighbors in the Great White North are implementing important changes in 2025 with respect to language requirements for trademarks and a new pilot project initiated by the Canadian Intellectual Property Office...more

Amundsen Davis LLC

Expect More Audits of Trademark Registrations From the United States Patent and Trademark Office

Amundsen Davis LLC on

The expected uptick in the issuance of United State Patent and Trademark Office (USPTO) audits means practitioners and trademark owners alike will need to be more diligent in identifying goods or services in trademark...more

Dorsey & Whitney LLP

A SUPER HERO-ic Trademark Takedown

Dorsey & Whitney LLP on

Last month, the creators of beloved characters like “Superman” and “Spider-Man” declined to come to their own rescue when their SUPER HERO and SUPER HEROES registrations were cancelled by a default judgment from the U.S....more

Weintraub Tobin

(Podcast) The Briefing: The Fall of SUPER HERO – When Trademarks Become Generic

Weintraub Tobin on

For more than half a century, Marvel Comics and DC Comics have jointly owned the trademark ‘Superhero.’ However, the Trademark Trial and Appeal Board recently granted a petition to cancel that mark because it became generic....more

Weintraub Tobin

The Briefing: The Fall of SUPER HERO – When Trademarks Become Generic

Weintraub Tobin on

For more than half a century, Marvel Comics and DC Comics have jointly owned the trademark ‘Superhero.’ However, the Trademark Trial and Appeal Board recently granted a petition to cancel that mark because it became generic....more

Seyfarth Shaw LLP

Marvel and DC Lose “Super Hero” Trademark Registration

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The U.S. Patent and Trademark Office (USPTO) has canceled long-standing trademark registrations for “Super Hero” and “Super Heroes,” which had been previously jointly owned by Marvel and DC Comics....more

Coblentz Patch Duffy & Bass

Trademark Trickery: Scams Are Surging—What Trademark Owners Should Watch Out For

Trademark scams are on the rise and include increasingly varied communications attempting to trick trademark applicants and registrants into paying fees. If you receive any communications regarding your trademarks from anyone...more

Pillsbury - Propel

Trademark Fundamentals: Opposition and Cancellation Proceedings

Pillsbury - Propel on

For startup founders, navigating the complexities of trademark law is essential for protecting your brand. An important aspect of this process involves understanding opposition and cancellation proceedings. These are formal...more

Ladas & Parry LLP

VEUVE CLICQUOT v. VEUVE OLIVIER: TTAB Favours Petitioner as Respondent Defaults in Cancellation Action

Ladas & Parry LLP on

In MHCS v Les Grands Chais De France (Cancellation No 92075021, 8 March 2024), the Trademark Trial and Appeal Board (TTAB) has granted a petition for cancellation brought by viticulture giant MHCS against a mark owned by the...more

Dorsey & Whitney LLP

The Ninth Circuit Addresses Judicial Power over Trademark Applications and the Lawful Use of Trademarks on Cannabis (I Mean,...

Dorsey & Whitney LLP on

The Ninth Circuit issued two opinions in BBK Tobacco & Foods LLP v. Central Coast Agriculture, Inc. finding judicial power over pending trademark applications and an exception shielding trademark registrations for marks used...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

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

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): Great Concepts, LLC v. Chutter, Inc., 84 F.4th 1014...

In Great Concepts, the court addressed whether Section 14 of the Lanham Act, which permits cancellation of a mark’s registration if “its registration was obtained fraudulently,” permits cancellation due to the owner’s filing...more

Bradley Arant Boult Cummings LLP

Still No Cancellation Based on Fraud, But What Next Steps Might the TTAB Take?

The Federal Circuit just “re-issued” its precedential decision in Great Concepts, LLC v. Chutter, Inc. (No. 2022-1212), where it had previously reversed the USPTO’s cancellation of a registered trademark. There was no...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

Dorsey & Whitney LLP

Taco Bell Scores a Win Over TACO TUESDAY™

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When Taco Bell announced its intention to eliminate all exclusive trademark rights in the phrase TACO TUESDAY, it invoked the Declaration of Independence, claiming that any restriction on the right to use it “violates 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

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