News & Analysis as of

Trademark Cancellation United States Patent and Trademark Office Trademark Trial and Appeal Board

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

Womble Bond Dickinson

It’s a Bird, It’s a Plane - It’s in the Public Domain! USPTO Cancels Marvel and DC Comics’ Trademarks for SUPER HERO and SUPER...

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The U.S. Patent and Trademark office has done what Thanos and Lex Luthor never could—defeat the larger than life combined forces of Marvel and DC. Despite being well-known rivals, DC (Batman, Superman, Wonder Woman and...more

Dorsey & Whitney LLP

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

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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

Knobbe Martens

Minority Owners of a Trademark Registrant, Who neither Use nor Possess Ownership Rights in the Mark, Cannot Seek Cancellation of...

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Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board. Summary: Parties that own minority shares in the trademark registrant, but do not separately use or possess an ownership right in...more

Foley Hoag LLP - Making Your Mark

Trailblazers, OutKasts, and Iconic Brands: The INTA Annual Meeting in Atlanta

The INTA Annual Meeting is here! As one of the largest gatherings of trademark professionals from around the world, the INTA Annual Meeting offers opportunities for networking, education, and collaboration. Against the...more

Erise IP

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

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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

Vondran Legal

Proper grounds to cancel another companies trademark

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In business, trademarks are everything. It's how consumers come to know, love and trust your brand. It's a valuable corporate asset, and many disputes can arise of name rights with the explosion of e-commerce and 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

Seyfarth Shaw LLP

Federal Circuit Overturns Fifty Years of TTAB Precedent

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The Federal Circuit recently released an eye-catching opinion in Great Concepts, LLC v. Chutter, Inc., — F. 4th –, Case No. 2022-1212, 2023 WL 6854647 (Fed. Cir. Oct. 18, 2023). The panel of three judges held, in a...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

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

MarkIt to Market® - October 2023

Thank you for reading the October 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss the Federal Circuit’s recent case considering the scope of the USPTO’s authority to cancel registrations...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

Smith Anderson

Not Playing Games: Trademark Dispute Between Gaming Equipment Rivals Reaches Federal Appeals Court

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Video gaming is an enormous industry, currently bigger than the movie and music industries combined, and only continues to grow. Two billion people—a quarter of the world’s population—play video games. Gaming generated $155...more

Ladas & Parry LLP

The Trademark Modernization Act: A Primer For Brand Owners

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On December 18, 2021, the final rule implementing the Trademark Modernization Act of 2020 (TMA) went into effect, resulting in one of the most significant amendments to the rules of practice in trademark cases in decades...more

Dickinson Wright

Trademark Modernization Act—What New and Upcoming Changes Could Mean for Your Trademarks

Dickinson Wright on

The Trademark Modernization Act (“TMA”) was signed into law on December 27, 2020. Among other things, the TMA created new procedures for challenging pending applications and registrations and updated several rules relating to...more

Fish & Richardson

The Basics of TTAB Cancellations

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TTAB Cancellation Actions: Terminating an Infringing Trademark Registration - You learn that another person or entity has a registered trademark at the United States Patent and Trademark Office (the “USPTO”) that is...more

Orrick, Herrington & Sutcliffe LLP

Ten Facts about the USPTO’s New Expungement and Reexamination Proceedings

As 2021 drew to a close, the United States Patent and Trademark Office (USPTO) introduced two new procedures pursuant to the Trademark Modernization Act of 2020 (the “Act”), providing new, streamlined avenues to seek...more

Orrick, Herrington & Sutcliffe LLP

New Proceedings under the Trademark Modernization Act of 2020: Expungement and Reexamination

As 2021 drew to a close, the United States Patent and Trademark Office (USPTO) introduced two new procedures pursuant to the Trademark Modernization Act of 2020 (the “Act”), providing new, streamlined avenues to seek...more

Chambliss, Bahner & Stophel, P.C.

New Tools for Canceling Trademarks

Have you ever come up with the perfect name for branding your goods or services, only to find out that someone else has already federally registered the trademark for similar goods or services? Unfortunately, it is happening...more

Sullivan & Worcester

The Trademark Modernization Act: New Procedures, New Deadlines and New Standards

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On December 18, 2021, the U.S. Patent and Trademark Office (USPTO) rules implementing the Trademark Modernization Act of 2020 (TMA) went into effect. The first major overhaul of the Lanham Act since 1998, the TMA introduced...more

Kilpatrick

Changes to Federal Trademark Law and Their Effective Dates Under the Trademark Modernization Act and its Implementing Regulations

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I. Introduction - On December 27, 2020, the Trademark Modernization Act of 2020 (“TMA”) became law after it passed Congress and was signed by the President as part of the year-end Consolidated Appropriations Act for 2021....more

Haug Partners LLP

Changes to USPTO Procedures from the Trademark Modernization Act of 2020

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On December 7, 2020, Congress enacted the Trademark Modernization Act of 2020 (the “TMA”). The United States Patent & Trademark Office (the “USPTO”) recently promulgated rules implementing the TMA, which, in large part, took...more

Jones Day

New Year, New Trademark Proceedings

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This year kicked off with new tools to help brand owners protect and enforce their marks. The use of a trademark in commerce is an important aspect of U.S. trademark law; however, an increasing number of trademark...more

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