News & Analysis as of

Trademark Infringement Trademark Cancellation Intellectual Property Protection

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

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

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

Sunstein LLP

COHIBA v. COHIBA: TTAB orders cancellation of the COHIBA registration after a decades long dispute over the well-known trademark

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In what may be the longest running trademark dispute in the United States, the U.S. Trademark Trial and Appeal Board (“TTAB”) in December 2022 ordered the cancellation of the COHIBA and COHIBA (stylized) registrations owned...more

Linda Liu & Partners

Copyright protection on trademark in trademark right affirmation cases (I)

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As the most important intangible asset in business activities, a trademark with a novel, aesthetic, easy-to-remember and catchy design is often a powerful tool for business to open the market, maintain competitiveness and...more

Hogan Lovells

German FCJ: Trademark owners bear the burden of proof for the public recognition of a trademark

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The German Federal Court of Justice recently published a decision (Case No. I ZB 16/20) clarifying that trademark owners bear the burden of proof for public recognition of a trademark within the affected trade circles in...more

Knobbe Martens

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

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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

Akerman LLP - Marks, Works & Secrets

The Third Circuit Limits Preclusive Effect of the TTAB Rulings

On September 17, 2021, the Third Circuit held in Beasley v. Howard that trademark cancellation proceedings before the Trademark Trial and Appeal Board (“TTAB”) do not have claim preclusive effect against trademark...more

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

MarkIt to Market® - August 2021: Persistence Pays Off – A Series of Monster Trademark Disputes

Monster Energy Co. (“Monster Energy”), frequent trademark plaintiff, recently found itself on the receiving end of a trademark infringement lawsuit brought by California company Outdoor Pro Shop, Inc. (“Pro Shop”). Pro Shop’s...more

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

MarkIt to Market® - August 2021

The August 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses Monster Energy's history of trademark disputes in the context of enhancing brand strength, tips for shortening the pendency of trademark filings...more

Weintraub Tobin

The Briefing by the IP Law Blog: SPIN Trademark Has Peloton Wrapped Around the Axel

Weintraub Tobin on

Scott Hervey and Josh Escovedo discuss the case where Peloton petitions to establish that SPIN and SPINNING are now generic terms against #MadDogg?'s trademark. Read the blog: http://bit.ly/2OmGtgv?. Listen to the podcast:...more

Haug Partners LLP

The Federal Circuit “OK”s a Questionable Path to Petitioning for Cancellation of a Trademark Registration

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In Australian Therapeutic Supplies Pty Ltd. v. Naked TM, LLC, the Federal Circuit recently denied a petition for rehearing en banc of a panel decision finding that a petitioner who contracted away its rights to unregistered...more

Akerman LLP - Marks, Works & Secrets

Lanham Act Preemption of State Law Where Cannabis Trademarks Are At Issue

As cannabis products become legal in more and more states, commercial interest grows in protecting the trademarks associated with those products.  The United States Patent and Trademark Office has maintained its refusal to...more

McDermott Will & Emery

Gorilla Wars: Infringement but No Intent

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The US Court of Appeals for the 11th Circuit affirmed a district court’s finding that the mark GORILLA GYM, used by defendant for indoor pull-up bars and accessories, infringed the mark GORILLA PLAYSETS, long used by the...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

Knobbe Martens

Seasick Trademarks Walking the Plank? Don’t Let Yeezy Make You Queasy

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Successful brands from the United States, and particularly those branded by U.S. celebrities, are often received with similar enthusiasm in other parts of the world. Recently, YEEZY shoes designed by Kanye West made their...more

Dorsey & Whitney LLP

China Supreme Court Has Spoken: Long Anticipated Decision on OEMs and Trademark Use

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China has been the factory of the world for the past few decades. Countless foreign brand owners have taken advantage of the low-cost manufacturing environment and have flocked to the middle kingdom to source their goods –...more

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