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Trademark Litigation Generic Marks

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

McDermott Will & Emery

It’s an Old Tune: Third-Party-Use Evidence From Long Ago Can Support Genericness

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The US Court of Appeals for the Fifth Circuit found that the district court abused its discretion in wholesale exclusion of evidence on the issue of genericness. The evidence was offered to show prior use of a trade dress...more

Erise IP

What’s Trending in Trademarks, April 2024: Chile/Chili Crunch, Jelly Roll, and Seltzer Sales

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: David...more

Linda Liu & Partners

Legal Analysis of Trademark Infringement Risk of Product Models

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In recent years, the forms of trademark infringement have become more and more diverse. The Trademark Law, the Regulations for the Implementation of the Trademark Law and judicial interpretations have clearly stipulated that...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

Smith Anderson

The Fourth Circuit Court of Appeals Enters the Cheese Wars: Determining Genericness for Trademark Registration

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Recently, the United States Court of Appeals for the Fourth Circuit considered whether “gruyere” cheese can be registered as a trademark in the United States, or whether it is merely a generic term that is not entitled to...more

Fish & Richardson

TTAB Rules Consumer Perception Remains the Critical Inquiry for Generic.gTLD Marks

Fish & Richardson on

In June 2020, the U.S. Supreme Court rejected a rule that the combination of a generic term and a generic top-level domain (“gTLD”) is per se generic. See USPTO v. Booking.com B.V., 140 S. Ct. 2298 (2020) (“Booking.com”). In...more

Tarter Krinsky & Drogin LLP

Don’t Be Descriptive, Be Creative!

There once was a company named Zotz, Which created toys for tots, Let’s use “Robotoy,” Zotz declares, File at once, Lawyer Zares, Months later, Zotz is dejected, Too descriptive, trademark rejected. First published in...more

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

MarkIt to Market® - July 2023: How to Lose a Mark in 3 Ways – Part 2: Genericide

One of the signs of a healthy trademark is a certain level of distinctiveness. Distinctiveness is related to consumers’ love and recognition of a mark as an indicator of a product’s source, such that consumers trust the mark...more

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

MarkIt to Market® - July 2023

Thank you for reading the July 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we continue our three-part series that closely examines ways to lose trademark rights with a discussion of genericide. We...more

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

MarkIt to Market® - May 2023: TACO TUESDAY – Generic Term, Failure to Function, or BOTH

Taco Bell’s recent efforts to liberate the phrase “Taco Tuesday” presents an opportunity to review the distinctions between marks that are generic and those that fail to function as a trademark....more

Ladas & Parry LLP

Fourth Circuit Confirms That ‘Gruyere’ is Generic for Cheese

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The appellants, Interprofession du Gruyère and Syndicat Interprofessionnel du Gruyère, are two consortiums, Swiss and French, that regulate use of the term ‘gruyere’ to refer only to cheeses produced in the Gruyère district...more

Dorsey & Whitney LLP

Gruyere: Delicious Cheese But Generic Term

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When you hear the word “gruyere,” what comes to mind? A bucolic region in the mountains of Switzerland? Perhaps the Gruyère region of neighboring France? Or, more likely, you think of a type of cheese....more

McDermott Will & Emery

PTO Lowers the Bar for Genericness Refusals

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The US Patent & Trademark Office (PTO) recently issued Examination Guide 1-22, Clarification of Examination Evidentiary Standard for Marks Refused as Generic (Guide 1-22), which amends the PTO’s stance on the appropriate...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Affirms Refusal to Register Generic Top-Level Domain Trademarks

On February 2, in In re: Vox Populi Registry Ltd., the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB) refusal to register a standard character mark and a stylized mark, both related to the “.sucks”...more

International Lawyers Network

A David And Goliath Style UGG Boot Dispute

Just over five years after the California-based retail giant Deckers Outdoor Corp. (Deckers) filed a lawsuit against Sydney-based footwear company, Australian Leather Pty Ltd (Australian Leather) for trademark infringement,...more

McDermott Will & Emery

Texas Hammer Nails Trademark Infringement Appeal

The US Court of Appeals for the Fifth Circuit reversed a district court’s dismissal of an initial confusion trademark complaint, finding that the plaintiff alleged a plausible claim of trademark infringement under the Lanham...more

Dorsey & Whitney LLP

UGG, Is it Finally Over?

Dorsey & Whitney LLP on

A long-running battle between Deckers Outdoor Corp., the makers of UGG boots, and Australian Leather PTY Ltd. may finally be over after a May 7 ruling by the United States Court of Appeals for the Federal Circuit. The battle...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

Dorsey & Whitney LLP

Shifting Gears: A Quick Tour of Genericide

Dorsey & Whitney LLP on

Have you ever been to an indoor cycling class? If so, you most likely have heard the term “spin class,” or referred to the act itself as “spinning.” Mad Dogg Athletics, Inc. would take offense, however, calling such uses...more

Dorsey & Whitney LLP

Derby Pie Eats Humble Pie

Dorsey & Whitney LLP on

Rupp v. Courier-Journal, Inc. involves a dispute between the makers of DERBY-PIE®—a trademarked chocolate-nut pie—and a local newspaper that published two articles about other businesses creating other chocolate-nut desserts....more

Jones Day

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

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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

McAfee & Taft

What this year’s Supreme Court opinions mean for you

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2020 was a tumultuous year. And while you were busy shifting to online meetings, implementing new measures to keep employees and customers safe, and otherwise adapting to the challenges created by the coronavirus, the U.S....more

Knobbe Martens

Second Chances From the Second Circuit: Tiffany’s $21m Judgment Is Overturned and Remanded Back to the SDNY

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The U.S. Court of Appeals in the Second Circuit found in favor of Costco in the latest chapter of an over seven-year legal battle between Tiffany and Co. (“Tiffany’s”) and Costco Wholesale Corporation (“Costco”). A three...more

Troutman Pepper

Diamonds are Forever, but Tiffany’s $21M Trademark Win is Not

Troutman Pepper on

A federal appeals court issued its opinion on August 17th in Tiffany & Co. v. Costco Wholesale Corp., vacating a $21 million judgment against Costco Wholesale Corp. Costco had marketed unbranded diamond engagement rings...more

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