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Trademark Registration Trademark Trial and Appeal Board Trademark Act

Willcox & Savage

Trademark Board Finds No Sovereign Immunity to Opposition Proceeding

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The Trademark Trial and Appeal Board (“TTAB”) of the U.S. Patent and Trademark Office (“USPTO”) ruled that a state agency has no sovereign immunity to a trademark opposition proceeding. Mountain Gateway Order, Inc. v....more

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

MarkIt to Market® - March 2024: Piling Up Successes by Avoiding Descriptive Dangers

Joining a series of precedential decisions about descriptiveness, the Trademark Trial and Appeal Board recently affirmed a refusal to register Sheet Pile, LLC’s (“Applicant”) mark ZPILE on the Principal Register, on the...more

AEON Law

Patent Poetry: TTAB: No Bright-Line Rule against Trademarks for Characters

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The Trademark Trial and Appeal Board (TTAB) has reiterated that there is no “strict or bright-line rule against registration of characters.” The case is In re Joseph A. Stallard, 2023 USPQ2d 1009 (TTAB 2023)....more

AEON Law

Foreign Equivalents Doctrine May Not Apply to Trademarks that Combine English and Foreign Words

AEON Law on

The US Patent and Trademark Office’s (USPTO’S) Trademark Trial and Appeal Board has ruled that the “doctrine of foreign equivalents” is a guideline rather than an absolute rule and may not apply to trademarks that combine...more

McDermott Will & Emery

Hairy Situation: Trademark Act Doesn’t Provide Consumer Standing

The US Patent & Trademark Office Trademark Trial & Appeal Board found that a consumer did not have standing to oppose an application for registration because the consumer failed to establish a commercial interest and injury...more

AEON Law

Patent Poetry: Trademark Board Rules 100% for Lizzo

AEON Law on

“File:200126 Lizzo on the 2020 Grammys Red Carpet.png” by Cosmopolitan UK is licensed under CC BY 3.0. The Trademark Trial and Appeal Board (TTAB) has approved the trademark registration of“100% THAT BITCH” by the musical...more

Willcox & Savage

Application for Mark US SPACE FORCE Crashes at Trademark Board

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An application to register US SPACE FORCE as a trademark crashed at the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (PTO) when the TTAB ruled that the mark caused a false suggestion of a...more

Faegre Drinker Biddle & Reath LLP

College T-shirts and Trademarks – Ornamental, or Protectable?

As college freshmen head to campus for the start of classes, there is one vital campus bookstore purchase before classes begin: a T-shirt bearing the college’s logo. This purchase is not only a rite of passage for freshmen;...more

McDermott Will & Emery

If You Come for the Prince, You Best Not Miss

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In a precedential decision, the Trademark Trial & Appeal Board (Board) granted two opposers’ motions for partial judgment on their claim of false suggestion of a connection under Section 2(a) of the Trademark Act based on a...more

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

MarkIt to Market® - July 2022: How to Ensure Your Trade Dress Doesn't Go to Hell in a Handbasket

In a recent precedential1 opinion, the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board affirmed the refusal to register Jasmin Larian, LLC’s handbag design mark for “handbags” in Class 18, on the grounds...more

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

MarkIt to Market® - July 2022

Thank you for reading the July 2022 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss a recent precedential TTAB decision regarding product configuration marks. We also highlight recent...more

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

MarkIt to Market® - September 2021: Watching the Pot™

Future Intentions Not Enough to Pave the Road to Registration - “Reduces pain,” “alleviates anxiety,” “improves sleep” – these are just some of the claims of the miraculous CBD. The surfeit of new CBD brands and products...more

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

MarkIt to Market® - September 2021

The September 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses a recent non-precedential Trademark Trial and Appeal Board decision regarding intent-to-use applications covering CBD products currently...more

Weintraub Tobin

Podcast: The Briefing by the IP Law Blog - Prince Estate Wants Winery's 'Purple Rain' Trademark Back in the Bottle

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In this week’s episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a legal dispute between the Prince estate and an Ohio-based winery over the rights to the trademark “Purple Rain.”...more

Weintraub Tobin

The Briefing by the IP Law Blog: Prince Estate Wants Winery's 'Purple Rain' Trademark Back in the Bottle

Weintraub Tobin on

In this week’s episode of The Briefing by the IP Law Blog, Scott Hervey and Josh Escovedo discuss a legal dispute between the Prince estate and an Ohio-based winery over the rights to the trademark “Purple Rain.”...more

Knobbe Martens

Suede Timbs on My Feet Make [Nas’s] Cipher Complete, but Timberland’s Section 2(f) Evidence Was Slacking and Acquired...

Knobbe Martens on

The TTAB has affirmed a refusal to register the trade dress configuration mark (see below) of the popular Timberland boot, a wardrobe staple in hip-hop culture (see The World is Yours by Nas), stating the configuration failed...more

Dunlap Bennett & Ludwig PLLC

NCAA Calls a Hard Foul on VASECTOMY MADNESS Trademark Registration

National Collegiate Athletic Association v. Virginia Urology Center, P.C. - (TTAB Proceeding No.: 92076376) - The National Collegiate Athletic Association, better known as the NCAA, filed a petition before the...more

Fox Rothschild LLP

TTAB Cautions Applicants: Change Of Conditions Or Circumstances Is Necessary To Excuse Application Of Res Judicata

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On March 5, 2021, the U.S. Trademark Trial and Appeal Board (“TTAB”) issued a precedential decision affirming refusal of SolarWindow Technologies, Inc.’s application to register the word mark POWERCOATINGS. The decision is a...more

Chambliss, Bahner & Stophel, P.C.

Changes to Trademark Act Include New Procedure to Challenge Applications

On December 27, 2020, President Trump signed the bipartisan COVID-19 relief and government funding bill which includes the Trademark Modernization Act of 2020 (TMA). The TMA, which will become effective in one year,...more

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

MarkIt to Market® - September 2020

The September 2020 issue of Sterne Kessler's MarkIt to Market® newsletter discusses the state of the CBD industry, including a recent non-precedential TTAB decision regarding CBD-infused supplements, as well as the open gTLD...more

ArentFox Schiff

TTAB: Hemp Oil Extracts Marketed as Dietary Supplements Are Ineligible for Trademark Registration

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The United States Trademark Trial and Appeal Board (TTAB) recently affirmed a refusal to register a trademark for “hemp oil extracts” when used as an ingredient in dietary supplements, finding that the applicant could not...more

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

MarkIt to Market® - January 2020: That's Not My [Sur]name

In a non-precedential opinion issued this month, the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board affirmed the refusal to register Jos. A. Magnus & Co., LLC’s mark MAGNUS for “whiskey, gin, and...more

Dorsey & Whitney LLP

#TidalTuesday #UseInCommerce #RegistrationFail

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A recent decision by the Trademark Trial and Appeal Board in Tidal Music AS v. The Rose Digital Entertainment LLC (Opp. No. 91232127) confirms the importance of ensuring proper use of a service mark before filing an...more

Dorsey & Whitney LLP

Use in commerce for federal trademark registration: the Federal Circuit slowly moves towards the Supreme Court

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Is there any use of a trademark within the United States that is insufficient to support federal trademark registration? The federal trademark laws are based on the Commerce Clause of the United States Constitution, and...more

Foley Hoag LLP - Making Your Mark

10 Trademark Cases About Yo Mama

Anna Jarvis led the efforts to establish the first official celebration of Mother’s Day in 1908, during which she honored her own mother, Ann Maria Reeves Jarvis, a Civil War-era social activist. But about a dozen years after...more

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