News & Analysis as of

Trademark Registration Trademark Trial and Appeal Board Trademark Cancellation

Ladas & Parry LLP

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

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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

Knobbe Martens

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

Knobbe Martens on

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

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

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

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

McDermott Will & Emery

Here’s a Great Concept: Fraud After Registration Is Not a Basis for Cancellation

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In a split panel decision, the US Court of Appeals for the Federal Circuit overturned the Trademark Trial & Appeal Board and ruled that a fraudulent declaration under Section 15 of the Lanham Act is not a basis for...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

McDermott Will & Emery

Strike 1: Priority. Strike 2 :Likelihood of Confusion. Strike 3: You’re Out under Section 2(d).

McDermott Will & Emery on

The Trademark Trial & Appeal Board affirmed the rejection of three trademark applications, finding that the applied-for marks would cause confusion with a record-setting major league baseball player. Major League Baseball...more

Morrison & Foerster LLP - Left Coast Appeals

This Week At The Ninth: Justiciability of Trademark Disputes

This week, the Court addresses whether a validity challenge to a trademark remains justiciable after a judgment of non-infringement. The Court holds that the district court lacked Article III jurisdiction to determine...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

McDermott Will & Emery

Deleting Goods from Registration Subject to Cancellation During Audit May Result in Adverse Judgment

McDermott Will & Emery on

The Trademark Trial & Appeal Board (Board) addressed, for the first time, whether the deletion of goods and services as a result of a post-registration audit during a cancellation proceeding triggers Trademark Rule 2.134 and...more

Weintraub Tobin

NBA Star Luka Doncic Goes Hard in the Paint and Seeks to Cancel Mom’s Trademark

Weintraub Tobin on

An interesting trademark dispute has arisen between Dallas Mavericks phenom Luka Doncic and his mother over the trademark LUKA DONCIC 7, which is currently owned by Doncic’s mother. I can’t imagine this is the first time...more

McDermott Will & Emery

The Saddest Hour? Closing Time for Trademark Cancellation Petition

McDermott Will & Emery on

In a precedential decision, the Trademark Trial & Appeal Board (Board) denied a petition to cancel a trademark registration based on priority. The Board explained that the petitioner bears a higher burden of proof to show...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

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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

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

Kilpatrick on

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

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