News & Analysis as of

Trademark Trial and Appeal Board

McDermott Will & Emery

Beach Buggy Battle: Stipulation Insufficient to Establish Trademark Distinctiveness

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The US Court of Appeals for the Fourth Circuit found that a district court does not need to accept both parties’ stipulation that a mark is distinctive but instead is permitted to make an evidentiary inquiry in determining...more

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

TTAB Upholds Reputation Outside of U.S. as Ground for Opposition

In the recent precedential decision Plumrose Holding Ltd. v. USA Ham LLC, Opposition No. 91272970 (January 17, 2025), the U.S. Trademark Trial and Appeal Board found that an Opposer had standing to challenge registration of a...more

Irwin IP LLP

Cognac Flexing Fame in Hip-hop

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Bureau Nat'l Interprofessionnel du Cognac v. Cologne & Cognac Ent., 110 F.4th 1356 (Fed. Cir. 2024) - In trademark disputes, the likelihood of confusion analysis—guided by the DuPont factors—is a balancing test with the...more

Sheppard Mullin Richter & Hampton LLP

Ceramtec GMBH v. Coorstek Biocermanics LLC

This case examines the application of trademark functionality doctrine in the medical device industry, specifically addressing whether the pink color of ceramic hip components can be protected as a trademark. The case...more

Miller Canfield

Tickled Pink No More: Federal Circuit Affirms Cancellation of CeramTec’s Trademarks for Pink Ceramic Hip Implants

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Color trademarks have traditionally been difficult to obtain. Of the over 4 million trademark registrations, there were less than 1000 color trademarks as of 2019. To be eligible for trademark registration, a color must have...more

Morris, Manning & Martin, LLP

Fee Increases for Trademark Applications and Maintenance Effective January 18, 2025

The U.S. Patent & Trademark Office (USPTO) has finalized new fees for trademark applications and renewals. These fee increases vary by type of submission, but these changes may impact strategic considerations for trademark...more

McDermott Will & Emery

Pink Is Not the New Black: See Functionality Doctrine

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The US Court of Appeals for the Federal Circuit affirmed a Trademark Trial & Appeal Board decision canceling trademarks for the color pink for ceramic hip components, stating that substantial evidence supported the Board’s...more

Irwin IP LLP

Hips Don’t Lie (About Their Allegedly Optimal Color). 

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CeramTec v. Coorstek Bioceramics, Case No. 2023-1502 (Fed. Cir. Jan. 3, 2025) - Colors are generally permitted as source identifiers for trademarks or trade dress because they are typically perceived as an ornamental...more

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

Beams of Light Fail to Strike a Chord with the Board

The Guitar Hotel in Hollywood, Florida is a hotel in the shape of the body of a guitar, with six lit-up “strings” running vertically up the surface of the building. At 7 pm daily, the hotel conducts a music and light show...more

Dorsey & Whitney LLP

A SUPER HERO-ic Trademark Takedown

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Last month, the creators of beloved characters like “Superman” and “Spider-Man” declined to come to their own rescue when their SUPER HERO and SUPER HEROES registrations were cancelled by a default judgment from the U.S....more

Ladas & Parry LLP

TTAB favours Airbnb in opposition against competitor TREEBNB mark

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In Airbnb Inc v Seth Bolt and Victoria Bolt, the Trademark Trial and Appeals Board (TTAB) ruled in favour of opposer Airbnb Inc., against applicants Seth and Victoria Bolt. The board’s decision was influenced by, among other...more

Kohrman Jackson & Krantz LLP

When Are Pending Trademark Applications Subject to Court Review?

Generally, third parties who believe they may be harmed by a trademark registration can challenge a USPTO trademark application through the Trademark Trial and Appeal Board. However, do third parties have another avenue in...more

Haug Partners LLP

TTAB Decision Highlights The Importance of Accurately Describing Goods and Services In Trademark Applications

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Recently, the Trademark Trial and Appeal Board (the “TTAB”) affirmed the decision to cancel Registration Nos. 5,376,467 and 5,376,466, for the marks SMARTLOCK and SMARTLOCK with design (the “Smartlock Marks”), in the name of...more

Dorsey & Whitney LLP

Central District Finds SnapChat’s Spectacles Mark is Not Generic for Smart Glasses

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In Snap, Inc. v. Vidal, the Central District of California found the Trademark Trial and Appeal Board (“TTAB”) was wrong in finding that SnapChat’s SPECTACLES mark is generic for smart glasses. The district court’s opinion...more

Weintraub Tobin

(Podcast) The Briefing: The Fall of SUPER HERO – When Trademarks Become Generic

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For more than half a century, Marvel Comics and DC Comics have jointly owned the trademark ‘Superhero.’ However, the Trademark Trial and Appeal Board recently granted a petition to cancel that mark because it became generic....more

Weintraub Tobin

The Briefing: The Fall of SUPER HERO – When Trademarks Become Generic

Weintraub Tobin on

For more than half a century, Marvel Comics and DC Comics have jointly owned the trademark ‘Superhero.’ However, the Trademark Trial and Appeal Board recently granted a petition to cancel that mark because it became generic....more

Willcox & Savage

Trump Too Small: The Lanham Act Names Clause

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To guide potential trademark owners and to foster strong protection for trademarks under U.S. law, the Lanham Act; 15 U.S.C. §1052, defines the types of trademarks and service which marks can be registered by whittling away...more

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

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

Baker Donelson

Baker's Trademark Developments of 2024

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2024 has been a busy year in all intellectual property. It has been especially busy in trademark law. Here are the top seven cases in trademark law to date....more

Seyfarth Shaw LLP

A Very Demure and Very Mindful Look at What Celebrities Can Teach Us About Trademarks

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What do a social media content creator and reality television stars have in common? Apart from more followers than I’ll ever have, significant issues regarding their trademarks. Jools Lebron, a content creator, was...more

Dorsey & Whitney LLP

Cognac Scores a Win for Certification Marks

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Cognac, which originates from a specific region of France and is named after the commune of Cognac, is far more popular outside its native country. Indeed, according to the industry group Bureau National Interprofessional du...more

WilmerHale

PTAB/USPTO Update - September 2024

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Last month, Director Kathi Vidal posted on her blog about global efforts to address climate change through sustainable innovation and about USPTO resources to support the military community....more

Seyfarth Shaw LLP

Reefer Madness – TTAB Dismisses Opposition Because Cannabis Company Lacked Bona Fide Intent To Use Its Mark

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As the prospect of federal rescheduling of cannabis looms, some in the industry are seemingly attempting to preserve their spot in line at the United States Patent and Trademark Office. A recent Trademark Trial and Appeal...more

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