News & Analysis as of

Trademark Trial and Appeal Board Standing Trademark Cancellation

McDermott Will & Emery

Sour Grapes: Winery Minority Ownership Insufficient for Statutory Standing at Trademark Board

The US Court of Appeals for the Federal Circuit affirmed the dismissal of a petition seeking to cancel the registered marks of two wineries, finding the petitioner (a trust owning an interest in a competitor winery) lacked...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

McDermott Will & Emery

Standing Challenge Brews Trouble in Trademark Dispute

McDermott Will & Emery on

Addressing for the first time Article III standing in a trademark case, the US Court of Appeals for the Federal Circuit held that hypothetical future injury is insufficient to establish standing to oppose a trademark...more

Knobbe Martens

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

Knobbe Martens on

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

Haug Partners LLP

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

Haug Partners LLP on

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

McDermott Will & Emery

Trademark Cancellation Is Appropriate Sanction for Misconduct

McDermott Will & Emery on

In upholding a grocery store chain’s standing to petition for cancellation of a US trademark registration, the US Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB’s) express...more

Knobbe Martens

Lexmark Framework to Determine Eligibility to Bring Statutory Causes of Actions Applies to Trademark Cancellation Proceedings

Knobbe Martens on

CORCAMORE, LLC v. SFM, LLC - Before Reyna, Chen, and Hughes. On appeal from the Trademark Trial and Appeal Board. Summary: Whether a party has satisfied the requirements to bring a petition for trademark cancellation...more

McDermott Will & Emery

The Naked Truth About Trademark Cancellation: Only Harm, No Proprietary Interest Required

The US Court of Appeals for the Federal Circuit determined that a contracting party that contractually abandoned any proprietary interest in a mark may still bring a cancellation action if it can “demonstrate a real interest...more

Knobbe Martens

Proprietary Rights in a Mark Not Required for Standing at the TTAB

Knobbe Martens on

AUSTRALIAN THERAPEUTIC v. NAKED TM, LLC - Before O’Malley, Reyna, and Wallach. Appeal from the Trademark Trial and Appeal Board - Summary: Standing to Challenge A Registered Mark at the TTAB Does Not Depend on the...more

Dorsey & Whitney LLP

The TTAB Issued a TKO to a Licensee’s Claim of Priority

Dorsey & Whitney LLP on

When two boxing companies sparred before the TTAB, the gloves came off—and that wasn’t only because the dispute concerned a trademark registration for boxing gloves. In Moreno v. Pro Boxing Supplies, Inc., the petitioner,...more

Knobbe Martens

No Love for ♥ DC

Knobbe Martens on

In a case before the Trademark Trial and Appeal Board (“Board”), the Board cancelled and abandoned the trademark registration and trademark application for the I "Heart" DC marks owned by an individual, Jonathan A. Chien...more

Pierce Atwood LLP

What You Need to Know About U.S. Law: Trademark Opposition and Cancellation Primer

Pierce Atwood LLP on

Similar to the laws of the EU and its member states, as well as other countries around the world, U.S. trademark law provides a mechanism through which parties with standing can oppose pending third-party applications or seek...more

WilmerHale

Belmora v. Bayer: Does the Lanham Act Protect An Owner of a Well-Known Foreign Mark From Intentional Misuse of the Mark in the...

WilmerHale on

In Belmora LLC v. Bayer Consumer Care AG,1 the U.S. Court of Appeals for the Fourth Circuit is faced with novel issues about the reach of the Lanham Act. The case arose from Bayer’s filing of a petition to cancel Belmora’s...more

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