News & Analysis as of

Trademark Trial and Appeal Board Trademark Litigation Likelihood of Confusion

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

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

Erise IP

What’s Trending in Trademarks, August 2024: What Constitutes an Abandoned Mark? How Famous is Cognac?

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: Fourth...more

McDermott Will & Emery

Unbranded Brandy: COGNAC Certification Mark Matters, Even in Hip-Hop

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The US Court of Appeals for the Federal Circuit vacated a ruling from the Trademark Trial & Appeal Board, disagreeing with the Board’s dismissal of Bureau National Interprofessionnel du Cognac’s opposition to a trademark...more

Erise IP

What’s Trending in Trademarks, July 2024: Suit Against Prime Hydration Puts Unique Olympic Trademark Law on Display; Are Two...

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: Suit...more

Ladas & Parry LLP

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

Ladas & Parry LLP on

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

Farella Braun + Martel LLP

Certification Marks and Fame

Trademark owners have the right to stop third parties from using marks that could cause a likelihood of consumer confusion. Third-party use of a trademark that is the same or similar to the owner's trademark for goods related...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

Erise IP

What’s Trending in Trademarks, March 2024: Chanel Reseller Found Liable for Trademark Infringement, False Advertising; Federal...

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: Chanel...more

McDermott Will & Emery

Trademark Trial & Appeal Board Gets a DuPont 101 Lesson

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Addressing errors in the Trademark Trial & Appeal Board’s likelihood of confusion analysis in a cancellation action, the US Court of Appeals for the Federal Circuit vacated and remanded, holding that the Board erred by...more

Erise IP

What’s Trending in Trademarks, February 2024: Fruity Pebbles Denied Color Mark, Captain Cannabis Cancellation, Trader Joe’s vs....

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: Fruity...more

McDermott Will & Emery

SHAZAM! CAPTAIN CANNABIS Registration Defeated by Prior Analogous Trademark Use

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Addressing the issue of analogous trademark use, the Trademark Trial & Appeal Board designated precedential a September 6, 2022, decision in which the Board cancelled a registration for CAPTAIN CANNABIS based on the...more

Fenwick & West LLP

Federal Circuit Turns the Burden on Trademark Owners to Prove Identical Third-Party Marks Are Not in Use

Fenwick & West LLP on

In Spireon, Inc. v. Flex Ltd., No. 2022-1578 (Fed. Cir. June 26, 2023), the Federal Circuit took a surprising turn in which it held that it is the trademark owner’s burden to prove that identical third-party marks put forth...more

McDermott Will & Emery

If at First You DuPont Succeed, Try a Different Factor

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The US Court of Appeals for the Federal Circuit remanded a Trademark Trial & Appeal Board decision, finding that the Board incorrectly analyzed several DuPont factors, improperly disregarded the DuPont factor regarding...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

No Spark Here: TTAB Refuses to Register Similar Mark for Real Estate Services

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit upheld the Trademark Trial & Appeal Board’s refusal to register a mark due to the “close similarity” between the applied-for mark and a previously registered mark. In Re:...more

McDermott Will & Emery

Actual or Potential Consumers in Related Goods Context Doesn’t Require PURE Overlap

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The US Court of Appeals for the Federal Circuit reminded us that, in the context of related goods, the likelihood of confusion analysis does not require that actual or potential consumers of the goods be the same, but only...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Tiger Lily Ventures Ltd. v. Barclays Capital Inc.,...

Barclays Capital Inc. filed oppositions with the Trademark Trial and Appeal Board (TTAB) against Tiger Lily Ventures Ltd.’s two applications for the standard character mark “LEHMAN BROTHERS” alleging that Tiger Lily’s marks...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

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

MarkIt to Market® - November 2022: Priority Pitfalls

The Trademark Trial and Appeal Board’s recently issued precedential decision dismissing an opposition alleging a likelihood of confusion between the registered mark SMOK and a pending application for the mark SMOKES and...more

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

MarkIt to Market® - November 2022

Thank you for reading the November 2022 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we address a precedential TTAB decision that presents interesting priority issues relating in particular to the...more

BakerHostetler

Chicago Cubs score home run in their opposition against a stylized version of the letter “C”

BakerHostetler on

In many countries, marks such as single letters or numerals are considered nondistinctive. This is not so in the US, which has a very broad definition of what comprises a trademark in 15 U.S.C. Section 1127...more

Proskauer - Minding Your Business

Kardashian’s ‘SKKN by Kim’ Brand Facing Legal Uncertainty

Kim Kardashian has been hit with a lawsuit by New York-based Beauty Concepts LLC over Kardashian’s recently launched skincare line, “SKKN by Kim.” Beauty Concepts filed a complaint in the Eastern District of New York against...more

McDermott Will & Emery

A Primer on Practice at the Trademark Trial & Appeal Board

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In a precedential decision rendered in an opposition proceeding, the Trademark Trial & Appeal Board (Board) took the lawyers for each side to task for ignoring Board rules in presentation of their case, but ultimately decided...more

McDermott Will & Emery

Drink Up, but Not with Lehman Brand

In the context of an opposition proceeding, the US Court of Appeals for the Federal Circuit upheld a Trademark Trial & Appeal Board (Board) refusal to register a trademark based on likelihood of confusion with a famous but...more

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