Addressing for the first time the test for determining whether a color mark is generic, the US Court of Appeals for the Federal Circuit adopted the Trademark Trial & Appeal Board’s Milwaukee test as the appropriate standard,...more
5/8/2025
/ Acquired Distinctiveness ,
Appeals ,
CAFC ,
Color Marks ,
Generic Marks ,
Healthcare ,
Lanham Act ,
Patent Trial and Appeal Board ,
Trademark Application ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
Addressing this case for the third time, the US District Court for the District of Arizona found on remand that Jack Daniel’s was entitled to a permanent injunction after finding that VIP Products’ “Bad Spaniels” dog toy...more
2/7/2025
/ Dilution ,
First Amendment ,
Injunctions ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Jack Daniels Properties Inc v VIP Products LLC ,
Lanham Act ,
Likelihood of Confusion ,
Parody ,
SCOTUS ,
Tarnishment ,
Trade Dress ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks
Addressing the issue of trademark infringement based on the purchase of search advertising keywords, the US Court of Appeals for the Second Circuit joined the consensus view and upheld a district court decision finding that...more
Addressing the subpoena power of district courts to compel evidence for use in US Patent & Trademark Office (PTO) proceedings, the US Court of Appeals for the Fourth Circuit upheld a district court’s decision (albeit on...more
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
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
Addressing a refusal to register for failure to function as a trademark, the Trademark Trial & Appeal Board (Board) reversed, finding that the evidence of consumer perception of “100% THAT BITCH” did not demonstrate that the...more
Three interesting intellectual property cases are on the Supreme Court of the United States’ docket in 2023. The Supreme Court’s opinions in these cases could have significant implications for trademark and copyright disputes...more
2/17/2023
/ Copyright ,
Corporate Counsel ,
First Amendment ,
Intellectual Property Protection ,
Lanham Act ,
Parody ,
Petition for Writ of Certiorari ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks
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
The Supreme Court of the United States has agreed to consider the scope of protection afforded by the First Amendment to commercial parody products that feature the unauthorized use of another party’s trademark(s). Jack...more
The US Patent & Trademark Office (PTO) recently issued Examination Guide 1-22, Clarification of Examination Evidentiary Standard for Marks Refused as Generic (Guide 1-22), which amends the PTO’s stance on the appropriate...more
Addressing laches and progressive encroachment, the US Court of Appeals for the Eighth Circuit reversed and remanded a district court’s grant of summary judgment based on laches because the district court failed to “conduct a...more
Addressing a dispute between a bridal designer and her former employer regarding the use of the designer’s name and control of various social media accounts, the US Court of Appeals for the Second Circuit affirmed the...more
The US Patent and Trademark Office (PTO) recently published its final rules implementing provisions of the Trademark Modernization Act of 2020 (TMA). Most changes are effective as of December 18, 2021, but certain changes...more
12/2/2021
/ Corporate Counsel ,
Ex Parte ,
Ex Partes Reexamination ,
Expungement ,
Final Rules ,
Trademark Litigation ,
Trademark Modernization Act (TMA) ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
Addressing for the first time whether the Supreme Court of the United States’ recent decision in United States v. Arthrex, Inc. also applied to the Trademark Trial and Appeal Board (TTAB), the US Court of Appeals for the...more
9/16/2021
/ Appeals ,
Appointments Clause ,
Corporate Counsel ,
False Association ,
Lanham Act ,
SCOTUS ,
Trademark Cancellation ,
Trademark Litigation ,
Trademark Modernization Act (TMA) ,
Trademark Trial and Appeal Board ,
Trademarks ,
United States v Arthrex Inc
Addressing the assessment and application of the DuPont likelihood of confusion factors, the US Court of Appeals for the Federal Circuit upheld the Trademark Trial and Appeal Board’s finding of no likelihood of confusion...more
Addressing a dispute over ownership of a service mark between a departing member of a group and the remaining group members, the US Court of Appeals for the Federal Circuit upheld the Trademark Trial and Appeal Board’s...more
Addressing the validity of, and likelihood of confusion between, two data-driven analytic software companies’ “Collective”-formative trademarks, the US Court of Appeals for the Second Circuit disagreed with the district...more