The Trademark Trial and Appeal Board (the “Board”) recently held that AT&T Mobility, LLC (“AT&T”) had sufficient interest in its almost completely moribund CINGULAR name to oppose two pending trademark applications filed by...more
3/3/2020
/ Abandonment ,
Article III ,
AT&T ,
Intellectual Property Protection ,
Lanham Act ,
Standing ,
Subsidiaries ,
Trademark Application ,
Trademark Infringement ,
Trademark Trial and Appeal Board ,
Trademarks ,
Wireless Industry ,
Wireless Technology
The American Bar Association (“ABA”) filed an amicus brief with the Supreme Court in support of the petitioner in Romag Fasteners, Inc. v. Fossil, Inc., No. 18-1233....more
12/5/2019
/ American Bar Association (ABA) ,
Amicus Briefs ,
Intellectual Property Owners Association ,
Intellectual Property Protection ,
International Trademark Protection ,
Lanham Act ,
Ownership Rules ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Petition for Writ of Certiorari ,
Profits ,
Public Policy ,
SCOTUS ,
Statutory Interpretation ,
Statutory Violations ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Willful Infringement
In a recent decision on remand from the Federal Circuit, the Trademark Trial and Appeal Board (“Board”) rejected Petitioner adidas AG’s (“adidas”) claim that Respondent Christian Faith Fellowship Church (“CFFC”) abandoned its...more
12/2/2019
/ Abandonment ,
Adidas ,
Commerce Clause ,
Fashion Branding ,
Fashion Design ,
Fashion Industry ,
Intellectual Property Protection ,
Intent to Cancel ,
Inter Partes Review (IPR) Proceeding ,
Interstate Commerce ,
Lanham Act ,
Remand ,
Retail Market ,
Trademark Application ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
Unitary Trademark ,
Use in Commerce ,
USPTO
In June 2019, the United States Supreme Court granted certiorari in Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233. As set forth in our previous blog post, Romag Fasteners Inc. (“Romag”) seeks to have the Court...more
11/22/2019
/ Certiorari ,
Intellectual Property Protection ,
Lanham Act ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Profits ,
Romag Fasteners v Fossil ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Willful Infringement
In June 2019, the United States Supreme Court granted certiorari in Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., No. 18-1086. As set forth in our prior blog posts, Lucky Brand Dungarees Inc. and related...more
10/29/2019
/ Appeals ,
Certiorari ,
Defense Strategies ,
Fashion Industry ,
Federal Rules of Civil Procedure ,
Inherently Distinctive ,
Intellectual Property Protection ,
Issue Preclusion ,
Release Agreements ,
Res Judicata ,
Reversal ,
SCOTUS ,
Settlement Agreements ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks
The Federal Circuit upheld a Trademark Trial and Appeal Board (“Board”) decision refusing registration of an athletic apparel company’s trademark, holding that the trademark applicant waived its key arguments by not raising...more
9/9/2019
/ Appeals ,
Brand ,
Fashion Branding ,
Fashion Design ,
Intellectual Property Protection ,
Likelihood of Confusion ,
Motion for Reconsideration ,
Oral Argument ,
Sports Apparel ,
Trademark Application ,
Trademark Litigation ,
Trademark Trial and Appeal Board ,
Trademarks ,
Waiver of Rights
In a recent decision concerning the scope of protection for collective membership marks, the Trademark Trial and Appeal Board sustained The Pierce-Arrow Society’s opposition to registration of PIERCE-ARROW for “automobiles”...more
9/5/2019
/ Automotive Industry ,
Brand ,
Collective Marks ,
Corporate Branding ,
Intellectual Property Protection ,
Lanham Act ,
Likelihood of Confusion ,
Luxury Goods ,
Membership Interest ,
Motor Vehicles ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks
The Trademark Trial and Appeal Board recently affirmed the refusal to register a trademark application for BIG SIX for wine on the ground that the term is generic or descriptive of wines. In re Plata Wine Partners, LLC,...more
In Silvertop Associates, Inc. v. Kangaroo Manufacturing, Inc., the Third Circuit applied the two-part test set forth in the Supreme Court’s decision in Star Athletica, L.L.C. v. Varsity Brands, Inc., and held that a full-body...more
In a case affecting the fast-growing legal cannabis industry, the Trademark Trial and Appeal Board (“TTAB” or “Board”) affirmed the United States Patent and Trademark Office’s (“USPTO”) refusal to register two trademarks for...more
7/26/2019
/ Cannabidiol (CBD) oil ,
Cannabis Products ,
Controlled Substances ,
Controlled Substances Act ,
Corporate Counsel ,
Decriminalization of Marijuana ,
Farm Bill ,
Hemp ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Marijuana ,
Marijuana Related Businesses ,
Trademark Application ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO ,
Vaping
The Federal Circuit recently sustained the Trademark Trial and Appeal Board’s (“TTAB” or the “Board”) refusal to register Louis Vuitton Malletier’s (“LVM”) trademark APOGÉE for perfumes, a decision that will concern...more
7/17/2019
/ Cosmetics ,
Fashion Branding ,
Intellectual Property Protection ,
Likelihood of Confusion ,
Louis Vuitton ,
Personal Care Products ,
Retail Market ,
Trademark Application ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
On Friday, June 28, 2019, the U.S. Supreme Court agreed to decide the circumstances necessary to support an award of a trademark infringer’s profits under section 35 of the Lanham Act, 15 U.S.C. § 1117(a). Romag Fasteners...more
The United States Patent and Trademark Office recently issued a new Examination Guide relating to trademarks for cannabis and cannabis-related goods and services....more
5/10/2019
/ Cannabidiol (CBD) oil ,
Cannabis Products ,
Decriminalization of Marijuana ,
Examination Manual ,
Hemp ,
Intellectual Property Protection ,
Marijuana ,
Marijuana Related Businesses ,
Trademark Application ,
Trademarks ,
USPTO
Rapunzel potentially was released from the trademark monopoly tower, not by her hair, but by trademark opposer and law professor Rebecca Curtin....more
According to the Federal Circuit, the skinny on the term “Thins” is that it may be generic for thinly cut snack crackers. Real Foods Pty Ltd. V. Frito-Lay North America, Inc., (October 4, 2018 Fed. Cir.)....more
10/16/2018
/ Acquired Distinctiveness ,
Appeals ,
Descriptive Trademarks ,
Food Manufacturers ,
Frito-Lay ,
Intellectual Property Protection ,
Trademark Application ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks
The New Jersey Turnpike Authority (“NJTA”) was forced to pay a big toll when the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”), dismissed its opposition to a pizza restaurant’s...more
5/30/2018
/ Intellectual Property Protection ,
Likelihood of Confusion ,
Logos ,
Restaurant Industry ,
Trademark Application ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
Transportation Industry
In a precedential decision, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (“TTAB” or the “Board”) affirmed a refusal to register the logo...more
In Klipsch v. ePRO, the Second Circuit affirmed discovery sanctions commensurate with the costs incurred by the moving party in addressing the sanctionable conduct ($2.68 million), as well as security for the sanctions,...more
2/12/2018
/ Counterfeit Goods Regulation ,
Discovery ,
Electronically Stored Information ,
Evidence ,
Injunctive Relief ,
Intellectual Property Protection ,
Legal Costs ,
Sanctions ,
Technology ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks
The Court of Appeals for the Federal Circuit recently extended First Amendment protections for trademark applications in In re Brunetti, No. 15-1109 (Fed. Cir. December 15, 2017), ruling that Section 2(a) of the Lanham Act’s...more
12/28/2017
/ Appeals ,
Constitutional Challenges ,
Disparagement ,
Fashion Design ,
Fashion Industry ,
First Amendment ,
Free Speech ,
Intellectual Property Protection ,
Lanham Act ,
Matal v Tam ,
Scandalous/Immoral Marks ,
Trademark Registration ,
Trademarks ,
USPTO
In 2015, the Supreme Court, in its decision in B&B Hardware, Inc. v. Hargis Industries, Inc. (“B&B”), held that sometimes issue preclusion should apply to prior Trademark Trial and Appeal Board (“TTAB”) decisions. 135 S. Ct....more
It is natural for manufacturers to seek to widen their intellectual property protection. In the seminal case TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 US 23 (2001), the Supreme Court struck down the plaintiff’s...more
In a 54 page decision issued on September 6, 2017, the Trademark Trial and Appeal Board (the “Board”) ended (again) a long-standing dispute between snack food makers Frito-Lay, Inc. (“Frito”) and Princeton Vanguard, LLC...more
The Eleventh Circuit has widened the circuit split on whether a copyright application or completed registration is required before filing a copyright infringement lawsuit. In Fourth Estate Public Benefit v. Wall-Street.com,...more
Calling the district court’s action an “abuse of discretion,” the 11th Circuit reversed a decision that cut by more than 90 percent a successful copyright infringement plaintiff’s request for attorney’s fees and costs. Yellow...more
The United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) cancelled the registration for the mark PORTÓN last week, finding it to be confusingly similar to the senior mark PATRÓN. Patrón...more