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Appeals Intellectual Property Protection Trademark Registration

Fish & Richardson

Federal Circuit Finds Beer Trademark Application Nothing but "Chicken Scratch"

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In yet another recent example of the need for care in establishing a full record when appealing the denial of a trademark application, on April 14, 2025, the U.S. Court of Appeals for the Federal Circuit upheld the denial of...more

McDermott Will & Schulte

Opposers Beware: Your Own Mark May Not Be Protectable

The US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s dismissal of an opposition to the registration of the marks IVOTERS and IVOTERS.COM while also noting that the US Patent &...more

McDermott Will & Schulte

Zone of Natural Expansion Is a Shield, Not a Sword

The US Court of Appeals for the Federal Circuit upheld a Trademark Trial & Appeal Board decision to partially cancel trademarks, ruling that an opposition challenger could not use the zone of natural expansion doctrine to...more

Ladas & Parry LLP

TTAB Sustains Opposition Based on Reputation Without Use in the United States

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TTAB sustains opposition based on reputation without use in the United States - UNITED STATES OF AMERICA Legal updates: case law analysis and intelligence - The opponent, owner of Venezuelan company La Montserratina,...more

Vedder Price

Review of Trademark Portfolios Necessary in Light of Recent Decision Confirming Narrowness of “Zone of Expansion” Doctrine

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The U.S. Court of Appeals for the Federal Circuit last week issued an opinion that explained an often misunderstood doctrine in trademark law -- the "zone of expansion."...more

McDermott Will & Schulte

No Bull: Historically Generic Term Can Become Non-Generic

The US Court of Appeals for the Federal Circuit affirmed Trademark Trial & Appeal Board rulings, finding that a previously generic term was not generic at the time registration was sought because at that time the mark, as...more

Kilpatrick

6 Key Takeaways | Annual Update on Recent Trademark Case Law

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Kilpatrick partner Ted Davis recently presented his “Annual Update on Recent Trademark Case Law” at the firm’s 2025 Advanced Trademark Law Seminar in San Francisco....more

Smart & Biggar

Canadian trademark law 2024: a year in review

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In this article, we review a number of notable Canadian trademark cases from 2024 and highlight key developments in Canadian trademarks practice. On February 5, 2025, join us for an insightful webinar as we deliver a roundup...more

McDermott Will & Schulte

Beach Buggy Battle: Stipulation Insufficient to Establish Trademark Distinctiveness

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

Morrison & Foerster LLP

Thatchers v. Aldi: A Bitter Battle over Cider Branding

On 20 January 2025, the Court of Appeal handed down its judgment in the trade mark dispute between Thatchers Cider Company Limited (“Thatchers”), the largest family-run independent cider producer in the UK, and Aldi Stores...more

McDermott Will & Schulte

Ghostly Misstep: No Confusion Means No Preliminary Injunction

In a trademark case involving an incontestable registration, the US Court of Appeals for the First Circuit affirmed a district court ruling denying the registrant a preliminary injunction (PI) for failure to establish...more

McDermott Will & Schulte

Rum Wars: Lanham Act Doesn’t Preclude Judicial Review of PTO Renewal Decisions

The US Court of Appeals for the Fourth Circuit reversed and remanded a district court’s ruling, holding that the Lanham Act does not foreclose an Administrative Procedure Act (APA) action for judicial review of the US Patent...more

McDermott Will & Schulte

Sole Searching: Trade Dress Hopes Booted as Functional, Nondistinctive

The US Court of Appeals for the Fourth Circuit affirmed a district court’s summary judgment grant in a trademark dispute, finding that the district court did not err in concluding that a subset of design elements lacked...more

McDermott Will & Schulte

ITU Applicants Beware: Federal Courts Have Jurisdiction Over Pending Trademark Applications

The US Court of Appeals for the Ninth Circuit affirmed in part a district court’s ruling in a trademark dispute, upholding its decision to invalidate trademark applications. The Ninth Circuit held that district courts have...more

McDermott Will & Schulte

All That Glitters: Use of Registered Mark To Describe Watch Color Was Fair Use

The US Court of Appeals for the Second Circuit affirmed a district court’s grant of summary judgement to a luxury-watchmaker defendant, holding that its use of a registered and incontestable trademarked term was fair use...more

Smart & Biggar

BYOOVIZ is confusing with BEOVU: Federal Court finds violation of Novartis’ trademark rights

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In a decision dated January 24, 2024, Justice Pallotta allowed Novartis’ application, finding that Biogen and Samsung’s use of the trademark BYOOVIZ in association with an ophthalmologic drug violates Novartis’ rights in its...more

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

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition)

2023 saw a return to business as usual for the Federal Circuit. Oral arguments are once again in-person and open to the public, and the Court has resumed its former practice of holding occasional sittings outside of...more

McDermott Will & Schulte

Stay in the Know: Informational Message Is Not a Source Identifier

Addressing whether the mark EVERYBODY VS. RACISM was registrable, the US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s final refusal to register the mark because it failed to function...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit’s Determination on Whether Fraudulent Conduct in Obtaining Incontestable Status Warrants the Mark’s Cancellation

In Great Concepts, LLC, v. Chutter, Inc., the Federal Circuit decided on whether the Trademark Trial and Appeal Board can cancel a trademark based on the inclusion of false statements in a declaration to obtain an...more

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

MarkIt to Market® - October 2023: A Limit to Cancel Culture? Federal Circuit Finds Fraud in Connection with Section 15 Declaration...

In 2021, the Trademark Trial and Appeal Board cancelled Great Concepts, LLC’s trademark registration for the mark DANTANNA’S for restaurant services under Section 14, after finding that counsel for the Registrant committed...more

Bradley Arant Boult Cummings LLP

Cancellation of a Registered Mark Based on Fraud in Section 15 Affidavit Not Allowed

On Wednesday, a divided panel of the Federal Circuit issued a precedential decision reversing the USPTO’s cancellation of a registered trademark (Great Concepts, LLC v. Chutter, Inc., No. 2022-1212). As detailed in the...more

Ladas & Parry LLP

New York Court Sides with PepsiCo on Remand in Ongoing Rise Brewing Dispute

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In Riseandshine Corporation v PepsiCo Inc (SDNY-1-21-cv-06324), plaintiff Riseandshine Corporation, doing business as Rise Brewing, brought three federal and two state claims relating to trademark infringement and unfair...more

Ladas & Parry LLP

TTAB Confirms that Building Design Marks Lack of Distinctiveness

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In In re Palacio Del Rio Inc (Serial Nos 88412764 and 88437801), the Trademark Trial and Appeal Board (TTAB) has issued an opinion affirming the refusal of two building design mark applications by Palacio Del Rio Inc (PDR) –...more

Buckingham, Doolittle & Burroughs, LLC

SCOTUS to Rule on Abitron’s Foreign Application of the Lanham Act

Can the Lanham Act apply to the conduct of foreign entities occurring entirely outside the United States and, if so, what is the test? The Supreme Court will soon decide this issue in Abitron v. Hetronic, potentially...more

Ladas & Parry LLP

Fourth Circuit Confirms That ‘Gruyere’ is Generic for Cheese

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The appellants, Interprofession du Gruyère and Syndicat Interprofessionnel du Gruyère, are two consortiums, Swiss and French, that regulate use of the term ‘gruyere’ to refer only to cheeses produced in the Gruyère district...more

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