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Appeals Lanham Act Trademark Trial and Appeal Board

Knobbe Martens

3-2-1 Blast Off: US Space Force Trademark Dispute Aims for the Supreme Court

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The trademark attorney Thomas D. Foster has found himself in ongoing legal star wars to register US SPACE FORCE as his personal trademark covering coins, jewelry, watches, license plate holders, toys, and other everyday...more

Ladas & Parry LLP

Federal Circuit: it’s not easy being green for colour marks

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Legal updates: case law analysis and intelligence - - The TTAB, applying the Milwaukee test, rejected an application for a dark green colour mark for medical gloves on the ground that it was generic - The Federal Circuit...more

BakerHostetler

Federal Circuit Reverses TTAB Decision Based on Dissimilar House Marks

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On June 13, the Federal Circuit reversed the Trademark Trial and Appeal Board (TTAB or Board) nonprecedential decision finding no likelihood of confusion between opposer Château Lynch-Bages’ and applicant Château Angélus...more

McDermott Will & Schulte

No Fairytale Ending for Consumer Opposition: RAPUNZEL Reinforces Lexmark Standing Limits

The US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s dismissal of a trademark opposition brought by a consumer, holding that mere consumer interest is insufficient to establish...more

McDermott Will & Schulte

Stylish but Generic: ‘VETEMENTS’ Can’t Dress Up as Trademark

The US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s refusal to register the mark VETEMENTS for clothing and related retail services, finding that the mark was generic under the...more

McDermott Will & Schulte

False Connection: Post-Application Date Evidence Can Be Considered

The US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s refusal to register a mark on the grounds of false connection, explaining that the false connection inquiry can include evidence...more

Fish & Richardson

No Space at the Trademark Office for US SPACE FORCE

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In a rare precedential decision involving Section 2(a) of the Lanham Act, the U.S. Court of Appeals for the Federal Circuit recently upheld a denial by the Trademark Trial and Appeal Board (TTAB) of applications filed for US...more

McDermott Will & Schulte

No Green Light to Register Color Mark for Medical Gloves

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

ArentFox Schiff

It’s Not Easy Being Green (If You Are a Color Trademark for Medical Gloves)

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In refusing registration of the color green for “chloroprene medical examination gloves,” the Federal Circuit adopted — for the first time — a legal test for genericness of color marks. The decision underscores the high...more

Jones Day

Gloves Off: Court Says No to Green Trademark Protection

Jones Day on

The U.S. Court of Appeals for the Federal Circuit held that the test for determining whether a word mark is generic also applies to color marks....more

McDermott Will & Schulte

Royal Play Penalty: No Standing in the End (Zone)

The US Court of Appeals for the Federal Circuit dismissed an appeal from the Trademark Trial & Appeal Board, finding that the appellant lacked standing because it failed to allege any actual and particularized injury. Michael...more

Knobbe Martens

Fireball Frenzy: When First Registering a Mark, Genericness of a Mark Is Determined at the Time of Registration

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BULLSHINE DISTILLERY LLC v. SAZERAC BRANDS, LLC - Before Moore, Reyna and Taranto. Appeal from the Trademark Trial and Appeal Board. In assessing genericness, the TTAB considers how the mark was understood at the time 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

Knobbe Martens

Zoned Out: The Zone of Natural Expansion Doctrine Can Only Be Used Defensively

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DOLLAR FINANCIAL GROUP, INC. v. BRITTEX FINANCIAL, INC. [OPINION] - Before Prost, Taranto, and Hughes.  Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board. The zone of natural...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

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

McDermott Will & Schulte

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

Bradley Arant Boult Cummings LLP

What’s in a Name? Too Much to Trademark According to the USPTO

With the U.S. Supreme Court beginning a new session, many are wondering what new issues the Court will address this term. One case the Court is scheduled to hear involves the relationship between the Lanham Act and First...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

McDermott Will & Schulte

Hairy Situation: Trademark Act Doesn’t Provide Consumer Standing

The US Patent & Trademark Office Trademark Trial & Appeal Board found that a consumer did not have standing to oppose an application for registration because the consumer failed to establish a commercial interest and injury...more

Bradley Arant Boult Cummings LLP

How Lizzo Helped the USPTO Identify the Source of “100% THAT B---H”

Recently, Melissa Jefferson, known professionally as Lizzo, took on the USPTO in a battle to establish trademark rights to a popular lyric from her 2017, Billboard-topping song Truth Hurts. The phrase, “100% That B—h”, which...more

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

MarkIt to Market® - February 2023

Thank you for reading the February 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss Section 2(c) of the Lanham Act in relation to the Supreme Court's pending review of the TRUMP TOO SMALL...more

Knobbe Martens

Proving Reputational Injury Without Use of the Marks in the United States

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MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY - Before Dyk, Reyna, and Stoll.  Appeal from the Trademark Trial and Appeal Board. Summary: To maintain a statutory cause of action under the Lanham Act for activities...more

McDermott Will & Schulte

“TRUMP TOO SMALL” Trademark Decision Leaves Big Questions

Revisiting jurisprudence touching on the Lanham Act and the First Amendment from the Supreme Court’s decisions in Matal v. Tam and Iancu v. Brunetti, the US Court of Appeals for the Federal Circuit held that applying Sec....more

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