Trademark Series: Protecting your mark from becoming 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
Recently, the United States Court of Appeals for the Fourth Circuit considered whether “gruyere” cheese can be registered as a trademark in the United States, or whether it is merely a generic term that is not entitled to...more
At the end of last month, the United States Patent and Trademark Office (“USPTO”) released a guide clarifying how they were approaching the refusals of applied-for marks that could be generic. In the past, examining attorneys...more
In an industry that runs on innovation and differentiation, a cannabis brand’s identity is among its most valuable—and most prone to copying—assets. It’s a common myth that cannabis industry brands cannot get trademark...more
While Shakespeare may have wondered “what is in a name?”, the executives at Peloton believe that the trademark SPIN is of great importance. Last month (February, 2021), Peloton filed petitions to cancel the trademarks SPIN...more
Last month, the U.S. Patent and Trademark Office (PTO) issued a guidance document describing how they plan on following the Supreme Court’s recent decision in U.S. Patent and Trademark Office v. Booking.com. This document...more
The loser of a trademark opposition or cancellation proceeding at the United States Trademark Trial and Appeal Board (TTAB) has two avenues for appealing the decision: (1) to the United States Court of Appeals for the Federal...more
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
2018 saw a number of important trademark cases decided across the United States. Two cases illustrated the similarities between genericness analysis and one of the likelihood of confusion factors considered by the Trademark...more
Royal Crown Co., Inc. v. The Coca-Cola Co., 2018 WL 3040163 (Fed. Cir. June 20, 2018) - In late June, the Federal Circuit issued an opinion in the year-long litigation between Royal Crown Co., Inc. (“RC”) and The...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
On March 24, 2017, the U.S. Court of Appeals for the Ninth Circuit ruled that the term “red gold” may not be a generic term for jewelry and watches, and thus, may serve as a trademark. Specifically, the Ninth Circuit found...more
I. Adding Distinctive Terms or Logos to a Descriptive or Generic Term Will Not Protect the Descriptive or Generic Term. A descriptive trademark1 is one that immediately brings to mind a use, purpose, function,...more
On appeal from the Trademark Trial and Appeal Board (TTAB), the US Court of Appeals for the Federal Circuit affirmed the TTAB’s refusal to register a stylized form of the mark CHURRASCOS for restaurant services, finding that...more
You know you’re in for a fight when 14 different law firms come together to launch an opposition--an administrative proceeding before the Trademark Trial and Appeal Board--against registration of your trademark application....more
The Federal Circuit recently provided additional guidance concerning whether an applied-for mark is generic in In re Cordua Restaurants, Inc., (May 13, 2016). This case stemmed from the United States Patent and Trademark...more
The Katten Kattwalk discusses legal issues in the fashion industry affecting the trademarks, patents and copyrights associated with companies, brands and products. Letter From the Editor - Fashion Week has come and...more
Addressing the issue of distinctiveness, the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB) decision to deny registration of a plaintiff’s mark due to the dearth of evidence supporting the plaintiff’s...more
The U. S. Court of Appeals for the Federal Circuit vacated and remanded for further proceedings the decision of the Trademark Trial and Appeal Board (TTAB or Board) cancelling the registration of the mark PRETZEL CRISPS,...more
Attorneys’ Fees Might be More Readily Granted in Trademark Cases - Last year, the U.S. Supreme Court relaxed the standard for awarding attorneys’ fees to the prevailing party in patent infringement cases. Octane...more
An application to register PRETZEL CRISPS as a mark will live another day, thanks to a Federal Circuit opinion reversing a TTAB decision that had canceled the mark on grounds of genericness....more