News & Analysis as of

Goods or Services Trademark Trial and Appeal Board Trademark Application

McDermott Will & Schulte

Kissing cousins? SUNKIST and KIST deemed confusingly similar

The US Court of Appeals for the Federal Circuit reversed a Trademark Trial & Appeal Board decision, concluding that there was a likelihood of confusion between the marks KIST and SUNKIST when used in connection with soft...more

Fitch, Even, Tabin & Flannery LLP

The Federal Circuit takes on Kisses, Sunlight, and Soft Drinks

An application for a US trademark may be rejected if it is likely, when used on or in connection with the goods of the applicant, to cause confusion with another registered mark. On July 23, in Sunkist Growers, Inc. v....more

Fish & Richardson

Trademark Application for French “Clothing” Unravels at the Federal Circuit

Fish & Richardson on

The Court of Appeals for the Federal Circuit recently affirmed a denial by the U.S. Trademark Trial and Appeal Board (TTAB) of an application filed by fashion house Vetements Group AG for VETEMENTS for various articles of...more

Fish & Richardson

Lack of Bona Fide Intent to Use Sends Alcohol Trademark Application Down the Drain

Fish & Richardson on

In a recent precedential decision, the U.S. Trademark Trial and Appeal Board (TTAB) upheld an opposition by Tequila Cuadra S. de RL de CV (“Tequila Cuadra”) and denied an application filed by Manufacturera de Botas Cuadra,...more

Jones Day

Gloves Off: Court Says No to Green Trademark Protection

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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

Ladas & Parry LLP

TTAB favours Airbnb in opposition against competitor TREEBNB mark

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In Airbnb Inc v Seth Bolt and Victoria Bolt, the Trademark Trial and Appeals Board (TTAB) ruled in favour of opposer Airbnb Inc., against applicants Seth and Victoria Bolt. The board’s decision was influenced by, among other...more

Haug Partners LLP

TTAB Decision Highlights The Importance of Accurately Describing Goods and Services In Trademark Applications

Haug Partners LLP on

Recently, the Trademark Trial and Appeal Board (the “TTAB”) affirmed the decision to cancel Registration Nos. 5,376,467 and 5,376,466, for the marks SMARTLOCK and SMARTLOCK with design (the “Smartlock Marks”), in the name of...more

Erise IP

What’s Trending in Trademarks, July 2024: Suit Against Prime Hydration Puts Unique Olympic Trademark Law on Display; Are Two...

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Every month, Erise’s trademark attorneys review the latest developments at the U.S. Patent and Trademark Office, in the courts, and across the corporate world to bring you the stories that you should know about: Suit...more

Butler Snow LLP

New Utah NHL Team Takes Shot-Pass With Nine Intent-to-Use Trademark Applications

Butler Snow LLP on

Though the NHL Stanley Cup Playoffs are in full swing, a lot of off-ice activity is happening as a result of the sale of the Arizona Coyotes to Utah Jazz owners Ryan and Ashley Smith’s Smith Entertainment Group. Most hockey...more

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

MarkIt to Market® – April 2024: Trademarks are for Parents, Not Children

Children are all too familiar with parents telling them that everything they own is actually mom and dads. And as frustrating as this is to hear as a child, a recent opinion from the U.S. Patent and Trademark Office’s...more

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

MarkIt to Market® – April 2024

Welcome to the April 2024 issue of Sterne Kessler’s MarkIt to Market® newsletter. This month, we discuss why it’s important for businesses to think critically about who they are listing as their trademark owners, how the TTAB...more

International Lawyers Network

Should Disclaimers Always Be Made in U.S. Trademark Applications?

Suppose you have a pending U.S. trademark application for your trademark on goods or services for your business and a term or wording in the trademark is descriptive of your goods or services. During the examination of your...more

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

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): Bertini v. Apple Inc., 63 F.4th 1373 (Fed. Cir. 2023)...

In June 2015, Apple began using the mark APPLE MUSIC for its streaming services and filed a trademark application seeking to register the mark for production and distribution of sound recordings and arranging, organizing,...more

Irwin IP LLP

Federal Circuit Takes a Bite Out of Apple’s Trademark Application

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On April 4, 2023, in a case of first impression, the Federal Circuit reversed the Trademark Trial and Appeal Board (TTAB) and held that a trademark applicant cannot use the priority date of a prior application when the goods...more

Haug Partners LLP

Establishing Priority Through Tacking For One Listed Good or Service Will Not Establish Priority For All Goods and Services in a...

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In a precedential decision, the Federal Circuit contemplated whether a trademark applicant can establish priority for every good and service in its application by showing priority through tacking for only one of those listed...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Clarifies Standard for Tacking Doctrine in Trademark Applications

On April 4, in Charles Bertini v. Apple Inc., the Federal Circuit held that a trademark applicant cannot establish priority for every good or service in its application merely because it has priority through tacking in a...more

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

MarkIt to Market® - May 2020: One of These Things is Not Like the Other: Limiting Disclaimers Within Classes of Services

In a precedential decision earlier this month, the TTAB found that a disclaimer of a term is required as to all services in a Class if it is descriptive as to any services in that Class. This decision appears to contravene...more

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

MarkIt to Market® - December 2019: Get in Sync: The Interplay Between Patent Language and Descriptive Word Marks

In a recent precedential decision, the Trademark Trial and Appeal Board affirmed that the mark SEQUENCING BY BINDING is merely descriptive of goods and services in Classes 1, 9, 10, and 42 related to biological analytes...more

Womble Bond Dickinson

Intellectual Property Considerations and Guidance for Start-Ups: Trademarks

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Trademarks protect distinctive marks, such as brand names, logos, and designs. This protection allows a trademark holder to exclude others from using the mark without permission of the owner. The following includes important,...more

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