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Intellectual Property Litigation Trademark Registration

Proskauer Rose LLP

Three Point Shot - June 2025

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Hubble-Bubble in the Chewing Gum Industry: Big League Chew and Licensee Stretch Arguments in Ongoing Trade Dress Suit - The business relationship between Big League Chew Properties LLC (“Big League Chew”), the owner of...more

Seyfarth Shaw LLP

Papa’s Got a Brand New Bag, and it Might be Infringing – Cannabis Companies Clash Over Trademarks for Storage Bags

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IP cases in the cannabis industry are lighting up court dockets more and more. In a new case with potential for serious baggage, Kinzie Advanced Polymers, LLC (“Kinzie”) filed a federal lawsuit against a group of...more

Vondran Legal

Can You Register and Sell Trademarks Without Business Goodwill Attached? Short Answer, Probably Not.

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Legal Issue: Some people think you can just sell a trademark for profit. Sometimes these are called trademark farms where people will register a trademark only to sell it. Another situation arises where a company is...more

International Lawyers Network

Uber’s Opposition Fails the Grade in Tutors Trade Mark Dispute

The Australian Trade Marks Office has permitted the registration of the trade mark UBER TUTORS after finding that transport and delivery giant, Uber Technologies Inc (Uber Tech) failed to oppose the mark’s registration under...more

Alston & Bird

Intellectual Property Litigation Newsletter | June 2025

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Welcome to the Intellectual Property Litigation Newsletter, our review of decisions and trends in the intellectual property arena. In this edition, we learn that unilateral assertion is not industry standard, the IPR...more

Mayer Brown

Lost in Translation: The Doctrine of Foreign Equivalents in Trademark Law

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In this episode of The Upper Brand, Kristine Young and Rich Assmus discuss the recent Federal Circuit case regarding the doctrine of foreign equivalents in trademark law. They explore the concepts of descriptiveness and...more

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

A Reminder on the Benefits of a Federal Trademark Registration

During uncertain economic times, it may be tempting to forego the expense of filing for (or maintaining) a federal registration to protect a trademark, relying instead on common law rights acquired through use in commerce....more

Farella Braun + Martel LLP

In Limited Cases, Foreign Trademarks Can Affect U.S. Registration Rights

It is a basic tenet of trademark law that rights are jurisdictional. Trademark owners only have rights in the mark in the jurisdictions in which they have registered (or, in some cases, used) the mark....more

Irwin IP LLP

Finding The Right Fit: The Test for Color Marks 

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In Re: PT Medisafe Technologies, No. 2023-1573 (Fed. Cir. April 29, 2025) - On April 29, 2025, the Federal Circuit adopted a test from the Trademark Trial and Appeal Board (“TTAB”) for determining whether a color mark is...more

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

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

International Lawyers Network

Beauty is in the Eye…Lash Extension: Beauty Salon’s Actions to Remove Two Trade Marks Dismissed by the Australian Trade Marks...

A recent trade mark stoush in the eyelash extension market highlights the importance of registering trade marks in all states of Australia, and ensuring that trade marks that intend to be used are registered as soon as...more

McGlinchey Stafford

The #1 Reason to Register Your Trademark

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There are many valuable benefits of registering one’s trademark with the United States Patent and Trademark Office (USPTO). A cursory Internet search will yield dozens of articles on the “Top 10” or “Top 5” reasons to...more

McDermott Will & Emery

Opposers Beware: Your Own Mark May Not Be Protectable

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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

Fish & Richardson

TTAB Puts Pool Hall Behind the 8 Ball

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On March 20, 2025, the U.S. Trademark Trial and Appeal Board (TTAB) granted an opposition filed by Jack’s Family Restaurants, LP, and denied an application filed by Jack’s Grill and Billiards, Inc., to register JACK’S...more

Dorsey & Whitney LLP

Compassion in Registration: A Lesson in Filing Narrow Trademark Applications

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Identical trademarks can coexist, as the Trademark Trial and Appeal Board once again emphasized when it overturned the refusal of a COMPASSION IN ACTION mark. ...more

McDermott Will & Emery

No Bull: Historically Generic Term Can Become Non-Generic

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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

Fenwick & West LLP

Dupe or Deception? What e.l.f.’s Win Over Benefit Means for Beauty Brands

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The battle over beauty “dupes” just got more interesting. In a major win for e.l.f. Cosmetics, a California federal judge ruled that its Lash ’N Roll mascara doesn’t infringe the trademarks and trade dress of Benefit...more

International Lawyers Network

IP Myths vs. Reality: What You Don’t Know Could Cost You

Intellectual property (IP) is often misunderstood, leading to costly mistakes for businesses and individuals alike. Many assume that once they create something, they automatically own the rights everywhere, or that patents...more

Fenwick & West LLP

SkyKick TM Row with Media Co. Sky Raises Key Risks for US and Global Brands

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The United Kingdom Supreme Court’s decision in SkyKick v Sky highlights a critical trademark risk: Registering a brand for an overly broad range of products and services without an intent to use it across all categories can...more

Dorsey & Whitney LLP

From the Gold Coast to the Golden State: A Trademark Battle Over Cozy Boots

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A long legal battle over the right to use the “UGG” mark has may result in the end of a company’s right to the word “UGG” in connection with sheepskin shoes and accessories outside of Oceania....more

International Lawyers Network

Katy v Katie: The Importance of Reputation and Early Brand Protection

Pop star Katy Perry has successfully appealed a Federal Court ruling over the use of an Australian designer’s trade mark registration for the words KATIE PERRY. The recent decision by the Full Court of the Federal Court...more

Cozen O'Connor

Amendments to Trademarks Regulations Prompt Changes at Trademarks Opposition Board

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On January 29, 2025, the Canadian Intellectual Property Office (CIPO) announced that the long-awaited amendments to the Trademarks Regulations (SOR/2018-227) and new practice notices implementing cost awards, confidentiality...more

Snell & Wilmer

Fourth Circuit Holds Additional Evidence Needed to Determine Whether “MOKE” is Generic

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The Fourth Circuit recently vacated and remanded a finding that the term MOKE is generic for certain low-speed, open-air vehicles. This case originated in the Trademark Trial and Appeal Board (“TTAB”) where Moke America LLC...more

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