News & Analysis as of

Lanham Act Trademark Litigation Trademarks

Mayer Brown

Key Court Decisions: Functional and Generic Trademarks

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In this episode of The Upper Brand, Richard Assmus, Kristine Young, and Christa Cole delve into key court cases that have shaped trademark law. They explore the intricacies of functional and generic trademarks, with insights...more

McDermott Will & Emery

It’s not monkey business: NFTs can be trademarked

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The US Court of Appeals for the Ninth Circuit concluded that a non-fungible token (NFT) is a “good” under the Lanham Act but reversed the district court’s grant of summary judgment for trademark infringement because the owner...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

McDermott Will & Emery

Clean bill of health: Only domestic activities count when analyzing likelihood of confusion

McDermott Will & Emery on

Affirming a summary judgment decision finding no trademark infringement under the Lanham Act, the US Court of Appeals for the Ninth Circuit determined that the district court properly focused on domestic activity with regard...more

McDermott Will & Emery

Don’t walk away: Trademark owner can’t bring infringement suit against co-owner

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The US Court of Appeals for the Fifth Circuit upheld a district court’s summary judgment decision that a co-owner of a trademark cannot bring infringement or dilution claims under the Lanham Act against other co-owners or...more

Jenner & Block

Two Years After Abitron: Navigating the Limits of US Trademark Enforcement Abroad

Jenner & Block on

Two years after the US Supreme Court’s decision in Abitron Austria GmbH v. Hetronic International, Inc., US trademark owners and global businesses continue to grapple with its implications for cross-border enforcement. The...more

International Lawyers Network

Can Non-English Language Trademarks Be Refused Registration Based on the Foreign Equivalents Doctrine?

Suppose that you want to register your trademark that is in a non-English language on goods or services for your business in the United States. Will your non-English language trademark need to be translated to English to...more

Farella Braun + Martel LLP

Two's A Crowd: The Pitfalls of Trademark Co-Ownership

Often, individuals joining together on a project believe they should each own the name they choose. Indeed, it only seems fair. But having multiple owners of a single trademark is a recipe for trouble, and the partners would...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

Knobbe Martens

The Federal Circuit Grounds US SPACE FORCE Trademark Application

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IN RE THOMAS D. FOSTER, APC, - Before Moore, Prost, and Stoll. Appeal from the United States Patent and Trademark Office. Section 2(a) of the Lanham Act bars registration of a pending application for a mark that falsely...more

Fish & Richardson

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

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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

Baker Donelson

Trademark Trouble: When the F-Word Fails to Function

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Recent Supreme Court decisions underscore how viewpoint-based refusals of trademark applications are unconstitutional. But can these viewpoint-based refusals survive under the "failure-to-function" doctrine instead?...more

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

Keeping Up With the Trademarks: The Role of Brands in Reality TV

“I love reality TV!” Cue the eyerolls. For many, admitting to watching reality TV is often done begrudgingly or dismissed as a “guilty pleasure.” But why the stigma? Reality television has it all: drama, competition, social...more

Vondran Legal

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

Vondran Legal on

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

Knobbe Martens

Coloring Within the Lines: The Genericness Test for Color Trademarks

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IN RE: PT MEDISAFE TECHNOLOGIES - Before Prost, Clevenger, and Stark. Appeal from the Trademark Trial and Appeal Board. A proposed color mark was found generic where the relevant public perceived the color to be a common...more

Knobbe Martens

Not Lost in Translation: Federal Circuit Clarifies Application of the Doctrine of Foreign Equivalents

Knobbe Martens on

IN RE: VETEMENTS GROUP AG - Before Prost, Wallach, and Chen. Appeal from the Trademark Trial and Appeal Board. A party opposing application of the doctrine of foreign equivalents has the burden to show that the ordinary...more

McDermott Will & Emery

Jurisdiction Affirmed: Trademark Ripples Reach US Shores

McDermott Will & Emery on

Addressing for the first time the issue of whether a foreign intellectual property holding company is subject to personal jurisdiction in the United States, the US Court of Appeals for the Eleventh Circuit reversed a district...more

Fish & Richardson

Green Glove Trademark Application Gets Red Light From Federal Circuit

Fish & Richardson on

In a precedential decision, the U.S. Court of Appeals for the Federal Circuit recently blessed the test used by the U.S. Trademark Trial and Appeal Board (TTAB) for denying registration to PT Medisafe Technologies for a...more

BakerHostetler

Federal Circuit Reverses TTAB Decision Based on Dissimilar House Marks

BakerHostetler on

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

Seyfarth Shaw LLP

I Don’t Wanna Grow Up, I’m a What Kind of Kid?  Toys R Us Takes on Vape R Us in Trademark Battle

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I don’t wanna grow up, I’m a TOYS R US kid. So, many of us grew up with this commercial jingle and it along with the brand brings back positive memories of celebrating birthdays and holidays. But what happens when a company...more

Mayer Brown

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

Mayer Brown on

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

Loeb & Loeb LLP

Enos v. The Walt Disney Company

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District court grants Disney’s motion for summary judgment, holding it did not infringe plaintiffs’ copyright in blue-eyed ukulele-playing turtle character, but rather independently created its own musical turtle character,...more

Farella Braun + Martel LLP

What's In a Name?: The Legal Landscape of Choosing Surnames as Trademarks

As noted in the linked article, many iconic brands, including Ford, Harley-Davidson, and JC Penney (yes, he was real), bear the surnames of their founders. These names often lend a sense of authenticity or legacy that...more

Weintraub Tobin

The Briefing: Trademark Smoked: The Fall of General Cigar’s COHIBA Registration

Weintraub Tobin on

After nearly 30 years of litigation, a federal court has canceled General Cigar’s U.S. trademarks for COHIBA cigars — all because of a little-known treaty and a Cuban brand once favored by Fidel Castro. What does this mean...more

McDermott Will & Emery

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

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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

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