News & Analysis as of

Likelihood of Confusion Trademark Trial and Appeal Board Trademark Application

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

Holland & Knight LLP

COGNAC, Hip Hop and Fame: A Trademark Showdown with a Twist

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You might be wondering what cognac, hip-hop and fame have in common. The answer, at least in a recent opinion by the U.S. Court of Appeals for the Federal Circuit, is certification trademarks. We have written in the past...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

Baker Donelson

Baker's Trademark Developments of 2024

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2024 has been a busy year in all intellectual property. It has been especially busy in trademark law. Here are the top seven cases in trademark law to date....more

Dorsey & Whitney LLP

Cognac Scores a Win for Certification Marks

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Cognac, which originates from a specific region of France and is named after the commune of Cognac, is far more popular outside its native country. Indeed, according to the industry group Bureau National Interprofessional du...more

Weintraub Tobin

(Podcast) The Briefing: Thirsty for Clarity – Brand Confusion In The Beverage Category

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The Trademark Trial and Appeal Board often consider wine, beer, and non-alcoholic beverages related when determining the likelihood of confusion despite there being no per se rule on the matter. Scott Hervey and Jamie...more

Weintraub Tobin

The Briefing: Thirsty for Clarity – Brand Confusion In The Beverage Category

Weintraub Tobin on

The Trademark Trial and Appeal Board often consider wine, beer, and non-alcoholic beverages related when determining the likelihood of confusion despite there being no per se rule on the matter. Scott Hervey and Jamie...more

McDermott Will & Emery

Unbranded Brandy: COGNAC Certification Mark Matters, Even in Hip-Hop

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The US Court of Appeals for the Federal Circuit vacated a ruling from the Trademark Trial & Appeal Board, disagreeing with the Board’s dismissal of Bureau National Interprofessionnel du Cognac’s opposition to a trademark...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

Erise IP

What’s Trending in Trademarks, February 2024: Fruity Pebbles Denied Color Mark, Captain Cannabis Cancellation, Trader Joe’s vs....

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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: Fruity...more

McDermott Will & Emery

Strike 1: Priority. Strike 2 :Likelihood of Confusion. Strike 3: You’re Out under Section 2(d).

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The Trademark Trial & Appeal Board affirmed the rejection of three trademark applications, finding that the applied-for marks would cause confusion with a record-setting major league baseball player. Major League Baseball...more

McDermott Will & Emery

Actual or Potential Consumers in Related Goods Context Doesn’t Require PURE Overlap

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The US Court of Appeals for the Federal Circuit reminded us that, in the context of related goods, the likelihood of confusion analysis does not require that actual or potential consumers of the goods be the same, but only...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Tiger Lily Ventures Ltd. v. Barclays Capital Inc.,...

Barclays Capital Inc. filed oppositions with the Trademark Trial and Appeal Board (TTAB) against Tiger Lily Ventures Ltd.’s two applications for the standard character mark “LEHMAN BROTHERS” alleging that Tiger Lily’s marks...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

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

MarkIt to Market® - November 2022: Priority Pitfalls

The Trademark Trial and Appeal Board’s recently issued precedential decision dismissing an opposition alleging a likelihood of confusion between the registered mark SMOK and a pending application for the mark SMOKES and...more

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

MarkIt to Market® - November 2022

Thank you for reading the November 2022 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we address a precedential TTAB decision that presents interesting priority issues relating in particular to the...more

Akerman LLP - Marks, Works & Secrets

TTAB Rains on ‘Purple Rain’ Energy Drink Trademark Application

On August 23, 2022, the Trademark Trial and Appeal Board (“TTAB”) rejected on summary judgment JHO Intellectual Property Holdings’ (“Applicant”) application to register the mark “PURPLE RAIN” for a variety of nutritional...more

Knobbe Martens

The Battle of Brooklyn: Lack of Concrete Injury and Prior Collaboration Doom TTAB Actions

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BROOKLYN BREWERY CORPORATION V. BROOKLYN BREW SHOP, LLC - Before Judges Dyk, O’Malley, and Hughes. Appeal from the Trademark Trial and Appeal Board. Summary: A challenger must demonstrate an injury in fact to have...more

McDermott Will & Emery

What's Cookin'? No Likelihood of Confusion Between Two KITCHEN Marks

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Addressing the assessment and application of the DuPont likelihood of confusion factors, the US Court of Appeals for the Federal Circuit upheld the Trademark Trial and Appeal Board’s finding of no likelihood of confusion...more

Knobbe Martens

No Kitchen Confusion: When Comparing Marks, the Trademark Board Can Give Less Weight to Shared Terms if the Terms Are Suggestive...

Knobbe Martens on

QUIKTRIP WEST, INC. V. WEIGEL STORES, INC. Before Lourie, O’Malley, and Reyna. Appeal from the Trademark Trial and Appeal Board. Summary: When comparing marks under the Dupont factors, the Board may give less weight to...more

Haug Partners LLP

The Federal Circuit “OK”s a Questionable Path to Petitioning for Cancellation of a Trademark Registration

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In Australian Therapeutic Supplies Pty Ltd. v. Naked TM, LLC, the Federal Circuit recently denied a petition for rehearing en banc of a panel decision finding that a petitioner who contracted away its rights to unregistered...more

Akerman LLP - Marks, Works & Secrets

Lehman Brothers is Gone but Not Abandoned

On September 30, 2020, the Trademark Trial and Appeal Board ruled in favor of the assignee of the famous LEHMAN BROTHERS trademark against the registration that mark as a brand name for beer, spirits, and bar and restaurant...more

Knobbe Martens

Not All DuPont Factors Are Made Equal

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STRATUS NETWORKS, INC. v. UBTA-UBET COMMUNICATIONS INC. Before Moore, Lourie, and Reyna. Appeal from the Trademark Trial and Appeal Board. Summary: The absence of explicit findings on particular DuPont factors used by...more

Dorsey & Whitney LLP

Adidas’ All-In Dispute with Church Sheds Light on Trademark Abandonment and Failure to Function as a Trademark

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In 2005, Christian Faith Fellowship Church, a Chicago-based church group, filed two trademark applications for the mark ADD A ZERO for use on clothing, including shirts and caps that they later sold to raise money for...more

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