News & Analysis as of

Likelihood of Confusion Trademarks

Hogan Lovells

Iconix v Dream Pairs: post sale confusion is enough for UK trade mark infringement

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The UK Supreme Court has allowed Dream Pairs’ appeal against the decision of the Court of Appeal and confirmed that post-sale confusion alone is sufficient for UK trade mark infringement to be established because damage to...more

Morgan Lewis

UK Supreme Court Confirms Post-Sale Context Is a Basis for Trademark Infringement

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The UK Supreme Court recently handed down judgement in the case of Iconix Luxembourg Holdings SARL v. Dream Pairs Europe Inc. The decision has provided important clarity on the question of whether post-sale confusion is...more

Morgan Lewis

EU General Court Affirms English Trade Marks Must Pass A1–A2 Bar

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In Karneolis LTD v. EU Intellectual Property Office and Match Group LLC,[1] the EU General Court ruled in favour of Match Group LLC, the dating app conglomerate that owns and operates, among others, Tinder, Hinge, and...more

Jones Day

UK Supreme Court Holds Post-Sale Confusion is Relevant for Establishing Trade Mark Infringement

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The Court ruled that the post-sale context can be relevant when establishing similarity between trade marks....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

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

When Surfboards and Superstars Collide: How to Avoid a Wipeout [or Mayhem]

Pop icon Lady Gaga is no stranger to making waves, but a new lawsuit initiated by California-based surfboard company Lost International (aka Lost Surfboards), shows that even superstars can find themselves navigating choppy...more

Mayer Brown

Non-Traditional Trademarks

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In the debut episode of The Upper Brand podcast, Mayer Brown attorneys Richard Assmus, Kristine Young, and Christa Cole delve into the evolving world of non-traditional trademarks—covering everything from colors and scents to...more

Foley Hoag LLP - Making Your Mark

Brewed in San Diego: Trademark Lessons from America's Craft Beer Capital and Beyond

This year, the INTA Annual Meeting lands in sunny San Diego, California—a city known not only for its breathtaking coastline, laid-back vibe, and rich cultural diversity, but also for its dynamic landscape of iconic brands...more

McDermott Will & Emery

RAW Confusion? No Error Where Trial Court Declines to Clarify Agreed Jury Instruction

The US Court of Appeals for the Seventh Circuit affirmed a district court’s jury verdict that found trade dress infringement and liability under state deceptive practices law, and the court’s order entering a nationwide...more

Amundsen Davis LLC

How Businesses Can Enforce Trademark Registrations

Amundsen Davis LLC on

Trademark registrations are a great tool for business owners to protect their brand identity. Unlike some other forms of intellectual property protection, trademarks can last forever provided that they are actively used and...more

Knobbe Martens

Fireball Frenzy: When First Registering a Mark, Genericness of a Mark Is Determined at the Time of Registration

Knobbe Martens on

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

Irwin IP LLP

Your “Chicken Scratch” May Be Confusing 

Irwin IP LLP on

In Re R.S. Lipman Brewing Co., LLC, 2025 WL 1099603 (Fed. Cir. Apr. 14, 2025) - Be careful when selecting a name for your product, otherwise you might find yourself cooked at the United States Patent and Trademark Office...more

McDermott Will & Emery

Opposers Beware: Your Own Mark May Not Be Protectable

McDermott Will & Emery on

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

Fish & Richardson

TTAB Puts Pool Hall Behind the 8 Ball

Fish & Richardson on

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

Fish & Richardson

Trademark Owners May Play Only Zone Defense at the TTAB

Fish & Richardson on

In a precedential decision invoking the “zone of natural expansion” doctrine, on March 19, 2025, the Federal Circuit upheld a decision by the U.S. Trademark Trial and Appeal Board (TTAB) cancelling in part registrations for...more

McDermott Will & Emery

Zone of Natural Expansion Is a Shield, Not a Sword

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The US Court of Appeals for the Federal Circuit upheld a Trademark Trial & Appeal Board decision to partially cancel trademarks, ruling that an opposition challenger could not use the zone of natural expansion doctrine to...more

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

Does Trademark Law Protect “Bad Will”?

On March 21, 2025, I participated in a spirited panel at the annual IP symposium hosted by the Penn Intellectual Property Group (PIPG) at the University of Pennsylvania Carey Law School. Titled “How Far Should Trademark...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

Dorsey & Whitney LLP

John Wick Targets Jane Wick with Trademark Opposition

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John Wick is a highly successful film franchise starring Keanu Reeves as a hitman who reluctantly emerges from retirement to avenge the killing of his pet beagle (among other offenses committed by a group of not-very-nice...more

Bond Schoeneck & King PLLC

Trade Dress Registration – Practical Considerations for Product Manufacturers

Summary Trade dress is a powerful intellectual property (IP) tool that can be used to protect the distinctive non-functional “look and feel" of a product’s design, shape and/or 3D configuration.[1] Product manufacturers and...more

Pillsbury - Internet & Social Media Law Blog

Bad Spaniels III: The Paradox of Parody in Trademark Cases Ex-Rogers

After a decade of litigation and a pivotal Supreme Court ruling from 2023, the legal battle between Jack Daniel’s and VIP Products has taken yet another turn, this time back in favor of Jack Daniel’s. On remand from the...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

McDermott Will & Emery

Dog Toy Maker in the Doghouse (Again) for Tarnishing Jack Daniel’s Marks

Addressing this case for the third time, the US District Court for the District of Arizona found on remand that Jack Daniel’s was entitled to a permanent injunction after finding that VIP Products’ “Bad Spaniels” dog toy...more

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