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Trademark Application Appeals Trademark Trial and Appeal Board

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

Ladas & Parry LLP

Federal Circuit: it’s not easy being green for colour marks

Ladas & Parry LLP on

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

Fish & Richardson

No Space at the Trademark Office for US SPACE FORCE

Fish & Richardson on

In a rare precedential decision involving Section 2(a) of the Lanham Act, the U.S. Court of Appeals for the Federal Circuit recently upheld a denial by the Trademark Trial and Appeal Board (TTAB) of applications filed for US...more

McDermott Will & Schulte

No Green Light to Register Color Mark for Medical Gloves

Addressing for the first time the test for determining whether a color mark is generic, the US Court of Appeals for the Federal Circuit adopted the Trademark Trial & Appeal Board’s Milwaukee test as the appropriate standard,...more

ArentFox Schiff

It’s Not Easy Being Green (If You Are a Color Trademark for Medical Gloves)

ArentFox Schiff on

In refusing registration of the color green for “chloroprene medical examination gloves,” the Federal Circuit adopted — for the first time — a legal test for genericness of color marks. The decision underscores the high...more

Jones Day

Gloves Off: Court Says No to Green Trademark Protection

Jones Day on

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 Sustains Opposition Based on Reputation Without Use in the United States

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TTAB sustains opposition based on reputation without use in the United States - UNITED STATES OF AMERICA Legal updates: case law analysis and intelligence - The opponent, owner of Venezuelan company La Montserratina,...more

Fish & Richardson

Trademark Office Error Saves One Application From Drowning, But Not Its Shipmate

Fish & Richardson on

In a rare case involving an admitted error by the U.S. Patent and Trademark Office, on February 20, 2025, the U.S. Court of Appeals for the Federal Circuit upheld the denial of Agadia Systems Inc.’s application for...more

Holland & Knight LLP

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

Holland & Knight LLP on

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

McDermott Will & Schulte

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

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

McDermott Will & Schulte

Sole Searching: Trade Dress Hopes Booted as Functional, Nondistinctive

The US Court of Appeals for the Fourth Circuit affirmed a district court’s summary judgment grant in a trademark dispute, finding that the district court did not err in concluding that a subset of design elements lacked...more

Willcox & Savage

A Proposed Mark Must Have A Source Identifying Function: Trademark Denied For “Keep America Great!”

Willcox & Savage on

In a non-precedential opinion; In re America in Harm’s Way; Serial No. 87976064, issued on November 30, 2023, the United States Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB”), decided the issue of...more

McDermott Will & Schulte

No Home Away From Home: Federal Circuit Confirms PTO Domicile Requirements

The US Court of Appeals for the Federal Circuit confirmed the US Patent & Trademark Office’s (PTO) refusal to register a trademark based on the applicant’s failure to comply with the domicile address requirement of 37 C.F.R....more

McDermott Will & Schulte

Stay in the Know: Informational Message Is Not a Source Identifier

Addressing whether the mark EVERYBODY VS. RACISM was registrable, the US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s final refusal to register the mark because it failed to function...more

McDermott Will & Schulte

Word From on High: Provide Reasoned Explanation When Departing From Established Practice

In a decision on motion in an appeal from the Trademark Trial & Appeal Board, the US Court of Appeals for the Federal Circuit admonished the Board on remand to “furnish a reasoned explanation” when departing from its...more

Ladas & Parry LLP

TTAB Confirms that Building Design Marks Lack of Distinctiveness

Ladas & Parry LLP on

In In re Palacio Del Rio Inc (Serial Nos 88412764 and 88437801), the Trademark Trial and Appeal Board (TTAB) has issued an opinion affirming the refusal of two building design mark applications by Palacio Del Rio Inc (PDR) –...more

McDermott Will & Schulte

Hairy Situation: Trademark Act Doesn’t Provide Consumer Standing

The US Patent & Trademark Office Trademark Trial & Appeal Board found that a consumer did not have standing to oppose an application for registration because the consumer failed to establish a commercial interest and injury...more

Ladas & Parry LLP

Fourth Circuit Confirms That ‘Gruyere’ is Generic for Cheese

Ladas & Parry LLP on

The appellants, Interprofession du Gruyère and Syndicat Interprofessionnel du Gruyère, are two consortiums, Swiss and French, that regulate use of the term ‘gruyere’ to refer only to cheeses produced in the Gruyère district...more

McDermott Will & Schulte

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

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

Bradley Arant Boult Cummings LLP

How Lizzo Helped the USPTO Identify the Source of “100% THAT B---H”

Recently, Melissa Jefferson, known professionally as Lizzo, took on the USPTO in a battle to establish trademark rights to a popular lyric from her 2017, Billboard-topping song Truth Hurts. The phrase, “100% That B—h”, which...more

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

MarkIt to Market® - February 2023

Thank you for reading the February 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss Section 2(c) of the Lanham Act in relation to the Supreme Court's pending review of the TRUMP TOO SMALL...more

McDermott Will & Schulte

Oh, Fudge. TTAB Finds Curse Word Fails to Function as Trademark

The US Patent & Trademark Office (PTO) denied registration of several US trademark applications for the mark FUCK, even though the applicant had overcome a prohibition on the registration of “immoral or scandalous” trademarks...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Affirms Refusal to Register Generic Top-Level Domain Trademarks

On February 2, in In re: Vox Populi Registry Ltd., the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB) refusal to register a standard character mark and a stylized mark, both related to the “.sucks”...more

McDermott Will & Schulte

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

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

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