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Trademark Cancellation Trademark Litigation Trademarks

Weintraub Tobin

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

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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

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

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

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

Trademark Owners May Play Only Zone Defense at the TTAB

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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 & Schulte

Zone of Natural Expansion Is a Shield, Not a Sword

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

International Lawyers Network

Can U.S. Trademark Registrations Be Cancelled for Genericness?

Suppose that you have obtained a U.S. trademark registration for your trademark on goods or services for your business. Can your trademark registration be cancelled with the U.S. Patent and Trademark Office based on...more

Smart & Biggar

Upcoming changes to Canada’s trademarks regime: what brand owners and their counsel need to know

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On April 1, 2025, long-awaited amendments to Canada’s Trademarks Act and Trademarks Regulations will come into force. The purpose of the amendments is to discourage abuse of Canada’s trademarks regime and to improve 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 & Schulte

Rules Are Rules, Especially in Trademark Proceedings

The Commissioner for Trademarks recently issued a precedential decision terminating a reexamination proceeding for the registrant’s failure to respond within a statutory time period, where there was insufficient justification...more

Seyfarth Shaw LLP

THREE PEAT: Why Pat Riley’s Trademark Portfolio Makes Him a Chiefs Fan for the Super Bowl

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As the Kansas City Chiefs prepare to face the Philadelphia Eagles in Super Bowl LIX, they aren’t just battling for another championship—they’re chasing history. A win would cement their place in the record books as the first...more

Blake, Cassels & Graydon LLP

Prove It or Lose It: Trademark Registrar Initiates Proof-of-Use Proceedings

The Registrar of Trademarks (Registrar) can now request that owners of trademarks registered with the Canadian Intellectual Property Office (CIPO) submit proof of use of certain trademarks or face expungement of those marks...more

Dorsey & Whitney LLP

A SUPER HERO-ic Trademark Takedown

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Last month, the creators of beloved characters like “Superman” and “Spider-Man” declined to come to their own rescue when their SUPER HERO and SUPER HEROES registrations were cancelled by a default judgment from the U.S....more

Seyfarth Shaw LLP

Marvel and DC Lose “Super Hero” Trademark Registration

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The U.S. Patent and Trademark Office (USPTO) has canceled long-standing trademark registrations for “Super Hero” and “Super Heroes,” which had been previously jointly owned by Marvel and DC Comics....more

Womble Bond Dickinson

It’s a Bird, It’s a Plane - It’s in the Public Domain! USPTO Cancels Marvel and DC Comics’ Trademarks for SUPER HERO and SUPER...

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The U.S. Patent and Trademark office has done what Thanos and Lex Luthor never could—defeat the larger than life combined forces of Marvel and DC. Despite being well-known rivals, DC (Batman, Superman, Wonder Woman and...more

Ladas & Parry LLP

VEUVE CLICQUOT v. VEUVE OLIVIER: TTAB Favours Petitioner as Respondent Defaults in Cancellation Action

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In MHCS v Les Grands Chais De France (Cancellation No 92075021, 8 March 2024), the Trademark Trial and Appeal Board (TTAB) has granted a petition for cancellation brought by viticulture giant MHCS against a mark owned by the...more

McDermott Will & Schulte

Trademark Trial & Appeal Board Gets a DuPont 101 Lesson

Addressing errors in the Trademark Trial & Appeal Board’s likelihood of confusion analysis in a cancellation action, the US Court of Appeals for the Federal Circuit vacated and remanded, holding that the Board erred by...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

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

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): Great Concepts, LLC v. Chutter, Inc., 84 F.4th 1014...

In Great Concepts, the court addressed whether Section 14 of the Lanham Act, which permits cancellation of a mark’s registration if “its registration was obtained fraudulently,” permits cancellation due to the owner’s filing...more

McDermott Will & Schulte

SHAZAM! CAPTAIN CANNABIS Registration Defeated by Prior Analogous Trademark Use

Addressing the issue of analogous trademark use, the Trademark Trial & Appeal Board designated precedential a September 6, 2022, decision in which the Board cancelled a registration for CAPTAIN CANNABIS based on the...more

Vondran Legal

Proper grounds to cancel another companies trademark

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In business, trademarks are everything. It's how consumers come to know, love and trust your brand. It's a valuable corporate asset, and many disputes can arise of name rights with the explosion of e-commerce and the...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit’s Determination on Whether Fraudulent Conduct in Obtaining Incontestable Status Warrants the Mark’s Cancellation

In Great Concepts, LLC, v. Chutter, Inc., the Federal Circuit decided on whether the Trademark Trial and Appeal Board can cancel a trademark based on the inclusion of false statements in a declaration to obtain an...more

Seyfarth Shaw LLP

Federal Circuit Overturns Fifty Years of TTAB Precedent

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The Federal Circuit recently released an eye-catching opinion in Great Concepts, LLC v. Chutter, Inc., — F. 4th –, Case No. 2022-1212, 2023 WL 6854647 (Fed. Cir. Oct. 18, 2023). The panel of three judges held, in a...more

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

MarkIt to Market® - October 2023: A Limit to Cancel Culture? Federal Circuit Finds Fraud in Connection with Section 15 Declaration...

In 2021, the Trademark Trial and Appeal Board cancelled Great Concepts, LLC’s trademark registration for the mark DANTANNA’S for restaurant services under Section 14, after finding that counsel for the Registrant committed...more

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

MarkIt to Market® - October 2023

Thank you for reading the October 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss the Federal Circuit’s recent case considering the scope of the USPTO’s authority to cancel registrations...more

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