News & Analysis as of

Trademark Opposition Proceedings Trademark Trial and Appeal Board Trademark Application

Knobbe Martens

Sunkist Squeezes Out a Win and Kisses Kist Goodbye!

Knobbe Martens on

SUNKIST GROWERS, INC. v. INTRASTATE DISTRIBUTORS, INC. - Before Prost, Taranto, and Stark.  Appeal from the Trademark Trial and Appeal Board. The TTAB incorrectly found that similar trademarks created distinct commercial...more

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

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

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

McDermott Will & Schulte

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

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

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

MarkIt to Market® - August 2021: Persistence Pays Off – A Series of Monster Trademark Disputes

Monster Energy Co. (“Monster Energy”), frequent trademark plaintiff, recently found itself on the receiving end of a trademark infringement lawsuit brought by California company Outdoor Pro Shop, Inc. (“Pro Shop”). Pro Shop’s...more

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

MarkIt to Market® - August 2021

The August 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses Monster Energy's history of trademark disputes in the context of enhancing brand strength, tips for shortening the pendency of trademark filings...more

Farella Braun + Martel LLP

Trademark Office Deadlines and Coronavirus-Related Delays

With all of the business interruption caused by the COVID-19 pandemic, many worldwide trademark offices have taken steps to recognize the issues caused by the crisis. The offices in which applicants from the U.S. most...more

Dorsey & Whitney LLP

Trademark Practice Tip: How to Settle a Trademark Opposition Proceeding and Obtain Judgment Against the Applicant After an...

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Most opposition proceedings in the Trademark Trial and Appeal Board of the USPTO settle before final judgment, often based on a negotiated settlement agreement requiring the abandonment of the opposed application. In these...more

Foley Hoag LLP - Making Your Mark

Law Students Seek to “Free Rapunzel from The Trademark Tower” by Opposing RAPUNZEL as a Trademark for Dolls

In an interesting case pending before the TTAB, law students from the Suffolk University IP and Entrepreneurship Clinic have opposed an application filed by United Trademark Holdings, Inc. to register RAPUNZEL as a trademark...more

Neal, Gerber & Eisenberg LLP

Client Alert: #FreeRapunzel: Trademark Trial and Appeal Board Loosens Standing Requirements

In denying a doll maker’s motion to dismiss a mom’s opposition to the registration of the trademark RAPUNZEL, the Trademark Trial and Appeal Board (TTAB) has relaxed the already liberal standard for what constitutes a “real...more

Akerman LLP - Marks, Works & Secrets

Rapunzel May Be Released From Trademark Monopoly Tower

Rapunzel potentially was released from the trademark monopoly tower, not by her hair, but by trademark opposer and law professor Rebecca Curtin....more

Knobbe Martens

Just Like You and Me: Difficulties with Celebrity Trademark Applications

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Under U.S. trademark law, any person (including a celebrity) can obtain a trademark registration for their name if they can establish that the public recognizes the name as a source identifier for certain products or...more

Dorsey & Whitney LLP

Improper Assignment of THE EMERALD CITY Mark – Registration Cancelled in Toto

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Assignment of an intent-to-use trademark application can be fraught with risk. To deter “trafficking” in ITU applications, Section 10 of the Lanham Act prohibits the assignment of an ITU application before an amendment to...more

McDermott Will & Emery

Timing Is Everything—Objective Evidence of Bona Fide Intent to Use Necessary at the Time of Filing Application - M.Z. Berger & Co....

McDermott Will & Emery on

Addressing what constitutes sufficient evidence of “bona fide intent” to use a trademark in commerce, the U.S. Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB or Board) decision...more

Foley & Lardner LLP

Federal Circuit: Lack of Bona Fide Intent to Use at the Time of Filing Fatal to Trademark Application

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In a recent ruling the Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board (TTAB) sustaining an opposition against a trademark application on the grounds that the applicant failed to prove that it...more

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