News & Analysis as of

Trademark Registration Lanham Act Trademark Trial and Appeal Board

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

International Lawyers Network

Can Non-English Language Trademarks Be Refused Registration Based on the Foreign Equivalents Doctrine?

Suppose that you want to register your trademark that is in a non-English language on goods or services for your business in the United States. Will your non-English language trademark need to be translated to English to...more

McDermott Will & Schulte

Stylish but Generic: ‘VETEMENTS’ Can’t Dress Up as Trademark

The US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s refusal to register the mark VETEMENTS for clothing and related retail services, finding that the mark was generic under the...more

McDermott Will & Schulte

False Connection: Post-Application Date Evidence Can Be Considered

The US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s refusal to register a mark on the grounds of false connection, explaining that the false connection inquiry can include evidence...more

Farella Braun + Martel LLP

Trademark Applications Filed on an Intent-To-Use Basis Can Be Vulnerable To Challenge

In filing to register a trademark on an “intent-to-use” basis, the applicant must verify that it has a good faith “bona fide intention to use the mark in commerce.” 15 U.S.C. § 1051(b). Assuming there is nothing on the face...more

Fish & Richardson

No Space at the Trademark Office for US SPACE FORCE

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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

Fish & Richardson

More Is More: Ensure Your Mark Is Protectable Before You Enforce

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The Federal Circuit’s recent decision in Heritage Alliance v. American Policy Roundtable, Case No. 24-1155 (Fed. Cir. Apr. 9, 2025), provides a salient reminder to brand owners seeking to build value in descriptive trademarks...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

McDermott Will & Schulte

Opposers Beware: Your Own Mark May Not Be Protectable

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

Knobbe Martens

Zoned Out: The Zone of Natural Expansion Doctrine Can Only Be Used Defensively

Knobbe Martens on

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

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

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

Ladas & Parry LLP

TTAB Sustains Opposition Based on Reputation Without Use in the United States

Ladas & Parry LLP on

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

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

McDermott Will & Schulte

No Bull: Historically Generic Term Can Become Non-Generic

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

Fish & Richardson

USPTO Kicks “Hijacker” of Foreign Trademark Out the Door

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When, if ever, is it okay to use a trademark in U.S. commerce that is identical to another company’s mark used outside the U.S.? Courts have struggled with this issue for years, and the U.S. Patent and Trademark Office...more

Willcox & Savage

Trump Too Small: The Lanham Act Names Clause

Willcox & Savage on

To guide potential trademark owners and to foster strong protection for trademarks under U.S. law, the Lanham Act; 15 U.S.C. §1052, defines the types of trademarks and service which marks can be registered by whittling away...more

Baker Donelson

Baker's Trademark Developments of 2024

Baker Donelson on

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

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

[Webinar] Trademark Trends: A Mid-Year Review - July 17th, 1:00 pm - 2:00 pm EDT

Join Sterne Kessler’s Global Trademark & Brand Protection team for our mid-year review webinar, when we will take a closer look at the latest developments in trademark law. From recent court decisions to industry-trends, our...more

McDermott Will & Schulte

Supreme Court Upholds Constitutionality of Lanham Act’s Names Clause

In Vidal v. Elster, a unanimous Supreme Court of the United States reversed the US Court of Appeals for the Federal Circuit’s decision, holding that the Lanham Act’s names clause does not violate the First Amendment or...more

Troutman Pepper Locke

Supreme Court Upholds Names Clause in Trademark Law, Emphasizing Historical and Traditional Foundations

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In a landmark decision written by Justice Clarence Thomas, the Supreme Court has unanimously upheld the constitutionality of the Lanham Act’s provision that prohibits the registration of trademarks consisting of, or...more

Morrison & Foerster LLP

From Rubio's Joke to the Supreme Court: The Journey of 'Trump Too Small' in Vidal v. Elster

Does the Lanham Act’s restriction on registration of trademarks that include an individual’s name without the consent of such individual violate the Free Speech Clause of the First Amendment, even when the mark expresses...more

Dorsey & Whitney LLP

The Ninth Circuit Addresses Judicial Power over Trademark Applications and the Lawful Use of Trademarks on Cannabis (I Mean,...

Dorsey & Whitney LLP on

The Ninth Circuit issued two opinions in BBK Tobacco & Foods LLP v. Central Coast Agriculture, Inc. finding judicial power over pending trademark applications and an exception shielding trademark registrations for marks used...more

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