News & Analysis as of

Trademark Registration Trademarks Trademark Trial and Appeal Board

Knobbe Martens

Sunkist Squeezes Out a Win and Kisses Kist Goodbye!

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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

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

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

Farella Braun + Martel LLP

New TTAB Precedent Prohibits Incorporation By Reference

In a precedential decision issued June 6, 2025, the Trademark Trial and Appeal Board (TTAB) confirmed what has long been suggested in its procedural manual: Appellants in ex parte appeals may not incorporate arguments from...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

Irwin IP LLP

Finding The Right Fit: The Test for Color Marks 

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In Re: PT Medisafe Technologies, No. 2023-1573 (Fed. Cir. April 29, 2025) - On April 29, 2025, the Federal Circuit adopted a test from the Trademark Trial and Appeal Board (“TTAB”) for determining whether a color mark is...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

The Votes Are In: Highly Descriptive Marks Are Difficult to Protect

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HERITAGE ALLIANCE V. AMERICAN POLICY ROUNDTABLE - Before Prost, Taranto, and Stark. Appeal from the Trademark Trial and Appeal Board. Continuous-use evidence is not necessarily prima facie evidence of acquired distinctiveness...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

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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

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

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

McAfee & Taft

Utah Yetis: The road to naming a new NHL team hits trademark snag

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In 2024, Utah made its big debut in the National Hockey League, adding a new team to the league and a new reason for fans to get excited. The challenge for the team owner, Uyte, LLC, wasn’t just about building a roster of...more

Snell & Wilmer

Fourth Circuit Holds Additional Evidence Needed to Determine Whether “MOKE” is Generic

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The Fourth Circuit recently vacated and remanded a finding that the term MOKE is generic for certain low-speed, open-air vehicles. This case originated in the Trademark Trial and Appeal Board (“TTAB”) where Moke America LLC...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

Procopio, Cory, Hargreaves & Savitch LLP

Trademark Practice Considerations Following the USPTO 2025 Fee Increases

The U.S. Patent and Trademark Office (USPTO) could see fewer trademark applications filed in numerous Classes with lengthy descriptions of goods and services as a result of an increase in trademark fees and new surcharges...more

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