Trademarks, Reversal, Trademark Trial and Appeal Board

Kissing cousins? SUNKIST and KIST deemed confusingly similar

McDermott Will & Schulte on 7/31/2025

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

Federal Circuit Reverses TTAB Decision Based on Dissimilar House Marks

BakerHostetler on 6/17/2025

On June 13, the Federal Circuit reversed the Trademark Trial and Appeal Board (TTAB or Board) nonprecedential decision finding no likelihood of confusion between opposer Château Lynch-Bages’ and applicant Château Angélus...more

What’s Trending in Trademarks, August 2024: What Constitutes an Abandoned Mark? How Famous is Cognac?

Erise IP on 8/23/2024

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: Fourth...more

And All That Jazz: Trademark Used for One Service Doesn’t Permit Tacking for Others

McDermott Will & Schulte on 4/14/2023

Reversing the Trademark Trial & Appeal Board’s decision to dismiss an opposition, the US Court of Appeals for the Federal Circuit addressed the requirements for a trademark owner to employ “tacking” based on the use of a mark...more

Took a DNA Test, Turns Out “100% THAT BITCH” Is Registrable

McDermott Will & Schulte on 2/17/2023

Addressing a refusal to register for failure to function as a trademark, the Trademark Trial & Appeal Board (Board) reversed, finding that the evidence of consumer perception of “100% THAT BITCH” did not demonstrate that the...more

MarkIt to Market® - November 2020: Paradise Found – TTAB Reverses a Failure-to-Function Refusal

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 12/3/2020

Trademark practitioners were pleasantly surprised this month when the Trademark Trial and Appeal Board issued a rare reversal of a “failure-to-function” refusal, which has become an increasingly more common hurdle for...more

MarkIt to Market® - November 2020

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 12/2/2020

[co-author: Joseph Diorio, Law Clerk] The November 2020 issue of Sterne Kessler's MarkIt to Market® newsletter discusses a rare failure-to-function refusal reversal at the TTAB, Google's efforts to combat counterfeit goods,...more

MarkIt to Market® - April 2020: Color Marks for Product Packaging CAN Be Inherently Distinctive - What This Means for Your Brand...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 5/6/2020

Earlier this month, the Federal Circuit issued a precedential ruling on the question of whether a color mark for product packaging can ever be inherently distinctive, holding that the Trademark Trial and Appeal Board (TTAB)...more

Supreme Court Holds Ban on Immoral or Scandalous Trademarks Unconstitutional

Akerman LLP - Marks, Works & Secrets on 7/1/2019

On June 24, 2019, the United States Supreme Court, in Iancu v. Brunetti, reviewing the trademark application for “FUCT”, held that the Lanham’s Act’s provision, prohibiting the registration of “immoral[] or scandalous”...more

Supreme Court Rules Ban on ‘Immoral or Scandalous’ Trademarks Unconstitutional

ArentFox Schiff on 7/1/2019

On Monday, the Supreme Court held that the ban on “immoral or scandalous” trademarks was unconstitutional under the First Amendment. The Court found that, as with the recently struck down ban on “disparaging” marks, the ban...more

SCOTUS on Swearing: Lanham Act Violates First Amendment by Prohibiting Registration of Immoral or Scandalous Trademarks

Ballard Spahr LLP on 6/27/2019

The Supreme Court unanimously held on June 24, 2019, that the Lanham Act’s prohibition on registering “immoral” trademarks with the U.S. Patent and Trademark Office (USPTO) infringes upon the First Amendment because such a...more

US Supreme Court Strikes Down Ban of ‘Scandalous’ Trademarks

Skadden, Arps, Slate, Meagher & Flom LLP on 6/26/2019

On June 24, 2019, the U.S. Supreme Court ruled, in a 6-3 decision in Iancu v. Brunetti, 588 U.S. ____ (2019), that Section 2(a) of the Lanham Act’s ban on the registration of “immoral” or “scandalous” trademarks violates the...more

Federal Circuit Reminds Us That Extrinsic Considerations Are Narrowly Construed in Trademark Matters

International Lawyers Network on 5/9/2019

2018 saw a number of important trademark cases decided across the United States. Two cases illustrated the similarities between genericness analysis and one of the likelihood of confusion factors considered by the Trademark...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

Schwabe, Williamson & Wyatt PC on 8/15/2017

This was a busy week for precedential cases at the Circuit. In AIA v. Avid, the Circuit rules that there is no right to a jury trial as to requests for attorney fees under § 285. In Romag v. Fossil, a majority rules that the...more

Free speech legal battle changes law on disparaging trademarks

McAfee & Taft on 7/14/2017

Last month, in Matal v. Tam, the U.S. Supreme Court affirmed the Federal Circuit Court of Appeal’s decision that struck down a portion of Section 2(a) of the Lanham Act....more

How Much Fame Is Enough?

Dorsey & Whitney LLP on 6/19/2017

In its recent decision in Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, the Court of Appeals for the Federal Circuit clarified the proper interpretation of the fame of the mark factor in determining whether there...more

More Than Zero: Under the Lanham Act, One Interstate Sale Qualifies as Actual Use of a Trademark in Commerce

Knobbe Martens on 11/21/2016

In 2009, the U.S. Patent and Trademark Office rejected shoe manufacturer Adidas’s application to trademark the phrase “ADIZERO,” due to a likelihood of confusion with an existing mark: “ADD A ZERO,” a clothing trademark held...more

Federal Circuit Opens Door to Registration of Immoral, Scandalous, and Disparaging Trademarks

Clark Hill PLC on 12/22/2015

The Federal Circuit today held that Section 2(e) of the Trademark Act, which prevented the registration of immoral, scandalous, or disparaging marks, is unconstitutional. In the view of the majority of the full Federal...more

Rare TTAB §2(d) Reversal Where Examiner Failed to Heed Rules of Evidence

Fish & Richardson on 10/19/2015

While browsing back issues of the indispensable Allen’s Trademark Digest, the blurb for the Trademark Trial & Appeal Board’s decision in the appeal In re Micros Systems, Inc. caught my eye. It was a rarely-seen reversal of an...more

Pretzel Logic: Federal Circuit holds that TTAB Failed to Consider Mark as a Whole

An application to register PRETZEL CRISPS as a mark will live another day, thanks to a Federal Circuit opinion reversing a TTAB decision that had canceled the mark on grounds of genericness....more

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