Archives: Trademark

Subscribe to Trademark RSS Feed

Supreme Court Calls for Views of Solicitor General on Petition Involving International Reach of U.S. Trademark Law

This morning, the Supreme Court called for the views of the Solicitor General on the pending petition for writ of certiorari in Abitron Austria GmbH v. Hetronic International, Inc. In Abitron, the Court of Appeals for the Tenth Circuit allowed the plaintiff trademark owner to recover damages not only for the defendants’ sales of infringing … Continue Reading

While CBD is Widely Available, Registering Marks for Ingestibles with CBD is Not

In two recent decisions, the Trademark Trial and Appeal Board (TTAB) made it abundantly clear that attempting to register a mark for ingestibles containing cannabidiol (CBD) likely will be an exercise in futility. In In re Harbor Hemp Company LLC, SNs 88377702 and 88377730 (TTAB Jan. 27, 2022) [not precedential] and In re AgrotecHemp Corp., … Continue Reading

USPTO Sanctions Chinese Law Firm for Fraud and Terminates More Than 15,000 US Trademark Applications

On Dec. 10, 2021, the U.S. Patent and Trademark Office (USPTO) issued a precedential Final Order for Sanctions against Chinese practitioner and law firm Yusha Zhang and Shenzhen Huanyee Intellectual Property Co., Ltd. for filing more than 15,000 applications and other submissions that were deemed fraudulent. The USPTO described the mass filings as “[a] scheme … Continue Reading

Thinking of Registering a Service Mark That Primarily Benefits Your Company? Think Again

If you are contemplating registering a service mark that primarily benefits your company and not others, don’t bother; it will be refused registration. This issue was recently addressed by the Trademark Trial and Appeal Board (TTAB) in In re California Highway Patrol, SN 88796327 (TTAB Nov. 4, 2021) [not precedential] (CHiP). In CHiP, the TTAB … Continue Reading

Circuit Courts Continue To Limit Preclusive Effect of TTAB Decisions

On Sept. 17, 2021, the Third Circuit Court of Appeals became the latest Circuit Court to limit the preclusive effect of Trademark Trial & Appeal Board (“TTAB”) decisions. In 2015, the Supreme Court, in B&B Hardware,[1] decided in a 7-2 vote that issues decided in TTAB proceedings may have preclusive effect if the elements of … Continue Reading

No Wrong Notes: Federal Circuit’s Piano Factory Decision Holds TTAB in Tune with Arthrex

This blog previously reported[1] that on June 21, 2021, the Supreme Court issued its landmark decision in United States v. Arthrex, Inc., holding – in Chief Justice Roberts’ 5-4 opinion – that “the unreviewable authority wielded by [administrative patent judges, or APJs] during inter partes review [IPR] is incompatible with their appointment by the Secretary … Continue Reading

SY Custom, Inc. v. The Tailory, LLC: How To Fail Proving a Genericness Case Before the TTAB

Recently, the Trademark Trial and Appeal Board (TTAB) decided against a petitioner seeking to cancel a registration on the Supplemental Register in SY Custom, Inc. v. The Tailory, LLC, Cancellation No. 92070568 (TTAB Aug. 12, 2021) (not precedential). The mark involved was THE TAILORY for “custom tailoring or dressmaking.” The case is noteworthy about how … Continue Reading

Lost Profits or Disgorgement?

In trademark infringement cases involving competitors, the plaintiff typically seeks damages in the form of lost profits once infringement has been proven. The purpose of “lost profits” is to compensate the plaintiff for its losses. In contrast, disgorgement requires a defendant to give up all profits it has made as a result of illegal or … Continue Reading

USPTO Implementing Trademark Modernization Act

Earlier this month, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rule-making[1] to implement provisions of the Trademark Modernization Act (TMA), which Congress passed in December 2020.[2] The public has until July 19, 2021, to comment on the proposed rule-making before implementation. The proposed rules create new nonuse cancellation procedures, … Continue Reading

Trademark Infringement and Jury Trials in Federal Courts

When plaintiffs assert trademark infringement and related actions under the Lanham Act (or state law counterparts), more often than not the complaint will include a demand for a jury trial on all issues so triable, as is standard practice. However, if discovery ultimately reveals, or dispositive motion practice confirms, that a plaintiff has suffered no … Continue Reading

Blacklist Complaints: A Novel Tool Against Bad-Faith Trademark Applicants in China

Bad-faith trademark filings can pose a painful obstacle to brand owners’ attempts to register and enforce trademark rights in China. Traditionally, trademark owners have needed to file a broad range of defensive applications, oppose dozens of bad-faith filings as they are published, and/or undertake massive invalidation campaigns against existing bad-faith registrations. These actions are resource-intensive … Continue Reading

USPTO Provides Guidance in View of ‘Booking.com’

On June 30, 2020, the Supreme Court of the United States decided USPTO v. Booking.com B.V., rejecting a rule that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is automatically generic.[1] Booking.com arose from the U.S. Patent and Trademark Office’s (USPTO) refusal to register the … Continue Reading

Considering a Common Phrase as a Trademark? Don’t Expect it to be Registrable.

There have been a number of recent Trademark Trial and Appeal Board (TTAB) cases involving phrase marks. In all instances, the phrases have been refused registration not because of descriptiveness or misdescriptiveness of any kind, but because they fail to function as trademarks due to their informational characteristics and widespread use. This blog provides the … Continue Reading

Third Circuit Finds Pocky Trade Dress Functional, Not Protectable

Product configurations, including cookie shapes, are protectable as trade dress only to the extent the product features are incidental, arbitrary, or ornamental aspects that identify the product’s source. Functional product features are never protectable as trade dress. These tenets of trade dress law were recently affirmed by the U.S. Court of Appeals for the Third … Continue Reading

Congress Passes the Trademark Modernization Act

On Monday as part of the Consolidated Appropriations Act for 2021 that included the COVID-19 relief package, Congress passed the Trademark Modernization Act, which President Trump is expected to sign. With respect to trademark infringement litigation, the act restores the rebuttable presumption of irreparable harm to support injunctive relief on proof of trademark infringement. The … Continue Reading

Federal Circuit Clarifies Standard For Bringing a Cancellation Proceeding under 15 U.S.C. § 1064

In a recent decision, Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020), the Court of Appeals for the Federal Circuit clarified the standard for maintaining a petition to cancel a trademark registration under §1064 of the Lanham Act.  The Federal Circuit noted that while these questions are often framed as questions of … Continue Reading

Wielding Trademark Rights to Fight COVID-19 Scams

Trademark owners are wielding their intellectual property rights to stop COVID-19 scams and prevent the spread of misinformation about the ongoing pandemic. With the injunctive power of the Lanham Act, medical supply companies, software companies and even educational institutions are able to quash scams and misinformation. Earlier this year, 3M launched what has grown into … Continue Reading

Is Your Trademark Portfolio Brexit-Ready? Steps to Take Now to Ensure a Smooth Transition

While the UK formally left the EU on January 31, 2020, “Exit Day” will occur on December 31, 2020. Are your trademarks ready? This article provides a brief checklist of considerations as we approach the hard exit date at the end of this year. For existing European Union Trade Mark (EUTM) registrations, each registration will … Continue Reading

CAFC Holds the Lack of a Property Interest in a Trademark Does Not Prevent the Commencement of a Cancellation Proceeding

The Court of Appeals for the Federal Circuit (“CAFC”), in a 2-1 vote, held in Australian Therapeutic Supplies Pty., Ltd. v. Naked TM, LLC, Appeal No. 2019-1567 (Fed.Cir. July 27, 2020) (accessible at http://www.cafc.uscourts.gov/node/26425), that a property interest in a mark is unnecessary for a cancellation petitioner to establish a statutory right to commence a … Continue Reading

SCOTUS Holds that ‘generic.com’ Trademarks Like Booking.com May Be Capable of Registration

Today, the Supreme Court issued its opinion in the trademark registration case United States Patent and Trademark Office v. Booking.com B.V., holding “A term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.” Justice Ginsburg delivered the majority opinion, in which justices … Continue Reading

Fast-Track Examination for COVID-19-Related Trademarks and Service Marks

The U.S. Patent and Trademark Office (USPTO) issued a notice on June 12 announcing a new, accelerated examination program for certain COVID-19-related trademark applications. The USPTO will begin accepting petitions for fast-track examination on June 16, 2020. This is great news for those developing and researching new products to help combat COVID-19. Applications are typically … Continue Reading
LexBlog