Archives: Trademark

Holiday Sayings – Who Owns Them?

By Deborah A. Wilcox and Lisa Bollinger Gehman on December 21, 2022 Posted in Trademark

As the holiday season is now upon us, one may wonder: Are general sayings about Christmas, Hanukkah, and other holidays protectible as trademarks? Or are these sayings free for anyone to use on things like sweatshirts and coffee mugs? The answer is, of course, the classic, “It depends.” But a review of singer Mariah Carey’s … Continue Reading

Marks That Are Opposites Sometimes Attract Refusal of Registration

By Robert Horowitz on December 20, 2022 Posted in Trademark

When considering a likelihood of confusion, one might naturally think a mark is registrable that is an antonym (opposite) of a registered mark. This was not the result in In re Sugar Free Specialties, LLC, Serial No. 90706411 (TTAB Dec. 7, 2022) (not precedential). In Sugar Free Specialties, the applicant sought registration of “SMALL WINS” … Continue Reading

Solicitor General Recommends that Supreme Court Accept Review of Case Involving Extraterritorial Reach of U.S. Trademark Law

By Andrew Samuels on September 28, 2022 Posted in Trademark

In a May 2022 post, we noted that the Supreme Court called for the views of the Solicitor General on whether to accept review of Abitron Austria GmbH v. Hetronic International, Inc., a case involving the international reach of U.S. trademark law. The issue is whether a U.S. trademark owner can recover damages for infringing … Continue Reading

Chicago Cubs score home run in their opposition against a stylized version of the letter “C”

By Robert Horowitz on July 26, 2022 Posted in Trademark

In many countries, marks such as single letters or numerals are considered nondistinctive. This is not so in the US, which has a very broad definition of what comprises a trademark in 15 U.S.C. Section 1127: A trademark is any word, name, symbol, or design, or any combination thereof, used in commerce to identify and … Continue Reading

Decentralized Domains: Metaverse Land Grab

By Lisa Bollinger Gehman, Kevin Wallace and Deborah A. Wilcox on June 1, 2022 Posted in Trademark

As the metaverse continues to become a more established marketplace, and consumers become more familiar with non-fungible tokens (NFTs), NFT marketplaces, decentralized domains, bitcoin, crypto wallets and the blockchain, it is no surprise that intellectual property (IP) owners are starting to see an increase in unauthorized uses of their trademarks and copyrights. There is a … Continue Reading

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

By Andrew Samuels on May 2, 2022 Posted in Trademark

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

By Robert Horowitz on February 23, 2022 Posted in Trademark

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 Implements Trademark Modernization Act

By Lisa Bollinger Gehman and Deborah A. Wilcox on December 23, 2021 Posted in Patents, Trademark, USPTO

Earlier this month, certain regulations implementing the Trademark Modernization Act (TMA) went into effect. Per the final rule, the new tools are primarily to clear the “deadwood” – that is, unused registered trademarks – from the Registry and are now available for use. A summary of the changes follows:… Continue Reading

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

By Lisa Bollinger Gehman on December 22, 2021 Posted in Trademark, USPTO, USPTO Litigation

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

By Robert Horowitz on November 15, 2021 Posted in Trademark, USPTO, USPTO Litigation

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

By Kevin Wallace and Nancy R. Frandsen on September 22, 2021 Posted in Music Industry, Patent, Patents, Trademark, USPTO

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

By Scott Skiles on September 21, 2021 Posted in Federal Circuit, Patents, Trademark, USPTO

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

By Robert Horowitz on August 24, 2021 Posted in Trademark

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?

By Chunmeng Yang on August 16, 2021 Posted in Intellectual Property, Trademark

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

By Kevin Wallace and Deborah A. Wilcox on May 27, 2021 Posted in Trademark

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

Good Faith De Minimis Use of a Mark May Defeat a Claim of Trademark Abandonment in the Fifth Circuit

By Robert Horowitz on May 11, 2021 Posted in Trademark

In Perry v. H.J. Heinz Company, et al. (No. 20-30418 5th Cir. April 12, 2021), the U.S. Court of Appeals for the Fifth Circuit dealt with the issue of whether de minimis use can defeat a claim of trademark abandonment. It can, provided that such use is not made in good faith and not simply … Continue Reading

Trademark Infringement and Jury Trials in Federal Courts

By Cory Barnes on April 6, 2021 Posted in Trademark

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

By Lesley Grossberg and Deborah A. Wilcox on March 18, 2021 Posted in Trademark

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’

By Yeshesvini Chandar, Nancy R. Frandsen and Lesley Grossberg on February 22, 2021 Posted in Trademark, USPTO

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.

By Robert Horowitz on February 16, 2021 Posted in Trademark

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

By Lesley Grossberg on February 5, 2021 Posted in Trademark

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

By Deborah A. Wilcox on December 23, 2020 Posted in Trademark

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

By Kevin Bovard on December 2, 2020 Posted in Trademark

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

By Kevin Wallace on October 30, 2020 Posted in Trademark

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