Tag Archives: trademark

Circuit Courts Continue To Limit Preclusive Effect of TTAB Decisions

Photo of Kevin WallacePhoto of Nancy R. FrandsenBy Kevin Wallace and Nancy R. Frandsen on 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

Photo of Scott SkilesBy Scott Skiles on 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

Tips for Benefitting from a U.S. Trademark Examiner’s Amendment

Photo of Deborah A. WilcoxPhoto of Gabrial MitchellBy Deborah A. Wilcox and Gabrial Mitchell on Posted in USPTO
Trademark examiners in the U.S. often will reach out to applicants to handle certain amendments to their applications, avoiding the issuance of formal office actions. There are many benefits to working with the examiners, even though the window of opportunity is usually quite short. Notably, prosecution will proceed much more quickly if applicants can take … Continue Reading

USPTO Implementing Trademark Modernization Act

Photo of Kevin WallacePhoto of Deborah A. WilcoxBy Kevin Wallace and Deborah A. Wilcox on 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

Trademark Infringement and Jury Trials in Federal Courts

Photo of Cory BarnesBy Cory Barnes on 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

USPTO Provides Guidance in View of ‘Booking.com’

Photo of Yeshesvini ChandarPhoto of Nancy R. FrandsenPhoto of Lesley GrossbergBy Yeshesvini Chandar, Nancy R. Frandsen and Lesley Grossberg on 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.

Photo of Robert HorowitzBy Robert Horowitz on 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

Congress Passes the Trademark Modernization Act

Photo of Deborah A. WilcoxBy Deborah A. Wilcox on 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

Podcast: Assessing Risks in a Deal, How to Partner with Your Business Team

Photo of Jacqueline LesserBy Jacqueline Lesser on Posted in Podcast
Businesses are not stagnant, and products change both in name and content. Brands are acquired as part of an acquisition, lines are extended in licenses, product lines are extended as businesses change. How do attorneys work with their clients to maintain brand initiatives during business deals and transitions? Jacqueline Lesser will walk through the key issues … Continue Reading

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

Photo of Kevin BovardBy Kevin Bovard on 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

Photo of Kevin WallaceBy Kevin Wallace on 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

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

Photo of Lesley GrossbergBy Lesley Grossberg on Posted in Trademark
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

Photo of Robert HorowitzBy Robert Horowitz on Posted in Trademark
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

Booking.com Remand on USPTO Attorney Fee Issue Portends Closure on Circuit Split

Photo of Lesley GrossbergBy Lesley Grossberg on Posted in Patent
As followers of this blog may recall, in December 2019, the Supreme Court resolved a circuit split as to whether the United States Patent and Trademark Office (USPTO) may recover its “attorneys’ fees” (effectively, the pro rata salaries of its legal personnel) in appeals from the Patent Trial and Appeal Board (PTAB) and Trademark Trial … Continue Reading

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

Photo of Deborah A. WilcoxPhoto of Christina MoserBy Deborah A. Wilcox and Christina Moser on Posted in Trademark
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

Photo of Lisa Bollinger GehmanBy Lisa Bollinger Gehman on Posted in Trademark
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

No Luck Needed for Lucky Brand at the Supreme Court

Photo of Kevin BovardBy Kevin Bovard on Posted in Trademark
The Supreme Court yesterday issued its second trademark decision of this term. In Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc., Case No. 18-1086 (S. Ct. May 14, 2020), the ultimate question before the Court was the applicability of “defense preclusion.” Specifically, the Court considered whether and under what circumstances a defense may be … Continue Reading

[Insert Yell Here]: Rapper Pitbull Receives Trademark Registration for “EEEEEEEYOOOOOO!” Sound Mark

By Savannah Merceus on Posted in Trademark
Platinum-selling music artist Pitbull has received two trademark registrations for a signature yell used in his music. The United States Patent and Trademark Office (USPTO) issued two sound mark registrations, U.S. Reg. Nos. 5877076 and 5877077, for “entertainment services in the nature of live musical performances” and “musical sound recordings; musical video recordings,” respectively. For … Continue Reading

SCOTUS Livestreams Oral Arguments on BOOKING.COM Trademark Registerability

Photo of Deborah A. WilcoxPhoto of Christina MoserBy Deborah A. Wilcox and Christina Moser on Posted in Trademark
On Monday, we listened in real time to the livestreamed Supreme Court oral arguments in the trademark registration case United States Patent and Trademark Office v. Booking.com B.V.  Because of COVID-19, the arguments were done telephonically, but with the added twist of a live broadcast. The event itself was remarkable, considering the impact of the … Continue Reading

A Finding of Willfulness Is Not Required for an Award of Profits in a Trademark Infringement Case

Photo of Nancy R. FrandsenPhoto of Kevin WallacePhoto of Megan CorriganBy Nancy R. Frandsen, Kevin Wallace and Megan Corrigan on Posted in Trademark
The Supreme Court has definitively answered the question of whether a plaintiff in a trademark infringement suit is required to show, as a precondition to a profits award, that a defendant willfully infringed the plaintiff’s trademark. By a unanimous vote, the Supreme Court said NO. In Romag Fasteners, Inc. v. Fossil Group, Inc., Romag, a … Continue Reading

7th Circuit Upholds Trademark ‘Fair Use’ Doctrine

Photo of John MuellerBy John Mueller on Posted in Trademark
In an August 2019 decision, the 7th U.S. Circuit Court of Appeals upheld the earlier finding by the Northern District of Illinois of summary judgment that PepsiCo’s Gatorade division’s use of the phrase “Gatorade The Sports Fuel Company” on its Gatorade family of products did not infringe SportFuel Inc.’s SPORTFUEL trademark because the use of … Continue Reading
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