Cathy Dahl on Trademark Application

Rap Music and Cognac: The Federal Circuit Considers if the Mix is Strong Enough to Protect Cognac as a Geographic Indicator

In March 2019, Cologne & Cognac Entertainment of New Jersey filed a trademark application at the USPTO for recordings featuring music and artistic performances, music composition services, production of musical videos in the...more

7/22/2024 / Administrative Law Judge (ALJ) , Entertainment Industry , Exports , Geographical Certification Marks , Geographically Descriptive , Goods or Services , Intellectual Property Protection , Trademark Application , Trademarks , USPTO

Beyoncé Trademark Case Provides Evidentiary Lessons Before the TTAB

Veronica Morales, a wedding/event planner providing services under the trademark BLUE IVY, has unsuccessfully challenged a pending application for the mark BLUE IVY CARTER, filed by BGK Trademark Holdings, LLC (Beyoncé...more

8/11/2020 / Beyonce , Celebrities , Corporate Counsel , Discovery , Discovery Disputes , Evidence , Intent-to-Use , Trademark Application , Trademark Trial and Appeal Board , Trademarks

DuPont Factors of Likely Confusion – Long Term Co-Existence Without Confusion Deserves Consideration by TTAB

Recently, the Court of Appeals for the Federal Circuit vacated and remanded to the Trademark Trial and Appeal Board a decision on an ex parte appeal regarding a likelihood of confusion between the applicant’s mark GUILD...more

3/14/2019 / Appeals , DuPont Factors , Ex Parte , Likelihood of Confusion , Remand , Trademark Application , Trademark Registration , Trademark Trial and Appeal Board , Trademarks , Vacated

Will TTAB’s First Precedential Decision of 2018 Lead to Better Quality Examination of Statements of Use?

In January 2015, Pitney Bowes filed an intent-to-use trademark application for the logo shown here for use with mailing services, including postal delivery, parcel delivery, and delivery of mail to post offices for posting...more

2/7/2018 / Examination Procedures , Intent-to-Use , Office Actions , Trademark Application , Trademark Manual of Examining Procedure (TMEP) , Trademarks , Use in Commerce , USPTO

Booking it to the District Court

A recent decision out of the federal district court for the Eastern District of Virginia overturned in part the Trademark Trial and Appeal Board’s decision that the mark “Booking.com” is not registrable on the basis that the...more

9/15/2017 / Acquired Distinctiveness , Booking.com , Generic Marks , Litigation Strategies , Trademark Application , Trademark Registration , Trademark Trial and Appeal Board , Trademarks , USPTO

Improper Assignment of THE EMERALD CITY Mark – Registration Cancelled in Toto

Assignment of an intent-to-use trademark application can be fraught with risk. To deter “trafficking” in ITU applications, Section 10 of the Lanham Act prohibits the assignment of an ITU application before an amendment to...more

2/24/2017 / Intent-to-Use , IP Assignment Agreements , Lanham Act , Trademark Application , Trademark Opposition Proceedings , Trademark Trial and Appeal Board , Use in Commerce

Supplemental Registrations – Actually Worth a Hill of (Coffee) Beans

The potential defensive value of a registration on the Supplemental Register is highlighted in a recent opinion of the Trademark Trial and Appeal Board, In re Morinaga Nyugyo Kabushiki Kaisha. While we often think of...more

10/24/2016 / Geographically Descriptive , Lanham Act , Likelihood of Confusion , Supplemental Register , Trademark Application , Trademark Trial and Appeal Board

Cathy Dahl

Dorsey & Whitney LLP

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