In MHCS v Les Grands Chais De France (Cancellation No 92075021, 8 March 2024), the Trademark Trial and Appeal Board (TTAB) has granted a petition for cancellation brought by viticulture giant MHCS against a mark owned by the...more
Great Concepts has owned Registration No. 2929764 for DANTANNA’S, in association with “steak and seafood restaurant[s]”, since March 2005. In 2006 Chutter Inc’s predecessor-in-interest, Dan Tana, petitioned to cancel the mark...more
12/20/2023
/ Fraud ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Lanham Act ,
Trademark Application ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Ownership ,
Trademark Registration ,
Trademarks ,
USPTO
In Riseandshine Corporation v PepsiCo Inc (SDNY-1-21-cv-06324), plaintiff Riseandshine Corporation, doing business as Rise Brewing, brought three federal and two state claims relating to trademark infringement and unfair...more
9/26/2023
/ Appeals ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
PepsiCo ,
Remand ,
Summary Judgment ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Registration ,
Trademarks ,
Unfair Competition ,
Unjust Enrichment ,
Vacated
In In re Palacio Del Rio Inc (Serial Nos 88412764 and 88437801), the Trademark Trial and Appeal Board (TTAB) has issued an opinion affirming the refusal of two building design mark applications by Palacio Del Rio Inc (PDR) –...more
The appellants, Interprofession du Gruyère and Syndicat Interprofessionnel du Gruyère, are two consortiums, Swiss and French, that regulate use of the term ‘gruyere’ to refer only to cheeses produced in the Gruyère district...more
5/3/2023
/ Appeals ,
EU ,
Generic Marks ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Summary Judgment ,
Trademark Application ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
In SoClean Inc v Sunset Healthcare Solutions Inc (Case No 21-2311, 9 November 2022), the US Court of Appeals for the Federal Circuit issued a ruling enjoining defendant Sunset from marketing a particular configuration of...more
On December 18, 2021, the final rule implementing the Trademark Modernization Act of 2020 (TMA) went into effect, resulting in one of the most significant amendments to the rules of practice in trademark cases in decades...more
7/7/2022
/ Amended Rules ,
Brand ,
Deadlines ,
Ex Partes Reexamination ,
Expungement ,
Trademark Cancellation ,
Trademark Modernization Act (TMA) ,
Trademark Ownership ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
In Moran, personal representative of the estate of Frankie Edith Kerouac Parker v Edie Parker LLC (Case No 20-cv-12717 (ED Mich), 27 September 2021), the US District Court for the Eastern District of Michigan addressed the...more
The mark must be used “in Commerce” and in good faith in the ordinary course of trade. While the USPTO will generally not conduct an inquiry, the applicant must claim use that qualifies as “Use in U.S. Commerce”.
...more
The mark must be used “in Commerce” and in good faith in the ordinary course of trade. While the USPTO will generally not conduct an inquiry, the applicant must claim use that qualifies as “Use in U.S. Commerce”. What...more
“Intent to use” (“ITU”) trademark applications must be successfully amended to allege use in U.S. Commerce before proceeding to registration. The applicant has six months from the issuance of a Notice of Allowance (“NOA”) or...more
In a non-precedential decision in In re The Crosby Group LLC, Serial 86780353 (April 17 2017), the Trademark Trial and Appeal Board (TTAB) held that there was no likelihood of confusion between the applicant’s CROSBY QUIC-TAG...more
In a precedential decision in In re Fantasia Distribution Inc, Serial 86185623 (September 21 2016), the Trademark Trial and Appeal Board (TTAB) held that a repeating diamond design pattern appearing on an electronic hookah...more
In Royal Crown Company and Dr Pepper/Seven Up Inc v The Coca-Cola Company, Opposition 91178927, each party opposed the other’s trademark applications containing the term ZERO for soft drinks, sports drinks and energy drinks....more
In the United States, federal laws take precedence over state law and common law causes of action where there is an overlap. This lesson was recently learned again in Lions Gate Entertainment Inc v TD Ameritrade Services...more
6/6/2016
/ Advertising ,
Consumer Confusion ,
Copyright ,
Copyright Infringement ,
Copyrightable Subject Matter ,
Corporate Counsel ,
Dismissal With Prejudice ,
Lanham Act ,
Preemption ,
The Copyright Act ,
Trademark Infringement ,
Trademarks ,
Young Lawyers
In the traditional scheme of intellectual property, companies tend to manage their trademark, copyright, and patent portfolios, whether in house or through outside counsel. However, it has become increasingly essential for...more
In In re The Swatch Group Management Services AG (Serial No 85485359, April 18 2014), in a precedential opinion, the Trademark Trial and Appeal Board (TTAB) has affirmed, on the ground of mere descriptiveness, a refusal to...more
Dennis Prahl, partner at Ladas & Parry, discusses how companies can match their trademark expansion with their commercial strategy....more
Dennis Prahl, partner at Ladas & Parry LLP, discusses the role of trademarks in building a global brand....more