Rachel Rudensky

Rachel Rudensky

Akerman LLP

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Nominative Fair Use: The Second Circuit Joins Neither The Third Nor Ninth Circuits In Its Approach

In an important decision delineating the boundaries of fair use of another person’s trademark, the Second Circuit announced a standard by which nominative fair use of a trademark will be evaluated in that Circuit in...more

5/30/2016 - Fair Use Lanham Act Popular Trademark Infringement Trademarks USPTO

Nominative Fair Use: The Second Circuit Joins Neither The Third Nor Ninth Circuits In Its Approach

In an important decision delineating the boundaries of fair use of another person’s trademark, the Second Circuit announced a standard by which nominative fair use of a trademark will be evaluated in that Circuit in...more

5/25/2016 - Fair Use Summary Judgment Trademark Infringement Trademark Litigation Trademarks USPTO

Generic Churrascos at the Federal Circuit

The Federal Circuit recently provided additional guidance concerning whether an applied-for mark is generic in In re Cordua Restaurants, Inc., (May 13, 2016). This case stemmed from the United States Patent and Trademark...more

5/18/2016 - Generic Lanham Act Restaurant Industry Trademark Registration Trademark Trial and Appeal Board Trademarks USPTO

En Banc Reconsideration Sought in FLANAX Case

Belmora LLC filed a petition for reconsideration en banc of the Fourth Circuit’s FLANAX decision in Belmora LLC v Bayer Consumer Care AG, Appeal No. 15-1335 (4th Cir. March 23, 2016). As we previously have blogged...more

5/17/2016 - Bayer En Banc Review Lanham Act Trademark Litigation Trademarks

USPTO Drops 11th Circuit Appeal of ND Alabama Order In Houndstooth Case

We previously blogged on Judge Proctor’s (ND Ala.) order directing the United States Patent and Trademark Office (the “Board”) to comply with the Court’s prior order, approving a settlement agreement between the University of...more

5/17/2016 - Appeals School Sports Settlement Agreements Trademarks USPTO

In re Tam Redux Redux: Redskins Petition for Certiorari, Trying to Skip 4th Cir.

In response to the United States Patent and Trademark Office’s (“USPTO”) petition for writ of certiorari in to the U.S. Supreme Court In re Tam (“THE SLANTS” case), the owners of the Washington Redskins filed their own...more

5/2/2016 - Blackhorse v Pro-Football Disparagement Due Process Fifth Amendment Football Native American Issues NFL Petition for Writ of Certiorari Redskins The Slants Trademark Trial and Appeal Board Trademarks USPTO

In re Tam Redux: The PTO seeks Certiorari

On April 20, 2016, the United States Patent and Trademark Office (“PTO”) filed a petition for a writ of certiorari to the Federal Circuit seeking Supreme Court review of that Court’s decision in In re Tam, 117 USPQ2d 1001...more

4/25/2016 - Disparagement First Amendment Free Speech Lanham Act Petition for Writ of Certiorari SCOTUS Strict Scrutiny Standard The Slants Trademark Registration Trademark Trial and Appeal Board Trademarks Unconstitutional Condition USPTO

FLANAX: Protecting Foreign Marks from US Unfair Competition Under Section 43(a)

In today’s increasingly global economy, trademark owners are more frequently butting up against the territorial limitations of trademark law. It has long been a matter of black letter law that trademark rights are...more

4/18/2016 - Bayer False Advertising False Association Foreign Trademark Lanham Act Patent Litigation Pharmaceutical Industry Pharmaceutical Patents Trademark Registration Trademarks Unfair Competition USPTO

TTAB Finds That Coexistence Agreement Does Not Support Coexistence

In a decision bound to impact trademark prosecution practice in the future, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) recently found that a consent agreement between a...more

3/4/2016 - Consent Agreements Corporate Counsel Likelihood of Confusion Trademark Trial and Appeal Board Trademarks USPTO Young Lawyers

The Hound’s-Tooth Bites Back: The Ghost of Paul “Bear” Bryant

Recently, a District Court judge issued a scathing rebuke to the United States Patent and Trademark Office in Board of Trustees of the University of Alabama et al. v. Houndstooth Mafia Enterprises LLC, (N.D. Alabama February...more

3/1/2016 - Lanham Act School Sports Trademark Application Trademark Litigation Trademark Trial and Appeal Board USPTO Young Lawyers

Stolichnaya: Comity or Confiscation; and Is That For US Courts to Decide?

The Second Circuit recently issued its latest ruling in a long-running legal battle over the trademark rights to the STOLICHNAYA trademark. In this latest decision in the 12-year dispute, the Court ruled that an agency of the...more

1/14/2016 - Foreign Sovereigns Lanham Act Standing Trademark Infringement Trademark Litigation Wine & Alcohol

In re Tam: Section 2(a) Unconstitutional Under The First Amendment

In a landmark First Amendment decision relating to the Lanham (Trademark) Act, the Federal Circuit, en banc, struck down § 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), the statutory provision barring registration of...more

12/29/2015 - Disparagement First Amendment Lanham Act Strict Scrutiny Standard Trademarks

In re Tam: Section 2(a) Unconstitutional Under The First Amendment

In a landmark First Amendment decision relating to the Lanham (Trademark) Act, the Federal Circuit, en banc, struck down § 2(a) of the Lanham Act, 15 U.S.C.  § 1052(a), the statutory provision barring registration of...more

12/28/2015 - Disparagement First Amendment Free Speech Lanham Act Trademark Registration

TTAB Makes Double Brown Ale Open to Nut Sack Mark

In a ruling bound to please 15 year-old boys everywhere, the USPTO Trademark Trial and Appeal Board (“TTAB”) reversed the Examining Attorney’s refusal to register the trademark NUT SACK DOUBLE BROWN ALE (in standard character...more

11/5/2015 - Beer Breweries Corporate Counsel Lanham Act Offensive Language Trademark Act Trademark Application Trademark Infringement Trademark Litigation Trademark Registration Trademark Trial and Appeal Board Trademarks USPTO Wine & Alcohol Young Lawyers

North Face Scales Sanyang Applications For Clothing and Services

In The North Face Apparel Corp. v. Sanyang Industry Co., Ltd., Opp. No. 91187593 (September 18, 2015), the Trademark Trial and Appeal Board (“TTAB”) handed The North Face Apparel Corp. (“The North Face”) significant victories...more

9/30/2015 - Auto Manufacturers Automotive Industry Fashion Branding Fashion Design Fashion Industry Motion to Amend Retail Market Trademark Infringement Trademark Litigation Trademark Registration Trademark Trial and Appeal Board Trademarks

A Wolf in Swiss Clothing: TTAB Finds No Bona Fide Intent to Use

The number of successful oppositions against trademark applications based on a claim that the applicant had “no bona fide intent to use” has been increasing in recent years. On September 10, 2015, in Swiss Grill Ltd. v. Wolf...more

9/18/2015 - Intent-to-Use Trademark Application Trademark Infringement Trademark Litigation Trademark Trial and Appeal Board Trademarks

Federal Circuit Shows No Peace & Love to the TTAB

This case arose from GS Enterprises, LLC’s (“GS”) opposition to the registration of Juice Generation, Inc.’s (“Juice Generation”) trademark. In finding a likelihood of confusion with GS’s marks, the Board below reasoned that...more

7/23/2015 - Design Patent DuPont Trademark Litigation Trademark Registration Trademark Trial and Appeal Board Trademarks

When Theft is not a Federal or State Crime

In the most recent ruling in a lengthy and procedurally complex criminal case, a New York trial court dismissed a computer programmer’s criminal conviction under New York’s Unlawful Use of Secret Scientific Material law for...more

7/13/2015 - Aleynikov Appeals Convictions Corporate Counsel Criminal Prosecution Dismissals Economic Espionage Act Foreign Commerce Goldman Sachs High Frequency Trading Source Code US v Aleynikov Young Lawyers

Protection of Identities Not Identical Under Lanham Act §§ 43(a) and 2(a)

In Tartell v. South Florida Sinus and Allergy Center, Inc., the Eleventh Circuit reversed the district court’s finding that the plaintiff’s personal name had acquired distinctiveness as a trademark and that the defendant...more

6/26/2015 - Inherently Distinctive Lanham Act Trademark Infringement Trademarks

Heinz Seeks “Smart” De Novo Review In Light Of B&B Hardware

H.J. Heinz Co. (“Heinz”) filed a federal lawsuit recently against Boulder Brands USA (“Boulder”) seeking to vacate and reverse a Trademark Trial and Appeal Board decision finding that Boulder’s SMART BALANCE trademark is not...more

6/3/2015 - B&B Hardware v Hargis Industries De Novo Standard of Review Heinz Issue Preclusion Likelihood of Confusion Trademark Trial and Appeal Board Trademarks

The House That Juice Built: TTAB Denies Registration To Parodies

On May 8, 2015, the Trademark Trial and Appeal Board (the “Board”) issued a resounding blow to trademark applicants who seek to register others’ trademarks as parodies. In New York Yankees Partnership v. IET Products and...more

5/13/2015 - Fair Use Lanham Act Parody Popular Trademark Trial and Appeal Board Trademarks

B&B Hardware: Sometimes, Not Always, Not Never

The Supreme Court issued its second trademark ruling of the term on Tuesday, ruling that federal court decisions on “likelihood of confusion” sometimes can be precluded by earlier rulings about trademark registrability issued...more

3/27/2015 - B&B Hardware v Hargis Industries Issue Preclusion Likelihood of Confusion SCOTUS Trademark Infringement Trademark Trial and Appeal Board Trademarks

B&B Hardware: Sometimes, Not Always, Not Never

The Supreme Court issued its second trademark ruling of the term on Tuesday, ruling that federal court decisions on “likelihood of confusion” sometimes can be precluded by earlier rulings about trademark registrability issued...more

3/27/2015 - B&B Hardware v Hargis Industries Issue Preclusion Likelihood of Confusion SCOTUS Trademark Infringement Trademark Trial and Appeal Board Trademarks

Lucky Brand Not So Lucky

The Second Circuit ruled last week in favor of Plaintiff Marcel Fashion Group Inc. (“Marcel”), vacating the trial court’s grant of summary judgment in favor of Defendant Lucky Brand Dungarees, Inc. (“Lucky Brand”), which had...more

3/16/2015 - Fashion Branding Fashion Industry Res Judicata Retailers Trademark Infringement Trademark Litigation Trademarks Unfair Competition

Overclaiming in Trademark Applications: “Full Line of …”

In Ferring B.V. v. Fera Pharmaceuticals, LLC, the Eastern District of New York was called upon to determine the importance of the United States Patent and Trademark Office’s Trademark Manual of Examining Procedure (“TMEP”)...more

1/20/2015 - Applications False Statements Fraud Pharmaceutical Industry Pleadings Trademark Infringement Trademarks USPTO

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