The New Jersey Turnpike Authority (“NJTA”) was forced to pay a big toll when the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”), dismissed its opposition to a pizza restaurant’s...more
5/30/2018
/ Intellectual Property Protection ,
Likelihood of Confusion ,
Logos ,
Restaurant Industry ,
Trademark Application ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
Transportation Industry
In a precedential decision, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (“TTAB” or the “Board”) affirmed a refusal to register the logo...more
The Court of Appeals for the Federal Circuit recently extended First Amendment protections for trademark applications in In re Brunetti, No. 15-1109 (Fed. Cir. December 15, 2017), ruling that Section 2(a) of the Lanham Act’s...more
12/28/2017
/ Appeals ,
Constitutional Challenges ,
Disparagement ,
Fashion Design ,
Fashion Industry ,
First Amendment ,
Free Speech ,
Intellectual Property Protection ,
Lanham Act ,
Matal v Tam ,
Scandalous/Immoral Marks ,
Trademark Registration ,
Trademarks ,
USPTO
It is natural for manufacturers to seek to widen their intellectual property protection. In the seminal case TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 US 23 (2001), the Supreme Court struck down the plaintiff’s...more
In a 54 page decision issued on September 6, 2017, the Trademark Trial and Appeal Board (the “Board”) ended (again) a long-standing dispute between snack food makers Frito-Lay, Inc. (“Frito”) and Princeton Vanguard, LLC...more
In a unanimous (albeit fractured) decision written by Justice Alito, the United States Supreme struck down a provision of the Lanham (Trademark) Act barring registration of “disparaging” trademarks, handing a victory to...more
6/21/2017
/ Disparagement ,
First Amendment ,
Football ,
Free Speech ,
Lanham Act ,
Matal v Tam ,
Music Industry ,
NFL ,
Redskins ,
SCOTUS ,
Team Mascots ,
The Slants ,
Trademark Registration ,
Trademarks ,
USPTO
Calling the district court’s action an “abuse of discretion,” the 11th Circuit reversed a decision that cut by more than 90 percent a successful copyright infringement plaintiff’s request for attorney’s fees and costs. Yellow...more
The United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) recently dismissed Luxco, Inc.’s (“Luxco”) opposition to registration of the mark TEQUILA (in standard character format) by an...more
The United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) cancelled the registration for the mark PORTÓN last week, finding it to be confusingly similar to the senior mark PATRÓN. Patrón...more
The United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) modified its treatment of the “family of trademarks” doctrine in the recent case In re LC Trademarks, Inc., Serial No. 85890412...more
1/16/2017
/ Ex Parte ,
Fast-Food Industry ,
Franchises ,
Hitachi ,
Intellectual Property Protection ,
Popular ,
Technology Sector ,
Trademark Application ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
The Supreme Court denied review of the 2d Circuit decision on the Stolichnaya trademark....more
The Supreme Court rejected the effort by the Washington Redskins to skip the 4th Circuit and Join the hearing of the USPTO appeal of the SLANTS case....more
10/5/2016
/ Disparagement ,
First Amendment ,
Football ,
Free Speech ,
Music ,
Music Industry ,
NFL ,
Redskins ,
SCOTUS ,
Sports ,
The Slants ,
Trademark Registration ,
Trademarks ,
USPTO
The Supreme Court granted the United States Patent and Trademark Office’s petition for certiorari in In re Tam, 117 USPQ2d 1101 (Fed. Cir. 2016). In that case, the USPTO denied registration of an application to register the...more
10/3/2016
/ Disparagement ,
First Amendment ,
Football ,
Free Speech ,
Lanham Act ,
Music ,
Music Industry ,
Petition for Writ of Certiorari ,
Redskins ,
SCOTUS ,
The Slants ,
Trademark Registration ,
Trademarks ,
USPTO
The Southern District of New York recently booted shoe manufacturer LVL XIII Brands, Inc.’s trade dress infringement suit against Louis Vuitton Malletier S.A. in LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.. At issue...more
9/22/2016
/ Fashion Branding ,
Fashion Design ,
Fashion Industry ,
Intellectual Property Protection ,
Lanham Act ,
Louis Vuitton ,
Retail Market ,
Summary Judgment ,
Trade Dress ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
USPTO
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
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
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
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
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
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
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
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
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
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
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