As we wrote in Part 1 of this series, the Trademark Modernization Act of 2020 (“TMA”) was signed into law on December 27, 2020, and contained several significant amendments to the Lanham Act. This post will cover three of the...more
Two recent decisions from the Western District of North Carolina in Winestore Holdings LLC v. Justin Vineyards & Winery LLC provide a tasting of the requirements for bringing a declaratory judgment action for non-infringement...more
Most opposition proceedings in the Trademark Trial and Appeal Board of the USPTO settle before final judgment, often based on a negotiated settlement agreement requiring the abandonment of the opposed application. In these...more
9/13/2019
/ Abandonment ,
Motion for Reconsideration ,
Prior Express Consent ,
Settlement Agreements ,
Trademark Application ,
Trademark Opposition Proceedings ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO ,
Written Consent
Many practitioners take for granted the fact that any TTAB deadlines that fall on a Saturday, Sunday or Federal holiday are automatically extended to the following business day. As it turns out, this isn’t always the case....more
Andy Warhol once famously commented that “In the future everybody will be world famous for fifteen minutes.” For trademarks, fifteen minutes of fame is not sufficient to assert a trademark dilution claim. ...more
Obtaining trademark registration for color trademarks can be a complicated undertaking. In a recent precedential opinion, the Trademark Trial and Appeal Board in In re Forney Industries, Inc. weighed in on the registrability...more
A recent Second Circuit decision in a case involving two companies using the ROGUE mark for apparel sets the record straight on what it means to have common law priority of rights in a mark for a category of goods in...more
In light of ongoing litigation over an applicant’s effort to register the mark FUCT for wearing apparel, the USPTO recently issued an Examination Guide concerning the review of trademark applications under Section 2(a) of the...more
Trademark licensing disputes can present thorny issues at the intersection of contract and trademark law. And when the dispute involves the Trump brand for residential buildings, the adjudication of rights and obligations...more
Stop me if you’ve heard this one before: an OB-GYN you probably don’t know named Dr. Drai applies to register his name as a trademark and ends up in a dispute with famous rapper Dr. Dre because the rapper fears there will be...more
May 7 was no day at the beach for Multi-Media Tech. Ventures, Ltd., whose registrations for the mark GIDGET were cancelled in a precedential opinion by the Trademark Trial and Appeal Board. Yazhong Investing, Ltd. v....more
The Trademark Trial and Appeal Board recently affirmed a refusal to register the mark 8-Bit Aleworks for beer based on two prior registrations for the mark 8 bit Brewing Company for beer and other alcoholic malt beverages,...more
Well-known perfume marketer Coty Inc. had a big win in New York federal district court, obtaining injunctive relief and $6.5 million dollars in an accounting of profits from copycat perfume seller Excell Brands, LLC. In an...more
9/29/2017
/ Advertising ,
Brand ,
Dilution ,
Fair Use ,
False Advertising ,
Injunctive Relief ,
Nominative Fair Use Doctrine ,
Trade Dress ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks
A recent Trademark Trial and Appeal Board decision sustained an opposition based on the applicant’s failure to identify a co-owner at the time the application was filed, resulting in the application being declared void ab...more
When two different companies adopt confusingly similar trademarks and use them in different parts of the United States, complications ensue. The adjudication of the respective rights of the parties will depend on the...more
The Court of Appeals for the Third Circuit, with a ringing endorsement of Prof. McCarthy’s trademark law treatise, issued a precedential opinion last week on the issue of whether a trademark is owned by the manufacturer or...more
The Sixth Circuit Court of Appeals recently issued an important decision about the bona fide intent requirement when filing an intent to use (“ITU”) application and the consequences when there is a lack of bona fide intent as...more
Can you trademark a building design? You can if the building in question is the Empire State Building. In the film classic King Kong, the iconic art deco building is the site of a titanic battle between Kong and the military...more
More than half a century ago, the Court of Appeals for the Second Circuit issued an influential decision in Dawn Donut Co. v. Hart’s Food Stores, Inc., concerning the proper scope of injunctive relief in a trademark...more
We blogged last week about a recent decision by the Court of Appeals for the Second Circuit in International Information Systems Security Certification Consortium, Inc. v. Security University, LLC, in which the Court...more
If a defendant in a trademark case uses the plaintiff’s trademark, not to identify the defendant’s own products, but rather to refer accurately to the plaintiff’s products, is that trademark infringement? Called “nominative...more
Superman has triumphed yet again, this time with help from the federal court in the Central District of California. It wasn’t actually Superman that scored this particular victory, but DC Comics, owner of the trademark rights...more
A recent federal district court decision involving the iconic STRATOTONE guitar brand, Agler v. Westheimer Corp. illustrates two important principles concerning the law of trademark abandonment: First, once a mark is deemed...more