Trademark Series: Protecting your mark from becoming generic
Like much of the world, I have watched with fascination as new Artificial Intelligence (AI) technologies rolled out over the last year. Each new release is better than the last, with seemingly endless applications to improve...more
Recently, the United States Court of Appeals for the Fourth Circuit considered whether “gruyere” cheese can be registered as a trademark in the United States, or whether it is merely a generic term that is not entitled to...more
If you’re celebrating Taco Tuesday, where are you going? If you answered anything other than Taco John’s, you’re guilty of aiding in trademark genericization. Taco John’s (now owned by Spicy Seasonings, LLC) obtained a...more
Recently, Taco Bell filed a petition with the USPTO to cancel the trademark registration of Taco John's mark, "TACO TUESDAY." Taco John's has been the registered owner of the mark for more than 34 years, and there does not...more
In Interprofession du Gruyere v. U. S. Dairy Exp. Council, 61 F.4th 407 (4th Cir. 2023), two European cheesemaking consortiums sought appellate review of a USPTO ruling, which sustained American cheesemaking companies’...more
The US Court of Appeals for the Fourth Circuit affirmed a summary judgment grant in favor of the opposers of a certification mark application for the trademark GRUYERE to designate cheese that originates in the Gruyère region...more
On March 3rd, the United States Court of Appeals for the Fourth Circuit in Virginia upheld a ruling that cheese labeled GRUYERE can be used to legally describe cheese made from outside the Gruyere region of Switzerland and...more
At the end of last month, the United States Patent and Trademark Office (“USPTO”) released a guide clarifying how they were approaching the refusals of applied-for marks that could be generic. In the past, examining attorneys...more
This past month, the United States Patent and Trademark Office issued a new examination guide regarding the burden an examining attorney must meet to refuse registration of an applied-for mark based on genericness....more
It’s hard to deny the comfort of the plush, fur-lined boots and slippers sold under the UGG® brand. But not many are aware that the word “ugg” originated in Australia as a generic term for sheepskin boots. The term, which is...more
Patents protect inventions. However, patents protect only certain inventions. In order to be patentable, an invention must fall within one of four categories of patent-eligible subject matter: articles of manufacture,...more
While the NFL’s Washington Football Team decides on a more permanent name (likely in 2022), its hopes of trademarking its current moniker have been put on ice. On June 18, 2021, the United States Patent and Trademark Office...more
In an industry that runs on innovation and differentiation, a cannabis brand’s identity is among its most valuable—and most prone to copying—assets. It’s a common myth that cannabis industry brands cannot get trademark...more
Utah’s governor recently signed into law SB 227, creating the Genetic Information Privacy Act (GIPA). The law, which is anticipated to go into effect in May, is aimed at protecting genetic data collected from...more
On March 17, 2021, in a matter of first impression, the United States Court of Appeals for the Fourth Circuit held a party appealing a decision of the United States Trademark Trial and Appeal Board (“TTAB”) may seek review of...more
While Shakespeare may have wondered “what is in a name?”, the executives at Peloton believe that the trademark SPIN is of great importance. Last month (February, 2021), Peloton filed petitions to cancel the trademarks SPIN...more
Last month, the U.S. Patent and Trademark Office (PTO) issued a guidance document describing how they plan on following the Supreme Court’s recent decision in U.S. Patent and Trademark Office v. Booking.com. This document...more
Having vast expertise in providing legal protection to large Russian and international pharmaceuticals and healthcare companies, Lidings has put together a Legal Digest highlighting the most notable patents disputes in Life...more
The United States Department of Agriculture’s (USDA) Food Safety and Inspection Service (FSIS or the agency) has issued a Proposed Rule to expand the circumstances in which FSIS will generically approve the labels of meat,...more
On Friday afternoon, the Supreme Court of the United States granted certiorari in the following case...more
The loser of a trademark opposition or cancellation proceeding at the United States Trademark Trial and Appeal Board (TTAB) has two avenues for appealing the decision: (1) to the United States Court of Appeals for the Federal...more
HZNP Medicines LLC, Horizon Pharma USA, Inc. v. Actavis Laboratories UT, Inc. Before Prost, Newman, and Reyna. Appeal from the District Court for the District of New Jersey. Summary: Claims using “consisting...more
The Trademark Trial and Appeal Board recently affirmed the refusal to register a trademark application for BIG SIX for wine on the ground that the term is generic or descriptive of wines. In re Plata Wine Partners, LLC,...more
2018 saw a number of important trademark cases decided across the United States. Two cases illustrated the similarities between genericness analysis and one of the likelihood of confusion factors considered by the Trademark...more
Royal Crown Co., Inc. v. The Coca-Cola Co., 2018 WL 3040163 (Fed. Cir. June 20, 2018) - In late June, the Federal Circuit issued an opinion in the year-long litigation between Royal Crown Co., Inc. (“RC”) and The...more