Lanham Act Trademarks

News & Analysis as of

Despite Cancellation, the Washington Redskins' Trademark is Not up for Grabs

As of Wednesday, July 08, 2015, the Washington Redskins have lost a long-fought batter to maintain its federal trademark registrations covering “REDSKINS.” Back in June of 2014, the United States Patent and Trademark Office...more

Redskins Trademark Decision

On July 8, 2015, a Virginia District Court ordered the cancellation of six NFL Redskins trademark registrations, under a Lanham Act prohibition against registering marks that “may disparage” a referenced class at the time of...more

Chipping Away at the Dead Wood and Other Registered-But-Unused Marks

An ongoing issue faced by the United States Patent and Trademark Office (USPTO) has been the number of trademark registrations granted or retained for over-inclusive identifications of goods and/or services where the...more

Watch Out! Split Ninth Circuit Panel Rules Amazon Search Results May Violate Watchmaker’s Trademarks

The Ninth Circuit recently held that online retailer Amazon.com could be liable for infringing the trademarks of a watch manufacturer based upon Amazon’s product search results when shoppers search for the manufacturer’s...more

Alert: Federal Court Upholds Cancellation of REDSKINS Trademark Registration

On July 8, 2015, a federal district court in Virginia upheld a ruling canceling six federal trademark registrations incorporating the term REDSKINS owned by the Washington, D.C. football team. The court agreed with the...more

IP Newsletter - July 2015

In This Issue: - En Banc Federal Circuit Abandons “Strong” Presumption That a Limitation Is Not Subject to 35 U.S.C. § 112, Paragraph 6 - Supreme Court Rejects Belief of Invalidity Defense for Inducement in Commil...more

The B&B Hardware Case and its Potential Impact on Trademark Litigation

Trademark disputes can often play out in a number of forums. Trademark disputes often start off in the marketplace, with a confused consumer, and then proceed to litigation in several tribunals including the Trademark Trial...more

Federal Circuit: Lack of Bona Fide Intent to Use at the Time of Filing Fatal to Trademark Application

In a recent ruling the Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board (TTAB) sustaining an opposition against a trademark application on the grounds that the applicant failed to prove that it...more

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

WD-40 Squeaks By On Appeal Of Its Summary Judgment Win On “Long-Term Corrosion Inhibitor”

In Sorensen v. WD-40 Company, the Seventh Circuit affirmed the district court’s finding that the use of the term “inhibitor” for a rust-inhibitor product was not trademark infringement and constituted a descriptive fair use. ...more

In re Tam – Federal Circuit Orders En Banc Review of Trademark Act’s Ban Against Registration of Disparaging Marks

The Slants is a Portland-based band composed of musicians of Asian-American descent who characterize their genre as “Chinatown Dance Rock.” The band’s bassist, Simon Tam, filed a trademark application for THE SLANTS for...more

Appealing a Trademark Registration Refusal? Win or Lose, You May Have to Pay the USPTO’s Legal Fees

The federal Trademark Act (the Lanham Act) instructs that if an unsuccessful trademark applicant appeals a refusal to register in federal district court, the applicant must name the Director of the U.S. Patent & Trademark...more

Walt Disney's TM Case Could be Heard by the Supreme Court

Back in February of 2014, Walt Disney Co. (“Disney”) successfully upheld its cancellation proceeding of a registration for a rival PLAYDOM mark on the grounds that the owner, David Couture (“Couture”), was not using the mark...more

Party Over for Claimed Mardi Gras Bead Dog Trademarks - Nola Spice Designs, L.L.C. v. Haydel Enterprises, Inc., et. al.

Addressing issues of trademark validity and substantial similarity in a copyright infringement claim, the U.S. Court of Appeals for the Fifth Circuit upheld a district court’s grant of summary judgment that the challenged...more

NOPALEA Mark Merely Descriptive of a Product Derived from Nopalea Cactus - In Re TriVita, Inc.

The U.S. Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB’s) decision that the trademark NOPALEA was descriptive of TriVita’s products, which contain juice from the nopal cactus....more

Federal Circuit Vacates Panel Decision on Disparaging Trademark and Orders En Banc Hearing - In re Tam

The U.S. Court of Appeals for the Federal Circuit issued a sua sponte order vacating its April 20, 2015, decision in In re Tam to consider the constitutionality of Section 2(a) of the Lanham Act, which provides that the U. S....more

Political Speech, Trademarks And The Definition of “Goods or Services”

Last month witnessed the resolution of two trademark infringement cases involving the relationship between political activities and the definition of “goods or services.” On May 18, 2015, State Senator Steve Hershey gave up...more

Lawyer Who Started Fight Over "R-Word" Mascot Awaits Decision

About a quarter century ago, Steve Baird — at the time, a freshly minted graduate of the University of Iowa law school clerking for a federal judge in Washington, D.C. — was spending most of his free weekends working on an...more

Fourth Circuit Finds that First Amendment Trumps Trademarks

The Fourth Circuit recently ruled that a Defendant’s online article entitled “NAACP: National Association for the Abortion of Colored People” did not violate the trademark rights of the NAACP, the National Association for the...more

Offering of Services Alone Insufficient Basis for § 1(a) Trademark Application - David Couture v. Playdom, Inc.

Addressing for the first time whether the offering of a service was sufficient “use in commerce” under the Lanham Act, the U.S. Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB)...more

Trademark Review | May 2015

Attorneys’ Fees Might be More Readily Granted in Trademark Cases - Last year, the U.S. Supreme Court relaxed the standard for awarding attorneys’ fees to the prevailing party in patent infringement cases. Octane...more

Cleaning Up a Trademark Damage Mess - Georgia-Pacific Consumer Prods LP v. von Drehle Corp.

In one of three parallel actions for trademark infringement involving competing paper towel manufacturers, the U.S. Court of Appeals for the Fourth Circuit examined the appropriate remedies that may be granted under the...more

Rights in Bob Marley's name and likeness trump free speech where defence not properly pleaded | World Trademark Review

Fifty-Six Hope Road is a company run by some of Bob Marley's children, and it owns the property rights to Bob Marley's name, voice and likeness. Hope Road licensed Zion Rootswear the exclusive right to use Marley's name and...more

The Juice Runs Out for Yankee Parody Trademarks

A good general business practice is to apply to register trademarks early. You’ll find out if there is an issue. You’ll have time to change rather than having to take everything off the shelf under the threat of a lawsuit....more

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

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