Likelihood of Confusion

News & Analysis as of

Second Circuit Weighs in on Nominative Fair Use

The federal courts of appeals have split as to how to apply the doctrine of nominative fair use in trademark infringement cases. Last week, the Second Circuit endorsed the nominative fair use factors used by the Ninth and...more

Law à la Mode: Whose Name is it Anyway?

Designing under your own name is a natural, even intuitive choice for many designers and is an established practice in the fashion industry. ...more

Trademark Litigation Keeps Getting Cheaper (If You Win)

Slowly but surely, the extension of the Supreme Court’s 2014 Octane Fitness v. LLC v. Icon Health and Fitness, Inc. decision to trademark claims is gaining traction among federal appellate courts. The Octane Fitness decision...more

Trademark Review | April 2016

Broad JAWS Registration Devours JAWS Cooking Channel - Mr. Recipe’s applications to register the marks JAWS and JAWS DEVOUR YOUR HUNGER were refused based on the earlier registration for JAWS, the movie. Mr. Recipe’s...more

Is Evidence of Confusion Really Necessary to Succeed in a Trademark Infringement Case?

It is not every day that a massive international TV hit show is found to infringe a trade mark. A decision of the English High Court, approved recently by the Court of Appeal, held that the popular 20th Century Fox teenage...more

Panera and Great Harvest Argue over Tagline

Panera Bread and the Great Harvest Bread Co. will not be breaking bread together anytime soon. To the contrary, Great Harvest recently filed a trademark lawsuit against Panera over Panera’s “food as it should be” campaign,...more

Adblock, Generic for Ad Blocking?

AdBlock Plus doesn’t seem to think so. Though they apparently also do think so (more on that below). Adblock Plus was successful in registering the ADBLOCK PLUS mark. Now they’re using that registration to issue take down...more

Court Silences Sound Spark Studios’ Trademark Claims

In the summer of 2012, Jeremy Southgate applied with the United States Patent and Trademark Office to register a design mark for “Sound Spark Studios.” A little over a year-and-a-half later, Southgate formed Sound Spark...more

Copyright and Trademark Case Review: FLANAX, Fishing Tackle, Football Players and More

Summaries of Recent Precedential and Informative Appellate Opinions - Trademark Opinions - Owners of Foreign Marks May Sue Under Lanham Act Without Using Marks in the US: Belmora LLC v. Bayer Consumer Care AG,...more

T.T.A.B. Emphasizes the Fame of the Movie ‘Jaws’ in Its Refusal to Register a Cooking Show’s Mark

On March 16, 2016, the TTAB affirmed the refusals of an applicant’s mark, JAWS DEVOUR YOUR HUNGER, for online streaming cooking shows, holding that it is confusingly similar to the registered mark from the movie JAWS. Though...more

SEC Alleges LLC Names Were “Deceptively Similar”, But What Would The California SOS Do?

Yesterday, the SEC announced that it had filed a complaint against a securities professional alleging that he had defrauded “two institutions he solicited to invest in a shell company he controlled whose name was deceptively...more

Trademark Review | March 2016

TTAB Finds a Consent Agreement Failed to Tip the Balance - Bay State Brewing Company’s intent-to-use application to register the mark TIME TRAVELER BLONDE for beer was rejected based on the previously registered mark...more

CARRERA’s Trademark Reputation: “Luxury, High Tech, High Performance and Success”

The German carmaker, Porsche AG, which designed the iconic 911 Carrera sports car, owns the European Union and German “CARRERA” word mark, registered for “automobiles” in class 12. How far beyond automobiles does the...more

Drilling Down: Court Invalidates Design Patent on Wellbore Centralizer Due to Lack of Ornamentality

In an unusual patent claim construction order on March 2nd, a federal district court held a design patent invalid for functionality. This is a relatively rare outcome because claim construction in design patent cases is often...more

Similar Marks Used for Wine & Beer – Confusing or Not?

After a few of either, the likelihood of confusion may no doubt increase. But in a recent sober judgment, the U.S. Trademark Office ruled that REUBEN’S BREWS for beer is not likely to be confused with RUBENS for wine....more

TTAB Relents: Board Agrees to Vacate Likelihood of Confusion Finding at District Court’s Direction

Last week, the TTAB agreed to vacate a precedential decision at the direction of a district court judge putting an end (for now) to a stand-off between the administrative body and the federal judiciary. As we have previously...more

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

Supreme Court Denies Review of Ninth Circuit Decision Finding no Trademark Infringement for Amazon Search Results

On February 29, 2016, the Supreme Court declined to review a Ninth Circuit decision holding that there was no likelihood of confusion, and therefore no trademark infringement, where Amazon.com responded to consumer searches...more

Are Registrations for Product Configuration Trademarks for Suckers?

As a kid, I loved candy. But as an adult, who happens to be an intellectual property attorney, I still love candy. So you can bet your sweet tooth that I was feeling a sugar rush when I came across a pending application to...more

Spongebob Suitpants: Viacom Sues Proposed “Krusty Krab” Restaurant

Calling all Spongebob fans: there is a company in Texas that wants to create a real life Krusty Krab restaurant. For those not “in the know,” Spongebob Squarepants is a Nickeloden cartoon featuring underwater sea characters....more

The Strategic Use of TTAB Proceedings to Advance Trademark Registration Efforts

Yesterday we wrote about how petitions for partial cancellation under Section 18 of the Lanham Act can be creative and powerful tools when an applicant is confronted with likelihood of confusion registration refusals under...more

Thinking Outside Section 2(d) Refusals

Section 2(d) of the Trademark Act is the statutory basis for refusing registration based on likelihood of confusion with another mark. It is invoked on an ex parte basis by USPTO Examining Attorneys, and it is also raised in...more

Twentieth Century Fox Television v. Empire Distribution Inc. - USDC, C.D. California, February 1, 2016

District court rules Fox’s hit television show “Empire” did not infringe or dilute trademark of record label Empire Distribution because Fox’s use of “Empire” was protected by First Amendment....more

How do you like your rum?

I don’t know what the record is for the longest time it has taken for a trademark application to clear the Trademark Office, but I’m pretty sure that Havana Club would medal. The application for the Havana Club mark for rum...more

Black Ops Mission Accomplished by Federal Trademark Registration

A recent district court decision granting a preliminary injunction in The Brooklyn Brewery Corp. v. Black Ops Brewing, Inc. demonstrates the advantage of owning a federal trademark registration when products bearing the...more

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