Likelihood of Confusion

News & Analysis as of

Can You Identify Your Trade Dress?

Trade dress is a type of trademark intellectual property right that can protect almost any unique identifying aesthetic design used by a company, from the shape of a product, to the appearance of a website, to the decor of a...more

The Pleads Of The Many: 50 Years of Star Trek Lawsuits

This year marks the fiftieth anniversary of the premiere of the original series of Star Trek, which first aired on NBC in September 1966. On July 22, this milestone will be marked in earnest when Paramount Pictures releases...more

Standard Character Trademark Overbreadth

When we hear the word “overbreadth” in close connection with the word “trademark,” the often discussed “trademark bullying” topic will frequently come to mind. Yet, discussions about “trademark overbreadth” are not...more

Certification Mark May Be Infringed Despite Nominative Fair Use, Lack of Source Confusion

Addressing the use of a certification mark in connection with information systems training, the US Court of Appeals for the Second Circuit reversed and remanded a district court grant of summary judgment for the defendants on...more

TTAB Precedential Decision: Time Limit for Adding Claims Is Tolled by Filing of Cancellation Within Registration’s Fifth...

In a precedential decision, the Trademark Trial and Appeal Board (“TTAB”) held that the filing of a cancellation petition before the five-year anniversary mark of a registration tolls Trademark Act Section 14 for purposes of...more

Empire State Building Trademark Owner Vanquishes Beer Logo Design

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

A Duel Over DUO Leaves Only Uno

The never-ending battle at the Trademark Office over trademarks for beer and wine suffered another casualty last week, this time over the mark DUO. Applicant Uinta Brewing Company filed a use-based application to register...more

MAYA And MAYARI Are Not Confusingly Similar When Used On Wine

The Federal Circuit has upheld the findings of the Trademark Trial and Appeal Board that use of the marks MAYA and MAYARI on wine is not likely to cause confusion. Oakville Hills Cellar, Inc. vs. Georgallis Holdings, LLC,...more

Trademark Review | June 2016

Coca-Cola has Acquired Secondary Meaning in ZERO for Colas - In an opposition proceeding before the TTAB, Royal Crown (RC) and Dr. Pepper/Seven Up sought to prevent registration of seventeen applications filed by...more

A Mark Should be Considered a Whole, and not Dissected

In Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, [2016-1103] the Federal Circuit affirmed the TTAB’s finding that Oakville’s registered mark MAYA and Georgallis’s applied-for mark MAYARI are sufficiently...more

Grapes, Girls and Goddesses: Federal Circuit Affirms MAYARI Trademark Registration For Wine

In our annual Trademark Year in Wine and Beer, we discussed Oakville Hills Cellar v. Georgallis Holdings LLC, in which the application of Georgallis (doing business as Kissos Wines) to register MAYARI for wine was opposed by...more

The Second Circuit Re-Visits Dawn Donut and the Geographic Scope of Injunctive Relief in Trademark Cases

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

How to Infringe a Certification Mark – The Second Circuit Counts the Ways

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

Intellectual Property Law - June 2016

Defend Trade Secrets Act of 2016: An Overview - Why it matters: The Defend Trade Secrets Act of 2016 (DTSA) was signed into law on May 11, 2016 and gives trade secret owners a federal cause of action for injunctive...more

Eight is Not Enough: Second Circuit Adopts Eleven Factor Nominative Fair Use Test in Certification Mark Case

International Information Systems Security Certification Consortium (known as ISC2) is a non-profit organization that owns a registered certification mark for the term CISSP® (meaning “Certified Information Systems...more

Nominative Fair Use of a Trademark: The Second Circuit Weighs In

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

Fighting Over “Nothing”: The Trademark Battle Over Zero

Several big beverage makers recently took each other on in a consolidated proceeding before the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO). In the case of Royal Crown...more

Amazon’s clear labelling defeats MTM trademark claims

The US Supreme Court has denied certiorari for the Ninth Circuit decision in Multi Time Machine Inc (MTM) v Amazon.com Inc on February 29 2016, which held that Amazon did not infringe MTM’s trademark in its presentation of...more

Copyright and Trademark Case Review: Sibling Rivalry, Grilled Meat and Attorneys' Fees

Copyright Opinions - Sixth Circuit Upholds Siblings' Termination of Brother's Copyright Assignment: Brumley v. Albert E. Brumley & Sons, Inc., No. 15-5429 (6th Cir. May 16, 2016) - Sutton, J. In a declaratory...more

Second Circuit Highlights Splits on Nominative Trademark Fair Use

The Second Circuit disagrees with sister circuits and rejects arguments that nominative fair use is an affirmative defense that is available even when confusion is likely and that the traditional nominative fair use analysis...more

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

251 Results
|
View per page
Page: of 11
JD Supra Readers' Choice 2016 Awards

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Already signed up? Log in here

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
×