On June 8, 2023, the Supreme Court unanimously decided the trademark parody case captioned Jack Daniel’s Properties, Inc. v. VIP Products LLC in favor of Jack Daniel’s, and against the dog toy manufacturer and serial parodist...more
6/21/2023
/ Dilution ,
First Amendment ,
Intellectual Property Protection ,
Jack Daniels Properties Inc v VIP Products LLC ,
Lanham Act ,
Likelihood of Confusion ,
Parody ,
Rogers Test ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks
On March 22, 2023, the Supreme Court heard oral argument in the trademark parody case captioned Jack Daniel’s Properties, Inc. v. VIP Products LLC. As we previously blogged, the issues presented in the care are:
...more
3/28/2023
/ Beverage Manufacturers ,
Brand ,
Dilution ,
First Amendment ,
Intellectual Property Protection ,
Lanham Act ,
Likelihood of Confusion ,
Oral Argument ,
Retail Market ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Wine & Alcohol
On November 21, 2022, the Supreme Court granted certiorari on the following questions described in Jack Daniel’s petition:
Respondent VIP Products LLC markets and sells dog toys that trade on the brand recognition of...more
1/20/2023
/ Beverage Manufacturers ,
Certiorari ,
Dilution ,
First Amendment ,
Intellectual Property Protection ,
Lanham Act ,
Likelihood of Confusion ,
Retail Market ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Wine & Alcohol
The Trademark Trial and Appeal Board (“TTAB”) sustained the objection of the publisher of the tech magazine WIRED (“Opposer”) to an Applicant’s (“Applicant”) bid to register the term “WIRED” for clothing but rejected its...more
On August 23, 2022, the Trademark Trial and Appeal Board (“TTAB”) rejected on summary judgment JHO Intellectual Property Holdings’ (“Applicant”) application to register the mark “PURPLE RAIN” for a variety of nutritional...more
On September 30, 2020, the Trademark Trial and Appeal Board ruled in favor of the assignee of the famous LEHMAN BROTHERS trademark against the registration that mark as a brand name for beer, spirits, and bar and restaurant...more
10/8/2020
/ Abandonment ,
Barclays ,
Evidence ,
Intellectual Property Protection ,
Lehman Brothers ,
Likelihood of Confusion ,
Priority Disputes ,
Trademark Application ,
Trademark Expiration ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks
The United States is a party to the General Inter-American Convention for Trade Mark and Commercial Protection of Washington, 1929 (“Pan-American Convention”), along with Colombia, Cuba, Guatemala, Haiti, Honduras, Nicaragua,...more
3/12/2020
/ Counterclaims ,
Cross-Border ,
Food Manufacturers ,
Honduras ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Likelihood of Confusion ,
Priority Rules ,
Trade Names ,
Trademark Cancellation ,
Trademark Ownership ,
Trademark Trial and Appeal Board ,
Trademarks ,
Unfair Competition
This trademark litigation arises out of a contentious real-estate rivalry in a very wealthy residential community called Royal Palm Yacht & Country Club in Boca Raton, Florida....more
3/5/2020
/ Acquired Distinctiveness ,
Article III ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Lanham Act ,
Likelihood of Confusion ,
Real Estate Brokers ,
Standing ,
Trademark Cancellation ,
Trademark Ownership ,
Trademark Registration ,
Trademarks
In a precedential decision involving the “doctrine of foreign equivalents,” the Board found no likelihood of confusion between the mark RICHARD MAGAZINE for a website in the field of fashion and lifestyle and the mark RICARDO...more
The Federal Circuit upheld a Trademark Trial and Appeal Board (“Board”) decision refusing registration of an athletic apparel company’s trademark, holding that the trademark applicant waived its key arguments by not raising...more
9/9/2019
/ Appeals ,
Brand ,
Fashion Branding ,
Fashion Design ,
Intellectual Property Protection ,
Likelihood of Confusion ,
Motion for Reconsideration ,
Oral Argument ,
Sports Apparel ,
Trademark Application ,
Trademark Litigation ,
Trademark Trial and Appeal Board ,
Trademarks ,
Waiver of Rights
In a recent decision concerning the scope of protection for collective membership marks, the Trademark Trial and Appeal Board sustained The Pierce-Arrow Society’s opposition to registration of PIERCE-ARROW for “automobiles”...more
9/5/2019
/ Automotive Industry ,
Brand ,
Collective Marks ,
Corporate Branding ,
Intellectual Property Protection ,
Lanham Act ,
Likelihood of Confusion ,
Luxury Goods ,
Membership Interest ,
Motor Vehicles ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks
The Federal Circuit recently sustained the Trademark Trial and Appeal Board’s (“TTAB” or the “Board”) refusal to register Louis Vuitton Malletier’s (“LVM”) trademark APOGÉE for perfumes, a decision that will concern...more
7/17/2019
/ Cosmetics ,
Fashion Branding ,
Intellectual Property Protection ,
Likelihood of Confusion ,
Louis Vuitton ,
Personal Care Products ,
Retail Market ,
Trademark Application ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
William Adams is a musical performer who is more famously known by his stage name, will.i.am. A recent ruling from the United States Patent and Trademark Office, Trademark Trial and Appeal Board, unfortunately makes him a...more
8/30/2018
/ Fashion Design ,
Fashion Industry ,
Hashtags ,
International Trademark Protection ,
Likelihood of Confusion ,
Musical Sound Recordings ,
Trademark Application ,
Trademark Infringement ,
Trademark Registration ,
Trademarks ,
USPTO
The New Jersey Turnpike Authority (“NJTA”) was forced to pay a big toll when the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”), dismissed its opposition to a pizza restaurant’s...more
5/30/2018
/ Intellectual Property Protection ,
Likelihood of Confusion ,
Logos ,
Restaurant Industry ,
Trademark Application ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
Transportation Industry
In 2015, the Supreme Court, in its decision in B&B Hardware, Inc. v. Hargis Industries, Inc. (“B&B”), held that sometimes issue preclusion should apply to prior Trademark Trial and Appeal Board (“TTAB”) decisions. 135 S. Ct....more
The United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) cancelled the registration for the mark PORTÓN last week, finding it to be confusingly similar to the senior mark PATRÓN. Patrón...more
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
H.J. Heinz Co. (“Heinz”) filed a federal lawsuit recently against Boulder Brands USA (“Boulder”) seeking to vacate and reverse a Trademark Trial and Appeal Board decision finding that Boulder’s SMART BALANCE trademark is not...more
The Supreme Court issued its second trademark ruling of the term on Tuesday, ruling that federal court decisions on “likelihood of confusion” sometimes can be precluded by earlier rulings about trademark registrability issued...more
The Supreme Court issued its second trademark ruling of the term on Tuesday, ruling that federal court decisions on “likelihood of confusion” sometimes can be precluded by earlier rulings about trademark registrability issued...more
In trademark law, rights in a trademark are determined by the date of the mark’s first use in commerce, and the party who first uses the mark in commerce has priority over other users. Under the doctrine of "tacking," under...more