In a recent precedential decision concerning the rarely litigated or cited Section 2(b) of the Lanham Act, the Trademark Trial and Appeal Board affirmed a refusal to register the service mark...more
As cannabis products become legal in more and more states, commercial interest grows in protecting the trademarks associated with those products. The United States Patent and Trademark Office has maintained its refusal to...more
3/16/2020
/ Cannabidiol (CBD) oil ,
Cannabis Products ,
Common Law Claims ,
Counterclaims ,
Cross Motions ,
Decriminalization of Marijuana ,
Dietary Supplements ,
Intellectual Property Protection ,
Lanham Act ,
Marijuana ,
Medical Foods ,
Motion to Dismiss ,
Plant Based Products ,
Preemption ,
Preliminary Injunctions ,
Priority Disputes ,
Retail Market ,
Summary Judgment ,
Trademark Application ,
Trademark Cancellation ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Registration ,
Trademarks ,
Unfair or Deceptive Trade Practices ,
USPTO
The Trademark Trial and Appeal Board (the “Board”) recently held that AT&T Mobility, LLC (“AT&T”) had sufficient interest in its almost completely moribund CINGULAR name to oppose two pending trademark applications filed by...more
3/3/2020
/ Abandonment ,
Article III ,
AT&T ,
Intellectual Property Protection ,
Lanham Act ,
Standing ,
Subsidiaries ,
Trademark Application ,
Trademark Infringement ,
Trademark Trial and Appeal Board ,
Trademarks ,
Wireless Industry ,
Wireless Technology
In a recent decision on remand from the Federal Circuit, the Trademark Trial and Appeal Board (“Board”) rejected Petitioner adidas AG’s (“adidas”) claim that Respondent Christian Faith Fellowship Church (“CFFC”) abandoned its...more
12/2/2019
/ Abandonment ,
Adidas ,
Commerce Clause ,
Fashion Branding ,
Fashion Design ,
Fashion Industry ,
Intellectual Property Protection ,
Intent to Cancel ,
Inter Partes Review (IPR) Proceeding ,
Interstate Commerce ,
Lanham Act ,
Remand ,
Retail Market ,
Trademark Application ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
Unitary Trademark ,
Use in Commerce ,
USPTO
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
This blog has followed the evolving judicial views concerning disparaging trademarks, culminating in the Supreme Court’s decision in in Matal v. Tam, 137 S. Ct. 1744 (June 19, 2017)....more
1/8/2019
/ Disparagement ,
Fashion Design ,
Fashion Industry ,
First Amendment ,
Free Speech ,
Lanham Act ,
Matal v Tam ,
Petition for Writ of Certiorari ,
Trademark Registration ,
Trademarks ,
USPTO
The Court of Appeals for the Federal Circuit recently extended First Amendment protections for trademark applications in In re Brunetti, No. 15-1109 (Fed. Cir. December 15, 2017), ruling that Section 2(a) of the Lanham Act’s...more
12/28/2017
/ Appeals ,
Constitutional Challenges ,
Disparagement ,
Fashion Design ,
Fashion Industry ,
First Amendment ,
Free Speech ,
Intellectual Property Protection ,
Lanham Act ,
Matal v Tam ,
Scandalous/Immoral Marks ,
Trademark Registration ,
Trademarks ,
USPTO
In a unanimous (albeit fractured) decision written by Justice Alito, the United States Supreme struck down a provision of the Lanham (Trademark) Act barring registration of “disparaging” trademarks, handing a victory to...more
6/21/2017
/ Disparagement ,
First Amendment ,
Football ,
Free Speech ,
Lanham Act ,
Matal v Tam ,
Music Industry ,
NFL ,
Redskins ,
SCOTUS ,
Team Mascots ,
The Slants ,
Trademark Registration ,
Trademarks ,
USPTO
The Supreme Court denied review of the 2d Circuit decision on the Stolichnaya trademark....more
The Supreme Court granted the United States Patent and Trademark Office’s petition for certiorari in In re Tam, 117 USPQ2d 1101 (Fed. Cir. 2016). In that case, the USPTO denied registration of an application to register the...more
10/3/2016
/ Disparagement ,
First Amendment ,
Football ,
Free Speech ,
Lanham Act ,
Music ,
Music Industry ,
Petition for Writ of Certiorari ,
Redskins ,
SCOTUS ,
The Slants ,
Trademark Registration ,
Trademarks ,
USPTO
The Southern District of New York recently booted shoe manufacturer LVL XIII Brands, Inc.’s trade dress infringement suit against Louis Vuitton Malletier S.A. in LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.. At issue...more
9/22/2016
/ Fashion Branding ,
Fashion Design ,
Fashion Industry ,
Intellectual Property Protection ,
Lanham Act ,
Louis Vuitton ,
Retail Market ,
Summary Judgment ,
Trade Dress ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
USPTO
In an important decision delineating the boundaries of fair use of another person’s trademark, the Second Circuit announced a standard by which nominative fair use of a trademark will be evaluated in that Circuit in...more
The Federal Circuit recently provided additional guidance concerning whether an applied-for mark is generic in In re Cordua Restaurants, Inc., (May 13, 2016). This case stemmed from the United States Patent and Trademark...more
Belmora LLC filed a petition for reconsideration en banc of the Fourth Circuit’s FLANAX decision in Belmora LLC v Bayer Consumer Care AG, Appeal No. 15-1335 (4th Cir. March 23, 2016). As we previously have blogged...more
On April 20, 2016, the United States Patent and Trademark Office (“PTO”) filed a petition for a writ of certiorari to the Federal Circuit seeking Supreme Court review of that Court’s decision in In re Tam, 117 USPQ2d 1001...more
4/25/2016
/ Disparagement ,
First Amendment ,
Free Speech ,
Lanham Act ,
Petition for Writ of Certiorari ,
SCOTUS ,
Strict Scrutiny Standard ,
The Slants ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
Unconstitutional Condition ,
USPTO
In today’s increasingly global economy, trademark owners are more frequently butting up against the territorial limitations of trademark law. It has long been a matter of black letter law that trademark rights are...more
4/18/2016
/ Bayer ,
False Advertising ,
False Association ,
Foreign Trademark ,
Lanham Act ,
Patent Litigation ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Trademark Registration ,
Trademarks ,
Unfair Competition ,
USPTO
Recently, a District Court judge issued a scathing rebuke to the United States Patent and Trademark Office in Board of Trustees of the University of Alabama et al. v. Houndstooth Mafia Enterprises LLC, (N.D. Alabama February...more
The Second Circuit recently issued its latest ruling in a long-running legal battle over the trademark rights to the STOLICHNAYA trademark. In this latest decision in the 12-year dispute, the Court ruled that an agency of the...more
In a landmark First Amendment decision relating to the Lanham (Trademark) Act, the Federal Circuit, en banc, struck down § 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), the statutory provision barring registration of...more
In a landmark First Amendment decision relating to the Lanham (Trademark) Act, the Federal Circuit, en banc, struck down § 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), the statutory provision barring registration of...more
In a ruling bound to please 15 year-old boys everywhere, the USPTO Trademark Trial and Appeal Board (“TTAB”) reversed the Examining Attorney’s refusal to register the trademark NUT SACK DOUBLE BROWN ALE (in standard character...more
11/5/2015
/ Beer ,
Breweries ,
Corporate Counsel ,
Lanham Act ,
Offensive Language ,
Trademark Act ,
Trademark Application ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO ,
Wine & Alcohol ,
Young Lawyers
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
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