One of the signs of a healthy trademark is a certain level of distinctiveness. Distinctiveness is related to consumers’ love and recognition of a mark as an indicator of a product’s source, such that consumers trust the mark...more
Thank you for reading the July 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we continue our three-part series that closely examines ways to lose trademark rights with a discussion of genericide. We...more
If you’re celebrating Taco Tuesday, where are you going? If you answered anything other than Taco John’s, you’re guilty of aiding in trademark genericization. Taco John’s (now owned by Spicy Seasonings, LLC) obtained a...more
In theory, a trademark can last “forever.” For example, the winged hourglass logo of the Longines watch company, originally registered in Switzerland in 1889, is the oldest valid trademark in the International Registry...more
Sean Combs Opens New Front in War Against GBG Sean John - Accuses majority holder of using election-related trademarks to sell goods - Puffy Prologue - The lawsuit between Sean John Combs (AKA Puff Daddy, AKA P. Diddy, AKA...more
Have you ever been to an indoor cycling class? If so, you most likely have heard the term “spin class,” or referred to the act itself as “spinning.” Mad Dogg Athletics, Inc. would take offense, however, calling such uses...more
By Andy Halaby The Supreme Court’s decision in United States Patent & Trademark Office v. Booking.com to take up whether booking.com is generic, and thus unprotectable as a trademark, is intriguing....more
A trademark is a word, phrase, symbol, design, color, sound, or a combination thereof, that serves to identify the source of goods or services from those of another. Questions frequently arise about how trademarks should be...more
With the end of the year approaching and the holiday shopping season in full swing, now is an ideal time for brand owners to audit their trademark portfolios. ...more
When it comes to trademark registration, there is such a thing as being too popular. Marks such as Aspirin, Fiberglass, Zipper and Flip Phone became so ubiquitous that they were found to be generic—a commonly used name or...more
A “generic” term for a general class of products or services cannot be used as a trademark or service mark for the goods or services in those class(es), because the function of a trademark (or service mark) is to identify and...more
The Decision: The Federal Circuit vacated the Trademark Trial and Appeal Board's determination that "ZERO" is not generic and has acquired distinctiveness, and remanded. The Reasoning: The Board erroneously framed the...more
Imagine producing a classic Western without cowboys, saloons, or standoffs. This seems almost inconceivable because these elements are deeply integral to the genre – so much so, in fact, that they are essentially necessary...more
Crowdsourced Content in Video Games: How Ownership Issues Almost “Ganked” a Copyright Case - In Blizzard Entertainment v. Lilith Games (Shanghai) Company, a federal court denied a motion for partial summary judgment for...more
Most of us understand that a trademark is the brand name for a product: Oreo® sandwich cookies, Kleenex® tissue, Velcro® fasteners. But what happens when one brand name becomes so ubiquitous and so closely identified with a...more
Just Google it. Can you Google the score? Have you Googled the restaurant’s reviews? These are all common phrases in today’s internet-reliant society, and it’s entirely due to the creation of Google and its widespread...more
A federal judge in San Diego has cleared for trial a case that may strip San Diego Comic-Con from trademark protection. First, some background. Even a registered trademark such as Comic-Con can lose protection if it...more
Death by genericide is a painful way to go, for trademarks that is. When the public comes to think of a trademark as the common word for a product or service -- as opposed to identifying its exclusive source -- the trademark...more
The August 2017 issue of Sterne Kessler's MarkIt to Market® discusses lessons for trademark owners about genericide, lists the new gTLD Sunrise periods, and upcoming speaking engagements. ...more
Update: U.S. District Court Judge Laura Taylor Swain has awarded Tiffany & Co. $11.1 million in treble profits and $8.25 million in punitive damages. Judge Taylor Swain wrote in her opinion that Costco’s management “displayed...more
SCOTUS: For Patent Venue, Domestic Corporations ‘Reside’ Where Incorporated - Why it matters: On May 22, 2017, the Supreme Court issued its decision in TC Heartland LLC v. Kraft Foods Group Brands LLC—rejecting...more
The US Court of Appeals for the Ninth Circuit made a point to remind trademark litigants of the relevant laws and policies pertaining to trademark “genericide” when it sustained summary judgment in favor of ubiquitous search...more
“Baby it’s okay, you can Google my name.” This line from T-Pain’s hit, “Bottlez,” became a focus in a recent Ninth Circuit trademark case on my favorite intellectual property issue: genericide. Among other evidence, the court...more
On May 16, 2017, the Ninth Circuit rejected a petition for cancellation of the GOOGLE trademark based on a “genericide” theory that claimed Google should lose its trademark protection because the word “google” has become...more
Domain name registration is usually a good first step to cement trade name and mark ownership. In a previous blog we reminded readers that possession, even in Intellectual Property matters, is nine-tenths of the law...more