News & Analysis as of

Likelihood of Confusion

Extrinsic Evidence May Not Be Used To Distinguish the Commercial Impressions of Marks In An Ex Parte Likelihood-of-Confusion...

In a non-precedential opinion, the Federal Circuit affirmed that in an ex parte proceeding, when analyzing the likelihood of confusion between a registered and an applied-for mark, evidence extrinsic to the application and...more

Consent Agreements – Not Always a Sure Path to Overcome Likelihood of Confusion Refusals in the USPTO

by Dorsey & Whitney LLP on

The Trademark Trial and Appeal Board recently affirmed a refusal to register the mark 8-Bit Aleworks for beer based on two prior registrations for the mark 8 bit Brewing Company for beer and other alcoholic malt beverages,...more

When Names become Brand Names

by Winthrop & Weinstine, P.A. on

Naming things is a fundamentally personal, human act that sometimes – in a profession all about brand names – we take for granted. It’s easy to forget when we are clearing, registering, and protecting names, that at a basic...more

Ready to Release a New Pharmaceutical? What to Think About When Selecting Your Drug Name

by Foley & Lardner LLP on

Pharmaceutical name clearance in the United States can be complicated. This post aims to provide insight into the regulatory safety review process and the trademark registration process for candidate drug names. This...more

Would Glue Maker’s Trademark Claim Stick Against Pot Strain

by Weintraub Tobin on

According to cannabis folklore, cannabis cultivators in 2010, Josey Whales and Lone Watie created a strain of marijuana that was so sticky, Mr. Whales, during a phone call, commented that the plant made his hands “stick to...more

The TTAB Issued a TKO to a Licensee’s Claim of Priority

by Dorsey & Whitney LLP on

When two boxing companies sparred before the TTAB, the gloves came off—and that wasn’t only because the dispute concerned a trademark registration for boxing gloves. In Moreno v. Pro Boxing Supplies, Inc., the petitioner,...more

Call of Duty Trademark Lawsuit: A Humvee Humdinger

by Winthrop & Weinstine, P.A. on

AM General, manufacturer of Humvee military vehicles, has sued Activision Blizzard for trademark infringement, based on the use of the “Humvee” and “HMMWV” marks for the virtual military vehicles displayed in...more

TTAB rejects SINFUL ZINFANDEL as confusable with ZINFUL

I’m back from maternity leave and back “off the wagon”, so to speak, with a post about one of my favorite beverages – red zinfandel. The USPTO recently refused registration of the mark SINFUL ZINFANDEL for wine citing...more

But We Had A Deal: Consent Agreement Cannot Overcome Likelihood Of Confusion Finding

by Orrick - IP Landscape on

Order Affirming Refusal of Registration, In re 8-Brewing LLC, T.T.A.B. (October 30, 2017) - Trademark applicants know the familiar sinking feeling when their clearance search turns up a potentially conflicting mark...more

It’s A Bird, It’s A Plane, It’s Dilution By Blurring: TTAB Sustains DC Comics’ Opposition Against Application For Super Woman Of...

by Ladas & Parry LLP on

In a non-precedential decision in DC Comics v Deanna Rivetti (Opposition 91219851, August 17 2017), the Trademark Trial and Appeal Board (TTAB) sustained an opposition to the registration of Application Number 86240703 for...more

Adidas Fights to Protect its Three-Stripe Mark

by Robins Kaplan LLP on

Can three stripes be protected as intellectual property? That question is now before the Trademark Trial and Appeal Board (“TTAB”). Adidas AG (“Adidas”), the German sportswear giant, instantly recognizable for its...more

7 Lessons in Trademarks: Smashburger/In-N-Out Burger Battle Royale

by Revision Legal on

According to recent news reports, fast-food hamburger chain, In-N-Out Burger (“In-N-Out”) has filed a federal lawsuit alleging trademark infringement against Smashburger, another fast-food hamburger chain. The trademark fight...more

Court Has Zero Chill For Use Of “Chell”

by Fox Rothschild LLP on

The attendance of a multi-day concert/festival in the desert seems to be a right of passage for millennials with events popping up all over the country. However, are you permitted to utilize the goodwill associated with those...more

Sorry, Will – I AM Refused Registrations

by McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a refusal to register the mark I AM for various goods based on a likelihood of confusion with registered marks, concluding that the pseudo applicant’s trade moniker was...more

Is It Five O’Clock (or 1700 Hours) Somewhere?

by Winthrop & Weinstine, P.A. on

You’re probably familiar with the song “It’s Five O’Clock Somewhere” by Jimmy Buffet and Alan Jackson. It was the number one country single of the year back in 2003. A few years later, Jimmy Buffet submitted several trademark...more

Beyond Mere Consent: It's All in the Details

Consent agreements - in which a prior U.S. Patent and Trademark Office (USPTO) rights-holder provides consent to registration of a later-filed trademark - can be an efficient path to registration in situations where the...more

Reverse confusion actions: how conflicting court standards may affect outcomes

by DLA Piper on

Online and social media marketing make it possible for small startups to broaden their brand exposure, expanding their consumer base without bearing enormous advertising expenditures. For a small company – the first to use a...more

Court Says Flawed Likelihood-of-Confusion Survey Which Followed Neither the Ever-Ready nor Squirt Standards Was Prejudicial...

On September 11, 2017, the Northern District of Illinois granted a motion for a new trial based on the improper admission of prejudicial likelihood-of-confusion survey evidence. The Black & Decker Corporation sued Positec...more

Judge Dow Orders New Trial Due to Unreliable Consumer Confusion Survey

by Orrick - IP Landscape on

Order Granting Motion for New Trial, The Black & Decker Corp., et al. v. Positec USA, Inc., et al., N.D. Ill. (September 11, 2017) (Judge Robert M. Dow, Jr.) - Trademark litigants often submit survey evidence to prove that...more

Bridgestone Brands, LLC V. Firestone Public House, LLC: Battle Of The Brands

by Weintraub Tobin on

Just over two months ago, Sacramento’s beloved Firestone Public House was sued by multinational conglomerate Bridgestone Brands, LLC for trademark infringement, trademark dilution, and unfair competition based upon...more

How Coexistence Agreements Work

by Revision Legal on

In trademark law, coexistence agreements are contracts whereby two trademark owners agree to use their similar marks, but agree to limitations. For example, the two owners might agree that their respective goods or services...more

Narrow scope of protection for 3D trademarks?

by DLA Piper on

The Finnish Supreme Court’s decision 2017:42 handed down on 13 June 2017 regarding the distinctiveness of 3D trademarks and the likelihood of confusion with the shapes of competing goods, follows the trend we have seen from...more

In-n-Out Sues Smashburger Over New Burger Names

by Dickinson Wright on

On August 28, 2017, In-n-Out filed a lawsuit against Smashburger for trademark infringement in the Central District of California. In-n-Out claims that Smashburger’s TRIPLE DOUBLE mark is too similar and infringes on its...more

Summary Judgment “Disfavored” for Resolving Fair Use Trademark Defense

by McDermott Will & Emery on

Examining the issue of trademark fair use, the US Court of Appeals for the Ninth Circuit reversed a district court grant of summary judgment in favor of a promotional products company and remanded the case for reconsideration...more

Food Fight: Burger Edition

Beloved burger chain In-N-Out Burger, home of not-so-secret menu items and “animal style” fries, has sued burger competitor Smashburger, claiming that Smashburger’s new “Triple Double” burger infringes on In-N-Out’s...more

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