News & Analysis as of

Trademark Cancellation Appeals

McDermott Will & Emery

Sour Grapes: Winery Minority Ownership Insufficient for Statutory Standing at Trademark Board

The US Court of Appeals for the Federal Circuit affirmed the dismissal of a petition seeking to cancel the registered marks of two wineries, finding the petitioner (a trust owning an interest in a competitor winery) lacked...more

McDermott Will & Emery

Trademark Trial & Appeal Board Gets a DuPont 101 Lesson

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Addressing errors in the Trademark Trial & Appeal Board’s likelihood of confusion analysis in a cancellation action, the US Court of Appeals for the Federal Circuit vacated and remanded, holding that the Board erred by...more

McDermott Will & Emery

SHAZAM! CAPTAIN CANNABIS Registration Defeated by Prior Analogous Trademark Use

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Addressing the issue of analogous trademark use, the Trademark Trial & Appeal Board designated precedential a September 6, 2022, decision in which the Board cancelled a registration for CAPTAIN CANNABIS based on the...more

Bradley Arant Boult Cummings LLP

Still No Cancellation Based on Fraud, But What Next Steps Might the TTAB Take?

The Federal Circuit just “re-issued” its precedential decision in Great Concepts, LLC v. Chutter, Inc. (No. 2022-1212), where it had previously reversed the USPTO’s cancellation of a registered trademark. There was no...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit’s Determination on Whether Fraudulent Conduct in Obtaining Incontestable Status Warrants the Mark’s Cancellation

In Great Concepts, LLC, v. Chutter, Inc., the Federal Circuit decided on whether the Trademark Trial and Appeal Board can cancel a trademark based on the inclusion of false statements in a declaration to obtain an...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - October 2023: A Limit to Cancel Culture? Federal Circuit Finds Fraud in Connection with Section 15 Declaration...

In 2021, the Trademark Trial and Appeal Board cancelled Great Concepts, LLC’s trademark registration for the mark DANTANNA’S for restaurant services under Section 14, after finding that counsel for the Registrant committed...more

Bradley Arant Boult Cummings LLP

Cancellation of a Registered Mark Based on Fraud in Section 15 Affidavit Not Allowed

On Wednesday, a divided panel of the Federal Circuit issued a precedential decision reversing the USPTO’s cancellation of a registered trademark (Great Concepts, LLC v. Chutter, Inc., No. 2022-1212). As detailed in the...more

AEON Law

Patent Poetry: EU IP Board Reverses Decision on Banksy Monkey Trademark

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The European Union Intellectual Property Office’s (EUIPO) Board of Appeal has reversed a EUIPO decision from May 2021 canceling a trademark registration for an image of a monkey by the anonymous UK artist known as Banksy....more

Linda Liu & Partners

Some Concepts concerning“the Use of Trademark”in China’s Trademark Practice

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Article 4 of the Trademark Law stipulates that "the use of the trademark referred to in this Law refers to the use of the trademark on goods, goods packaging or containers and goods transaction documents, or the use of the...more

McDermott Will & Emery

Standing Challenge Brews Trouble in Trademark Dispute

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Addressing for the first time Article III standing in a trademark case, the US Court of Appeals for the Federal Circuit held that hypothetical future injury is insufficient to establish standing to oppose a trademark...more

Saiber LLC

Defendant Sings the Blues as Third Circuit Decides Claim Preclusion Based on Prior TTAB Decision Does Not Apply in Matter of First...

Saiber LLC on

In a recent precedential opinion, Beasley v. Howard, ___ F.4th ___ (3d Cir. 2021) (publication pending), the United States Court of Appeals for the Third Circuit determined, in an issue of first impression, that trademark...more

McDermott Will & Emery

TTAB Cancellation Proceedings Not Preclusive in District Court, Even Between Same Parties

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Addressing the preclusive effect of judgments by tribunals with limited jurisdiction, the US Court of Appeals for the Third Circuit held that trademark cancellation proceedings before the Trademark Trial & Appeal Board (TTAB)...more

McDermott Will & Emery

TTAB Judicial Appointments are Determined Constitutionally Sound

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Addressing for the first time whether the Supreme Court of the United States’ recent decision in United States v. Arthrex, Inc. also applied to the Trademark Trial and Appeal Board (TTAB), the US Court of Appeals for the...more

McDermott Will & Emery

Trademark Cancellation Is Appropriate Sanction for Misconduct

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In upholding a grocery store chain’s standing to petition for cancellation of a US trademark registration, the US Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB’s) express...more

Knobbe Martens

Lexmark Framework to Determine Eligibility to Bring Statutory Causes of Actions Applies to Trademark Cancellation Proceedings

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CORCAMORE, LLC v. SFM, LLC - Before Reyna, Chen, and Hughes. On appeal from the Trademark Trial and Appeal Board. Summary: Whether a party has satisfied the requirements to bring a petition for trademark cancellation...more

McDermott Will & Emery

The Naked Truth About Trademark Cancellation: Only Harm, No Proprietary Interest Required

The US Court of Appeals for the Federal Circuit determined that a contracting party that contractually abandoned any proprietary interest in a mark may still bring a cancellation action if it can “demonstrate a real interest...more

Hogan Lovells

EUIPO: Repeat trademark applications for the same classes can equate to bad faith

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In July, the Second Board of Appeal of EUIPO declared the MONOPOLY trade mark invalid to the extent that the underlying application covered goods and services for which the trade mark was already registered. Such filings...more

Hogan Lovells

CJEU: Sweet victory for well-known trademark against registered design

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In its judgment C-693/17 earlier this year, the CJEU confirmed a decision of the GC in design invalidity proceedings, in which the proprietor of a trademark protecting the image of product packaging successfully took action...more

Smart & Biggar

Year-end Round-up: Notable Trademark Case Law From 2018

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There were many interesting trademark cases coming out of 2018, a few of which are discussed below. The scope of Canada’s anti-dilution remedy (section 22 of the Trademarks Act) is not limited to a defendant’s use of a...more

Bennett Jones LLP

AT&T's GO PHONE Trademark Registration Saved by Roaming Services Offered in Canada

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A recent decision involving an AT&T trademark demonstrates how the global reach of technology businesses can sometimes result in a blurring of markets and make documentation of trademark use in Canada difficult to retrieve...more

Proskauer - New Media & Technology

Google Escapes Genericide Claim in Ninth Circuit Decision

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

Ladas & Parry LLP

REDSKINS affirmed as disparaging. Appealed to 4th Circuit.

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In its June 18, 2014 Blackhorse decision, the TTAB ordered six Redskins trademarks to be cancelled as disparaging to Native Americans at the time they were registered....more

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