News & Analysis as of

Trademark Opposition Proceedings

Will the Velveeta Brand Melt into Laughter?

by Winthrop & Weinstine, P.A. on

What do you think of when you hear the word Velveeta? Me too, childhood — complete with piping hot Campbell’s tomato soup — and perfectly melted grilled cheese sandwiches. Later in life, at least for me, came liquid gold and...more

DYKES ON BIKES No Longer Idling After Matal v. Tam

by Winthrop & Weinstine, P.A. on

Simon Tam wasn’t the only one barred by the Lanham Act from reclaiming a historically derogatory term. Dykes on Bikes is a nonprofit lesbian motorcycle organization. According to their website, the group’s mission is 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

Intent to Use Trademark Applications: 7 Factors to Consider

by Revision Legal on

As we discussed, section 1(b) of the Lanham Act allows a person to file a trademark application prior to using the mark in commerce. 15 U.S.C. § 1051(b)(1). To do so, an applicant must have a bona fide intent to use the...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

E-Sports Trademark Updates: MLB, Blizzard, ELEAGUE, and adidas

by Winthrop & Weinstine, P.A. on

With the growing popularity of e-sports (multiplayer video-game sports competitions, often played by professional gamers for spectators–also stylized “eSports”), I’ve seen an increasing number of trademark disputes not only...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

Cannabis Trademark Opposition: A Fanciful Counterfactual Illustration

by Revision Legal on

Parties file oppositions against pending trademark applications for a wide variety of reasons. Often, a party filing an opposition or requesting an extension of time to do so will contact the Applicant before filing or at the...more

The Best Defence Is a Good Offence: How to Get Rid of Threatening Trademark Registrations

by Bennett Jones LLP on

In Ontario cottage country, locals have been confronted with the registration of the trademark HALIBURTON, the name of the county in which they operate. The registration may threaten uses made by other businesses in the area....more

Settling the Hawkwind Trademark Flap

by McDermott Will & Emery on

Addressing an opposition to the trademark registration of a band name, the Trademark Trial and Appeal Board (TTAB) found the opposer—the originator and continuous user of the name—to be the owner and prior user. Dave Brock v....more

Who Owns that Trademark? An Incomplete Answer Voids Application

by Dorsey & Whitney LLP on

A recent Trademark Trial and Appeal Board decision sustained an opposition based on the applicant’s failure to identify a co-owner at the time the application was filed, resulting in the application being declared void ab...more

MLB to Oppose (maybe) Blizzard’s Overwatch League Logo

If you’re a video game fan like me, you’re probably familiar with Blizzard Entertainment and their assortment of popular games, such as Starcraft, Diablo, and World of Warcraft. One of Blizzard’s newest games is Overwatch, a...more

Trick or Trademark? Mars Says Hershey’s Can’t Own “SCARY” Candy.

Sandwiched between 90 degree days in a Minnesota summer, the idea of Halloween wasn’t on my radar – until I learned about the latest dispute between candy giants Mars and Hershey’s....more

The Katten Kattwalk | Issue 12

The Katten Kattwalk discusses legal issues in the fashion industry affecting the trademarks, patents and copyrights associated with companies, brands and products. Please see full Newsletter below for more information....more

MLB: A Monopoly on “Baseball”?

The weather is finally getting warmer up here in Minnesota and it’s a great time to watch baseball, as I’ve been doing frequently of late. It’s been fun watching my home team, the Twins, enjoy a strong start to the season...more

Welcome to the (Courthouse) Hotel California

While it may be a lovely place, the Eagles are not too keen on a small hotel in Todos Santos, Mexico and its use of the name HOTEL CALIFORNIA. After opposing the hotel’s trademark application last January, the band earlier...more

Gavel to Gavel: New trademark rules streamline trial process

by McAfee & Taft on

There’s good news for trademark owners who want to protect the value of their marks: Recent changes to the rules governing trademark opposition and cancellation proceedings have made those proceedings more efficient and...more

Parrotheads Can Rejoice As Jimmy Buffett Prevails In Trademark Dispute

Jimmy Buffett won a trademark dispute and precluded the applications for “Marijuanaville” marks from registering due to a likelihood of confusion with his famous MARGARITAVILLE® mark for clothing (including shirts and caps),...more

The Battle of the Kylies Over the “Kylie” Trademark

In one corner, you have the 19-year-old breakout star of the Kardashian/Jenner clan, Kylie Jenner, who is making a name for herself with her cosmetics and fashion empire. In the other corner, you have the 48-year-old singer,...more

Just Like You and Me: Difficulties with Celebrity Trademark Applications

by Knobbe Martens on

Under U.S. trademark law, any person (including a celebrity) can obtain a trademark registration for their name if they can establish that the public recognizes the name as a source identifier for certain products or...more

Improper Assignment of THE EMERALD CITY Mark – Registration Cancelled in Toto

by Dorsey & Whitney LLP on

Assignment of an intent-to-use trademark application can be fraught with risk. To deter “trafficking” in ITU applications, Section 10 of the Lanham Act prohibits the assignment of an ITU application before an amendment to...more

The Big Ten and the NCAA Tip Off for MARCH Marks

You don’t have to be a sports fan to be aware of MARCH MADNESS, the name associated with the annual tournament to determine the college basketball national champion. The tournament is organized by the National Collegiate...more

A March to Madness: Can the NCAA Claim Ownership of the Third Month of the Year?

by Dorsey & Whitney LLP on

The NCAA has a well-deserved reputation for being quite zealous when it comes to protecting its registered trademark “March Madness.” We previously blogged about this here at TheTMCA.com. But a recent opposition filed by the...more

Song Titles and Trademarks: The Eagle(s) Have Landed

Regardless of whether you’re a fan of “classic rock,” there are some songs that everybody knows. The song Hotel California by the Eagles is one of those songs. Not everyone likes the Eagles (looking at you, Dude), but most...more

Change is Coming: New Rules for TTAB Opposition and Cancellation Proceedings

by Dorsey & Whitney LLP on

The United States Patent and Trademark Office recently issued final rules amending the Trademark Trial and Appeal Board Rules of Practice and raising fees for many transactions involving trademarks. The new rules and fees...more

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