Sharpen Your Sword: Adduce Proof When Claiming Prior Copyright to Challenge a Trademark in China
In a decision on motion in an appeal from the Trademark Trial & Appeal Board, the US Court of Appeals for the Federal Circuit admonished the Board on remand to “furnish a reasoned explanation” when departing from its...more
The Trademark Trial & Appeal Board affirmed the rejection of three trademark applications, finding that the applied-for marks would cause confusion with a record-setting major league baseball player. Major League Baseball...more
In a precedential decision rendered in an opposition proceeding, the Trademark Trial & Appeal Board (Board) took the lawyers for each side to task for ignoring Board rules in presentation of their case, but ultimately decided...more
In theory, trademarks can last “forever.” Unlike copyrights and patents, which have finite durations defined by law, a trademark can last as long as its owner maintains it and continues to use it. As the US Patent and...more
TTAB Cancellation Actions: Terminating an Infringing Trademark Registration - You learn that another person or entity has a registered trademark at the United States Patent and Trademark Office (the “USPTO”) that is...more
Another person or entity has applied for a trademark at the United States Patent and Trademark Office (the “USPTO”) that is similar to your trademark. What can you do? One option is to institute an opposition with the...more
Monster Energy Co. (“Monster Energy”), frequent trademark plaintiff, recently found itself on the receiving end of a trademark infringement lawsuit brought by California company Outdoor Pro Shop, Inc. (“Pro Shop”). Pro Shop’s...more
The August 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses Monster Energy's history of trademark disputes in the context of enhancing brand strength, tips for shortening the pendency of trademark filings...more
Earlier this month, the Trademark Trial & Appeal Board (TTAB) issued a precedential ruling that the term “Gruyere” for cheese is generic. In 2015, Swiss and French industry groups sought a certification mark for the term,...more
Beyoncé, named by Forbes as the Most Powerful Woman in Entertainment, has built a business empire that stretches into entertainment, fashion, major product endorsements, as well as music production and streaming distribution....more
With all of the business interruption caused by the COVID-19 pandemic, many worldwide trademark offices have taken steps to recognize the issues caused by the crisis. The offices in which applicants from the U.S. most...more
Most opposition proceedings in the Trademark Trial and Appeal Board of the USPTO settle before final judgment, often based on a negotiated settlement agreement requiring the abandonment of the opposed application. In these...more
2018 saw a number of important trademark cases decided across the United States. Two cases illustrated the similarities between genericness analysis and one of the likelihood of confusion factors considered by the Trademark...more
In an interesting case pending before the TTAB, law students from the Suffolk University IP and Entrepreneurship Clinic have opposed an application filed by United Trademark Holdings, Inc. to register RAPUNZEL as a trademark...more
In denying a doll maker’s motion to dismiss a mom’s opposition to the registration of the trademark RAPUNZEL, the Trademark Trial and Appeal Board (TTAB) has relaxed the already liberal standard for what constitutes a “real...more
Rapunzel potentially was released from the trademark monopoly tower, not by her hair, but by trademark opposer and law professor Rebecca Curtin....more
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
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
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
The Katten Kattwalk discusses legal issues in the fashion industry affecting the trademarks, patents and copyrights associated with companies, brands and products. ...more
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
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
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 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
In a recent precedential decision, the TTAB clarified whether a party filing an Opposition is entitled to allege a family of marks as a basis for a Section 2(d) claim when those marks are not all owned by a single legal...more