Trademarks, Advertising, Trademark Trial and Appeal Board

Remember My Origin: Federal Circuit Establishes Standard for Certification Mark Fame

Manatt, Phelps & Phillips, LLP on 8/26/2024

Trademarks are used to identify and distinguish an individual’s or entity’s goods or services from those manufactured or sold by others and to indicate the source of such goods or services. In contrast, and with respect to...more

A Trademark Dispute Plays Out Before the NAD

Kelley Drye & Warren LLP on 6/17/2024

Planting Hope had a registration for the RIGHTRICE trademark, but that registration was canceled in January 2024 by the U.S. Patent & Trademark Office (“USPTO”) in a default judgment proceeding after Planting Hope failed to...more

Taco Bell Scores a Win Over TACO TUESDAY™

Dorsey & Whitney LLP on 11/3/2023

When Taco Bell announced its intention to eliminate all exclusive trademark rights in the phrase TACO TUESDAY, it invoked the Declaration of Independence, claiming that any restriction on the right to use it “violates an...more

MarkIt to Market® - October 2023

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 11/1/2023

Thank you for reading the October 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss the Federal Circuit’s recent case considering the scope of the USPTO’s authority to cancel registrations...more

MarkIt to Market® - September 2023

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 9/29/2023

Thank you for reading the September 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss the significant revisions to the FTC's guidelines for endorsements and examine the benefits of design...more

Building Distinction in Architectural Trade Dress

Foley & Lardner LLP on 8/24/2023

The shape of a building can be registered as inherently distinctive trade dress in the United States – if it is distinctive and unusual for buildings of that type – holds the U.S. Patent and Trademark Office Trademark Trial...more

MarkIt to Market® - July 2023

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 8/1/2023

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

Where's the Beef? Establishing Fame in Trademark Disputes

Knobbe Martens on 8/21/2019

A decision from the Federal Circuit clarified how the USPTO should analyze evidence of fame under the fifth DuPont factor. The decision sheds light on how fashion brands can establish that their marks are famous through...more

Website Printout: Acceptable Specimen of Use or Advertising?

McDermott Will & Emery on 6/5/2019

Addressing whether a webpage printout showed use of a mark in commerce, the US Court of Appeals for the Federal Circuit upheld the Trademark Trial and Appeal Board’s (TTAB’s) decision denying registration of the mark and...more

IN RE: SINY CORP.

Knobbe Martens on 4/15/2019

Before Prost, Lourie and Stoll. Appeal from the Trademark Trial and Appeal Board. Summary: In evaluating whether a webpage printout is an acceptable specimen of use for a trademark in connection with goods, the USPTO may...more

Omaha Steaks International v. Greater Omaha Packing Co.

Knobbe Martens on 11/20/2018

Federal Circuit Summary - Before Prost, O’Malley, and Stoll. Appeal from the Trademark Trial and Appeal Board. Summary: Advertising costs and sales figures are relevant in determining whether a trademark is famous and,...more

The Katten Kattwalk | Issue 16

Katten Muchin Rosenman LLP on 6/8/2018

The Katten Kattwalk discusses legal issues in the fashion industry affecting the trademarks, patents and copyrights associated with companies, brands and products. ...more

Product Designs Can Be Difficult to Trademark

BCLP on 4/27/2018

In a single precedential ruling on March 30, 2018, the Trademark Trial and Appeal Board (TTAB) cancelled a federal trademark registration for a round-shaped product design, and also refused to register a federal trademark...more

Food & Beverage Litigation Update | February 2018 #3

Shook, Hardy & Bacon L.L.P. on 2/27/2018

Chicago SSB Tax May Cause State to Lose Federal Funding, USDA Warns - According to a warning letter from the U.S. Department of Agriculture (USDA), the sugar-sweetened beverage (SSB) tax that took effect in the Chicago...more

#TidalTuesday #UseInCommerce #RegistrationFail

Dorsey & Whitney LLP on 11/3/2017

A recent decision by the Trademark Trial and Appeal Board in Tidal Music AS v. The Rose Digital Entertainment LLC (Opp. No. 91232127) confirms the importance of ensuring proper use of a service mark before filing an...more

Advertising Law - July 2017 #3

Manatt, Phelps & Phillips, LLP on 7/24/2017

Twitter Working to Limit Fake Stories, Accounts - In an effort to combat fake accounts, false stories and other abuses, Twitter is considering the use of a new feature to let users flag Tweets that contain misleading,...more

Opportunity May Not Knock Without the Right Door

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 4/11/2017

When seeking particular services, consumers are often drawn into a business based on branding and advertising found near the location – whether by signage on or around the establishment, or by glimpses of the services being...more

The Pleads Of The Many: 50 Years of Star Trek Lawsuits

Foley Hoag LLP - Making Your Mark on 7/19/2016

This year marks the fiftieth anniversary of the premiere of the original series of Star Trek, which first aired on NBC in September 1966. On July 22, this milestone will be marked in earnest when Paramount Pictures releases...more

Trademark Review | May 2016

Knobbe Martens on 5/31/2016

Surname Not Registrable Absent Substantially Exclusive Use - As a result of various third-party uses of the surname “Ayoub” for similar services, Applicant’s use of AYOUB did not meet the requirement of Section (f) that...more

The Katten Kattwalk - Issue 07

Katten Muchin Rosenman LLP on 7/29/2015

Happy summer! We are seeing some great new styles this summer here on Madison Avenue, and of course, there are a number of hot legal issues to consider as we head into the fall. Our latest issue discusses the applicability of...more

Federal Circuit Confirms That Advertising Services Is Not Use in Commerce

Akerman LLP on 3/4/2015

In Couture v. Playdom, Inc., the Federal Circuit held that the use of a mark on a website to offer services is not use in commerce sufficient to support an actual-use service mark application. As a result, the Court affirmed...more

Markit to Market - May 2014

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 6/12/2014

In This Issue: - Scammers Still Be...Scamming - Contests – Check Rules Before Offering! - Catalogs as Specimens - gTLD Sunrise Periods Now Open - Excerpt from Scammers Still Be...Scamming: Based...more

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