Trademarks, Generic

The Fourth Circuit Court of Appeals Enters the Cheese Wars: Determining Genericness for Trademark Registration

Smith Anderson on 9/26/2023

Recently, the United States Court of Appeals for the Fourth Circuit considered whether “gruyere” cheese can be registered as a trademark in the United States, or whether it is merely a generic term that is not entitled to...more

“Taco Tuesday” Serves Up Lessons on Trademark Protection

Amundsen Davis LLC on 6/21/2023

If you’re celebrating Taco Tuesday, where are you going? If you answered anything other than Taco John’s, you’re guilty of aiding in trademark genericization. Taco John’s (now owned by Spicy Seasonings, LLC) obtained a...more

If Taco Bell is Able to Liberate 'Taco Tuesday,' Does That Mean Taco John's is Allowed to 'Live Mas?'

Sherman & Howard L.L.C. on 5/26/2023

Recently, Taco Bell filed a petition with the USPTO to cancel the trademark registration of Taco John's mark, "TACO TUESDAY." Taco John's has been the registered owner of the mark for more than 34 years, and there does not...more

The Fondues and Don’ts of Certification Marks

McDermott Will & Emery on 3/16/2023

The US Court of Appeals for the Fourth Circuit affirmed a summary judgment grant in favor of the opposers of a certification mark application for the trademark GRUYERE to designate cheese that originates in the Gruyère region...more

Gruyere Cheese is Gruyere Cheese... Even in the United States

Ladas & Parry LLP on 3/14/2023

On March 3rd, the United States Court of Appeals for the Fourth Circuit in Virginia upheld a ruling that cheese labeled GRUYERE can be used to legally describe cheese made from outside the Gruyere region of Switzerland and...more

5 Things Companies Should Know About The Trademark Office’s “New” Approach to Genericness

Cole Schotz on 6/3/2022

At the end of last month, the United States Patent and Trademark Office (“USPTO”) released a guide clarifying how they were approaching the refusals of applied-for marks that could be generic. In the past, examining attorneys...more

Federal Circuit Boots Potential Circuit Split as Trademark Case Turns Ugg-ly for Australian Boot-Maker

Bracewell LLP on 11/2/2021

It’s hard to deny the comfort of the plush, fur-lined boots and slippers sold under the UGG® brand. But not many are aware that the word “ugg” originated in Australia as a generic term for sheepskin boots. The term, which is...more

USPTO Refuses Washington Football Team’s Trademark Request

Fox Rothschild LLP on 6/28/2021

While the NFL’s Washington Football Team decides on a more permanent name (likely in 2022), its hopes of trademarking its current moniker have been put on ice. On June 18, 2021, the United States Patent and Trademark Office...more

Cannabis Trademarks 101

Vicente LLP on 4/29/2021

In an industry that runs on innovation and differentiation, a cannabis brand’s identity is among its most valuable—and most prone to copying—assets. It’s a common myth that cannabis industry brands cannot get trademark...more

SPIN Trademark Has Peloton Wrapped Around The Axel

Weintraub Tobin on 3/8/2021

While Shakespeare may have wondered “what is in a name?”, the executives at Peloton believe that the trademark SPIN is of great importance. Last month (February, 2021), Peloton filed petitions to cancel the trademarks SPIN...more

PTO Offers Guidance Following The Decision In USPTO v. Booking.com

Fox Rothschild LLP on 11/25/2020

Last month, the U.S. Patent and Trademark Office (PTO) issued a guidance document describing how they plan on following the Supreme Court’s recent decision in U.S. Patent and Trademark Office v. Booking.com. This document...more

The Supreme Court - November 11, 2019

Dorsey & Whitney LLP on 11/12/2019

On Friday afternoon, the Supreme Court of the United States granted certiorari in the following case...more

Court Holds that TTAB Appellant Gets Only One Bite at the Apple When Selecting Forum for Appeal

ArentFox Schiff on 11/7/2019

The loser of a trademark opposition or cancellation proceeding at the United States Trademark Trial and Appeal Board (TTAB) has two avenues for appealing the decision: (1) to the United States Court of Appeals for the Federal...more

How Many Types of Wines Are There: BIG SIX? Really?

Akerman LLP - Marks, Works & Secrets on 9/5/2019

The Trademark Trial and Appeal Board recently affirmed the refusal to register a trademark application for BIG SIX for wine on the ground that the term is generic or descriptive of wines. In re Plata Wine Partners, LLC,...more

Federal Circuit Reminds Us That Extrinsic Considerations Are Narrowly Construed in Trademark Matters

International Lawyers Network on 5/9/2019

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

U.S. – Reframing the Test for Genericness in the Soft Drink Wars

Hogan Lovells on 7/19/2018

Royal Crown Co., Inc. v. The Coca-Cola Co., 2018 WL 3040163 (Fed. Cir. June 20, 2018) - In late June, the Federal Circuit issued an opinion in the year-long litigation between Royal Crown Co., Inc. (“RC”) and The...more

No Twist on Pretzel Crisps on Remand

Akerman LLP - Marks, Works & Secrets on 9/19/2017

In a 54 page decision issued on September 6, 2017, the Trademark Trial and Appeal Board (the “Board”) ended (again) a long-standing dispute between snack food makers Frito-Lay, Inc. (“Frito”) and Princeton Vanguard, LLC...more

RED GOLD for Jewelry: Obviously Generic (Or Maybe Not…)

Knobbe Martens on 4/12/2017

On March 24, 2017, the U.S. Court of Appeals for the Ninth Circuit ruled that the term “red gold” may not be a generic term for jewelry and watches, and thus, may serve as a trademark. Specifically, the Ninth Circuit found...more

EU Retail News - December 2016

BCLP on 12/21/2016

In 2010, two business school graduates launched Birchbox; a monthly subscription service to a box filled with sample-sized beauty products from over 309 brands. Birchbox has solved one of the most significant barriers to...more

Considerations When Using Descriptive or Generic Trademark Terms

Snell & Wilmer on 11/15/2016

I. Adding Distinctive Terms or Logos to a Descriptive or Generic Term Will Not Protect the Descriptive or Generic Term. A descriptive trademark1 is one that immediately brings to mind a use, purpose, function,...more

“Churrascos” Is Generic for Restaurant Services

McDermott Will & Emery on 7/9/2016

On appeal from the Trademark Trial and Appeal Board (TTAB), the US Court of Appeals for the Federal Circuit affirmed the TTAB’s refusal to register a stylized form of the mark CHURRASCOS for restaurant services, finding that...more

Fighting Over “Nothing”: The Trademark Battle Over Zero

Ladas & Parry LLP on 6/8/2016

Several big beverage makers recently took each other on in a consolidated proceeding before the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO). In the case of Royal Crown...more

Beer Lawyers Rally to Stop Federal Registration of the Mark "CRAFT BEER ATTORNEY"

Dentons on 5/19/2016

You know you’re in for a fight when 14 different law firms come together to launch an opposition--an administrative proceeding before the Trademark Trial and Appeal Board--against registration of your trademark application....more

Generic Churrascos at the Federal Circuit

Akerman LLP - Marks, Works & Secrets on 5/18/2016

The Federal Circuit recently provided additional guidance concerning whether an applied-for mark is generic in In re Cordua Restaurants, Inc., (May 13, 2016). This case stemmed from the United States Patent and Trademark...more

The Katten Kattwalk - Issue 08

Katten Muchin Rosenman LLP on 10/16/2015

The Katten Kattwalk discusses legal issues in the fashion industry affecting the trademarks, patents and copyrights associated with companies, brands and products. Letter From the Editor - Fashion Week has come and...more

Trademarks › Generic

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