Topic: Trademark

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The TTAB’s Periodic Reminder that Deadlines Matter

In a decision earlier this year, the Trademark Trial and Appeal Board (“Board”) dismissed as moot a cancellation proceeding filed by Men’s Wearhouse, LLC against WKND NYC LLC for the mark (hereinafter, “MW MRWKND”) because Men’s Wearhouse filed the cancellation proceeding after MW MRWKND was already cancelled by operation of law for lack of a … Continue reading

EVERYBODY is VS RACISM, so the Mark Fails as a Source Identifier

In a recent decision, the United States Court of Appeals for the Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board (“Board”) to deny registration of “EVERYBODY VS RACISM” because the “public is unlikely to associate the mark . . . as a source-identifier” of GO & Associates, LLC’s (“GO”) goods and … Continue reading

Black Card Can Register FOLLOW THE LEADER Mark

In a presidential decision, the Trademark Trial and Appeal Board (“TTAB”) held that Black Card, LLC can register FOLLOW THE LEADER because the phrase operates as a source identifier and not as an unregistrable common phrase. Black Card applied to register FOLLOW THE LEADER in connection with the promotion of  a number of services, including … Continue reading

Sweeter than Watermelon: When are Fruit Designs Functional?

The Third Circuit affirmed the cancellation of plaintiff PIM Brands, Inc.’s (“PIM”) trademark for “the shape of a wedge for candy, with an upper green section with white speckles, followed by a narrow middle white section and followed by a lower red section with white speckles” because “the whole trade dress of the red-white-and-green wedge … Continue reading

Reverse Confusion: A Lesser Known Approach to Analyzing Likelihood of Confusion

Home Chef continues to lose the battle to stop Grubhub from using, what they assert, is a confusingly similar logo for food-related services. Home Chef began using its HC Home Mark and Home Chef Home Logo (collectively, the “HC Marks”) in 2014 in connection with meal preparation kits. Grubhub, a popular food-ordering and delivery service, merged … Continue reading

TTAB Confirms Characters Can Be Registered as Trademarks If The Characters Function as Trademarks

In a precedential decision the Trademark Trial and Appeal Board (“Board”) affirmed a refusal to register a character featured in a video game on the grounds that the proposed design mark failed to function as a trademark. In re Joseph A. Stallard, Serial No. 97115036 (August 28, 2023).  In doing so the Board held that … Continue reading

Whirlpool Wins Appeal Against Chinese Manufacturer in KITCHENAID Trademark Lawsuit

The Fifth Circuit upheld a preliminary injunction last week prohibiting Chinese company Shenzhen Sanlida Electrical Technology Co. Ltd. and Shenzhen Sanlida Electrical Technology Co., Ltd.  (collectively “Shenzhen”) from selling stand mixers that allegedly infringe Whirlpool Corp.’s (“Whirlpool”) famous KITCHENAID trademarks and trade dress. In January 2022, Whirlpool sued Shenzhen alleging trademark infringement and dilution, trade … Continue reading

TTAB Prohibits Sur-Sur-Rebuttals in Trademark Proceedings

In a recent precedential opinion in Monster Energy Company v. Coulter Ventures, LLC, Oppositions Nos. 91233515 (parent), 91233516, 91233517, 91242202, and 91252191 (August 7, 2023), the Trademark Trial and Appeal Board (“TTAB”) shed light on the procedural intricacies of expert reports. The decision focused on sur-rebuttals, sur-sur-rebuttals, and the Board’s authority to manage docket control. … Continue reading

It’s a girl group, but a BOYS WORLD: When does a performing artist’s name function as a trademark?

In a precedential decision, the Trademark Trial and Appeal Board (“Board”) reversed the decision of the Examining Attorney, concluding that BOYS WORLD for “audio recordings featuring music,” in International Class 9 functioned as a trademark. ZeroSix, LLC, 2023 U.S.P.Q.2D 705 (TTAB May 1, 2023). “Boys World” is the name of a musical “girl group” that … Continue reading

From Non-Infringement to No Jurisdiction: Does a Finding of Non-Infringement Moot a Request for Declaratory Judgment of Invalidity in Trademark Cases?

The trademark dispute that has been steadily escalating between Illinois-based Citizens Equity First Credit Union (“Citizens”) and California-based San Diego County Credit Union (“SDCCU”) could be headed to the Supreme Court. SDCC filed a Petition for Writ of Certiorari asking the Supreme Court to clarify when courts have jurisdiction to hear invalidity claims in trademark … Continue reading

“Taste the Strain Bro”: Wrigley Settles SKITTLES Trademark Dispute with Cannabis Company

** This article was drafted by Logan Woodward, a Summer Associate in NRF’s Minneapolis Office.  Logan is supervised by attorneys who are licensed in the State of Texas. After a two-year feud, Mars Wrigley (“Wrigley”), the maker of the popular rainbow-colored Skittles candies, recently settled its lawsuit with Terphogz LLC (“Terphogz”) regarding its use of … Continue reading

Supreme Court Makes Waves With Abitron Ruling

On June 29, the Supreme Court issued its much-anticipated decision in Abitron Austria GmbH, et al., v. Hetronic International, Inc. (No. 21-1043). We wrote about the case history previously here. Briefly, the 10th Circuit had upheld a $90 million jury verdict against Abitron—a former distributor of Hetronic—based in large part on Abitron’s conduct in Europe, … Continue reading

This Decision Rocks: Trademarking a Guitar-Shaped Building

In a precedential decision, the Trademark Trial and Appeal Board (“Board”) allowed registration of the following design mark for “Casinos,” in International Class 41, and “Hotel, restaurant, and bar services,” in International Class 43 on behalf of the Seminole Tribe of Florida (“Applicant”): In re Seminole Tribe of Fla., 2023 TTAB LEXIS 184 (TTAB May … Continue reading

China – Suspension of Trade Mark Applications More Readily Available?

In our previous post (here), we talked about a change being proposed by the China National Intellectual Property Administrative (commonly known as CNIPA), prohibiting repeated filings for the same trade mark.  This was particularly concerning to brand owners and trade mark practitioners because, presently, it has been common practice to re-file identical back-up applications to … Continue reading

Supreme Court Rules in Favor of Jack Daniel’s in BAD SPANIELS Case: Parody Marks Can Still Function as A Source Identifier

The United States Supreme Court issued its decision in a years-long dispute between Jack Daniel’s and VIP Products LLC (“VIP”) over a humorous dog toy which is intended to mimic the label of a Jack Daniel’s whisky bottle. Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. ____ (2023). The Court’s opinion focused on … Continue reading

Taco Bell Petitions to Cancel TACO TUESDAY Trademarks at U.S. Trademark Office

Almost everyone has probably heard of “Taco Tuesday.” Ads, local restaurants, celebrities—they use this popular slogan to refer to the idea that it is fun to eat tacos on Tuesdays. But although this phrase is used by many, two restaurant companies actually own TACO TUESDAY trademark registrations that they can assert as conclusive evidence of … Continue reading

Up in Smoke: TTAB Denies Registration for Cannabis Paraphernalia

The Trademark Trial and Appeal Board (“TTAB”) at the United States Patent and Trademark Office (“USPTO”) recently issued a precedential opinion concerning the registration of marks used in connection with goods deemed “drug paraphernalia” under the Controlled Substances Act (“CSA”). The decision, In re Abax Distributing LLC, involved two trademark applications for the mark BAKKED … Continue reading

Don’t Mess With the (Aaron) Judge

In a precedential decision, the Trademark Trial and Appeal Board (“TTAB”) found a likelihood of confusion between the applied-for marks sought by Applicant, Michael P. Chisena, and the common law rights owned by Opposers, Major League Baseball Players Association (“MLBPA”) and Aaron Judge (“Judge”). Major League Baseball Players Ass’n v. Chisena, 2023 U.S.P.Q.2D 444, 2023 … Continue reading

Yet Another Change Coming Up?  Structural Changes to CNIPA and China’s Potential 5th Amendment to Trademark Law

We are just a few months into 2023, but we are already seeing a number of proposed changes to Chinese Trademark Law.  We wish to draw attention to some of the upcoming structural changes to the China National Intellectual Property Administration (commonly known as CNIPA) and to highlight a few draft amendments to China’s Trademark … Continue reading

NUMB: BOTOX reputation insufficient to stop PROTOX

Earlier this month, the High Court of Australia ultimately rejected trade mark infringement and misleading/deceptive conduct claims by Allergan (owner of the injectable BOTOX®) against Self Care’s anti-wrinkle skincare products PROTOX and INHIBOX (marketed under the slogan ‘instant Botox® alternative’). The case has been running for 6 years. Allergan relied on the overwhelming reputation of … Continue reading

Apple’s Tacking Attempt in Trademark Opposition Hits a Sour Note

On April 4, in Bertini v. Apple Inc., the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) clarified the limitations of tacking and its application in establishing priority in trademark disputes. This case sets an important precedent for tacking use of a mark in the trademark registration context and highlights the limitations of … Continue reading

The New York Times Company Secures Registration of Six Column Names, Including LIKE A BOSS and THE NEW OLD AGE

In a precedential decision, the Trademark Trial and Appeal Board (the “Board”) reversed six refusals to register The New York Times Company’s (the “Times”) names of its newspaper columns, THE NEW OLD AGE, A GOOD APPETITE, HUNGRY CITY, WORK FRIEND, OFF THE SHELF, and LIKE A BOSS (the “Marks”). The Times applied to register the … Continue reading

TTAB Begins Pretrial Conference Pilot Program

This week, the United States Patent and Trademark Office (USPTO) introduced a new pilot program for holding Final Pretrial Conferences (FPC) in certain inter partes disputes (i.e., oppositions and cancellations) before the Trademark Trial and Appeal Board (TTAB). The goal of the pilot, according to the USPTO, is “to save time and resources of parties … Continue reading