Topic: Trademark

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

By Meg Tierney (US) on June 9, 2023 Posted in Brands, Trademark

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

By Andrea Shannon (US) on May 24, 2023 Posted in Trademark

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

RAPUNZEL, RAPUNZEL – Mere Consumers Have No Standing to Oppose

By Meg Tierney (US) on May 16, 2023 Posted in Trademark

An opposition that has been making its way through the Trademark Trial and Appeal Board (“TTAB”) for several years appears to have finally reached its not-so-fairytale ending. In May 2023, the TTAB overturned a 2018 TTAB ruling in the same case that allowed a consumer to oppose trademark applications based on the consumer’s interest to … Continue reading

Up in Smoke: TTAB Denies Registration for Cannabis Paraphernalia

By Stephanie Schmidt (US) on May 16, 2023 Posted in Trademark

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

By Nathan Mannebach (US) on May 9, 2023 Posted in Trademark

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

By Justin Davidson (HK) and James Kwong (HK) on April 27, 2023 Posted in Brands, Intellectual Property, Trademark

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

By Cameron Harvey (AU), Georgina Hey (AU), Mindaugas Skavronskas and Isobel Taylor (AU) on April 23, 2023 Posted in Brands, Consumer goods, Intellectual Property, Trademark

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

By Stephanie Schmidt (US) on April 17, 2023 Posted in Trademark

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

By Kaylee A. Sill (US) on April 11, 2023 Posted in Trademark

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

By Stephanie Schmidt (US) on April 5, 2023 Posted in Trademark

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

Jack Daniels Finally Has its Day Before the Supreme Court

By Felicia Boyd (US) on March 27, 2023 Posted in Trademark

The United States Supreme Court held oral arguments in connection with a 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, (22-148) (March 22, 2023). The toy replaces the … Continue reading

Supreme Court Considers the Reach of the Lanham Act Outside of United States

By Felicia Boyd (US) on March 23, 2023 Posted in Trademark

The United States Supreme Court heard arguments on Tuesday, March 21, 2023, on the international limitations, if any, of the Lanham Act. In Abitron Austria GmbH, et al., v. Hetronic International, Inc. (No. 21-1043), the Court heard arguments not only from counsel for the parties, but also the Biden administration, on whether the Lanham Act … Continue reading

A Later-Filed Unattacked Registration Establishes Priority in Board Proceedings

By Felicia Boyd (US) and Nathan Mannebach (US) on March 21, 2023 Posted in Trademark

In a precedential decision, The Trademark Trial and Appeal Board (“TTAB”) refused to reconsider its decision sustaining an opposition to registration of the mark “LOVETTE” on the basis of likelihood of confusion with the mark “NNENNA LOVETTE.” Nkanginieme v. Appleton, 2023 TTAB LEXIS 64 (TTAB Mar. 7, 2023). In its request for reconsideration Applicant, Lovette … Continue reading

Three Year Battle Ends with Lizzo Securing Registration for 100% THAT BITCH Mark

By Kaylee A. Sill (US) on February 17, 2023 Posted in Brands, Intellectual Property, Trademark

In a precedential decision, the Trademark Trial and Appeal Board (the “Board”) reversed two refusals to register Grammy-winning singer Lizzo’s 100% THAT BITCH trademarks. Lizzo’s company, Lizzo LLC, applied for two word trademarks in June 2019 for 100% THAT BITCH for various types of clothing after she popularized the phrase in her 2017 hit single … Continue reading

Do Not Be Fooled (Part 2): USPTO Issues Warning of Spoof Calls from Scammers

By Stephanie Schmidt (US) on February 3, 2023 Posted in General, Trademark

We have written previously on this blog warning of misleading solicitations. For years, scammers have impersonated the United States Patent and Trademark Office (USPTO) in mailings, seeking payments from trademark owners for nonexistent services, such as trademark renewals. This week, the USPTO warned of a new scheme targeting trademark owners. The USPTO put out an … Continue reading

Transliterations of Chinese Characters Require a Translation Statement

By Nathan Mannebach (US) on January 30, 2023 Posted in Intellectual Property, Trademark

The Trademark Trial and Appeal Board (“TTAB”) refused registration of the mark “ZHIMA” because the applicant, Advanced New Technologies Co., Ltd., did not submit a translation of ZHIMA into English. In re Advanced New Techs. Co., 2023 TTAB LEXIS 2, 2023 WL 181172 (TTAB Jan. 12, 2023). In the original refusal, the Examining Attorney determined … Continue reading

USPTO Adds 75 Climate and Green-Tech Terms to Trademark ID Manual

By Kaylee A. Sill (US) on January 27, 2023 Posted in Intellectual Property, Trademark

Earlier this month, the United States Patent and Trademark Office (USPTO) announced that it is adding new climate and green tech-related terms to the Trademark ID Manual. The USPTO has already added 75 terms that include biomethane, research and development in the field of wind energy, and treatment of captured landfill gasses. Practically, the addition … Continue reading

The Battle Continues After TTAB Refuses Registration for #LAW for Failure to Function as a Trademark

By Kirsten Hash (US) on January 25, 2023 Posted in Intellectual Property, Trademark

The Trademark Trial and Appeal Board (“TTAB”) refused registration of #LAW on the Principal Register finding that #LAW failed to function as a trademark. Pound Law, LLC (“Pound Law” or “Applicant”) was unable to convince the Board that its vanity phone number functions as a trademark for legal services and legal referral services. In re … Continue reading

TTAB Sustains Opposition Based on Applicant’s Failure to Secure the Consent of a Living Individual

By Felicia Boyd (US) and Kirsten Hash (US) on January 4, 2023 Posted in Intellectual Property, Trademark

Terminal Moraine Inc. (“Applicant” or “Terminal Moraine”) sought registration on the Principal Register of the mark: for the following goods and services: Mystery Ranch, Ltd. (“Mystery Ranch” or “Opposer”) opposed registration of the DANA DESIGN mark based on an alleged false suggestion of a connection with Mystery Ranch and Dana Gleason, Mystery Ranch’s co-owner, under … Continue reading

After Years of Hounding from Jack Daniel’s, Supreme Court Agrees to Hear Bad Spaniels Parody Trademark Case

By Felicia Boyd (US) and Meg Tierney (US) on December 7, 2022 Posted in Trademark

The dispute between Jack Daniel’s and VIP Products LLC (“VIP”) over a parody dog toy continues and will finally proceed to the Supreme Court. The case centers around a parody dog toy sold by VIP that mimics the label of a Jack Daniel’s whisky bottle. The toy replaces the text “Jack Daniel’s Old No. 7” … Continue reading

No Likelihood of Confusion Between “SMOKES & Design” and “SMOK”

By Felicia Boyd (US), Nathan Mannebach (US) and Katie Coopwood (US) on December 2, 2022 Posted in Trademark

The Trademark Trial and Appeal Board (“TTAB”) found that there was no likelihood of confusion between the “SMOKES & Design” mark owned by Fancy Pants Products, LLC (“Applicant”), generally used in connection with cannabis products, and the “SMOK” mark owned by Shenzhen IVPS Technology Co. Ltd (“Opposer”), generally used in connection with electronic cigarettes. Shenzhen … Continue reading

Supreme Court to Examine the Reach of the Lanham Act to Impose Liability on Conduct Outside of the United States

By Felicia Boyd (US) and Tim Kenny (US) on November 29, 2022 Posted in Intellectual Property, Trademark

Sections 32(1)(a) and 43(a)(1)(A) of the Lanham Act impose civil liability on any person who “use[s] in commerce” a trademark in a manner that “is likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. 1114(1)(a); 15 U.S.C. 1125(a)(1). Notably, the Lanham Act defines commerce broadly as “all commerce which may lawfully … Continue reading

NFTs and IP – Your opportunity to comment

By Felicia Boyd (US) and Susan Ross (US) on November 23, 2022 Posted in Copyright, Intellectual Property, Patents, technology and innovation, Trademark

On November 23, 2022, the US Patent and Trademark Office and the US Copyright Office issued a request for public comment on the subject of Non-Fungible Tokens (NFTs) and intellectual property rights. Comments are due by Monday, January 9, 2023. In addition, the Offices will offer three public roundtables: one panel on NFTs and patents … Continue reading

USPTO shortened office action response deadlines to go into effect in December

By Stephanie Schmidt (US) on October 19, 2022 Posted in Trademark

Starting on December 3, 2022, the timeframe for trademark applicants to respond to office actions at the U.S. Patent and Trademark Office (“USPTO”) will be shortened from six months to three months. This change is the result of the implementation of the Trademark Modernization Act of 2020 (“TMA”). You can find more information on the … Continue reading