Tag archives: intellectual property

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

Who’s in control? Liability for copyright infringement by contractors and software developers

The High Court recently delivered its decision in Real Estate Tool Box v Campaigntrack 1 relating to copyright authorisation. The High Court held that the appellants, who had engaged a third party software developer to create a real estate marketing system for their use, were not liable for copyright infringement, as they had not authorised the developer’s infringement of Campaigntrack’s … 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

Trade Marks in the Virtual World: Is your Business Well Meta-Versed in Emerging Technology?

Introduction Digital technologies such as the metaverse, non-fungible tokens (NFTs), blockchain and augmented realities are directly influencing how we cultivate and protect various forms of intellectual property, including trade marks.   We have previously written about key steps for brand owners to consider for their trade mark strategy in the metaverse and since then, earlier … 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

“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

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

China’s accession to the Apostille Convention: Authentication procedure for foreign documents used in China to be greatly simplified

On March 8, 2023, China deposited an instrument for accession to the Convention of 5 October 1961 Abolishing the Requirement of Legalisation for Foreign Public Documents (also known as the “Apostille Convention”). Upon the scheduled implementation of the Apostille Convention in China on November 7, 2023, the expensive and time-consuming consular legalisation procedure that foreign … 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

A Later-Filed Unattacked Registration Establishes Priority in Board Proceedings

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

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

Transliterations of Chinese Characters Require a Translation Statement

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

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

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

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

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

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
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