Tag archives: trademark

Sweeter than Watermelon: When are Fruit Designs Functional?

Photo of Nathan Mannebach (US)By Nathan Mannebach (US) on Posted in Trademark
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

Photo of Meg K. Tierney (US)By Meg K. Tierney (US) on Posted in Trademark
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

Photo of Felicia Boyd (US)By Felicia Boyd (US) on Posted in Trademark
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

Photo of Kaylee A. Sill (US)By Kaylee A. Sill (US) on Posted in Intellectual Property, Trademark
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

Photo of Stephanie Schmidt (US)By Stephanie Schmidt (US) on Posted in Trademark
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?

Photo of Nathan Mannebach (US)By Nathan Mannebach (US) on Posted in 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?

Photo of Meg K. Tierney (US)By Meg K. Tierney (US) on Posted in Trademark
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

Photo of Kaylee A. Sill (US)By Kaylee A. Sill (US) on Posted in Trademark
** 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

Photo of Stephanie Schmidt (US)By Stephanie Schmidt (US) on Posted in Trademark
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

Photo of Nathan Mannebach (US)By Nathan Mannebach (US) on Posted in Intellectual Property, Trademark
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?

Photo of Justin Davidson (HK)Photo of James Kwong (HK)By Justin Davidson (HK) and James Kwong (HK) on Posted in Brands, Intellectual Property, Trademark
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

Photo of Meg K. Tierney (US)By Meg K. Tierney (US) on 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

Photo of Andrea Shannon (US)By Andrea Shannon (US) on 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

Up in Smoke: TTAB Denies Registration for Cannabis Paraphernalia

Photo of Stephanie Schmidt (US)By Stephanie Schmidt (US) on 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

Photo of Nathan Mannebach (US)By Nathan Mannebach (US) on 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

Photo of Justin Davidson (HK)Photo of James Kwong (HK)By Justin Davidson (HK) and James Kwong (HK) on 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

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

Photo of Stephanie Schmidt (US)By Stephanie Schmidt (US) on 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

Photo of Kaylee A. Sill (US)By Kaylee A. Sill (US) on 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

Photo of Stephanie Schmidt (US)By Stephanie Schmidt (US) on 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

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

Photo of Felicia Boyd (US)By Felicia Boyd (US) on 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

Photo of Felicia Boyd (US)Photo of Nathan Mannebach (US)By Felicia Boyd (US) and Nathan Mannebach (US) on 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

Photo of Kaylee A. Sill (US)By Kaylee A. Sill (US) on 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
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