Category Archives: Trademarks and Trade Dress

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Consumers Are Unlikely to Confuse Yelp with a Local Property Management Company Using the Same Tagline in Ads, Court Rules

In a ruling that neatly illustrates some of the challenges a company is likely to face when trying to enforce trademark rights in an advertising tagline, a federal judge in the Northern District of California recently denied a motion for a preliminary injunction seeking to enjoin Yelp’s use of a trademarked tagline.… Continue Reading

Ninth Circuit Retires Fee-Award Standard, Imports Octane Fitness to Trademark Cases

This week, the U.S. Court of Appeals for the Ninth Circuit joined a majority of appellate courts that have rejected rigid tests for attorneys’-fees awards in favor of flexible discretion at the district court level.  The Ninth Circuit’s pre-Octane Fitness rulings provided a safe-harbor for litigants: fees were only to be awarded in instances of … Continue Reading

Lee v Tam

The Supreme Court agreed on September 29 to consider whether a provision of the Lanham Act that allows the USPTO to refuse to register “disparaging” trademarks violates the constitutional right to free speech.  The case is Lee v. Tam (Docket No. 15-1293).… Continue Reading

Parent Company Furnishes Cancellation of Subsidiary’s Trademark Registration

Does your company’s wholly-owned subsidiary own trademarks in its own name?  Has your company acquired any companies that own trademarks?  If so, your company’s use of those trademarks will not prevent cancellation of those trademark registrations unless you have proper trademark license agreements in place.  This is exactly what happened to Floorco Enterprises, LLC’s NOBLE … Continue Reading

TTAB Precedential Decision: Time Limit for Adding Claims Is Tolled by Filing of Cancellation Within Registration’s Fifth Anniversary

In a precedential decision, the Trademark Trial and Appeal Board (“TTAB”) held that the filing of a cancellation petition before the five-year anniversary mark of a registration tolls Trademark Act Section 14 for purposes of adding claims to a proceeding. Ashland Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp., Cancellation No. 92057294, … Continue Reading

Federal Circuit Affirms Refusal to Register “Churrascos” Based on Genericness, Despite Prior Federal Registration of the Mark

The U.S. Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s refusal to register the stylized mark CHURRASCOS for bar and restaurant services based on genericness.  In re Cordua Restaurants, Inc., 2016 WL 2786364 (Fed. Cir. May 13, 2016). The Board refused registration of the stylized version of the mark … Continue Reading

T.T.A.B. Emphasizes the Fame of the Movie ‘Jaws’ in Its Refusal to Register a Cooking Show’s Mark

On March 16, 2016, the TTAB affirmed the refusals of an applicant’s mark, JAWS DEVOUR YOUR HUNGER, for online streaming cooking shows, holding that it is confusingly similar to the registered mark from the movie JAWS. Though the Board will rarely consider the fame of a mark in its du Pont analysis, the fame of … Continue Reading

Summary of Recent Precedential Trademark Trial and Appeal Board Decisions

From June through August 2015, the Trademark Trial & Appeal Board issued eleven precedential decisions.  Over the course of the upcoming weeks, we are briefly summarizing each opinion and a “take away” for brand owners and practitioners.  We continue our series with summaries of UVeritech, Inc. v. Amax Lighting, Inc. and In re Driven Innovations, … Continue Reading

Summary of Recent Precedential Trademark Trial and Appeal Board Decisions

From June through August 2015, the Trademark Trial & Appeal Board issued eleven precedential decisions. Over the course of the upcoming weeks, we will briefly summarize each opinion and a “take away” for brand owners and practitioner. We begin with the first two opinions (in chronological order): The Board of Trustees of The University of … Continue Reading

B&B Hardware v. Hargis – U.S. Supreme Court Declares TTAB Findings Can Have Preclusive Effect on Subsequent Federal Court Decisions

On Tuesday, March 24, 2015, the U.S. Supreme Court issued its second decision in substantive trademark law in nearly a decade.  B&B Hardware, Inc. v. Hargis Indus., Inc., No. 13-352, slip op., 575 U.S. __ (2015).  Sheppard Mullin argued on behalf of the prevailing respondent in the first case, Hana Financial, Inc. v. Hana Bank, … Continue Reading

Supreme Court Update – Hana Financial v. Hana Bank

Sheppard Mullin’s intellectual property group prevailed before the United States Supreme Court in the trademark matter entitled Hana Financial v. Hana Bank.  574 U.S. ___ (2015).  Justice Sotomayor, writing for a unanimous court, affirmed a Ninth Circuit ruling that the doctrine of trademark tacking presents a question of fact appropriate for jury determination.  735 F.3d … Continue Reading

Intent To Use – It’s Not The Thought That Counts

Bona fide intent, the sine qua non of non-use trademark applications, was given new meaning by the TTAB in a decision released unpublished February 21, 2014 but redesignated as precedent on March 26, 2014, thus placing at risk similar applications for oppositions and issued registrations for cancellation.  The decision, Lincoln National Corporation v. Anderson, Consolidated … Continue Reading

Are Circuit Courts of Appeals Split as to the Preclusive Impact Accorded to Prior Trademark Trial and Appeal Board Decisions?

Battles between brand owners are frequently fought in the United States in two forums:  the Trademark Trial and Appeal Board and federal district court.  While the TTAB is limited to determining a party’s right to register its trademark, district courts may adjudicate rights to registration and use of a mark.  When prosecuting or defending an … Continue Reading

Kraft v. Cracker Barrel: A Summary of Judge Posner’s Opinion and an Alternative Reverse Confusion Theory of Liability

In a unanimous opinion authored by Judge Posner, the Seventh Circuit recently upheld the district judge’s granting of plaintiff Kraft Foods Group Brands LLC’s motion to preliminarily enjoin defendant Cracker Barrel Old Country Store, Inc.’s sale of food products to grocery stores under the CRACKER BARREL trademark.  The opinion is worth examining given the commercial … Continue Reading

A Slam Dunk For Trademarking Sports Catchphrases

By Ryan Hilbert Following on the heels of New York Jets quarterback Tim Tebow’s attempt to register the trademark "Tebowing," Baltimore Ravens linebacker Terrell Suggs’ attempt to register the trademark "Ball So Hard University," and New York Knicks phenom Jeremy Lin’s attempt to register the trademark "Linsanity," it appears that another high-profile athlete, former University … Continue Reading

Louis Vuitton Achieves Genuine Victory Over Flea Market’s Phony Sales

Luxury brand titan Louis Vuitton recently achieved a significant victory over counterfeiting of its designer products. In an action brought in the U.S. District Court for the Western District of Texas, Louis Vuitton sued the Eisenhauer Road Flea Market, its owner, Bruce L. Gore, and its manager, Patricia D. Walker, for contributory trademark infringement, alleging … Continue Reading

Trademarks In The Veldt: Do Virtual Lawyers Dream Of Electric Trademarks?

In Neal Stephenson’s 1992 science fiction novel, Snow Crash, humans interact as avatars in the “Metaverse,” the collective product of online shared three-dimensional space.[1] As imagined by Stephenson, this “Metaverse” has been created by all virtual worlds[2] – it is an augmented and enhanced physical reality, a physically persistent virtual space.[3] The novel is set … Continue Reading

Adjusting the Inequitable Conduct Doctrine: Federal Circuit Hears Oral Arguments En Banc in Therasense

By Gray M. Buccigross On November 9, 2010, the Federal Circuit, sitting en banc, heard oral arguments in Therasense, Inc. v. Becton, Dickinson & Co., regarding the legal tests to be applied in determining whether a patent is unenforceable due to inequitable conduct. This has been a controversial issue over the last several years among … Continue Reading

Gucci’s Attempt to Extend Trademark Infringement Liability to Credit Card Merchant Service Providers Survives Motion to Dismiss

Judge Harold Baer in Gucci America, Inc. v. Frontline Processing Corp., No. 09 Civ. 6925 (HB), 2010 WL 2541367 (S.D.N.Y. June 23, 2010), ruled that Gucci had sufficiently alleged facts to defeat a motion to dismiss in a suit brought against three defendant credit card merchant service providers for trademark infringement. The litigation stems out … Continue Reading

Federal Circuit Clarifies Standard For Proving “Fraud” in Trademark Renewals

On August 31, 2009, the United States Court of Appeals for the Federal Circuit issued a decision holding that, in order for a trademark registration to be canceled on the basis of fraud, the party challenging the registration must prove that the registrant had actual intent deceive the United States Patent and Trademark Office (“PTO”). … Continue Reading
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