On June 8, 2023, the Supreme Court in a unanimous decision held that a trademark claim concerning “a squeaky, chewable dog toy designed to look like a bottle of Jack Daniels whiskey” which, as a play on words, turns the words “Jack Daniels” into “Bad Spaniels” and the descriptive phrase “Old No. 7 Brand Tennessee Sour Mash Whiskey” into “The Old No. 2 On Your Tennessee Carpet” does not receive special First Amendment treatment where the accused infringer used the trademarks at issue to designate the source of its own goods and that, with respect to a Lanham Act dilution by tarnishment claim, “[t]he use of a mark does not count as noncommercial just because it parodies, or otherwise comments on, another’s products.”
On April 8, 2020, in In re: Forney Industries, Inc., the Federal Circuit reversed the Trademark Trial and Appeal Board’s finding that a color mark can never be inherently distinctive. By so holding, the Federal Circuit controverts what had become conventional wisdom since the Supreme Court’s decisions in Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159 (1995) and Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000).
Continue Reading The Federal Circuit Reconsiders the Inherent Distinctiveness of Color Marks in In re Forney
On March 31, 2020, the U.S. Patent and Trademark Office (USPTO) announced that it is permitting trademark applicants to request extensions of the time allowed to file certain documents and to pay certain fees due to the ongoing COVID-19 emergency in the United States. USPTO director Andrei Iancu has exercised temporary authority granted to him under Section 12004(a) of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed into law on March 27. The USPTO remains open for the filing of trademark and TTAB documents and fees.
Continue Reading USPTO Permitting Trademark Applicants to Extend Certain Deadlines Due to COVID-19
On March 27, 2020, President Trump signed the Coronavirus Aid, Relief, and Economic Security (CARES) Act into law. The CARES Act is a $2 trillion economic stimulus and rescue package designed to mitigate the economic impact of the COVID-19 global pandemic caused by the novel coronavirus, which has resulted in a level of societal and economic disruption that is unprecedented in living memory. Included in the bill is a temporary authorization to the Director of the United States Patent and Trademark Office (USPTO) during the pandemic to toll, waive, adjust, or modify any timing deadline under the patent or trademark laws. While the USPTO Director has not pointed to any specific change that will be made under the new authorization, it is possible that at least some timing deadlines will be modified to accommodate hardships faced by stakeholders during this crisis.
Continue Reading Congress Gives Patent and Trademark Office Temporary Authorization to Move Deadlines in Light of COVID-19 Pandemic
Federal district courts continue to apply the Supreme Court’s ruling in B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S.Ct. (2015) with unpredictable results. The latest such example comes from the Southern District of New York, where Judge Buchman, in reliance on B&B Hardware, precluded the defendant from contesting likelihood of confusion. Cesari S.R.L. v. Peju Province Winery L.P., 1:17-cv-00873-NRB (S.D.N.Y. Dec. 11, 2017).
Continue Reading Cesari S.R.L. v. Peju Province Winery L.P.: Relying on Supreme Court Precedent, District Court Holds that Trademark Trial & Appeal Board Finding of Likelihood of Confusion has Preclusive Effect
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 Consumers Are Unlikely to Confuse Yelp with a Local Property Management Company Using the Same Tagline in Ads, Court Rules
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 “malicious, fraudulent, deliberate or willful” infringement or where a frivolous case was brought or maintained in bad faith. That standard has been discarded and replaced by a different, more general test that asks whether the case stands out in terms of its strength or unreasonableness in the way it was litigated.
Continue Reading Ninth Circuit Retires Fee-Award Standard, Imports Octane Fitness to Trademark Cases
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 CHURRASCOS, holding that “churrascos” is a generic term for both a type of meat as well as a restaurant featuring that type of meat. The applicant, Cordua Restaurants, appealed the decision of the Board, arguing that the mark CHURRASCOS is incontestable based on Cordua’s already-existing federal registration for the word mark CHURRASCOS, and that the Board’s refusal was therefore an error.…