Category Archives: USPTO

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Supreme Court: Disparaging Speech Protected By First Amendment; Lanham Act Section 2(a) Unconstitutional: A Win for the Slants and the Skins

In a unanimous (albeit fractured) decision written by Justice Alito, the United States Supreme struck down a provision of the Lanham (Trademark) Act barring registration of “disparaging” trademarks, handing a victory to Asian-American rock band The Slants. In Matal v. Tam, No. 15-1293 (June 19, 2017), the Court held that the Lanham Act’s prohibition on registering federal trademarks that … Continue Reading

Making United States Consumer Safer For Tequila?

The United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) recently dismissed Luxco, Inc.’s (“Luxco”) opposition to registration of the mark TEQUILA (in standard character format) by an official Mexican regulator as a certification mark for “distilled spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant.” Luxco, Inc. v. Consejo Regulador del Continue Reading

Supreme Court Grants Cert. in USPTO Appeal of Slants Decision: Whether The Ban On Offensive Trademarks Violates The First Amendment

The Supreme Court granted the United States Patent and Trademark Office’s petition for certiorari in In re Tam, 117 USPQ2d 1101 (Fed. Cir. 2016), discussed here and here. In that case, the USPTO denied registration of an application to register the trademark THE SLANTS for a rock/dance on the grounds that it was offensive to Asians or Asian-Americans.… Continue Reading

Generic Churrascos at the Federal Circuit

The Federal Circuit recently provided additional guidance concerning whether an applied-for mark is generic in In re Cordua Restaurants, Inc., (May 13, 2016).  This case stemmed from the United States Patent and Trademark Office’s refusal to register the trademark CHURRASCOS (Stylized) in connection with “bar and restaurant services; catering.”  Applicant Cordua Restaurants, LP (“Cordua”) has long owned and operated … Continue Reading

USPTO Drops 11th Circuit Appeal of ND Alabama Order In Houndstooth Case

We previously blogged ([here]) on Judge Proctor’s (ND Ala.) order directing the United States Patent and Trademark Office (the “Board”) to comply with the Court’s prior order, approving a settlement agreement between the University of Alabama and trademark applicant Mafia Enterprises LLC, which included vacating a prior Board decision that had been appealed to the District Court.  Although … Continue Reading

In re Tam Redux Redux: Redskins Petition for Certiorari, Trying to Skip 4th Cir.

In response to the United States Patent and Trademark Office’s (“USPTO”) petition for writ of certiorari in to the U.S. Supreme Court In re Tam (“THE SLANTS” case), the owners of the Washington Redskins filed their own petition for certiorari, asking the justices to hear their trademark case before the Fourth Circuit Court of Appeals weighs in. Pro-Football Inc. Continue Reading

In re Tam Redux: The PTO seeks Certiorari

On April 20, 2016, the United States Patent and Trademark Office (“PTO”) filed a petition for a writ of certiorari to the Federal Circuit seeking Supreme Court review of that Court’s decision in In re Tam, 117 USPQ2d 1001 (Fed. Cir. 2016), holding the disparagement provision of Section 2(a) of the Lanham Act, 15 USC §1052(a), to be facially … Continue Reading

In re Tam: Section 2(a) Unconstitutional Under The First Amendment

In a landmark First Amendment decision relating to the Lanham (Trademark) Act, the Federal Circuit, en banc, struck down § 2(a) of the Lanham Act, 15 U.S.C.  § 1052(a), the statutory provision barring registration of “disparaging” marks.  By a 9-3 vote, the Court held that § 2(a) violates a trademark applicant’s free speech rights.  In re Tam, No. … Continue Reading

Trademark Specimens: Singular or Plural Matters

The Trademark Trial and Appeal Board recently re-designated as precedential its May 12, 2015 decision that affirmed refusal to register a mark because the applicant’s specimens – showing the proposed mark in plural form, rather than in singular form – did not show the mark’s use in connection with any of the services specified in its application.… Continue Reading

Caveat Opposer: Preclusion Lurks at the TTAB

Recently, the Trademark Trial and Appeal Board (the “TTAB”) held that an unsuccessful opposer was precluded from later pursuing a cancellation against the same trademark owner, even though the opposer assumed a different corporate identity and the marks, goods and services at issue in the opposition proceeding were different from the marks, goods and services at issue in the cancellation … Continue Reading

Heinz Seeks “Smart” De Novo Review In Light Of B&B Hardware

H.J. Heinz Co. (“Heinz”) filed a federal lawsuit recently against Boulder Brands USA (“Boulder”) seeking to vacate and reverse a Trademark Trial and Appeal Board decision finding that Boulder’s SMART BALANCE trademark is not likely to be confused with Heinz’s SMART ONES trademark, and that the SMART ONES trademark is not famous.  H.J. Heinz Co. v. Boulder Brands USA, IncContinue Reading

The House That Juice Built: TTAB Denies Registration To Parodies

On May 8, 2015, the Trademark Trial and Appeal Board (the “Board”) issued a resounding blow to trademark applicants who seek to register others’ trademarks as parodies.  In New York Yankees Partnership v. IET Products and Services, Inc., Opposition No. 91189692 (May 8, 2015), the Board announced that “parody” or “fair use” can never function as a defense in … Continue Reading

B&B Hardware: Sometimes, Not Always, Not Never

The Supreme Court issued its second trademark ruling of the term on Tuesday, ruling that federal court decisions on “likelihood of confusion” sometimes can be precluded by earlier rulings about trademark registrability issued from the Trademark Trial and Appeal Board (“TTAB” or “the Board”). Petitioner B&B Hardware, Inc. (“B&B”) and respondent Hargis Industries, Inc. (“Hargis”) both manufacture and sell metal … Continue Reading

Overclaiming in Trademark Applications: “Full Line of …”

In Ferring B.V. v. Fera Pharmaceuticals, LLC, the Eastern District of New York was called upon to determine the importance of the United States Patent and Trademark Office’s Trademark Manual of Examining Procedure (“TMEP”) and its guidelines in determining the validity of a federally registered trademark.  The Court declined to afford the TMEP an elevated status.   

Ferring is a … Continue Reading

USPTO: Over Half of Applications/Declarations Studied Over-Claim Covered Goods/Services

It has long been the practice of certain brand owners to include more goods in a use-based trademark application or declaration than were actually being used.  That was typically innocent.  However, under Trademark Trial and Appeal Board (“TTAB”) precedent such as Medinol v. Neuro Vasx, Inc., 67 USPQ2d 1205, 1209 (T.T.A.B. 2003), over-claiming risked cancellation of the application and/or … Continue Reading

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