The Trademark Trial and Appeal Board (“TTAB”) sustained the objection of the publisher of the tech magazine WIRED (“Opposer”) to an Applicant’s (“Applicant”) bid to register the term “WIRED” for clothing but rejected its objection for fitness-related services. The Applicant sought registration for “WIRED” marks for fitness-related services and athletic clothing. The Opposer opposed the … Continue Reading
On August 23, 2022, the Trademark Trial and Appeal Board (“TTAB”) rejected on summary judgment JHO Intellectual Property Holdings’ (“Applicant”) application to register the mark “PURPLE RAIN” for a variety of nutritional supplements, dietary drinks, and energy bars (collectively, “Applicant’s Goods”). The TTAB found that the proposed mark falsely suggested a connection with the famous … Continue Reading
The Trademark Trial & Appeal Board (“TTAB”) affirmed the US Patent & Trademark Office’s (“PTO”) refusal to register two different logo marks filed by California’s County of Orange (“County”) on the ground that they constitute insignia of a municipality. In 2017, the County applied to register two logo marks. The application described one mark as … Continue Reading
In a precedential decision, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) affirmed the refusal to register the trademark GOD BLESS THE USA for home decor items on the ground that it failed to function as a trademark.[1] Additionally, the Board affirmed the Trademark Examining Attorney’s refusal to accept … Continue Reading
Slogans can, but do not always, function as trademarks. To be sure, the United States Patent and Trademark Office (“USPTO”) frequently allows slogans such as JUST DO IT! or QUALITY THROUGH CRAFTSMANSHIP, among many others, to be registered as trademarks. However, the USPTO’s recent trend has been to deny registration to slogans on the ground … Continue Reading
On June 30, 2020, the U.S. Supreme Court (the “Court”), in an 8-1 decision, affirmed the Fourth Circuit’s holding that “BOOKING.COM” is a protectable trademark, thereby rejecting a sweeping rule that a protectable trademark cannot be created by adding “.com” to an otherwise generic term.… Continue Reading
The Lanham Act (“Act”) makes it clear that generic terms cannot be registered as trademarks. But can an online business create a protectable trademark by adding a generic top-level domain (e.g., “.com”) to an otherwise generic term? The Supreme Court will answer this question in USPTO v. Booking.com, No. 19-46. The legal battle between Booking.com … Continue Reading
In a recent precedential decision concerning the rarely litigated or cited Section 2(b) of the Lanham Act, the Trademark Trial and Appeal Board affirmed a refusal to register the service mark: for tourism services on the ground that the mark includes a simulation of the American flag. In re Alabama Tourism Department, Serial No. 87599292 … Continue Reading
Section 15 of the Lanham Act, subject to certain specified exceptions, provides that the right of an owner “to use [a] registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration and is … Continue Reading
On April 8, 2020, the Federal Circuit Court of Appeals (the “Federal Circuit”), in In Re Forney Industries Inc reversed the Trademark Trial and Appeal Board (the “Board”) and held that multicolor designs may be inherently distinctive when used on product packaging. The court further held that multicolor designs need not be used within a well-defined … Continue Reading
The Federal Circuit in In re JC Hospitality LLC recently affirmed the United States Patent and Trademark Office, Trademark Trial and Appeal Board’s refusal to register the service mark THE JOINT for a venue offering entertainment and restaurant services. The Circuit affirmed the Board’s unusually high evidentiary standards for demonstrating that a trademark has … Continue Reading
In a recent decision on remand from the Federal Circuit, the Trademark Trial and Appeal Board (“Board”) rejected Petitioner adidas AG’s (“adidas”) claim that Respondent Christian Faith Fellowship Church (“CFFC”) abandoned its ADD A ZERO marks (both in standard character and design form), but agreed that the phrase, as used by CFFC in standard characters, … Continue Reading
In a precedential decision involving the “doctrine of foreign equivalents,” the Board found no likelihood of confusion between the mark RICHARD MAGAZINE for a website in the field of fashion and lifestyle and the mark RICARDO for goods and services, including publications, in the culinary field. Ricardo Media Inc. v. Inventive Software, LLC, Opposition No. … Continue Reading
The Federal Circuit upheld a Trademark Trial and Appeal Board (“Board”) decision refusing registration of an athletic apparel company’s trademark, holding that the trademark applicant waived its key arguments by not raising them before the Board. Hylete LLC v. Hybrid Athletics, LLC (Fed. Cir. 2019)… Continue Reading
In a case affecting the fast-growing legal cannabis industry, the Trademark Trial and Appeal Board (“TTAB” or “Board”) affirmed the United States Patent and Trademark Office’s (“USPTO”) refusal to register two trademarks for smokeless cannabis vaporizers because the goods were seen as unlawful drug paraphernalia under federal law. In re Canopy Growth Corporation by assignment … Continue Reading
The Federal Circuit recently sustained the Trademark Trial and Appeal Board’s (“TTAB” or the “Board”) refusal to register Louis Vuitton Malletier’s (“LVM”) trademark APOGÉE for perfumes, a decision that will concern trademark prosecution attorneys who seek to distinguish trademarks in United States Patent & Trademark Office (“USPTO”) likelihood of confusion refusals.… Continue Reading
The United States Patent and Trademark Office recently issued a new Examination Guide relating to trademarks for cannabis and cannabis-related goods and services. This much-anticipated guide comes after the December 20, 2018 enactment of the Farm Bill. … Continue Reading
William Adams is a musical performer who is more famously known by his stage name, will.i.am. A recent ruling from the United States Patent and Trademark Office, Trademark Trial and Appeal Board, unfortunately makes him a two-time loser at the USPTO. The case, In re i.am.symbolic, llc, Serial No. 85916778 (TTAB, August 8, 2018) (precedential), … Continue Reading
The New Jersey Turnpike Authority (“NJTA”) was forced to pay a big toll when the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”), dismissed its opposition to a pizza restaurant’s applied-for homage to the famous route to the Jersey shore. In New Jersey Turnpike Authority v. Jersey Boardwalk Franchising Co., … Continue Reading
In a precedential decision, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (“TTAB” or the “Board”) affirmed a refusal to register the logo: absent a disclaimer of the term “AMERICAN FURNITURE WAREHOUSE.” However, the Board also held that the phrase can acquire distinctiveness as a part of the overall trademark. In … Continue Reading
The Court of Appeals for the Federal Circuit recently extended First Amendment protections for trademark applications in In re Brunetti, No. 15-1109 (Fed. Cir. December 15, 2017), ruling that Section 2(a) of the Lanham Act’s prohibition against registration of “immoral and scandalous” matter violated free speech protections. This ruling comes as no surprise, in light … Continue Reading
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 … Continue Reading
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, … Continue Reading
The Supreme Court rejected the effort by the Washington Redskins to skip the 4th Circuit and Join the hearing of the USPTO appeal of the SLANTS case, both of which have been the subjects of blogs here.… Continue Reading
