Rachel B. Rudensky

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Rachel Rudensky assists her clients in all facets of brand development around the world. She represents clients in a wide variety of sectors including, fashion, entertainment, hospitality, professional sports, healthcare, financial services, and consumer goods. Her practice encompasses trademarks, copyrights, and internet disputes involving domain names.

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Lanham Act Preemption of State Law Where Cannabis Trademarks Are At Issue

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB
As cannabis products become legal in more and more states, commercial interest grows in protecting the trademarks associated with those products.  The United States Patent and Trademark Office has maintained its refusal to register trademarks for most cannabis-based products on the ground that use of those products is federally unlawful.  But what about state or … Continue Reading

Prior Use Under the Pan-American Convention

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB
The United States is a party to the General Inter-American Convention for Trade Mark and Commercial Protection of Washington, 1929 (“Pan-American Convention”), along with Colombia, Cuba, Guatemala, Haiti, Honduras, Nicaragua, Panama, Paraguay and Peru. The Pan-American Convention governs the treatment of trademarks, trade names, unfair competition, and false indications of geographical origin or source. It basically … Continue Reading

The Joint is Just a Music Joint, Not a Trademark

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, USPTO
  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

When Abandonment Isn’t Abandonment: Use of an “Abandoned” Mark by a Subsidiary

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB
The Trademark Trial and Appeal Board (the “Board”) recently held that AT&T Mobility, LLC (“AT&T”) had sufficient interest in its almost completely moribund CINGULAR name to oppose two pending trademark applications filed by an unrelated party. AT&T Mobility, LLC v. Mark Thomann and Dormitus Brands, LLC, Opposition No. 91218108 (TTAB February 10, 2020).… Continue Reading

Unitary Design Mark Rescues a Phrase Which Failed To Function As A Trademark

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, USPTO
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

Foreign Equivalents: Ricardo and Richard

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, USPTO
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

Collective Membership And Preserving The Heritage of Pierce Arrow

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB
In a recent decision concerning the scope of protection for collective membership marks, the Trademark Trial and Appeal Board sustained The Pierce-Arrow Society’s opposition to registration of PIERCE-ARROW for “automobiles” by Applicant Spintek Filtration, Inc. The Pierce-Arrow Society v. Spintek Filtration, Inc., Opposition No. 91224343 (August 12, 2019) [precedential] A “collective membership” indicates that the … Continue Reading

Cannabis Trademarks Redux

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB, USPTO
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

APOGEE at its Nadir for Louis Vuitton at Federal Circuit

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB, USPTO
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

Rejection (In Bankruptcy) Does Not Spurn Trademark Licensees

By Ira S. Sacks and Rachel B. Rudensky on Posted in Supreme Court, Trademarks
The United States Supreme Court in Mission Product Holdings, Inc. v. Tempnology, LLC (No. 17-1657) (May 20, 2019) resolved a deep circuit split and held that a licensees’ rights under trademark licenses survive a debtor-licensor’s rejection in bankruptcy, resolving an ambiguity presented in the intersection of intellectual property law and bankruptcy law that has plagued … Continue Reading

Disparaging, Immoral and Scandalous Trademarks in the Supreme Court: Beyond Tam to Brunetti

By Ira S. Sacks and Rachel B. Rudensky on Posted in Supreme Court, Trademarks
This blog has followed the evolving judicial views concerning disparaging trademarks, culminating in the Supreme Court’s decision in in Matal v. Tam, 137 S. Ct. 1744 (June 19, 2017). Our extensive coverage can be found here. We have also followed the closely related issue of the “immoral or scandalous” clause presented in In re Brunetti, … Continue Reading

Rapunzel May Be Released From Trademark Monopoly Tower

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB
Rapunzel potentially was released from the trademark monopoly tower, not by her hair, but by trademark opposer and law professor Rebecca Curtin. In a decision issued on December 28, 2018, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) denied trademark applicant United Trademark Holdings, Inc.’s (“Applicant”) motion to dismiss … Continue Reading

The Skinny on “Thins”

By Ira S. Sacks and Rachel B. Rudensky on Posted in IP Litigation, Trademarks
According to the Federal Circuit, the skinny on the term “Thins” is that it may be generic for thinly cut snack crackers. Real Foods Pty Ltd. V. Frito-Lay North America, Inc., (October 4, 2018 Fed. Cir.). In 2012, Real Foods Pty. Ltd. (“Real Foods”) applied to register the trademarks CORN THINS for “crispbread slices predominantly … Continue Reading

Ninth Circuit Extends Tam 1st Amendment Protections to Advertising

By Ira S. Sacks and Rachel B. Rudensky on Posted in Advertising, IP Litigation, Trademarks
The Ninth Circuit extended the First Amendment protections enunciated by the Supreme Court in Matal v. Tam, 137 S.Ct. 1744 (2017)[1] to advertising in American Freedom Defense Initiative, et al. v. King County (9th Cir. Sept. 27, 2018). Plaintiff American Freedom Defense Initiative is an organization co-founded by Pamela Geller and Robert Spencer, whose focus … Continue Reading

Hashtag Is Not Enough to Save Another will.i.am Trademark Application

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, USPTO
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 Pays a Big Toll for Pizza

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB, USPTO
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

TTAB Guidance on Disclaimers and Acquired Distinctiveness: “Furniture Warehouse” Must Be Disclaimed, But “American” Need Not

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB, USPTO
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

Tam Extended: Prohibition of “Immoral and Scandalous” Trademarks Unconstitutional

By Ira S. Sacks and Rachel B. Rudensky on Posted in IP Litigation, Trademarks, TTAB, USPTO
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

TTAB Seals Fate of Trade Dress Claims for Design Covered By Utility Patent

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB
It is natural for manufacturers to seek to widen their intellectual property protection. In the seminal case TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 US 23 (2001), the Supreme Court struck down the plaintiff’s attempt to expand the reach of its expired utility patents by claiming trade dress protection in those designs. The Supreme … Continue Reading

No Twist on Pretzel Crisps on Remand

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB
In a 54 page decision issued on September 6, 2017, the Trademark Trial and Appeal Board (the “Board”) ended (again) a long-standing dispute between snack food makers Frito-Lay, Inc. (“Frito”) and Princeton Vanguard, LLC (“Princeton Vanguard”) over the registrability of Princeton Vanguard’s PRETZEL CRISPS trademark. Frito claimed that “Pretzel Crisps” was a generic term that … Continue Reading

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

By Ira S. Sacks and Rachel B. Rudensky on Posted in Supreme Court, Trademarks, USPTO
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
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