Rachel B. Rudensky

Rachel B. Rudensky

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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TTAB Finds That Coexistence Agreement Does Not Support Coexistence

In a decision bound to impact trademark prosecution practice in the future, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) recently found that a consent agreement between a trademark applicant and the registrant of a similar prior-registered mark – that is, a coexistence agreement – was insufficient evidence that the parties’ respective use of … Continue Reading

The Hound’s-Tooth Bites Back: The Ghost of Paul “Bear” Bryant

Recently, a District Court judge issued a scathing rebuke to the United States Patent and Trademark Office in Board of Trustees of the University of Alabama et al. v. Houndstooth Mafia Enterprises LLC, (N.D. Alabama February 23, 2016).  Judge Proctor’s memorandum opinion upbraided the USPTO’s Trademark Trial and Appeal Board (“Board”) for ignoring his earlier-issued order to vacate the … Continue Reading

Stolichnaya: Comity or Confiscation; and Is That For US Courts to Decide?

The Second Circuit recently issued its latest ruling in a long-running legal battle over the trademark rights to the STOLICHNAYA trademark. In this latest decision in the 12-year dispute, the Court ruled that an agency of the Russian Federation has standing to sue the record owners of the U.S. trademark registration and its distributors in federal court under § 32(1) … 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

TTAB Makes Double Brown Ale Open to Nut Sack Mark

In a ruling bound to please 15 year-old boys everywhere, the USPTO Trademark Trial and Appeal Board (“TTAB”) reversed the Examining Attorney’s refusal to register the trademark NUT SACK DOUBLE BROWN ALE (in standard character format) for “beer” on the ground that it was immoral and scandalous under Section 2(a) of the Trademark Act. In re Engine 15 Brewing Co., Continue Reading

The North Face Scales Sanyang Applications For Clothing and Services

In The North Face Apparel Corp. v. Sanyang Industry Co., Ltd., Opp. No. 91187593 (September 18, 2015), the Trademark Trial and Appeal Board (“TTAB”) handed The North Face Apparel Corp. (“The North Face”) significant victories its battle against Sanyang Industry Co. Ltd.’s (“Sangyang”) registration of its trademark.  … Continue Reading

A Wolf in Swiss Clothing: TTAB Finds No Bona Fide Intent to Use

The number of successful oppositions against trademark applications based on a claim that the applicant had “no bona fide intent to use” has been increasing in recent years. On September 10, 2015, in Swiss Grill Ltd. v. Wolf Steel Ltd., the United States Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB”) maintained this trend by sustaining an … Continue Reading

When Theft is not a Federal or State Crime

In the most recent ruling in a lengthy and procedurally complex criminal case, a New York trial court dismissed a computer programmer’s criminal conviction under New York’s Unlawful Use of Secret Scientific Material law for copying his employer’s computer code. In People v. Aleynikov (No. 04447/2012, New York Supreme Court, New York County), Judge Daniel Conviser wrote in his 72-page … 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

Lucky Brand Not So Lucky

The Second Circuit ruled last week in favor of Plaintiff Marcel Fashion Group Inc. (“Marcel”), vacating the trial court’s grant of summary judgment in favor of Defendant Lucky Brand Dungarees, Inc. (“Lucky Brand”), which had dismissed Plaintiff’s claims of trademark infringement, false designation of origin and unfair competition under the doctrine of res judicata.  Since at least as early … Continue Reading

Is POM Wonderful?

Section 43(a) of the Lanham Act provides a private right of action for companies to sue their competitors for a wide variety of “false or misleading” commercial statements. Classic false advertising claims involve a defendant’s false or misleading statements either about its own or a competitor’s product when those statements lead to the plaintiff’s lost sales or damage to its … 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

Volitional Acts and Control: Copyright Infringement Liability of Online Sellers

The issue of whether a party has engaged in a volitional act, or has the ability to control an infringer, sufficient to result in liability for copyright infringement, either as a direct infringer or through vicarious copyright infringement, has taken on new significance due to the rise of online sellers providing goods and services.  In the recent case Gardner v. Continue Reading

Third Party Purchase of Others’ Trademarks as Search Engine Keywords

With consumers’ increasing use of Internet search engines to find the products they want, search engine optimization has become a key element in many businesses’ overall marketing strategy. One way to achieve this result is to purchase keywords from a search engine (Google calls them ‘Adwords’). Keyword advertising refers to advertisements that appear alongside or above natural search results (usually … Continue Reading

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