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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Foreign Equivalents: Ricardo and Richard

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. 91235063 (August 21, 2019) [precedential]… Continue Reading

Collective Membership And Preserving The Heritage of Pierce Arrow

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 user of the mark is … Continue Reading

How Many Types of Wines Are There: BIG SIX? Really?

The Trademark Trial and Appeal Board recently affirmed the refusal to register a trademark application for BIG SIX for wine on the ground that the term is generic or descriptive of wines. In re Plata Wine Partners, LLC, Serial No. 87292254 (August 22, 2019) [not precedential]

Applicant filed an intent to use trademark application for BIG SIX for wine, … Continue Reading

Cannabis Trademarks Redux

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 from JJ206, LLC, Serial … Continue Reading

APOGEE at its Nadir for Louis Vuitton at Federal Circuit

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

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 courts for decades.… Continue Reading

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

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, 877 F.3d … Continue Reading

Rapunzel May Be Released From Trademark Monopoly Tower

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 Prof. Curtin’s opposition to registration … Continue Reading

The Skinny on “Thins”

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 of corn, namely popped … Continue Reading

Ninth Circuit Extends Tam 1st Amendment Protections to Advertising

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 is to … Continue Reading

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

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), is Mr. Adams’s second failed … Continue Reading

The New Jersey Turnpike Authority Pays a Big Toll for Pizza

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., (Opposition No. 91219067 and Cancellation … Continue Reading

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

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 re American Furniture Warehouse CO,Continue Reading

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

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 of the rulings in … Continue Reading

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

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 Court ruled that “functional” … Continue Reading

No Twist on Pretzel Crisps on Remand

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 all parties are entitled to … Continue Reading

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

The Yellow Pages Live On

Calling the district court’s action an “abuse of discretion,” the 11th Circuit reversed a decision that cut by more than 90 percent a successful copyright infringement plaintiff’s request for attorney’s fees and costs. Yellow Pages Photos, Inc. v. Ziplocal, L.P., No. 16-11868 (January 24, 2017). This is the latest decision issued in the long-running dispute between Yellow Pages Photos, … 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

A Family Victory! Victory! Just Not for Little Caesars

The United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) modified its treatment of the “family of trademarks” doctrine in the recent case In re LC Trademarks, Inc., Serial No. 85890412 (December 29, 2016) [precedential]. All but breaking with its past decisions on the doctrine, the Board has now announced the new rule that ex Continue Reading

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