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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The Yellow Pages Live On

By Ira S. Sacks and Rachel B. Rudensky on Posted in Attorneys' Fees, Copyrights, IP Litigation
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 … Continue Reading

Making United States Consumer Safer For Tequila?

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

A Family Victory! Victory! Just Not for Little Caesars

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB
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 … Continue Reading

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

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

Trade Dress Claim Based on Shoe’s Rectangular Metal Toe Plate Booted by SDNY

By Ira S. Sacks and Rachel B. Rudensky on Posted in IP Litigation, Trademarks
The Southern District of New York recently booted shoe manufacturer LVL XIII Brands, Inc.’s trade dress infringement suit against Louis Vuitton Malletier S.A. in LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.. At issue in this lawsuit was Plaintiff LVL XIII’s claim to exclusive trade dress rights in a rectangular metal toe plate on … Continue Reading

Nominative Fair Use: The Second Circuit Joins Neither The Third Nor Ninth Circuits In Its Approach

By Ira S. Sacks and Rachel B. Rudensky on Posted in IP Litigation, Trademarks
In an important decision delineating the boundaries of fair use of another person’s trademark, the Second Circuit announced a standard by which nominative fair use of a trademark will be evaluated in that Circuit in International Information Systems Security Certification Consortium, Inc. v. Security University, LLC. Because the Court ruled that the district court made … Continue Reading

Generic Churrascos at the Federal Circuit

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

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

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

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

By Ira S. Sacks and Rachel B. Rudensky on Posted in Due Process, Trademarks, TTAB, USPTO
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 … Continue Reading

FLANAX: Protecting Foreign Marks from US Unfair Competition Under Section 43(a)

By Ira S. Sacks and Rachel B. Rudensky on Posted in False Advertising, Trademarks, TTAB
In today’s increasingly global economy, trademark owners are more frequently butting up against the territorial limitations of trademark law. It has long been a matter of black letter law that trademark rights are territorial, subsisting only within the borders of the country where they are obtained.  This general rule can present serious obstacles to foreign … Continue Reading

TTAB Finds That Coexistence Agreement Does Not Support Coexistence

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB
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 … Continue Reading

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

By Ira S. Sacks and Rachel B. Rudensky on Posted in IP Litigation, Trademarks, TTAB, Uncategorized
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 … Continue Reading

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

By Ira S. Sacks, Mark S. Lafayette and Rachel B. Rudensky on Posted in Trademarks
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 … Continue Reading

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

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

TTAB Makes Double Brown Ale Open to Nut Sack Mark

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB
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 … Continue Reading

The North Face Scales Sanyang Applications For Clothing and Services

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

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trademarks, TTAB
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 … Continue Reading

When Theft is not a Federal or State Crime

By Ira S. Sacks and Rachel B. Rudensky on Posted in Trade Secrets
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 … Continue Reading
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