Category Archives: TTAB

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Certiorari Granted to Jack Daniel’s with Respect to Parody Dog Toy: Does Anyone Here Have a Sense of Humor, and Does it Matter?

On November 21, 2022, the Supreme Court granted certiorari on the following questions described in Jack Daniel’s petition: Respondent VIP Products LLC markets and sells dog toys that trade on the brand recognition of famous companies such as petitioner Jack Daniel’s Properties, Inc. The district court found that VIP’s use of Jack Daniel’s trademarks to … Continue Reading

TTAB Sustains WIRED Magazine’s § 2(d) Objection to Application to Register “WIRED” As A Mark for Clothing, But Not for Fitness Services

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

TTAB Rains on ‘Purple Rain’ Energy Drink Trademark Application

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

Municipal Takedown: TTAB Refuses to Register the County of Orange Logos

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

The Third Circuit Limits Preclusive Effect of the TTAB Rulings

On September 17, 2021, the Third Circuit held in Beasley v. Howard that trademark cancellation proceedings before the Trademark Trial and Appeal Board (“TTAB”) do not have claim preclusive effect against trademark infringement lawsuits in federal district courts because of the TTAB’s limited jurisdiction. The case involves two musicians, David Beasley and William Howard, who … Continue Reading

Proud to Be an American, God Bless The USA, But Not Functioning as A Trademark

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

Lehman Brothers is Gone but Not Abandoned

On September 30, 2020, the Trademark Trial and Appeal Board ruled in favor of the assignee of the famous LEHMAN BROTHERS trademark against the registration that mark as a brand name for beer, spirits, and bar and restaurant services, finding that the LEHMAN BROTHERS mark had not been abandoned.  Barclays Capital, Inc. v. Tiger Lily … Continue Reading

2(b) Prohibition On “Flag Marks” Bars Use of Flag as Part of a Mark

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

Federal Circuit Colors Outside the Lines with a New Shade of Multi-Color Trademarks Protectability

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

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

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

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

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

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

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 … 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 … 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

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 … 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., … 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 … 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 … Continue Reading

B&B Hardware Precludes Defense To Likelihood Of Confusion In District Court

In 2015, the Supreme Court, in its decision in B&B Hardware, Inc. v. Hargis Industries, Inc. (“B&B”), held that sometimes issue preclusion should apply to prior Trademark Trial and Appeal Board (“TTAB”) decisions. 135 S. Ct. 1293 (2015). Under this directive, if the TTAB decides the issue of “likelihood of confusion” when making a determination … 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 … 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 … Continue Reading
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