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

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 common law rights in trademarks for cannabis products?  In a recent order denying summary judgment, the Northern District of California in Kiva Health Brands, Inc. v. Kiva Brands, Inc.  held that a party’s state and common law trademark did not confer trademark priority in a trademark infringement suit based on the federal Lanham (Trademark) Act. Continue Reading

Prior Use Under the Pan-American Convention

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 gives trademark owners in contracting states protection of their marks in other contracting states “where the mark was known to have been previously used in the region.” This confers unique benefits to trademark owners from these countries, because generally trademark rights are territorial — a trademark is protectable only where it is used or registered. Continue Reading

The Joint is Just a Music Joint, Not a Trademark

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 acquired distinctiveness. Continue Reading

Royal Palm Properties’ Trademark Gets Royal Treatment At The 11th Circuit

Posted in Trademarks

This trademark litigation arises out of a contentious real-estate rivalry in a very wealthy residential community called Royal Palm Yacht & Country Club in Boca Raton, Florida.  It presents a comprehensive overview of standards for trademark cancellation and for appeal from a judgment as a matter of law after a jury trial.

Plaintiff Royal Palm Properties, is a real-estate agency that focuses exclusively on the Royal Palm Yacht & Country Club community.  In 2012, Royal Palm Properties acquired a federally registered service mark on the name “Royal Palm Properties,” asserting that it had  “acquired distinctiveness” over time, even though the mark might not be “inherently distinctive.”  See 15 U.S.C. § 1052(f). Continue Reading

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

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

Cert. Roundup:

Posted in IP Litigation, Patents, Supreme Court, Trademarks
  • ABA (as amicus) Asks the Supreme Court to Adopt a Flexible Rule for Recapture of Profits in Trademark Cases

  • Intellectual Property Owners Association (as amicus) Argues That a Willfulness Requirement Is Consistent with the Statute and Principles of Equity

The American Bar Association (“ABA”) filed an amicus brief with the Supreme Court in support of the petitioner in Romag Fasteners, Inc. v. Fossil, Inc., No. 18-1233. The ABA’s brief urges the Court to interpret Section 35(a) of the Lanham Act, 15 U.S.C. § 1117(a), as not requiring proof of willfulness in determining whether to award recapture of a trademark infringer’s profits, but allowing willfulness to be considered among other equitable factors. The ABA asserts that such interpretation is supported by the statutory text of § 1117(a) and public policy. Continue Reading

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

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, fails to function as a trademark for apparel. The phrase rendered in standard character format was cancelled because it was an unregistrable informational phrase, but the design form of the mark used by CFFC was not. adidas AG v. Christian Faith Fellowship Church, Cancellation No. 92053314 (November 13, 2019) [not precedential]. Continue Reading

Cert. Roundup: Romag’s Opening Brief: Imposing a Willfulness Requirement to Recapture Profits is Inconsistent with Statute, Principles of Equity, and the Purposes of the Lanham Act

Posted in Patents, Supreme Court, Trademarks

In June 2019, the United States Supreme Court granted certiorari in Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233. As set forth in our previous blog post, Romag Fasteners Inc. (“Romag”) seeks to have the Court resolve a longstanding circuit split on the issue: “[w]hether, under section 35 of the Lanham Act, 15 U.S.C. § 1117(a), willful infringement is a prerequisite for an award of an infringer’s profits for a violation of section 43(a), id. § 1125(a).” Continue Reading

Lucky Opening Brief on Cert.: Second Circuit’s Novel “Defense Preclusion” Rule Turns a Blind Eye on Bedrock Preclusion Principles

Posted in Supreme Court, Trademarks

In June 2019, the United States Supreme Court granted certiorari in Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., No. 18-1086.  As set forth in our prior blog posts, Lucky Brand Dungarees Inc. and related companies (collectively, “Lucky”) seek a reversal of the Second Circuit Court of Appeal’s ruling that Lucky was precluded by res judicata from asserting a release agreement defense, which was not previously litigated or resolved between Lucky and Marcel Fashion Group Inc. (“Marcel”). Specifically, the question presented is: “[w]hether, in cases where a plaintiff asserts new claims, federal preclusion principles bar a defendant from raising defenses that were not actually litigated and resolved in any prior case between the parties.” Continue Reading

Queen Anne’s Revenge?

Posted in Copyrights, Supreme Court

In June 2019, the United States Supreme Court granted certiorari in Allen v. Cooper, No. 18-877.  The case presents a question “whether Congress validly abrogated state sovereign immunity via the Copyright Remedy Clarification Act … in providing remedies for authors of original expression whose federal copyrights are infringed by States.”  Plaintiffs filed their Opening Brief in August 2019. Continue Reading