Fish & Richardson Trademark & Copyright Thoughts

NOVEMBER 9, 2021

Another person or entity has applied for a trademark at the United States Patent and Trademark Office (the “USPTO”) that is similar to your trademark. One option is to institute an opposition with the Trademark Trial and Appeal Board (the “TTAB”) to challenge their registration of the mark. What can you do?

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IP Watchdog

FEBRUARY 21, 2022

Charles Bertini, owner of the trademark APPLE JAZZ, has filed a Request for Reconsideration of a Trademark Trial and Appeal Board (TTAB) Order suspending his Petition to Cancel Apple’s registration of the mark APPLE for entertainment services. Bertini also filed a motion in October of last year with the U.S.

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Fish & Richardson Trademark & Copyright Thoughts

OCTOBER 7, 2022

Cheng is based in Fish’s New York office, where she focuses her practice on trademark, trade dress, unfair competition, and copyright litigation.

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Intellectual Property Fair Use Litigation Trademark 86

Patently-O

APRIL 14, 2022

In a recent filing, Brooklyn Brewery (Brewery) indicated plans to take its trademark opposition/cancellation case to the US Supreme Court. The key constitutional question involves when a TM challenger has Article III standing to appeal an adverse TTAB decision. by Dennis Crouch. There is a lot going on in Brewery v. Petition ].

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IP Watchdog

NOVEMBER 24, 2023

Court of Appeals for the Federal Circuit (CAFC) on Wednesday vacated and remanded a Trademark Trial and Appeal Board (TTAB) decision that had sustained an opposition to the mark GET ORDAINED, holding that the TTAB had failed to “furnish a reasoned explanation for departing from its established practice of deeming unargued claims waived.”

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IP Watchdog

JANUARY 17, 2022

Patent and Trademark Office’s (USPTO’s) Trademark Trial and Appeal Board (TTAB) issued a precedential decision finding dilution by blurring and sustaining two oppositions filed by Spotify AB against two marijuana-related trademark applications. On January 11, the U.S. Applicant U.S. Software Inc.

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LexBlog IP

AUGUST 21, 2023

Coulter Ventures, LLC , Oppositions Nos. 91233515 (parent), 91233516, 91233517, 91242202, and 91252191 (August 7, 2023) , the Trademark Trial and Appeal Board (“TTAB”) shed light on the procedural intricacies of expert reports. Accordingly, the TTAB noted, “a sur-sur-rebuttal should never be necessary.”

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The TTABlog

FEBRUARY 8, 2022

Court of Appeals for the Ninth Circuit reversed (in part) the district court's dismissal of a civil action for unfair competition, trademark dilution, and trademark infringement involving Defendant Meenakshi's three IDHAYAM marks registered for sesame seed oil. Plaintiff's only involvement was filing the Notice of Opposition.

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IP Watchdog

NOVEMBER 2, 2021

Court of Appeals for the Federal Circuit (CAFC) accusing the United States Patent and Trademark Office (USPTO) and its management of facilitating the appearance of bias at the Trademark Trial and Appeal Board (TTAB) in favor of Apple, Inc., Apple has now filed its opposition to that motion.

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IP Watchdog

JUNE 1, 2022

Court of Appeals for the Federal Circuit (CAFC) today issued a precedential trademark decision upholding a Trademark Trial and Appeal Board (TTAB) ruling that sustained two oppositions filed by Barclays Capital Inc. against Tiger Lily Ventures’ applications for registration of the standard character mark “LEHMAN BROTHERS.”

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IP Watchdog

OCTOBER 28, 2021

On October 27, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the Trademark Trial and Appeal Board’s (TTAB) cancellation of Brooklyn Brew Shop, LLC’s (BBS) standard character mark and dismissed in part, affirmed in part and remanded the TTAB’s decision regarding the opposition of BBS’s mark.

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Fish & Richardson Trademark & Copyright Thoughts

MARCH 8, 2022

TTAB Cancellation Actions: Terminating an Infringing Trademark Registration. One option is to institute a cancellation action with the Trademark Trial and Appeal Board (the “TTAB”) to challenge the registration of the mark. If you win, the TTAB “cancels” the registration of the trademark at issue.

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LexBlog IP

APRIL 5, 2023

This week, the United States Patent and Trademark Office (USPTO) introduced a new pilot program for holding Final Pretrial Conferences (FPC) in certain inter partes disputes (i.e., oppositions and cancellations) before the Trademark Trial and Appeal Board (TTAB). § 2.120(a), but has had no equivalent to the FPC.

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Patent Trademark Blog

FEBRUARY 10, 2022

What can you do if your trademark application is opposed? It can be a bit disheartening to receive an opposition to your trademark application, especially after the USPTO had preliminarily approved your mark. You now need to make some tough decisions on whether or not to defend the trademark opposition.

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IP Watchdog

OCTOBER 18, 2021

Court of Appeals for the Federal Circuit (CAFC) requests that the appellant, Charles Bertini, be allowed to present evidence not of record in order to demonstrate that bias at the Trademark Trial and Appeal Board (TTAB) may have had a negative impact on his case. He began using the mark well before that, in 1985.

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LexBlog IP

JULY 26, 2021

trademark opposition proceedings can be done within budget. TTAB proceedings have a reputation for being extremely costly and time consuming. Depending on your goals, it is possible to favorably resolve a TTAB contested proceeding in a relatively short amount of time and within a reasonable budget. Jurisdiction.

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The TTABlog

MARCH 27, 2023

In another step that will make TTAB proceedings as complicated and expensive as civil litigation, the TTAB has announced its implementation of a pilot program for holding a Final Pretrial Conference in selected cases. Announcement here ].

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LexBlog IP

AUGUST 2, 2022

The Hook ’em Horns of the University of Texas earned a big win in a recent trademark opposition proceeding. This is an interesting sports trademark case. The notice of opposition grounds included a likelihood of confusion, false suggestion of a connection, and dilution. UT relied on its Reg.

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The TTABlog

SEPTEMBER 20, 2023

In one of two oppositions consolidated by the Board, opposer sought to block registration of the marks BYLT BASICS and BYLT PREMIUM BASICS , each for “hoodies, jackets, pants, shirts, briefs as underwear, jogging pants, men’s underwear, short-sleeve shirts, underwear; all of the foregoing excluding motorcycle related clothing and apparel.”

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The TTABlog

SEPTEMBER 20, 2021

The appellate court ruled that because the jurisdiction of the TTAB is limited to the issue of registrability and does not extend to "use" of a mark or allow for broader remedies, the earlier TTAB judgments against Beasley "do not carry claim preclusive effect against subsequent Article III infringemeent proceedings under section 43(a)."

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The TTABlog

AUGUST 30, 2023

Opposition No. If that were the case, having a famous mark would entitle the owner to a right in gross, and that is against the principles of trademark law." Balancing the relevant DuPont factors, the Board found that SS Vape's mark is not likely to cause confusion, and so it dismissed the opposition. Monster Energy Company v.

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The TTABlog

OCTOBER 4, 2021

In a much less consequential ruling, the Board also sustained Plaintiff Chutter's opposition to registration of the marks DANTANNA'S for "spices and spice rubs" and DANTANNA'S TAVERN for "restaurant and bar services" in view of Chutter's previously used mark DAN TANA'S for restaurant services and marinara sauce. Chutter, Inc.

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The TTABlog

JANUARY 14, 2022

2022 USPQ2d 31 (TTAB 2022) [precedential] (Order by Interlocutory Attorney Jennifer Krisp). 3, (TTAB 2018). 128 USPQ2d 1470 (TTAB 2018), involving a motion to compel discovery. Lumber incorrectly applied Rule 2.196 in adding three days to the deadline. Lumber Liquidators Services, LLC v. Columbia Insurance Co. The Board said no.

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The TTABlog

OCTOBER 3, 2022

Finding Applicant Salud Natural Mexicana's long period of nonuse of its mark EUCALIN for nutritional supplements to be excusable, the Board dismissed this Section 2(d) opposition because Opposer ARSA Distributing was unable to prove priority. 2022 USPQ2d 887 (TTAB 2022) [precedential] (Opinion by Judge Christen M.

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The TTABlog

JANUARY 30, 2023

Chun Hua Lo , 2023 USPQ2d 87 (TTAB 2023) [precedential] (Opinion by Judge Elizabeth A. Balancing the relevant DuPont factors, the Board found confusion likely and it sustained the opposition. Monster Energy Company v. Read comments and post your comment here. Text Copyright John L. Welch 2023.

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43(B)log

FEBRUARY 23, 2024

Leading case on distinctiveness, where Australian High Court lowered the distinctiveness bar—until it reached the high court, it was being litigated by a construction partner. So in litigation, no one says “the Office has done this 20 times before.” Lemley: suggests maybe the existence of the opposition process changes things.

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Patent Trademark Blog

MAY 8, 2024

What if someone else filed for a similar trademark first? I can’t tell you all the reasons why people delay filing a trademark application. Others have already applied for similar trademarks. What are your options if you wish to file for a similar trademark? Need guidance on registering a trademark?

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Patent Trademark Blog

JUNE 8, 2023

You need your patent or trademark registered, and you need it now. Does the new patent attorney have litigation experience? Even if you never intend to litigate, you want your patents to be defensible. Does the new patent attorney have trademark experience? Any business that needs patents will also need trademarks.

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The TTABlog

AUGUST 15, 2022

Branded, LLC , 2022 USPQ2d 742 (TTAB 2022) [precedential] (Opinion by Judge Marc A. Under Section 45 of the Trademark Act, a mark shall be deemed abandoned "[w]hen its use has been discontinued with intent not to resume use. 10 USPQ2d 1064, 1068 (TTAB 1989), aff’d , 892 F.2d Vans, Inc. See Rivard v. Linville , 133 F.3d

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The TTABlog

SEPTEMBER 26, 2022

In this opposition to registration of the mark TORTRIX for "corn-based snack foods," the Board ruled that a claim for misrepresentation of source under Section 14(3) of the Lanham Act is available not just to a cancellation petitioner, but also to an opposer. Arriera Foods LLC , 2022 USPQ2d 856 (TTAB 2022) [precedential]. Welch 2022.

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Above the Fold

JANUARY 26, 2023

On January 23, 2023, the Trademark Trial and Appeal Board (the “Board”) issued a harsh reminder to parties of the potential adverse consequences of ignoring their discovery obligations and failing to comply with Board discovery orders. Pickin’ Cotton Commn’s, LLC , Opposition No. 91267259 (TTAB Jan. 23, 2023).

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43(B)log

FEBRUARY 23, 2024

Introduction: Rebecca Tushnet What might we derive from things the Court has said about trademark of late? The purpose of trademark is consumer protection; source-identification is the most relevant consideration but not the entirety of TM law. It will affect the TTAB. Dinwoodie and Janis taken out of context?

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