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Trademark Application Appeals

Knobbe Martens

Coloring Within the Lines: The Genericness Test for Color Trademarks

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IN RE: PT MEDISAFE TECHNOLOGIES - Before Prost, Clevenger, and Stark. Appeal from the Trademark Trial and Appeal Board. A proposed color mark was found generic where the relevant public perceived the color to be a common...more

Knobbe Martens

Not Lost in Translation: Federal Circuit Clarifies Application of the Doctrine of Foreign Equivalents

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IN RE: VETEMENTS GROUP AG - Before Prost, Wallach, and Chen. Appeal from the Trademark Trial and Appeal Board. A party opposing application of the doctrine of foreign equivalents has the burden to show that the ordinary...more

Mayer Brown

Lost in Translation: The Doctrine of Foreign Equivalents in Trademark Law

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In this episode of The Upper Brand, Kristine Young and Rich Assmus discuss the recent Federal Circuit case regarding the doctrine of foreign equivalents in trademark law. They explore the concepts of descriptiveness and...more

Fish & Richardson

No Space at the Trademark Office for US SPACE FORCE

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In a rare precedential decision involving Section 2(a) of the Lanham Act, the U.S. Court of Appeals for the Federal Circuit recently upheld a denial by the Trademark Trial and Appeal Board (TTAB) of applications filed for US...more

McDermott Will & Emery

No Green Light to Register Color Mark for Medical Gloves

Addressing for the first time the test for determining whether a color mark is generic, the US Court of Appeals for the Federal Circuit adopted the Trademark Trial & Appeal Board’s Milwaukee test as the appropriate standard,...more

ArentFox Schiff

It’s Not Easy Being Green (If You Are a Color Trademark for Medical Gloves)

ArentFox Schiff on

In refusing registration of the color green for “chloroprene medical examination gloves,” the Federal Circuit adopted — for the first time — a legal test for genericness of color marks. The decision underscores the high...more

Jones Day

Gloves Off: Court Says No to Green Trademark Protection

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The U.S. Court of Appeals for the Federal Circuit held that the test for determining whether a word mark is generic also applies to color marks....more

Fish & Richardson

Federal Circuit Finds Beer Trademark Application Nothing but "Chicken Scratch"

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In yet another recent example of the need for care in establishing a full record when appealing the denial of a trademark application, on April 14, 2025, the U.S. Court of Appeals for the Federal Circuit upheld the denial of...more

Ladas & Parry LLP

TTAB Sustains Opposition Based on Reputation Without Use in the United States

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TTAB sustains opposition based on reputation without use in the United States - UNITED STATES OF AMERICA Legal updates: case law analysis and intelligence - The opponent, owner of Venezuelan company La Montserratina,...more

Fish & Richardson

Trademark Office Error Saves One Application From Drowning, But Not Its Shipmate

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In a rare case involving an admitted error by the U.S. Patent and Trademark Office, on February 20, 2025, the U.S. Court of Appeals for the Federal Circuit upheld the denial of Agadia Systems Inc.’s application for...more

Holland & Knight LLP

COGNAC, Hip Hop and Fame: A Trademark Showdown with a Twist

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You might be wondering what cognac, hip-hop and fame have in common. The answer, at least in a recent opinion by the U.S. Court of Appeals for the Federal Circuit, is certification trademarks. We have written in the past...more

Erise IP

What’s Trending in Trademarks: November 2024: Injunction Upheld in OpenAI v. Open AI; USPTO Modifies Audit Practice to Target...

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Every month, Erise’s trademark attorneys review the latest developments at the U.S. Patent and Trademark Office, in the courts, and across the corporate world to bring you the stories that you should know about: 9th Cir....more

McDermott Will & Emery

Unbranded Brandy: COGNAC Certification Mark Matters, Even in Hip-Hop

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The US Court of Appeals for the Federal Circuit vacated a ruling from the Trademark Trial & Appeal Board, disagreeing with the Board’s dismissal of Bureau National Interprofessionnel du Cognac’s opposition to a trademark...more

McDermott Will & Emery

Sole Searching: Trade Dress Hopes Booted as Functional, Nondistinctive

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The US Court of Appeals for the Fourth Circuit affirmed a district court’s summary judgment grant in a trademark dispute, finding that the district court did not err in concluding that a subset of design elements lacked...more

McDermott Will & Emery

ITU Applicants Beware: Federal Courts Have Jurisdiction Over Pending Trademark Applications

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The US Court of Appeals for the Ninth Circuit affirmed in part a district court’s ruling in a trademark dispute, upholding its decision to invalidate trademark applications. The Ninth Circuit held that district courts have...more

Willcox & Savage

A Proposed Mark Must Have A Source Identifying Function: Trademark Denied For “Keep America Great!”

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In a non-precedential opinion; In re America in Harm’s Way; Serial No. 87976064, issued on November 30, 2023, the United States Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB”), decided the issue of...more

McDermott Will & Emery

No Home Away From Home: Federal Circuit Confirms PTO Domicile Requirements

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The US Court of Appeals for the Federal Circuit confirmed the US Patent & Trademark Office’s (PTO) refusal to register a trademark based on the applicant’s failure to comply with the domicile address requirement of 37 C.F.R....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition)

2023 saw a return to business as usual for the Federal Circuit. Oral arguments are once again in-person and open to the public, and the Court has resumed its former practice of holding occasional sittings outside of...more

McDermott Will & Emery

Stay in the Know: Informational Message Is Not a Source Identifier

Addressing whether the mark EVERYBODY VS. RACISM was registrable, the US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s final refusal to register the mark because it failed to function...more

McDermott Will & Emery

Word From on High: Provide Reasoned Explanation When Departing From Established Practice

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In a decision on motion in an appeal from the Trademark Trial & Appeal Board, the US Court of Appeals for the Federal Circuit admonished the Board on remand to “furnish a reasoned explanation” when departing from its...more

Ladas & Parry LLP

TTAB Confirms that Building Design Marks Lack of Distinctiveness

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In In re Palacio Del Rio Inc (Serial Nos 88412764 and 88437801), the Trademark Trial and Appeal Board (TTAB) has issued an opinion affirming the refusal of two building design mark applications by Palacio Del Rio Inc (PDR) –...more

McDermott Will & Emery

Hairy Situation: Trademark Act Doesn’t Provide Consumer Standing

The US Patent & Trademark Office Trademark Trial & Appeal Board found that a consumer did not have standing to oppose an application for registration because the consumer failed to establish a commercial interest and injury...more

Ladas & Parry LLP

Fourth Circuit Confirms That ‘Gruyere’ is Generic for Cheese

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The appellants, Interprofession du Gruyère and Syndicat Interprofessionnel du Gruyère, are two consortiums, Swiss and French, that regulate use of the term ‘gruyere’ to refer only to cheeses produced in the Gruyère district...more

McDermott Will & Emery

Actual or Potential Consumers in Related Goods Context Doesn’t Require PURE Overlap

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The US Court of Appeals for the Federal Circuit reminded us that, in the context of related goods, the likelihood of confusion analysis does not require that actual or potential consumers of the goods be the same, but only...more

Bradley Arant Boult Cummings LLP

How Lizzo Helped the USPTO Identify the Source of “100% THAT B---H”

Recently, Melissa Jefferson, known professionally as Lizzo, took on the USPTO in a battle to establish trademark rights to a popular lyric from her 2017, Billboard-topping song Truth Hurts. The phrase, “100% That B—h”, which...more

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