LexisNexis® Legal Newsroom
Gilson on Trademarks: A New Era in Trademark Trial and Appeal Board Inter Partes Litigation

Welcome to a new era in Trademark Trial and Appeal Board inter partes litigation. The new Board rules impose on litigants a complex series of requirements that substantially increase their work, add to the cost of litigation, and probably discourage the filing of some oppositions and cancellation proceedings...

Anne Gilson LaLonde on the TTAB Accelerated Case Resolution Procedure (ACR)

Accelerated Case Resolution (ACR) is the Trademark Trial and Appeal Board's new method for resolving cases expeditiously. It's a voluntary procedure in which the Board promises to decide the case in fifty days based on summary judgment-like submissions from the parties. In fact, the Board is...

Mary LaFrance on the Grandfathering of Geographically Deceptively Misdescriptive Marks

In the 1993 NAFTA Implementation Act, Congress barred the registration of primarily geographically deceptively misdescriptive marks, but grandfathered those marks that had become distinctive before this change was enacted. However, when the Federal Circuit's interpretation of these amendments is...

McGrady on ICANN's New Post UDRP Non-compliance Grievance Process

The Internet Corporation for Assigned Names and Numbers (ICANN) is attempting to deal with the thorny issues of registrar compliance with a very limited arsenal of sanctions. One common non-compliance issue affecting brand owners is registrar failure to transfer a domain name after a Uniform Domain Name...

Common Law Marks, Recognition in the Marketplace and Proof of Secondary Meaning

Whereas an owner of a registered mark succeeds in proving its trademark right by submitting a certificate, an owner of an unregistered mark has a heavier burden. It has to marshal sufficient evidence to prove that its mark is in fact a trademark. Complainant’s burden is illustrated in a number...

Should High Volume Registrants Be Held to a Higher Standard of Diligence?

There is a division among panelists whether high volume registrants in the pay-per-click (“PPC”) landing page business should be held to a higher standard for vetting their acquisitions. The PPC business was not dreamed of in the UDRP foundation documents and although there is no present...

Fraud in less than all classes of a multiple-class registration: G&W Laboratories, Inc. v. G W Pharma Limited, 2009 TTAB LEXIS 2 (January 29, 2009)

In G&W Laboratories, Inc. v. G W Pharma Limited, 2009 TTAB LEXIS 2 (January 29, 2009) , GW Pharma (Pharma) filed a trademark application, and an opposition was commenced by G&W Laboratories (Labs), which owned multiple-class trademark registrations that covered Class 5 goods and Class 35 services...

The Federal Circuit Hears Oral Argument on Bose v. Hexawave, and the TTAB Carves Out Some Exceptions to Medinol

In Bose Corp. v. Hexawave, Inc ., 2007 TTAB LEXIS 91 (Trademark Trial & App. Bd. Nov. 6, 2007) , the TTAB (Trademark Trial and Appeal Board) cancelled Bose's registration for WAVE for fraud, holding that the mark had not been used on all of the goods in Bose’s renewal registration. In cancelling...

Gilson LaLonde: A Call to Action About the Upcoming Surge of gTLDs

Addressing concerns about the trademark implications of the roll-out of new top-level domains in 2010, the Internet Corporation for Assigned Names and Numbers (ICANN) created the Implementation Recommendation Team (IRT) to make recommendations for trademark protection. The IRT’s final report makes...

Accelerating inter partes proceedings

The Trademark Trial and Appeal Board (TTAB) offers both pre-trial final disposition on the merits, or abbreviated trial on the merits, of inter partes cases via Accelerated Case Resolution (ACR). TTAB claims greater flexibility for inter partes proceedings via ACR. Read more on the disposition on...

Could the ATJs Learn Something From the APJs Concerning Handling Fraud Issues?

In re Bose Corp ., 580 F.3d 1240 (Fed. Cir. 2009) overruled the Trademark Trial and Appeal Board's (TTAB) opinion in Medinol v. Neuro Vasx, Inc ., 2003 TTAB LEXIS 227 (Trademark Trial & App. Bd. May 13, 2003) , which held that, when determining whether a trademark registration was obtained fraudulently...

Marin Santacruz & Asociados: Colombia Adopts "The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks" By Law 1455 of June 29, 2011

By: Rosa Margarita Santacruz and Germán Marín The Colombian government has approved the adhesion of Colombia to the mentioned Madrid Protocol, by means of law 1455 of June 29, 2011, which shall enter into force upon the exhaustion of constitutional control procedure that will make...

Hot Off the Press: Supreme Court of Canada Confirms First to Use Trade-mark Principle

By Ashlee Froese of Keyser Mason Ball LLP For the first time since 2006, the Supreme Court of Canada ("SCC") has issued a decision on trade-marks law ( Masterpiece Inc v Alavida Lifestyles Inc. 2011 SCC 27 [ enhanced version available to lexis.com subscribers ]). In a nutshell, this case...

Sunstein Kann Murphy & Timbers LLP: Crazy In Love With Trademarks: What Can Jay-Z and Beyoncé Teach Us About Trademark Filing?

By Steven Abreu , a member of our Trademark Practice Group U.S. trademark applications are matters of public record. When celebrity super-couple Jay-Z and Beyoncé filed a trademark application for their infant daughter's name, Blue Ivy Carter, the public took notice. Are trademarks...

McNees Wallace & Nurick LLC: Why Wait To Register? Trademark registrations are quickly becoming the only cost effective means to defend brands online

By Brian P. Gregg Investing in a trademark registration is becoming the only effective means for defending a brand online at relatively modest costs. Business owners who do not own federal registration for their trademarks are seeing their ability to protect their marks on the Internet shrink at the...

Why Legal and Marketing Conflict on How to Choose a Trademark

by Donna Ray Berkelhammer If you work with startups as I do, one of the first issues is choosing the company or product name. I have worked with countless marketing companies that advised their clients to "be descriptive" when selecting the name of a company or product. Having a name...

Kenyon & Kenyon Case Summary: Cigar King, LLC v. Corporacion Habanos, S.A.

by Cynthia Lambert Hardman , Scott Forman , and Anne E. Li Summary: CAFC finds appeal of Board’s decision to cancel trademark registration moot. Case: Cigar King, LLC v. Corporacion Habanos, S.A. , No. 2013-1531 (Fed. Cir. May 23, 2014) (non-precedential) [ an enhanced version of this opinion...

US Patent & Trademark Office Cancels Washington Redskins Trademark Registrations

by Elizabeth Papendorp The Trademark Trial and Appeal Board (TTAB or the Board), an adjudicatory division of the United States Patent and Trademark Office, issued a decision on June 18, 2014 cancelling six trademark registrations previously granted to Pro Football, Inc. for the use of the term “Redskins”...

It’s No Use: Why Chevy’s BOLT Trademark Isn’t (Necessarily) a New Brand

There is some curious eco-mark news to report: apparently, last month General Motors filed two notable U.S. trademark applications, one for BOLT and the other for CHEVROLET BOLT. They are Application Nos. 86357513 and 86357523 (BOLT Applications), respectively, and list the goods as “motor land...

In Eco-mark Examination USPTO Getting into Anti-Greenwashing

A recent article in the New York Law Journal caught my attention for an interesting development in examination of eco-mark applications in the U.S. Patent and Trademark Office (USPTO). We’ve known for some time that marks containing terms such as “green,” “clean,” “eco...

Chevy Unveils Bolt; Planned Production Date Would Secure BOLT Trademark

A previous post took a deep dive into two recently filed U.S. eco-mark applications filed by General Motors for the marks BOLT and CHEVROLET BOLT (Application Nos. 86357513 and 86357523 for “motor land vehicles, namely, automobiles”). That post explained how GM could secure federal trademark...

Divided Supreme Court: Issue Preclusion Applies In Trademark Dispute

WASHINGTON, D.C. — (Mealey’s) The Eighth Circuit U.S. Court of Appeals erroneously ruled that the Trademark Trial and Appeal Board (TTAB) applies a different likelihood of confusion standard when weighing a trademark registration than district courts apply when weighing allegations of infringement...

Federal Circuit to Consider En Banc If Bar on Registration of Disparaging Marks Violates First Amendment

On April 27, the Court of Appeals for the Federal Circuit ordered en banc review of a panel decision last week in In re Tam , a trademark case. The issue to be decided en banc is “Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?” The...

EDVA Upholds Decision to Cancel Redskins Trademark Registrations — First and Fifth Amendment Challenges to Section 2(a) Still Up for Debate

by Julia Bishop Eastern District Court Judge Lee upheld the USPTO Trademark Trial and Appeal Board’s (TTAB) decision to cancel several REDSKINS trademark registrations. Pro-Football, Inc. v. Amanda Blackhorse et al. , No. 1:14-cv-01043-GBL-IDD (E.D. Va. July 8, 2015) [subscribers can access...

Redskins Trademarks – Answers to Key Questions Regarding Recent Ruling

by Chris Mackenzie Last week, the U.S. District Court sitting in Alexandria, Virginia granted what would appear to be a sweeping victory to a group of five Native Americans who have renewed attempts to cancel the federal registrations of certain trademarks owned by Pro-Football, Inc. (“PFI”...