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A valid trademark registration requires “lawful use in commerce.” Gray v. Daffy Dan's Bargaintown, 823 F.2d 522, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987). This “lawful” use means that the goods recited in the application complies with applicable federal laws that regulate the goods. In re PharmaCann ...

There is no per se rule that food or beverage products are related to restaurant services. Lloyd's Food Prods., Inc. v. Eli's, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2030 (Fed. Cir. 1993) (no per se rule about confusion, where similar marks are used in connection with restaurant services and food pr...

Under the second DuPont factor for likelihood of confusion, there is no per se rule that restaurant services are related to food and beverage products. Lloyd's Food Prods., Inc. v. Eli's, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2030 (Fed. Cir. 1993) (no per se rule about confusion, where similar mark...

An acceptable specimen for a trademark application must show that the trademark has been used as an indicator of source with respect to the goods named in the application. In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 216 (CCPA 1976); see also In re Fallon, 2020 USPQ2d 11249 (TTAB 2020); In re Se...

Two marks could be confusingly similar where they share the same words “in reverse or transposed order.” Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d 557, at *39 (TTAB 2022) (finding MADE IN NATURE and NATURE MADE to be similar and noting that “[w]here transposed marks convey similar commer...

Non-fungible tokens (“NFTs”) are intangible but are eligible for trademark protection. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), does not require a different result. The Central District of California in Yuga Labs Inc. v. Ripps, No. 2:22-cv-04355 (C.D. Cal. Apr. 21, 20...

A use-based trademark application filed under Section 1(a) of the Trademark Act, 15 U.S.C § 1051(a), must be filed by the owner of the mark. Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1303 (TTAB 2015) (“Only the owner of the mark may file an application.”). If the applicant for a use-based applica...

With the exception of registrations issued pursuant to international conventions, a federal trademark registration will not issue until a proper statement of use in commerce is filed with the USPTO. “Trademark rights arise from the use of a mark in commerce.” Bertini v. Apple Inc., ___ F.4th ___,...

A patent's specification must describe the invention and “the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same.” 35 U.S.C. § 112(a). For enablement, “the specific...

The similarity or dissimilarity of two marks is determined based on the marks in their entireties and is not predicated on dissecting the marks into their various components. Stone Lion Cap. Partners, LP v. Lion Cap. LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); see also Franklin Mi...

Trademark dilution is limited to “truly famous marks such as Budweiser beer, Camel cigarettes, and Barbie dolls.” Dahon N. Am., Inc. v. Hon, No. 2:11-cv-05835-ODW(JCGx), 2012 WL 1413681, at *9 (C.D. Cal. Apr. 24, 2012). “[T]he gravamen of the famousness inquiry is whether or not a mark is genuine...

A civil action for copyright infringement under the Copyright Act of 1976 must be “commenced within three years after the claim accrued.” 17 U.S.C. § 507(b). The Fifth Circuit has reaffirmed its prior precedent that this limitations period starts running “once the plaintiff knows or has reason to...

The framework for analyzing whether a prior art reference anticipates a claimed range varies depending on whether the prior art discloses a point within the claimed range or discloses its own range that overlaps with the claimed range. If the prior art discloses a point within the claimed range, ...

The Federal Circuit recently affirmed a TTAB decision refusing to register Charger Ventures LLC's SPARK LIVING application for “leasing of real estate; real estate listing; real estate service, namely, rental property management.” In re Charger Ventures LLC, No. 2022-1094, — F.4th — (Fed. Cir. Ap...

Whether a term is primarily geographically descriptive depends on (1) the primary significance of the term in the mark sought to be registered is the name of a place generally known to the public; (2) the public would make an association between the goods or services and the place named in the ma...

Cameron Sexton for State Representative (“Applicant”), a Tennessee Political Campaign Committee (“PAC”), sought registration on the Principal Register of the proposed PEOPLE BEFORE POLITICS mark for among other goods and services, T-shirts and political fundraising services. The application was r...

There is no way to gauge how consumers will pronounce a trademark that is not a recognized word. StonCor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649, 1651 (Fed. Cir. 2014) (“There is no correct pronunciation of a trademark that is not a recognized word.”). “Where a trad...

It is well-established that “facts are not copyrightable.” See Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 344 (1991); see also Arica Institute, Inc. v. Palmer, 970 F.2d 1067, 1074-75 (2d Cir. 1992) (“facts, whether alone or as part of a compilation, are not original and therefore ...

The trademark doctrine known as “tacking” permits minor modifications to a mark over time without losing priority in limited circumstances, so as to “clothe a new mark with the priority position of an older mark.” Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 419–20 (2015). Without tacking, “a trad...

For an inter partes review of a claim in a patent that results in a final written decision by the Patent Trial and Appeal Board (“PTAB”) under Section 318(a), estoppel applies in a civil action with respect to invalidity of the claim “on any ground that the petitioner raised or reasonably could h...

Rule 4(m) of the Federal Rules of Civil Procedure states: “If a defendant is not served within 90 days after the complaint is filed, the court—on motion or on its own after notice to the plaintiff—must dismiss the action without prejudice against that defendant.” But the court must extend the tim...

On March 21, 2023, the U.S. Supreme Court heard oral arguments about the Tenth Circuit decision in Hetronic International, 10 F.4th 1016 (10th Cir. 2021), that the Lanham Act protections for U.S. trademarks extends to extraterritorial conduct involving foreign sales by foreign defendants. As disc...

“A generic name—the name of a class of products or services—is ineligible for federal trademark registration.” USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2301, 2020 USPQ2d 10729 (2020). “A generic term, by definition, identifies a type of product, not a particular source.” In re Gould Paper Corp...

Section 1202 of the Digital Millennium Copyright Act (“DMCA”) prohibits removing or altering copyright management information (“CMI”) that is “conveyed in connection with” works protected by copyright. Under the statute, CMI is defined to include information such as the title or other information...

Some common expressions “are inherently incapable of functioning as trademarks to identify and distinguish the source of the products in connection with which they are used.” In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (affirming refusal to register ONCE A MARINE, ALWAYS A MARINE for clothing b...