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Trade dress pertains to the look of a product or its packaging, and may include features such as size, shape, color, or color combinations, texture, graphics, or even particular sales techniques. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992); Abercrombie & Fitch Stores, Inc. ...

Under the Ninth Circuit's “server” test, if a party displayed a copyrighted image that it had stored on its own systems, then it had infringed; but if it displayed that image by merely linking or framing content from other websites, then it was not infringement. See, e.g., Perfect 10, Inc. v. Ama...

In the Tenth Circuit, the following six factors are considered when determining the potential for confusion: the level of care likely to be exercised by purchasers, the strength or weakness of the senior mark, the degree of similarity between the marks, the intent of the alleged infringe...

In July 2018, UCANN sued Pure Hemp for infringing U.S. Patent No. 9,730,911, which disclosed and claimed various cannabis and CBD formulations. United Cannibis Corp. v, Pure Hemp Collective Inc., No. 1:18-cv-01922-WJM-NYW (D. Colo.). During the litigation, UCANN filed for bankruptcy, which trigge...

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...