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Where the identified goods or services are legally identical in part, “the degree of similarity necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); see also In re Aquamar, Inc., ...

The burden of proving that a color mark has acquired distinctiveness is substantial. See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, 424 (Fed. Cir. 1985) (“By their nature color marks carry a difficult burden in demonstrating distinctiveness and trademark character.”). As ex...

The Trademark Trial and Appeal Board has redesignated its prior September 6, 2022 decision in Andrusiek v. Cosmic Crusaders LLC, Cancellation No. 92064830, as a precedent. This decision regarding the “Captain Cannabis” trademark was previously blogged here. The Federal Circuit later affirmed the ...

A forum selection clause in a contract could bar a party from initiating an inter partes review (“IPR”) challenging a patent. In Dexcom, Inc. v. Abbott Diabetes Care, Inc., No. 23-1795, — F.4th — (Fed. Cir. Jan. 3, 2024), the Federal Circuit found that a license's forum selection clause stating t...

The Federal Circuit recently construed the claim term “barcode” in K-Fee System GmbH v. Nespresso USA, Inc., 2022-2042, — F.4th — (Fed. Cir. Dec. 26, 2023). K-fee owns U.S. Patent Nos. 10,858,176, 10,858,177, and 10,870,531, which all share the same specification. The district court had granted N...

Last year, the public domain welcomed The Great Gatsby. This year, it will be Steamboat Willie, a 1928 short film featuring the first appearance of Mickey Mouse. As a general rule, copyright protection lasts for the life of the author plus an additional 70 years for works created after January 1,...

An intent-to-use trademark application under Section 1(b) may be filed by a person who has a “bona fide intention” to use a trademark in commerce. A subjective, speculative intent to use the mark, however, is insufficient. For a bona fide intent to use, the focus is on objective evidence of real-...

A unitary trademark is a mark whose component elements are so integrated or merged together that “a single and distinct commercial impression” is created. Dena Corp. v. Belvedere Int'l, Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991) (noting that the elements of a unitary mark ar...

False advertising claim under Section 43(a) of the Lanham Act requires: a false statement of fact by the defendant in a commercial advertisement about its own or another's product; the statement actually deceived or has the tendency to deceive a substantial segment of its audience; the dec...

Under the doctrine of foreign equivalents for evaluating a trademark's appearance, sound, connotation and commercial impression; it is presumed that foreign words from common languages are translated into English to determine their similarity of connotation with English word marks. See Palm Bay I...

Section 43(a) of the Lanham Act prohibits “commercial advertising or promotion” in which a person “misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities” in 15 U.S.C. § 1125(a)(1)(B) (emphasis added)....

A mark is merely descriptive if it immediately conveys a significant attribute, function or property of the goods or services to the average consumer of those goods or services. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re H.U.D.D.L.E., 216 U...

Dilution by blurring applies to a “famous” mark. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1723-24 (Fed. Cir. 2012). The concern is that “the gradual whittling away of distinctiveness will cause the trademark holder to suffer ‘death by a thousand cuts.'” Nat'l Po...

A term is deceptively misdescriptive as a trademark under Section 2(e)(1) if: the term misdescribes a quality, feature, function, or characteristic of the goods or services with which it is used; and consumers would be likely to believe the misrepresentation. See, e.g., In re Hinton, 116 US...

“A generic name–the name of a class of products or services–is ineligible for federal trademark registration.” U.S. Patent & Trademark Office v. Booking.com B.V., 140 S. Ct. 2298, 2020 USPQ2d 10729 (2020). Whether a proposed mark is generic rests on its primary significance to the relevant public...

Federal Rule of Civil Procedure 16(f)(1)(C) allows a court to issue any just order if a party or its attorney fails to obey a scheduling or other pretrial order. Rule 16(f)(2) also requires a court to award reasonable fees “incurred because of any noncompliance with [Rule 16], unless the noncompl...

One of the many products sold on Amazon is an “embedded pinhole camera” disguised as a “mountable hook.” This hook camera is motion-activated and does not alert individuals it is recording. In M.S. v. Amazon.com, Inc., No. 3:23-cv-0046, 2023 WL 8283642 (S.D.W.V. Nov. 30, 2023), the vendor of this...

USPTO Director Vidal vacated a final written decision by the Patent Trial and Appeal Board (“PTAB”) in Weber, Inc. v. Provisur Technologies, Inc., No. IPR2022-00599 (Nov. 29, 2023). The PTAB decision had found that claims 1–15 and 17 of U.S. Patent No. 8,408,109 B2 (“the `109 patent”), which pert...

A common term or phrase used to convey ordinary, familiar, or generally understood concepts or sentiments may fail to function as a trademark because it would not be perceived by consumers as identifying the source of goods or services. In re Brunetti, 2022 USPQ2d 764, at *12 (TTAB 2022). “The mo...

The termination of a reexamination or expungement proceeding in favor of a registrant cannot be the basis for the registrant's assertion of claim or issue preclusion in a cancellation proceeding before the TTAB. Common Sense Press Inc. v. Van Sciver, Cancellation No. 92075375, 2023 USPQ2d 601 (TT...

In the world of business, contracts serve as the backbone of professional relationships and transactions. However, disputes over these agreements are not uncommon. When they arise, it's crucial for businesses to manage them effectively to minimize impact on operations and finances. A strategic ap...

The designs consisting of stripes, polka dots, and flowers are familiar symbols or designs commonly used on products of nearly every kind, and there are only so many variations of these designs. See, e.g., Mattel, Inc. v. MGA Entm't, Inc., 616 F.2d 904, 914 (9th Cir. 2010) (explaining that “[i]f ...

A generic term is “the name of a class of products or services” and “is ineligible for federal trademark registration.” U.S. Patent & Trademark Office v. Booking.com B.V., 140 S.Ct. 2298, 2020 USPQ2d 10729, at *2-3 (2020); Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, ...

In Metal Jeans, Inc. v. Destroyer Promotional Products, LLC, Opposition No. 91252176 (TTAB Nov. 1, 2023), Destroyer Promotional's application to register the METAL HEADS mark for various “Headwear” was opposed by Metal Jeans based on its prior METAL mark for “Clothing, namely, ski jackets and sno...

Claim construction is a question of law when based on only intrinsic evidence (i.e., the patent claims, specification, and prosecution history), and therefore subject to de novo review. See MasterMine Software, Inc. v. Microsoft Corp., 874 F.3d 1307, 1310 (Fed. Cir. 2017). If extrinsic evidence i...