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A trademark registration may be cancelled if the registered mark has been abandoned. Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998) (citing 15 U.S.C. § 1064(3)). The abandoned mark then returns to the public domain, so it may be used by others in the marketplace. Exec. C...

In a trademark opposition, pursuant to TTAB Rule 2.120(c)(1), the deposition of a natural person residing in a foreign country, if taken in that foreign country, must be taken upon written questions “unless the Trademark Trial and Appeal Board, upon motion for good cause, orders that the depositi...

As a general rule, federal courts of appeals only have jurisdiction to review final decisions of the district courts. See Zurn Indus., LLC v. Allstate Ins. Co., 75 F.4th 321, 327 (3d Cir. 2023). One exception is for non-final preliminary injunctions. See 28 U.S.C. § 1292(a)(1). To determine wheth...

The claim construction issue in ABS Global, Inc. v. Cytonome/ST, LLC, No. 22-1761, — F.3d — (Fed. Cir. Oct. 19, 2023), was whether the claim language, “the sample stream,” was or was not limited to a single sample stream. The patent-in-suit described and claimed a microfluidic device for processi...

When you bear the burden of proof, you need competent evidence to prove your case. The Petitioner in Oregon Grain Growers Brand Distillery Inc. v. Pitsokos, Cancellation No. 92076817 (TTAB Oct. 16, 2023), learned that lesson the hard way. Petitioner sought to cancel Respondent's U.S. Registration...

In a contract dispute, the signed contract is critical evidence. When the original cannot be located, then a duplicate may be admissible under Federal Rule of Evidence 1003. If no signed copy can be located, then a prior draft could be admissible as “other evidence of the content” of the original...

The TTAB recently held that THE SELF PUBLICATION for “Education and entertainment, in particular presentation of works of visual art or literature to the public for cultural or educational purposes,” in International Class 41 did not create a likelihood of confusion with SELF magazine. Advance Ma...

A party seeking a preliminary injunction must demonstrate that: (1) it is likely to succeed on the merits, (2) it is likely to suffer irreparable harm, (3) the balance of hardships tips in its favor, and (4) the injunction is in the public interest. Metro. Reg'l Info. Sys. v. Am. Home Realty Netw...

Section 43(a)(1)(B) of the Lanham Act prohibits false advertising about the nature, qualities, characteristics, or geographic origin of any person's goods or services. 15 U.S.C. § 1125(a)(1)(B); see also Zenith Elecs. Corp. v. Exzec, Inc., 182 F.3d 1340, 1347-48 (Fed. Cir. 1999); Fisher Tooling C...

In Sisvel International S. A. v. Sierra Wireless, Inc., No. 22-1493, — F.3d — (Fed. Cir. Oct. 6, 2023), the Federal Circuit addressed computer-implemented means-plus-function claims, and the need for clarity in articulating a motivation to combine references for obviousness. The patent-in-suit (U...

In Pauwels v. Deloitte LLP, No. 22-21-cv, — F.3d — (2d Cir. Oct. 6, 2023), the Second Circuit held that Andre Pauwels failed to establish that an investment valuation model that he had developed as a contactor to the Bank of New York Mellon Corp. (“BNYM”) was a trade secret. Pauwels created his v...

Patent venue is governed by 28 U.S.C. § 1400(b), which provides: “Any civil action for patent infringement may be brought in the judicial district where; the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” The Supr...

It is a constitutional requirement for a party to have standing. TransUnion LLC v. Ramirez, 141 S. Ct. 2190, 2203 (2021). For parties to have standing, there must be a legally recognized injury in fact to the plaintiff, traceable to the defendant, and redressable by the court. See Lujan v. Defs. ...

Federal Rules of Civil Procedure 68 encourages settlement by providing a disincentive to a plaintiff from continuing to litigate after being presented with a reasonable offer. See Payne v. Milwaukee Cty., 288 F.3d 1021, 1024 (7th Cir. 2002) (“Rule 68 is designed to provide a disincentive for plai...

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., 591 U.S. ___, 2020 USPQ2d 10729, at *2-3 (2020) (“Booking.com”). Whether a term is generic depends on its meaning to consumer...

Lawyers for DuranDuran filed a trademark infringement suit against 192 different defendants in the Southern District of Florida earlier this year, alleging that “Defendants are promoting, selling, offering for sale and distributing goods bearing counterfeits and confusingly similar imitations of ...

If the primary significance of a word mark to the purchasing public is that of a surname, then a trademark application for that word mark may be refused registration unless there is a showing of acquired distinctiveness. Earnhardt v. Kerry Earnhardt, Inc., 864 13- 15F.3d 1374, 123 USPQ2d 1411 (Fe...

Maintaining the secrecy of documents produced in the context of discovery between parties is generally more permissible than in the context of court filings because there is a strong presumption in favor of the openness of court records. See, e.g., In re National Prescription Opiate Litigation, 9...

On September 26, 2023, the U.S. Patent and Trademark Office (USPTO) issued U.S. Patent No. D1,000,000. The one-millionth design patent. This design patent was issued to Agustina Huckaby of Fort Worth, Texas, for a dispensing comb. Huckaby, a licensed cosmetologist, markets her business under the ...

Slogans, phrases, and other terms that are considered to be merely informational in nature are generally not registrable. See In re Eagle Crest Inc., 96 USPQ2d 1227, 1232 (TTAB 2010) (“ONCE A MARINE, ALWAYS A MARINE is an old and familiar Marine expression, and as such it is the type of expressio...

If competing trademarks convey the same idea, meaning or commercial impression, then they might be confusingly similar if used on the same goods. See, e.g., Proctor & Gamble Co. v. Conway, 419 F.2d 1332, 164 USPQ 301, 304 (CCPA 1970) (holding MISTER STAIN likely to be confused with MR. CLEAN on c...

“Foreign laws that block the production of discoverable material do not automatically excuse a party from its Rule 26 obligations.” Philips Medical Systems (Cleveland), Inc. v. Buan, No. 19 CV 2648, 2022 WL 602485, at *2 (N.D. Ill. Mar. 1, 2022); see also Société Nationale Industrielle Aérospatia...

In determining whether there is a likelihood of confusion between trademarks, two key factors are the similarity or dissimilarity of the marks and the goods or services. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); In re E. I. DuPont de Nemours & Co....

The “ordinary observer” test for design-patent infringement is as follows: [I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase o...

By definition, a trade secret is any valuable business information which is not widely known and must be protected to preserve its confidentiality. In business, trade secrets often create a competitive advantage. Unlike copyrights, trademarks, or patents, which are disclosed to the general public...