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Tag Archives: Likelihood of Confusion

Washington’s NFL Team and U.S. Customs

Posted in Articles, Branding, Counterfeits, Loss of Rights, Marketing, Social Media, Trademarks, TTAB, USPTO

Last week the NFL franchise that plays football near — but not in — our Nation’s Capital, was dealt another significant legal and public relations blow that would have any rational brand owner working overtime on its re-branding efforts. Professor Christine Haight Farley, at American University’s Washington College of Law, summarizes the Amanda Blackhorse decision… Continue Reading

“Of All Time”

Posted in Branding, Marketing, Mixed Bag of Nuts, Social Media, Squirrelly Thoughts, Trademarks

Those three words are pretty bold, especially when we’ve only been around just over 6 years: “‘Of all time’ is used to make a comparison, stating that something is the best throughout the ages.” We’re pleased to report that DuetsBlog continues to be recognized as one of the top twenty-five intellectual property law blogs “of… Continue Reading

Likelihood of Preclusion: Fallout From the Supreme Court Ruling on Likely Confusion

Posted in Articles, Infringement, Law Suits, Trademarks, TTAB

Move over likelihood of confusion, there is another sheriff in town, at least when it comes to looking for guidance on best practices and strategic considerations for a brand owner’s clearance, registration, protection and enforcement of trademark rights in the United States. As if us dedicated trademark types didn’t already have enough likelihoods (confusion, dilution,… Continue Reading

Anyone for a Jimmy John’s Freaky Fast Delivery?

Posted in Branding, Guest Bloggers, Mixed Bag of Nuts

–Aaron Keller, Managing Principal, Capsule We appreciate brands with personality. From our studies of brands, there are way too many living in a pool of vanilla ice cream and wondering why their customers don’t engage. Brands need interesting, engaging personalities and they are most effective when coming to life within the experience. The Jimmy John’s… Continue Reading

On Unintended Consequences: Will the B&B SCOTUS Ruling Encourage Trademark Bullies?

Posted in Almost Advice, Articles, Branding, Civil Procedure, Infringement, Law Suits, Trademark Bullying, Trademarks, TTAB, USPTO

Last week, while I was preparing for and had the unique opportunity of arguing a real, live TTAB final hearing on the merits, outside the TTAB’s typical oral hearing location (because it was selected by the TTAB to be part of the ABA’s IPLSpring continuing education conference in Bethesda, Maryland), the Supreme Court issued its… Continue Reading

Trademarks That Violate Public Policy

Posted in Articles, Branding, First Amendment, Law Suits, Marketing, Trademarks, TTAB, USPTO

As our friend John Welch reported last week, the place to be on March 10, 2015, is Washington, D.C., at the 25th Annual “PTO Day,” sponsored by the Intellectual Property Owners Association: John will be part of the panel update on TTAB practice, and I’ll be providing the overview of Section 2(a) of the Lanham… Continue Reading

Likelihood of Confusion and/or Dilution?

Posted in Advertising, Articles, Branding, Dilution, Famous Marks, Infringement, Marketing, Technology, Trademarks

Let’s suppose you’re a non-profit like the NRA, you sell stuff on your NRAstore.com, and you’d like to promote the fact that your website has over 30 product demonstration videos available that can easily be viewed online by potential consumers before they buy stuff from you. Let’s also suppose that when you sell stuff, 100%… Continue Reading

Would You Feel Friendly Toward Freddy?

Posted in Articles, Branding, Food, Infringement, Marketing, Trademark Bullying, Trademarks, USPTO

As the brand manager or trademark counsel for Friendly’s, would you be friendly toward Freddy’s? I remember the Friendly’s restaurant chain when we lived in Columbia, Maryland, back in the days when I clerked for a Senior Judge on the Court of Appeals for the Federal Circuit in Washington, D.C., so at my first sighting… Continue Reading

Owning the Visual Identity of a Generic Word

Posted in Almost Advice, Articles, Branding, Food, Genericide, Infringement, Law Suits, Loss of Rights, Marketing, Trademark Bullying, Trademarks

Unless you have created a highly stylized, distinctive, graphic representation of a generic designation, perhaps something like the Miller Lite script, don’t bother trying to own or enforce it:   Most likely, you’ll end up regretting the decision to enforce, when the court of public opinion weighs in, after the social media shame-wagon flogs it… Continue Reading

An Energized Trademark Monster?

Posted in Advertising, Agreements, Articles, Branding, Dilution, Famous Marks, Law Suits, Marketing, Trademark Bullying, Trademarks, TTAB, USPTO

Three months ago we discussed a “trademark bullying” allegation against Monster Energy, detailed in a declaratory judgment complaint filed in Montana federal district court by energy-drink competitor Victory Energize. Last week, Law360 reported the case settled on confidential terms, and the claims were dismissed with prejudice, at Victory Energize’s request, so the “trademark bullying” charge… Continue Reading

The Shiny Bright Red Holiday Star Brand(s)

Posted in Advertising, Articles, Branding, Famous Marks, Food, Goodwill, Infringement, Marketing, Non-Traditional Trademarks, Television, Trademarks

In the context of the holiday season, what comes to mind when you see a shiny bright red star? If you’re reading this post from Russia, perhaps the top of a New Year Tree is brought to mind. Of course, I have brands on my mind, and it has been hard to miss the barrage… Continue Reading

Amy, Whatcha Wanna Do (About this TM)?

Posted in Articles, Branding, Infringement, Law Suits, Marketing, Trademarks, TTAB, USPTO

As we start to think about welcoming in the weekend, why don’t we all hum this Pure Prairie League tune, while viewing this image and reading this very brief blog post: As this image (that I snapped this morning) shows, the skyway in downtown Minneapolis is sporting a relatively new snack shop called Amy’s. I’m… Continue Reading

Amici Weigh in on “Right to Register v. Right to Use” Trademark Case at Supreme Court

Posted in Articles, Infringement, Law Suits, Trademarks, TTAB, USPTO

More than three months ago, we sounded the alarm about an important trademark case to consider the interplay between the right to register and the right to use a trademark: “Every so often there is a moment when trademark types, marketing types and brand owners need to pay close attention to where the law could be headed. Today, I’m… Continue Reading

Another Real Lulu: Anatomy of an Affidavit

Posted in Articles, Branding, Food, Goodwill, Infringement, Law Suits, Marketing, Trademarks

On Tuesday of this week, we discussed the trademark infringement case filed by Lulu’s Market & Deli against Lulu’s Public House (depicted above), here is a link to a pdf of the Complaint. As you will recall, we expressed a healthy dose of skepticism about the claims being asserted by Lulu’s Market & Deli, and we predicted… Continue Reading

A Real Lulu of a Trademark Infringement Case

Posted in Articles, Branding, Food, Law Suits, Trademarks, USPTO

It’s that time of year again, the Minnesota State Fair is here, and trademark issues abound, again. We’re actually not covering the trademark fair issue we planned to cover today because we just caught wind of a lulu of a trademark infringement case filed on Friday of last week against a brand new 2014 fair vendor: Lulu’s Public House. This particular… Continue Reading

Trademark Pronunciation Revisited

Posted in Articles, Branding, Marketing, Trademarks, TTAB, USPTO

Remember this little gem on trademark pronunciation from the DuetsBlog archives two years ago? Open Wide and Say Ahh: Probing Brand Name & Trademark Pronunciation Judging from a search of Google, the JD Supra version of this post has gotten lots of traction. Well, a few weeks ago the Court of Appeals for the Federal Circuit (CAFC) issued an interesting… Continue Reading

Dethroning a Right to Register a Trademark?

Posted in Agreements, Articles, Branding, Contracts, Dilution, Famous Marks, Infringement, Marketing, Trademark Bullying, Trademarks, TTAB, USPTO

Last month, you will recall we wrote about the important difference between the right to register a trademark and the right to use a trademark, here and here. Despite the fact that in most cases, a “likelihood of confusion” test governs both determinations, the right to use and the right to register are not necessarily coextensive rights — defeating… Continue Reading

Rubber Hits the Road: Rust-Oleum Trademark Case Leaves TTAB for Minnesota Federal Court

Posted in Agreements, Articles, Civil Procedure, Infringement, Law Suits, Product Packaging, Trademarks, TTAB, USPTO

Lately we’ve been discussing more and more the difference between the right to register a trademark and the right to use a trademark. In many trademark disputes the perfect forum for an amicable resolution is the Trademark Trial and Appeal Board (TTAB) of the USPTO. The TTAB can be a cost effective forum for parties to achieve… Continue Reading

Gia Nother Wine Bottle Trademark

Posted in Articles, Branding, Food, Infringement, International, Marketing, Non-Traditional Trademarks, Product Packaging, Sight, Trademarks, USPTO

Combing through the USPTO’s recently approved non-verbal trademark registrations revealed this little gem with Francis Ford Coppola’s name on the label (but not claimed as part of the mark): Here is the USPTO drawing on the left, showing the claimed mark without any words or colors: So, besides claiming a broader scope of rights in… Continue Reading

(Just) the Right to Register a Trademark

Posted in Articles, Branding, Civil Procedure, Infringement, Law Suits, SoapBox, Trademarks, TTAB, USPTO

Every so often there is a moment when trademark types, marketing types and brand owners need to pay close attention to where the law could be headed. Today, I’m sounding the alarm. If the U.S. Supreme Court decides to follow the advice it recently sought and received from the U.S. Solicitor General (SG) of the Department of Justice, those of… Continue Reading

Twilight Trademark Trial Now on Horizon

Posted in Advertising, Articles, Branding, Dilution, Famous Marks, Goodwill, Infringement, Law Suits, Marketing, Trademark Bullying, Trademarks, USPTO

Another father-daughter trip to Bath & Body Works (BBW) this past weekend revealed that his and her Twilight Woods personal body care products are still available for sale: Still, because ten days ago, the federal district court in the Southern District of New York rejected BBW’s attempt to have the trademark infringement and dilution claims —… Continue Reading

“Glee” – Fox fails to see the funny side in the UK Courts

Posted in Guest Bloggers, International, Mixed Bag of Nuts, Television, Trademarks

Simon Bennett, partner and Rachel Cook, associate Fox Williams LLP Global entertainment giant Twentieth Century Fox Film Corporation recently lost its case against Comic Enterprises Limited, a UK company that runs several live entertainment venues in the UK, in what has been billed as a modern day David vs. Goliath. The subject of the dispute:… Continue Reading