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Category Archives: TTAB

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Posted in Famous Marks, First Amendment, Law Suits, Loss of Rights, Mixed Bag of Nuts, Trademarks, TTAB

  In appealing the cancellation of six trademarks, the Washington Redskins filed their opening brief in the Fourth Circuit this week.  Cancellation of the team’s REDSKINS trademarks was upheld by a federal district court in July.  The marks were deemed “disparaging” under Section 2(a) of the Lanham Act, which denies trademark protection to marks that… Continue Reading


Posted in Advertising, Branding, Famous Marks, Trademarks, TTAB, USPTO

You might be familiar with the popular mid-90s commercials suggested by the title of this post.  However, the intention of this post is about the use of trademarks on beer to refuse trademark protection for wineries and vice versa, which is an increasing problem for the growing craft alcohol industry. Recently an Austrailian company, Innvopak… Continue Reading

The Board Lends a Blow to Celebrities

Posted in Famous Marks, Fashion, Marketing, Mixed Bag of Nuts, Technology, Trademarks, TTAB

The celebrity known as will.i.am from the musical group the Black Eyed Peas sought to register three marks for “I AM” in connection with cosmetics, cell phones, artificial eyelashes, sunglasses, and brass wrist cuff bracelets, among other goods. In three precedential opinions,the Trademark Trial and Appeal Board (“Board”) refused to register these marks based on… Continue Reading

Ads Touting Function Shoot Down Trademark

Posted in Advertising, Almost Advice, Articles, Branding, Loss of Rights, Marketing, Non-Traditional Trademarks, Patents, Product Configurations, Trademarks, TTAB, USPTO

This isn’t the first time we’ve written about brand owners who shoot themselves in the foot with their advertising. And, I’m sure it won’t be the last. As we’ve discussed before, touting the function of a product design feature can kill any hope of owning non-traditional trademark protection in that feature. The latest example from… Continue Reading

Lego Adds a “Brick” to its Enforcement Strategy

Posted in Fair Use, Infringement, Non-Traditional Trademarks, Product Configurations, Product Packaging, Trademark Bullying, TTAB

The Danish Lego Group is no stranger to trademark disputes. Understandably, Lego enforces its rights in the LEGO mark against third-parties who use LEGO without their permission. Lego also claims trade dress rights in product shape and configuration of its blocks and enforces those rights against other building block manufacturers. Some competitors claim that these… Continue Reading

What Does the Trademark Registration Say?

Posted in Articles, Branding, First Amendment, Trademarks, TTAB, USPTO

Remember a while back when many were humming to the tune “What Does the Fox Say“? Today, I’m asking, what does the trademark registration say? Not, what does the trademark say — that is a different and more complicated question, depending on the specific mark, but at a minimum, answering that question involves the meaning… Continue Reading

Navigating Trademark Oppositions and Cancellation Proceedings at the TTAB

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

In case you missed the webinar from last year, we’re having another Strafford IP webinar on “Navigating Trademark Oppositions and Cancellation Proceedings at the TTAB,” next Tuesday August 18, at noon CST. Here are the details for the webinar. This year, we’ll have the benefit of knowing how the Supreme Court decided the B&B Hardware… Continue Reading

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


Posted in Advertising, Branding, Fair Use, Famous Marks, Fashion, Infringement, Social Media, Trademarks, TTAB, USPTO

In the fall of 2012, an upstart freshman quarterback at Texas A&M named Johnny Manziel earned the moniker “Johnny Football” during an incredible season, leading the Aggies to a number of huge wins. Yet after three years, a Heisman Trophy, and a shaky rookie season in the NFL, Manziel has yet to secure a trademark registration for… Continue Reading

Pepsi’s Next Generation: The Last Generation

Posted in Branding, Famous Marks, Food, Goodwill, Marketing, Social Media, Trademarks, TTAB

Back in the 1960s, Pepsi burst onto the scene by announcing to the youth of decade that they were the Pepsi Generation (they didn’t have a choice). Then, in the 1980s, Pepsi became “The Choice of a New Generation.” And finally, in the late 1990s, Pepsi hitched their trailer to the surely-to-never-go-out-of-style Spice Girls to… Continue Reading

A Naked Attempt at Trademark Association

Posted in Branding, Guest Bloggers, Infringement, Mixed Bag of Nuts, Squirrelly Thoughts, Trademarks, TTAB, USPTO

– John Reinan, a Minneapolis journalist and recovering marketer When news broke a couple months ago that the “gentlemen’s club” Spearmint Rhino would be opening a downtown Minneapolis branch on Hennepin Avenue, I joked on Twitter that I should open a club down the street and call it Menthol Hippo. OK, so I’m not really… Continue Reading

Meet Batman’s New (Trademark) Nemesis: Rihanna

Posted in Dilution, Famous Marks, Trademark Bullying, Trademarks, TTAB

After making (and remaking (and re-remaking)) movies, sequels, and prequels for nearly every comic book character in its library, it appears that DC Comics has finally found a new foe for its Batman franchise: music and fashion superstar Rihanna. The parties are squaring off at the Trademark Trial and Appeal Board over Rihanna’s application to… Continue Reading

The Juice Runs Out for Yankee Parody Trademarks

Posted in Dilution, Fair Use, Famous Marks, First Amendment, Trademarks, TTAB

A good general business practice is to apply to register trademarks early. You’ll find out if there is an issue. You’ll have time to change rather than having to take everything off the shelf under the threat of a lawsuit. Yet a recent decision from the Trademark Trial and Appeal Board in New York Yankees Partnership… Continue Reading

Trademarks Can Be a Bitch

Posted in First Amendment, Trademarks, TTAB, USPTO

And I mean that literally. We’ve laid down a lot of digital ink in the past about pejorative marks – lately in reference to the Redskins (at least here, here, and here) and  The Slants (here and here), both of which have been deemed disparaging enough to deny them a federal trademark registration.  We’ve even… 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

Is the Skype Falling?

Posted in International, Trademarks, TTAB, USPTO

  An interesting battle ground may be brewing in light of the United States Supreme Court’s recent ruling in the B&B Hardware case which Duetsblog authors have previously commented on extensively.  Now that the Court has essentially expanded the scope of collateral estoppel applicable to trademark registration decisions made by the United States Patent and… Continue Reading

Coke Walks Tightrope in ZERO Branding

Posted in Articles, Branding, Food, Genericide, Infringement, Law Suits, Loss of Rights, Marketing, Trademarks, TTAB, USPTO

As you may recall, last September we wrote about Coca-Cola’s Significant Interest in Zero Marks, discussing Coca-Cola’s defense of a trademark infringement suit brought by an individual named Mirza Baig, who claimed rights in “Naturally Zero” for Canadian natural spring water, and Coca-Cola’s contrasting attempts to own and federally-register various marks containing the term ZERO… Continue Reading

Bringing Down the Bauhaus for Trademarks?

Posted in Advertising, Almost Advice, Articles, Branding, Loss of Rights, Marketing, Non-Traditional Trademarks, Product Configurations, Trademarks, TTAB, USPTO

We’ve been spilling a lot of digital ink lately on the topic of non-traditional trademark protection and how the functionality doctrine serves as an absolute bar for such protection. As you know, for some time, we’ve been stressing the importance of close collaboration between trademark and marketing types when it comes to forming public communications… 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

Actually Resisting the Temptation to Tout Function and Hopefully Own a Trademark

Posted in Advertising, Almost Advice, Articles, Branding, Loss of Rights, Non-Traditional Trademarks, Patents, Product Configurations, Product Packaging, Sight, Technology, Trademarks, TTAB, USPTO

Continuing our ramp up toward the launch of our Strategies for Owning Your Product Designs webinar next week, I’ve been thinking a lot about the Morton-Norwich factors — the common analysis for determining whether a product design or feature can be owned as a trademark or whether it is functional and part of the public… Continue Reading

Fear the Brow, or Fear the Trademark Specimen?

Posted in Advertising, Branding, Famous Marks, Fashion, Infringement, Loss of Rights, Social Media, Trademarks, TTAB, USPTO

Celebrity has its advantages in the trademark world. Slogans and taglines are big business for famous athletes, which in turn has led to some entertaining trademark applications: JOHNNY FOOTBALL and LINSANITY, to name a couple. As Martha noted in 2012, Anthony Davis sought to capitalize on his distinctive appearance and “The Brow” nickname with four… Continue Reading