Consent Agreements will be considered in a likelihood of confusion analysis. These are agreements between the registrant of a trademark and another party, where the registrant agrees to the registration of a similar or identical trademark. See our webpage entitled, Resolving Trademark Disputes Without Litigation for a detailed discussion on…
A recent court case in the Eastern District of California, E. & J. Gallo Winery v. Grenade Beverage LLC, No. 1:13-cv-00770 (E.D. Cal. Aug. 15, 2014), seems to underscore a trend of court decisions and TTAB findings where alcoholic and non-alcoholic beverages are considered related for purposes of a likelihood…
One of the most frequently asked questions in our trademark practice is, can my last name be used as a trademark? The answer is that it depends on the nature of the surname. In this blog post we will examine an example of when a surname can be used as…
In recent years, prevailing on summary judgment motions at the Trademark Trial and Appeal Board (hereinafter the “Board”) has become more difficult. However, if a petitioner believes that there are no material facts in dispute, a summary judgment motion should be filed. The following case is a good example of…
In a recent July decision of the Trademark Trial and Appeal Board (“TTAB” or “Board”) a fashion company learned the hard way that registering a mark that has geographic significance can be an uphill battle. See In re Tigerland-Foxland of NY, Inc. Serial No. 85130889, July 23, 2014. Tigerland-Foxland of…
Trademark applicants must be cautious when relying too heavily on third–party uses. This is an area where an experienced trademark attorney will be able to guide a trademark applicant in the right direction. Do not make the mistake of arguing that the existence of third-party registrations with similar terms can…
On June 12, 2014, The Trademark Trial and Appeal Board (“TTAB” or the “Board”) reviewed the Appeal of Fibre-Crafts Materials Corp. (“Applicant”) who had filed a trademark application for the mark BENDASTIX for jewelry making kits and arts and crafts hobby kits for making toys. The Examining Attorney refused the…
The answer to this question is similar to the answer to many other legal questions, it depends on a number of factors. The central inquiry is what is the primary significance of the term to the purchasing public. Under §2(e)(4), of the Trademark Act, 15 U.S.C. §1052(e)(4) a trademark that…
Chanel, Inc. (“Opposer” or “Chanel”) filed an Opposition proceeding against an individual applicant Jerzy Makarczyk (“Applicant”) who filed to register the mark CHANEL. The Applicant was interested in protecting the mark CHANEL for real estate development and construction of commercial, residential, and hotel properties in International Class 37. Chanel opposed…
On May 20, 2014, Blue Sphere Inc. doing business as Lucky 13 (hereinafter “Lucky 13” or “Plaintiff”) and Robert Kloetzly filed a lawsuit in California Federal Court against Taylor Swift (hereinafter “Swift”) and her business entities alleging trademark infringement, unfair competition, trademark dilution, and common law misappropriation. Plaintiff is seeking…