Education Center

Author: Ralph H. Cathcart | Category: ,

B&B Hardware v. Hargis – What it Means and How it will Affect TTAB Litigation

The U.S. Supreme Court recently issued a decision that may significantly impact how Trademark Trial and Appeal Board (“TTAB”) cases are litigated and whether potential litigants elect to forego TTAB litigation in certain circumstances. In B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293 (2015) (“B&B Hardware”) the Supreme Court held that TTAB decisions concerning likelihood of confusion can have a preclusive effect...

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Authors: Matthew D. Asbell, Mannu Harnal | Category: , | Tags: , ,

REDSKINS affirmed as disparaging. Appealed to 4th Circuit.

In its June 18, 2014 Blackhorse [1. Blackhorse 111 U.S.P.Q.2d 1080 (P.T.O. June 18, 2014)] decision, the TTAB ordered six Redskins trademarks to be cancelled as disparaging to Native Americans at the time they were registered. The impact of this decision was discussed in our earlier article. On July 8, 2015, the United States District Court for the Eastern District of Virginia, in Pro-Football, Inc. v. Amanda Blackhorse, et al.[2....

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Author: Matthew D. Asbell | Category:

Chipping Away at the Dead Wood and Other Registered-But-Unused Marks

An ongoing issue faced by the United States Patent and Trademark Office (USPTO) has been the number of trademark registrations granted or retained for over-inclusive identifications of goods and/or services where the registrants do not actually use or intend to use the marks on all of the goods and services listed in the registration. Indeed, some registrations remain in effect even though the owner may no longer use the marks on any of the...

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Author: Matthew D. Asbell | Co-Author: Dongfang “Maggie” Wang(王东芳) | Category: | Tags: , , , ,

美国商标使用要求及相关的风险和应对策略

      首先感谢中国商标协会的邀请,赞助商王老吉以及中国商标协会及港专。 说到王老吉,我几天前才第一次喝过。大家都知道王老吉配方中有一些元素对人体有益,我希望在我回到美国后这个凉茶还能帮我化解对中国的思念。...

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Authors: Matthew D. Asbell, Cassidy Merriam | Category: , | Tags: , , , ,

U.S. Supreme Court: Trademark Tacking Should Be Determined By the Jury

On January 21, 2015, the U.S. Supreme Court, in a unanimous decision written by Justice Sonya Sotomayor, issued its first trademark ruling in more than a decade. The Court held that “trademark tacking” is a factual issue properly determined by a jury, rather than a judge, because the determination relies upon the perspective of the ordinary consumer. Hana Financial, Inc. v. Hana Bank, 135 S. Ct. 907 (2015). This may impact litigants’...

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Category: | Tags: , , , ,

Nationstar Mortgage v. Ahmad: fraud on the USPTO is alive again

In 2009, the U.S. Court of Appeals for the Federal Circuit significantly restrained the ability to attack a trademark application or registration on the basis of fraud. For the first time since that decision, the Trademark Trial and Appeal Board (TTAB), in a precedential decision in Nationstar Mortgage LLC v. Ahmad (Opposition No. 91177036, September 30, 2014), finally sustained a claim of fraud and clarified the standard of proof for such...

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