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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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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American Broadcasting Co. v. Aereo and its Aftermath

The U.S. Copyright Act in 17 U.S.C. § 106 specifically gives copyright owners the exclusive right to control “performances” of their works. 17 U.S.C. § 101 defines public performance as including “transmission” of the work. In 17 U.S.C. § 111, the Act also exempts from this exclusivity certain types of retransmission, including compulsory licensing of certain cable systems. Aereo's legal problems have highlighted how these...

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Requirements for Recordal of a U.S. Federal Trademark Registration with U.S. Customs & Border Protection

Owners of U.S. Trademark Registrations may record their registration with U.S. Customs in order to prevent the importation and subsequent sale of counterfeit and/or infringing goods. In order to do so, the registrant must provide the following details: Country of manufacture of goods bearing the genuine trademark. Is the trademark owner a U.S. citizen (corporate or personal)? If not a U.S. citizen, provide the citizenship of trademark...

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TTAB’s Washington Redskins Decision: the Enforceability and Commercial Impact of Cancelled Trademarks

The cancellation of a U.S. trademark registration on any grounds, including disparagement, does not always mean the end of enforceable rights in the mark. However, cancellation may create both legal and financial repercussions in the United States and abroad, as illustrated in the recent case of Blackhorse v. Pro Football, Inc. The recent cancellation decision included registrations for “REDSKINNETTES,” two “REDSKINS” marks, and three...

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