Seyfarth’s Lauren Leipold and Ken Wilton co-authored “Courts and TTAB weigh in on First Amendment defence and scope of rights protection under the Lanham Act,” the exclusive United States chapter for WTR’s Trademark Litigation Review 2025. The Seyfarth attorneys discussed an overview of key developments in trademark litigation in the United States over the past
Seyfarth IP partner, Matthew Moersfelder, authored an article, “Penn State Merchandise Case Runs Up Costs for Trademark Owners,” in Bloomberg Law . Moersfelder discussed the impact of Pennsylvania State University suing Vintage Brand LLC, alleging the company willfully infringed various Penn State trademarks by selling products featuring those marks on its website.
“If consumers are
The U.S. Patent and Trademark Office (USPTO) has canceled long-standing trademark registrations for “Super Hero” and “Super Heroes,” which had been previously jointly owned by Marvel and DC Comics.
The cancellations resulted from a petition filed by Superbabies Limited, a company producing comics about superhero babies. Superbabies initiated the cancellation action after DC Comics attempted
As the prospect of federal rescheduling of cannabis looms, some in the industry are seemingly attempting to preserve their spot in line at the United States Patent and Trademark Office. A recent Trademark Trial and Appeal Board (the “Board”) decision underscores a significant hurdle for cannabis
The one and only TTABlogger, to whom we are very much indebted, recently reviewed and analyzed the decisions concerning Section 2(d) and Section 2(e)(1) refusals that the Trademark Trial and Appeal Board issued in 2023. Based on these numbers, the Board seems to be increasingly receptive to challenges of likelihood of confusion refusals under
We presented a webinar last week entitled How to Win Your Next Trademark Battle: Lessons Learned in 2023 to give brand owners and their lawyers an overview of key takeaways from last year’s trademark cases.
If you missed our live presentation, you can view a recording here. For a quick recap of the most
This article was originally published to Seyfarth’s The Blunt Truth blog.
Republic Technologies (NA) LLC (“Republic”) filed an application to register the proposed mark 4:20 with the United States Patent and Trademark Office (“USPTO”). Republic amended its goods twice during prosecution of the application and ultimately sought to register “tobacco; cigarette papers; cigarette filters; cigarette tubes; cigarette rolling machines; handheld machines for injecting tobacco into cigarette tubes; machines allowing smokers to make cigarettes by themselves; none of the foregoing containing or for use with cannabis” (emphasis added). The USPTO alleged that consumers would understand 4:20 to mean cannabis, the mark misdescribes non-cannabis related goods, and consumers would believe the misrepresentation. Therefore, the USPTO refused registration alleging that the mark was deceptively misdescriptive of the goods in the application. Republic appealed the decision to the Trademark Trial and Appeal Board (the “Board”). But the Board saw through the smoke of Republic’s arguments and affirmed the refusal.
Republic is a leading provider of smoking accessories. Republic initially filed its application for the mark 4:20 for use in association with the goods “tobacco; cigarette papers; cigarette filters; cigarette tubes; cigarette rolling machines; handheld machines for injecting tobacco into cigarette tubes; machines allowing smokers to make cigarettes by themselves.” Perhaps familiar with the many uses of Republic’s goods, the USPTO refused the application on mere descriptiveness grounds. It alleged that consumers understand 4:20 to mean cannabis and the goods describe a product containing or to be used with cannabis. The USPTO also asked Republic to provide additional information about its goods. In particular, whether the goods contain or would be used in connection with cannabis or marijuana. Continue Reading 4:20 Unfriendly – TTAB Says 4:20 is Deceptively Misdescriptive of Goods Not Used with Cannabis
Thursday, January 25, 2024
1:00 p.m. to 2:00 p.m. Eastern
12:00 p.m. to 1:00 p.m. Central
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Join Seyfarth partners Ken Wilton and Lauren Leipold for an examination of pivotal 2023 developments in trademark litigation, from U.S. Supreme Court decisions to new guidance from federal appellate courts, district courts, and the USPTO. This webinar will provide actionable takeaways for your legal practice in 2024, from doctrinal shifts in the application of trademark law to technicalities in TTAB procedure. Learn how these developments will impact the ongoing protection, maintenance, and enforcement of trademarks in the United States and beyond.
Kenneth Wilton, Partner, Seyfarth Shaw LLP
Lauren Leipold, Partner, Seyfarth Shaw LLPContinue Reading Upcoming Webinar! How to Win Your Next Trademark Battle: Lessons Learned in 2023
The Federal Circuit recently released an eye-catching opinion in Great Concepts, LLC v. Chutter, Inc., — F. 4th –, Case No. 2022-1212, 2023 WL 6854647 (Fed. Cir. Oct. 18, 2023). The panel of three judges held, in a two-to-one decision, that the U.S. Patent and Trademark Office’s Trademark Trial and Appeal
Trademark applicants encounter refusals from the United States Patent and Trademark Office (“USPTO”) based on a myriad of issues. Section 2(d) likelihood of confusion refusals and Section 2(e)(1) mere descriptiveness refusals or disclaimer requirements based on descriptiveness are often issued by the USPTO.
These refusals have applicants scratching their heads to determine whether to pursue an