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…
The two parties involved in this matter are Lion Capital, LLP (hereinafter referred to as either “Opposer” or “Registrant”) and Stone Lion Capital Partners, L.P. (hereinafter referred to as the “Applicant”). The Opposer began using the trademarks LION AND LION CAPITAL in the U.S. in 2005 and filed for registration…
This recent precedent of the TTAB involves concurrent use registration. This trademark concept allows two unrelated trademark owners to co-exist with legally identical trademarks, each having a registration limited to a distinct geographic area. As practitioners we work with clients with concurrent use issues. However, the TTAB does not render…
On May 2, 2014, The Trademark Trial and Appeal Board (TTAB) rendered this precedential decision. Inter IKEA Systems B.V. v. Akea, LLC, Opposition No. 91196527 (May 2, 2014) [precedential]. This decision sends a message to trademark owners (even to those owners of “famous” marks). Similar trademarks will be allowed in…
A recent decision from the TTAB (Trademark Trial and Appeal Board or the Board) provides us with further guidance in an area that can be fraught with subtleties in trademark law. See In re Nature’s Youth, Inc., Serial No. 85747419 (March 13, 2014) [not precedential]. Here, the Examining Attorney did…
One week ago in a precedential opinion, the TTAB affirmed the Examining Attorney’s refusal of the mark TOURBILLON & Design filed by The Swatch Group Management Services AG (hereinafter either “Applicant” or “Swatch”). The proposed trademark TOURBILLON & Design was seeking registration for “jewellery, horological and chronometric instruments” in International…
In the recent case of In re Innovation Ventures, LLC, Serial No. 85637294 (March 25, 2014) [not precedential] the Trademark Trial and Appeal Board (TTAB) held that the slogan “HOURS OF ENERGY NOW” for dietary supplements and energy shots did not function as a trademark. After the Examining Attorney…
This Trademark Trial and Appeal Board (TTAB) dispute involves the mark SHAPE (in both standard character and stylized format) owned by Weider Publications, LLC (Opposer) and the trademark SHAPES in standard character format owned by D & D Beauty Care, LLC’s (Applicant). See Weider Publications, LLC v. D & D…