Insights on Trademark

Arent Fox LLP served as counsel to Golden 1 Credit Union in the historic naming rights partnership agreement with the National Basketball Association’s Sacramento Kings.

The Court of Appeals for the Federal Circuit (Federal Circuit) recently reversed the Trademark Trial and Appeal Board’s (Board) refusal to register the mark PRETZEL CRISPS on the grounds that the mark is generic for pretzel crackers.

In an unpublished opinion filed on May 8, 2015, the US Court of Appeals for the Eleventh Circuit sent trade secret owners a strong reminder of the important role written confidentiality agreements play in protecting valuable intellectual property.

On April 16, 2015, the Virginia Supreme Court threw out a contempt citation against social media company Yelp, Inc. (Yelp) in a closely watched case involving anonymous free speech rights on the internet.

In a recent non-precedential decision, the Trademark Trial and Appeal Board ruled that the fast food chain Del Taco, Inc. (Del Taco) no longer enjoys trademark rights in the NAUGLES brand associated with Naugles, Inc., a California-based fast food chain that Del Taco acquired in the late-1980s.

Macy’s is currently engaged in litigation to regain ownership of multiple trademarks associated with Macy’s-owned department stores that are no longer in use.

In a precedential ruling, TTAB held that SMART BALANCE for frozen foods was not likely to be confused with SMART ONES for frozen foods in light of the weakness of the common term “SMART,” the differences in the marks, the 17-year peaceful co-existence of the parties’ marks, and more.

On March 24, 2015, the Supreme Court issued its much anticipated second trademark decision of the term, holding that US Trademark Trial and Appeal Board (TTAB) decisions concerning likelihood of confusion generally have preclusive effects in federal court.

In the non-precedential ruling, the Trademark Trial and Appeal Board (TTAB or Board) found that the marks “MASQUERADE” and “MASCARADE” are likely to be confused for different alcoholic beverages. In re 8 Vini, Inc., Serial No. 85857391 (January 16, 2015) [not precedential].

The alleged descendants of Aunt Jemima (a.k.a. Anna Short Harrington) do not have a valid claim to the great syrup fortune of Pepsi and Quaker Oats, according to a recent ruling by the US District Court for the Northern District of Illinois.

In a recent decision, the Federal Circuit clarified the “use in commerce” requirement for trademark applications filed in connection with the provision of a service.

Chambers Global: The World’s Leading Lawyers for Business has recognized Arent Fox’s Bankruptcy & Financial Restructuring, Intellectual Property, International Arbitration & Dispute Resolution, and International Trade practices in its annual worldwide rankings of top law firms.

There was good news for those companies that have products with unique designs at the US Patent and Trademark Office (PTO). The PTO found that the design of a monster truck could be protected and registered as trade dress for the “services” offered by the owner.

Arent Fox LLP secured a summary judgment on behalf of the sportswear manufacturer Fila against a website that was cybersquatting.

In a succinct eight-page opinion, the Supreme Court ruled unanimously last week that trademark “tacking” is a question of fact that should generally be decided by juries.

On January 16, 2015, Sens. Jerry Moran (R-KS) and Mark Warner (D-VA) introduced S. 181 (The Startup Act), which is meant to promote new business formation, especially in the information technology industry.

In a precedential ruling, the Trademark Trial and Appeal Board of the US Patent & Trademark Office (USPTO) sustained an opposition by McDonald’s to the mark MCSWEET for pickled gourmet vegetables on the grounds that it infringed on and diluted McDonald’s famous family of “MC” for formative marks.

Arent Fox Intellectual Property partner Alec P. Rosenberg was quoted by Law360 in an article previewing the most closely watched copyright and trademark cases in 2015.

Video game developer Activision Blizzard, Inc. recently won a key victory in the ongoing battle over the right of publicity when a California state court judge dismissed former Panamanian dictator Manuel Noriega’s well-publicized lawsuit.

Arent Fox LLP partner Anthony V. Lupo was selected by Law360 as a Most Valuable Player in the retail and e-commerce industries for his “savvy business insights.”

The Bankruptcy Code definition of “intellectual property” does not explicitly include “trademarks.”

For the first time since 2009, the Trademark Trial and Appeal Board (TTAB) of the US Patent & Trademark Office (USPTO) has sustained an opposition on the grounds that the applicant committed fraud on the USPTO.

Sixteen Arent Fox LLP practice areas have been recognized in the 2015 “Best Law Firms” rankings.

A recent case filed in US District Court for the Southern District of Florida charges A&E Television Networks, LLC, with willful trademark infringement and unfair competition stemming from merchandise for the hit reality show Duck Dynasty.

The US Supreme Court recently agreed to consider a seemingly technical trademark question that could have a potentially big impact for brand owners. Specifically, the Supreme Court will consider whether a judge or the jury should decide if two trademarks are “legal equivalents”.