Those of you attending the annual International Trademark Association conference in Barcelona may be drinking a glass of Cava right now and wondering: what makes sparkling wine different from regular wine, and what is the real the difference between Cava and Champagne (or, as the great Zapp Brannigan pronounces it, “champagen”)? Those of us stuck at home and not allowed to go to Barcelona – and no,… More
Tag Archives: Likelihood of Confusion
Although marijuana is becoming legal to varying degrees in an increasing number of states, your chances of getting a marijuana trademark registered with the United States Patent and Trademark Office (PTO) are still grim. In order to register a trademark with the PTO, the applicant has to show that the goods or services with which the mark will be used are permitted under federal law. Therefore, until marijuana gets reclassified by or removed from the federal Controlled Substances Act,… More
A decision rendered by the European Court of Justice (ECJ) on March 2, 2017, affirming a General Court ruling and potentially ending a nearly twenty-year legal battle, is a reminder to trademark owners that what is generic in one territory can be distinctive in another.
Doughnuts are well-known in the U.S. but, until recently, they were far less known in Europe.… More
Eight is Not Enough: Second Circuit Adopts Eleven Factor Nominative Fair Use Test in Certification Mark Case
International Information Systems Security Certification Consortium (known as ISC2) is a non-profit organization that owns a registered certification mark for the term CISSP® (meaning “Certified Information Systems Professional”). In 2010, ISC2 sued Security University, a for-profit company that provides training in this field, because Security University described its lead instructor as a “Master CISSP®” or a “CISSP® Master.” Although these advertisements had disclaimers stating that the Security University classes were “not endorsed,… More
Beyoncé Giselle Knowles-Carter, known to most as simply Beyoncé, and as “Bey” to those who like to pretend they know her, is about as famous as one can be. She transitioned from the acclaimed group “Destiny’s Child” to become one of the biggest pop stars in the world. Number one hits, Grammy Awards, sold-out tours, and even a reasonably successful film career are firmly under her fashionable belt.… More
Proving that history repeats itself, the TTAB recently decided a case that is strongly reminiscent of a matter we handled several years ago. In 2005 we defeated a challenge by Missiontrek Ltd. Co. to the registration of the software mark ONFOLIO, owned by our client Onfolio, Inc. Missiontrek claimed that ONFOLIO was confusingly similar to its previously-registered software mark CARTAGIO.
Instead of filing an answer to this challenge, we moved for summary judgment,… More