Coloring Within the Lines: The Genericness Test for Color Trademarks
IN RE: PT MEDISAFE TECHNOLOGIES Before Prost, Clevenger, and Stark. Appeal from the Trademark Trial and Appeal Board. Summary: A proposed color mark was found generic where the relevant public...
Deckers Kicks Off Trade Dress Battle Against Costco and CVS Over UGG Lookalikes
On May 8, Deckers Outdoor Corporation (“Deckers”), owner of the intellectual property rights for brands including UGG, Teva, Hoka, and Ahnu, filed two separate lawsuits in the U.S. District Court...
Fashion’s New Powerhouse: IP Lessons from Prada’s $1.375 Billion Versace Deal
On April 10, 2025, Italian fashion house Prada announced its acquisition of Versace from Capri Holdings for $1.375 billion, uniting two of Italy’s most iconic luxury brands. Though financial implications...
German Sandals Follow the Functional Footsteps of U.S. Cheerleader Uniform Shape
In a recent decision, Germany’s Federal Court of Justice held that Birkenstock’s sandal design was not eligible for copyright protection. The court held that Birkenstock sandals did not display sufficient creativity...
The Votes Are In: Highly Descriptive Marks Are Difficult to Protect
HERITAGE ALLIANCE V. AMERICAN POLICY ROUNDTABLE Before Prost, Taranto, and Stark. Appeal from the Trademark Trial and Appeal Board. Summary: Continuous-use evidence is not necessarily prima facie evidence of acquired...
Fireball Frenzy: When First Registering a Mark, Genericness of a Mark Is Determined at the Time of Registration
BULLSHINE DISTILLERY LLC v. SAZERAC BRANDS, LLC Before Moore, Reyna and Taranto. Appeal from the Trademark Trial and Appeal Board. Summary: In assessing genericness, the TTAB considers how the mark...
Traffix Jam – Technical Functionality Prevents Trademark Protection for the Color Pink
CERAMTEC GMBH v. COORSTEK BIOCERAMICS LLC Before Lourie, Taranto, and Stark. Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board. Summary: A utility patent may...
Zoned Out: The Zone of Natural Expansion Doctrine Can Only Be Used Defensively
DOLLAR FINANCIAL GROUP, INC. v. BRITTEX FINANCIAL, INC. [OPINION] Before Prost, Taranto, and Hughes. Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board. Summary: The...
Falsely Claiming Patent Protection May Violate the Lanham Act
CROCS, INC. v. EFFERVESCENT, INC.
Before Reyna, Cunningham and Albright. Appeal from the United States District Court for the District of Colorado.
Summary: A claim that an unpatented product feature is “patented,” “proprietary,” or “exclusive” may violate Section 43(a)(1)(B) of the Lanham Act.
FTC Cracks Down on Deceptive Marketing: Old Southern Brass Faces Consequences for False Claims on “Made in USA” and Military Association
The Federal Trade Commission is cracking down on Florida-based EXOTOUSA LLC d/b/a Old Southern Brass and its owner (collectively, “OSB”) for deceptive claims regarding the origin of its products and its alleged financial donations to military causes. OSB advertised that its products, including glassware, mugs, pens, and other novelty items, were made entirely in the U.S. by displaying statements on its product listings such as “100% American made,” “made right here in the United States of America,” and “100% USA made.” OSB also purported to be veteran-operated and pledged to donate 10% of its sales to military charities. The FTC’s order, finalized in January 2024, found those claims inaccurate, halted the deceptive practices, and imposed a monetary judgment against OSB.
A Discussion With Amazon Counterfeit Crimes Unit’s Joe Wheatley: How Amazon Finds Bad Actors and Removes Counterfeit Products
In this inaugural episode of the Knobbe IP+ podcast, Knobbe Martens partner Greg Phillips speaks with Joe Wheatley, Senior Counsel, Amazon Counterfeit Crimes Unit, about how the Counterfeit Crimes Unit...
FTC Warns Trade Associations and Influencers of Not-So-Sweet Penalties for Failing to Sufficiently Disclose Sponsorship of Aspartame and Sugar Products
Social media and influencer marketing is now critical for business promotion. However, organizations and influencers that misrepresent, fail to disclose, or include inadequate disclosures regarding their sponsorship or connection to social media content risk attention from the FTC and civil penalties of up to $50,120 per violation. Following revision of its Endorsement Guides in June, the FTC has continued to focus on influencer marketing, including recently in the area of health and safety.
Proving Reputational Injury Without Use of the Marks in the United States
MEENAXI ENTERPRISE, INC. v. THE COCA-COLA COMPANY
Before Dyk, Reyna, and Stoll. Appeal from the Trademark Trial and Appeal Board.
Summary: To maintain a statutory cause of action under the Lanham Act for activities solely conducted outside the United States, the claimant must provide concrete evidence of reputational injury or lost sales.
Famous Trademark Not Abandoned After Original Owner’s Bankruptcy
TIGER LILY VENTURES LTD. v. BARCLAYS CAPITAL INC.
Before Lourie, Bryson, and Prost. Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board.
Summary: A trademark associated with a bankrupt company was not abandoned when the trademark continued to be used during bankruptcy and was the subject of active licenses.
Choosing the Right IP to Protect Fashion Goods
It’s hard to be a fashion innovator. It’s far easier to be an imitator. Success requires enormous investment in creating and marketing new designs, with no certainty that the designs will succeed. The imitator merely needs to watch the market, pick a successful product, ship a sample to an overseas manufacturer, and sell the knockoffs once they arrive in port.
First Amendment Trumps Statutory Ban on Trademark Registration
IN RE STEVE ELSTER
Before Dyk, Taranto, and Chen. Appeal from the Trademark Trial and Appeal Board.
Summary: The Patent and Trademark Office violated the First Amendment by refusing to register the trademark TRUMP TOO SMALL absent consent from former president Donald Trump.
Generic Mark Lacked Sufficient Stylization to Serve as a Source Identifier
Stylizing an otherwise generic character mark using ubiquitous lettering does not make it a source identifier.
Who Owns the Royale With Cheese? – Miramax Sues Tarantino Over the Sale of Pulp Fiction Related NFTs
On November 16, 2021, Miramax, LLC (“Miramax”) brought claims of breach of contract, copyright infringement, trademark infringement, and unfair competition against director Quentin Tarantino. A copy of the complaint can be found here. Miramax alleges that Tarantino planned to auction off Pulp Fiction Non-Fungible Tokens (“NFT”) comprised of “seven uncut Pulp Fiction Scenes” which include “scans of some pages of the Pulp Fiction script.” For example, the website for the NFT sales states that a digital version of the film’s iconic “Royale with Cheese” scene will also be up for auction. These Pulp Fiction NFTs allegedly hold “previously unknown secrets of [] specific iconic scene[s]” from the movie. The recent explosive demand for NFTs – tokens using distributed ledger technologies (e.g., Ethereum) used to represent ownership of unique items- has caused artists, creators and intellectual property holders to consider monetizing their digital options.
Suede Timbs on My Feet Make [Nas’s] Cipher Complete, but Timberland’s Section 2(f) Evidence Was Slacking and Acquired Distinctiveness Was Lacking
The TTAB has affirmed a refusal to register the trade dress configuration mark (see below) of the popular Timberland boot, a wardrobe staple in hip-hop culture (see The World is Yours by Nas), stating the configuration failed to attain acquired distinctiveness under Section 2(f) of the Trademark Act. In re TBL Licensing LLC, Serial No. 86634819 (TTAB April 2, 2021).
Although product designs may not be inherently distinctive, a product design that provides no real utilitarian advantages to the user, but is one of many equally feasible, efficient and competitive designs, may be registrable upon a showing of acquired distinctiveness pursuant to Section 2(f) of the Trademark Act.” Id. at 6.
“All of the Lights” on Yeezy as Walmart Opposes Yeezy’s Trademark Application
In April 2021, big-box retailer Walmart Apollo, LLC ("Walmart") filed a trademark opposition against Yeezy LLC ("Yeezy") U.S. Trademark Application Serial No. 88/746444 for its sun rays design mark, shown below (“Yeezy’s Mark”). Yeezy was founded and is owned by Kanye West, who Walmart describes as a “recording artist, record producer, fashion designer, and former candidate for President of the United States.”
Alley-Oop or Flagrant Foul? Nike Launches Shot Against Supplier of Alleged Fake Sneakers
International sportswear company Nike filed a lawsuit against a Los Angeles-based manufacturer alleged to have produced thousands of inauthentic Nike® Dunk®-inspired sneakers.
