Almost everyone has probably heard of “Taco Tuesday.” Ads, local restaurants, celebrities—they use this popular slogan to refer to the idea that it is fun to eat tacos on Tuesdays. But although this phrase is used by many, two restaurant companies actually own TACO TUESDAY trademark registrations that they can assert as conclusive evidence of their exclusive rights to use the slogan and enforce those rights against anyone who tries to use the mark. Taco Bell is seeking to change that. On May 16, 2023, Taco Bell filed petitions, available here and here, with the Trademark Trial and Appeal Board ..read more

An opposition that has been making its way through the Trademark Trial and Appeal Board (“TTAB”) for several years appears to have finally reached its not-so-fairytale ending. In May 2023, the TTAB overturned a 2018 TTAB ruling in the same case that allowed a consumer to oppose trademark applications based on the consumer’s interest to keep “merely descriptive or generic words in the public domain, to prevent the owner of a mark from inhibiting competition in the sale of particular goods and to maintain freedom of the public to use the language involved.”[1] Applicant United Trademark Holdings ..read more

The Trademark Trial and Appeal Board (“TTAB”) at the United States Patent and Trademark Office (“USPTO”) recently issued a precedential opinion concerning the registration of marks used in connection with goods deemed “drug paraphernalia” under the Controlled Substances Act (“CSA”). The decision, In re Abax Distributing LLC, involved two trademark applications for the mark BAKKED and a stylized teardrop logo, both filed by Abax Distributing LLC (“Applicant”) for use with “essential oil dispenser[s], sold empty, for domestic use.” The TTAB affirmed the USPTO Examining Attorney’s refusal to regi ..read more

In a precedential decision, the Trademark Trial and Appeal Board (“TTAB”) found a likelihood of confusion between the applied-for marks sought by Applicant, Michael P. Chisena, and the common law rights owned by Opposers, Major League Baseball Players Association (“MLBPA”) and Aaron Judge (“Judge”). Major League Baseball Players Ass’n v. Chisena, 2023 U.S.P.Q.2D 444, 2023 TTAB LEXIS 117 (TTAB Apr. 12, 2023). Applicant sought to register the marks ALL RISE, HERE COMES THE JUDGE, and the design mark: Opposers claimed common law rights for essentially identical marks. As background, Judge is one ..read more

We are just a few months into 2023, but we are already seeing a number of proposed changes to Chinese Trademark Law.  We wish to draw attention to some of the upcoming structural changes to the China National Intellectual Property Administration (commonly known as CNIPA) and to highlight a few draft amendments to China’s Trademark Law issued by the CNIPA on 13 January 2023. Overall Theme and Key Takeaway It should be noted that this will be the 5th round of major amendments to the China Trademark Law since it was first adopted in 1982. Consistent with the most recent amendments in 2019, t ..read more

Earlier this month, the High Court of Australia ultimately rejected trade mark infringement and misleading/deceptive conduct claims by Allergan (owner of the injectable BOTOX®) against Self Care’s anti-wrinkle skincare products PROTOX and INHIBOX (marketed under the slogan ‘instant Botox® alternative’). The case has been running for 6 years. Allergan relied on the overwhelming reputation of its brand BOTOX. It argued that PROTOX was a deceptively similar trade mark and that use of the slogan (‘instant Botox® alternative’) constituted infringing use of BOTOX. The High Court overturned the previ ..read more

On March 8, 2023, China deposited an instrument for accession to the Convention of 5 October 1961 Abolishing the Requirement of Legalisation for Foreign Public Documents (also known as the “Apostille Convention”). Upon the scheduled implementation of the Apostille Convention in China on November 7, 2023, the expensive and time-consuming consular legalisation procedure that foreign documents must undergo in order to be formally recognized in China will be abolished. Instead, a simplified process should be available for obtaining an “Apostille Certificate” issued by a designated authority in the ..read more

In a precedential decision, the Trademark Trial and Appeal Board (the “Board”) reversed six refusals to register The New York Times Company’s (the “Times”) names of its newspaper columns, THE NEW OLD AGE, A GOOD APPETITE, HUNGRY CITY, WORK FRIEND, OFF THE SHELF, and LIKE A BOSS (the “Marks”). The Times applied to register the six Marks in August 2020 for use in connection with columns covering various topics in Class 16 and providing online publications in Class 41. The Examining Attorney (the “Examiner”) refused registration in Class 16 on the basis that the Marks were not used on separate go ..read more

This week, the United States Patent and Trademark Office (USPTO) introduced a new pilot program for holding Final Pretrial Conferences (FPC) in certain inter partes disputes (i.e., oppositions and cancellations) before the Trademark Trial and Appeal Board (TTAB). The goal of the pilot, according to the USPTO, is “to save time and resources of parties and the TTAB, and to foster the effective and efficient presentation of evidence.” The pilot program is the latest step in the TTAB’s recent efforts to streamline inter partes cases and reduce the administrative burden of cases with expansive or u ..read more

The United States Supreme Court held oral arguments in connection with a dispute between Jack Daniel’s and VIP Products LLC (“VIP”) over a humorous dog toy which is intended to mimic the label of a Jack Daniel’s whisky bottle. Jack Daniel’s Properties, Inc. v. VIP Products LLC, (22-148) (March 22, 2023). The toy replaces the text “Jack Daniel’s Old No. 7” with “Bad Spaniels The Old No. 2,” and generally mimics the black and white design of the label and the square shape of the bottle: Previous decisions in the case have held that the design is a clear parody and therefore does not infringe th ..read more