In a precedential decision, the TTAB affirmed a decision of the Director of the USPTO which canceled a trademark registration based on the applicant failing to prove it used its mark in commerce as of the Statement of Use deadline.
New York Trademark Attorney Blog
The New York Trademark Attorney Blog, published by the Law Offices of Nikki Siesel PLLC, focuses on trademark law issues including trademark registration, refusal and opposition proceedings, and recent precedential decisions from the Trademark Trial and Appeal Board (TTAB) and federal courts. It covers topics such as the doctrine of foreign equivalents, likelihood of confusion analyses, trademark strength and distinctiveness, non-use challenges under the Trademark Modernization Act, and the treatment of generic and certification marks. The blog also discusses practical implications of trademark law developments for brand protection and enforcement strategies in the United States.
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Latest from New York Trademark Attorney Blog
Precedential Case: Reminding Applicants Beware Of “Naked” Consent Agreements
By Nikki Siesel
The Trademark Trial and Appeal Board (“the Board”) affirmed the refusal to register the mark GASPARILLA, and in doing so rejected the Consent Agreement submitted by Applicant. See In re Ye Mystic Krewe of Gasparilla, 2025 USPQ2d 1291 (TTAB…
Precedential CAFC Opinion: TTAB Must Consistently Apply DuPont Factors
By Nikki Siesel
The US Court of Appeals for the Federal Circuit, reversed in part the Board’s analysis of two DuPont factors in the case Apex Bank v. CC Serve Corp. 2025 USPQ2d 1224 (Fed. Cir. 2025) [precedential], remanding it for more…
CAFC Precedential Decision – Foreign Equivalent Of A Generic English Word Will Not Register
By Nikki Siesel
In this precedential case of the United States Court of Appeals for the Federal Circuit (“CAFC”), the Trademark Trial and Appeal Board’s decision to refuse a foreign word trademark as generic was affirmed. Under the doctrine of foreign equivalents, a…
2(d) Reversal Based On Ten Third-Party Registrations
By Nikki Siesel
In one of the early opinions of 2025, the Trademark Trial and Appeal Board (TTAB) reversed the Examining Attorney’s refusal to register a mark based on likelihood of confusion. See In re Metabeauty, Inc., Serial No. 97492557 (January…
First Precedential TTAB Expungement Decision
By Nikki Siesel
The Trademark Modernization Act of 2020 provided for two new ex parte proceedings for non-use trademark challenges, Expungement and Reexamination. Prior to the new proceedings, if a trademark applicant encountered a trademark registration that blocked its application from registering at…
“Gruyere” Is Held to be Generic for Cheese, No Longer Protectable in the U.S.
By Nikki Siesel
After years of battles, this is a victory for dairy groups and cheese producers in the U.S. The Fourth Circuit Court of Appeals ended this dispute, see Interprofession du Gruyere v. U.S. Dairy Export Council, 61 F.4th 407 (4th Cir.
The Board’s Fifth Precedential Case of 2024
By Nikki Siesel
The Board’s Fifth Precedential Case of 2024
Suggestive marks with some conceptual weakness are still afforded a relatively broad scope of protection. See Sage Therapeutics, Inc. v. SageForth Psychological Services, LLC, Opposition No. 91270181 (April 12, 2024) [precedential], where the…
2(d) Reversal, Identical Marks But The “Something More” Rule Not Satisfied
By Nikki Siesel
The Trademark Trial and Appeal Board (“TTAB” or “Board”) reversed the Examining Attorney’s refusal for likelihood of confusion based on identical trademarks, RAO’S for wine and restaurant services. See In re 1729 Investments LLC, Serial No. 90694523 (April 24,…
CAFC Decision Refuses to Expand Statutory Grounds to Cancel Mark
By Nikki Siesel
The Trademark Trial and Appeal Board (“TTAB”) ordered cancellation of a trademark registration for the mark DANTANNA’S for restaurant services, finding that the Registrant’s Attorney recklessly executed the Section 15 Declaration of Incontestability and disregarded the truth. See, Chutter, Inc.