Glossier Successfully Registers Color Pink as a Trademark

As applied to zipper closed bags made from bubble wrap. Glossier Registration Certificate The Examining Attorney refused the application on the basis that the that the bubble wrap served the function of protecting the enclosed items during shipping.  The Examining attorney provided evidence of empty bubble wrap envelopes available for purchase.  The application was further […]

Prince’s Estate Succeeds in Registering the Color Purple as a Trademark

In connection with both entertainment services and audio and video recordings.  See, Prince Purple Building Registration FEB2020 and Prince Purple CD Registration MAR2020. Paisley Park Enterprises now joins the ranks of Christian Louboutin (red on the soles of shoes, where the rest of the shoe is not red), Owens-Corning Fiberglas (pink insulation), Wolf Appliances (red […]

TTAB Knocks Out Mayweather and Shows No Love to Texas

In its denial of two registration applications for slogans on the basis that neither functioned as a mark.  In re Mayweather Promotions and In re Texas with Love In Mayweather Promotions, Applicant had sought to register the slogan “PAST PRESENT FUTURE” for t-shirts.  Mayweather promotions argued that the relevant consumers were sports fans who had […]

Squeak ’em While You Got ‘Em – Jack Daniels Petitions for Cert in Bad Spaniels Case

Jack Daniels Cert Petition And several amici have already added their voices to the din.  Most appear to have their hackles raised over the Ninth circuit’s reversal of the district court’s holding that the Bad Spaniels toy conveyed a humorous message, and as such, was an expressive work.  Uniform agreement can be transient in a […]

Trademark Modernization Act Advances in the House

HR6196 The bill, introduced in March 2020, takes aim at fraudulent trademark filings in several ways: it codifies existing processes for third party submissions during trademark examination; it provides for expungement or reexamination procedures as alternatives to inter partes proceedings before TTAB; and it provides that a party seeking an injunction for a trademark violation […]

Apple opposes “Prepear” trademark application for meal prep app

Apple v Prepear Notice of Opposition Apple has filed an opposition to the registration of a trademark application for an image of a pear, as used in connection with a meal preparation app.  Apple claims that the mark, shown side by side below with Apple’s mark, is likely to cause confusion and/or dilute Apple’s famous […]

Are those Rockstuds®? Valentino’s TM application denied as non-distinctive

Valentino Rockstud OA, Valentino Response Valentino filed three trademark applications (US App. Ser. Nos. 88/672,186; 88/672/019 and 88/672225) directed to different aspects of their Rockstud® shoes.  Specifically, Valentino claimed that the pyramid shaped metallic studs, as applied to the t-strap and collar of a shoe, had acquired distinctiveness over the previous 5 years of commercial […]

2nd Circuit Court of Appeals vacates Tiffany’s $21M summary judgement win, and remands for trial

tiffany-co-v-costco-wholesale-corp, August 17, 2020 Background In November 2012, a Costco customer alerted Tiffany that she had seen engagement rings that appeared to be advertised as Tiffany Rings at a Costco store in Huntington Beach, CA.  Tiffany sent investigators to the store that observed two rings with signage nearby reading “639911/PLATINUM TIFFANY…” and “605880/PLATINUM TIFFANY…” Tiffany […]

The Commodores have come to the end of their rainbow with former bandmate, Thomas McClary

But at least there’s a pot of gold there.   Commodores v McClary Appeal Nos. 19-10791, 19-12819, July 23, 2020, 11th Circuit Court of Appeals. Thomas McClary and his company (collectively “McClary”) appealed the summary judgment and damages ruling of the district court, as well as denial of his motions to modify the scope of a […]

Color marks on packaging can be inherently distinctive – In re Forney

In re Forney Industries, Appeal No. 2019-1073, Fed. Cir. April 8, 2020. Forney applied for a trademark for packaging based on use in commerce, with a showing of acquired distinctiveness.  In its application, Forney described its mark as a “color mark” consisting of a solid black stripe, with the color yellow underneath, transitioning to the […]