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 […]

Naughty no more, VIP Products “Bad Spaniels Silly Squeaker” lives to see another squeak

VIP Products v. Jack Daniels, No. 18-16012, 9th Circuit, March 31, 2020. A 9th circuit panel denied Jack Daniel’s their win and affirmed in part, vacated in part and reversed in part the district court’s judgement after a bench trial and permanent injunction in favor of Jack Daniel’s Properties, Inc., (“JDPI”) in a trademark suit […]

A unanimous SCOTUS sends some luck Lucky’s way in Lucky Brand v Marcel

After 20 years of litigation, on May 14, 2020, the Supreme Court reversed and remanded the 2nd Circuit’s decision in Marcel Fashions Grp, Inc. v. Lucky Brand Dungarees et al., No. 2017-0361. Below, Lucky Brand filed a motion to dismiss using an argument from a previous round of litigation that had not yet been raised […]

USPTO Announces Unauthorized Changes have been made to some TM Applications and Registrations