Oct 29, 2019

How to Overcome the Genericness Hurdle at the U.S. Trademark Trial and Appeal Board

Photo of a Lightbulb with a question mark

The Following Article is reprinted, with permission, from INTA Bulletin, Vol. 74, No.8 From 2013 through 2017, the U.S. Trademark Trial and Appeal Board (TTAB) issued 10 opinions in which it ruled on claims whose marks were generic for their goods or services. Of these opinions, nine resulted in a finding that the mark was unregistrable. A closer look at those opinions reveals what owners and practitioners should know when faced with the chance to argue genericness before the TTAB. Under U.S. trademark law, a mark is generic if its primary significance to the relevant public is the goods or… Read more


Jan 25, 2018

U.S. District Court Orders USPTO to Register BOOKING.COM as a Protected Trademark

Person using laptop to visit Booking.com

In 2012, Booking.com B.V. (“Booking.com”) filed four trademark applications for the mark Booking.com for services in class 39 – travel agency services – and class 43 – making hotel reservations. The USPTO initially rejected all four applications on the ground that BOOKING.COM is generic as applied to the relevant services and, in the alternative, that the mark is merely descriptive and that Plaintiff had failed to establish acquired distinctiveness. The Trademark Trial and Appeal Board (TTAB) then affirmed the four refusals of registration for the same reasons. Booking.com filed this civil action challenging the denial by TTAB. In determining whether… Read more


Jan 18, 2018

Finding of Likelihood of Confusion Despite Consent Agreement

Trademark Confusion Between Beer Manufacturers

On October 30, 2017 the Trademark Trial and Appeal Board (TTAB) affirmed the refusal of registration of the 8-BIT ALEWORKS mark on the ground of a likelihood of confusion with the 8 BIT BREWING COMPANY registered marks and composite mark (shown below) under Section 2(d) of the Lanham Act, 15 USC Section 1052(d). The applicant’s mark was for “beer” while the registrant’s marks were for “Beer, ale, lager, stout and porter; Malt liquor; Pale beer”. The TTAB analyzed the marks under the factors in In re EI du Pont de Nemours & Co, 476 F2d 1357 (CCPA 1973). The application… Read more


Jan 4, 2018

TTAB Decision is Found to Have Preclusive Effect in the Southern District of New York

Wine Bottle and Glass: LIANA Brand Case Preclusive

The United States District Court for the Southern District of New York held that Defendant Peju Province Winery L.P. (“Peju”) is precluded from litigating the likelihood of confusion issue that was decided by the Trademark Trial and Appeal Board (TTAB) in 2004. Plaintiff Cesari S.R.L. (“Cesari”) is an Italian winery that produces wine with the mark LIANO, which was registered on January 7, 2003, which an alleged first use of January 26, 1989. On February 10, 2003, Peju filed an intent-to-use application to register LIANA for wine. Cesari opposed the registration of Peju’s mark based on a likelihood of confusion…. Read more


Mar 8, 2017

National Grange Succeeds in Opposing NEWGRANGE PRESS Application Based on Prior Trademark Rights

Trademark Symbol

Victory at the Trademark Trial and Appeal Board On February 16, 2017, the Trademark Trial and Appeal Board (Board) sustained our client’s, the National Grange of the Order of Patrons of Husbandry, opposition of the trademark application for the mark NEWGRANGE PRESS based on a finding a likelihood of confusion. National Grange of the Order of Patrons of Husbandry v. Mulejewels Publ’ns Ltd., Opp. No. 91222078 (T.T.A.B. 2017). The National Grange is the nation’s oldest general farm and rural public interest organization and has chapters nationwide. The National Grange owns numerous trademark registrations, including registrations for GRANGE covering “newsletters, brochures,… Read more