is speaking at the Practising Law Institute (PLI) Program: Intellectual Property Rights Enforcement 2019, on January 17th in New York. His session is "Trademark Enforcement Update." Significant trademark issues continue to percolate in the courts and the U.S. Patent and Trademark Office. This annual summary of leading cases will cover:
- Beyoncé vs. Fiancé
- The protection of fictional characters
- Frito-Lay’s challenge to Pretzel Crisps
- The dispute RE: Corn Thins & Rice Thins
- Seattle's disparaging bus ads
- Likelihood of Confusion
- An analysis of the following three recent precedential decisions of the Court of Appeals for the Federal Circuit and the USPTO’s Trademark Trial and Appeal Board deal, which contain assertions of likelihood of confusion in trademark registration proceedings, but emphasize different factors:
- In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047 (Fed. Cir. 2018) – A useful overview of the du Pont likelihood of confusion factors, emphasizing the similarity of the marks, and the need, in registration proceedings, to construe the goods and their trade channels based on the specific identification of goods in the registration and application.
- In re American Cruise Lines, Inc., 128 USPQ2d 1157 (TTAB 2018) – This decision hinges on the effect of a consent agreement between the applicant and the cited registrant. The Board disagrees with the Examiner and finds the agreement probative and not a mere “naked” consent, notwithstanding the absence of mutual undertakings to avoid confusion, because it specifies the reasons why the parties do not think confusion is likely.
- In re FabFitFun, Inc., 127 USPQ2d 1670 (TTAB 2018) – Another recent precedential Board decision, this time discussing the impact of third-party use of the shared element in the parties’ marks, including both third-party trademark use and descriptive use.
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