Trademarks: Frequently Asked Questions

428 common questions about trademarks law, answered in plain English. Each answer links to the full guide or case analysis it comes from. Browse the Trademarks case-law archive for the underlying decisions. Educational only, not legal advice.

How do I appeal an IP complaint on Amazon?: First identify the complaint type from the Account Health dashboard notice, because the appeal path differs. For counterfeit claims, submit invoices or receipts from a legitimate supplier proving authenticity. For copyright takedowns, you can file a DMCA counter-notice through Amazon's process. For trademark claims on genuine branded goods, argue first-sale and supply documentation; for utility patent claims you may be routed to Amazon's neutral patent evaluation (APEX) process. In parallel, contact the rights owner directly and request a retraction — a retraction submitted to Amazon by the complainant is usually the fastest full fix. Read more: An IP Complaint Took Down Your Amazon or Etsy Listing: How to Fight Back ›
Can someone get my listing removed with a false infringement claim?: Yes, and it happens routinely — marketplaces remove listings based on complaints without judging their merits, and some competitors abuse that. Your remedies: appeal through the platform with proof, demand a retraction from the complainant in writing, and for knowingly false copyright takedowns, 17 U.S.C. § 512(f) creates liability for material misrepresentation, with damages and attorney's fees. Courts have also allowed claims like tortious interference and unfair competition against serial false complainers. Document everything, because a pattern of bad-faith complaints is what turns a platform appeal into a viable lawsuit. Read more: An IP Complaint Took Down Your Amazon or Etsy Listing: How to Fight Back ›
Will one IP complaint get my Amazon or Etsy account suspended?: Usually not, if it's isolated and you respond properly. A single complaint dings your Account Health Rating on Amazon or sits in your case log on Etsy; both platforms operate repeat-infringer policies required for their DMCA safe harbor, so accumulated complaints — especially unresolved ones — are what trigger suspension or termination. That's why it's a mistake to shrug off a complaint on a listing you no longer care about: unaddressed strikes compound, and account-level termination takes down every listing, your inventory access, and often your disbursements. Read more: An IP Complaint Took Down Your Amazon or Etsy Listing: How to Fight Back ›
Is it legal to resell brand-name products on Amazon or Etsy?: Generally yes. Under the first-sale doctrine — codified for copyright at 17 U.S.C. § 109 and confirmed for lawfully made goods purchased abroad in Kirtsaeng v. John Wiley & Sons (2013) — someone who buys a genuine product may resell it without the rights owner's permission, and trademark law's version protects resale of genuine, materially unaltered goods. Brands still file complaints against resellers, often citing 'material differences' like missing warranties or quality controls. Winning these disputes turns on clean sourcing records proving your goods are authentic and unchanged. Read more: An IP Complaint Took Down Your Amazon or Etsy Listing: How to Fight Back ›
Is it illegal to sell dupes?: Usually not, which is why dupes are everywhere. A dupe imitates a product's look, feel, or formula while selling under its own brand name — and U.S. law generally permits copying product features that aren't protected by a design patent, trade dress rights, or copyright. Selling dupes becomes illegal when it crosses a specific line: copying a patented design, imitating trade dress closely enough to confuse consumers, reproducing protected artwork, or using the original brand's trademarks in ways that suggest affiliation. Counterfeits — which copy the brand name or logo itself — are a different, flatly illegal category. Read more: Are Dupes Legal? The Law Behind Dupe Culture ›
Is it illegal to buy dupes?: No. Buying a dupe for personal use is legal, full stop — the dupe itself is (usually) a lawful product, and even where a seller has crossed into infringement, IP liability targets makers and sellers, not consumers. Buying counterfeits is murkier as a policy matter, but U.S. law likewise doesn't criminalize personal-use purchases; the criminal statutes (like 18 U.S.C. § 2320) aim at trafficking. The practical risks of fakes are quality, safety, and funding bad actors — not personal legal exposure. Read more: Are Dupes Legal? The Law Behind Dupe Culture ›
What happened in the Lululemon v. Costco dupes lawsuit?: Lululemon sued Costco in June 2025 in the Central District of California, alleging that Kirkland Signature and partner-brand items — including an $8 version of its $118 Scuba hoodie, plus Define jacket and ABC pant lookalikes — infringed its trade dress and design patents and constituted unfair competition. By mid-2026 the parties had settled nearly all claims — including those over Danskin, Jockey, and Spyder items, partly through a deal with Costco's supplier — leaving a dispute over one men's zip-up jacket, with court-ordered mediation due by July 31, 2026. The case became the highest-profile test yet of whether dupe retailing crosses legal lines. Read more: Are Dupes Legal? The Law Behind Dupe Culture ›
Can a brand stop dupes of its products?: Only with the right rights in hand. A design patent filed before launch stops close copies for 15 years under the ordinary-observer test with no need to show confusion. Trade dress can stop dupes of a truly iconic look, but product-design trade dress requires proving secondary meaning and non-functionality — hard for basics like leggings or neutral packaging. Brands also police dupe marketing that leans on their trademarks in listings and hashtags, and some skip law entirely and co-opt dupe culture with pricing, quality, and marketing plays. Read more: Are Dupes Legal? The Law Behind Dupe Culture ›
What is the doctrine of foreign equivalents in trademark law?: It is a rule used by the USPTO and the courts that translates foreign words from common, modern languages into their English meaning, then tests that English meaning for descriptiveness, genericness, and likelihood of confusion. The idea is that a word you cannot register in English should not become registrable just because you say it in another language. The doctrine only applies when the 'ordinary American purchaser' would likely 'stop and translate' the term, and it does not apply to dead or obscure languages or to unnatural translations. Read more: The Doctrine of Foreign Equivalents in Trademark Law ›
Who is the 'ordinary American purchaser' under the doctrine?: In In re Spirits International, the Federal Circuit explained that the ordinary American purchaser includes all American purchasers, including those who are proficient in the foreign language and would ordinarily be expected to translate the word into English. So the test is not limited to English-only speakers. The practical question is whether a meaningful portion of relevant buyers would actually recognize and translate the word, rather than treat it as an arbitrary brand. Read more: The Doctrine of Foreign Equivalents in Trademark Law ›
Does the doctrine apply to brand names in Latin or other dead languages?: Generally no. The doctrine is reserved for words from common, modern languages. Words from dead or obscure languages, such as Latin, are usually not translated because ordinary American purchasers are unlikely to recognize or translate them. The doctrine is a guideline, not an absolute rule, so an examiner or court weighs how familiar the language and translation really are. An attorney licensed in your jurisdiction can assess how this applies to a specific name. Read more: The Doctrine of Foreign Equivalents in Trademark Law ›
What is cybersquatting in simple terms?: Cybersquatting is registering, trafficking in, or using a domain name that is identical or confusingly similar to someone else's trademark, in bad faith, usually to profit from the brand's reputation. Classic examples include grabbing a famous brand's name to resell it at a markup, to run ads, or to redirect customers. It is different from legitimately owning a domain that happens to match a common word you actually use in good faith. Read more: Domain Names & Cybersquatting: A 2026 Guide ›
What is the difference between the UDRP, the URS, and the ACPA?: All three target cybersquatting but deliver different results. The UDRP is an ICANN administrative process that can transfer or cancel a domain. The URS is a faster, cheaper administrative process for new gTLDs that only suspends a domain for the rest of its registration. The ACPA, 15 U.S.C. 1125(d), is a U.S. federal lawsuit that can order transfer or cancellation and also award money damages and possibly attorneys' fees. Read more: Domain Names & Cybersquatting: A 2026 Guide ›
Can you trademark a generic.com domain name?: Sometimes. In USPTO v. Booking.com (2020), the Supreme Court held that a 'generic.com' term is generic only if consumers actually perceive it as a generic class name. So a term like Booking.com can be registered if survey and marketplace evidence shows consumers see it as a brand, but a truly generic term plus .com that buyers read only as a category usually cannot be registered. Read more: Domain Names & Cybersquatting: A 2026 Guide ›
How do I get back a domain name that copies my brand?: First gather evidence that you have trademark rights and that the registrant acted in bad faith. Then choose a remedy: a UDRP complaint to transfer or cancel the domain, a URS filing for a fast suspension on a new gTLD, or an ACPA lawsuit in U.S. federal court if you also want money damages. The right path depends on your goals, budget, and the domain's extension, so consider speaking with an attorney licensed in your jurisdiction. Read more: Domain Names & Cybersquatting: A 2026 Guide ›
Does one EUIPO trademark cover all of Europe?: One European Union Trade Mark (EUTM) covers all 27 EU member states with a single application, but it does not cover non-EU countries. Notably, the United Kingdom left the EU, so an EUTM no longer protects you in the UK, and Switzerland, Norway, and others were never part of the EU system. For those, you file separately or designate them through the Madrid Protocol. Read more: How to Register a Trademark in the EU (EUIPO) ›
How much does it cost to register an EU trademark?: As of 2026 the EUIPO basic online filing fee is 850 euros for one class of goods or services, plus 50 euros for a second class and 150 euros for each additional class. That covers all 27 EU states, which is why an EUTM is usually far cheaper than filing in each country separately. Attorney fees are extra. Read more: How to Register a Trademark in the EU (EUIPO) ›
What is the 'unitary' nature of an EU trademark?: An EUTM is a single, indivisible right covering the whole EU. The upside is one application, one renewal, one registration for 27 countries. The risk is all-or-nothing: a successful objection or conflict in even one member state can block or cancel the entire EUTM. If that happens, you can convert it into national applications in the countries where no conflict exists, keeping your original filing date. Read more: How to Register a Trademark in the EU (EUIPO) ›
Is it illegal to copy someone else's product?: Often it is not. Under U.S. law, competitors are generally free to copy product designs that aren't protected by a patent, trade dress rights, or copyright — the Supreme Court said so directly in Sears v. Stiffel and Compco v. Day-Brite (1964). Copying becomes illegal only when it invades a specific right: a design or utility patent, protectable trade dress, a copyrightable design element, or a trademark. That's why makers who want protection have to build it deliberately rather than assume it exists. Read more: Fighting Copycat Products: Trade Dress, Design Patents & Dupes ›
What can I do if someone copied my product?: Start by identifying which rights the copy actually violates: a design patent (ordinary-observer test), trade dress (likelihood of confusion plus non-functionality), copyright in separable artwork, or a utility patent. Then match the enforcement tool to the problem — a cease-and-desist letter for a single copycat, marketplace takedowns through programs like Amazon Brand Registry for online sellers, a federal lawsuit for damages and an injunction, or an ITC Section 337 investigation to block infringing imports at the border. Many disputes use several of these at once. Read more: Fighting Copycat Products: Trade Dress, Design Patents & Dupes ›
How do I protect my product design before launch?: File a design patent application before or within 12 months of first public disclosure — miss that on-sale bar and design patent rights are gone forever in the U.S. Register copyright in any separable artwork, register your trademarks, and design packaging that's distinctive rather than descriptive. Then document sales, advertising spend, and press from day one, because that evidence is what eventually proves the secondary meaning trade dress protection requires. Protection you plan before launch is dramatically cheaper than protection you improvise after the copy appears. Read more: Fighting Copycat Products: Trade Dress, Design Patents & Dupes ›
Are dupes the same as counterfeits?: No, and the difference decides legality. A counterfeit copies the brand itself — the trademark, logo, or label — and is flatly illegal, with statutory damages up to $2 million per counterfeited mark and potential criminal liability. A dupe imitates the product's look or function while selling under its own brand name, which is usually lawful unless it crosses into design patent or trade dress infringement. The dupe seller says 'like theirs, but cheaper'; the counterfeiter says 'this is theirs.' Read more: Fighting Copycat Products: Trade Dress, Design Patents & Dupes ›
What is a filing basis for a U.S. trademark?: A filing basis is the legal ground that lets you apply to register a mark with the USPTO. The five bases are Section 1(a) use in commerce, Section 1(b) intent to use, Section 44(d) priority from a foreign application filed within the prior six months, Section 44(e) based on a foreign registration, and Section 66(a) extension of an international registration under the Madrid Protocol. Every application must rest on at least one basis. Read more: Foreign Filing Basis for U.S. Trademarks ›
How long do I have to claim Section 44(d) priority?: Section 44(d) lets you claim the filing date of an earlier foreign application as your effective U.S. filing date, but only if you file the U.S. application within six months of that foreign filing for the same mark and the same goods or services. Miss the six-month window and you lose the priority claim, though you can still file on another basis. Read more: Foreign Filing Basis for U.S. Trademarks ›
Do Section 44 and Section 66(a) applications require use before registration?: No. Unlike a Section 1(a) application, a foreign applicant relying on Section 44(e) or Section 66(a) does not have to prove use of the mark in U.S. commerce before the registration issues. You must declare a bona fide intent to use the mark, but actual use can come later. Use is still required to maintain the registration after it issues. Read more: Foreign Filing Basis for U.S. Trademarks ›
Can you trademark a generic word plus .com?: Sometimes. In USPTO v. Booking.com (2020), the Supreme Court rejected an automatic rule that a generic term plus '.com' is always generic and unregistrable. Whether you can register it depends on consumer perception: if the buying public treats the whole 'generic.com' term as a brand that identifies one source, it may be registrable. If consumers just hear a generic category name, it cannot be a trademark. Read more: Can You Trademark a Generic.com Domain? ›
What was the holding in USPTO v. Booking.com?: On June 30, 2020, the Supreme Court held 8-1 that 'Booking.com' is not automatically generic just because 'booking' is generic. The Court rejected a per se rule and said genericness turns on what the term means to consumers. Because survey and other evidence showed consumers viewed 'Booking.com' as a brand, it was eligible for trademark registration. Read more: Can You Trademark a Generic.com Domain? ›
Is a generic.com trademark worth getting?: It can be, but the rights are usually narrow and weak. The Supreme Court noted that a 'generic.com' mark may have limited scope, so competitors can still use the underlying generic word. You also typically need strong evidence of acquired distinctiveness, often a consumer survey, which is expensive. An attorney licensed in your jurisdiction can help you weigh the cost against the benefit. Read more: Can You Trademark a Generic.com Domain? ›
What is the difference between a domain that infringes my trademark and a hijacked domain?: An infringing domain is one someone else registered that copies your brand — you never owned it, and you recover it through a UDRP complaint or an ACPA lawsuit. A hijacked domain is one you owned and lost control of through theft, fraud, or an unauthorized transfer — you recover it through your registrar's abuse team or ICANN's Transfer Dispute Resolution Policy (TDRP), not the UDRP. Read more: How to Recover a Stolen or Infringing Domain Name ›
How long does a UDRP case take and what does it cost?: A typical UDRP proceeding concludes in about two months. Provider filing fees commonly run around 1,500 US dollars for a single-member panel, and attorney fees often add a few thousand more. The only remedies are transfer or cancellation of the domain — the UDRP does not award money damages. Read more: How to Recover a Stolen or Infringing Domain Name ›
Can I get money damages from a cybersquatter?: Not through the UDRP or URS. To seek damages you generally must file suit in federal court under the Anticybersquatting Consumer Protection Act (ACPA), which allows transfer of the domain plus statutory damages of 1,000 to 100,000 US dollars per domain at the court's discretion. An attorney licensed in your jurisdiction can assess whether your facts support an ACPA claim. Read more: How to Recover a Stolen or Infringing Domain Name ›
What trademark class is clothing?: Clothing, footwear, and headwear fall in International Class 25. If you also run a store or sell other brands, retail and online-store services are Class 35, and each class carries its own filing fee. Read more: How to Trademark a Clothing Brand (Step by Step) ›
Why was my clothing trademark refused as ornamental?: The USPTO refuses a specimen when the mark looks like decoration rather than a brand. A large design printed across the chest of a shirt is often deemed ornamental, while the same name on a neck label or hangtag usually functions as a trademark. Read more: How to Trademark a Clothing Brand (Step by Step) ›
How much does it cost to trademark a clothing brand in 2026?: The USPTO base application fee is $350 per class through the Trademark Center using the Trademark ID Manual. Selling clothing (Class 25) and running a store (Class 35) would be $700, plus possible surcharges and any attorney fees. Read more: How to Trademark a Clothing Brand (Step by Step) ›
How much does it cost to trademark a business in 2026?: The USPTO base application fee is $350 per class of goods or services as of 2026, but surcharges for incomplete information ($100/class), custom free-form descriptions ($200/class), and long descriptions ($200 per extra 1,000 characters) can raise the government cost. If you hire an attorney, plan on roughly $1,000 to $2,000 per class all-in, including fees. Read more: How to Trademark Your Business: The Complete 2026 Guide ›
Can I trademark my business name myself without a lawyer?: Yes. The USPTO lets any business owner file directly through its Trademark Center, and many sole-class, use-based applications go through without a hitch. The risk is that a flawed search, wrong class, or weak goods/services description can cause a refusal or a narrow, fragile registration, so many founders at least have an attorney run a clearance search first. Read more: How to Trademark Your Business: The Complete 2026 Guide ›
How long does it take to register a trademark?: In 2026 the USPTO typically assigns an examining attorney about 3 to 5 months after filing. A smooth, unopposed application registers in roughly 12 to 14 months. An office action or an intent-to-use filing that requires a later proof-of-use statement can add several months or more. Read more: How to Trademark Your Business: The Complete 2026 Guide ›
Do I need a trademark if I already registered my LLC?: Usually yes. Registering an LLC or corporation with your state only reserves the entity name for business-registry purposes; it does not give you brand rights or stop a competitor from using a similar name. A federal trademark is what protects the brand customers associate with your products or services. Read more: How to Trademark Your Business: The Complete 2026 Guide ›
Is there a single worldwide trademark or patent?: No. There is no global trademark or patent. Intellectual property rights are territorial, meaning each country grants and enforces its own rights. Systems like the Madrid Protocol and the PCT streamline filing in many countries at once, but they do not create one worldwide right. Read more: International IP Protection: A Founder's 2026 Guide ›
What is the Madrid Protocol?: The Madrid Protocol is a WIPO-administered system that lets you file one international trademark application, in one language with one set of fees, based on a home (basic) application or registration, and designate any of its 130-plus member countries. Each designated country still examines the mark under its own law. Read more: International IP Protection: A Founder's 2026 Guide ›
How does the PCT help with patents?: The Patent Cooperation Treaty lets you file one international patent application that preserves your filing date in over 150 member states. It does not grant a patent. Around 30 months from your priority date you must enter the national phase in each country where you actually want protection. Read more: International IP Protection: A Founder's 2026 Guide ›
How long do I have to file abroad after my first application?: Under the Paris Convention you generally have a priority window measured from your first filing: six months for trademarks and twelve months for patents. File within that window in other member countries and your later applications are treated as if filed on your original date. Read more: International IP Protection: A Founder's 2026 Guide ›
How much should a startup spend on IP?: A bootstrapped startup can cover the essentials for roughly $1,000–$5,000 a year: a federal trademark application (USPTO base fee $350 per class plus attorney help), copyright registrations at $45–$65 each, a provisional patent application if the technology warrants it, and clean assignment agreements. A funded seed-stage company typically lands in the $15,000–$50,000 per year range once it's prosecuting one to three nonprovisional patent applications and watching its trademarks. The right number depends less on stage labels than on whether competitors would copy what you're building. Read more: IP Budgeting: What Protection Should Cost at Each Company Stage ›
Why do foreign patent filings cost so much?: Because you pay separately in every country: national filing fees, translation costs (often the single biggest line item — a full technical translation into Japanese or Chinese can run thousands of dollars per application), local associate attorneys in each jurisdiction, and then annual maintenance annuities in each country for the life of each patent. A PCT application defers the decision to about the 30-month mark, but entering national phase in five or six countries commonly costs tens of thousands of dollars per patent family — which is why the 30-month decision is where disciplined companies prune hardest. Read more: IP Budgeting: What Protection Should Cost at Each Company Stage ›
What are patent maintenance fees and when are they due?: U.S. utility patents require maintenance fees at 3.5, 7.5, and 11.5 years after grant to stay in force. Under the USPTO fee schedule effective January 2025, the large-entity amounts are $2,150, $4,040, and $8,280 respectively — about $14,470 over a patent's life — with 60% discounts for small entities and 80% for micro entities. The escalating structure is deliberate: it forces owners to re-justify each patent as it ages. Treating each fee event as a keep-or-abandon decision, rather than an auto-pay, is one of the highest-leverage budget disciplines available. Read more: IP Budgeting: What Protection Should Cost at Each Company Stage ›
What do investors expect a company to have spent on IP?: Investors care about coverage, not spend for its own sake. At seed, they expect hygiene: assignments from every founder, employee, and contractor, a trademark filing, and provisionals or early filings on core technology. At Series A and B, they expect a deliberate portfolio matched to the product roadmap, evidence someone is making protect-or-pass decisions, and no gaps a competitor or troll can exploit. A company that spent $30,000 thoughtfully often diligences better than one that spent $300,000 filing indiscriminately. Read more: IP Budgeting: What Protection Should Cost at Each Company Stage ›
Do I need a registered trademark for Amazon Brand Registry?: You need either a registered trademark or, in many cases, a pending application from a recognized office such as the USPTO. Amazon's IP Accelerator lets you enroll with a pending application, but a pending mark carries less weight and your benefits can be scaled back if the application is ultimately refused. Read more: An IP Checklist for Amazon & E-Commerce Sellers ›
Can I copyright my Amazon product photos and listing text?: Original product photos and original written descriptions can be protected by copyright the moment you create them, and registration with the U.S. Copyright Office strengthens your ability to enforce them. Generic spec sheets and short titles usually are not protectable, and copying a competitor's photos or copy can expose you to a claim. Read more: An IP Checklist for Amazon & E-Commerce Sellers ›
What happens if I get an IP complaint on Amazon?: Amazon may remove the listing and warn or suspend the account. You typically respond with a retraction from the complaining party or a plan of action, and counterfeit or infringement disputes can carry real legal consequences, so many sellers consult an attorney licensed in their jurisdiction before responding. Read more: An IP Checklist for Amazon & E-Commerce Sellers ›
What is an IP holding company?: An IP holding company (holdco) is a separate legal entity — often an LLC or corporation — whose main job is to own a group's intellectual property and license it to the operating company or companies that actually make and sell things. The operating companies pay royalties for the license, and the structure separates the group's most valuable assets from the entities that carry lawsuit, contract, and bankruptcy risk. It's common in franchising, multi-brand groups, and larger corporate families, and largely unnecessary for a single-product startup. Read more: IP Holding Companies: Structure, Benefits, and the Traps ›
Does an IP holding company still save state taxes?: Mostly no, not the way it did in the 1990s. The old play — parking trademarks in a Delaware passive investment company and deducting royalties in high-tax states — has been substantially shut down by economic-nexus rulings (starting with South Carolina's Geoffrey case involving the Toys R Us mascot trademark), royalty addback statutes in most states, and combined reporting. Internationally, OECD BEPS transfer-pricing rules and the U.S. tax on global intangible income (the regime formerly called GILTI, reworked as NCTI in 2025) target the same shifting. Legitimate reasons for a holdco today are structural — asset protection, licensing administration, M&A flexibility — not tax arbitrage. Read more: IP Holding Companies: Structure, Benefits, and the Traps ›
What is naked licensing and why does it kill trademarks?: Naked licensing is licensing a trademark without genuinely controlling the quality of the goods or services sold under it. Because a trademark's whole legal function is guaranteeing consistent source and quality to consumers, a mark licensed with no quality control stops performing that function — and courts treat it as abandoned, extinguishing the owner's rights entirely. In FreecycleSunnyvale v. Freecycle Network (9th Cir. 2010), an organization lost its marks this way. For IP holdcos this is the signature trap: the holding company must actually exercise quality control over the operating company's use, on paper and in practice. Read more: IP Holding Companies: Structure, Benefits, and the Traps ›
Should my startup put its IP in a holding company?: Usually not yet. A single-product startup gains little from the structure and takes on real costs: a second entity to maintain, intercompany licenses and royalties to document at arm's length, and — critically — friction at fundraising, because venture investors expect the company they're buying into to own its own IP. Stranded or oddly-held IP is one of the classic diligence red flags. The structure starts earning its keep when there are multiple brands or entities, franchising, meaningful liability exposure, or estate-planning goals — and it should be built with counsel, not a formation website. Read more: IP Holding Companies: Structure, Benefits, and the Traps ›
Is selling knockoffs illegal?: Not automatically. A knockoff that imitates a product’s general look without copying a registered trademark is judged under ordinary trade dress, design patent, and copyright rules — and if it copies only unprotected elements, it’s lawful competition. It becomes illegal when it copies protectable trade dress with secondary meaning, a patented design, copyrighted artwork, or, worst of all, the brand’s actual logo or name, which converts it into a counterfeit with severe civil and criminal exposure. Read more: Knockoffs vs. Counterfeits: Where the Legal Line Actually Sits ›
What is the difference between a knockoff and a counterfeit?: A counterfeit bears a spurious mark that is identical to, or substantially indistinguishable from, a federally registered trademark — a fake Nike swoosh on shoes Nike never made. A knockoff imitates the design, styling, or packaging of a product without using the brand’s mark, like a quilted bag with no interlocking-C logo. Counterfeiting triggers statutory damages up to $2 million per mark, border seizures, and criminal prosecution; knockoffs are analyzed under ordinary IP infringement rules and are frequently legal. Read more: Knockoffs vs. Counterfeits: Where the Legal Line Actually Sits ›
Can you go to jail for selling counterfeit goods?: Yes. Trafficking in counterfeit goods is a federal crime under 18 U.S.C. § 2320, punishable for a first individual offense by up to 10 years in prison and a $2 million fine, with corporate fines up to $5 million. Penalties climb higher for repeat offenders and for counterfeits that cause serious bodily injury. Prosecutions typically target sellers and importers operating at commercial scale, not one-off resellers who were themselves deceived — though civil liability doesn’t require knowledge at all. Read more: Knockoffs vs. Counterfeits: Where the Legal Line Actually Sits ›
Is it illegal to buy fake designer goods for personal use?: In the United States, buying a counterfeit item for your own personal use is not something federal prosecutors pursue — the criminal statute targets those who traffic in counterfeits, not end consumers. Customs regulations even allow a traveler to bring in one counterfeit-marked article of a given type for personal use, though CBP can still seize obvious fakes. Importing multiple units, or buying to resell, is a different story and can create real civil and criminal exposure. Read more: Knockoffs vs. Counterfeits: Where the Legal Line Actually Sits ›
What is the fastest way to secure my brand name before I launch?: Run a clearance search to confirm the name is available, then lock it on three fronts: file a federal trademark application (an intent-to-use application lets you file before you have started selling), register the matching domain, and grab the social handles. The trademark is the only one of the three that gives you actual brand rights, so it should drive the decision; the domain and handles just keep your presence consistent. Read more: Locking Your Brand: Trademark, Domain & Handle ›
Can I trademark a name before I start using it?: Yes. The USPTO lets you file an intent-to-use application under Section 1(b) when you have a genuine, good-faith intention to use the name but have not started yet. It reserves your priority date. Before the registration can issue, you must later prove actual use by filing an allegation or statement of use with a specimen, but the early filing locks your place in line. Read more: Locking Your Brand: Trademark, Domain & Handle ›
What happens if I build a brand on a name I cannot trademark?: It is one of the most expensive mistakes a founder can make. If the name is generic or descriptive it may never register, and if it is confusingly similar to an existing mark you can be forced to rebrand after you have already invested in signage, packaging, a domain, and customer recognition. A clearance search before you commit is far cheaper than a forced rename later. Read more: Locking Your Brand: Trademark, Domain & Handle ›
What is the Madrid Protocol in simple terms?: The Madrid Protocol is an international treaty, run by the World Intellectual Property Organization (WIPO), that lets a trademark owner file one application, in one language, with one set of fees, to seek protection in many member countries at once. You must already have a trademark application or registration at home (your 'base'), and you designate the countries where you want protection. It is administered centrally, but each designated country still examines your mark under its own law and decides whether to grant protection there. It is a streamlined filing route, not a single worldwide trademark. Read more: The Madrid Protocol: Trademarks Abroad, Explained ›
What is 'central attack' under the Madrid Protocol?: For the first five years after your international registration date, your international registration depends on your home base application or registration. If the base is cancelled, withdrawn, or refused during that period, your international registration and all of its country designations fall with it. This vulnerability is called 'central attack' because a competitor can knock out your whole international filing by challenging the single home mark. After five years, the international registration becomes independent and is no longer tied to the base. Read more: The Madrid Protocol: Trademarks Abroad, Explained ›
Does the Madrid Protocol give me a worldwide trademark?: No. There is no such thing as a single worldwide trademark. The Madrid Protocol only gives you one efficient way to apply in multiple member countries. Each designated country's trademark office examines your mark under its own rules and can refuse it, so you can end up protected in some countries and refused in others from the same application. Countries that do not belong to the Madrid system must be handled by filing directly there. Talk to an attorney licensed in your jurisdiction about which countries matter for your brand. Read more: The Madrid Protocol: Trademarks Abroad, Explained ›
Is the supplemental register worth it?: It can be. A supplemental registration lets you use the ® symbol, appear in the USPTO's searchable database, and sue in federal court, and it can be cited by an examining attorney to block later confusingly similar applications. What it does not give you are the legal presumptions of validity and ownership, constructive notice, eligibility for incontestability, or the ability to record with U.S. Customs. For a descriptive mark that cannot yet qualify for the principal register, it is often a sensible stepping stone rather than a dead end. Read more: Principal vs. Supplemental Register, Explained ›
Can a supplemental register mark become incontestable?: No. Incontestability under Section 15 is only available to marks on the principal register after five years of continuous use. A mark on the supplemental register can never become incontestable, and it can be challenged at any time on any available ground. To pursue incontestability, you generally have to obtain a new registration on the principal register first. Read more: Principal vs. Supplemental Register, Explained ›
How do I move my mark from the supplemental to the principal register?: You file a new application on the principal register; you cannot simply amend the old one. The most common route is to show that your mark has acquired distinctiveness (secondary meaning) under Section 2(f). Five years of substantially exclusive and continuous use can serve as evidence of that acquired distinctiveness, though the USPTO can still ask for more proof. Talk to an attorney licensed in your jurisdiction about timing and evidence. Read more: Principal vs. Supplemental Register, Explained ›
Can you trademark product packaging?: Yes. Packaging trade dress — the overall look of a box, bottle, wrapper, or label layout — can be registered as a trademark at the USPTO, and under Two Pesos v. Taco Cabana it can be protected as inherently distinctive without proving secondary meaning, an advantage product shapes never get. The packaging must be nonfunctional and must serve to identify your brand rather than just decorate the product. Registration requires a drawing of the claimed dress, a description of its elements, and sometimes evidence of acquired distinctiveness under Section 2(f). Read more: Protecting Packaging and Product Appearance: A Layered Strategy ›
Should I get a design patent or trade dress protection for my product design?: Ideally both, in sequence. A design patent protects the ornamental design from day one for 15 years with no need to prove consumers recognize it — but you must file within 12 months of first public disclosure, or the right is gone forever. Trade dress in a product's shape requires secondary meaning, which takes years of sales and advertising to build. The classic play is to file the design patent at launch and use its 15-year window to build the consumer recognition that supports perpetual trade dress protection afterward. Read more: Protecting Packaging and Product Appearance: A Layered Strategy ›
Can a color be protected as a trademark?: Yes, but only with proof. In Qualitex v. Jacobson (1995), the Supreme Court held that a single color can serve as a trademark once it acquires secondary meaning — consumers must see the color as identifying a brand, the way robin’s-egg blue signals Tiffany. Color is never inherently distinctive, so you need years of consistent use and look-for advertising, and the color can’t be functional. Even then protection has limits: Louboutin’s red-sole mark was upheld only where the red sole contrasts with the rest of the shoe. Read more: Protecting Packaging and Product Appearance: A Layered Strategy ›
What parts of packaging cannot be protected?: Anything functional. Features that make the package work better or cost less — a spray trigger’s shape, a resealable zipper, a spout, a shape dictated by shipping efficiency — belong to everyone, and utility patents covering a feature are strong evidence it’s functional under TrafFix v. Marketing Displays. Generic conventions of your category (a wine-bottle silhouette, a standard pizza box) are also unprotectable. Protection attaches to the arbitrary, decorative, source-identifying choices layered on top of the functional container. Read more: Protecting Packaging and Product Appearance: A Layered Strategy ›
Does my US trademark protect me in China?: No. Trademark rights are territorial, so a US registration generally gives you no rights inside China. China is a first-to-file country, meaning whoever registers the mark there first usually owns it, even if you used it first elsewhere. To have enforceable rights against a Chinese factory or counterfeiter, you typically need to register your trademark in China itself, ideally before you start production. Read more: Protecting Your IP When Manufacturing Overseas ›
What is an NNN agreement and why not just use my US NDA?: An NNN agreement is a China-focused contract covering Non-Use, Non-Disclosure, and Non-Circumvention. A standard US NDA usually only blocks disclosure, so a factory could legally copy your product and sell it themselves as long as they did not 'disclose' your information. A well-drafted NNN, written under the laws of the manufacturing country and often in that language, closes that gap. Have one drafted by an attorney familiar with that jurisdiction. Read more: Protecting Your IP When Manufacturing Overseas ›
How do I stop counterfeit versions of my product from entering the US?: Once you hold a federal trademark or copyright registration, you can record it with US Customs and Border Protection through its e-Recordation system. CBP officers can then detain, seize, and destroy infringing imports at the border. It is a low-cost enforcement tool, but it only works if you have the underlying registration first. Read more: Protecting Your IP When Manufacturing Overseas ›
Is a trademark cease-and-desist letter legally binding?: No. A cease-and-desist letter is a private demand written by the other side's lawyer, not an order from a court or the USPTO. You are not legally required to comply with it or even to respond by its stated deadline. That said, ignoring a letter carries real risks: the sender may sue, and once you're on notice of their claim, continuing the accused use can support a finding of willful infringement, which increases damages exposure under the Lanham Act. Read more: You Received a Trademark Cease-and-Desist Letter. Don't Panic. ›
How long do I have to respond to a cease-and-desist letter?: The deadline in the letter — often 10 or 14 days — is chosen by the sender and has no legal force. Nothing bad automatically happens when it passes. A short, polite reply saying you've received the letter and are reviewing it with counsel buys weeks in most cases. What you shouldn't do is let the letter sit for months while continuing the accused use, because that delay can be painted as willfulness if the dispute ends up in court. Read more: You Received a Trademark Cease-and-Desist Letter. Don't Panic. ›
Can I ignore a trademark cease-and-desist letter?: You can, but it's usually the worst of the four options. Many letters do fizzle when ignored, especially mass-mailed ones, but you won't know which kind you have until you've assessed the sender's mark, your priority of use, and the real likelihood of confusion. If the sender's claim has teeth and they sue, your silence looks bad, you've lost the chance to negotiate cheaply, and your continued use after notice becomes evidence of willful infringement. Read more: You Received a Trademark Cease-and-Desist Letter. Don't Panic. ›
What if the company sending the letter is just bullying me?: Trademark bullying — a mark owner asserting rights far beyond what the law gives them, counting on smaller targets to fold — is common enough that the USPTO studied it at Congress's request in 2011. Signs include a demand that you stop using a descriptive or generic term, a mark in a completely unrelated industry, or a sender with a pattern of mass enforcement. Pushback backed by a lawyer's letter explaining why confusion is unlikely often ends these disputes, because bullies price their campaigns on targets not fighting. Read more: You Received a Trademark Cease-and-Desist Letter. Don't Panic. ›
How long do I have to respond to a trademark Office Action?: For most U.S. applications with Office Actions issued on or after December 3, 2022, you have three months from the issue date to respond. You can buy a single three-month extension for a fee, paid before the original deadline, for a maximum of six months total. Madrid Protocol (Section 66(a)) applications keep a flat six-month deadline with no extension. Read more: How to Respond to a USPTO Trademark Office Action ›
What happens if I miss the Office Action deadline?: If you do not respond (or request an extension) by the deadline, the USPTO abandons your application. You lose your filing date and the fees you already paid. In limited circumstances you may file a petition to revive for unintentional delay, with a fee, but the cleanest path is to meet the original deadline. Read more: How to Respond to a USPTO Trademark Office Action ›
Can I respond to an Office Action myself without an attorney?: Applicants based in the United States may respond on their own through the Trademark Electronic Application System (TEAS). Applicants domiciled outside the U.S. are required to be represented by a U.S.-licensed attorney. Substantive refusals like likelihood of confusion are legal arguments, so many applicants consult an attorney licensed in their jurisdiction even when self-representation is allowed. Read more: How to Respond to a USPTO Trademark Office Action ›
How long do I have to answer a TTAB notice of opposition or petition to cancel?: For TTAB proceedings instituted on or after September 4, 2025, you generally have 60 days from the date of the institution order to file your answer. Before that change the period was 40 days. The Board can also set a shorter time in a later scheduling order, so the only reliable deadline is the one printed in the institution order you received. Read that order and calendar the exact date. Read more: What to Do If You Get a TTAB Notice ›
What happens if I ignore a TTAB notice and do nothing?: If you file no answer by the deadline, the Board can enter default judgment against you. In an opposition that usually means your application is refused; in a cancellation it usually means your registration is canceled. After a notice of default you can ask the Board to set the default aside, but you must move promptly (generally within about 30 days) and show good cause. Doing nothing is the worst option. Read more: What to Do If You Get a TTAB Notice ›
Can I settle a TTAB dispute instead of fighting it?: Yes. Many TTAB proceedings settle. Common outcomes include a coexistence or consent agreement, narrowing your goods or services, agreeing to a design or wording change, or one side withdrawing. The Board builds settlement time into the schedule and parties can request suspension to negotiate. Settlement is often faster and cheaper than a full trial, but the terms bind you, so review them with an attorney licensed in your jurisdiction. Read more: What to Do If You Get a TTAB Notice ›
When can a trademark become incontestable under Section 15?: A mark registered on the Principal Register can become incontestable after it has been in continuous use in commerce for five consecutive years following the registration date, with no adverse final decision and no pending proceeding challenging the owner's rights. You claim it by filing an optional Section 15 declaration with the USPTO, usually within one year after a qualifying five-year period of continuous use. Marks on the Supplemental Register can never become incontestable. Read more: Section 15 Incontestability: What It Gives You ›
What does incontestability actually protect against?: Once a registration is incontestable, it becomes conclusive evidence of the validity of the mark and its registration, the owner's ownership of the mark, and the owner's exclusive right to use it in commerce for the listed goods or services. Most importantly, an incontestable mark can no longer be challenged on the ground that it is merely descriptive, a point the Supreme Court confirmed in Park 'N Fly v. Dollar Park and Fly. Read more: Section 15 Incontestability: What It Gives You ›
Can an incontestable trademark still be cancelled?: Yes. Incontestability is strong but not absolute. A mark can still be attacked or cancelled if it has become generic, if registration was obtained by fraud, if the mark has been abandoned, or if it is functional. Certain statutory defenses, such as classic fair use and prior use of a confusingly similar mark, also survive against an incontestable registration. Read more: Section 15 Incontestability: What It Gives You ›
When is the trademark Section 8 and 9 renewal due?: The first Section 8 Declaration of Use is due between the fifth and sixth year after your registration date. After that, you file a combined Section 8 and Section 9 renewal between the ninth and tenth year, and then every ten years for as long as you keep using the mark. Each deadline has a six-month grace period with an extra fee. Read more: Keeping Your Trademark: Section 8 & 9 Renewals ›
What happens if I miss my trademark renewal deadline?: If you do not file the required Section 8 declaration or Section 9 renewal by the deadline, and do not use the six-month grace period, the USPTO cancels or expires your registration. There is no way to reinstate it; you would have to start over with a brand-new application and lose your original filing date and priority. Read more: Keeping Your Trademark: Section 8 & 9 Renewals ›
What is a specimen and why does the USPTO want one?: A specimen is real-world proof that you are actually using your trademark in commerce, such as a product label, packaging, or a screenshot of a sales page. You must submit one specimen for each class of goods or services in your registration with every Section 8 filing, because U.S. trademark rights depend on continued use, not just registration. Read more: Keeping Your Trademark: Section 8 & 9 Renewals ›
Can I stop someone from using my business name if I never registered a trademark?: Possibly. In the U.S., trademark rights come from actually using a name in commerce, not just from registration. If you used the name first, you may have common-law rights — but usually only in the geographic area where you operate and are known. A federal registration extends those rights nationwide and makes enforcement much easier. Read more: Someone Is Using My Business Name — What Are My Options? ›
What if the other business was using the name before me?: Then they likely have priority, even if you registered the name with a state or formed an LLC first. Trademark priority generally goes to the first to use the mark in commerce for related goods or services. Forming a company or reserving a domain does not by itself create trademark rights. Read more: Someone Is Using My Business Name — What Are My Options? ›
Is sending a cease-and-desist letter my only option?: No. Options range from monitoring and an informal message, to a formal cease-and-desist letter, to a UDRP complaint for an infringing domain name, to a TTAB opposition or cancellation at the USPTO, to a lawsuit in federal court. Lawyers often start with the least aggressive step that fits the situation. Read more: Someone Is Using My Business Name — What Are My Options? ›
What should be on a startup IP checklist before launch?: At minimum: clear your name across trademark, domain, and social handles; get signed IP assignments from every founder, employee, and contractor; file your trademark; decide patent vs. trade secret and file a provisional before any public disclosure; put NDAs and basic trade-secret hygiene in place; and confirm you own your logo, code, and content in writing. The goal is a clean, documented chain of ownership before money and attention arrive. Read more: The Pre-Launch IP Checklist for Startups ›
When should I file my trademark and patent?: It depends, but earlier is usually cheaper. Trademark clearance and IP assignments cost little and prevent the most common disasters, so do them first. A federal trademark application and a provisional patent (if you have a patentable invention) are the next priorities, especially before you market publicly or pitch widely. An attorney licensed in your jurisdiction can help you sequence these for your budget. Read more: The Pre-Launch IP Checklist for Startups ›
Do I really need IP assignments if I'm the only founder?: Yes. Even a solo founder should have a signed agreement assigning to the company any IP they create, and so should every contractor and employee who touches the product. Investors and acquirers check this in diligence, and a missing assignment from an early developer or designer can stall or sink a deal. Documenting ownership early is far easier than reconstructing it later. Read more: The Pre-Launch IP Checklist for Startups ›
What is the most common startup IP mistake?: Assignment gaps — IP created by founders, contractors, or early employees that was never legally transferred to the company. Under U.S. copyright and patent law, the person who writes the code or designs the logo owns it by default unless there is a signed written assignment. Founders routinely discover during diligence that the startup does not actually own its core product, which can delay or kill a financing. Read more: 9 Startup IP Mistakes That Can Cost You the Company ›
Can public disclosure before filing a patent lose your rights?: Yes. Publicly disclosing, selling, or offering to sell your invention starts a countdown. The U.S. gives you a one-year grace period under 35 U.S.C. § 102(b)(1) to file after your own disclosure, but most foreign countries have no grace period at all — a single public demo or sale before filing can permanently destroy your patent rights in Europe, China, and most of the world. File before you disclose. Read more: 9 Startup IP Mistakes That Can Cost You the Company ›
Do I need IP assignments from contractors?: Almost always. Work-made-for-hire rules under 17 U.S.C. § 101 generally do not cover independent contractors for most code and designs, so absent a signed assignment the contractor keeps ownership of what they build. Every freelancer, agency, and dev shop should sign a present-tense IP assignment ('hereby assigns') before starting work. Retroactive fixes are possible but weaker and often expensive. Read more: 9 Startup IP Mistakes That Can Cost You the Company ›
When should a startup do an IP audit?: Well before you raise. Investors run IP diligence on every priced round, and the cheapest time to close assignment gaps, confirm trademark clearance, and document open-source use is when the people involved are still friendly and reachable. Waiting until a term sheet is signed turns routine cleanup into a fire drill that can lower your valuation or delay the close by weeks. Read more: 9 Startup IP Mistakes That Can Cost You the Company ›
What is startup intellectual property and why does it matter?: Startup intellectual property is the bundle of intangible assets your company owns: brand names and logos (trademarks), creative and written work and code (copyright), inventions (patents), and confidential know-how (trade secrets). It often makes up most of an early-stage company's value, so investors and acquirers scrutinize who owns it before they commit money. Read more: The Startup IP Playbook (2026) ›
Do founders or the company own the startup's IP?: The company should own it, but that does not happen automatically. Founders, employees, and contractors must sign a written assignment, usually a Proprietary Information and Inventions Assignment (PIIA), transferring everything they create to the company. Without those signatures, key IP can sit with individuals instead of the business. Read more: The Startup IP Playbook (2026) ›
Does a contractor or freelancer own the work they create for my startup?: Often yes, by default. Absent a written assignment, an independent contractor generally owns the copyright in what they create, even though you paid for it. A short 'work made for hire' line is not enough on its own, so every contractor agreement should include an explicit, present assignment of all IP to your company. Read more: The Startup IP Playbook (2026) ›
Do I need a trademark to sell on Amazon Brand Registry?: Yes. Amazon Brand Registry requires an active registered trademark, and it also accepts eligible pending applications from supported government trademark offices. Confirm current requirements directly with Amazon, since the program rules and accepted offices change over time. Read more: The Startup IP Playbook (2026) ›
Do you legally need a trademark attorney to file in the United States?: Not if you are domiciled in the United States. A U.S.-based individual or business may file and prosecute its own trademark application. However, if you are a foreign-domiciled applicant or registrant, USPTO rules require you to be represented by a U.S.-licensed attorney. Read more: Do You Need a Trademark Attorney, or Can You File Yourself? ›
What is the biggest risk of filing a trademark yourself?: The most common DIY problems are an inaccurate identification of goods or services, an unacceptable specimen of use, and a likelihood-of-confusion refusal that a clearance search would have flagged. Each can lead to an Office Action, delay, or a lost filing fee. Read more: Do You Need a Trademark Attorney, or Can You File Yourself? ›
How much does a trademark attorney cost versus filing alone?: The USPTO base government filing fee is $350 per class of goods or services regardless of whether you hire anyone. Attorney fees are separate and vary by firm and complexity. This article does not quote specific attorney prices; ask any attorney you consult for a written fee estimate. Read more: Do You Need a Trademark Attorney, or Can You File Yourself? ›
What is a trademark cancellation proceeding?: It is a legal action filed at the USPTO's Trademark Trial and Appeal Board (TTAB) asking it to cancel a trademark that is already registered. Unlike an opposition, which challenges a mark before it registers, a cancellation targets a mark that has already made it onto the register. The party filing is the petitioner, and the registration owner is the respondent. Read more: Trademark Cancellation Proceedings, Explained ›
What grounds can you use to cancel a registered trademark?: Common grounds include abandonment (the owner stopped using the mark with no intent to resume), genericness (the mark became the common name for the product), fraud on the USPTO, likelihood of confusion with an earlier mark, mere descriptiveness, and non-use. Within the first five years almost any valid ground is available; after five years the list narrows sharply to grounds like abandonment, genericness, and fraud. Read more: Trademark Cancellation Proceedings, Explained ›
Is there a faster alternative to a full cancellation?: Yes. The Trademark Modernization Act of 2020 created two streamlined ex parte options for non-use, effective December 2021: expungement (the mark was never used in commerce) and reexamination (the mark was not in use as of the relevant filing date). Both are decided by the USPTO rather than through a full TTAB trial, cost a USPTO fee per class, and can be requested by any third party. Read more: Trademark Cancellation Proceedings, Explained ›
Is a cease-and-desist letter a lawsuit or a court order?: No. A cease-and-desist letter is a private demand from one party to another. It is not a lawsuit and not a court order, and on its own it does not legally compel you to do anything. It can, however, be the first step before a lawsuit, and it creates a paper trail showing you were put on notice. Read more: You Got a Trademark Cease-and-Desist Letter — What to Do ›
Can I just ignore a trademark cease-and-desist letter?: Ignoring one is risky. It can lead the sender to escalate to a lawsuit, and a record showing you knew of the claim and kept using the mark anyway may support an argument that any infringement was willful, which can increase potential damages. Even when a claim looks weak, it is generally wiser to evaluate it and respond appropriately rather than say nothing. Read more: You Got a Trademark Cease-and-Desist Letter — What to Do ›
Do I have to meet the deadline in the letter?: The deadline is set by the sender, not a court, so it is not legally binding. That said, you should not simply blow past it. Requesting more time to investigate is common and often granted. The goal is a timely, considered response that avoids unnecessary escalation — talk to an attorney licensed in your jurisdiction about the right timing for your situation. Read more: You Got a Trademark Cease-and-Desist Letter — What to Do ›
What is the difference between the TM symbol and the R symbol?: The ™ symbol is a free claim that you treat a word, phrase, or logo as your trademark — you can use it with no filing at all, and ℠ is the equivalent for services. The ® symbol may only be used after the USPTO actually issues a federal registration. Using ® while your application is still pending, or with no application, is improper and can jeopardize your application and enforcement position. So: ™ before and during the application, ® only after the registration certificate arrives. Read more: ™, ®, ©, and “Patent Pending”: What the Symbols Actually Mean ›
Do I still need to put the copyright symbol on my work?: No — copyright protection has been automatic since March 1, 1989, when the U.S. joined the Berne Convention, so a missing © notice doesn't put a work in the public domain. But notice is still smart. Under 17 U.S.C. § 401(d), a proper notice defeats an infringer's claim of innocent infringement, which could otherwise reduce a damages award. The standard format is the © symbol (or the word Copyright), the year of first publication, and the owner's name. Read more: ™, ®, ©, and “Patent Pending”: What the Symbols Actually Mean ›
What does patent pending actually mean?: It means a patent application — including a provisional application — is currently on file with the USPTO. It does not mean a patent exists, and it gives no enforceable rights until a patent actually issues. Its real power is deterrence, plus a limited exception: under 35 U.S.C. § 154(d), a patentee can later collect a reasonable royalty for infringement that occurred after the application was published, if the infringer had actual notice and the issued claims are substantially identical to the published ones. Read more: ™, ®, ©, and “Patent Pending”: What the Symbols Actually Mean ›
Is it illegal to use the R symbol without a registration?: It's improper, and it can be costly. The USPTO treats using ® with an unregistered mark as misuse; if done with intent to deceive, it can support refusal of your application and even a fraud argument that undermines enforcement. Separately, falsely marking products as patented or patent pending violates the false marking statute, 35 U.S.C. § 292, which carries a fine of up to $500 per offense (enforced by the government) and lets competitors sue for compensatory damages if the false marking caused them competitive injury. Read more: ™, ®, ©, and “Patent Pending”: What the Symbols Actually Mean ›
How much does it cost to trademark a name in 2026?: The USPTO base filing fee is $350 per class of goods or services. Filing yourself can cost just that, while hiring an attorney typically adds $300 to $1,500 per class, so most small businesses budget roughly $650 to $2,000 for one class. Read more: How Much Does It Cost to Trademark a Name in 2026? ›
Is the trademark fee a one-time cost?: No. The $350-per-class filing fee is one-time, but you must file maintenance documents between years 5 and 6 (about $325 per class) and renew every 10 years (about $650 per class) to keep the registration alive. Read more: How Much Does It Cost to Trademark a Name in 2026? ›
Can I trademark a name for under $400?: Yes, if you file the application yourself, choose a single class, and pick your goods or services straight from the USPTO ID Manual to avoid the $200-per-class custom-wording surcharge, your only cost can be the $350 base fee. Read more: How Much Does It Cost to Trademark a Name in 2026? ›
Should I trademark my business name or my logo first?: In most cases, the business name comes first as a standard-character (word) mark. A word mark protects the name itself in any font, size, color, or styling, so it usually offers the broadest protection. A logo (design mark) only protects that specific design, which can change over time. Always confirm your situation with an attorney licensed in your jurisdiction. Read more: Should You Trademark Your Name or Your Logo First? ›
Does a word mark also cover my logo?: Not exactly. A standard-character word mark protects the wording in any style, but it does not protect the unique graphic or artwork in your logo. To protect distinctive design elements, you file a separate special-form (design) application. Many brands eventually file both. Read more: Should You Trademark Your Name or Your Logo First? ›
Can I copyright my logo instead of trademarking it?: They protect different things. Copyright may protect original artwork in a logo automatically when it is created, while a trademark protects the logo's role as a brand identifier in commerce. Simple word-only or minimalist logos may not qualify for copyright at all. The two protections can overlap, not replace each other. Read more: Should You Trademark Your Name or Your Logo First? ›
How long is the trademark opposition window?: Once a mark is published in the USPTO's Official Gazette, the public has 30 days to file a notice of opposition or a request for more time. A first 30-day extension is granted on request, and further extensions are available for good cause or with the applicant's consent, up to a total of 180 days from publication. After that, anyone who still objects must wait and seek cancellation once the mark registers. Read more: Trademark Oppositions: How to Fight (or Survive) One ›
Who can file a trademark opposition?: Any party who believes they would be damaged by registration of the mark can oppose. In practice that usually means a business with a similar earlier mark, but it can include trade groups or competitors. The opposer must show a real commercial interest and a reasonable belief of damage (often called standing or entitlement), not just a general dislike of the application. Read more: Trademark Oppositions: How to Fight (or Survive) One ›
Does losing a trademark opposition mean I owe money?: No. A Trademark Trial and Appeal Board opposition decides only whether the mark may register. The Board cannot award money damages or order anyone to stop using a name. If you lose as the applicant, your application is refused; if you lose as the opposer, the application proceeds. Disputes over actual use and damages belong in federal court, which is a separate matter. Read more: Trademark Oppositions: How to Fight (or Survive) One ›
How long does it take to register a trademark in 2026?: As of USPTO data updated May 31, 2026, it takes about 9.9 months on average from filing to either registration or abandonment, with a first review (first action) averaging roughly 4.3 months. Applications with Office Actions, oppositions, or intent-to-use filings take longer. Read more: What Happens After You File a Trademark: Step by Step ›
What is the opposition period for a trademark?: After your mark is approved, it is published in the Official Gazette for a 30-day opposition period. Any party who believes they would be harmed by your registration can file an opposition (or ask the Trademark Trial and Appeal Board for more time to do so) during that window. Read more: What Happens After You File a Trademark: Step by Step ›
How long do I have to respond to an Office Action?: For most U.S. applications, you have 3 months from the issue date to respond to an Office Action, and you can buy one 3-month extension for a fee, for a maximum of 6 months. Madrid Protocol (Section 66(a)) applications keep the older 6-month period. Read more: What Happens After You File a Trademark: Step by Step ›
What is the difference between a trademark, a copyright, and a patent?: A trademark protects brand identifiers like names, logos, and slogans. A copyright protects original creative works like writing, art, music, and software code. A patent protects inventions and product designs. They cover different things, so many businesses end up using more than one. Read more: Trademark vs. Copyright vs. Patent: Which Do You Need? ›
Can the same thing be protected by more than one type of IP?: Yes. A single product can carry a trademarked brand name, a copyrighted manual or artwork, and a patented invention all at once. They overlap because each one protects a different aspect, the brand, the creative expression, and the underlying invention. Read more: Trademark vs. Copyright vs. Patent: Which Do You Need? ›
Which intellectual property protection should I get first?: It depends on what is most valuable and most exposed. Inventions face the tightest deadlines because public disclosure can forfeit patent rights, so inventors often move first. Brand owners usually prioritize a trademark search, and creators get the broadest automatic protection from copyright. An attorney licensed in your jurisdiction can help you sequence them. Read more: Trademark vs. Copyright vs. Patent: Which Do You Need? ›
Does registering a domain name give me trademark rights?: No. Registering a domain with a registrar like GoDaddy or Namecheap only reserves that web address for you while you pay for it. The USPTO is explicit that domain registration does not give you any trademark rights. Trademark rights come from using a distinctive name to identify the source of your goods or services in commerce, and federal protection comes from a separate application to the USPTO. Owning the domain and owning the brand are two completely different things. Read more: Trademark vs. Domain Name: What You Actually Own ›
Can I get sued for trademark infringement over a domain name I own?: Yes. The fact that a registrar let you buy a domain says nothing about whether someone else already has trademark rights in that name. If your domain uses a name confusingly similar to an existing mark on related goods or services, you can face an infringement claim, a UDRP or ACPA cybersquatting action, and an order to transfer or stop using the domain. Buying a domain never clears you of someone else's prior brand rights. Read more: Trademark vs. Domain Name: What You Actually Own ›
Can a domain name ever be registered as a trademark?: Sometimes. A domain can be registered as a trademark only if it actually functions as a brand, that is, a source identifier for your goods or services, not merely as a web address. After the 2020 Supreme Court Booking.com decision, even a generic term plus .com can sometimes be registered if consumers genuinely perceive it as a brand rather than a category name, which usually takes survey evidence and proof of acquired distinctiveness. Read more: Trademark vs. Domain Name: What You Actually Own ›
What does the Trademark Trial and Appeal Board (TTAB) actually do?: The TTAB is the USPTO tribunal that decides whether a mark should be registered. It handles oppositions (challenges to a pending application), cancellations (challenges to an existing registration), and ex parte appeals (when an applicant appeals an examining attorney's refusal). The Board cannot award money damages, issue injunctions, or decide trademark infringement; those questions belong to the federal courts. Read more: TTAB Proceedings & Trademark Maintenance ›
When are Section 8, Section 9, and Section 15 trademark filings due?: A Section 8 declaration of use is due between the 5th and 6th years after registration, then again with renewal. A Section 9 renewal (filed combined with Section 8) is due between the 9th and 10th years, and every 10 years after that. A Section 15 incontestability declaration is optional and can be filed once you have five straight years of use, often combined with the first Section 8. Each maintenance filing carries a six-month grace period for an extra fee. Read more: TTAB Proceedings & Trademark Maintenance ›
What happens if I miss a trademark maintenance deadline?: You usually get a six-month grace period after the deadline to file with an added per-class fee. If that grace period also passes without an acceptable filing, the USPTO cancels or expires the registration, and it cannot simply be reinstated; you would generally have to apply all over again and lose your original priority date. Calendaring these dates years in advance is essential. Read more: TTAB Proceedings & Trademark Maintenance ›
What is the difference between the Principal and Supplemental Register?: The Principal Register is the main register and carries the strongest benefits: a legal presumption of ownership and exclusive nationwide rights, constructive notice, and eligibility for incontestability after five years. The Supplemental Register is for marks that are merely descriptive and not yet distinctive; it lets you use the registered symbol and sue in federal court, but it does not give those presumptions and can never become incontestable. Read more: TTAB Proceedings & Trademark Maintenance ›
What is typosquatting?: Typosquatting is registering domain names that are deliberate misspellings or near-variants of a well-known brand — think 'gooogle.com' or 'amazn.com' — to catch people who mistype a web address. The squatter then monetizes that traffic with ads, affiliate links, phishing pages, or by trying to sell the domain to the brand owner. It is a specific flavor of cybersquatting that targets human typing errors rather than the exact brand name. Read more: Typosquatting & Defensive Domain Registration ›
Is typosquatting illegal in the United States?: It can be. Under the Anticybersquatting Consumer Protection Act (15 U.S.C. § 1125(d)), a trademark owner can sue when someone registers, traffics in, or uses a domain that is identical or confusingly similar to their mark with a bad-faith intent to profit. Courts have repeatedly held that intentionally registering misspellings of a famous mark fits squarely within the ACPA. This is general information, not legal advice; whether a specific domain is unlawful depends on the facts. Read more: Typosquatting & Defensive Domain Registration ›
How many domain variations should I actually register?: There is no magic number — it is a budget-versus-risk decision. Most brands register the .com plus a short list of high-value variations: the most likely fat-finger typos, common spelling alternatives, the singular/plural, hyphenated forms, and the key alternative TLDs such as .net, .org, and .co. You cannot buy every possible misspelling, so pair a sensible defensive shortlist with active monitoring and the legal tools for the rest. Read more: Typosquatting & Defensive Domain Registration ›
What is the difference between UDRP, URS, and ACPA?: All three target cybersquatting, but they differ in cost, speed, and outcome. The UDRP is an ICANN arbitration process (administered by providers like WIPO and Forum) that can transfer or cancel a domain in roughly two months for about $1,300-$1,500 in filing fees. The URS is a faster, cheaper version (around $300-$500, decided in weeks) but only suspends the domain for clear-cut cases and never transfers it. The ACPA is a U.S. federal cybersquatting law you enforce by suing in court; it is slower and far more expensive, but it can award statutory damages of $1,000 to $100,000 per domain plus a transfer order. Read more: UDRP vs. URS vs. ACPA: Which Domain Remedy? ›
Can I get money from a cybersquatter through the UDRP?: No. The UDRP and the URS are non-monetary. A UDRP panel can only order the domain transferred to you or cancelled, and a URS examiner can only suspend it. If you want money damages from a cybersquatter, you generally have to sue in U.S. federal court under the Anti-Cybersquatting Consumer Protection Act (ACPA), which allows statutory damages of $1,000 to $100,000 per domain name. Read more: UDRP vs. URS vs. ACPA: Which Domain Remedy? ›
Should I file a UDRP or sue under the ACPA?: For most trademark owners who simply want the domain, the UDRP is faster and dramatically cheaper, so it is the usual first stop. The ACPA makes sense when you want monetary damages, the squatter is a repeat offender, you need broader court remedies, or the registrant is using the domain in a way a quick arbitration cannot fully address. The right choice depends on your facts, so confirm strategy with an attorney licensed in your jurisdiction. Read more: UDRP vs. URS vs. ACPA: Which Domain Remedy? ›
Is cybersquatting illegal?: Sometimes. In the U.S., registering or using a domain name that's identical or confusingly similar to a trademark is illegal under the Anticybersquatting Consumer Protection Act (ACPA, 15 U.S.C. § 1125(d)) only when the registrant has a 'bad faith intent to profit' from the mark. Simply owning a valuable or generic domain is not illegal. The bad-faith requirement is the heart of the law, and courts weigh nine specific factors to decide it. Read more: What Is Cybersquatting? (And Is It Illegal?) ›
Is buying and reselling domain names cybersquatting?: Not by itself. Buying generic or descriptive domains and reselling them — often called 'domaining' — is a legitimate business. It only crosses into cybersquatting when someone registers a domain that targets a specific trademark in bad faith, intending to profit from that brand's goodwill. Registering 'organic-coffee.com' to resell is fine; registering a famous brand's name to sell it back to them is not. Read more: What Is Cybersquatting? (And Is It Illegal?) ›
What can I do if someone is cybersquatting my brand?: You generally have three main routes: a UDRP or URS arbitration through ICANN-approved providers (fast and relatively cheap, transfers or suspends the domain), or an ACPA lawsuit in U.S. federal court (slower and costlier, but can win statutory damages of $1,000 to $100,000 per domain). Many owners start with a cease-and-desist letter. Talk to an attorney licensed in your jurisdiction about which fits your facts. Read more: What Is Cybersquatting? (And Is It Illegal?) ›
What is trade dress in simple terms?: Trade dress is the total visual image of a product or business that customers use to identify its source — packaging, product shape, color schemes, graphics, even restaurant decor. It's protected under Lanham Act § 43(a), 15 U.S.C. § 1125(a), essentially as a trademark made of appearance rather than words. Classic examples include the Coca-Cola contour bottle, the Tiffany blue box, and the decor at issue in Two Pesos v. Taco Cabana. To be protected, the look must be distinctive and non-functional. Read more: What Is Trade Dress? Protecting the Look of Your Product ›
What is the difference between trade dress and a trademark?: A trademark is typically a word, name, or logo; trade dress is the overall look and feel — the shape of the bottle rather than the label on it. Legally they're branches of the same tree: both are protected under the Lanham Act, both can be federally registered, and infringement of both turns on likelihood of consumer confusion. The big practical difference is proof: product-design trade dress always requires showing secondary meaning, and every trade dress claim must clear the non-functionality hurdle, which word marks rarely face. Read more: What Is Trade Dress? Protecting the Look of Your Product ›
How do you prove secondary meaning for trade dress?: Secondary meaning means consumers have come to associate the look with a single source. Courts weigh evidence like years of substantially exclusive use, sales volume and market share, advertising spend — especially 'look for' ads that point at the feature itself — unsolicited media coverage, consumer surveys, and proof that the defendant deliberately copied you. Surveys are the most persuasive single item; a showing that roughly 30–50% of consumers associate the design with one source is often treated as strong. Building this record typically takes years, which is why design patents matter during the ramp. Read more: What Is Trade Dress? Protecting the Look of Your Product ›
Can a color or a store layout be trade dress?: Yes to both. In Qualitex v. Jacobson (1995) the Supreme Court held that a single color can be protected once it acquires secondary meaning — the green-gold of dry-cleaning press pads in that case, and Tiffany blue or Louboutin red soles in practice. Store layouts qualify too: Apple obtained a U.S. registration for its store design and layout in 2013, and the restaurant decor in Two Pesos v. Taco Cabana was protected trade dress. The constants are always the same: distinctiveness and non-functionality. Read more: What Is Trade Dress? Protecting the Look of Your Product ›
When should a company hire in-house IP counsel?: The usual tipping point is when IP work becomes continuous rather than episodic — commonly a portfolio approaching 20 or more active matters, a steady invention pipeline, recurring licensing deals, or outside-counsel spend that rivals a senior attorney's compensation. A first in-house IP hire typically costs well over $250,000 in total compensation, so the math works when that person can absorb enough coordination, harvesting, and first-draft work to cut outside spend meaningfully while adding business context outside firms can't match. Before that point, per-matter outside counsel or a fractional arrangement is usually more efficient. Read more: In-House vs. Outside IP Counsel: When to Hire (and What It Costs) ›
What is fractional IP counsel?: Fractional (or of-counsel) IP counsel is an experienced IP attorney who works for your company part-time on a retainer or fixed monthly fee — often one or two days a week — instead of joining full-time or billing hourly per matter. The arrangement grew popular in the 2020s among mid-size companies that have steady IP needs but can't justify a full-time hire. A fractional counsel typically runs the invention-review process, manages outside prosecution firms, and advises on strategy, at a fraction of full-time cost, commonly a few thousand to low tens of thousands of dollars per month depending on hours. Read more: In-House vs. Outside IP Counsel: When to Hire (and What It Costs) ›
How much does outside IP counsel cost per hour?: Rates vary widely by firm size and city. Solo practitioners and small IP boutiques commonly charge roughly $250–$450 per hour; mid-size firm partners often run $450–$800; and large-firm IP partners in major markets can exceed $1,000 per hour. Much prosecution work is now quoted flat-fee instead — a competently drafted utility patent application typically runs about $10,000–$25,000+ depending on technology, and routine trademark filings far less. Litigation is the outlier: patent cases regularly cost seven figures through trial. Read more: In-House vs. Outside IP Counsel: When to Hire (and What It Costs) ›
Can I handle IP filings without a lawyer?: Sometimes, for the simplest matters. A straightforward trademark application for a clearly distinctive name, a copyright registration, or a provisional patent application documenting your own invention are all things careful founders do themselves. But claim drafting on a utility patent, responses to substantive office actions, freedom-to-operate opinions, and anything involving a dispute are areas where DIY errors are often irreversible — you generally can't fix a badly drafted claim set or an admission made in prosecution after the fact. The cost of doing those right is small compared to the cost of doing them wrong. Read more: In-House vs. Outside IP Counsel: When to Hire (and What It Costs) ›
Why is this case so heavily cited if Abercrombie partly lost?: Because the value of the opinion lies in its framework, not its result. Friendly's five-category taxonomy gave courts a shared language for distinctiveness, and that vocabulary — generic, descriptive, suggestive, arbitrary, fanciful — is now standard in trademark doctrine and registration practice. Read more: Abercrombie & Fitch v. Hunting World: Judge Friendly's Spectrum and the Architecture of Distinctiveness ›
What is the difference between suggestive and descriptive?: A descriptive term tells the consumer something directly about the goods and needs secondary meaning to be protected; a suggestive term requires a mental leap to connect it to the goods and is protectable immediately. The line is notoriously fuzzy, which is why so much litigation turns on it. Read more: Abercrombie & Fitch v. Hunting World: Judge Friendly's Spectrum and the Architecture of Distinctiveness ›
Did Abercrombie lose all rights in "Safari"?: No. The court's analysis was good-by-good. Where the term was generic or merely descriptive of the goods, Abercrombie could not exclude Hunting World; where its use was distinctive of source for particular products, protection could remain. The case was remanded for treatment consistent with that parsing. Read more: Abercrombie & Fitch v. Hunting World: Judge Friendly's Spectrum and the Architecture of Distinctiveness ›
Does Abitron mean foreign infringement is never actionable in U.S. courts?: No. It means the infringing "use in commerce" must be domestic. Foreign-only sales to foreign customers are outside §§ 1114(1)(a) and 1125(a)(1), but conduct that constitutes a domestic use in commerce—including, potentially, downstream domestic uses—can still support a claim. Read more: Abitron v. Hetronic: Drawing the Line at Domestic 'Use in Commerce' ›
Was the decision unanimous?: The judgment vacating and remanding was unanimous, but the Court split 5-4 on the governing test. Five Justices adopted a "use in commerce" conduct test; four concurred only in the judgment, favoring a focus on likelihood of domestic consumer confusion. Read more: Abitron v. Hetronic: Drawing the Line at Domestic 'Use in Commerce' ›
What should brand owners do differently after Abitron?: Treat the Lanham Act as a domestic tool, not a global one. Secure trademark registrations and enforcement mechanisms in foreign markets, and, in U.S. litigation, build the record around infringing uses that occurred in the United States. Read more: Abitron v. Hetronic: Drawing the Line at Domestic 'Use in Commerce' ›
What did Already v. Nike decide?: The Supreme Court held that Nike's unconditional and irrevocable covenant not to sue Already over its shoe designs mooted Already's counterclaim seeking to cancel Nike's Air Force 1 trademark, because there was no longer a live case or controversy under Article III. Read more: Already v. Nike: When a Covenant Not to Sue Moots a Trademark Challenge ›
What is the voluntary-cessation doctrine?: A defendant's decision to stop challenged conduct does not automatically moot a case; the party asserting mootness bears the "formidable burden" of showing it is "absolutely clear" the conduct cannot reasonably be expected to recur. The Court held Nike's covenant met that burden. Read more: Already v. Nike: When a Covenant Not to Sue Moots a Trademark Challenge ›
Can any competitor challenge a trademark's validity?: No. The Court rejected Already's argument that a competitor always retains standing to attack a mark. Once Nike promised not to sue over any current or future colorable imitation, Already had no concrete, ongoing injury to support a live controversy. Read more: Already v. Nike: When a Covenant Not to Sue Moots a Trademark Challenge ›
What are the Sleekcraft factors?: They are eight considerations the Ninth Circuit weighs to gauge likelihood of confusion: strength of the mark, proximity of the goods, similarity of the marks, evidence of actual confusion, marketing channels used, type of goods and degree of purchaser care, the defendant's intent, and the likelihood of expansion. They are a flexible guide, not a checklist with a fixed score. Read more: The Eight-Factor Engine: How AMF v. Sleekcraft Built the West Coast Confusion Test ›
Did AMF win?: Yes, on the legal question. The Ninth Circuit reversed the no-infringement ruling, found a likelihood of confusion, and remanded for entry of a limited injunction—one that required Sleekcraft to use a distinctive logo rather than abandon its name. Read more: The Eight-Factor Engine: How AMF v. Sleekcraft Built the West Coast Confusion Test ›
Does a lack of actual confusion defeat a claim?: No. Sleekcraft emphasized that actual confusion is difficult to prove and its absence is not dispositive, particularly where the marks have not competed directly for long. Likelihood—not proof of actual instances—is the standard. Read more: The Eight-Factor Engine: How AMF v. Sleekcraft Built the West Coast Confusion Test ›
Does a trademark cancellation petitioner need to own its own mark?: No. In Australian Therapeutic Supplies v. Naked TM, the Federal Circuit held that a petitioner establishes a statutory cause of action under 15 U.S.C. 1064 by showing a real interest in the proceeding and a reasonable belief of damage, regardless of whether it holds a proprietary interest in an asserted unregistered mark. Read more: No Proprietary Right Required: Australian Therapeutic v. Naked TM and Standing to Cancel ›
Did the prior settlement agreement defeat standing?: No. Even though Australian had agreed not to use or register NAKED for condoms in the U.S. and consented to Naked TM's registration, the majority held that contracting away proprietary rights did not eliminate Australian's real interest and reasonable belief of damage. The agreement might bar relief or damages later, but it did not negate the cause of action. Read more: No Proprietary Right Required: Australian Therapeutic v. Naked TM and Standing to Cancel ›
Why was the decision controversial?: Judge Wallach dissented, arguing the majority wrongly read proprietary rights out of the standing inquiry and let a party that had bargained away its rights still attack the registration. A petition for rehearing was denied over a renewed dissent, underscoring the split within the court. Read more: No Proprietary Right Required: Australian Therapeutic v. Naked TM and Standing to Cancel ›
Why was AIRFLITE cancelled after surviving for over thirty years?: Because the registration was void from the start. Aycock never rendered the reservation service to the public before registering, so the use-in-commerce requirement was never satisfied. A void-ab-initio defect does not disappear with time, so a long-unchallenged registration can still be cancelled when the defect is raised. Read more: Preparation Is Not Performance: Aycock Engineering v. Airflite ›
Didn't Aycock's contracts with air-taxi operators count as use?: No. Those agreements went to building the supply side of his planned marketplace. The registered service was arranging reservations for the traveling public, and that service was never offered to or performed for any traveler. Preparing to render a service is not rendering it. Read more: Preparation Is Not Performance: Aycock Engineering v. Airflite ›
What is the practical lesson for a startup that has signed up partners but not launched?: Treat the venture as pre-launch. Until the service is actually performed for its end users, a use-based filing risks being void. A bona fide intent-to-use application is the appropriate route while the service is still being assembled. Read more: Preparation Is Not Performance: Aycock Engineering v. Airflite ›
What is "naked licensing"?: Naked licensing is the licensing of a trademark without the licensor retaining and exercising adequate control over the quality of the goods or services the licensee sells under the mark. Because the mark then stops reliably signaling anything to consumers, courts treat the owner as having abandoned it. Read more: A Single Naked License Sinks a Mark: Barcamerica v. Tyfield Importers and the Duty to Police Quality ›
Did it matter that the licensed wine was actually good?: No. The Ninth Circuit emphasized that the duty is to ensure consistent, predictable quality — not high quality. A licensor cannot rely on a licensee's talent or reputation as a stand-in for retained control over what the mark represents. Read more: A Single Naked License Sinks a Mark: Barcamerica v. Tyfield Importers and the Duty to Police Quality ›
Can a trademark really be lost through one license?: Yes. Barcamerica shows that a single inadequately supervised license can support a finding of abandonment, leading to loss and even cancellation of a federal registration. Read more: A Single Naked License Sinks a Mark: Barcamerica v. Tyfield Importers and the Duty to Police Quality ›
What is genericide in trademark law?: Genericide is the process by which a once-protectable trademark loses its legal status because the public comes to understand the word as the common name for the product itself rather than as an indicator of a single commercial source. Aspirin, escalator, cellophane, and thermos are classic examples. Read more: Bayer v. United Drug: How "Aspirin" Became a Generic Word ›
Why did Bayer lose the word "Aspirin"?: Bayer had marketed acetylsalicylic acid to the general public only under the name "Aspirin" and never taught consumers that the word signified Bayer as the source. By 1921 ordinary buyers understood "Aspirin" to mean the drug itself, so as to consumers the term had passed into the public domain. Read more: Bayer v. United Drug: How "Aspirin" Became a Generic Word ›
What test did Judge Learned Hand apply?: Hand framed the issue as a single question of fact: "What do the buyers understand by the word for whose use the parties are contending?" That consumer-understanding inquiry became the foundation of the modern "primary significance to the relevant public" test for genericness. Read more: Bayer v. United Drug: How "Aspirin" Became a Generic Word ›
Does every TTAB decision now bind a later court?: No. Preclusion applies only when the ordinary elements of issue preclusion are met and the uses the Board adjudicated are materially the same as those before the court. Where the registration contest turned on uses that differ materially from the defendant's actual marketplace conduct, the issues are not identical and the Board's finding does not control. Read more: When the Board Speaks First: B&B Hardware and the Preclusive Reach of TTAB Decisions ›
Why did it matter that Hargis never appealed the Board's decision?: Because Hargis did not seek judicial review, the Board's likelihood-of-confusion finding became final. The Supreme Court's holding meant that final, unreviewed finding could then preclude Hargis from relitigating the same issue in court. Read more: When the Board Speaks First: B&B Hardware and the Preclusive Reach of TTAB Decisions ›
What should a party do differently after B&B Hardware?: Treat opposition and cancellation proceedings as potentially dispositive. Build a thorough record, frame the goods and uses with litigation consequences in mind, and weigh seriously whether to appeal any adverse Board ruling rather than letting it become final. Read more: When the Board Speaks First: B&B Hardware and the Preclusive Reach of TTAB Decisions ›
Does Belmora mean any foreign trademark owner can sue in the United States?: No. The owner must satisfy Lexmark standing: an injury within the Lanham Act's zone of interests that is proximately caused by the defendant's deception. A foreign owner with no U.S. reputation and no demonstrable diversion of sales or consumer confusion in the United States will struggle to clear those hurdles. Read more: Belmora v. Bayer: A Foreign Mark Owner With No U.S. Use Can Still Sue Under §43(a) ›
Did the court recognize the well-known marks doctrine or rely on the Paris Convention?: No. Bayer abandoned its Article 6bis and §44 treaty arguments, and the TTAB had earlier found Article 6bis not self-executing. The Fourth Circuit decided the case purely on the text of §43(a) and §14(3) as applied through Lexmark, without adopting a freestanding well-known-marks cause of action. Read more: Belmora v. Bayer: A Foreign Mark Owner With No U.S. Use Can Still Sue Under §43(a) ›
Is this now the law everywhere in the United States?: It is binding in the Fourth Circuit and influential elsewhere, but the Supreme Court denied certiorari and the Second Circuit's pre-Lexmark Punchgini decision points the other way. The nationwide question remains open, which makes forum and choice-of-law considerations significant. Read more: Belmora v. Bayer: A Foreign Mark Owner With No U.S. Use Can Still Sue Under §43(a) ›
What are corrective advertising damages?: They are a sum awarded to a trademark plaintiff to fund advertising that corrects the consumer confusion caused by the defendant's infringing or misleading campaign — compensating the plaintiff for the cost of restoring its mark's accurate meaning rather than for the defendant's profits. Read more: Big O Tire v. Goodyear: The Birth of Corrective Advertising Damages ›
What is "reverse confusion," and why did it matter here?: Reverse confusion occurs when a larger junior user floods the market so heavily that consumers believe the smaller senior user is the infringer or is affiliated with the junior user. Big O is a landmark recognition of the theory, allowing the smaller, prior user (Big O) to recover against the dominant junior user (Goodyear). Read more: Big O Tire v. Goodyear: The Birth of Corrective Advertising Damages ›
Where did the twenty-five-percent figure come from?: From FTC corrective-advertising practice, which reflected the premise that an advertiser need not spend dollar-for-dollar against its prior campaign to dispel the confusion it created. The Tenth Circuit borrowed that fraction to scale the award down from Goodyear's apportioned ad spend. Read more: Big O Tire v. Goodyear: The Birth of Corrective Advertising Damages ›
What does Blue Bell v. Farah stand for?: It holds that ownership of an unregistered trademark goes to the party that first makes bona fide use of the mark in trade, meaning a genuine commercial use that lets the public associate the mark with the goods. Token or internal shipments designed only to reserve rights do not establish priority. Read more: Race to the Market: Blue Bell v. Farah and the Bona Fide Use That Wins Trademark Priority ›
Why did Blue Bell's earlier shipment not count?: Blue Bell affixed TIME OUT labels to existing 'Mr. Hicks' pants and shipped them to its own regional sales managers, not to buying customers, primarily to secure a priority date. The court called this a token, internal use that did not genuinely associate the mark with a distinct product line in the public's eyes. Read more: Race to the Market: Blue Bell v. Farah and the Bona Fide Use That Wins Trademark Priority ›
How does this case relate to modern federal trademark law?: The bona fide use principle later influenced the Lanham Act's definition of 'use in commerce,' which Congress amended in 1988 to require use 'in the ordinary course of trade' and 'not made merely to reserve a right in a mark.' Blue Bell is a foundational common-law statement of that idea. Read more: Race to the Market: Blue Bell v. Farah and the Bona Fide Use That Wins Trademark Priority ›
What is initial interest confusion?: It is confusion that lures a consumer to a competitor using another's trademark, even though the confusion is dispelled before any sale. The Ninth Circuit held this kind of bait-and-divert can be actionable trademark infringement under the Lanham Act, because the rival improperly capitalizes on the goodwill of the mark to capture initial attention. Read more: The Billboard at the Exit: Brookfield v. West Coast and Initial Interest Confusion Online ›
Did Brookfield ban all use of a competitor's trademark in metatags?: No. The court enjoined West Coast from using moviebuff.com and the one-word mark MovieBuff in its metatags, but it left room for fair, descriptive use of the ordinary English phrase movie buff. The line is between using a term as a source identifier and using it to describe goods or services accurately. Read more: The Billboard at the Exit: Brookfield v. West Coast and Initial Interest Confusion Online ›
Is Brookfield still good law?: Its core holding survives, but the Ninth Circuit narrowed initial interest confusion in later cases such as Network Automation v. Advanced Systems Concepts (2011), stressing the multi-factor likelihood-of-confusion analysis and sophisticated, label-reading internet users. Metatags themselves have also become largely obsolete in modern search ranking. Read more: The Billboard at the Exit: Brookfield v. West Coast and Initial Interest Confusion Online ›
Can a company resell repaired goods under the original trademark?: Yes. Under Champion Spark Plug Co. v. Sanders, genuine goods that are repaired or reconditioned may be resold under the original maker's trademark, provided the seller clearly and honestly discloses that the goods are used and reconditioned. Full disclosure defeats any likelihood of confusion, and the manufacturer is not entitled to have its mark erased. Read more: Champion Spark Plug v. Sanders: When Reconditioned Goods Can Keep the Original Mark ›
Why did the Supreme Court deny an accounting of profits?: Because an injunction requiring truthful labeling satisfied the equities of the case. The Court found no showing of fraud or palming off and only a slight likelihood that the manufacturer was damaged or that the reconditioners profited from any misrepresentation, so an accounting of profits and damages was not warranted. Read more: Champion Spark Plug v. Sanders: When Reconditioned Goods Can Keep the Original Mark ›
What labeling did the Court require for the reconditioned plugs?: The word "Repaired" or "Used" had to be stamped and baked onto each plug in a contrasting color so it was clearly visible, and the cartons and printed matter had to state that the plugs were used and reconditioned and give the reconditioner's name and address. Read more: Champion Spark Plug v. Sanders: When Reconditioned Goods Can Keep the Original Mark ›
Is it now illegal to resell authentic Chanel products?: No. The first-sale doctrine still protects the resale of genuine, brand-authorized goods, and the verdict does not outlaw the secondary luxury market. The liability attached to specific categories—items with voided or unregistered serial numbers, non-retail point-of-sale props, and goods that failed Chanel's authentication—plus marketing that implied an affiliation Chanel never granted. Reselling a legitimately purchased Chanel bag, described accurately and without suggesting brand endorsement, remains lawful. Read more: Counterfeit Without a Fake: Chanel v. What Goes Around Comes Around and the Genuine-Goods Trap ›
How can a Chanel-made item be "counterfeit"?: Because the Lanham Act defines counterfeiting around the mark, not the manufacturer. A mark is counterfeit when it is spurious—used on goods the brand never authorized for sale—so an item that escaped Chanel's quality-control and authentication system can bear a counterfeit mark even if Chanel artisans once handled it. In trademark terms such goods are "non-genuine," which both supports the counterfeiting finding and removes them from first-sale protection. Read more: Counterfeit Without a Fake: Chanel v. What Goes Around Comes Around and the Genuine-Goods Trap ›
Why was the damages award $4 million when disgorged profits were only about $13,000?: The $4 million is statutory damages under 15 U.S.C. § 1117(c), a counterfeiting-specific remedy untethered from actual profits. The statute permits up to $200,000 per counterfeit mark per type of goods, rising to $2 million per mark for willful conduct. With multiple counterfeit-mark and willfulness findings, the jury's award fits within that punitive, deterrence-driven range; the separate $12,739 disgorgement reflects the comparatively small actual profit Chanel could trace. Read more: Counterfeit Without a Fake: Chanel v. What Goes Around Comes Around and the Genuine-Goods Trap ›
Was a single sale of two hats really enough to keep the registrations alive?: Yes, for purposes of the use-in-commerce requirement for registration. The Federal Circuit held that the Church's sale of two ADD A ZERO caps for $38.34 to an out-of-state buyer was a transaction Congress could regulate under the Commerce Clause, and therefore qualified as use in commerce under the Lanham Act. Read more: Two Hats, One Commerce Clause: Christian Faith Fellowship Church v. adidas ›
Did the court adopt a de minimis test for use in commerce?: No. The court rejected the idea that a sale must exceed some threshold of significance. Under Wickard v. Filburn and Gonzales v. Raich, the de minimis nature of an individual transaction does not remove it from Congress's regulatory power, so it does not remove it from the Lanham Act's definition of commerce. Read more: Two Hats, One Commerce Clause: Christian Faith Fellowship Church v. adidas ›
Did the Church ultimately defeat adidas?: This decision only resolved the use-in-commerce question and reversed the cancellation on that ground. The Federal Circuit remanded for the Board to consider adidas's remaining arguments, so the dispute over the ADD A ZERO marks continued beyond this ruling. Read more: Two Hats, One Commerce Clause: Christian Faith Fellowship Church v. adidas ›
Did Louboutin win or lose?: Both, partly. The Second Circuit upheld the validity of the red-sole trademark (a win for Louboutin) but limited it to soles that contrast with the rest of the shoe, which meant YSL's all-red monochrome shoe did not infringe (a win for YSL). The denial of the preliminary injunction was affirmed. Read more: Red, But Only in Contrast: Louboutin v. YSL and the Limits of a Single-Color Mark ›
Can a single color be a trademark in the fashion industry?: Yes. Following Qualitex, the court held there is no per se rule against single-color marks in fashion; a color is protectable if it has acquired secondary meaning and is not functional, including under the aesthetic-functionality test. Read more: Red, But Only in Contrast: Louboutin v. YSL and the Limits of a Single-Color Mark ›
What is aesthetic functionality?: It is the rule that a feature may be unprotectable—even if it serves no mechanical purpose—when exclusive use of it would put competitors at a significant non-reputation-related disadvantage. The court applies the Inwood test first, then asks whether protection would significantly undermine competition in the relevant market. Read more: Red, But Only in Contrast: Louboutin v. YSL and the Limits of a Single-Color Mark ›
What did Coca-Cola Co. v. Koke Co. decide?: The Supreme Court held that "Coca-Cola" had acquired distinctiveness as the name of a single beverage from a single source, and that the Coca-Cola Company was entitled to an injunction against a competitor selling a cola drink under the confusingly similar name "Koke." Read more: Coca-Cola v. Koke: How a Descriptive Name Became a Protectable Mark ›
Why didn't the cocaine history defeat the trademark?: Koke argued the name was deceptive because the drink once contained cocaine and no longer did. Justice Holmes rejected this "unclean hands" defense, reasoning that by the time of suit the public understood "Coca-Cola" to mean the plaintiff's familiar product rather than a literal description of its ingredients. Read more: Coca-Cola v. Koke: How a Descriptive Name Became a Protectable Mark ›
What is secondary meaning and how does the case illustrate it?: Secondary meaning is acquired distinctiveness: a term that is descriptive or otherwise weak becomes protectable once the public associates it with a single commercial source. Coca-Cola exemplifies a name that, whatever its descriptive origins, had come to identify one company's beverage. Read more: Coca-Cola v. Koke: How a Descriptive Name Became a Protectable Mark ›
Did Corcamore change who can file a trademark cancellation?: Not in result, but in framing. The Federal Circuit held that the Supreme Court's Lexmark zone-of-interests and proximate-causation test governs standing under 15 U.S.C. 1064, replacing the older 'real interest plus reasonable belief of damage' phrasing. The court found no substantive difference between the two, so the same petitioners qualify. Read more: Lexmark Comes to the TTAB: Corcamore v. SFM and the New Test for Cancellation Standing ›
Why did Corcamore lose its SPROUT registration?: Not on the merits. The Trademark Trial and Appeal Board entered default judgment as a sanction after Corcamore repeatedly defied two earlier sanctions orders and discovery obligations. The Federal Circuit held the Board did not abuse its discretion in cancelling the registration for that misconduct. Read more: Lexmark Comes to the TTAB: Corcamore v. SFM and the New Test for Cancellation Standing ›
What is the practical takeaway from Corcamore?: Standing to cancel is generous but litigation conduct matters. A petitioner need only fall within the statute's zone of interests and show proximately caused injury, but a registrant who stonewalls discovery and flouts Board orders can lose by default rather than on the strength of its mark. Read more: Lexmark Comes to the TTAB: Corcamore v. SFM and the New Test for Cancellation Standing ›
Did advertising the services count for anything?: It satisfied only one half of the statutory test. Section 1127 requires both that the mark be used in the sale or advertising of services and that the services be rendered in commerce. Advertising alone, with no services performed, does not meet the "used in commerce" definition for a service mark. Read more: A Website Is Not a Service: Couture v. Playdom and the Rendering Requirement ›
Could Couture have fixed the problem by switching to an intent-to-use application?: Not after the registration issued. He asked to amend his basis from Section 1(a) to Section 1(b), but the Board denied the request and the Federal Circuit held that denial was not an abuse of discretion. Filing under Section 1(b) at the outset would have avoided the defect. Read more: A Website Is Not a Service: Couture v. Playdom and the Rendering Requirement ›
What does "void ab initio" mean for the registrant?: It means the registration is treated as never having been valid because the use-in-commerce requirement was not met on the application date. The registrant gets no priority benefit from it, and the registration is subject to cancellation. Read more: A Website Is Not a Service: Couture v. Playdom and the Rendering Requirement ›
Does this mean any false "patented" claim is automatically false advertising?: No. The court did not hold that mislabeling a product "patented" is, by itself, a Lanham Act violation. It held that such a claim can support a § 43(a)(1)(B) action when it is tied to and misleads consumers about the product's nature, characteristics, or qualities. A bare inventorship-style boast, untethered from product qualities, would still face the Dastar and Baden Sports bar — and the plaintiff must still prove the conventional false-advertising elements. Read more: Crocs v. Effervescent: When Calling Your Product 'Patented' Becomes False Advertising ›
How does this fit with the false-marking statute, 35 U.S.C. § 292?: They are complementary. Section 292 imposes penalties for marking unpatented articles as patented and has its own standing and damages rules. Crocs recognizes a separate Lanham Act theory available to commercial competitors, which can offer broader relief — disgorgement of profits, actual damages, and injunctions — when the false patent claim functions as deceptive advertising about product qualities. Read more: Crocs v. Effervescent: When Calling Your Product 'Patented' Becomes False Advertising ›
What does a competitor have to prove on remand?: The standard false-advertising elements: a false or misleading statement of fact in commercial advertising; that it actually deceived or tended to deceive a substantial audience (or was literally false); materiality; placement in interstate commerce; and injury or likely injury. Standing must satisfy Lexmark's zone-of-interests and proximate-cause requirements. Read more: Crocs v. Effervescent: When Calling Your Product 'Patented' Becomes False Advertising ›
What is the legal test for standing in a TTAB cancellation under Cunningham?: A petitioner must show two things: standing and a valid statutory ground. Standing is the more liberal element and requires only a belief, grounded in a real and direct commercial interest, that the petitioner is likely to be damaged by the registration. Read more: Two Elements and a Single Factor: Cunningham v. Laser Golf and the Architecture of Cancellation ›
Why did LASERSWING lose to LASER?: The marks shared the dominant term LASER, the added word "swing" was descriptive and given little weight, and both registrations covered golf clubs without restriction — so the goods were presumed to travel in the same channels to the same purchasers, yielding a likelihood of confusion. Read more: Two Elements and a Single Factor: Cunningham v. Laser Golf and the Architecture of Cancellation ›
Can a single DuPont factor decide a confusion case?: Yes. The Federal Circuit reaffirmed that a single DuPont factor may be dispositive, particularly the similarity of the marks, even though the full inquiry contemplates thirteen factors. Read more: Two Elements and a Single Factor: Cunningham v. Laser Golf and the Architecture of Cancellation ›
Did Dastar eliminate reverse passing off entirely?: No. A defendant who takes a plaintiff's actual tangible goods, relabels them, and sells them as its own can still face a reverse-passing-off claim. Dastar eliminated only the use of § 43(a) to enforce attribution for the creative content embodied in goods, especially public-domain content. Read more: Dastar v. Twentieth Century Fox: Who Counts as the 'Origin' of Goods Under Section 43(a) ›
Why did the Court worry about copyright and patent?: Because allowing a trademark-based attribution right for the content of works would effectively grant perpetual credit-control over material that Congress intended to enter the public domain after a limited term. The Court refused to let § 43(a) override the time limits built into copyright and patent law. Read more: Dastar v. Twentieth Century Fox: Who Counts as the 'Origin' of Goods Under Section 43(a) ›
How does Dastar affect false-advertising claims today?: It supplies the dividing line. A misrepresentation about who originated something is barred, but a misrepresentation about the nature, characteristics, or qualities of a product may proceed under § 43(a)(1)(B). Litigants now frame claims carefully to land on the actionable side of that line. Read more: Dastar v. Twentieth Century Fox: Who Counts as the 'Origin' of Goods Under Section 43(a) ›
What exactly is the "Dawn Donut rule"?: It is the principle that a federal trademark registrant cannot obtain an injunction against a good-faith junior user in a geographically remote market until the registrant is likely to expand its own use into that market, because until then there is no likelihood of confusion to enjoin. Read more: Dawn Donut v. Hart's Food: The Registrant Who Won the Mark but Lost the Injunction ›
Did Hart's win the right to keep using DAWN forever?: No. Hart's avoided a present injunction, but Dawn's registration preserved its superior nationwide priority. The moment Dawn became likely to expand into the Rochester area, it could return to court for the injunction it was denied in 1959. Read more: Dawn Donut v. Hart's Food: The Registrant Who Won the Mark but Lost the Injunction ›
Is the rule still good law in the internet age?: It remains the doctrine, particularly in the Second Circuit, but its geographic premise is heavily criticized and increasingly strained by national and online commerce. Courts now scrutinize whether a junior user's web presence eliminates the separate-trading-area assumption on which the rule depends. Read more: Dawn Donut v. Hart's Food: The Registrant Who Won the Mark but Lost the Injunction ›
What does "the defendant's profits" mean after Dewberry?: It means the profits of the entity actually named as a defendant — not the combined profits of its corporate family, unless the plaintiff names those affiliates or pierces the corporate veil. Read more: Dewberry Group v. Dewberry Engineers: Corporate Separateness Survives the Lanham Act ›
Did the plaintiff lose its case?: No. The infringement liability stood; only the $43 million profits award was vacated and sent back for recalculation under the correct standard. Read more: Dewberry Group v. Dewberry Engineers: Corporate Separateness Survives the Lanham Act ›
Can affiliates' profits ever be reached?: Yes — by naming them as defendants, by piercing the corporate veil, or potentially through the Lanham Act's "just-sum" provision, an avenue the Court expressly left open. Read more: Dewberry Group v. Dewberry Engineers: Corporate Separateness Survives the Lanham Act ›
Why did Cubatabaco have standing despite the Cuban embargo?: Because the PTO refused Cubatabaco's own U.S. application for COHIBA based on a likelihood of confusion with General Cigar's registrations, Cubatabaco had a real interest in cancelling those registrations. The embargo bars sales, not the capacity to pursue trademark registration rights, so it did not extinguish that interest. Read more: A Blocked Application Is a Real Interest: Empresa Cubana v. General Cigar and Standing Through the Embargo ›
Did the Federal Circuit cancel General Cigar's COHIBA registrations?: No. The court reversed the Board's dismissal for lack of standing and remanded. It decided that Cubatabaco could bring the cancellation claim; it did not resolve the merits of whether the registrations should ultimately be cancelled. Read more: A Blocked Application Is a Real Interest: Empresa Cubana v. General Cigar and Standing Through the Embargo ›
Why didn't the earlier Second Circuit decision bar the case?: Neither claim nor issue preclusion applied. The prior judgment was not a final decision on the merits of the cancellation claims, and the issues controlling cancellation were either not decided or not essential to the Second Circuit's judgment. Read more: A Blocked Application Is a Real Interest: Empresa Cubana v. General Cigar and Standing Through the Embargo ›
Did the bridal shop lose because its dresses were low quality?: No. The court did not find the goods deficient. The mark was abandoned because the owners retained no authority to control how the store was run and exercised none in practice — the defect was the absence of control, not the presence of bad goods. Read more: Control, Not Quality: Eva's Bridal v. Halanick and the Naked License Inside the Family Business ›
Does licensing to a family member change the analysis?: Not on these facts. The Seventh Circuit applied the ordinary naked-licensing standard to a family-to-family arrangement, treating informality as no excuse for the lack of retained and exercised control. Read more: Control, Not Quality: Eva's Bridal v. Halanick and the Naked License Inside the Family Business ›
What should a licensor have done differently?: Reserve clear supervisory authority in the license, set quality and operational standards, and actually monitor the licensee — keeping records of inspections and approvals so that control can be proven if the mark is ever challenged. Read more: Control, Not Quality: Eva's Bridal v. Halanick and the Naked License Inside the Family Business ›
Did Great Concepts get to keep its registration?: Yes. The Federal Circuit reversed the cancellation, so the DANTANNA'S registration was not cancelled on this ground. The case was remanded for the Board to consider other consequences, such as loss of incontestability. Read more: When Fraud Doesn't Cancel: Great Concepts v. Chutter and the Limits of Section 14 ›
Was the fraud finding overturned?: No. The court did not disturb the Board's determination that the Section 15 declaration was fraudulent. It held only that fraud in an incontestability declaration is not a basis for cancellation under Section 14. Read more: When Fraud Doesn't Cancel: Great Concepts v. Chutter and the Limits of Section 14 ›
What is the practical penalty for lying in a Section 15 declaration now?: Primarily the loss of incontestable status under Section 33(b)(1), which means the registrant forfeits the conclusive-evidence presumption and remains exposed to defenses incontestability would otherwise foreclose. The registration itself, however, is not at risk under Section 14 on that basis alone. Read more: When Fraud Doesn't Cancel: Great Concepts v. Chutter and the Limits of Section 14 ›
What is the famous-marks exception?: It is a recognized departure from the territoriality principle under which a foreign mark not yet used in the United States can still be protected here if it is famous—known to a substantial share of relevant American consumers. Grupo Gigante is the leading federal appellate decision recognizing it. Read more: Grupo Gigante v. Dallo: The Ninth Circuit Carves a Famous-Marks Exception ›
How famous must the foreign mark be?: The Ninth Circuit required familiarity among "a substantial percentage of consumers in the relevant American market." The majority did not fix a number; Judge Graber's concurrence argued the figure should be a majority—more than fifty percent—of that market. Read more: Grupo Gigante v. Dallo: The Ninth Circuit Carves a Famous-Marks Exception ›
Does every court accept the famous-marks exception?: No. The Second Circuit, in the ITC Ltd. v. Punchgini litigation, concluded that Congress has not incorporated a famous-marks doctrine into federal trademark law, creating a split. Whether and how the doctrine applies can therefore turn on jurisdiction. Read more: Grupo Gigante v. Dallo: The Ninth Circuit Carves a Famous-Marks Exception ›
What is trademark "tacking," and why does it matter for priority?: Tacking lets a trademark owner who has modified its mark claim the priority date of the earlier version, provided the two are "legal equivalents" that create the same, continuing commercial impression. It matters because priority—who used a distinctive mark first—generally determines who owns the mark and can exclude others; without tacking, every modernization of a logo or wording would risk forfeiting seniority. Read more: Who Decides Priority: Hana Financial v. Hana Bank and the Jury's Role in Trademark Tacking ›
Does Hana change the standard for when tacking is allowed?: No. The Court left the substantive test intact: two marks may be tacked only if ordinary consumers perceive them as the same mark. Hana decided only who answers that question—the jury, in a jury trial where the evidence does not compel judgment as a matter of law—not what the answer should be. Read more: Who Decides Priority: Hana Financial v. Hana Bank and the Jury's Role in Trademark Tacking ›
Can a judge ever decide tacking after Hana?: Yes. The Court expressly preserved a judge's authority to resolve tacking on summary judgment, on judgment as a matter of law, or in a bench trial. The jury-question holding applies when a jury has been empaneled and the record presents a genuine factual dispute about consumer perception. Read more: Who Decides Priority: Hana Financial v. Hana Bank and the Jury's Role in Trademark Tacking ›
What did Herb Reed actually change?: It held that, after eBay and Winter, a trademark plaintiff seeking a preliminary injunction must prove a likelihood of irreparable harm rather than relying on a presumption that arose automatically from a likelihood of success on the merits. Read more: Herb Reed v. Florida Entertainment: eBay Comes for the Trademark Injunction ›
Does this mean trademark plaintiffs can no longer get injunctions?: No. Injunctions remain available — but the plaintiff must support the irreparable-harm element with evidence rather than conclusory assertions. Herb Reed raised the proof bar; it did not close the courthouse door. Read more: Herb Reed v. Florida Entertainment: eBay Comes for the Trademark Injunction ›
How does the 2020 Trademark Modernization Act affect this?: Congress amended 15 U.S.C. § 1116(a) to provide a rebuttable presumption of irreparable harm upon a finding of infringement (or likelihood of success at the preliminary stage). That presumption softens Herb Reed's practical effect, but it is rebuttable, so evidence about the actual likelihood of harm remains central. Read more: Herb Reed v. Florida Entertainment: eBay Comes for the Trademark Injunction ›
Did Hermès have to prove consumer confusion to win on dilution?: No. Dilution by blurring under 15 U.S.C. § 1125(c) is independent of confusion and competition. It protects the distinctiveness of a famous mark from being whittled away by associations created by others. Hermès did also prevail on infringement, which does require likely confusion, but the dilution theory stands on a separate footing. Read more: Hermès v. Rothschild: The MetaBirkins Verdict and Trademark Dilution in the NFT Market ›
Why was the First Amendment defense unsuccessful?: The jury was instructed under Rogers v. Grimaldi and effectively found that the use of the Birkin mark was explicitly misleading as to source — driven by trial evidence that Rothschild intended to trade on Hermès's goodwill rather than to make genuine artistic commentary. Because the NFTs were treated as goods sold under the mark, the speech protection that shields truly expressive works did not apply. Read more: Hermès v. Rothschild: The MetaBirkins Verdict and Trademark Dilution in the NFT Market ›
Is the MetaBirkins decision binding nationwide?: No. It is a district-court jury verdict and post-trial ruling from the Southern District of New York, currently on appeal to the Second Circuit (No. 23-1081). It is influential and frequently cited, but it is not binding precedent, and the appellate decision — particularly on how Jack Daniel's affects Rogers — may reshape its reasoning. Read more: Hermès v. Rothschild: The MetaBirkins Verdict and Trademark Dilution in the NFT Market ›
What did Iancu v. Brunetti decide?: The Supreme Court held that the Lanham Act's prohibition on registering "immoral or scandalous" trademarks, 15 U.S.C. § 1052(a), violates the First Amendment's Free Speech Clause because it permits the Patent and Trademark Office to engage in viewpoint discrimination. Read more: Iancu v. Brunetti: Striking the Lanham Act's 'Immoral or Scandalous' Trademark Bar ›
How does Brunetti relate to Matal v. Tam?: Tam (2017) struck the neighboring "disparagement" bar as viewpoint-based. Brunetti applied the same principle: because the immoral-or-scandalous bar favors marks aligned with conventional moral standards over those hostile to them, it too discriminates by viewpoint and is unconstitutional. Read more: Iancu v. Brunetti: Striking the Lanham Act's 'Immoral or Scandalous' Trademark Bar ›
Can the government still refuse to register vulgar trademarks?: Not under the immoral-or-scandalous clause as written. The dissenters argued a narrowed reading of "scandalous" could reach only obscene, profane, or vulgar modes of expression, but the majority declined to rewrite the statute, leaving any such bar to Congress. Read more: Iancu v. Brunetti: Striking the Lanham Act's 'Immoral or Scandalous' Trademark Bar ›
What did In re Bose actually change?: It replaced the TTAB's Medinol "knew or should have known" test — which functioned as a negligence standard — with a requirement of subjective, specific intent to deceive the PTO, proven by clear and convincing evidence. Read more: The Death of the 'Should Have Known' Standard: In re Bose and Fraud on the PTO ›
Was Bose's WAVE registration cancelled?: No. The Federal Circuit reversed the cancellation. Because there was no fraud, the registration was to be restricted to delete the goods (audio tape recorders and players) on which the mark was no longer used, not cancelled in its entirety. Read more: The Death of the 'Should Have Known' Standard: In re Bose and Fraud on the PTO ›
Is reckless disregard for the truth enough to prove fraud after Bose?: Bose did not decide that question, expressly leaving it open. The relationship between reckless disregard and intent to deceive has remained a contested issue in TTAB practice in the years since. Read more: The Death of the 'Should Have Known' Standard: In re Bose and Fraud on the PTO ›
Was CHESTEK LEGAL refused because something was wrong with the mark?: No. The mark's registrability was not the issue. The application was refused solely because it listed a post office box instead of a domicile address, in violation of 37 C.F.R. §§ 2.32(a)(2) and 2.189. Read more: In re Chestek: When a Trademark Refusal Turns on Administrative Law, Not Trademark Law ›
Why does the USPTO want a domicile rather than just a mailing address?: Domicile determines whether an applicant must be represented by U.S. counsel under the agency's 2019 rule aimed at fraudulent foreign filings. The agency needs a reliable domicile to enforce that requirement, and it applied the demand uniformly to all applicants. Read more: In re Chestek: When a Trademark Refusal Turns on Administrative Law, Not Trademark Law ›
Can an applicant keep a home address out of the public record?: The court did not bless full secrecy, but applicants worried about exposure can list a separate correspondence or mailing address and, in appropriate cases, petition the office to hide or redact the domicile. These options are limited and should be addressed before filing. Read more: In re Chestek: When a Trademark Refusal Turns on Administrative Law, Not Trademark Law ›
Why was CHURRASCOS treated as generic for restaurant services rather than just for food?: Because the record showed the public understands "churrasco" to name a key aspect of a recognized class of restaurants — those commonly called "churrasco restaurants." Under the Federal Circuit's "key aspect" reasoning, a term that names a central feature of a category of services is generic for those services, just as "pizzeria" is generic for restaurant services. Read more: A Dish Is Not a Brand: In re Cordua Restaurants and Genericness for a Restaurant Specialty ›
Cordua already had a registration for the word mark. Why didn't that help?: Each trademark application is examined on its own merits. The presumption of validity from an existing registration protects that registration; it does not require the Office to register a new application or prevent a genericness finding. The court also noted that even an incontestable registration is no shield against genericness. Read more: A Dish Is Not a Brand: In re Cordua Restaurants and Genericness for a Restaurant Specialty ›
Did the stylized lettering make a difference?: No. The court found the genericness of the term controlling and treated the stylization as insufficient to overcome it on this record, leaving open how distinctive a design element would need to be to change the outcome. Read more: A Dish Is Not a Brand: In re Cordua Restaurants and Genericness for a Restaurant Specialty ›
What are the Morton-Norwich functionality factors?: Courts weigh four kinds of evidence: whether a utility patent discloses the utilitarian advantages of the design; whether the applicant's own advertising touts those utilitarian advantages; whether functionally equivalent alternative designs are available to competitors; and whether the design results from a comparatively simple or cheap method of manufacture. Read more: The Shape of a Spray Bottle: In re Morton-Norwich and the Functionality Factors ›
What is the difference between de facto and de jure functionality?: De facto functionality means the design does something useful, which does not bar trademark protection. De jure functionality means the design is functional in a legal sense, because protecting it would hinder competition, and that does bar protection. Morton-Norwich made this distinction central to trade-dress law. Read more: The Shape of a Spray Bottle: In re Morton-Norwich and the Functionality Factors ›
Can the shape or configuration of a product be a trademark?: Yes. Morton-Norwich confirmed that a product configuration can be registered as a trademark if it is nonfunctional and serves to identify and distinguish the source of the goods, typically by having acquired distinctiveness. Read more: The Shape of a Spray Bottle: In re Morton-Norwich and the Functionality Factors ›
Did Steelbuilding.com win or lose?: Both, in a sense. It won reversal of the genericness refusal — the court held the term was not shown to be generic and that the Board had defined the genus incorrectly. But it lost overall, because the court affirmed the refusal on the alternative ground that the mark is merely descriptive and the applicant failed to prove acquired distinctiveness under §2(f). Read more: The Sliding Scale of Secondary Meaning: In re Steelbuilding.com and the Burden of Section 2(f) ›
What is the "sliding scale" the case is famous for?: The principle that the amount of evidence needed to prove acquired distinctiveness increases with the degree of descriptiveness. A mark that is only mildly descriptive needs relatively little proof of secondary meaning; a highly descriptive mark needs a correspondingly large body of evidence. Read more: The Sliding Scale of Secondary Meaning: In re Steelbuilding.com and the Burden of Section 2(f) ›
Does adding ".COM" help a descriptive mark get registered?: Generally no. The Federal Circuit treated ".COM" as indicating only that the services are offered online, adding nothing of source-identifying value to an otherwise descriptive term. Whether any top-level domain can contribute distinctiveness depends on consumer perception and remains a fact-specific question. Read more: The Sliding Scale of Secondary Meaning: In re Steelbuilding.com and the Burden of Section 2(f) ›
What did International Bancorp v. SBM decide?: A divided Fourth Circuit panel held that SBM's mark Casino de Monte Carlo was used in commerce for Lanham Act purposes, even though the casino services were rendered only in Monaco, because SBM advertised and promoted the casino in the United States and provided services to U.S. citizens who traveled there. The court found protectable rights and ruled against the domain-name registrant. The decision was 2-1, with Judge Motz dissenting. Read more: Advertised Here, Served Abroad: International Bancorp v. SBM and Foreign-Mark Use in Commerce ›
Why was the use-in-commerce question so contested?: The Lanham Act generally requires that a service mark be used in commerce, which for services typically means the services are rendered in commerce that Congress can regulate. SBM rendered its casino services in Monaco, not the United States. The majority reasoned that foreign trade involving U.S. citizens is commerce Congress may regulate and that U.S. advertising plus service to American patrons abroad satisfied the requirement. The dissent disagreed. Read more: Advertised Here, Served Abroad: International Bancorp v. SBM and Foreign-Mark Use in Commerce ›
What did Judge Motz argue in dissent?: Judge Diana Gribbon Motz argued the majority effectively read the use-in-commerce requirement out of the statute. In her view, advertising in the United States is not the same as rendering services here, and a mark used only to provide services abroad should not gain U.S. trademark protection merely because the provider promotes itself to Americans. Because of that split, the holding is influential but not universally followed. Read more: Advertised Here, Served Abroad: International Bancorp v. SBM and Foreign-Mark Use in Commerce ›
What are the Lapp factors?: They are the Third Circuit's ten-factor test for likelihood of confusion: similarity of the marks; strength of the owner's mark; the care and attention of buyers; how long the defendant used the mark without actual confusion; the defendant's intent; evidence of actual confusion; whether the goods share trade channels and media; overlap in sales targets; the relationship of the goods in consumers' minds; and whether the public would expect the owner to enter the defendant's market. Read more: The Lapp Factors: How Interpace v. Lapp Built the Third Circuit's Confusion Test ›
Why did Interpace v. Lapp matter for non-competing goods?: The district court thought it was bound to dismiss because the parties did not compete directly. The Third Circuit reversed, holding that likelihood of confusion can exist between non-competing goods and that the same multi-factor analysis applies, with extra weight on the relationship of the goods and the likelihood of market expansion. Read more: The Lapp Factors: How Interpace v. Lapp Built the Third Circuit's Confusion Test ›
Are all ten Lapp factors required to find confusion?: No. The factors are a non-exhaustive checklist, not a scorecard. No single factor is dispositive, different factors carry different weight depending on the goods, and a court need not find a majority of them satisfied to find a likelihood of confusion. Read more: The Lapp Factors: How Interpace v. Lapp Built the Third Circuit's Confusion Test ›
What is the Inwood test for contributory trademark infringement?: A manufacturer or distributor is contributorially liable if it intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement. Either inducement or knowing continued supply will support liability. Read more: Inwood v. Ives: The Two-Part Test That Defines Contributory Trademark Infringement ›
Did Ives win the case?: No. The Supreme Court reversed the Second Circuit and reinstated the district court's judgment for the generic manufacturers. The trial court had found no proof that the generic makers induced or knew of pharmacist mislabeling, and the appeals court had improperly substituted its own view of the facts. Read more: Inwood v. Ives: The Two-Part Test That Defines Contributory Trademark Infringement ›
Why does Inwood still matter for online marketplaces?: Its 'knows or has reason to know' standard is the foundation courts now apply to platforms, landlords, and service providers. Cases like Tiffany v. eBay and the Ninth Circuit's Brandy Melville v. Redbubble decision build directly on Inwood's two-part test. Read more: Inwood v. Ives: The Two-Part Test That Defines Contributory Trademark Infringement ›
Did the Second Circuit recognize the famous-marks doctrine?: No. It held that Congress has not incorporated the famous-marks doctrine into federal trademark law, declining to read it into § 43(a) of the Lanham Act and creating a split with the Ninth Circuit's Grupo Gigante decision. Read more: ITC v. Punchgini: The Second Circuit Refuses to Find a Famous-Marks Doctrine in Federal Law ›
Why did ITC lose its registered trademark claim?: Because it had abandoned the Bukhara mark in the United States. ITC closed its U.S. restaurants and ceased domestic use for years without sufficient evidence of an intent to resume, which extinguished its registration-based rights. Read more: ITC v. Punchgini: The Second Circuit Refuses to Find a Famous-Marks Doctrine in Federal Law ›
Can a famous foreign mark get any protection in New York?: Yes, but not under a "famous marks doctrine." New York's unfair-competition law protects against misappropriation of foreign goodwill when consumers in the relevant market primarily associate the mark with the foreign plaintiff, considering factors like deliberate copying, surveys, and customer overlap. Read more: ITC v. Punchgini: The Second Circuit Refuses to Find a Famous-Marks Doctrine in Federal Law ›
What did the Supreme Court hold in Jack Daniel's v. VIP Products?: It held unanimously that the Rogers test does not apply when an alleged infringer uses another's trademark as a designation of source for its own goods. Because VIP used Bad Spaniels marks and trade dress to identify the source of its dog toy, the ordinary likelihood-of-confusion analysis applies, and the case was sent back for that analysis. Read more: When a Joke Is Also a Brand: Jack Daniel's v. VIP Products and the Limits of Rogers ›
Does this mean parody loses trademark protection?: No. Parody can still matter, but as part of the standard likelihood-of-confusion inquiry rather than as an automatic First Amendment shield. The Court stressed that a parody that is also used as a source identifier does not escape the Lanham Act simply because it is funny or expressive. Read more: When a Joke Is Also a Brand: Jack Daniel's v. VIP Products and the Limits of Rogers ›
Did the Court decide whether the Rogers test is valid at all?: No. The Court expressly declined to endorse or reject Rogers v. Grimaldi generally. It held only that Rogers does not apply to source-identifying use, leaving the broader status of the test for another day. Read more: When a Joke Is Also a Brand: Jack Daniel's v. VIP Products and the Limits of Rogers ›
Why couldn't National Biscuit stop Kellogg from using 'shredded wheat'?: Because 'shredded wheat' is a generic term—the common name of the product, not a brand. The Court held that on expiration of the patents, both the right to make the article and the right to call it by its generic name passed to the public, so National Biscuit had no exclusive claim to the name. Read more: Kellogg v. National Biscuit: Why 'Shredded Wheat' Belongs to Everyone ›
What did the case decide about the pillow shape?: The Court found the pillow shape was functional—it affected the cost and quality of the biscuit—and had also been covered by patents that expired. A functional feature cannot be monopolized through trademark or unfair-competition law, so Kellogg was free to use the same shape. Read more: Kellogg v. National Biscuit: Why 'Shredded Wheat' Belongs to Everyone ›
Did Kellogg have any obligation at all?: Yes. While Kellogg could use the generic name and functional shape, it had to take reasonable steps to identify its own product and avoid passing off, so consumers would not be misled into thinking Kellogg's biscuits came from National Biscuit. Read more: Kellogg v. National Biscuit: Why 'Shredded Wheat' Belongs to Everyone ›
Are gray-market goods counterfeit?: No. As the Court defined them, gray-market goods are genuine, foreign-made products bearing valid U.S. trademarks, imported without the U.S. markholder's authorization. Counterfeit goods bear spurious marks. The legal harm in gray-market cases is loss of distribution control, not deception about authenticity per se. Read more: At the Border of Genuine: K Mart v. Cartier and the Gray-Market Compromise ›
What did K Mart actually win or lose?: It was a split decision. The Customs regulation's common-control exception was upheld, which favored importers and retailers like K Mart who source genuine affiliate-made goods. The authorized-use exception was struck down, which favored markholders by preserving their ability to block independent-licensee imports. Read more: At the Border of Genuine: K Mart v. Cartier and the Gray-Market Compromise ›
Does this case stop a U.S. brand from blocking all parallel imports?: Not entirely. After K Mart, § 526 cannot block genuine imports from a commonly controlled affiliate, but it can still block imports of goods made by an independent foreign licensee. Brands also have separate Lanham Act theories where imported goods are materially different from the U.S. versions. Read more: At the Border of Genuine: K Mart v. Cartier and the Gray-Market Compromise ›
What did KP Permanent v. Lasting Impression decide?: The Supreme Court held that a defendant asserting the statutory descriptive fair use defense under the Lanham Act does not have to prove the absence of a likelihood of consumer confusion. The burden to prove likelihood of confusion stays with the trademark owner as part of its infringement claim. Read more: KP Permanent v. Lasting Impression: Fair Use Need Not Negate Confusion ›
Can there be trademark fair use even if some confusion exists?: Yes. The Court reasoned that because a descriptive term can be both a protected mark and a fair descriptive use, some possibility of consumer confusion is compatible with fair use. A defendant need not eliminate all confusion to prevail on the defense. Read more: KP Permanent v. Lasting Impression: Fair Use Need Not Negate Confusion ›
Does the amount of confusion matter to the fair use defense?: The Court expressly left that open. It held only that a defendant need not negate confusion, and declined to decide whether the degree of likely confusion is a factor relevant to whether a use is objectively 'fair.' On remand, the Ninth Circuit treated confusion as one relevant consideration. Read more: KP Permanent v. Lasting Impression: Fair Use Need Not Negate Confusion ›
Did Lamparello win on every claim?: Yes. The Fourth Circuit reversed and directed judgment for Lamparello on the trademark infringement, false designation, and ACPA cybersquatting claims, holding none could stand against a noncommercial criticism site. Read more: Lamparello v. Falwell: A Misspelled Domain, a Gripe Site, and the Limits of Cybersquatting Law ›
How is this different from PETA v. Doughney?: Doughney linked his site to commercial vendors and suggested the markholder buy the domain, evidencing commercial use and a profit motive. Lamparello sold nothing, registered only one domain, and never sought to sell it — so his site fell outside the ACPA's bad-faith-to-profit target. Read more: Lamparello v. Falwell: A Misspelled Domain, a Gripe Site, and the Limits of Cybersquatting Law ›
Does a disclaimer guarantee protection?: No, but it helps. The disclaimer reinforced the court's conclusion that no reasonable visitor would think Falwell authored a site criticizing himself. The decisive factors were the noncommercial nature of the site and the absence of any intent to profit. Read more: Lamparello v. Falwell: A Misspelled Domain, a Gripe Site, and the Limits of Cybersquatting Law ›
Do I have to be the defendant's direct competitor to sue for false advertising?: No. Lexmark rejected the categorical direct-competitor rule. A non-competitor — such as a supplier whose products are disparaged — may sue if it suffered a commercial injury to reputation or sales that was proximately caused by the defendant's deception of consumers. Read more: Lexmark v. Static Control: The Two-Part Test for Who May Sue for False Advertising ›
Can a misled consumer bring a § 43(a) false-advertising claim?: Generally no. A consumer who buys an inferior product because of false advertising has been harmed, but that injury is not a commercial interest in reputation or sales, so it falls outside the Lanham Act's zone of interests. Read more: Lexmark v. Static Control: The Two-Part Test for Who May Sue for False Advertising ›
What does "proximate cause" require in a false-advertising case?: Typically an economic injury that flows directly from consumers being deceived — for example, customers withholding business from the plaintiff because of the defendant's misrepresentations. Injuries that are merely derivative of harm to a third party usually will not qualify. Read more: Lexmark v. Static Control: The Two-Part Test for Who May Sue for False Advertising ›
Does a trademark plaintiff automatically get the infringer's profits?: No. Lindy Pen confirms that an accounting of profits is an equitable remedy granted in light of all the circumstances, not an automatic award. In the Ninth Circuit at the time, it typically required willful infringement, and even willfulness supports but does not compel an award. Read more: No Willfulness, No Profits: Lindy Pen v. Bic and the Limits of Trademark Recovery ›
Why did Lindy Pen recover nothing despite proving infringement?: The district court found Bic's infringement was innocent rather than willful, so an accounting of profits was inappropriate. Lindy also failed to prove its actual damages or the portion of Bic's profits attributable to the infringement with reasonable certainty, leaving an injunction as the only remedy. Read more: No Willfulness, No Profits: Lindy Pen v. Bic and the Limits of Trademark Recovery ›
How certain must a plaintiff's damages proof be?: The plaintiff must prove both the fact and the amount of damage, though doubts about the precise amount are resolved against a proven infringer. A court will not award speculative damages, and a plaintiff who offers no adequate evidence of losses or attributable profits may recover nothing monetary. Read more: No Willfulness, No Profits: Lindy Pen v. Bic and the Limits of Trademark Recovery ›
Was Akanoc itself selling counterfeit Louis Vuitton goods?: No. Akanoc was a web host; the counterfeit goods were sold by third-party websites that Akanoc hosted. Liability was contributory—based on providing the servers and connectivity and failing to act on notice—rather than direct. Read more: Hosting Counterfeit: Louis Vuitton v. Akanoc and the Liability of the Server Beneath the Storefront ›
Why did the Ninth Circuit reduce the damages?: The jury awarded the full statutory amount against each defendant separately. The court held that 15 U.S.C. § 1117(c) measures statutory damages by the number of counterfeit marks and types of goods, not by the number of defendants, so jointly liable defendants share a single award rather than each owing the maximum. Read more: Hosting Counterfeit: Louis Vuitton v. Akanoc and the Liability of the Server Beneath the Storefront ›
How is this different from Tiffany v. eBay?: Both apply the Inwood knowledge standard. eBay promptly removed listings when notified and avoided liability; Akanoc received specific notices and failed to respond, so it was held contributorily liable. Conduct after notice was the dividing line. Read more: Hosting Counterfeit: Louis Vuitton v. Akanoc and the Liability of the Server Beneath the Storefront ›
Did the statutory parody exclusion decide this case?: No. Because "Chewy Vuiton" was used as the product's own name (a source designation), the TDRA's express parody exclusion did not apply. The defendant won because its successful parody undercut the blurring and tarnishment claims on their merits. Read more: Chewy Vuiton and the Limits of Dilution: Louis Vuitton v. Haute Diggity Dog ›
Why does a famous mark's strength help the parodist?: A successful parody depends on the audience recognizing the original and understanding the departure. The more famous the mark, the more readily consumers grasp the joke and the less likely they are to form a diluting association. Read more: Chewy Vuiton and the Limits of Dilution: Louis Vuitton v. Haute Diggity Dog ›
Is this still good law after Jack Daniel's?: Yes, as to its dilution reasoning. Jack Daniel's (2023) clarified that the parody exclusion does not apply when a parody is used as a trademark — consistent with Haute Diggity Dog — leaving the multi-factor merits analysis as the decisive battleground. Read more: Chewy Vuiton and the Limits of Dilution: Louis Vuitton v. Haute Diggity Dog ›
Did the Court say The Slants is not offensive?: No. The Court took no position on whether the name offends; its point was that offensiveness cannot be the government's criterion for granting or withholding registration. Whether speech gives offense is constitutionally irrelevant to the registration decision. Read more: Matal v. Tam: Why the Lanham Act Cannot Punish a Band Called The Slants ›
Was the decision truly unanimous?: The judgment was unanimous among the eight participating Justices (Justice Gorsuch did not take part). The reasoning splintered: Justice Alito wrote for the Court in part and for a plurality in other parts, and Justice Kennedy concurred in part and in the judgment with three colleagues. They agreed on viewpoint discrimination but diverged on the scrutiny framework. Read more: Matal v. Tam: Why the Lanham Act Cannot Punish a Band Called The Slants ›
Does Tam mean any trademark can be registered?: No. Ordinary registration requirements — distinctiveness, non-confusion, non-functionality, and the bars later upheld in Vidal — continue to apply. Tam removed only the offensiveness-based disparagement clause. Read more: Matal v. Tam: Why the Lanham Act Cannot Punish a Band Called The Slants ›
Did Mattel lose entirely?: On the claims that matter here, yes. The Ninth Circuit rejected Mattel's trademark infringement and dilution claims, holding the song a protected expressive parody. The court resolved the parties' remaining reputational claims against them as well. Read more: Mattel v. MCA Records: 'Barbie Girl,' Parody, and the Limits of a Famous Mark ›
Is "Barbie Girl" still protected after Jack Daniel's?: Its core protection — using "Barbie" to comment on Barbie in a song — is consistent with Jack Daniel's, which left Rogers in place for genuinely expressive, non-source uses. What Jack Daniel's changed is the treatment of marks used as source identifiers for the defendant's own goods, a different posture from a satirical song. Read more: Mattel v. MCA Records: 'Barbie Girl,' Parody, and the Limits of a Famous Mark ›
What does the noncommercial-use exemption cover?: Under the dilution statute at issue, it shielded uses that are not purely commercial speech — expression that does more than propose a transaction. A for-profit parody can still qualify because it communicates a message beyond mere advertising. Read more: Mattel v. MCA Records: 'Barbie Girl,' Parody, and the Limits of a Famous Mark ›
What is the "substantial effects" test from McBee?: For a foreign (non-U.S.-citizen) defendant, McBee required the plaintiff to show that the defendant's conduct had a substantial effect on U.S. commerce — an impact significant enough in character and magnitude to justify U.S. regulation — before the Lanham Act could be applied to foreign conduct, with a further comity check for conflicts with foreign law. Read more: McBee v. Delica Co.: A Jazz Bassist, a Japanese Label, and the Substantial-Effects Line ›
Why didn't Delica's website count?: Because it was written in Japanese, aimed at Japanese consumers, and would not ship goods to the United States. The court held that mere accessibility of a foreign-language website from the U.S. is not the same as targeting U.S. commerce and does not create a substantial domestic effect. Read more: McBee v. Delica Co.: A Jazz Bassist, a Japanese Label, and the Substantial-Effects Line ›
Is McBee still controlling after Abitron?: Its core framing is in tension with Abitron (2023), which made the infringing "use in commerce" location the test and treated extraterritoriality as a merits question rather than a jurisdictional one. McBee remains influential First Circuit authority and a rich source of facts and reasoning, but its citizenship-based, jurisdictional structure must now be read against the Supreme Court's later decision. Read more: McBee v. Delica Co.: A Jazz Bassist, a Japanese Label, and the Substantial-Effects Line ›
Who won Mead Data Central v. Toyota?: Toyota won. The Second Circuit reversed the district court's injunction and allowed Toyota to use the LEXUS name, finding no likelihood of dilution by blurring under New York's antidilution statute because the marks were not substantially similar and LEXIS was strong only among sophisticated legal professionals. Read more: LEXIS Meets LEXUS: Mead Data v. Toyota and the Six-Factor Test for Dilution by Blurring ›
What are Judge Sweet's six factors for dilution by blurring?: In his concurrence, Judge Sweet proposed weighing: similarity of the marks; similarity of the products covered; sophistication of consumers; predatory intent; the renown of the senior mark; and the renown of the junior mark. These became widely cited as the Sweet factors. Read more: LEXIS Meets LEXUS: Mead Data v. Toyota and the Six-Factor Test for Dilution by Blurring ›
Is Mead Data still good law after the federal dilution statutes?: It remains an influential blurring analysis, but federal law has since evolved. The Federal Trademark Dilution Act of 1995 and the Trademark Dilution Revision Act of 2006 created a federal cause of action with their own statutory blurring factors and a fame requirement, partly absorbing and partly superseding the state-law framework. Read more: LEXIS Meets LEXUS: Mead Data v. Toyota and the Six-Factor Test for Dilution by Blurring ›
Does a trademark licensee always get to keep using the mark after the licensor's bankruptcy?: Generally yes for the remaining term, but only to the extent the license actually granted those rights. Rejection is treated like an ordinary breach, so the licensee retains rights already vested under the contract — but the agreement's scope, duration, and termination provisions still govern what those rights are. Read more: Rejection Is Breach, Not Rescission: Mission Product Holdings v. Tempnology and the Survival of Trademark Licenses in Bankruptcy ›
Why did Congress leave trademarks out of Section 365(n)?: Section 365(n) was a targeted 1988 fix for the Fourth Circuit's Lubrizol decision and covers patents, copyrights, and trade secrets. The Supreme Court refused to read that omission as a deliberate choice to deny trademark licensees protection; instead, it applied the Code's general breach rule to reach a comparable result. Read more: Rejection Is Breach, Not Rescission: Mission Product Holdings v. Tempnology and the Survival of Trademark Licenses in Bankruptcy ›
Can a debtor-licensor still stop a licensee from using the mark?: Not through rejection alone. A debtor can end the relationship only by exercising a contractual termination right that would have been available outside bankruptcy. Absent such a right, rejection leaves the licensee's use rights in place and converts the debtor's unmet obligations into a damages claim. Read more: Rejection Is Breach, Not Rescission: Mission Product Holdings v. Tempnology and the Survival of Trademark Licenses in Bankruptcy ›
What did Moseley actually decide?: That the original Federal Trademark Dilution Act required a famous-mark owner to prove actual dilution had occurred, not merely that the defendant's use was likely to dilute the mark. Read more: Moseley v. V Secret Catalogue: When Dilution Demanded Proof of Actual Harm ›
Is the Moseley standard still good law?: No. The Trademark Dilution Revision Act of 2006 amended the statute to require only a likelihood of dilution, displacing the holding. Moseley remains important for its reasoning and as the reason the TDRA was enacted. Read more: Moseley v. V Secret Catalogue: When Dilution Demanded Proof of Actual Harm ›
Did Victoria's Secret ultimately win?: Yes — but only after the law changed. On remand under the TDRA's likelihood standard, the district court entered judgment for Victoria's Secret and enjoined the junior name. Read more: Moseley v. V Secret Catalogue: When Dilution Demanded Proof of Actual Harm ›
What did the Ninth Circuit ultimately decide?: In its October 21, 2015 superseding opinion, the court affirmed summary judgment for Amazon, holding that a clearly labeled search-results page showing competitors' watches did not create a likelihood of confusion, even though Amazon did not carry MTM and did not say so. Read more: When Search Results Aren't Confusing: Multi Time Machine v. Amazon and the Limits of Initial-Interest Confusion ›
What is initial-interest confusion?: It is a theory of liability for using a mark to capture a consumer's initial attention or divert interest, even if the confusion is dispelled before any purchase. MTM relied on it; the majority found it did not apply because clear labeling prevented any reasonable confusion about source. Read more: When Search Results Aren't Confusing: Multi Time Machine v. Amazon and the Limits of Initial-Interest Confusion ›
Why did the panel reverse itself?: The same three judges first ruled for MTM in July 2015, then reheard the case. Judge Quist switched his vote, the original dissenter (Judge Silverman) wrote the new majority, and the court affirmed for Amazon in October 2015. The Supreme Court later denied certiorari. Read more: When Search Results Aren't Confusing: Multi Time Machine v. Amazon and the Limits of Initial-Interest Confusion ›
What did Panavision v. Toeppen decide?: The Ninth Circuit held that Dennis Toeppen's registration of panavision.com and panaflex.com, in order to sell them to Panavision, was a commercial use in commerce that diluted Panavision's famous marks under the Federal Trademark Dilution Act. The court affirmed summary judgment for Panavision. Read more: Holding a Brand Hostage: Panavision v. Toeppen and Cybersquatting as Trademark Dilution ›
How was dilution found if Toeppen wasn't selling competing goods?: Dilution does not require competition or consumer confusion. The court found Toeppen lessened the marks' capacity to identify and distinguish Panavision's goods by preventing Panavision from using its own marks as domain names, channeling customers to a placeholder page, and forcing them to a different address. Read more: Holding a Brand Hostage: Panavision v. Toeppen and Cybersquatting as Trademark Dilution ›
Did this case create cybersquatting law?: It predated the 1999 Anticybersquatting Consumer Protection Act and the UDRP, so courts initially stretched dilution doctrine to reach cybersquatters. Panavision was the influential early example; Congress later enacted a purpose-built remedy, but the decision remains a foundational marker of how the law first responded. Read more: Holding a Brand Hostage: Panavision v. Toeppen and Cybersquatting as Trademark Dilution ›
What does it mean for a trademark to be incontestable?: Under Section 15 of the Lanham Act, a registered mark used continuously for five years can attain incontestable status. Incontestability provides conclusive evidence of the registrant's exclusive right to use the mark, subject to the specific defenses listed in Section 33(b). Mere descriptiveness is not on that list. Read more: Incontestability Means Incontestable: Park 'N Fly v. Dollar Park and Fly ›
What did Park 'N Fly v. Dollar Park and Fly hold?: The Supreme Court held that an action to enjoin infringement of an incontestable mark may not be defended on the ground that the mark is merely descriptive. Once a mark becomes incontestable, a challenger cannot argue it should never have been registered because it lacks distinctiveness. Read more: Incontestability Means Incontestable: Park 'N Fly v. Dollar Park and Fly ›
Can an incontestable mark still be challenged at all?: Yes. Incontestability is not absolute. The mark can still be attacked on the grounds enumerated in Section 33(b) and Section 14, such as fraud, abandonment, genericness, or functionality. What is foreclosed is the specific argument that the mark is merely descriptive. Read more: Incontestability Means Incontestable: Park 'N Fly v. Dollar Park and Fly ›
Does using a brand in another country give me any rights in the United States?: Generally no. Under the territoriality principle reaffirmed in Person's, trademark rights are national; U.S. priority depends on use in U.S. commerce (or a recognized treaty-based filing). Foreign use alone does not create domestic priority. Read more: Person's Co. v. Christman: Foreign Use, U.S. Priority, and the Limits of Bad Faith ›
If someone copies my foreign brand knowing it exists abroad, isn't that bad faith?: Not by itself. Person's holds that mere knowledge of a foreign mark does not establish bad faith. A challenger usually must show the copier intended to trade on or interfere with goodwill that already existed in the U.S. market. Read more: Person's Co. v. Christman: Foreign Use, U.S. Priority, and the Limits of Bad Faith ›
How can a foreign company protect its mark before entering the U.S. market?: By registering early in the United States, by using the mark in U.S. commerce, or, where available, by filing under the Paris Convention/Lanham Act § 44 or the Madrid Protocol based on home-country rights. Waiting until a domestic copyist appears is the riskiest course. Read more: Person's Co. v. Christman: Foreign Use, U.S. Priority, and the Limits of Bad Faith ›
Why didn't the parody defense save Doughney?: Because a successful parody must deliver the reference and the mockery at the same moment. A domain name identical to the mark conveys only apparent ownership; the joke appears only after the visitor loads the site, so the domain name itself was not a parody. Read more: PETA v. Doughney: When a Domain Name Is the Punchline, the Parody Defense Fails ›
Did PETA recover money damages?: No. Doughney registered peta.org before the ACPA took effect on November 29, 1999, so the statute's monetary remedies did not apply. He was ordered to surrender the domain. Read more: PETA v. Doughney: When a Domain Name Is the Punchline, the Parody Defense Fails ›
Is PETA v. Doughney inconsistent with later gripe-site rulings?: It is distinguishable rather than overruled. Doughney's links to commercial vendors and his suggestion that PETA buy the domain marked his use as commercial and bad-faith, unlike the noncommercial criticism sites later protected in Bosley and Lamparello. Read more: PETA v. Doughney: When a Domain Name Is the Punchline, the Parody Defense Fails ›
What are the Polaroid factors?: They are the variables Judge Friendly listed for assessing likelihood of confusion between different products: strength of the mark, similarity of the marks, proximity of the products, likelihood of bridging the gap, actual confusion, the defendant's good faith (or lack of it), the quality of the defendant's goods, and the sophistication of buyers—plus any other relevant variable. Read more: The Test That Outlived the Verdict: Polaroid v. Polarad and the Birth of the Confusion Factors ›
Did Polaroid win the case?: No. The Second Circuit affirmed dismissal of Polaroid's complaint. Laches—Polaroid's years-long delay in suing—was determinative, and the parties largely operated in different markets. Read more: The Test That Outlived the Verdict: Polaroid v. Polarad and the Birth of the Confusion Factors ›
Why is the case so important if the plaintiff lost?: Because the enduring contribution was the analytic framework, not the result. Friendly's catalogue of confusion variables became the controlling multifactor test in the Second Circuit and a model nationwide, even though it was articulated in a case the plaintiff did not win. Read more: The Test That Outlived the Verdict: Polaroid v. Polarad and the Birth of the Confusion Factors ›
What did POM Wonderful v. Coca-Cola decide?: The Supreme Court held unanimously that the Food, Drug, and Cosmetic Act does not preclude a competitor's Lanham Act false-advertising claim challenging a food or beverage label, even where the label is regulated by the FDA. Competitors may sue under the Lanham Act over misleading labels. Read more: Two Statutes, One Label: POM Wonderful v. Coca-Cola and Lanham Act Claims Over FDA-Regulated Food ›
Is this a preemption case?: No. The Court framed the issue as preclusion between two federal statutes, not preemption of state law. Because both the Lanham Act and the FDCA are federal, the question was whether one federal statute bars a private suit under the other, and the Court held it does not. Read more: Two Statutes, One Label: POM Wonderful v. Coca-Cola and Lanham Act Claims Over FDA-Regulated Food ›
Did POM ultimately win against Coca-Cola?: No. POM won the Supreme Court ruling that its suit could proceed, but on remand a California federal jury ultimately found for Coca-Cola in 2016 on the false-advertising merits. The Supreme Court decision was about whether the claim could be brought, not whether the label was actually deceptive. Read more: Two Statutes, One Label: POM Wonderful v. Coca-Cola and Lanham Act Claims Over FDA-Regulated Food ›
Does buying an existing domain expose the purchaser to ACPA liability even if the first owner registered it innocently?: In the Third, Fourth, and Eleventh Circuits, yes—potentially. After Prudential, "registers" includes re-registrations, so a purchaser's acquisition of a domain whose corresponding trademark predates the purchase can be the registration the court scrutinizes. Liability still requires a bad-faith intent to profit, which is where good-faith buyers must make their stand. Read more: Re-Registration as Cybersquatting: Prudential v. Shenzhen Stone and the Reach of the ACPA ›
Why was Prudential able to sue the domain name itself rather than its owner?: Shenzhen Stone is a Chinese company with no U.S. presence, and its CEO was dismissed for lack of personal jurisdiction. Under 15 U.S.C. § 1125(d)(2)(A), when no suitable in personam defendant is available, the mark owner may bring an in rem action against the domain in the district where the registry sits—here, the Eastern District of Virginia, home of VeriSign. The court also held that the availability of personal jurisdiction is judged as of the filing date, so the owner could not defeat in rem jurisdiction by later consenting to suit elsewhere. Read more: Re-Registration as Cybersquatting: Prudential v. Shenzhen Stone and the Reach of the ACPA ›
Did the failed UDRP proceeding prevent Prudential from going to federal court?: No. The UDRP is a contractual administrative process that expressly leaves room for parallel judicial proceedings. Prudential voluntarily terminated its WIPO case and pursued the ACPA, and the court held the UDRP's jurisdictional stipulations did not bind it in the separate federal action. Read more: Re-Registration as Cybersquatting: Prudential v. Shenzhen Stone and the Reach of the ACPA ›
Did the Ninth Circuit find that Punchbowl News infringed?: No. It held only that the Rogers test did not apply and remanded for an ordinary likelihood-of-confusion analysis. On remand, the district court granted summary judgment of no infringement to AJ Press. Read more: When a Mark Is Used 'As a Mark': Punchbowl v. AJ Press and the Shrinking Reach of Rogers ›
What is the "use as a mark" rule from Jack Daniel's?: When a defendant uses the contested term to identify and distinguish its own goods or services—rather than merely within the expressive content of a work—the special First Amendment screen of Rogers does not apply, and the case proceeds under standard trademark law. Read more: When a Mark Is Used 'As a Mark': Punchbowl v. AJ Press and the Shrinking Reach of Rogers ›
Does it matter that "punchbowl" is a common English word?: Not for the threshold question. The court refused to exempt common words from the rule. The commonness of the term is instead weighed within the likelihood-of-confusion factors, where it tends to reduce confusion between firms in different markets. Read more: When a Mark Is Used 'As a Mark': Punchbowl v. AJ Press and the Shrinking Reach of Rogers ›
Can a company trademark a color by itself?: Yes. Qualitex holds that a single color can be a trademark, but only after it has acquired secondary meaning—proof that consumers associate the color with one source—and only if the color is not functional. Read more: A Shade of Green-Gold: Qualitex v. Jacobson and the Trademarking of Color Alone ›
What stops a company from monopolizing useful colors?: The functionality doctrine. A color that is essential to a product's use, that affects its cost or quality, or whose exclusive use would put competitors at a significant non-reputation-related disadvantage is functional and cannot be protected, no matter how distinctive it has become. Read more: A Shade of Green-Gold: Qualitex v. Jacobson and the Trademarking of Color Alone ›
How does Qualitex relate to later trade-dress cases?: It supplied the framework—distinctiveness plus a functionality bar—that the Court refined in TrafFix Devices v. Marketing Displays and that lower courts apply to color, product configuration, and other forms of trade dress. Read more: A Shade of Green-Gold: Qualitex v. Jacobson and the Trademarking of Color Alone ›
What did Rescuecom v. Google actually decide?: It decided a threshold question only: that Google's sale and recommendation of a trademark as a keyword trigger for its AdWords program is a "use in commerce" under the Lanham Act. The Second Circuit reversed the dismissal and sent the case back to determine whether that use was likely to cause confusion — it did not hold that Google infringed. Read more: Rescuecom v. Google: Selling a Trademark as a Keyword Is 'Use in Commerce' ›
How is Rescuecom different from 1-800 Contacts v. WhenU.com?: In 1-800 Contacts, the software keyed pop-up ads to an unpublished, internal directory and never sold, displayed, or offered the plaintiff's mark to anyone. In Rescuecom, Google sold the mark itself as a keyword and recommended it to advertisers through its Keyword Suggestion Tool, which the court held was an external, commercial use rather than a purely internal one. Read more: Rescuecom v. Google: Selling a Trademark as a Keyword Is 'Use in Commerce' ›
Did Rescuecom win its infringement claim?: No court ever ruled on the merits. After the Second Circuit revived the case, it settled and was withdrawn in 2010, so there was never a judicial finding on whether Google's keyword sales caused a likelihood of confusion. Read more: Rescuecom v. Google: Selling a Trademark as a Keyword Is 'Use in Commerce' ›
Did Ginger Rogers lose?: Yes. The Second Circuit affirmed summary judgment against her on the Lanham Act and right-of-publicity claims, holding the film's title artistically relevant and not explicitly misleading. Read more: Rogers v. Grimaldi: The Two-Part Test That Made Room for Art in Trademark Law ›
Is the Rogers test still good law after Jack Daniel's?: Yes, but in a narrowed form. The Supreme Court held Rogers inapplicable when a mark is used as a source identifier for the defendant's own products, while declining to decide its fate for purely expressive, non-source uses. For genuine titles and expressive references, Rogers continues to operate in the circuits that adopted it. Read more: Rogers v. Grimaldi: The Two-Part Test That Made Room for Art in Trademark Law ›
Does Rogers protect any use of a famous name?: No. It protects uses that are artistically relevant and that do not explicitly mislead about source or endorsement. A title fabricated solely to exploit a name, or one that overtly claims false sponsorship, falls outside the shield. Read more: Rogers v. Grimaldi: The Two-Part Test That Made Room for Art in Trademark Law ›
Did Romag eliminate willfulness from trademark remedies entirely?: No. It held that willfulness is not an absolute precondition to a profits award for infringement under § 1125(a). Willfulness remains a highly important equitable factor, and it is still a statutory precondition for a profits award in dilution cases under § 1125(c). Read more: Romag Fasteners v. Fossil: Willfulness Is a Factor, Not a Gate, for Disgorgement ›
Does this mean innocent infringers must now pay profits?: Not necessarily. The "principles of equity" governing § 1117(a) continue to allow courts to deny disgorgement where the defendant's conduct was innocent. Romag removed a categorical bar; it did not mandate profits in every case. Read more: Romag Fasteners v. Fossil: Willfulness Is a Factor, Not a Gate, for Disgorgement ›
Why did the Court focus on dilution claims?: Because § 1117(a) expressly conditions a profits award on willfulness for dilution under § 1125(c). That explicit condition, sitting in the same sentence, demonstrated that Congress knew how to require willfulness when it wanted to — and chose not to for § 1125(a) infringement. Read more: Romag Fasteners v. Fossil: Willfulness Is a Factor, Not a Gate, for Disgorgement ›
What did San Francisco Arts & Athletics v. USOC decide?: The Supreme Court held that Section 110 of the Amateur Sports Act, which gives the U.S. Olympic Committee the exclusive right to use the word "Olympic," does not violate the First Amendment even without proof of a likelihood of confusion, and that the USOC is not a governmental actor bound by the Constitution's equal protection guarantee. Read more: San Francisco Arts & Athletics v. USOC: Why Congress Could Give the Word "Olympic" Away ›
How is this trademark different from an ordinary one?: Congress granted the USOC control over "Olympic" by statute rather than through the Lanham Act, so the USOC need not prove that an unauthorized use is likely to confuse consumers. The word is protected against commercial and promotional uses regardless of confusion. Read more: San Francisco Arts & Athletics v. USOC: Why Congress Could Give the Word "Olympic" Away ›
Was the USOC's refusal to let the "Gay Olympic Games" use the word unconstitutional discrimination?: The Court said no, because a five-Justice majority found the USOC is a private entity whose enforcement choices are not government action. Four Justices disagreed, and the equal protection claim therefore failed as a matter of law. Read more: San Francisco Arts & Athletics v. USOC: Why Congress Could Give the Word "Olympic" Away ›
What did Siegel v. Chicken Delight actually decide?: The Ninth Circuit held that a franchisor's requirement that franchisees buy cookers, packaging, and food mixes as a condition of the trademark license was an unlawful tying arrangement under the Sherman Act, because the trademark license and the supplies were separate products and the mark gave the franchisor enough economic power to restrain competition. Read more: When the Trademark Is the Tie: Siegel v. Chicken Delight and Franchise Antitrust Risk ›
Can a franchisor ever require franchisees to buy specific supplies?: Yes, but only with justification. Tying can be lawful where it is genuinely necessary to protect goodwill and no less restrictive alternative, such as published specifications or approved-supplier lists, would protect quality. Siegel rejected the blanket claim that buying from the franchisor was the only way to assure quality. Read more: When the Trademark Is the Tie: Siegel v. Chicken Delight and Franchise Antitrust Risk ›
Is the trademark itself the tying product?: In Siegel the court treated the franchise license and trade name as the tying product and the equipment, packaging, and food items as the tied products. The goodwill of the mark, the court said, did not attach to the many separate articles used to run the business, so they could be bought elsewhere. Read more: When the Trademark Is the Tie: Siegel v. Chicken Delight and Franchise Antitrust Risk ›
Did Social Tech lose because it filed an intent-to-use application?: No. ITU applications are entirely legitimate and confer a constructive priority date. Social Tech lost because it never converted that filing into genuine, bona fide use in the ordinary course of trade — and because its eventual launch appeared designed to reserve rights and set up litigation rather than to sell a real product. Read more: Token Use Won't Save a Registration: Social Technologies v. Apple and the 'Memoji' Mark ›
Does shipping a real, downloadable app always count as use in commerce?: Not automatically. The Lanham Act asks whether the use was bona fide and in the ordinary course of trade, not merely whether a transaction occurred. A launch staged to manufacture rights — especially one timed to a competitor and described internally in litigation terms — can be deemed token use despite a genuine download or sale. Read more: Token Use Won't Save a Registration: Social Technologies v. Apple and the 'Memoji' Mark ›
Can a court cancel a registered trademark in an infringement suit?: Yes. A federal court has authority to order cancellation of a registration as part of its judgment. Here the Ninth Circuit affirmed cancellation of Social Tech's MEMOJI registration because the use supporting it was not bona fide. Read more: Token Use Won't Save a Registration: Social Technologies v. Apple and the 'Memoji' Mark ›
Why is this case considered the first appellate ACPA decision?: The statute was enacted while the appeal was pending, and the Second Circuit chose to decide the case under the new law rather than the dilution theory used below — making it the earliest federal appeals court interpretation of §43(d). Read more: Sporty's Farm v. Sportsman's Market: The First Appellate Word on the Anticybersquatting Act ›
Did the court award money damages to Sportsman's Market?: No. It affirmed the order transferring sportys.com but denied damages, reasoning that the ACPA's monetary remedies do not apply to a domain registered before the statute took effect on November 29, 1999. Read more: Sporty's Farm v. Sportsman's Market: The First Appellate Word on the Anticybersquatting Act ›
Are the nine bad-faith factors a checklist a court must run through?: No. The opinion stressed that the factors are permissive and nonexclusive, and that the unique circumstances of a case can be decisive. They guide, rather than dictate, the bad-faith determination. Read more: Sporty's Farm v. Sportsman's Market: The First Appellate Word on the Anticybersquatting Act ›
Did Starbucks lose because its mark was not famous?: No. The court accepted that the Starbucks marks are famous, distinctive, and substantially exclusive. Starbucks lost because the marks were only minimally similar and its evidence of actual association was weak. Read more: The Charbucks Saga: How Starbucks Lost Its Dilution-by-Blurring Claim ›
Was the Charbucks survey enough to prove dilution?: No. The court found the survey of limited value because it tested "Charbucks" in isolation rather than as actually marketed ("Charbucks Blend," "Mister Charbucks") and measured mere mental recall rather than likely impairment of distinctiveness. Read more: The Charbucks Saga: How Starbucks Lost Its Dilution-by-Blurring Claim ›
Does the TDRA require the marks to be substantially similar?: No. An earlier decision in this litigation rejected a "substantial similarity" requirement for blurring. But this case shows that a low degree of similarity remains a heavily weighted factor that can defeat a claim even absent a strict threshold. Read more: The Charbucks Saga: How Starbucks Lost Its Dilution-by-Blurring Claim ›
Did Steele v. Bulova hold that the Lanham Act applies everywhere in the world?: No. It held that the Act could reach a U.S. citizen's foreign conduct on the specific facts presented — a domestic effect on U.S. commerce and no valid conflicting foreign trademark right. The Court was careful to tie its result to those conditions, not to announce a borderless rule. Read more: Steele v. Bulova Watch Co.: The Lanham Act Follows the Citizen Across the Border ›
Is Steele still good law after Abitron v. Hetronic?: Steele has not been overruled. Abitron (2023) reframed the governing test around domestic "use in commerce" and distinguished Steele on its facts, including the defendant's citizenship and the absence of a foreign-law conflict. Steele remains foundational, but its multi-factor progeny must now be read through Abitron's lens. Read more: Steele v. Bulova Watch Co.: The Lanham Act Follows the Citizen Across the Border ›
Why did the defendant's U.S. citizenship matter so much?: Because international law generally permits a nation to regulate the conduct of its own nationals abroad. Steele's American citizenship let the Court invoke that authority without trespassing on Mexico's regulation of conduct within its territory, especially once Steele's Mexican registration had been nullified. Read more: Steele v. Bulova Watch Co.: The Lanham Act Follows the Citizen Across the Border ›
What is an "assignment in gross"?: It is the attempted transfer of a trademark apart from the goodwill of the business the mark symbolizes. Because a mark has no independent existence separate from that goodwill, an assignment in gross is invalid and conveys no enforceable rights. Read more: A Mark Is Nothing Without Its Goodwill: Sugar Busters v. Brennan and the Assignment-in-Gross Trap ›
Does an assignee have to buy inventory or customer lists to get the goodwill?: No. The Fifth Circuit rejected that narrow view. Goodwill transfers when the assignee uses the mark on goods or services sufficiently similar to the assignor's that consumers' established associations are not betrayed — tangible assets are not required. Read more: A Mark Is Nothing Without Its Goodwill: Sugar Busters v. Brennan and the Assignment-in-Gross Trap ›
Why did the SUGARBUSTERS assignment fail?: The mark had been used by a diabetic-supply business, but the assignee used it for a diet book. The court was not persuaded those uses were similar enough to carry the relevant goodwill, so the assignment looked like a transfer of a bare name — invalid as an assignment in gross — and the preliminary injunction was vacated. Read more: A Mark Is Nothing Without Its Goodwill: Sugar Busters v. Brennan and the Assignment-in-Gross Trap ›
Can advertising before any sales establish trademark priority?: Yes, under the analogous-use doctrine — but only if the promotional activity actually caused a substantial portion of the relevant consuming public to identify the term with a single source before the rival's priority date. Promotion that does not demonstrably reach the public will not do it. Read more: T.A.B. Systems v. PacTel Teletrac: Pre-Sales Publicity Counts Only If the Public Was Actually Reached ›
Why did PacTel's press kits and trade shows fail?: Because they were not shown to have reached enough of the relevant public to create actual source identification by the critical date. The court treated much of the early activity as irrelevant and found the rest legally insufficient, holding that intent to build an association cannot replace proof that the association formed. Read more: T.A.B. Systems v. PacTel Teletrac: Pre-Sales Publicity Counts Only If the Public Was Actually Reached ›
What evidence should a party gather to support analogous use?: Documentation of reach and impact: advertising expenditures, circulation and audience figures, distribution numbers, and consumer survey evidence of association — proof that the publicity penetrated the market, not merely that it occurred. Read more: T.A.B. Systems v. PacTel Teletrac: Pre-Sales Publicity Counts Only If the Public Was Actually Reached ›
Did the Fourth Circuit hold that Timberland's boot design is functional?: No. The court declined to decide functionality. It noted concerns with the district court's analysis and affirmed instead on the independent ground that the claimed configuration lacked acquired distinctiveness. The functionality discussion is therefore not a holding. Read more: The Boot That Could Not Become a Brand: TBL Licensing v. Vidal and the Limits of Product-Configuration Trade Dress ›
Why does a product's shape require proof of secondary meaning when a logo does not?: Under Wal-Mart v. Samara Brothers, product-design trade dress can never be inherently distinctive, because consumers tend to view a product's shape as functional or aesthetic rather than as a source identifier. Product design is protectable only on a showing that consumers have come to associate the design with a particular source. Read more: The Boot That Could Not Become a Brand: TBL Licensing v. Vidal and the Limits of Product-Configuration Trade Dress ›
What should a company do differently to register a product configuration after this case?: Tie the evidence to the specific features claimed. That means "look-for" advertising that highlights those features, consumer surveys testing recognition of the claimed elements rather than the whole product, and a record that distinguishes the applicant's features from competing designs in a crowded market. Read more: The Boot That Could Not Become a Brand: TBL Licensing v. Vidal and the Limits of Product-Configuration Trade Dress ›
Did the court find that no counterfeit Tiffany goods were sold on eBay?: No. The parties agreed that a substantial number of counterfeit "Tiffany" items were sold through eBay. The court held only that eBay's general awareness of that fact, without specific knowledge of which listings were infringing, did not create contributory liability. Read more: The Knowledge Line: Tiffany v. eBay and the Limits of Marketplace Liability ›
What is the difference between general and specific knowledge here?: General knowledge is awareness that counterfeiting occurs somewhere on the platform. Specific (or "contemporary") knowledge is awareness that a particular listing or seller is offering counterfeit goods. Under Tiffany, only the latter triggers a duty to act. Read more: The Knowledge Line: Tiffany v. eBay and the Limits of Marketplace Liability ›
Can a marketplace escape liability simply by not investigating?: No. The willful-blindness doctrine prevents a platform from deliberately avoiding knowledge it has reason to suspect. A marketplace that ignores red flags it actually perceives can be charged with the knowledge it chose not to confirm. Read more: The Knowledge Line: Tiffany v. eBay and the Limits of Marketplace Liability ›
What did Trader Joe's v. Hallatt actually decide?: That the Lanham Act's extraterritorial reach is a merits question rather than a matter of subject-matter jurisdiction, and that Trader Joe's had plausibly alleged enough connection between Hallatt's conduct and U.S. commerce — through U.S. purchasing and U.S.-felt reputational harm — to proceed on its federal claims. The court reversed dismissal of the federal claims and affirmed dismissal of the Washington state-law claims. Read more: Trader Joe's v. Hallatt: 'Pirate Joe's,' Cross-Border Resale, and a Merits Question in Disguise ›
Why did the "merits vs. jurisdiction" distinction matter?: Because it determines the procedural posture: a jurisdictional dismissal (Rule 12(b)(1)) and a merits dismissal (Rule 12(b)(6)) carry different burdens, evidentiary scope, and consequences. The Ninth Circuit's reclassification, consistent with Morrison, was later echoed by the Supreme Court's treatment of the issue in Abitron (2023). Read more: Trader Joe's v. Hallatt: 'Pirate Joe's,' Cross-Border Resale, and a Merits Question in Disguise ›
Is Hallatt still good law after Abitron?: Its procedural holding — extraterritoriality is a merits question — aligns with Abitron and remains sound. Its nexus analysis, framed around effects on U.S. commerce, must now be reconsidered through Abitron's focus on whether the infringing use in commerce is domestic, so the fact pattern is best analyzed under the newer standard. Read more: Trader Joe's v. Hallatt: 'Pirate Joe's,' Cross-Border Resale, and a Merits Question in Disguise ›
What is the functionality doctrine, in plain terms?: It is the rule that a product feature cannot be a trademark if the feature is essential to the product's use or purpose, or if it affects the product's cost or quality. The doctrine keeps trademark law from granting perpetual control over useful features that patent law reserves for limited terms. Read more: The Spring That Could Not Be Owned: TrafFix Devices v. Marketing Displays and the Functionality Bar ›
Why did Marketing Displays lose even though buyers recognized its dual-spring base?: Recognition is irrelevant once a feature is functional. The dual-spring design was essential to keeping the signs upright, so it could not be trade dress no matter how distinctive it had become in the marketplace. Read more: The Spring That Could Not Be Owned: TrafFix Devices v. Marketing Displays and the Functionality Bar ›
Does it matter that competitors could use a different spring arrangement?: No—not for traditional functionality. The Court held that the availability of alternative designs does not undercut the functionality of a feature that is essential to the article's use. Alternative-designs evidence belongs to the separate inquiry into aesthetic functionality. Read more: The Spring That Could Not Be Owned: TrafFix Devices v. Marketing Displays and the Functionality Bar ›
What is trade dress?: Trade dress is the total image and overall appearance of a product or business — features such as size, shape, color combinations, textures, graphics, and, as in this case, the décor and ambiance of a restaurant — that can serve to identify the source of goods or services. Read more: Two Pesos v. Taco Cabana: When Trade Dress Is Inherently Distinctive, No Secondary Meaning Required ›
Did Taco Cabana have to prove secondary meaning?: No — and that was the point. The jury found the trade dress inherently distinctive but found it had not acquired secondary meaning. The Supreme Court held that the inherent distinctiveness finding alone sufficed under § 43(a). Read more: Two Pesos v. Taco Cabana: When Trade Dress Is Inherently Distinctive, No Secondary Meaning Required ›
Is Two Pesos still good law?: Yes, for inherently distinctive trade dress such as packaging and business décor. But Wal-Mart v. Samara (2000) later held that product design trade dress can never be inherently distinctive and always requires secondary meaning, narrowing the universe of dress to which the Two Pesos shortcut applies. Read more: Two Pesos v. Taco Cabana: When Trade Dress Is Inherently Distinctive, No Secondary Meaning Required ›
Does United Drug v. Rectanus mean the first user of a mark always wins?: No. The case holds the opposite. Common-law trademark rights are territorial and tied to the goodwill of an actual business. A senior user cannot enjoin a remote junior user who adopted the same mark in good faith, without notice, and built up trade in a separate market before the senior user arrived there. Read more: First in Time, Not First Everywhere: United Drug v. Rectanus and Territorial Trademark Rights ›
Does the Rectanus defense still work after federal registration?: Only in narrow circumstances. The Lanham Act gives a federal registration nationwide constructive notice, so a junior user who adopts a mark after the senior party registers it generally cannot claim good faith. The remote good-faith defense mainly protects use that began before the senior user's federal registration. Read more: First in Time, Not First Everywhere: United Drug v. Rectanus and Territorial Trademark Rights ›
What is the 'Tea Rose-Rectanus' doctrine?: It is the common-law rule, drawn from this case and Hanover Star Milling Co. v. Metcalf, that a good-faith junior user can keep using a mark in the distinct geographic area it developed before the senior user entered, because trademark rights extend only as far as the trade and reputation they protect. Read more: First in Time, Not First Everywhere: United Drug v. Rectanus and Territorial Trademark Rights ›
Does Booking.com mean any company can trademark a generic word plus ".com"?: No. The Court rejected an automatic rule in both directions. A "generic.com" term is registrable only if consumers perceive it as a brand rather than as the name of a class of goods or services. That is a fact-intensive showing, typically requiring survey evidence and proof of acquired distinctiveness, because such composites are at best descriptive. Read more: When a Generic Word Buys a Domain: USPTO v. Booking.com and the Limits of Per Se Genericness ›
Why didn't the Goodyear "Company" rule control?: The Court distinguished the 1888 Goodyear line because a corporate designation like "Company" or "Inc." adds no source-identifying meaning, whereas a domain name can—precisely because only one entity can hold a given domain at a time. That exclusivity may lead consumers to associate "generic.com" with a single source, an association "Generic Company" never creates. Read more: When a Generic Word Buys a Domain: USPTO v. Booking.com and the Limits of Per Se Genericness ›
How strong is a trademark obtained this way?: Generally weak. Because the mark is descriptive and dominated by generic matter, its enforceable scope is narrow. Competitors retain the classic fair-use defense to describe their own services, and any infringement claim must still satisfy the likelihood-of-confusion test—doctrines the Court expressly identified as limits on the registrant's power to exclude. Read more: When a Generic Word Buys a Domain: USPTO v. Booking.com and the Limits of Per Se Genericness ›
What is the Vanity Fair three-factor test?: It asks (1) whether the defendant is a U.S. citizen, (2) whether the defendant's conduct has a substantial effect on U.S. commerce, and (3) whether applying U.S. law would conflict with trademark rights established under foreign law. The Second Circuit said any one factor might be decisive and that the presence of certain combinations can be fatal to extraterritorial application. Read more: Where U.S. Trademark Law Stops at the Border: Vanity Fair Mills v. T. Eaton Co. ›
Why did the U.S. company lose?: The defendant was a Canadian company, not a U.S. citizen, and it sold under a valid Canadian Vanity Fair registration in Canada. With a foreign defendant acting under a presumably valid foreign trademark, the court held the Lanham Act should not be applied extraterritorially to that conduct, partly out of respect for Canadian sovereignty and comity. Read more: Where U.S. Trademark Law Stops at the Border: Vanity Fair Mills v. T. Eaton Co. ›
How does Vanity Fair relate to Steele v. Bulova and the 2023 Abitron decision?: Vanity Fair distinguished the Supreme Court's Steele v. Bulova Watch Co. (1952), which allowed extraterritorial reach against a U.S. citizen whose foreign conduct harmed U.S. commerce. The Supreme Court's 2023 decision in Abitron v. Hetronic later recentered the inquiry on whether the infringing use in commerce occurred domestically, reshaping but not erasing the older balancing approach. Read more: Where U.S. Trademark Law Stops at the Border: Vanity Fair Mills v. T. Eaton Co. ›
Was the decision really unanimous?: The judgment was 9-0 — every Justice agreed the names clause is constitutional. But the reasoning fractured, and no single rationale drew a majority. (Reports describing it as a 6-3 decision are incorrect.) Read more: Vidal v. Elster: A Unanimous Judgment, a Divided Court, and the Limits of History ›
Can Steve Elster still sell "Trump too small" shirts?: The ruling concerned federal registration of the mark, not the ability to use the phrase. The Court did not hold that he could be barred from using or selling the expression. Read more: Vidal v. Elster: A Unanimous Judgment, a Divided Court, and the Limits of History ›
Does this overrule Tam and Brunetti?: No. Those cases struck down viewpoint-based bars; Vidal upholds a viewpoint-neutral, content-based one. The decision distinguishes them rather than disturbing them. Read more: Vidal v. Elster: A Unanimous Judgment, a Divided Court, and the Limits of History ›
What is the difference between voice misappropriation and false endorsement?: Voice misappropriation is a state right-of-publicity tort protecting a person's property interest in his own identity. False endorsement is a federal § 43(a) claim premised on consumer confusion about whether the celebrity sponsored or approved the product. The same imitation can violate both. Read more: Waits v. Frito-Lay: A Distinctive Voice and the Birth of False Endorsement ›
Does the plaintiff have to compete with the advertiser to sue under § 43(a)?: No. The court held that a celebrity holds an interest akin to a trademark holder's in controlling commercial use of his identity, and so has standing even though he does not compete with the advertiser in any ordinary market sense. Read more: Waits v. Frito-Lay: A Distinctive Voice and the Birth of False Endorsement ›
Why was the Lanham Act damages award vacated if Waits won the claim?: Because it duplicated the compensatory damages already awarded for the same injury under the voice-misappropriation claim. A plaintiff cannot recover twice for one economic harm, even when liability is established on more than one legal theory; the related attorneys' fee award, however, was affirmed. Read more: Waits v. Frito-Lay: A Distinctive Voice and the Birth of False Endorsement ›
What is the difference between product design and product packaging?: Product packaging is the dressing around a product — the box, label, or container — which consumers readily treat as a source identifier and which can be inherently distinctive. Product design is the configuration of the product itself, which consumers usually value for its own sake; it can never be inherently distinctive and always requires secondary meaning. Read more: Wal-Mart v. Samara Brothers: Product Design Is Never Inherently Distinctive ›
What happens when trade dress could be either design or packaging?: The Court instructed lower courts to classify ambiguous trade dress as product design — meaning the plaintiff must prove secondary meaning. The tie always goes against the inherent-distinctiveness theory. Read more: Wal-Mart v. Samara Brothers: Product Design Is Never Inherently Distinctive ›
Does Samara overrule Two Pesos?: No. The Court distinguished Two Pesos, treating the restaurant décor there as packaging-like trade dress to which the inherent-distinctiveness rule still applies. Samara governs product configuration; Two Pesos governs packaging and analogous trade dress. Read more: Wal-Mart v. Samara Brothers: Product Design Is Never Inherently Distinctive ›
What did the Ninth Circuit decide about willful blindness?: It held that willful blindness for contributory trademark liability requires specific knowledge of infringers or instances of infringement. A platform's general awareness that some infringement is occurring is not enough; the plaintiff must show the defendant subjectively believed specific infringement was likely and took deliberate steps to avoid confirming it. Read more: Brandy Melville v. Redbubble: The Ninth Circuit Sets the Knowledge Bar for Marketplace Liability ›
Did the court rule that Redbubble was liable?: No. The court vacated and remanded so the district court could reapply the correct specific-knowledge standard to Redbubble's motion for judgment as a matter of law. It did not declare Redbubble liable or not liable; it corrected the legal test and sent the issue back. Read more: Brandy Melville v. Redbubble: The Ninth Circuit Sets the Knowledge Bar for Marketplace Liability ›
Does a counterfeit have to be an exact copy?: No. The Ninth Circuit rejected a stitch-for-stitch requirement. The Lanham Act does not require counterfeit goods to be exact replicas; the question is whether the accused mark is identical or substantially indistinguishable and likely to cause confusion. Read more: Brandy Melville v. Redbubble: The Ninth Circuit Sets the Knowledge Bar for Marketplace Liability ›
Why did a small prior user lose to a later national brand?: Because trademark priority depends on use that actually links the mark to a source in consumers' minds. The salon's few local and mailed sales did not create that association, so L'Oréal's substantial national launch established superior rights despite coming later in time. Read more: Zazu Designs v. L'Oréal: Why a Few Bottles and a Registration Plan Do Not Win the Mark ›
Does an intent to use a mark create any rights?: Not by itself. The court held that a mere intention to use a mark — or a registration without genuine use — confers no substantive rights. After the 1988 Act, the proper way to reserve a mark before launch is a bona fide intent-to-use application, which the salon never filed. Read more: Zazu Designs v. L'Oréal: Why a Few Bottles and a Registration Plan Do Not Win the Mark ›
What is "token use," and why does it fail?: Token use refers to minimal sales arranged to reserve a name rather than to genuinely market a product. It fails because it does not perform the source-identifying function that justifies trademark protection and does not put competitors on real notice of a claim. Read more: Zazu Designs v. L'Oréal: Why a Few Bottles and a Registration Plan Do Not Win the Mark ›

Educational content, not legal advice. These answers explain general legal concepts under U.S. law and are not a substitute for advice from a licensed attorney. Laws vary by jurisdiction and change over time.