Trademarks: Frequently Asked Questions

541 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, which is 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? ›
How much does an IP lawyer cost per hour?: As a typical market range, solo practitioners and small IP boutiques commonly bill around $200 to $450 per hour, mid-size firm attorneys around $350 to $700, and senior partners at large firms in major markets $700 to $1,200 or more. Rates track seniority, city, and specialty; patent work commands a premium because it requires a separately licensed patent attorney or agent. Many routine filings are quoted flat fee instead, so the hourly rate matters most in disputes and negotiations. Read more: How Much Does an IP Lawyer Cost in 2026? ›
How much does a trademark lawyer cost?: Trademark filing is one of the most commoditized services in IP. Attorney flat fees for preparing and filing one application typically run $300 to $1,500 per class, on top of the USPTO's $350 per class government fee, so most small businesses spend roughly $650 to $2,000 all-in for one class. A clearance search with a written opinion often adds $300 to $1,000 or more, and responding to a substantive office action typically costs another $300 to $1,000-plus. Read more: How Much Does an IP Lawyer Cost in 2026? ›
Do IP lawyers take cases on contingency?: Some do, almost entirely on the enforcement side. Contingency arrangements appear mostly in patent and copyright infringement suits where damages could be large, with typical shares in the range of one third, and hybrid deals (reduced hourly plus a smaller percentage) are common. Lawyers rarely take defense work or routine prosecution on contingency because there is no recovery to share. Expect the firm to vet the strength of the patent or registration and the defendant's ability to pay before accepting. Read more: How Much Does an IP Lawyer Cost in 2026? ›
Is it worth paying an IP lawyer instead of filing myself?: It depends on the filing. Copyright registration is genuinely DIY-friendly. Simple single-class trademark applications are commonly self-filed, though a bad clearance search is the classic expensive mistake. Patent drafting is where DIY most often backfires, because weak claims can leave you with an unenforceable patent after you have publicly disclosed the invention. A useful rule: the more the asset is worth and the harder the mistake is to undo, the more a few thousand dollars of professional help costs less than the error. Read more: How Much Does an IP Lawyer Cost in 2026? ›
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, not the UDRP. ICANN's Transfer Dispute Resolution Policy (TDRP) can undo an inter-registrar transfer, but under its own terms only a losing or gaining registrar may file a TDRP complaint, so a registrant has to get a registrar to bring it. 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?: As of June 30, 2026 the USPTO posts an average of 4.2 months from filing to the first examining action, against a 5-month target. Average total pendency, from filing to registration or abandonment, is 9.8 months. A smooth, unopposed application generally registers in roughly 10 to 12 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. 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. 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 ›
Can I sue under the Lanham Act without a registered trademark?: Yes. Section 43(a)(1)(A) creates a federal claim for false designation of origin that protects unregistered marks, trade names, and trade dress, so long as the designation is distinctive and used in commerce. The Supreme Court confirmed in Two Pesos v. Taco Cabana that inherently distinctive unregistered trade dress is protectable under 43(a) without proof of secondary meaning, and courts apply essentially the same likelihood-of-confusion analysis used for registered marks. What you give up without a registration: the presumption of validity and ownership, nationwide constructive notice, incontestability, and access to counterfeiting remedies. You also carry the burden of proving your rights, including non-functionality if you assert trade dress under 43(a)(3). Read more: Lanham Act Section 43(a): False Designation and False Advertising ›
What must I prove for false advertising under 43(a)(1)(B)?: Courts generally require: a false or misleading statement of fact about the defendant's or another's goods or services in commercial advertising or promotion; that the statement either is literally false or actually deceives or tends to deceive a substantial segment of the audience; materiality, meaning the deception is likely to influence purchasing decisions; interstate commerce; and injury or likely injury to the plaintiff, such as diverted sales or lost goodwill. A literally false statement lets courts presume deception; a merely misleading one usually requires consumer survey evidence. Puffery, meaning vague superlatives no reasonable buyer relies on, is not actionable. Under Lexmark, the plaintiff must also show a commercial injury proximately caused by the deception. Read more: Lanham Act Section 43(a): False Designation and False Advertising ›
Who has standing to sue under Section 43(a) after Lexmark?: The Supreme Court in Lexmark v. Static Control replaced the circuits' competing standing tests with a two-part statutory inquiry: the plaintiff's interests must fall within the zone of interests the Lanham Act protects, meaning a commercial interest in reputation or sales, and the injury must be proximately caused by the misrepresentation, typically because consumers were deceived and withheld business from the plaintiff. Direct competition is not required: a supplier whose products were disparaged qualified in Lexmark itself. Consumers, however, do not qualify: a buyer misled into a bad purchase has no 43(a) claim because that injury is not a commercial interest in reputation or sales. Read more: Lanham Act Section 43(a): False Designation and False Advertising ›
What remedies are available for a Section 43(a) violation?: Section 34 provides injunctions, the primary remedy in most cases, and Section 35(a) makes a prevailing plaintiff eligible, subject to the principles of equity, to recover the defendant's profits, the plaintiff's actual damages, and costs, with attorney fees available in exceptional cases. Courts may adjust profit awards and treble damages as compensation, not as a penalty. After Romag Fasteners v. Fossil, willfulness is not an absolute precondition to a profits award for a 43(a) violation, but the defendant's mental state remains a highly important equitable factor, so innocent infringers still have strong arguments against disgorgement while willful ones face it routinely. Read more: Lanham Act Section 43(a): False Designation and False Advertising ›
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 ›
Should I file through Madrid or file directly in each country?: Work it by count and by membership. If you want one or two foreign markets, or any target is not a Madrid member, file directly there. If you want the whole EU and nothing else, file a EUTM directly with the EUIPO. If you want several Madrid member countries and you have a stable home registration you expect to survive five years, Madrid is usually the cheaper and easier route. Many businesses blend all three: Madrid for the efficient cluster, EUTM for Europe, direct filings for non-members and for markets where you need a broader goods and services list than your U.S. base supports. Read more: How to File a Trademark Abroad Under Madrid ›
How long does a Madrid filing take, start to finish?: WIPO's formalities examination and international registration typically take a few months after the USPTO certifies and forwards your MM2. After WIPO notifies each designated office, that office has 12 months, or 18 months in countries that declared the longer period, to issue a provisional refusal. Countries that stay silent past their deadline are effectively protected. So plan on roughly 12 to 24 months before you know where you stand everywhere, and longer in any country that refuses and needs a local response. Read more: How to File a Trademark Abroad Under Madrid ›
What does a Madrid filing actually cost?: WIPO charges a basic fee of 653 Swiss francs, or 903 francs if any reproduction of the mark is in color, plus 100 francs per designated country that has not set its own individual fee, plus 100 francs per class beyond three, plus each individual-fee country's own amount. The USPTO separately charges a certification fee of $100 per class if you file on a single basic application or registration, or $150 per class on multiple basics. Local counsel to answer a provisional refusal is the cost people forget, and it can dwarf the filing fees. Read more: How to File a Trademark Abroad Under Madrid ›
How do I protect myself against central attack?: Three levers. First, file your international application on a mature base, ideally a U.S. registration or at least an application that has cleared its first office action, rather than a fresh filing. Second, calendar the five-year dependency window and treat any threat to the U.S. base as a threat to the whole international registration. Third, know the escape hatch: if the base falls and the international registration is cancelled, you have three months from the cancellation date to request transformation into national applications in the designated countries, keeping your original date, but you pay national fees in each one. Read more: How to File a Trademark Abroad Under Madrid ›
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 ›
How long do I have to respond to a UDRP complaint?: You have 20 days from the commencement of the proceeding, the date the dispute provider formally notifies you of the complaint, to submit your response, and WIPO's guidance confirms you can request an automatic four-day extension. If you file nothing, the panel decides the case on the complaint alone and may draw inferences from your silence. Respondents who default lose the overwhelming majority of the time, so even a short, well-documented response is far better than none. The whole proceeding normally wraps up within about two months. Read more: You Received a UDRP Complaint: How to Keep Your Domain ›
What does the complainant have to prove in a UDRP case?: Under paragraph 4(a) of the UDRP, the complainant must prove all three elements: the domain is identical or confusingly similar to a trademark in which it has rights; you have no rights or legitimate interests in the domain; and the domain was registered and is being used in bad faith. The conjunction matters. Bad faith requires both bad-faith registration and bad-faith use, so a domain registered before the complainant's trademark rights existed generally cannot have been registered in bad faith, and failing any single element defeats the entire complaint. Read more: You Received a UDRP Complaint: How to Keep Your Domain ›
How much does it cost to defend a UDRP complaint?: The complainant pays the provider's fees: at WIPO, currently $1,500 for a single-member panel covering one to five domains. You pay no filing fee to respond to a single-member case. If you elect a three-member panel, the $4,000 three-member fee is shared equally between the parties, so your half is $2,000, submitted with your response. Your real cost is attorney time: a documented UDRP response typically runs a few thousand dollars, cheap insurance when the domain carries your business, and far less than federal litigation. Read more: You Received a UDRP Complaint: How to Keep Your Domain ›
What happens if I lose the UDRP decision?: The registrar must implement a transfer decision ten business days after being notified of it, unless within that window you provide official documentation showing you filed a lawsuit against the complainant in a proper jurisdiction, as paragraph 4(k) of the Policy provides. Filing suit, typically seeking a declaration under the Anticybersquatting Consumer Protection Act framework that your registration is lawful, blocks the transfer while the court case proceeds. A UDRP loss carries no damages and no precedent binding a court; the case starts fresh. Read more: You Received a UDRP Complaint: How to Keep Your Domain ›
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. ›
What happens if I ignore a cease and desist letter?: Often nothing, and that's the trap. Many letters 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, which can increase damages and support a fee award. Ignoring the letter is a legitimate endpoint of triage; it is a terrible substitute for triage. 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? ›
Can two businesses have the same name?: Yes, legally they often can. Trademark law does not grant ownership of a word for all purposes; it prevents uses that are likely to confuse customers about who is behind particular goods or services. Two businesses can share a name when they sell unrelated things, serve different geographic markets, or otherwise leave no real risk that consumers would think they are connected. That is why a bakery and a software firm can coexist under the same name while two bakeries in the same city usually cannot. The closer the products, customers, and territories, the more likely the shared name is a legal problem. 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) ›
How long do I have to respond to a trademark infringement lawsuit?: Under Federal Rule of Civil Procedure 12, you generally have 21 days after being served with the summons and complaint to file an answer or a motion to dismiss. If you signed a waiver of formal service under Rule 4(d), you get 60 days from when the waiver request was sent. Extensions are routinely granted if someone asks, but if nobody responds at all, the plaintiff can seek a default judgment that converts the complaint's allegations into a collectible court judgment, often including an injunction against your brand. Read more: Sued for Trademark Infringement: What Happens Next ›
What is likelihood of confusion in a trademark case?: Likelihood of confusion asks whether an appreciable number of ordinary consumers would likely be confused about the source, sponsorship, or affiliation of the goods or services. Courts answer it with multi-factor balancing tests: the Polaroid factors in the Second Circuit, Sleekcraft in the Ninth, and the DuPont factors at the USPTO. The recurring core factors are similarity of the marks, relatedness of the goods, strength of the plaintiff's mark, overlapping trade channels, evidence of actual confusion, and the defendant's intent. No single factor decides the case. Read more: Sued for Trademark Infringement: What Happens Next ›
What are the best defenses to a trademark infringement lawsuit?: The workhorse defense is simply that confusion is unlikely: the marks differ, the industries do not overlap, or the plaintiff's term is weak. Beyond that, classic fair use protects descriptive use of words in their ordinary meaning, nominative fair use protects truthfully naming the plaintiff's product, laches punishes a plaintiff who slept on its rights for years, priority applies if you used the mark first, and invalidity attacks the registration itself, including a counterclaim to cancel a generic or merely descriptive mark. Defense strategy is ranking these against the actual facts. Read more: Sued for Trademark Infringement: What Happens Next ›
What can a trademark plaintiff actually win?: The primary remedy is an injunction ordering you to stop using the mark, and since the Trademark Modernization Act of 2020, plaintiffs who show a likelihood of success get a rebuttable presumption of irreparable harm. Money comes under 15 U.S.C. § 1117: the defendant's profits, the plaintiff's actual damages, and costs. After Romag Fasteners v. Fossil, willfulness is not a strict precondition to a profits award, though your mental state still matters a great deal. Attorney's fees are reserved for exceptional cases, judged under the flexible Octane Fitness standard. Read more: Sued for Trademark Infringement: What Happens Next ›
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? ›
How does trademark cost compare to copyright registration?: Copyright registration is much cheaper. The U.S. Copyright Office charges $45 to electronically register a single work by one author who owns the whole thing (not a work for hire), or $65 for a standard application, versus the USPTO's $350-per-class trademark filing fee plus maintenance and renewal fees over time. The two protect different assets, though: copyright covers creative works like text, images, and software code, while a trademark covers the brand identifiers customers use to find you. A business protecting both a name and original content typically budgets for both filings. 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 June 30, 2026, average total pendency is about 9.8 months, measured from filing to registration, notice of allowance, or abandonment, with a first review (first action) averaging roughly 4.2 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 the mark has been in continuous use for five straight years after the registration date, 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 should I file first to protect my product's appearance?: The design patent, because it is the only right on the list with a hard expiration date on the filing window. Under 35 U.S.C. 102(b)(1) you have 12 months from your first public disclosure, offer for sale, or public use to file, and if you miss it the ornamental design is dedicated to the public permanently. Trade dress in a product's shape has no filing deadline at all but requires years of secondary meaning, so it cannot be your day-one answer. File the design patent now, start the trade dress evidence file the same week, and register the label artwork and word mark on a normal cadence. Read more: How to Protect Your Product's Look: A Founder's Playbook ›
How long does it take to build secondary meaning in a product design?: There is no fixed period, and no case says five years is enough. The 15 U.S.C. 1052(f) provision lets the USPTO accept five years of substantially exclusive and continuous use as prima facie evidence of acquired distinctiveness, but examiners routinely demand far more for product configuration, and courts weigh the whole record: sales volume, advertising spend, look-for advertising, unsolicited press, exclusivity, deliberate copying, and surveys. Treat five years as the earliest realistic filing point, not a finish line, and treat the evidence file as an operational program you run from launch. Read more: How to Protect Your Product's Look: A Founder's Playbook ›
What is look-for advertising and how do I actually run it?: Look-for advertising is advertising that points at the appearance itself and tells consumers the look is the brand, rather than merely showing the product. "Look for the contour bottle" does the work; a pretty product photo does not. Operationally it means a recurring campaign line that names the feature, running it in paid channels with dated invoices and impression records, keeping the claimed feature visually unchanged across every asset, and archiving every execution with its spend. Undated screenshots of your own social posts are the weakest version of this evidence. Read more: How to Protect Your Product's Look: A Founder's Playbook ›
How do I check whether my own design is functional before I claim it?: Audit your own documents first, because they are what a defendant will use. Under TrafFix Devices v. Marketing Displays, 532 U.S. 23 (2001), a feature is functional if it is essential to the use or purpose of the article or affects its cost or quality, and a utility patent claiming the feature is strong evidence of functionality that you carry a heavy burden to overcome. So read your own utility patents and applications, your marketing copy, your engineering specs, and your packaging claims. Any feature your own materials describe as making the product work better, last longer, ship tighter, or cost less should be struck from what you claim. Read more: How to Protect Your Product's Look: A Founder's Playbook ›
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 taxonomy (four classes in the opinion, generic, descriptive, suggestive, and arbitrary or fanciful, which later courts usually count as five by splitting the last) gave courts a shared language for distinctiveness, and that vocabulary 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. It lost its infringement case in full, and Registration No. 358,781 was properly cancelled, with No. 703,279 cancelled in part. But the Second Circuit reversed the cancellation of the remaining registrations, holding that 'Safari' was suggestive rather than generic or merely descriptive as applied to goods like ice chests, axes, tents and smoking tobacco. The case was remanded for entry of a new judgment 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 ›
Can the Lanham Act apply to trademark infringement that happens abroad?: Historically, yes, under limited conditions. Building on the Supreme Court's decision in Steele v. Bulova Watch Co., courts weighed factors such as the defendant's U.S. citizenship, the effect of the conduct on U.S. commerce, and any conflict with foreign law. In American Rice the Fifth Circuit applied the Lanham Act to a U.S. cooperative's infringing rice sales in Saudi Arabia even though no goods re-entered the United States. Read more: American Rice v. Arkansas Rice Growers: The Lanham Act Reaches Sales in Saudi Arabia ›
Why did U.S. citizenship of the defendant matter?: Because the Lanham Act's reach abroad rested in part on the United States' interest in regulating its own nationals. Riceland was an Arkansas cooperative that processed, packaged, and shipped the rice from the United States, so much of its conduct was domestic and it was a U.S. citizen subject to U.S. law, which supported extending the statute to the ultimate foreign sales. Read more: American Rice v. Arkansas Rice Growers: The Lanham Act Reaches Sales in Saudi Arabia ›
Is American Rice still good law after Abitron?: Its result is historically important but its effects-based reasoning has been narrowed. In 2023 the Supreme Court held in Abitron Austria GmbH v. Hetronic International, Inc. that the Lanham Act's infringement provisions are not extraterritorial and reach only conduct where the infringing use in commerce is domestic. That decision displaces the broad multifactor, effects-driven approach that cases like American Rice represented. Read more: American Rice v. Arkansas Rice Growers: The Lanham Act Reaches Sales in Saudi Arabia ›
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 ›
Is trademark counterfeiting a strict liability claim when the marks are identical?: No. Arcona holds that the plain language of 15 U.S.C. § 1114 makes likelihood of confusion an element of a counterfeiting claim, just as it is for ordinary infringement. Using an identical registered mark is not enough by itself; the plaintiff must still show that consumers are likely to be confused by the defendant's product viewed as a whole. Read more: Arcona v. Farmacy Beauty: Counterfeiting Still Requires Likelihood of Confusion ›
Why did Arcona press only a counterfeiting claim instead of ordinary infringement?: Counterfeiting unlocks the Lanham Act's harshest remedies, including treble damages or statutory damages and attorneys' fees under 15 U.S.C. § 1117. Arcona voluntarily dismissed its infringement and unfair competition claims with prejudice and staked the case on the theory that counterfeiting requires no confusion showing. When the Ninth Circuit rejected that theory, the strategy left Arcona with nothing and exposed it to a fee award. Read more: Arcona v. Farmacy Beauty: Counterfeiting Still Requires Likelihood of Confusion ›
When can identical marks alone establish likelihood of confusion?: Under Brookfield's dicta and Stone Creek, virtually identical marks paired with identical goods can make confusion follow as a matter of course, as with a fake Louis Vuitton bag copying the real article. The Arcona panel also noted that an exceptionally strong mark might cause confusion standing alone. Neither situation applied to EYE DEW, a mark other beauty companies also used, on products that looked nothing alike. Read more: Arcona v. Farmacy Beauty: Counterfeiting Still Requires Likelihood of Confusion ›
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. He agreed that a petitioner need not prove a proprietary interest, but disagreed that the Board had imposed one, and would have held that Australian failed to prove a real interest and a reasonable belief of damage because it had contracted away any legitimate commercial interest and consented to the registration. Rehearing en banc was denied on December 4, 2020 over a renewed Wallach dissent. 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 called the objective quality of the wine irrelevant and, quoting McCarthy's treatise, explained 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?: On July 5, 1973 Blue Bell attached TIME OUT tags to several hundred pairs of slacks that already bore its 'Mr. Hicks' trademark and shipped them to customers who had ordered Mr. Hicks goods. The Fifth Circuit held this was not a bona fide use because the labels were not affixed to the new line the mark was meant to identify; attaching a secondary label to an older line of goods, it said, manifests a bad faith attempt to reserve a mark. 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 ›
Can a company sue a gripe site that uses its trademark as a domain name?: Not for infringement or dilution if the site is genuinely noncommercial. Under Bosley, those Lanham Act claims require use in connection with a sale of goods or services, and pure criticism with no advertising, sales, or competitor links does not qualify. A cybersquatting claim under the ACPA remains available, but only if the registrant had a bad faith intent to profit from the mark. Read more: Bosley Medical v. Kremer: Gripe Sites, Commercial Use, and the ACPA's Longer Reach ›
Why did the ACPA claim survive when the infringement claim failed?: Because the two statutes have different elements. Sections 32 and 43(a) of the Lanham Act reach only commercial uses of a mark, while the ACPA, 15 U.S.C. § 1125(d), asks whether the defendant registered, trafficked in, or used a domain name with a bad faith intent to profit. The Ninth Circuit held that reading a commercial use requirement into the ACPA would let cybersquatters evade the statute by parking marks in noncommercial sites. Read more: Bosley Medical v. Kremer: Gripe Sites, Commercial Use, and the ACPA's Longer Reach ›
What happened to the bosleymedical.com domain after the case?: The Ninth Circuit remanded the cybersquatting claim for discovery on bad faith intent to profit. On remand the district court denied Kremer's motions in March 2007, and the parties settled in August 2007. According to Public Citizen, which represented Kremer, he kept one of the two domains at issue and gave up the other after a year, and the case was dismissed with prejudice. Read more: Bosley Medical v. Kremer: Gripe Sites, Commercial Use, and the ACPA's Longer Reach ›
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 the Mattoon Burger King ever expand beyond its protected zone?: Not under the Hoots framework. The limited-area defense preserves only the trade territory the junior user had actually developed before the federal registration issued. Expansion after that date occurs with constructive notice of the registrant's rights, so any new territory would infringe. The junior user's rights are frozen in place, which is why practitioners call it the frozen-enclave rule. Read more: Burger King v. Hoots: How a 20-Mile Circle Around Mattoon Froze a Junior User ›
Does a state trademark registration give statewide rights against a federal registrant?: No. The Hootses had registered under the Illinois Trade Mark Act, but the Seventh Circuit held that whether or not Illinois intended to enlarge the common law, the state Act cannot enlarge a registrant's rights in the area where the federal mark has priority. The court pointedly did not decide how far Illinois law reaches on its own terms, noting that no Illinois case had answered that question. The practical result was the same: the Hootses kept only the Mattoon trade area where they had actually done business, because Congress intended federal registration to confer nationwide priority. Read more: Burger King v. Hoots: How a 20-Mile Circle Around Mattoon Froze a Junior User ›
What should a business do if clearance reveals a small prior user of its chosen mark?: Treat the prior user as a permanent fixture. If that user adopted in good faith before your federal registration, it will likely keep an enclave around its actual trade area no matter how large you grow. Common responses include buying out the prior user, negotiating a coexistence agreement that fixes boundaries by contract, or choosing a different mark before investing in the brand. Read more: Burger King v. Hoots: How a 20-Mile Circle Around Mattoon Froze a Junior User ›
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 ›
What is the literal-falsity rule from Coca-Cola v. Tropicana?: When an advertisement is literally or explicitly false, a court may grant relief without any evidence of how the ad affected the buying public. The court quoted the rule directly: relief may be granted "without reference to the advertisement's impact on the buying public." Only ads that are misleading rather than facially false require the plaintiff to prove actual consumer deception, typically through surveys. Read more: Coca-Cola v. Tropicana: The Literal-Falsity Shortcut in False Advertising ›
Why was the Tropicana orange juice commercial literally false?: The ad showed Bruce Jenner squeezing an orange and pouring the juice straight into a Tropicana carton while saying it is "pure, pasteurized juice as it comes from the orange." In reality Tropicana's juice is heated to about 200 degrees Fahrenheit during pasteurization and sometimes frozen before packaging, so it does not go directly from the orange to the carton. The visual and the audio each stated something the court found blatantly false. Read more: Coca-Cola v. Tropicana: The Literal-Falsity Shortcut in False Advertising ›
How did Coca-Cola show irreparable harm?: Coca-Cola made Minute Maid, and Minute Maid and Tropicana were the leading national competitors in the chilled orange juice market. The court reasoned that if the false ad led consumers to prefer Tropicana as fresher, Coca-Cola would likely lose chilled-juice market share, a diversion of sales that is hard to quantify in damages and therefore constitutes irreparable injury. The court did not rely on the competitive relationship alone. It also pointed to record evidence that consumers were likely to be misled, the ASI consumer-reaction survey and the Burke recall test, which it said together provided sufficient evidence of a risk of irreparable harm. Read more: Coca-Cola v. Tropicana: The Literal-Falsity Shortcut in False Advertising ›
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 Federal Circuit held that 37 C.F.R. Section 2.35(b) contemplates substitution of a basis during the pendency of an application, not after registration, so the Board did not err in refusing. 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. The goods were therefore 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. In Kellogg Co. v. Pack'em Enterprises, Inc., 951 F.2d 330 (Fed. Cir. 1991), the Federal Circuit said it knew of no reason why a single DuPont factor may not be dispositive in a particular case. Cunningham did not announce that rule. It held that the Board need only consider the factors for which there is evidence of record, and it resolved the case on the similarity of the marks and the identity of the goods as registered. 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 ›
Did the court say using a trademark as a verb is safe for the brand owner?: No. It held only that verb use does not automatically prove genericness. Widespread indiscriminate verb use, where speakers mean any product in the category rather than the brand, remains evidence a challenger could marshal. That is why brand owners still police verb and noun uses in style guides and enforcement letters: they are managing the evidentiary record against a future genericide claim. Read more: Elliott v. Google: Why Verbing a Brand Does Not Kill the Trademark ›
What is the who-are-you/what-are-you test?: It is shorthand for the primary significance inquiry codified at 15 U.S.C. § 1064(3). If consumers understand a term as answering who a product comes from, it functions as a mark; if it answers what the product is, it is generic. A mark is cancelled as generic only when its primary significance to the relevant public is the name of the type of good or service rather than an indicator of source. Read more: Elliott v. Google: Why Verbing a Brand Does Not Kill the Trademark ›
How does Elliott square with cases like aspirin and escalator becoming generic?: Those terms crossed the line because the public came to use them as the name of the product category with no source in mind, and often no alternative generic name existed. Elliott confirms the same standard but shows the proof must target the category: the plaintiffs never showed that consumers think google names all search engines. Google's survey evidence showed the overwhelming majority still recognize it as a brand. Read more: Elliott v. Google: Why Verbing a Brand Does Not Kill the Trademark ›
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 vacated the Board's decision dismissing the petition 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 Jack Daniel's v. VIP Products overrule E.S.S. v. Rock Star?: No. Jack Daniel's held that Rogers does not apply when the accused use is a source identifier for the defendant's own goods, but the Court left Rogers intact for non-source uses. Depicting a trademarked business inside a game world, as Rockstar did, is not source-identifying use, and in Punchbowl, Inc. v. AJ Press, LLC (9th Cir. 2024) the Ninth Circuit confirmed that Rogers remains circuit law for such uses. As of July 2026, E.S.S. remains good law within that narrowed lane. Read more: E.S.S. v. Rock Star: Rogers Reaches Video Games and the Bar Is Above Zero ›
What does "artistic relevance above zero" actually require?: Almost nothing. The Ninth Circuit held that the mark's relevance to the work "merely must be above zero," so courts do not weigh how much the work needs the mark or how artfully it is deployed. A cartoon-style rendering of East Los Angeles could include a strip club resembling the Play Pen because the neighborhood's businesses were relevant to the game's setting, even though the game was not about the club. Read more: E.S.S. v. Rock Star: Rogers Reaches Video Games and the Bar Is Above Zero ›
Does E.S.S. mean video games can freely copy real-world businesses?: Not freely. The use must appear inside an expressive work and must not explicitly mislead consumers about source or content, and after Jack Daniel's a game that uses another's mark to brand the game itself or its merchandise loses Rogers protection entirely. Games that sell branded virtual goods, or that imply sponsorship in their marketing, still face the ordinary likelihood-of-confusion analysis. Read more: E.S.S. v. Rock Star: Rogers Reaches Video Games and the Bar Is Above Zero ›
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 ›
What did the Third Circuit mean by saying functional means useful?: Because the Lanham Act does not define functionality, the court started from ordinary meaning: a feature is functional if it is practical or utilitarian, in a word useful, and the word requires nothing more. The court rejected Ezaki Glico's narrower reading that a feature must be essential to the product, holding that a design that makes a product work better, or that the seller touts for its usefulness, is functional even if alternatives exist. Read more: Ezaki Glico v. Lotte: The Third Circuit Says Functional Means Useful, and Pocky Loses Its Trade Dress ›
Does Ezaki Glico still own trademark rights in Pocky?: Yes, in part. The decision held Ezaki Glico's two registered product-configuration trade dresses, covering the partly chocolate-coated stick design, functional and therefore not protectable. It did not disturb the POCKY word mark or the brand's packaging rights. What the company lost was the ability to use trademark law to stop competitors from selling similarly shaped chocolate-covered biscuit sticks such as Lotte's Pepero. Read more: Ezaki Glico v. Lotte: The Third Circuit Says Functional Means Useful, and Pocky Loses Its Trade Dress ›
Did the Supreme Court review the decision?: No. Ezaki Glico petitioned for certiorari (No. 20-1817), arguing that the Third Circuit's useful standard conflicted with the Supreme Court's Inwood and TrafFix formulations and with other circuits. The Supreme Court denied the petition on November 1, 2021, leaving the decision, and the disagreement over how broadly to define functionality, in place. Read more: Ezaki Glico v. Lotte: The Third Circuit Says Functional Means Useful, and Pocky Loses Its Trade Dress ›
What is naked licensing?: Naked licensing is licensing a trademark without exercising adequate quality control over how the licensee uses it. Because a trademark exists to assure consumers of a consistent source and quality, a licensor that grants use of its mark but does not control the licensee's goods or services risks the mark no longer signifying anything. The law treats that failure as an involuntary abandonment, forfeiting the owner's rights against everyone. Read more: FreecycleSunnyvale v. Freecycle Network: How Naked Licensing Kills a Trademark ›
How did the Ninth Circuit find that Freecycle Network abandoned its marks?: The court applied a three-part inquiry and found all three points cut against The Freecycle Network. It retained no express contractual right to control its member groups' use of the marks, it exercised no actual control over their activities, and it could not reasonably rely on the groups' own quality-control measures because it had no close working relationship giving it a basis for that reliance. The result was naked licensing and abandonment. Read more: FreecycleSunnyvale v. Freecycle Network: How Naked Licensing Kills a Trademark ›
Can a licensor ever rely on a licensee's own quality controls?: Sometimes, but only where a close working relationship justifies the licensor's confidence that the licensee's self-policing protects the mark. Courts have allowed such reliance between long-affiliated or closely connected parties. In Freecycle the licensor had no long-term relationship with the local group and no experience with it that could have supported confidence in its self-policing, so reliance on the group's own standards was unreasonable. The court also held that such reliance, standing alone, is never enough without other indicia of control. Read more: FreecycleSunnyvale v. Freecycle Network: How Naked Licensing Kills a Trademark ›
Does GoPets v. Hise mean domain transfers can never violate the ACPA?: No. The decision construes only the word registration in 15 U.S.C. § 1125(d)(1). A transferee can still face liability for trafficking in or using a domain name in bad faith, and the initial registration itself remains actionable if the mark was distinctive at that time. Read more: GoPets v. Hise: Re-Registration Is Not 'Registration' Under the ACPA ›
Which courts have rejected the GoPets rule?: The Third Circuit in Schmidheiny v. Weber, the Eleventh Circuit in Jysk Bed'N Linen v. Dutta-Roy, and the Fourth Circuit in Prudential v. Shenzhen Stone Network all read registration to include re-registrations, leaving the Ninth Circuit alone on the narrow view as of July 2026. Read more: GoPets v. Hise: Re-Registration Is Not 'Registration' Under the ACPA ›
Why did the Hises still lose most of the case?: Because they registered 18 new domain names confusingly similar to the GoPets mark after it became distinctive, the Ninth Circuit affirmed cybersquatting liability with statutory damages of $1,000 per domain, plus service mark infringement for content posted on gopets.com. Read more: GoPets v. Hise: Re-Registration Is Not 'Registration' Under the ACPA ›
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, and on February 25, 2025 the Board removed the mark's incontestability status while leaving the registration in place. Read more: When Fraud Doesn't Cancel: Great Concepts v. Chutter and the Limits of Section 14 ›
Was the fraud finding overturned?: No, but it was not affirmed either. The court expressly declined to reach whether the Board erred in finding that the Section 15 declaration was fraudulent, because Section 14 did not authorize cancellation regardless. 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, meaning 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 a showing, by a preponderance of the evidence, that "a substantial percentage of consumers in the relevant American market is familiar with the foreign mark," on top of ordinary secondary meaning. The majority did not fix a number; Judge Graber's concurrence would have required a majority of the defendant's customers and potential customers, in the aggregate. 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. It did not decide 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), argued October 23, 2024 and still pending as of July 2026. 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. Stylized matter can be registrable if the design features create a commercial impression separate and apart from the words themselves, or if the particular display is shown to have acquired distinctiveness. Cordua made neither argument, contending only that the underlying word mark had acquired distinctiveness, so the stylization could not save the generic term. That leaves 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 ›
Do all thirteen DuPont factors have to be analyzed in every case?: No. The court said the factors must be considered "when of record," meaning only the factors on which the parties actually submitted evidence come into play. In most ex parte examinations only a handful are litigated, usually similarity of the marks and relatedness of the goods or services, and the CCPA was explicit that any single factor may control a given case. Read more: In re E.I. du Pont de Nemours & Co.: The Thirteen Factors Behind Every Likelihood of Confusion Refusal ›
Does DuPont apply in infringement litigation too?: Not directly. DuPont governs registration decisions at the USPTO, the TTAB, and the Federal Circuit. The regional circuits apply their own multifactor confusion tests in infringement suits, such as the Second Circuit's Polaroid factors and the Ninth Circuit's Sleekcraft factors. The frameworks overlap heavily, and after B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138 (2015), a TTAB confusion ruling can even preclude relitigation in court when the usages at issue are materially the same. Read more: In re E.I. du Pont de Nemours & Co.: The Thirteen Factors Behind Every Likelihood of Confusion Refusal ›
Why did DuPont win when both marks were the identical word RALLY?: Because of the tenth factor, the market interface. DuPont had purchased Horizon's RALLY mark for the automobile product, the application at issue, and the goodwill of that business, and the parties signed an agreement dividing the markets: Horizon kept commercial building and household cleaning, DuPont took the automotive aftermarket. The court held that a detailed agreement between sophisticated businesses, each motivated to avoid confusion, was weighty evidence that confusion was unlikely. Read more: In re E.I. du Pont de Nemours & Co.: The Thirteen Factors Behind Every Likelihood of Confusion Refusal ›
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 ›
What did In re Rath decide about Section 44 and the Paris Convention?: The Federal Circuit held that the Paris Convention is not self-executing and that Section 44 of the Lanham Act does not require the USPTO to register a foreign-registered mark that fails a U.S. substantive bar to registration. A Section 44 applicant is exempt from the domestic use requirement, but it must still satisfy the Section 2 bars, including the prohibition on marks that are primarily merely a surname. Read more: In re Rath: Section 44 Filings Still Must Clear the Surname Bar ›
Does a foreign registration force the USPTO to register a mark 'as is'?: No. Dr. Rath relied on Article 6quinquies of the Paris Convention, the "telle quelle" or "as is" clause, but the court held the Convention is not self-executing, so it creates no registration right enforceable on its own against the USPTO. The court read Section 44(e)'s "if eligible" language to refer to eligibility under U.S. registrability law, so Section 44 does not override Section 2. The majority expressly declined to decide whether the surname bar actually conflicts with Article 6quinquies. Read more: In re Rath: Section 44 Filings Still Must Clear the Surname Bar ›
Is In re Rath still good law?: Yes. As of July 2026 it remains the leading Federal Circuit authority for the rule that Section 44 foreign-registration applicants must meet the Section 2 substantive bars. The rule is embedded in USPTO examining practice through TMEP Section 1007, which cites In re Rath for the proposition that Section 44 applications are subject to the Section 2 bars to registration. Read more: In re Rath: Section 44 Filings Still Must Clear the Surname Bar ›
What makes a webpage an acceptable specimen for goods?: The page must function as a point-of-sale display: the mark appears in association with the goods, and the page gives consumers the information essential to a purchasing decision and a means of ordering, such as pricing, quantities, payment, and shipping options. A page that only promotes the product is mere advertising. Read more: In re Siny Corp.: When a Webpage Specimen Is Just Advertising ›
Is a phone number or "contact us for sales" line enough?: No. Siny holds that an invitation to call for sales information does not provide a means of ordering the goods. If virtually all important aspects of the transaction must be worked out through channels outside the webpage, the page is not a point of sale. Read more: In re Siny Corp.: When a Webpage Specimen Is Just Advertising ›
Can businesses that close sales by phone ever use webpage specimens?: Possibly, but they need proof. The Board acknowledged that some industries consummate sales through personal contact, yet it requires reliable documentation, such as verified statements from personnel with actual knowledge of how customers order, showing the webpage itself is where the purchasing decision is made. Read more: In re Siny Corp.: When a Webpage Specimen Is Just Advertising ›
Did Steelbuilding.com win or lose?: Both, in a sense. It won vacatur of the genericness determination: the court held the term was not shown to be generic and that the Board had construed the genus too narrowly. 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). The disposition was VACATED-IN-PART and AFFIRMED-IN-PART, and the application stayed denied. 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. On descriptiveness, the Federal Circuit agreed that ".COM" means only that the services are performed in an online or e-commerce environment, which describes a feature of the services rather than identifying a source. The wrinkle is that in this same case the ".COM" did do work on genericness: the court held the TLD "expanded the meaning of the mark" to reach the site's design-and-price services, which is why the genericness finding was vacated. So a TLD is not automatically a nullity, but helping against genericness is not the same as creating distinctiveness. Read more: The Sliding Scale of Secondary Meaning: In re Steelbuilding.com and the Burden of Section 2(f) ›
What does failure to function as a mark actually mean?: It means the applied-for matter, as consumers actually encounter it, does not do the one job the Lanham Act requires: identifying and distinguishing a single source. The refusal is distinct from descriptiveness or genericness. Informational slogans, widely used phrases, and, as in Vox Populi, matter perceived as a mere component of a domain name can all fail to function even if they are not the generic name of anything. Read more: In re Vox Populi Registry Ltd.: When .SUCKS Fails to Function as a Mark ›
Can a top-level domain ever be registered as a trademark?: The Federal Circuit announced no per se bar. Consumer perception controls, the same principle the Supreme Court applied to generic.com names in USPTO v. Booking.com. A registry operator that can show consumers perceive its gTLD as identifying the source of registry services, or that a particular stylized display has acquired distinctiveness, could still succeed. Vox simply had no such evidence, and its own specimens used .SUCKS as a product, not a brand. Read more: In re Vox Populi Registry Ltd.: When .SUCKS Fails to Function as a Mark ›
Why did the pixelated font not save the application?: Stylization rescues unregistrable wording only if the design creates a commercial impression separate and apart from the words themselves. The Board found, and the court agreed, that every character in the mark was the same height and width in a font once dictated by the technological limits of early computer screens, so consumers would view the pixelated lettering as ordinary rather than source-identifying, and Vox never claimed acquired distinctiveness in the display. Read more: In re Vox Populi Registry Ltd.: When .SUCKS Fails to Function as a Mark ›
What did International News Service v. Associated Press actually hold?: It held that fresh, time-sensitive news is quasi property as between competitors, even though it is not copyrightable and is free for the public to use. A rival that systematically copied Associated Press bulletins and resold them to compete with AP committed unfair competition by misappropriation, reaping where it had not sown. The protection lasts only until the news loses its commercial value. Read more: INS v. AP: The Birth of Hot-News Misappropriation ›
Is INS v. AP still binding law today?: Not as federal common law. Erie Railroad Co. v. Tompkins in 1938 abolished the general federal common law on which INS rested, so the case no longer binds as federal precedent. The hot-news misappropriation doctrine survives only as state law, and in a narrowed form. NBA v. Motorola in 1997 reduced it to a five-element test that also must survive federal copyright preemption. Read more: INS v. AP: The Birth of Hot-News Misappropriation ›
What is the modern hot-news test after NBA v. Motorola?: The Second Circuit's five elements are: the plaintiff generates the information at a cost; the information is time-sensitive; the defendant's use is free-riding on the plaintiff's effort; the defendant is in direct competition with a product the plaintiff offers; and free-riding would so reduce the incentive to produce the information that its existence or quality would be substantially threatened. Barclays Capital v. Theflyonthewall.com later confirmed how easily copyright preemption defeats such claims. Read more: INS v. AP: The Birth of Hot-News Misappropriation ›
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 found the facts favored the mark owner but read Scott Paper to require secondary meaning in the defendant's market, which a plaintiff who had never sold there could never show, so it dismissed. The Third Circuit reversed, holding that proof of likelihood of confusion and proof of secondary meaning are indistinguishable in practice and that a mark owner need not enter the defendant's market to prevail, with the relationship of the goods and the likelihood of market expansion doing much of the work. 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 contributorily 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?: Not on the contributory infringement theory. The Supreme Court reversed the Second Circuit, which had held the generic makers liable under Section 32. 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. The Court remanded so the Second Circuit could independently review Ives's remaining Section 43(a) and state-law claims. 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 ›
What is reverse confusion in trademark law?: Reverse confusion occurs when a larger, better-known junior user adopts a mark similar to a smaller senior user's, and consumers come to believe the senior user's goods actually originate with the junior user. The harm is that the senior user loses control of its own identity and goodwill, submerged by the junior user's saturation of the market, even though the senior user used the mark first. Read more: Ironhawk v. Dropbox: How Reverse Confusion Reframes the Strength of a Mark ›
How did the Ninth Circuit apply the Sleekcraft factors in Ironhawk?: The court analyzed the eight Sleekcraft factors but adapted the strength inquiry for reverse confusion, weighing the conceptual strength of Ironhawk's SmartSync mark together with the commercial strength of Dropbox's junior use. It found genuine disputes of material fact on strength, similarity, proximity, and actual confusion, so summary judgment for Dropbox was improper and the case was sent back for trial. Read more: Ironhawk v. Dropbox: How Reverse Confusion Reframes the Strength of a Mark ›
Did Ironhawk win the case?: Ironhawk won the appeal, not the war. The Ninth Circuit reversed the grant of summary judgment, vacated the judgment, and remanded for trial, holding only that a reasonable jury could find a likelihood of reverse confusion. That reopened the case for trial on the merits; it did not decide that Dropbox had infringed. Read more: Ironhawk v. Dropbox: How Reverse Confusion Reframes the Strength of a Mark ›
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 rather than 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 ›
Why was KFC's approved-supplier requirement not an illegal tie?: Because franchisees were not required to buy a single unit of supplies from KFC itself, or from any source in which KFC had an interest or earned a commission. The court distinguished coercion to buy from the franchisor, which is a tie, from coercion to buy from approved sources, which is not, and found no evidence of the former. It then declined to treat approved-source requirements as a new per se offense, and rejected the rule-of-reason claim because Diversified offered no evidence of actual competitive effect. Read more: KFC v. Diversified Packaging: Approved Suppliers, Quality Control, and the Limits of Tying ›
How does this decision differ from Siegel v. Chicken Delight?: In Siegel, the Ninth Circuit found a per se unlawful tie because Chicken Delight charged no franchise fees or royalties and instead required franchisees to buy cookers, packaging, and food mixes directly from the franchisor at marked-up prices. KFC's system was different: franchisees never had to buy any supplies from KFC itself, and could purchase from any of ten approved sources. The contrast shows that an approved-source program that does not funnel purchases to the franchisor can avoid the tying problem. Read more: KFC v. Diversified Packaging: Approved Suppliers, Quality Control, and the Limits of Tying ›
Was Diversified's use of the KFC marks infringement?: Yes, but on narrow grounds. The Fifth Circuit expressly declined to decide whether using the marks on supplies, standing alone, would confuse anyone, noting that antitrust law bars a franchisor from stopping all competing suppliers from using marks it requires franchisees to display. It found infringement because Diversified's mark use was part of a larger scheme to mislead franchisees into thinking it was connected with or approved by KFC: cartons without Diversified's own name, ads in KFC's trade dress urging franchisees to buy direct and save, shipping cases bearing KFC's marks, part numbers rearranged from KFC's, and evasive answers about approval. Some franchisees were actually misled, and the court upheld the injunction in full. Read more: KFC v. Diversified Packaging: Approved Suppliers, Quality Control, and the Limits of Tying ›
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. His site therefore 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 ›
Does a business need locations in more than one state to register a federal trademark?: No. Larry Harmon confirms that services rendered at a single location can satisfy the Lanham Act's use in commerce requirement, so long as the services are rendered in a commerce Congress can regulate, such as serving customers who travel across state lines. Read more: Larry Harmon Pictures v. Williams Restaurant: One Barbecue Joint Is Enough for Use in Commerce ›
What evidence shows use in commerce for a single-location service business?: Concrete proof that out-of-state customers actually receive the services: guest registers showing visitor origins, affidavits from personnel who deal with customers, and records reflecting the share of business from interstate patrons. Williams supported its application with exactly this kind of evidence. Read more: Larry Harmon Pictures v. Williams Restaurant: One Barbecue Joint Is Enough for Use in Commerce ›
Did the decision give the restaurant rights against Bozo the Clown?: Not directly. The appeal decided only the registrability question raised in Harmon's opposition: whether Williams' use was use in commerce. Questions of confusion between the restaurant's BOZO'S mark and Harmon's clown-related marks were not before the Federal Circuit. Read more: Larry Harmon Pictures v. Williams Restaurant: One Barbecue Joint Is Enough for Use in Commerce ›
What is the Lever rule?: The Lever rule is the doctrine, named for Lever Bros. v. United States, that section 42 of the Lanham Act (15 U.S.C. § 1124) bars importation of gray market goods bearing a genuine foreign trademark when the goods are physically and materially different from the versions authorized for sale in the United States, even if the foreign maker is an affiliate of the U.S. trademark owner. Customs implements it through 19 C.F.R. § 133.23, which defines restricted gray market articles, and 19 C.F.R. § 133.2(e), under which owners of registered and recorded marks apply for Lever-rule protection. Read more: Lever Bros. v. United States: The Lever Rule and the Gray Market's Material-Difference Line ›
Are gray market goods the same as counterfeits?: No. A counterfeit bears a spurious mark applied without authorization, while a gray market good carries a mark that is genuine where the good was first sold; it simply entered the U.S. through unauthorized channels. Lever Bros. narrows the gap for materially different goods: the D.C. Circuit reasoned that a mark on a physically different foreign product is not genuine from the viewpoint of the American consumer, so the import can be excluded even though it is no forgery. Read more: Lever Bros. v. United States: The Lever Rule and the Gray Market's Material-Difference Line ›
How does a brand owner obtain Lever-rule protection from Customs?: The owner must first register the mark with the USPTO and record it with CBP, then apply for Lever-rule protection under 19 C.F.R. § 133.2(e) by describing the physical and material differences between the authorized U.S. goods and the gray market versions. Once CBP grants protection and publishes notice in the Customs Bulletin, differing imports are subject to detention under 19 C.F.R. § 133.23 unless the importer shows the goods are not materially different or attaches that section's disclaimer label stating the product is not authorized by the U.S. trademark owner and is physically and materially different. Read more: Lever Bros. v. United States: The Lever Rule and the Gray Market's Material-Difference Line ›
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, such as 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 established the fact of damage but never proved the amount: it produced neither its own lost sales in the telephone order market nor Bic's sales in that market, offering only total-sales figures for both. An injunction was the only remedy left. 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. Damages need not be calculated with absolute exactness, but a reasonable basis for computation must exist. A court will not award speculative damages, and a plaintiff who offers no adequate evidence of losses or of profits in the infringing market may recover nothing monetary. Read more: No Willfulness, No Profits: Lindy Pen v. Bic and the Limits of Trademark Recovery ›
Does a Madrid Protocol registration give priority in the United States without any U.S. sales?: Yes, as to priority. Under 15 U.S.C. § 1141f(b), a properly filed request for extension of protection is treated as constructive use of the mark, conferring nationwide priority as of the constructive-use date even before the registrant has sold anything in the United States. The Ninth Circuit held that Lodestar's right of priority ran from July 21, 2009, the section 66(b) constructive-use date, senior to Bacardi's November 2013 campaign. Read more: Lodestar v. Bacardi: What a Madrid Protocol Registration Is Actually Worth ›
If Lodestar had priority, why did it lose?: Priority only decides who is senior. To win an infringement claim the plaintiff still must prove a likelihood of confusion. The Ninth Circuit affirmed summary judgment for Bacardi because the marks were encountered in different ways, moved through different channels, and produced no evidence of actual confusion, so confusion was at most possible, not probable. Read more: Lodestar v. Bacardi: What a Madrid Protocol Registration Is Actually Worth ›
What was wrong with Lodestar's Untamed Revolutionary Rum line?: The court found that product was not a genuine commercial effort but an attempt to reserve rights in the mark after Bacardi's campaign began, so it excluded that use from the confusion analysis. The lesson is that constructive-use priority does not substitute for real, non-token use in commerce when you sue for infringement. Read more: Lodestar v. Bacardi: What a Madrid Protocol Registration Is Actually Worth ›
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 same statutory sum against each defendant separately, and combined those parallel awards exceeded the statutory ceiling. 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 a separate one. 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 continue to apply: distinctiveness, non-confusion, non-functionality, and the bars later upheld in Vidal. 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 affirmed summary judgment against Mattel's trademark infringement and dilution claims, holding the song a protected expressive use. Mattel did win one point: the court also affirmed summary judgment against MCA's defamation counterclaim, treating Mattel's accusations of theft as nonactionable rhetorical hyperbole. 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 almost entirely in Japanese, aimed at Japanese consumers, and did not sell products online at all. 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 the six categories of intellectual property defined in Section 101(35A), including patents, copyrights, and trade secrets, but not trademarks. 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 ›
Did the Trademark Modernization Act restore automatic injunctions in trademark cases?: No. The TMA gives a plaintiff who shows likely success a rebuttable presumption of irreparable harm, but under Nichino that presumption only shifts the burden of production. The defendant can burst it with a slight evidentiary showing, and the plaintiff always retains the ultimate burden of persuasion on every preliminary injunction factor. Read more: Nichino v. Valent: The TMA's Irreparable Harm Presumption Bursts Like a Bubble ›
What evidence is enough to rebut the TMA's presumption of irreparable harm?: Not much. The Third Circuit requires only evidence sufficient for a reasonable factfinder to conclude that the confusion shown is unlikely to cause irreparable injury. In Nichino, proof that pesticide buyers are sophisticated, price-aware purchasers who rely on expert recommendations met that light burden. A defendant cannot simply point to gaps in the plaintiff's proof, though; it must produce affirmative evidence of its own. Read more: Nichino v. Valent: The TMA's Irreparable Harm Presumption Bursts Like a Bubble ›
What should a trademark plaintiff do after the presumption is rebutted?: Treat the presumption as a bonus, not a plan. Once it bursts, the burden of production returns to the plaintiff, so the motion papers should include concrete evidence of irreparable harm from the start: lost customers, reputational damage, quality complaints, or survey and declaration evidence tying the confusion to injury that money cannot fix. Read more: Nichino v. Valent: The TMA's Irreparable Harm Presumption Bursts Like a Bubble ›
Why did it matter whether fame was measured in 1991 or 1994?: Dilution protection runs only against uses that begin after the plaintiff's mark becomes famous. Nissan Motor had strong evidence of fame by 1994, when nissan.com was registered, but the 1991 record was contested: surveys showed 65% consumer awareness, while more than 190 unaffiliated businesses also used the word Nissan. Moving the date back three years converted a summary judgment win into triable questions of fact. Read more: Nissan v. Nissan Computer: Dilution Fame Is Measured at the Defendant's First Use ›
Did Uzi Nissan lose the trademark infringement claim entirely?: No. The Ninth Circuit affirmed infringement liability only for automobile-related advertising on nissan.com, on an initial interest confusion theory. Non-automotive uses of the site, such as advertising his computer business, did not infringe because the goods differed significantly and Nissan is also a surname and a calendar month. Read more: Nissan v. Nissan Computer: Dilution Fame Is Measured at the Defendant's First Use ›
Is the Nissan fame-timing rule still good law after the Trademark Dilution Revision Act?: The core rule survives. The TDRA of 2006 still conditions relief on the defendant's use beginning after the plaintiff's mark became famous, so the defendant's first use remains the measuring date. The TDRA changed other parts of the analysis: it replaced the actual dilution requirement of Moseley with a likelihood of dilution standard and codified a household-name conception of fame by requiring recognition by the general consuming public of the United States. Read more: Nissan v. Nissan Computer: Dilution Fame Is Measured at the Defendant's First Use ›
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, and it never asked for any. PETA sought only an injunction and transfer of the domain. The court also noted that the ACPA withholds monetary remedies for domain names registered or used before its November 29, 1999 enactment, which would have barred damages anyway. PETA separately sought more than $276,000 in attorney's fees, and the Fourth Circuit affirmed the denial of that request because the case was not exceptional under 15 U.S.C. 1117(a). 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 does false suggestion of a connection under Section 2(a) require?: The Federal Circuit applies a four-part test: the mark is the same as or a close approximation of the other party's previously used name or identity; it points uniquely and unmistakably to that party; the party is not connected with the goods sold under the mark; and the party's name or reputation is famous enough that a connection would be presumed. All four elements must be met, and the challenger does not need to own its own U.S. trademark registration. Read more: Piano Factory v. Schiedmayer: False Suggestion of Connection and a Constitutional Test for the TTAB ›
Did the challenger have to own a U.S. trademark to win?: No. Section 2(a) protects a person or institution's name and identity, not only registered marks. Schiedmayer Celesta GmbH could seek cancellation even though it held no U.S. registration, because the statute guards against false suggestions of a connection with an identifiable party regardless of that party's own trademark filings. Read more: Piano Factory v. Schiedmayer: False Suggestion of Connection and a Constitutional Test for the TTAB ›
Are TTAB administrative trademark judges constitutionally appointed?: Yes. The Federal Circuit held that unlike the PTAB judges in United States v. Arthrex, TTAB administrative trademark judges are inferior officers because the USPTO Director has statutory authority to review and modify their decisions. That authority predates the Trademark Modernization Act of 2020, which the court said merely confirmed and did not alter it. Their appointment therefore does not violate the Appointments Clause. Read more: Piano Factory v. Schiedmayer: False Suggestion of Connection and a Constitutional Test for the TTAB ›
Why didn't Petrella and SCA Hygiene eliminate laches in trademark cases?: Those decisions rested on separation-of-powers concerns: courts may not use laches to override a statute of limitations Congress enacted. The Copyright Act and Patent Act each contain express limitations periods, so laches had no gap to fill. The Lanham Act contains no statute of limitations at all, and 15 U.S.C. § 1069 affirmatively makes laches a defense in inter partes proceedings, so the Ninth Circuit held the Supreme Court's rule simply does not apply to trademark claims. Read more: Pinkette v. Cosmetic Warriors: Laches Survives as a Full Trademark Defense After SCA Hygiene ›
Doesn't the five-year incontestability period in § 1064 work like a statute of limitations?: No. The Ninth Circuit explained that § 1064 never bars a cancellation petition; a petition may be filed at any time. The five-year mark only narrows the available grounds, from any ground that would have blocked registration to an enumerated list such as genericness, functionality, abandonment, and fraud. Because nothing is ever time-barred, there is no congressional limitations period for laches to override, and laches can defeat even a petition filed within the five-year window. Read more: Pinkette v. Cosmetic Warriors: Laches Survives as a Full Trademark Defense After SCA Hygiene ›
How long a delay creates a presumption of laches in the Ninth Circuit?: The court borrows the most analogous state statute of limitations, which for trademark claims arising in California is four years, and measures delay from when the plaintiff knew or should have known of its claim. Delay beyond that period creates a strong presumption in favor of laches; suing within it reverses the presumption. In Pinkette, constructive notice from the July 2010 registration started the clock, and CWL's June 2015 petition came almost five years later. Read more: Pinkette v. Cosmetic Warriors: Laches Survives as a Full Trademark Defense After SCA Hygiene ›
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 on laches alone: Polaroid knew of Polarad from 1945 but did not sue until late 1956. The court expressly found it unnecessary to decide whether Polarad's use infringed, and it limited the affirmance to Polarad's uses as far removed from optics and photography as they then were. 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 found for Coca-Cola in March 2016, concluding that POM had not proven the label deceived or was likely to deceive a substantial segment of consumers. 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, potentially yes. 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, which here was 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 Reebok v. Marnatech hold about the Lanham Act reaching foreign sales?: The Ninth Circuit applied the Timberlane comity factors and held the Lanham Act reached counterfeit Reebok sales in Mexican border towns because they had a direct effect on U.S. commerce, presented a cognizable injury, and involved U.S.-connected defendants without a real conflict with Mexican law. That effects-and-comity approach to extraterritoriality has since been displaced by the Supreme Court's 2023 decision in Abitron Austria v. Hetronic. Read more: Reebok v. Marnatech: Extraterritorial Reach and Asset Freezes in Counterfeiting ›
Is Reebok v. Marnatech still good law after Abitron?: Only in part. Its extraterritoriality holding, built on the Steele-derived Timberlane comity test, no longer states the governing standard after Abitron Austria v. Hetronic, which replaced circuit effects tests with a domestic "use in commerce" focus. But its separate holding upholding a pretrial asset freeze rests on the court's inherent equitable power and remains cited, subject to the limit in Grupo Mexicano. Read more: Reebok v. Marnatech: Extraterritorial Reach and Asset Freezes in Counterfeiting ›
Why could the court freeze the defendants' assets before final judgment?: Because the Lanham Act authorizes an equitable accounting and disgorgement of an infringer's profits as final relief, the court could use its inherent equitable power to issue provisional remedies, including an asset freeze, to preserve that ultimate remedy. The Supreme Court later held in Grupo Mexicano that such freezes are unavailable when a plaintiff seeks only money damages, so the power turns on the presence of an equitable claim. Read more: Reebok v. Marnatech: Extraterritorial Reach and Asset Freezes in Counterfeiting ›
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 vacated the judgment dismissing the action 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, Rescuecom voluntarily dismissed it in March 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' ›
Does an opposer need a commercial interest to bring a TTAB opposition?: No. Ritchie held that Section 13 of the Lanham Act requires only a real interest in the proceeding and a reasonable basis in fact for the belief of damage. A competitor's commercial stake satisfies the test easily, but the statute does not demand one, which is how a private citizen was allowed to oppose O.J. Simpson's applications. Read more: Ritchie v. Simpson: Who May Oppose a Trademark at the TTAB ›
Is Ritchie v. Simpson still good law after Corcamore?: Substantially, yes. Corcamore v. SFM (Fed. Cir. 2020) retired the standing label in favor of entitlement to a statutory cause of action under Lexmark, but it held the frameworks are not meaningfully different: the Board still asks whether the challenger has a real interest and a reasonable belief of damage. Curtin v. United Trademark Holdings (Fed. Cir. 2025) shows the modern framework can be less generous to purely consumer interests. Read more: Ritchie v. Simpson: Who May Oppose a Trademark at the TTAB ›
Could Ritchie's scandalousness claim be brought today?: No. The Supreme Court struck down the disparagement clause of Section 2(a) in Matal v. Tam (2017) and the immoral or scandalous clause in Iancu v. Brunetti (2019) as viewpoint discrimination under the First Amendment. The substantive ground Ritchie pleaded is gone, but the case's answer to who may be heard at the Board survives. Read more: Ritchie v. Simpson: Who May Oppose a Trademark at the TTAB ›
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 summary judgment for Apple and held that Apple was entitled to 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 set Steele aside as "narrow and fact-bound" and "of little assistance," because Steele involved both domestic conduct and a likelihood of domestic confusion and so did not say which of the two controls. 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 the Tea Rose-Rectanus doctrine?: It is the common-law rule, drawn from Hanover Star Milling v. Metcalf (1916) and United Drug v. Rectanus (1918), that trademark rights extend only where a mark is actually used and known. A junior user who adopts the same mark in good faith in a geographically remote market can acquire its own rights there. Stone Creek holds that in the Ninth Circuit, good faith requires that the junior user had no knowledge of the senior user's prior use. Read more: Stone Creek v. Omnia: Knowledge Defeats Good Faith in the Tea Rose-Rectanus Defense ›
Is Stone Creek's willfulness holding still good law?: No. The panel held that willfulness remained a prerequisite to disgorgement of a defendant's profits under 15 U.S.C. § 1117(a), but the Supreme Court abrogated that rule in Romag Fasteners v. Fossil (2020), holding willfulness is not an inflexible precondition. A defendant's mental state remains a highly important consideration in whether profits are awarded. The knowledge-defeats-good-faith holding is unaffected and remains circuit law. Read more: Stone Creek v. Omnia: Knowledge Defeats Good Faith in the Tea Rose-Rectanus Defense ›
Which courts follow the other side of the good-faith split?: The Fifth and Tenth Circuits ask a narrower question: whether the junior user acted with a design inimical to the senior user's interests, such as intent to trade on its goodwill, so mere knowledge is only a factor. The Seventh and Eighth Circuits, the TTAB, and now the Ninth Circuit hold that knowledge of the senior user's prior use by itself destroys good faith. The Supreme Court denied certiorari in 2018, leaving the split in place as of July 2026. Read more: Stone Creek v. Omnia: Knowledge Defeats Good Faith in the Tea Rose-Rectanus Defense ›
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 was registered for retail store services for diabetics, but the assignee used it as the title of a diet book. The Fifth Circuit held those uses were not sufficiently similar to carry the relevant goodwill, so the transfer was an assignment in gross, the purported service mark was invalid, 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. The point is 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 assumed, without deciding, that Timberland's criticisms of the district court's functionality analysis had merit, 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 drew the three factors from Steele v. Bulova. Applying them to Eaton, it found only the U.S.-commerce factor present, and said the absence of one of the other two factors might well be determinative and that the absence of both is certainly fatal. 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. ›
Why didn't the Rogers test protect the Wavy Baby?: Because MSCHF used Vans' marks and trade dress as source identifiers for its own competing shoe. Under Jack Daniel's, the Rogers threshold test is unavailable when a mark is used to designate the source of the defendant's goods, so the case proceeded straight to the ordinary likelihood-of-confusion analysis, which strongly favored Vans. Read more: Vans v. MSCHF: The Wavy Baby Gives Jack Daniel's Its First Appellate Test ›
Did Vans v. MSCHF eliminate parody as a trademark defense?: No. Parody remains relevant inside the confusion analysis, and a parody so obvious that no consumer could be confused should still prevail. The Second Circuit held only that a parodic message does not earn heightened First Amendment scrutiny when the parodist brands a competing product with the plaintiff's marks, and that a parody that leaves source confusion has failed for Lanham Act purposes. Read more: Vans v. MSCHF: The Wavy Baby Gives Jack Daniel's Its First Appellate Test ›
How did the litigation end?: The parties settled. In August 2024 they notified the Eastern District of New York that they had resolved the case, and Judge Kuntz entered a consent judgment with a permanent injunction barring MSCHF from marketing or selling the Wavy Baby. MSCHF acknowledged Vans' ownership of the asserted marks and trade dress, so the Second Circuit's opinion stands as final precedent. Read more: Vans v. MSCHF: The Wavy Baby Gives Jack Daniel's Its First Appellate Test ›
Was the decision really unanimous?: The judgment was 9-0: every Justice agreed the names clause is constitutional. But the reasoning fractured. Five Justices resolved the case on history and tradition, four would not, and the Court expressly declined to set a standard of review for content-based registration bars generally. (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 ›
Why did Virgin win when it did not sell telephones?: Because the Polaroid test protects a mark beyond the exact goods its owner sells. Virgin's registrations covered retail store services for consumer electronics, its stores sold related items like portable CD players, and it had concrete plans to sell phones and wireless service. Judge Leval explained the factors were designed for exactly this situation, where the junior user sells a somewhat different but proximate product. Read more: Virgin Enterprises v. Nawab: How Mark Strength Drives the Polaroid Analysis ›
What does the decision teach about choosing a trademark?: Arbitrary or fanciful marks earn the broadest protection. Because VIRGIN bears no intrinsic relationship to consumer electronics, consumers who saw the word on a wireless store had every reason to assume a connection with the famous brand. A merchant who picks a distinctive, non-descriptive mark buys itself a wider enforcement perimeter against neighboring uses. Read more: Virgin Enterprises v. Nawab: How Mark Strength Drives the Polaroid Analysis ›
What is dilution by blurring?: Dilution by blurring is the gradual weakening of a famous mark's ability to identify a single source when another business uses the same or a similar term. It does not require any likelihood of confusion or competition. The injury is that consumers begin to associate the famous mark with more than one thing, whittling away the mental one-to-one link between the mark and its owner. Read more: Visa v. JSL: Why a Common Dictionary Word Can Still Be Diluted by Blurring ›
Can a trademark built on a common word be diluted?: Yes. In Visa v. JSL the Ninth Circuit held that VISA was sufficiently distinctive because the card brand plays only weakly off the ordinary meaning of visa, and no third party had used the word as a mark. A famous mark that borrows a common word is still protected against a junior user who introduces a second trademark use of that word for some other good or service, even if that junior use also gestures at the word's dictionary meaning. What falls outside dilution law is using the word purely for its literal dictionary sense, such as an actual travel-visa service. Read more: Visa v. JSL: Why a Common Dictionary Word Can Still Be Diluted by Blurring ›
Did JSL argue that eVisa referred to travel documents?: Yes, and the court accepted that JSL's travel allusions were more obvious and heavy-handed than Visa's own. Its site showed the mark beside a passport-like booklet and used categories such as Travel Passport. It lost anyway. Gesturing at the dictionary meaning does not prevent blurring, because JSL still created a novel meaning for the word, using it as a trademark to identify a multilingual education business. The court affirmed summary judgment for Visa. Read more: Visa v. JSL: Why a Common Dictionary Word Can Still Be Diluted by Blurring ›
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 ›
Did Wallace lose all trademark rights in Grande Baroque?: No. The decision affirmed only the denial of a preliminary injunction against Godinger's baroque-styled line. Wallace kept its GRANDE BAROQUE word mark, and Judge Winter made clear that a precise expression of a decorative style can still be protected where secondary meaning exists and numerous alternative designs remain available to competitors. What Wallace could not do was fence off the basic scrolls, curls, and flowers of the baroque style itself. Read more: Wallace Silversmiths v. Godinger: Aesthetic Functionality and the Limits of Owning a Style ›
Is Wallace still good law after TrafFix?: Yes. In TrafFix Devices, Inc. v. Marketing Displays, Inc. (2001), the Supreme Court endorsed a competitive-necessity inquiry for aesthetic functionality, asking whether exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage. That is substantively the standard Wallace announced a decade earlier, and courts continue to cite Wallace as the doctrine's canonical application. Read more: Wallace Silversmiths v. Godinger: Aesthetic Functionality and the Limits of Owning a Style ›
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 ›
Are the four Zatarain's tests still used today?: Yes. Courts across the circuits continue to cite the dictionary, imagination, competitors' need, and third-party use tests when sorting descriptive from suggestive marks, and the USPTO's examination practice reflects the same considerations. No single test controls; they are converging lenses on how consumers and competitors actually use the words. Read more: Zatarain's v. Oak Grove Smokehouse: The Four Tests That Draw the Descriptive Line ›
If a descriptive mark has secondary meaning, how can competitors still use the words?: Because secondary meaning gives the owner rights only in the trademark significance of the term, not in its original descriptive sense. Under 15 U.S.C. § 1115(b)(4), a competitor may use the words fairly and in good faith solely to describe its own goods. Zatarain's is the classic application, and the Supreme Court later confirmed in KP Permanent Make-Up that fair use can exist even alongside some consumer confusion. Read more: Zatarain's v. Oak Grove Smokehouse: The Four Tests That Draw the Descriptive Line ›
Why was CHICK-FRI cancelled when FISH-FRI survived?: Both were descriptive, but only FISH-FRI had proof of secondary meaning, and even that proof was limited to the New Orleans area. CHICK-FRI was a newer product, used only since 1968, with no direct advertising campaign behind it and survey evidence the court found close to worthless, so Zatarain's could not show consumers associated the term with a single source. Without secondary meaning a descriptive registration cannot stand, and the court affirmed cancellation under 15 U.S.C. § 1119. Read more: Zatarain's v. Oak Grove Smokehouse: The Four Tests That Draw the Descriptive Line ›
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. Intent to use a mark, like a naked registration, establishes no rights at all, the court said. Under current law the way to reserve a mark before launch is a bona fide intent-to-use application, but that mechanism did not exist when the salon was making its sales, and the court expressly disregarded the 1988 amendments as inapplicable to this dispute. 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.