Above the Fold Intellectual Property Blog
Melissa is a regular contributor to Above the Fold, a blog that focuses on trends and developments in the law of advertising, trademarks and copyrights. Authored by attorneys in Fox Rothschild’s Litigation and Intellectual Property practice groups, the blog offers insights and analysis on the latest court rulings in advertising disputes as well as actions taken by the Federal Trade Commission, the U.S. Patent and Trademark Office, the Trademark Trial and Appeal Board and the Better Business Bureau’s National Advertising Division.
Recent Blog Posts
TTAB Practitioners Beware: TTAB Dismissals With Prejudice, but Without Judgment, Can Support a Claim Preclusion Defense
In a recent precedential cancellation decision, the Trademark Trial and Appeal Board (“Board”) partially granted Respondent’s motion for summary judgment, holding that the parties’ stipulation that prior proceedings between them be dismissed “WITH PREJUDICE, with CONSENT of both parties, and without the entry of judgment against either party,” was sufficient to support a claim preclusion... Continue Reading…More
The U.S. Supreme Court Unanimously Rules That Successful Trademark Plaintiffs Cannot Recover Profits from Named Defendants’ Affiliates Without Suing the Affiliates Themselves
On February 26, 2025, the U.S. Supreme Court unanimously vacated a nearly $43 million award in a trademark dispute that raised the question of whether a defendant’s affiliates could be held liable for payment of a disgorged profits award even if they were not named as defendants in the case. In a decision authored by... Continue Reading…More
The First U.S. AI Copyright “Fair Use” Ruling Favors Copyright Owners
Yesterday, in the first U.S. ruling on the closely scrutinized question of fair use in the AI-related copyright litigation context, U.S. Circuit Judge Stephanos Bilbas, sitting in the U.S. District Court for the District of Delaware by designation from the Third Circuit, held that U.S. copyright law did not permit Thomson Reuters’s now-defunct former competitor,... Continue Reading…More
Fair Warning to Parties Choosing to Flout TTAB Discovery Orders: Comply or Suffer the Consequences
On January 23, 2023, the Trademark Trial and Appeal Board (the “Board”) issued a harsh reminder to parties of the potential adverse consequences of ignoring their discovery obligations and failing to comply with Board discovery orders. While the Board typically affords pro se parties a bit more leeway than those represented by counsel, it reached... Continue Reading…More
The Federal Circuit Deals Another Blow to the Lanham Act, Finding Section 2(c) Unconstitutional as Applied to a Refusal to Register TRUMP TOO SMALL
Last week, the United States Court of Appeals for the Federal Circuit (“CAFC”) reversed a TTAB decision affirming a refusal to register the phrase TRUMP TOO SMALL because it “comprises the name of [former] President Donald Trump without his consent,” striking yet another blow to the constitutionality of Section 2 of the Lanham Act. Steve... Continue Reading…More
The TTAB: Service Mark Use Requires More Than Just Preparation
On December 10, 2021, the TTAB issued a precedential decision reminding trademark practitioners and applicants that service mark use requires that an applicant actually render the services recited in the trademark application; mere preparation to render the services is insufficient. Alessandra Suuberg filed a use-based application to register the mark HAVE SOME DECENCY in connection... Continue Reading…More
The USPTO Issues Regulations Implementing the Trademark Modernization Act of 2020
Today, the USPTO issued regulations implementing the provisions of the Trademark Modernization Act of 2020 (“TMA”). The Regulations can be found here. Practitioners should review the Regulations as soon as possible to familiarize themselves with the new Rules. Practitioners should take notice that the majority of the of the provisions take effect December 18, 2021. ... Continue Reading…More
The TTAB: “Knowing Intent to Deceive” is the Lynchpin of A Fraud Claim
All TTAB practitioners are familiar with the heightened standard of proof required to prove fraud before the USPTO. However, many forget that proving an intent to deceive the USPTO, not the falsity of the statement or its materiality, is the lynchpin of every fraud claim. In a recent decision, the TTAB reminded practitioners of this... Continue Reading…More
Be Precise When Expressly Abandoning a Trademark Application or Face the Consequences
In a recent precedential decision, the Trademark Trial and Appeal Board (“TTAB”) cautioned practitioners to be careful what they ask for and to draft their filings accordingly. On September 8, 2021, the TTAB denied Applicant Grüne Erde Beteiligungs GmbH’s (“Grüne Erde”) motion for relief from judgment following its express abandonment of its opposed multi-class application... Continue Reading…More
Precedential TTAB Decision Revisits Claim and Issue Preclusion
In a recent precedential decision, the TTAB again revisited the doctrines of claim and issue preclusion. Valvoline Licensing & Intellectual Property LLC (“Valvoline”) opposed Sunpoint International Group USA Corp.’s (“Sunpoint”) application to register the mark MAXVOLINE on the sole ground of likelihood of confusion. Sunpoint moved for summary judgment based on the defense of res... Continue Reading…More
