Trademark Year in Review: Understanding Key 2020 Trademark Decisions and Their Impact On Your Practice

Generic + TLD Marks, Profit Disgorgement, Color Marks, Standing in TTAB Proceedings, Failure-to-Function Refusals, and Bona Fide Intent

Recording of a 90-minute premium CLE video webinar with Q&A


Conducted on Tuesday, April 27, 2021

Recorded event now available

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Course Materials

This CLE course will examine key 2020 decisions from the U.S. Supreme Court, U.S. Court of Appeals for the Federal Circuit, and Trademark Trial and Appeal Board (TTAB). The panel will discuss best practices to incorporate these decisions into trademark registration and trademark enforcement strategies.

Description

In 2020, the Supreme Court held in U.S. Patent and Trademark Office v. Booking.com B.V. (U.S. 2020) that a trademark or service mark composed of a generic word (Booking) and a generic top-level domain (.com) could qualify for federal registration if consumers view the combination as a unique source identifier of goods or services and not merely a combination of generic terms.

The U.S. Supreme Court addressed the required showing for a disgorgement of a trademark infringer's profits in Romag Fasteners v. Fossil Group (U.S. 2020), resolving a circuit court split and holding that proof of willful infringement is not required before a court can order disgorgement of a trademark infringer's profits.

The Federal Circuit was also busy in 2020, issuing decisions related to the registrability of colors for product packaging in In re Forney Industries Inc. (Fed. Cir. 2020) and addressing the requirements for entitlement to a statutory cause of action in a TTAB proceeding (formerly known as standing) in Australian Therapeutic Supplies Pty. Ltd. v. Naked TM LLC (Fed. Cir. 2020).

In 2020, the TTAB issued more precedential decisions related to ex parte failure-to-function refusals than any other type of ex parte refusal. The failure-to-function decisions addressed commonly-used phrases, gTLDs as marks, and even a motion mark. The TTAB also examined the bona fide intent requirement for Section 66(a) applications in a precedential inter partes decision.

Listen as our authoritative panel of trademark and brand management attorneys examines key decisions from the past year and discusses important trademark prosecution and enforcement trends and strategies.

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Outline

  1. Supreme Court decisions
  2. Federal Circuit decisions
  3. Select precedential TTAB decisions
  4. Trademark prosecution and enforcement trends and strategies

Benefits

The panel will review these and other important issues:

  • Key trademark decisions in the Supreme Court and Federal Circuit and the impact on trademark registration and enforcement best practices and TTAB practice
  • Impact of recent TTAB decisions on bona fide intent to use and trademark use
  • How to adapt your trademark registration and enforcement best practices going forward

Faculty

Bannigan, Megan
Megan K. Bannigan

Partner
Debevoise & Plimpton

Ms. Bannigan specializes in trademark, copyright, false advertising, rights of publicity, licensing and other...  |  Read More

Feldman, Joel
Joel Feldman

Shareholder
Greenberg Traurig

Mr. Feldman, Vice Chair of the firm’s Trademark & Brand Management Group, counsels companies, organizations,...  |  Read More

Marvel, Janet
Janet A. Marvel

Partner
Pattishall McAuliffe Newbury Hilliard & Geraldson

Ms. Marvel protects brands, copyrighted works and domain names throughout the world. As part of her practice, Ms....  |  Read More

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