Category: Trademark Law

Trademark Law in the USA

Trademark Estoppel

Does trademark estoppel apply to licensees? In general, yes, but there are exceptions to trademark estoppel. Courts and the Trademark Trial and Appeal Board (“TTAB”) have held that licensee estoppel does apply to trademark licenses. For example, in A & M Wings, Inc., v. Glenn Thompson, Cancellation No. 92064044 (T.T.A.B. 2019), the TTAB applied licensee […]

Fraud on the PTO bars claim

Fraud on the PTO will bar claims for trademark infringement. In a 2016 decision between Amusement Art v Life is Beautiful LCC, a Federal District Court in California affirmed the principle that Fraud on the PTO will bar claims for trademark infringement: Between 2011 and 2012, Amusement Art filed eight ITUs for “Life is Beautiful” covering […]

Generic Trademark

A generic trademark is never entitled to trademark protection if it the generic name of goods or services on or in connection with which it has been used. A generic term can never become a trademark. “[N]o matter how much money and effort the user of a generic term has poured into promoting the sale […]

Nominative Fair Use Lanham Act

Nominative fair use is a legal doctrine that provides an affirmative defense to trademark infringement as enunciated by the United States Ninth Circuit, by which a person may use the trademark of another as a reference to describe the other product, or to compare it to their own. Nominative use may be considered to be either […]

Priority Date

The priority date for a trademark application or a PCT application is the date that the application was previously filed in a country of the Union of the Paris Convention. This previous filing date shall be within the past six months to claim a priority date in another country of the Union for industrial designs and trademarks. See part […]

Dawn Donut Rule

Is the Dawn Donut rule still good trademark law? Yes, in most circuits. Dawn Donut rule The Dawn Donut rule was first announced in the 1959 case of Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2nd Cir. 1959). The court asked, if the mark owner is not in the area (by sales or […]