Posts Tagged: "genericide"

Recent Trademark Developments: Four Cases Shaping the Law in the United States and Beyond

Trademark law has seen substantial developments in 2019 and 2020, with four major cases in the United States and Europe rising to the top. The U.S. Supreme Court (SCOTUS) issued two of those decisions, the most recent being especially significant because the court has not opined on the topic of trademark genericism in nearly 100 years. The other SCOTUS case dealt with the hotly contested topic of awarding profits obtained through innocent (unknowing) trademark infringement.

Lessons from GRUYERE: A Roadmap for Proving Genericness from the TTAB

Following the widely discussed BOOKING.COM Supreme Court genericness case, the Trademark Trial and Appeal Board (Board) took up a genericness case of its own. Int’l. Dairy et al. v. Interprofessionnel du Gruy?re addresses whether a geographic certification mark for GRUYERE is generic for cheese or eligible for registration as a certification mark. In addition to providing an extensive roadmap for how to prove a genericness claim, the case may also be of interest to food and beverage industry applicants seeking to obtain and enforce certification marks.

Federal Circuit Finds TTAB Erred In Determining Genericnessof Coca-Cola’s ZERO Trademarks

On Wednesday, June 30th, the Court of Appeals for the Federal Circuit issued a decision in Royal Crown Company, Inc., et. al. v. The Coca-Cola Company which vacated and remanded an earlier decision by the Trademark Trial and Appeal Board (TTAB) regarding the use of “ZERO” trademarks on soft drink beverages marketed by Coca-Cola. The Federal Circuit panel, consisting of Circuit Judges Pauline Newman, Kathleen O’Malley and Richard Taranto, found that the TTAB had erred in its legal framing of the question regarding the claimed genericness of Coca-Cola’s mark and failed to determine whether the mark was at least highly descriptive if not generic.

San Diego Comic Con succeeds on several motions in trademark infringement case against Salt Lake City Comic Con event organizers

On September 12th, Judge Anthony Battaglia of the Southern District of California entered an order granting motions made by the San Diego Comic Convention in a trademark case over the use of the Comic-Con title on pop culture conventions. The order also denies motions made by a Utah-based entity which has presented a biannual Salt Lake Comic Con since 2013… The recent order entered in the Southern California case denied Dan Farr Productions’ motion to exclude testimony from an expert witness testifying for plaintiff San Diego Comic Convention while also granting a motion by San Diego to deny an expert presented by Dan Farr. Dan Farr tried to argue that San Diego’s expert witness, which included the results of a Teflon survey on the generic nature of the term “Comic-Con”, as such evidence only matters in genericide cases and not where the trademark was generic prior to the owner’s use. However, the defendant’s own pleading in the counterclaim, where it asserted a defense of generic mark, and the court found the evidence to be relevant to the case.