North Carolina Jury not Kind to Walmart in BACKYARD Lawsuit

About a month ago we talked about the trademark infringement loss Walmart suffered over its use of the BACKYARD GRILL mark. We reported that in the first case, Walmart was ordered to pay Variety Stores $32.5M. Walmart successfully appealed this decision and the case was retried before a jury. The jury found in favor of …

A New Trend for the Relatedness of Goods or Services Factor?

A recent Trademark Trial and Appeal Board decision involving car dealerships and car washes may signal a change in how the Board will assess the relatedness of goods or services likelihood of confusion factor. White Horse Auto, LLC filed a service mark application to register the mark WHITE HORSE AUTO (in standard characters) for “automobile …

TTAB Sides Heavily with the USPTO on Confusion in 2018

John Welch – author of The TTABlog – reviewed the Trademark Trial and Appeal Board decisions in 2018 that involved a likelihood of confusion refusal. He counted 219 decisions that involved a likelihood of confusion refusal. Two hundred of the 219 likelihood of confusion refusals were affirmed by the Trademark Trial and Appeal Board. Only …

Technical Goods Require Examination of the Actual Goods at Issue

Pick up a Trademark Trial and Appeal Board decision involving a likelihood of confusion refusal and will likely see the statement that the relatedness of goods factor must be decided based on goods or services as they are described in the applications or registrations at issue. No consideration is given the actual goods or services …

Walmart Loses Lengthy Trademark Infringement Lawsuit

Walmart’s recent trademark infringement lawsuit loss demonstrates the importance of trademark owners understanding their branding risk tolerance during the naming stage. In this case, Walmart had a high branding risk tolerance that will likely end up costing it millions of dollars. In about 2011, Walmart Stores went down the path of launching a new line …

Consumers likely to confuse Complimentary Goods Wine and Cigars

Joseph Phelps Vineyards, LLC won its appeal before the United States Court of Appeals for the Federal Circuit, and its case was remanded to the Trademark Trial and Appeal Board. This time the Board granted Joseph Phelps Vineyards’ petition for cancellation finding that wine and cigars are complimentary goods. Fairmont Holdings, Inc. sought to register …