Monthly Archives: April 2023

GAMEGUARDIAN Not to be Confused with GUARDIAN GAMES

Two marks could be confusingly similar where they share the same words “in reverse or transposed order.” Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d 557, at *39 (TTAB 2022) (finding MADE IN NATURE and NATURE MADE to be similar and noting that “[w]here transposed marks convey similar commercial impressions, likelihood of confusion is […]

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Intangible or Virtual Goods Are Still Goods Under Lanham Act

Non-fungible tokens (“NFTs”) are intangible but are eligible for trademark protection. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), does not require a different result. The Central District of California in Yuga Labs Inc. v. Ripps, No. 2:22-cv-04355 (C.D. Cal. Apr. 21, 2023) recently agreed with the Southern District of New […]

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Correcting Owner Details to Avoid Being Void Ab Initio

A use-based trademark application filed under Section 1(a) of the Trademark Act, 15 U.S.C § 1051(a), must be filed by the owner of the mark. Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1303 (TTAB 2015) (“Only the owner of the mark may file an application.”). If the applicant for a use-based application was not the […]

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ULTRA SUN Offer for Sale Not Enough for Use in Commerce

With the exception of registrations issued pursuant to international conventions, a federal trademark registration will not issue until a proper statement of use in commerce is filed with the USPTO. “Trademark rights arise from the use of a mark in commerce.” Bertini v. Apple Inc., ___ F.4th ___, 2023 USPQ2d 407, at *2 (Fed. Cir. […]

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Enabling an Inherent Upper Limit

A patent’s specification must describe the invention and “the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same.” 35 U.S.C. § 112(a). For enablement, “the specification […]

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