®

Intellectual Property Year in Review

Trademarks

Erik Pelton®
Making trademarks bloom since 1999®
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Year in Review

Supreme case about obscenities

Costumed characters cause confusion?

TTAB: Failure to function on the rise

TTAB: Who has standing to challenge

descriptiveness/genericness? Everyone?
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Iancu v. Brunetti (formerly In re Brunetti)

• Hearing April 15th at U.S. Supreme Court

• Whether Section 2(a) of the Lanham Act’s prohibition on the
federal registration of “immoral” or “scandalous” marks is
facially invalid under the free speech clause of the First
Amendment
• Mark:

• Goods: Athletic apparel, namely, shirts, pants, jackets,

footwear, hats and caps; Children's and infant's apparel,
namely, jumpers, overall sleepwear, pajamas, rompers and
one-piece garments
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Viacom Int’l v. IJR Capital Invs., L.L.C.,

891 F.3d 178 (5th Cir. 2018)

• Issue(s): Fifth Circuit addressed: (1) whether Viacom established

ownership of the common law Krusty Krab mark through sales and
licensing; (2) whether Viacom’s mark has acquired distinctiveness;
and (3) whether IJR’s use of the mark creates a likelihood of
confusion as to source, affiliation, or sponsorship.

• Findings: (1) yes; (2) yes; (3) yes. Summary Judgment for Viacom
upheld.
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Curtin v. United Trademark Holdings, Inc.,

Opposition No. 91241083; TTAB Order Dec. 28, 2018
Disclaimer: EMP&A is counsel for Applicant

• Does a law school professor, acting as a ‘general consumer,’

have standing to oppose the mark RAPUNZEL for dolls and toy
figures on grounds of descriptiveness and genericness?

• Trademark Trial and Appeal Board (TTAB):

Yes.
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Disney Enters., Inc. v. Sarelli,

322 F. Supp. 3d 413 (S.D.N.Y. 2018)

• Issue on Summary Judgment: Whether there is trademark infringement

where a company offers themed entertainment party services that feature a
wide variety of costumed characters, which allude to well-known registered
characters, but consumers are not actually confused regarding the source of
the services?

• Holding: Likelihood of confusion claim dismissed at Summary Judgment;

case proceeding on Plaintiff’s claims of dilution and copyright infringement
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In re DePorter,
Serial No. 87229711 (T.T.A.B. Jan. 29, 2019) [precedential]

• Issue: Is standard character mark #MAGICNUMBER108 merely informational matter

that fails to function as a trademark to indicate the source of Applicant’s clothing
goods under Sections 1, 2 and 45 of the Trademark Act?

• TTAB Holding: Yes.

• Why significant: USPTO addressing many

issues regarding specimens of use, attempts
to register common phrases, and more.

• Recent USPTO initiatives: Post-registration audit; tip line to report

questionable specimens; and going to require foreign applicants to have US
counsel.
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Royal Crown Co., Inc., et al. v. The Coca-Cola Co.,

No. 2016-2375, slip op. at 9, 16 (Fed. Cir. June 20, 2018)

• Issue: Whether the term ZERO in Coca-Cola’s mark, if not

generic, is at least highly descriptive and thus ineligible of
trademark registration..

• Holding: The Federal Circuit reversed the decision of the

Trademark Trial and Appeal Board (the “Board”), holding that
the Board committed multiple errors when analyzing whether
Coca-Cola’s use of the term ZERO in 17 trademark applications
was generic or highly descriptive and remanded the case.
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Other Trends

• Filings at USPTO have increased for 10 several years in a row;

first signs of a slowdown over the last few months
• Filings for CBD and hemp products now (likely) permissible
under Farm Act changes
• Scams continue to target trademark owners – warn your clients!
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Thank You!

www.ErikPelton.com erik@erikpelton.com
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