The Precedential Decisions of the CAFC and the TTAB on Registrability Issues: July 2022 to June 2023

The latest issue of Allen's Trademark Digest includes a compilation of my capsule summaries of the precedential "Decisions of the Federal Circuit and the Trademark Trial and Appeal Board on Registrability Issues - July 2022 to June 2023." [download pdf here]. Set out below is my brief introduction to the compilation.

The CAFC issued three precedential decisions, two of which are of particular interest. In the APPLE JAZZ case, the court seemingly narrowed the doctrine of tacking in denying Apple’s claim of priority and awarding a victory to Opposer Bertini in his Section 2(d) opposition to APPLE MUSIC. In Spireon, the court hinted at a significant change in the burden of proof regarding third-party registrations and their impact on the strength of a plaintiff’s mark. At the TTAB, several celebrities enjoyed success – Prince, Lizzo, and Aaron Judge – but superhero Superman hit a brick wall in a quixotic Section 2(d) opposition. The Board ruled that an ordinary consumer lacks “standing” to oppose because she or he cannot satisfy the Lexmark test. And two “hotel configuration” cases decided on the same day provided a useful lesson on the distinctions between product design, product packaging, and “tertium quid.”

 

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Text Copyright John L. Welch 2023.