Selected Trademark Trial & Appeal Board Representations

Each year, we litigate one of the country’s most extensive dockets of Opposition and Cancellation proceedings before the Trademark Trial and Appeal Board.

  • Swatch A.G. v. M.Z. Berger & Co., Inc.

    On behalf the owner of the SWATCH trademark for watches, we successfully opposed an application to register the mark iWATCH for watches. Applicant had applied to register the mark under Section 1(b) of the Trademark Act, which requires that applicant have a bona fide intention to use its mark in commerce. In a decision issued after trial, the TTAB held that applicant had failed to establish this threshold requirement. The TTAB’s opinion is one of only several Precedential Decisions issued by the TTAB every year.

  • Morninaga & Co. Ltd. v. Crown Confectionary Co. Ltd.

    Our client, a Japanese candy manufacturer, owned a trademark registration in the U.S. for the mark HI-CHEW for candy. Client’s competitor sought to register the mark MYCHEW in the U.S. for chewing gum, candy and related goods. We successfully represented client in Trademark Opposition Proceeding before the PTO’s Trademark Trial and Appeal Board. After trial, the TTAB issued decision holding that the MYCHEW mark was confusingly similar to client’s HI-CHEW mark.

  • Bel Brands USA, Inc. v. BC-USA, Inc.

    We successfully represented owner of BOURSIN trademark for cheese products in Cancellation Proceeding directed against competitor’s registration for design of the packaging used for ALOUETTE brand of cheese.

  • Swatch A.G. v. The Spark Agency

    Following trial and final hearing, we prevailed at the Trademark Trial and Appeal and successfully opposed registration of the trademark SW:TCH. In its decision, the Board endorsed our arguments that our client’s mark is famous and entitled to a broad scope of protection. The Board concluded that the applicant’s mark was likely to cause confusion, and sustained the Opposition under Section 2(d) of the Lanham Act.

  • Bostik, Inc. v. Mapei Inc.

    Our client applied to register ULTRA/BOND as trademark for adhesive used in installing floors and wall coverings. We defended client in Opposition Proceeding filed by owner of trademark ULTRA-SET used for construction industry-related adhesive product.

  • Del Laboratories, Inc. v. Loris Azzaro B.V.

    We successfully defended client, owner of trademark registration for mark CHROME AZZARO for perfumes, in Cancellation Proceeding initiated by competitor.

  • Omega S.A. v. Platts

    We represented client Omega S.A., owner of worldwide rights to the trademark OMEGA for watches, in successfully opposing application to register the trademark BROADARROW for watches and clocks.

  • Yves Saint Laurent Fashion B.V. v. Goldwater Hawaii, Inc.

    We represented French fashion house in successfully opposing registration of applicant’s mark SL & Design for jewelry on the ground that applicant’s mark was confusingly similar to client’s famous YSL trademark.

  • Kellogg Company v. Conopco, Inc.

    Client sought to register trademark NUTRIFLAKES for food ingredients. We successfully defended client in Opposition Proceeding brought by owner of NUTRI-GRAIN trademark for snack food bars.

  • The Andy Warhol Foundation for the Visual Arts, Inc. v. Carnegie Institute

    On behalf of our client, a not-for-profit foundation established under the will of the artist Andy Warhol, we successfully petitioned to cancel museum’s registrations for the marks THE WARHOL CAFÉ, THE WARHOL STORE and ANDY WARHOL.

  • The Velvet Underground v. The Andy Warhol Foundation for the Visual Arts, Inc.

    We successfully defended proceeding initiated by disbanded rock group opposing our client’s application to register Andy Warhol’s “Banana Design.”

  • Victoria’s Secret Stores Brand Management, Inc. v. Administration Lver Inc.

    Our client, a Canadian company, has applied to register the mark LA VIE EN ROSE for retail store services selling apparel, lingerie and related goods. We are defending client in Opposition Proceeding initiated by owner of trademarks VICTORIA’S SECRET PINK, PINK NATION and other “PINK” trademarks.

  • ETA SA Manufacture Horlogère Suisse v. A. Daigger and Company, Incorporated

    Our client manufacturers watches and clocks under the mark ETA. We represent client in opposing application to register the mark ETA HANDS2 MIND for stopwatches and other goods.

  • Carl Karcher Enterprises, Inc. v. Iberostar; Hoteles y Apartamentos, S.L.

    We are defending applicant in Opposition Proceeding initiated by owner of various “humanized star logos” used in connection with restaurant services.

  • Bel Brands USA, Inc. v. Norseland Incorporated

    We represent the owner of registered trademark SPREAD SMILES for cheese spreads in opposing competitor’s application to register UNLOCK A SMILE for cheese.

  • Chatham Imports, Inc. v. Washington Place LLC

    Our client has applied to register the mark KNOW THY FARMER for various goods, including beer, wine and distilled spirits. We are defending client in Opposition Proceeding initiated by owner of trademark FARMER’S for distilled spirits.

  • Maine Coast Sea Vegatables Inc. v. FarmSea Health LLC

    We successfully represented the Petitioner in this Cancellation Proceeding.

  • Swatch AG v. APAJ Holdings LLC

    We successfully opposed application to register METALSKIN for handbags on the ground that the mark was confusingly similar to our client’s mark SKIN for watches.

  • Edward B. Beharry & Co., Ltd. v. AFN Broker LLC

    We represented owner of intent-to-use applications for the marks CHAMPION for use with pasta and CHAMPION ICING SUGAR for use with sugar products in trademark Cancellation Proceeding against owner of registered mark CHAMPION for use with various consumable goods.

  • Mother Parker’s Tea & Coffee, Inc. v. Café Mystique, Inc.

    We defended our client in inter partes proceeding seeking to cancel client’s registered trademark CAFÉ MYSTIQUE COFFEE on grounds of abandonment. Case was resolved successfully; Petition to Cancel was withdrawn.

  • Kabushiki Kaisha Montbell v. Anton Pfanner

    We represented our Japanese client, Kabushiki Kaisha Montbell in a Cancellation action against the owner of a US trademark registration for mark KLIMA-AIR. A favorable settlement was negotiated and reached for our client.

  • Archie Comic Publications, Inc. v. Betty Rides, Inc.

    We represented our client, publisher of the Archie comic book series, in successfully opposing applicant’s attempt to register the mark BETTY RIDES for apparel and accessories.

  • Omega S.A. v. FaLanda Hanif

    On behalf of our client Omega S.A., we successfully opposed an application to register the mark OMEGA-OPOLY for board games. The TTAB issued a written opinion after trial, holding that Applicant’s mark OMEGA-OPOLY was likely to cause confusion with our client’s mark OMEGA for watches and related goods.

  • Framgord, Ltd. v. Martin Int’l. Corp.

    We successfully represented client in petitioning to cancel competitor’s trademark registration for non-use.

  • Luxury Goods Int’l (LGI) SA v. Shenzhen Shenchuang Electrical Appliance Co., Ltd.

    We represented our client, owner of the famous YSL trademark, in successfully opposing application to register trademark YSC.

  • Dayhoff LLC v. v The Great Juice Co.

    Our client owned intent-to-use application for the mark JUST JUICEE & Design for packaged fruit juice. We successfully defended Opposition Proceeding initiated by owner of registration for the mark JUST GUIDCEE for fruit-flavored candy.

  • Mapei Corporation v. AWI Licensing Company

    Our client owned registration for the mark BIOBLOCK for adhesives and related products used in connection with pool products. We successfully represented client in opposing competitor’s application to register BIOBLOCK for related goods.

  • Mapei Corporation v. AWI Licensing Co.

    We successfully represented the Opposer in this inter partes proceeding involving registration rights to the trademark BIOBLOCK.

  • Omega S.A. v. Oldenberg

    We successfully represented owner of OMEGA watch brand in opposing application to register OMEGA for golf bags and related goods.

  • L.F.P., Inc. v. John De Mol Produkties B.V.

    We successfully represented our client, an international television production company, in dispute over rights to the trademark BIG BROTHER.

  • L.F.P. Inc. v. John de Moi Produkties B.V.

    We represented Respondent in Opposition Proceeding involving trademark BIG BROTHER for various goods and services.

  • Crème Glacee Ital Gelaati Inc. v. Italgel Incorporated

    We represented owner of trademark ITAL GELATI for ice cream in opposing application to register confusingly similar mark for electric ice cream makers.

  • Societa Per Anzioni Chianti Ruffino Esportanzione Vinicola Toscana v. Jose A. Abrante, Jr.

    We successfully represented Opposer, owner of well-known wine brands, in Opposition Proceeding against competitor.