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Results for "Trademark appeal"
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Baseball was very good to Roberto: Lanham Act permits claims against government officials in personal capacity

by | Jan 29, 2026 |

In a decision addressing the intersection of trademark law, sovereign immunity, and constitutional takings, the US Court of Appeals for the First Circuit partially revived Lanham Act claims brought by the heirs of baseball legend Roberto Clemente against senior officials of the Commonwealth of Puerto Rico. While affirming dismissal of claims against the Commonwealth itself and related public entities, the Court concluded that certain Lanham Act claims against individual government officials in their personal capacities were plausibly alleged and not barred by qualified immunity at the pleading stage. Clemente Props., Inc. v. Pierluisi-Urrutia, Case No. 23-1922, 2026 WL 125574 (1st Cir. Jan. 16, 2026) (Barron, Lipez, Thompson, JJ.)

The plaintiffs, Clemente’s sons and affiliated entities, alleged that Commonwealth officials improperly used Clemente’s name and likeness on commemorative license plates and registration tags without authorization. Proceeds from the program were directed toward a public initiative intended to replace an earlier Clemente-founded project. Plaintiffs claimed trademark infringement, false endorsement, false advertising, and dilution under the Lanham Act, as well as a taking in violation of the Fifth and Fourteenth Amendments. Defendants moved to dismiss on immunity grounds and for failure to state a claim. The district court granted the motions in full. Plaintiffs appealed.

The First Circuit reversed in part. The Court rejected the district court’s conclusion that the use of Clemente’s name and image was not “in connection with” goods or services under the Lanham Act. The Court explained that commemorative license plates and tags qualify as goods, and the fact that they were issued by a government entity did not remove them from the statute’s commercial scope. The Court also pointed to the United States Patent and Trademark Office’s Trademark ID Manual, which expressly recognizes license plates as registrable goods, and found no persuasive basis for excluding fundraising activities supporting the Roberto Clemente Sports District Fund from trademark scrutiny.

The First Circuit further concluded that plaintiffs adequately alleged commercial injury within the Lanham Act’s zone of interests and plausibly pleaded likelihood of confusion, including the mistaken impression that the Clemente family endorsed or financially benefited from the initiative. Accordingly, dismissal of Lanham Act claims under Section 32 (trademark infringement), Section 43(a) (false endorsement), and Section 43(c) (dilution) was improper with regard to officials sued in their personal capacities.

Sovereign immunity remained a shield for the Commonwealth, the Convention Center District Authority, and officials sued in their official capacities. However, the First Circuit concluded that qualified immunity did not bar the personal-capacity Lanham Act claims at the pleading stage and thus vacated dismissal and remanded for further proceedings.

The First Circuit affirmed dismissal of the false advertising claim, determining that plaintiffs failed to allege that defendants’ statements constituted commercial advertising or promotion as required under Section 43(a)(1)(B). The Court also affirmed dismissal of the Takings Clause claim, concluding that alleged infringements of intangible intellectual property do not support a categorical physical-taking theory and cannot be analyzed using frameworks applicable to physical occupation or appropriation.

Finally, the First Circuit deemed waived any [...]

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All rise: Here comes the real judge

by | Jan 22, 2026 |

The US Court of Appeals for the Federal Circuit sustained the Trademark Trial & Appeal Board’s refusal to register trademark applications (over oppositions) for two character marks and a design mark based on the Board’s finding of likelihood of confusion with the common law rights of a world-famous baseball player and major league baseball’s players association  as supported by substantial evidence and consistent with trademark law. Chisena v. Major League Baseball Players Ass’n, Case No. 23-2073 (Fed. Cir. Jan. 8, 2026) (Hughes, Freeman, Lourie, JJ.) (nonprecedential).

Michael Chisena, acting pro se, sought trademark registration for two word marks, ALL RISE and HERE COMES THE JUDGE, and a design mark featuring a baseball field with a superimposed scale of justice and judge’s gavel (pictured below) (Chisena marks) for use in connection with “clothing, namely t-shirts, shirts, shorts, pants, sweatshirts, sweatpants, jackets, jerseys, athletic uniforms, and caps.”

Source: Chisena v. Major League Baseball Players Ass’n, Case No. 23-2073 (Fed. Cir. Jan. 8, 2026), Slip Op at 2.

Chisena filed intent to use applications and alleged that the constructive use priority date for the word marks was July 14, 2017, and for the design mark it was October 12, 2017. The Major League Baseball Players Association (MLBPA) and Aaron Judge, a superstar Yankees outfielder and team captain (collectively, appellees), filed Notices of Opposition against registration of the marks, which the Board consolidated into a single proceeding.

Judge is a well-known baseball player whose rise to fame prompted the commercialization of judicial slogans and insignia in connection with his baseball career. The appellees alleged that the Chisena marks would likely cause confusion with their marks, which include ALL RISE and certain judicial symbols. They argued that they had common law trademark rights that predated Chisena’s alleged priority dates. The Board found that the appellees established priority against the Chisena marks and that there was a likelihood of confusion between the marks and therefore refused to register the Chisena marks. Chisena appealed.

The Federal Circuit found that the Board’s priority decisions were supported by substantial evidence that appellees’ marks were used in commerce prior to the Chisena marks’ priority date. The Court concluded that the priority dates for the Chisena marks were the constructive use filing dates since Chisena did not use the marks in commerce until after he filed the applications. The Court further relied on licensed products bearing judicial slogans, phrases, symbols, and personal indicia related to Judge used as early as June 2017 in holding that appellees’ common law trademark rights predated the Chisena marks’ priority dates.

Chisena argued that appellees did not adequately identify the specific marks at issue in their Notices of Opposition. The Federal Circuit agreed with the Board that the notices provided fair notice because they adequately claimed ownership of the marks that served as the basis for the opposition and the basis for appellees’ priority claims.

Chisena argued that the appellees’ [...]

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Coffee, tea, or doctrine of foreign equivalents?

by | Dec 18, 2025 |

The US Court of Appeals for the Federal Circuit reversed a Trademark Trial & Appeal Board decision upholding refusal of the KAHWA mark for cafés and coffee shops, holding that the doctrine of foreign equivalents was inapplicable since KAHWA has a well-established alternative English meaning. In re Bayou Grande Coffee Roasting Co., Case No. 2024-1118 (Fed. Cir. Dec. 9, 2025) (Moore, Hughes, Stoll, JJ.)

In February 2021, Bayou applied to trademark KAHWA for cafés and coffee shops, claiming use since 2008. The examiner refused, deeming the mark generic or descriptive under the doctrine of foreign equivalents, asserting that KAHWA means “coffee” in Arabic. Bayou argued that it instead refers to a specific type of Kashmiri green tea not sold in US cafés or coffee shops. The examiner upheld refusals on both grounds and denied reconsideration.

On appeal, the Board affirmed the examiner’s refusals based on the Kashmiri green tea meaning but did not address the Arabic meaning. The Board found KAHWA generic and descriptive for cafés and coffee shops due to record evidence showing relevant customers regarded KAHWA as the generic description for a type of green tea beverage, and cafés and coffee shops serve a variety of tea beverages. Bayou appealed.

The Federal Circuit first determined that the Board’s generic and merely descriptive findings based on the Kashmiri green tea meaning did not constitute new grounds of rejection. The Court also reversed the Board’s generic and merely descriptive findings based on the Kashmiri green tea meaning.

The Federal Circuit concluded that the Board’s generic finding was not supported by substantial evidence because of undisputed evidence that no café or coffee shop in the United States sells kahwa. Therefore, whether relevant customers understood KAHWA to refer to a specific type of Kashmiri green tea was insufficient to establish genericness. The Court also held that the Board’s merely descriptive finding was not supported by substantial evidence because kahwa is neither a product/feature of café and coffee shop services nor a tea variety typically offered there. Moreover, registering KAHWA would not grant Bayou rights against cafés or coffee shops merely selling kahwa, and potential future sales were irrelevant to the descriptiveness analysis.

Finally, the Federal Circuit held that because KAHWA’s undisputed English meaning is Kashmiri green tea, translation was unnecessary, and the doctrine of foreign equivalents did not apply. Under the doctrine of foreign equivalents, a foreign mark may be translated into English to evaluate it for genericness or descriptiveness. However, translation is not required when consumers would not translate, or when the mark has a well‑established alternative meaning that makes the literal translation irrelevant.



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Game plan backfires: Mark cancelled

by | Dec 18, 2025 |

The US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s cancellation of a registration and dismissal of registrant’s opposition, finding that the cancellation petitioner had priority through a valid assignment of common law rights. Game Plan, Inc. v. Uninterrupted IP, LLC, Case No. 24-1407 (Fed. Cir. Dec. 10, 2025) (Reyna, Prost, Cunningham, JJ.)

Game Plan obtained a federal registration in 2018 for the stylized mark I AM MORE THAN AN ATHLETE. GP GAME PLAN covering charitable fundraising via t-shirt sales. Uninterrupted IP (UNIP) subsequently filed six intent-to-use (ITU) applications for marks incorporating I AM MORE THAN AN ATHLETE and MORE THAN AN ATHLETE for clothing and entertainment services. Game Plan opposed the ITU applications, asserting likelihood of confusion and priority under § 2(d) of the Lanham Act, and claimed common law rights in support of its opposition. UNIP denied any likelihood of confusion and counterclaimed to cancel Game Plan’s registration, asserting priority based on common law rights in MORE THAN AN ATHLETE that UNIP acquired through a 2019 asset purchase agreement (executed after Game Plan filed its Notice of Opposition) from More Than an Athlete (MTAA), which had used the mark since at least 2012, and MTAA’s founder.

The Board dismissed Game Plan’s opposition because it submitted no evidence during its trial period, explaining that Game Plan could not sustain its § 2(d) claims based on common law rights alone. The Board also found that UNIP had acquired valid and enforceable common law rights in the mark from MTAA and its founder and therefore held that UNIP had priority based on the 2019 assignment. Game Plan appealed.

Game Plan argued that the assignment was an invalid “assignment in gross” and violated 15 U.S.C. § 1060(a)(1) and 37 C.F.R. § 2.133(a). The Federal Circuit concluded that the assignment was not in gross because:

  • It expressly transferred “all of the goodwill of this business related to” the mark.
  • UNIP’s subsequent use was substantially similar to the assignor’s use.
  • The assignor remained engaged as a consultant, supporting continuity of goodwill.

The Federal Circuit further held that § 1060(a)(1) did not apply because UNIP did not assign its pending ITU applications. Rather, it received an assignment of existing common law rights to a mark in use. Likewise, the Court found that § 2.133(a) did not bar the Board’s priority determination because the Board relied on UNIP’s independent common law rights, which independently predated Game Plan’s filing date, rather than any amendment to UNIP’s application.

The Federal Circuit also affirmed the Board’s refusal to consider Game Plan’s evidence, noting that Game Plan was advised of the proper procedures for submitting evidence at trial but failed to follow those procedures. Game Plan attempted to rely on materials attached to its motion for summary judgment that were not reintroduced into evidence during the testimony period as required by Board rules. The Court concluded that the Board acted within its discretion to exclude the evidence not submitted during the designated [...]

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Institution decisions off limits: Federal Circuit rejects mandamus petitions based on due process, “settled expectations”

by | Dec 18, 2025 |

The US Court of Appeals for the Federal Circuit denied mandamus relief to three petitioners after the United States Patent and Trademark Office (USPTO) denied inter partes review (IPR) institution. The Court explained that Congress insulated the Director’s discretion from judicial review by making IPR institution determinations final and nonappealable, and that 35 U.S.C. § 314(d) bars virtually all judicial oversight. In re Cambridge Industries USA Inc., Case No. 2026-101; In re Sandisk Technologies, Inc., Case No. 2025-152; In re HighLevel, Inc., Case No. 2025-148 (Fed. Cir. Dec. 9, 2025) (nonprecedential) (Prost, Chen Hughes, JJ.)

The Federal Circuit acknowledged that while “colorable constitutional claims” may present an exception to the no judicial review clause, no such claims were raised in these cases. The petitioners failed to identify the kind of property interests or retroactivity concerns that could support either a colorable due process claim or an alternative avenue for relief.

Settled expectations

The lead case, In re Cambridge Industries USA, addressed the USPTO’s use of the “settled expectations” factor as a basis for discretionary denial. The agency denied institution on two patents that had been in force for seven and nine years, respectively, concluding that the patent owner had developed “settled expectations” in those long-standing rights. The companion petition, In re Sandisk Tech., involved patents that had been in force for nine and 12 years, and the USPTO reached the same conclusion.

The Federal Circuit declined to disturb either decision. The Court held that the petitioners had not shown that the settled expectations factor exceeded the USPTO’s statutory authority or that the agency’s application of the factor was unreasonable. It also rejected the argument that the USPTO had effectively created a “maximum-patent-age cap” on institution. Emphasizing the narrow scope of mandamus review, the Court reiterated that it was not deciding whether the USPTO’s actions were correct or statutorily permissible, but only that the petitioners failed to establish a “clear and indisputable right” to relief in light of Congress’s limits on judicial review of institution decisions.

Efficiency

In HighLevel, a district court had already found the challenged patents ineligible under 35 U.S.C. § 101. The Patent Trial & Appeal Board nonetheless denied IPR institution, determining that instituting review would not be an efficient use of agency or party resources and that the “efficiency and integrity of the patent system” were best served by declining review. The USPTO denied Director review.

The Federal Circuit rejected HighLevel’s contention that this decision violated due process, holding that HighLevel’s “mere reliance on the PTO evaluating its petition without regard to efficiency concerns arising from parallel litigation” was insufficient to establish a colorable constitutional claim.



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IPR estoppel doesn’t extend to ongoing ex parte reexamination

by | Dec 11, 2025 |

The US Court of Appeals for the Federal Circuit affirmed a decision by the Patent Trial & Appeal Board, concluding that inter partes review (IPR) estoppel under 35 U.S.C. § 315(e)(1) does not apply to ongoing ex parte reexamination proceedings and that the Board may retain jurisdiction over a patent even after its expiration. In re Gesture Tech. Partners, LLC, Case No. 25-1075 (Fed. Cir. Dec. 1, 2025) (Lourie, Bryson, Chen, JJ.)

Gesture Technology owns a patent covering methods and apparatus for rapid TV camera and computer-based sensing of objects and human input for applications such as handheld devices, automotive systems, and video games. Samsung requested ex parte reexamination, which the United States Patent & Trademark Office (USPTO) granted.

While the ex parte reexamination was pending, Unified Patents, an organization that includes Samsung as a member, filed two IPR petitions. After the Board issued a final written decisions on the IPRs, Gesture Technology petitioned to terminate the ex parte reexamination, asserting that Samsung was estopped under 35 U.S.C. §315(e)(1) from “maintain[ing] a proceeding” at the USPTO challenging the patent on grounds it could have raised in the IPRs. The USPTO denied the petition, concluding that the estoppel provision does not apply to continuing ex parte reexamination proceedings.

Gesture Technology appealed both IPR final written decisions where the Board invalidated all but two claims. In the ex parte reexamination, the examiner rejected the two remaining claims as anticipated by Liebermann, a patent directed to an electronic communication system designed for deaf individuals that enables real-time interaction using sign language and speech translation. The Board affirmed. Gesture Technology appealed.

Gesture Technology argued that:

  • Estoppel under 35 U.S.C. §315(e)(1) should bar the reexamination because Samsung had previously participated in an IPR.
  • The Board had no jurisdiction because the patent expired.
  • The Board erred in finding anticipation based on Liebermann.

The Federal Circuit rejected Gesture Technology’s estoppel argument, explaining that § 315(e)(1) applies to an IPR “petitioner” maintaining a proceeding before the USPTO. In contrast, under 35 U.S.C. § 305, the USPTO – not the requester – maintains an ex parte reexamination. Thus, estoppel does not bar ongoing ex parte reexamination proceedings.

Gesture Technology argued that Liebermann did not correlate information with a function of the apparatus because its sending function was always selected. The Federal Circuit disagreed, finding substantial evidence that Liebermann disclosed a transmitter/receiver device with a camera performing initial image processing and transmitting processed data. Liebermann’s description of reducing images to pertinent data and sending that data to a processing center supported the conclusion that its device correlated image information with a transmission function, satisfying the claim limitations.

Finally, the Federal Circuit concluded that the Board retains jurisdiction over ex parte reexaminations even after patent expiration. Patent owners maintain rights such as the ability to sue for past damages, creating a live case or controversy that an ex parte reexamination can resolve.

Practice note: Ex parte reexamination remains a viable tool for challengers even after an IPR concludes because estoppel [...]

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USPTO introduces voluntary search disclosure declarations in Board proceedings

by | Dec 4, 2025 |

The Director of the US Patent and Trademark Office (USPTO) issued a memorandum announcing a new initiative aimed at improving examination quality and transparency in Patent Trial & Appeal Board proceedings.

Effective immediately, petitioners in inter partes review (IPR) and post-grant review (PGR) proceedings may submit a search disclosure declaration (SDD) that explains in detail:

  • Databases and repositories consulted
  • Search approach, search terms, filters, queries, and classification pathways used
  • Analytics or publicly accessible resources referenced
  • Time spent searching and reviewing results
  • Any other relevant methodology details

The submission is voluntary, and petitioners that do not provide an SDD will not be penalized. However, when deciding whether to institute a proceeding, the Board will view submission of an SDD as a favorable discretionary factor, especially if the SDD reveals new or underutilized search pathways relevant to USPTO practices. The SDD may also help demonstrate potential USPTO error during examination, according to the memorandum.

The SDD can be filed confidentially under 37 C.F.R. § 42.14, with a motion to seal and request for in camera review. Protective orders must allow the USPTO to use the information for internal training and analytics. Confidential SDDs will not be publicly disclosed except as required by law, and deposition testimony related to an SDD will generally not be permitted.

Practice note: While optional, submitting an SDD can strengthen an IPR or PGR petition by signaling transparency and contributing to improved USPTO practices. Consider incorporating this step into your Board strategy, especially when leveraging sophisticated search tools or methodologies that the USPTO does not typically use during examination.



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Precedential shift: USPTO clarifies patentability of AI training methods

by | Nov 20, 2025 |

On November 4, 2025, the Director of the United States Patent and Trademark Office (USPTO) designated as precedential an appeals review panel (ARP) decision vacating the Patent Trial & Appeal Board’s § 101 rejection of claims directed to training machine learning models. Ex parte Desjardins, Appeal No. 24-000567 (ARP Sept. 26, 2025) (precedential).

The Board had previously concluded that claims covering continual learning techniques (such as adjusting model parameters to maintain performance across sequential tasks) were directed to an unpatentable abstract idea. The ARP, which included the USPTO Director, reversed that determination, holding that the claims integrated the abstract concept into a practical application by improving the functioning of machine learning models themselves. However, the ARP still rejected the claims under § 103 for obviousness.

Key takeaways

  • Technical improvements matter. Artificial intelligence (AI)-related inventions can satisfy Alice Step 2A when they demonstrate technical improvements, such as mitigating catastrophic forgetting and reducing storage complexity.
  • No blanket exclusion. The opinion cautions against categorically excluding AI innovations under § 101 and emphasizes that §§ 102, 103, and 112 remain the proper tools for assessing patent scope.
  • Precedential impact. The decision signals the USPTO’s commitment to aligning examination practices with US Court of Appeals for the Federal Circuit precedent while fostering innovation in AI and machine learning.

Practice note: For applicants, this precedential designation underscores the importance of framing AI-related claims around specific technical improvements rather than abstract concepts, which can be pivotal in overcoming § 101 challenges.



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Well, well, well: Indefinite claims turn out to be a typo

by | Nov 20, 2025 |

The US Court of Appeals for the Federal Circuit reversed a district court ruling that invalidated patent claims for indefiniteness, finding that the disputed language was a minor clerical error. Canatex Completion Solutions, Inc. v. Wellmatics, LLC, et al., Case No. 24-1466 (Fed. Cir. Nov. 12, 2025) (Moore, Prost, Taranto, JJ.)

Canatex sued Wellmatics and several GR Energy entities for infringing its patent directed to a releasable connection for a downhole tool string. The patent covers a two-part device used in oil and gas wells that allows operators to disconnect and retrieve the upper part of the tool string while leaving the lower part in the well if it becomes stuck.

The patent’s claims, abstract, and specification include the phrase “the connection profile of the second part.” During claim construction, the defendants argued that the phrase lacked an antecedent basis, rendering the claims indefinite. Canatex responded that the phrase should have read “the connection profile of the first part” and that a skilled artisan would immediately recognize the error. Canatex asked the district court to construe the phrase accordingly.

The district court disagreed, finding that the “pervasiveness of the error” in both the claims and the specification suggested that the error “was an intentional drafting choice and not an error at all.” The district court added that Canatex’s failure to seek correction from the United States Patent and Trademark Office suggested that the error was neither minor nor evident on the face of the patent. The district court found all asserted claims invalid for indefiniteness. Canatex appealed.

The Federal Circuit reversed. The Court found the error obvious and determined that a skilled artisan would recognize only one reasonable correction, which was changing “second” to “first.” The Court characterized the mistake as a minor clerical or typographical error and rejected arguments that alternative interpretations were plausible. The Court emphasized that its conclusion was consistent with the intrinsic evidence.



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Pick a lane: USPTO Director nixes IPR for inconsistent claim construction positions

by | Nov 20, 2025 |

The Director of the United States Patent and Trademark Office (USPTO) vacated a Patent Trial & Appeal Board decision instituting an inter partes review (IPR) proceeding after finding that the petitioner advanced inconsistent claim construction positions before the Board and in parallel district court litigation without adequate justification. Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00340 (PTAB Nov. 5, 2025) (Stewart, USPTO Dir.)

Intellectual Ventures II LLC (IV), the patent owner, requested director review of the Board’s decision granting institution, arguing that the decision should be reversed because Tesla, Inc., the petitioner, failed to adequately explain why it advanced inconsistent claim construction positions before the district court and the Board.

In the district court, Tesla opposed IV’s plain and ordinary meaning construction of the claim limitation “generating said target feature information from said data statistics” in independent claim 1. Tesla argued that the limitation was indefinite because a person of ordinary skill in the art could not determine its meaning and scope with reasonable certainty. In contrast, before the Board, Tesla asserted that “no claim term requires express construction” and that the challenged claims should be given their plain and ordinary meaning.

IV contended that Tesla’s justification (that it was statutorily prohibited from raising indefiniteness challenges in an IPR) was insufficient to explain the divergent positions. While the Board’s rules do not categorically prohibit petitioners from taking inconsistent claim construction positions across forums, petitioners must explain why those differences are warranted.

The Director agreed with IV, finding Tesla’s rationale inadequate. The Director explained that simply asserting that indefiniteness cannot be raised in an IPR does not explain why a petitioner should be permitted to raise inconsistent invalidity challenges in two forums. In vacating the institution decision, the Director emphasized that permitting such inconsistencies without proper justification would undermine the USPTO’s goal of “providing greater predictability and certainty in the patent system.”



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