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Waiver in PTO Trademark Appeals Applies “Per Decision, Not Per Case”

by Paul Devinsky | Mar 24, 2021 | Trademarks

Addressing a “narrow question of statutory interpretation,” the US Court of Appeals for the Fourth Circuit reversed the district court’s dismissal of a trademark case for lack of subject matter jurisdiction, holding that a party that appeals a Trademark Trial & Appeal Board (TTAB) decision to the US Court of Appeals for the Federal Circuit may, after remand to and issuance of a new decision by the TTAB, seek review of the new decision in federal district court. Snyder’s-Lance, Inc. v. Frito-Lay N.A., Inc., Case No. 19-2316 (4th Cir. Mar. 17, 2021) (Wynn, J.)

Princeton Vanguard, a snack food producer, applied to register its mark “Pretzel Crisps” on the principal register. Frito-Lay opposed. The TTAB denied Princeton Vanguard’s application, concluding that the mark was generic.

Under the Lanham Act, Princeton Vanguard could appeal the TTAB’s original decision to either the Federal Circuit under 15 USC § 1071(a) or federal district court under § 1071(b). Princeton Vanguard elected a direct appeal to the Federal Circuit pursuant to § 1071(a), thus waiving its right to district court review. The Federal Circuit concluded that the TTAB applied the wrong legal standard in evaluating whether Princeton Vanguard’s mark was generic and remanded the case to the TTAB. The TTAB again concluded that Princeton Vanguard’s mark was generic. This time, Princeton Vanguard appealed to a federal district court pursuant to § 1071(b).

The district court sua sponte dismissed the case for lack of subject matter jurisdiction, concluding that Princeton Vanguard’s appeal of the original decision to the Federal Circuit pursuant to § 1071(a) precluded Princeton Vanguard from appealing the second decision to a district court pursuant to § 1071(b). Princeton Vanguard appealed.

On appeal, the Fourth Circuit concluded that the statutory text of the Lanham Act supported Princeton Vanguard’s argument in favor of jurisdiction. The Court explained that Princeton Vanguard’s waiver of its right to district court review of the original TTAB decision pursuant to § 1071(a) did not apply to any subsequent decisions in the same case, and that the waiver applied “per decision, but not per case.”

The Court rejected Frito-Lay’s argument that Princeton Vanguard was taking a second bite at the apple by seeking re-review in federal district court of issues already decided by the Federal Circuit, reasoning that Princeton Vanguard was seeking district court review of the second, separate decision that had not been reviewed by the Federal Circuit. The Court stressed, however, that the Federal Circuit’s review of the TTAB’s original decision was binding as to issues it decided.

Practice Note: If the TTAB issues multiple decisions in the same proceeding, each decision is considered a separate decision for purposes of waiver under §§ 1071(a) (b), even if the decisions implicate similar issues.

Trademark Trial & Appeal Board Gets a DuPont 101 Lesson

by Eleanor B. Atkins | Feb 22, 2024 | Trademarks

Addressing errors in the Trademark Trial & Appeal Board’s likelihood of confusion analysis in a cancellation action, the US Court of Appeals for the Federal Circuit vacated and remanded, holding that the Board erred by failing to give sufficient weight to the first DuPont factor (similarity of the marks) and failing to consider the relevant evidence for the third (similarity of established trade channels). Naterra International, Inc. v. Samah Bensalem, Case No. 22-1872 (Fed. Cir. Feb. 15, 2024) (Moore, Stoll, Cunningham, JJ.)

In 2020, Naterra International filed a petition to cancel Samah Bensalem’s registration for BABIES’ MAGIC TEA for use in connection with “medicated tea for babies that treats colic and gas and helps babies sleep better” based on a likelihood of confusion with Naterra’s multiple registrations for BABY MAGIC for use in connection with infant toiletry products such as lotion and baby shampoo. The Board denied Naterra’s petition, finding that Naterra failed to prove a likelihood of confusion. The Board found that while the first DuPont likelihood of confusion factor (similarity of the marks) weighed in favor of a likelihood of confusion, factors two (similarity of the goods) and three (similarity of established trade channels) did not, and Naterra’s BABY MAGIC mark “fell somewhere in the middle” for factor five (fame of the prior mark). The Board found that factors four (conditions of purchasing), six (number and nature of similar marks in use on similar goods), eight (length of time and conditions of concurrent use without evidence of actual confusion), 10 (market interface between applicant and owner of a prior mark) and 12 (extent of potential confusion) were neutral. Naterra appealed.

Naterra argued “that substantial evidence does not support the Board’s finding that the similarity and nature of the goods (DuPont factor two) and trade channels (DuPont factor three) disfavor a likelihood of confusion,” and that the Board did not properly weigh the first (similarity of the marks) and fifth (fame of the prior mark) DuPont factors.

DuPont Factor Two – Relatedness of the Goods

The Board rejected Naterra’s expert testimony that other so-called “umbrella” baby brands offered both infant skincare products and ingestible products, calling it “unsupported by underlying evidence.” The Federal Circuit disagreed, stating that “testimony that third-party companies sell both types of goods is pertinent to the relatedness of the goods.” Nonetheless, because the Court could not determine whether the Board rejected the expert testimony for other reasons, it remanded the case for further consideration and explanation of its analysis on this point.

DuPont Factor Three – Similarity of Trade Channels

The Board found that the third factor weighed against a likelihood of confusion, stating that it lacked the “persuasive evidence” necessary to “conclude that the trade channels are the same.” The Federal Circuit found that the Board erred by not addressing relevant evidence, namely Bensalem’s admission that the parties’ goods were sold in similar trade channels. The Court also noted that the Board “did not identify in its decision any evidence showing a lack of [...]

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A Primer on Practice at the Trademark Trial & Appeal Board

by Paul Devinsky | Jun 30, 2022 | Trademarks

In a precedential decision rendered in an opposition proceeding, the Trademark Trial & Appeal Board (Board) took the lawyers for each side to task for ignoring Board rules in presentation of their case, but ultimately decided the case on a likelihood of confusion analysis. The Board found that the parties’ marks and goods were “highly similar” and sustained the opposition. Made in Nature, LLC v. Pharmavite LLC, Opposition Nos. 91223352; 91223683; 91227387 (June 15, 2022, TTAB) (Wellington, Heasley and Hudis, ALJs) (precedential).

Pharmavite sought registration of the standard character mark NATURE MADE for various foods and beverages based on allegations of bone fide intent to use in commerce. Made in Nature (MIN) opposed on the ground that Pharmavite’s mark so resembled MIN’s registered and common law “Made In Nature” marks as to cause a likelihood of confusion when used on the goods for which registration was sought.

In its brief to the Board, Pharmavite raised, for the first time, the Morehouse (or prior registration) defense. MIN objected to the Morehouse defense as untimely. The Board agreed, noting that defense is “an equitable defense, to the effect that if the opposer cannot be further injured because there already exists an injurious registration, the opposer cannot object to an additional registration that does not add to the injury.” The party asserting a Morehouse defense must show that it “has an existing registration [or registrations] of the same mark[s] for the same goods” (emphasis in original).

Here, the Board found that this defense was not tried by the parties’ express consent and that implied consent “can be found only where the non-offering party (1) raised no objection to the introduction of evidence on the issue, and (2) was fairly apprised that the evidence was being offered in support of the issue.” In this case, Pharmavite did introduce into the record its prior NATURE MADE registrations but only for the purpose of supporting Pharmavite’s “[r]ight to exclude; use and strength of Applicant’s mark.” The Board found that this inclusion did not provide notice of reliance on the Morehouse or prior registration defense at trial.

In sustaining the opposition, the Board commented extensively on the record and how it was used, “[s]o that the parties, their counsel and perhaps other parties in future proceedings can benefit and possibly reduce their litigation costs.”

Over-Designation of the Record as Confidential

The Board criticized the parties for over-designating as confidential large portions of the record, warning that only the specific “exhibits, declaration passages or deposition transcript pages that truly disclosed confidential information should have been filed under seal under a protective order.” If a party over-designates material as confidential, “the Board will not be bound by the party’s designation.”

Duplicative Evidence

The Board criticized the parties for filing “duplicative evidence by different methods of introduction; for example, once by Notice of Reliance and again by way of an exhibit to a testimony declaration or testimony deposition.” The Board noted that such practice is viewed “with disfavor.”

Overuse of [...]

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Alleged Trademark Infringer Remains Hog-Tied after Appeal

by Paul Devinsky | Feb 3, 2022 | Trademarks
The US Court of Appeals for the Tenth Circuit dismissed an appeal of a district court order denying a stay of a federal action for lack of jurisdiction under 28 U.S.C. § 1291 and reversed in part the district court’s grant of a preliminary injunction. The Trial Lawyers College v. Gerry Spence Trial Lawyers College at Thunderhead Ranch, Case No. 20-8038 (10th Cir. Jan. 27, 2022) (Bacharach, Briscoe, Murphy, JJ.).

The dispute between the parties arose out of a program called The Trial Lawyers College at Thunderhead Ranch in Wyoming. The College’s board of directors split into two factions known as the “Spence Group” and the “Sloan Group.” After the split, the two groups sued each other. The Spence Group sued in state court for dissolution of the College and a declaratory judgment regarding control of the board of directors. The Sloan Group sued in federal court claiming trademark infringement under the Lanham Act.

Both groups sought relief in the federal case. The Spence Group filed a motion to stay the federal court proceedings in light of the state court proceedings, and the Sloan Group requested a preliminary injunction. The district court denied the Spence Group’s stay and granted the Sloan Group’s request for a preliminary injunction. The Spence Group appealed both rulings.

The Tenth Circuit found that it lacked jurisdiction to review the district court’s stay denial. First, the state court resolved the dispute concerning board control, rendering part of the requested stay moot. Second, the Court determined that it lacked jurisdiction over the remaining motion for stay because it was not a final order. The Court explained that it needed to decide the appealability of the ruling based on the category of order rather than the particular facts of the case. The Court found that there was no unsettled issue of unique urgency or importance that warranted the Court exercising jurisdiction over the denial of the stay. Specifically, the Court explained that piecemeal litigation was unlikely because the state court already decided the issue of board control, and the Spence Group did not identify an unsettled issue of unique urgency.

The Tenth Circuit did exercise jurisdiction over the district court’s grant of a preliminary injunction. The Spence Group challenged the district court’s finding of irreparable harm, the order to remove sculptures bearing the College’s name, restrictions on what the Spence Group could say and the consideration of evidence presented after the hearing ended. The Court reviewed the district court’s findings under an abuse-of-discretion standard. The Court found that the district court did not abuse its discretion by finding irreparable harm, considering evidence after the hearing and enjoining the Spence Group from using words associated with the College. The Court explained that the district court reasonably found irreparable harm based on the College’s efforts to protect its name, logo and trademarks, as well as evidence of likely confusion among customers of the College based on the Spence Group’s use of those trademarks. As for the sculptures, the Court found [...]

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Texas Hammer Nails Trademark Infringement Appeal

by Joshua Revilla | Sep 2, 2021 | Trademarks
The US Court of Appeals for the Fifth Circuit reversed a district court’s dismissal of an initial confusion trademark complaint, finding that the plaintiff alleged a plausible claim of trademark infringement under the Lanham Act. Adler v. McNeil Consultants, LLC, Case No. 20-10936 (6th Cir. Aug. 10, 2021) (Southwick, J.)

Jim Adler is a personal injury lawyer who trademarked and used several terms, including JIM ADLER, THE HAMMER and TEXAS HAMMER, to market his business, including via keyword advertisements. McNeil Consultants, a personal injury lawyer referral service, purchased keyword ads using Adler’s trademarked terms, which allowed McNeil’s advertisements to appear at the top of any Google search of Adler’s trademarked terms. McNeil’s advertisements used generic personal injury terms, did not identify any particular law firm and clicking on the ads placed a phone call to McNeil’s call center rather than directing the user to a website. The call center used a generic greeting so consumers did not realize with whom they were speaking.

Adler filed suit against McNeil, asserting Texas state law claims as well as trademark infringement under the Lanham Act. McNeil moved to dismiss, arguing that its keyword ads did not create a likelihood of confusion. The district court agreed and dismissed Adler’s complaint. Adler appealed.

To successfully plead a trademark infringement claim under Fifth Circuit law, the holder of a protectable trademark must establish that the alleged infringing use “creates a likelihood of confusion as to source, affiliation, or sponsorship.” To determine whether a likelihood of confusion exists, the Court weighs a non-exhaustive list of several confusion factors, including the similarity of the marks, the similarity of the products, the defendant’s intent and the care exercised by potential consumers.

The Fifth Circuit explained that Adler alleged initial interest confusion, which exists where the confusion creates consumer interest in the infringing party’s services even where no sale is completed because of the confusion. The Court noted that this case presented the first opportunity for the Fifth Circuit to consider initial interest confusion as it pertains to search engine keyword advertising. Relying on Ninth Circuit precedent and parallel reasoning to its own opinions on initial interest confusion in the context of metatag usage, the Court concluded that Adler’s complaint alleged a plausible claim of trademark infringement under the Lanham Act.

The Fifth Circuit noted that initial interest confusion alone is not enough to raise a Lanham Act claim. The Court explained that if a consumer searches TOYOTA and is directed to search results containing a purchased ad clearly labeled as selling VOLKSWAGEN products, a consumer who clicks on the VOLKSWAGEN ad has been distracted, not confused or misled into purchasing the wrong product. Distraction does not violate the Lanham Act. However, the Court explained that where the use of keyword ads creates confusion as to the source of the advertisement—not mere distraction—an infringement may have occurred. Because McNeil’s advertisements were admittedly generic and could have been associated with any personal injury law firm, the Court found that the keyword [...]

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No curtain call yet: Mixed verdict in patent, trademark, standing case

by Hannah Hurley | Oct 9, 2025 | Patents, Trademarks
The US Court of Appeals for the Federal Circuit addressed a wide array of issues in a long-running dispute over shower curtain technology. The Court provided important guidance on patent claim scope using intrinsic evidence, trademark standing and ownership of the mark in issue, trade dress functionality under TrafFix, and the need for district courts to provide a reviewable explanation when issuing patent infringement summary judgment based on the facts of this case. Focus Products Grp. Int’l, LLC v. Kartri Sales Co., Inc., Case No. 23-1446 (Fed Cir. Sept. 30, 2025) (Moore, Clevenger, Chen, JJ.)

The decade-long dispute started when Focus Products sent a cease-and-desist letter to Kartri Sales and its supplier, Marquis Mills International. The letter asserted patent infringement but was largely ignored. Focus Products then filed suit asserting three utility patents, two trademarks (HOOKLESS® and EZ ON), and unregistered trade dress rights in the appearance of its shower curtains.

Four months after the Supreme Court’s 2017 decision in TC Heartland v. Kraft Foods Group Brands, Kartri raised a venue objection and filed a motion to dismiss or transfer venue. The district court denied the motion, finding it to be unreasonably late, especially considering that Kartri actively conducted litigation after TC Heartland.

The district court construed several disputed claim terms. Based on its constructions, it found no triable issue of fact and granted summary judgment of patent infringement to Focus Products. However, the district court found genuine disputes of material fact regarding trademark and trade dress infringement and ordered a bench trial on those issues.

On the eve of trial, Kartri asserted unclean hands and equitable estoppel defenses. The district court denied these defenses because they were improperly raised for the first time immediately preceding trial.

After a bench trial, the district court held that:

Focus Products had standing to enforce the unregistered EZ ON mark.

Kartri infringed the mark and Focus Products’ trade dress, which was determined to be nonfunctional.

Kartri infringed Focus Products’ HOOKLESS® mark.

Accordingly, the district court awarded lost profits, reasonable royalties, attorneys’ fees, and enhanced damages for willful infringement. Kartri appealed.

The Federal Circuit affirmed the district court’s denial of Kartri’s motion to transfer venue under TC Heartland, finding Kartri’s objection untimely. Kartri waited four months after TC Heartland to raise the issue, during which time discovery had progressed significantly. The Court emphasized that venue objections must be raised seasonably and that continued litigation in the chosen forum may constitute forfeiture.

The Federal Circuit largely reversed the district court’s infringement findings, explaining that the district court erred in its claim construction because Focus Products had disclaimed shower rings with a flat upper edge during prosecution. While an affirmative disclaimer usually originates from the patent applicant, the Court found clear and unmistakable disavowal through the applicant’s acquiescence to the examiner’s species election, claim cancellation, and narrowed claim scope. This disclaimer was reinforced by the prosecution of a related asserted patent, which explicitly claimed the disclaimed feature. A patentee cannot try [...]

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Fifth Circuit untangles damages in trademark battle

by Christian Tatum | Sep 18, 2025 | Trademarks
The US Court of Appeals for the Fifth Circuit reinstated a jury’s lost profits and breach damages awards that the district court set aside during post-trial proceedings, finding that sufficient evidence supported the awards. I&I Hair Corp. v. Beauty Plus Trading Co., Case No. 24-10374 (5th Cir. Sept. 5, 2025) (Haynes, Ho, Oldham, JJ.) (per curiam).

I&I Hair, the seller of EZBRAID synthetic braids, sued competitor Beauty Plus for trademark infringement, unfair competition, and breach of a 2019 settlement agreement that prohibited Beauty Plus from using the EZBRAID mark or confusingly similar terms. At trial, the jury awarded approximately $70,000 for infringement, $1.15 million in lost profits for unfair competition, and $1.3 million for breach of the settlement agreement.

After trial, the district court set aside the unfair competition and breach awards, concluding I&I failed to prove lost profits with reasonable certainty. I&I appealed.

The Fifth Circuit reversed, emphasizing that Texas law requires only competent evidence permitting a jury to determine lost profits with reasonable certainty, not precise proof of the exact amount awarded. The Court found that I&I had met this standard, highlighting evidence that EZBRAID sales surged by 400% in 2017 – 2018 and 70% in 2018 – 2019 but slowed to 10% growth in 2019 – 2020 after Beauty Plus began selling similar products. I&I’s sales declined further as Beauty Plus sold more than $5 million in infringing goods from 2019 to early 2022, with Beauty Plus making sales to nearly half of I&I’s customers. I&I also introduced revenue and profit margin data, as well as testimony that brand dilution and supply chain disruption amplified the harm. The Court concluded that the jury may have rationally considered I&I’s pre-infringement growth in revenue and net income, as well as testimony regarding customer confusion, to reach the damages awarded.

The Fifth Circuit rejected each of Beauty Plus’ arguments. First, it rejected Beauty Plus’ claim that the unfair competition award improperly mirrored Beauty Plus’ profits, explaining that the question was whether the number fell within the range supported by evidence, not whether it matched I&I’s calculations precisely. Second, the Court dismissed Beauty Plus’ challenge to the breach award, noting that Texas law requires certainty only as to the fact of damages, not the exact amount. Finally, the Court found I&I had adequately preserved its opposition to Beauty Plus’ judgment as a matter of law motion.

Accordingly, the Fifth Circuit reinstated the jury’s full verdict and remanded the case for further proceedings on attorneys’ fees.

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When is a word too common to trademark? Asking for a four-letter friend

by Sarah Bro | Sep 4, 2025 | Trademarks
In response to artist and entrepreneur Erik Brunetti’s ongoing efforts to register FUCK as a trademark for various goods and services, the US Court of Appeals for the Federal Circuit vacated the Trademark Trial & Appeal Board’s refusal to register the term but agreed with the Board’s position on the registrability of widely used “all-purpose words.” The Court ordered the remand because it found the Board’s reasoning insufficiently clear and lacking a coherent standard. In re Brunetti, Case No. 23-1539 (Fed. Cir. Aug. 26, 2025) (Dyk, Reyna, JJ.) (Lourie, J., dissenting).

Brunetti filed four intent-to-use applications to register FUCK as a trademark for goods, including sunglasses, jewelry, and backpacks, and services such as retail store offerings. The US Patent & Trademark Office (PTO) refused registration, asserting that the term failed to function as a trademark under Sections 1, 2, 3, and 45 of the Lanham Act and citing its widespread use as a commonplace expression conveying varied sentiments.

The Board affirmed the PTO’s decision, concluding that FUCK was “arguably one of the most expressive words in the English language” and that consumers were accustomed to seeing it used by various sources on similar goods. The Board reasoned that such ubiquity rendered the term incapable of serving as a source identifier. It rejected Brunetti’s constitutional arguments and distinguished the Supreme Court’s prior decision in Iancu v. Brunetti, which invalidated the PTO’s refusal to register the mark FUCK on grounds of immorality. Brunetti appealed.

The Federal Circuit agreed that the Board had properly considered third-party use and the expressive nature of the term. However, the Court found the Board’s decision wanting in clarity and consistency. It criticized the Board’s failure to articulate a workable standard for when “all-purpose word marks” such as FUCK can function as trademarks, especially in light of other registrations for similarly ubiquitous terms such as LOVE and even FUCK itself for snow globes and gummy candies.

The Federal Circuit emphasized that the Board must engage in reasoned decision-making under the Administrative Procedure Act and provide sufficient guidance for future cases. The Court therefore vacated the decision and remanded for further proceedings.

Despite the remand, the Federal Circuit dismissed Brunetti’s argument that the PTO had retaliated against him for his prior Supreme Court victory in Iancu v. Brunetti. Brunetti claimed that the timing of the refusals (following his successful challenge to the PTO’s immoral/scandalous bar) suggested retaliation. The Court found this argument unpersuasive, noting that Brunetti offered no evidence beyond timing, and that the Board’s analysis remained viewpoint-neutral and focused on whether the mark functioned as a source identifier.

Judge Lourie dissented, arguing that the Federal Circuit should have affirmed the Board’s refusal on grounds that the term FUCK is too ubiquitous and expressive to function as a source identifier for the goods and services in question. He emphasized that the word’s widespread use across varied emotional contexts prevents consumers from associating it with a specific brand. From Judge Lourie’s perspective, FUCK on its own [...]

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Standing: Don’t get owned by incorrect trademark ownership

by Jolie B. Schenerman | Sep 4, 2025 | Trademarks
The US Court of Appeals for the Second Circuit affirmed a district court’s dismissal of a trademark and unfair competition suit, ruling that the plaintiff did not own the asserted trademark. The Court also held that the owner of the trademark failed to ratify the action and therefore the plaintiff did not have standing to assert unfair competition claims. Ripple Analytics Inc. v. People Ctr., Inc., Case No. 24-490 (2d Cir. Aug. 26, 2025) (Park, Nathan, Perez, JJ.)

In March 2018, the US Patent & Trademark Office granted Ripple Analytics a federal trademark for RIPPLE in connection with human resources software. The following month, Ripple assigned all rights to its intellectual property to co-founder Noah Pusey via an assignment agreement. Around the same time, People Center applied to register RIPPLING for similar software. It later abandoned the application but continued to operate under the Rippling name.

Ripple sued People Center in 2020 for trademark infringement and unfair competition. During discovery, Ripple produced the assignment agreement. People Center responded by moving to amend its answer, seeking dismissal for failure to prosecute in the name of the real party in interest and requesting summary judgment.

The district court found that Pusey, not Ripple, was the real party in interest and dismissed the case because Pusey had not ratified the action under Federal Rule of Civil Procedure 17. It also dismissed the unfair competition claims for lack of standing and denied Ripple’s motion to amend the complaint as futile. Ripple appealed.

The Second Circuit affirmed the dismissal, finding that Ripple had “unambiguously” assigned all intellectual property rights, including the trademark at issue, to Pusey, making him the real party in interest. The Court emphasized that the assignment agreement transferred all of Ripple’s “claims, causes of action, and rights to sue,” regardless of when those claims arose. Ripple argued that Pusey satisfied Rule 17 by ratifying the pleadings and agreeing to be a plaintiff. The Court rejected this argument, noting that Pusey’s declaration stating his involvement in the case and strong interest in its outcome did not amount to an agreement to be bound by the suit, a requirement for ratification.

The Second Circuit determined that Ripple’s Lanham Act unfair competition claims failed because they were based on the inaccurate assertion that Ripple owned the RIPPLE mark. The Second Circuit also upheld the district court’s denial of Ripple’s motion to amend its complaint, explaining that the assignment agreement expressly barred Ripple from bringing suit.

Practice note: Before initiating trademark litigation, practitioners should conduct thorough due diligence on ownership to avoid standing issues. Defendants should consider initiating early discovery on ownership of the rights being asserted.

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It’s not monkey business: NFTs can be trademarked

by Ashley K. Justice | Jul 31, 2025 | Trademarks
The US Court of Appeals for the Ninth Circuit concluded that a non-fungible token (NFT) is a “good” under the Lanham Act but reversed the district court’s grant of summary judgment for trademark infringement because the owner did not prove as a matter of law that the defendants’ use was likely to cause confusion. The Ninth Circuit also affirmed the district court’s dismissal of the defendants’ counterclaim for declaratory relief regarding copyright ownership. Yuga Labs, Inc. v. Ryder Ripps and Jeremy Cahen, Case No. 24-879 (9th Cir. July 23, 2025) (Bade, Forrest, Curiel, JJ.)

Yuga Labs is the creator of the Bored Ape Yacht Club (BAYC) NFT collection. Yuga created this collection through a smart contract recorded on the blockchain Ethereum. Each BAYC NFT has a cartoon of a bored ape and a sequential unique identifier called an ape ID. Per its terms and conditions, BAYC NFT consumers receive commercial and personal rights free of royalty fees.

Ryder Ripps and Jermey Cahen created the Ryder Ripps Bored Ape Yacht Club (RR/BAYC) using the same ape images and ape IDs. The collection was also hosted on an Ethereum blockchain smart contract. They criticized Yuga for “using neo-Nazi symbolism, alt-right dog whistles, and racist imagery” and alleged that they created RR/BAYC as satire and criticism. Ripps made the RR/BAYC smart contracts’ names “Bored Ape Yacht Club” and made the smart contract symbol “BAYC.” Ripps’ website includes an artist statement that the artwork is a “new mint of BAYC imagery.” NFT marketplace websites for RR/BAYC displayed a large header “Bored Ape Yacht Club” and in a smaller text “@ryder_ripps.”

Yuga sued Ripps and Cahen for several claims, including trademark infringement based on a false designation of origin theory, false advertising, and cybersquatting. In response, the defendants asserted that Yuga did not have enforceable trademark rights, and even if it did, the defendants’ use was protected by fair use and the First Amendment. The defendants asserted several counterclaims, including knowing misrepresentation of infringing activity under the Digital Millenium Copyright Act (DMCA), and sought declaratory judgment of no copyright ownership.

The district court granted Yuga’s motion for summary judgment on its false designation of origin and cybersquatting claims. Yuga withdrew its remaining claims, so the trial proceeded only for equitable remedies on the false designation of origin and cybersquatting. At trial, the district court found that Yuga’s BAYC marks were unregistered trademarks. The district court awarded Yuga disgorgement of the defendants’ profits, maximum statutory damages, and attorneys’ fees after finding that the case was exceptional due to the defendants’ willful infringement, bad faith intent to profit, and litigation conduct. The defendants were also permanently enjoined. The defendants appealed the grant of summary judgment and sought vacatur of the remedies.

The Ninth Circuit first addressed the defendants’ argument that NFTs are not goods protected by the Lanham Act. The Court concluded that NFTs are goods under the Lanham Act based on a US Patent & Trademark Office report that determined them as such. The Court also [...]

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No curtain call yet: Mixed verdict in patent, trademark, standing case

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