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Don’t SULKA: Trademark Plaintiff Must Demonstrate Intent, Ability to Use Mark

by Sarah Bro | May 14, 2020 | Trademarks

The US Court of Appeals for the Second Circuit affirmed the dismissal of a complaint seeking a declaration of trademark abandonment, finding that the plaintiff (the co-owner of an online business that sells to customers in India and Thailand) was unable to demonstrate a case or controversy absent evidence that he was prepared to immediately bring his goods to market in the United States. Abdul Rehman Karim Saleh v. Sulka Trading Ltd., et al., Case No. 19-2461 (2d Cir. Apr. 30, 2020) (per curiam).

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Supreme Court: Profit Disgorgement Available Remedy for Trademark Infringement, Willful or Not

by Sarah Bro | Apr 30, 2020 | Trademarks

Resolving a split among the circuits regarding whether proof of willfulness is necessary for an award of a trademark infringer’s profits, the Supreme Court of the United States issued a unanimous decision holding that the plain language of the Lanham Act has never required a showing of willful infringement in order to obtain a profits award in a suit for trademark infringement under §1125(a). Romag Fasteners, Inc. v. Fossil, Inc., et al. Case No. 18-1233 (Supr. Ct. Apr. 23, 2020) (Gorsuch, Justice) (Alito, Justice, concurring) (Sotomayor, Justice, concurring).

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2019 IP Law Year in Review: Trademarks

by Eleanor B. Atkins, Rebecca Harker Duttry, Sarah Bro and Paul Devinsky | Feb 6, 2020 | Trademarks

Executive Summary

Trademark jurisprudence in 2019 may be best summarized in two words: questions and answers. Decisions handed down at the district court level have teed up key questions that are poised to be answered by the United States Supreme Court in the 2020 term—such as the protectability of certain “.com” trademarks, as well as the standard for obtaining particular damages in trademark infringement disputes. For brand owners and trademark practitioners, 2019 will also go down as a year that provided answers to many important questions. For example, on numerous occasions in 2019, the Trademark Trial and Appeal Board answered questions as to whether certain designs or designations have the capability to function as a source-identifying trademark. The United States Patent and Trademark Office (USPTO) answered questions relating to the cannabis industry and how the 2018 Farm Bill would be applied in the review of US trademark applications listing goods or services for CBD products. And, the Supreme Court answered an important question for trademark licensees regarding their rights when a trademark licensor goes bankrupt. This report provides a summary of 2019’s most important questions and answers when it comes to trademark law, and serves as a useful guide for navigating trademark prosecution and enforcement efforts into the year ahead.

Trademarks

2020 Outlook

As we await further answers to our most pressing trademark questions in 2020, we anticipate that this year will bring unique opportunities to apply traditional tenets of trademark law to modern-day disputes and business considerations. So long as marketing efforts continue to incorporate influencers, short-form and interactive content, artificial intelligence, blockchain technologies, and other initiatives to elevate brand profiles, trademark practitioners and the courts will need to be creative in applying traditional interpretations of relevant trademark laws and policies to trademark protection strategies and infringement disputes. In 2020, the USPTO also will be forced to continue to address the ever-crowded brand space by furthering its crack-down on fraudulent trademark applications, clearing dead weight from the USPTO register, and maintaining its strict registrability and failure-to-function assessments to make room for new and growing brands. Finally, in 2020 and beyond, we expect that trademark considerations will continue to color other legal matters and disputes, including corporate transactions, data ownership and privacy, and bankruptcy and restructuring, thus showing the immense commercial value and power of brands.

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When It’s All In the Family: Reverse Confusion Not a Basis for Broad Trademark Remedies

by Mary Hallerman | Jan 8, 2020 | Trademarks

Addressing reverse confusion and scope of available remedies, the US Court of Appeals for the Seventh Circuit upheld a district court’s refusal to award infringing profits and a broad permanent injunction after a jury found infringement. Fabick, Inc. v. JFTCO, Inc., Case Nos. 19-1760; -0072 (7th Cir. Dec. 9, 2019) (Flaum, J.)

This trademark dispute originates with a family feud. John Fabick, founder of the John Fabick Tractor Company, purchased two Caterpillar equipment dealerships intending for his son, Joe, to operate the dealerships. At the time, the John Fabick Tractor Company had used the mark FABICK in connection with its business. Joe later founded FABCO, which sold Caterpillar equipment and related goods. Eventually, one of Joe’s sons, Jeré, took over FABCO.

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Supreme Court: PTO Not Entitled to Attorney’s Fees in District Court Appeals

by Paul Devinsky | Jan 2, 2020 | Patents

PATENTS / PTO ATTORNEY’S FEES

In a unanimous decision authored by Justice Sotomayor, the Supreme Court of the United States held that the US Patent and Trademark Office (PTO) is not entitled to recover its attorney’s fees in an appeal to a district court from an adverse decision of the Patent Trial and Appeal Board (PTAB) under 35 USC § 145. Peter v. NantKwest, Inc., Case No. 18-801 (Supr. Ct. Dec. 11, 2019) (Sotomayor, Justice).

The question posed in this case was:

[W]hether such “expenses” [in § 145 proceedings] include the salaries of attorney and paralegal employees of the United States Patent and Trademark Office (PTO).

The answer was a resounding “no.”

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Seventh Circuit Formally Adopts Octane Fitness Standard for Trademark Cases

by Katie Bukrinsky | Jan 2, 2020 | Trademarks

TRADEMARKS / ATTORNEY’S FEE AWARD

The US Court of Appeals for the Seventh Circuit officially joined its sister circuits in holding that the Supreme Court standard for awarding attorney’s fees in patent cases, set forth in Octane Fitness, LLC v. ICON Health & Fitness, Inc., was equally applicable to attorney’s fees claims under the Lanham Act. In doing so, the Seventh Circuit overruled its prior holding that a plaintiff’s claims were only “exceptional” under the Lanham Act if they constituted an abuse of process. LHO Chicago River, LLC v. Perillo, Case. No. 19-1848 (7th Cir. Nov. 8, 2019) (Manion, J).

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Claims barred by laches: Prosecution delay doesn’t pay, nor does skipping evidence of concrete injury

by Courtney Seams | Sep 11, 2025 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court’s judgment for the US Patent & Trademark Office (PTO) on application of prosecution laches in an action under 35 USC § 145. The Federal Circuit also agreed that the district court lacked Article III jurisdiction over certain claims because the plaintiff failed to provide evidence of concrete injury when challenged after initial pleadings. Hyatt v. Stewart, Case Nos. 2018-2390; -2391; -2392; 2019-1049; -1038; -1039; -1070; 2024-1992; -1993; -1994; -1995 (Fed. Cir. Aug. 29, 2025) (Reyna, Wallach, Hughes, JJ.) (precedential).

Gilbert Hyatt filed four GATT bubble patent applications, all of which had claims rejected by the examiner. Hyatt appealed those rejections to the Patent Trial & Appeal Board, which affirmed various rejections of others. Following the Board decisions, Hyatt filed four separate actions in district court under 35 U.S.C. § 145, challenging the PTO rejections. In response, the PTO asserted prosecution laches as an affirmative defense and, in the alternative, invalidity, based on anticipation and lack of written description.

The district court initially ruled in Hyatt’s favor, finding that the PTO’s affirmative defenses failed with respect to the claims for which the Board affirmed the examiner’s rejection. The district court concluded that it lacked Article III jurisdiction over the remaining claims (those for which the Board reversed the examiner) because there was no final agency action as to those claims.

The PTO appealed, arguing that prosecution laches barred all of the claims or, in the alternative, that the claims were invalid. Hyatt cross-appealed, contending that prosecution laches did not apply in § 145 actions or that the district court abused its discretion in applying laches in these specific § 145 actions.

In an earlier appeal, Hyatt I, the Federal Circuit vacated the district court’s rulings on prosecution laches, holding that the district court applied the wrong standard for prosecution laches and had the burden of proving that Hyatt engaged in unreasonable and unexplained delay in prosecuting his applications and that the delay was prejudicial. The panel remanded the case held the issue of Article III jurisdiction in abeyance. On remand, the district court reversed course and found in favor of the PTO on prosecution laches, concluding that Hyatt had unreasonably delayed prosecution in a manner that prejudiced the agency.

Hyatt appealed. The Federal Circuit consolidated the appeals with the earlier stayed jurisdictional issues. The Federal Circuit affirmed the district court’s application of prosecution laches, finding no clear error in its determination that Hyatt’s conduct met the standard for delay and prejudice. The Federal Circuit also agreed that the district court lacked Article III jurisdiction over claims that had not been finally rejected by the PTO, reinforcing that § 145 actions may only proceed where there is a final agency determination resulting in a justiciable controversy.

On the issue of prosecution laches, the Federal Circuit explained that it had already considered and rejected Hyatt’s argument that prosecution laches is unavailable in a § 145 action in Hyatt I, and [...]

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Use of general knowledge in IPR petitions will no longer work

by Ashley K. Justice | Aug 14, 2025 | Patents

On July 31, 2025, the US Patent & Trademark Office (PTO) issued a memo clarifying the requirements under 37 C.F.R. § 42.104(b)(4) for inter partes review (IPR) petitions. The memo emphasizes that petitioners must clearly identify where each element of the challenged claims is found in the prior art patents or printed publications relied upon.

Historically, the Patent Trial & Appeal Board permitted petitioners to rely on applicant admitted prior art (AAPA), expert testimony, common sense, and other forms of general knowledge to fill in missing claim limitations. However, the new guidance states that such general knowledge, including AAPA, can no longer be used to supply missing claim elements. If an IPR petition relies on general knowledge to bridge gaps in the prior art, the Board will now deny institution.

The memo clarifies that § 104(b)(4) does not limit the use of general knowledge to support a motivation to combine or to demonstrate the knowledge of a person of ordinary skill in the art. However, § 104(b)(4) may be narrower than 35 U.S.C. § 311(b). Just weeks before the memo was issued, the US Court of Appeals for the Federal Circuit’s decision in Shockwave Medical. v. Cardiovascular Systems held that AAPA can be used to supply missing claim limitations without violating § 311(b), highlighting a potential tension between the rule and judicial interpretation.

The PTO’s new requirements will apply to all IPR petitions filed on or after September 1, 2025.

Practice note: To meet the threshold for institution, IPR petitioners should ensure that each claim element is explicitly mapped to prior art patents or printed publications. Reliance on general knowledge to fill in missing elements will no longer be sufficient.

Kissing cousins? SUNKIST and KIST deemed confusingly similar

by Sydney E. McDermott | Jul 31, 2025 | Trademarks

The US Court of Appeals for the Federal Circuit reversed a Trademark Trial & Appeal Board decision, concluding that there was a likelihood of confusion between the marks KIST and SUNKIST when used in connection with soft drinks. Sunkist Growers, Inc. v. Intrastate Distributors, Inc., Case No. 24-1212 (Fed. Cir. July 23, 2025) (Prost, Taranto, Stark, JJ.)

For at least 90 years, Sunkist has offered soft drinks under the SUNKIST trademark both directly to consumers and through its licenses. Intrastate Distributors Inc. (IDI) purchased the KIST brand and proceeded to use the KIST mark for soft drink and sparkling water products. The KIST mark was active for about a decade before being cancelled in 2013. In 2019, IDI filed intent-to-use trademark applications for the KIST mark both in standard characters and in a stylized character form for “[s]oft drinks, namely, sodas and sparkling water; concentrates and syrups for making soft drinks.” Sunkist opposed the registration, arguing the KIST mark was likely to cause confusion with the SUNKIST mark.

Focusing its analysis on the SUNKIST standard character mark, the Board determined that all DuPont factors other than similarity of the marks favored likelihood of confusion. The Board found that the marks were not sufficiently similar because they conveyed different commercial impressions. According to the Board, while SUNKIST referenced the sun, the KIST mark referenced a kiss, relying on the image of lips that appear next to the KIST mark. The Board therefore found no likelihood of confusion between IDI’s marks and the registered SUNKIST marks. Sunkist appealed.

The Federal Circuit began by emphasizing that the KIST mark was not a design mark and the image of lips did not always appear beside the mark. The Court relied on the following image in its opinion, noting that “[n]one of the bottles include a lips image or reference a kiss” and instead “emphasize flavors.”

The Federal Circuit noted that the record contains no evidence concerning the degree of consumer exposure to the mark with the image of lips versus without lips. The Court found that the Board relied too heavily on the KIST mark’s appearance alongside an image of lips, and ultimately determined that substantial evidence did not support the finding that the mark referenced a kiss. The Court noted that while some of the SUNKIST marks contained a sun, many were standard character marks that did not include a sun. The Court thus concluded that substantial evidence did not support a finding that the similarity of the marks favored no likelihood of confusion.

Since the Board had previously found that the remaining DuPont factors favored likelihood of confusion and the Federal Circuit determined that the similarity of the marks also favored likelihood of confusion, the only remaining consideration was actual confusion. Although Sunkist had not proven instances of actual confusion, the Court noted that its precedents had never required actual confusion, primarily because [...]

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Game over: Prior interference doesn’t preclude IPR proceeding

by Joshua Revilla | Jul 31, 2025 | Patents

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board unpatentability determination during an inter partes review (IPR) proceeding, concluding that the Board’s decision to not apply interference estoppel fell within the general rule of unreviewability. IGT v. Zynga Inc., Case No. 23-2262 (Fed. Cir. July 22, 2025) (Prost, Reyna, Taranto, JJ.)

IGT owns an expired patent that addresses the need for gaming machines, such as slot machines and video poker machines, to securely communicate over a public network. The patent was issued in January 2007 from an application filed in April 2002 and published in August 2002. Zynga filed a patent application on August 21, 2003, that included claims copied from IGT’s published application.

In March 2010, the US Patent & Trademark Office (PTO) Board of Patent Appeals & Interferences (predecessor of the Patent Trial & Appeal Board, which Congress created in 2011) declared an interference proceeding between Zynga’s application and IGT’s patent. During the interference proceeding, Zynga argued IGT’s patent was obvious over three pieces of prior art. IGT argued that Zynga lacked standing because the claims in Zynga’s application were unpatentable for a lack of written description. The Board granted IGT’s motion for judgment on the “threshold issue” that Zynga’s application lacked adequate written description support, terminated the interference with a judgment against Zynga, and dismissed the motion that the claims were unpatentable as moot.

In April 2021, IGT sued Zynga alleging infringement of six patents, including the patent that was subject to the interference proceeding. Zynga filed an IPR petition for that patent, asserting obviousness based on new prior art. In its preliminary response, IGT argued that the Board should deny institution based on interference estoppel under 37 C.F.R. § 41.127(a)(1) because Zynga could have raised the newly asserted art in the interference proceeding. The Board rejected IGT’s interference estoppel arguments because:

The interference was terminated based on the “threshold issue” of lack of written description and therefore the Board did not analyze or decide any issues of unpatentability.
It would be unfair to estop Zynga, and to the extent that estoppel applied, the Board waived its application under 37 C.F.R. § 42.5(b).

IGT requested rehearing and precedential opinion panel review, arguing that interference estoppel barred institution. The PTO Director affirmed the Board’s decision, stating that interference estoppel under § 41.127 did not apply because IPR proceedings are governed by 37 C.F.R. pt. 42, which does not incorporate Part 41 or its estoppel provisions. The PTO Director also noted that the Board’s termination was based on a threshold issue. The Board proceeded with the review and ultimately concluded that all the challenged claims were unpatentable as obvious. IGT appealed.

IGT argued that the Board and PTO Director erred in ruling that interference estoppel did not bar the petition and challenged the Board’s holding that the claims would have been obvious over the newly asserted prior art.

The Federal Circuit concluded that the interference estoppel determination fell within the [...]

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