The TMCA

The Supreme Court has granted a petition for writ of certiorari in the matter of RiseandShine Corporation, dba Rise Brewing, v. PepsiCo, Inc. to determine if the strength of a trademark in a likelihood of confusion analysis is a question of fact for a jury, or a question of law for a judge. The dispute has been brewing (pun very much intended) since 2021 after RiseandShine Corporation, dba Rise Brewing (“Rise”) filed suit against PepsiCo, Inc. (“Pepsi”) in the U.S. District Court for the Southern District of New York, alleging, in part, trademark infringement and reverse confusion based on PepsiCo’s launch of its MTN DEW RISE energy drink. Since at least as early as 2014, Rise has been using its RISE trademark in connection with nitro cold brew and canned coffee beverages. In its Complaint, Rise claims that PepsiCo’s launch of its MTN DEW RISE product in 2021, was just another attempt by Pepsico “to squeeze senior user Rise Brewing out of the market by launching its own infringing RISE-branded canned caffeine drink. Indeed, by adopting Rise Brewing’s RISE Mark on its own canned caffeine drinks, PepsiCo’s plan follows a well-established pattern—flooding the market with products bearing confusingly similar marks in order to cause consumers to confuse and improperly associate RISE with PepsiCo rather than Rise Brewing.” Following an evidentiary hearing, a jury granted Rise’s preliminary injunction, requiring PepsiCo to halt use of its MTN DEW RISE mark. PepsiCo successfully appealed the injunction with the Second Circuit finding that the district court erred in its assessment of the inherent strength of Rise’s RISE mark, noting it should have been found less distinctive based on the association of RISE and coffee, as well as other third-party uses of RISE with caffeinated beverages. On remand, the district court granted PepsiCo’s Motion for Summary Judgement, which was affirmed by the Second Circuit. In its cert petition filed in March of 2026, Rise asked the Supreme Court to weigh in on whether trademark strength is a question of fact in a likelihood-of-confusion analysis under 15 U.S.C. § 1114, or whether it is a question of law, as suggested by the Second Circuit. Twelve circuits treat a mark’s placement on the spectrum of distinctiveness as factual, typically decided by a jury and reviewed with substantial deference on appeal. In the present case, the Second Circuit has isolated itself by determining a mark’s inherent strength is a legal question for the court to decide. The case is scheduled to be heard before the Supreme Court in its October 2026 session, where experts expect it may side with Rise given recent decisions whereby SCOTUS has focused on the necessity of consumer conception being considered in trademark disputes. The TMCA Blog team will continue to monitor this case closely, so be sure to subscribe.

Popular drag queen and environmental activist Pattie Gonia is being sued for trademark infringement, and the internet is not quiet about it. Wyn Wiley took on the alter ego Pattie Gonia in late 2018 after posting a viral photo of herself hiking an outdoor trail in six-inch high heels. From that point forward, Pattie Gonia gained widespread recognition as a drag queen who bridged environmental activism and LGBTQ+ advocacy, inspiring a passionate group of supporters. Since her rise to fame, Gonia has used similar marks to those trademarked by the beloved outdoor gear brand, Patagonia. For instance, Gonia has dropped merch with “Pattie Gonia Hiking” and Pattie Gonia stickers using a similar mountain background, coloring, and font to that found on the famous Patagonia logo. In 2022, Patagonia struck a deal with Gonia after she advertised a fundraising campaign with Hydroflask, where the parties agreed Gonia would not sell products using Patagonia’s logo or the name “Pattie Gonia”. However, Patagonia did not object to Gonia’s use of the mark in climate related activism or other efforts not related to product merchandise. But in late 2024 she launched her website pattiegoniamerch.com and began selling merchandise with the mark “Pattie Gonia”. Patagonia asked Gonia to abide by the 2022 agreement and cease any continuous sales of Pattie Gonia related apparel. However, in late 2025, Entrepreneur Enterprises (the company acting on behalf of Wyn Wiley) filed a trademark application with the USPTO for the mark “Pattie Gonia”. The application for the wordmark is intended for goods and services such as musical recordings, stickers, clothing, online advertising, and entertainment services. In early 2026, Patagonia filed a lawsuit against Gonia, alleging trademark infringement, dilution, and unfair competition seeking to recover nominal damages in the amount of $1. In late May, Gonia took to social media to break her silence about the trademark lawsuit. In a video, Gonia states, “this is not a brand conflict, this is a corporation trying to erase an activist.” She claims that although Patagonia only seeks $1 in damages, the complaint also seeks to recover costs and reasonable attorney fees, which she claims will surpass $1,000,000. Gonia’s supporters quickly took to Patagonia’s social media accounts demanding that the lawsuit be dropped. However, Patagonia has stood its ground, stating in a recent social media post, “We wish this lawsuit had not been necessary, and we want to acknowledge any hurt it has caused, especially in the LGBTQ+ community.” In the post, Patagonia outlined specific terms that would allow Patagonia to drop the suit. Namely, the company requests that Gonia withdraw all trademark applications, stop using Patagonia logos, and stop selling and promoting apparel and other products as Pattie Gonia. Still, Gonia supporters are in an uproar. One Gonia supporter commented in response to Patagonia’s social media post stating, “Apparel branded Pattie Gonia has no impact on your brand—doesn’t make sense to ask for that. Do better, please!” That comment received over 18,000 likes. The major question presented in this dispute is whether consumers are likely to associate Pattie Gonia’s merchandise with Patagonia’s merchandise. A plaintiff, like Patagonia, must demonstrate sufficient similarity between their mark and the alleged infringing mark, but need not demonstrate actual confusion among consumers to prevail on an infringement claim. In evaluating Patagonia’s infringement claim, the court will consider many factors, including the similarity between the Patagonia mark and the Pattie Gonia mark as well as Gonia’s intent in selecting the mark. Gonia has stated on her social media that her title was not inspired by the Patagonia brand, but rather she based her name on the South American region of Patagonia. While this may be favorable to Gonia in the likelihood of confusion analysis, it deprives her of a parody defense as she is not claiming any association with Patagonia’s longstanding brand. This legal battle may reveal where trademark rights end and expressive activism begins. While the internet remains outraged, the line between consumer protection and protections surrounding self-expression and advocacy will be drawn in court.

The 2026 World Cup is in full swing across the U.S., Canada, and Mexico. FIFA closely guards the intellectual property surrounding the World Cup, including word marks associated with the tournament and even the trade dress of the official trophy. But FIFA’s strict enforcement of its IP rights could restrict the ability of businesses to communicate with their customers about the tournament and implicates trademark fair use principles. Only rights holders and licensees, such as official sponsors and affiliates of the 2026 FIFA World Cup, are permitted by FIFA to use the official marks. FIFA has thousands of registered trademarks worldwide and a history of enforcing the marks. In 2022, FIFA successfully sued Puma over the marks “PUMA WORLD CUP QATAR 2022” and “PUMA WORLD CUP 2022” leading to the cancellation of the marks. During the 2014 World Cup in Brazil, 274 items were confiscated from the group-stage matches in the host country for infringing on FIFA’s marks. FIFA’s enforcement also extends to brands or companies that imply connection with its registered marks. In 2010, South Africa’s Kulula Airline was forced to pull an ad campaign that described the airline as the “Unofficial National Carrier of the You-Know-What.” Ahead of the 2026 World Cup, FIFA made it clear that this year would be no different. In addition to marks like “FIFA WORLD CUP 26,” FIFA’s brand guidelines also state that marks such as “WORLD CUP” and “COPA MUNDIAL” are official intellectual property of FIFA. To aid in enforcement, FIFA has enlisted local volunteers to police advertisements and businesses near to tournament locations. Even using general terms could place businesses in FIFA’s enforcement crosshairs, if they imply affiliation with FIFA. While the restriction of the marks makes sense to stop the sale of knock-off t-shirts, it also can prevent small businesses like restaurants or bars from clearly informing their customers that they will be streaming the tournament—and that may be fair use. The use of a famous mark for commercial purposes may be permitted under fair use if the famous mark is not being used to designate the source of the business’s own goods or services. Part of FIFA’s strategy is to treat any use of its marks as the business implying that the watch party, event, sale, or product is officially associated with or endorsed by FIFA, thus infringing on the exclusive rights of rights holders and licensees. However, there are very limited ways to describe or promote an event that is centered around the World Cup in a manner that is clear to customers, which could indicate that the use of some of FIFA’s marks would qualify as fair use. Although its strategies may appear extreme, FIFA wants to prevent any chance their valuable marks will be diluted, through either the weakening or tarnishing of their brand. While a business hosting a World Cup watch party seems harmless, without strict enforcement these events could crack open the door to dilution. FIFA is not the only sporting organization with a similar strategy—the NFL is also known for their aggressive defense of the “SUPER BOWL” mark. Any use of “Super Bowl” in commercial activity to draw attention is targeted by the NFL’s enforcement strategy. The revenue the NFL earns from broadcasting rights, advertisers, and official sponsors incentivizes the NFL to closely guard their brand and keep others from profiting from its goodwill. However, these strategies can backfire. In 2007, the NFL sent a cease-and-desist letter to a church in Indiana that was hosting a Super Bowl watch party and charging $3 per person. The NFL received backlash for the crackdown on a religious organization, and ultimately reversed course, allowing religious organizations to livestream the event. Even if some limited uses of FIFA’s marks would qualify as fair use, FIFA’s deep pockets and aggressive strategies make it unlikely that the small businesses impacted will find that legal battle worth the time and money. But FIFA might consider the lesson learned by the NFL and how backlash from cracking down on small businesses might affect their brand.

The noise around AI adoption in the legal industry has reached deafening levels. Seemingly every other week one of the major players such as Anthropic, Harvey, or Legora announces a new model, plugin, platform, or tool to improve legal workflows, or a law firm announces firmwide adoption of the same. In some cases, law firms have even announced their in-house development of bespoke AI-tools. As it turns out, the United States Patent and Trademark Office (“USPTO”) has decided to join in on the fun: this past April the USPTO announced the launch of several new AI features to facilitate an easier and more efficient trademark search and application process. The first one is a feature in the USPTO’s trademark search system that allows users to search for trademarks that are similar to their mark by uploading an image of their mark. The system then identifies trademarks that contain design elements that are similar to the uploaded image of the user’s mark. While this is a step in the right direction to modernizing the USPTO’s search platform, the announcement signals that this feature is not fully developed because the USPTO is telling users to try their “new beta features.” Perhaps hedging further on the tool’s capabilities, the announcement states that the feature should be viewed as a supplemental search strategy that “doesn’t replace a traditional clearance search.” In any event, that applicants and registrants can now conduct image searches the same way as they can on a search engine is a positive development, as it provides users with another way to cross-check for conflicting marks that does not involve using design search codes. The second is a feature that addresses mark descriptions and color claims for design marks, which can be a highly technical and time-consuming aspect of applying for a trademark with design elements that can cause delay in the application process if it is not done correctly. Specifically, every significant visual element such as shape, color, and/or size must be described to claim sufficient protection over those elements. To alleviate the frustrations associated with this process, the USPTO’s new feature allows applicants for design marks to upload images of the mark. The AI tool then makes suggestions for the mark description and color claims. Upon close review for accuracy, applicants can then accept, reject, or modify the AI tool’s suggestions and, to the extent not rejected, import them into the trademark application. Clearly, the USPTO is leaning into the use of image searching and rightfully so. Trademarks often include design elements or logos that can be difficult to describe but are critical to defining and protecting trademark rights. This feature provides a straightforward and efficient method for applicants to capture the design elements of their mark in a less tedious manner that is more natural, efficient, and (ideally) accurate. The third is an agentic tool (because why not join the agentic wave!) that can be used to immediately assign international classes to unclassified applications, and to add design search codes and pseudo marks to applications so that they are searchable for trademark examiners and attorneys alike. The USPTO has dubbed this tool the Trademark Classification Agentic Codification Tool, or “Class ACT.” In the announcement for Class ACT, the USPTO acknowledges that the process of adding design search codes, pseudo marks, and international classification to applications for marks with logos, designs, unconventional spelling, and/or no international classes designated bogs down examiners, who rely on these items to conduct searches in connection with examinations. The Class ACT also benefits the public in that it reduces the timing of classification and design search coding from five months to minutes, and allows the trademark examination process to proceed more efficiently. While the USPTO’s AI improvements do not rank among the flashiest that have recently been announced in the legal tech world, they certainly demonstrate that the USPTO is embracing generative AI to improve speed and efficiency for trademark applicants. We expect this trend to continue, as the USPTO has stated that “[m]ore AI trademark solutions are coming soon.” One can only hope for a Harvey or Legora for trademarks next!

Operation Bluebird, Inc. (“Bluebird”) and X Corp. are locked in a dispute over the future of the Twitter brand, stemming from the platform’s rebrand from “Twitter” to “X” in 2023. The TMCA covered the rebrand. In December 2025, Bluebird filed a petition with the Trademark Trial and Appeal Board (the “Board”), seeking to cancel X Corp.’s TWITTER and TWEET-formative registrations. Around the same time, Bluebird launched the website www.twitter.new, announcing its plans to operate a “trust-first social platform,” branded “Twitter.new.” The platform is slated to launch sometime this year, though prospective users can attempt to reserve their handles now. The twitter.new website includes a disclaimer at the bottom of each page, stating it is not affiliated with X Corp. or Twitter, Inc. Roughly two weeks later, X Corp. sued Bluebird in federal court for attempting to “steal” the Twitter brand. Specifically, X Corp. raised claims trademark infringement, false designation or origin, unfair competition, deceptive trade practices, dilution, and copyright infringement, all based on TWITTER marks, TWEET marks, and the bird logo (collectively, the “Twitter Marks”). X Corp. sought a preliminary injunction, enjoining Bluebird from (allegedly) infringing X Corp.’s trademarks and copyrights. X Corp. argues the Twitter brand is alive and well, asserting that millions of users access the X platform via X Corp.’s twitter.com domain name—which redirects users to x.com—and that more than 200,000 mobile users still use the original Twitter mobile app. X Corp. also argues that many third parties still refer to “Tweets” and to X Corp’s platform as “Twitter.” According to X Corp., Bluebird’s actions are willful infringement. X Corp. points to Bluebird’s own statement that its team includes “former Twitter trademark counsel Stephen Coates.” In its answer, Bluebird raised many defenses, including that X Corp. abandoned the Twitter Marks and that X Corps.’s claims are barred by X Corp.’s fraud at the U.S. Patent and Trademark Office (“USPTO”). Specifically, Bluebird points to Elon Musk’s post announcing the “X” rebrand on June 2023, which stated “soon we shall we shall bid adieu to the Twitter brand and, gradually, all the birds.” The following day, X Corp. unveiled its new “X” branding and began implementing the changes. Bluebird argues that new applications and renewals filed for Twitter Marks with the USPTO after the (alleged) abandonment constitutes fraud. The cancellation before the Board is suspended, pending a final decision in district court. X Corp.’s motion for preliminary injunction is pending before the district court as the parties exchange supplemental briefs. The TMCA will be continue to follow this case and update our readers when the district court rules on the preliminary injunction.

The Dorsey Trademark, Copyright + Advertising team and the IP Litigation team attended the 2026 International Trademark Association Annual Meeting in London. The Dorsey team was represented by seventeen attorneys from Dorsey’s Minneapolis, Denver, Seattle, Dallas, New York, London, Hong Kong, and Beijing offices. We thoroughly enjoyed our time in London and want to share some highlights from the meeting: Dorsey’s Reception – Dorsey’s annual INTA reception took place at the Churchill War Rooms, the remarkable underground headquarters where Winston Churchill and Britain’s wartime leadership coordinated military strategy during World War II. Tucked beneath the streets of Westminster and preserved largely as it was left in 1945, the War Rooms offered guests a rare opportunity to step inside a pivotal piece of history while connecting with colleagues, clients, and friends of the firm. From the historic Cabinet Room to the map-lined operations center and exhibits chronicling Churchill’s leadership, the venue provided an unforgettable backdrop for conversation and networking. The combination of a world-class setting, strong attendance, and an international group of guests made the reception one of the standout social events of INTA week and a memorable way to celebrate Dorsey’s relationships across the global trademark community. Thank you to everyone who joined us at the reception and to the team who made the evening such a success! It was a pleasure to welcome guests to London during such an important week for the global IP community. Dorsey’s LanhamAITM Platform – As trademark practitioners know, consumer surveys testing for a likelihood of confusion are becoming increasingly prominent and important in federal court litigation and in proceedings before the Trademark Trial and Appeal Board. Since 2022 alone, approximately one-third of court decisions addressing consumer surveys and related expert reports criticize or exclude the research. Mike Keyes, consumer survey expert and the head of Dorsey’s Consumer Insights Group, and Connor Hansen, a Partner in Dorsey’s IP Litigation Group, debuted LanhamAITM during the INTA conference. LanhamAITM is an AI-powered platform developed by Dorsey to instantly analyze consumer survey research and deliver a curated analysis of how courts have evaluated similar research. It identifies potential flaws in the survey design, methodology, expert qualifications, and other common pitfalls identified by the courts. The platform has already proven to be a valuable tool for the Dorsey team and we are excited for its potential as we continue to refine and expand its capabilities. Digital Advertising Panel – Dorsey Partner Tiffany Shimada was a speaker on a panel entitled Digital Advertising Under the Microscope: AI Claims, Dark Patterns, and Global Legal Trends. The panel discussed current case law developments around the world, including background and case law progeny of DABUS, and specifically ownership of AI created content through the lens of patent, trademark and copyright laws around the world and how regulatory bodies are influencing the landscape through the confluence of consumer and financial protection laws. Of note was agentic AI and how brands can and should plan for optimization of AI agents in marketing to AI consumers, including machine-readable specs, structured data, and value propositions that resonate with algorithms in addition to human consumers. Regarding risks, the panel addressed scrutiny over AI washing and regulatory responses to AI washing claims. In particular, the panel addressed the U.S. Federal Trade Commission’s aggressive response to false and exaggerated claims of AI saving consumers and businesses money and efficiencies without proper substantiation. Such claims open the advertiser to actionable claims under Section 5 of the FTC for false and misleading advertising. Further, there is heightened risk for consumers of dark patterns, whereby AI optimizes manipulative interfaces at scale, personalizing friction and choice architecture, and drawing additional regulatory scrutiny for advertisers whether they engage directly or indirectly in dark patterns. In recent high-profile cases, dark patterns have led brands to pay high financial damages as well as reputational damage, which is difficult to predict and even harder to overcome once the damage has occurred and consumer impressions have formed. Addressing the more practical aspects of using AI, the panel discussed advertising around the world and risk management for IP professionals coordinating global branding and marketing programs, including review of contractual provisions internally as well as for vendors, partners, and talent who may be utilizing AI in their products and services. Finally, the panel discussed how to manage IP portfolios and technology within existing global legal frameworks by keeping humans at the forefront of the process, documenting contributions as between humans and AI in the creation of IP, and making adequate disclosures—all while considering evolving consumer perceptions and technological developments. The panel was moderated by Jayde Wood, a Partner at Gowling WLG (Canada) LLP. And Tiffany was joined on the panel by speakers Ryan Abbott from the University of Surrey Law School and Enrico Bonadio, Professor of Law, City St. George’s University of London. Law Firm Committee Meeting – Cathy Dahl provides the following update of the Law Firm Committee meeting, held on May 5, 2026, at the Excel London: We had a great turnout for the Law Firm Committee meeting in London! The LFC focuses on the development of member benefits, services and educational programs specifically for law firms, with a particular focus on materials for mid-level associate and management-level IP professions. Key focuses for the LFC include looking forward to the future of law firms and their technological needs, particularly in connection with artificial intelligence, and providing insight and strategies to best position law firms for success. Cathy is part of the Mid-Level Law Firm Professionals Subcommittee and leads the Career Pathways project team. The focus for the project team this term is to continue to develop materials that concentrate on options available to mid-level associates, including non-partnership and partnership tracks in a law firm, in-house legal opportunities, alternative careers in a law firm or complementary thereto, and how to navigate and identify potential opportunities based on individual goals and life circumstances. The overall messaging is that creating a career path should be individually intentional and that law firms must be ready to work with legal talent to create pathways that are both individually rewarding and that also benefit the firm. Refurbishment of Genuine Goods in Korea – Judge Young Gi Kim of the Intellectual Property High Court discussed a recent Korean Supreme Court decision clarifying that refurbishment of genuine goods at the owner’s request for personal use does not constitute trademark infringement, as there is no use of the mark as a source identifier. However, the Court emphasized that this will depend on the facts. Where the refurbishing party plays a leading role, such that the activity goes beyond a personal service and begins to resemble commercial production, infringement may still arise. Relevant factors include control over design, ownership of the finished product, material sourcing and whether the goods enter commercial circulation. The discussion also noted the courts’ increasing willingness to award enhanced damages in cases of willful infringement. Damages and Injunctive Relief in Japan – A judge from the Tokyo District Court, Intellectual Property Division, highlighted recent cases illustrating the Japanese courts’ pragmatic approach to enforcement. In particular, it was noted that where a defendant refuses to produce financial records, courts may rely on the plaintiff’s asserted figures as the basis for assessing damages, and may adjust royalty rates upward in light of bad faith conduct. In a separate Zoom case, the Tokyo District Court awarded damages for an earlier period of infringement but declined injunctive relief. While the marks were found to be similar, the court considered that the defendant’s mark had, over time, particularly during the COVID‑19 pandemic, gained sufficient independent recognition such that the likelihood of confusion had diminished. These examples highlight the Japanese courts’ flexible approach, both in addressing evidential issues and in assessing remedies by reference to evolving market realities.

Wherever innovation occurs, intellectual property follows. Intellectual property (or “IP”) refers to trademarks, copyrights, patents, and trade secrets: the legal framework that safeguards the ownership of brands, artistic works, and inventions. The term has become so synonymous with progress and novelty that in the increasingly mainstream video game industry, “IP” has also become shorthand for any game franchise. Established franchises include Mario and Resident Evil (each of which have been adapted into blockbuster films), and relatively newer games such as The Last of Us and Elden Ring have also received high praise. As a result, it’s no surprise that the game industry has been valued at nearly $200 billion as of 2025. Intellectual property law does not automatically provide sweeping protections to every aspect of game design, story, and mechanics, however. Depending on what game developers create and how publishers use those new creations, they may not be protectable at all. Accordingly, understanding the differences between different types of intellectual property can be crucial to safeguarding old and new franchises. This article is the first in a series providing an overview of intellectual property types and the protections they offer in the context of video games. First up, trademarks. What is a Trademark? Trademarks are source-identifiers: they inform consumers who made the product or who is offering the service you are buying. Trademarks can be almost anything, so long as they indicate the source of a product or service. Obvious examples include company names and game franchise titles, such as ACTIVISION being the publisher of the well-known CALL OF DUTY series of first-person shooters, each of which are prominently featured in the games’ packaging and credits. But that is not all; characters and their designs may also be used to represent a company. Ever purchased a game or seen a movie featuring a blue hedgehog with a penchant for gold rings? Chances are they came from the video game company Sega, which owns various trademark registrations for its Sonic the Hedgehog character. What are Trademark Rights? Trademark rights provide their owner the ability to use the trademark and prevent others from using confusingly similar (or “infringing”) marks. If there is a likelihood that a consumer could be confused into thinking one company’s trademark is affiliated with or related to another company’s mark, one of those parties may assert an infringement claim against the other. There is a reason only one red-clad mustachioed plumber prominently appears in the video game industry. In the United States, owners automatically accrue trademark rights through use of a mark in connection with the sale of goods or services, and those rights last as long as the mark continues to be used. To make the most of those rights, owners should also file an application to register the mark(s) with the United States Patent & Trademark Office (“USPTO”). Having a trademark registration provides the owner with numerous advantages, including a presumption of ownership and validity, nationwide priority as of the registration’s filing date, the ability to use the ® symbol, eligibility to enroll the mark in the Amazon Brand Registry, and many more. In some countries, registering a trademark is required to own any trademark rights. Registering a Trademark To secure trademark rights or a trademark registration, owners must actually use the mark as a source-indicator; the mark cannot function just as a general design element or character. For example, in 2021, Epic Games was denied a registration for the “Loot Llama” design shown below in connection with downloadable software for the video game Fortnite. Pointing to Epic’s use of the llama as a repeated background element on the company’s website and intermittent appearances in the game itself, a USPTO administrative board held that consumers would only view the llama as a “character or game piece.” As a result, it did not adequately function as a source-identifier for the company’s downloadable video game software. The USPTO’s administrative board made a similar ruling in 2023 denying registration of a video game character design, but specified there is no “bright line rule against registration of characters.” The issue is whether the character as-used is used to identify the source of the game, or merely “identifies [] a particular character in a creative work.” To use a character design as a trademark, just as with any potential mark, owners should instead use it in a way that “identif[ies] and distinguish[es] the source of the game itself—for example, on the game’s launch screen or more prominently on [the game’s purchase site], such as in the header of the page.” Best Practices: Trademarks for Video Games Intellectual property and video games go hand-in-hand, with the term “IP” becoming synonymous both with game franchises and the legal protections surrounding them. Trademarks are a crucial part of intellectual property law, generally and in the context of video games. To make the most of trademarks, video game developers and publishers should keep the following in mind: Trademarks can be almost anything that indicates the source of a product or service, including a company or brand name, game or franchise title, a main character’s name or design, and more. Trademark rights provide their owner with the ability to use a mark and prevent others from using confusingly similar marks. Trademark rights are accrued through use and last as long as the mark continues to be used. For maximum protection, owning a federal registration for the mark is best. Although anything can be a source-identifier, make sure it is used in the right way to secure trademark rights and/or registration. Use the mark on a game’s launch screen or on its purchase page, not just as a general design element of the game.

In China, the Revised Anti-Unfair Competition Law (AUCL 2025) came into effect on October 15, 2025. Although there are various amendments, this update focuses on Article 7, which corresponds to Article 6 of the 2019 version, and introduces significant changes aimed at addressing digital misuse of trade identifiers and an enhanced legal framework for resolving conflicts between company names and trademark rights. The revisions respond to challenges arising from the digital economy and bring clarity to the relationship between company name rights and trademark rights, echoing Article 58 of the PRC Trademark Law. Recognition of Online Identifiers as Protectable Trade Identifiers The amendment expands the scope of protectable trade identifiers. In addition to traditional identifiers—such as product names, trade or enterprise names, packaging, trade dress, personal names, and domain names—the revised law now explicitly recognizes: Online nicknames Social media account names App names App icons These additions reflect the rapid growth of livestreaming, influencer marketing, and platform-based business models. Under Article 7 of AUCL 2025, unauthorized or misleading use of these digital identifiers constitutes an act of unfair competition and an act of confusion, aligning legal protection with modern online commercial practices. Harmonization with Article 58 of the PRC Trademark Law Article 58 of the PRC Trademark Law provides that using another party’s registered or unregistered well-known trademark as the distinctive part of an enterprise name in a manner that results in misleading the public constitutes unfair competition and should be governed by AUCL. However, earlier versions of AUCL lacked a corresponding explicit provision, relying instead on a “catch-all clause” under Article 6(4) and judicial interpretations by China’s Supreme People’s Court. AUCL 2025 now introduces a new paragraph—Article 7(4)(2)—which explicitly stipulates that “[u]nauthorized use of another party’s registered trademark or unregistered well-known trademark as the distinctive part of an enterprise name, thereby misleading the public into believing that the goods are those of another party or that there is a specific connection with another party, constitutes an act of confusion.” This provides a clearer legal basis for resolving conflicts between enterprise name rights and trademark rights, enhancing consistency and predictability in enforcement. It is worth noting that Article 7(4)(2) does not make any reference to “prominent use” which is found in relevant judicial interpretations by the Supreme People’s Court. This seems to suggest that, under AUCL 2025, “prominent use” is only one of the factors to be considered when assessing and determining whether the use is misleading and likely to confuse to the public rather than a legal definitional requirement for an act of confusion. Article 7(4)(2) further provides that misleading the public by using another party’s product name, enterprise name (including abbreviation or distinctive part), registered trademark, or unregistered well-known trademark as search keywords also constitutes an act of confusion. One of the key objectives of AUCL 2025 is to improve the legal framework by moving from mere reactive punishment to proactive prevention of unfair competition acts. Accordingly, the revised Article 7 of AUCL 2025 marks a significant step in adapting China’s competition law to the realities of the digital economy. That said, some commentators note that the new law does not provide guidance on protection against unfair competition in fields like AI technology, such as incorporating others’ trademarks, copyrighted content, trade names, or online identifiers into AI training data, or reproducing those identifiers in AI‑generated outputs. We await how these provisions will be interpreted and applied in practice. The ultimate impact of AUCL 2025 will depend on enforcement trends, judicial interpretations, and administrative guidance, all of which will shape the contours of brand protection and competition law in China. We will continue to monitor developments closely and provide updates on the Chinese practice under AUCL 2025 as its jurisprudence evolves to help businesses anticipate risks and align their compliance strategies with the new regulatory landscape.

Klutch Sports Group is a well-known sports management company that was founded in his home city by Cleveland native Rich Paul and that represents – most famously – LeBron James (also born and raised in Ohio). Klutch Sports owns a family of trademarks for the KLUTCH name, as well as rights in various KLUTCH logos, including: Since its founding in 2012, Klutch Sports has continued to grow, expanding not only across the United States but internationally as well. In 2019, for example, Klutch Sports entered into a partnership with United Talent Agency, LLC, a large global talent agency, and by 2025, Forbes listed Klutch Sports as the fifth most valuable sports agency. Despite this growth, the company and its founder remain deeply rooted in their Ohio origins. That’s probably why Paul and Klutch Sports took particular offense when an Ohio cannabis company – founded only in 2020 – not only named itself “Klutch Cannabis,” but is also using the same black-and-gold color motif and a virtually identical font as Klutch Sports. The following comparison shows just how similar the companies’ branding is: Doesn’t exactly look like a coincidence, especially when the companies are from the same state. Klutch Sports first sent Klutch Cannabis a series of demands that Klutch Cannabis stop using the mark. When that didn’t work, on March 16, 2026, Klutch Sports filed a complaint against Klutch Cannabis in federal court in the Northern District of Ohio, alleging trademark infringement and related claims. The complaint noted that both companies sell apparel, including sportswear, that prominently feature the KLUTCH mark: Moreover, as one would expect, both companies use the KLUTCH mark on packaging, on social media, and in other forms of advertising and marketing. The complaint also alleges both likelihood of confusion – and actual confusion. It notes that professional athletes and sports celebrities “routinely invest in, own, and publicly endorse cannabis brands.” As a result, according to Klutch Sports, consumers are accustomed to seeing a connection with sports, professional athletes, and their agents, and cannabis companies, and thus confusion in the marketplace is likely. The complaint also references a few examples of what it claims is actual confusion. In one instance, someone commented on a new article announcing the opening of one of Klutch Cannabis’s dispensaries: “Is there any connection between Klutch Cannabis and Klutch Sports Group?” In another example – and to add insult to injury – when Rich Paul himself visited a Klutch Cannabis dispensary in Cleveland, someone recognized him and informed Mr. Paul that he was planning to buy Klutch Cannabis’s sweatshirt, apparently under the impression that Klutch Cannabis was affiliated with Klutch Sports. Finally, the complaint alleges that multiple individuals have contained Klutch Sports under the mistaken belief that Klutch Sports owns or operates Klutch Cannabis. How is this dispute likely to play out? Well, on the one hand, Klutch Cannabis could try to argue that it sells products to different customers than those of Klutch Sports – and that in general there isn’t a lot of product overlap. But given the geographic proximity, the identical use of “Klutch” (with a “K” no less), and the similar color motif and font, consumer confusion does seem to be fairly likely. And given the Klutch Cannabis’s use of a similar mark is almost certainly not an accident, it’s probably not going to win this battle.

A recent United States Court of Appeals for the Federal Circuit (“Federal Circuit”) decision highlighted the importance of litigation strategy. In 2023, the Trademark Trial and Appeal Board (“Board”) granted Uninterrupted IP LLC’s (“UNIP”) request to cancel a trademark registration held by Game Plan Inc. (“Game Plan”) and found that UNIP had priority over Game Plan, defeating Game Plan’s likelihood of confusion claims. The Federal Circuit affirmed both rulings, and declined to reconsider the case earlier this week. The case began years ago over which party had the rights to I AM MORE THAN AN ATHLETE, and likely would have gone in Game Plan’s favor but for UNIP seizing a strategic opportunity and Game Plan fumbling its case. Game Plan is a youth charitable organization focused on empowering student athletes in sports and life. It registered the mark on June 5, 2018 for “Charitable fundraising services by means of selling t-shirts to raise funds for educational and entertainment programs.” Game Plan filed this application on December 28, 2016 and claimed an October 8, 2017 use in commerce date. UNIP is a media company, of which LeBron James is a founder, that provides athletes an opportunity to build identities beyond sports. In March 2018, UNIP filed intent-to-use applications for , MORE THAN AN ATHLETE and I AM MORE THAN AN ATHLETE for clothing and entertainment services. In November 2018, Game Plan opposed UNIP’s applications, alleging likelihood of confusion. Also in 2018, a third party, More Than an Athlete, Inc. (“MTAA”), contacted both Game Plan and UNIP, objecting to each entity’s use of “More Than an Athlete.” MTAA was a small enterprise started by DeAndra Alex, a sports lover who wanted to highlight athletes’ non-sports accomplishments. Ms. Alex had been selling clothing and wristbands under MORE THAN AN ATHLETE since 2013. MTAA also registered MORE THAN AN ATHLETE for “publicity and sales promotion services” in 2013. Following MTAA’s objections, UNIP engaged with Ms. Alex and in early 2019, acquired all of MTAA’s rights to MORE THAN AN ATHLETE. As part of the deal, UNIP also hired Ms. Alex as a consultant. Relying on the new priority position gained by these rights, UNIP turned the tables on Game Plan with a counterclaim to cancel Game Plan’s registration based on a likelihood of confusion. In its defense, Game Plan argued that the MTAA assignment was invalid because it constituted an assignment in gross and occurred during the opposition proceeding. Game Plan’s counsel, however, failed to submit any evidence to support such claims. The assignment agreement included customary language to assign all of MTAA’s goodwill along with the mark. Based on that, and the fact that the use of the mark for clothing was continuous from MTAA to UNIP, both the Board and Federal Circuit found the assignment to be valid. As a result, UNIP had acquired valid and enforceable common law rights in the mark, giving UNIP priority. As to timing, the tribunals found no authority that acquiring rights to change one’s position in litigation is improper. To the contrary, motivation for an assignment is irrelevant. Additionally, the Federal Circuit found the Board did not err in its consideration of evidence. Game Plan had attempted to rely on evidence it had submitted during a prior summary judgment motion without reintroducing such evidence during the trial period. The tribunals both agreed that it was proper for such evidence not to be considered, particularly because Game Plan’s counsel was expressly advised that evidence needed to be submitted at each stage. The case is an important reminder of how vital strategic decisions are during disputes. Turning an objection from one party into an opportunity not only to collaborate but to defeat the claims of another party made all the difference in this case. Trademark litigators are also cautioned to remember the importance of following procedure carefully.

Fans of the iconic Betty Boop character have taken to social media to share their dream celebrity casting for Miss Boop now that Dizzy Dishes, the six-minute cartoon that first featured the Betty Boop character, has entered the public domain. However, fans may be disappointed to learn this entrance into the public domain doesn’t make the Betty Boop IP free for all to use. Originally introduced in 1930 by Fleischer Studios, Dizzy Dishes depicts a Betty Boop character who is “dog-like; [a] singing, dancing hybrid being with huge, droopy Cocker Spaniel-like eyes, a button of a nose and long puppy dog ears that tossed back and forth as she sang and danced.” In fact, the Betty Boop character the world has come to recognize was not introduced until 1932, and has undergone numerous transformations to keep the nearly 100 year old character relevant in the modern day. Under U.S. Copyright law, works published between 1924 and 1978 are protected at most for 95 years, making the six-minute Dizzy Dishes cartoon and original Betty Boop character available for public use and creation of derivative works. But the versions of Betty which have developed over the last 95 years are still off-limits without proper licensing, and trademark law may provide additional protections for the brand owner. CEO of Fleischer Studios, Mark Fleischer has made clear the company intends to vehemently protect its valuable IP in the Betty Boop character despite the entrance of Dizzy Dishes into the public domain, making an official statement on the Fleischer website which states, in part: While the copyright in the “Dizzy Dishes” cartoon may fall into the public domain in 2026, this does not affect Fleischer Studios’ copyright in the fully developed BETTY BOOP character Fleischer Studios created in subsequent cartoons and other uses and continues to use today.  Fleischer Studios’ copyright in that character will therefore remain in force for some years to come, as will Fleischer Studios’ copyrights in the many subsequently revised and modern versions of the BETTY BOOP character and related elements. Equally important, the BETTY BOOP name and various related character designs are well-known and valuable Fleischer Studios trademarks, recognized and registered around the world for a multitude of goods/services and activities, including a full range of merchandise licensed by Fleischer Studios.  These brands continue to enjoy the full protection of trademark and related laws and are unaffected by the expiration of the “Dizzy Dishes” copyright or any other copyright. Based on this, the public may be able to freely use clips from the Dizzy Dishes cartoon or create a spin-off character from the version of Betty depicted in the cartoon, but use of the BETTY BOOP trademark and character we have come to recognize are likely still off-limits. In the United States alone, Fleischer owns over 25 trademark registrations and applications spanning a wide range of goods and services, including entertainment services and a variety of merchandise products. As such, use of the BETTY BOOP name with any of these protected goods or services may still result in a cease and desist letter. So, while we may expect to see a Dizzy Dishes remake in the near future, third parties should be careful to consider the vast portfolio of still-protected IP rights Fleischer has under its belt, and appears prepared to protect.

The Ninth Circuit recently revived Monster Energy Company’s (“Monster Energy”) trademark and trade dress dispute against a company that markets camping equipment under the mark 4MONSTER. Monster Energy owns the well-known MONSTER word mark, related “M Claw” logos, and the green-and-black trade dress used with these trademarks (the “MONSTER Marks”). The MONSTER Marks are widely recognized in connection with Monster Energy’s popular energy drinks but are also used by Monster Energy and its licensees on a variety of merchandise products including t-shirts and other apparel and, most importantly for present purposes, bags and towels. Defendant 4Monster markets textile-based camping products including towels, backpacks, blankets and robes. It uses the word mark 4MONSTER in connection with these products and the 4MONSTER mark appears in a variety of colors on these products, including green-and-black, blue, yellow, purple, and orange. Monster Energy sued 4Monster in the U.S. District Court for the Southern District of California for trademark infringement, trade dress infringement, and related unfair competition claims. Both parties moved for summary judgment on all claims and the District Court granted summary judgment in favor of 4Monster, finding no reasonable jury could find a likelihood of confusion. On appeal, the Ninth Circuit reversed and remanded, finding that several of the likelihood of confusion factors could weigh in Monster Energy’s favor. It was undisputed that the MONSTER Marks are both conceptually and commercially strong when used in connection with energy drinks. However, the District Court found that Monster Energy failed to show any evidence of commercial strength in connection with non-beverage-related items, such as merchandise. This was because Monster Energy’s evidence of marketing expenditures, revenues, and surveys in support of mark strength all related to the MONSTER brand as a whole. However, Monster Energy did not introduce any evidence specific to its use of MONSTER for merchandise. Monster Energy’s evidence was also vague as to what branded merchandise items are actually sold to consumers, rather than distributed as promotional items. The District Court found this vague evidence to be unhelpful in showing the strength of the MONSTER Marks. It also found that it suggested that the parties’ goods are in fact not related or competing because 4Monster’s products are sold direct to consumers online whereas it remained unclear where or how Monster Energy’s merchandise is sold. Ultimately, the District Court found that all but one of the confusion factors favored 4Monster and granted summary judgment. Undeterred, Monster Energy appealed to the Ninth Circuit, which disagreed. It first noted that the MONSTER Marks are conceptually distinctive and entitled to the highest degree of trademark protection. As for commercial strength, the widespread distribution of Monster Energy’s merchandise, whether sold or otherwise, is sufficient for a reasonable juror to find that the MONSTER Marks have marketplace recognition in connection with merchandise. The Ninth Circuit also held that a jury could find that the parties’ goods are similar or complementary. It noted that MONSTER-branded towels and bags, and 4MONSTER-branded towels and backpacks are similar in use and function. MONSTER energy drinks could be complementary to 4MONSTER-branded towels and backpacks because Monster Energy markets its energy drinks as “adjacent to extreme sports and outdoor adventure activities.” Compounding the likelihood of confusion was the fact that the parties’ goods are low-cost, such that consumers are unlikely to exercise a high degree of care in their purchasing decisions. The Ninth Circuit found that other likelihood of confusion factors, including the marketing channels used by the parties and 4Monster’s intent in selecting the mark, do not favor a likelihood of confusion. Still, enough of the factors weighed in Monster Energy’s favor and summary judgment was inappropriate. Monster Energy will now have another chance to pursue its claims in the District Court. We’ll be monitoring this case.

We all have childhood memories of it: the sweet tang of fruit jelly mixed with the salty crunch of rich peanut butter, sandwiched between two pieces of soft sliced bread. Maybe you preferred it with the crusts on, cut along the diagonal, or with no crusts at all, cut into four square servings. Or maybe you enjoyed a circular, crimped version packaged in plastic wrap and tucked conveniently in our lunch box. In whichever preparation you favor the classic PB&J sandwich, various forms of it are, and have been, a lunchtime staple of schoolkids for generations. I, myself, am a child of the ‘90s, and vividly remember my peers enjoying a particular version of a thawed, disc-shaped, crustless PB&J in the school cafeteria. These sandwiches—produced by J.M. Smuckers Company (“Smuckers”) and branded under the UNCRUSTABLES trademark—were first launched into the U.S. market in 1996 and have maintained their popularity ever since. In the last two decades, Smuckers has invested billions of dollars to develop and grow the goodwill and branding associated with these peculiarly shaped sandwiches. Not only does Smuckers own a number of federal U.S. trademark registrations for the UNCRUSTABLES name and stylized logo covering sandwiches and other related food goods, but it also claims rights in the distinctive style and design of the product itself. According to Smuckers, it has source identifying trademark rights in and to “the design of a round crustless sandwich, inclusive of the configuration in a round pie-like shape with distinct peripheral undulated crimping,” as well as packaging picture representations of “a round crustless sandwich in whole and with a bite taken out of it showing filling on the inside” of the sandwich. In short, Smuckers claims exclusive rights in the trade dress of its UNCRUSTABLE sandwiches. “Trade dress” constitutes a form of trademark right wherein a “symbol or device” serves a source identifying function—consumers view this symbol or device and associate it with the source of the corresponding goods, and not just the goods themselves. See Trademark Manual of Examining Procedure, Section 1202.02 (citing 15 U.S.C. § 1052). Originally, trade dress protection only protected the packaging or dressing of a product (the most famous example for which being the Coca-Cola bottle), but in recent years, such protection has expanded to encompass the design of the product itself, as well as its color or flavor. See id. The product design is defined as the “total image and overall appearance” of the product, as measured by a totality of its elements, including its features like size, shape, color, texture, or corresponding graphics. See id. (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1, 23 USPQ2d 1081, 1082 n.1 (1992)). But protecting trade dress as trademark rights is tricky and represents a high bar because the claimed trade dress must be both non-functional (e.g., not essential to the use or purpose of the article) and distinctive. And making this protection more difficult to garner, in its 2000 decision in Wal-Mart Stores v. Samara Bros., the U.S. Supreme Court held that, by default, product design is not inherently distinctive, and therefore, requires secondary meaning in order to garner any form of trademark rights and a federal trademark registration. Proving that trade dress has acquired the sufficient secondary meaning to become distinctive is no small feat. Under Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f), secondary meaning is established through substantially exclusive and continuous use of the trade dress as a trademark by the owner in commerce for at least five years. In practice, the owner of the product design must prove that, by virtue of its exclusive, continuous use of the product design in the market, consumers have come to recognize that particular product design as a source identifier of the goods, and not just a design of the goods themselves. And Smuckers did just that with its UNCRUSTABLE sandwich product design. In 2002, Smuckers successfully registered with the U.S. Patent and Trademark Office (“USPTO”) the trade dress for its sandwich, the product design for which is seen below (see U.S. Reg. No. 2623577): It also owns, among many others, U.S. Reg. No. 5,941,408 for a 2-D depiction of its UNCRUSTABLE sandwich with a bite out of it, seen below, that Smuckers says it uses in many forms as a pictorial representation on the UNCRUSTABLE product packaging: Given Smuckers’ substantial investment in the intellectual property of its UNCRUSTABLES-branded product, particularly its trade dress, it has a vested interest in protecting the exclusivity of that product design as a brand, and not just as a food preparation style. And it has done just that. On October 13, 2025, in the Northern District of Ohio, Smuckers filed a lawsuit against Trader Joe’s Company (“Trader Joe’s”) regarding Trader Joe’s own sale of a “crustless, peanut butter & strawberry jam sandwich” product. See Case No. 5:25-cv-02181. According to Smuckers’ complaint, Trader Joe’s product is a “round, crustless sandwich with a crimped edge that [Trader Joe’s] is marketing with a bite taken out of it on the packaging that mimics” Smuckers’ UNCRUSTABLE products. The subject Trader Joe’s product is shown below: Notably, Trader Joe’s is not using the UNCRUSTABLE trademark, or any brand confusingly similar to the same, and thus, Smuckers’ claims are focused only on the product design of Trader Joe’s sandwiches. In addition to claims of federal and common law trademark infringement and others, Smuckers’ complaint claims its UNCRUSTABLE trade dress is famous, and Trader Joe’s use of a similar product design is diluting the strength of Smuckers’ rights. The fame of its trade dress is yet another high bar Smuckers will have to prove in order to succeed in its claims against Trader Joe’s. There is no question that Smuckers has spent a tremendous amount of time and money in protecting this trade dress. But if this case moves forward, Smuckers will face a test it did not have to at the USPTO. During the prosecution and examination of its trade dress application—importantly, an ex parte proceeding—Smuckers submitted promotional materials, sales volume, advertising expenditures, and media mentions to support its claim that the UNCRUSTABLES trade dress had acquired the requisite secondary meaning. The USPTO accepted this evidence and granted Smuckers its sought-after registration. But now Smuckers must prove consumers are likely to be confused by Trader Joe’s version of the crimped PB&J. This might be a challenge. After all, at the point-of-sale, consumers will see the Trader Joe’s sandwiches covered in Trader Joe’s wrapping, all within the context of a purchasing environment where Trader Joe’s branded products are ubiquitous. Perhaps Smuckers will have to consider a post-sale theory of confusion where students and lunchroom attendants are queried as to whether they believe Trader Joe’s sandwiches are really UNCRUSTABLES. Smuckers may have spent billions in protecting its trade dress, but whether that money has translated into consumer perception such that confusion is likely has yet to be seen, and may soon be put to the test.

Members of the Dorsey Trademark, Copyright + Advertising team recently attended a presentation by U.S. Customs and Border Protection (“CBP”). CBP is the federal law enforcement branch responsible for keeping counterfeit and infringing products from crossing into the United States, including products that violate trademark and copyright protections. Here are a few of the highlights from the training: This is the Way – Register Your IP: just as registering your intellectual property with the Copyright Office and U.S. Patent and Trademark Office can provide stronger rights, recording copyright and trademark registrations with CBP can significantly increase protections for rights owners. Recording intellectual property with CBP provides them the authority to seize infringing merchandise, including gray market goods (see further below for an explanation of gray market goods). Once recorded, a rights owner may also request to conduct trainings to CBP personnel on how to best spot infringing goods at TradeSeminars@cbp.dhs.gov, submit allegations of infringement online at https://www.cbp.gov/trade/e-allegations, be given notice of seized goods, and more. You Only Get What You Give: to register a trademark with the CBP, rights owners must own a registration on the Principal Register and pay the required fees. To register a copyright with the CBP, rights owners must similarly own a valid copyright registration with the U.S. Copyright Office and pay the required fees. Rights owners must also include an example of how the trademark or copyright appears on legitimate goods, as well as point of contact information. But this is the bare minimum. To get the most out of CBP protections, it is also important to provide a list of any authorized licensees/importers of goods, or the countries in which authorized goods typically originate. CBP can also use login information for product databases, product identification guides, and even sample products to compare imported goods with legitimate versions. CBP personnel regularly stressed that the more information they have, the better. So to maximize the value of trademark or copyright recordation or CBP, be sure to provide as much detail as possible. When It Isn’t Black and White – Gray Market Protections: akin to finding a British pound coin in your change jar, “gray market goods” are legitimate products that originate in foreign countries, but are not meant to be imported to the U.S. There are two types: “pure” gray market goods that bear the same trademark as those sold by a U.S. entity, but which are completely unrelated to the U.S. entity; and gray market goods protected by the “Lever ” The Lever Rule originates from a 1993 D.C. Circuit case that held goods that are physically and materially distinct from those sold in the U.S. qualify as infringing and can therefore be seized by CBP. For example, MARLBORO-branded cigarettes manufactured by a completely unrelated foreign company are “pure” gray market goods; pharmaceutical goods sold by a European subsidiary of a U.S. company, but which contain active ingredient concentrations not allowed under U.S. regulations, fall under the Lever Rule. Recording your trademarks with CBP can help protect against both of these types of gray market goods, and provide CBP with the ability to seize such goods before entering the United States. Update Your Contact Details and Don’t Leave Them on “Read”: CBP officials may reach out to an intellectual property recordation’s points of contact for clarification regarding whether seized merchandise is authentic or not. Usually in the form of email and accompanied by images of the goods in question, these are opportunities for rights owners to become familiar with active enforcement efforts and the types of infringing goods that CBP personnel are processing. Make sure your point of contact as recorded with the CBP is up to date by contacting IPRRQuestions@cbp.dhs.gov. Otherwise, you may be missing out on this type of correspondence. Be sure to respond quickly when CBP personnel email you about seized goods. Thorough responses are best within 24 hours (or at least, confirmation of receipt and that you will follow up with more detail soon). Act Like You’re Back in English Class: remember when you were taught to write in complete sentences in school? The same applies in responding to CBP requests. When asked whether seized goods are infringing, don’t provide conclusory or flippant responses. Provide enough detail so that personnel can act on what you are telling them. Example helpful responses could include “The goods are counterfeit because the stitching and overall quality of the merchandise is inferior to our authentic goods” or “The goods appear infringing because the format of the product number is wrong—it should be one letter followed by six numbers, not the other way around.” Unhelpful responses can be “These are counterfeit” or “We don’t sell those.” Exhaustive detail may not be necessary, but no detail whatsoever is usually insufficient. Remember International Registrations: remember that the United States is not an island. Infringing goods come from somewhere, and if infringing merchandise is being imported into the United States, there’s a chance it’s also being sent elsewhere. Make sure your intellectual property protections are up to date with CBP, and do the same for other countries in which you do business, and which have comparable enforcement agencies.

In May 2025, the China National Intellectual Property Administration (CNIPA) released updated Guidelines on applications for three-year non-use cancellation actions against registered trademarks (Updated Guidelines). A key change is that the evidentiary threshold for petitioners to commence a three-year non-use cancellation action is now significantly higher than before. In the past, to meet the initial filing expectations, a petitioner would only need to submit minimal search results suggesting possible “non-use” of the challenged registration to the Chinese Trademark Office (TMO). Such materials were often limited to a few pages of general search-engine results (e.g., from Baidu.com or Bing.com). There were no specific requirements on search keywords or platform coverage. Starting earlier this year, we have observed a shift in the TMO’s practice in that it has significantly tightened its acceptance standards for three-year non-use cancellation cases. Office actions are now frequently issued requesting petitioners provide supplemental searches and the results of investigations to substantiate alleged “non-use”. While the Updated Guidelines now provide a non-exhaustive list of acceptable preliminary evidence, no definitive protocol has been issued on how to conduct investigations. Based on recent office actions and examiner feedback, however, the following practitioner tips can help structure a preliminary investigation that meets the TMO’s standards: Conduct general searches across major Chinese search engines (e.g., Baidu.com, Bing.com), major e-commerce platforms (e.g., JD.com, Taobao.com, Tmall.com), and leading social media (e.g., WeChat, Weibo, Xiaohongshu/RedNote, Douyin/TikTok). Undertake industry-specific searches tailored to the designated goods and services. For example, for “clothing”, “shoes” and “socks”, include several leading category-specific platforms or marketplaces relevant to each category. If the registrant is an individual, perform business or proprietary searches under the registrant’s name to ascertain whether they own or control any company or business. If they do, provide evidence that the subject mark is not used by any such entity. For each platform (general and industry-specific), use keyword formats such as “trademark + one designated item”. For example, with the “clothing/shoes/socks” search: run and preserve distinct searches for “trademark + clothing”, “trademark + shoes” and “trademark +socks”. Include timestamps, URLs, search parameters, and consecutive-page screenshots where practicable. For a device mark, or a device element of a composite mark, consider AI-assisted image searches to identify potential use or confusion with similar visuals. If the petitioner and registrant are located in the same city, the TMO may request an on-site investigation report with greater detail regarding use or non-use of the registrant’s mark. In addition, petitioners are increasingly asked to state their reason for the non-use cancellation action (e.g., removing a cited prior mark) and to submit an undertaking confirming that the non-use investigation materials are truthful, accurate and complete. Taken together, the initial evidentiary burden on the petitioners is significantly higher than before. We believe that these changes reflect the TMO/CNIPA’s response to the at times abusive use of non-use cancellation proceedings in China in recent years. This surge in non-use cancellation cases is likely driven by stricter trademark examination practices, where overcoming a cited mark through argument on dissimilarity or via consent/co-existence arrangements has become increasingly difficult, if not impossible. This situation has left non-use cancellation proceedings as a last resort for many applicants. China’s trademark registration system works on a first-to-file basis, and actual use is not a requirement. Because of this, there are many registered marks not in use. In our experience, the heightened preliminary-evidence standard will not prevent well-founded petitions in most cases; however, the added time and cost may deter abusive filings. While the Updated Guidelines set clearer expectations, the TMO’s actual practices are still evolving. We recommend preparing stronger preliminary investigations now and monitoring examiner trends—then wait and see how examination practice evolves over the coming months.

A recent petition for a writ of certiorari filed with the United States Supreme Court brings into question the application of the doctrine of foreign equivalents. Under the doctrine of foreign equivalents, a trademark consisting of a foreign word with a merely descriptive English translation can be denied registration on the basis of descriptiveness. Similarly, a foreign word can be viewed as confusingly similar to its English equivalent. The Trademark Manual of Examining Procedure (TMEP) clarifies that the doctrine is a guideline more than an absolute rule and the guideline applies “when the ‘ordinary American purchaser’ would ‘stop and translate’ the foreign wording in a mark into its English equivalent.” TMEP §§ 1209.03(g), 1207.01(b)(vi)(A). The foreign word must have a literal and direct translation into the English equivalency and must also be from a common and modern foreign language. The Trademark Trial and Appeal Board (TTAB) as well as federal courts have held that Spanish, French, and Russian are all common and modern languages for this purpose. See, Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, (TTAB 2019); In re Joint Stock Co. "Baik," 80 USPQ2d 1305, 1310 (TTAB 2006); In re Thomas, 79 USPQ2d 1021, 1024-25 (TTAB 2006). However, simply because the foreign word comes from a common, modern foreign language in the United States does not mean the doctrine automatically applies, as the ordinary American consumer must still be likely to stop and translate the word. For example, French is spoken by approximately one million people in the US, but the Federal Circuit found that the marks VEUVE ROYAL, the French equivalent of “Royal Widow," and THE WIDOW are not likely to cause confusion as American consumers are unlikely to stop and translate the phrase. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). The VETEMENTS Applications In June of 2020, Vetements Group AG filed two applications for the word mark and a stylized version of VETEMENTS covering various goods. The following goods were refused by the examining attorney for being merely descriptive, and later for being generic: “Shirts, skirts, sweaters, coats, jackets, suits, caps being headwear, headwear, hats, hoods, visors being headwear, scarves, gloves, shoes, boots, waist belts, T-shirts, pants, blouses, dresses” in Class 25 and “Online retail store services for shirts; skirts; sweaters; coats; jackets; suits; caps; headwear; hats; hoods; visors; scarves; gloves; shoes; boots; waist belts; T-shirts; pants blouses; dresses” in Class 35. “Clothing” is the direct and literal translation of the French word “vetements.” Vetements argued in its office action responses and appeal briefs that its marks were unlikely to be translated by the average American consumer, and that its marks garner much “media buzz” and press due to their recognition in the fashion world. The TTAB affirmed the refusal on the basis that the marks are generic and stated, “The question is not the manner of Applicant’s use, but rather whether consumers will recognize the proposed marks as denoting the generic term ‘clothing.’” Vetements appealed the decision to the Federal Circuit, which also affirmed the refusal.  Vetements subsequently filed its petition for a writ of certiorari with the Supreme Court on August 19, 2025. In re Vetements Group AG, Ser. Nos 88944198 and 88946135 Vetements’ Petition Vetements primarily relies on two Supreme Court decisions to support its petition: the 2020 Booking.com decision (United States Pat. & Trademark Off. v. Booking.com B. V., 591 U.S. 560 (2020)), in which the Court found that the mark BOOKING.COM was not generic for hotel booking services, and the 1888 Menendez decision (Menendez v. Holt, 128 U.S. 514, 520 (1888)), in which the Court found LA FAVORITA, meaning “the favorite” in Spanish, was not descriptive of flour because it was a “fancy name, and in a foreign language.” In Booking.com, the Court stated, “Whether a term is generic depends on its meaning to consumers. That bedrock principle of the Lanham Act is incompatible with an unyielding legal rule that entirely disregards consumer perception.” Relying on this consumer perception test from Booking.com, Vetements argues that “the court below failed to give consideration of how the consuming public would understand Petitioner’s marks at face value…” Petition for Writ of Certiorari, Vetements Group AG v. Stewart, No. 25-, (U.S. Aug. 19, 2025). Vetements also highlights the differences in the application of the doctrine of foreign equivalents by lower courts, as discussed below. Fourth Circuit The Fourth Circuit applies the consumer perception test as set out in Menedez. Vetements also cites to a Fourth Circuit decision where the Italian term UNO (meaning “one” or “a”), in PIZZERIA UNO was not descriptive of the owner’s pizza restaurant services. Pizzaria Uno Corp. v. Temple, 747 F.2d 1522 (4th Cir.1984). The court therefore reversed the lower court’s decision that there was no likelihood of confusion between the marks PIZZERIA UNO and TACO UNO where PIZZERIA and TACO were both disclaimed. Second and Fifth Circuits The Second Circuit automatically translates a foreign term into the English equivalent without taking into regard the consumer perception of the term. When analyzing the mark BELLA DI CERIGNOLA for olives, the court found the mark to be generic for olives from the region of Cerignola and therefore denied registration of the mark. The Second Circuit stated that nothing “suggests that evidence under the ‘foreign equivalents doctrine,’ as it is known, must be consumer-based. Rather, the relevant inquiry is, more generally, the meaning of the term or phrase in its country of origin.” Orto Conserviera Cameranese Di Giacchetti Marino & C., S.N.C. v. Biconserve S.R.I., 205 F.3d 1324, 2000 WL 232108 (2d Cir. 2000). The Fifth Circuit similarly views the doctrine of foreign equivalents to require the automatic translation of foreign terms into English ones to “test them for genericness or descriptiveness.” Enrique Bernat F., S.A. v. Guadalajara, Inc., 210 F.3d 439, 443 (5th Cir. 2000)(finding that the Spanish term CHUPA is generic for lollipops). Federal Circuit and TTAB The Federal Circuit issued the Palm Bay decision which ruled that the ordinary American consumer would not stop and translate “VEUVE” into “widow.” However, in the Vetements opinion, the Federal Circuit looked at the number of Americans who can speak French to assess whether it would be translated. While the TTAB does use the test of the ordinary American consumer laid out in Palm Bay, it also has considered the ordinary American consumer to refer to the average consumer who is knowledgeable in the relevant language. In Re Rise River Asset Co., Ltd., No. 97229735, 2024 WL4052749, at *9 (T.T.A.B. Aug. 14, 2024). This test was applied in Vetements’ Notice of Appeal, but the TTAB ultimately found that consumers familiar with French would stop and translate the word VETEMENTS when encountering Vetements’ goods. Conclusion Although there may be some variances in the application of the doctrine of foreign equivalents, it remains a relevant piece of USPTO examining procedure, and applicants should take the doctrine into account when filing trademark applications at the USPTO that contain non-English words.

The Fourth Board of Appeal of the European Union Intellectual Property Office (“EUIPO”) in the case of Rituals International Trademarks B.V. v Zheni Aleksieva confirmed that retail trade relating to ‘own-brand’ goods may constitute genuine use of a trade mark registered for retail services in class 35. The decision in a case concerning the RITUALS brand overturned an earlier decision of the EUIPO’s Cancellation Division which held that only retail activities relating to third party goods amount to “retail services”. The Board of Appeal’s decision removes a serious concern that EU trade marks (“EUTMs”) registered in class 35 for “retail services” and used by brand owners in relation to their own-brand retail outlets might be vulnerable to revocation for non-use on the grounds that only the brand owner’s own goods were offered for sale, as opposed to third party goods. The Nice classification and EUIPO guidelines relating to retail services in class 35 Readers not versed in the mysteries of trade mark law might find the debate perplexing. Practitioners in the field however are familiar with the various challenges presented across many different jurisdictions in relation to obtaining, maintaining and defending trade mark registrations for retail services. The registration of trade marks for retail services is a relatively recent development in trade mark practice (trade marks having first been granted only to the manufacturers of goods, later on also for service providers such as banks, insurers or professional services and only in modern times the door was opened to register trade marks for retail services). Traditional objections to the registration of trade marks for “retail services” range from the perception that retailers are just traders that do not add value to the goods, to the argument that selling goods is not technically a “service”, and that a trade mark for retail services does not identify the origin of any service, and the practical concern that the category of “retail services” is too vague and would provide excessively broad protection to a registered mark. Against this background, although it has become commonplace in much of the world to allow such registrations, some jurisdictions still impose hurdles and special requirements when it comes to that category of trade mark protection. The international Nice classification of goods and services recognises a formulation of retail services which is widely used (often in abbreviated form) in trade mark registrations. It defines the service as: “the bringing together, for the benefit of others, of a variety of goods, excluding the transport thereof, enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, through vending machines, mail order catalogues or by means of electronic media, for example, through websites or television shopping programmes”. The lengthy wording reflects the equivocal attitude to this service category that is still not uncommon – despite the fact that in the ‘real world’ retail brands function much the same as any other consumer brands. The elaborate text adopted by the international classification system can sometimes provide grounds for objections and hair-splitting when assessing such registrations. Such was the case in relation to the question of “own-brand” retail services in the RITUALS case. The specific words (in the description of retail services in the registered mark) that gave rise to the question in that case were: “the bringing together, for the benefit of others, of a variety of goods….” (in particular the words in bold). The EUIPO’s Cancellation Division, based on its interpretation of the Registry Office’s guidelines, held that the element “for the benefit of others” required that the retail service in question should be provided for the benefit of third party manufacturers or suppliers whose products are being sold by the retailer. Hence, the Cancellation Division held that the sale of own-brand goods (that is, the goods of the proprietor or the registered mark itself) does not amount to genuine use of the mark for “retail services” with the consequence that a mark that was used only in relation to the retail of “own-brand” goods could be revoked for non-use. EU case law and the Board of Appeal’s decision to reverse Traditional concerns about the registration of trade marks for “retail services” have been largely set aside in the EU since the 2005 decision of the European Court of Justice (“ECJ”) in the PRAKTIKER case. The ECJ was unequivocal in holding that there was no reason why “retail services” should be treated any differently from other categories of services for the purpose of trade mark registration and confirmed that the services do not need to be described in any particular detail. The ECJ defined the essence of those services as “the sale of goods to consumers” noting that in addition to the sale transaction itself such services include “all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction” including “selecting an assortment of goods offered for sale” and “offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor”. The Court, thus, described the economic function of a retail brand and relied on that function to explain why retail brands should be protected, and be capable of registration as such (that is, not just as a registration in relation to the goods offered for sale but in relation to the retail service itself). The ECJ confirmed that the formulation “bringing together of a variety of goods enabling customers to conveniently view and purchase those goods” should be sufficient to describe those services in a trade mark registration. The Court did not preclude describing such services simply as “retail services”. The ECJ made only one qualification to the rule – addressing the question of the potential breadth of protection afforded by the registration – that retail services should be registered in respect of listed categories of goods, or classes of goods, not in abstract. The Fourth Board of Appeal in the RITUALS case applied the decision in PRAKTIKER, having considered various other decisions of the EU courts that dealt with “retail services”, and followed the same reasoning, to reverse the decision of the Cancellation Division holding that retail trade relating to the trade mark owner’s own goods is eligible to be treated as ‘genuine use’ of the mark. The Board noted that the Nice classification is there for practical convenience and the law in the EU must be interpreted in accordance with the EU trade mark legislation and the case law of the EU courts. In other words, the particular text used in the Nice classification should not be treated as determinative in what amounts to “retail services” for the purpose of applying the EUTM legislation. The Board further emphasised that the wording “for the benefit of others” as used in the Nice classification (as well as in numerous trade mark registrations for retail services) should be interpreted to include the benefit of the retail services to consumers themselves. The Board noted the formulation of the essence of retail services in the PRATIKER decision, which emphasised that it is primarily focused on the sale of the goods to consumers, hence the service is primarily for their benefit (even if it may also be for the benefit of third party suppliers). What next? The decision of the Fourth Board of Appeal is a sensible one which reflects the reality of how “own-brand” retailers operate. It is unclear whether the decision will result in a change in practice by the EUIPO and it is yet to be seen if the decision is appealed. The decisions of the EUIPO’s Board of Appeal can be appealed to the European General Court (and a third appeal level can be available, in some cases, to the ECJ), giving an opportunity to the EU’s higher courts to provide further guidance on the questions at issue. The EUIPO’s Board of Appeal is only an internal appeal instance within the Registry Office and its decisions have only limited weight as legal precedents. Despite the clear guidance given in the ECJ decision in the PRAKTIKER case (which is already 20 years old) it is likely that questions relating to the registration of trade marks for “retail services” will continue to emerge. The decision of the Board of Appeal does, at least, provide some comfort that own-brand retailers may be able to defend their class 35 registrations for retail services against non-use challenges. Questions as to the nature of the activities that qualify as “retail services” for the purpose of trade mark protection are likely however to continue to be raised and trade mark owners will be in a stronger position to defend their marks if they can show a broad range of activities, apart from the retail sales activity itself – e.g., based on the selection, arrangement and display of goods, promotional activities, in-store consumer experiences, information services and so forth - that have been undertaken with a view to inducing consumers to purchase goods at the trade mark owner’s retail outlet. The more such activities can be framed as “services” benefitting consumers as well as suppliers, the better the chances the trade mark registration can be defended.

Last year we reported on the Trader Joe’s labor union’s success in dismissing a trademark infringement action that Trader Joe’s had filed against the union, Trader Joe’s United, in the Central District of California. At the time, we noted that Trader Joe’s had appealed the dismissal to the Ninth Circuit. That turned out to be a very good decision on Trader Joe’s part. On September 8, the Ninth Circuit issued a decision reversing the district court’s dismissal, vacating the award of attorneys’ fees, and remanding for further proceedings. The Ninth Circuit’s decision is instructive – both from the perspective of trademark law and that of labor law. As you may recall from our previous post, the district court’s decision – a rare dismissal of a trademark infringement action at the pleading stage – appeared to be based upon the court’s suspicion that Trader Joe’s was weaponizing trademark law to put pressure on its union. For the Ninth Circuit, however, there simply wasn’t sufficient evidence of that to dismiss the lawsuit. After a brief recitation of the relevant factual background, the appellate court applied the Ninth Circuit’s eight-factor Sleekcraft test for likelihood of confusion. On the first factor, strength of the mark, there was no dispute that it weighed in favor of Trader Joe’s, a well-known and popular grocer. The Ninth Circuit also found that the next factor, proximity of the goods, weighed in favor of Trader Joe’s. While the district court had noted that tote bags were the only product type sold by both parties, the appellate court held that a plaintiff like Trader Joe’s need not establish that the parties are direct competitors to satisfy this factor. Rather, the proper inquiry is whether consumers are likely to associate the parties’ products – in other words, whether customers are likely to be confused about the source or sponsorship of the products. The Ninth Circuit thought that such confusion was indeed likely, particularly given the viral popularity of Trader Joe’s tote bags. The Ninth Circuit also rejected the district court’s reliance on context in assessing the proximity factor. While context is certainly important, the issue here wasn’t that Trader Joe’s United used its employer’s name for the purposes of identifying the union (that is fine and likely would not support a trademark infringement action). Rather, Trader Joe’s complaint was that the union used its mark on merchandise it sold to consumers. Moving on to the next factor, similarity of the marks, the Ninth Circuit again held that this factor favored Trader Joe’s. Both parties used the same capitalized lettering, red color, stylized fonts, and concentric circles. And the appellate court again noted that it was not the use of Trader Joe’s name that was problematic – it was the union’s commercial use of the mark on merchandise. Moreover, while the union argued that its use of a raised fist made it apparent that its marks criticize Trader Joe’s labor practices, the Ninth Circuit didn’t think it was so simple. As that court saw it, a raised fist can signify different things and consumers might even think that Trader Joe’s itself was expressing solidarity with social justice causes. The appellate court next considered the five remaining factors, marketing channels, type of goods and degree of care exercised by purchasers, evidence of actual confusion, defendant’s intent, and likelihood of product expansion, and held that these factors were neutral. But because the first three factors weighed in favor of Trader Joe’s, the Ninth Circuit concluded that the district court erred in dismissing Trader Joe’s trademark infringement and unfair competition claims. As the court put it, “[t]his is not one of the rare trademark infringement cases in which there is no plausible likelihood that a reasonably prudent consumer would be confused about the origin of the goods allegedly bearing the Trader Joe’s distinctive marks.” Trader Joe’s had also asserted a dilution by blurring claim against the union, a claim the district court also dismissed on the basis that Trader Joe’s United’s use of the Trader Joe’s mark constituted nominative fair use. But unfortunately for the union, it had never raised this issue in its briefing before the district court. As such, Trader Joe’s never had the opportunity to test this theory and the Ninth Circuit held that the district court again erred in dismissing the dilution claim. Finally, the Ninth Circuit grappled with the labor law issue of whether this case “involved or grew out of” a labor dispute such that the Norris-LaGuardia Act prohibited the court from issuing injunctive relief. The district court, which clearly thought this lawsuit was about Trader Joe’s attempting to strong-arm a pesky labor union, concluded that the case did indeed involve or grow out of a labor dispute such that it was divested of jurisdiction to issue injunctive relief. The Ninth Circuit, on the other hand, though it was far too early to make that determination. Neither party had moved for preliminary injunctive relief and Trader Joe’s had not yet established its entitlement to such relief by prevailing on any of its claims. Given that, and given the parties’ dispute about the timing of Trader Joe’s lawsuit and its previous demand (i.e., whether it was a response to the National Labor Relations Board filing a complaint against Trader Joe’s), the appellate court thought it was premature to conclude that the “employer-employee relationship [is] the matrix of the controversy” such that the Norris-LaGuardia Act was implicated. So, the union’s victory last year was short-lived and it now has to duke it out with its employer in the district court. One wonders if perhaps the union will conclude that it’s just not worth selling tote bags and other merchandise if it means a protracted and expensive litigation. For trademark litigators, the Ninth Circuit’s decision is another reminder that – absent defenses like lack of jurisdiction – it’s just really hard to get a trademark infringement action dismissed at the pleading stage.

As you may have noticed, it is nearly impossible to use the internet today without encountering artificial intelligence (or, in common parlance, AI) in one form or another. This has largely resulted from the proliferation of AI tools, generative AI platforms, and the discourse surrounding them. Perhaps the most famous of these generative AI platforms available today and occupying AI discourse is ChatGPT. ChatGPT is one of the leading generative AI platforms and functions as an AI chatbot that can carry on conversations with users, generate answers to complex questions or issues posed by users, generate content such as songs and images, and play games with users. ChatGPT was developed by an AI research company called Open AI, and is widely credited with starting the current AI revolution. OpenAI was founded as an AI research organization in December 2015 and quickly garnered a strong reputation in the AI field based on its AI algorithm and software product developments and releases, research, and promotion. As the development of AI garnered more and more popularity and attention, so did OpenAI and its products, leading OpenAI to become one of the top AI companies in the world. Of course, with OpenAI’s success and popularity (particularly thanks to the launch of ChatGPT), many individuals and companies—both large and small—have tried to emulate OpenAI’s and ChatGPT’s success. While most have tried to do so by developing and launching their own separate AI-related products and platforms (some successful, some not so much), others appear to have tried to emulate OpenAI a little too much. One such instance involves a company called “Open Artificial Intelligence, Inc.” and its owner Guy Ravine, both of whom were named as Defendants in a trademark infringement action brought by OpenAI (for once, an AI-related dispute that doesn’t involve copyright claims!). To their credit, according to OpenAI’s complaint and subsequent pleadings, Open Artificial Intelligence and Ravine seem to have recognized from the very beginning OpenAI’s potential glow up from unicorn to bona fide market disruptor. In 2015, the same year that OpenAI launched, Open Artificial Intelligence and Ravine allegedly scrambled to acquire rights in the “OpenAI” name—first by acquiring the domain name “open.ai” and setting up a webpage that said “Announcement Will Be Made Soon,” and then seeking to register the trademark “Open AI” with the USPTO by relying on the webpage as a use in commerce. According to OpenAI, Ravine then emailed one of OpenAI’s founders to propose a collaboration between OpenAI and Ravine/Open Artificial Intelligence. A bold business strategy that OpenAI ultimately…rejected. After that rejection, the webpage Ravine created at open.ai started redirecting website traffic to OpenAI’s webpage located at openai.com. This was not the end for Ravine though. In 2016, after the USPTO rejected his “Open AI” trademark application for lack of use in commerce, Ravine allegedly copied content from another AI-related website and submitted it as a new specimen. Though the USPTO declined to register the “Open AI” mark on its Principal Register based on descriptiveness, it permitted Ravine to register the mark on the Supplemental Register. And just like that, Ravine and Open Artificial Intelligence were back in business! Meanwhile, OpenAI was garnering widespread acclaim through the research, development, and release of various AI products and publications, all of which it was doing in connection with its “OpenAI” name. As a result of its acclaim and notoriety, OpenAI (perhaps belatedly) chose to apply to register its “OpenAI” trademark with the USPTO in January 2022. With that decision to register “OpenAI” came OpenAI’s discovery of Ravine’s trademark on the Supplemental Register and that Ravine and Open Artificial Intelligence had been redirecting traffic from its open.ai webpage to OpenAI’s openai.com webpage. Despite early efforts by OpenAI to purchase the open.ai domain and settle the dispute early, no resolution was reached, and Ravine dug his heals in by filing a letter of protest with the USPTO and launching his own apparent image generation platform on open.ai. In response, OpenAI filed various claims alleging trademark infringement, fraudulent registration, and cancellation of the Defendants’ mark on August 4, 2023, to which the Defendants responded with counterclaims for reverse trademark confusion. After nearly two years of litigating the case, on April 9, 2025, OpenAI filed a motion for summary judgment as to all of its claims and the Defendants counterclaims, which the court granted in its entirety on July 21, 2025. Given the virtually identical nature of the trademarks (“OpenAI” versus “Open AI”) and the virtually identical industry and highly related products the parties purport to offer (generative AI-related platforms/tools), the parties conceded that the marks caused, and were likely to continue to cause, consumer confusion. Thus, the court’s decision instead hinged (unsurprisingly) on priority—who gained a protectible interest in the OpenAI/Open AI mark first? In particular, the court’s inquiry was three-fold: (1) was Ravine’s and Open Artificial Intelligence’s first “use” of the “Open AI” mark bona fide in light of Ravine’s ownership of the open.ai domain name and “Announcement Will Be Made Soon” webpage, and his 2015 trademark application?; (2) if not, do either of the parties’ marks have inherent distinctiveness or secondary meaning?; and (3) if so, when was that secondary meaning acquired? As to the first question, the court held that the Defendants procured the Open AI mark fraudulently through misrepresentations to the USPTO and did not make a bona fide use of it in commerce, and cancelled the registration. As for the second question, the court answered the in the negative as to the Defendants, finding that Defendants’ mark was descriptive without secondary meaning based on a lack of any evidence that Open AI acquired secondary meaning. However, the court did find that OpenAI’s mark acquired secondary meaning by at least November 2022, if not earlier. In turn, by launching its own AI image-generating platform after OpenAI gained secondary meaning, Defendants infringed OpenAI’s mark. Having found in favor of OpenAI on all of its claims and on the Defendants’ counterclaims, the Court permanently enjoined the Defendants from using the Open AI mark or any confusingly similar marks in connection with AI products or services. While it is unclear if the Defendants intend to continue offering AI-related products or services, the court’s order makes it clear that they will have to change their name if they do. Luckily, Defendants can take solace in the fact that there is an abundance of generative-AI tools at their disposal to assist in coming up with a new name.

If you’ve scrolled on social media, set foot in a popular retailer, or have a teenager in your life, it’s likely you’ve heard the term “dupe” (short for “duplicate”) to describe affordable alternatives to high-end products such as handbags, makeup, and even furniture. Indeed, one need only conduct a cursory search on Amazon or the TikTok Shop to find a cheaper alternative for any luxury product imaginable. For brand owners, however, the rise of dupes can be a serious problem. “Dupes” vs. Counterfeits The major difference between dupes and counterfeit goods is that counterfeit goods purport to be authentic, often using a business’s trademarks in an attempt to deceive consumers into believing they are receiving legitimate goods. Conversely, while a dupe may be visually similar in terms of design, packaging, ingredients, and overall product aesthetics, it does not typically copy any third-party trademarks, and consumers generally recognize the goods to emanate from a different source than its higher-end inspiration. And, while the selling of counterfeit goods is blatantly illegal under both federal and state laws, the sale of dupes is a gray area which has just begun to be explored in U.S. courts. Lawsuits While recent cases in the United Kingdom and Australia involving dupes have provided helpful precedent on which brand owners can rely, the jurisprudence in the United States is much sparser. Recent lawsuits filed by big name brands have gained media attention for asking courts to rule on whether dupes are lawful, or if there are grounds on which brand owners may be able to rely to combat being “duped”. In Deckers Outdoor Corporation v. Last Brand, Inc., No. 3:23-cv-04850 (N.D. Cal.), Deckers Outdoor Corporation (“Deckers”), the owner of the well-known Uggs shoe brand, alleges, in part, trade dress infringement and unfair competition against competing consumer products brand, Quince, based on Quince’s “dupe” version of Uggs’ Class Ultra Mini Boot. Based on the visual similarities between the boots, Deckers claims Quince has infringed its trade dress in an effort to exploit Deckers’ goodwill and the reputation it has acquired in its Classic Ultra Mini. In Sol De Janeiro USA, Inc. et al. v. MCoBeauty Pty Ltd et al., No. 1:24-cv-08862 (S.D.N.Y.), the popular beauty brand Sol De Janeiro (“Sol”) filed suit against MCoBeauty (“MCo”), a company founded on providing “dupes” of well-known beauty brands. No stranger to lawsuits, MCo has faced multiple lawsuits in both its home country of Australia as well as in the United Kingdom. It has generally prevailed in defending against trademark infringement claims though, as the brand creates its own trademarks for its products. In the United States, however, brands have the unique ability to rely on trade dress rights, which is exactly what Sol alleges infringement of in its November 20, 2024 Complaint. Sol alleges false advertising, trade dress infringement, and unfair competition against MCo, noting, “[t]o sell its knockoff fragrances [MCo] publishes, endorses, sponsors, hosts, and/or supports” on its social media and website that its “fragrances are copies or duplicates of four of” Sol’s popular products. In its Answer, MCo denies each of the claims against it, adding affirmative defenses that Sol’s trade dress design is ornamental, functional, non-distinctive, and generic. In a busy year for MCo, it is also facing claims of trade dress infringement in Aramara Beauty LLC v. Mco Beauty Pty Limited et al., No. 1:25-cv-04808 (S.D.N.Y.), from owner of the Glow Recipe beauty brand, Aramara Beauty, LLC (“Aramara”). Aramara claims one of MCo’s facial serums features a similar bottle shape, bottle color scheme, serum color, and product packaging to its popular “Watermelon Glow Dew Drops”. Aramara’s Complaint points to MCO’s social media and advertising for its product which feature similar taglines and color schemes, and even go so far as to claim “‘It’s not a dupe. It’s a dupé!’” Trade Dress Protection Each of these lawsuits relies on trade dress rights in product design and packaging. In the United States, product design trade dress and product packaging trade dress are evaluated differently. Product designs themselves can never be inherently distinctive and will always require a showing of acquired distinctiveness and evidence the product is not merely functional in order to be accorded trade dress protection. Conversely, product packaging may be inherently distinctive, though it also requires a showing that the packaging is not merely functional. When a trade dress does more than just identify its source (i.e., it offers some sort of utilitarian or operative function as well), it loses its eligibility for trade dress protection, on the basis that it is functional. To prove distinctiveness for product design or non-inherently distinctive product packaging, owners must make a showing that the design/packaging has acquired distinctiveness and functions as a source indicator. Given the extensive evidence often required to make a claim of acquired distinctives, it’s not surprising that brand owners often have a difficult time enforcing their rights against dupes absent a commercially strong brand. With the increase in media attention and legal proceedings involving dupes, brand owners may wish to explore obtaining federal trade dress registrations to better combat falling prey to being the next “duped” brand. Moreover, given the hurdles with proving acquired distinctiveness in many instances, owners may wish to get a head start on this process by having a discussion with their trademark counsel.