This month: a dupe-culture design patent battle ends with a split verdict that leaves the UGG brand exposed, Taylor Swift’s “Showgirl” trademark fight takes a First Amendment turn, the Second Circuit reminds practitioners that a TTAB win is not a free pass in federal court, and the USPTO quietly rolls out a set of AI tools that will change how clearance searches work.
Deckers v. Quince: the dupe economy wins a round
On June 15, a federal jury handed Quince a decisive win in its three-year fight with Deckers Outdoor Corp., the company behind UGG. The jury found that Quince’s Australian Shearling Mini Boot infringed Deckers’ U.S. Design Patent No. D927,161 covering the UGG Classic Ultra Mini boot. And then they invalidated that same design patent, so Deckers took nothing.
Deckers originally filed its case in 2023, asserting a slew of claims including trade dress and design patent claims. The trade dress claims were eliminated by summary judgment when the court found that the Classic Ultra Mini’s suede exterior, shearling lining, rounded toe, and thick sole were generic and ineligible for protection. That left Deckers with a single design patent claim for trial.
Quince’s in-house legal team framed the case as one about whether a single company could lock up basic product features and push competitors out of the market. And Quince’s win on invalidity means the jury was persuaded either that the design was functional rather than purely ornamental, or that the prior art was too close. The verdict form did not break out which theory prevailed.
The case illustrates a recurring problem in dupe litigation. Design patents can fill gaps where trade dress fails but only if the design at issue is truly novel and non-obvious in its ornamental elements. When a product silhouette is shaped by function and shared industry conventions, enforcement of design patents may be harder to maintain than it appears. The same is true of trade dress: genericness is a real risk for any look that has become a category standard rather than a single brand’s identifier.
For brand counsel, the takeaway is to build layered protection across trade dress, design patents, and even potentially copyright. Importantly, before beginning any enforcement, its critical to investigate the real strength of the IP you plan to assert.
Taylor Swift’s “Showgirl” fight turns on the First Amendment
Las Vegas performer Maren Wade has performed and produced content under CONFESSIONS OF A SHOWGIRL since 2014 and holds a federal registration for the mark. Ms. Wade filed suit against Taylor Swift in March over Swift’s use of THE LIFE OF A SHOWGIRL in connection with her twelfth studio album and related merchandise. When Swift applied to register the phrase, the USPTO issued an office action citing likelihood of confusion with Wade’s mark. Swift’s team did not resolve the refusal and continued using the designation commercially.
Swift moved to dismiss in late May, and a preliminary injunction hearing took place on May 27 in the Central District of California. The judge opened the hearing by signaling that her primary concern was whether the album title qualifies as an expressive work protected from trademark liability under the First Amendment, referring to the Rogers v. Grimaldi framework, which limits Lanham Act liability for expressive works unless the use of a mark has no artistic relevance or explicitly misleads consumers. As practitioners know, however, the recent Supreme Court decision in Jack Daniel’s Properties v. VIP Products (2023) altered the Rogers test, and the issue remains hotly contested in the lower courts.
Swift argued that the album title is an expressive work and that the First Amendment bars the claim entirely. Swift also pointed to Wade’s own social media conduct: more than 40 posts using Swift-related hashtags including #swifties, #ts12, and #taylornation, contending that Wade’s attempt to associate herself with Swift’s commercial reach undercuts any claim of consumer confusion or marketplace harm.
Judge Murillo did not rule from the bench. A written decision on the preliminary injunction is pending. Swift’s motion to dismiss the entire complaint remains pending as well.
The case is worth watching for two reasons. First, the Supreme Court’s ruling in Jack Daniel’s narrowed the circumstances in which a party can invoke Rogers, but it did not eliminate the doctrine for purely expressive works. How this Court will apply that framework here could offer useful guidance for other courts.
Second, the USPTO’s office action refusing Swift’s application based on Wade’s mark demonstrates exactly what the examination process is supposed to do: surface potential conflicts before they become disputes. The more interesting question may be what happens when applicants proceed commercially despite a pending refusal.
Second Circuit: a TTAB ruling is not always a courthouse pass
On June 8, a Second Circuit panel vacated summary judgment in Cesari S.R.L. v. Peju Province Winery L.P., a case that had been working through the courts since 2016 from a TTAB proceeding dating back to 2004.
In 2004, the TTAB granted summary judgment to Cesari on the mark LIANO for wines against Peju’s application for LIANA for wine, finding a likelihood of confusion. Peju continued using the mark anyway. In 2016, Cesari sued for infringement and moved for partial summary judgment on the likelihood of confusion issue, arguing that Peju was collaterally estopped from relitigating it under B&B Hardware, Inc. v. Hargis Industries (2015). The district court agreed and granted the motion without considering Peju’s argument that its wine was a Napa Valley Chardonnay dessert wine sold through different trade channels than Cesari’s red wines.
The Second Circuit reversed that decision. The Court held that the TTAB’s 2004 decision did not meaningfully consider the parties’ actual use of the marks in commerce. Importantly, the TTAB never evaluated Peju’s defense that the products were distinguishable by type, price, and trade channel. Because the issues before the TTAB and the district court were not identical, issue preclusion did not apply.
B&B Hardware held that TTAB decisions can be preclusive in later infringement litigation, but they are not always preclusive. Preclusion requires that the issues actually litigated and decided by the TTAB match those at stake in court. A TTAB proceeding that resolves likelihood of confusion on the face of the applications, without engaging actual marketplace evidence, may not do so.
For opposers, a TTAB win on the face of the marks may not foreclose a defendant from re-litigating confusion in district court if the commercial reality was never put before the Board. For applicants and registrants facing infringement claims, this decision is a reminder to make the full evidentiary record in the TTAB proceeding, including trade channels, pricing, labeling, geographic scope, and actual consumer usage.
USPTO’s AI tools for trademark search: what practitioners need to know
The USPTO rolled out two AI-powered tools for trademark practice in early April, and both are now available to any practitioner with a USPTO.gov account. If you have not tested them yet, it is worth doing before your next clearance search.
The first tool is an AI image search for design marks. Users log in, upload an image or link, and the system returns visually similar marks from the federal register. Design clearance has historically required searching by design code, a method that is both imprecise and time-consuming for marks with complex or abstract elements.
The second tool is a mark description and color claim generator in Trademark Center, launched April 23. It generates draft descriptions and color claims for applications, which is a common source of procedural deficiencies and avoidable office actions.
Both tools are in beta, and the USPTO has not published technical specifications for the image search algorithm. The image search is a supplemental resource, not a substitute for a full clearance search. Design codes, word mark searches, and professional search services remain essential. The USPTO has described its goal as leading the world in trademark AI, and examiners are expected to receive access to an internal generative AI tool in July 2026. For practitioners, the sooner you understand what these tools do and do not catch, the better positioned you will be when your clients’ clearance results are reviewed by examiners using the same technology.
