Intellectual Property Law
The TTABlog 
Focusing on the Trademark Trial and Appeal Board of the US Patent and Trademark Office.
Post Frequency: 1.5/day Last Entry: November 20, 2009 at 06:40:00 Recent Entries: 512
Go to The TTABlog, find other Intellectual Property Law blogs, or browse all law blogs.
Search
Posts
TTAB Rejects Another Fraud Claim for Inadequate Pleading
Posted on November 20, 2009rThe Board yesterday rejected another fraud claim for failing to meet the strict pleading requirements of Rule 9(b), Fed. R. Civ. P. Ayush Herbs, Inc. v. Hindustan Lever Ltd. Co., Opposition No. 91172885 (November 19, 2009) [not precedential]. The Board also threw in Rule 11, Fed...
Recommended Blog: Rich Stim's "Dear Rich: Nolo's Patent, Copyright & Trademark Blog"
Posted on November 20, 2009Rich Stim answers those questions that your next-door-neighbor or your mother-in-law asks you about IP: can I copy this? can I market that? And he does it with unfailing good humor! Check it out here.
TTABlog Answers the Question: What is the Oldest Pending TTAB Case?
Posted on November 20, 2009Well, at least I try to answer the question, with the help of Chris Shiplett at TTAB Across the Board. He reports that the oldest pending TTAB case is United Black Fund v. National Black United Fund, Inc., Cancellation No. 92013503. That case was commenced on September 9, 1982, and has been suspended since May 10, 1984...
TTAB Finds Flashlight Casing Not De Jure Functional but Lacking in Distinctiveness
Posted on November 19, 2009The Board reversed in part and affirmed in part a refusal to register the product configuration mark shown on the right, for "portable lighting equipment, namely flashlights." It jettisoned the Section 2(e)(5) functionality refusal, but affirmed the refusal to register on the ground that Applicant failed to establish that the product shape has acquired distinctiveness...
TPAC Meeting This Friday Will Explore Ramifications of Bose Decision
Posted on November 18, 2009The Trademark Public Advisory Committee (TPAC) will hold a public meeting on Friday morning, November 20, 2009, at USPTO Headquarters, Madison Auditorium, Concourse Level, 600 Dulany Street, Alexandria, VA 22314. The meeting will be run from 9:00 AM to 12:30 PM and will be webcast...
AUSTINUTS Seeks Review of TTAB 2(d) Decision in Austin Federal District Court
Posted on November 18, 2009Austinuts, Inc. has filed a complaint (here) in the U.S. District Court for the Western District of Texas (Austin Division), seeking Section 1071(b) review of the TTAB's decision in AQFTM, Inc. v. Austinuts, Inc., Oppositions Nos. 91166551 and 91166552 (August 6, 2009) [not precedential]...
CAFC Affirms TTAB's Dismissal of "BINT ALARAB" Cancellation on Res Judicata Ground
Posted on November 17, 2009The U.S. Court of Appeals for the Federal Circuit has affirmed the decision of the TTAB (here) dismissing a petition for cancellation of a registration for the mark BINT ALARAB for rice. The Board had ruled that the petition was barred by res judicata and it denied petitioner's request for time to take discovery regarding a newly-posed claim of fraud...
Supreme Court Denies Petition for Certiorari in Harjo v. Pro-Football, Inc.
Posted on November 16, 2009The U.S. Supreme Court today denied the Petition for a Writ of Certiorari filed by Susan S. Harjo et al., seeking review of the decision of the U.S. Court of Appeals for the D.C. Circuit in Pro-Football, Inc. v. Harjo, 90 USPQ2d 1593 (D.C. Cir. 2009)...
Fraud Brown-Bag Luncheon: November 19th in Boston
Posted on November 16, 2009The Boston Patent Law Association and the Boston Bar Association will co-host a brown-bag luncheon at noon on November 19, 2009 at the Bar Association headquarters at 16 Beacon Street. The topic: "Trademark Fraud on the USPTO: A New Landscape." Yours truly will moderate a panel consisting of Mark Robins of Nixon, Peabody, and Amy Brosius of Fish & Richardson...
A Medinol-like Fraud Case in California Worth Watching
Posted on November 13, 2009The Seattle Trademark Lawyer blog (here) reports on a federal district court action in California that is worth keeping an eye on. Defendant Wine Group alleged that Plaintiff One True Vine's pleaded registration for the mark LAYER CAKE for "white wine, red wine" was invalid on the ground of fraud because (as Plaintiff admitted) the mark had never been used for white wine...
Precedential No. 46: TTAB Finds Two "ANTHONY'S" Marks Confusingly Similar for Pizza Restaurants
Posted on November 12, 2009Sustaining a Section 2(d) opposition and granting a petition for cancellation, the Board found the mark ANTHONY'S COAL-FIRED PIZZA, in standard character and design form (below), for "restaurant services, namely, eat-in and take-out coal oven pizza and other items" [COAL-FIRED PIZZA disclaimed] likely to cause confusion with the registered mark ANTHONY'S PIZZA & PASTA for restaurant services [PIZZA & PASTA disclaimed]...
TTAB Affirms Genericness Refusal of "GOJI BERRY" for - Guess What?
Posted on November 11, 2009Pro se Applicant Bradley Dobos of Eastsound, Washington, made a fruitless attempt to register the term GOJI BERRY for "fruit, namely, raw and unprocessed berry only indigenous to several regions in the Himalayas" in International Class 31 [BERRY disclaimed]...
Test Your TTAB Judge-Ability: Is This Stylization of "JUMBOZ" Inherently Distinctive?
Posted on November 10, 2009There was no debate that the mark word "Jumboz" is at least merely descriptive of "processed sunflower seeds." In fact, two years ago the TTAB affirmed a genericness refusal of JUMBOZ for the same goods. [TTABlogged here]. But what about the stylized version shown below? Is it registrable on the Principal Register (with a disclaimer of JUMBOZ?) In other words, is the design inherently distinctive? You be the judge...
CAFC Affirms TTAB Genericness Ruling re "MATTRESS.COM" for -- Guess What?
Posted on November 09, 2009The CAFC has affirmed the TTAB's decision in In re Dial-A-Mattress Operating Corp., Serial No. 78976682 (November 13, 2009) [not precedential], in which the Board affirmed a refusal to register the term MATTRESS.COM on the Supplemental Register, for "online retail store services in the field of mattresses, beds and bedding," on the ground of genericness...
CAFC Hears Oral Argument in "CRASH DUMMIES" Appeal
Posted on November 09, 2009On Friday, November 6, 2009, the U.S. Court of Appeals for the Federal Circuit heard oral argument [mp3 here] in an appeal from the TTAB's decision in Mattel, Inc. v. The Crash Dummy Movie, LLC, Opposition No. 91159002 (November 25, 2008) [not precedential]...
TTABlog Celebrates Fifth Anniversary
Posted on November 08, 2009It all started on November 8, 2004, with an item about (who else) Leo Stoller. Nearly 1500 posts and a million hits later, here we are. Thanks for reading! And a special thanks to all commenters!.
CAFC Hears Oral Argument in Southern Cal v. South Carolina "SC" Trademark Dispute
Posted on November 06, 2009On November 4, 2009, the U.S. Court of Appeals for the Federal Circuit heard oral argument in an appeal from the TTAB's decision in University of Southern California v. The University of South Carolina, Opposition No. 91125615 (August 1, 2008) [not precedential]...
CAFC Reverses TTAB's "COLD WAR MUSEUM" Decision Regarding Evidence of Record in Cancellation Proceeding
Posted on November 06, 2009The U.S. Court of Appeals for the Federal Circuit yesterday reversed the TTAB's decision in Cold War Air Museum, Inc. v. The Cold War Museum, Inc. and Francis Gary Powers, Jr., Cancellation No. 92047391 (October 20, 2008) [not precedential]. [TTABlogged here]...
Precedential No. 45: "TIRES TIRES TIRES" Generic for, or Merely Descriptive of, Tire Store Services
Posted on November 05, 2009This applicant's attempt to register the designation TIRES TIRES TIRES for "retail tire stores" got no traction with the TTAB. The Board affirmed two alternative refusals to register: genericness and Section 2(e)(1) mere descriptiveness. In re Tires, Tires, Tires, Inc...
Precedential No. 44: TTAB Decides "CAB CALLOWAY" Priority Dispute, Rules that Personal Names Are Inherently Distinctive
Posted on November 04, 2009An intra-family fracas regarding the service mark CAB CALLOWAY for retail music store and entertainment services was won by the late band leader's grandson, Christopher Brooks. He proved prior rights in the mark THE CAB CALLOWAY ORCHESTRA for musical recordings and entertainment services, and therefore the Board found confusion likely under Section 2(d) and sustained his opposition against a corporation formed by Calloway's widow and daughters...
TTAB Posts November 2009 Hearing Schedule
Posted on November 03, 2009The Trademark Trial and Appeal Board has scheduled five (5) hearings for the month of November, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. [The hearing schedule and other details regarding attendance may be found at the TTAB website...
TTAB Restricts Bose's "WAVE" Registration Per CAFC Decision
Posted on November 02, 2009As directed by the CAFC, the TTAB issued an Order (here) on October 30, 2009, amending Bose Corporation's Registration No. 1,633,789 for the mark WAVE by deleting "audio tape recorders and players, portable radio and cassette recorder combinations."In its decision of August 31, 2009 in In re Bose Corporation, 91 USPQ2d 1938 (Fed...
TTABlog Flotsam and Jetsam No. 13
Posted on October 30, 2009It's time for another edition of "Flotsam and Jetsam," wherein I provide timely tidbits for the TTABar.Acting Chief Judge: Judge Gerard F. Rogers will serve as Acting Chief Judge of the TTAB, pending the appointment of a new Chief. Judge Rogers was appointed to the TTAB in 1999...
TTAB Reverses "RADIUS" 2(d) Refusal, PTO Read Registrant's Services Too Broadly
Posted on October 29, 2009The Board reversed a Section 2(d) refusal of the mark RADIUS & Des. for "research services in the fields of pharmaceuticals and medicines," finding it not likely to cause confusion with the registered mark RADIUS for "product design and development services for others...
Precedential No. 43: TTAB Enters Partial Summary Judgment in 2(d) "VUDU" Opposition
Posted on October 28, 2009Applicant Vudu, Inc. failed to ward off completely Hewlett-Packard's motion for summary judgment aimed at the mark VUDU for goods and services in classes 9, 35, 38, 41, and 42, relating to the broadcast, storage, and playback of video content. H-P relied on its registered mark VOODOO in standard character and design form (shown immediately below), for personal and gaming computers in class 9, and for computer manufacture and design services in classes 40 and 42...
TTAB Chief Judge J. David Sams to Step Down November 1st
Posted on October 27, 2009After 34 years with the U.S. Patent and Trademark Office, including 28 years at the TTAB, Chief Judge J. David Sams will retire on November 1, 2009. Judge Sams joined the PTO as a trademark examining attorney in 1975. From 1979 to 1981, he served as chief legal assistant to the Assistant Commissioner for Trademarks...
Precedential No 42: TTAB Denies Fraud Summary Judgment Motion Due to Inadequate Pleading of Claim
Posted on October 26, 2009The Board has now populated the post-Bose fraud landscape with another precedential decision, this one aimed at the proper pleading of a fraud claim. It points out that allegations made solely on information and belief "must be accompanied by a statement of facts upon which the belief is founded...
Thoughts from the TTABlog: Fraud in the Post-Bose Era
Posted on October 23, 2009I was recently asked by World Trademark Review to provide a short article on how the Bose decision has thus far impacted TTAB practice. My current thinking is set out below, admittedly based on limited information.Fraud in the post-Bose eraThe CAFC's decision in In re Bose Corporation, 91 USPQ2d 1938 (Fed...
Test Your TTAB Judge-Ability On This Section 2(d) Refusal
Posted on October 22, 2009Trinity Episcopal Church of Baton Rouge, Louisiana, sought to register the mark TRINITY & Des. (shown below left) for "charitable fun raising." The Examining Attorney refused registration on the ground of likelihood of confusion with the registered mark TRINITY CLASSIC & Des...
Stephen W. Feingold: "Why You Should Think Twice Before Accepting a 2(f) Registration"
Posted on October 21, 2009Steve Feingold took some heat when his client, Chippendales USA, Inc., recently sought to register its "Cuffs & Collar" costume mark on the basis of inherent distinctiveness. [TTAB decision, now on appeal, TTABlogged here]. Chippendales already owned an incontestable, Section 2(f) registration for the same mark, so what was the point? Steve answers his critics here...
Precedential No. 41: Applicant Loses Third-Party Registration Battle, TTAB Finds Floor Tiles and Roof Tiles Related.
Posted on October 20, 2009Applicant G.B.I. Tile and Stone, Inc., ran into a brick wall in its attempt to register the mark CAPRI COLLECTION for "stones, ceramic floor tiles, porcelain floor tiles" [COLLECTION disclaimed]. The Board found the mark likely to cause confusion with the registered mark CAPRI for ?roofing tiles and trim...
New USPTO Director David Kappos Comments on Fraud and Other TM Issues
Posted on October 19, 2009David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, spoke at the AIPLA Annual Meeting in Washington, DC on October 15, 2009. His full remarks may be found here. Many of his comments dealt with patent-related issues, but he also had a few things to say about the trademark side of the PTO:We?ve started on an ambitious project to modernize our TM IT systems...
TTAB Reverses Section 2(e)(2) Refusal of "CATALINA ISLAND GRANOLA": Goods/Place Association Lacking
Posted on October 16, 2009The Board reversed a Section 2(e)(2) refusal of CATALINA ISLAND GRANOLA & Des. for "granola" [GRANOLA disclaimed], because the record failed to establish that purchasers would make a goods/place association between Catalina Island and granola. In re Zeller, Serial No...
TTAB Sustains Nike's Section 2(e)(2) Opposition to "B-MORE" for Clothing
Posted on October 15, 2009The Board just said "NO" to the application of Baltimorean Gregory A. Bordes's attempt to register the mark B-MORE for "clothing, namely shirts, sweatshirts, athletic jerseys, shorts, and hats." It granted Nike's motion for summary judgment under Section 2(e)(2), finding the mark to be primarily geographically descriptive of the goods...
TTABlog Special Report: Who Files the Most Oppositions, Cancellations, and Extension Requests?
Posted on October 14, 2009Did you ever wonder who are the most frequent inter partes filers at the TTAB (now that Leo Stoller has been sidelined)? Well, here are two lists generated by Chris Shiplett of TTAB Across the Board. The first sets forth this year's top 20 filers of oppositions, cancellations, and requests for extension of time to oppose...
TTABlog Back in the Trenches: a Six-Pack of Miscellaneous TTAB Papers
Posted on October 13, 2009Here?s another half-dozen recent Board papers, unearthed via TTAB Across the Board. Nothing earth-shaking in this random collection, but it?s useful, I think, to take a look at some of these miscellaneous papers in order to develop a better feel for the practicalities of Board practice...
CAFC Holds Argument In Appeal From "THE COLD WAR MUSEUM" Cancellation
Posted on October 09, 2009The CAFC held oral argument today in The Cold War Museum, Inc. v. Cold War Air Museum, Inc., Appeal No. 2009-1172. [mp3 file here]. The TTAB granted a petition to cancel a registration for the mark THE COLD WAR MUSEUM for "museum services," finding the mark merely descriptive and lacking in acquired distinctiveness...
Test Your TTAB Eye-Ball Ability on Two Triangle Design Marks for Clothing
Posted on October 09, 2009Take a look at the two design marks shown immediately below, for overlapping lists of clothing items. Would you find confusion likely? Keep in mind that when the goods are identical (even in part), a lesser degree of similarity in the marks is necessary to support a determination of likelihood of confusion...
Precedential No. 40: Applying Bose, TTAB Denies Fraud-Based Summary Judgment Motion Due to Factual Issues Regarding Intent
Posted on October 08, 2009In this Section 2(d), 2(e)(1) and dilution-based opposition, Opposer Enbridge, Inc. moved for summary judgment on the ground of fraud, claiming that Applicant Excelerate had never used the applied-for mark ENERGY BRIDGE for various services recited in the subject use-based application...
Precedential No. 39: TTAB Reverses 2(d) Refusal of "VOLTA" for Caffeine-Laced Vodka
Posted on October 07, 2009Reversing a Section 2(d) refusal, the TTAB found the standard character mark VOLTA for "energy vodka infused with caffeine" not likely to cause confusion with the registered mark TERZA VOLTA & Design (shown below) for "sparkling fruit wine; sparkling grape wine; sparkling wine; wines...
WYHA? Is "SCENT STRIPES" Merely Descriptive of Plastic Garbage Bags?
Posted on October 06, 2009Suppose your client filed an application to register SCENT STRIPES for plastic garbage bags and the like. Examining Attorney Doritt Carroll cites definitions of the two words, your client's product packaging "touting that applicant?s bags feature scented stripes," and a statement by your client's Director that the products "are scented...
Trade Channels and Purchasers Too Different, TTAB Reverses 2(d) Refusal of "DOOR TO DOC IN 31 MINUTES"
Posted on October 05, 2009Finding the channels of trade and classes of purchasers to be "distinct," the Board reversed a Section 2(d) refusal to register DOOR TO DOC IN 31 MINUTES for "hospital services, namely, emergency services and acute care services," finding it not likely to cause confusion with the registered marks DOOR TO DOC and 60 TO 0 DOOR TO DOC [in standard character and design forms] for "consultation services in the field of health care, namely, providing assistance to health care facilities by improving the flow and overall care quality of patients in emergency room and ambulatory care facilities...
Finding Lack of Bona Fide Intent, TTAB Sustains "MONT BLANC" Opposition
Posted on October 02, 2009The TTAB entered summary judgment in favor of Opposer Montblanc in this opposition to registration of the mark MONT BLANC for one hundred thirty-two electronic items in Class 9. The Board found that Applicant United Brands lacked a bona fide intention to use the mark for the identified goods as of the application filing date...
TTAB Posts October 2009 Hearing Schedule
Posted on October 01, 2009The Trademark Trial and Appeal Board has scheduled seven (7) hearings for the month of October, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...
TTABlog Quarterly Index: July - September 2009
Posted on September 30, 2009Thank you, readers, for all your comments! For newbies, please note that you may follow The TTABlog on Twitter (here). E-mail subscriptions to the TTABlog are available: just enter your e-mail address in the box on the right to receive a daily update via Feedblitz...
WYHA? TTAB Finds "LUCA'S CHOPHOUSE" Confusingly Similar to "LUCA PIZZA"
Posted on September 29, 2009In this enervating Section 2(d) appeal, the Board affirmed a refusal to register the mark LUCA'S CHOPHOUSE & Design for "restaurant and bar services," finding it likely to cause confusion with the registered marks LUCA PIZZA and LUCA PIZZA DI ROMA for restaurant services...
TTAB Reverses 2(d) Refusal of "COMMUNITY TRUST BANK & Design" Over "COMMUNITY TRUST"
Posted on September 28, 2009Apparently a registration for the mark COMMUNITY TRUST for banking services is hardly worth the paper it's printed on. The Board reversed a Section 2(d) refusal to register COMMUNITY TRUST BANK & Design for banking services [TRUST BANK disclaimed], finding it not likely to cause confusion with the registered mark COMMUNITY TRUST for the same services [TRUST disclaimed]...
TTAB Finds "E-LEX" Merely Descriptive of Litigation Support Services
Posted on September 25, 2009Finding that "e" means electronic or Internet-based, and that "lex" means law, the Board affirmed a refusal to register the mark E-LEX for "litigation support services for attorneys provided via an electronic network with court-specific consultation on the rules and implementation of procedures for filing electronically...
"MEDITERRANEAN MELT" Not Merely Descriptive of Sandwiches, Says TTAB
Posted on September 23, 2009Applicant Dikran M. Iskenderian came up a winner in his TTABattle to register the mark MEDITERRANEAN MELT for "sandwiches, panini," convincing the Board to reverse a Section 2(e)(1) mere descriptiveness refusal. Although the Board agreed that MELT must be disclaimed, it found the word MEDITERRANEAN, as applied to food, to be too ambiguous to be descriptive...
Finding "COTT" and "COtea" For Soft Drinks Too Different, TTAB Dismisses 2(d) Opposition
Posted on September 22, 2009In a rare victory for a pro se Applicant, the Board dismissed a Section 2(d) opposition to registration of the mark shown below, for "soft drinks flavored with tea," finding the mark not likely to cause confusion with the mark COTT, registered in standard character and stylized form for maltless soft drinks...
TTABlog in the Trenches: a Farrago of TTAB Interlocutory Papers
Posted on September 21, 2009I was poking around on TTAB Across the Board, looking at the "uncategorized" documents from last week, and decided to post a few of them. None of them is earth-shaking, but then what do you expect? Here's a half-dozen.Phone Number, Please: "The Board attempted to reach applicant, who is acting pro se in this matter, by phone but no phone number was listed in the opposition or application papers, and the Board was unable to obtain a phone number in an Internet search...
Precedential No. 38: Expert Testimony Alone Not Sufficient to Prove Mere Descriptiveness of "BEER 1" Marks
Posted on September 18, 2009The Board dismissed this opposition to registration of the marks BEER 1; ONE BEER, BEER 1; and BEER 1 & Design (shown below) for beer [BEER and MMVII disclaimed], finding these marks to be neither merely descriptive nor deceptively misdescriptive under Section 2(e)(1)...
ABA Webinar Sept. 30: "Trademark Fraud on the USPTO - A New Landscape"
Posted on September 18, 2009The ABA Section of Intellectual Property Law will host a webinar entitled "Trademark Fraud on the USPTO - A New Landscape" on Wednesday, September 30, 2009, 3:00 PM to 4:30 PM (EST). Details may be found here.At the end of August, the U.S. Court of Appeals for the Federal Circuit, in In re Bose, overturned an ever-growing line of Trademark Trial and Appeal Board decisions enabling challengers to invalidate pending trademark applications and issued registrations on grounds of fraud - resulting from circumstances of simple inadvertence or misunderstanding...
WYHA? "INVENTION REGISTRY" Merely Descriptive of Invention Document Storage, Says TTAB
Posted on September 17, 2009Would You Have Appealed this one? The TTAB affirmed a Section 2(e)(1) refusal to register the mark INVENTION REGISTRY, finding it merely descriptive of "electronic storage of archival documents related to invention conception dates" [REGISTRY disclaimed]...
ABA Webinar Sept. 30: "Trademark Fraud on the USPTO - A New Landscape"
Posted on September 16, 2009The ABA Section of Intellectual Property Law will host a webinar entitled "Trademark Fraud on the USPTO - A New Landscape" on Wednesday, September 30, 2009, 3:00 PM to 4:30 PM (EST). Of course, the catalyst for the webinar is the CAFC's recent decision in In re Bose Corporation, Appeal No...
Petition for Certiorari filed in Harjo v. Pro-Football, Inc.
Posted on September 16, 2009Susan S. Harjo et al. have filed a Petition for Writ of Certiorari in the U.S. Supreme Court, seeking review of the decision of the U.S. Court of Appeals for the D.C. Circuit in Pro-Football, Inc. v. Harjo, 90 USPQ2d 1593 (D.C. Cir. 2009). [copy of Petition here (431 pages)]...
Finding Autos and Tires Not Closely Related, TTAB Reverses 2(d) Refusal of "ECHELON"
Posted on September 15, 2009In this rather strange case, both Applicant Hyundai and the Trademark Examining Attorney urged the Board to reverse a Section 2(d) refusal of the mark ECHELON for automobiles that was based on the identical mark registered for "automotive tires." The Examining Attorney had considered himself bound by In re Jeep Corporation, 223 USPQ 333 (TTAB 1984), and along with Hyundai argued that Jeep should be overturned...
Canadian Concurrent Use Applicant Gets USA Minus MN, Says TTAB
Posted on September 14, 2009British Columbia-based Overwaitea marched across the border and grabbed 49 states via its concurrent use application for registration of the mark URBAN FARE for "retail grocery store services." Overwaitea listed Urban Fare, LLC as an exception to its right to exclusive use...
Jane Coleman's Treatise on Secondary Liability for Trademark Infringement
Posted on September 11, 2009Jane Coleman provides a useful treatise on the increasingly important issues of contributory and vicarious liability for trademark infringement at her new website (here). Apparently good writing runs in the Coleman family. We know that her husband Ron is an amazing writer (witness his Likelihood of Confusion blog here)...
Finding Wine and Beer Related, TTAB Affirms 2(d) Refusal of "BEAR REPUBLIC" over "BEAR REPUBLIC RICARDO'S RED ROCKET ALE & Design"
Posted on September 11, 2009E. & J. Gallo's attempt to register the mark BEAR REPUBLIC for wine was stymied by the USPTO's Section 2(d) refusal based upon the registered mark RED ROCKET RICARDO'S BEAR REPUBLIC ALE & Design for beer and ale [ALE disclaimed]. The Board affirmed, finding the marks similar and, based on third-party registration evidence, the goods related...
WYHA? TTAB Affirms Failure-to-Function Refusal of "STRENGTH IN DATA" for Brochures
Posted on September 10, 2009ImClone Systems sought to register the mark STRENGTH IN DATA for advertising and promotional publications in the health care field. Its specimens of use are shown below. Examining Attorney Fred Carl III refused registration on the ground that the phrase did not function as a trademark for these goods...
Finding Double Entendre, TTAB Reverses 2(e)(2) Refusal of "PROFUMO DE FIRENZE" for Perfume
Posted on September 09, 2009Reversing a Section 2(e)(2) refusal, the Board found the mark shown below to be not primarily geographically descriptive of perfumes and cosmetics. It ruled that although the mark may be understood as describing that Applicant's goods are made in Florence, it could also have a non-geographical meaning as "the scent (or sweet smell) of Florence...
Motion to Strike Bogus Affirmative Defenses: Worth the Effort?
Posted on September 08, 2009When I receive an answer to a notice of opposition or a petition for cancellation that contains boilerplate "affirmative defenses," I usually don't bother to move to strike because it's not worth the time and expense. Once in a while I do make a motion, depending on how ornery I feel at the time...
Follow Your TTAB Cases on TTAB Across The Board
Posted on September 04, 2009Trademark attorney Chris Shiplett has launched a useful new website called TTAB Across The Board, which provides a searchable database of TTAB case status information and TTAB filings.At TTAB Across The Board, one may search for case information on TTAB proceedings and appeals, and may also search the full text of TTAB filings...
Precedential No. 37: Board Grants Motion to Introduce at Trial, Discovery Deposition of Nonparty Taiwanese Witness
Posted on September 04, 2009In a somewhat interesting decision, the Board granted Opposer's motion under Rule 2.120(j)(3)(i) to allow introduction of a nonparty discovery deposition by way of notice of reliance. The witness, Momo Chen, a Taiwanese citizen who resides outside the U...
Some Additional Commentary on Bose
Posted on September 03, 2009Many readers have posted comments regarding the CAFC's Bose decision. [See TTABlog post here.] I have also been collecting additional commentary (links below). If you have an item that you thing should be added, please send me a link.Additional commentary:Michael Hall at his blog, Registration Ruminations (here), ponders the impact of Rule 11...
WYHA or not WYHA? "CHROMALOY" Merely Descriptive of Surgical Implants, Says TTAB
Posted on September 03, 2009What do you think? Does this one fall below the WYHA line? The TTAB affirmed a Section 2(e)(1) refusal to register the mark CHROMALOY, finding it merely descriptive of "surgical implants comprising artificial material." The Board concluded that consumers would recognize the term as the equivalent of "chrome alloy," which describes "a feature or characteristic of such surgical implants...
TTAB Reverses Surname Refusal of "SIGMANN" for Kitchen Fixtures
Posted on September 02, 2009The Board needed only six pages to set out its decision reversing a Section 2(e)(4) surname refusal of the mark SIGMANN for sinks, lamps, and lighting fixtures, printed matter relating to kitchens, and kitchen furniture. The Examining Attorney offered a feeble NEXIS/LEXIS listing of 33 persons with the surname SIGMANN (five of which appeared to be duplicates), and excerpts from five news stories about persons name SIGMANN...
CAFC Reverses TTAB's Bose Fraud Ruling, Eviscerates Medinol
Posted on September 01, 2009Stop the fraudits! It's a whole new ballgame at the TTAB after the U.S. Court of Appeals for the Federal Circuit yesterday reversed the Board's decision in Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (TTAB 2007). The Board had found that Bose committed fraud in its 2001 renewal of a registration for the mark WAVE for, inter alia, audio tape recorders and players...
TTAB Posts September 2009 Hearing Schedule
Posted on September 01, 2009The Trademark Trial and Appeal Board has scheduled nine hearings for the month of September, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...
Precedential No. 36: "MTOWN CLOTHING" and "MOTOWN" Confusingly Similar for Clothing, Croons TTAB
Posted on August 31, 2009Perhaps Applicant Charles O'Rourke cried "the tears of a clown" when the TTAB sustained this Section 2(d) opposition to his application to register the mark MOTOWN CLOTHING & Design for clothing [CLOTHING disclaimed]. The Board found confusion likely with the mark MOTOWN, registered for musical recordings and previously used for clothing...
Precedential No. 35: Finding Mutilation, TTAB Affirms Refusal of Applicant's Two Bottle Mark
Posted on August 28, 2009Applicant Pharmavite LLC got nowhere fast in its attempt to register the mark shown to the right (comprising a drawing of two overlapping bottles) for dietary supplements. The Board agreed with Examining Attorney Daneen J. Hetzel that the applied-for mark "is not a substantially exact representation of the mark as shown in applicant's specimen" (immediately below), as required by Trademark Rule 2...
TTAB Accepts "BIG BOY" Restaurants Concurrent Use Agreement
Posted on August 27, 2009The Board accepted the concurrent use agreement (found here) entered into by the parties in Frisch's Restaurants, Inc. v. Big Boy Restaurants International, LLC, Concurrent Use No. 94002189 (August 11, 2009). It ruled that Applicant Frisch's Restaurants is entitled to registration of the mark BIG BOY for "tartar sauce and pies" and for "restaurant, drive through and carryout services" for the states of Indiana and Kentucky, and for certain counties in Tennessee and Ohio...
"NO FRIGGIN CLUE" Confusingly Similar to "CLUE" for Video Games, Says TTAB
Posted on August 26, 2009The Board sustained Hasbro's opposition to registration of the mark NO FRIGGIN CLUE for, inter alia, computer and video games, finding it likely to cause confusion with the "well-known and strong" mark CLUE registered for board games and computer and video games...
Finding Clothing and Jewelry Related, TTAB Affirms 2(d) Refusal of "TIANA"
Posted on August 25, 2009Daffy Duck, meet Mucky Duck. The Board affirmed an opposition to Disney's application to register the mark TIANA for various clothing items, finding the mark likely to cause confusion with the identical mark registered for "jewelry, diamonds." The third-party registration evidence "overwhelmingly" favored Examining Attorney Stephen Aquila's position regarding the relatedness of women?s dresses, shirts, skirts and sweaters, on the one hand, and jewelry, on the other hand...
On Summary Judgment, TTAB Finds "SUPER HERO" Applicant Lacked Bona Fide Intent
Posted on August 24, 2009The Board entered summary judgment against pro se Applicant Michael Craig Silver in his attempt to register the mark SUPER HERO for various skin care products. Based on Silver's discovery responses and discovery deposition testimony, Opposers established a prima facie case that Applicant lacked a bona fide intent to use the mark on the goods at the time he filed his application...
TTAB Tosses Out Bankrupt Opposition to "SECRETS OF THE MILLIONAIRE MIND"
Posted on August 21, 2009Opposer Learning Annex was schooled by the TTAB in its opposition to registration of the mark SECRETS OF THE MILLIONAIRE MIND for tapes and CDs, various printed materials, and educational services relating to self-improvement and wealth accumulation: (A) Opposer neglected to prove its standing; (B) Opposer failed to establish that the subject mark is merely descriptive under Section 2(e)(1); and (C) Opposer wrongly asserted that the mark is unregistrable as the title of a single work, since "the application is based on intention to use the mark in commerce and this record does not establish that applicant will not use this proposed mark in connection with its International Class 9 goods on a series of creative works...
WYHA? TTAB Finds "WOW PRINTABLE COUPONS" Confusingly Similar to "WOW! MARKETING"
Posted on August 20, 2009Applicant Elena Potoupa sought to register the mark WOW PRINTABLE COUPONS for promotional services featuring online downloadable coupons ["PRINTABLE COUPONS" disclaimed], but Examining Attorney Marcie R. Frum Milone refused registration under Section 2(d) in view of the registered mark WOW! MARKETING for advertising and marketing services and for dissemination of advertising online...
Re-Test Your TTAB Judge-Ability: Can You Handle Another Nut Case?
Posted on August 19, 2009Here we go again! Another chance to prove that you are TTAB judicial material. Applicant Sunland, Inc., sought to register the mark SUNLAND for processed nuts and nut butters, raw nuts, peanut butter, and raw peanuts. The Examining Attorney refused registration under Section 2(d), finding a likelihood of confusion with the registered mark SUN-LAND for "raisins, dried fruits, preserved fruits...
TTAB Reverses "ANDIAMO" 2(d) Refusal: Insufficient Proof that Wine and Restaurant Services are Related
Posted on August 18, 2009Reversing a Section 2(d) refusal to register the mark ANDIAMO for wine, the Board found the mark not likely to cause confusion with the identical mark registered for restaurant services. The law requires "something more than that similar or even identical marks are used for food products and for restaurant services...
TTAB Affirms Refusal: Applicant Failed to Comply with Rule 2.61(b) Requirement for Additional Specimens
Posted on August 17, 2009Pursuant to Rule 2.61(b), Examining Attorney Y.I. Lee required that pro se Applicant Kent G. Anderson provide additional specimens for his class 1 and class 3 goods because of the wide range of unrelated articles listed in his application. Anderson didn't...
Precedential No. 34: Applicant's Cancelled Registration for Identical Mark No Help, TTAB Affirms 2(d) Refusal of "DAVEY" for Water Pumps
Posted on August 14, 2009In a lengthy, comprehensive, and perhaps record-breaking du Pont analysis, the Board affirmed a Section 2(d) refusal to register the mark DAVEY for "electric motors for machines; waterpumps with fluid flow or pressure control for domestic, industrial and commercial use; and parts and fittings therefor...
Test Your TTAB Judge-Ability with this Section 2(d) Nut Case
Posted on August 13, 2009How would you decide this section 2(d) opposition to registration of the marks AUSTINUTS in standard character and design form, for dry roasted nuts, in view of the registered mark AUSTIN, in standard character and design form, for crackers and cookies? The record showed that Applicant sells gift baskets that include nuts, cookies and crackers, and that Opposer's mark is very strong for cookies and crackers...
Recommended Reading: David S. Welkowitz on "Famous Marks Under the TDRA"
Posted on August 12, 2009The latest issue of The Trademark Reporter includes an excellent article by Professor David S. Welkowitz of Whittier Law School, entitled "Famous Marks Under the TDRA," 99 Trademark Reporter 983 (July-August 2009). What a pleasure it is to read such a well-written, informative, and thought-provoking work...
TTAB Okays Web Page Specimen for Sausage Links
Posted on August 11, 2009The PTO Examining Attorney rejected Applicant Odom's specimen of use, consisting of a web page displaying the design mark shown below, for "fresh sausage rolls, links and patties; fresh souse; frozen sausage ball appetizers." According to the Examining Attorney, the design is not so prominently displayed in the website that customers will easily associate the mark with the products...
Precedential No. 33: TTAB Designates Section 2(d) Alligator Decision as Precedential
Posted on August 10, 2009For some reason, the Board reached back to April 2009 and re-designated its dueling alligator Section 2(d) decision as precedential. It found the design mark shown below left to be likely to cause confusion with the admittedly-famous Lacoste alligator mark shown on the right, both for various, and partly identical, clothing items...
Recommended Reading: Joe Dreitler on "Why the TTAB Got It Right in Medinol
Posted on August 07, 2009Joe Dreitler is a bona fide trademark expert, and he has strong views on the Lanham Act's "use" requirement and the TTAB's fraud doctrine. I know, because Joe sends me his comments whenever I discuss a fraud case. I recently persuaded him to set out his thoughts on the current state of fraud jurisprudence, and he provides an important historical perspective on the subject in his article, "Why the TTAB Got it Right in Medinol...
Precedential No. 32: TTAB Okays Service of Opposition by Mail to Applicant's Address, Not the Correspondence Address of Record
Posted on August 06, 2009The intense, dark cloud hanging over this opposition was lifted by the Board's merciful ruling that Opposer Lindt's service of its Notice of Opposition on Applicant Karlo Flores by mail at his address, rather than at the address of record (his attorney's), was acceptable under the circumstances at hand...
Finding Proof of Acquired Distinctiveness Insufficient, TTAB Affirms Refusal to Register the Color Maroon for Steel Anchors
Posted on August 05, 2009If you want to register a color mark, you'd better show up at the TTAB with some pretty darn good proof of acquired distinctiveness. Applicant General Technologies gave it a shot, claiming trademark rights in the color maroon for "maroon plastic encapsulated steel anchors for multi-strand post-tension systems" and for "maroon plastic encapsulated steel anchors for monostrand post-tension systems...
Precedential No. 31: In an Accelerated Decision, TTAB Sustains Schick Opposition to "SLICK ULTRA PLUS" for Disposable Razors
Posted on August 04, 2009One suspects that this rather straightforward Section 2(d) decision was deemed precedential because the parties agreed to resolve the matter via the Board's Accelerated Case Resolution (ACR) procedure. The Board found Green Planet's mark SLICK ULTRA PLUS for disposable razors likely to cause confusion with the famous, registered mark SCHICK for "razors and razor blades," and so it sustained the opposition...
TTAB Posts August 2009 Hearing Schedule
Posted on August 03, 2009The Trademark Trial and Appeal Board has scheduled nine hearings for the month of August, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...
Test Your TTAB "Eyeball"-Ability on Two Eagle Design Marks for Clothing
Posted on July 31, 2009The Board focused its eagle eyes on the two design marks shown below, Applicant's mark shown on the left and Opposers' on the right, both for various clothing items. Applicant S.A.S.C.O. Trading claimed the color red for its mark, while Opposers did not claim any color for theirs...
TTAB Finds "BRAIN GAMES" Merely Descriptive of Puzzle Books, Lacking in Acquired Distinctiveness
Posted on July 30, 2009It was close to a no-brainer for the Board in its affirmance of a refusal to register the mark BRAIN GAMES for "printed publications, namely, books and magazines containing games, puzzles and other cognitive exercises." The Board found the mark merely descriptive under Section 2(e)(1), and lacking in acquired distinctiveness under Section 2(f)...
WYHA? TTAB Affirms Mere Descriptiveness Refusal of "LOCAL LABEL" for Clothing
Posted on July 29, 2009Marylander Curtis A. Brubaker, Jr., failed to overcome a Section2(e)(1) mere descriptiveness refusal of the mark LOCAL LABEL for "hats; polo shirts; shirts; short-sleeved or long-sleeved t-shirts." The two arguments that this local Applicant tried on for size were sure TTAB losers, which is why this case is a candidate for our WYHA label...
TTAB Affirms Section 2(e)(5) Functionality Refusal of Bird Feeder Design
Posted on July 28, 2009Another purported product configuration mark kicked the TTABucket as the Board affirmed a Section 2(e)(5) refusal to register the product design shown below for a "bird feeder," finding it to be de jure functional. Alternatively,the Board found that if the design is considered not functional, Applicant Woodlink's evidence of acquired distinctiveness is insufficient to support registration under Section 2(f)...
Precedential No. 30: TTAB Okays Warranty Services for Applicant's Goods Sold Under Third-Party Marks
Posted on July 27, 2009The Board reversed a refusal to register the service mark HOP for "providing warranties to consumers and retailers on power-operated outdoor products, namely, power-operated chainsaws, edgers, ...." The Examining Attorney maintained that warranting one?s own products is an activity that is merely incidental or ancillary to the sale of the goods, and therefore is not a service within the meaning of the Trademark Act...
CAFC Affirms TTAB's Genericness Refusal of "HOTELS.COM"
Posted on July 24, 2009The U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's judgment in the HOTELS.COM case, in which the Board found (here) the term to be generic for "providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network...
Ohio State Bar IP Seminar: Dreitler and True on Fraud
Posted on July 24, 2009On July 31st, Joe Dreitler and Mary R. True of Bricker & Eckler (Columbus, Ohio) will discuss fraud on the PTO, at the Ohio State Bar Association symposium in Cleveland entitled "Intellectual Property Today: Why protecting IP is more important that ever...
Precedential No. 29: TTAB Strikes Testimony of Witness Not Identified in Pre-Trial Disclosure
Posted on July 23, 2009Under TTAB Rule 2.121(e), a party must identify, no later that 15 days before the opening of its testimony period, each witness "from whom it intends to take testimony, or may take testimony if the need arises." Here, Petitioner failed to comply with that Rule, and so the Board struck the testimony of Petitioner's president...
TTAB Grants Request for Reconsideration; Hell Freezes Over; Cubs Win World Series
Posted on July 22, 2009Okay, I exaggerated a bit. At least regarding the TTAB. Most requests for reconsideration are lame or feeble, or both. Here, the Board granted Applicant O'Rourke-Nicaud's request for reconsideration of a final refusal to register the mark shown below [GYM disclaimed], for health club services, on the ground of mere descriptiveness or deceptive misdescriptiveness...
Follow the TTABlog on Twitter
Posted on July 22, 2009Reminder: you may follow the TTABlog on Twitter (here). E-mail subscriptions are also available: just enter your e-mail address in the box on the right to receive a daily update via Feedblitz..
Prepositional Difference in Marks Not Enough to Avoid 2(d) Refusal, Says TTAB
Posted on July 22, 2009The Board affirmed a Section 2(d) refusal to register the mark FOR EVERY WALK OF LIFE THERE IS ALWAYS ONE for various clothing items, finding it likely to cause confusion with the registered mark FOR EVERY WALK IN LIFE for some of the same clothing items...
"SKINNY CEREAL" Merely Descriptive of Cereal Products, Says TTAB
Posted on July 21, 2009Peace Mountain Natural Beverages, owner of the registered marks SKINNY WATER, SKINNY JUICE, SKINNY COLA, SKINNY TEA, SKINNY CAPS, and SKINNY SHAKE [each with the second word disclaimed], failed to fatten its trademark portfolio with registration of its mark SKINNY CEREAL for "nutriceuticals for use as a dietary supplement in the form of cereal products and cereal-based snack foods" and for "breakfast cereal, snack food, namely, cereal based snack food, processed cereal-derived food products to be used as a breakfast cereal, snack food or ingredient for making food...
Precedential No. 28: TTAB Affirms 2(e)(5) Functionality Refusal of Bicycle Spoke Design
Posted on July 20, 2009After an exhaustive analysis, including a review of several pertinent utility patents, the Board affirmed a Section 2(e)(5) refusal of the product configuration mark shown below for "bicycle wheels," finding the design to be functional. In re Rolf Dietrich, Serial No...
D. Mass Judge Considers Scope of Design Patent Markman Hearing Post-Egyptian Goddess
Posted on July 20, 2009Design patent fans will find interesting a recent Markman order issued by Judge Douglas P. Woodlock of our federal district court here in Boston. Judge Woodlock construed the claim of U.S. Design Patent No. D-469,840, entitled "Air Gun Sight," keeping in mind the CAFC's recent decision in Egyptian Goddess, Inc...
WYHA? TTAB Finds "Dirt Drifters" Merely Descriptive of -- Guess What?
Posted on July 17, 2009Applicant Shawn Esposito hit a TTABrick wall in his attempt to register the mark DIRT DRIFTERS for "television show production services." The Board found the mark merely descriptive under Section 2(e)(1). Esposito took small consolation from the Board's reversal of a second refusal concerning his response to the PTO's request for information under Rule 2...
Test Your TTAB Judge-Ability
Posted on July 17, 2009Here's another chance to prove your qualifications for a TTAB judgeship. Pro se Applicant GITZIT, Inc. sought to register the mark GITZIT for "fishing lures." Opposer J.L. Pennington claimed likelihood of confusion, and he proved prior use of the identical mark for the identical goods...
Fraud! TTAB Enters Judgment on the Pleadings Against Applicant Who Admitted Non-Use of Its Mark
Posted on July 16, 2009Here's a new, albeit not particularly significant, decision for our fraud collection. Applicant Mellbeck Ltd, acting pro se, filed an application [under Sections 1(a) and 44(e)] to register the mark shown below for a "laundry list" of more than fifty clothing items...
Precedential No. 27: U.S. CUSTOMS Logo Barred by Sections 2(a) and 2(b)
Posted on July 15, 2009The Board has re-designated its recent decision in In re Peter S. Herrick, P.A., Serial No. 76653159 (June 10, 2009) as precedential. [TTABlogged here]. Until this re-designation, perhaps the most lasting aspect of the case was my coining of the term "trifusal" to describe the PTO's final action...
WYHA? "STEAM N' MASH" Merely Descriptive of Processed Potatoes, Says TTAB
Posted on July 14, 2009Well, what do you think of this one? Applicant ProMark Brands, Inc. sought to register the marks ORE-IDA STEAM N' MASH and STEAM N' MASH for "processed potatoes," but Examining Attorneys Kathleen H. Lorenzo and Inga Marie Ervin said no. In the former case, Lorenzo demanded a disclaimer of STEAM N' MASH, and in the latter Ervin refused registration, both on the ground of mere descriptiveness...
TTAB Says No and No to "NAP OF THE CARIBBEAN" Double Entendre Argument
Posted on July 13, 2009The TTAB turned a double play in affirming Section 2(d) and 2(e)(1) refusals of the mark NAP OF THE CARIBBEAN for "telecommunications services, namely, providing central connection points for telecommunication network carriers." [It wasn't a Tinker to Evers to Chance double play, but Hairston-Grendel-Rogers]...
TTAB Dismisses 2(d) Opposition: Marks Similar but Goods and Services, Trade Channels, and Purchasers Too Different
Posted on July 10, 2009Despite the strength of General Cable's "Roleaux" mark (below right), and the similarity between that mark and National Rural's design mark (below left), the Board dismissed this Section 2(d) opposition. It found National Rural's services so different from General's goods and services, the channels of trade and classes of customers so different, and the potential purchasers so knowledgeable and careful, that confusion is not likely...
Antler Trade Dress Fails to Function as a Trademark for Ammunition, Says TTAB
Posted on July 09, 2009The Board affirmed a refusal to register the design shown below as a trademark for ammunition, finding that it fails to function as a source indicator. Applicant Alliant fired a blank with its claim that the design is inherently distinctive, the Board concluding that the design is not so unique that it would automatically be perceived as a trademark...
Another WYHA? TTAB Affirms 2(e)(4) Surname Refusal of "MERIWETHER" for Cabinetry
Posted on July 08, 2009The Board affirmed a Section 2(e)(4) refusal to register the mark MERIWETHER for cabinetry, finding it to be primarily merely a surname. Applicant Masco argued that the mark has non-surname significance as the first name of explorer Meriwether Lewis, but that argument, unlike Lewis, went nowhere...
CAFC Rules on Whether "SEED TO PLATE" Design Marks are Confusingly Similar
Posted on July 08, 2009In a nonprecedential disposition, the U.S. Court of Appeals for the Federal Circuit ruled today on whether the two marks shown below, both for services related to "growing crops as food," are likely to cause confusion. In re Northland Organic Foods Corp...
WYHA? TTAB Affirms 2(e)(1) Mere Descriptiveness Refusal of "SENSOR DOME" for Kitchen Cooktops
Posted on July 07, 2009Would you have appealed from this Section 2(e)(1) refusal? Examining Attorney David S. Miller deemed the mark SENSOR DOME merely descriptive of household and kitchen machines and equipment, including ovens, ranges, and cooktops. The Board affirmed in a brisk, 7-page opinion that relied largely on Applicant's own admissions during prosecution...
TTAB Affirms Failure-to-Function Refusal of Folded Brochure as Service Mark
Posted on July 06, 2009The Board said no to Applicant Kathy Sayah's attempt to register the shape and design of a folded brochure (shown below) as a service mark for advertising and printing services, because the brochure fails to function as a mark. The Board found the brochure to be not inherently distinctive and it deemed Sayah's proof of acquired distinctiveness to be insufficient...
CAFC Affirms TTAB's Shinnecock Smoke Shop Section 2(a) Ruling
Posted on July 03, 2009The U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's judgment in the Shinnecock Smoke Shop case, in which the Board affirmed the PTO's Section 2(a) false association refusal of the two marks shown below, for cigarettes. (TTABlogged here)...
Precedential No. 26: TTAB Affirms Descriptiveness Refusal of "BATTLECAM" for Computer Game Software
Posted on July 02, 2009Applicant Petroglyph Games won the identification-of-goods battle but lost the registration war regarding its mark BATTLECAM for "computer game software." In a rather odd ruling, the Board reversed the PTO's requirement that Petroglyph provide a new identification of goods...
TTAB Posts July 2009 Hearing Schedule
Posted on July 01, 2009The Trademark Trial and Appeal Board has scheduled six hearings for the month of July, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...
TTAB Denies Motion to Amend Cancellation Petition to Add New Classes Because Fee Did Not Accompany Motion
Posted on June 30, 2009Maybe it's just me, but I found this decision surprising. Petitioner Fred Beverages filed a motion to amend its petition for cancellation of Registration No. 3051906, seeking to add three more classes to the petition. The Board denied the motion because it "was not accompanied by any payment or authorization to charge respondent's [sic] deposit account for any of the additional classes sought to be cancelled...
TTABlog Quarterly Index: April - June 2009
Posted on June 30, 2009The TTABlog now accepts comments -- so go ahead, hit me with your best shot! Note also that you may now follow The TTABlog on Twitter (here). E-mail subscriptions to the TTABlog continue to be available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz...
Precedential No. 25: "VANTAGE TITAN" and "TITAN" Confusingly Similar for Related Medical Devices, Says TTAB
Posted on June 29, 2009The Board played "Whac-A-Mole" with Applicant Toshiba's several arguments as it affirmed the PTO's Section 2(d) refusal to register the mark VANTAGE TITAN for "medical magnetic resonance imaging diagnostic apparatus, namely, MRI diagnostic apparatus." Despite the sophistication of the purchasers, the differences in the marks and the goods, and the distinctiveness of the word VANTAGE, the Board found the mark likely to cause confusion with the registered mark TITAN for "medical diagnostic apparatus, namely, medical ultrasound device...
More Recommended Reading: Jordan Weinstein's TTAB Year in Review
Posted on June 26, 2009I want to make sure that you have plenty of good reading material for your summer vacation in Argentina. Jordan Weinstein has kindly permitted me to post copies of his written material and his slides from this year's INTA annual meeting, both entitled "Decisions of the Trademark Trial and Appeal Board and Federal Courts on Registrability Issues 2008-2009...
Recommended Reading: Sandra Edelman on Proving Bona Fide Intent
Posted on June 25, 2009The latest issue of The Trademark Reporter includes Sandra Edelman's timely and informative article on bona fide intent, entitled "Proving Your Bona Fides - Establishing Bona Fide Intent to Use Under the U.S. Trademark (Lanham) Act," 99 Trademark Reporter 763 (May-June 2009)...
Would You Have Appealed from this TTAB Trifusal?
Posted on June 24, 2009It's time for another WYHA! Attorney Peter S. Herrick attempted to register the logo mark shown immediately below for "attorney services," but Examining Attorney Ty Murray hit him with a triple refusal. Mr. Murray maintained that registration is barred by Sections 2(a) and 2(b), and he also deemed Applicant's drawing to be unacceptable...
TTAB Reverses Two Refusals of "CARPET TO CARPET" for Reclamation Services
Posted on June 23, 2009The Board rolled out the red (or maybe green?) carpet for Applicant Columbia Insurance, tossing out two PTO refusals of the mark CARPET TO CARPET for "receiving used carpet products for subsequent reclamation of the carpet.? The PTO maintained that Applicant's recitation of services was unacceptable, and that Applicant failed to disclaim the merely descriptive term "carpet...
New Job Posting: Under Armour Seeks "Rock Star" Paralegal (Baltimore)
Posted on June 23, 2009Under Armour, Inc. seeks a "rock star" paralegal for its Baltimore, Maryland headquarters. Three-plus years of law firm or in-house paralegal experience, including one year of trademark experience, required. Details may be found here at the company website...
Pam Chestek Ponders the Transfer of Common Law Trademarks under State Law
Posted on June 22, 2009At her Property, intangible blog, Pam Chestek reports (here) on an "uh-oh moment" involving transfer of common law trademark rights. The TTAB case, she observes, involves a "fairly routine examination of a petitioner's first use date to determine who is senior user of the mark...
Precedential No. 24: TTAB Finds Another Motorola "Chirp" Sound Unregistrable
Posted on June 19, 2009In February 2008, the Board sustained Nextel's opposition to Motorola's application to register a 911 hertz chirp sound as a trademark for two-way radios, finding that the sound fails to function as a trademark. (TTABlogged here). Nextel and Motorola returned to the TTAB in an opposition to Motorola's 1800Hz chirp sound (listen here) for "cellular telephones and two-way radios," and Motorola lost again: on the ground of claim preclusion as to two-way radios, and as to cell phones on the ground that mark is not inherently distinctive (as a matter of law) and has not acquired distinctiveness...
How Sound is Your Sound Mark Knowledge?
Posted on June 19, 2009The PTO's "Kids' Pages" include a page (here) full of links to registered (and a few pending) sound marks. So if your weather is as dreary as Boston's and you're stuck inside at lunchtime, try identifying each of these ten sound marks (listed in no particular order)...
"DUNES" on Slot Machines not a Proper Specimen for Casino Services, Says TTAB
Posted on June 18, 2009Applicant Ballagio, LLC crapped out in its attempt to register the mark DUNES for casino services. Its specimen of use showed the mark on slot machines, but that was not enough to create a direct association between the mark and Applicant?s casino services...
New Job Posting: NYC Firm Seeks Fantastic TM Paralegal
Posted on June 18, 2009Are you a fantastic trademark paralegal in the NY area, with experience in domestic and international trademarks, as well as domain names? If you're contemplating a move, please send a resume to mschwimmer (at symbol) mosessinger dot com. Note: if you are a recent law school grad, then this would not be a good opportunity for you...
TTAB Affirms Rejection of SOU filed by Assignor After Assignment
Posted on June 17, 2009AmericasourceBergen Corp. (ABC) and PMSI Inc. were slightly off in their timing in filing a Statement of Use for the mark PMSI MSA for "healthcare cost containment" services. ABC filed the SOU on September 10, 2008, but it had assigned the mark to PMSI on September 8, 2008 (after ABC signed the SOU on that same day)...
Precedential No. 23: TTAB Refuses to Hear Belated Fraud Claim, Finding It Not Tried By Consent
Posted on June 16, 2009Perhaps sensing that it was up the proverbial creek with its Section 2(d) claim, Opposer Morgan Creek Productions, on the day its trial brief was due, filed a motion to add a claim of fraud, asserting that the issue had been tried by the "implied consent of the parties...
Test Your TTAB Eyeball-Ability With These Five "CL" Stylized Marks for Jewelry
Posted on June 12, 2009Put on your Section 2(d)-colored glasses and cast your analytical eyes on these five CL (Stylized) marks. Applicant Sajen, Inc. sought to register the mark shown on the right for jewelry. The PTO refused registration because it found the mark confusingly similar to four other CL (Stylized) marks (shown below), three of them registered for jewelry and the fourth for on-line retail services featuring jewelry...
Fame of Gibson Guitar's "Dove Wing Peg Head" Design Brings TTAB 2(d) Victory
Posted on June 12, 2009Finding Gibson's incontestably registered "Dove Wing Peg Head" design (shown on the right) to be "both distinctive and famous in connection with guitars," the Board sustained an opposition to registration of the mark shown below for "guitars," finding it likely to cause confusion with Gibson's mark...
"AMERICAN GIRL" Tops "AMERICAN BOY" in TTAB 2(d) Clothing Confrontation
Posted on June 11, 2009American Girl came out on top of American Boy in this Section 2(d) battle of the sexists. The Board found the mark AMERICAN BOY for "clothing, namely, shirts, pants, tops, sweaters, sweatshirts and suits" likely to cause confusion with the well-known AMERICAN GIRL mark registered for various clothing items, including shirts and pants...
Precedential No. 22: Saying No-No to Double Entendre Argument, TTAB Deems "URBANHOUZING" Merely Descriptive of Real Estate Services
Posted on June 10, 2009Despite Applicant Dean S. Carlson's dogged efforts, the Board affirmed a Section 2(e)(1) mere descriptiveness refusal of the mark URBANHOUZING in standard character form for "real estate brokerage; real estate consultation; and real estate listing." Carlson unsuccessfully contended that the compression and misspelling of the words URBAN HOUSING into URBANHOUZING transforms the phrase into an inherently distinctive mark, and that the ZING portion of the mark creates a separate commercial impression that results in a double entendre...
Appeal from a Section 2(d) Refusal: You Be the TTAB Judge!
Posted on June 09, 2009Alrighty, then. Here's another chance to prove your TTAB judgeworthiness. Applicant Blue Heaven Hosiery seeks to register the mark BBW in standard character form for "women?s knee high stockings of nylon and spandex construction material and not including upper torso clothing...
Recommended Reading: Glenn Gundersen's Annual Report on Trademark Trends
Posted on June 09, 2009Trademark guru Glenn A. Gundersen has published his annual review of "Trends in Trademarks." (pdf here). His principal comments are aptly summarized by the main heading: "Hard Times for Trademarks: Filings plunge, TTAB docket shrinks."Glenn A. GundersenGlenn observes that "[t]he Trademark Trial and Appeal Board has seen a significant drop in applicants who appeal examining attorneys' refusals to register new marks, as well as a decrease in the number of parties involved in contentious proceedings...
Recommended Reading: Ted Davis on "Recent Developments in U.S Trademark Practice"
Posted on June 08, 2009When Ted Davis talks trademarks, you should listen. That's the reason why his yearly presentation at the INTA annual meeting is so well attended. He has kindly consented to my posting his latest article/outline on recent developments in trademark law (pdf here)...
TTAB Affirms Mere Descriptiveness Refusal of "AUTOPROBE" for Soil Sampling Machines and Related Services
Posted on June 05, 2009The mark AUTOPROBE may bring to mind a trip to Lovers' Lane, or maybe a UFO abduction movie, but the Board found it to be merely descriptive of "self-powered, mobile soil sampling machines" and of "agricultural services, namely, soil sampling, testing, and analysis...
CAFC Hears Oral Argument in Shinnecock Smoke Shop Appeal
Posted on June 05, 2009The U.S. Court of Appeals for the Federal Circuit heard oral argument yesterday (mp3 podcast here) in In re Shinnecock Smoke Shop, Serial Nos. 78918061 and 78918500 (September 10, 2008) [not precedential]. [TTABlogged here]. The TTAB affirmed the PTO's Section 2(a) refusal to register the two marks shown below, for cigarettes, on the ground that they falsely suggest a connection with the Shinnecock Indian Nation...
TTABlog WYHA: Would You Have Appealed This 2(d) Refusal?
Posted on June 04, 2009Our latest WYHA case involves an application to register the mark GIO for "metal hardware, namely knobs and pulls for kitchen and bath cabinetry." Examining Attorney Melvin T. Axelbund refused registration on the ground that the mark is likely to cause confusion with the registered mark GEO & Design for "metal door hardware, namely, locksets, leversets, deadbolts, handlesets, locks, padlocks, knobs, levers, handles, keys and key blanks...
TTAB Says a Principle is not a Service, Affirms PTO Rejection of Specimens of Use
Posted on June 03, 2009Okay, this will take some explaining. Applicant Michael Labellarte was attempting to register the mark SOFT ROOM for various audio-visual, graphic design, and editing services. He submitted specimens of use on five different occasions, but Examining Attorney Kevin S...
Teenie Weenie Wins Split Decision Over Paddington in TTAB 2(d) Battle-of-the-Bear-Designs
Posted on June 02, 2009In last week's action, the TTAB refereed a Section 2(d) tussle involving an application to register the mark Teenie Weenie Bear & Design (shown below left) for certain paper products (class 16) and various clothing items. A divided Board panel found Applicant's mark not likely to cause confusion with the "Paddington Bear character mark" (which the Board deemed to be represented by the two-dimensional depiction having a floppy hat and duffel coat, shown below right) for related goods in class 16 and for overlapping clothing items...
TTABlog To Allow Comments
Posted on June 02, 2009In a major development in the trademark blogosphere, the TTABlog will begin tomorrow to allow comments. The comments will be moderated by yours truly, so you will have to "keep it clean."BTW: I am told by Feedblitz that the bug experienced by some with regard to their e-mail subscriptions is being fixed...
TTAB Posts June 2009 Hearing Schedule
Posted on June 01, 2009The Trademark Trial and Appeal Board has scheduled eight hearings for the month of June, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...
TTABlog 2(e)(1) Triple-Header: Mere Descriptiveness is Not a Guessing-Game!
Posted on May 29, 2009Here are three darn good candidates for our WYHA collection. Each appeal involved a Section 2(e)(1) mere descriptiveness refusal, and each resulted in a TTAB affirmance. There?s a common thread to the arguments of the applicants, but it?s a losing thread...
On Remand from CAFC, TTAB Re-Jettisons Bishop v. Flournoy Oppositions
Posted on May 28, 2009Opposer H. Michael Bishop recently returned to the TTAB for another Board paddling. In September 2008, the Board dismissed two oppositions brought by Bishop because he had failed to timely submit any evidence and thus failed to prove standing or to establish either of his pleaded grounds for relief...
TTAB Affirms Two More Section 2(a) Scandalous Refusal
Posted on May 26, 2009In the Board's latest Section 2(a) rulings, Applicant RK Netmedia failed in its attempt to register the marks CUMFIESTA and CUMGIRLS for "entertainment services in the nature of photographic images, pictures, video and audio recordings,and information regarding adult oriented subject matter transmitted through a global computer network...
Steve Baird Thinks the Washington Redskins Need a Re-Branding
Posted on May 22, 2009Steve Baird knows a lot about the REDSKINS case. He filed the original petition for cancellation with the TTAB in 1992, and successfully convinced the Board in 1994 that the laches defense was inapplicable to a Section 2(a) disparagement claim. Steve provides some incisive commentary on this saga at the Duets Blog, in "Re-branding Madness in Washington" Overlooks Obvious: The Washington Redskins...
Some Sunny Seattle Snapshots
Posted on May 21, 2009Yesterday afternoon turned out to be a beautiful, sunny 60 degrees. Here a few photos that I snapped (the first five yesterday). One of the other three has been shamelessly altered via Photoshop..
Precedential No. 20: TTAB Sustains ?PALOMA? 2(d) Opposition to ?PALOMITA? for Clothing, But Dismisses Claim for Fraudulent Misuse of ® SYMBOL
Posted on May 21, 2009Faced with two Spanish-word marks, the Board declined to apply the doctrine of foreign equivalents, instead concluding that ?where both marks are Spanish words we must consider the connotation of the marks to both non-Spanish-speaking consumers and to Spanish-speaking consumers...
Precedential No. 20: TTAB Enters Judgment Due to Defendant's Blatant Failure to Comply with Board Order
Posted on May 20, 2009WYHDTP? If you were a TTAB judge, would you have deemed this precedential? The Board entered judgment against Applicant/Respondent Donnell Mitchell in view of his failure to comply with a Board Order compelling discovery. MySpace, Inc. v. Donnell Mitchell, Opposition No...
Back to the Board: Is "REDSKINS" Disparaging or Not?
Posted on May 20, 2009How many news reports have you seen or read about the REDSKINS case that say the football team "gets to keep using its mark"? Or doesn't "lose its mark"? Or some such nonsense. Of course, a TTAB cancellation proceeding was at the heart of the case, and the issue decided was registration of the marks, not use...
Precedential No. 19: Family-of-Marks Argument Not Available to Overcome 2(d) Refusal; Sophisticated Purchaser Claim Fails Too
Posted on May 19, 2009Confirming that an applicant?s ownership of a family of marks cannot overcome a Section 2(d) likelihood of confusion refusal, the Board upheld the PTO?s rejection of the mark CYNERGY for "medical lasers for the cosmetic and medical treatment of the face and skin, and vascular treatment, sold directly to licensed medical practitioners...
TTAB Resolves Santana's Ownership Dispute, But Pamela Chestek is Dissatisfied
Posted on May 19, 2009Pamela Chestek likes nothing more than a tangled trademark ownership dispute, particularly when it's an inter-family brouhaha, but she did not appreciate the TTAB's decision in Arturo Santana Gallego v. Santana's Grill, Inc., Cancellation Nos. 92043152, 92043160, and 92043175 (May 6, 2009) [not precedential]...
Three "Meet The Blogger V" Photos Released
Posted on May 19, 2009Congratulations to Jeremy Craft and John Egbert, of the Egbert Law Offices, Houston, Texas. They have have attended all five "Meet the Bloggers," and promise to appear at next year's MTB VI in Boston, after they have their heads examined.How many of these Bloggers can you identify?Schwimmer, Welch, and Randazza take a break from the keyboard:.
TTAB Affirms PTO's Latest Section 2(a) Scandalous Refusal
Posted on May 18, 2009In a 27-page decision, the Board affirmed a Section 2(a) refusal to register the mark PUSSY NATURAL ENERGY in the design form shown immediately below for various beverages, including energy drinks, finding the mark to be scandalous. The Board concluded that the mark "is offensive when viewed in the context of the goods identified in the application from the standpoint of a substantial composite of the general public according to contemporary attitudes...
"Meet the Bloggers V" Tonight 6-9 PM in Seattle!
Posted on May 18, 2009The 5th annual non-INTA event called "Meet the Bloggers" will take place tonight at the offices of Graham & Dunn in Seattle. Details (here).Seattle welcomes the BLOGGERS(Click on photo for larger picture)Schwimmer and Welch preside over Meet the Bloggers ISan Diego, May 2005(Click on photo for larger picture)
D.C. Circuit Affirms Laches Ruling Dismissing "REDSKINS" Cancellation
Posted on May 18, 2009On May 15, 2009, the U.S. Court of Appeals for the District of Columbia Circuit affirmed the ruling of the U.S. District Court for the District of Columbia that laches barred the attempt of Native American Mateo Romero to cancel six registrations for the mark REDSKINS (or variations thereof) owned by the Washington Redskins for football entertainment services...
TTAB Re-Designates Zanella v. Nordstrom Fraud Ruling As Precedential
Posted on May 15, 2009In a rather significant development in the TTAB's fraud jurisprudence, the Board has re-designated as precedential its decision in Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858. The Board's Order (here), dated May 13, 2009, includes a copy of the October 23, 2008 ruling now marked with the indication "THIS DECISION IS A PRECEDENT OF THE T...
Lacking Proof that Cosmetics and Medicated Lotions Are Related, TTAB Tosses Out 2(d) Refusal of "REVIVE WITH THI"
Posted on May 15, 2009Reversing a Section 2(d) refusal, the Board found the mark REVIVE WITH 'THI' for "medicated lotions for hand, body and foot" not likely to cause confusion with the registered mark THI2 and the mark THI in the Stylized form shown to the right, for "adhesives for affixing false eyelashes; cosmetics; false eyelashes...
Tip from the TTABlog: Don't Use the Applied-For Mark Descriptively in the Identification of Goods
Posted on May 14, 2009One should expect a Section 2(e)(1) descriptiveness refusal if one uses the applied-for mark in one's identification of goods, shouldn't one? Applicant epcSolutions, Inc. found out the answer to that question in In re epcSolutions, Inc., Serial No. 76675389 (May 1, 2009) [not precedential]...
TTABlog Challenge: Test Your TTAB Judgeability
Posted on May 13, 2009Here's another chance to evaluate your potential as a TTAB judge. Let's see if that legal sheepskin on your wall was worth the cost of framing it. We have another Section 2(d) likelihood of confusion case for consideration. The Opposer alleges ownership and prior use of the mark LAMB'S for rum and has submitted registrations for the mark LAMB'S NAVY RUM and for the two design or stylized marks shown below...
TTABlog WYHA? TTAB Affirms Descriptivness Refusal of "SILICON ULTRASOUND" for Ultrasound Devices Utilizing ... Guess What?
Posted on May 12, 2009After you read this decision ask yourself the question: Would You Have Appealed? Applicant Siemens sought to register the mark SILICON ULTRASOUND for "ultrasound devices, namely, medical ultrasound apparatus, ultrasound transducers made out of silicon wafer...
TTABlog Comment: Fraud and the Digital Camera
Posted on May 11, 2009Since its seminal decision in Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003), the TTAB has been slowly developing its fraud jurisprudence, adding a new snapshot to the album every year or so. That is not meant to be a criticism of the Board...
Lost and Found: 2007 TTAB Precedential Decision Rejects Belated Supplemental Discovery Responses
Posted on May 08, 2009Like a squirrel finding a long misplaced nut, the USPQ in its latest weekly update has unearthed a precedential decision from September 2007 involving an unsuccessful attempt by a cancellation respondent to supplement its discovery responses after petitioner's testimony period had closed...
CAFC Hears Oral Argument in Bose Fraud Appeal
Posted on May 07, 2009Oral argument (slow-loading .mp3 here) was held before the CAFC yesterday, May 6th, in Bose Corp. v. Hexawave, Inc., Appeal No. 2008-1448. The TTAB, in Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (TTAB 2007) [not precedential], found that Bose had committed fraud in its 2001 renewal of a registration for the mark WAVE for, inter alia, audio tape recorders and players...
New TTABlog Trademark Jobs Posting: Former Examining Attorney/Law Firm Associate Seeks San Francisco or Washington, DC Position
Posted on May 07, 2009Former Examining Attorney with large law firm experience (6 years total) seeks law firm or in-house position in San Francisco or the Washington DC-area. Very knowledgeable in mark clearance, trademark prosecution, TTAB opposition/cancellation proceedings, and dealing with foreign associates...
TTAB Finds Design of "MOI" Putter Head Functional Under Section 2(e)(5)
Posted on May 06, 2009I gave up golf years ago out of frustration: I simply could not get through the windmill! That's when I turned to patent law for excitement. The Board took up both patent law and golf in a somewhat frustrating decision affirming a Section 2(e)(5) refusal to register the product configuration mark shown below for "golf clubs," finding the design to be functional...
Precedential No. 18: Refusing to Read Limitations into Cited Registration, TTAB Affirms 2(d) Refusal of "WAVE" for Recreational Trailers
Posted on May 05, 2009In an enervating, albeit precedential, decision, the Board affirmed the PTO's refusal to register the mark WAVE for "recreational vehicles, namely travel trailers and fifth wheel trailers," finding it likely to cause confusion with the registered mark THE WAVE for "trailers, dump trailers, and truck bodies...
"BIG O TIRES" TTAB Challenge to "BIGG WHEELS" for Automobile Wheels Goes Flat
Posted on May 04, 2009Although the Board found the BIG O TIRES mark to be inherently distinctive and strong for vehicle tires and related services, and indeed possessed of "niche market fame" in the Midwest and west of the Mississippi, it dismissed an opposition to the mark BIGG WHEELS for "wheels for automobiles" [WHEELS disclaimed]...
TTABlogger and Jeremy Phillips on IP Think Tank Podcast
Posted on May 04, 2009Jeremy Phillips of IPKat and yours truly shared the microphone on an IP Think Tank podcast (here) last week, mainly discussing the issues of bona fide intent and fraud and how they may impact foreign trademark owners.On the issue of "curing" fraud, I stated that once a registration has issued, it may be too late to cure the fraud...
TTAB Posts May 2009 Hearing Schedule
Posted on May 01, 2009The Trademark Trial and Appeal Board has scheduled six hearings for the month of April, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...
New TTABlog Trademark Jobs Posting: Former Examining Attorney Seeks DC/Baltimore Area Position
Posted on May 01, 2009Former PTO Examining Attorney and fifth-year down-sized associate at DC-area law firm seeks law firm or corporate position in the Baltimore-Washington area. Highly experienced in trademark clearance, registration, and enforcement, with a focus on brand selection and management, and in litigation before the Trademark Trial and Appeal Board...
CAFC Vacates TTAB's "MOSKOVSKAYA" Vodka Ruling, Clarifies 2(e)(3) Materiality Test
Posted on April 30, 2009The U.S. Court of Appeals for the Federal Circuit has vacated the TTAB's decision in the MOSKOVSKAYA case (TTABlogged here), in which the Board found the mark to be primarily geographically deceptively misdescriptive of vodka. (TTAB decision here). The CAFC ruled that the Board had improperly applied the materiality test of Section 2(e)(3) because it failed to consider whether a substantial portion of all relevant consumers (not just Russian speakers) is likely to be deceived...
TTABlog Challenge: You Be The TTAB Judge!
Posted on April 29, 2009Imagine yourself in the role of TTAB judge. You are considering the summary judgment motion filed by an Applicant seeking to register the mark shown to the right, for retail grocery store services. The Opposer claims that confusion is likely with the six registered marks shown below, for various food items, including sausage, barbequed pork, and various other swine-related products...
TTAB Finds "RUSSKAYA" for Vodka Abandoned, Cancels Registration
Posted on April 28, 2009Got your screwdriver? We're going to dismantle a 53-page TTAB opinion granting a petition for cancellation of a registration for the mark RUSSKAYA for vodka. The Board found that Petitioner A.V. Brands had established a prima facie case of abandonment based on at least three consecutive years of nonuse, and that Registrant Spirits International, B...
Applicant's Own Boastful Advertising Leads TTAB to Find Tray Design Functional
Posted on April 27, 2009The Board tossed another purported product configuration mark in the TTAB trash can, finding the tray design of Applicant Gratnell's Limited to be functional under Section 2(e)(5) and, if not functional, lacking in acquired distinctiveness. Gratnell's served up the decisive functionality evidence on a platter: its own own advertising materials touting the superiority of the design...
Precedential No. 17: TTAB Dismisses Bayer "FLANAX" Cancellation Claims - No Famous Marks Exception in US Law
Posted on April 24, 2009Flummoxed by Bayer's three attempts to properly plead its claims, the Board granted three-fourths of Registrant Belmora's motion for dismissal for failure to state a claim upon which relief may be granted. Bayer lost its Section 2(d) and its fraud claim by failing to allege prior use of its mark FLANAX in the United States by itself or by someone on its behalf...
Precedential No. 16: TTAB Throws New England Patriots for Another Loss in "19-0 THE PERFECT SEASON" Opposition
Posted on April 23, 2009Just when we Patriots fans had seemingly put the heartbreaking 2007 NFL season behind us, here comes the TTAB to open the old wound and pour salt in it. The Board dismissed the Patriots' Section 2(d) opposition to registration of the mark 19-0 THE PERFECT SEASON for various clothing items because Applicant William A...
TTAB Rules, Non-Precedentially, that Fraud May be "Cured" Post-Registration
Posted on April 22, 2009The ever-informed Maury Tepper brought to my attention a non-precedential decision from October 2008 involving the issue of fraud, and particularly whether fraud can be "cured" after a registration has issued. This Board panel adopted the approach of the panel majority in University Games in ruling that correction of a false statement regarding use, if made before a registration has been challenged, creates "a rebuttable presumption that [registrant] did not intend to commit fraud...
Applicant Fails to Prove Historical Significance of "DAIMLER" for Vehicles, TTAB Affirms 2(e)(4) Surname Refusal
Posted on April 21, 2009Applying its standard Section 2(e)(4) analysis, the Board affirmed a refusal to register the mark DAIMLER for "land vehicles," finding that the PTO had made out a prima facie case that the mark is primarily merely a surname, and that Applicant Jaguar had failed to rebut the PTO's case...
TTAB Says "So Longo, BADONGO" in 2(d) Opposition to "PODANGO"
Posted on April 20, 2009ICL, Ltd.'s Section 2(d) opposition to the mark PODANGO, based on ownership of the registered mark BADONGO (both marks for various Internet communication services), went all wrongo: first, ICL failed to properly introduce its registration into the record, and as a result did not prove standing or priority; second, the Board found the marks too dissimilar anyway...
New TTABlog Trademark Jobs Posting: Experienced California Trademark Attorney Willing to Re-locate
Posted on April 17, 2009Trademark attorney with six-plus years of experience seeks employment with in-house legal department or law firm. The attorney has extensive experience in trademark prosecution, counseling, clearance, enforcement, and litigation. He has managed the filing and prosecution of more than 1,200 international trademark applications in 180 different countries, for a major U...
TTAB Chops Down Evasive "SILVER BIRCH" Applicant with Three Well-Aimed Strokes
Posted on April 16, 2009Victoria Principal Productions, Inc. was seeking to register the mark SILVER BIRCH for skin and body preparations, but it refused to give a direct response to Examining Attorney John Dwyer's request for information that would "make clear whether the goods will contain silver birch as an ingredient...
TTAB Affirms Single Creative Work and Mutilation Refusals of "CHOOSE TO BE RICH"
Posted on April 15, 2009The application of Cashflow Technologies, Inc. to register the mark CHOOSE TO BE RICH for audio tapes featuring financial educational information, turned out to be a poor candidate for registration. The Board chose to affirm the PTO's refusals to register, finding that the phrase constitutes the title of a single creative work (and is thus unregistrable), and that it comprises a mutilation of the mark that appears on the specimens of use...
TTAB Finds No Trademark Rights in OEM Who Applied "WASTEMAID" Mark at Others' Direction
Posted on April 14, 2009In a 41-page, fact-packed opinion, the Board disposed of Anaheim Manufacturing Company's opposition to registration of the mark WASTEMAID in the design form shown below, for "food waste disposers, garbage disposers." Discarding Anaheim's likelihood of confusion claim (as well as its fraud and lack-of-bona-fide-intent claims, the Board found that Anaheim is a private label supplier who placed the subject mark on products at the direction of others, and never used the mark to identify itself as the source of the products...
TTABlog Road Trip: Cary, North Carolina
Posted on April 14, 2009I will be speaking to the Intellectual Property Law Section of the North Carolina Bar Association this Friday morning, along with Maury Tepper of the Womble, Carlyle firm. Our presentation is entitled "TTAB Tune-up: Getting Up to Speed on the Law and the Rules...
TTAB Finds "SPEEDOMETER" Generic for ... You'll Never Guess What
Posted on April 13, 2009Aurel A. ("Alex") Astilean hit the proverbial wall in his attempt to obtain a Supplemental Registration for the term SPEEDOMETER for a "monitoring device worn on the person for tracking fitness of the walking and running exercises, and not concerned with the speed of the walking and running exercise...
Precedential No. 15: Finding No Evidence of Bona Fide Intent to Use Mark in US, TTAB Sustains Opposition to 44(e) Application
Posted on April 10, 2009In an article that we penned early last year, entitled "Unfriendly Shores: Recent Developments in U.S. Law May Trouble Foreign Trademark Owners," Ann Lamport Hammitte and I asked whether, in light of a then-recent ruling on bona fide intent, the Board was about to open up Pandora's Box for foreign applicants and registrants...
TTAB Finds "X-PIPE" Generic for ... Guess What?
Posted on April 09, 2009In a semi-exhaustive decision, the Board granted Opposer Bassani Manufacturing's motion for summary judgment, sustaining an opposition to registration of the term X-PIPE for "internal combustion engine exhausts" on the ground of genericness. Although Applicant Campbell used the term "in the manner of a trademark" on his website, that evidence failed to overcome the "clear evidence of genericness" submitted by Bassani...
Precedential No. 14: TTAB Finds "THE MONTECITO DIET" Not Primarily Geographically Descriptive of Diet Publications
Posted on April 08, 2009Observing that "the mere fact that applicant sleeps in Montecito [California] is not necessarily enough to establish a goods/place relationship," the Board reversed a Section 2(e)(2) "primary geographically descriptive" refusal to register the mark THE MONTECITO DIET [DIET disclaimed] for printed publications, online publications, and informational services in the field of health, nutrition, illness prevention, detoxification, diet, and lifestyle choices...
TTAB Finds Religious Habit Not Registrable: Lacks Distinctiveness, Inherent or Acquired.
Posted on April 07, 2009Two feuding religious organizations faced off before the TTAB in the latest of a "series of battles" between them, this dispute involving the registrability of the religious habit design shown immediately below, for "clothing, namely [a] ceremonial habit worn by distinguished religious representatives in certain ceremonies" and for "promoting public awareness of the need for healthy and religions families in the United States...
CAFC Affirms TTAB's "AIRFLITE" Cancellation: Preparations for Use Not Enough for Service Mark Registration
Posted on April 06, 2009In a precedential decision, the CAFC answered the following question: "whether the use in commerce requirement is met when an applicant uses a service mark in the preparatory stages of a service's development but never offers the services to the public...
Precedential No. 13: TTAB Axes Fender Guitar Shapes, Finding Them Generic or Lacking Acquired Distinctiveness
Posted on April 03, 2009Sixteen guitar companies (and one retailer) banded together to successfully oppose Fender's applications to register the three product configuration marks shown below, for "guitar bodies." In a 75-page opinion, the Board ruled that the designs are generic, and alternatively that Fender's proof of acquired distinctiveness was insufficient to merit registration under Section 2(f)...
Precedential No. 12: TTAB Again Says False Statement of First Use Date is not Fraud
Posted on April 02, 2009Kathleen Hiraga petitioned to cancel a registration for the mark GARDEN ORGANICS for "fertilizers, soil conditioners and soil amendment for domestic use," asserting that Sylvester J. Arena had fraudulently obtained the registration because he had not used the mark in commerce on the date claimed in the application...
TTAB Posts April 2009 Hearing Schedule
Posted on April 01, 2009The Trademark Trial and Appeal Board has scheduled eight hearings for the month of April, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...
Precedential No. 11: Section 2(d) Opposer Fails to Submit Registration Properly, Loses on Priority Issue
Posted on March 31, 2009Once again, an Opposer who failed to properly introduce a registration into evidence reaped dire consequences. Syngenta Crop Protection, Inc. filed a Section 2(d) opposition to registration of the mark AgMeter for "pesticide detectors" and "evaluation and testing of produce for pesticides," alleging likelihood of confusion with the registered mark AGROMETER for related goods and services...
TTABlog Quarterly Index: January - March 2009
Posted on March 31, 2009Here is the 18th TTABlog Quarterly Index. That's right, the blog is nearly four and one-half years old. The first post was on November 8, 2004, and concerned (who else?) Leo Stoller (here). This post in number 1,252.Section 2(a) - scandalous:Finding "A-HOLE PATROL" Scandalous for Online Social Club Screening, TTAB Affirms 2(a) RefusalSection 2(d) - likelihood of confusion:Precedential No...
Precedential No. 10: Irked TTAB Sanctions Counsel for Filing Untenable Motion to Dismiss
Posted on March 30, 2009Okay, readers, here's the question: an opposition is filed against two applications belonging to your client. While the opposition is pending, the PTO inadvertently issues a registration on one of the applications. What do you do? Would you file a motion for partial dismissal of the opposition as to the application that inadvertently issued to registration? The Attorney for Aqua Gen AS filed such a motion, and the Board was not pleased...
Precedential No. 9: TTAB Dismisses 2(d) Petition to Cancel "DESIGNED TO SELL" Registration
Posted on March 27, 2009After the excitement of the last two posts (captured in the illustration immediately below), we come back down to earth today with a mundane, albeit precedential, ruling in a Section 2(d) cancellation proceeding. Petitioner Giersch claimed common law rights in the mark DESIGNED2SELL for "providing the services of staging managers and or renters who are placed in residences for the sole purpose of maintaining them through the sales cycle in order to improve the residence's selling potential," and for related interior decorating services and landscaping services...
Precedential No. 8: Divided TTAB Panel Affirms Refusal to Register Chippendales' "Cuffs & Collar Mark"
Posted on March 26, 2009In a highly entertaining 41-page opinion [stripped here to its bare essentials], a divided TTAB panel affirmed the PTO's refusal to register the "Cuffs & Collar" design mark shown below, finding it not inherently distinctive for "adult entertainment services, namely exotic dancing for women in the nature of live performances...
Wal-Mart Bests Loufrani in TTAB Battle over "Smiling Face" Mark
Posted on March 25, 2009A long-running TTABattle over the ubiquitous "smiling face" mark ended in victory for Wal-Mart over Franklin Loufrani. The Board sustained Wal-Mart's opposition to registration of the SMILEY & design mark shown below left, and dismissed Loufrani's opposition to Wal-Mart's version shown below right...
TTAB Reverses 2(d) Refusal: PTO Failed to Show "HEART" and "KOKORO" Confusingly Similar for Restaurant Services
Posted on March 24, 2009The PTO unsuccessfully invoked the doctrine of foreign equivalents in claiming that Applicant's mark HEART for "cocktail lounges; restaurant and bar services" is likely to cause confusion with the registered mark KOKORO, in standard character and design form (below), for restaurant services...
Hip TTAB Finds "STRIP HOP" Merely Descriptive of Adult Entertainment Services
Posted on March 23, 2009For our latest addition to the WYHA collection of cases, consider the mark STRIP HOP for "adult entertainment services, namely, live performances by exotic dancers, night clubs and cabarets featuring alcoholic drinks and food." Can you dig it? The Board couldn't...
Finding Circular Shape for Beach Towel to be Functional, Chicago Federal Court Rules Registered Trademark Invalid
Posted on March 20, 2009The United Stated District Court for the Northern District of Illinois held invalid the product configuration mark shown immediately below, for beach towels, finding the circular shape to be functional. [The mark is the subject of a 20-year old trademark registration (Reg...
Giving Naked Consents Some Weight, TTAB Reverses 2(d) Refusal of "BUHLER & Design"
Posted on March 19, 2009Can you name two places where naked consents are consequential? Nudist colonies and the TTAB. Applicant Buhler Technologies GmbH trumped a PTO Section 2(d) refusal by submitting naked consents from the owners of the two registrations cited by the Examining Attorney...
Precedential No. 7: TTAB Okays Amended Section 18 Petition for Partial Cancellation, if Amended a Bit More
Posted on March 18, 2009Petitioner IdeasOne sought to register its mark WELLCORPS INTERNATIONAL for dietary supplements, but was blocked by Respondent's registration of WELLCORP in standard and design form, for "consulting services in the field of healthcare." IdeasOne filed a petition for partial cancellation under Section 18, but was met with a motion to dismiss under FRCP 12(b)(6) for failure to state a claim...
TTAB Finds "KID'S OUTDOORS" & Design Not Confusingly Similar to "OUTDOOR KIDS," Both for Clothing
Posted on March 17, 2009Petitioner Outdoor Kids, Inc. was tossed off the TTAB teeter-totter when it sought to cancel two registrations for the mark KID'S OUTDOORS & Design (shown below) for clothing and toys [KID'S OUTDOORS disclaimed]. Petitioner relied on its registration for the mark OUTDOOR KIDS for outdoor clothing and sporting goods for children [KIDS disclaimed] in alleging likelihood of confusion and dilution...
Carroll Shelby's Cobra Design Marks Survive Feeble TTAB Challenge
Posted on March 16, 2009Unique Motors spent more than seven years on the TTAB track, but got nowhere in its oppositions to registration of the product configuration marks shown below, for automobiles. Unique, a maker of replica Cobra vehicles, pleaded lack of acquired distinctiveness, abandonment, genericness, and fraud, but it made a big mistake: Unique failed to submit any admissible evidence during its testimony period...
TTABlog Twin-Bill: Two More "Bad Specimen" Cases To Ponder
Posted on March 13, 2009Today we have two more "bad specimen" cases that, for better or worse, were taken up on appeal. In the first, Applicant Atlas Media (who beat a bad-specimen rap in January [TTABlogged here]), was hoping to register the mark HOW NOT TO DIE for a television program about longevity...
TTAB Questionably Shows a Second Red Card to "FUTBOLITO": Merely Descriptive for Game Tables, but Confusingly Similar to "MLS FUTBOLITO"?
Posted on March 12, 2009The Major League Soccer season begins one week from today. We New England Revolution fans face the new season with hope and dread. Four times the Revolution have made it to the MLS Cup, the championship game, and four times they've lost. I'm not sure I can take another one...
Finding "ACURA" and "RL" Too Far Apart on Specimens, TTAB Affirms Refusal of "ACURA RL" for Autos
Posted on March 11, 2009Applicant Honda's specimens of use for the mark ACURA RL for "automobiles and structural parts therefor" were not in accord with PTO requirements because they "left the impression" of two marks rather than one. And so the Board affirmed the PTO's refusal to register in light of Honda's failure to provide an acceptable specimen of use...
TTABlog Job Posting: Michael Best & Friedrich Seeks TM Associate for Milwaukee Office
Posted on March 11, 2009Michael Best & Friedrich LLP is seeking a trademark associate with 1-3 years of experience for its Milwaukee office. If interested, please contact the firm directly.Founded in 1848, Michael Best has earned a reputation as a leading law firm in the Midwest...
Precedential No. 6: TTAB Affirms Section 2(e)(5) Functionality Refusal of Shape of Metal Spray Nozzle
Posted on March 10, 2009Another product configuration "mark" bit the TTAB dust when the Board affirmed the PTO's refusal to register the purported mark shown below (consisting of a "round disk head on a sprayer nozzle") for "metal spray nozzles." The Board found the design to be functional under Section 2(e)(5), and alternatively found that it fails to function as a mark, under Sections 1, 2, and 45...
Precedential No. 5: Board Shows Mercy, Forgives Cancellation Petitioner Who Served Petition One Week after its Electronic Filing
Posted on March 09, 2009Rule 2.111(a), effective November 1, 2007, requires that a petition for cancellation "include proof of service on the owner of record for the registration." The Equine Touch Foundation Petitioner filed a Petition for Cancellation electronically on October 10, 2008, indicating on the ESTTA form that service had been made on registrant that same day...
Giving Added Weight to the Rareness Factor, TTAB Reverses Surname Refusal of "BERGFELD" for Wine
Posted on March 06, 2009TTAB Affirms PTO Refusal to Amend "FIT TEST" Application from Services to Goods
Posted on March 05, 2009Divided Board Panel Affirms Mere Descriptiveness Refusal of "STEELWORKERS," Finds 2(f) Evidence Insufficient
Posted on March 04, 2009Precedential No. 4: TTAB Rules that a Sound Emitted by Goods in Normal Course of Operation Cannot Be Inherently Distinctive
Posted on March 03, 2009TTABlog New Job Posting: Milwaukee Office of Godfrey & Kahn Seeks IP Generalist
Posted on March 02, 2009"DRUMLINE LIVE" Merely Descriptive of Musical Performances, Says TTAB
Posted on February 26, 2009It's time to add another WYHA case to our collection. Would you have appealed the mere descriptiveness refusal of DRUMLINE LIVE for "entertainment services in the nature of live musical performances"? Applicant Halftime Live LLC did just that, but the arguments it drummed up fell on deaf ears...
TTABlog Special Report: Two TTAB Fraud Decisions Now Await CAFC Review
Posted on February 25, 2009TTAB practitioners should keep their eyes on two TTAB fraud decisions now on appeal at the U.S. Court of Appeals for the Federal Circuit, because one or both may provide some welcome CAFC guidance on this vexing issue. In each case, the American Intellectual Property Law Association (AIPLA) has filed an amicus brief arguing that the TTAB's fraud standards are inconsistent with the elements of common law fraud set out by the CAFC in prior rulings...
Precedential No. 3: TTAB Dismisses Claim Invoking Unsatisfiable Santiago Trademark Convention
Posted on February 24, 2009In a case of first impression, Opposer Franpovi, S.A., a joint-stock company of the Dominican Republic, invoked the Santiago Convention in seeking to block registration of the mark POLLOS VICTORINA (standard characters, but in the color red) for restaurant services...
TTAB Reverses 2(d) Refusal of "QUAANTUM" for Trailer Suspension Systems Over "QUANTUM" for Tires
Posted on February 23, 2009Because the PTO failed to establish that the goods are related for Section 2(d) purposes, and because the relevant purchasers will exercise a high degree of care, the Board reversed a refusal to register the mark QUAANTUM for "trailer suspension systems, incorporating wheel end systems," finding it not likely to cause confusion with the registered mark QUANTUM for tires...
Applicant Gets Benefit of the Doubt: "GREEN INDIGO" Not Merely Descriptive of Clothing, Says TTAB
Posted on February 20, 2009The Board reversed a Section 2(e)(1) refusal to register the mark GREEN INDIGO, finding it not merely descriptive of "bottoms; [and] tops." Noting that there is a "thin line of demarcation between a suggestive and a merely descriptive designation," the Board saw the lack of evidence of descriptive use of the phrase in the clothing industry as indicative that the mark is only suggestive...
TTAB Okays Single DVD as Specimen for Ongoing TV Series, "EVERYBODY I EVER SLEPT WITH"
Posted on February 19, 2009Pointing out that the PTO seemingly confused the use of the mark on a promotional DVD, which is a single work and an acceptable specimen, with a mark being the title of a single work, the Board reversed a refusal to register the mark EVERYBODY I EVER SLEPT WITH for ?providing on-going television programs in the field of romance...
It Don't Come Easy: TTAB Affirms 2(d) Refusal of "RINGO" for Clothing
Posted on February 18, 2009Ex-Beatles drummer Ringo Starr paid his dues (the appeal fee) and sang the blues, as the TTAB affirmed a Section 2(d) refusal to register his mark RINGO for various clothing items "all depicting the name and image of a famous entertainer." Despite that limitation and despite the fame of Ringo, the Board found his mark likely to cause confusion with the identical mark registered for men's, women's, and children's clothing...
Long, Strange Trip Ends in Split TTAB 2(d) Decision for "ORIENT-EXPRESS" Applicant
Posted on February 17, 2009Fifteen years after filing his application, Stuart S. Hoffman's attempt to register the mark ORIENT EXPRESS & Design (shown immediately below) for cigars and smoking tobacco was derailed by the TTAB when it sustained Section 2(d) oppositions brought by the French railway SNCF and by VSOE, the owner of the ORIENT-EXPRESS railway line...
Someone Should Tell the New York Times that "Trademark" is not a Verb
Posted on February 17, 2009Today's New York Times crossword puzzle gave me a bit of a shock! Clue 37 across: "Trademarked citrus." That's an ugly word usage if there ever was one. As we all know, "trademark" is not a verb. It's a noun. Perhaps the clue should have been "Registered trademark for a citrus?"UGLI fruit sectionsUGLI is a registered trademark of Cabel Hall Citrus Limited of the Cayman Islands...
Finding "A-HOLE PATROL" Scandalous for Online Social Club Screening, TTAB Affirms 2(a) Refusal
Posted on February 13, 2009Applicant JibJab found itself in a hole after the PTO's Section 2(a) refusal of A-HOLE PATROL for an "Online social club that screens jokes submitted by users to control offensive and inappropriate content." JibJab's effort at self-extrication through TTAB appeal yielded only the Board's agreement with Examining Attorney Gina Hayes that the mark is scandalous and therefore unregistrable...
Joyce Theater Seeks Federal Court Review of TTAB Ownership Decision
Posted on February 12, 2009Pamela Chestek, at her Property, Intangible blog, reports (here) that the Joyce Theater Foundation had filed a complaint in the United States District Court for the Southern District of New York, under 15 U.S.C. Sec. 1071(b) of the Trademark Act, seeking review of the Board's decision in Ballet Tech Foundation, Inc...
Frank Herrera Launches Cigar Law blog
Posted on February 12, 2009Florida's Frank Herrera has launched the Cigar Law blog, where he discusses "Trademarks and Other Matters Of Interest to the Cigar Industry." Frank keeps an eye on PTO applications and TTAB filings, as well as on cigar trademarks in the real world..
Finding Two "MILLER'S" Marks for Restaurant Services Confusingly Similar, TTAB Affirms 2(d) Refusal
Posted on February 11, 2009Miller's Pub, on South Wabash in Chicago, failed to overcome the PTO's Section 2(d) refusal to register the mark MILLER'S in stylized form (shown below, left) for bar and restaurant services. Apparently it was not "Miller's Time," because the Board found the mark likely to cause confusion with the mark MILLER'S & Design, registered for a "full service restaurant" (below, right)...
TTAB Finds "FERROLABS" and "FERRO TEC" for Ferrofluidic Fluids Not Confusingly Similar
Posted on February 10, 2009Despite an overlap of goods, channels of trade, and classes of customers, the Board dismissed an opposition to registration of the mark FERROLABS & Design for ferrofluids and related goods, finding it so dissimilar from the registered marks FERRO TEC & Design , FERROSOUND, FERRODRIVE, and FERROFLUIDIC for ferrofluids, that confusion is not likely...
TTAB No-Brainer? "BRAIN STATE CONDITIONING" Merely Descriptive of Neurofeedback Training
Posted on February 09, 2009The Board wasted little brainpower in affirming a Section 2(e)(1) refusal to register the mark BRAIN STATE CONDITIONING, finding it merely descriptive of "training services in the field of neurofeedback." In re Brain State Technologies, L.L.C., Serial No...
"CHED 'R' WEDGES" Merely Descriptive of Pet Treats, Says TTAB
Posted on February 06, 2009WYHA? Would you have appealed this one? The PTO refused to register the mark CHED 'R' WEDGES for "pet food; pet treats," finding the mark merely descriptive under Section 2(e)(1). What argument could you come up with on appeal? In In re Midwestern Pet Foods, Inc...
Precedential No. 2: TTAB Rules That, For a Multi-Class Registration, Fraud Must Be Considered Class-by-Class
Posted on February 05, 2009The Board has now addressed one of the open issues concerning fraud, ruling that with regard to a multi-class registration, fraud committed in fewer than all the classes requires cancellation as to only those classes, and not as to all classes in the registration...
Canada Federal Court Refuses to Import US Fraud Doctrine into Canadian Trademark Law
Posted on February 05, 2009The Canadian Trademark Blog reports here that the Federal Court in Canada "recently made clear that Canadian law does not recognize a rule equivalent to the U.S. doctrine of fraud on the trademark office, pursuant to which any material misstatement in the processing of a registration renders the entire resulting registration void...
The Top Ten TTAB Decisions of 2008 ® [Part 2 of 2]
Posted on February 04, 2009In Part 1 of this posting, which appeared yesterday, the TTABlog presented half of my annual top ten list. The remaining five cases are summarized below. The decisions are not necessarily listed in order of importance, although they may be. I leave that for the reader to decide...
The Top Ten TTAB Decisions of 2008 ® [Part 1 of 2]
Posted on February 03, 2009Once again, yours truly has chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the past calendar year. Seven are precedential decisions and three are not. Arguably, the precedential rulings are the more important because they constitute binding precedent, but the non-precedential rulings at a minimum have educational and/or entertainment value...
TTAB Posts February 2009 Hearing Schedule
Posted on February 02, 2009The Trademark Trial and Appeal Board has scheduled seven (7) hearings for the month of February, as listed below. The hearings will be held in the East Wing of the Madison Building. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...
Finding Safety Goggles and Binoculars Related, TTAB Affirms 2(d) Refusal of "SEAHAWK"
Posted on January 30, 2009Third-party registrations and website evidence convinced the Board that Applicant's safety eyewear and goggles are related to binoculars for Section 2(d) purposes, leading to an affirmance of the PTO's refusal to register the mark SEAHAWK for the former in view of the identical mark registered for the latter...
Ron Coleman Ponders the TTAB's "HEEB" Decision
Posted on January 29, 2009Ron Coleman, at his renowned Likelihood of Confusion blog, has posted his thoughts (here) on the TTAB's recent HEEB decision (TTABlogged here). The reader will recall that the Board affirmed a Section 2(a) disparagement refusal of the mark HEEB for clothing and entertainment services, noting that there are differing views on the question, but finding that a substantial composite of the Jewish community would view the term as disparaging...
"MERCURY" for Vodka and Distilled Spirits Likely to Confuse: TTAB Affirms 2(d) Refusal
Posted on January 28, 2009It's time for another WYHA? case. Suppose your application to register MERCURY for vodka is refused registration under Section 2(d) in view of the identical mark registered for distilled spirits. Would You Have Appealed? Applicant Mercury-2 LTD did, and the result must have been dispiriting...
Stylized "FRANCO FERRARI" Confusingly Similar to "FERRARI" and "FRANCO FERRARO," Says TTAB, Frankly
Posted on January 27, 2009Rejecting Applicant's feeble contention that its mark (shown below) is a "distinctive design mark," the Board affirmed the PTO's Section 2(d) refusals to register, finding the mark likely to cause confusion with the registered marks FERRARI and FRANCO FERRARO, all for clothing and/or fabrics in classes 24 and 25...
Opposer Lays Egg at TTAB: Fails to Prove Priority in Edible Bird's Nest 2(d) Tussle
Posted on January 26, 2009Royal King's Section 2(d) opposition to registration of the mark ROYAL NEST & Design (shown immediately below) for "edible bird's nests" never took flight because Opposer failed to prove priority. Opposer provided no evidence of priority, failing to properly introduce its registrations into the record and offering inconclusive admissions by Applicant...
Cosmopolitan Magazine Overwhelms "COSMO.COM" Applicant in TTAB 2(d) Opposition
Posted on January 23, 2009Hearst Communications kicked the living you-know-what out of Applicant Charles Browning Wilson in his attempt to register the mark COSMO.COM for "providing on-line information on available entertainment in various cities." Opposer relied on 31 registrations for marks comprising or containing COSMOPOLITAN or COSMO, established its COSMOPOLITAN mark as famous for magazines, and proved actual confusion...
Finding Dissimilarity of "BIOMARINE" and "BIOMARIS" Marks Dispositive, TTAB Dismisses 2(d) Opposition
Posted on January 22, 2009Despite overlapping goods and presumably identical trade channels, the Board dismissed a Section 2(d) opposition to registration of the mark BIOMARINE & Design for non-medicated skin care preparations, finding it not likely to cause confusion with the registered mark BIOMARIS for sking cleansing creams and related products...
Outback Steakhouse Fails to Prove Relatedness of Bottled Water and Beer; TTAB Dismisses 2(d) Opposition
Posted on January 21, 2009A half-baked, watered-down effort by Outback Steakhouse led to a Section 2(d) setback as the Board dismissed an opposition to registration of the mark AUSTRALIAN OUTBACK RAIN & Design (shown below left) for "bottled drinking water" [AUSTRALIAN OUTBACK disclaimed], finding it not likely to cause confusion with the registered marks OUTBACK for beer and baked goods and OUTBACK STEAKHOUSE & Design (below right) for beer...
TTAB Dismisses Tootsie Roll's "MISTER FLUFFY" Opposition for Failure to Establish Priority
Posted on January 20, 2009Tootsie Roll swung and missed in its opposition to registration of the mark MISTER FLUFFY for candy. Tootsie's own registrations for FLUFFY STUFF and FLUFFY STUFF COTTON CANDY POPS were not properly submitted and it failed to prove prior common law use...
Precedential No. 1: Section 66(a) Applicant Wins TTAB Priority Contest in "FRUITOLOGY" 2(d) Dispute
Posted on January 16, 2009In a priority battle involving two applications to register the mark FRUITOLOGY for "overlapping or legally identical goods," the Board found that the Section 66(a) application filed by French company Danone had priority over the Section 1(b) application of Texas company, Precision Formulations...
After Careful Meditation, TTAB Finds "OSHO" Generic for ... Guess What?
Posted on January 15, 2009The Board granted a petition for cancellation of three registrations for the term OSHO for goods and services related to religion, philosophy, and science, on the ground that the term is generic. It found that the "primary significance of OSHO is as a religious movement, and not as a source identifier for goods or services...
TTAB Finds Confusion Likely Between "IRON MAN" for Bodybuilding Magazines and "IRONMAN" for Nutritional Supplements
Posted on January 14, 2009In October 2008, the Board held oral argument in Boston in this case, and the attendees were treated to a spirited argument and discussion. This posting will not attempt to cover every issue raised, but instead will hit the high points of the 30-page decision, in which the Board sustained a Section 2(d) opposition to registration of the mark IRONMAN in the design form shown below, for nutritional supplements and related goods, finding the mark likely to cause confusion with Opposer's common law mark IRON MAN for magazines...
"CHARLESTON GATE" Merely Descriptive of Jewelry Copying Charleston Gate Designs, Says TTAB, Not Surprisingly
Posted on January 13, 2009In another gem of a case that warrants addition to our WYHA? collection, the Board affirmed a Section 2(e)(1) refusal to register the mark CHARLESTON GATE, finding it to be merely descriptive of "jewelry, namely, earrings, necklaces, pins, slides, rings, bracelets, pendants, charms, key rings...
USPTO Issues Annual Report for Fiscal 2008
Posted on January 12, 2009On November 17, 2008, the USPTO issued its Performance and Accountability Report for Fiscal Year 2008 (downloadable here). The Report states that "For the third year in a row, Trademarks has met and exceeded all of its agency performance goals." (p. 5)The accompanying press release provides the following summary of the Trademark operation:Trademarks ended its year with first action pendency at three months...
Appeal of "BANANA CHAIR" 2(e)(1) Refusal Bears Fruit at TTAB
Posted on January 09, 2009In a rare unillustrated opinion authored by Judge Bucher, the Board reversed a Section 2(e)(1) refusal to register the mark BANANA CHAIR, finding it not merely descriptive of "furniture, chair." The Board concluded that "[a]lthough the chair has a curved shape that may suggest the shape of a banana, the chair does not in fact look like a banana, and the term Banana Chair does not imediately and directly describe the shape...
"HYBRID HEAVE" Not Merely Descriptive of Deep-Water Energy Storage System, Says TTAB
Posted on January 08, 2009Concluding that the term "hybrid" provides little, if any, useful information regarding Applicant's goods, and that the term "heave" is at most indirectly related to the goods, the Board jettisoned a Section 2(e)(1) refusal to register the mark HYBRID HEAVE, finding the mark not merely descriptive of an "energy storage and recovery system for active heave comprised primarily of a machine flywheel and a motor-generator for generating electricity" in class 7...
TTAB Issued 55 Precedential Decisions in 2008
Posted on January 06, 2009The TTAB issued fifty-five (55) precedential decsions in 2008, a slight drop-off from last year's total of 67. Its fraud ruling in University Games (No. 27) and its rulings on the applicant's lack of bona fide intent in the ENYCE (16) and SEX ROD (41) cases may have been the most noteworthy...
TTAB Brew-Ha-Ha: Panel Divides on Grounds for "MOCCA" Refusal
Posted on January 06, 2009It was a tempest in a coffeepot, as the TTAB panel agreed and disagreed over the registrability of the mark MOCCA for "a coffee product, namely coffee beans, and not including ground-coffee derived coffee." The panel members agreed that the mark is merely descriptive of the goods, but split on the issue of likelihood of confusion with the registered mark MOCA & Design, shown immediately below, for "coffee and coffee derivatives" [MOCA disclaimed]...
TTAB Posts January 2009 Hearing Schedule
Posted on January 05, 2009The Trademark Trial and Appeal Board has scheduled nine (9) hearings for the month of January, as listed below. These hearings will be held in the East Wing of the Madison Building. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...
TTABlog Quarterly Index: October - December 2008
Posted on December 31, 2008E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. Please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger.Section 2(a) - disparagement:Precedential No...
Precedential No. 55: TTAB Denies Cross-Motions for Summary Judgment Because Briefs Exceeded Page Limit
Posted on December 30, 2008Under Rule 2.127(a), a brief on a motion may not exceed 25 pages in length, including table of contents, index of cases, description of record, statement of the issues, recitation of the facts, argument, and summary. The parties to this cancellation proceeding violated that rule in their respective summary judgment motions, and so the Board tossed out the motions...
Precedential No. 54: "DEC" Merely Descriptive of Nuclear Decay Batteries, Says TTAB
Posted on December 29, 2008If your energy is waning and you need your battery re-charged, this is not the case for you. In an enervating rather than energizing decision, the Board affirmed a Section 2(e)(1) refusal to register the mark DEC, finding it to be merely descriptive of "batteries deriving power from nuclear decay processes" and for related services...
"CRASH DUMMIES" Mark Survives Abandonment Claim, TTAB Sustains 2(d) Opposition to Same Mark for Same Goods
Posted on December 24, 2008In this Section 2(d) opposition, the goods were in part identical (action figures) and the marks either identical (CRASH DUMMIES) or highly similar (THE INCREDIBLE CRASH DUMMIES). Confusion was likely, but did Opposer have priority based on use of its mark, or had Opposer's mark been abandoned, as Applicant contended? Answer: Opposer won...
Despite Fame of "RE/MAX," TTAB Finds No Likelihood of Confusion with "SAVEMAX REALTY"
Posted on December 23, 2008An opposer who proves its mark famous usually wins in a Section 2(d) opposition, particulary when the parties' goods or services are identical. Not this time. The Board dismissed an opposition to registration of the mark bSAVEMAX REALTY/b in the logo form shown below, finding it not likely to cause confusion with the famous mark bRE/MAX/b, both for real estate brokerage services ema href="http://ttabvue...
Pamela Chestek: Who Owns "Joyce Theater"? - the Mark, Not the Building
Posted on December 22, 2008Pamela Chestek discusses a href="http://www.propertyintangible.com/2008/12/who-owns-joyce-theater-mark-not.html"here/a at her em style="color: rgb(102, 0, 0); font-weight: bold;"Property, intangibles/em blog the TTAB's recent, precedential decision in ema href="http://ttabvue...
PTO Publishes Summary of Rule Changes Effective January 16, 2009
Posted on December 22, 2008On November 17, 2008, the PTO published a final rule entitled "Miscellaneous Changes to Trademark Rules of Practice," 73 F.R. 67759. (pdf a href="http://home.comcast.net/%7Ejlw28129/73fr67759.pdf"here/a). These changes become beffective on January 16, 2009/b...
TTAB Dismisses "Sopranos" Opposition: HBO Neglects to Prove Standing
Posted on December 18, 2008The standing "hurdle" is usually easy to clear in a TTAB opposition, but it does require some effort: i.e., one has to submit some evidence to get the case off the ground, so to speak. In this opposition, Opposer Home Box Office apparently believed it had a slam-dunk fraud case based on Applicant's answer to the notice of opposition, but HBO failed to prove its own standing to oppose...
Precedential No. 53: TTAB Decides Ownership Dispute over "JOYCE" for Dance Theater and Charitable Services
Posted on December 17, 2008Once again the landlord bested the tenant, this time in a service mark ownership battle. Finding that the landlord (Ballet Tech Foundation, Inc.) is the owner the marks and that the tenant (The Joyce Theater Foundation, Inc.) used the marks under an implied license, the Board sustained an opposition to one application, and a petitioner for cancellation of five registrations, for the mark bJOYCE/b (in various forms) for dance theater and charitable fund raising services...
Precedential No. 52: TTAB Affirms 2(a) Disparagement Refusal of "HEEB" for Clothing and Entertainment Services
Posted on December 16, 2008Despite Applicant's claim that the Jewish community neither objects to nor views Applicant's use of the mark HEEB as disparaging, the Board affirmed a Section 2(a) refusal of the mark for clothing and entertainment services. The Board noted that there are differing views on the question, but found that a substantial composite of the Jewish community would view the term as disparaging...
TTABlog Holiday Reading: The Trademark Reporter Nov.-Dec. 2008 Issue
Posted on December 15, 2008Santa Claus arrived a bit early this year with a nice present from INTA: the November-December 2008 issue of The Trademark Reporter. Four articles and an amicus brief discuss zombie trademarks, dilutions surveys, trademark use, and the "famous marks" doctrine, topped off with a brief friendly cup of STARBUCKS (or CHARBUCKS) coffee...
TTAB Contingently Sustains 2(d) Opposition Tried Under the Accelerated Case Resolution (ACR) Procedure
Posted on December 12, 2008The parties to this Section 2(d) opposition agreed to try this case under the TTAB's Accelerated Case Resolution (ACR) procedure. The Board contingently sustained the opposition to registration of FACE THE WORLD for skincare and beauty products, finding the mark likely to cause confusion with Opposer's mark FACING THE WORLD, which is the subject of an intent-to-use application for educational and medical services...
TTAB Affirms Section 2(a) False Connection Refusal of "MOJAVE" for Cigarettes
Posted on December 11, 2008Applying the four-element test of Buffett v. Chi-Chi's, Inc., 226 USPQ 428 (TTAB 1985), the Board affirmed a Section 2(a) refusal to register the mark MOJAVE for cigarettes, tobacco, and related paraphernalia, finding that the mark falsely suggests a connection with the Fort Mojave Indian Tribe of Arizona, Colorado & Nevada...
TTAB Affirms Refusal of "DESIGN EXPRESSIONS" Mark: Not Used as Source Indicator on Specimen of Use
Posted on December 10, 2008The Board affirmed a refusal to register the mark DESIGN EXPRESSIONS for "referral to building contractors needing building materials or sources of supply of building materials," on the ground that Applicant's specimen "fails to demonstrate use" of the mark for the identified services...
TTAB Denies Petitioner's Motion to Re-open Discovery Because of Failure to Prove Excusable Neglect
Posted on December 09, 2008In a nonprecedential interlocutory decision recently reported in the USPQ, the Board denied Petitioner's motion to re-open discovery (which was filed on the last day of its testimony period) but re-set testimony dates to allow Petitioner time to submit its case in chief...
TTABlog Guest Comment: Marty Schwimmer on TTAB's "CUBITA" Summary Judgment Under The Pan American Convention
Posted on December 08, 2008Pursuant to Article 7 of the Pan American Convention, the Board granted Opposer's motion for summary judgment in its opposition to registration of the mark CUBITA in the design form shown immediately below, for "coffee." The Board ruled that Opposer, a Cuban company, had standing to bring the opposition and enjoys priority over Applicant by reason of Opposer's ownership of the CUBITA mark in Cuba and its pending application to register that mark in the United States under Section 44 of the Trademark Act...
Renown of "THE BLACK DOG" Marks Brings TTAB 2(d) Victory Over "YELLOW DOG NANTUCKET" for Clothing
Posted on December 05, 2008In a copiously-illustrated, 54-page decision, the Board sustained Section 2(d) oppositions to registration of the mark YELLOW DOG NANTUCKET in standard character and design form (shown below right) for T-shirts [NANTUCKET disclaimed], finding the marks likely to cause confusion with Opposer's numerous registered and common law marks, including the standing dog design shown below left, the phrase THE BLACK DOG, and combinations and variations thereof, for clothing and other goods and services...
Despite Applicant's Concession of Most duPont Factors, Including Fame, TTAB Grants 2(d) Summary Judgment Based on Differences in Marks
Posted on December 04, 2008Despite Applicant's concession of most of the du Pont factors, including the fame of Opposer's BIG O and BIG FOOT marks for vehicle tires, parts and accessories, the Board granted summary judgment to 67 and Latham, LLC, finding confusion unlikely with the applied-for marks A BIG RIG RESORT and DANNY'S A BIG RIG RESORT for "retail store services featuring convenience store items and gasoline...
TTAB Says "CONTINUUM" Mark is Supported by Specimens Displaying "INDIA CONTINUUM FUND"
Posted on December 03, 2008In a surprising decision, the Board reversed a refusal to register the mark CONTINUUM for financial investment services, finding that Applicant's drawing (for the word CONTINUUM in standard characters) is a substantially exact representation of the mark as shown on Applicant's specimens of use (depicted below)...
Precedential No. 51: TTAB Dismisses Morehouse and Laches Defenses, Denies Summary Judgment in 2(d) Opposition
Posted on December 02, 2008In a quasi-procedural precedential ruling, the Board denied Applicant Jim Hugunin's motion for judgment on the pleadings (which the Board treated as a motion for summary judgment in view of Hugunin's submission of evidence outside the pleadings). Once again the toothless tiger known as the Morehouse defense was rejected by the Board, this time because Applicant's prior registration for LAND O LAKES had expired...
TTAB Posts December 2008 Hearing Schedule
Posted on December 01, 2008The Trademark Trial and Appeal Board has scheduled ten (10) hearings for the month of December, as listed below. These hearings will be held in the East Wing of the Madison Building. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...
Ron Coleman: "Tackiness not grounds for refusal to register"
Posted on December 01, 2008At his Likelihood of Confusion blog, Ron Coleman comments (here) on the pending TTAB appeal in In re Chippendales USA, LLC, Serial No. 78666598 [Appeal from the PTO's refusal to register the apparel configuration shown below for "adult entertainment services, namely exotic dancing for women in the nature of live performances" on the ground that the design is not inherently distinctive]...
New TTABlog Trademark Jobs Posting
Posted on November 29, 2008Experienced trademark prosecution attorney seeks opportunity in Los Angeles area. Proven track record of successfully undertaking full and immediate responsibility for trademark files. Experience includes domestic and international prosecutions, maintenance, portfolio management, counseling, licensing, TTAB, UDRP and litigation...
TTABlog Guest Comment: Michael E. Hall on "The PTO?s Dubious New Trademark Rule 2.85(f) Concerning Identifications in Madrid Applications"
Posted on November 26, 2008On November 17, 2008, the USPTO issued its latest "Miscellaneous Changes to Trademark Rules of Practice," 73 CFR 67759 et seq. (pdf here). According to the PTO, these changes are intended "to clarify certain requirements for applications, intent to use documents, amendments to classification, requests to divide, and Post Registration practice; to modernize the language of the rules; and to make other miscellaneous changes...
TTAB Reverses 2(b) Refusal of Mark Containing Portion of Canadian Flag
Posted on November 25, 2008In its first decision under Section 2(b) in decades, the Board reversed a refusal to register the mark shown immediately below, for painting services, finding that it does not contain a simulation of the flag of Canada or an insignia of Canada. In re Certa ProPainters, Ltd...
Precedential No. 50: TTAB Grants Motion to Compel Proper Initial Disclosures
Posted on November 24, 2008In another annoying but precedential procedural ruling, the Board granted Petitioner Influance, Inc.'s motion to compel, finding Respondent Elaina Zuker's initial disclosures to be inadequate under FRCP 26(a)(1)(A)(i). Influance, Inc. v. Elaina Zuker, Cancellation No...
Precedential No. 49: Failure to Serve Notices of Opposition Leads to Swift TTAB Dismissal
Posted on November 21, 2008Opposer Schott AG shot itself in the AG when it failed to serve its notices of opposition on Applicant L'Wren Scott, as required by Rule 2.101. The Board granted Applicant's motion to dismiss and denied Schott's cross-motion for leave to amend its notices of opposition and to serve the notices...
Precedential No. 48: TTAB Resolves Procedural Spat Over Discovery Conference
Posted on November 21, 2008In this annoying but precedential decision, the Board resolved a brouhaha between the parties over their failure to hold the required Rule 2.120 discovery conference. Opposer moved for sanctions and Applicant then moved to dismiss. Guthy-Renker Corp. v...
TTABlog Recommended Reading: "U.S. Declarations of Use for Madrid-Based Registrations"
Posted on November 20, 2008The November 15, 2008 INTA Bulletin includes a helpful article on "U.S. Declarations of Use for Madrid-Based Registrations," by Joseph F. Schmidt, Julie A. Katz, and Michele S. Katz (pdf here). The authors point out that the deadlines for Section 71 Declarations of Use are based on the date of issue of the U...
Three New Members Appointed to Trademark Public Advisory Committee (TPAC)
Posted on November 20, 2008COMMERCE SECRETARY GUTIERREZ NAMES NEW MEMBERS TO TRADEMARK PUBLIC ADVISORY COMMITTEENovember 18, 2008Washington, D.C. - U.S. Commerce Secretary Carlos M. Gutierrez recently named three new members to the Trademark Public Advisory Committee (TPAC). They will serve three-year terms on the committee, which was created by the 1999 American Inventors Protection Act to advise the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) on the management of trademark operations, respectively, including goals, performance, budget and user fees...
Fame of "KOHLER" Mark for Faucets Keys TTAB 2(d) Victory over "KOHLER HOMES"
Posted on November 19, 2008Fame was the name of the game in Kohler Co.'s Section 2(d) opposition to the marks KOHLER HOMES for "custom construction of homes" [HOMES disclaimed] and KOHLER ASSOCIATES ARCHITECTS for "architectural design" [ASSOCIATES ARCHITECTS disclaimed]. The Board found those marks likely to cause confusion with the registered marks KOHLER and THE BOLD LOOK OF KOHLER for plumbing fixtures and fittings, bath tubs, sinks, and the like...
TTAB Says "INTERNET AUTO RENT & SALES" Not Generic, But Merely Descriptive and Lacks Acquired Distinctiveness
Posted on November 18, 2008In this TTAB triple header, the Board considered the issues of genericness, mere descriptiveness, and acquired distinctiveness in connection with the term INTERNET AUTO RENT & SALES for "retail store services featuring new and used vehicles" and "leasing and rental of new and used vehicles" [AUTO RENT & SALES disclaimed]...
Precedential No. 47: "BOBBLE POPS" Merely Descriptive of Candy, Says TTAB, Colorfully
Posted on November 17, 2008In a colorfully illustrated opinion crafted by Judge Bucher (whose "trademark" is the deft use of Photoshop), the Board affirmed a Section 2(e)(1) refusal to register the mark BOBBLE POPS [BOBBLE disclaimed], finding the mark merely descriptive of candy...
TTAB Delivers Split Decision in "IRONMAN" v. "IRON WOMAN" 2(d) Opposition
Posted on November 14, 2008It took a mere 10 years from the filing of the opposition to the Board's decision in World Triathlon Corp. v. Traditional Medicinals, Inc., Opposition No. 91110391 (November 3, 2008) [not citable]. The Board sustained World Triathlon's challenge to registration of the mark IRON WOMAN for "dietary and nutritional supplements" [IRON disclaimed], finding it likely to cause confusion with Opposer's registered mark IRONMAN TRIATHLON NUTRITION for "food and vitamin supplements" [NUTRITION disclaimed]...
Announcing the TTABlog Trademark Jobs Blog
Posted on November 14, 2008The TTABlog Trademark Jobs blog (admittedly modeled after the Patent Jobs by Patently-O website) will provide free listings of trademark-related job opportunities. I was spurred into launching this blog, which I have been contemplating for many months, by a message I received today from a very capable attorney, a friend of mine, who asked if I were aware of any available positions...
TTAB Reverses 2(d) Refusal, Finds "PORTIA SUMMA" and "SUMMA VINEYARDS" Not Confusingly Similar for Wine
Posted on November 13, 2008The Board reversed a Section 2(d) refusal to register the mark PORTIA SUMMA & Design (shown below) for "alcoholic beverages, namely, wines," finding it not likely to cause confusion with the registered mark SUMMA VINEYARD for wine [VINEYARD disclaimed]...
"CHÊNE DES DOMAINES DE FRANCE" Geographically Descriptive of Wood from France, Knot Registrable, Says TTAB
Posted on November 12, 2008In another WHYA (Would you have appealed?) decision, the Board affirmed a Section 2(e)(2) refusal to register the mark CHÊNE DES DOMAINES DE FRANCE for wood and forestry products, finding the mark to be primarily geographically descriptive. In re Office National des Forets, Serial No...
TTAB Sustains 2(a) Refusal of "P. MAURIAT" for Musical Instruments
Posted on November 11, 2008The Board affirmed a Section 2(a) refusal to register the mark P. MAURIAT in the design form shown below, for "musical instruments," finding that the mark falsely suggests a connection with the late musician, Paul Mauriat. In re Hsieh, Serial No. 78367205 (October 29, 2008) [not precedential]...
TTABlog Paper: "TTAB Year in Review" (California Edition)
Posted on November 10, 2008Greetings from the Left Coast. Actually, after the election, one might say that there are two Left Coasts. I'm in California to give a talk on the "TTAB Year in Review" before the California Bar's IP Law Section (Paper here). Principal topics: fraud, bona fide intent to use, Section 2(e)(4) surname refusals, and the doctrine of foreign equivalents...
TTABlog Celebrates Fourth Anniversary!
Posted on November 08, 2008The TTABlog is four-years old today. Thank you for reading..
TTAB Cancels "THE COLD WAR MUSEUM" Registration, Respondents Fail to Prove Acquired Distinctiveness
Posted on November 07, 2008The Board granted a petition to cancel a registration for the mark THE COLD WAR MUSEUM for "museum services," finding the mark merely descriptive and lacking in acquired distinctiveness. Respondents, whose registration issued under Section 2(f), failed to submit evidence of acquired distinctiveness in this proceeding, and consequently the Board ruled in Petitioner's favor...
Webpage Specimen for "ONE NATION UNDER GOD" Charity Bracelets Fails to Pass TTAB Muster
Posted on November 06, 2008Finding the requirements of Lands' End and Dell unfulfilled, the Board affirmed a refusal to register the mark ONE NATION UNDER GOD for "charity bracelets," rejecting Applicant's specimen of use (an electronic catalog webpage) as unacceptable. In re Sones, Serial No...
TTAB Judge G. Douglas Hohein Passes Away
Posted on November 06, 2008Judge G. Douglas Hohein died this past weekend at his home in Alexandria, Virginia. Judge Hohein was appointed a TTAB Judge in 1990. He spent his entire professional career with the USPTO, twenty-seven of those years with the TTAB.Funeral arrangements for have been made with the Everly-Wheatley Funeral Home, 1500 W...
TTAB Finds "BOMBJAMMER" Generic for ... Guess What?
Posted on November 05, 2008The Board affirmed a refusal to register the term BOMBJAMMER, on the Supplemental Register, for "instruments comprised of transmitters and other electronic devices for use as countermeasures against radio-linked explosives," finding the term to be generic and thus incapable of functioning as a trademark...
"IS YOUR MORTGAGE CONTRIBUTING TO YOUR WEALTH?" Fails to Function as a Service Mark, Says TTAB
Posted on November 04, 2008The Board wasted little time in affirming a refusal to register the phrase IS YOUR MORTGAGE CONTRIBUTING TO YOUR WEALTH? for "mortgage brokerage services," finding that the phrase as used by Applicant Capital Financial Advisors, Inc. fails to function as a service mark...
TTAB Posts November 2008 Hearing Schedule
Posted on November 03, 2008The Trademark Trial and Appeal Board has scheduled eight (8) hearings for the month of November, as listed below. These hearings will be held in the East Wing of the Madison Building. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...
TTAB Finds "Tick, Tick ... Boom!" to be the Title of a Single Work, Affirms Refusal to Register
Posted on October 31, 2008Agreeing with Examining Attorney Natalie Polzer, the Board affirmed a refusal to register the mark TICK, TICK ... BOOM! for musical recordings, entertainment services in the nature of a musical play, and songbooks and sheet music, finding the mark to be the title of a single work and therefore unregistrable...
"NO BROKEN GLASS" Symbol Fails to Function as a Trademark for Lighting Fixtures, Says TTAB
Posted on October 30, 2008The Board affirmed a refusal to register the design shown below, for electric lighting fixtures, on the ground that the purported mark, as used by Applicant, would be perceived as merely informational and not as a source indicator. In re Halogen Lighting Products, Serial No...
Fame of "MICHELOB" Mark and Survey Evidence Lead Board to Sustain 2(d) Opposition to "MAMBO MICHELADA" for Beer
Posted on October 29, 2008The fame of the MICHELOB mark and Opposer's survey results led the Board to sustain Anheuser-Busch's Section 2(d) opposition to registration of the mark MAMBO MICHELADA for beer and syrup for making beer beverages. Anheuser-Busch, Incorporated v. Mambo Seafood #1, Inc...
Precedential No. 46: TTAB Affirms 2(d) Refusals of "RSI" Design Mark for Ink Jet Printers
Posted on October 28, 2008In a less than scintillating decision, the Board affirmed two Section 2(d) refusals of the mark RSI & Design (shown below) for ink jet printers and related paraphernalia, finding the mark likely to cause confusion with the mark RSI in standard character form, owned by different registrants, one for "printing machines" and the other for document imaging services...
TTAB Affirms 2(a) Refusal of "COCAINE" as Scandalous for Soft Drinks
Posted on October 27, 2008Marc Randazza, at The Legal Satyricon blog, discusses (here) the TTAB's recent ruling that the mark COCAINE (in the form shown below) for "carbonated and non-carbonated soft drinks and energy drinks? is scandalous and therefore unregistrable under Section 2(a)...
Precedential No. 45: TTAB Denies Petitioner's Motion to Amend, Grants Respondent's Motion for Judgment on the Pleadings
Posted on October 24, 2008Media Online Inc. got the bum's rush when it petitioned to cancel a registration for the mark EL CLASIFICADO ONLINE for Internet advertising services. The Board denied its cross-motion to amend its petition to add two claims, and then granted Respondent's motion for judgment on the pleadings...
"GOTHAM BATMEN" Strike Out: TTAB Finds Fraud, Sustains Opposition on Summary Judgment
Posted on October 23, 2008In a case similar to Medinol, the Board sustained DC Comics' opposition to registration of the marks GOTHAM BATSMEN in standard character and design form [GOTHAM disclaimed], ruling that Applicant Gotham City Networking committed fraud on the USPTO when it falsely amended its use-based application to specify certain entertainment services for which it had never used the mark...
Precedential No. 43: Absent TTAB Order, No Sanction for Failure to Provide Initial Disclosures
Posted on October 21, 2008The TTAB denied Applicant's motion for sanctions for Opposer's failure to make initial disclosures. The Board ruled that the proper course was for Applicant to file a motion to compel and then, if Opposer did not comply with a resulting Board Order, to seek sanctions...
Precedential No. 44: TTAB Sustains 2(e)(3) Opposition to "HAVANA CLUB" for Cigars Made From Cuban Seed Tobacco
Posted on October 21, 2008The Board sustained a Section 2(e)(3) opposition to registration of the mark HAVANA CLUB for "cigars made from Cuban seed tobacco" [HAVANA disclaimed], finding the mark to be primarily geographically deceptively misdescriptive. The key issue was whether Applicant's goods should be deemed to originate from Havana, Cuba, even though they will be made elsewhere...
"ZIP AND STEAM" Merely Descriptive of Cooking Pouches, Says TTAB, Not Surprisingly
Posted on October 20, 2008Here's another WYHA decision for our collection. Would you have appealed the TTAB's mere Section 2(e)(1) mere descriptiveness refusal of ZIP AND STEAM for "cooking containers, namely, plastic cooking bags and pouches?" The Board affirmed the refusal in In re SteamFast Europe Limited, Serial No...
TTABlog Flotsam and Jetsam: Issue No. 12
Posted on October 17, 2008Every 18 months or so, just like clockwork, I gather enough small items to fill a "Flotsam and Jetsam" posting. So let's empty the bin! [The signs in the photos are from East Cambridge].Randazza on SEX ROD: Marc Randazza provides his comments on the recent RED SOX v...
"FASHION TOOLS" Merely Descriptive of Fashion Information Website, Says TTAB, Unconvincingly
Posted on October 16, 2008In an unconvincing, but mercifully brief, decision, the Board affirmed a Section 2(e)(1) refusal to register the mark FASHION TOOLS, finding it merely descriptive of "providing a website featuring information and content in the fields of personal relationships, dating and fashion...
TTAB Invokes Bogus Telescope Analogy, Affirms Mere Descriptiveness Refusal of "WIKINVEST" for Financial Website
Posted on October 15, 2008Ok, I admit it. I'm still miffed over the TTAB's ruling that the mark THE TTABLOG is not inherently distinctive. The Board blindly applied its "telescoping" theory to find mere descriptiveness, ignoring the fact that the parts of a telescope slide smoothly together, while the words "TTAB" and "blog" do not...
TTABlog Guest Comment: Michael E. Hall on "The Continuing Saga of STEELBUILDING.COM"
Posted on October 14, 2008On October 15th, the Board will hear oral argument in In re Steelbuilding.com, Inc., Serial No. 78680792, in which the Applicant challenges the PTO's genericness and mere descriptiveness refusals of STEELBUILDING.COM for "computerized online retail services in the field of pre-engineered metal buildings and roofing systems...
Precedential No. 42: TTAB Reverses 2(a) False Connection Refusal of "MARIA CALLAS" for Jewelry
Posted on October 10, 2008Ruling that the PTO failed to carry its burden of proof, the Board reversed a Section 2(a) "false connection" refusal of the mark MARIA CALLAS for jewelry and other goods. In order to establish this Section 2(a) bar to registration of a now-deceased natural person's name, the PTO must show, inter alia, that there are heirs or other successors who are entitled to assert that person's right to the use of the designation...
Walgreen Seeks District Court Review of TTAB's "WAL-VERT" Decision
Posted on October 09, 2008Walgreen has filed a complaint (here) in the United States District Court for the Northern District of Illinois, seeking de novo review (under 15 U.S.C. Sec. 1071(b)) of the TTAB's August 5, 2008 decision in Wyeth v. Walgreen Co., Opposition No. 91165912 (August 5, 2008) [not precedential]...
TTAB Rules That "SHINNECOCK" Marks for Cigarettes Suggest a False Connection with the Shinnecock Indian Nation
Posted on October 08, 2008Finding that the two marks shown below, for cigarettes, falsely suggest a connection with the Shinnecock Indian Nation, the TTAB affirmed the PTO's Section 2(a) refusals to register. The Board rejected Applicant's assertion that the PTO's refusals were based on racial discrimination against Applicant, a sole proprietorship owned by a Native American named Jonathan K...
TTAB Pulls Plug on "ELECTRIC" for Watches, Affirms 2(e)(1) Mere Descriptiveness Refusal
Posted on October 07, 2008Well, here we are again with a candidate for our WYHA file (Would You Have Appealed?). The Board affirmed a Section 2(e)(1) refusal of the mark ELECTRIC for watches and watch bands, finding it merely descriptive of watches. Applicant Electric Visual Evolution argued that "the term 'electric' is not commonly used by the general public to describe a source of power for watches," but the PTO's evidence demonstrated otherwise...
TTAB Reverses Mere Descriptiveness Refusal of "MASTER PLUMBER" for Plumbing Products
Posted on October 06, 2008Reversing three Section 2(e)(1) refusals to register, the Board found the mark MASTER PLUMBER not merely descriptive of a variety of plumbing items, including sump pumps, garbage disposals, toilet repair parts, faucets, and ventilating ducts. It concluded that the goods "appear to be goods which 'do-it yourselfers' or others who are not master plumbers could and would purchase," and that these purchasers would see the mark as merely suggestive...
Reminder: TTAB Comes to Boston October 24, 2008
Posted on October 03, 2008The Trademark Trial and Appeal Board (TTAB) will travel to Boston on Friday, October 24, 2008, to hear final arguments in Ironman Magazine v. World Triathlon Corporation, Opposition No. 91167894, as part of a Boston Patent Law Association (BPLA) program to be held at Northeastern University School of Law (NUSL)...
TTAB Administers 2(e)(4) Kiss of Death to "SIMMONS COMICS GROUP" for Comic Books
Posted on October 02, 2008Finding Applicant's evidence insufficient to show that Kiss guitarist Gene Simmons is a renowned historical figure for purposes of Section 2(e)(4), the Board affirmed a surname refusal of SIMMONS COMICS GROUP for comics ["COMICS GROUP" disclaimed]. In re Gene Simmons Comics Group, Serial No...
TTAB Posts October 2008 Hearing Schedule
Posted on October 01, 2008In addition to the October 24th hearing set for Boston (link here), the Trademark Trial and Appeal Board has scheduled nine (9) hearings for the month of October, as listed below. These hearings will be held in the East Wing of the Madison Building. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...
TTABlog Quarterly Index: July - September 2008
Posted on September 30, 2008Here's the latest quarterly index. Prior indices are available via the links in the right-hand column. The TTABlog will celebrate its fourth anniverary in the next quarter. The very first posting appeared on November 8, 2004, and featured the inimitable Leo Stoller...
TTAB Reverses Functionality Refusal of Shape of Traffic Signal Bracket, but Affirms Nondistinctiveness Refusal
Posted on September 29, 2008There are two major hurdles to registering a product configuration as a trademark: functionality and nondistinctiveness. I wrote an article on this topic a few years ago, cleverly entitled, "Trade Dress and the TTAB: If Functionality Don?t Get You, Nondistinctiveness Will...
"HAIR OF THE DOG" and "LES CHEVEUX DU CHIEN" for Clothing Not Confusingly Similar, Says TTAB
Posted on September 26, 2008In an interesting application of the doctrine of foreign equivalents, the Board reversed aSection 2(d) refusal of the mark HAIR OF THE DOG for "clothing, namely, shirts, t-shirts, pants, shorts, headwear, hats, socks, sleepwear and dresses," finding it not likely to cause confusion with the registered mark LES CHEVEUX DU CHIEN "for custom manufacture of clothing, personal accessories in the nature of jewelry, stoles, scarves, linens, and home décor items...
TTAB Finds Fraud in Section 8 Declaration, Cancels Registration of Italian Wine Company
Posted on September 25, 2008Granting Petitioner Sierra's cross-motion for summary judgment and sustaining its cancellation petition, the Board found that Registrant Montelvini S.p.A. committed fraud on the USPTO when it filed its Section 8 Declaration of Use. Registrant verified that its registered mark MONTELVINI VENEGAZZU & Design (shown below) was in use on "wines, spirits, and liqueurs," when in fact it was not in use on liqueurs...
Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging
Posted on September 24, 2008The Boston Red Sox were not amused when New Yorker and self-proclaimed "humorist" Brad Francis Sherman attempted to register the mark SEX ROD in the stylized form shown here, for 136 clothing items (including infantwear, baby bibs, and girdles). The TTAB also failed to appreciate the humor...
Design Patent Owners Will Worship CAFC's Egyptian Goddess Decision
Posted on September 22, 2008In an eagerly-awaited en banc ruling, the U.S. Court of Appeals for the Federal Circuit has banished the "point of novelty" test as a "second and free-standing requirement for design patent infringement," finding it inconsistent with the Supreme Court's Gorham v...
TTAB Comes to Boston: October 24, 2008
Posted on September 22, 2008The Trademark Trial and Appeal Board (TTAB) will travel to Boston on Friday, October 24, 2008, to hear final arguments in an inter partes case, as part of a Boston Patent Law Association (BPLA) program to be held at Northeastern University School of Law (NUSL)...
"OIL FREE JOJOBA" Generic for Cosmetics, Says TTAB
Posted on September 19, 2008Finding the term OIL FREE JOJOBA to be generic for "skin and body soaps, essential oils for personal use, cosmetics, and hair lotions, all containing one or more chemically modified jojoba extracts," the Board granted a petition for cancellation of Respondent Desert Whale's Supplemental Registration...
Supreme Court To Consider Certiorari Petition Re Constitutionality of PTO Judicial Appointments
Posted on September 18, 2008The SCOTUS blog reports here that on September 29, 2008, the U.S. Supreme Court will take up the Petition for a Writ of Certiorari filed in Translogic Technology, Inc. v. Dudas (Docket No. 07-1303) . The issues: "Whether the director of the Patent and Trademark Office lacked constitutional authority to appoint members of the Board of Patent Appeals and Interferences (BPAI), and, if so, whether the board's decision below must be vacated as a result...
Genericness Survey Results Posted at Pamela Chestek's Blog
Posted on September 18, 2008Pamela Chestek has posted (here) the results of her recent genericness survey regarding ice cream designations/terms/names/marks. I am not at all knowledgeable about ice cream, and so I will have no comments for the moment. But Pam provides plenty of commentary in the posting at her Property, intangible blog...
Affirming 2(d) Refusal of "17" for Clothing, TTAB Rejects Attempt to Limit Goods in Cited Registration
Posted on September 17, 2008On this, the 17th of September, the lesson is a basic one: the Board will not read into a cited registration, limitations on the goods or services based upon real world evidence. That's why this decision is a candidate for our WYHA (Would you have appealed) collection of cases...
Finding Customized Tapestry Ordering Kits Not to be Goods in Trade, TTAB Affirms Refusal to Register "WOVEN MOMENTS"
Posted on September 16, 2008Finding that Applicant was seeking to register a marketing technique or method for its custom imprinting services, the TTAB affirmed a refusal to register the mark WOVEN MOMENTS for "kits consisting primarily of a box, an order form, a mailer, and an authorization key code, sold together as a unit, for use in submitting an image and obtaining blanket throws and tapestries bearing the image...
My Goodness? TTAB Reverses Mere Descriptiveness Refusal of "MY HORSE PLAYER" for Handicapping Software
Posted on September 12, 2008Does addition of the word "MY" make an otherwise merely descriptive mark inherently distinctive? Maybe, maybe not, said the Board, but it did the trick in In re Scott McKeever, Serial No. 78919885 (September 10, 2008) [not precedential]. The Board reversed a Section 2(e)(1) refusal of the mark MY HORSE PLAYER, finding the mark not merely descriptive of horse handicapping software and related Internet services...
TTAB Finds "BOYD'S" and "BOYDS" Confusingly Similar for Clothing, Despite Applicant's Attempt to Limit Its Trade Channels
Posted on September 09, 2008Continuing our WYHA? (Would you have appealed?) series of decisions, here's another one to consider for inclusion. The Board affirmed a Section 2(d) refusal to register the mark BOYD'S for various items of wearing apparel "offered and sold through authorized dealers," finding the mark likely to cause confusion with the registered mark BOYDS for men's and women's clothing and for related retail services...
"GANGA" Merely Descriptive of Department Store Services, Says TTAB, Equivalently
Posted on September 08, 2008Returning to our "Would you have appealed?" series of decisions, contemplate this double-header. The Board applied the doctrine of foreign equivalents in affirming Section 2(e)(1) refusals of GANGA and GANGA $5 & UNDER, finding the marks merely descriptive of retail department store services...
TTABlog Test Time: So You Think You Know Genericness?
Posted on September 05, 2008At her Property, intangible blog, Pamela Chestek here invites readers to participate in a genericness survey (Teflon-style) regarding ice cream designations/terms/names/marks. Do you think you know genericness when you see it? Ok. Explain the difference between the In re Gould test and the American Fertility test...
TTAB Quickly Affirms Mere Descriptiveness Refusal of "7SECONDS" for Hair Detangler
Posted on September 04, 2008Continuing with our "Would you have appealed?" series of decisions, consider if you will the attempt by Unite Eurotherapy to register the mark 7SECONDS for "hair detangler." The Board affirmed a Section 2(e)(1) refusal to register, finding the mark merely descriptive of the goods...
Specimens Don't Match Drawing, So TTAB Affirms Refusal to Register "AT C-LEVEL" for Magazines
Posted on September 03, 2008In another of our "Would you have appealed?" series of decisions, the Board affirmed a refusal to register the mark AT C-LEVEL for "magazines featuring economic information specific to municipalities" on the ground that the mark depicted in the drawing is not a substantially exact representation of the mark shown in Applicant's specimens of use, as required by Rule 2...
"DISPENSE-A-PILL" Merely Descriptive of Pill Dispenser, Says TTAB, Painlessly
Posted on September 02, 2008In a terse six-page decision, the Board quickly dispensed with Applicant HealthOne Medical's hopeless appeal of a Section 2(e)(1) mere descriptiveness refusal of the mark DISPENSE-A-PILL for "machines, and cartridges sold in connection therewith, for dispensing pre-determined dosages of medication in pill and capsule form...
TTAB Posts September 2008 Hearing Schedule
Posted on August 29, 2008The Trademark Trial and Appeal Board has scheduled four (4) hearings for the month of September, as listed below. The hearings will be held in the East Wing of the Madison Building. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...
TTAB Affirms 2(d) Refusal of "PROTIVA" for Smart Cards over "PROTEVA" for Computers
Posted on August 28, 2008Because "computers" is "an extremely broad term encompassing a wide range of devices which could be sold to a wide range of potential purchasers," the Board sustained a Section 2(d) opposition to registration of the mark PROTIVA for "multi-factor authentication apparatus for logical access consisting primarily of encoded smart cards, digitally encoded tokens, and authentication software...
Finding "BELL'S & Design" and "OLA BELL'S" Confusingly Similar for Stuffing, TTAB Affirms 2(d) Refusal
Posted on August 27, 2008The near identity of the involved goods was the critical factor in the Board's affirmance of a Section 2(d) refusal to register the mark OLA BELL'S for "croutons, stuffing consisting of bread; shred which is a form of bread stuffing; dried bread, batters; spices, namely blends for croutons and stuffing...
TTAB Affirms Section 2(e)(1) and 2(a) Refusals of "NEUROBOTICS" for Augmented Surgical Goods and Services
Posted on August 26, 2008Applicant Neurobotics, Inc. struck out in its attempt to register the mark NEUROBOTICS for augmented surgical control systems and related consulting and engineering services. The Board affirmed the PTO's alternative Section 2(e)(1) and Section 2(a) refusals to register, finding the mark to be merely descriptive of the goods and services or, alternatively, deceptively misdescriptive and deceptive therefor...
TTABlog Photo Day
Posted on August 22, 2008I took a one-day trip to Alexandria, Virginia yesterday to present a final argument before the TTAB. So I thought I'd take a TTABreak today. Back Monday..
Divided TTAB Panel Finds "ALAVERT" and "WAL-VERT" Confusingly Similar for Antihistamines
Posted on August 20, 2008A divided Board panel sustained Wyeth's opposition to registration of the mark WAL-VERT for "antihistamines and allergy relief preparations," finding it likely to cause confusion with Opposer's registered mark ALAVERT for allergy relief and antihistamine preparations...
Heavner and Luepke Review "The Top Fifteen Mistakes of Foreign Applicants"
Posted on August 18, 2008In the latest issue of The Trademark Reporter, B. Brett Heavner and Marcus H.H. Luepke present an informative discussion of the "15 most common mistakes" made by foreign applicants, offering "practical solutions for avoiding these pitfalls." All this in their article, Avoiding Trademark Pitfalls in the "Land of the Unlimited Possibilities": The Top Fifteen Mistakes of Foreign Applicants in the U...
"DAYTONA" Trademark Licensee Denied Second Bite at TTAB Apple
Posted on August 15, 2008HBP, Inc. made a return trip to the Board in order to challenge registration of the mark DAYTONA THUNDERWEAR for women's clothing, but it ran into a TTABrick wall. The Board granted Respondent's motion for judgment on the ground of res judicata, ruling that HBP's claim was barred because of its earlier failed opposition to the same mark...
"SPICE SHOT" Merely Descriptive of Ammunition, Says TTAB, Affirmingly
Posted on August 14, 2008Brett W. Holm of Chaska, Minnesota, took a shot at registering the mark SPICE SHOT for "ammunition for firearms" [SHOT disclaimed], but he missed the target. The Board affirmed a Section 2(e)(1) refusal, finding the mark merely descriptive because the ammunition is comprised of spices formed into pellets (so that, according to his website, one may simultaneously shoot, kill, and season a bird)...
TTAB Affirms Two Genericness Refusals: "CONFERENCECALL.COM" and "CORPORATE PRO BONO" for ... Guess What?
Posted on August 13, 2008Two genericness cases illustrate the proposition that a term may be generic for services if it names the "key aspect" or "central focus" of the services. In In re West Corp., Serial No. 78739755 (July 31, 2008) [not precedential], the Board found CONFERENCECALL...
TTAB Finds "RAMBLER" Mark Abandoned for Autos, but Sustains 2(d) Opposition to "RAMBLER" for Autos
Posted on August 12, 2008Pro se applicant Anthony S. Pimpo was thwarted in his attempt to register the mark RAMBLER for automobiles and parts. Although the old Nash mark has been abandoned for decades with regard to automobiles, the Board found that use of the mark on licensed goods (like key rings, calendars, and owner's manuals) beginning in 1995 provided a sufficient basis for a likelihood of confusion finding...
USC Bests USC in TTAB 2(d) Confusion Bowl
Posted on August 11, 2008The Trojans of USC (California) topped the Gamecocks of USC (South Carolina) in a Section 2(d) opposition proceeding involving their respective SC logos. The Board explicated its reasoning in an exhausting 93-page decision penned by Judge Charles Grendel...
TTAB Affirms Mere Descriptiveness Refusal of "ITALIAN SUSHI" for ... Guess What?
Posted on August 08, 2008In another one of those futile ex parte appeals that leads one to ask "why bother?", the Board affirmed a Section 2(e)(1) mere descriptiveness refusal of the mark ITALIAN SUSHI for "food items consisting of seafood ... and cheese ... and prosciutto combined with other ingredients served in a roll and ring form for on or off premises sales...
Precedential No. 39: Evidentiary Errors Lead to Dismissal of 2(d) Opposition for Failure to Prove Priority
Posted on August 07, 2008In this train wreck of a Section 2(d) proceeding, Opposer Life Zone Inc. failed to properly introduce its trademark registrations and failed to provide evidence establishing common law rights in its marks from a date prior to Applicant's filing date. The Board therefore dismissed the opposition for lack of priority...
TTAB Reverses 2(d) Refusal, Finds "CLIMAX" and "JELLY CLIMAX MAXIMIZER" Not Confusingly Similar for Vibrators
Posted on August 06, 2008Despite overlapping goods purchased by the same ordinary consumers and moving through the same presumed channels of trade, the Board reversed a refusal to register the mark CLIMAX for adult sexual aids, finding it not likely to cause confusion with the registered mark JELLY CLIMAX MAXIMIZER & Design for vibrators [JELLY CLIMAX disclaimed]...
New Legislation Aims to Cure Possible Defect in Appointment of Some TTAB Judges
Posted on August 05, 2008The Patently O patent law blog reports here that the U.S. House and Senate have passed "A bill to amend title 35, United States Code, and the Trademark Act of 1946 to provide that the Secretary of Commerce, in consultation with the Director of the United States Patent and Trademark Office, shall appoint administrative patent judges and administrative trademark judges, and for other purposes...
TTAB Posts August 2008 Hearing Schedule
Posted on August 04, 2008The Trademark Trial and Appeal Board has scheduled seven (7) hearings for the month of August, as listed below. The hearings will be held in the East Wing of the Madison Building. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...
"LIFETIME WARRANTY" Merely Descriptive of Clothing, Says TTAB, Not Surprisingly
Posted on August 01, 2008When I first saw this decision, I thought it involved Ray Allen of the World Champion Boston Celtics. But it's not In re Ray Allen, it's In re Allen, as in Vergil M. Allen of Santa Clara California. The latter Allen threw up an air ball in his attempt to register the mark LIFETIME WARRANTY for various clothing items...
TTAB Affirms 2(d) Refusal of "CINDERELLA" for Peanut Butter over Disney Registration for Related Goods
Posted on July 31, 2008This applicant's attempt to register the mark CINDERELLA (shown immediately below) for "peanut butter" had a grim ending. The mark had been in use since 1895, according to Applicant, and was registered until 2001, but unfortunately the registration was allowed to lapsed by Applicant's predecessor...
"SEXY 'N SASSY" Confusingly Similar to "SEXY HAIR" for Hair Care Products, Says TTAB, Unconvincingly
Posted on July 30, 2008In a less than convincing decision, the Board found that a "non-de minimums" [sic!] number of consumers would likely be confused, and so it sustained a Section 2(d) opposition to registration of the the mark SEXY N' SASSY in view of the registered mark SEXY HAIR [HAIR disclaimed], both for for various hair care products...
TTAB Finds "ZABA'S" for Restaurant Services Confusingly Similar to "ZABAR'S" for Catering and Retail Store Services
Posted on July 29, 2008In this cross-country service mark battle, the Board sustained a Section 2(d) opposition to registration of the mark ZABA'S, in standard character and design form, for "restaurant services," finding it likely to cause confusion with the previously-used and registered mark ZABAR'S (in various forms) for food catering services, retail store services, and mail order services for gourmet food and related items...
Appellant Petitions Commissioner for New Hearing, Claims PTO Argument Was Inaudible and Unintelligible
Posted on July 28, 2008Well here's another document for your form file: a Petition to the Commissioner for a do-over of the oral argument in an ex parte appeal. Counsel for Applicants Diane M. and Richard G. Hyatt appeared on May 21, 2008, for the oral argument in their appeal from a Section 2(d) refusal to register...
Fame Factor Fuels Victory in TTAB 2(d) Opposition Against "ROAD RUNNER" for Batteries
Posted on July 25, 2008The "significant fame" of the ROAD RUNNER word and character marks carried Opposer Time Warner to victory in its opposition to registration of the word mark ROAD RUNNER for batteries. The Board found Applicant's goods to be "sufficiently related" to Opposer's action figures, accessories therefor, and hand-held video games, for purposes of the second duPont factor...
TTAB Holds "NEW MEXICO RAILRUNNER" ITU Application Void Under Section 10 Due To Improper Assignment
Posted on July 24, 2008Finding that Applicant New Mexico Mid-Region Council of Governments ("MRCOG") had violated Section 10 of the Trademark Act when it assigned its ITU application for the mark NEW MEXICO RAILRUNNER to the New Mexico Department of Transportation ("NMDOT"), the Board granted summary judgment to Opposer Railrunner N...
TTAB Finds "DIGITALBOOK" Trademark Specimen Unacceptable
Posted on July 23, 2008Affirming the PTO's refusal to register, the Board found Applicant Sagoma's specimen of use unacceptable for the mark DIGITALBOOK for, inter alia, binders for holding media discs. The specimen (shown below) fails to qualify as a display associated with the goods because it does not contain adequate ordering information...
"CHINATOWN BRASSERIE" Not Primarily Geographically Deceptively Misdescriptive for Restaurant Not in NYC's Chinatown, Says TTAB
Posted on July 22, 2008Reversing a Section 2(e)(3) refusal to register, the Board found the mark CHINATOWN BRASSERIE & Design [BRASSERIE disclaimed] not primarily geographically deceptively misdescriptive for restaurant services, even though Applicant's restaurant is located one-half mile outside of New York City's Chinatown...
Tenth Circuit Applies MedImmune in Trademark Declaratory Judgment Action
Posted on July 21, 2008The Filewrapper blog reports here on a recent 10th Circuit ruling that applies the Supreme Court's MedImmune declaratory judgment analysis in a trademark case. The court found that the interactions between the parties, coupled with five TTAB proceedings, were sufficient to satisfy the Article III "case or controversy" jurisdictional requirement...
Precedential No. 38: TTAB Dismisses Opposition as Untimely - Electronic Payment Incomplete and Faxed Filing Ineffective
Posted on July 18, 2008The vibes were not good for Vibe Records, Inc. when its president tried to file an opposition to registration of the mark VIBE REVOLUTIONS for "Providing links to web sites of others featuring retail stores, coupons, online music purchases and magazine subscriptions...
TTABlog Photos for Today
Posted on July 17, 2008I went to the soccer game at Gillette Stadium last night with my two sons, and we saw the Revolution beat Mexican side Pachuca 1-0 in the Superliga Tournament. That adventure, and the dearth of interesting decisions from the Board, led me to post these two photographs, taken by my son Jack of my son Peter, a few months ago in Paris...
Precedential No. 37: Judge Rogers Beams as Section 2(d) Case is Tried Without Discovery
Posted on July 16, 2008The Board dismissed a Section 2(d) opposition to registration of the mark ONE FAB FIT for women's foundation garments, undergarments, and intimate apparel, finding the mark not likely to cause confusion with the mark ONE TRUE FIT, registered for outwear, including coats shorts, skirts, jeans, and pants...
TTABlog Euro 2008 Soccer Pool Winners Announced
Posted on July 15, 2008The winners of the TTABlog Euro 2008 Soccer Pool accept their prizes at the offices of Lowrie, Lando & Anastasi, LLP. Left to right: James De Vellis (Germany), yours truly, and Lisa Saunders (Spain).Photograph Copyright Geraldine MacLellan 2008.
TTAB Reverses Mere Descriptiveness Refusal of "SAFETY JOGGER" for Work Shoes
Posted on July 14, 2008The Board reversed a Section 2(e)(1) refusal to register the mark SAFETY JOGGER, finding it not merely descriptive of "clothing, namely, work shoes and boots, and headwear." In re Cortina N.V., Serial No. 79019306 (July 1, 2008) [not precedential].The PTO relied on dictionary definitions of the word "safety" and on Internet advertisements referring to various athletic shoes as "joggers...
Finding Laches in 62-Month Delay, TTAB Dismisses 2(d) Cancellation Petition
Posted on July 11, 2008Sustaining Respondent Braided Accents, L.L. C.'s affirmative defense of laches, the Board dismissed a petition for cancellation of the mark BRAIDED ACCENTS & Design ["BRAIDED" and the pictorial representation of a braid disclaimed] for moldings, door frames, window frames, rails and wainscotting...
Divided TTAB Panel Reverses Mere Descriptiveness Refusal of "CRAZY GOOD" for Toaster Pastries
Posted on July 10, 2008It took 32 pages and three opinions for the Board to reverse the PTO's mere descriptiveness refusal of CRAZY GOOD "for toaster pastries, [and] fruit preserve filled pastry product[s]." Judges Hohein and Bucher agreed that the term would be seen as overblown hyperbole and "mere puffery" and not as descriptive of the goods in any particular way...
Precedential No. 36: Finding Specimen Doesn't Match Drawing, TTAB Affirms Refusal of "UPPER 90" for Clothing
Posted on July 09, 2008In its attempt to register the mark UPPER 90 for various clothing items, Applicant Yale Sportswear Corp. was shown a red card because it violated Trademark Rule 2.51(b), which states that "the drawing of the mark must be a substantially exact representation of the mark as used on ...
Precedential No. 35: Despite Amendment of Application, TTAB Sustains Fraud Claim in "GRAND CANYON WEST" Opposition
Posted on July 08, 2008The Hualapai Tribe was knocked out in the second round in its attempt to register GRAND CANYON WEST for various sightseeing services. In the first round [TTABlogged here], the Board sustained in part the opposition of Grand Canyon West Ranch on the ground of nonuse of the subject mark for some of Applicant's services, and it granted Applicant's motion to deleted those "unused" services...
Precedential No. 34: TTAB Okays Stipulation Between Red Sox and "RAD SEX" Applicant to Waive Initial Disclosures
Posted on July 07, 2008Bostonian Harry F. Chaveriat III, is seeking to register the mark RAD SEX for baseball caps, sweatshirts, t-shirts, and track pants. The Boston Red Sox have balked at the idea and have filed an opposition on the grounds of likelihood of confusion, false connection, and disparagement [TTABlog query: dilution?], and on the ground that the mark is immoral or scandalous...
TTAB Agrees that "BIOSILK" is Deceptive for Clothing
Posted on July 03, 2008It took only seven pages for the Board to explain its affirmance of the PTO's Section (a) deceptiveness refusal of BIOSILK for men's and women's clothing. Applicant argued, to no avail, that consumers would not be deceived but would recognize the term as merely an expansion of Applicant's well-known cosmetics mark to a new product line...
TTAB Affirms Rejection of Catalog Page as Trademark Specimen of Use
Posted on July 02, 2008Distinguishing In re Valenite Inc., 84 USPQ2d 1346 (TTAB 2007), the Board found Applicant U.S. Tsubaki, Inc.'s specimen of use unacceptable, and so affirmed a refusal to register the mark TSUBAKI: THE CHOICE FOR CHAIN for machines and various machine parts...
TTABlog Quarterly Index: April 2008 - June 2008
Posted on June 30, 2008E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. Note also the new Babelfish translation box that appears in the column on the right (scroll down). You may now translate the postings into any of eight languages...
TTAB Cancels "JONATHAN LOGAN" Clothing Registrations: Trade Name Use is not Trademark Use
Posted on June 27, 2008Finding no evidence that Respondent used the trademark JONATHAN LOGAN for clothing since 2002, the Board granted a petition for cancellation of two registrations for that mark (one in block letters, the other in the stylized form shown below). Although Respondent One Step submitted documents displaying use of the trade name "Jonathan Logan," the Board found no basis to infer that "clothing sold by the 'Jonathan Logan' company necessarily was branded with the JONATHAN LOGAN trademark...
Precedential No. 33: TTAB Affirms Refusal of "FREEDOM STONE" for Cornerstones as Title of a Single Work
Posted on June 26, 2008After ruling that an amendment of Applicant's mark from FREEDOMSTONE to FREEDOM STONE was not a material alteration of the mark, the Board affirmed the PTO's refusal to register on that ground that Applicant's mark is the title of a single artistic work, namely, the cornerstone for the Freedom Tower building under construction at the World Trade Center site in New York City...
Precedential No. 32: Double Entendre Argument Remedies "THE FARMACY" 2(e)(1) Refusal, Says TTAB
Posted on June 25, 2008The Board fell for Applicant Tea and Sympathy's claim that The mark THE FARMACY is a double entendre and therefore is not merely descriptive of "retail store services featuring natural herbs and organic products; and on-line retail store services featuring natural herbs and organic products" (in International Class 35), and "providing integrated health services at retail locations in the nature of dietary and nutritional guidance and providing information about dietary supplements and nutrition" (in International Class 44)...
On Summary Judgment, TTAB Finds "BRIDGELOAN.COM" to be Generic for Commercial Lending Services
Posted on June 23, 2008Granting a motion for summary judgment, the Board not surprisingly found the term BRIDGELOAN.COM to be generic for "financial services, namely commercial lending services," and ordered Respondent's registration cancelled. East West Bank v. BridgeLoan Investors, Inc...
Despite Claim that "MERROW" Means "Mermaid," TTAB Affirms 2(e)(4) Surname Refusal
Posted on June 20, 2008Finding that three of the four surname factors support the PTO's refusal, and the fourth is neutral, the Board affirmed a Section 2(e)(4) refusal to register the mark MERROW for "toys, namely playsets for toy figures and plastic character toys; toy action figures and accessories therefor; stuffed and plush toy animals...
Affirming 2(d) Refusal of "SMOKEYS HOUSE OF BARBEQUE," TTAB Finds Clothing and Sauce Related to Restaurant Services
Posted on June 19, 2008Applicant Full Service Deli Distributors could not argue its way around the PTO's evidence in support of a 2(d) refusal of SMOKEYS HOUSE OF BARBEQUE for "wearing apparel, namely, shirts, T-shirts, shorts and aprons," "food preparations, namely, salad dressing, barbeque sauce, marinade, ketchup and hot sauce," and "restaurant services" ["BARBEQUE" disclaimed]...
TTAB Affirms 2(d) Refusal Despite Sophistication of Customers for Computer Software and Services
Posted on June 17, 2008Although the relevant consumers of the involved products and services may exercise a high degree of care, the Board nonetheless affirmed a Section 2(d) refusal to register the mark shown below left, for various computer related services, finding it likely to cause confusion with the registered mark shown below right, for computer design and development services and for software...
PTO Proposes Potpourri of Trademark Rule Changes
Posted on June 16, 2008Bill Heinze, at his I/P Updates blog, has spotted two sets of proposed PTO trademark rule changes. I decided that, rather than spend the weekend reading and summarizing the many and varied proposed changes, I would entrust TTABlog readers to do so. [Frankly, I'm too busy watching the Celtics v...
TTAB Affirms Genericness Refusal of "BEADCHIP" for .... Guess What?
Posted on June 13, 2008Finding that the PTO had met its burden to prove genericness by clear evidence, the Board affirmed a refusal to register the term BEADCHIP on the Supplemental Register, for "single or multiple randomly assembled microbead arrays for use in medical research and scientific applications; kits for arrays and assemblies comprising nucleotide probes or proteins attached to microbeads for use in medical research and scientific applications" in International Class 1, and for "single or multiple randomly assembled microbead arrays for use in diagnostic applications; kits for arrays and assemblies comprising nucleotide probes attached to microbeads for use in diagnostic applications" in International Class 5...
"SLURP-EZE" for Pet Bowls Confusingly Similar to "SLURPEE" for Frozen Drinks, Says TTAB
Posted on June 11, 2008The TTAB put the kibosh on Applicant Mark D. Morrison's attempt to register the mark SLURP-EZE for "dog bowls, cat bowls, ferret bowls," finding the mark likeliy to cause confusion with 7-Eleven's registered SLURPEE and various SLURP marks for frozen confections and soft drinks, plastic beverage containers, clothing, candy, and bubble gum...
Tip from the TTABlog: Hands Off the Playboy Bunny!
Posted on June 10, 2008Adam Bennett of Houston, Texas got too close to the Playboy bunny and the TTAB gave him a good smack upside the head. Bennett, appearing pro se, collided with the fame of the Playboy bunny marks and was unable to pull the proverbial rabbit out of the hat with his slightly imaginative but ultimately incredible and futile attempt to explain the origins of his mark: he claimed the design was merely "a hand signal that we do in Houston...
Precedential No. 31: TTAB Reviews Specimen Brochure, Affirms Failure-to-Function Refusal
Posted on June 09, 2008Finding that the mark fails to function as a service mark, the Board affirmed a refusal to register LIQUIDADVANTAGE, in standard character form, for "custom manufacturing of pharmaceuticals featuring liquid fill and finish technology." In the specimen of use, the term was used to refer to Applicant DSM's proprietary software but not to the recited services...
Precedential No. 30: TTAB Grants Summary Judgment in Opposition Because Applicant Was Contractually Prohibited From Using Subject Mark
Posted on June 06, 2008In 1982, Applicant Karl Storz GmbH reached an agreement with Opposer's predecessor specifying how each may use the word "STORZ" in a trademark or service mark sense. In 1989, Opposer's predecessor wrote to Karl Storz, objecting to use of the mark STORZ THE WORLD OF ENDOSCOPY, shown immediately below...
Precedential No. 29: TTAB Affirms 2(e)(1) Refusal of Japanese Term Meaning "Walking" for Footwear
Posted on June 05, 2008During prosecution, Applicant Tokutake shot itself in the footwear when it provided an English translation of its Japanese-language mark shown immediately below: it translated the mark as "walking, a step." Because its identified goods were footwear, Examining Attorney Laura Gorman Kovalsky not surprisingly issued a Section 2(e)(1) mere descriptiveness refusal...
Precedential No. 28: TTAB Finds Drawings OK, But Packing Label Specimen Fails to Show Service Mark Use
Posted on June 04, 2008Pondering the propriety of Applicant wTe Corporation's drawings and specimens, the Board rendered a split decision in In re wTe Corp., Serial Nos. 78227268 and 78227272 (May 13, 2008) [precedential]. It found the drawings for the mark SPECTRAMET to be a substantially exact reproductions of the mark as used on the specimens, but it agreed with the PTO that Applicant's service mark specimen did not show use of the mark for the recited services...
TTABlog Practice Pointer: Failure to Answer Admission Requests May Be Harmful to Your Application's Health
Posted on June 03, 2008Applicant Fine Spirits was surely in poor spirits after its lame attempt to fend off a summary judgment motion in a Section 2(d) opposition brought by Gallo Winery. Gallo asserted that Fine's mark FALCON for distilled spirits was likely to cause confusion with Gallo's registered mark FALCON RIDGE for wine...
TTAB Posts June 2008 Hearing Schedule
Posted on June 02, 2008The Trademark Trial and Appeal Board has scheduled eight hearings for the month of June, as listed below. The hearings will be held in the East Wing of the Madison Building. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...
TTAB Reverses 2(d) Refusal: "GRIP-RITE" for Industrial Gloves Not Confusing With "GRIPRITE" for Shoes and Boots
Posted on May 30, 2008Reversing a Section 2(d) refusal to register, the Board found the mark GRIP-RITE for "protective gloves for industrial use" not likely to cause confusion with the registered mark GRIPRITE for "footwear, namely, shoes and boots." Although "somewhat of a close question," the Board based its ruling on the highly suggestive nature of the marks and the lack of evidence that the goods "are typically sold in the same channels of trade under the same or substantially similar marks...
Could Annual "MEET THE BLOGGERS" Event Lead to World Peace?
Posted on May 29, 2008Perhaps. Michael Atkins, at his Seattle Trademark Lawyer blog, suggests same. See his report here on "MEET THE BLOGGERS IV."
Supreme Court Says Stoller Abused Its Process
Posted on May 28, 2008On more than a dozen occasions in the past year, Leo Stoller has unsuccessfully sought Supreme Court review of various unfavorable lower court rulings. In the most recent case, the Supreme Court summarily disposed of his Petition for Writ of Certiorari filed in Stoller v...
Marty Schwimmer's Trademark Blog Turns Six
Posted on May 27, 2008Marty Schwimmer's Trademark Blog turns six years old this month. Marty is the grandfather of trademark blogging. I'm not sure who the grandmother is..
Ten TTABlog Questions About Fraud
Posted on May 23, 2008While I traveled from Berlin to London yesterday, questions kept popping into my head regarding the Board's "Twenty Questions" fraud decision, TTABlogged yesterday. It seems to me that University Games raises more questions than it answers. Here are ten questions that came to my mind:1...
Precedential No. 27: Correction of Error in Goods Prior to Publication Creates Rebuttable Presumption of No Fraud, Says TTAB
Posted on May 22, 2008In its latest fraud ruling, the TTAB has addressed the vexing issue of whether fraud is avoided if an applicant corrects a false statement as to the goods or services in a use-based application before the application is published. The panel majority ruled that amending an application to correct an erroneous identification of goods, prior to publication, creates a rebuttable presumption that the applicant did not commit fraud on the PTO...
TTABlogger Survives Monday at INTA Berlin
Posted on May 20, 2008Two highlights from Monday at INTA: TTAB Chief Judge Sams pointed out a new and important, precedential fraud decision (Opposition No. 91168142), which I shall review in a day or two. And the fifth annual "Meet the Bloggers" event came off without a hitch...
Unfriendly Shores? Recent Developments in U.S. Law May Trouble Foreign Trademark Owners
Posted on May 20, 2008Fraud was a major topic of discussion at INTA Berlin after yesterday morning's presentation. Non-US attorneys and agents who may not fully understand the use-based trademark regime that exists in the United States, are trying to come to grips with the problem...
TTABlogger Arrives at INTA Berlin
Posted on May 19, 2008Blogging will be light this week. Mostly photos, I suspect. Unless the TTAB comes up with a good one.Hotel D.O.M.I.C.I.L..
Mueller's Bests Barilla in TTAB 2(d) Food-Fight Over "AMERICA'S FAVORITE PASTA"
Posted on May 16, 2008The Italian company, Barilla, was foiled in its attempt to register the mark BARILLA - AMERICA'S FAVORITE PASTA for pasta [AMERICA'S FAVORITE PASTA disclaimed]. The Board sustained a Section 2(d) opposition brought by the successor to Mueller's, finding Barilla's mark likely to cause confusion with Opposer's common law mark AMERICA'S FAVORITE PASTA for the same goods...
TTAB Affirms Surname Refusal of "HARRINGTON OAK" for Flooring
Posted on May 15, 2008Applicant Mannington Mills was floored by the PTO's Section 2(e)(4) refusal of the mark HARRINGTON OAK for "oak floor boards; oak wooden flooring" [OAK disclaimed]. The Board affirmed the refusal, agreeing with Examining Attorney Monique C. Miller that the mark is primarily merely a surname...
TTAB Says "No Way" to "JOSE," Finds it Confusingly Similar to "JOSE CORTEZ" for Tequila
Posted on May 14, 2008Applicant Tequila Cuervo, owner of the mark JOSE CUERVO, was foiled in its attempt to register the mark JOSE for tequila and non-alcoholic mixes for use with tequila. The Board sustained Opposers' 2(d) opposition, finding the mark likely to cause confusion with the mark JOSE CORTEZ, registered for tequila...
TTAB Summary Judgment: Applicant Admittedly Was Not the Owner of the Mark at Filing
Posted on May 13, 2008Applicant Tracy Artman filed an application to register the mark TRACY'S TREATS NATURAL PRODUCTS FOR REMARKABLE SKIN for various soaps and related products. Unfortunately, she admitted in her answer to Opposer's amended notice of opposition that Tracy's Treats, Inc...
Finding PTO Evidence Inadequate, TTAB Reverses 2(a) and 2(d) Refusals of "HEINEKEN" for Meat Juices
Posted on May 12, 2008Canadian Robert V. Marcon has done it again. In March 2008, the Board reversed a Section 2(a) refusal of his application to register L'OREAL PARIS for aloe vera drinks because the PTO failed to prove that the French company of that name "is of sufficient fame or reputation to consumers in the United States" that a false connection would be presumed...
TTAB Overturns PTO Refusal, Finds "LAY'S GET YOUR SMILE ON" to be Unitary Mark
Posted on May 09, 2008Finding that Frito-Lay's mark LAY'S GET YOUR SMILE ON!, as it appears on the specimen of use (shown immediately below) is a unitary mark, the Board reversed the PTO's refusal to register. The Examining Attorney had maintained that the applied-for mark actually consists of two marks, LAY'S and GET YOUR SMILE ON! In re Frito-Lay North America, Inc...
Precedential No. 26: Specimens of Use Display Web Address, Not Service Mark Use
Posted on May 08, 2008Los Angeles lawyer Vicki Roberts lost her case before the TTAB when she appealed the PTO's refusal to register her alleged mark irestmycase (in non-standard character form) for legal services. The Board agreed with Examining Attorney Steven W. Jackson that, as it appears on Applicant's specimens of use, irestmycase fails to function as a service mark under Sections 1, 2, 3, and 45 of the Trademark Act...
"MEET THE BLOGGERS IV" Set for May 19th in Berlin
Posted on May 07, 2008Jeremy Phillips of the IPKat blog has taken the laboring oar in planning MEET THE BLOGGERS IV (or if you prefer, "Treffen Sie die Bloggers IV") for the evening of Monday, May 19, from 8:30 to 10:30 at the top of Potsdamer Platz 1, 10785 Berlin. All are welcome!The first "Meet the Bloggers" was held in San Diego in 2005...
Precedential No. 25: TTAB Affirms Refusal of Mark Having a Phantom Element
Posted on May 06, 2008Finding that Applicant Primo Water's proposed mark [shown immediately below] contains a phantom element ("namely, text and graphic material or a combination thereof that are identical but inverted copies of each other"), the Board affirmed a refusal to register the mark under Section 1(a)(1) and Rule 2...
DC Circuit Rules TTAB Party May Raise New Issues in 21(b) Civil Action for Review
Posted on May 05, 2008The U.S. Court of Appeals for the District of Columbia Circuit has reversed in part a district court ruling in a civil action under Lanham Act Section 21(b), seeking review of the TTAB's decision in Aktieselskabet af 21. November 2001 v. Fame Jeans, Inc...
Have TTAB Judges Been Appointed Unconstitutionally?
Posted on May 01, 2008In a 2007 article (here) in the Patently-O Patent Law Journal, Professor John F. Duffy of George Washington University Law School observes that that there may be a serious problem with the way administrative judges of the Board of Patent Appeals and Interferences have been appointed since the year 2000...
Precedential No. 23: TTAB Affirms Genericness Refusal of "BOND-OST" for Cheese
Posted on April 30, 2008Applicant Noon Hour Food Products, Inc. found itself in an unfortunate position. Its 70-year old registration for the mark BOND-OST for cheese was "inadvertently cancelled" in 2002, and when it applied for a new registration, the PTO refused on the ground of genericness...
Precedential No. 22: Finding a (2)(a) False Connection, TTAB Cancels "TWIGGY" Registration for Clothing
Posted on April 29, 2008Finding that, at the time of Respondent's trademark registration in 2000, the mark TWIGGY pointed uniquely to Petitioner Lesley Hornby a/k/a Twiggy, the Board granted her Section 2(a) petition for cancellation of Respondent's registration for the mark TWIGGY for "clothing, namely, children's pants, tops, slacks, skirts, vests, sweaters, shirts and blouses...
Precedential No. 21: Finding Old "LASALLE" Automobile Mark Abandoned, TTAB Dismisses General Motors' Opposition for Lack of Priority
Posted on April 28, 2008Rejecting the claim of General Motors that it still owns rights in the mark LASALLE, the Board dismissed an opposition to registration of the mark LA SALLE for motor vehicles, including automobiles. Applicant Aristide appeared pro se and neither submitted evidence nor filed a brief, which is usually a formula for disaster at the TTAB...
PTO Proves Wine and Restaurant Services Related, TTAB Affirms 2(d) Refusal of "BRICKSTONE CELLARS"
Posted on April 25, 2008The Board affirmed a Section 2(d) refusal to register the mark BRICKSTONE CELLARS for wine, finding the mark confusingly similar to the registered mark BRICKSTONES for restaurant services. The key issue, of course, was the relatedness of the involved goods and services, and the PTO's evidence won over the Board on that point...
TTAB Finds Toilet Plunger Designs De Jure Functional
Posted on April 24, 2008Applicant George Tash's utility patents and his boastful advertising led to the Board' s finding that the two product designs shown below are de jure functional and unregistrable as trademarks. In addition, assuming arguendo that the designs are not functional, Tash's evidence of acquired distinctiveness was insufficient to show that the designs have become source-identifying...
TTAB Reverses Genericness Refusal of "DIGITAL OILFIELD" for B-to-B E-Commerce Services
Posted on April 22, 2008Genericness refusals must be supported by clear evidence, and the PTO fell short of that standard in its refusal to register, on the Supplemental Register, the mark DIGITAL OILFIELD for various business-to-business e-commerce computer goods and services...
Precedential No. 19: TTAB Finds Stitching Design on Jean Pockets Merely Ornamental
Posted on April 19, 2008The Board affirmed "mere ornamentation" refusals of the three alleged marks shown immediately below (each described as a "stitching design on side-by-side pockets") for jeans and other clothing items, finding that the designs fail to function as trademarks...
TTABlogger Receives Refusable Offer From "Patent Trademark Register"
Posted on April 17, 2008When the registration certificate for THE TTABLOG arrived last month, I expected it to be followed by a shipload of tantalizing offers for framed copies, bronzed copies, t-shirts bearing copies, etc. Here (pdf) is one of the offers that I was able to refuse...
Guest Comment: Pamela Chestek on the TTAB's Bose v. Hexawave Ruling re "Use in Commerce"
Posted on April 16, 2008In an April 9, 2008 ruling (here), the Board denied Opposer Bose Corporation's request for reconsideration of the decision of November 6, 2007 in Bose Corp. v. Hexawave, Inc., Opposition No. 91157315 [not precedential]. [TTABlogged here]. In that decision, the Board found that Bose had committed fraud when it renewed one of its trademark registrations because the alleged use of the subject mark consisted of transporting the goods back to their owners after repair...
Precedential No. 18: TTAB Grants Summary Judgment Against Applicant Enjoined From Use and Registration of His Mark
Posted on April 15, 2008The Board granted summary judgment to Opposer Daimler Chrysler in its Section 2(d) opposition to registration of the mark FORADODGE for various consulting services. Daimler Chrysler argued that it was entitled to judgment under the doctrine of issue preclusion, based upon a federal court judgment in an Anticybersquatting Consumer Protection Act (ACPA) lawsuit against Applicant Keith Maydak...
"CINQUANTE-CINQ" and "55" Confusingly Similar for Wine, Says TTAB, Equivalently
Posted on April 14, 2008There was no equivocation in the Board's application of the doctrine of foreign equivalents to find the mark shown immediately below likely to cause confusion with the registered mark CINQUANTE-CINQ, both for wine. Applicant unsuccessfully argued, based on its interpretation of the CAFC's decision in Palm Bay Imports, Inc...
Finding No Cultural Significance for "HONEYSUCKLE ROSE," TTAB Affirms 2(d) Refusal over "HONEYSUCKLE" For Clothing
Posted on April 11, 2008Rejecting Applicant's contention that its mark HONEYSUCKLE ROSE (slightly stylized) has "cultural significance" that would change its connotation, the Board affirmed a Section 2(d) refusal to register that mark for various clothing items, finding it likely to cause confusion with the mark HONEYSUCKLE & Design (shown below) for clothing...
Precedential No. 17: TTAB Dismisses "SPORTSMAN'S WAREHOUSE" Cancellation Petition, Finding No Likelihood of Confusion and No Fraud
Posted on April 10, 2008In an enervating 49-page decision, the Board tossed overboard a petition for cancellation of a registration for the SPORTSMAN'S WAREHOUSE logo mark [all wording disclaimed] shown immediately below, for retail and wholesale sporting goods store services, finding the mark not likely to cause confusion with Petitioner Bass Pro's registered logo mark BASS PRO SHOPS SPORTSMAN'S WAREHOUSE (shown way below) [SPORTSMAN'S WAREHOUSE disclaimed] for essentially the same retail store services...
PTO Proposes Rule Changes Regarding Express Mail and Certificate of Mailing Filings
Posted on April 09, 2008In a Notice published in the Federal Register on February 29, 2008 (here), the PTO proposes to amend the Trademark Rules of Practice to provide that the procedures for filing trademark correspondence by Express Mail or under a certificate of mailing or transmission do not apply to certain specified documents for which an electronic form is available in the Trademark Electronic Application System (??TEAS??)...
TTAB Reverses Mere Descriptiveness Refusal of "PETIT-PETITE" for Wine
Posted on April 08, 2008Finding that the PTO had failed to carry its burden to show the mark PETIT-PETITE to be merely descriptive of wine, the Board reversed a 2(e)(1) refusal. In re Phillips Farms, LLC, Serial No. 78669171 (March 26, 2008) [not precedential].Syrah grapesThe PTO first squashed Applicant's argument that the case was not ripe for appeal: the subject application was filed under Section (1)(b) and, since a specimen of use had not yet been filed, the PTO incorrectly "conducted a preliminary review and found that the mark PETIT-PETITE is descriptive for wine, all wines, in all market conditions, absent the realities of the mark used in commerce...
Seventh Circuit Vacates Google's Judgment Against Stoller Companies
Posted on April 07, 2008The U.S. Court of Appeals for the Seventh Circuit has vacated the March 15, 2007 judgment entered by the Chicago federal district court in Google's RICO lawsuit against Leo Stoller's companies, Central Mfg. Inc. and Stealth Industries, Inc. The appellate court ruled (here) that the lower court had erred in denying Leo Stoller's motion to intervene (TTABlogged here), and it returned the case to the district court for reconsideration of Stoller's motion...
"REPTILE SAUSAGE" Merely Descriptive of Food for Reptiles, Says TTAB
Posted on April 04, 2008I swear I never sausage a decision. The Board affirmed a Section 2(e)(1) refusal to register the mark REPTILE SAUSAGE, finding it merely descriptive of "food for animals, namely, for meat eating reptiles." In re Natural Balance Pet Foods, Inc., Serial Nos...
Precedential No. 16: Finding the Marks Entirely Different, TTAB Grants Judgment on the Pleadings in 2(d) Opposition
Posted on April 03, 2008Well here's a seldom-used shortcut to victory: a motion for judgment on the pleadings under FRCP 12(c). Applicant P.A.C. Trading Group sought to register the mark PAC BOOSTER THE PERFECT SOUND for car and home audio and video equipment ["BOOSTER THE PERFECT SOUND" disclaimed]...
TTAB Posts April 2008 Hearing Schedule
Posted on April 01, 2008The Trademark Trial and Appeal Board has scheduled four hearings for the month of April, as listed below. The hearings will be held in the East Wing of the Madison Building. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...
TTABlog Quarterly Index: January 2008 - March 2008
Posted on March 31, 2008For those who haven't noticed, e-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feeblitz.Section 2(a) - Deceptiveness:TTAB Affirms 2(a) Deceptiveness Refusal of "MINK BIKINI" for Minkless Clothing Finding "MINK" Deceptive and Deceptively Misdescriptive for Clothing, TTAB Affirms 2(a) and 2(e)(1) RefusalsSection 2(a) - False Connection: TTAB Reverses 2(a) Refusal of "L'OREAL PARIS" for Aloe Vera Drinks: PTO Fails to Show False Connection with French Cosmetics CompanySection 2(d) - Likelihood of Confusion: TTAB Grants 2(d) Summary Judgment: "MEIER'S" and "MEYER VINEYARD" for Wine Confusingly Similar TTAB Finds Design Marks for Motorcycles Confusingly Similar: What Say You? Fame Dominates as TTAB Sustains "PLAYBOY" Opposition to "PLAY BODY" for Clothing Precedential No...
Precedential No. 14: TTAB Again Affirms Genericness of "HOTELS.COM" for ... Guess What?
Posted on March 28, 2008It's déjà vu all over again! [Oops, I said that yesterday.] Anyway, the Board again has affirmed a genericness refusal of HOTELS.COM for "providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network...
USPTO Issues Service Mark Registration for "THE TTABLOG"
Posted on March 19, 2008In case you missed it, on March 18, 2008, the USPTO issued Registration No. 3,398,417 for the mark THE TTABLOG for "An online blog featuring commentary and information in the field of trademarks; an online blog featuring commentary and information regarding decisions of the Trademark Trial and Appeal Board and the courts relating to trademark law...
Precedential No. 10: TTAB Sustains "VITAMILK" 2(d) Opposition, Again Rejects a Morehouse Defense
Posted on March 03, 2008I like to call it the "Toothless Tiger of Trademark Law." Others call it the "Morehouse defense." In this opposition to registration of the mark VITAMILK for "soy beverages, namely, fruit juices and fruit drinks made with soy," the Morehouse defense failed again...
Precedential No. 9: TTAB Issues Non-Ultimate Sanctions for Failure To Comply With Board Order Compelling Document Production
Posted on February 29, 2008In another precedential discovery ruling (the third of 2008), the Board issued sanctions against M.C.I. Foods, Inc. for failure to produce documents as required by the Board's discovery orders, but stopped short of issuing judgment against the offender...
Unfriendly Shores? Recent Developments in U.S. Law May Trouble Foreign Trademark Owners
Posted on February 25, 2008by John L. Welch and Ann Lamport HammitteLowrie, Lando & Anastasi, LLPForeign trademark owners who seek registration in the United States may be troubled by several recent developments in American trademark law. The Trademark Trial and Appeal Board?s current fraud jurisprudence holds an applicant or registrant strictly responsible for false statements made to the United States Patent and Trademark Office (USPTO) regarding use of its mark on the goods and services involved, with very little room for error or innocence...
Precedential No. 8: Applicant Fails to Prove Acquired Distinctiveness for Sunglass Frame Product Design
Posted on February 22, 2008The Board affirmed a refusal to register the product configuration mark shown below for "spectacles, sunglasses," finding that Applicant had failed to prove acquired distinctiveness. The alleged mark comprised three "fingers" located near the earpiece hinge and resembles an "asymmetrical fork...
Precedential No. 7: TTAB Dismisses 2(d) and Dilution Opposition for Lack of Evidence and Inadequate Pleading
Posted on February 21, 2008Opposer Demon International had a devil of a time in this Section 2(d)/dilution opposition proceeding. It failed to properly plead the dilution claim and it put in no evidence to establish standing or priority on its likelihood of confusion claim. So it lost...
TTAB Dubiously Finds "SOCK-UM" for a Parlor Game Confusingly Similar to "ROCK'EM SOCK'EM ROBOTS" for Action Games
Posted on February 15, 2008In what it readily acknowledged was a "close case," the Board sustained a Section 2(d) opposition brought by Mattel, Inc. against registration of the mark SOCK-UM for a "game where a labeled mat is placed on the ground or floor, participants position themselves on the mat and volley a sock back and forth from one half of the mat to the other half of the mat...
TTAB Dismisses Opposition to Bottle Shape Trademark: Opposer Failed to Prove Functionality
Posted on February 14, 2008Applying the CCPA's Morton-Norwich analysis, the Board dismissed an opposition to registration of the product configuration mark shown below for "plastic water bottle, sold empty," rejecting Opposer's claim that the design is de jure functional. Opposer also pleaded, but failed to pursue, the issue of acquired distinctiveness...
TTAB Reverses 2(d) Refusal: "ROYALE" for Camping Trailers Not Confusingly Similar to "ROYAL CARGO" for Cargo Trailers
Posted on February 13, 2008In late October 2007, the TTAB came to Boston for a conference at Suffolk Law School, where it heard the final arguments in In re Fleetwood Enterprises, Inc., Serial No. 78579524 (February 2, 2008) [not precedential]. After the argument, a straw poll of attendees indicated that they were virtually unanimous in expecting the Applicant to prevail...
Precedential No. 67 (2007): Finding Two-Days' Notice Insufficient, TTAB Strikes Opposer's Testimony and Dismisses Opposition
Posted on February 12, 2008One just never knows when a precedential interlocutory ruling of the TTAB may explode in the firmament. The Board does not include interlocutory decision in its database of decision (only final decisions), and so once in a while one of these interlocutories suddenly and unexpectedly appears...
Precedential No. 5: TTAB Dismisses Opposition for Opposer's Failure to Serve Prior to Filing
Posted on February 11, 2008I'll bet the Board was just waiting for this to happen: an opposer failed to follow the new TTAB rules (effective Nov. 1, 2007) that require service of a Notice of Opposition on the applicant prior to filing. See Rules 2.101(a) and 2.101(d)(4). The opposition was dismissed as a nullity...
Precedential No. 4: TTAB Affirms Triple Refusal of "NORMANDIE CAMEMBERT" for Cheese
Posted on February 08, 2008Applicant Cheezhwse.com, which lost the NAPOLEON BRIE case last October (TTABlogged here), racked up another "L" before the TTAB. This time it hit the TTAB trifecta when the Board affirmed three refusals to register the mark NORMANDIE CAMEMBERT for cheese...
Precedential No. 3: NFL Thrown for a Loss as TTAB Denies Request to Extend Discovery
Posted on February 07, 2008Some people think the NFL is overly aggressive in enforcing its trademark rights. Will its institution of this case bolster that impression? The NFL is opposing (on 2(a), 2(d), and dilution grounds) the mark shown below left, for motorcycle fender side cover panels, based upon the League's ownership of the mark shown on the right, for football services, clothing, and various other goods...
Precedential No. 2: TTAB Issues Sanctions For Discovery Abuses
Posted on February 06, 2008Whenever the TTAB issues a precedential decision, I try to discern what point the Board is trying to make. In this, the second precedential decision of 2008, the message I get is this: don't mess with Interlocutory Attorney Andrew Baxley. Opposer HighBeam Marketing learned that lesson the hard way when it failed to comply with a Board order compelling additional discovery responses...
TTAB Finds "HERBAL REPUBLIC" and "THE REPUBLIC OF TEA" Confusingly Similar for Tea
Posted on February 05, 2008Some say a trademark registration is like a tea bag: you don't know how strong it is until you put it in hot water. The registration of HERBAL REPUBLIC (in the stylized form shown below) for tea, herbal teas, and other tea-related products proved to be not very strong...
"AMERICAN MASALA" Geographically Descriptive of Food Products, Says TTAB
Posted on February 04, 2008The TTAB found unsatisfactory the recipe offered by author and Chef Suvir Saran for registration of the mark AMERICAN MASALA for various food items and for restaurant services [MASALA disclaimed]. The Board affirmed the PTO's Section 2(e)(2) refusal because the mark is primarily geographically descriptive...
TTAB Posts February 2008 Hearing Schedule
Posted on February 01, 2008The Trademark Trial and Appeal Board has scheduled six hearings for the month of February, as listed below. The hearings will be held in the East Wing of the Madison Building. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...
TTAB Dimisses 2(d) Opposition for Lack of Evidence: Opposer's Notice of Reliance Mailed to Wrong PTO Address
Posted on January 31, 2008Another Section 2(d) opposition when off the track when an opposer failed to submit evidence properly into the record. Here, Opposer El Dorado Park Self Service attempted to file a Notice of Reliance, but mailed it to the old PTO address in Arlington, Virginia, rather than the new address in Alexandria...
Mesmerized by Fame of "VANITY FAIR" Mark, TTAB Sustains 2(d) Opposition to "VANITY INSANITY" for Clothing
Posted on January 30, 2008Here's the scenario: famous mark holder versus pro se applicant in a TTAB 2(d) opposition. Take a guess as to who wins? Not Applicant Kelly C. Hainline. Like the lady who backed into the airplane propeller, it was "dis-as-ter" when she tried to register the marks VANITY INSANITY, VANITY & SANITY, and VANITY N SANITY for clothing and athletic apparel...
Precedential No. 1: TTAB Reverses Mere Descriptiveness Refusal of "SUGAR No. 11" For Futures Exchange Services and Finds Specimen of Use Acceptable
Posted on January 29, 2008In its first precedential decision of 2008, and an unusually dull ruling at that, the Board reversed the PTO's Section 2(e)(1) refusals to register the marks SUGAR NO. 1 1 , SUGAR NO. 14, and COTTON NO. 2 [SUGAR and COTTON disclaimed], finding the marks not merely descriptive of "financial services, namely, futures exchange and related commodity trading services...
PTO Letters of Protest: Is "CYBERLAW" Registrable?
Posted on January 28, 2008In Blawg Review #144, Kevin A. Thompson reports that a Washington, D.C. lawyer named Eric Menhart has filed an application to register the term CYBERLAW as a service mark for various legal services (Serial No. 77341910). Mr. Menhart has been so bold as to send a cease-and-desist letter to another blogger...
TTAB Reverses Oranamental Refusal of Embossed Design on Tire; PTO Fails to Make Prima Facie Case
Posted on January 28, 2008The Board reversed an "ornamental" refusal to register the design mark shown below for vehicle tires, finding that the PTO Examining Attorney had failed to make a prima facie case that the mark is merely ornamental and does not function as a trademark (Sections 1, 2, and 45 of the Trademark Act)...
Finding Acquired Distinctiveness and Substantial Exclusivity Lacking, TTAB Cancels Registration for the Color Gold for Fluorescent Lamps
Posted on January 25, 2008In a rare "color" case, the Board granted the consolidated petitions of three companies for cancellation of the registration for a mark comprising the single color gold applied to the end caps of fluorescent lamps. It ruled that the subject mark had not acquired distinctiveness under Section 2(f) and that Respondent's use of the mark had not been substantially exclusive...
TTAB Rule of Thumb: Introduce No Evidence, Lose Your Opposition
Posted on January 24, 2008One may safely posit the following rule: an Opposer who fails to introduce evidence will lose at the TTAB. Healix Infusion Therapy, Inc. fell victim to that rule in its opposition to registration of the mark HELIX for computer software in the healthcare field...
The Ten Worst TTAB Decisions of 2007? [Part 2 of 2]
Posted on January 23, 2008Here for your reading pleasure is the second batch of the "ten worst" Board decisions of last year. The first five were TTABlogged here yesterday. As you read these postings, please bear in mind that it takes a skilled carpenter to build a barn, but any jackass can knock it down...
The Ten Worst TTAB Decisions of 2007? [Part 1 of 2]
Posted on January 22, 2008Every year, as a prologue to the "10 Worst" list, I remind readers that no one is perfect, not even yours truly. After all, Babe Ruth failed to hit safely 65% of the time and Michael Jordan missed about half his shots. So is it any wonder that, out of the 500 or so final decisions issued by the TTAB in 2007, there were a few that were "off the mark," so to speak? I list below what I consider to be the Board's ten worst decisions of last year...
TTAB Finds "OLD TIMER" and "OLD TIMERS' HOCKEY CHALLENGE" for Clothing Too Dissimilar, Reverses 2(d) Refusal
Posted on January 18, 2008Old Timers games are usually slow, dragged-out affairs, but that's not the case if Judge Grendel is the referee. His six-page decision brought a quick and successful conclusion to the appeal of Taylor Brands from the PTO's Section 2(d) refusal of the mark OLD TIMER for various outdoor apparel items...
TTABlog Flotsam and Jetsam: Issue No. 11
Posted on January 17, 2008It's been more than 18 months since the last "Flotsam and Jetsam" posting. But with a temporary lull in the Board's issuance of decisions, now is a good time to catch up on a few recent, newsworthy items.TTAB's ACR Program: Bill Heinze, at his I/P Updates blog, reports here on the TTAB's new "Accelerated Case Resolution" (ACR) program, which offers parties the chance to streamline the inter partes process so that the Board may render a final decision on what is largely a stipulated record...
The Top Ten TTAB Decisions of 2007® [Part 2 of 2]
Posted on January 16, 2008In Part 1 of this posting, which appeared here yesterday, the TTABlog presented half (or maybe six-elevenths) of the Top Ten TTAB Decisions of 2007. The remaining five are summarized below. The decisions are not necessarily listed in order of importance, although they may be...
The Top Ten TTAB Decisions of 2007® [Part 1 of 2]
Posted on January 15, 2008The TTAB issued 500 or so final decisions in 2007, as well as numerous interlocutory rulings. Sixty-six of its decisions and rulings were deemed precedential (listed in yesterday's posting here). Once again, yours truly has unabashedly chosen the ten decisions that he believes are the year's most important and/or interesting...
TTAB Issued 66 Precedential Decisions in 2007
Posted on January 14, 2008The TTAB issued 66 precedential decision in calendar 2007, topping last year's total by nine. Set out below is a compilation of those precedential rulings, categorized according to subject matter. [The accompanying photographs were taken in the vicinity of my office; they are not meant as commentary on the Board or its decisions, precedential or otherwise...
TTABlog Hat Tip: Two Blog Anniversaries
Posted on January 14, 2008Here's a tip of the fedora to trademark blogger Ron Coleman, whose Likelihood of Confusion blog has reached its third anniversary. I just wish I could write as well as Ron. And kudos to Marc Randazza. His consistently entertaining and enlightening The Legal Satyricon blog recently celebrated its first birthday...
TTAB Finds "FYBY" for Silkscreening Services Confusingly Similar to "FUBU" Clothing Mark
Posted on January 11, 2008Another pro se trademark crusader kicked the TTABucket in his lonely quest for the Holy Grail of trademark registration. The Board deep-sixed the application of Guy R. Wilson, Jr., of Hoschton, Georgia, to register the mark shown immediately below, for "silk screen painting on clothing...
"LEGSTICK" Confusingly Similar to Famous "L'EGGS" Mark for Hosiery, Says TTAB
Posted on January 10, 2008Essentially ruling that Applicant Amine Mahmoud had no leg to stand on, the Board sustained a Section 2(d) opposition to registration of the mark LEGSTICK for various clothing items, including hosiery and panty hose. It found the mark likely to cause confusion with the famous mark L'EGGS, registered and previously used for hosiery and panty hose...
Deeming "CREATINE-D2T" a Unitary Mark, TTAB Dimisses Opposition Demanding Disclaimer of "CREATINE"
Posted on January 09, 2008In a rather unusual inter partes case, the Board dismissed on summary judgment an opposition to registration of the mark CREATINE-D2T for dietary supplements, rejecting Opposer's assertion that the term CREATINE must be disclaimed. Ultimate Nutrition, Inc...
Sophisticated Purchasers, Differences in Financial Services Lead TTAB to Reverse 2(d) Refusal of "BRIDGER CAPITAL" over "BRIDGER COMMERCIAL FUNDING"
Posted on January 08, 2008"Notwithstanding the similarities between the marks, the significant differences between the nature of the services [together with] the high level of sophistication of purchasers tip the scales in favor of a finding of no likelihood of confusion." That's the reason the Board reversed a Section 2(d) refusal of the mark BRIDGER CAPITAL for "hedge fund services for high-net-worth investors" [CAPITAL disclaimed]...
TTAB Rejects Parody Claim; Finds "IVY LEAGRO" Confusingly Similar to Famous "IVY LEAGUE" Marks
Posted on January 07, 2008Boola Boola! The Council of Ivy Group Presidents frustrated Brown graduate Robert R. L. Gray in his attempt to register the mark IVY LEAGRO for goods in classes 16 (printed publications) and 25 (clothing), and for information services in the field of education (class 41)...
TTAB Cancels "FEBAL USA" Registrations Obtained Fraudulently for U.S. Distributor
Posted on January 04, 2008Mariner Ventures, Inc. committed fraud in the procurement of two registrations for the mark FEBAL USA for furniture because it knew that it was not the owner of the marks when it applied for registration. The Board therefore granted the petitions for cancellation filed by the Italian manufacturer...
"KIDS INN" and "CHILDREN'S INN" Confusingly Similar, At Least According to the TTAB
Posted on January 03, 2008Vinod Bhandari must have thought he was home free when he convinced the TTAB in 1999 to reverse a Section 2(d) refusal of his application to register the mark KIDS INN for hotel, motel, and restaurant services. The PTO had refused registration on the ground of likelihood of confusion with the registered mark CHILDREN'S INN, owned by NIH, for "lodging services for use of children and their families who are patients at NIH," but the Board found the likelihood of confusion to be de minimis...
Fourth Circuit Rules that Foreign Company Must Appear in the USA for TTAB Testimony Pursuant to E.D.Va. Subpoena
Posted on January 02, 2008In a surprising and dubious decision, a divided panel of the U.S Court of Appeals for the Fourth Circuit has ruled that a foreign corporation must obey a subpoena issued by the U.S. District Court for the Eastern District of Virginia, pursuant to a Rule 30(b)(6) notice in a TTAB proceeding, and must appear in Virginia to give trial testimony...
TTAB Posts January 2008 Hearing Schedule
Posted on January 01, 2008The Trademark Trial and Appeal Board has scheduled three hearings for the month of January, as listed below. The hearings will be held in the East Wing of the Madison Building. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...
TTABlog Quarterly Index: October - December 2007
Posted on December 31, 2007This past quarter saw many of the TTAB Rule changes go into effect, although reportedly the first discovery conference with Board participation will not occur until January 2008. The flow of decisions from the TTAB seemed to slow in the fourth quarter, perhaps because the Board was focusing on getting ready for implementation of the new Rules package...
TTAB Affirms 2(e)(3) Refusal of "FRENCH & FLIRTY" as Primarily Geographically Deceptively Misdescriptive of Lingerie
Posted on December 28, 2007Rejecting Applicant's flimsy assertions that "French" means "sexy" and that purchasers buy lingerie based on "look and feel" rather than geographic origin, the Board found the mark FRENCH & FLIRTY to be primarily geographically deceptively misdescriptive for lingerie...
Reversing Disclaimer Requirements, TTAB Finds "STEELBUILDING.COM" Has Acquired Distinctiveness for On-Line Building Sales
Posted on December 27, 2007The Board reversed a refusal to register the marks STEELBUILDING.COM & Design (shown immediately below) and STEELBUILDING.COM THE FUTURE OF METAL BUILDINGS [METAL BUILDINGS disclaimed] for "computerized on-line retail services in the field of pre-engineered steel buildings and roofing systems...
Foreign Manufacturer, Not US Distributor, Owns "NITRO" Marks for Helmets, Says TTAB
Posted on December 26, 2007In a battle over the marks NITRO and NITRO RACING for motorcycle helmets and protective clothing, the Board ruled in favor of Opposer/Petitioner Lloyd Lifestyle in finding that Applicant/Registrant Soaring Helmet was not the owner of the marks at the time it applied for registration...
New York Court of Appeals Says Yes and No to "Famous Marks" Doctrine
Posted on December 24, 2007In its March 28, 2007 decision, the United States Court of Appeals for the Second Circuit held that the Lanham Act cannot be read to include a "famous marks" exception. (TTABlogged here). The court certified to the New York State Court of Appeals the question of whether New York common law recognizes the doctrine...
TTAB Dismisses 2(d) "INSPIRATION" Opposition: Marks Dissimilar, Goods/Services Unrelated
Posted on December 21, 2007It took a mere six pages for the Board to render its decision in Inspiration Software, Inc. v. Correales, Opposition No. 91164064 (December 12, 1007) [not precedential]. It found Applicant's mark PARENTS INSPIRATION INSTITUTE for educational services in the field of parenting [PARENTS and INSTITUTE disclaimed] not likely to cause confusion with Opposer's registered mark INSPIRATION for "computer programs in the field of idea development through visual diagramming, outlining and text creation" and "computer education training...
Recommended Reading: "An Introduction to the New Trademark Trial and Appeal Board Rules"
Posted on December 20, 2007In their Trademark Reporter article entitled "An Introduction to the New Trademark Trial and Appeal Board Rules" (pdf here), James R. Robinson and Kathleen E. McCarthy provide a useful summary of the new TTAB rules, with commentary on some of the decisions that practitioners will face in practicing under the new regime...
"B.V.D." and "DVD EMPIRE" Confusingly Similar for Clothing? No Way!
Posted on December 19, 2007Way! The Board sustained a Section 2(d) opposition to registration of the mark DVD EMPIRE for shirts, finding it likely to cause confusion with the marks B.V.D. and BVD, registered for underwear, t-shirts, shirts, and shorts. B.V.D. Licensing Corp. v...
Precedential No. 66: TTAB Finds "YOSEMITE BEER" Geographically Descriptive, Affirms 2(e)(2) Refusal
Posted on December 18, 2007Merced, California is 80 miles from Yosemite National Park, but that was not far enough for Applicant Spirits of New Merced to avoid the Board's ruling that the mark YOSEMITE BEER is primarily geographically descriptive for alcoholic beer [BEER disclaimed]...
Recommended Reading: Scot Duvall on the The Trademark Dilution Revision Act of 2006
Posted on December 17, 2007Scot Duvall has provided his enlightening commentary on the TDRA in an article in the latest issue of The Trademark Reporter, entitled "The Trademark Dilution Revision Act of 2006: Balanced Protection for Famous Brands." (download pdf here). Scot represented Petitioner Moseley in the landmark Moseley v...
USPTO Issues Annual Report for Fiscal 2007
Posted on December 14, 2007In case you missed it, on November 15, 2007, the USPTO issued its Performance and Accountability Report for Fiscal Year 2007 (downloadable here). The Report states that "Our Trademark organization continued to demonstrate excellence today and outstanding planning for tomorrow...
TTAB Affirms Refusal to Allow Amendment of "SILENT FIREMAN" to "YOUR SILENT FIREMAN"
Posted on December 13, 2007The Board affirmed the PTO's refusal to register the mark SILENT FIREMAN for flame retardant goods and fire prevention inspection services, because the mark in the drawing (i.e., the word mark SILENT FIREMAN) is not an exact representation of the mark in the specimens of use...
Recommended Reading: Ted Davis on "Trade Dress Protection for Product Designs"
Posted on December 12, 2007Ted Davis gave an excellent presentation on "Trade Dress Protection for Product Designs" at IPO's PTO Day Seminar last week. He has graciously allowed me to provide a link to his article (here). Trademark practitioners know that when Ted speaks, they should listen...
#1 Online Legal Resource
On 08-28 at 21:13PM
Ten months later, Fed must reveal names of emergency lending recipients #FOIA
On 08-25 at 19:02PM
Squeaky Fromme, would-be Ford assassin and Manson devotee, released from prison
On 08-14 at 15:19PM
Likely unintended consequence of cash-for-clunkers stimulus is dampening of 2010 spending
On 08-14 at 14:34PM
Palm seeks to halt Palm Pre Android theme on copyright and trademark ground
On 08-12 at 17:30PM
Congressional investigation demonstrates Karl Rove lied about his active role in US attorney's firing
On 08-12 at 16:20PM
Family of New York City swine flu victim to sue city for failure to secure school #nyc #swineflu
On 08-12 at 12:59PM
Real Network's DVD copying software deemed to break DMCA's anti-circumvention provisions
On 08-12 at 12:57PM
Prepaid funeral operators indicted for $100 Million fraud
On 08-12 at 12:53PM
NY Jets join Cincinnati, Dallas, Green Bay, Houston & Seattle #NFL teams offering branded state lottery games
On 08-12 at 12:43PM
Are you the author of this blog? Adding USLaw.com to your Blogroll increases relevance. You qualify to display a USLaw Network badge.
Suggest changes to this blog's description or nominate another for inclusion. Register for updates.
 |
|
Contact Us | About Us | Celebrity Law Blog |
Our Partners | Disclaimer
| Law Blog Directory
| Law Jobs
| Law Tweets
| GoDaddy Hosting
All original material © 1999-2009 by USLaw.com. |