Intellectual Property Law

Brand Geek: Censorship at the INTA

Posted on January 10, 2011
Lara Pearson, at her Brand Geek blog, provides some thought-provoking commentary (here) on INTA's decision to pull the plug on the popular TM TOPICS listserv, in her recent posting entitled "Censorship at the INTA."Lara notes that Carl Oppedahl of Oppedahl Patent Law Firm (?OPLF?) has expanded his firm?s E-Trademarks List to replace TM Topics:As the sponsor of the E-Trademarks-L listserv, we at OPLF are broadening the charter of the listserv to embrace the areas previously served by the TMTopics listserv...

Serge Krimnus, "The Doctrine of Foreign Equivalents at Death's Door"

Posted on January 07, 2011
Serge Krimnus, Adjunct Assistant Professor of Law at Brooklyn Law School, tries to make some sense of the doctrine of foreign equivalents in his recent article, "The Doctrine of Foreign Equivalents at Death's Door," North Carolina Journal of Law & Technology, Vol...

Which Law Firms Filed the Most Oppositions in 2010?

Posted on January 07, 2011
Which law firm filed the most oppositions in 2010? [Well, let's see .... Who represents Major League Baseball?] The folks at Towergate Software have compiled a list of the top 15 filers (here). ["Click on the [+] to expand each firm to show all plaintiffs and case links...

TTABlog Tweets and Re-Tweets

Posted on January 07, 2011
If you are not a Twitter subscriber, you missed these recent TTABlog tweets and re-tweets:RT @_INTA: New INTA website goes live - http://bit.ly/elXxKK - Still waiting for my picture and TTABlog logo to appear.RT @LexisNexis: Top 10 Trademark Cases for the Month of December 2010 http://bit...

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Test Your TTAB Judge-Ability: Must "SERVICE CREW" be Disclaimed for Retail Store Services?

Posted on January 06, 2011
When Sears sought to register the mark SEARS BLUE SERVICE CREW in standard character form, for "retail department store services; retail store services featuring appliances, electronics, lawn and garden equipment," the Examining Attorney required a disclaimer of SERVICE CREW...

TTAB Posts January 2011 Hearing Schedule

Posted on January 04, 2011
The Trademark Trial and Appeal Board has scheduled five (5) oral hearings for the month of January, 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)]...

P. Diddy Wins TTAB Summary Judgment Over "IDIDDY" For Headphones Due to Non-Use

Posted on January 04, 2011
Record producer, rapper, actor, and fashion designer Sean Puffy Combs a/k/a P. Diddy shellacked Applicant Pacific Rim in an opposition to registration of the mark IDIDDY for "headphones and cases specifically adopted for MP3 players, cell phones and video disc players...

7th Circuit Rules That Sovereign Immunity Shields State from TM Infringement Counterclaim in Action for Review of TTAB Decision

Posted on January 03, 2011
On December 28, 2010, in an 85-page opinion, the U.S. Court of Appeals for the Seventh Circuit reversed in part a federal district court's entry of summary judgment, in an appeal by way of civil action from the TTAB's cancellation of the University of Wisconsin's registration for the mark CONDOR for certain software...

TTABlog Quarterly Index: October-December 2010

Posted on January 03, 2011
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. You may also follow the blog on Twitter (here). And don't forget to leave your comments! Finally, please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at lalaw...

TTABlog Podcast: Trademark Fraud ? The Impact of In re Bose on Trademark Owners, Practitioners, and the USPTO

Posted on December 31, 2010
My colleague and friend, Peter Lando, invited me as a guest on his Legal Talk Network program called IP Counsel, to discuss the Bose decision and some of its ramifications. [One thing we proved is that I have a voice for blogging.] Anyway, the podcast may be found here...

TTAB Reverses Refusal to Register Weldebrau Beer Bottle Design, Finding it Inherently Distinctive

Posted on December 31, 2010
Applying the CCPA's Seabrook test for product packaging, the Board reversed a refusal to register the bottle design shown below as a trademark for beers and other beverages, finding the design to be inherently distinctive. It ruled that the design is not a "common" basic shape, that it is "unique and unusual" in its field, that it is not a mere refinement of commonly-adopted trade dress, and that consumers would perceive and rely on the bottle design as an indicator of source...

Precedential No. 47: TTAB Dismisses Opposition for Lack of Standing, Finds No Excusable Neglect Warranting Re-Opening of Case

Posted on December 30, 2010
Pro se Opposer Prakash Melwani was shown a quick exit by the TTAB in his opposition to registration of the mark ROYALSILK for "nonwoven medical gowns and non-woven surgical drapes." Melwani asserted that he mistakenly thought the case was suspended when Applicant Allegiance included in its answer a motion to strike one of his claims, and so he submitted no evidence or testimony during his trial period...

INTA's TM Topics Email List: If It Ain't Broke, Don't Fix It

Posted on December 29, 2010
My friend Lara Pearson, who recently started her own blog called Brand Geek, sent out an email on Monday concerning INTA's plan to move the popular and informative TM Topics list serv to a private platform. Seems like a bad idea to me. Lara explains below...

Test Your TTAB Judge-Ability: Are "B.C. PIZZA" and "B&C PIZZA" Confusingly Similar?

Posted on December 28, 2010
Applicant sought to register the mark B.C. PIZZA for "dine in and carry out services featuring pizza and other Italian related cuisine and drinks," but pro se Opposer Satek, Inc. claimed likely confusion with its registered mark B&C PIZZA for restaurant services...

PTO Announces Change to TEAS e-Signature Approach

Posted on December 27, 2010
Here's a bit of inside baseball to perk up your week. On or about January 22, 2011, the United States Patent and Trademark Office (USPTO) will introduce a new approach for the e-signature process of the Trademark Electronic Application System (TEAS). See details here...

TTABlog Tweets and Re-Tweets

Posted on December 24, 2010
If you are not a Twitter subscriber, you missed these recent TTABlog tweets and re-tweets:RT @rtushnet Today's false endorsement problem: This product is available at Barnes & Noble. While it doesn't use any US Arm... http://bit.ly/e7CxsBRT @uspto Today is the official federal holiday for Christmas - the Patent and Trademark Office is closed - http://ow...

Subscribe to USPTO E-mail News Updates

Posted on December 24, 2010
Subscribe here to the USPTO email news updates listed below. More details here.Inventor's EyeInventor's Eye is for and about America?s independent and small entity inventor community. Inventor's Eye comes out every other month. Each issue will feature information you can use, tips on working with the USPTO; events; organizations and meetings of interest to the community; issues that impact independent and small entity inventors; and stories about people like you who have become successful inventors...

TTAB Affirms Refusal of "MTS TESTSUITE" - Applicant Failed to Comply with Disclaimer Requirement

Posted on December 23, 2010
Applicant MTS Systems put up a good battle but lost this disclaimer war. The Board affirmed a refusal to register the mark MTS TESTSUITE under Section 6(a) because MTS refused to disclaim the term "TESTSUITE." The Examining Attorney maintained that TESTSUITE is merely descriptive for MTS's goods: software for controlling equipment, which software "performs data analysis and generates reports about a physical specimen...

Baja Humbug? Affirming 2(d) Refusal, TTAB Finds Confusion Likely Between "BAJA" for Camping Trailers and Automobiles

Posted on December 22, 2010
Applicant Jayco, Inc. will have a bluer Christmas after the TTAB affirmed a Section 2(d) refusal of the mark BAJA for "recreational vehicles, namely, folding camping trailers," finding it likely to cause confusion with the identical mark registered for "automobiles and structural parts therefore [sic!]...

Test Your TTAB Judge-Ability: Are "CORVOLTTE" and "CORVETTE" Confusingly Similar for Automobiles?

Posted on December 21, 2010
Pro se Applicant Jim M. Sweeney sought to register the mark CORVOLTTE for "electric vehicles, namely, automobiles," but General Motors opposed, claiming likelihood of confusion with its mark CORVETTE for automobiles. GM failed to provide proof of the fame of its mark and also failed to submit properly its registration for CORVETTE for automobiles...

Fraud? TTAB Denies Another Summary Judgment Motion as Defendant Claims Innocence, Non-Falsity

Posted on December 20, 2010
In the fifteen months since the CAFC's decision in Bose, the TTAB has yet to find fraud. Moreover, given the subjective nature of the "intent" issue, the chances of the Board finding fraud on summary judgment are very slim to nil. Witness the Board's interlocutory ruling in this proceeding, in which Petitioner Factory Mutual seeks to cancel a registration for the F & Design mark shown to the right, for metal fasteners, claiming ownership of ten registrations for eight different certification marks (including the five design marks shown below) relating to product safety and testing services for manufacturers...

Frivilous Fraud Claims: A Suggested Sanction

Posted on December 17, 2010
I've run into several frivolous fraud claims recently, which led me to wonder whether the Board should issue some kind of sanction against attorneys and parties that make such bogus allegations. Of course, monetary sanctions are not possible, but mere dismissal of the fraud claim seems not enough...

Transcript of September 2, 2010 TPAC Meeting Now Available

Posted on December 17, 2010
The transcript of the September 2, 2010 meeting of the Trademark Public Advisory Committee (TPAC) is available here. The comments of TTAB Acting Chief Judge Gerard F. Rogers begin at page 129. Erik Pelton provided his summary of those comments here.Erik's report on the November 23, 2o1o TPAC meeting may be found here...

TTAB Says Nevermind to Abandonment Claim in "NIRVANA" Bottled Water Cancellation

Posted on December 15, 2010
The Board denied a petition for cancellation of a registration for the mark NIRVANA for "bottled natural spring water," finding that Petitioner failed to prove its abandonment claim. Respondent did not submit any evidence or file a brief, but it was Petitioner's burden to prove either outright abandonment, or nonuse for three consecutive years to invoke the statutory presumption of abandonment, failing which Respondent bears no burden of proving use or intent to resume use...

TTAB Finds "ROC USA" to be Primarily Geographically Descriptive but Registrable Under Section 2(f)

Posted on December 15, 2010
In a real snoozer, the Board reversed two refusals to register the mark ROC USA in standard character form [USA disclaimed], finding it primarily geographically descriptive of Applicant's various services relating to resident-owned communities, but further finding the mark registrable in light of Applicant's evidence of acquired distinctiveness under Section 2(f)...

Precedential No. 46: Applicant Lacked Bona Fide Intent, TTAB Sustains "AQUAJETT" Opposition

Posted on December 14, 2010
Finding that Applicant lacked a bona fide intent to use its mark in commerce, the Board sustained an opposition to registration of AQUAJETT for "dental instruments, namely, oral irrigators." Applicant had no documentation to demonstrate the requisite bona fide intent, and neither its filing of a trademark application nor its "mere statement" that it intended to use the mark was probative evidence...

Presidential No. 44: In Rare Section 2(c) Ruling, TTAB Affirms Refusal of "OBAMA BAHAMA PAJAMAS"

Posted on December 13, 2010
Rejecting Attorney Richard M. Hoefflin's lame arguments, the TTAB affirmed a Section 2(c) refusal to register the marks OBAMA BAHAMA PAJAMAS, OBAMA PAJAMA, and BARACK'S JOCKS DRESS TO THE LEFT for pajamas and briefs, because the record did not include the written consent of President Barack Obama, the living individual identified in the marks...

Precedential No. 45: TTAB Finds "NANDRIVE" Generic for Electronic Integrated Circuits

Posted on December 10, 2010
In yet another genericness case, the Board affirmed a refusal to register the term NANDRIVE, finding it generic for "electronic integrated circuits." Alternatively, it found the term to be merely descriptive and lacking in acquired distinctiveness. In re Greenliant Systems, Ltd...

"FIRSTAIDE" Generic for Bandages and Kits, Says TTAB, Affirmingly

Posted on December 09, 2010
Perhaps Dr. Joseph Smith would like a second opinion, after the Board affirmed a genericness refusal of the term FIRSTAIDE for adhesive bandages, first aid kits, and various medical items. Alternatively, the Board found the term to be merely descriptiveness and lacking in acquired distinctiveness...

Finding USPS Blue Mailbox Famous, TTAB Sustains 2(d) and 2(a) Opposition

Posted on December 08, 2010
The fame of the United States Postal Service's blue collection box design mark carried the USPS to victory in this Section 2(d) and 2(a) opposition. The Board found Applicant's mark (shown immediately below) for key return services and related goods, likely to cause confusion with the USPS mark and like to create a false association with the USPS...

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