Intellectual Property Law

Test Your TTAB Judge-Ability on these Two Service Mark Specimens of Use

Posted on December 07, 2010
Examining Attorney Ira Goodsaid rejected two specimens of use, one for brick-and-mortar retail clothing store services, and the other for online retail clothing store services. Let's see if you agree with him. Applicant's specimen for its mark AERIE UNDIES IN A BUNCH for retail clothing store services comprised a photograph of a sign on a table in a store (immediately below)...

TTAB Reverses 2(a) Scandalousness Refusal of "BIG EFFIN GARAGE" for Music Website

Posted on December 06, 2010
Although the evidence of record supported a finding that ?effin? and ?f?n? are used as substitutes for the offensive term ?fucking,? the evidence also indicated that these derivative terms are utilized as a substitute for "fucking" precisely because they are less offensive...

Precedential No. 43: TTAB Reverses Genericness Refusal of "THUMBDRIVE" for Portable Storage Devices

Posted on December 03, 2010
Ruling that the USPTO failed to meet its burden to provide clear evidence that THUMBDRIVE is generic, the Board reversed a refusal to register the mark for portable digital electronic storage devices. The record included "both trademark and generic uses [and] evidence of lack of competitor use," which at a minimum created "doubt sufficient to tip the balance in favor of registration...

Precedential No. 42: TTAB Affirms Refusal to Register Shape of Chevron's "Pole Spanner Sign" as Non-Distinctive

Posted on December 02, 2010
A punster might say that Chevron simply ran out of gas in its attempt to register the shape of its "pole spanner sign" (shown below) for "vehicle service station services and automobile maintenance and repair services." The Board agreed with Examining Attorney Odessa Bibbins that the design comprises non-distinctive trade dress that has not acquired distinctiveness...

To access this complete feed in the blog feed reader login or register for free.

TTAB Posts December 2010 Hearing Schedule

Posted on December 01, 2010
The Trademark Trial and Appeal Board has scheduled six (6) oral hearings for the month of December, 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 Tweets and Re-Tweets

Posted on November 30, 2010
If you are not a Twitter subscriber, you missed these recent TTABlog tweets and re-tweets:RT @pchestek: Ninth Circuit ignores the law, decides naked licensing case http://bit.ly/hB5RKL You can see trademarks in my film: Is that okay? - Dear Rich: Nolo?s Patent, Copyright & Trademark Blog http://t...

TTABlog Named to ABA Journal Blawg 100

Posted on November 30, 2010
That ABA Journal has selected the TTABlog as "one of the top 100 best law blogs by lawyers, for lawyers." I kid you not. The blogs are divided into 12 categories, and you somehow may vote for your favorite blog in each category (here).

USPTO Webcast: "Roundtable on Best Practices for Trademark Prosecution in the Current Electronic Environment"

Posted on November 29, 2010
On December 3, 2010, from 1 to 3PM (EST), the USPTO will host a roundtable discussion "to highlight best practices for trademark prosecution in the current electronic environment and obtain feedback on the state of electronic communications within Trademark Operation...

Erik Pelton's Summary of This Week's TPAC Public Meeting

Posted on November 24, 2010
Erik Pelton reports here on this week's quarterly Public Meeting of the Trademark Public Advisory Committee (TPAC).As to our favorite tribunal, Erik has this to say:TTAB update from Acting Chief Judge Rogers: * The TTAB has finally finished its work regarding the updates to the TTAB Manual of Procedure (TBMP)...

Applicant's Bad Faith a Factor in TTAB's Sustaining "AFROS TO SHELLTOES" 2(d) Opposition

Posted on November 24, 2010
The Board sustained Opposer Reginald Carr's Section 2(d) opposition to registration of the mark FROM AFROS TO SHELLTOES ART, ACTION, AND CONVERSATION for "Educational services, namely, conducting workshops and seminars in arts and entertainment, hip-hop, cross generational relationships, community building, and art as a political force to lessen misunderstandings between civil rights and hip hop generations...

TTAB Hot Stove League: Five MLB Teams Oppose the Mark "B." for Children's Books

Posted on November 23, 2010
Five Major League Baseball clubs have teamed up to jointly oppose registration of the mark B. (in standard character form) for children's books, claiming likelihood of confusion under Section 2(d) and false association under Section 2(a) in view of various "B" marks (shown below) that they allegedly own...

Test Your TTAB Judge-Ability: Why Are "ECSTA LX PLATINUM" and "PLATINUM" Not Confusingly Similar for Tires?

Posted on November 22, 2010
Applicant Kumho Tire sought to register the mark ECSTA LX PLATINUM for "tires; inner tubes for vehicle tires; mud flaps for vehicles; inner tubes." [At first, I thought it was a Latin proverb: "Law is platinum" - ed.] The Examining Attorney refused registration, deeming the mark likely to cause confusion with the registered mark PLATINUM for tires...

USPTO Issues Performance and Accountability Report for Fiscal Year 2010

Posted on November 18, 2010
The United States Patent and Trademark Office has issued its Performance and Accountability Report for Fiscal Year 2010 (pdf here).At page 22-23, the Report discusses our favorite tribunal, the TTAB:Objective 4: Enhance Operations of Trademark Trial and Appeal Board...

CAFC Affirms TTAB's Decision in "ANTHONY'S" Pizza 2(d) Brouhaha

Posted on November 18, 2010
The U.S. Court of Appeals for the Federal Circuit has affirmed the TTAB's precedential ruling in Anthony?s Pizza & Pasta International, Inc. v. Anthony?s Pizza Holding Company, Inc., 95 USPQ2d 1271 (TTAB 2009) [precedential]. [TTABlogged here]. The Board found a likelihood of confusion between the marks ANTHONY'S PIZZA & PASTA and the mark shown below, both for restaurant services...

More TTABlog Tweets and Re-Tweets

Posted on November 17, 2010
If you are not a Twitter subscriber, you missed these recent, exciting TTABlog tweets and re-tweets:WaPost: The Riff: 'SOUTH PARK' is sued over video -- but what-what does this mean for parody? - http://wapo.st/9QDIw9Hard Rock hotel fires back in trademark lawsuit, claims 'harassment' lasvegassun...

TTAB Bully Watch: What About NFL's Challenging "SOUPER BOWLS SOUPS SALADS SANDWICH WRAPS?"

Posted on November 16, 2010
The National Football League recently obtained an extension of time to oppose registration of the mark shown below for soups, salads, sandwiches, and combination meals. (link). Can you guess what mark the NFL will be relying on?If you were representing the NFL, what claims would you make? Dilution? Section 2(d)? Section 2(a) false association?Is this a case of trademark bullying, or merely an example of an appropriately aggressive policing policy?Text Copyright John L...

Test Your TTAB Judge-Ability: Is "AUDIOTURD & Design" Scandalous Under Section 2(a)?

Posted on November 15, 2010
Applicant Greenfield Records sought to register the mark AUDIOTURD & Design for musical recordings, but the Examining Attorney issued a Section 2(a) refusal, maintaining that the mark is scandalous and therefore unregistrable. Greenfield argued that "the word 'turd' is used regularly by the public at large and can no longer be considered scandalous...

Pamela Chestek, IP Ownership Guru, on Koolatron and Wella

Posted on November 12, 2010
At her Property, Intangible blog, IP ownership guru Pam Chestek takes an closer look (here) at the Board's decision in In re Koolatron Corporation, Serial No. 76692281 (September 29, 2010) [not precedential].It may make business sense to put ownership of related trademarks in different subsidiaries...

Check Out Towergate Software's New "2(d) Citation Watch" Service

Posted on November 11, 2010
Towergate Software is offering a new service called the "2(d) Citation Watch" for trademark registration owners and law firms. (Details here). This watch service highlights the marks of your firm's clients that were cited by the PTO against other marks, and includes links to the pertinent records...

Commissioner for Trademarks Lynne Beresford to Retire on December 30

Posted on November 11, 2010
The USPTO announced on November 8, 2010, that Commissioner for Trademarks Lynne Beresford will retire on December 30th. Details of her distinguished career may be found in the PTO press release here. [On a personal note, I always found Commissioner Beresford to be cordial, knowledgeable, and willing to help...

Fraud and Lack of Bona Fide Intent: Some Thoughts on Remedies

Posted on November 10, 2010
I am participating as a panelist this afternoon in a webinar program on fraud (here), and so I thought this would be a good time to revisit the issue of remedies. In a June 11, 2010 TTABlog posting (here), I set forth my understanding of the differing remedies available under a fraud theory, a lack-of-bona-fide-intent theory, and a non-use theory...

Recent TTABlog Tweets and Re-Tweets

Posted on November 09, 2010
If you are not a Twitter subscriber, you missed these scintillating TTABlog tweets and re-tweets just this week:US Trademark Commissioner Lynne Beresford To Retire December 30 http://bit.ly/bj53rPTrademark Bullying: Can This US Government Publication Help Put an End to It? http://bit...

TTAB Bully Watch: Major League Baseball Opposes Design Mark Comprising a Head Wearing a Reversed Baseball Cap

Posted on November 09, 2010
Far be it from me to say who's a trademark bully, but let's consider this trademark opposition. You be the umpire. Major League Baseball has filed a Section 2(a) opposition to registration of the design mark shown immediately below, for various clothing items, claiming that the mark would create a false connection between Applicant and MLB in the minds of consumers...

Test Your TTAB Judge-Ability on this Specimen of Use for Health-Care Administration Services

Posted on November 08, 2010
Gateway Health Plan sought to register the mark BEEMSS for "administration of Medicaid managed health care plans," but Examining Attorney Steven Jackson maintained that Applicant's specimen "fails to show proper use of the applied for mark in the sale or advertising of the recited services...

TTABlog Reaches Sixth Anniverary

Posted on November 08, 2010
Today is the sixth anniversary of the TTABlog. The first post featured (who else?) Leo Stoller, once a TTAB nemesis. Now, 1,776 posts later, here we are. Thank you for reading.

Precedential No. 41: Parties File Cross-Motions for Summary Judgment, then Opt for TTAB's ACR Procedure to Resolve Cancellation

Posted on November 05, 2010
The parties to this cancellation proceeding opted for Alternative Case Resolution (ACR) to resolve the one issue in dispute: priority of use. They had filed cross-motions for summary judgment and then entered into a stipulation (here) that permitted the Board to resolve the proceeding based on the parties? summary judgment submissions, resolving any genuine issue of material fact without trial...

Trademark Bullying: Birth of a TTAB Affirmative Defense?

Posted on November 04, 2010
The USPTO's recent request for comments regarding trademark bullies [TTABlog posting here] has set tongues wagging and minds turning. TTAB veteran Jack Clifford recently posed a new version of the "unclean hands" affirmative defense in Kellogg North America Company v...

TTAB Finds "LAGUNA" Logo on T-Shirt Merely Ornamental, Affirms Refusal

Posted on November 03, 2010
The Board affirmed a refusal to register the logo shown immediately below, for "clothing, namely, t-shirts, sweatshirts, tank tops and tops," under Sections 1, 2, and 45, finding it to be "primarily an ornamental feature of the goods" that "does not function as a trademark for the goods...

Test Your TTAB Judge-Ability: Are "ISLAND TROPICAL" and "TROPICAL ISLAND BLAST" Confusingly Similar For Fruit-Based Snack Food?

Posted on November 02, 2010
Applicant sought to register the mark ISLAND TROPICAL for "fruit-based snack food; snack mix consisting primarily of processed fruits, processed nuts and/or raisins." Examining Attorney Kevon L. Chisolm refused registration under Section 2(d), finding the mark likely to cause confusion with the registered mark TROPICAL ISLAND BLAST for "fruit based snack food, namely, dried fruit mix...

TTAB Posts November 2010 Hearing Schedule

Posted on November 01, 2010
The Trademark Trial and Appeal Board has scheduled five (5) oral 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 (lower right-hand corner)]...

Bloggers, promote your law blog by nominating your blog for inclusion in USLaw.com's Law Blog Directory and RSS Reader. Benefits described.