Intellectual Property Law

We Have a TTABlog Stress Ball Winner: Michael Tschupp

Posted on August 26, 2010
TTABlog Email Subscriber No. 1000 is Michael E. Tschupp of Miami, Florida. Michael recently launched his own blog called Sustainable Marks, where he focuses on "trademarks, patents, and advertising - from a green perspective." Congratulations, Michael! Your stress balls are in the mail.

TTAB Reverses 2(d) Refusal of "WISH YOU WERE HERE" for Underwear

Posted on August 25, 2010
The "strong differences" in the marks, coupled with the differences in the goods, led the Board to reverse a Section 2(d) refusal to register WISH YOU WERE HERE (in standard character form) for underwear. The Examining Attorney maintained that the mark was likely to cause confusion with the mark depicted immediately below, for "women?s dresses, shirts, skirts and apparel...

Test Your TTAB Judge-Ability: Is "ONCE A MARINE, ALWAYS A MARINE" on Clothing a Trademark, Or Merely Informational?

Posted on August 24, 2010
Eagle Crest applied to register the mark ONCE A MARINE, ALWAYS A MARINE for various clothing items. The Examining Attorney refused registration, maintaining that the phrase, as it appears on the specimens of use (see photos below), would be perceived as merely informational and not as a trademark...

WYHO? TTAB Tosses Out Feeble Fraud and Mere Descriptiveness Claims

Posted on August 23, 2010
Eighty-sixing Opposer's fraud and mere descriptiveness claims, the Board dismissed this opposition to registration of the mark METAL GEAR for "enclosures for external computer hard drives" [METAL disclaimed]. Opposer Galaxy alleged that Applicant DAT committed fraud when DAT represented that is was the owner of the mark, but Galaxy failed to prove fraud "to the hilt...

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Test Your TTAB Judge-Ability: Is An Amendment From "MT RAINIER" To "RAINIER" Permissible?

Posted on August 20, 2010
When it submitted its Statement of Use, Applicant Thor Tech sought to amend its mark for travel trailers from MT RAINIER to RAINIER. The Examining Attorney refused to enter an the amendment, deeming the proposed change to be a ?material alteration? of the mark in violation of 37 CFR §2...

Ruling that TTAB Misapplied Section 2(e)(3) Test, District Court Reverses TTAB's "GUANTANAMERA" Decision

Posted on August 19, 2010
In a review by way of civil action, brought under 15 U.S.C. Section 1071(b)(1), the U.S. District Court for the District of Columbia reversed the TTAB's decision in Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 86 USPQ2d 1473 (TTAB 2008) [precedential]...

Pamela Chestek Comments on "ZYTNIA" Ownership Issue

Posted on August 18, 2010
Pamela Chestek, ip ownership expert and publisher of the Property, intangible blog, comments here on the ownership issue raised in the Board's recent decision in Slaska Wytwornia Wodek Gatunkowtch ?Polmos? SA v. Stawski Distributing Co., Inc., Cancellation No...

New TTABlog Trademark Jobs Posting

Posted on August 18, 2010
Former PTO Examining Attorney and large law firm associate seeks law firm or corporate position in the Washington, DC or Baltimore areas. Extensive experience in trademark clearance, registration, and enforcement. Has managed large global trademark portfolios for leading organizations in the fields of music, television and film, computer software and hardware, automotive parts, tool and die, fashion, food, pharmaceuticals, travel, publications, financial, educational, and business services in over 100 different countries...

TTAB Reverses 2(d) Refusal of "HEARTWORKS" Despite Substantial Identity of Cited Mark

Posted on August 17, 2010
In a heartwrenchingly mundane case, the Board reversed a Section 2(d) refusal to register the mark HeartWorks for ?apparatus for measuring blood pressure, body fat, weight and pulse, namely, body and health monitoring machine for standard measurements, namely, weight, body mass index, body fat content, heart rate and blood pressure, to be operated by an individual in public indoor locations? and ?wheelchairs; convertible wheel chairs,? finding it not likely to cause confusion with the registered mark HEARTWORKS for "medical equipment, namely, diagnostic workstations in the field of cardiology diagnostics, comprised of computer hardware and monitors, associated graphical user interface, and instruction manual sold in conjunction therewith...

Precedential No. 32: TTAB Finds Bands on Mag Rechargeable Flashlight Functional, Lacking in Acquired Distinctiveness

Posted on August 16, 2010
In a 61-page opinion, the Board resolved three consolidated oppositions involving two competing flashlight manufacturers. Two of the oppositions, one brought by each party, concerned likelihood of confusion between certain word marks, while the third featured the issues of functionality and acquired distinctiveness of a product design or configuration...

TTAB Reverses 2(d) Refusal, Sophistication of Purchasers a Key Factor

Posted on August 13, 2010
Despite the near identity of the marks, the Board reversed Section 2(d) refusals to register V-TEC (in standard character and stylized form) for "custom wheels for vehicles," finding the mark not likely to cause confusion with the registered mark VTEC for vehicles and engines...

TTAB Tosses Out Three Fraud Claims, Dismisses "ZYTNIA" Vodka Cancellation Petition

Posted on August 12, 2010
Does it seem to you, dear reader, that the TTAB decides an inordinate number of cases involving vodka? Here's another one, this with a twist of fraud. The Board dismissed a petition for cancellation of a registration for the mark ZYTNIA for "liquor," finding that Petitioner had failed to prove its three fraud claims "to the hilt with clear and convincing evidence...

TTAB Finds "THE FLYER" Not Generic for Advertising Shopper Services

Posted on August 11, 2010
In this yawner, Applicant Harte-Hanks convinced the TTAB that a "shopper" is not a "flyer," and so the Board reversed a genericness refusal of the mark THE FLYER for advertising services relating to shoppers. In re Harte-Hanks, Inc., Serial No. 77017666 (June 30, 2010) [not precedential]...

WYHA? TTAB Affirms 2(d) Refusal in Two-Page Opinion

Posted on August 10, 2010
In what may be its shortest Section 2(d) opinion ever, the Board affirmed a refusal to register the mark US CANTEEN & Design (below) for "non-leaching metal water bottles sold empty," finding the mark likely to cause confusion with the registered mark USCANTEEN for "plastic and metal water bottles sold empty...

Precedential No. 31: Opposer Fails to Prove Priority, Non-Use, and Fraud in "BLACK BELT TV" Brouhaha

Posted on August 09, 2010
Opposer failed to land any of its three offensive thrusts - likelihood of confusion, non-use, and fraud - in its opposition to registration of the mark BLACK BELT TV & Design (shown below) for television programming in the field of martial arts [TV disclaimed]...

TTAB Affirms Refusal of "Closure Cap Configuration Mark" on Functionality and Nondistinctiveness Grounds

Posted on August 06, 2010
In an instructive 29-page decision, the Board affirmed a Section 2(e)(5) refusal to register the product configuration mark shown below (the "closure cap configuration mark") for "closures for medical collection tubes," finding it to be functional. In the alternative the Board found that the proposed mark lacks acquired distinctiveness...

WYHA? TTAB Affirms Mere Descriptiveness Refusal of "COLLEGIATE COMMUNITY FINANCIAL" for Credit Union Services

Posted on August 05, 2010
In an enervating ruling, the Board affirmed a Section 2(e)(1) refusal to register the mark COLLEGIATE COMMUNITY FINANCIAL, finding it merely descriptive of "credit union services." Would you have appealed? In re Florida State University Credit Union, Serial No...

TTAB Reverses Refusal to Register Cartier Watch Design, Finding 2(f) Evidence Sufficient

Posted on August 04, 2010
The Board reversed a refusal to register the product configuration mark shown immediately below, for watches, finding that Applicant Cartier's evidence was sufficient to establish acquired distinctiveness under Section 2(f). Survey results, a prior court decision, sales figures, media coverage, and Cartier's two prior registrations for similar design convinced the Board of the subject mark's registrability...

TTAB Reverses Mere Descriptiveness Refusal of "LUA" for Computer Programs

Posted on August 03, 2010
Finding the Examining Attorney's evidence insufficient, the Board reversed a Section 2(e)(1) refusal to register the mark LUA for computer programs. The Examining Attorney contended that LUA is a programming language and therefore that the mark describes a feature of the goods...

TTAB Reverses 2(d) Refusal of "LEG BALANCE" for Athletic Apparel Over "FOOT BALANCE" for Leather Footwear

Posted on August 02, 2010
Balancing the du Pont factors like a legal hacky-sack, the Board reversed a refusal to register the mark LEG BALANCE for "athletic apparel, namely, shirts, singlets, jackets, shorts, tights, running suits, bras, briefs and socks" [LEG disclaimed], finding the mark not likely to cause confusion with the registered mark FOOT BALANCE for "leather boots and shoes...

TTAB Posts August 2010 Hearing Schedule

Posted on July 30, 2010
The Trademark Trial and Appeal Board has scheduled three (3) 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...

WYHA? TTAB Affirms 2(d) Refusal of "RIPPLE KIDS & Design" Over "RIPPLE & Design," Both for Stationery

Posted on July 29, 2010
In a terse ten-page decision, the Board affirmed a Section 2(d) refusal to register the mark RIPPLE KIDS in standard character and design form (below left) [KIDS disclaimed], finding the marks likely to cause confusion with the registered mark RIPPLE & Design shown below right, all for stationery products...

Finding No Claim or Issue Preclusion, TTAB Denies "MAJOR TAYLOR" Summary Judgment Motion

Posted on July 28, 2010
In a sweeping decision, the Board denied Respondent's motion for summary judgment based on the claim that claim preclusion (res judicata) or issue preclusion (collateral estoppel) required dismissal of the petition for cancellation. The Board then proceeded to point out the deficiencies in the petition, and dismissed one count predicated on Indiana state law...

TTAB Finds "GOLF SPORT" and "GOLFINO," both with Golfer Designs and both for Clothing, Confusingly Similar

Posted on July 27, 2010
The Board sustained a Section 2(d) opposition to registration of the mark GOLF SPORT & Design (shown below left) for various clothing items [GOLF disclaimed], finding it likely to cause confusion with the mark GOLFINO & Design (below right), both marks for various clothing items...

TTAB Sides With "VALENTINO" in Section 2(d) Fashion Designer Dispute

Posted on July 26, 2010
Sustaining two oppositions and granting two petitions for cancellation, the Board found Defendant's marks GIANNI VALENTINO and GIOVANNI VALENTINO likely to cause confusion with the common law marks VALENTINO and VALENTINO GARAVANI, for clothing and handbags...

WYHA? TTAB Affirms 2(e)(1) Refusal of "TEQUINI" As Merely Descriptive of Tequila Martini

Posted on July 23, 2010
Examining Attorney Mayur Vaghani refused registration of the mark TEQUINI for "alcoholic beverages, namely tequila and prepared alcoholic cocktails containing tequila," finding it to be merely descriptive under Section 2(e)(1). The record included recipes for a "tequini" from more than a dozen websites...

Test Your TTAB Judge-Ability: Is "MARGARITA COMPANY" Merely Descriptive of Bar and Restaurant Services?

Posted on July 22, 2010
No, it isn't, said the Board. In a seven-page decision, the TTAB reversed a Section 2(e)(1) refusal to register the mark MARGARITA COMPANY, finding it not merely descriptive of restaurant and bar services. Although the mark is "highly suggestive," the Board resolved its doubts in favor of Applicant, as it must...

Now Available: TPAC Transcript from May 7, 2010 Meeting

Posted on July 21, 2010
The transcript of the May 7, 2010 meeting of the Trademark Public Advisory Committee (TPAC) is now available in pdf form here. Eric Pelton attended the meeting and summarized it here.The comments of Acting Chief Judge Gerard F. Rogers are found at pages 80-116...

Sidestepping American Fertility, TTAB Finds "PAO DOCE WRAPS" Generic for Bakery Products

Posted on July 21, 2010
Once again taking a tough stance regarding genericness, the Board rejected Applicant's American Fertility-based argument in affirming a refusal to register PAO DOCE WRAPS on the Supplemental Register, finding the term to be generic for "bakery products...

Test Your TTAB Judge-Ability: Are These Two Fruit Designs Confusingly Similar?

Posted on July 20, 2010
Apple, Inc. opposed an application to register the design mark shown below left, claiming likelihood of confusion with its registered and famous mark shown below right, the marks being for legally identical goods and services. So how would you decide? Apple, Inc...

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