Intellectual Property Law

Three Recent Affirmances in Unacceptable Specimens of Use Cases

Posted on September 25, 2020
Okay, I admit it's an awkward title, but it's an awkward time. I always wonder, in applications where specimens of use are rejected by the Examining Attorney, whether it would be better to amend to an intent-to-use basis (in order to buy some time to get a proper specimen into use) than to appeal and lose...

TTABlog Test: Is NUB GLOVE Merely Descriptive of Bowling Gloves, Balls, and Hole-Drilling Services?

Posted on September 24, 2020
The USPTO refused to register the mark NUB GLOVE for "Bowling gloves and bowling balls" and for "Installation of custom bore inserts in bowling balls," on the ground of mere desctrptiveness under Section 2(e)(1). Applicant argued that the mark is incongruous, since gloves are designed to cover one?s hands, but ?the protruding nubs on Applicant?s bowling gloves will not be covered by the bowling gloves as a hand would be...

"DOOR-IN-DOOR" Lacks Acquired Distinctiveness for Electric Refrigerators, Says TTAB

Posted on September 23, 2020
The Board affirmed a refusal to register the proposed mark DOOR-IN-DOOR for electric refrigerators, on the ground of mere descriptiveness (and lack of acquired distinctiveness). Applicant LG conceded that the term is merely descriptive but pointed to its more than five years of use of the term and to its now-cancelled Registration for DID DOOR-IN-DOOR...

TTABlog Test: Is "KEZAR" for Pharmaceutical Products Primarily Merely a Surname?

Posted on September 22, 2020
The USPTO refused to register the proposed mark KEZAR for pharmaceuticals and chemicals for use in the manufacture of pharmaceuticals, finding the term to be primarily merely a surname under Section 2(e)(4). The examining attorney argued that KEZAR has no recognized meaning other than as a surname, while applicant contended that KEZAR has ?geographic significance? because it is the name of a stadium in San Francisco...

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Webcast - Sept 22, 7PM EST: Ken Germaine: Does the Constitution Allow Dual Protection Under Design Patent and Trade Dress Regimes for the Same Subject Matter?

Posted on September 21, 2020
Ken Germain, Of Counsel, Wood Herron & Evans LLP., will provide a webinar entitled "Does the Constitution Allow Dual Protection Under Design Patent and Trade Dress Regimes for the Same Subject Matter?" on Tuesday, September 22nd at & 7:00 PM (Eastern Standard Time)...

FOUNDATIONAL MEDICINE REVIEW Confusable With FOUNDATION MEDICINE for Medical Publications, Says TTAB

Posted on September 21, 2020
The Board sustained this opposition to registration of FOUNDATIONAL MEDICINE REVIEW for "journals in the field of medicine" and "providing on-line non-downloadable articles in the field of medicine and health care" [MEDICINE REVIEW disclaimed], finding confusion likely with Opposer's registered mark FOUNDATION MEDICINE for the provision of medical data and information to healthcare professionals [MEDICINE disclaimed]...

TTABlog Test: Is GNARLED ORCHARD for Hard Cider Confusable With GNARLY HEAD for Wine?

Posted on September 18, 2020
Delicato Vineyards opposed this application to register the mark GNARLED ORCHARD for hard cider, claiming a likelihood of confusion with its registered mark GNARLY HEAD for wines. Applicant Strother maintained that the goods are fundamentally different, that wine drinkers are increasingly sophisticated, and the the marks differ in connotation and commercial impression...

Precedential No. 34: TTAB Rules That gTLD ".CAM" is Incapable of Functioning as a Source Indicator

Posted on September 17, 2020
The Board affirmed refusals to register the term ".CAM" in standard character and stylized form (shown below) on the Supplemental Register for an extensive list of services in International Classes 35, 38, 42 and 45, finding that ".CAM", in either form, is incapable of functioning as a source indicator under Section 23 of the Lanham Act...

TTABlog Test: Is "MF MIRANDA FRYE & Design" Confusable with "FRYE" for Jewelry?

Posted on September 16, 2020
The USPTO refused to register the word-plus-design mark shown below, for jewelry, on the ground of likelihood of confusion with the registered mark FRYE, also for jewelry. Since the goods overlap, the Board must presume that the channels of trade and classes of consumers for those goods are the same...

Recommended Reading: Prof. Christine Farley, "The Lost Unfair Competition Law"

Posted on September 15, 2020
Professor Christine Farley of American University Washington College of Law, in her article, "The Lost Unfair Competition Law," notes the oft-repeated assertion that trademark law ?is but a part of the broader law of unfair competition.? But what is the broader protection that unfair competition provides? Her article "explains why we have lost sight of this answer and become confused about the scope of unfair competition law today by providing a historical examination of the drafting and enactment of the act and mysterious treaty [The Inter-American Convention], and their forgotten connection...

Decisions of the TTAB and the CAFC on Registrability Issues July 2019 to August 2020

Posted on September 14, 2020
In preparation for two webinar presentations coming up in the next four weeks, I have put together an article summarizing the precedential decisions of the TTAB and the CAFC over the past 14 months. Download pdf here: "Decisions of the Trademark Trial and Appeal Board and the Federal Circuit on Registrability Issues: July 2019 ? August 2020...

TTABlog Test: Is HERITAGE SOUTHEAST BANK Confusable With SOUTHEAST BANK (Stylized), for Banking Services?

Posted on September 11, 2020
The USPTO refused to register the mark HERITAGE SOUTHEAST BANK [BANK disclaimed], on the ground of likelihood of confusion with the mark SOUTHEAST BANK in the stylized form shown immediately below, both for banking services. As we know, when the services are identical, less similarity between the marks is required to support a Section 2(d) refusal...

TTAB Finds BROTHERS CRAFT BREWING for Beer Confusable with BROTHERS for Bar and Restaurant Services

Posted on September 10, 2020
The Board sustained this Section 2(d) opposition to registration of BROTHERS CRAFT BREWING for "Beer, ale, lager, stout, porter, shandy" [CRAFT BREWING disclaimed] in view of the registered marks BROTHERS and BROTHERS BAR & GRILL for bar and restaurant services [BAR & GRILL disclaimed]...

"THE NEXT MOVE IS YOURS" Fails to Function as a Service Mark for Real Estate Services, Says TTAB

Posted on September 09, 2020
The Board affirmed a refusal to register the proposed mark THE NEXT MOVE IS YOURS for "real estate agency services, real estate brokerage, real estate management, leasing of real estate," on the ground that the phrase fails to function as a mark under Section 1, 2, 3, and 45 of the Trademark Act...

TTABlog Test: Is CLINCH PICK for Knives Confusable with CLINCH DRIVE for Wrenches?

Posted on September 08, 2020
The USPTO refused to register the mark CLINCH PICK for "Military and tactical knives; fixed bladed knives" [PICK disclaimed] on the ground of likelihood of confusion with the registered mark CLINCH DRIVE for "Hand tools, namely, wrenches" [DRIVE disclaimed]...

Lego's BRICKHEADZ Applications Run Into TTABrick Wall

Posted on September 04, 2020
Nothing clicked for Lego in its attempt to register the mark BRICKHEADZ, in standard character and logo form, for ?computer game software? and ?construction toys; toy construction blocks and connecting links therefor; toy figures." The Board blocked registration, finding the marks likely to cause confusion with the registered mark BRICKHEADZ (in standard characters), for ?education services, namely, providing classes and educational children?s parties in the field of construction toys to promote, [sic] creativity, critical thinking, and social development as wells [sic] as lessons from science, technology, engineering, math, language arts and social studies...

TTABlog Test: Try Your Luck on these Three Recent Section 2(d) Appeals

Posted on September 03, 2020
According to one TTAB judge, you can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods or services. Here are three recent decisions in appeals from Section 2(d) refusals. How do you think these came out? [Answers in first comment]...

Precedential No. 33: TTAB Explains Safer Rule for Internet Evidence

Posted on September 02, 2020
In this Section 2(d)/dilution opposition to registration of the marks BAD MOMS UNLIMITED and BAD MOMS BIBLE for audio books, printed matter, clothing, and charitable foundation services, Opposer STX Financing (producer of the film BAD MOMS) filed a motion to strike the exhibits listed in applicant's notice of reliance...

TTAB Posts September 2020 (Video) Hearing Schedule

Posted on September 01, 2020
The Trademark Trial and Appeal Board (Tee-Tee-?-Bee) has scheduled five (V) oral hearings for the month of September 2020. The hearings will be held via video. Briefs and other papers for each case may be found at TTABVUE via the links provided.September 9, 2020 - 3 PM: In re T3 Productions, LLC , Serial No...

TTAB Posts April 2011 Hearing Schedule

Posted on April 01, 2011
The Trademark Trial and Appeal Board has scheduled eight (8) oral hearings for the month of April, as listed below. The first seven hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia, and the eighth Northeastern Univ...

TTABlog Quarterly Index: January - March 2011

Posted on March 31, 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...

TTAB Deems FREEDEMOGRAPHICS.COM Generic for ... Guess What?

Posted on March 31, 2011
What would you expect to find at a website with the name FREEDEMOGRAPHICS.COM? Maybe demographic data available without cost? The Board applied both the In re Gould test for compound words and the American Fertility for phrases in concluding that this term is generic for "business and marketing services, namely, providing customizable demographic data, reports, and analysis...

Webinar on "Trademark Bullying: Emerging Legal Threat" - April 6th, 1PM EST

Posted on March 30, 2011
Strafford Publications will host a Webinar on April 6th, 1:00 too 2:30 EST, on "Trademark Bullying: Emerging Legal Threat." The distinguished faculty comprises Stephen R. Baird, Theodore H. Davis, Jr., Leah Chan Grinvald, and Anne Gundelfinger. Details regarding the program may be found here...

E.D. La. District Court Upholds TTAB's "ORCHID CREAM VANILLA" Snowball Decision

Posted on March 30, 2011
In the latest chapter of the snowball fight over SnoWizard's registration for the mark ORCHID CREAM VANILLA for "flavoring concentrate for non-nutritional purposes, namely, flavoring concentrate for shaved ice confections," the U.S. District Court for the Eastern District of Louisiana has upheld the TTAB's decision [TTABlogged here] finding the mark merely descriptive and cancelling the registration...

CAFC Affirms TTAB's Dismissal of CITIBANK's Opposition to CAPITAL CITY BANK

Posted on March 29, 2011
The CAFC has affirmed the TTAB's decision in Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645 (TTAB 2010) [precedential] [TTABlogged here], ruling that the Board had properly applied the du Pont factors in dismissing Citibank's Section 2(d) opposition to registration of four standard character marks that include the phrase CAPITAL CITY BANK...

TTAB Issues Pre-Trial Order in New REDSKINS Cancellation Battle

Posted on March 28, 2011
The TTAB has issued a nine-page pre-trial order (here) in Blackhorse v. Pro Football, Inc., Cancellation No. 92046185, the latest chapter in the battle over the REDSKINS trademark registrations. A brief review of the prior TTAB and federal court proceedings may be found here...

TTAB Comes to Boston: April 29th at Northeastern University School of Law

Posted on March 25, 2011
The Trademark Trial and Appeal Board (TTAB) will once again travel to Boston on Friday, April 29, 2011, to hear final arguments in a TTAB inter partes proceeding, as part of a Boston Patent Law Association (BPLA) program to be held at Northeastern University School of Law (NUSL)...

Test Your TTAB Judge-Ability: Must OUTFITTERS Be Disclaimed for Retail Cosmetics and Jewelry Services?

Posted on March 24, 2011
Applicant Retail Royalty refused to bow down to the PTO's demand that it disclaim the word OUTFITTERS in its application to register the marks AMERICAN EAGLE OUTFITTERS and the design mark shown below, for retail store services in the field of fragrances, cosmetics, personal care products, and jewelry...

Florida Bar IP Symposium: April 14-15 in Fort Lauderdale

Posted on March 24, 2011
The Florida Bar Continuing Legal Education Committee and the Business Law Section will present their 2nd Annual Intellectual Property Symposium on April 14 and 15, 2011, in Fort Lauderdale, Florida. Details here.This is an "advanced CLE program presented by leading practitioners, academics, in-house attorneys and representatives of the PTO and Copyright Office...

The Trademark Office Comes to California: April 11 (LA) and April 13 (SF)

Posted on March 23, 2011
The State Bar of California will host two one-day seminars on trademark law on April 11 (Los Angeles) and April 13 (San Francisco), entitled "The Trademark Office Comes to California." Details and registration information here. Speakers will include Administrative Trademark Law Judges Lorelei Ritchie and Frances Wolfson, Commissioner for Trademarks Deborah Cohn, and Sharon Marsh, Deputy Commissioner for Trademark Policy...

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