Intellectual Property Law

TTABlog Road Trip: Boston Meeting of International AntiCounterfeiting Coalition (IACC)

Posted on May 17, 2010
Yours truly, the TTABlogger, will be participating in a panel discussion at the Annual Spring Meeting of the International AntiCounterfeiting Coalition (IACC) in Boston on Thursday, May 20th. [Details here]. Co-panelist are Commissioner of Trademarks Lynne Beresford and trademark guru Joseph Dreitler...

Test Your TTAB Judge-Ability: Is This Mark, With Disclaimer, Stylized Enough for the Principal Register?

Posted on May 14, 2010
The Board found the term IT BAG to be merely descriptive of "travel bags; multi-purpose purses; purses." But here's the question: if Applicant disclaimed IT BAG in the applied-for mark shown below, is the mark sufficiently distinctive to merit a registration on the Principal Register? You be the judge...

CAFC Reverses TTAB's "FRED" Ruling: Fee Not Needed With Motion for Leave to Amend Cancellation Petition to Add Classes

Posted on May 13, 2010
The CAFC reversed the TTAB's ruling in Fred Beverages, Inc. v. Fred's Capital Management Company, Cancellation No. 92048454 (June 26, 2009) [not precedential]. The Board had denied Petitioner's motion to add four classes to its petition for cancellation because the motion "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 Stress Ball Brings Max Enjoyment

Posted on May 13, 2010
Maxton "Max" Zilinek, an avid reader of this blog, recently took the TTABlog toy test. As seen below, Max chose the TTABlog stress ball over the boringly traditional fire truck, proving again that the TTABlog stress ball is an instant classic. Max is reportedly working on his knuckleball, and if he can perfect it, Max may expect a long professional career in baseball, since left-handed knuckleballers are as rare as a White Sox fan in Boston...

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

TTAB Reverses 2(d) Refusal, Finds "AQ" and "PARADISE MAKEUP AQ" Not Confusingly Similar for Cosmetics

Posted on May 12, 2010
Sometimes the Board's determination under Section 2(d) comes down to a single du Pont factor, regardless of the makeup of the Board panel and despite any cosmetic distinctions made by the losing party. Here the mark AQ was simply too different from the cited mark PARADISE MAKEUP AQ, both for cosmetic/makeup items, to support the Section 2(d) refusal...

TTAB Cancels "CITYSTAY HOTELS" Registration as Void Ab Initio: Hotel Lodging Services Not Rendered as of Filing Date

Posted on May 11, 2010
In this streamlined cancellation proceeding, the parties filed a joint request to resolve the matter via Accelerated Case Resolution (ACR), accompanied by a joint stipulation of facts. Respondent CSH fatally stipulated that it had not rendered "hotel lodging" services at the time of filing its application that yielded the challenged registration for CITYSTAY HOTELS...

"SEARCH ENGINE OPTIMIZATION" Merely Descriptive of Marketing Services, Says TTAB

Posted on May 10, 2010
Modern Consulting Solutions, a sole proprietorship composed of Jason Gambert, hit into a triple play in its attempt to register the mark SEARCH ENGINE OPTIMIZATION for "providing advertising, marketing and promotional services, namely development of advertising campaigns for use on computers and related consulting...

Test Your TTAB Judge-Ability on This Section 2(e)(1) Mere Descriptivenes Refusal of "CLUB DANCE" for Restaurant and Bar Services

Posted on May 07, 2010
How would you rule on this appeal from a Section 2(e)(1) mere descriptiveness refusal of the mark CLUB DANCE for restaurant and bar services? The Examining Attorney relied on third-party registrations for restaurant services, in which CLUB or DANCE has been disclaimed, and on evidence of businesses that offer restaurant services and dancing...

Trademark Public Advisory Committee (TPAC) Webcast Tomorrow

Posted on May 06, 2010
The Trademark Public Advisory Committee (TPAC) will webcast its meeting tomorrow, May 7, beginning at 9:00 EST. [Details here.] Commissioner Lynne Beresford will discuss various topics in the 9:35 to 11:05 time slot, including this one: "ensuring accurate descriptions of goods and services (i...

Reminder: Mark Your Calendar for Meet the Bloggers VI

Posted on May 06, 2010
Meet the Bloggers VI, the best non-INTA event during INTA, will happen on Monday night, May 24th, beginning at 8pm at Lucky's Lounge, 355 Congress Street, Boston. Lucky's is just a few blocks from the convention center. Check the map at the website here...

TTAB Finds "SMIC" And "TSMC" Wafer Grid Logos Confusingly Similar for Identical Goods and Services

Posted on May 05, 2010
The Board sustained a Section 2(d) opposition to registration of the mark SMIC & Design [below left] for semiconductors, integrated circuits, and parts and packaging therefor,and for custom manufacture and design thereof, in view of the registered mark TSMC & Design [below right] for semiconductors and integrated circuits and their custom manufacture and design...

TTAB Reverses 2(d) Refusal, Finds "PANTECH BREEZE" and "BREEZE ACCESS" Too Different for Wireless Products

Posted on May 04, 2010
It took the TTAB just over seven pages to reverse a Section 2(d) refusal of the mark PANTECH BREEZE for "wireless telephone transmitters and receivers for use other than broadband wireless access." The Examining Attorney had found the mark likely to cause confusion with the registered mark BREEZE ACCESS for equipment and accessories for broadband wireless access...

TTAB Vacates "WAL-VERT" Decision Per District Court Order

Posted on May 04, 2010
In an April 21, 2010 ruling (here), the Board vacated its decision in Wyeth v. Walgreen Co., Opposition No. 91165912 (August 5, 2008) [not precedential]. [TTABlogged here]. A divided Board panel had 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...

TTAB Posts May 2010 Hearing Schedule

Posted on May 03, 2010
The Trademark Trial and Appeal Board has scheduled ten (10) hearings for the month of May, 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...

Test Your TTAB Judge-Ability on this Rejected Amendment and Specimen of Use

Posted on April 30, 2010
Applicant Marion L. Lonegro sought to amend her application for the standard character mark SENSITIVITY AWARENESS from "fund raising" and "educational seminars" to "publications for charitable fund raising." She submitted the specimen of use depicted immediately, identified as "an image applied by a rubber stamp to the packaging of publications used for fund raising...

WYHA? TTAB Finds "THE ORIGINAL CHUBBYS MEXICAN FOOD" and "EL CHUBBY'S" Confusingly Similar for Restaurant Services

Posted on April 29, 2010
In a mere seven pages, the TTAB affirmed a Section 2(d) refusal to register the mark THE ORIGINAL CHUBBYS MEXICAN FOOD for bar and restaurant services [THE ORIGINAL and MEXICAN FOOD disclaimed], finding the mark likely to cause confusion with the registered mark EL CHUBBY'S for "restaurant services featuring Mexican food...

Test Your TTAB Judge-Ability: Are "ARTEHOUSE" and "ART HOUSE GREETINGS" Confusingly Similar for Greeting Cards?

Posted on April 28, 2010
Okay, here's your next assignment. Applicant sought to register the mark ART HOUSE GREETINGS in standard character form, for greeting cards [GREETINGS disclaimed], but the Examining Attorney refused registration under Section 2(d), finding the mark likely to cause confusion with the registered mark ARTE HOUSE for "fine art prints, posters, calendars and greeting cards...

TTAB Enters Summary Judgment: Applicant Lacked Bona Fide Intent to Use "FEAR THE FRIARS" for Clothing

Posted on April 27, 2010
Applicant's lack of documentary evidence to support his claim of bona fide intent to use the mark FEAR THE FRIARS for various clothing items, and his inability to point to other evidence that would explain or outweigh his non-documentation, led the Board to grant the summary judgment motion of Opposer Padres, L...

Precedential No. 15: TTAB Affirms Rejection of Website Specimen for Goods, Ordering Information Lacking

Posted on April 26, 2010
Finding Applicant's specimen of use unacceptable, the TTAB affirmed a refusal to register the mark PROVIDING PROTEIN AND MENU SOLUTIONS for "processed meats, beef, pork, poultry and seafood sold in portions; fully cooked entrees consisting primarily of meat beef, pork, poultry or seafood...

Test Your TTAB Judge-Ability on This Specimen of Use Question

Posted on April 23, 2010
Applicant sought to register the word marks SEELECT TEA and SEELECT TEA & NUTRITION for dietary supplements and herb teas, but the Examining Attorney refused registration on the ground that the marks, as displayed on the specimen of use, do not function as source indicators...

Precedential No. 14: Noncommercial Use Defense to a Dilution Claim Unavailable in a TTAB Proceeding

Posted on April 22, 2010
The parties filed cross-motions for summary judgment in this consolidated opposition to registration of two marks -- GRAND AMERICAN EXPRESS and the mark shown below -- for "transportation services, namely, transporting passengers by means of a 19th century replica train...

TTAB Finds "FULLY COOKED" Generic for ... Guess What?

Posted on April 21, 2010
The TTAB granted a petition for cancellation of a registration for the term FULLY COOKED for "prepared entrees consisting primarily of meat," finding it to be generic. The Board acknowledged that "fully cooked" is not the name of a food product but rather an adjective that "describes a category of processed foods," a designation that should be freely available for use by competitors...

Mark Your Calendar for Meet the Bloggers VI

Posted on April 21, 2010
Meet the Bloggers VI, the best non-INTA event during INTA, will happen on Monday night, May 24th, beginning at 8pm at Lucky's Lounge, 355 Congress Street, Boston. Lucky's is just a few blocks from the convention center. Check the map at the website here...

Precedential No.13: Divided TTAB Panel Dismisses "VIGILANZ" Opposition, Finding Purchasers Sophisticated and Goods Not Related

Posted on April 20, 2010
In a 55-page decision that includes a 12-page dissent, the TTAB dismissed a Section 2(d) opposition to registration of the mark VIGILANZ for "near real-time computer monitoring system comprised of a software application and database that anticipates and detects possible adverse drug events, and alerts healthcare providers to adverse drug events...

CAFC Affirms TTAB's "CRASH DUMMIES" No Abandonment Decision

Posted on April 19, 2010
In a precedential decision, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's ruling in Mattel, Inc. v. The Crash Dummy Movie, LLC, Opposition No. 91159002 (November 25, 2008) [not precedential]. The Board held that Mattel has rebutted the statutory presumption of abandonment of its CRASH DUMMIES mark by showing "reasonable grounds for the suspension and plans to resume use in the reasonably foreseeable future when the conditions requiring suspension abate...

WYHA? TTAB Affirms 2(d) Refusal of "USWEAR" for Boys Clothing Over "US WEAR" for Adult's Clothing

Posted on April 19, 2010
Would you have appealed this Section 2(d) refusal to register the mark USWEAR for "clothing for adults, namely, jackets and sweaters, not including boys and girls sportswear?" Examining Attorney Amy Alfieri maintained that the mark is confusingly similar to the registered mark US WEAR for "clothing, namely boys and girls sportswear, namely, pants, jumpers, overalls, coveralls and woven and knit shirts and skirts...

Real World Aside, TTAB Affirms 2(d) Refusal of "CARRERA" for Welding Helmets

Posted on April 16, 2010
In a decision noteworthy for its display of photoshopping talent, if nothing else, the Board affirmed a Section 2(d) refusal to register the mark CARRERA for "welding helmets," finding the mark likely to cause confusion with the identical mark, registered for "protective helmets...

Test Your TTAB Judge-Ability: Are Condoms and Vibrators Related for 2(d) Purposes?

Posted on April 15, 2010
Line One Laboratories, Inc. petitioned to cancel a registration for the mark IMPULSE for "adult novelty items, namely, vibrators," alleging Section 2(d) likelihood of confusion with its identical mark for "condoms." The Board tossed out Respondent's laches defense, and found that Petitioner Line One had priority of use...

CAFC Affirms TTAB Ruling in "ML" Skin Care Products Case

Posted on April 14, 2010
In an enervating but nonetheless precedential decision, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision in In re Mighty Leaf Tea, Serial No. 76678969 (May 8, 2009) [not precedential]. The Board had found the mark ML (in standard character form) for various personal care products and skin care preparations, likely to cause confusion with the registered mark shown immediately below, for "quite similar" skin care products...

Finding Transporation of Natural Gas Related to Freight Forwarding, TTAB Affirms 2(d) Refusal of "CGL"

Posted on April 13, 2010
Affirming a Section 2(d) refusal, the Board somewhat dubiously found the mark CGL for "transportation services, namely, transportation of natural gas via marine tankers," likely to cause confusion with the registered mark CGL & Design for "freight forwarding...

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