Intellectual Property Law

CAFC Hears Oral Argument In Fred Beverages Fee Payment Case

Posted on April 12, 2010
The CAFC heard oral argument on Friday, April 9th, in an appeal from the TTAB's decision in Fred Beverages, Inc. v. Fred's Capital Management Company, Cancellation No. 92048454 (June 26, 2009) [not precedential]. Petitioner Fred Beverages filed a motion to amend its petition for cancellation of Registration No...

Transcript of February 2010 TPAC Meeting Now Available

Posted on April 09, 2010
The transcript of the February 25, 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 58. Judge Rogers will be in Boston today, lecturing on TTAB practice and hearing oral argument in the Carroll Shelby opposition at Boston University School of Law...

Test Your TTAB Judge-Ability: Is "EMIDIO TUCCI" Confusingly Similar to "EMILIO PUCCI" for Overlapping Goods?

Posted on April 08, 2010
One key point: the Board found EMILIO PUCCI to be a famous mark for clothing and accessories. Not surprisingly, the Board sustained a Section 2(d) opposition to registration of the mark EMIDIO TUCCI in the two stylized forms shown below, for perfume, cosmetics, clothing, and leather goods, finding the mark likely to cause confusion with the previously used and registered mark EMILIO PUCCI for apparel (mainly ladies'), leather goods, perfumes and lotions...

Sophistication of Purchasers Leads to TTAB Reversal of 2(d) Refusal of "TITAN" for Commercial Coffee Brewers

Posted on April 07, 2010
Because the respective goods are expensive and are likely to be purchased carefully by knowledgeable buyers, the Board reversed a refusal to register the mark TITAN for "large volume beverage brewing and dispensing equipment, namely, heated coffee and tea brewers and servers," finding it not likely to cause confusion with the identical mark registered for "cooking and cooling equipment, namely, electric and gas ranges; salamanders; electric broilers; cheesemelters; electric deep fryers; electric and gas ovens; refrigeration and cooling units, namely, food and beverage chilling units; freezers; food steamers; smokers; gas grills; and electric griddles...

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Finding Clothing and Fountain Pens Related, TTAB Sustains "Le TIGRE" 2(d) Opposition

Posted on April 06, 2010
The near identity of the marks and the strength of Opposer's mark let the Board to sustain a Section 2(d) opposition to registration of the mark LE TIGRE for "writing instruments namely fountain pens, ball point pens, felt and fiber tip pens" and "markers and small leather goods, namely, cases for diaries and daily planners; and brief case type portfolios...

TTAB Resumes Proceedings in Oldest Pending Case

Posted on April 05, 2010
On March 31, 2010, the TTAB issued an Order resuming proceedings in its oldest pending case: United Black Fund v. National Black United Fund, Inc., Cancellation No. 92013503. The proceeding had been suspended for nearly 25 years in view of a civil action in the Maryland federal court, which civil action has itself been administratively closed since 1984...

"ILEX" Not Deceptive or Deceptively Misdescriptive for Medicated Skin Paste, Says TTAB

Posted on April 05, 2010
The Board reversed two refusals to register the mark ILEX, finding it not deceptive for (Section 2(a)) and not deceptively misdescriptive of (Section 2(e)(1)) "medicated skin care preparations, namely, skin paste for use by ostomy patients to protect the stomal region of the body and medicated skin paste for the treatment of diaper rash...

TTAB Finds "ToeSox" Generic for ... Guess What?

Posted on April 02, 2010
The Board affirmed a refusal to register the term ToeSox on the Supplemental Register, finding it to be generic for "socks." Applicant floated a few feeble arguments to fend off the refusal, but all were futile. In re ToeSox, Inc., Serial No. 77109709 (March 26, 2010) [not precedential]...

TTAB Posts April 2010 Hearing Schedule

Posted on April 01, 2010
The Trademark Trial and Appeal Board has scheduled five (5) hearings for the month of April, as listed below. Except for April 9th, 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...

TTABlog Newsflash: Stress Balls Are Smash Hit!

Posted on April 01, 2010
Following in the footsteps of the TTABlog floating keychain, the new TTABlog stress ball has become an instant classic. Pictured below is Ella Harris, frequent blog commenter, who was awarded the first of many TTABlog stress balls that will be foisted on unsuspecting friends, relatives, acquaintances, and complete strangers...

TTABlog Quarterly Index: January - March 2010

Posted on April 01, 2010
This past quarter brought a dozen precedential decisions, including a significant ruling on the admissibility of website evidence at trial, an unexpected decision regarding the ability of a foreign trademark owner to bring a dilution claim based on the fame of its mark - despite lack of use in this country, a helpful ruling on the proper pleading of a post-Bose fraud claim, and a somewhat controversial determination regarding the registrability of KHORAN for wines...

"GREEN CEMENT" Merely Descriptive of Environmentally-Friendly Cement Products, Says TTAB, Concretely

Posted on March 31, 2010
Observing that the the term "green" is "ubiquitously used as an adjective" to denote that a good or service is environmentally friendly, the Board affirmed a Section 2(e)(1) refusal to register the mark GREEN CEMENT, finding it to be merely descriptive of cement and cement-related products...

Test Your TTAB Judge-Ability: Are "THE CLOSET GUY" and "THE CLOSET LADY" Confusingly Similar for Closet-Related Services?

Posted on March 30, 2010
In this appeal from a Section 2(d) refusal to register the mark THE CLOSET GUY in the design form shown below, for "installation of custom closets and storage systems" and "custom manufacture of closets and storage systems," the Board's decision turned on the similarity of the applied-for mark to the registered mark THE CLOSET LADY for "consulting and design services for others in the field of storage units and closets...

Precedential No. 12: TTAB Sustains "HERE'S JOHNNY" Portable Toilets Opposition on Two Grounds: Res Judicata and No Bona Fide Intent

Posted on March 29, 2010
Granting Opposer's motion for summary judgment, the Board sustained an opposition to registration of the mark HERE'S JOHNNY for portable toilets, on two grounds: Number 1 - res judicata, and Number 2 - lack of bona fide intent. The Board ruled that Opposer, as assignee of the right of publicity of the late entertainer, Johnny Carson, has standing to oppose; that previous court and TTAB rulings applied because the Opposer and Applicant here are "legally equivalent" to the parties in those prior proceedings; and that, because a permanent injunction prevents Applicant from using the the applied-for mark, Applicant cannot have the requisite bona fide intent since its use of the mark would be unlawful...

Precedential No. 11: Foreign Mark's Fame in US Plus ITU Application Provides Dilution Cause of Action, Says TTAB

Posted on March 26, 2010
In this case of first impression, the Board ruled that a foreign trademark owner who has filed an ITU application may rely on the fame of its mark in the United States to support a dilution claim in an opposition. In other words, although the TTAB does not recognize the "well known mark" or "famous foreign mark" doctrine as a basis for preventing registration by another, the fame of the foreign mark in this country may support a dilution claim, provided that the owner has filed an ITU application for the mark...

Reminder: "TTAB Comes to Boston" - April 9th at Boston University School of Law

Posted on March 26, 2010
Seats are still available for the TTAB's visit to Boston on the afternoon of April 9th. The Board will hear final arguments in Factory Five Racing, Inc. v. Carroll Shelby and Carroll Hall Shelby Trust, Opposition No. 91150346, as part of a program co-sponsored by the Boston Patent Law Association and Boston University Law School...

Will the TTAB Follow the 4th Circuit's Rosenruist Ruling?

Posted on March 25, 2010
In a controversial decision issued in December 2007, the U.S. Court of Appeals for the Fourth Circuit in Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., 85 USPQ2d 1385 (4th Cir. 2007), cert. denied, ___ U.S. ___ (May 27, 2008), ruled that a foreign corporation must obey a subpoena issued by the U...

Test Your TTAB Judge-Ability: Does "VALVERDE" Have the Look and Sound of a Surname?

Posted on March 24, 2010
In this appeal from a Section 2(e)(4) refusal to register the mark VALVERDE for "?mineral and aerated waters; non-alcoholic drinks, namely, soda pops, fruit juices and fruit drinks; syrups for making beverages," the Board applied its standard In re Benthin surname test...

"E-BANDAGE" and "ELECTRONIC BANDAGE" Merely Descriptive of Bandages, Says TTAB, Unshockingly

Posted on March 23, 2010
The Board sustained a Section 2(e)(1) opposition to registration of the marks E-BANDAGE and ELECTRONIC BANDAGE, finding the marks to be merely descriptive of topical bandages having a "generator built in which uses a current derived from a battery or other power source to drive a current or material from the contact pad of the bandage into the skin...

CAFC Affirms TTAB Summary Judgment in 2(d) Farm Boy Design Dispute

Posted on March 22, 2010
In a precedential ruling, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision granting summary judgment in Odom's Tennessee Pride Sausage, Inc. v. FF Acquisition, L.L.C., Opposition No. 91182173 (April 17, 2009) [not precedential]...

TTAB Reverses 2(d) Refusal of "FLEXILOGIC" for Noise Reduction Software over Same Mark for Software Design Services

Posted on March 19, 2010
Despite the identity of the marks, the Board reversed a Section 2(d) refusal to register FLEXILOGIC for "computer hardware and software for noise reduction, spatial and strength processing, temporal tracking and gesture recognition of touch devices," finding it not likely to cause confusion with the same mark for "computer software design for others...

Petitioner North Face Falls Flat in Attempted Cancellation on Abandonment and Fraud Grounds

Posted on March 18, 2010
Petitioner North Face Apparel fell victim to Respondent Gerald L. Baranzyk's rope-a-dope approach to this cancellation proceeding involving the design mark shown below for "clothing, namely caps, shirts and jackets." Face alleged abandonment and fraud, but failed to prove either...

TTABlog News Flash: President Obama Signs Trademark Technical and Conforming Amendment Act of 2010

Posted on March 18, 2010
On March 17, President Obama signed into law the Trademark Technical and Conforming Amendment Act of 2010. Among other things, the law fixes an anomaly concerning the time periods for filing declarations of use under Section 71 of the Act (in connection with Madrid Extensions of Protection)...

"TTAB Comes To Boston" - April 9th at Boston University School of Law

Posted on March 17, 2010
The TTAB will visit Boston on the afternoon of April 9th to hear final argument in Factory Five Racing, Inc. v. Carroll Shelby and Carroll Hall Shelby Trust, Opposition No. 91150346, as part of a program co-sponsored by the Boston Patent Law Association and Boston University Law School...

Glitch-Filled Battle Over "COMPUTER GEEKS" Mark Lurches to Split TTAB Decision

Posted on March 16, 2010
You might expect a TTAB battle over the mark COMPUTER GEEKS to include a few glitches, right? Sure enough, the parties to this consolidated opposition/cancellation proceeding staggered to a split decision regarding rights in that mark for various computer-related goods and services...

"PAPERCLIP CLUB" for Office Supply Services Not Confusingly Similar to "PAPERCLIP" for Office Furniture, Says TTAB

Posted on March 15, 2010
The Board reversed a Section 2(d) refusal to register the mark PAPERCLIP CLUB & Design for "on-line wholesale and retail store services featuring office and home office supplies," finding it not likely to cause confusion with the registered mark PAPERCLIP for "office and residential furniture...

"USEFUL NETWORKS" Merely Descriptive of Location Software, Says TTAB, Questionably

Posted on March 12, 2010
The Board affirmed two refusals to register the mark USEFUL NETWORKS in standard character and design form, finding the term to be merely descriptive of computer software for physically locating people and for related software development services, and the logo unregistrable absent a disclaimer of the term...

Precedential No. 10: Divided TTAB Panel Affirms 2(a) Disparagement Refusal of "KHORAN" for Wines

Posted on March 11, 2010
An augmented TTAB panel of five judges affirmed (3-2) a Section 2(a) disparagement refusal to register the mark KHORAN for wines, concluding that "Muslims would find the mark KHORAN for wines as disparaging to themselves, their religions and their beliefs...

Appellee Removes CAFC Appeal to Federal District Court Under 15 USC 1071

Posted on March 10, 2010
A party who is dissatisfied with a decision of the TTAB may, of course, appeal to the U.S. Court of Appeals for the Federal Circuit pursuant to 15 USC Sec. 1071(a). That party thereby waives its right to seek review by way of civil action in a federal district court under 1071(b)...

TTAB Dismisses 2(d) Opposition, "MILANZA" Too Different from "POTENZA" and "TURANZA" for Tires

Posted on March 09, 2010
Despite the identity of goods (tires), channels of trade, and classes of customers, the Board dismissed this Section 2(d) opposition to registration of the mark MILANZA in the stylized form shown here, finding the mark not likely to cause confusion with the registered marks POTENZA and TURANZA...

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