Intellectual Property Law

Precedential No. 9: TTAB Finds "ELECTRIC CANDLE COMPANY" Generic for Light Bulbs

Posted on March 08, 2010
Ruling that "the designation 'company' cannot transform the name of the goods for which registration is sought into a trademark," the TTAB found the term ELECTRIC CANDLE COMPANY to be generic for "light bulbs; lighting accessories, namely, candle sleeves; lighting fixtures...

CACF Affirms TTAB Ruling: "X-PIPE" is Generic for Engine Exhausts

Posted on March 08, 2010
In a four-page opinion, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision of March 18, 2009 [TTABlogged here], wherein the Board found the term X-PIPE to be generic for "internal combustion engine exhausts." Monty Allen Campbell v...

Interesting TTAB Statistics in Report to February TPAC Meeting

Posted on March 07, 2010
Some interesting TTAB statistics were provided at the February 2010 TPAC meeting. (document here). New appeals and oppositions are down, final decisions are down, in first quarter of FY 2010 (Oct. - Dec. 2009): presumably the effect of a struggling economy...

Precedential No. 8: You Can't Move for Summary Judgment Until After Serving Initial Disclosures, Says TTAB

Posted on March 05, 2010
Here's a primer on how not to file for summary judgment. Opposer Qualcomm's motion was ill-timed, procedurally deficient, and substantively lacking. As a result, it FLOed right down the TTAB drain. Qualcomm Incorporated v. FLO Corporation, 93 USPQ2d 1768 (February 25, 2010) [precedential]...

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TTAB Affirms 2(d) Refusal of "CARMINE'S" Design for Restaurant Services in view of Two Other "CARMINE'S" Designs

Posted on March 04, 2010
Two CARMINE'S is/are enough, said the TTAB, in affirming a Section 2(d) refusal to register the mark CARMINE'S in the form shown here, in view of the two registered marks shown below (owned by different entities), all for restaurant services. Applicant Carmine's Broadway Feast, Inc...

TTABlog Announcements to Watch For

Posted on March 03, 2010
Hey, TTABlog readers! Watch for these upcoming announcements! The Boston Patent Law Association (BPLA) will host another "TTAB Comes to Boston" seminar on Friday afternoon, April 9, 2010, at Boston University Law School. The Board will hold a final hearing in a pending TTAB proceeding, followed by a panel discussion of the case...

Precedential No. 7: TTAB Deems Internet Printouts Admissible Via Notice of Reliance

Posted on March 03, 2010
In a significant new interpretation of Rule 2.122(e), the Board held that "if a document obtained from the Internet identifies its date of publication or date that it was accessed and printed, and its source (e.g., the URL), it may be admitted into evidence pursuant to notice of reliance in the same manner as a printed publication in general circulation...

Precedential No. 52 (2009): TTAB Rules That Objection to Discovery For Failure to Provide Initial Disclosures Must Be Made Specifically

Posted on March 02, 2010
Here is a precedential decision from November 4, 2009, that, because of its interlocutory nature, does not appear on the TTAB FOIA webpage. [Therefore it slipped under the TTABlog radar.] Opposer Amazon did not respond substantively to any of Applicant Wax's discovery requests because Wax (Amazon believed) had failed to serve initial disclosures...

TTAB Posts March 2010 Hearing Schedule

Posted on March 01, 2010
The Trademark Trial and Appeal Board has scheduled six (6) hearings for the month of March, 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...

TTAB Finds "JOJOBA BUTTER BEADS" Generic for ... Guess What?

Posted on February 26, 2010
Yes, you got it! The Board found the term JOJOBA BUTTER BEADS to be generic for "semi-solid wax for use in the manufacturing of other products in the field of personal care, cosmetics and cosmeceutical formulations and preparations," and it therefore granted International Flora's petition for cancellation of Desert Whale's Supplemental Registration...

TTABlog Article: The Top Ten TTAB Decisions of 2009®

Posted on February 26, 2010
This afternoon, I am speaking at the 54th Annual Intellectual Property Law Conference sponsored by the Center for Intellectual Property Law of John Marshall Law School. A copy of my paper, entitled "The Top Ten TTAB Decisions of 2009" may be downloaded here...

TTAB Vacates 2008 Fraud Ruling in Xel Pharmaceuticals Case

Posted on February 26, 2010
In an Order issued on February 25, 2010 (here), the Board vacated its March 7, 2008 ruling in Herbaceuticals, Inc. v. Xel Herbaceuticals, Inc., Cancellation No. 92045172, wherein the Board had entered partial summary judgment on the ground of fraud. It had found that Respondent Xel Pharmaceuticals committed fraud as to four of its registrations by filing knowingly false Statements of Use (signed by its attorney) regarding use of its XEL HERBACEUTICALS marks on some of the goods listed in its registrations...

Trademark Public Advisory Committee (TPAC) Webcast Today

Posted on February 25, 2010
The Trademark Public Advisory Committee (TPAC) will webcast its meeting today beginning at 9:00 EST. [Announcement here.] TTAB Acting Chief Judge Gerard F. Rogers is scheduled to appear from 10:20 to 11:20 to discuss the topics listed below:Discussion with TTAB Judge Gerard Rogers regarding TTAB matters...

Which Law Firms Filed the Most Petitions for Cancellation in 2009?

Posted on February 25, 2010
Back by popular demand, Towergate Software has compiled a list of the law firms that filed the most petitions for cancellation in 2009 (here). [Note that you may expand the list to show the name of the plaintiff and the proceeding number.]This new list is a companion to last week's list of law firms filing oppositions (posted here)...

Precedential No. 6: TTAB Spanks Opposer Who Failed to Serve Initial Disclosures

Posted on February 24, 2010
It seems that any decision involving a violation of the Board's "new" rules (new since 2007) will be labeled "precedential." Well, here's another one. Opposer Dating DNA failed to serve its initial disclosures and so, when it served written discovery on Applicant Imagini, the latter refused to answer, pointing to Rule 2...

Precedential No. 6: TTAB Finds "CAPITAL CITY BANK" and "CITIBANK" Not Confusingly Similar, Dismisses 2(d) and Dilution-Based Opposition

Posted on February 23, 2010
You can learn an awful lot about trademark law by reading this 68-page decision covering a myriad of issues concerning Section 2(d) likelihood of confusion and Section 43(c) dilution. Citigroup opposed registration of the marks CAPITAL CITY BANK, CAPITAL CITY BANC INVESTMENTS, CAPITAL CITY BANK GROWING BUSINESS, and CAPITAL CITY BANK INVESTMENTS for banking and financial services, in view of the registered mark CITIBANK and variations thereof for banking services...

Parties Respond to TTAB Order in Oldest Pending Case

Posted on February 22, 2010
Counsel for the parties in the oldest pending TTAB case, United Black Fund v. National Black United Fund, Inc., Cancellation No. 92013503, have responded (here) to the Board's Order of January 20, 2010 [TTABlogged here]. The proceeding has been suspended for nearly 25 years in view of a civil action in the Maryland federal court, which action has itself been administratively closed since 1984...

TTABlog on Tour: ohn Marshall IP Law Conference - February 26th

Posted on February 20, 2010
The TTABlogger will be returning home to Chicago on Friday, February 26th, as a speaker at the 54th Annual Intellectual Property Law Conference sponsored by the Center for Intellectual Property Law of John Marshall Law School. [Program here]. [It's been a long, strange (?) trip from now-defunct St...

TTAB Sustains 2(d) Opposition, finding "SWEDISH LUXURY" and "SWEDISH SLEEP SYSTEM" Confusingly Similar for Mattresses

Posted on February 19, 2010
Deeming Opposer's mark to be "strong and entitled to a broad scope of protection," the Board sustained this Section 2(d) opposition to registration of the mark SWEDISH LUXURY for, inter alia, mattresses and related retail store services [SWEDISH disclaimed], finding it confusingly similar to the registered mark SWEDISH SLEEP SYSTEM for "mattresses, cushions and pillows made of elastic viscous foam" [SLEEP SYSTEM disclaimed]...

"HEALTHY HOME VACUUM" Not Merely Descriptive For Vacuum Cleaners, Says TTAB

Posted on February 18, 2010
The Board dismissed this Section 2(e)(1) opposition to registration of the mark HEALTHY HOME VACUUM, finding it not merely descriptive of vacuum cleaners [VACUUM disclaimed]. The Board concluded that the mark "does not, in any clear or precise way, serve to immediately describe a particular characteristic or feature of the goods with any degree of particularity...

Applicant's Policing Efforts Lead to TTAB Reversal of Mere Descriptiveness Refusal of "PERFECTING SERUM" For Skin Moisturizer

Posted on February 17, 2010
Giving the benefit of the doubt to the Applicant, as required, the Board reversed a Section 2(e)(1) refusal to register the mark PERFECTING SERUM, finding it not merely descriptive of "skin moisturizer" [SERUM disclaimed]. Applicant Murad countered the Examining Attorney's third-party user evidence by showing that, through its enforcement efforts, all but two had stopped using the term or were actually selling Applicant's product...

TTAB Finds Service Mark Application Void ab initio for Non-Use Because Services Were Not Rendered Prior to Filing

Posted on February 16, 2010
When an applicant files a use-based application but has not used the mark for any of the identified goods or services, the application is void ab initio. There's no need for the adversary to jump through the fraud hoops: intent doesn't matter. Here, the question was whether PLMIC had used its service mark prior to filing its application...

Which Law Firms Filed the Most Oppositions in 2009?

Posted on February 16, 2010
Take a quick guess: what law firm filed the most oppositions in 2009? [FWIW: My guess was correct]. For the answer, check out the list (here) compiled by the folks at Towergate Software with TTABlog readers in mind.In October 2009, I posted (here) a list of the entities (i...

TTABlog Bonus: Your Very Own FRAUD-O-METER?

Posted on February 12, 2010
Some say that a picture is worth a thousand words, and that is certainly true with regard to the TTABlog FRAUD-O-METER? brand legal indicator. We all know that the CAFC in In re Bose Corporation jettisoned the TTAB's "knew or should have known" standard for fraud set out in Medinol v...

From the TTAB Website: Everything You Ever Wanted to Know About Accelerated Case Resolution (ACR)

Posted on February 11, 2010
At the TTAB website you will find three papers explaining the Board's Accelerated Case Resolution (ACR) program, by which parties may obtain "a final determination of their opposition or cancellation proceeding quickly and without the time and expense of a full trial...

Finding Suits, Handbags, and Footwear Related, TTAB Affirms 2(d) Refusal of "VABEENE" Over "VABENE"

Posted on February 10, 2010
The complementary nature of the goods, coupled with third-party registration evidence, led the Board to affirm a Section 2(d) refusal to register the mark VABEENE for "leather and imitations of leather and goods made of these materials, namely handbags and evening bags; trunks and traveling bags, umbrellas, parasols and walking sticks" and for "clothing namely footwear...

Finding Restaurant Services and Sauces Related, TTAB Affirms 2(d) Refusal of "BLACK HORSE"

Posted on February 09, 2010
Finding restaurant services related to Applicant's "sauces, spice blends, dry rubs for meats and fish, marinades, dipping sauces, and glazes for meats and fish," the Board affirmed a Section 2(d) refusal to register the mark BLACK HORSE, finding it likely to cause confusion with the registered mark BLACK HORSE & Design shown immediately below...

Precedential No. 4: TxDOT Wins TTAB 2(d) Tussle Over "DON'T MESS WITH TEXAS" for Clothing

Posted on February 08, 2010
The Board granted plaintiff's summary judgment motion in this Section 2(d) opposition/cancellation proceeding involving two entities owning registrations for the mark DON'T MESS WITH TEXAS for various clothing items. Applicant Richard Tucker admitted that TxDOT had priority of use (TxDOT proved it anyway), and TxDot easily fended off his feeble arguments regarding the lack of "significant" evidence regarding TxDOT's interstate use and the de mimimis nature of its actual confusion evidence...

Weakness of "UNITED" Mark for Money-Transfer Services Leads to TTAB 2(d) Reversal

Posted on January 29, 2010
Twenty-five third-party registrations for marks containing the word "UNITED" for financial services convinced the Board that UNITED is a weak formative, leading to a reversal of a Section 2(d) refusal of the mark shown below for money-transfer services...

Senate Passes Bill to Provide Usual Grace Periods for Section 71 Declarations of Use

Posted on January 29, 2010
The United States Senate yesterday passed a bill (here) introduced by Vermont Senator Patrick Leahy to amend the Trademark Act in order to fix an anomaly concerning the time periods for filing declarations of use under Section 71 of the Act (in connection with Madrid Extensions of Protection)...

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