Intellectual Property Law

Antler Trade Dress Fails to Function as a Trademark for Ammunition, Says TTAB

Posted on July 09, 2009
The Board affirmed a refusal to register the design shown below as a trademark for ammunition, finding that it fails to function as a source indicator. Applicant Alliant fired a blank with its claim that the design is inherently distinctive, the Board concluding that the design is not so unique that it would automatically be perceived as a trademark...

Another WYHA? TTAB Affirms 2(e)(4) Surname Refusal of "MERIWETHER" for Cabinetry

Posted on July 08, 2009
The Board affirmed a Section 2(e)(4) refusal to register the mark MERIWETHER for cabinetry, finding it to be primarily merely a surname. Applicant Masco argued that the mark has non-surname significance as the first name of explorer Meriwether Lewis, but that argument, unlike Lewis, went nowhere...

CAFC Rules on Whether "SEED TO PLATE" Design Marks are Confusingly Similar

Posted on July 08, 2009
In a nonprecedential disposition, the U.S. Court of Appeals for the Federal Circuit ruled today on whether the two marks shown below, both for services related to "growing crops as food," are likely to cause confusion. In re Northland Organic Foods Corp...

WYHA? TTAB Affirms 2(e)(1) Mere Descriptiveness Refusal of "SENSOR DOME" for Kitchen Cooktops

Posted on July 07, 2009
Would you have appealed from this Section 2(e)(1) refusal? Examining Attorney David S. Miller deemed the mark SENSOR DOME merely descriptive of household and kitchen machines and equipment, including ovens, ranges, and cooktops. The Board affirmed in a brisk, 7-page opinion that relied largely on Applicant's own admissions during prosecution...

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TTAB Affirms Failure-to-Function Refusal of Folded Brochure as Service Mark

Posted on July 06, 2009
The Board said no to Applicant Kathy Sayah's attempt to register the shape and design of a folded brochure (shown below) as a service mark for advertising and printing services, because the brochure fails to function as a mark. The Board found the brochure to be not inherently distinctive and it deemed Sayah's proof of acquired distinctiveness to be insufficient...

CAFC Affirms TTAB's Shinnecock Smoke Shop Section 2(a) Ruling

Posted on July 03, 2009
The U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's judgment in the Shinnecock Smoke Shop case, in which the Board affirmed the PTO's Section 2(a) false association refusal of the two marks shown below, for cigarettes. (TTABlogged here)...

Precedential No. 26: TTAB Affirms Descriptiveness Refusal of "BATTLECAM" for Computer Game Software

Posted on July 02, 2009
Applicant Petroglyph Games won the identification-of-goods battle but lost the registration war regarding its mark BATTLECAM for "computer game software." In a rather odd ruling, the Board reversed the PTO's requirement that Petroglyph provide a new identification of goods...

TTAB Posts July 2009 Hearing Schedule

Posted on July 01, 2009
The Trademark Trial and Appeal Board has scheduled six hearings for the month of July, 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 (lower right-hand corner)]...

TTAB Denies Motion to Amend Cancellation Petition to Add New Classes Because Fee Did Not Accompany Motion

Posted on June 30, 2009
Maybe it's just me, but I found this decision surprising. Petitioner Fred Beverages filed a motion to amend its petition for cancellation of Registration No. 3051906, seeking to add three more classes to the petition. The Board denied the motion because it "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 Quarterly Index: April - June 2009

Posted on June 30, 2009
The TTABlog now accepts comments -- so go ahead, hit me with your best shot! Note also that you may now follow The TTABlog on Twitter (here). E-mail subscriptions to the TTABlog continue to be available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz...

Precedential No. 25: "VANTAGE TITAN" and "TITAN" Confusingly Similar for Related Medical Devices, Says TTAB

Posted on June 29, 2009
The Board played "Whac-A-Mole" with Applicant Toshiba's several arguments as it affirmed the PTO's Section 2(d) refusal to register the mark VANTAGE TITAN for "medical magnetic resonance imaging diagnostic apparatus, namely, MRI diagnostic apparatus." Despite the sophistication of the purchasers, the differences in the marks and the goods, and the distinctiveness of the word VANTAGE, the Board found the mark likely to cause confusion with the registered mark TITAN for "medical diagnostic apparatus, namely, medical ultrasound device...

More Recommended Reading: Jordan Weinstein's TTAB Year in Review

Posted on June 26, 2009
I want to make sure that you have plenty of good reading material for your summer vacation in Argentina. Jordan Weinstein has kindly permitted me to post copies of his written material and his slides from this year's INTA annual meeting, both entitled "Decisions of the Trademark Trial and Appeal Board and Federal Courts on Registrability Issues 2008-2009...

Recommended Reading: Sandra Edelman on Proving Bona Fide Intent

Posted on June 25, 2009
The latest issue of The Trademark Reporter includes Sandra Edelman's timely and informative article on bona fide intent, entitled "Proving Your Bona Fides - Establishing Bona Fide Intent to Use Under the U.S. Trademark (Lanham) Act," 99 Trademark Reporter 763 (May-June 2009)...

Would You Have Appealed from this TTAB Trifusal?

Posted on June 24, 2009
It's time for another WYHA! Attorney Peter S. Herrick attempted to register the logo mark shown immediately below for "attorney services," but Examining Attorney Ty Murray hit him with a triple refusal. Mr. Murray maintained that registration is barred by Sections 2(a) and 2(b), and he also deemed Applicant's drawing to be unacceptable...

TTAB Reverses Two Refusals of "CARPET TO CARPET" for Reclamation Services

Posted on June 23, 2009
The Board rolled out the red (or maybe green?) carpet for Applicant Columbia Insurance, tossing out two PTO refusals of the mark CARPET TO CARPET for "receiving used carpet products for subsequent reclamation of the carpet.? The PTO maintained that Applicant's recitation of services was unacceptable, and that Applicant failed to disclaim the merely descriptive term "carpet...

New Job Posting: Under Armour Seeks "Rock Star" Paralegal (Baltimore)

Posted on June 23, 2009
Under Armour, Inc. seeks a "rock star" paralegal for its Baltimore, Maryland headquarters. Three-plus years of law firm or in-house paralegal experience, including one year of trademark experience, required. Details may be found here at the company website...

Pam Chestek Ponders the Transfer of Common Law Trademarks under State Law

Posted on June 22, 2009
At her Property, intangible blog, Pam Chestek reports (here) on an "uh-oh moment" involving transfer of common law trademark rights. The TTAB case, she observes, involves a "fairly routine examination of a petitioner's first use date to determine who is senior user of the mark...

Reminder: TTABlog Now Accepts Comments

Posted on June 22, 2009
Let's hear from you out there!.

Precedential No. 24: TTAB Finds Another Motorola "Chirp" Sound Unregistrable

Posted on June 19, 2009
In February 2008, the Board sustained Nextel's opposition to Motorola's application to register a 911 hertz chirp sound as a trademark for two-way radios, finding that the sound fails to function as a trademark. (TTABlogged here). Nextel and Motorola returned to the TTAB in an opposition to Motorola's 1800Hz chirp sound (listen here) for "cellular telephones and two-way radios," and Motorola lost again: on the ground of claim preclusion as to two-way radios, and as to cell phones on the ground that mark is not inherently distinctive (as a matter of law) and has not acquired distinctiveness...

How Sound is Your Sound Mark Knowledge?

Posted on June 19, 2009
The PTO's "Kids' Pages" include a page (here) full of links to registered (and a few pending) sound marks. So if your weather is as dreary as Boston's and you're stuck inside at lunchtime, try identifying each of these ten sound marks (listed in no particular order)...

"DUNES" on Slot Machines not a Proper Specimen for Casino Services, Says TTAB

Posted on June 18, 2009
Applicant Ballagio, LLC crapped out in its attempt to register the mark DUNES for casino services. Its specimen of use showed the mark on slot machines, but that was not enough to create a direct association between the mark and Applicant?s casino services...

New Job Posting: NYC Firm Seeks Fantastic TM Paralegal

Posted on June 18, 2009
Are you a fantastic trademark paralegal in the NY area, with experience in domestic and international trademarks, as well as domain names? If you're contemplating a move, please send a resume to mschwimmer (at symbol) mosessinger dot com. Note: if you are a recent law school grad, then this would not be a good opportunity for you...

TTAB Affirms Rejection of SOU filed by Assignor After Assignment

Posted on June 17, 2009
AmericasourceBergen Corp. (ABC) and PMSI Inc. were slightly off in their timing in filing a Statement of Use for the mark PMSI MSA for "healthcare cost containment" services. ABC filed the SOU on September 10, 2008, but it had assigned the mark to PMSI on September 8, 2008 (after ABC signed the SOU on that same day)...

Precedential No. 23: TTAB Refuses to Hear Belated Fraud Claim, Finding It Not Tried By Consent

Posted on June 16, 2009
Perhaps sensing that it was up the proverbial creek with its Section 2(d) claim, Opposer Morgan Creek Productions, on the day its trial brief was due, filed a motion to add a claim of fraud, asserting that the issue had been tried by the "implied consent of the parties...

Test Your TTAB Eyeball-Ability With These Five "CL" Stylized Marks for Jewelry

Posted on June 12, 2009
Put on your Section 2(d)-colored glasses and cast your analytical eyes on these five CL (Stylized) marks. Applicant Sajen, Inc. sought to register the mark shown on the right for jewelry. The PTO refused registration because it found the mark confusingly similar to four other CL (Stylized) marks (shown below), three of them registered for jewelry and the fourth for on-line retail services featuring jewelry...

Fame of Gibson Guitar's "Dove Wing Peg Head" Design Brings TTAB 2(d) Victory

Posted on June 12, 2009
Finding Gibson's incontestably registered "Dove Wing Peg Head" design (shown on the right) to be "both distinctive and famous in connection with guitars," the Board sustained an opposition to registration of the mark shown below for "guitars," finding it likely to cause confusion with Gibson's mark...

"AMERICAN GIRL" Tops "AMERICAN BOY" in TTAB 2(d) Clothing Confrontation

Posted on June 11, 2009
American Girl came out on top of American Boy in this Section 2(d) battle of the sexists. The Board found the mark AMERICAN BOY for "clothing, namely, shirts, pants, tops, sweaters, sweatshirts and suits" likely to cause confusion with the well-known AMERICAN GIRL mark registered for various clothing items, including shirts and pants...

Precedential No. 22: Saying No-No to Double Entendre Argument, TTAB Deems "URBANHOUZING" Merely Descriptive of Real Estate Services

Posted on June 10, 2009
Despite Applicant Dean S. Carlson's dogged efforts, the Board affirmed a Section 2(e)(1) mere descriptiveness refusal of the mark URBANHOUZING in standard character form for "real estate brokerage; real estate consultation; and real estate listing." Carlson unsuccessfully contended that the compression and misspelling of the words URBAN HOUSING into URBANHOUZING transforms the phrase into an inherently distinctive mark, and that the ZING portion of the mark creates a separate commercial impression that results in a double entendre...

Appeal from a Section 2(d) Refusal: You Be the TTAB Judge!

Posted on June 09, 2009
Alrighty, then. Here's another chance to prove your TTAB judgeworthiness. Applicant Blue Heaven Hosiery seeks to register the mark BBW in standard character form for "women?s knee high stockings of nylon and spandex construction material and not including upper torso clothing...

Recommended Reading: Glenn Gundersen's Annual Report on Trademark Trends

Posted on June 09, 2009
Trademark guru Glenn A. Gundersen has published his annual review of "Trends in Trademarks." (pdf here). His principal comments are aptly summarized by the main heading: "Hard Times for Trademarks: Filings plunge, TTAB docket shrinks."Glenn A. GundersenGlenn observes that "[t]he Trademark Trial and Appeal Board has seen a significant drop in applicants who appeal examining attorneys' refusals to register new marks, as well as a decrease in the number of parties involved in contentious proceedings...

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