Intellectual Property Law

Precedential No. 29: TTAB Affirms 2(e)(1) Refusal of Japanese Term Meaning "Walking" for Footwear

Posted on June 05, 2008
During prosecution, Applicant Tokutake shot itself in the footwear when it provided an English translation of its Japanese-language mark shown immediately below: it translated the mark as "walking, a step." Because its identified goods were footwear, Examining Attorney Laura Gorman Kovalsky not surprisingly issued a Section 2(e)(1) mere descriptiveness refusal...

Precedential No. 28: TTAB Finds Drawings OK, But Packing Label Specimen Fails to Show Service Mark Use

Posted on June 04, 2008
Pondering the propriety of Applicant wTe Corporation's drawings and specimens, the Board rendered a split decision in In re wTe Corp., Serial Nos. 78227268 and 78227272 (May 13, 2008) [precedential]. It found the drawings for the mark SPECTRAMET to be a substantially exact reproductions of the mark as used on the specimens, but it agreed with the PTO that Applicant's service mark specimen did not show use of the mark for the recited services...

TTABlog Practice Pointer: Failure to Answer Admission Requests May Be Harmful to Your Application's Health

Posted on June 03, 2008
Applicant Fine Spirits was surely in poor spirits after its lame attempt to fend off a summary judgment motion in a Section 2(d) opposition brought by Gallo Winery. Gallo asserted that Fine's mark FALCON for distilled spirits was likely to cause confusion with Gallo's registered mark FALCON RIDGE for wine...

TTAB Posts June 2008 Hearing Schedule

Posted on June 02, 2008
The Trademark Trial and Appeal Board has scheduled eight hearings for the month of June, as listed below. The hearings will be held in the East Wing of the Madison Building. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...

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TTAB Reverses 2(d) Refusal: "GRIP-RITE" for Industrial Gloves Not Confusing With "GRIPRITE" for Shoes and Boots

Posted on May 30, 2008
Reversing a Section 2(d) refusal to register, the Board found the mark GRIP-RITE for "protective gloves for industrial use" not likely to cause confusion with the registered mark GRIPRITE for "footwear, namely, shoes and boots." Although "somewhat of a close question," the Board based its ruling on the highly suggestive nature of the marks and the lack of evidence that the goods "are typically sold in the same channels of trade under the same or substantially similar marks...

Could Annual "MEET THE BLOGGERS" Event Lead to World Peace?

Posted on May 29, 2008
Perhaps. Michael Atkins, at his Seattle Trademark Lawyer blog, suggests same. See his report here on "MEET THE BLOGGERS IV."

Supreme Court Says Stoller Abused Its Process

Posted on May 28, 2008
On more than a dozen occasions in the past year, Leo Stoller has unsuccessfully sought Supreme Court review of various unfavorable lower court rulings. In the most recent case, the Supreme Court summarily disposed of his Petition for Writ of Certiorari filed in Stoller v...

Marty Schwimmer's Trademark Blog Turns Six

Posted on May 27, 2008
Marty Schwimmer's Trademark Blog turns six years old this month. Marty is the grandfather of trademark blogging. I'm not sure who the grandmother is..

Ten TTABlog Questions About Fraud

Posted on May 23, 2008
While I traveled from Berlin to London yesterday, questions kept popping into my head regarding the Board's "Twenty Questions" fraud decision, TTABlogged yesterday. It seems to me that University Games raises more questions than it answers. Here are ten questions that came to my mind:1...

Precedential No. 27: Correction of Error in Goods Prior to Publication Creates Rebuttable Presumption of No Fraud, Says TTAB

Posted on May 22, 2008
In its latest fraud ruling, the TTAB has addressed the vexing issue of whether fraud is avoided if an applicant corrects a false statement as to the goods or services in a use-based application before the application is published. The panel majority ruled that amending an application to correct an erroneous identification of goods, prior to publication, creates a rebuttable presumption that the applicant did not commit fraud on the PTO...

Wednesday in Berlin

Posted on May 21, 2008

TTABlogger Survives Monday at INTA Berlin

Posted on May 20, 2008
Two highlights from Monday at INTA: TTAB Chief Judge Sams pointed out a new and important, precedential fraud decision (Opposition No. 91168142), which I shall review in a day or two. And the fifth annual "Meet the Bloggers" event came off without a hitch...

Unfriendly Shores? Recent Developments in U.S. Law May Trouble Foreign Trademark Owners

Posted on May 20, 2008
Fraud was a major topic of discussion at INTA Berlin after yesterday morning's presentation. Non-US attorneys and agents who may not fully understand the use-based trademark regime that exists in the United States, are trying to come to grips with the problem...

TTABlogger Arrives at INTA Berlin

Posted on May 19, 2008
Blogging will be light this week. Mostly photos, I suspect. Unless the TTAB comes up with a good one.Hotel D.O.M.I.C.I.L..

Mueller's Bests Barilla in TTAB 2(d) Food-Fight Over "AMERICA'S FAVORITE PASTA"

Posted on May 16, 2008
The Italian company, Barilla, was foiled in its attempt to register the mark BARILLA - AMERICA'S FAVORITE PASTA for pasta [AMERICA'S FAVORITE PASTA disclaimed]. The Board sustained a Section 2(d) opposition brought by the successor to Mueller's, finding Barilla's mark likely to cause confusion with Opposer's common law mark AMERICA'S FAVORITE PASTA for the same goods...

TTAB Affirms Surname Refusal of "HARRINGTON OAK" for Flooring

Posted on May 15, 2008
Applicant Mannington Mills was floored by the PTO's Section 2(e)(4) refusal of the mark HARRINGTON OAK for "oak floor boards; oak wooden flooring" [OAK disclaimed]. The Board affirmed the refusal, agreeing with Examining Attorney Monique C. Miller that the mark is primarily merely a surname...

TTAB Says "No Way" to "JOSE," Finds it Confusingly Similar to "JOSE CORTEZ" for Tequila

Posted on May 14, 2008
Applicant Tequila Cuervo, owner of the mark JOSE CUERVO, was foiled in its attempt to register the mark JOSE for tequila and non-alcoholic mixes for use with tequila. The Board sustained Opposers' 2(d) opposition, finding the mark likely to cause confusion with the mark JOSE CORTEZ, registered for tequila...

TTAB Summary Judgment: Applicant Admittedly Was Not the Owner of the Mark at Filing

Posted on May 13, 2008
Applicant Tracy Artman filed an application to register the mark TRACY'S TREATS NATURAL PRODUCTS FOR REMARKABLE SKIN for various soaps and related products. Unfortunately, she admitted in her answer to Opposer's amended notice of opposition that Tracy's Treats, Inc...

Finding PTO Evidence Inadequate, TTAB Reverses 2(a) and 2(d) Refusals of "HEINEKEN" for Meat Juices

Posted on May 12, 2008
Canadian Robert V. Marcon has done it again. In March 2008, the Board reversed a Section 2(a) refusal of his application to register L'OREAL PARIS for aloe vera drinks because the PTO failed to prove that the French company of that name "is of sufficient fame or reputation to consumers in the United States" that a false connection would be presumed...

TTAB Overturns PTO Refusal, Finds "LAY'S GET YOUR SMILE ON" to be Unitary Mark

Posted on May 09, 2008
Finding that Frito-Lay's mark LAY'S GET YOUR SMILE ON!, as it appears on the specimen of use (shown immediately below) is a unitary mark, the Board reversed the PTO's refusal to register. The Examining Attorney had maintained that the applied-for mark actually consists of two marks, LAY'S and GET YOUR SMILE ON! In re Frito-Lay North America, Inc...

Precedential No. 26: Specimens of Use Display Web Address, Not Service Mark Use

Posted on May 08, 2008
Los Angeles lawyer Vicki Roberts lost her case before the TTAB when she appealed the PTO's refusal to register her alleged mark irestmycase (in non-standard character form) for legal services. The Board agreed with Examining Attorney Steven W. Jackson that, as it appears on Applicant's specimens of use, irestmycase fails to function as a service mark under Sections 1, 2, 3, and 45 of the Trademark Act...

"MEET THE BLOGGERS IV" Set for May 19th in Berlin

Posted on May 07, 2008
Jeremy Phillips of the IPKat blog has taken the laboring oar in planning MEET THE BLOGGERS IV (or if you prefer, "Treffen Sie die Bloggers IV") for the evening of Monday, May 19, from 8:30 to 10:30 at the top of Potsdamer Platz 1, 10785 Berlin. All are welcome!The first "Meet the Bloggers" was held in San Diego in 2005...

Precedential No. 25: TTAB Affirms Refusal of Mark Having a Phantom Element

Posted on May 06, 2008
Finding that Applicant Primo Water's proposed mark [shown immediately below] contains a phantom element ("namely, text and graphic material or a combination thereof that are identical but inverted copies of each other"), the Board affirmed a refusal to register the mark under Section 1(a)(1) and Rule 2...

DC Circuit Rules TTAB Party May Raise New Issues in 21(b) Civil Action for Review

Posted on May 05, 2008
The U.S. Court of Appeals for the District of Columbia Circuit has reversed in part a district court ruling in a civil action under Lanham Act Section 21(b), seeking review of the TTAB's decision in Aktieselskabet af 21. November 2001 v. Fame Jeans, Inc...

Have TTAB Judges Been Appointed Unconstitutionally?

Posted on May 01, 2008
In a 2007 article (here) in the Patently-O Patent Law Journal, Professor John F. Duffy of George Washington University Law School observes that that there may be a serious problem with the way administrative judges of the Board of Patent Appeals and Interferences have been appointed since the year 2000...

Precedential No. 23: TTAB Affirms Genericness Refusal of "BOND-OST" for Cheese

Posted on April 30, 2008
Applicant Noon Hour Food Products, Inc. found itself in an unfortunate position. Its 70-year old registration for the mark BOND-OST for cheese was "inadvertently cancelled" in 2002, and when it applied for a new registration, the PTO refused on the ground of genericness...

Precedential No. 22: Finding a (2)(a) False Connection, TTAB Cancels "TWIGGY" Registration for Clothing

Posted on April 29, 2008
Finding that, at the time of Respondent's trademark registration in 2000, the mark TWIGGY pointed uniquely to Petitioner Lesley Hornby a/k/a Twiggy, the Board granted her Section 2(a) petition for cancellation of Respondent's registration for the mark TWIGGY for "clothing, namely, children's pants, tops, slacks, skirts, vests, sweaters, shirts and blouses...

Precedential No. 21: Finding Old "LASALLE" Automobile Mark Abandoned, TTAB Dismisses General Motors' Opposition for Lack of Priority

Posted on April 28, 2008
Rejecting the claim of General Motors that it still owns rights in the mark LASALLE, the Board dismissed an opposition to registration of the mark LA SALLE for motor vehicles, including automobiles. Applicant Aristide appeared pro se and neither submitted evidence nor filed a brief, which is usually a formula for disaster at the TTAB...

PTO Proves Wine and Restaurant Services Related, TTAB Affirms 2(d) Refusal of "BRICKSTONE CELLARS"

Posted on April 25, 2008
The Board affirmed a Section 2(d) refusal to register the mark BRICKSTONE CELLARS for wine, finding the mark confusingly similar to the registered mark BRICKSTONES for restaurant services. The key issue, of course, was the relatedness of the involved goods and services, and the PTO's evidence won over the Board on that point...

TTAB Finds Toilet Plunger Designs De Jure Functional

Posted on April 24, 2008
Applicant George Tash's utility patents and his boastful advertising led to the Board' s finding that the two product designs shown below are de jure functional and unregistrable as trademarks. In addition, assuming arguendo that the designs are not functional, Tash's evidence of acquired distinctiveness was insufficient to show that the designs have become source-identifying...

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