Intellectual Property Law

Test Your TTAB Judge-Ability: Is "MONSTER" Merely Descriptive of Automotive Accessories?

Posted on February 10, 2011
Monster Cable filed an ITU application to register the mark MONSTER for various automotive and truck accessories, including suspension struts and truck bed liners, but Examining Attorney Steven W. Jackson found the mark to be merely descriptive and refused registration under Section 2(e)(1)...

Precedential No. 4: TTAB Finds That "NKJV" Has Acquired Distinctiveness for Bibles

Posted on February 09, 2011
Reversing a refusal to register the mark NKJV for bibles, the Board found that, in light of Applicant's long use, substantial sales and advertising, and ownership of two incontestable 2(f) registrations for marks that include the term NKJV, the mark had acquired distinctiveness...

Precedential No. 3: Finding KUBA KUBA Primarily Geographically Deceptively Misdescriptive for Cigars, TTAB Affirms 2(e)(3) Refusal

Posted on February 08, 2011
The Board affirmed a Section 2(e)(3) refusal of KUBA KUBA for cigars, tobacco, and related products, finding the mark to be primarily geographically deceptively misdescriptive of the goods. In doing so, the Board attempted to clarify the law of Section 2(e)(3) in view of recent court decisions...

Precedential No. 2: TTAB Cancels Supplemental Registration for Shape of Culvert Unit Due To Functionality

Posted on February 07, 2011
In a 57-page decision that seemed even longer, the Board granted a petition for cancellation of a Supplemental Registration for the product configuration shown below for "precast concrete bridge unit for constructing a bridge or culvert," finding the design to be de jure functional under Sections 2(e)(5) ad 23(c)...

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

PTO Roundtable on Trademark Litigation Tactics: Is There a Bull in the Trademark Shop?

Posted on February 04, 2011
Hello, Detroit! The USPTO will host an all-day Conference called "Protecting Your Intellectual Property in the Global Marketplace," on February 10, 2011 at Wayne State University. [Details here]. The afternoon session will include a "Roundtable on Trademark Litigation Tactics: Is there a Bull in the Trademark Shop?"Reportedly, several trademark bullies will take part in the roundtable, but will be seen only in silhouette behind a white screen, with voices altered to prevent identification...

Test Your TTAB Judge-Ability: Is Candy Related to Chocolate Drink Mix? Cookies?

Posted on February 03, 2011
Examining Attorney Fred Carl III issued two Section 2(d) refusals of the mark CHOKI for "candy, namely confections prepared from chocolate and aronia berries, containing no fillers, waxes or artificial ingredients, and marketed by direct sales," finding the mark likely to cause confusion with two registered marks: CHOKI for powdered chocolate drink mix and CHOKIS for cookies...

TTAB Allows Applicant to Amend I.D., But Still Sustains 2(d) Opposition to FINISHPRO for Professional Paint Sprayers

Posted on February 02, 2011
Applicant Graco won the initial skirmish but lost the war in this Section 2(d) opposition. The Board granted Graco's motion to amend its identification of goods from "paint sprayers" to "paint sprayers for use by professional painters and professional contractors in applying architectural coatings...

Judge James Walsh Retires From TTAB

Posted on February 02, 2011
On Friday, January 28, 2010, Judge James Walsh retired from the Trademark Trial Appeal Board. He served on the Board since 2005, after many years at the USPTO and a stint in private practice. Judge Walsh's departure brings the number of TTAB judges to seventeen...

TTAB Schedules Eight Final Hearings for February 2011

Posted on February 01, 2011
The Trademark Trial and Appeal Board has scheduled eight (8) oral hearings for the month of February, 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 Decides Fred Beverage's Motion to Amend, But Says It May Require Fee Before Deciding

Posted on January 31, 2011
Further to our posting of ten days ago [here], the TTAB has now taken up the motion of Fred Beverages, Inc. to amend its petition for cancellation to add four classes. In May 2010, the CAFC [here] reversed the Board's decision that had denied the motion to amend 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...

The Top Ten TTAB Decisions of 2010 (Part II)

Posted on January 28, 2011
In Part II of this compilation [Part I was TTABlogged here yesterday], the second quintet of TTAB cases includes two interesting genericness rulings: the THUMBDRIVE decision in particular catching many by surprise. In a procedural tussle, the Board found that an Opposer's attempt to amend its pleading ran afoul of the prohibition on adding new grounds in a "Madrid opposition...

Who Was the Most Frequent TTAB Opposer in 2010?

Posted on January 26, 2011
The folks at Towergate Software, with TTABlog readers in mind, have compiled a list of the most frequent TTAB opposers for 2010. Twenty-seven entities filed ten or more oppositions; I list below the top twelve.Kellogg North America Company - 70Major League Baseball* - 56Apple Inc...

The Top Ten TTAB Decisions of 2010 (Part I)

Posted on January 26, 2011
For the umpteenth consecutive year, yours truly has chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year. Since the CAFC's Bose decision in August 2009 the Board has yet to sustain a fraud claim, but last year it did issue two important fraud decisions...

Despite Strength of "ALARIS" and Identity of Marks, Board Dismisses 2(d) Proceedings Due to Lack of Evidence that Medical Goods/Services are Related

Posted on January 25, 2011
Opposer Cardinal Health went one-for-five in this consolidated Section 2(d) proceeding, leaving one to wonder regarding Cardinal's evidence, "is that ALARIS?" [Get it? Is that all there is? LOL - ed.]. Cardinal claimed likelihood of confusion between its registered mark ALARIS for various medical products and related repair and rental services, and Defendant's marks ALARIS SELECT, ALARIS ADVANTAGE, and ALARIS for medical consulting services and franchising services in the field of medical and vocational rehabilitation primarily in the workers compensation industry, and the mark ALARISWARE for computer software used in the field of medical consulting...

TTAB Applies Issue Preclusion, Grants Summary Judgment That "COCOA BUTTER FORMULA" Lacks Acquired Distinctiveness

Posted on January 24, 2011
E.T. Browne's application to register COCOA BUTTER FORMULA for personal care products was barred by the doctrine of claim preclusion in view of a ruling by the U.S. Court of Appeals for the Third Circuit that the phrase is merely descriptive and lacks acquired distinctiveness...

FRED Beverage TTAB Case Still Dormant Eight Months after CAFC Fee Ruling

Posted on January 21, 2011
Since the CAFC's May 12, 2010 decision in Fred Beverages, Inc. v. Fred's Capital Management Company, 94 USPQ2d 1958 (Fed. Cir. 2010), the TTAB has yet to rule on Petitioner's motion for leave to amend its petition for cancellation. [TTABlogged here].On June 26, 2009, the Board 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...

Finding Bricks Related to Mortar and Grout, TTAB Sustains 2(d) Opposition to STONEL over STONEFIL

Posted on January 20, 2011
Finding Applicant Stonel's bricks related to Opposer Stoncor's mortar and grout, the Board sustained a Section 2(d) opposition to registration of the mark STONEL & Design, finding the mark likely to cause confusion with the registered mark STONFIL...

Test Your TTAB Judge-Ability: Are "PAULETTE" and "PAULETTE MACARON" Confusingly Similar to "PAUL" for Bakery Goods?

Posted on January 19, 2011
Holder Suisse S.A. opposed four applications to register the mark PAULETTE MACARON [MACARON disclaimed] and the marks PAULETTE in standard character form and in the two design forms shown below, for bakery goods and retail bakery shops, claiming likelihood of confusion with its registered mark PAUL for goods including flour, bread, and pastry...

Applying Issue Preclusion, TTAB Grants Summary Judgment In Clash of the Star Registries

Posted on January 18, 2011
The Board granted Applicant ISR's motion for summary judgment on the ground of res judicata, based on a prior Board decision in a consolidated proceeding between the parties. ISR had previously successfully opposed Vaughan's applications to register the mark NAME A STAR for goods and services relating to the naming of (celestial) stars, on the ground of genericness and, alternatively, mere descriptiveness and lack of secondary meaning...

Recommended Reading: "Ethical Issues in U.S. Trademark Prosecution and TTAB Practice"

Posted on January 17, 2011
Linda K. McLeod (former TTAB judge) and Stephanie H. Bald discuss "Ethical Issues in U.S. Trademark Prosecution and TTAB Practice" in the latest issue of the John Marshall Review of Intellectual Property (10 J.MARSHALL REV. INTELL. PROP. L. 365 (2011))...

CAFC Hears Oral Argument in Citigroup v Capital City Bank

Posted on January 17, 2011
The CAFC heard oral argument on Friday, January 14th, in Citigroup's appeal from the TTAB's decision in Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645 (TTAB 2010) [precedential].[The TTAB decision is TTABlogged here]. An mp3 of the oral argument may be found here (Appeal No...

TTAB Issued 50 Precedential Decision in 2010

Posted on January 17, 2011
Here is a compilation of the TTAB's precedential opinions/decisions for the calendar year 2010, categorized according to subject matter. Be warned that occasionally an interlocutory ruling escapes my attention because it is not included in the FOIA final decision database...

TTAB Refuses to Cancel ATL'S BADDEST CHICKS Registration: Petitioner Failed to Prove Ownership or Fraud

Posted on January 14, 2011
Petitioner Littel Concepts apparently had little concept of how to win a TTAB cancellation proceeding. Littel sought to strike a registration for the mark ATL'S BADDEST CHICKS for "presentation of live performances," claiming prior rights in the same mark for similar services, and accusing Respondent Striker of fraud...

Precedential No. 1: TTAB Affirms 2(e)(5) Functionality Refusal of Motorcycle Stand Design

Posted on January 13, 2011
In its first precedential decision of 2011, the Board affirmed a Section 2(e)(5) refusal to register the product configuration shown below, finding it to be functional for "motorcycle stands." Alternatively, if not functional, the configuration lacks Section 2(f) acquired distinctiveness...

Precedential No. 50: TTAB Says Consent and License from Registrant Require Reversal of 2(d) Refusal of WACKER NEUSON over NEUSON for Machinery

Posted on January 12, 2011
The Board reversed a refusal to register the mark WACKER NEUSON for work machines for the building and the building material industries, finding it not likely to cause confusion with the registered mark NEUSON for "construction machines, namely, excavators...

TTABlogger will host a Luncheon Table Topics at INTA 2011 on ... Guess What?

Posted on January 12, 2011
"TTAB Hot Topics," that's what! Tuesday, May 17th, 1:15 - 3:15 PM. Be there, or be square.

Has the Oldest Pending TTAB Case Reached the End of the Line?

Posted on January 12, 2011
Is the end near for the oldest pending TTAB case, United Black Fund v. National Black United Fund, Inc., Cancellation No. 92013503, filed on September 9, 1982? [last TTABlogged here]. After nearly 25 years of suspension, the case was revived last year...

Precedential No. 49: Following First Niagara, TTAB Rules That Foreign Owner Sufficiently Pleaded Use of Mark in USA

Posted on January 11, 2011
The Board denied Respondent Intermix's Rule 12(b)(6) motion for dismissal of this cancellation proceeding involving its registration for the mark PEMEX for petroleum products and services, finding that Petitioner Petróleos Mexicanos has standing and had properly pleaded three claims for relief: false association under Section 2(a), likelihood of confusion under Section 2(d), and fraud...

World Trademark Review: INTA under fire for ditching popular Trademark Topics email service

Posted on January 11, 2011
Adam Smith at World Trademark Review reports here on the controversy over INTA's decision to jettison its popular email discussion service TM Topics.

Precedential No. 48: TTAB Enters Summary Judgement, Ruling That Res Judicata Bars Cancellation after Defaulted Opposition

Posted on January 10, 2011
The Board denied Petitioner Orouba Agrifoods a second bite of the (frozen?) apple by entering summary judgment on Petitioner's various claims for cancellation of the design mark shown below for frozen fruit and vegetables. Orouba had previously opposed the application that matured into the challenged registration, but the opposition was dismissed with prejudice when Orouba failed to take testimony or submit evidence...

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