Intellectual Property Law

Precedential No. 20: Per Rule 2.107(b), TTAB Denies Motion to Amend Madrid Opposition

Posted on June 08, 2010
Opposer sought to amend its Notice of Opposition to add a new ground (lack of bona fide intent), but it ran into one big problem: the opposed application is a Madrid Request for Extension of Protection and Rule 2.107(b) prohibits such an amendment in a Madrid opposition...

TTABlog Wants Your Comments

Posted on June 07, 2010
Did you know that you may leave a comment on any TTABlog posting? You may do so anonymously - even I don't know who you are. Of course, I edit the comments and reject the spammers, etc. But I won't reject a comment just because the commenter disagrees with me...

Finding "ORGANIC ASPIRIN" Deceptively Misdescriptive of and Deceptive for Dietary Supplements, TTAB Sustains Bayer Opposition

Posted on June 07, 2010
The Board sustained an opposition to registration of the mark ORGANIC ASPIRIN for "dietary supplements for human consumption," finding it to be deceptively misdescriptive under Section 2(e)(1) and deceptive under Section 2(a). Applicant unsuccessfully argued that the combination of "Organic" with "Aspirin" is incongruous since there is no such thing as organic aspirin, and therefore that the mark is inherently distinctive...

Test Your TTAB Judgeability: Is "BLUECAR" Merely Descriptive of Electric Vehicles?

Posted on June 04, 2010
Applicant Bollore sought to register the mark BLUECAR for electrically-powered vehicles, but the Examining Attorney refused registration on the ground that the mark is merely descriptive under Section 2(e)(1), reasoning that Applicant's identification of goods may encompass blue-colored electric cars...

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Fame of Coach's "Signature C" Design Mark Leads TTAB to Sustain 2(d) Opposition

Posted on June 03, 2010
Applicant Master Leather Corp. failed to pull a rabbit out of its hat while attempting to register the logo mark shown on the right, for "evening handbags, handbags, leather handbags" [Why not just "handbags"? - ed.]. Opposer Coach proved the fame of its "C Signature" mark, shown below, for handbags, and from there it was all downhill, since fame plays a "dominant role" in the Section 2(d) likelihood of confusion analysis...

Test Your TTAB Judgeability: Do You Know Trademark Mutilation When You See It?

Posted on June 02, 2010
Cutting Edge Beverages, LLC sought to register the mark shown to the right (the universal prohibition symbol) for "soft drinks, namely, carbonated and non-carbonated soft drinks," and it submitted the specimen of use shown below. The Examining Attorney refused registration on the ground that the mark of the drawing is not a "susbstantially exact representation" of the mark as used on the specimen...

Attention California IP Bar: Free June 8 Teleconference on "Recent Developments at the TTAB"

Posted on June 02, 2010
Mark Leonard of Davis & Leonard LLP, and yours truly will lead a discussion of recent TTAB developments in a (free) June 8th teleconference sponsored by the Trademark Standing Committee, IP Section, California Bar. Registration here. Attendees will receive "1...

TTAB Posts June 2010 Hearing Schedule

Posted on June 01, 2010
The Trademark Trial and Appeal Board has scheduled five (5) hearings for the month of June, 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...

USPTO Seeks Comments on Proposed Revision of Madrid Protocol

Posted on June 01, 2010
The USPTO is seeking comments by June 30, 2010 on a proposed revision of the Madrid Protocol. (See Notice here). In particular, WIPO's Madrid Working Group is considering elimination of the requirement for an application or registration in the trademark owner?s Office of origin (?basic mark?)...

Precedential No. 19: TTAB Snoringly Rules on Motions to Compel Production and to Exclude Trial Witness

Posted on May 28, 2010
In this not-very-exciting, yet precedential, procedural ruling the Board denied Applicant's motion to compel production of documents because Opposer Byer claimed it had produced all responsive documents, and it granted in part Applicant's motion to exclude one Edward Manburg as a trial witness, limiting the scope of his potential trial testimony...

Precedential No. 18: TTAB Affirms Rejection of Trademark Specimen as Mere Advertising and not Point-of-Sale Display

Posted on May 27, 2010
The Board affirmed a refusal to register the mark ANPATH for "All purpose disinfectant cleaning preparations for household, commercial and industrial use" on the ground that the mark, as used on Applicant's specimens of use, fails to function as a trademark for Applicant's goods...

Precedential No. 17: TTAB Says Section 18 Not Available for Requiring Disclaimer of Generic Part of Mark Registered for More Than 5 Years

Posted on May 26, 2010
In what appears to be a case of first impression involving application of Section 18 of the Trademark Act, the Board granted Respondent Anzar's motion to dismiss a petition for cancellation of a more-than-five-year-old registration for the mark MONTEPIO & Design for "pawn shop services" on the ground that the petition failed to state a claim on which relief can be granted...

MEET THE BLOGGERS VI: It Just Keeps Getting Better!

Posted on May 25, 2010
Lucky's Lounge was the place to be last night, as an enthusiastic and thirsty crowd gathered for Meet the Bloggers VI. Planning begins this morning for MTB VII next year in San Francisco. Marc Randazza promised to find a venue (now that will be interesting!)...

Precedential No. 16: Fraud Claim Survives Motion to Dismiss; Facts Pleaded with Sufficient Particularity

Posted on May 24, 2010
Petitioner Löwenbräu's fraud claim alleged that, according to its investigation, Respondent White Gold, at the time of filing its Statements of Use, was using its marks only on vodka and not on on all the goods listed in the Statement. Furthermore, Löwenbräu further alleged that Respondent (but not than any particular individual) had the requisite intent to deceive the USPTO...

Champions League Final at Landsdowne Pub

Posted on May 23, 2010
An intense INTA crowd of soccer fans fans gathered at the Landsdowne Pub to watch Inter Milan defeat Bayern Munich 2-0 in the Champions League Final yesterday afternoon.Photo by M. SchwimmerPhoto by J. GomezPhoto by J. Gomez

May 23 2010 Another Beautiful Day in Boston

Posted on May 23, 2010
Looks like another great day in Boston. The town is buzzing with excitement. It's great to see that INTA Milan won the Champions League Title. I suppose the INTA Soccer Committee will be celebrating today. Here are few photos from my morning stroll. I live about one block from the Christian Science Plaza and the Pru Mall...

Boston, May 22, 8AM: Getting Brighter!

Posted on May 22, 2010
I left all my INTA stuff in my office, so I biked over this morning (it's only 2.25 miles) to pick it up. Of course, I couldn't resist taking a few photos along the way, though the camera I used is not my favorite. It's going to be a beautiful day, I think...

Boston May 22, 6:45AM: A Bit Gray This Morning

Posted on May 22, 2010
Well, it's a bit gray on my street this morning, but it's supposed to be sunny today, in the low 70's. Well, as they say in baseball, youneverknow.

Boston, May 22, Noon: Very Bright!

Posted on May 22, 2010
I took a taxi from Copley Square to the Convention Center just before noon. We hit about 15 red lights and the fare came to around $16.00. I was dragging my "artwork" to Hall B-1 for the INTA Art Show. Two things struck me: how big the convention center is, and how far it is from where you want to be in Boston...

Boston Sunshine Continues as of 8 AM, May 21st.

Posted on May 21, 2010
I rode my bike to work today, from Back Bay across the Charles River to Cambridge. Here are a few pictures to provide assurance that the weather is looking good.Copley Square looking toward Boston Public LibraryLooking west along the Charles from Memorial Drive, CambridgeKendall Square, CambridgeBehind One Main Street, CambridgeView from my office window across to BostonPhotographs Copyright John L...

Sunshine in Boston: May 21, 7AM, 66 degrees Farenheit

Posted on May 21, 2010
Christian Science Plaza, Boston. One of the guards at the Plaza asked me why I was taking this picture. I said I was going to post it on a blog. He said, you can't put the picture on the Internet because "it's copyrighted." I said, I'm a copyright lawyer and it's not.

Another TTABlogger Article: "Fraud and the TTAB: What Hath Bose Wrought?"

Posted on May 21, 2010
In connection with my talk on fraud yesterday at the International AntiCounterfeiting Coalition (IACC) meeting, I provided a paper entitled, "Fraud at the TTAB: What Hath Bose Wrought?" Unlike the article that I posted yesterday, this one focuses only on fraud...

Boston at Noon, May 21: Sunny, Low 70's, Light Wind

Posted on May 21, 2010
Across the Longfellow Bridge into BostonZakim Bridge and Museum of Science

Boston Weather Still Looking Good at 4PM

Posted on May 21, 2010
Charles River from my office, 4 PM. I have a hankering to get on my bike and ride home.

TTABlogger Article: "TTAB developments: Bose and beyond"

Posted on May 20, 2010
My latest article discusses recent TTAB developments in the areas of fraud, bona fide intent, and the "famous marks" doctrine, as well as the Board's latest interpretations of various procedural rules. "TTAB developments: Bose and beyond," June-July 2010 World Trademark Review 64-68 (Issue 25)...

Summary of TPAC May 7th Public Meeting

Posted on May 19, 2010
Eric Pelton reports here on the May 7th quarterly Public Meeting of the Trademark Public Advisory Committee (TPAC).As to our favorite tribunal, Eric says this:Trademark Trial and Appeal Board Update from Judge Gerard F. Rodgers, Acting Chief Judge: * Case load is backed up, primarily because of significant time investment by judges and interlocutory staff toward updating the TBMP...

CAFC Turns Its Attention From Trademark Fraud to Patent Inequitable Conduct

Posted on May 19, 2010
In its Bose decision last year, the U.S. Court of Appeals for the Federal Circuit knocked down the underpinnings of the TTAB's fraud jurisprudence (i.e., Medinol) and demanded a higher standard of proof for fraud. It now appears that the CAFC's focus on trademark fraud was only one facet of its current concern with the issues of intent and materiality in connection with USPTO transactions...

TTABlog Special Quiz: Do You Know Your Red Sox Trivia?

Posted on May 18, 2010
If you are coming to Boston for INTA 2010 and expect to converse with the local rabble, you'd better know your Red Sox trivia. Here's a special quiz to get you started. Can you name the six players depicted below? E-mail your answers to me at jwelch at lalaw...

In Stinging Reversal, TTAB Finds "SOLIGA FOREST HONEY" Not Confusingly Similer to "FOREST HONEY" Design Mark

Posted on May 18, 2010
Just two days after oral argument, the Board issued its decision in In re Himalaya Global Holdings, Ltd., Serial No. 77117183 (May 14, 2010) [not precedential], reversing a Section 2(d) refusal of the mark SOLIGA FOREST HONEY for honey [FOREST HONEY disclaimed]...

Finding "BORN=OFFICIAL & Design" and "BØRN" Too Dissimilar, TTAB Dismisses 2(d) Opposition

Posted on May 17, 2010
This Section 2(d) opposition hinged on the issue of the similarity of the marks. Applicant Delfyette sought to register the logo mark shown below left for various items of men's, women's, and children's sportswear. Opposer claimed likelihood of confusion with, and likely dilution of, its registered marks shown below right, for footwear and leather goods, respectively...

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