Intellectual Property Law

ABA Webinar Sept. 30: "Trademark Fraud on the USPTO - A New Landscape"

Posted on September 18, 2009
The ABA Section of Intellectual Property Law will host a webinar entitled "Trademark Fraud on the USPTO - A New Landscape" on Wednesday, September 30, 2009, 3:00 PM to 4:30 PM (EST). Details may be found here.At the end of August, the U.S. Court of Appeals for the Federal Circuit, in In re Bose, overturned an ever-growing line of Trademark Trial and Appeal Board decisions enabling challengers to invalidate pending trademark applications and issued registrations on grounds of fraud - resulting from circumstances of simple inadvertence or misunderstanding...

WYHA? "INVENTION REGISTRY" Merely Descriptive of Invention Document Storage, Says TTAB

Posted on September 17, 2009
Would You Have Appealed this one? The TTAB affirmed a Section 2(e)(1) refusal to register the mark INVENTION REGISTRY, finding it merely descriptive of "electronic storage of archival documents related to invention conception dates" [REGISTRY disclaimed]...

ABA Webinar Sept. 30: "Trademark Fraud on the USPTO - A New Landscape"

Posted on September 16, 2009
The ABA Section of Intellectual Property Law will host a webinar entitled "Trademark Fraud on the USPTO - A New Landscape" on Wednesday, September 30, 2009, 3:00 PM to 4:30 PM (EST). Of course, the catalyst for the webinar is the CAFC's recent decision in In re Bose Corporation, Appeal No...

Petition for Certiorari filed in Harjo v. Pro-Football, Inc.

Posted on September 16, 2009
Susan S. Harjo et al. have filed a Petition for Writ of Certiorari in the U.S. Supreme Court, seeking review of the decision of the U.S. Court of Appeals for the D.C. Circuit in Pro-Football, Inc. v. Harjo, 90 USPQ2d 1593 (D.C. Cir. 2009). [copy of Petition here (431 pages)]...

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Finding Autos and Tires Not Closely Related, TTAB Reverses 2(d) Refusal of "ECHELON"

Posted on September 15, 2009
In this rather strange case, both Applicant Hyundai and the Trademark Examining Attorney urged the Board to reverse a Section 2(d) refusal of the mark ECHELON for automobiles that was based on the identical mark registered for "automotive tires." The Examining Attorney had considered himself bound by In re Jeep Corporation, 223 USPQ 333 (TTAB 1984), and along with Hyundai argued that Jeep should be overturned...

Canadian Concurrent Use Applicant Gets USA Minus MN, Says TTAB

Posted on September 14, 2009
British Columbia-based Overwaitea marched across the border and grabbed 49 states via its concurrent use application for registration of the mark URBAN FARE for "retail grocery store services." Overwaitea listed Urban Fare, LLC as an exception to its right to exclusive use...

Jane Coleman's Treatise on Secondary Liability for Trademark Infringement

Posted on September 11, 2009
Jane Coleman provides a useful treatise on the increasingly important issues of contributory and vicarious liability for trademark infringement at her new website (here). Apparently good writing runs in the Coleman family. We know that her husband Ron is an amazing writer (witness his Likelihood of Confusion blog here)...

Finding Wine and Beer Related, TTAB Affirms 2(d) Refusal of "BEAR REPUBLIC" over "BEAR REPUBLIC RICARDO'S RED ROCKET ALE & Design"

Posted on September 11, 2009
E. & J. Gallo's attempt to register the mark BEAR REPUBLIC for wine was stymied by the USPTO's Section 2(d) refusal based upon the registered mark RED ROCKET RICARDO'S BEAR REPUBLIC ALE & Design for beer and ale [ALE disclaimed]. The Board affirmed, finding the marks similar and, based on third-party registration evidence, the goods related...

WYHA? TTAB Affirms Failure-to-Function Refusal of "STRENGTH IN DATA" for Brochures

Posted on September 10, 2009
ImClone Systems sought to register the mark STRENGTH IN DATA for advertising and promotional publications in the health care field. Its specimens of use are shown below. Examining Attorney Fred Carl III refused registration on the ground that the phrase did not function as a trademark for these goods...

Finding Double Entendre, TTAB Reverses 2(e)(2) Refusal of "PROFUMO DE FIRENZE" for Perfume

Posted on September 09, 2009
Reversing a Section 2(e)(2) refusal, the Board found the mark shown below to be not primarily geographically descriptive of perfumes and cosmetics. It ruled that although the mark may be understood as describing that Applicant's goods are made in Florence, it could also have a non-geographical meaning as "the scent (or sweet smell) of Florence...

Motion to Strike Bogus Affirmative Defenses: Worth the Effort?

Posted on September 08, 2009
When I receive an answer to a notice of opposition or a petition for cancellation that contains boilerplate "affirmative defenses," I usually don't bother to move to strike because it's not worth the time and expense. Once in a while I do make a motion, depending on how ornery I feel at the time...

Follow Your TTAB Cases on TTAB Across The Board

Posted on September 04, 2009
Trademark attorney Chris Shiplett has launched a useful new website called TTAB Across The Board, which provides a searchable database of TTAB case status information and TTAB filings.At TTAB Across The Board, one may search for case information on TTAB proceedings and appeals, and may also search the full text of TTAB filings...

Precedential No. 37: Board Grants Motion to Introduce at Trial, Discovery Deposition of Nonparty Taiwanese Witness

Posted on September 04, 2009
In a somewhat interesting decision, the Board granted Opposer's motion under Rule 2.120(j)(3)(i) to allow introduction of a nonparty discovery deposition by way of notice of reliance. The witness, Momo Chen, a Taiwanese citizen who resides outside the U...

Some Additional Commentary on Bose

Posted on September 03, 2009
Many readers have posted comments regarding the CAFC's Bose decision. [See TTABlog post here.] I have also been collecting additional commentary (links below). If you have an item that you thing should be added, please send me a link.Additional commentary:Michael Hall at his blog, Registration Ruminations (here), ponders the impact of Rule 11...

WYHA or not WYHA? "CHROMALOY" Merely Descriptive of Surgical Implants, Says TTAB

Posted on September 03, 2009
What do you think? Does this one fall below the WYHA line? The TTAB affirmed a Section 2(e)(1) refusal to register the mark CHROMALOY, finding it merely descriptive of "surgical implants comprising artificial material." The Board concluded that consumers would recognize the term as the equivalent of "chrome alloy," which describes "a feature or characteristic of such surgical implants...

TTAB Reverses Surname Refusal of "SIGMANN" for Kitchen Fixtures

Posted on September 02, 2009
The Board needed only six pages to set out its decision reversing a Section 2(e)(4) surname refusal of the mark SIGMANN for sinks, lamps, and lighting fixtures, printed matter relating to kitchens, and kitchen furniture. The Examining Attorney offered a feeble NEXIS/LEXIS listing of 33 persons with the surname SIGMANN (five of which appeared to be duplicates), and excerpts from five news stories about persons name SIGMANN...

CAFC Reverses TTAB's Bose Fraud Ruling, Eviscerates Medinol

Posted on September 01, 2009
Stop the fraudits! It's a whole new ballgame at the TTAB after the U.S. Court of Appeals for the Federal Circuit yesterday reversed the Board's decision in Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (TTAB 2007). The Board had found that Bose committed fraud in its 2001 renewal of a registration for the mark WAVE for, inter alia, audio tape recorders and players...

TTAB Posts September 2009 Hearing Schedule

Posted on September 01, 2009
The Trademark Trial and Appeal Board has scheduled nine hearings for the month of September, 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)]...

Precedential No. 36: "MTOWN CLOTHING" and "MOTOWN" Confusingly Similar for Clothing, Croons TTAB

Posted on August 31, 2009
Perhaps Applicant Charles O'Rourke cried "the tears of a clown" when the TTAB sustained this Section 2(d) opposition to his application to register the mark MOTOWN CLOTHING & Design for clothing [CLOTHING disclaimed]. The Board found confusion likely with the mark MOTOWN, registered for musical recordings and previously used for clothing...

Precedential No. 35: Finding Mutilation, TTAB Affirms Refusal of Applicant's Two Bottle Mark

Posted on August 28, 2009
Applicant Pharmavite LLC got nowhere fast in its attempt to register the mark shown to the right (comprising a drawing of two overlapping bottles) for dietary supplements. The Board agreed with Examining Attorney Daneen J. Hetzel that the applied-for mark "is not a substantially exact representation of the mark as shown in applicant's specimen" (immediately below), as required by Trademark Rule 2...

TTAB Accepts "BIG BOY" Restaurants Concurrent Use Agreement

Posted on August 27, 2009
The Board accepted the concurrent use agreement (found here) entered into by the parties in Frisch's Restaurants, Inc. v. Big Boy Restaurants International, LLC, Concurrent Use No. 94002189 (August 11, 2009). It ruled that Applicant Frisch's Restaurants is entitled to registration of the mark BIG BOY for "tartar sauce and pies" and for "restaurant, drive through and carryout services" for the states of Indiana and Kentucky, and for certain counties in Tennessee and Ohio...

"NO FRIGGIN CLUE" Confusingly Similar to "CLUE" for Video Games, Says TTAB

Posted on August 26, 2009
The Board sustained Hasbro's opposition to registration of the mark NO FRIGGIN CLUE for, inter alia, computer and video games, finding it likely to cause confusion with the "well-known and strong" mark CLUE registered for board games and computer and video games...

Finding Clothing and Jewelry Related, TTAB Affirms 2(d) Refusal of "TIANA"

Posted on August 25, 2009
Daffy Duck, meet Mucky Duck. The Board affirmed an opposition to Disney's application to register the mark TIANA for various clothing items, finding the mark likely to cause confusion with the identical mark registered for "jewelry, diamonds." The third-party registration evidence "overwhelmingly" favored Examining Attorney Stephen Aquila's position regarding the relatedness of women?s dresses, shirts, skirts and sweaters, on the one hand, and jewelry, on the other hand...

On Summary Judgment, TTAB Finds "SUPER HERO" Applicant Lacked Bona Fide Intent

Posted on August 24, 2009
The Board entered summary judgment against pro se Applicant Michael Craig Silver in his attempt to register the mark SUPER HERO for various skin care products. Based on Silver's discovery responses and discovery deposition testimony, Opposers established a prima facie case that Applicant lacked a bona fide intent to use the mark on the goods at the time he filed his application...

TTAB Tosses Out Bankrupt Opposition to "SECRETS OF THE MILLIONAIRE MIND"

Posted on August 21, 2009
Opposer Learning Annex was schooled by the TTAB in its opposition to registration of the mark SECRETS OF THE MILLIONAIRE MIND for tapes and CDs, various printed materials, and educational services relating to self-improvement and wealth accumulation: (A) Opposer neglected to prove its standing; (B) Opposer failed to establish that the subject mark is merely descriptive under Section 2(e)(1); and (C) Opposer wrongly asserted that the mark is unregistrable as the title of a single work, since "the application is based on intention to use the mark in commerce and this record does not establish that applicant will not use this proposed mark in connection with its International Class 9 goods on a series of creative works...

WYHA? TTAB Finds "WOW PRINTABLE COUPONS" Confusingly Similar to "WOW! MARKETING"

Posted on August 20, 2009
Applicant Elena Potoupa sought to register the mark WOW PRINTABLE COUPONS for promotional services featuring online downloadable coupons ["PRINTABLE COUPONS" disclaimed], but Examining Attorney Marcie R. Frum Milone refused registration under Section 2(d) in view of the registered mark WOW! MARKETING for advertising and marketing services and for dissemination of advertising online...

Re-Test Your TTAB Judge-Ability: Can You Handle Another Nut Case?

Posted on August 19, 2009
Here we go again! Another chance to prove that you are TTAB judicial material. Applicant Sunland, Inc., sought to register the mark SUNLAND for processed nuts and nut butters, raw nuts, peanut butter, and raw peanuts. The Examining Attorney refused registration under Section 2(d), finding a likelihood of confusion with the registered mark SUN-LAND for "raisins, dried fruits, preserved fruits...

TTAB Reverses "ANDIAMO" 2(d) Refusal: Insufficient Proof that Wine and Restaurant Services are Related

Posted on August 18, 2009
Reversing a Section 2(d) refusal to register the mark ANDIAMO for wine, the Board found the mark not likely to cause confusion with the identical mark registered for restaurant services. The law requires "something more than that similar or even identical marks are used for food products and for restaurant services...

TTAB Affirms Refusal: Applicant Failed to Comply with Rule 2.61(b) Requirement for Additional Specimens

Posted on August 17, 2009
Pursuant to Rule 2.61(b), Examining Attorney Y.I. Lee required that pro se Applicant Kent G. Anderson provide additional specimens for his class 1 and class 3 goods because of the wide range of unrelated articles listed in his application. Anderson didn't...

Precedential No. 34: Applicant's Cancelled Registration for Identical Mark No Help, TTAB Affirms 2(d) Refusal of "DAVEY" for Water Pumps

Posted on August 14, 2009
In a lengthy, comprehensive, and perhaps record-breaking du Pont analysis, the Board affirmed a Section 2(d) refusal to register the mark DAVEY for "electric motors for machines; waterpumps with fluid flow or pressure control for domestic, industrial and commercial use; and parts and fittings therefor...

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