Intellectual Property Law

Recommended Reading: Ted Davis on "Recent Developments in U.S Trademark Practice"

Posted on June 08, 2009
When Ted Davis talks trademarks, you should listen. That's the reason why his yearly presentation at the INTA annual meeting is so well attended. He has kindly consented to my posting his latest article/outline on recent developments in trademark law (pdf here)...

TTAB Affirms Mere Descriptiveness Refusal of "AUTOPROBE" for Soil Sampling Machines and Related Services

Posted on June 05, 2009
The mark AUTOPROBE may bring to mind a trip to Lovers' Lane, or maybe a UFO abduction movie, but the Board found it to be merely descriptive of "self-powered, mobile soil sampling machines" and of "agricultural services, namely, soil sampling, testing, and analysis...

CAFC Hears Oral Argument in Shinnecock Smoke Shop Appeal

Posted on June 05, 2009
The U.S. Court of Appeals for the Federal Circuit heard oral argument yesterday (mp3 podcast here) in In re Shinnecock Smoke Shop, Serial Nos. 78918061 and 78918500 (September 10, 2008) [not precedential]. [TTABlogged here]. The TTAB affirmed the PTO's Section 2(a) refusal to register the two marks shown below, for cigarettes, on the ground that they falsely suggest a connection with the Shinnecock Indian Nation...

TTABlog WYHA: Would You Have Appealed This 2(d) Refusal?

Posted on June 04, 2009
Our latest WYHA case involves an application to register the mark GIO for "metal hardware, namely knobs and pulls for kitchen and bath cabinetry." Examining Attorney Melvin T. Axelbund refused registration on the ground that the mark is likely to cause confusion with the registered mark GEO & Design for "metal door hardware, namely, locksets, leversets, deadbolts, handlesets, locks, padlocks, knobs, levers, handles, keys and key blanks...

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TTAB Says a Principle is not a Service, Affirms PTO Rejection of Specimens of Use

Posted on June 03, 2009
Okay, this will take some explaining. Applicant Michael Labellarte was attempting to register the mark SOFT ROOM for various audio-visual, graphic design, and editing services. He submitted specimens of use on five different occasions, but Examining Attorney Kevin S...

Teenie Weenie Wins Split Decision Over Paddington in TTAB 2(d) Battle-of-the-Bear-Designs

Posted on June 02, 2009
In last week's action, the TTAB refereed a Section 2(d) tussle involving an application to register the mark Teenie Weenie Bear & Design (shown below left) for certain paper products (class 16) and various clothing items. A divided Board panel found Applicant's mark not likely to cause confusion with the "Paddington Bear character mark" (which the Board deemed to be represented by the two-dimensional depiction having a floppy hat and duffel coat, shown below right) for related goods in class 16 and for overlapping clothing items...

TTABlog To Allow Comments

Posted on June 02, 2009
In a major development in the trademark blogosphere, the TTABlog will begin tomorrow to allow comments. The comments will be moderated by yours truly, so you will have to "keep it clean."BTW: I am told by Feedblitz that the bug experienced by some with regard to their e-mail subscriptions is being fixed...

TTAB Posts June 2009 Hearing Schedule

Posted on June 01, 2009
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, in Alexandria, Virginia. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...

TTABlog 2(e)(1) Triple-Header: Mere Descriptiveness is Not a Guessing-Game!

Posted on May 29, 2009
Here are three darn good candidates for our WYHA collection. Each appeal involved a Section 2(e)(1) mere descriptiveness refusal, and each resulted in a TTAB affirmance. There?s a common thread to the arguments of the applicants, but it?s a losing thread...

On Remand from CAFC, TTAB Re-Jettisons Bishop v. Flournoy Oppositions

Posted on May 28, 2009
Opposer H. Michael Bishop recently returned to the TTAB for another Board paddling. In September 2008, the Board dismissed two oppositions brought by Bishop because he had failed to timely submit any evidence and thus failed to prove standing or to establish either of his pleaded grounds for relief...

Sometimes Sunny San Francisco Snapshots

Posted on May 26, 2009

TTAB Affirms Two More Section 2(a) Scandalous Refusal

Posted on May 26, 2009
In the Board's latest Section 2(a) rulings, Applicant RK Netmedia failed in its attempt to register the marks CUMFIESTA and CUMGIRLS for "entertainment services in the nature of photographic images, pictures, video and audio recordings,and information regarding adult oriented subject matter transmitted through a global computer network...

Steve Baird Thinks the Washington Redskins Need a Re-Branding

Posted on May 22, 2009
Steve Baird knows a lot about the REDSKINS case. He filed the original petition for cancellation with the TTAB in 1992, and successfully convinced the Board in 1994 that the laches defense was inapplicable to a Section 2(a) disparagement claim. Steve provides some incisive commentary on this saga at the Duets Blog, in "Re-branding Madness in Washington" Overlooks Obvious: The Washington Redskins...

Some Sunny Seattle Snapshots

Posted on May 21, 2009
Yesterday afternoon turned out to be a beautiful, sunny 60 degrees. Here a few photos that I snapped (the first five yesterday). One of the other three has been shamelessly altered via Photoshop..

Precedential No. 20: TTAB Sustains ?PALOMA? 2(d) Opposition to ?PALOMITA? for Clothing, But Dismisses Claim for Fraudulent Misuse of ® SYMBOL

Posted on May 21, 2009
Faced with two Spanish-word marks, the Board declined to apply the doctrine of foreign equivalents, instead concluding that ?where both marks are Spanish words we must consider the connotation of the marks to both non-Spanish-speaking consumers and to Spanish-speaking consumers...

Precedential No. 20: TTAB Enters Judgment Due to Defendant's Blatant Failure to Comply with Board Order

Posted on May 20, 2009
WYHDTP? If you were a TTAB judge, would you have deemed this precedential? The Board entered judgment against Applicant/Respondent Donnell Mitchell in view of his failure to comply with a Board Order compelling discovery. MySpace, Inc. v. Donnell Mitchell, Opposition No...

Back to the Board: Is "REDSKINS" Disparaging or Not?

Posted on May 20, 2009
How many news reports have you seen or read about the REDSKINS case that say the football team "gets to keep using its mark"? Or doesn't "lose its mark"? Or some such nonsense. Of course, a TTAB cancellation proceeding was at the heart of the case, and the issue decided was registration of the marks, not use...

Precedential No. 19: Family-of-Marks Argument Not Available to Overcome 2(d) Refusal; Sophisticated Purchaser Claim Fails Too

Posted on May 19, 2009
Confirming that an applicant?s ownership of a family of marks cannot overcome a Section 2(d) likelihood of confusion refusal, the Board upheld the PTO?s rejection of the mark CYNERGY for "medical lasers for the cosmetic and medical treatment of the face and skin, and vascular treatment, sold directly to licensed medical practitioners...

TTABlog Now on Twitter

Posted on May 19, 2009
You may now follow the TTABlog on Twitter (here).

TTAB Resolves Santana's Ownership Dispute, But Pamela Chestek is Dissatisfied

Posted on May 19, 2009
Pamela Chestek likes nothing more than a tangled trademark ownership dispute, particularly when it's an inter-family brouhaha, but she did not appreciate the TTAB's decision in Arturo Santana Gallego v. Santana's Grill, Inc., Cancellation Nos. 92043152, 92043160, and 92043175 (May 6, 2009) [not precedential]...

Three "Meet The Blogger V" Photos Released

Posted on May 19, 2009
Congratulations to Jeremy Craft and John Egbert, of the Egbert Law Offices, Houston, Texas. They have have attended all five "Meet the Bloggers," and promise to appear at next year's MTB VI in Boston, after they have their heads examined.How many of these Bloggers can you identify?Schwimmer, Welch, and Randazza take a break from the keyboard:.

TTAB Affirms PTO's Latest Section 2(a) Scandalous Refusal

Posted on May 18, 2009
In a 27-page decision, the Board affirmed a Section 2(a) refusal to register the mark PUSSY NATURAL ENERGY in the design form shown immediately below for various beverages, including energy drinks, finding the mark to be scandalous. The Board concluded that the mark "is offensive when viewed in the context of the goods identified in the application from the standpoint of a substantial composite of the general public according to contemporary attitudes...

"Meet the Bloggers V" Tonight 6-9 PM in Seattle!

Posted on May 18, 2009
The 5th annual non-INTA event called "Meet the Bloggers" will take place tonight at the offices of Graham & Dunn in Seattle. Details (here).Seattle welcomes the BLOGGERS(Click on photo for larger picture)Schwimmer and Welch preside over Meet the Bloggers ISan Diego, May 2005(Click on photo for larger picture)

D.C. Circuit Affirms Laches Ruling Dismissing "REDSKINS" Cancellation

Posted on May 18, 2009
On May 15, 2009, the U.S. Court of Appeals for the District of Columbia Circuit affirmed the ruling of the U.S. District Court for the District of Columbia that laches barred the attempt of Native American Mateo Romero to cancel six registrations for the mark REDSKINS (or variations thereof) owned by the Washington Redskins for football entertainment services...

TTAB Re-Designates Zanella v. Nordstrom Fraud Ruling As Precedential

Posted on May 15, 2009
In a rather significant development in the TTAB's fraud jurisprudence, the Board has re-designated as precedential its decision in Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858. The Board's Order (here), dated May 13, 2009, includes a copy of the October 23, 2008 ruling now marked with the indication "THIS DECISION IS A PRECEDENT OF THE T...

Lacking Proof that Cosmetics and Medicated Lotions Are Related, TTAB Tosses Out 2(d) Refusal of "REVIVE WITH THI"

Posted on May 15, 2009
Reversing a Section 2(d) refusal, the Board found the mark REVIVE WITH 'THI' for "medicated lotions for hand, body and foot" not likely to cause confusion with the registered mark THI2 and the mark THI in the Stylized form shown to the right, for "adhesives for affixing false eyelashes; cosmetics; false eyelashes...

Tip from the TTABlog: Don't Use the Applied-For Mark Descriptively in the Identification of Goods

Posted on May 14, 2009
One should expect a Section 2(e)(1) descriptiveness refusal if one uses the applied-for mark in one's identification of goods, shouldn't one? Applicant epcSolutions, Inc. found out the answer to that question in In re epcSolutions, Inc., Serial No. 76675389 (May 1, 2009) [not precedential]...

Palomalita

Posted on May 14, 2009

TTABlog Challenge: Test Your TTAB Judgeability

Posted on May 13, 2009
Here's another chance to evaluate your potential as a TTAB judge. Let's see if that legal sheepskin on your wall was worth the cost of framing it. We have another Section 2(d) likelihood of confusion case for consideration. The Opposer alleges ownership and prior use of the mark LAMB'S for rum and has submitted registrations for the mark LAMB'S NAVY RUM and for the two design or stylized marks shown below...

TTABlog WYHA? TTAB Affirms Descriptivness Refusal of "SILICON ULTRASOUND" for Ultrasound Devices Utilizing ... Guess What?

Posted on May 12, 2009
After you read this decision ask yourself the question: Would You Have Appealed? Applicant Siemens sought to register the mark SILICON ULTRASOUND for "ultrasound devices, namely, medical ultrasound apparatus, ultrasound transducers made out of silicon wafer...

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