Intellectual Property Law

TTAB Hot Stove League Opener: LA Dodgers Oppose BROOKLYN BURGER logo

Posted on November 01, 2010
The Los Angeles Dodgers, apparently hoping to salvage something from this season, have filed an opposition (here) to registration of the mark BROOKLYN BURGER in the logo form below, for "hamburger patties." Los Angeles Dodgers, LLC v. A. Stein Meat Products, Inc...

Fur Flies at TTAB: Playboy Wins Cancellation of "BUNNY" Registration for Clothing and Handbags

Posted on October 29, 2010
There was no need for Playboy Enterprises to pull a rabbit out of a hat to win this cancellation proceeding. The TTAB readily found Respondent's mark BUNNY for various handbag and clothing items likely to cause confusion with Playboy's "Bunny logo" mark for certain clothing items, billfolds, and card cases...

WYHO? TTAB Finds "GORILLA LOFT" Not Confusingly Similar to "HYLOFT" for Storage Racks and Shelving

Posted on October 28, 2010
Would You Have Opposed? Opposers asserted that Applicant's mark GORILLA LOFT for storage racks and shelving would likely cause confusion with, and would likely dilute, their registered mark HYLOFT for shelving and storage racks and related retail store services...

Internet Survey Evidence Contributes to TTAB Reversal of Refusal to Register Shape of Walther PPK Handgun

Posted on October 27, 2010
Rarely does a product configuration mark pass TTAB muster [IIRC, the Baldwin key shape was the last one (here)], but it just happened in In re Carl Walther GmbH, Serial No. 77096523 (October 26, 2010) [not precedential]. The Board reversed a refusal to register the mark shown below for "firearms; pistols; and air soft guns," finding that Applicant Walther had established acquired distinctiveness for the product design under Section 2(f)...

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Parties Opt For ACR: TTAB Finds "AETNA ONE" Not Confusingly Similar to "HUMANA ONE" for Health Care-Related Services

Posted on October 26, 2010
Eleven months after the opposition was filed, the parties received their TTAB decision in Humana Inc. v. Aetna Inc., Opposition No. 91192704 (October 13, 2010) [not precedential]. The parties opted for the Board's ACR (Accelerated Case Resolution) procedure, agreed to accelerated discovery, skipped trial, and then proceeded to briefing on the merits, relying on evidence submitted with their briefs...

Precedential No. 40: TTAB Reverses 2(d) Refusal: Differing Trade Channels and Customers Trump Third-Party Registrations

Posted on October 25, 2010
The Board reversed a Section 2(d) refusal to register the mark MINDPOWER for botanical extracts for use in the manufacture of various products, including nutraceuticals, finding it not likely to cause confusion with the registered mark MIND POWER X for "dietary and nutritional supplements...

Current Roster of TTAB Administrative Trademark Judges

Posted on October 22, 2010
The recent selection of Frances S. Wolfson and Angela Lykos as Administrative Trademark Judges at the Trademark Trial and Appeal Board, and the retirement of Paula T. Hairston, brings the number of TTAB Judges to eighteen. Judge Gerard F. Rogers serves as Acting Chief Judge...

TTAB Affirms Genericness Refusal of "JOC" For ... Guess What?

Posted on October 22, 2010
Applicant Joe Wiens failed to gain TTAB support in his appeal from a refusal to register, on the Supplemental Register, the term JOC for "protective athletic garments," namely, clothing with built-in cup pouches or protective cups. Examining Attorney Sharon A...

Recommended Reading: Anthony Fletcher, "The Product with the Parody Trademark: What's Wrong with CHEWY VUITON?"

Posted on October 21, 2010
Trademark authority Anthony L. Fletcher provides an entertaining and informative journey through the law of trademark parody over the past 50 years, concluding with his own proposed "Statement of the Law," in his article, "The Product with the Parody Trademark: What's Wrong with CHEWY VUITON?", 100 Trademark Reporter 1091 (September-October 2010)...

TTAB Sustains Opposition to Registration of Carroll Shelby's "Cobra 427 S/C Vehicle Shape" Due to Lack of Acquired Distinctiveness

Posted on October 20, 2010
In a well-reasoned49-page decision, the Board sustained an opposition to registration of the shape of Carroll Shelby's Cobra 427 S/C (shown below) for "automobiles," on the ground that the mark lacks acquired distinctiveness. The Board dismissed Opposer Factory Five's claims of genericness and fraud and found it unnecessary to reach the abandonment issue, since Shelby had no trademark right to abandon...

TTAB Cancels "EQUINE BODY WORKER" Registration For Lack of Acquired Distinctiveness

Posted on October 19, 2010
In a somewhat touching decision, for horses anyway, the Board granted a petition for cancellation of Equinology's Section 2(f) registration for the mark EQUINE BODY WORKER, finding that the mark lacks acquired distinctiveness for the services of "providing courses of instruction and educational testing in the field of equine massage...

"INVENT! INVENT! INVENT! PATENT IT! Confusingly Similar to "PATENT IT!," Says TTAB

Posted on October 18, 2010
Palmer Patent Consultants perhaps needed a trademark consultant in connection with its attempt to register the mark INVENT! INVENT! INVENT! PATENT IT! for "intellectual property consultation" [PATENT disclaimed]. The Board affirmed a Section 2(d) refusal, finding the mark likely to cause confusion with the registered mark PATENT IT! for "legal services...

TTAB Judge Paula T. Hairston Retires

Posted on October 18, 2010
A reliable source tells me that Administrative Trademark Judge Paula T. Hairston retired as of October 15, 2010. Judge Hairston was appointed to the TTAB in 1994. [A complete roster of the remaining eighteen TTAB judges may be found here.]

Pamela Chestek Explains the TTAB's Recent "NITELIFE" Ownership Decision

Posted on October 18, 2010
Because the TTAB's recent Nitelife decision was too complicated for my aging brain, I asked i.p. ownership guru Pamela Chestek to explain it. She did so here at her Property, Intangible blog. Nitelife of Santa Barbara v Nite Life Car Club Ass'n, Opp. No...

USPTO Seeks Comments on Trademark Bullies You Have Known

Posted on October 15, 2010
The U.S. Patent and Trademark Office is requesting comments (here) on the following topic: "the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner...

Precedential No. 39: TTAB Re-Designates "ONCE A MARINE ..." Decision as Precedential

Posted on October 14, 2010
On September 3, 2010, the Board re-designated its decision in In re Eagle Crest, Inc., 96 USPQ2d 1227 (TTAB 2010) as precedential. The original TTABlog posting may be found here. The Board held that the phrase ONCE A MARINE, ALWAYS A MARINE would be perceived merely as informational and does not function as a trademark for Applicant's clothing itemsText Copyright John L...

"AGAVERITA" Merely Descriptive of Non-Alcoholic Cocktail Mixes, Says TTAB

Posted on October 14, 2010
The Board sustained this Section 2(e)(1) opposition to registration of the mark AGAVERITA in stylized form, finding it merely descriptive of "nonalcoholic cocktail mixes." Tequila Cuervo La Rojena S.A. de C.V. v. David Kent Axtell, Opposition No. 91188596 (September 30, 2010) [not precedential]...

Parties Go ACR: TTAB finds "FREDERICK WILLIAM" and "FREDERICK WILDMAN logo" Not Confusingly Similar for Wine

Posted on October 13, 2010
The parties opted for the Board's Accelerated Case Resolution (ACR) process in this Section 2(d) opposition to the mark FREDERICK WILLIAM for various types of wine. Opposer Frederick Wildman claimed likely confusion with its registered logo mark shown below, for "wines...

Edge Games Crashes in Trademark Suit Against Electronic Arts

Posted on October 13, 2010
For several years, Edge Games has been claiming broad rights in the word "EDGE" in connection with video games, but its aggressiveness took it right over the edge when it sued Electronic Arts for trademark infringement, claiming that EA's use of the mark "MIRROR'S EDGE" for video games infringed its rights...

Test Your TTAB Judge-Ability on this Trademark Mutilation Case

Posted on October 12, 2010
Do you know trademark mutilation when you see it? Applicant AHL, Inc. applied to register the mark HOME STATE for firearms; its specimen of use showing the mark as applied to the goods appears immediately below. The question is this: under Rule 2.51(b), is the mark of the drawing, (i...

Mark Your TTAB Calendar: Webinar on Fraud, November 10, 2010

Posted on October 08, 2010
Two trademark experts, Steve Baird and Joe Dreitler, along with yours truly, will conduct a webinar on November 10, 2010 (1:00 - 2:30PM EST), entitled: "Trademark Fraud on the USPTO - Meeting the Challenges of Pleading and Proving Fraud After Bose." Full details and registration here...

The IP Book 2010 Available at 10% Discount

Posted on October 08, 2010
TTABlog Readers interested in purchasing the 2010 edition of The IP Book, published by The Midwest Intellectual Property Institute and Minnesota Continuing Legal Education, may do so here (either in book form or CD-Rom). For a 10% discount, enter this code when prompted: 2010IPBook...

Follow the TTABlog on Twitter !

Posted on October 08, 2010
By following the TTABlog on Twitter (here), you'll receive not only the blog postings but additional tweets and re-tweets that may be of interest (at least to me).

TTABlogger Article: The Top Ten TTAB Decisions of 2009-2010

Posted on October 07, 2010
Here is a link to my chapter in the 2010 edition of The IP Book, published by The Midwest Intellectual Property Institute and Minnesota Continuing Legal Education: "The Top Ten TTAB Decisions of 2009-2010." The IP Book provides a collection of updates on case law and emerging issues in all major areas of intellectual property law...

Updated Case Book: "Fundamentals of Intellectual Property Law" by Prof. Thomas G. Field, Jr.

Posted on October 07, 2010
Professor Tom Field of the University of New Hampshire School of Law has updated his casebook entitled ""Fundamentals of Intellectual Property Law." [Free download here]. This is the Fall 2010 version, which is approximately the 21st revision. "It has been used twice annually in 3-semester-hour survey courses since 1999...

WYHA? TTAB Affirms 2(d) Refusal of "VICCINO'S & Design" Over "IL VICINO" for Restaurant Services

Posted on October 06, 2010
No matter how you slice it, Applicant Viccino's was in deep-dish trouble when it appealed from a Section 2(d) refusal to register its logo mark shown below for "delivery of food by restaurants" and "carry-out restaurants." The Board affirmed, finding the mark likely to cause confusion with the registered mark IL VICINO for restaurants...

CAFC Affirms TTAB: Chippendales' "Cuffs & Collar" Mark Not Inherently Distinctive

Posted on October 05, 2010
The U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision [TTABlogged here] holding that Chippendales' "Cuff & Collar" costume mark is not inherently distinctive for "adult entertainment services, namely exotic dancing for women...

Place Your Bets: TTAB Posts October 2010 Hearing Schedule

Posted on October 04, 2010
Any predictions on the six (6) TTAB hearings scheduled for the month of October (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)]...

Emphasizing Rareness of the Surname, TTAB Reverses Section 2(e)(4) Refusal of "BOVIS FOODS"

Posted on October 01, 2010
Judge Seerherman applied her rareness-focused approach to the Section 2(e)(4) analysis of the mark BOVIS FOODS for "wholesale distributorship services featuring food products," resulting in a Board ruling that the mark is not primarily merely a surname...

TTABlog Quarterly Index: July - September 2010

Posted on September 30, 2010
E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. You may also follow the blog on Twitter (here). And don't forget to leave your comments! Finally, please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at lalaw...

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