Intellectual Property Law

Test Your TTAB Judge-Ability: Are These Two "CEMENTO & Design" Marks Confusingly Similar for Clothing?

Posted on September 30, 2010
Applicant Mario Dimiccoli sought to register the mark shown on the left, for various clothing items. The mark was refused registration under Section 2(d) in view of the registered mark shown on the right, for overlapping clothing items. Dimiccoli appealed...

TTAB Finds "ESCAPE" Confusingly Similar to "THE GREAT ESCAPE" for Golf Clubs

Posted on September 29, 2010
Applicant King Par got roughed up in its attempt to escape a Section 2(d) refusal of the mark ESCAPE for golf clubs. The Board affirmed the refusal, finding the mark likely to cause confusion with the registered mark THE GREAT ESCAPE, also for golf clubs...

Test Your TTAB Judge-Ability: Are "CRUSSH" for Restaurant Services and "CRUSH" for Beverages Confusingly Similar?

Posted on September 28, 2010
In this consolidated opposition and cancellation proceeding, Dr. Pepper/Seven Up challenged Krush Global's right to register the mark CRUSSH in standard character and design form for restaurant, snack bar, and cafe services. Plaintiff alleged a likelihood of confusion with its registered mark CRUSH for non-alcoholic beverages...

Precedential No. 38: "COACH" Loses Triple-Header: 2(d), 2(e)(1), and Dilution

Posted on September 27, 2010
In a 57-page opinion, the Board dismissed this three-pronged opposition brought by Coach Services, Inc., owner of the registered mark COACH for leather goods and various other consumer items. Opposer contended that Applicant Triumph Learning's mark COACH, in standard character form and in the logo form shown below, for educational test preparation materials would be likely to cause confusion with, or dilution of, Opposer's COACH mark...

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Precedential No. 37: TTAB Says Filing of Summary Judgment Motion Does Not Automatically Suspend Proceeding

Posted on September 24, 2010
On remand from the CAFC, the Board ruled that Rule 2.127(d) does not provide for an automatic stay of a proceeding when a party files a motion for summary judgment. "Rather, only an order of the Board formally suspending proceedings has such effect." As a consequence, the Board again granted Super Bakery's petition for cancellation as a sanction against Respondent Benedict for failing to comply with a Board discovery order...

Test Your TTAB Judge-Ability: Are These Two Design Marks for Software Confusingly Similar?

Posted on September 23, 2010
Of course they are, right? Not so fast there, buddy! It took the Board 67 pages to explain why it affirmed the Section 2(d) refusal of the mark on the right, for business software and computer programming services, in view of the registered mark shown on the left, for accounting software and computer services...

TTAB Finds "THE FITNESS SNEAKER" Generic for ... Guess What?

Posted on September 22, 2010
If you guessed "footwear, namely, sneakers with structural features to contribute to fitting comfort during use thereof," you hit the nail with your head. The Board affirmed a refusal to register the designation THE FITNESS SNEAKER for those goods on the ground of genericness...

TTAB Affirms 2(e)(1) Mere Descriptiveness Refusal of "ROUGE TOMATE" for Fruit and Vegetable Juices

Posted on September 21, 2010
How's your French holding up? Today we look at the Board's affirmance of a Section 2(e)(1) mere descriptiveness refusal of ROUGE TOMATE for various non-alcoholic beverages, including fruit and vegetable juices. The Examining Attorney maintained that the mark describes a feature, characteristics or ingredient of the goods because several vegetable drinks and juices are derived from red or ripened tomatoes...

ABA Webinar Sept 29th: "The Nuts and Bolts of Trademark Trial and Appeal Board Practice"

Posted on September 20, 2010
The American Bar Association Section of Intellectual Property Law and the ABA Center for Continuing Legal Education will host a webinar on Wednesday, September 29th from 11:30 AM to 1:00 PM, entitled "The Nuts and Bolts of Trademark Trial and Appeal Board Practice...

ABA Publishes "A Legal Strategist's Guide to TRADEMARK TRIAL AND APPEAL BOARD PRACTICE"

Posted on September 17, 2010
You will want to get your mitts on the new ABA book, A Legal Strategist's Guide to TRADEMARK TRIAL AND APPEAL BOARD PRACTICE, edited by Jonathan Hudis. "A welcome resource for both the TTAB tyro and veteran, this book combines legal expertise with practical insights...

Precedential No. 36: TTAB Refuses to Find Fraudulent Intent Where Applicant Relied on Advice of Counsel

Posted on September 16, 2010
If you needed confirmation of how hard it will be to prove fraud post-Bose, then here's a case for you. The Board dismissed Brady Bunte's petition for cancellation in this consolidated proceeding, finding that he had failed to prove fraud "to the hilt...

Fame of "LE CORDON BLEU" Brings TTAB 2(d) Victory Over "CORD ON BLUE" for Cord Storage Units

Posted on September 15, 2010
Applicant Muffman's goose was cooked once the Board found Opposer's mark LE CORDON BLEU to be famous for educational services in the field of cooking. Fame plays the a dominant role in the du Pont Section 2(d) analysis, and the Board proceeded to find a likelihood of confusion with Muffman's mark CORD ON BLUE for "general purpose non-metal storage units for use in hanging cards (sic), namely, stretch cords, electrical cords and bungie (sic) cords...

Two New Judges Join TTAB, Bringing Total to Nineteen

Posted on September 15, 2010
The USPTO has announced the selection of Frances S. Wolfson and Angela Lykos as Administrative Trademark Judges at the Trademark Trial and Appeal Board.Angela Lykos has been an interlocutory attorney at the TTAB for almost ten years. Currently, she is leading the Board's effort to revise the TTAB manual of procedure (TBMP)...

Test Your TTAB Judge-Ability: Are the Marks "FIRESIDE GLOW" and "FIRESIDE WARMTH" Confusingly Similar for Air Fresheners?

Posted on September 14, 2010
In this appeal from a Section 2(d) refusal, the Board found applicant's goods (air fresheners and deodorizers) to be partly identical to goods of the cited registration (air fresheners and deodorizers). There were no restrictions on the channels of trade, and so the Board deemed them identical...

Precedential No. 35: Amazon Spanked Again in TTAB Discovery Ruling

Posted on September 13, 2010
The Board was again displeased with the discovery antics of Opposer Amazon Technologies in its opposition to Jeffrey Wax's application to register AMAZON VENTURES for investment consultation services. Last year the Board issued a precedential ruling [TTABlogged here] concerning Amazon's improper, non-specific objections to Wax's discovery requests...

Erik Pelton Reports on September 2nd TPAC Meeting

Posted on September 10, 2010
Erik Pelton reports here on the September 2nd meeting of the Trademark Public Advisory Committee (TPAC).Concerning our favorite tribunal, Erik indicates that Acting Chief Judge Rogers provided the following items of interest:Updates to the TTAB Manual of Procedure (?TBMP?) are continuing, and the revised TBMP will hopefully be publicly available in early 2011...

TTAB Decides Dispute Between Two Lubavitch Chassidic Factions over Kehot Logo

Posted on September 10, 2010
In this dispute between two factions of the Lubavitch Chassidic community, the Board dismissed an opposition to registration of the emblem shown below [the "Kehot logo"], for "books, magazines, charts, maps, and photographs on a variety of aspects of Jewish life...

TTAB Reverses Refusal of "CORPORATE FUEL" For Business Advisory Services, Finding Disclaimer of "CORPORATE" Unnecessary

Posted on September 09, 2010
When this Applicant declined to comply with the Examining Attorney's requirement that the word "CORPORATE" be disclaimed in the mark CORPORATE FUEL for business advisory services, a refusal to register under Section 6(a) of the Act resulted. The Board, however, found the disclaimer unnecessary and it reversed the refusal...

Prededential No. 34: TTAB Affirms Refusal to Register "Beer Glass and Stand" Packaging for Lack of Distinctiveness

Posted on September 08, 2010
In a 30-page opinion, the Board affirmed a refusal to register the alleged mark shown below for "beer," finding that it lacked both inherent and acquired distinctiveness. Applicant Brouwerij Bosteels contended that the mark -- consisting of a flask, flask holder/stand, scrollwork, and wording -- comprises unique and distinctive product packaging for its Pauwel Kwak brand of beer, but the Board saw it as a mere refinement of a common shape...

WYHP? TTAB Dismisses 2(d) Cancellation Petition Hinged on "AUGUSTINE'S SPIRITUAL GOODS" Ownership Issue

Posted on September 07, 2010
We've started a new category of TTAB cases: WYHP? Would You Have Petitioned (for cancellation)? In this Section 2(d) attack on a registration for the mark AUGUSTINE'S for "novelty items having a religious theme, namely, incense, perfume oils and scented oils used to produce aromas when heated," the question boiled down to whether Respondent purchased the trademark AUGUSTINE?S SPIRITUAL GOODS from Petitioner via an agreement in 2002...

TTAB Affirms Failure-to-Function Refusal of DAP Background Design

Posted on September 03, 2010
The Board agreed with Examining Attorney Ramona Ortiga Palmer that the purported mark shown below is a nondistinctive background design that does not function as a trademark for Applicant's "adhesives for household purposes." Applicant DAP did not seek registration under Section 2(f), and so the Board affirmed the refusal...

WYHA? TTAB Affirms Mere Descriptiveness Refusal of "POLYMERLATEX" for Chemicals

Posted on September 02, 2010
Applicant failed to bounce back from a Section 2(e)(1) mere descriptiveness refusal of POLYMERLATEX for various chemicals, sealing agents, and other stuff. The Board affirmed, easily knocking down every argument made by Applicant. Which leads to the question, WYHA? In re PolymerLatex GmbH, Serial No...

TTAB Posts September 2010 Hearing Schedule

Posted on September 01, 2010
The Trademark Trial and Appeal Board has scheduled five (5) 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)]...

TTAB Affirms 2(d) Refusal of "MARSHLAND" Over "MARSHLANDER," Finding Camouflage Fabric and Raingear Related

Posted on August 31, 2010
The Board affirmed a Section 2(d) refusal to register the mark MARSHLAND for camouflage fabric "sold as an integral component of finished clothing items," finding the mark likely to cause confusion with the registered mark MARSHLANDER, in standard character and design form, for raingear...

WYHA? TTAB Affirms Mere Descriptiveness Refusal of "ZEOLITE" for Dishwashers

Posted on August 30, 2010
This applicant tried everything but the kitchen sink in attempting to overcome a Section 2(e)(1) mere descriptiveness refusal of the mark ZEOLITE for dishwashers. Nonetheless, its appeal went right down the drain. Would You Have Appealed? In re BSH Bosch und Siemens Hausgeraete GmbH, Serial No...

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

Posted on August 29, 2010
Professor Tom Field of Franklin Pierce Law Center has made available his casebook entitled ""Fundamentals of Intellectual Property Law." [Downloadable here]. "The PDF is approximately the 20th revision of a conventional 470 pp. casebook. It has been used twice annually in 3-semester-hour survey courses since 1999...

Rejecting Broad Interpretation of Cited Registration, TTAB Reverses 2(d) Refusal of "RED BOX DIVERSITY SYSTEM"

Posted on August 27, 2010
The Board reversed a refusal to register the mark RED BOX DIVERSITY SYSTEM in the design form shown below [DIVERSITY SYSTEM disclaimed], for "education services, namely, providing training, by way of classes, seminars, conferences and workshops in the field of cultural diversity, community education and human relations...

Pamela Chestek Comments on "METAL GEAR" WYHO Case

Posted on August 27, 2010
Pamela Chestek, ip ownership maven, comments here on the ownership issue in the recent METAL GEAR case. [TTABlogged here].So DAT thought up the mark, spec'd the goods, and arranging for manufacturing with several companies - in other words, did what every brand name company who manufactures offshore does...

Be E-mail Subscriber No. 1000 and Win a Pair of TTABlog Stress Balls

Posted on August 26, 2010
The TTABlog E-mail subscriber list stands at 997. You can be the One-Thousandth subscriber and win two TTABlog stress balls! Enter your E-mail address in the subscription box on the right.

Precedential No. 33: Opposer Proves Priority Based on Sale of Ventilators for Test Purposes

Posted on August 26, 2010
Opposer Automedx breathed more easily after the Board sustained its Section 2(d) opposition to registration of the mark SAVE for medical "ventilators," finding the mark likely to cause confusion with Opposer's mark SAVe for portable ventilators. The sole contested issue was priority of use, and the Board sided with Opposer Automedx based on its earlier sale of ventilators to the Air Force for purposes of testing and refinement...

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