Intellectual Property Law

TTAB Sustains 2(d) "TELMEX" Opposition, Finding Applicant Acted in Really Bad Faith

Posted on July 19, 2010
Applicant Andres Guiterrez Estrada, a resident of Mexico, was taken to the woodshed by the Board in this Section 2(d) opposition to registration of the mark AUDITORIO TELMEX for arena and entertainment services [AUDITORIO disclaimed]. The Board found his mark likely to cause confusion with the previously-used mark TELMEX for telephone calling card services...

Stoller's New "STEALTH" Application Getting Close USPTO Attention

Posted on July 16, 2010
You may recall that in March 2008 an entity called Stoller Pension and Profit Sharing Plan filed U.S. Trademark Application Serial No. 77424372 to register the mark STEALTH for a long list of goods in classes 12, 25, and 28, claiming first use dates of January 1981...

Precedential No. 30: TTAB Strikes Counterclaim Allegations Based on Ex Parte Prosecution Errors, but Okays Section 10 Abandonment Claim

Posted on July 15, 2010
Opposer Flash moved under FRCP 12(b)(6) to dismiss Applicant's counterclaim for cancellation of one of Opposer's pleaded registrations. The Board agreed with Flash that several of Applicant's allegations did not state a valid claim for cancellation, but one allegation did...

Recommended Reading: Following the Direction of TrafFix: Trade Dress Law and Functionality Revisited

Posted on July 14, 2010
In an article in the latest issue of IDEA (published by Franklin Pierce Law School) entitled "Following the Direction of TrafFix: Trade Dress Law and Functionality Revisited," Professor Amy Cohen of Western New England College School of Law reviews the history of product configuration trade dress law, including its expansion in the 1980s through the Supreme Court's attempt in TrafFix Devices Inc...

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Precedential No. 29: TTAB Dismisses "ECSTASY" Cancellation - Petitioner Proves Standing, But Not Abandonment or Fraud

Posted on July 13, 2010
After clearing the standing hurdle, Petitioner Anosh Toufig experienced the agony of defeat when the Board dismissed his petition for cancellation of a registration for the mark ECSTASY for ?parfum, eau de toilette, and cologne.? The Board ruled that Petitioner?s evidence fell short of proving abandonment, and his proof of fraud was nonexistent...

CAFC Hears Oral Argument in Chippendales' "Cuff & Collar" Appeal

Posted on July 12, 2010
On July 9th, the U.S. Court of Appeals for the Federal Circuit heard oral argument [mp3 here] in the appeal from the TTAB's decision in In re Chippendales USA, Inc., 90 USPQ2d 1535 (TTAB 2009) [precedential]. [TTABlogged here]. A divided TTAB panel affirmed the PTO's refusal to register the "Cuffs & Collar" design mark shown below, finding it not inherently distinctive for "adult entertainment services, namely exotic dancing for women in the nature of live performances...

CAFC Affirms's TTAB's "OUTDOOR KIDS" Cancellation Dismissal

Posted on July 12, 2010
In an eight-page, nonprecedential decision (here), the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision in Outdoor Kids, Inc. v. Parris Manufacturing Co., Inc., Cancellation Nos. 92045687 and 92046943 (March 9, 2009) [not precedential]...

Precedential No. 28: Finding Lack of Bona Fide Intent, TTAB Sustains "MITHRIL" Opposition

Posted on July 09, 2010
In this, the third episode in the Registration Quest of Joseph M. Bumb, the Board sustained an opposition to registration of the mark MITHRIL for various jewelry items, finding that Mr. Bumb "lacked the requisite bona fide intention to use the MITHRIL mark in commerce when he filed his intent-to-use application to register that mark...

CAFC Affirms TTAB's Mere Descriptiveness Ruling in "E-LEX" Case

Posted on July 08, 2010
Yesterday, the U.S. Court of Appeals for the Federal Circuit affirmed per curiam the Board's decision in In re The Lex Group VA, Serial No. 76665046 (August 28, 2009) [not precedential]. [TTABlogged here]. (CAFC Rule 36 affirmance here). Mp3 of oral Argument here...

Precedential No. 27: Finding Computer Software and Services Related, TTAB Affirms 2(d) "ACTIVECARE" Refusal

Posted on July 07, 2010
In this questionably precedential decision, the Board affirmed a Section 2(d) refusal to register them mark ACTIVECARE for "software, namely, a software feature that automatically analyzes and repairs or optimizes performance settings for personal computers, sold as a component of personal computer performance and maintenance utility software," finding it likely to cause confusion with the registered mark ACTIVE CARE for technical support services namely, troubleshooting of electronic communications computer hardware and software problems by telephone, by e-mail, by fax and on-site; installation, maintenance and updating of electronic communications computer software" [CARE disclaimed]...

TTAB Posts July 2010 Hearing Schedule

Posted on July 06, 2010
The Trademark Trial and Appeal Board has scheduled eleven (11) hearings for the month of July, 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...

Precedential No. 26: "OSMODEX" Specimens Fail to Show Use as Service Mark, TTAB Rules

Posted on July 02, 2010
In yet another specimen-of-use case, this one precedential, the Board affirmed a refusal to register the mark OSMODEX for "consultation services regarding controlled release drug delivery technology for pharmaceutical companies," on the ground that the mark does not function as a service mark...

Precedential No. 25: "CLOTHING FACTS" Not Functioning as a Trademark, Says TTAB

Posted on July 01, 2010
In a precedential ruling, the Board affirmed a refusal to register the mark Clothing Facts in standard character form for various clothing items, on the ground that the mark as appearing on the specimens of use functions as informational matter and not as a source-identifier...

Daniel Kegan: "The grammar of intellectual property: Copyright is a noun, trademark is an adjective"

Posted on June 30, 2010
I don't like seeing the word "trademark" used as a verb. Nor the word "copyright." Daniel Kegan, of Kegan & Kegan in Chicago, doesn't either. He touches on this point in a brief article for the Illinois State Bar Association, entitled "The grammar of intellectual property: Copyright is a noun, trademark is an adjective...

TTABlog Quarterly Index: April - June 2010

Posted on June 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...

TTAB Affirms Rejection of Catalogue Specimen for "CELLAR 360" for Wine

Posted on June 29, 2010
Applicant submitted, as its specimen of use for the mark CELLAR 360 for wine, a catalogue mailed to prospective customers, with the mark appearing on the cover (see below). Examining Attorney Karen K. Bush refused registration under Sections 1, 2, and 45 of the Trademark Act on the ground that the specimen does not show use of the applied-for mark as a trademark for the goods...

Recommended Reading: "A Comparative Empirical Analysis of Online Versus Mall and Phone Methodologies for Trademark Surveys"

Posted on June 28, 2010
Hal Poret, of InfoGROUP/ORC in New York City, offers for your beach-reading pleasure, an article in the latest Trademark Reporter entitled "A Comparative Empirical Analysis of Online Versus Mall and Phone Methodologies for Trademark Surveys," 100 Trademark Reporter 756 (May-June 2010)...

Precedential No. 24: TTAB Says Reference to Documents (in Russian) Does Not Satisfy FRCP 33(d)

Posted on June 25, 2010
Applicant WDS responded to certain interrogatories by referencing its business records, pursuant to FRCP 33(b). The documents were in Russian. Opposers moved to compel supplemental responses that did not reference the Russian documents. The Board granted the motion to compel...

Precedential No. 23: Finding Third-Party Registrations Not Probative, TTAB Reverses 2(d) Refusal

Posted on June 24, 2010
In this precedential ruling, the Board reversed a Section 2(d) refusal to register the mark EPIC for "personal headlamps," finding the mark not confusingly similar to the identical mark for "electric lighting fixtures." The Board took a dim view of the third-party registrations introduced by the Examining Attorney, deeming them not probative and pointing out that that "examining attorneys must review the registrations carefully to ensure that each registration presented is probative and that the number of registrations is sufficient, along with other types of evidence, to establish that the types of goods at issue are related...

TTAB Reverses 2(d) Refusal As Waste of Everyone's Time

Posted on June 23, 2010
The Board took two Examining Attorneys to task in this appeal from a Section 2(d) refusal. Applicant Grand Prix sought to register the mark SPYN in the stylized form shown immediately below, for various automobile parts. The Examining Attorneys saw a likelihood of confusion with the registered mark SPYN in the different stylized form shown next below, for "audio equipment namely speakers, equalizers, and amplifiers...

Test Your TTAB Judge-Ability: Is "LEMONADE" Merely Descriptive of Restaurant Services?

Posted on June 22, 2010
Flower Restaurant Group, Inc. applied to register the mark LEMONADE for ?restaurant services; catering; self service restaurants.? The Examining Attorney deemed the mark merely descriptive and refused registration under Section 2(e)(1), arguing that Applicant highlights lemonade as a ?house specialty...

Recommended Reading: "Bona Fide Intent to Use in the United States and Canada"

Posted on June 21, 2010
Here's the second entry in your summer TTABeach-reading package: an article by Daniel R. Bereskin, Q.C., Miles J. Alexander, and Nadine Jacobson, entitled "Bona Fide Intent to Use in the United States and Canada," 100 Trademark Reporter 709 (May-June 2010)...

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

Posted on June 18, 2010
Okay, all you judicial wannabes out there. How would you decide this one? Applicant sought to register the mark ICE AGE FULL LIP SERVICE LIP PLUMPER for "non-medicated lip preparations" [LIP PLUMPER disclaimed]. Registration was refused under Section 2(d) in view of the registered mark LIP SERVICE for "non-medicated lip balms" [LIP disclaimed]...

Precedential No. 22: Reversing 2(e)(4) Refusal, TTAB Finds "P.J. FITZPATRICK, INC." Not Primarily Merely a Surname

Posted on June 17, 2010
The TTAB reversed a Section 2(e)(4) refusal to register the mark P.J. FITZPATRICK, INC. for various construction services, finding the mark not to be primarily a surname. The Board attempted to clarify prior case law by stating that "if a mark consists of two initials (or more) coupled with a surname, it typically will convey a commercial impression of a personal name, and thus generally will not be primarily a surname...

TTABlog Recommended Reading: Ted Davis on Recent Developments in Trademark and Unfair Competition Law

Posted on June 16, 2010
I never miss Ted Davis's presentation at the INTA annual meeting. Judging from the size of the crowd in attendance this year, a lot of other people feel the same way. Ted has once again kindly allowed me to post his latest 50-page article/outline on "Recent Developments in U...

Precedential No. 21: TTAB Sustains Dilution Claim For the First Time in Seven Years

Posted on June 15, 2010
Not since Hector was a pup has the TTAB sustained a dilution claim. In fact, it had sustained only one (NASDAQ) since dilution became available as a ground for opposition and cancellation in 1999. But the Board has found the mark THE OTHER RED MEAT for "fresh and frozen salmon" to be dilutive of the registered mark THE OTHER WHITE MEAT for "association services namely, promoting the interests of members of the pork industry...

TTAB Affirms Disclaimer Requirement of "VILLAGE" in "HEALTH VILLAGE" Mark for Real Estate Services

Posted on June 14, 2010
The Board affirmed a refusal to register the mark HEALTH VILLAGE for rental, sales, management, and development of real estate, based on Applicant's refusal to disclaim the word VILLAGE. Examining Attorney Lydia M. Belzer maintained that VILLAGE identifies a feature or characteristic of the services because they "pertain to villages and/or to buildings set up in such a manner as to form villages...

Fraud and Lack of Bona Fide Intent: Some Thoughts on Remedies

Posted on June 11, 2010
Several TTABlog readers and I have been trying to crystallize our understanding of the remedies available under a claim of fraud (based on non-use) and those available under a claim of lack of bona fide intent. The bottom line is that fraud is the "nuclear" option, while a false statement that falls short of fraud may not be, unless the false statement pertains to all the goods or services in a class...

TTAB Finds "THREE-STRAND FLOSS" Generic for ... Guess What?

Posted on June 10, 2010
The Board granted a petition for cancellation of a Supplemental Registration for THREE-STRAND FLOSS [with FLOSS disclaimed], finding it to be generic for "cotton thread and yarn." It concluded that "it is common practice in the industry to refer to the genus of 'cotton thread and yarn' by the number of strands in the product in the format with the number first followed by the words 'strand' and 'floss...

Finding Lack of Bona Fide Intent, TTAB Sustains "MIDDLE EARTH JEWELRY" Oppositions

Posted on June 09, 2010
Pro se Applicant Joseph M. Bumb got the TTABum's rush in his quest for registration of the marks MIDDLE EARTH JEWELRY and ARAGORN for various jewelry items. In light of Bumb's lack of documentation and his own testimony, the Board found the applications to be void ab initio due to Bumb's lack of bona fide intent to use the marks...

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