Intellectual Property Law

Affirming 2(d) Refusal of "COMMANDER-IN- CHIEF," TTAB Finds Board Games and Playing Cards Related

Posted on January 28, 2010
In this Section 2(d) Board game, the TTAB found the mark COMMANDER-IN-CHIEF for "equipment sold as a unit for playing board games" likely to cause confusion with the nearly identical mark COMMANDER IN CHIEF for playing cards. Applicant's arguments that Registrant sells its goods to tourists in Washington, DC and other touristy areas and that Registrant may no longer be using its mark were simply irrelevant to the Board's determination...

Thinking About Fraud (cont.): Why Look to Patent Law for the Trademark Fraud Standard?

Posted on January 27, 2010
In its fraud analysis in In re Bose Corporation, 91 USPQ2d 1938 (Fed. Cir. 2009), the CAFC relied on various precedents involving inequitable conduct in the patent arena. As Joe Dreitler has pointed out (for example, here), trademark fraud and patent inequitable conduct are completely different beasts, and they should be treated differently...

TTAB Finds "CATELLI" for Pasta Sauce Confusingly Similar to "LOCATELLI" for Cheese

Posted on January 26, 2010
In a "somewhat close" but nonetheless dull case, the Board gave the benefit of the doubt to the Registrant in sustaining a Section 2(d) opposition to registration of the mark CATELLI for "pasta sauces," finding it likely to cause confusion with the registered mark LOCATELLI for "cheese...

Thinking About Fraud: Where Does "Inadvertence" End and "Reckless Disregard" Begin?

Posted on January 25, 2010
Countless articles, seminars, webinars, and postings have informed us that in In re Bose Corporation, 91 USPQ2d 1938 (Fed. Cir. 2009), the CAFC rejected the "knew or should have known" standard for fraud set out by the TTAB in Medinol Ltd. v. Neuro Vasx, Inc...

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Boston Bar Association: "Let's Talk TTAB: Fraud, Intent-to-Use, and Other Hot Topics"

Posted on January 23, 2010
On Wednesday, January 27th, yours truly will lead a discussion of recent TTAB developments at a lunchtime meeting of the Boston Bar Association's International Intellectual Property Law Committee. The title: "Let's Talk TTAB: Fraud, Intent-to-Use, and Other Hot Topics...

WYHA? TTAB Affirms Section 2(e)(4) Surname Refusal of "WEIS" for Frozen Dairy Products

Posted on January 22, 2010
The Board not surprisingly affirmed a Section 2(e)(4) refusal to register the mark WEIS in the design form shown below, for frozen dairy products. More than four thousand household listings for "Weis," coupled with the fame (believe it or not) of recently deposed Notre Dame football coach Charlie Weis, convinced the Board that Weis is not a rare surname...

TTAB Enters Summary Judgment: "RED KAP" and "RED SNAP" for Clothing Too Dissimilar for Confusion or Dilution

Posted on January 21, 2010
The Board needed only ten pages to grant Respondent's summary judgment motion, ruling that Respondent's mark RED SNAP for various clothing items is not confusingly similar to, nor likely to dilute, the registered mark RED KAP for clothing. Imagewear Apparel Corp...

Oldest Pending TTAB Case Continues in Suspension

Posted on January 20, 2010
The oldest pending TTAB case, United Black Fund v. National Black United Fund, Inc., Cancellation No. 92013503, is about to reach its 25th year of suspension. The proceeding was commenced on September 9, 1982, and has been suspended since May 10, 1984...

CAFC Favors USC Trojans Over USC Gamecocks in "SC" Logo Fracas

Posted on January 20, 2010
In a non-precedential ruling, the CAFC affirmed the TTAB's decision in University of Southern California v. The University of South Carolina, Opposition No. 91125615 (August 1, 2008) [not precedential]. [TTABlogged here]. At the Board level, the Trojans of USC (California) topped the Gamecocks of USC (South Carolina) in a Section 2(d) opposition proceeding involving their respective SC logos...

TTAB Issues New Order in Oldest Pending TTAB Case

Posted on January 20, 2010
Well, this is quite a coincidence! This morning I posted a brief note about the oldest pending TTAB case: United Black Fund v. National Black United Fund, Inc., Cancellation No. 92013503. Counsel for the parties had just reported to the Board that the related, pending civil action "has not been dismissed...

Precedential No. 2: TTAB Okays Fraud Pleading But Denies Summary Judgment on Intent Issue

Posted on January 19, 2010
In this second precedential ruling of 2010, the Board provides some needed guidance on how to construct a well-pleaded fraud claim. Although Petitioner DaimlerChrysler's pleading (filed pre-Bose) was not perfect, it was good enough to clear the FRCP 9(b) hurdle...

Test Your TTAB Judge-Ability on this Specimen of Use

Posted on January 14, 2010
Here's a deli-cate appellate situation: Applicant seeks to register the mark DELI EXPRESS SAN LUIS in standard character form for "burritos; snack cakes; and snack rolls, namely, sweet rolls." Examining Attorney Nakia D. Henry refused registration on the ground that the mark in the drawing (i...

Finding Applicant's 2(f) Evidence Misdirected, TTAB Affirms Requirement for Disclaimer of CHILDREN'S in "THE CHILDREN'S PLACE"

Posted on January 14, 2010
The Board affirmed a requirement that Applicant disclaim the word CHILDREN'S in the mark THE CHILDREN'S PLACE & Design for children's clothing, retail store services featuring same, and other goods and services. In a rambling 17-page decision, it found the word to be at least merely descriptive (Applicant conceded same) and Applicant's Section 2(f) evidence to be, simply put, off the mark...

WYHA? TTAB Finds "INFUSED CIGARS" Generic for ... Guess What?

Posted on January 13, 2010
I don't smoke cigars, so I though an infused cigar was a cigar that would explode when you lit the fuse. Apparently not. The Board affirmed a refusal to register INFUSED CIGARS for cigars, finding it to be a generic term for cigars infused with flavor...

Extreme Rareness of "RENATI" as Surname Leads to 2(e)(4) Reversal

Posted on January 11, 2010
Acknowledging that the Board's treatment of surname refusals has been "inconsistent with regard to the number of surname listings," the Board found RENATI to be an "extremely rare surname" and it reversed a Section 2(e)(4) refusal to register the mark for goods and services in classes 3, 25, 43, and 44, In re The House of Terrance Proprietary Limited, Serial No...

WYHA? TTAB Affirms Mere Descriptiveness Refusal of "TITANIUM" for Kitchen Applicances

Posted on January 11, 2010
Would You Have Appealed this one? The USPTO refused registration of the mark TITANIUM for various kitchen appliances on the ground of mere descriptiveness under Section 2(e)(1). The Board affirmed in a seven-page opinion. In re BSH Home Appliances Corporation, Serial No...

TTAB Issued 51 Precedential Decisions in 2009

Posted on January 08, 2010
The TTAB issued fifty-one (51) precedential opinions in 2009, a slight drop-off from last year's total of 55. Its post-Bose fraud decisions in Enbridge and Asian and Western (Nos. 40 and 42) and its finding of a lack of bona fide intent on the part of the Section 44(e) applicant in Honda v...

CAFC Hears Oral Argument Regarding Distinctiveness of Religious Habit

Posted on January 07, 2010
Yesterday, the CAFC held a lively oral argument in an appeal [2009-1432] from the Board's decision in Mary Queen of the Third Millennium, Inc. v. The Foundation for a Christian Civilization, Inc., Opposition No. 91157073 (March 25, 2009) [not precedential]...

Precedential No. 1: TTAB Yawningly Affirms 2(d) Refusal of "MAX & Design" Over "MAX" for Overlapping Insurance Services

Posted on January 07, 2010
The first precedential decision of 2010 presents this question: Why is this decision precedential? The Board affirmed a Section 2(d) refusal to register the mark MAX & Design for various insurance services, including "writing property and casualty insurance," finding it likely to cause confusion with the registered mark MAX for "underwriting of property and casualty insurance...

Current Roster of TTAB Administrative Trademark Judges

Posted on January 06, 2010
The recent retirements of Chief Judge J. David Sams (Nov. 1, 2009) and Judge Albin F. Drost (January 1, 2010) bring the membership of the Trademark Trial and Appeal Board to 17. Set out below is the current roster of Administrative Trademark Judges, beginning with Acting Chief Judge Gerard F...

Precedential No. 51: TTAB Denies Sanctions But Orders Parties to Hold Discovery Conference with Board Participation

Posted on January 05, 2010
One of the cornerstones of the TTAB's 2007 rule changes is the requirement of Rule 2.120 that the parties hold a discovery conference at the outset of each inter partes proceeding. The Board takes that requirement very seriously, as demonstrated in its ruling in Promgirl, Inc...

TTAB Posts January 2010 Hearing Schedule

Posted on January 04, 2010
The Trademark Trial and Appeal Board has scheduled six (6) hearings for the month of January, 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...

"CAB CALLOWAY" TTAB Ruling Goes to Southern District of New York for 1071(b) Review

Posted on January 02, 2010
Creative Arts by Calloway, LLC has filed a complaint (here) in the United States District Court for the Southern District of New York, seeking review under 15 U.S.C. Section 1071(b) of the TTAB's October 30, 2009 ruling in Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No...

WYHO? Oakland A's Oppose University of Alabama's Circled "A" Logo

Posted on December 31, 2009
Would you have brought this opposition, Hot Stove Leaguers? The Oakland A's are involved in a long-suspended opposition, commenced in April 2005, to the University of Alabama's application to register the logo shown immediately below, for a host of souvenier items, including stuffed animals, yo-yo's, golf balls, metal key chains; flash lights, jewelry, playing cards, bar stools, drinking glasses, and clothing...

TTABlog Quarterly Index: October - December 2009

Posted on December 31, 2009
This quarter saw the fifth anniversary of the TTABlog and its one-millionth hit. More significantly, November 1st brought the retirement of Chief Judge J. David Sams. The Board has begun populating the new post-Bose fraud landscape as trademark practitioners re-calibrate their thinking...

Detroit Tigers Oppose "BUILD-A-TIGER" for Stuffed Toys and Related Store Services

Posted on December 30, 2009
The Detroit Tigers make a visit to the Hot Stove League with an opposition to registration of the mark BUILD-A-TIGER for plush and stuffed toys and accessories therefor, clothing for stuffed and plush toys, and related retail store services. Detroit Tigers, Inc...

Precedential No. 50: TTAB Strikes Opposer's Documents Produced During Testimony Period

Posted on December 30, 2009
Applicant Resort Option won the evidentiary skirmish but lost the war in this opposition to its registration of the mark PANDA TRAVEL in standard character and design form (shown below left) for "travel agency services, namely making reservations and bookings for transportation" [TRAVEL disclaimed]...

Precedential No. 49: TTAB Affirms Surname Refusal of "BINION"; Renown of Binion Family Does Not Equal Acquired Distinctiveness

Posted on December 29, 2009
Applicant Jack B. Binion rolled snake eyes in his attempt to register the marks BINION and BINION'S for "casino and gaming services" and "hotel and bar services." The Board affirmed Section 2(d) and 2(e)(4) refusals to register his marks, finding them to be (1) confusingly similar to the registered mark BINION'S ROADHOUSE for restaurant services [ROADHOUSE disclaimed], and (2) primarily merely surnames...

Precedential No. 48: Rejecting Asserted "Newly Discovered Evidence," TTAB Refuses to Set Aside Judgment

Posted on December 28, 2009
Respondent Michel Farah lost a cancellation proceeding before the TTAB in January 2009 [decision here], and then lost his appeal to the CAFC in November 2008 [here]. Farah then returned to the Board and, on December 12, 2008, filed a motion under FRCP 60(b)(2) for relief from final judgment based upon what he claimed to be newly discovered evidence: namely, the issuance of a registration for the mark OMIC for goods related to the cancelled OMIC PLUS registration...

MLB Poised to Oppose "MAJOR LEAGUE WOODWORKING" Logo

Posted on December 27, 2009
Here we go again, Hot Stove Leaguers. Major League Baseball has obtained an extension of time to oppose the application of Thomas J. McDonald of Canton, Massachusetts, to register the logo shown immediately below for hand tools and woodworking services...

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