Intellectual Property Law

Seattle Mariners Torpedo Application for "M'S USA" for Clothing

Posted on December 26, 2009
The Hot Stove League remained in action over the holiday, with the Seattle Mariners finally winning something. The Mariners opposed the application of New York City's Components by John McCoy, Inc.to register the mark M'S USA" for various clothing items...

CAFC Reverses TTAB: Website Specimen of Use Need Not Include a Picture

Posted on December 24, 2009
The CAFC reversed a TTAB ruling [TTABlogged here] that rejected a website specimen of use that did not include a photograph of the subject product. The appellate court held that "a picture is not a mandatory requirement for a website-based specimen of use...

WYHO? Red Sox and White Sox Oppose "e.SOX" for Cellphone Sleeves

Posted on December 23, 2009
Here we go again, Hot Stove Leaguers! The Chicago White Sox and Boston Red Sox have teamed up to oppose the application of Digital Access, Inc. of Carson City, Nevada, to register the mark e.SOX for "Protective sleeves for electronic devices, namely, cellular phones, cameras and MP3 players, sound and video recorders and players...

WYHA? TTAB Affirms Mere Descriptiveness Refusal of "STENTALLOY" For Alloys Used to Make Medical Devices

Posted on December 22, 2009
So let's imagine that you're facing a final Section 2(e)(1) mere descriptiveness refusal of STENTALLOY for "wrought or unwrought metal alloys for use in sheet, bar, coil, wire, strip and plate form having mechanical properties, purity and corrosion resistance suitable for use in medical devices...

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Finding "BELL HILL" for Wine and "BELL'S" for Beer Too Dissimilar, TTAB Dismisses 2(d) Opposition

Posted on December 21, 2009
Bell's Brewery, Inc. uncorked a loser when it opposed registration of the mark BELL HILL for packaged wine. Opposer claimed that the applied-for mark (1) would likely cause confusion with its registered mark BELL'S & Design for beer, and (2) is primarily geographically descriptive under Section 2(e)(2)...

White Sox and Red Sox Oppose "GAMESOX" for Vehicle Mirror Cover

Posted on December 20, 2009
Our latest Hot Stove League case involves a strange double-header: my Chicago White Sox have teamed up with the Boston Red Sox to oppose an application to register the mark GAMESOX for a "vehicle accessory, namely, decorative item for a vehicle mirror...

Trademark Public Advisory Committee (TPAC) Issues its 2009 Annual Report

Posted on December 19, 2009
The Trademark Public Advisory Committee of the USPTO (TPAC) has issued its annual report for Fiscal Year 2oo9. (pdf here). According to TPAC, " this report does two things: (i) it reports on the performance aspects of the USPTO that the TPAC enabling statute requires be addressed, with an emphasis on the performance issues that are of greatest interest to the trademark community, and (ii) it reports on the status of issues TPAC is championing or has championed during FY 2009...

Fame of Snoop Dogg Overwhelms "SNOOPTUNES" Applicant in 2(d) Opposition

Posted on December 18, 2009
Calvin Broadus, a/k/a SNOOP DOGGY DOGG, SNOOP DOGG, and SNOOP, successfully opposed an application to register the mark SNOOPTUNES for "wireless transceivers for distributing audio, visual, and textual computer files over computer networks including music, books, plays, pamphlets, brochures, newsletters,journals, magazines on the subjects of sporting and cultural activities and a wide variety of topics of general interests...

"PEDRO PAN" Merely Descriptive of Charitable Services, Says TTAB

Posted on December 17, 2009
The Board sustained a Section 2(e)(1) opposition to registration of the mark PEDRO PAN in standard character form, finding the mark merely descriptive of "Eleemosynary services in the field of monetary donations." Applicant claimed acquired distinctiveness under Section 2(f) but its proofs fell short, and the Board ruled that Applicant could not rely on transferred distinctiveness from its prior registration of the mark shown immediately below...

"DICK'S NUTS" Survives Summary Judgment Attack; Bona Fide Intent Remains At Issue

Posted on December 16, 2009
Chicagoan Seth L. Bent beat back a summary judgment attack on his application to register the mark DICK'S NUTS for various clothing and food items (including processed nuts). Opposer American Sports Licensing, Inc. (owner of DICK'S SPORTING GOODS and other DICK'S-formative marks) asserted that Bent lacked a bona fide intent to use his mark, but the motion petered out when the Board found a genuine issue of material fact regarding intent...

Applying Foreign Equivalents, TTAB Deems "AZUCAR MORENA" Generic for Brown Sugar

Posted on December 15, 2009
Applying the doctrine of foreign equivalents, the Board granted Petitioner Marquez Brothers International's motion for summary judgment, finding the registered mark AZUCAR MORENA to be generic for brown sugar. And so it ordered cancellation of Respondent Zucrum's registration for "unrefined sugar; brown sugar; molasses" [AZUCAR disclaimed]...

USPTO Issue Annual Report for FY2009

Posted on December 14, 2009
The USPTO has issued its Annual Report for Fiscal Year 2009. (Downloadable .pdf here). Any comments or observations?.

WYHA? "MANWEAR" Merely Descriptive of Retail Men's Clothing

Posted on December 14, 2009
We haven't had many WYHAs lately, what with all those Hot Stove League cases, so let's take a look at this one. Webid Consulting, based in London, sought to register the mark MANWEAR for "online retail stores featuring men's clothing and accessories and small leather goods from suppliers other than applicant...

Chicago Bears Oppose "PAPA BEAR" for Clothing, Football Equipment

Posted on December 13, 2009
The Chicago Bears have taken umbrage at the attempt by Papa Bear Enterprises, Inc. to register the mark PAPA BEAR for, inter alia, football helmets, books in the field of sports, clothing, and football equipment. Da Bears contend that this mark will likely cause confusion, dilution, and false association vis-a-vis various BEARS-formative marks...

LA/Anaheim Angels Oppose "IBIZA ANGELS & Des." for Clothing, Beauty Care

Posted on December 12, 2009
Travelling to the left coast for our latest Hot Stove League case, we learn that the Los Angeles Angels of Anaheim (formerly known as the Anaheim Angels, the California Angeles, and the Los Angeles Angels), filed an opposition to registration of the mark IBIZA ANGELS in the design for shown below, for clothing, beauty care retail services, entertainment services (personal appearances by models), and beauty salon services...

NY Yankees Oppose "NEW YORK EST. 1625" for Clothing

Posted on December 12, 2009
Some say the Yankees own New York after they won the "World" Series this year. Apparently the Yankees agree. They have opposed an application to register the mark NEW YORK in the design form shown below, for hats and shirts [NEW YORK disclaimed]. New York Yankees Partnership v...

"ORCHID CREAM VANILLA" Merely Descriptive of Snowball Flavor Concentrate, Says TTAB

Posted on December 11, 2009
In this modern day Battle of New Orleans, the TTAB granted a petition for cancellation of a registration for the mark mark ORCHID CREAM VANILLA, finding the mark to be merely descriptive of "flavoring concentrate for non-nutritional purposes, namely, flavoring concentrate for shaved ice confections" [CREAM VANILLA disclaimed]...

TTAB Deems "EVITAMINS" Merely Descriptive of On-line Vitamin Services, But Not Generic

Posted on December 10, 2009
Applicant Twin Associates faced twin refusals to register its mark EVITAMINS for catalog and on-line services featuring vitamins and dietary supplements: genericness and mere descriptiveness. Twin argued, alternatively, that its mark is either inherently distinctive or has acquired distinctiveness...

Appying Wella, TTAB Reverses 12 out of 16 Section 2(d) Refusals

Posted on December 09, 2009
In this consolidated appeal involving four service mark applications, Federal Express Corporation faced four cited registrations [for a total of 16 Section 2(d) refusals]. The Board applied In re Wella A.G., 5 USPQ2d 1359 (TTAB 1987), in determining whether, as to the cited registrations, Applicant had at least partial control over the registered marks, thereby mooting the refusals to register...

TTABlog Special Supplement: Judge Walsh and Michael E. Hall on Third-Party Registrations

Posted on December 09, 2009
TTAB Judge James Walsh and Registration Ruminations blogger Michael E. Hall spoke at the IPO?s USPTO Law and Practice conference in Washington D.C. on December 7th, on the probative value of third-party registrations in the likelihood-of-confusion context...

Pittsburgh Pirates Oppose "WHITWORTH PIRATES" for Clothing

Posted on December 09, 2009
I'll be you don't know where Whitworth University is. Answer here. Whitworth filed four applications to register the mark WHITWORTH PIRATES, in standard character and design form, for educational services, entertainment services (sports teams), and clothing, but the Pittsburgh Pirates have opposed...

New TTABlog Trademark Jobs Posting: Former PTO Examining Attorney Seeks DC-Area Trademark Position

Posted on December 08, 2009
Former PTO Examining Attorney (6+ years) and current law firm associate seeks law firm or corporate position in the Washington, DC area. Highly experienced in trademark clearance, registration, and enforcement, as well as in TTAB contested matters. Also experienced in drafting of UDRP and federal litigation pleadings and negotiations...

TTAB Rejects Another Insufficiently Pleaded Fraud Claim

Posted on December 08, 2009
Applying its post-Bose analysis to a pre-Bose fraud allegation, the Board denied Opposer Gallo's motion to amend its opposition, finding Gallo's proposed fraud claim to be deficiently pleaded under FRCP 9(b). E.&J. Gallo Winery v. Quala S.A., Opposition No...

"VINTAGE PINK" Not Merely Descriptive of Jewelry and Clothing, Says TTAB

Posted on December 07, 2009
In a determination "not free from doubt," the Board reversed a Section 2(e)(1) refusal to register VINTAGE PINK, finding it not merely descriptive of various jewelry and clothing items. Although Applicant admitted that some of her goods will be pink in color and will follow a ?retro style,? she contended that neither the color pink nor the ?retro style? is a significant attribute of her goods...

7th Circuit Sanctions Leo Stoller for Deceptive In Forma Pauperis Petition

Posted on December 06, 2009
On December 4, 2009, the U.S. Court of Appeals for the 7th Circuit issued an order (here) sanctioning Leo Stoller for deceptive statements made in an application for in forma pauperis status in an appeal from a bankruptcy court ruling. The appellate court reinstated a "Mack order" directing the clerks of all federal courts in the 7th Circuit to return as unfiled any papers submitted by or on behalf of Stoller...

NY Mets Defend "YOU GOTTA BELIEVE!" Slogan Against Cold Cuts and Tug McGraw

Posted on December 05, 2009
The TTABlog, in an effort to give equal time to New York's other baseball team, reports that the New York Mets have filed an opposition to registration of the mark YOU GOTTA BELIEVE! for "processed meats, luncheon meats, and cold cuts." The Mets allege that Applicant Hansel and Grettel's goods are related to "the goods offered and services rendered" in connection with its YA GOTTA BELIEVE! marks, and that false association, confusion, and dilution (by blurring) are likely to occur...

Precedential No. 47: TARR Printouts of Pleaded Registrations Acceptable at Trial

Posted on December 04, 2009
Trademark Rule 2.122(d)(1) permits the introduction of a pleaded registration into evidence if the original opposition or petition for cancellation is accompanied by TARR printouts showing the status and title of the registrations. But what about introduction at the trial stage? Rule 2...

NY Yankees Oppose "THE HOUSE THAT JUICE BUILT"; Applicants Assert Parody Defense

Posted on December 03, 2009
Here we go again with another case for our Hot Stove League collection. The New York Yankees have opposed two applications for the mark THE HOUSE THAT JUICE BUILT for "T-shirts, baseball caps, hats, jackets, and sweatshirts," and for "mugs," as well as a third application for the design mark shown below left for those same clothing items...

TTAB Posts December 2009 Hearing Schedule

Posted on December 02, 2009
The Trademark Trial and Appeal Board has scheduled seven (7) hearings for the month of December, 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...

WYHA? TTAB Affirms 2(d) Refusal of "AUGUSTINER" for Beer in View of Identical Mark for Same Goods

Posted on December 01, 2009
Let's suppose that you are trying to register the mark AUGUSTINER in the font shown below for "beer, namely, strong beer, low-alcohol beer, beer wort and colorant beer, non-alcoholic beers, non-alcoholic beverages, namely, non-alcoholic beers, malt wort," and the PTO refuses registration under Section 2(d) in view of the registered mark AUGUSTINER for beer...

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