Intellectual Property Law

Joe Dreitler Expounds On "The Dangers Posed by Bose," But CAFC Chief Judge Michel Sees No Problem

Posted on November 30, 2009
The editors of World Trademark Review have kindly allowed me to provide TTABlog readers with Joe Dreitler's latest article: "The Dangers Posed by Bose," December-January 2010 World Trademark Review 13- 17 (Issue 23). (Subscribe to WTR here). CAFC Chief Judge Paul Michel, author of the court's Bose opinion, responds to the criticism and explains "why the court came to the decision it did...

Boston Red Sox Oppose Stylized "SA" Mark for Clothing

Posted on November 29, 2009
Yesterday's post featured the New York Yankees, so let's give the Boston Red Sox equal time, shall we? The Red Sox have opposed registration of the mark shown below, for clothing, claiming likelihood of confusion, false association, and failure to use the mark on all the goods...

New York Yankees Oppose "BASEBALLS EVIL EMPIRE" For Clothing

Posted on November 28, 2009
In a case reminiscent of last year's SEX ROD opposition [TTABlogged here], the New York Yankees have opposed registration of the mark BASEBALLS EVIL EMPIRE (in standard character form) for clothing, claiming that the mark is disparaging, or suggests a false connection, or is likely to cause confusion...

TTAB Summarily Cancels "PLAID" Registration Under Section 2(d)

Posted on November 25, 2009
When the marks are identical and the services nearly so, you've got a shot at summary judgment under Section 2(d). That's what transpired in this cancellation proceeding involving a registration for the mark PLAID for various advertising, marketing, and design services...

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Major League Baseball Opposes Don Mattingly Logo

Posted on November 24, 2009
Okay, all you baseball fans out there! Here's one for the Hot Stove League. Major League Baseball has opposed two applications filed by Mattingly Hitting Products, Inc. to register the logo shown below left for "baseball and softball equipment, namely, bats, gloves, mitts, bat cases, bat bags, and batting gloves" and "clothing, namely, shirts, pants, athletic uniforms, caps and hats...

TTAB Tosses "WEW" Specimen Out of PTO Ring

Posted on November 24, 2009
Pointing out that it is "not enough that the mark and the services both appear in the same specimen," the Board upheld a refusal to register the mark WEW for "pay-per-view and on-demand television transmissions of live wrestling exhibitions." Examining Attorney Judy Helfman had refused registration under Sections 1, 3 and 45 of the Trademark Act on the ground that the specimen does not show use of the mark for the identified services as required by Trademark Rule 2...

TTAB's Loufrani v. Wal-Mart "SMILEY" Case Lands In Chicago Federal Court

Posted on November 23, 2009
Ryan Gile, at his Las Vegas Trademark Attorney blog, reports (here) on Franklin Loufrani's civil action under 15 U.S.C. § 1071(b)(1) seeking judicial review of the TTAB's March 2009 decision in Wal-Mart Stores, Inc. v. Franklin Loufrani, Oppositions Nos...

TTAB Rejects Another Fraud Claim for Inadequate Pleading

Posted on November 20, 2009
The Board yesterday rejected another fraud claim for failing to meet the strict pleading requirements of Rule 9(b), Fed. R. Civ. P. Ayush Herbs, Inc. v. Hindustan Lever Ltd. Co., Opposition No. 91172885 (November 19, 2009) [not precedential]. The Board also threw in Rule 11, Fed...

Recommended Blog: Rich Stim's "Dear Rich: Nolo's Patent, Copyright & Trademark Blog"

Posted on November 20, 2009
Rich Stim answers those questions that your next-door-neighbor or your mother-in-law asks you about IP: can I copy this? can I market that? And he does it with unfailing good humor! Check it out here.

TTABlog Answers the Question: What is the Oldest Pending TTAB Case?

Posted on November 20, 2009
Well, at least I try to answer the question, with the help of Chris Shiplett at TTAB Across the Board. He reports that the oldest pending TTAB case is United Black Fund v. National Black United Fund, Inc., Cancellation No. 92013503. That case was commenced on September 9, 1982, and has been suspended since May 10, 1984...

TTAB Finds Flashlight Casing Not De Jure Functional but Lacking in Distinctiveness

Posted on November 19, 2009
The Board reversed in part and affirmed in part a refusal to register the product configuration mark shown on the right, for "portable lighting equipment, namely flashlights." It jettisoned the Section 2(e)(5) functionality refusal, but affirmed the refusal to register on the ground that Applicant failed to establish that the product shape has acquired distinctiveness...

TPAC Meeting This Friday Will Explore Ramifications of Bose Decision

Posted on November 18, 2009
The Trademark Public Advisory Committee (TPAC) will hold a public meeting on Friday morning, November 20, 2009, at USPTO Headquarters, Madison Auditorium, Concourse Level, 600 Dulany Street, Alexandria, VA 22314. The meeting will be run from 9:00 AM to 12:30 PM and will be webcast...

AUSTINUTS Seeks Review of TTAB 2(d) Decision in Austin Federal District Court

Posted on November 18, 2009
Austinuts, Inc. has filed a complaint (here) in the U.S. District Court for the Western District of Texas (Austin Division), seeking Section 1071(b) review of the TTAB's decision in AQFTM, Inc. v. Austinuts, Inc., Oppositions Nos. 91166551 and 91166552 (August 6, 2009) [not precedential]...

CAFC Affirms TTAB's Dismissal of "BINT ALARAB" Cancellation on Res Judicata Ground

Posted on November 17, 2009
The U.S. Court of Appeals for the Federal Circuit has affirmed the decision of the TTAB (here) dismissing a petition for cancellation of a registration for the mark BINT ALARAB for rice. The Board had ruled that the petition was barred by res judicata and it denied petitioner's request for time to take discovery regarding a newly-posed claim of fraud...

Supreme Court Denies Petition for Certiorari in Harjo v. Pro-Football, Inc.

Posted on November 16, 2009
The U.S. Supreme Court today denied the Petition for a Writ of Certiorari filed by Susan S. Harjo et al., seeking review of the decision of the U.S. Court of Appeals for the D.C. Circuit in Pro-Football, Inc. v. Harjo, 90 USPQ2d 1593 (D.C. Cir. 2009)...

Fraud Brown-Bag Luncheon: November 19th in Boston

Posted on November 16, 2009
The Boston Patent Law Association and the Boston Bar Association will co-host a brown-bag luncheon at noon on November 19, 2009 at the Bar Association headquarters at 16 Beacon Street. The topic: "Trademark Fraud on the USPTO: A New Landscape." Yours truly will moderate a panel consisting of Mark Robins of Nixon, Peabody, and Amy Brosius of Fish & Richardson...

A Medinol-like Fraud Case in California Worth Watching

Posted on November 13, 2009
The Seattle Trademark Lawyer blog (here) reports on a federal district court action in California that is worth keeping an eye on. Defendant Wine Group alleged that Plaintiff One True Vine's pleaded registration for the mark LAYER CAKE for "white wine, red wine" was invalid on the ground of fraud because (as Plaintiff admitted) the mark had never been used for white wine...

Precedential No. 46: TTAB Finds Two "ANTHONY'S" Marks Confusingly Similar for Pizza Restaurants

Posted on November 12, 2009
Sustaining a Section 2(d) opposition and granting a petition for cancellation, the Board found the mark ANTHONY'S COAL-FIRED PIZZA, in standard character and design form (below), for "restaurant services, namely, eat-in and take-out coal oven pizza and other items" [COAL-FIRED PIZZA disclaimed] likely to cause confusion with the registered mark ANTHONY'S PIZZA & PASTA for restaurant services [PIZZA & PASTA disclaimed]...

TTAB Affirms Genericness Refusal of "GOJI BERRY" for - Guess What?

Posted on November 11, 2009
Pro se Applicant Bradley Dobos of Eastsound, Washington, made a fruitless attempt to register the term GOJI BERRY for "fruit, namely, raw and unprocessed berry only indigenous to several regions in the Himalayas" in International Class 31 [BERRY disclaimed]...

Test Your TTAB Judge-Ability: Is This Stylization of "JUMBOZ" Inherently Distinctive?

Posted on November 10, 2009
There was no debate that the mark word "Jumboz" is at least merely descriptive of "processed sunflower seeds." In fact, two years ago the TTAB affirmed a genericness refusal of JUMBOZ for the same goods. [TTABlogged here]. But what about the stylized version shown below? Is it registrable on the Principal Register (with a disclaimer of JUMBOZ?) In other words, is the design inherently distinctive? You be the judge...

CAFC Affirms TTAB Genericness Ruling re "MATTRESS.COM" for -- Guess What?

Posted on November 09, 2009
The CAFC has affirmed the TTAB's decision in In re Dial-A-Mattress Operating Corp., Serial No. 78976682 (November 13, 2009) [not precedential], in which the Board affirmed a refusal to register the term MATTRESS.COM on the Supplemental Register, for "online retail store services in the field of mattresses, beds and bedding," on the ground of genericness...

TTAB Posts October 2009 Hearing Schedule

Posted on October 01, 2009
The Trademark Trial and Appeal Board has scheduled seven (7) hearings for the month of October, 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)]...

TTABlog Quarterly Index: July - September 2009

Posted on September 30, 2009
Thank you, readers, for all your comments! For newbies, please note that you may follow The TTABlog on Twitter (here). 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...

WYHA? TTAB Finds "LUCA'S CHOPHOUSE" Confusingly Similar to "LUCA PIZZA"

Posted on September 29, 2009
In this enervating Section 2(d) appeal, the Board affirmed a refusal to register the mark LUCA'S CHOPHOUSE & Design for "restaurant and bar services," finding it likely to cause confusion with the registered marks LUCA PIZZA and LUCA PIZZA DI ROMA for restaurant services...

TTAB Reverses 2(d) Refusal of "COMMUNITY TRUST BANK & Design" Over "COMMUNITY TRUST"

Posted on September 28, 2009
Apparently a registration for the mark COMMUNITY TRUST for banking services is hardly worth the paper it's printed on. The Board reversed a Section 2(d) refusal to register COMMUNITY TRUST BANK & Design for banking services [TRUST BANK disclaimed], finding it not likely to cause confusion with the registered mark COMMUNITY TRUST for the same services [TRUST disclaimed]...

TTAB Finds "E-LEX" Merely Descriptive of Litigation Support Services

Posted on September 25, 2009
Finding that "e" means electronic or Internet-based, and that "lex" means law, the Board affirmed a refusal to register the mark E-LEX for "litigation support services for attorneys provided via an electronic network with court-specific consultation on the rules and implementation of procedures for filing electronically...

"MEDITERRANEAN MELT" Not Merely Descriptive of Sandwiches, Says TTAB

Posted on September 23, 2009
Applicant Dikran M. Iskenderian came up a winner in his TTABattle to register the mark MEDITERRANEAN MELT for "sandwiches, panini," convincing the Board to reverse a Section 2(e)(1) mere descriptiveness refusal. Although the Board agreed that MELT must be disclaimed, it found the word MEDITERRANEAN, as applied to food, to be too ambiguous to be descriptive...

Finding "COTT" and "COtea" For Soft Drinks Too Different, TTAB Dismisses 2(d) Opposition

Posted on September 22, 2009
In a rare victory for a pro se Applicant, the Board dismissed a Section 2(d) opposition to registration of the mark shown below, for "soft drinks flavored with tea," finding the mark not likely to cause confusion with the mark COTT, registered in standard character and stylized form for maltless soft drinks...

TTABlog in the Trenches: a Farrago of TTAB Interlocutory Papers

Posted on September 21, 2009
I was poking around on TTAB Across the Board, looking at the "uncategorized" documents from last week, and decided to post a few of them. None of them is earth-shaking, but then what do you expect? Here's a half-dozen.Phone Number, Please: "The Board attempted to reach applicant, who is acting pro se in this matter, by phone but no phone number was listed in the opposition or application papers, and the Board was unable to obtain a phone number in an Internet search...

Precedential No. 38: Expert Testimony Alone Not Sufficient to Prove Mere Descriptiveness of "BEER 1" Marks

Posted on September 18, 2009
The Board dismissed this opposition to registration of the marks BEER 1; ONE BEER, BEER 1; and BEER 1 & Design (shown below) for beer [BEER and MMVII disclaimed], finding these marks to be neither merely descriptive nor deceptively misdescriptive under Section 2(e)(1)...

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