Intellectual Property Law

Test Your TTAB Judge-Ability with this Section 2(d) Nut Case

Posted on August 13, 2009
How would you decide this section 2(d) opposition to registration of the marks AUSTINUTS in standard character and design form, for dry roasted nuts, in view of the registered mark AUSTIN, in standard character and design form, for crackers and cookies? The record showed that Applicant sells gift baskets that include nuts, cookies and crackers, and that Opposer's mark is very strong for cookies and crackers...

Recommended Reading: David S. Welkowitz on "Famous Marks Under the TDRA"

Posted on August 12, 2009
The latest issue of The Trademark Reporter includes an excellent article by Professor David S. Welkowitz of Whittier Law School, entitled "Famous Marks Under the TDRA," 99 Trademark Reporter 983 (July-August 2009). What a pleasure it is to read such a well-written, informative, and thought-provoking work...

TTAB Okays Web Page Specimen for Sausage Links

Posted on August 11, 2009
The PTO Examining Attorney rejected Applicant Odom's specimen of use, consisting of a web page displaying the design mark shown below, for "fresh sausage rolls, links and patties; fresh souse; frozen sausage ball appetizers." According to the Examining Attorney, the design is not so prominently displayed in the website that customers will easily associate the mark with the products...

Precedential No. 33: TTAB Designates Section 2(d) Alligator Decision as Precedential

Posted on August 10, 2009
For some reason, the Board reached back to April 2009 and re-designated its dueling alligator Section 2(d) decision as precedential. It found the design mark shown below left to be likely to cause confusion with the admittedly-famous Lacoste alligator mark shown on the right, both for various, and partly identical, clothing items...

To access this complete feed in the blog feed reader login or register for free.

Recommended Reading: Joe Dreitler on "Why the TTAB Got It Right in Medinol

Posted on August 07, 2009
Joe Dreitler is a bona fide trademark expert, and he has strong views on the Lanham Act's "use" requirement and the TTAB's fraud doctrine. I know, because Joe sends me his comments whenever I discuss a fraud case. I recently persuaded him to set out his thoughts on the current state of fraud jurisprudence, and he provides an important historical perspective on the subject in his article, "Why the TTAB Got it Right in Medinol...

Precedential No. 32: TTAB Okays Service of Opposition by Mail to Applicant's Address, Not the Correspondence Address of Record

Posted on August 06, 2009
The intense, dark cloud hanging over this opposition was lifted by the Board's merciful ruling that Opposer Lindt's service of its Notice of Opposition on Applicant Karlo Flores by mail at his address, rather than at the address of record (his attorney's), was acceptable under the circumstances at hand...

Finding Proof of Acquired Distinctiveness Insufficient, TTAB Affirms Refusal to Register the Color Maroon for Steel Anchors

Posted on August 05, 2009
If you want to register a color mark, you'd better show up at the TTAB with some pretty darn good proof of acquired distinctiveness. Applicant General Technologies gave it a shot, claiming trademark rights in the color maroon for "maroon plastic encapsulated steel anchors for multi-strand post-tension systems" and for "maroon plastic encapsulated steel anchors for monostrand post-tension systems...

Precedential No. 31: In an Accelerated Decision, TTAB Sustains Schick Opposition to "SLICK ULTRA PLUS" for Disposable Razors

Posted on August 04, 2009
One suspects that this rather straightforward Section 2(d) decision was deemed precedential because the parties agreed to resolve the matter via the Board's Accelerated Case Resolution (ACR) procedure. The Board found Green Planet's mark SLICK ULTRA PLUS for disposable razors likely to cause confusion with the famous, registered mark SCHICK for "razors and razor blades," and so it sustained the opposition...

TTAB Posts August 2009 Hearing Schedule

Posted on August 03, 2009
The Trademark Trial and Appeal Board has scheduled nine hearings for the month of August, 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)]...

Test Your TTAB "Eyeball"-Ability on Two Eagle Design Marks for Clothing

Posted on July 31, 2009
The Board focused its eagle eyes on the two design marks shown below, Applicant's mark shown on the left and Opposers' on the right, both for various clothing items. Applicant S.A.S.C.O. Trading claimed the color red for its mark, while Opposers did not claim any color for theirs...

TTAB Finds "BRAIN GAMES" Merely Descriptive of Puzzle Books, Lacking in Acquired Distinctiveness

Posted on July 30, 2009
It was close to a no-brainer for the Board in its affirmance of a refusal to register the mark BRAIN GAMES for "printed publications, namely, books and magazines containing games, puzzles and other cognitive exercises." The Board found the mark merely descriptive under Section 2(e)(1), and lacking in acquired distinctiveness under Section 2(f)...

WYHA? TTAB Affirms Mere Descriptiveness Refusal of "LOCAL LABEL" for Clothing

Posted on July 29, 2009
Marylander Curtis A. Brubaker, Jr., failed to overcome a Section2(e)(1) mere descriptiveness refusal of the mark LOCAL LABEL for "hats; polo shirts; shirts; short-sleeved or long-sleeved t-shirts." The two arguments that this local Applicant tried on for size were sure TTAB losers, which is why this case is a candidate for our WYHA label...

TTAB Affirms Section 2(e)(5) Functionality Refusal of Bird Feeder Design

Posted on July 28, 2009
Another purported product configuration mark kicked the TTABucket as the Board affirmed a Section 2(e)(5) refusal to register the product design shown below for a "bird feeder," finding it to be de jure functional. Alternatively,the Board found that if the design is considered not functional, Applicant Woodlink's evidence of acquired distinctiveness is insufficient to support registration under Section 2(f)...

Precedential No. 30: TTAB Okays Warranty Services for Applicant's Goods Sold Under Third-Party Marks

Posted on July 27, 2009
The Board reversed a refusal to register the service mark HOP for "providing warranties to consumers and retailers on power-operated outdoor products, namely, power-operated chainsaws, edgers, ...." The Examining Attorney maintained that warranting one?s own products is an activity that is merely incidental or ancillary to the sale of the goods, and therefore is not a service within the meaning of the Trademark Act...

CAFC Affirms TTAB's Genericness Refusal of "HOTELS.COM"

Posted on July 24, 2009
The U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's judgment in the HOTELS.COM case, in which the Board found (here) the term to be generic for "providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network...

Ohio State Bar IP Seminar: Dreitler and True on Fraud

Posted on July 24, 2009
On July 31st, Joe Dreitler and Mary R. True of Bricker & Eckler (Columbus, Ohio) will discuss fraud on the PTO, at the Ohio State Bar Association symposium in Cleveland entitled "Intellectual Property Today: Why protecting IP is more important that ever...

Precedential No. 29: TTAB Strikes Testimony of Witness Not Identified in Pre-Trial Disclosure

Posted on July 23, 2009
Under TTAB Rule 2.121(e), a party must identify, no later that 15 days before the opening of its testimony period, each witness "from whom it intends to take testimony, or may take testimony if the need arises." Here, Petitioner failed to comply with that Rule, and so the Board struck the testimony of Petitioner's president...

TTAB Grants Request for Reconsideration; Hell Freezes Over; Cubs Win World Series

Posted on July 22, 2009
Okay, I exaggerated a bit. At least regarding the TTAB. Most requests for reconsideration are lame or feeble, or both. Here, the Board granted Applicant O'Rourke-Nicaud's request for reconsideration of a final refusal to register the mark shown below [GYM disclaimed], for health club services, on the ground of mere descriptiveness or deceptive misdescriptiveness...

Follow the TTABlog on Twitter

Posted on July 22, 2009
Reminder: you may follow the TTABlog on Twitter (here). E-mail subscriptions are also available: just enter your e-mail address in the box on the right to receive a daily update via Feedblitz..

Prepositional Difference in Marks Not Enough to Avoid 2(d) Refusal, Says TTAB

Posted on July 22, 2009
The Board affirmed a Section 2(d) refusal to register the mark FOR EVERY WALK OF LIFE THERE IS ALWAYS ONE for various clothing items, finding it likely to cause confusion with the registered mark FOR EVERY WALK IN LIFE for some of the same clothing items...

"SKINNY CEREAL" Merely Descriptive of Cereal Products, Says TTAB

Posted on July 21, 2009
Peace Mountain Natural Beverages, owner of the registered marks SKINNY WATER, SKINNY JUICE, SKINNY COLA, SKINNY TEA, SKINNY CAPS, and SKINNY SHAKE [each with the second word disclaimed], failed to fatten its trademark portfolio with registration of its mark SKINNY CEREAL for "nutriceuticals for use as a dietary supplement in the form of cereal products and cereal-based snack foods" and for "breakfast cereal, snack food, namely, cereal based snack food, processed cereal-derived food products to be used as a breakfast cereal, snack food or ingredient for making food...

Precedential No. 28: TTAB Affirms 2(e)(5) Functionality Refusal of Bicycle Spoke Design

Posted on July 20, 2009
After an exhaustive analysis, including a review of several pertinent utility patents, the Board affirmed a Section 2(e)(5) refusal of the product configuration mark shown below for "bicycle wheels," finding the design to be functional. In re Rolf Dietrich, Serial No...

D. Mass Judge Considers Scope of Design Patent Markman Hearing Post-Egyptian Goddess

Posted on July 20, 2009
Design patent fans will find interesting a recent Markman order issued by Judge Douglas P. Woodlock of our federal district court here in Boston. Judge Woodlock construed the claim of U.S. Design Patent No. D-469,840, entitled "Air Gun Sight," keeping in mind the CAFC's recent decision in Egyptian Goddess, Inc...

WYHA? TTAB Finds "Dirt Drifters" Merely Descriptive of -- Guess What?

Posted on July 17, 2009
Applicant Shawn Esposito hit a TTABrick wall in his attempt to register the mark DIRT DRIFTERS for "television show production services." The Board found the mark merely descriptive under Section 2(e)(1). Esposito took small consolation from the Board's reversal of a second refusal concerning his response to the PTO's request for information under Rule 2...

Test Your TTAB Judge-Ability

Posted on July 17, 2009
Here's another chance to prove your qualifications for a TTAB judgeship. Pro se Applicant GITZIT, Inc. sought to register the mark GITZIT for "fishing lures." Opposer J.L. Pennington claimed likelihood of confusion, and he proved prior use of the identical mark for the identical goods...

Fraud! TTAB Enters Judgment on the Pleadings Against Applicant Who Admitted Non-Use of Its Mark

Posted on July 16, 2009
Here's a new, albeit not particularly significant, decision for our fraud collection. Applicant Mellbeck Ltd, acting pro se, filed an application [under Sections 1(a) and 44(e)] to register the mark shown below for a "laundry list" of more than fifty clothing items...

Precedential No. 27: U.S. CUSTOMS Logo Barred by Sections 2(a) and 2(b)

Posted on July 15, 2009
The Board has re-designated its recent decision in In re Peter S. Herrick, P.A., Serial No. 76653159 (June 10, 2009) as precedential. [TTABlogged here]. Until this re-designation, perhaps the most lasting aspect of the case was my coining of the term "trifusal" to describe the PTO's final action...

WYHA? "STEAM N' MASH" Merely Descriptive of Processed Potatoes, Says TTAB

Posted on July 14, 2009
Well, what do you think of this one? Applicant ProMark Brands, Inc. sought to register the marks ORE-IDA STEAM N' MASH and STEAM N' MASH for "processed potatoes," but Examining Attorneys Kathleen H. Lorenzo and Inga Marie Ervin said no. In the former case, Lorenzo demanded a disclaimer of STEAM N' MASH, and in the latter Ervin refused registration, both on the ground of mere descriptiveness...

TTAB Says No and No to "NAP OF THE CARIBBEAN" Double Entendre Argument

Posted on July 13, 2009
The TTAB turned a double play in affirming Section 2(d) and 2(e)(1) refusals of the mark NAP OF THE CARIBBEAN for "telecommunications services, namely, providing central connection points for telecommunication network carriers." [It wasn't a Tinker to Evers to Chance double play, but Hairston-Grendel-Rogers]...

TTAB Dismisses 2(d) Opposition: Marks Similar but Goods and Services, Trade Channels, and Purchasers Too Different

Posted on July 10, 2009
Despite the strength of General Cable's "Roleaux" mark (below right), and the similarity between that mark and National Rural's design mark (below left), the Board dismissed this Section 2(d) opposition. It found National Rural's services so different from General's goods and services, the channels of trade and classes of customers so different, and the potential purchasers so knowledgeable and careful, that confusion is not likely...

Bloggers, promote your law blog by nominating your blog for inclusion in USLaw.com's Law Blog Directory and RSS Reader. Benefits described.