Intellectual Property Law

Recommended Reading: Theodore C. Max, "Trademarks in the Veldt: Do Virtual Lawyers Dream of Electric Trademarks"

Posted on March 23, 2011
The 100th Anniversary issue of The Trademark Reporter, includes Theodore C. Max's article entitled: "Trademarks in the Veldt: Do Virtual Lawyers Dream of Electric Trademarks," 101 TMR 282 (January-February 2011). [pdf here].Mr. Max writes: "While to a certain extent virtual reality is a function of different types of intellectual property working together on many different levels, this article will focus on intellectual property implications in the virtual world from a content standpoint and will examine how intellectual property laws in the United States have been applied and might apply to the nteresting and complex issues raised by trademarks in virtual reality...

TTAB Sustains 2(d) Opposition to LIFE FOR THE LIVING over LIFE INSURANCE FOR LIVING, Rejects Genericness and Abandonment Counterclaims

Posted on March 22, 2011
In a 43-page decision, the Board sustained a Section 2(d) opposition to registration of the mark LIFE FOR THE LIVING for "insurance agency services in the field of life insurance," finding it likely to cause confusion with the registered mark LIFE INSURANCE FOR LIVING for "universal life insurance underwriting that prepays the death benefit for long-term care...

Duets Blog: View Free Webinar on "Strategies for Dealing With Trademark Bullies"

Posted on March 21, 2011
Steve Baird of DuetsBlog recently moderated a seminar "Trademark Bullies." MinnCLE has now made available the webacast of the seminar for free viewing: here..

Precedential No. 8: Applying Claim Preclusion, TTAB Dismisses Two of Three "DVD & Design" Cancellation Petitions

Posted on March 21, 2011
Respondent DVD FLLC moved for summary judgment on the ground of res judicata (claim preclusion) in these three consolidated cancellation proceedings involving registrations for the mark DVD & Design shown below [DVD disclaimed] for optical disks, readers, and related devices...

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WYHA? ALLENS NATURALLY Refused Registration over ALEN AMERICAS for Cleaning Preparations

Posted on March 18, 2011
This applicant sought registration of the mark ALLENS NATURALLY for, inter alia, all-purpose cleaners, but Examining Attorney Sara N. Benjamin refused registration under Section 2(d) in view of six registrations for marks including the word ALEN for various cleaning preparations...

Test Your TTAB Judge-Ability: Do You Have a Beef with This Section 2(d) Decision?

Posted on March 17, 2011
Applicant Ridgefield Farm sought to register the logo mark shown below, for beef [BEEF and REAL BEEF disclaimed]. The Examining Attorney refused registration in light of the registered mark RAISED RIGHT for "poultry, meat and game." Of course, the goods are considered legally identical, and the Board then presumed that they travel in the same, normal channels of trade to the same classes of consumers...

Recommended Reading: Andrew Beckerman-Rodau, "The Problem With Intellectual Property Rights: Subject Matter Expansion"

Posted on March 16, 2011
The Yale Journal of Law and Technology has published a new article by Professor Andrew Beckerman-Rodau of Suffolk University Law School, entitled "The Problem With Intellectual Property Rights: Subject Matter Expansion," 13 YALE J.L. & TECH. 35 (2010-2011 Fall Issue)...

TTAB Decides Priority Dispute in ZORLAC Skateboard Clash

Posted on March 15, 2011
IP Ownership guru Pamela Chestek reports here at her Property, Intangible blog on the TTAB's decision in Newton v. Brown, Opposition No. 91174441 (February 7, 2011) [not precedential]. The case boiled down to a priority dispute over the mark ZORLAC for skateboards and apparel...

TTAB Dismisses HOT POCKETS 2(d) Opposition Due to Weakness of POCKETS Formative

Posted on March 14, 2011
The Board dismissed this Section 2(d) opposition to registration of PF POCKET FOODS CORPORATION & Design for pocket sandwiches [POCKET FOODS CORPORATION disclaimed], finding it not likely to cause confusion with with the marks HOT POCKETS and LEAN POCKETS for frozen stuffed sandwiches...

TTAB Affirms Refusal of BENCH VAC for Vacuum Cleaners Due to Applicant's Failure to Comply with Request for Information

Posted on March 11, 2011
In this oddball case, the Board affirmed a refusal to register the mark BENCH VAC for "vacuum cleaners" because Applicant failed to comply with a Rule 2.61(b) requirement that it provide information about the goods. However, the Board reversed a Section 2(e)(1) mere descriptiveness refusal because the Examining Attorney's evidence (two dictionary definitions) was insufficient...

TTAB Dismisses CAKE DIVAS Opposition as Applicant Proves Priority Via Analogous Trademark Use

Posted on March 10, 2011
Opposer lost this TTAB 2(d) food fight when it lost the priority battle. It claimed that Applicant's mark CAKEDIVA for "greeting cards featuring photographs of cakes and cookies" and for "cakes ... and edible decorations made of sugar for cakes and cookies," would likely cause confusion with the mark CAKE DIVAS for "custom cake making, baking, designing and decorating services for edible and faux cakes"]...

Use of Mark "BLUE TURF" on Blog Suffices as Service Mark Specimen for Sports Entertainment Services, Says TTAB, Unconvincingly

Posted on March 09, 2011
As an amateur blogger, maybe I should "like" this decision, but I don't. The Board reversed a refusal to register the word mark BLUE TURF for "entertainment services, namely, the presentation of intercollegiate sporting events and sports exhibitions," finding the blog page shown immediately to be an acceptable specimen of use for the mark...

WYHA? TTAB finds NAPA FOODS Primarily Geographically Deceptively Misdescriptive for Food

Posted on March 08, 2011
A United Kingdom company called Napa Valley Foods, Inc., sought to register the mark NAPA FOODS (in standard character and design form) for various food items, relying on Section 44(e) and four Nigerian registrations. Examining Attorney Amy E. Hella refused registration under Section 2(e)(3) of the Act...

Precedential No. 7: ZU ELEMENTS Not Confusingly Similar to ELEMENT for Overlapping Goods, Says TTAB

Posted on March 07, 2011
Third-party registrations and website evidence helped convince the Board that the term ZU in Applicant's mark ZU ELEMENTS in the stylized form below, would suffice to distinguish the mark over the registered mark ELEMENT for overlapping clothing items and bags...

Rejecting Opposer's CD-ROM Testimony, TTAB Dismisses SWATCH Opposition to SWAP for Watch Bands

Posted on March 04, 2011
The Board dismissed an opposition to registration of the mark SWAP in the stylized form shown below, for "watch faces, ribbon watch bands, slide pendants, and beaded watch bands," finding it not merely descriptive of the goods, and not likely to cause confusion with or to dilute the registered mark SWATCH for watches, clocks, and parts...

Test Your TTAB Judge-Ability on This "Fur Rondy" Jewelry Design

Posted on March 03, 2011
This Applicant sought to register the design shown below for "jewelry, namely, pins, lapel pins and pendant pins." The mark was originally described as a "pin consisting of eskimo (sic) with red snowsuit and peach face, yellow circle, and blue flag with yellow stars...

Precedential No. 6: With Proof of "Something More" Lacking, TTAB Finds Barbecue Sauce and Catering Services Not Related

Posted on March 02, 2011
The Board reversed a Section 2(d) refusal to register the mark JUMPIN' JACKS for barbecue sauce in view of the registered mark JUMPIN JACK'S for catering services. It ruled that the Office had failed to provide the "something more" required by Jacobs v...

TTAB Posts March 2011 Hearing Schedule

Posted on March 01, 2011
The Trademark Trial and Appeal Board has scheduled five (5) oral hearings for the month of March, 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)]...

INTA, ABA, AIPLA, IPO Respond to USPTO Request for Comments on "Trademark Bullying"

Posted on February 28, 2011
Erik Pelton summarizes here the responses of four trademark/ip organizations to the USPTO's request for comments on the subject of trademark litigation tactics (a/k/a the trademark bully study). [See USPTO request here]. The PTO's report to Congress is due in March...

Recommended Reading: Ann Gilson Lelonde and Jerome Gilson, "Getting Real with Nontraditional Trademarks"

Posted on February 25, 2011
In the 100th Anniversary issue of The Trademark Reporter, Ann Gilson Lelonde and Jerome Gilson bring us up to date on the law of nontraditional trademarks, in their article entitled: "Getting Real with Nontraditional Trademarks: What's Next after Red Oven Knobs, the Sound of Burning Methamphetamine, and Goats on a Grass Roof...

WYHA? TTAB Affirms Refusal Of "LUVD G & Design" over "THE LOVED DOG" for Clothing

Posted on February 24, 2011
Pro se Applicant Cheryl Lynn Ingberg lost her appeal from a refusal to register the mark LUVD G & Design (shown below) for various human clothing items. The Board found her mark likely to cause confusion with the registered mark THE LOVED DOG for overlapping human clothing items...

Snack on This: TTAB Sustains 2(d) Opposition to MYCHEW over HI-CHEW for Candy

Posted on February 23, 2011
The Board didn't waste much time on the substantive issues in sustaining a Section 2(d) opposition to registration of the mark MYCHEW in the stylized form shown below, for candy, finding it likely to cause confusion with the registered mark HI-CHEW in stylized form, also for candy...

Recommended Reading: Mostert and Schwimmer, "Notice and Takedown for Trademarks"

Posted on February 22, 2011
The 100th Anniversary Issue of The Trademark Reporter includes a thought-provoking article by Frederick W. Mostert and Martin B .Schwimmer, entitled "Notice and Takedown for Trademarks," 101 TMR 249 (January-February 2011). [pdf here].The authors begin by noting that "[t]rademark fraud on the Internet is rife...

Recommended Reading: 100th Anniversary Issue of The Trademark Reporter

Posted on February 18, 2011
INTA has just published its 100th Anniversary Issue of The Trademark Reporter. [Press release here]. The Table of Contents for the centennial issue (January-February 2011, Vol. 101, No. 1) is set out below. Members of INTA may download the articles from the INTA website...

Test Your TTAB Judge-Ability: Two Cases of Beer and Wine

Posted on February 17, 2011
Before you send in your resume for one of the open positions on the TTAB, test your judicial potential on these two Section 2(d) refusals. In the first, the Examining Attorney found the mark UPSLOPE BREWING COMPANY for beer, ale, and lager [BREWING COMPANY disclaimed] likely to cause confusion with UPSLOPE for wines...

USPTO Seeks Applicants for Two Vacancies on TTAB

Posted on February 16, 2011
"The United States Patent and Trademark Office (USPTO), a cutting-edge organization dealing with intellectual property issues around the world, is seeking one or more high performing professionals to join the Trademark Trial and Appeal Board as an Attorney Examiner (Administrative Trademark Judge)...

TPAC Quarterly Meeting Summary ? February 11, 2011

Posted on February 16, 2011
Erik Pelton provides [here] a summary of the Trademark Public Advisory Committee meeting of Friday, February 11, 2011.Among other things, Chief Judge Gerard F. Rogers [no longer "Acting" Chief Judge] revealed that the long-awaited update of the TBMP will be available on-line by the end of March...

TTAB Dismisses Fraud Claim Based on Fabricated Specimen of Use: Opposer Failed to Prove Fraud "to the Hilt"

Posted on February 15, 2011
Applicant Bristol Technologies sought to register the mark Bristol Focus for computer operating systems programs, but Opposer raised two grounds in opposition: fraud and likelihood of confusion. The Board sustained the Section 2(d) claim, finding the applied-for mark likely to cause confusion with the registered mark FOCUS for other computer software programs...

Test Your TTAB Judge-Ability: Two 2(e)(3) Refusals for Your Perusal

Posted on February 14, 2011
There are three elements to a "primarily geographically deceptively misdescriptive" refusal under Section 2(e)(3): the mark refers primarily to a generally-known geographical location; the relevant public would likely believe that the goods or services originate from that location, when they do not; and the misrepresentation must be material to the purchasing decision...

Precedential No. 5: Prompt Supplementation of Expert Disclosure Defeats Motion to Exclude Testimony, Says TTAB

Posted on February 11, 2011
In this straightforward procedural decision, the Board denied Petitioner AOG's motion to exclude Respondent's expert witness, ruling that Respondent HFM had cured any deficiencies in its expert disclosure by prompt supplementation. General Council of the Assemblies of God dba Gospel Publishing House v...

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