Intellectual Property Law

TTABlog Comment: Fraud and the Digital Camera

Posted on May 11, 2009
Since its seminal decision in Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003), the TTAB has been slowly developing its fraud jurisprudence, adding a new snapshot to the album every year or so. That is not meant to be a criticism of the Board...

Lost and Found: 2007 TTAB Precedential Decision Rejects Belated Supplemental Discovery Responses

Posted on May 08, 2009
Like a squirrel finding a long misplaced nut, the USPQ in its latest weekly update has unearthed a precedential decision from September 2007 involving an unsuccessful attempt by a cancellation respondent to supplement its discovery responses after petitioner's testimony period had closed...

CAFC Hears Oral Argument in Bose Fraud Appeal

Posted on May 07, 2009
Oral argument (slow-loading .mp3 here) was held before the CAFC yesterday, May 6th, in Bose Corp. v. Hexawave, Inc., Appeal No. 2008-1448. The TTAB, in Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (TTAB 2007) [not precedential], found that Bose had committed fraud in its 2001 renewal of a registration for the mark WAVE for, inter alia, audio tape recorders and players...

New TTABlog Trademark Jobs Posting: Former Examining Attorney/Law Firm Associate Seeks San Francisco or Washington, DC Position

Posted on May 07, 2009
Former Examining Attorney with large law firm experience (6 years total) seeks law firm or in-house position in San Francisco or the Washington DC-area. Very knowledgeable in mark clearance, trademark prosecution, TTAB opposition/cancellation proceedings, and dealing with foreign associates...

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TTAB Finds Design of "MOI" Putter Head Functional Under Section 2(e)(5)

Posted on May 06, 2009
I gave up golf years ago out of frustration: I simply could not get through the windmill! That's when I turned to patent law for excitement. The Board took up both patent law and golf in a somewhat frustrating decision affirming a Section 2(e)(5) refusal to register the product configuration mark shown below for "golf clubs," finding the design to be functional...

Precedential No. 18: Refusing to Read Limitations into Cited Registration, TTAB Affirms 2(d) Refusal of "WAVE" for Recreational Trailers

Posted on May 05, 2009
In an enervating, albeit precedential, decision, the Board affirmed the PTO's refusal to register the mark WAVE for "recreational vehicles, namely travel trailers and fifth wheel trailers," finding it likely to cause confusion with the registered mark THE WAVE for "trailers, dump trailers, and truck bodies...

"BIG O TIRES" TTAB Challenge to "BIGG WHEELS" for Automobile Wheels Goes Flat

Posted on May 04, 2009
Although the Board found the BIG O TIRES mark to be inherently distinctive and strong for vehicle tires and related services, and indeed possessed of "niche market fame" in the Midwest and west of the Mississippi, it dismissed an opposition to the mark BIGG WHEELS for "wheels for automobiles" [WHEELS disclaimed]...

TTABlogger and Jeremy Phillips on IP Think Tank Podcast

Posted on May 04, 2009
Jeremy Phillips of IPKat and yours truly shared the microphone on an IP Think Tank podcast (here) last week, mainly discussing the issues of bona fide intent and fraud and how they may impact foreign trademark owners.On the issue of "curing" fraud, I stated that once a registration has issued, it may be too late to cure the fraud...

TTAB Posts May 2009 Hearing Schedule

Posted on May 01, 2009
The Trademark Trial and Appeal Board has scheduled six hearings for the month of April, 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)]...

New TTABlog Trademark Jobs Posting: Former Examining Attorney Seeks DC/Baltimore Area Position

Posted on May 01, 2009
Former PTO Examining Attorney and fifth-year down-sized associate at DC-area law firm seeks law firm or corporate position in the Baltimore-Washington area. Highly experienced in trademark clearance, registration, and enforcement, with a focus on brand selection and management, and in litigation before the Trademark Trial and Appeal Board...

CAFC Vacates TTAB's "MOSKOVSKAYA" Vodka Ruling, Clarifies 2(e)(3) Materiality Test

Posted on April 30, 2009
The U.S. Court of Appeals for the Federal Circuit has vacated the TTAB's decision in the MOSKOVSKAYA case (TTABlogged here), in which the Board found the mark to be primarily geographically deceptively misdescriptive of vodka. (TTAB decision here). The CAFC ruled that the Board had improperly applied the materiality test of Section 2(e)(3) because it failed to consider whether a substantial portion of all relevant consumers (not just Russian speakers) is likely to be deceived...

TTABlog Challenge: You Be The TTAB Judge!

Posted on April 29, 2009
Imagine yourself in the role of TTAB judge. You are considering the summary judgment motion filed by an Applicant seeking to register the mark shown to the right, for retail grocery store services. The Opposer claims that confusion is likely with the six registered marks shown below, for various food items, including sausage, barbequed pork, and various other swine-related products...

TTAB Finds "RUSSKAYA" for Vodka Abandoned, Cancels Registration

Posted on April 28, 2009
Got your screwdriver? We're going to dismantle a 53-page TTAB opinion granting a petition for cancellation of a registration for the mark RUSSKAYA for vodka. The Board found that Petitioner A.V. Brands had established a prima facie case of abandonment based on at least three consecutive years of nonuse, and that Registrant Spirits International, B...

Applicant's Own Boastful Advertising Leads TTAB to Find Tray Design Functional

Posted on April 27, 2009
The Board tossed another purported product configuration mark in the TTAB trash can, finding the tray design of Applicant Gratnell's Limited to be functional under Section 2(e)(5) and, if not functional, lacking in acquired distinctiveness. Gratnell's served up the decisive functionality evidence on a platter: its own own advertising materials touting the superiority of the design...

Precedential No. 17: TTAB Dismisses Bayer "FLANAX" Cancellation Claims - No Famous Marks Exception in US Law

Posted on April 24, 2009
Flummoxed by Bayer's three attempts to properly plead its claims, the Board granted three-fourths of Registrant Belmora's motion for dismissal for failure to state a claim upon which relief may be granted. Bayer lost its Section 2(d) and its fraud claim by failing to allege prior use of its mark FLANAX in the United States by itself or by someone on its behalf...

Precedential No. 16: TTAB Throws New England Patriots for Another Loss in "19-0 THE PERFECT SEASON" Opposition

Posted on April 23, 2009
Just when we Patriots fans had seemingly put the heartbreaking 2007 NFL season behind us, here comes the TTAB to open the old wound and pour salt in it. The Board dismissed the Patriots' Section 2(d) opposition to registration of the mark 19-0 THE PERFECT SEASON for various clothing items because Applicant William A...

TTAB Rules, Non-Precedentially, that Fraud May be "Cured" Post-Registration

Posted on April 22, 2009
The ever-informed Maury Tepper brought to my attention a non-precedential decision from October 2008 involving the issue of fraud, and particularly whether fraud can be "cured" after a registration has issued. This Board panel adopted the approach of the panel majority in University Games in ruling that correction of a false statement regarding use, if made before a registration has been challenged, creates "a rebuttable presumption that [registrant] did not intend to commit fraud...

Applicant Fails to Prove Historical Significance of "DAIMLER" for Vehicles, TTAB Affirms 2(e)(4) Surname Refusal

Posted on April 21, 2009
Applying its standard Section 2(e)(4) analysis, the Board affirmed a refusal to register the mark DAIMLER for "land vehicles," finding that the PTO had made out a prima facie case that the mark is primarily merely a surname, and that Applicant Jaguar had failed to rebut the PTO's case...

TTAB Says "So Longo, BADONGO" in 2(d) Opposition to "PODANGO"

Posted on April 20, 2009
ICL, Ltd.'s Section 2(d) opposition to the mark PODANGO, based on ownership of the registered mark BADONGO (both marks for various Internet communication services), went all wrongo: first, ICL failed to properly introduce its registration into the record, and as a result did not prove standing or priority; second, the Board found the marks too dissimilar anyway...

New TTABlog Trademark Jobs Posting: Experienced California Trademark Attorney Willing to Re-locate

Posted on April 17, 2009
Trademark attorney with six-plus years of experience seeks employment with in-house legal department or law firm. The attorney has extensive experience in trademark prosecution, counseling, clearance, enforcement, and litigation. He has managed the filing and prosecution of more than 1,200 international trademark applications in 180 different countries, for a major U...

TTAB Chops Down Evasive "SILVER BIRCH" Applicant with Three Well-Aimed Strokes

Posted on April 16, 2009
Victoria Principal Productions, Inc. was seeking to register the mark SILVER BIRCH for skin and body preparations, but it refused to give a direct response to Examining Attorney John Dwyer's request for information that would "make clear whether the goods will contain silver birch as an ingredient...

TTAB Affirms Single Creative Work and Mutilation Refusals of "CHOOSE TO BE RICH"

Posted on April 15, 2009
The application of Cashflow Technologies, Inc. to register the mark CHOOSE TO BE RICH for audio tapes featuring financial educational information, turned out to be a poor candidate for registration. The Board chose to affirm the PTO's refusals to register, finding that the phrase constitutes the title of a single creative work (and is thus unregistrable), and that it comprises a mutilation of the mark that appears on the specimens of use...

TTAB Finds No Trademark Rights in OEM Who Applied "WASTEMAID" Mark at Others' Direction

Posted on April 14, 2009
In a 41-page, fact-packed opinion, the Board disposed of Anaheim Manufacturing Company's opposition to registration of the mark WASTEMAID in the design form shown below, for "food waste disposers, garbage disposers." Discarding Anaheim's likelihood of confusion claim (as well as its fraud and lack-of-bona-fide-intent claims, the Board found that Anaheim is a private label supplier who placed the subject mark on products at the direction of others, and never used the mark to identify itself as the source of the products...

TTABlog Road Trip: Cary, North Carolina

Posted on April 14, 2009
I will be speaking to the Intellectual Property Law Section of the North Carolina Bar Association this Friday morning, along with Maury Tepper of the Womble, Carlyle firm. Our presentation is entitled "TTAB Tune-up: Getting Up to Speed on the Law and the Rules...

TTAB Finds "SPEEDOMETER" Generic for ... You'll Never Guess What

Posted on April 13, 2009
Aurel A. ("Alex") Astilean hit the proverbial wall in his attempt to obtain a Supplemental Registration for the term SPEEDOMETER for a "monitoring device worn on the person for tracking fitness of the walking and running exercises, and not concerned with the speed of the walking and running exercise...

Precedential No. 15: Finding No Evidence of Bona Fide Intent to Use Mark in US, TTAB Sustains Opposition to 44(e) Application

Posted on April 10, 2009
In an article that we penned early last year, entitled "Unfriendly Shores: Recent Developments in U.S. Law May Trouble Foreign Trademark Owners," Ann Lamport Hammitte and I asked whether, in light of a then-recent ruling on bona fide intent, the Board was about to open up Pandora's Box for foreign applicants and registrants...

TTAB Finds "X-PIPE" Generic for ... Guess What?

Posted on April 09, 2009
In a semi-exhaustive decision, the Board granted Opposer Bassani Manufacturing's motion for summary judgment, sustaining an opposition to registration of the term X-PIPE for "internal combustion engine exhausts" on the ground of genericness. Although Applicant Campbell used the term "in the manner of a trademark" on his website, that evidence failed to overcome the "clear evidence of genericness" submitted by Bassani...

Precedential No. 14: TTAB Finds "THE MONTECITO DIET" Not Primarily Geographically Descriptive of Diet Publications

Posted on April 08, 2009
Observing that "the mere fact that applicant sleeps in Montecito [California] is not necessarily enough to establish a goods/place relationship," the Board reversed a Section 2(e)(2) "primary geographically descriptive" refusal to register the mark THE MONTECITO DIET [DIET disclaimed] for printed publications, online publications, and informational services in the field of health, nutrition, illness prevention, detoxification, diet, and lifestyle choices...

TTAB Finds Religious Habit Not Registrable: Lacks Distinctiveness, Inherent or Acquired.

Posted on April 07, 2009
Two feuding religious organizations faced off before the TTAB in the latest of a "series of battles" between them, this dispute involving the registrability of the religious habit design shown immediately below, for "clothing, namely [a] ceremonial habit worn by distinguished religious representatives in certain ceremonies" and for "promoting public awareness of the need for healthy and religions families in the United States...

CAFC Affirms TTAB's "AIRFLITE" Cancellation: Preparations for Use Not Enough for Service Mark Registration

Posted on April 06, 2009
In a precedential decision, the CAFC answered the following question: "whether the use in commerce requirement is met when an applicant uses a service mark in the preparatory stages of a service's development but never offers the services to the public...

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