Intellectual Property Law

"DRUMLINE LIVE" Merely Descriptive of Musical Performances, Says TTAB

Posted on February 26, 2009
It's time to add another WYHA case to our collection. Would you have appealed the mere descriptiveness refusal of DRUMLINE LIVE for "entertainment services in the nature of live musical performances"? Applicant Halftime Live LLC did just that, but the arguments it drummed up fell on deaf ears...

TTABlog Special Report: Two TTAB Fraud Decisions Now Await CAFC Review

Posted on February 25, 2009
TTAB practitioners should keep their eyes on two TTAB fraud decisions now on appeal at the U.S. Court of Appeals for the Federal Circuit, because one or both may provide some welcome CAFC guidance on this vexing issue. In each case, the American Intellectual Property Law Association (AIPLA) has filed an amicus brief arguing that the TTAB's fraud standards are inconsistent with the elements of common law fraud set out by the CAFC in prior rulings...

Precedential No. 3: TTAB Dismisses Claim Invoking Unsatisfiable Santiago Trademark Convention

Posted on February 24, 2009
In a case of first impression, Opposer Franpovi, S.A., a joint-stock company of the Dominican Republic, invoked the Santiago Convention in seeking to block registration of the mark POLLOS VICTORINA (standard characters, but in the color red) for restaurant services...

TTAB Reverses 2(d) Refusal of "QUAANTUM" for Trailer Suspension Systems Over "QUANTUM" for Tires

Posted on February 23, 2009
Because the PTO failed to establish that the goods are related for Section 2(d) purposes, and because the relevant purchasers will exercise a high degree of care, the Board reversed a refusal to register the mark QUAANTUM for "trailer suspension systems, incorporating wheel end systems," finding it not likely to cause confusion with the registered mark QUANTUM for tires...

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Applicant Gets Benefit of the Doubt: "GREEN INDIGO" Not Merely Descriptive of Clothing, Says TTAB

Posted on February 20, 2009
The Board reversed a Section 2(e)(1) refusal to register the mark GREEN INDIGO, finding it not merely descriptive of "bottoms; [and] tops." Noting that there is a "thin line of demarcation between a suggestive and a merely descriptive designation," the Board saw the lack of evidence of descriptive use of the phrase in the clothing industry as indicative that the mark is only suggestive...

TTAB Okays Single DVD as Specimen for Ongoing TV Series, "EVERYBODY I EVER SLEPT WITH"

Posted on February 19, 2009
Pointing out that the PTO seemingly confused the use of the mark on a promotional DVD, which is a single work and an acceptable specimen, with a mark being the title of a single work, the Board reversed a refusal to register the mark EVERYBODY I EVER SLEPT WITH for ?providing on-going television programs in the field of romance...

It Don't Come Easy: TTAB Affirms 2(d) Refusal of "RINGO" for Clothing

Posted on February 18, 2009
Ex-Beatles drummer Ringo Starr paid his dues (the appeal fee) and sang the blues, as the TTAB affirmed a Section 2(d) refusal to register his mark RINGO for various clothing items "all depicting the name and image of a famous entertainer." Despite that limitation and despite the fame of Ringo, the Board found his mark likely to cause confusion with the identical mark registered for men's, women's, and children's clothing...

Long, Strange Trip Ends in Split TTAB 2(d) Decision for "ORIENT-EXPRESS" Applicant

Posted on February 17, 2009
Fifteen years after filing his application, Stuart S. Hoffman's attempt to register the mark ORIENT EXPRESS & Design (shown immediately below) for cigars and smoking tobacco was derailed by the TTAB when it sustained Section 2(d) oppositions brought by the French railway SNCF and by VSOE, the owner of the ORIENT-EXPRESS railway line...

Someone Should Tell the New York Times that "Trademark" is not a Verb

Posted on February 17, 2009
Today's New York Times crossword puzzle gave me a bit of a shock! Clue 37 across: "Trademarked citrus." That's an ugly word usage if there ever was one. As we all know, "trademark" is not a verb. It's a noun. Perhaps the clue should have been "Registered trademark for a citrus?"UGLI fruit sectionsUGLI is a registered trademark of Cabel Hall Citrus Limited of the Cayman Islands...

Finding "A-HOLE PATROL" Scandalous for Online Social Club Screening, TTAB Affirms 2(a) Refusal

Posted on February 13, 2009
Applicant JibJab found itself in a hole after the PTO's Section 2(a) refusal of A-HOLE PATROL for an "Online social club that screens jokes submitted by users to control offensive and inappropriate content." JibJab's effort at self-extrication through TTAB appeal yielded only the Board's agreement with Examining Attorney Gina Hayes that the mark is scandalous and therefore unregistrable...

Joyce Theater Seeks Federal Court Review of TTAB Ownership Decision

Posted on February 12, 2009
Pamela Chestek, at her Property, Intangible blog, reports (here) that the Joyce Theater Foundation had filed a complaint in the United States District Court for the Southern District of New York, under 15 U.S.C. Sec. 1071(b) of the Trademark Act, seeking review of the Board's decision in Ballet Tech Foundation, Inc...

Frank Herrera Launches Cigar Law blog

Posted on February 12, 2009
Florida's Frank Herrera has launched the Cigar Law blog, where he discusses "Trademarks and Other Matters Of Interest to the Cigar Industry." Frank keeps an eye on PTO applications and TTAB filings, as well as on cigar trademarks in the real world..

Finding Two "MILLER'S" Marks for Restaurant Services Confusingly Similar, TTAB Affirms 2(d) Refusal

Posted on February 11, 2009
Miller's Pub, on South Wabash in Chicago, failed to overcome the PTO's Section 2(d) refusal to register the mark MILLER'S in stylized form (shown below, left) for bar and restaurant services. Apparently it was not "Miller's Time," because the Board found the mark likely to cause confusion with the mark MILLER'S & Design, registered for a "full service restaurant" (below, right)...

TTAB Finds "FERROLABS" and "FERRO TEC" for Ferrofluidic Fluids Not Confusingly Similar

Posted on February 10, 2009
Despite an overlap of goods, channels of trade, and classes of customers, the Board dismissed an opposition to registration of the mark FERROLABS & Design for ferrofluids and related goods, finding it so dissimilar from the registered marks FERRO TEC & Design , FERROSOUND, FERRODRIVE, and FERROFLUIDIC for ferrofluids, that confusion is not likely...

TTAB No-Brainer? "BRAIN STATE CONDITIONING" Merely Descriptive of Neurofeedback Training

Posted on February 09, 2009
The Board wasted little brainpower in affirming a Section 2(e)(1) refusal to register the mark BRAIN STATE CONDITIONING, finding it merely descriptive of "training services in the field of neurofeedback." In re Brain State Technologies, L.L.C., Serial No...

"CHED 'R' WEDGES" Merely Descriptive of Pet Treats, Says TTAB

Posted on February 06, 2009
WYHA? Would you have appealed this one? The PTO refused to register the mark CHED 'R' WEDGES for "pet food; pet treats," finding the mark merely descriptive under Section 2(e)(1). What argument could you come up with on appeal? In In re Midwestern Pet Foods, Inc...

Precedential No. 2: TTAB Rules That, For a Multi-Class Registration, Fraud Must Be Considered Class-by-Class

Posted on February 05, 2009
The Board has now addressed one of the open issues concerning fraud, ruling that with regard to a multi-class registration, fraud committed in fewer than all the classes requires cancellation as to only those classes, and not as to all classes in the registration...

Canada Federal Court Refuses to Import US Fraud Doctrine into Canadian Trademark Law

Posted on February 05, 2009
The Canadian Trademark Blog reports here that the Federal Court in Canada "recently made clear that Canadian law does not recognize a rule equivalent to the U.S. doctrine of fraud on the trademark office, pursuant to which any material misstatement in the processing of a registration renders the entire resulting registration void...

The Top Ten TTAB Decisions of 2008 ® [Part 2 of 2]

Posted on February 04, 2009
In Part 1 of this posting, which appeared yesterday, the TTABlog presented half of my annual top ten list. The remaining five cases are summarized below. The decisions are not necessarily listed in order of importance, although they may be. I leave that for the reader to decide...

The Top Ten TTAB Decisions of 2008 ® [Part 1 of 2]

Posted on February 03, 2009
Once again, yours truly has chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the past calendar year. Seven are precedential decisions and three are not. Arguably, the precedential rulings are the more important because they constitute binding precedent, but the non-precedential rulings at a minimum have educational and/or entertainment value...

TTAB Posts February 2009 Hearing Schedule

Posted on February 02, 2009
The Trademark Trial and Appeal Board has scheduled seven (7) hearings for the month of February, as listed below. The hearings will be held in the East Wing of the Madison Building. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...

Finding Safety Goggles and Binoculars Related, TTAB Affirms 2(d) Refusal of "SEAHAWK"

Posted on January 30, 2009
Third-party registrations and website evidence convinced the Board that Applicant's safety eyewear and goggles are related to binoculars for Section 2(d) purposes, leading to an affirmance of the PTO's refusal to register the mark SEAHAWK for the former in view of the identical mark registered for the latter...

Ron Coleman Ponders the TTAB's "HEEB" Decision

Posted on January 29, 2009
Ron Coleman, at his renowned Likelihood of Confusion blog, has posted his thoughts (here) on the TTAB's recent HEEB decision (TTABlogged here). The reader will recall that the Board affirmed a Section 2(a) disparagement refusal of the mark HEEB for clothing and entertainment services, noting that there are differing views on the question, but finding that a substantial composite of the Jewish community would view the term as disparaging...

"MERCURY" for Vodka and Distilled Spirits Likely to Confuse: TTAB Affirms 2(d) Refusal

Posted on January 28, 2009
It's time for another WYHA? case. Suppose your application to register MERCURY for vodka is refused registration under Section 2(d) in view of the identical mark registered for distilled spirits. Would You Have Appealed? Applicant Mercury-2 LTD did, and the result must have been dispiriting...

Stylized "FRANCO FERRARI" Confusingly Similar to "FERRARI" and "FRANCO FERRARO," Says TTAB, Frankly

Posted on January 27, 2009
Rejecting Applicant's feeble contention that its mark (shown below) is a "distinctive design mark," the Board affirmed the PTO's Section 2(d) refusals to register, finding the mark likely to cause confusion with the registered marks FERRARI and FRANCO FERRARO, all for clothing and/or fabrics in classes 24 and 25...

Opposer Lays Egg at TTAB: Fails to Prove Priority in Edible Bird's Nest 2(d) Tussle

Posted on January 26, 2009
Royal King's Section 2(d) opposition to registration of the mark ROYAL NEST & Design (shown immediately below) for "edible bird's nests" never took flight because Opposer failed to prove priority. Opposer provided no evidence of priority, failing to properly introduce its registrations into the record and offering inconclusive admissions by Applicant...

Cosmopolitan Magazine Overwhelms "COSMO.COM" Applicant in TTAB 2(d) Opposition

Posted on January 23, 2009
Hearst Communications kicked the living you-know-what out of Applicant Charles Browning Wilson in his attempt to register the mark COSMO.COM for "providing on-line information on available entertainment in various cities." Opposer relied on 31 registrations for marks comprising or containing COSMOPOLITAN or COSMO, established its COSMOPOLITAN mark as famous for magazines, and proved actual confusion...

Finding Dissimilarity of "BIOMARINE" and "BIOMARIS" Marks Dispositive, TTAB Dismisses 2(d) Opposition

Posted on January 22, 2009
Despite overlapping goods and presumably identical trade channels, the Board dismissed a Section 2(d) opposition to registration of the mark BIOMARINE & Design for non-medicated skin care preparations, finding it not likely to cause confusion with the registered mark BIOMARIS for sking cleansing creams and related products...

Outback Steakhouse Fails to Prove Relatedness of Bottled Water and Beer; TTAB Dismisses 2(d) Opposition

Posted on January 21, 2009
A half-baked, watered-down effort by Outback Steakhouse led to a Section 2(d) setback as the Board dismissed an opposition to registration of the mark AUSTRALIAN OUTBACK RAIN & Design (shown below left) for "bottled drinking water" [AUSTRALIAN OUTBACK disclaimed], finding it not likely to cause confusion with the registered marks OUTBACK for beer and baked goods and OUTBACK STEAKHOUSE & Design (below right) for beer...

TTAB Dismisses Tootsie Roll's "MISTER FLUFFY" Opposition for Failure to Establish Priority

Posted on January 20, 2009
Tootsie Roll swung and missed in its opposition to registration of the mark MISTER FLUFFY for candy. Tootsie's own registrations for FLUFFY STUFF and FLUFFY STUFF COTTON CANDY POPS were not properly submitted and it failed to prove prior common law use...

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