Intellectual Property Law

Precedential No. 1: Section 66(a) Applicant Wins TTAB Priority Contest in "FRUITOLOGY" 2(d) Dispute

Posted on January 16, 2009
In a priority battle involving two applications to register the mark FRUITOLOGY for "overlapping or legally identical goods," the Board found that the Section 66(a) application filed by French company Danone had priority over the Section 1(b) application of Texas company, Precision Formulations...

After Careful Meditation, TTAB Finds "OSHO" Generic for ... Guess What?

Posted on January 15, 2009
The Board granted a petition for cancellation of three registrations for the term OSHO for goods and services related to religion, philosophy, and science, on the ground that the term is generic. It found that the "primary significance of OSHO is as a religious movement, and not as a source identifier for goods or services...

TTAB Finds Confusion Likely Between "IRON MAN" for Bodybuilding Magazines and "IRONMAN" for Nutritional Supplements

Posted on January 14, 2009
In October 2008, the Board held oral argument in Boston in this case, and the attendees were treated to a spirited argument and discussion. This posting will not attempt to cover every issue raised, but instead will hit the high points of the 30-page decision, in which the Board sustained a Section 2(d) opposition to registration of the mark IRONMAN in the design form shown below, for nutritional supplements and related goods, finding the mark likely to cause confusion with Opposer's common law mark IRON MAN for magazines...

"CHARLESTON GATE" Merely Descriptive of Jewelry Copying Charleston Gate Designs, Says TTAB, Not Surprisingly

Posted on January 13, 2009
In another gem of a case that warrants addition to our WYHA? collection, the Board affirmed a Section 2(e)(1) refusal to register the mark CHARLESTON GATE, finding it to be merely descriptive of "jewelry, namely, earrings, necklaces, pins, slides, rings, bracelets, pendants, charms, key rings...

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USPTO Issues Annual Report for Fiscal 2008

Posted on January 12, 2009
On November 17, 2008, the USPTO issued its Performance and Accountability Report for Fiscal Year 2008 (downloadable here). The Report states that "For the third year in a row, Trademarks has met and exceeded all of its agency performance goals." (p. 5)The accompanying press release provides the following summary of the Trademark operation:Trademarks ended its year with first action pendency at three months...

Appeal of "BANANA CHAIR" 2(e)(1) Refusal Bears Fruit at TTAB

Posted on January 09, 2009
In a rare unillustrated opinion authored by Judge Bucher, the Board reversed a Section 2(e)(1) refusal to register the mark BANANA CHAIR, finding it not merely descriptive of "furniture, chair." The Board concluded that "[a]lthough the chair has a curved shape that may suggest the shape of a banana, the chair does not in fact look like a banana, and the term Banana Chair does not imediately and directly describe the shape...

"HYBRID HEAVE" Not Merely Descriptive of Deep-Water Energy Storage System, Says TTAB

Posted on January 08, 2009
Concluding that the term "hybrid" provides little, if any, useful information regarding Applicant's goods, and that the term "heave" is at most indirectly related to the goods, the Board jettisoned a Section 2(e)(1) refusal to register the mark HYBRID HEAVE, finding the mark not merely descriptive of an "energy storage and recovery system for active heave comprised primarily of a machine flywheel and a motor-generator for generating electricity" in class 7...

TTAB Issued 55 Precedential Decisions in 2008

Posted on January 06, 2009
The TTAB issued fifty-five (55) precedential decsions in 2008, a slight drop-off from last year's total of 67. Its fraud ruling in University Games (No. 27) and its rulings on the applicant's lack of bona fide intent in the ENYCE (16) and SEX ROD (41) cases may have been the most noteworthy...

TTAB Brew-Ha-Ha: Panel Divides on Grounds for "MOCCA" Refusal

Posted on January 06, 2009
It was a tempest in a coffeepot, as the TTAB panel agreed and disagreed over the registrability of the mark MOCCA for "a coffee product, namely coffee beans, and not including ground-coffee derived coffee." The panel members agreed that the mark is merely descriptive of the goods, but split on the issue of likelihood of confusion with the registered mark MOCA & Design, shown immediately below, for "coffee and coffee derivatives" [MOCA disclaimed]...

TTAB Posts January 2009 Hearing Schedule

Posted on January 05, 2009
The Trademark Trial and Appeal Board has scheduled nine (9) hearings for the month of January, as listed below. These 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)]...

TTABlog Quarterly Index: October - December 2008

Posted on December 31, 2008
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. Please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger.Section 2(a) - disparagement:Precedential No...

Precedential No. 55: TTAB Denies Cross-Motions for Summary Judgment Because Briefs Exceeded Page Limit

Posted on December 30, 2008
Under Rule 2.127(a), a brief on a motion may not exceed 25 pages in length, including table of contents, index of cases, description of record, statement of the issues, recitation of the facts, argument, and summary. The parties to this cancellation proceeding violated that rule in their respective summary judgment motions, and so the Board tossed out the motions...

Precedential No. 54: "DEC" Merely Descriptive of Nuclear Decay Batteries, Says TTAB

Posted on December 29, 2008
If your energy is waning and you need your battery re-charged, this is not the case for you. In an enervating rather than energizing decision, the Board affirmed a Section 2(e)(1) refusal to register the mark DEC, finding it to be merely descriptive of "batteries deriving power from nuclear decay processes" and for related services...

"CRASH DUMMIES" Mark Survives Abandonment Claim, TTAB Sustains 2(d) Opposition to Same Mark for Same Goods

Posted on December 24, 2008
In this Section 2(d) opposition, the goods were in part identical (action figures) and the marks either identical (CRASH DUMMIES) or highly similar (THE INCREDIBLE CRASH DUMMIES). Confusion was likely, but did Opposer have priority based on use of its mark, or had Opposer's mark been abandoned, as Applicant contended? Answer: Opposer won...

Despite Fame of "RE/MAX," TTAB Finds No Likelihood of Confusion with "SAVEMAX REALTY"

Posted on December 23, 2008
An opposer who proves its mark famous usually wins in a Section 2(d) opposition, particulary when the parties' goods or services are identical. Not this time. The Board dismissed an opposition to registration of the mark bSAVEMAX REALTY/b in the logo form shown below, finding it not likely to cause confusion with the famous mark bRE/MAX/b, both for real estate brokerage services ema href="http://ttabvue...

Pamela Chestek: Who Owns "Joyce Theater"? - the Mark, Not the Building

Posted on December 22, 2008
Pamela Chestek discusses a href="http://www.propertyintangible.com/2008/12/who-owns-joyce-theater-mark-not.html"here/a at her em style="color: rgb(102, 0, 0); font-weight: bold;"Property, intangibles/em blog the TTAB's recent, precedential decision in ema href="http://ttabvue...

PTO Publishes Summary of Rule Changes Effective January 16, 2009

Posted on December 22, 2008
On November 17, 2008, the PTO published a final rule entitled "Miscellaneous Changes to Trademark Rules of Practice," 73 F.R. 67759. (pdf a href="http://home.comcast.net/%7Ejlw28129/73fr67759.pdf"here/a). These changes become beffective on January 16, 2009/b...

TTAB Dismisses "Sopranos" Opposition: HBO Neglects to Prove Standing

Posted on December 18, 2008
The standing "hurdle" is usually easy to clear in a TTAB opposition, but it does require some effort: i.e., one has to submit some evidence to get the case off the ground, so to speak. In this opposition, Opposer Home Box Office apparently believed it had a slam-dunk fraud case based on Applicant's answer to the notice of opposition, but HBO failed to prove its own standing to oppose...

Precedential No. 53: TTAB Decides Ownership Dispute over "JOYCE" for Dance Theater and Charitable Services

Posted on December 17, 2008
Once again the landlord bested the tenant, this time in a service mark ownership battle. Finding that the landlord (Ballet Tech Foundation, Inc.) is the owner the marks and that the tenant (The Joyce Theater Foundation, Inc.) used the marks under an implied license, the Board sustained an opposition to one application, and a petitioner for cancellation of five registrations, for the mark bJOYCE/b (in various forms) for dance theater and charitable fund raising services...

Precedential No. 52: TTAB Affirms 2(a) Disparagement Refusal of "HEEB" for Clothing and Entertainment Services

Posted on December 16, 2008
Despite Applicant's claim that the Jewish community neither objects to nor views Applicant's use of the mark HEEB as disparaging, the Board affirmed a Section 2(a) refusal of the mark for clothing and entertainment services. The Board noted that there are differing views on the question, but found that a substantial composite of the Jewish community would view the term as disparaging...

TTABlog Holiday Reading: The Trademark Reporter Nov.-Dec. 2008 Issue

Posted on December 15, 2008
Santa Claus arrived a bit early this year with a nice present from INTA: the November-December 2008 issue of The Trademark Reporter. Four articles and an amicus brief discuss zombie trademarks, dilutions surveys, trademark use, and the "famous marks" doctrine, topped off with a brief friendly cup of STARBUCKS (or CHARBUCKS) coffee...

TTAB Contingently Sustains 2(d) Opposition Tried Under the Accelerated Case Resolution (ACR) Procedure

Posted on December 12, 2008
The parties to this Section 2(d) opposition agreed to try this case under the TTAB's Accelerated Case Resolution (ACR) procedure. The Board contingently sustained the opposition to registration of FACE THE WORLD for skincare and beauty products, finding the mark likely to cause confusion with Opposer's mark FACING THE WORLD, which is the subject of an intent-to-use application for educational and medical services...

TTAB Affirms Section 2(a) False Connection Refusal of "MOJAVE" for Cigarettes

Posted on December 11, 2008
Applying the four-element test of Buffett v. Chi-Chi's, Inc., 226 USPQ 428 (TTAB 1985), the Board affirmed a Section 2(a) refusal to register the mark MOJAVE for cigarettes, tobacco, and related paraphernalia, finding that the mark falsely suggests a connection with the Fort Mojave Indian Tribe of Arizona, Colorado & Nevada...

TTAB Affirms Refusal of "DESIGN EXPRESSIONS" Mark: Not Used as Source Indicator on Specimen of Use

Posted on December 10, 2008
The Board affirmed a refusal to register the mark DESIGN EXPRESSIONS for "referral to building contractors needing building materials or sources of supply of building materials," on the ground that Applicant's specimen "fails to demonstrate use" of the mark for the identified services...

TTAB Denies Petitioner's Motion to Re-open Discovery Because of Failure to Prove Excusable Neglect

Posted on December 09, 2008
In a nonprecedential interlocutory decision recently reported in the USPQ, the Board denied Petitioner's motion to re-open discovery (which was filed on the last day of its testimony period) but re-set testimony dates to allow Petitioner time to submit its case in chief...

TTABlog Guest Comment: Marty Schwimmer on TTAB's "CUBITA" Summary Judgment Under The Pan American Convention

Posted on December 08, 2008
Pursuant to Article 7 of the Pan American Convention, the Board granted Opposer's motion for summary judgment in its opposition to registration of the mark CUBITA in the design form shown immediately below, for "coffee." The Board ruled that Opposer, a Cuban company, had standing to bring the opposition and enjoys priority over Applicant by reason of Opposer's ownership of the CUBITA mark in Cuba and its pending application to register that mark in the United States under Section 44 of the Trademark Act...

Renown of "THE BLACK DOG" Marks Brings TTAB 2(d) Victory Over "YELLOW DOG NANTUCKET" for Clothing

Posted on December 05, 2008
In a copiously-illustrated, 54-page decision, the Board sustained Section 2(d) oppositions to registration of the mark YELLOW DOG NANTUCKET in standard character and design form (shown below right) for T-shirts [NANTUCKET disclaimed], finding the marks likely to cause confusion with Opposer's numerous registered and common law marks, including the standing dog design shown below left, the phrase THE BLACK DOG, and combinations and variations thereof, for clothing and other goods and services...

Despite Applicant's Concession of Most duPont Factors, Including Fame, TTAB Grants 2(d) Summary Judgment Based on Differences in Marks

Posted on December 04, 2008
Despite Applicant's concession of most of the du Pont factors, including the fame of Opposer's BIG O and BIG FOOT marks for vehicle tires, parts and accessories, the Board granted summary judgment to 67 and Latham, LLC, finding confusion unlikely with the applied-for marks A BIG RIG RESORT and DANNY'S A BIG RIG RESORT for "retail store services featuring convenience store items and gasoline...

TTAB Says "CONTINUUM" Mark is Supported by Specimens Displaying "INDIA CONTINUUM FUND"

Posted on December 03, 2008
In a surprising decision, the Board reversed a refusal to register the mark CONTINUUM for financial investment services, finding that Applicant's drawing (for the word CONTINUUM in standard characters) is a substantially exact representation of the mark as shown on Applicant's specimens of use (depicted below)...

Precedential No. 51: TTAB Dismisses Morehouse and Laches Defenses, Denies Summary Judgment in 2(d) Opposition

Posted on December 02, 2008
In a quasi-procedural precedential ruling, the Board denied Applicant Jim Hugunin's motion for judgment on the pleadings (which the Board treated as a motion for summary judgment in view of Hugunin's submission of evidence outside the pleadings). Once again the toothless tiger known as the Morehouse defense was rejected by the Board, this time because Applicant's prior registration for LAND O LAKES had expired...

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