Intellectual Property Law

TTAB Posts December 2008 Hearing Schedule

Posted on December 01, 2008
The Trademark Trial and Appeal Board has scheduled ten (10) hearings for the month of December, 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)]...

Ron Coleman: "Tackiness not grounds for refusal to register"

Posted on December 01, 2008
At his Likelihood of Confusion blog, Ron Coleman comments (here) on the pending TTAB appeal in In re Chippendales USA, LLC, Serial No. 78666598 [Appeal from the PTO's refusal to register the apparel configuration shown below for "adult entertainment services, namely exotic dancing for women in the nature of live performances" on the ground that the design is not inherently distinctive]...

New TTABlog Trademark Jobs Posting

Posted on November 29, 2008
Experienced trademark prosecution attorney seeks opportunity in Los Angeles area. Proven track record of successfully undertaking full and immediate responsibility for trademark files. Experience includes domestic and international prosecutions, maintenance, portfolio management, counseling, licensing, TTAB, UDRP and litigation...

TTABlog Guest Comment: Michael E. Hall on "The PTO?s Dubious New Trademark Rule 2.85(f) Concerning Identifications in Madrid Applications"

Posted on November 26, 2008
On November 17, 2008, the USPTO issued its latest "Miscellaneous Changes to Trademark Rules of Practice," 73 CFR 67759 et seq. (pdf here). According to the PTO, these changes are intended "to clarify certain requirements for applications, intent to use documents, amendments to classification, requests to divide, and Post Registration practice; to modernize the language of the rules; and to make other miscellaneous changes...

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TTAB Reverses 2(b) Refusal of Mark Containing Portion of Canadian Flag

Posted on November 25, 2008
In its first decision under Section 2(b) in decades, the Board reversed a refusal to register the mark shown immediately below, for painting services, finding that it does not contain a simulation of the flag of Canada or an insignia of Canada. In re Certa ProPainters, Ltd...

Precedential No. 50: TTAB Grants Motion to Compel Proper Initial Disclosures

Posted on November 24, 2008
In another annoying but precedential procedural ruling, the Board granted Petitioner Influance, Inc.'s motion to compel, finding Respondent Elaina Zuker's initial disclosures to be inadequate under FRCP 26(a)(1)(A)(i). Influance, Inc. v. Elaina Zuker, Cancellation No...

Precedential No. 49: Failure to Serve Notices of Opposition Leads to Swift TTAB Dismissal

Posted on November 21, 2008
Opposer Schott AG shot itself in the AG when it failed to serve its notices of opposition on Applicant L'Wren Scott, as required by Rule 2.101. The Board granted Applicant's motion to dismiss and denied Schott's cross-motion for leave to amend its notices of opposition and to serve the notices...

Precedential No. 48: TTAB Resolves Procedural Spat Over Discovery Conference

Posted on November 21, 2008
In this annoying but precedential decision, the Board resolved a brouhaha between the parties over their failure to hold the required Rule 2.120 discovery conference. Opposer moved for sanctions and Applicant then moved to dismiss. Guthy-Renker Corp. v...

TTABlog Recommended Reading: "U.S. Declarations of Use for Madrid-Based Registrations"

Posted on November 20, 2008
The November 15, 2008 INTA Bulletin includes a helpful article on "U.S. Declarations of Use for Madrid-Based Registrations," by Joseph F. Schmidt, Julie A. Katz, and Michele S. Katz (pdf here). The authors point out that the deadlines for Section 71 Declarations of Use are based on the date of issue of the U...

Three New Members Appointed to Trademark Public Advisory Committee (TPAC)

Posted on November 20, 2008
COMMERCE SECRETARY GUTIERREZ NAMES NEW MEMBERS TO TRADEMARK PUBLIC ADVISORY COMMITTEENovember 18, 2008Washington, D.C. - U.S. Commerce Secretary Carlos M. Gutierrez recently named three new members to the Trademark Public Advisory Committee (TPAC). They will serve three-year terms on the committee, which was created by the 1999 American Inventors Protection Act to advise the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) on the management of trademark operations, respectively, including goals, performance, budget and user fees...

Fame of "KOHLER" Mark for Faucets Keys TTAB 2(d) Victory over "KOHLER HOMES"

Posted on November 19, 2008
Fame was the name of the game in Kohler Co.'s Section 2(d) opposition to the marks KOHLER HOMES for "custom construction of homes" [HOMES disclaimed] and KOHLER ASSOCIATES ARCHITECTS for "architectural design" [ASSOCIATES ARCHITECTS disclaimed]. The Board found those marks likely to cause confusion with the registered marks KOHLER and THE BOLD LOOK OF KOHLER for plumbing fixtures and fittings, bath tubs, sinks, and the like...

TTAB Says "INTERNET AUTO RENT & SALES" Not Generic, But Merely Descriptive and Lacks Acquired Distinctiveness

Posted on November 18, 2008
In this TTAB triple header, the Board considered the issues of genericness, mere descriptiveness, and acquired distinctiveness in connection with the term INTERNET AUTO RENT & SALES for "retail store services featuring new and used vehicles" and "leasing and rental of new and used vehicles" [AUTO RENT & SALES disclaimed]...

Precedential No. 47: "BOBBLE POPS" Merely Descriptive of Candy, Says TTAB, Colorfully

Posted on November 17, 2008
In a colorfully illustrated opinion crafted by Judge Bucher (whose "trademark" is the deft use of Photoshop), the Board affirmed a Section 2(e)(1) refusal to register the mark BOBBLE POPS [BOBBLE disclaimed], finding the mark merely descriptive of candy...

TTAB Delivers Split Decision in "IRONMAN" v. "IRON WOMAN" 2(d) Opposition

Posted on November 14, 2008
It took a mere 10 years from the filing of the opposition to the Board's decision in World Triathlon Corp. v. Traditional Medicinals, Inc., Opposition No. 91110391 (November 3, 2008) [not citable]. The Board sustained World Triathlon's challenge to registration of the mark IRON WOMAN for "dietary and nutritional supplements" [IRON disclaimed], finding it likely to cause confusion with Opposer's registered mark IRONMAN TRIATHLON NUTRITION for "food and vitamin supplements" [NUTRITION disclaimed]...

Announcing the TTABlog Trademark Jobs Blog

Posted on November 14, 2008
The TTABlog Trademark Jobs blog (admittedly modeled after the Patent Jobs by Patently-O website) will provide free listings of trademark-related job opportunities. I was spurred into launching this blog, which I have been contemplating for many months, by a message I received today from a very capable attorney, a friend of mine, who asked if I were aware of any available positions...

TTAB Reverses 2(d) Refusal, Finds "PORTIA SUMMA" and "SUMMA VINEYARDS" Not Confusingly Similar for Wine

Posted on November 13, 2008
The Board reversed a Section 2(d) refusal to register the mark PORTIA SUMMA & Design (shown below) for "alcoholic beverages, namely, wines," finding it not likely to cause confusion with the registered mark SUMMA VINEYARD for wine [VINEYARD disclaimed]...

"CHÊNE DES DOMAINES DE FRANCE" Geographically Descriptive of Wood from France, Knot Registrable, Says TTAB

Posted on November 12, 2008
In another WHYA (Would you have appealed?) decision, the Board affirmed a Section 2(e)(2) refusal to register the mark CHÊNE DES DOMAINES DE FRANCE for wood and forestry products, finding the mark to be primarily geographically descriptive. In re Office National des Forets, Serial No...

TTAB Sustains 2(a) Refusal of "P. MAURIAT" for Musical Instruments

Posted on November 11, 2008
The Board affirmed a Section 2(a) refusal to register the mark P. MAURIAT in the design form shown below, for "musical instruments," finding that the mark falsely suggests a connection with the late musician, Paul Mauriat. In re Hsieh, Serial No. 78367205 (October 29, 2008) [not precedential]...

TTABlog Paper: "TTAB Year in Review" (California Edition)

Posted on November 10, 2008
Greetings from the Left Coast. Actually, after the election, one might say that there are two Left Coasts. I'm in California to give a talk on the "TTAB Year in Review" before the California Bar's IP Law Section (Paper here). Principal topics: fraud, bona fide intent to use, Section 2(e)(4) surname refusals, and the doctrine of foreign equivalents...

TTABlog Celebrates Fourth Anniversary!

Posted on November 08, 2008
The TTABlog is four-years old today. Thank you for reading..

TTAB Cancels "THE COLD WAR MUSEUM" Registration, Respondents Fail to Prove Acquired Distinctiveness

Posted on November 07, 2008
The Board granted a petition to cancel a registration for the mark THE COLD WAR MUSEUM for "museum services," finding the mark merely descriptive and lacking in acquired distinctiveness. Respondents, whose registration issued under Section 2(f), failed to submit evidence of acquired distinctiveness in this proceeding, and consequently the Board ruled in Petitioner's favor...

Webpage Specimen for "ONE NATION UNDER GOD" Charity Bracelets Fails to Pass TTAB Muster

Posted on November 06, 2008
Finding the requirements of Lands' End and Dell unfulfilled, the Board affirmed a refusal to register the mark ONE NATION UNDER GOD for "charity bracelets," rejecting Applicant's specimen of use (an electronic catalog webpage) as unacceptable. In re Sones, Serial No...

TTAB Judge G. Douglas Hohein Passes Away

Posted on November 06, 2008
Judge G. Douglas Hohein died this past weekend at his home in Alexandria, Virginia. Judge Hohein was appointed a TTAB Judge in 1990. He spent his entire professional career with the USPTO, twenty-seven of those years with the TTAB.Funeral arrangements for have been made with the Everly-Wheatley Funeral Home, 1500 W...

TTAB Finds "BOMBJAMMER" Generic for ... Guess What?

Posted on November 05, 2008
The Board affirmed a refusal to register the term BOMBJAMMER, on the Supplemental Register, for "instruments comprised of transmitters and other electronic devices for use as countermeasures against radio-linked explosives," finding the term to be generic and thus incapable of functioning as a trademark...

"IS YOUR MORTGAGE CONTRIBUTING TO YOUR WEALTH?" Fails to Function as a Service Mark, Says TTAB

Posted on November 04, 2008
The Board wasted little time in affirming a refusal to register the phrase IS YOUR MORTGAGE CONTRIBUTING TO YOUR WEALTH? for "mortgage brokerage services," finding that the phrase as used by Applicant Capital Financial Advisors, Inc. fails to function as a service mark...

TTAB Posts November 2008 Hearing Schedule

Posted on November 03, 2008
The Trademark Trial and Appeal Board has scheduled eight (8) hearings for the month of November, 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)]...

TTAB Finds "Tick, Tick ... Boom!" to be the Title of a Single Work, Affirms Refusal to Register

Posted on October 31, 2008
Agreeing with Examining Attorney Natalie Polzer, the Board affirmed a refusal to register the mark TICK, TICK ... BOOM! for musical recordings, entertainment services in the nature of a musical play, and songbooks and sheet music, finding the mark to be the title of a single work and therefore unregistrable...

"NO BROKEN GLASS" Symbol Fails to Function as a Trademark for Lighting Fixtures, Says TTAB

Posted on October 30, 2008
The Board affirmed a refusal to register the design shown below, for electric lighting fixtures, on the ground that the purported mark, as used by Applicant, would be perceived as merely informational and not as a source indicator. In re Halogen Lighting Products, Serial No...

Fame of "MICHELOB" Mark and Survey Evidence Lead Board to Sustain 2(d) Opposition to "MAMBO MICHELADA" for Beer

Posted on October 29, 2008
The fame of the MICHELOB mark and Opposer's survey results led the Board to sustain Anheuser-Busch's Section 2(d) opposition to registration of the mark MAMBO MICHELADA for beer and syrup for making beer beverages. Anheuser-Busch, Incorporated v. Mambo Seafood #1, Inc...

Precedential No. 46: TTAB Affirms 2(d) Refusals of "RSI" Design Mark for Ink Jet Printers

Posted on October 28, 2008
In a less than scintillating decision, the Board affirmed two Section 2(d) refusals of the mark RSI & Design (shown below) for ink jet printers and related paraphernalia, finding the mark likely to cause confusion with the mark RSI in standard character form, owned by different registrants, one for "printing machines" and the other for document imaging services...

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