Intellectual Property Law

TTAB Affirms 2(a) Refusal of "COCAINE" as Scandalous for Soft Drinks

Posted on October 27, 2008
Marc Randazza, at The Legal Satyricon blog, discusses (here) the TTAB's recent ruling that the mark COCAINE (in the form shown below) for "carbonated and non-carbonated soft drinks and energy drinks? is scandalous and therefore unregistrable under Section 2(a)...

Precedential No. 45: TTAB Denies Petitioner's Motion to Amend, Grants Respondent's Motion for Judgment on the Pleadings

Posted on October 24, 2008
Media Online Inc. got the bum's rush when it petitioned to cancel a registration for the mark EL CLASIFICADO ONLINE for Internet advertising services. The Board denied its cross-motion to amend its petition to add two claims, and then granted Respondent's motion for judgment on the pleadings...

"GOTHAM BATMEN" Strike Out: TTAB Finds Fraud, Sustains Opposition on Summary Judgment

Posted on October 23, 2008
In a case similar to Medinol, the Board sustained DC Comics' opposition to registration of the marks GOTHAM BATSMEN in standard character and design form [GOTHAM disclaimed], ruling that Applicant Gotham City Networking committed fraud on the USPTO when it falsely amended its use-based application to specify certain entertainment services for which it had never used the mark...

Precedential No. 43: Absent TTAB Order, No Sanction for Failure to Provide Initial Disclosures

Posted on October 21, 2008
The TTAB denied Applicant's motion for sanctions for Opposer's failure to make initial disclosures. The Board ruled that the proper course was for Applicant to file a motion to compel and then, if Opposer did not comply with a resulting Board Order, to seek sanctions...

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Precedential No. 44: TTAB Sustains 2(e)(3) Opposition to "HAVANA CLUB" for Cigars Made From Cuban Seed Tobacco

Posted on October 21, 2008
The Board sustained a Section 2(e)(3) opposition to registration of the mark HAVANA CLUB for "cigars made from Cuban seed tobacco" [HAVANA disclaimed], finding the mark to be primarily geographically deceptively misdescriptive. The key issue was whether Applicant's goods should be deemed to originate from Havana, Cuba, even though they will be made elsewhere...

"ZIP AND STEAM" Merely Descriptive of Cooking Pouches, Says TTAB, Not Surprisingly

Posted on October 20, 2008
Here's another WYHA decision for our collection. Would you have appealed the TTAB's mere Section 2(e)(1) mere descriptiveness refusal of ZIP AND STEAM for "cooking containers, namely, plastic cooking bags and pouches?" The Board affirmed the refusal in In re SteamFast Europe Limited, Serial No...

TTABlog Flotsam and Jetsam: Issue No. 12

Posted on October 17, 2008
Every 18 months or so, just like clockwork, I gather enough small items to fill a "Flotsam and Jetsam" posting. So let's empty the bin! [The signs in the photos are from East Cambridge].Randazza on SEX ROD: Marc Randazza provides his comments on the recent RED SOX v...

"FASHION TOOLS" Merely Descriptive of Fashion Information Website, Says TTAB, Unconvincingly

Posted on October 16, 2008
In an unconvincing, but mercifully brief, decision, the Board affirmed a Section 2(e)(1) refusal to register the mark FASHION TOOLS, finding it merely descriptive of "providing a website featuring information and content in the fields of personal relationships, dating and fashion...

TTAB Invokes Bogus Telescope Analogy, Affirms Mere Descriptiveness Refusal of "WIKINVEST" for Financial Website

Posted on October 15, 2008
Ok, I admit it. I'm still miffed over the TTAB's ruling that the mark THE TTABLOG is not inherently distinctive. The Board blindly applied its "telescoping" theory to find mere descriptiveness, ignoring the fact that the parts of a telescope slide smoothly together, while the words "TTAB" and "blog" do not...

TTABlog Guest Comment: Michael E. Hall on "The Continuing Saga of STEELBUILDING.COM"

Posted on October 14, 2008
On October 15th, the Board will hear oral argument in In re Steelbuilding.com, Inc., Serial No. 78680792, in which the Applicant challenges the PTO's genericness and mere descriptiveness refusals of STEELBUILDING.COM for "computerized online retail services in the field of pre-engineered metal buildings and roofing systems...

Precedential No. 42: TTAB Reverses 2(a) False Connection Refusal of "MARIA CALLAS" for Jewelry

Posted on October 10, 2008
Ruling that the PTO failed to carry its burden of proof, the Board reversed a Section 2(a) "false connection" refusal of the mark MARIA CALLAS for jewelry and other goods. In order to establish this Section 2(a) bar to registration of a now-deceased natural person's name, the PTO must show, inter alia, that there are heirs or other successors who are entitled to assert that person's right to the use of the designation...

Walgreen Seeks District Court Review of TTAB's "WAL-VERT" Decision

Posted on October 09, 2008
Walgreen has filed a complaint (here) in the United States District Court for the Northern District of Illinois, seeking de novo review (under 15 U.S.C. Sec. 1071(b)) of the TTAB's August 5, 2008 decision in Wyeth v. Walgreen Co., Opposition No. 91165912 (August 5, 2008) [not precedential]...

TTAB Rules That "SHINNECOCK" Marks for Cigarettes Suggest a False Connection with the Shinnecock Indian Nation

Posted on October 08, 2008
Finding that the two marks shown below, for cigarettes, falsely suggest a connection with the Shinnecock Indian Nation, the TTAB affirmed the PTO's Section 2(a) refusals to register. The Board rejected Applicant's assertion that the PTO's refusals were based on racial discrimination against Applicant, a sole proprietorship owned by a Native American named Jonathan K...

TTAB Pulls Plug on "ELECTRIC" for Watches, Affirms 2(e)(1) Mere Descriptiveness Refusal

Posted on October 07, 2008
Well, here we are again with a candidate for our WYHA file (Would You Have Appealed?). The Board affirmed a Section 2(e)(1) refusal of the mark ELECTRIC for watches and watch bands, finding it merely descriptive of watches. Applicant Electric Visual Evolution argued that "the term 'electric' is not commonly used by the general public to describe a source of power for watches," but the PTO's evidence demonstrated otherwise...

TTAB Reverses Mere Descriptiveness Refusal of "MASTER PLUMBER" for Plumbing Products

Posted on October 06, 2008
Reversing three Section 2(e)(1) refusals to register, the Board found the mark MASTER PLUMBER not merely descriptive of a variety of plumbing items, including sump pumps, garbage disposals, toilet repair parts, faucets, and ventilating ducts. It concluded that the goods "appear to be goods which 'do-it yourselfers' or others who are not master plumbers could and would purchase," and that these purchasers would see the mark as merely suggestive...

Reminder: TTAB Comes to Boston October 24, 2008

Posted on October 03, 2008
The Trademark Trial and Appeal Board (TTAB) will travel to Boston on Friday, October 24, 2008, to hear final arguments in Ironman Magazine v. World Triathlon Corporation, Opposition No. 91167894, as part of a Boston Patent Law Association (BPLA) program to be held at Northeastern University School of Law (NUSL)...

TTAB Administers 2(e)(4) Kiss of Death to "SIMMONS COMICS GROUP" for Comic Books

Posted on October 02, 2008
Finding Applicant's evidence insufficient to show that Kiss guitarist Gene Simmons is a renowned historical figure for purposes of Section 2(e)(4), the Board affirmed a surname refusal of SIMMONS COMICS GROUP for comics ["COMICS GROUP" disclaimed]. In re Gene Simmons Comics Group, Serial No...

TTAB Posts October 2008 Hearing Schedule

Posted on October 01, 2008
In addition to the October 24th hearing set for Boston (link here), the Trademark Trial and Appeal Board has scheduled nine (9) hearings for the month of October, 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: July - September 2008

Posted on September 30, 2008
Here's the latest quarterly index. Prior indices are available via the links in the right-hand column. The TTABlog will celebrate its fourth anniverary in the next quarter. The very first posting appeared on November 8, 2004, and featured the inimitable Leo Stoller...

TTAB Reverses Functionality Refusal of Shape of Traffic Signal Bracket, but Affirms Nondistinctiveness Refusal

Posted on September 29, 2008
There are two major hurdles to registering a product configuration as a trademark: functionality and nondistinctiveness. I wrote an article on this topic a few years ago, cleverly entitled, "Trade Dress and the TTAB: If Functionality Don?t Get You, Nondistinctiveness Will...

"HAIR OF THE DOG" and "LES CHEVEUX DU CHIEN" for Clothing Not Confusingly Similar, Says TTAB

Posted on September 26, 2008
In an interesting application of the doctrine of foreign equivalents, the Board reversed aSection 2(d) refusal of the mark HAIR OF THE DOG for "clothing, namely, shirts, t-shirts, pants, shorts, headwear, hats, socks, sleepwear and dresses," finding it not likely to cause confusion with the registered mark LES CHEVEUX DU CHIEN "for custom manufacture of clothing, personal accessories in the nature of jewelry, stoles, scarves, linens, and home décor items...

TTAB Finds Fraud in Section 8 Declaration, Cancels Registration of Italian Wine Company

Posted on September 25, 2008
Granting Petitioner Sierra's cross-motion for summary judgment and sustaining its cancellation petition, the Board found that Registrant Montelvini S.p.A. committed fraud on the USPTO when it filed its Section 8 Declaration of Use. Registrant verified that its registered mark MONTELVINI VENEGAZZU & Design (shown below) was in use on "wines, spirits, and liqueurs," when in fact it was not in use on liqueurs...

Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging

Posted on September 24, 2008
The Boston Red Sox were not amused when New Yorker and self-proclaimed "humorist" Brad Francis Sherman attempted to register the mark SEX ROD in the stylized form shown here, for 136 clothing items (including infantwear, baby bibs, and girdles). The TTAB also failed to appreciate the humor...

Design Patent Owners Will Worship CAFC's Egyptian Goddess Decision

Posted on September 22, 2008
In an eagerly-awaited en banc ruling, the U.S. Court of Appeals for the Federal Circuit has banished the "point of novelty" test as a "second and free-standing requirement for design patent infringement," finding it inconsistent with the Supreme Court's Gorham v...

TTAB Comes to Boston: October 24, 2008

Posted on September 22, 2008
The Trademark Trial and Appeal Board (TTAB) will travel to Boston on Friday, October 24, 2008, to hear final arguments in an inter partes case, as part of a Boston Patent Law Association (BPLA) program to be held at Northeastern University School of Law (NUSL)...

"OIL FREE JOJOBA" Generic for Cosmetics, Says TTAB

Posted on September 19, 2008
Finding the term OIL FREE JOJOBA to be generic for "skin and body soaps, essential oils for personal use, cosmetics, and hair lotions, all containing one or more chemically modified jojoba extracts," the Board granted a petition for cancellation of Respondent Desert Whale's Supplemental Registration...

Supreme Court To Consider Certiorari Petition Re Constitutionality of PTO Judicial Appointments

Posted on September 18, 2008
The SCOTUS blog reports here that on September 29, 2008, the U.S. Supreme Court will take up the Petition for a Writ of Certiorari filed in Translogic Technology, Inc. v. Dudas (Docket No. 07-1303) . The issues: "Whether the director of the Patent and Trademark Office lacked constitutional authority to appoint members of the Board of Patent Appeals and Interferences (BPAI), and, if so, whether the board's decision below must be vacated as a result...

Genericness Survey Results Posted at Pamela Chestek's Blog

Posted on September 18, 2008
Pamela Chestek has posted (here) the results of her recent genericness survey regarding ice cream designations/terms/names/marks. I am not at all knowledgeable about ice cream, and so I will have no comments for the moment. But Pam provides plenty of commentary in the posting at her Property, intangible blog...

Affirming 2(d) Refusal of "17" for Clothing, TTAB Rejects Attempt to Limit Goods in Cited Registration

Posted on September 17, 2008
On this, the 17th of September, the lesson is a basic one: the Board will not read into a cited registration, limitations on the goods or services based upon real world evidence. That's why this decision is a candidate for our WYHA (Would you have appealed) collection of cases...

Finding Customized Tapestry Ordering Kits Not to be Goods in Trade, TTAB Affirms Refusal to Register "WOVEN MOMENTS"

Posted on September 16, 2008
Finding that Applicant was seeking to register a marketing technique or method for its custom imprinting services, the TTAB affirmed a refusal to register the mark WOVEN MOMENTS for "kits consisting primarily of a box, an order form, a mailer, and an authorization key code, sold together as a unit, for use in submitting an image and obtaining blanket throws and tapestries bearing the image...

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