Intellectual Property Law

My Goodness? TTAB Reverses Mere Descriptiveness Refusal of "MY HORSE PLAYER" for Handicapping Software

Posted on September 12, 2008
Does addition of the word "MY" make an otherwise merely descriptive mark inherently distinctive? Maybe, maybe not, said the Board, but it did the trick in In re Scott McKeever, Serial No. 78919885 (September 10, 2008) [not precedential]. The Board reversed a Section 2(e)(1) refusal of the mark MY HORSE PLAYER, finding the mark not merely descriptive of horse handicapping software and related Internet services...

TTAB Finds "BOYD'S" and "BOYDS" Confusingly Similar for Clothing, Despite Applicant's Attempt to Limit Its Trade Channels

Posted on September 09, 2008
Continuing our WYHA? (Would you have appealed?) series of decisions, here's another one to consider for inclusion. The Board affirmed a Section 2(d) refusal to register the mark BOYD'S for various items of wearing apparel "offered and sold through authorized dealers," finding the mark likely to cause confusion with the registered mark BOYDS for men's and women's clothing and for related retail services...

"GANGA" Merely Descriptive of Department Store Services, Says TTAB, Equivalently

Posted on September 08, 2008
Returning to our "Would you have appealed?" series of decisions, contemplate this double-header. The Board applied the doctrine of foreign equivalents in affirming Section 2(e)(1) refusals of GANGA and GANGA $5 & UNDER, finding the marks merely descriptive of retail department store services...

TTABlog Test Time: So You Think You Know Genericness?

Posted on September 05, 2008
At her Property, intangible blog, Pamela Chestek here invites readers to participate in a genericness survey (Teflon-style) regarding ice cream designations/terms/names/marks. Do you think you know genericness when you see it? Ok. Explain the difference between the In re Gould test and the American Fertility test...

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TTAB Quickly Affirms Mere Descriptiveness Refusal of "7SECONDS" for Hair Detangler

Posted on September 04, 2008
Continuing with our "Would you have appealed?" series of decisions, consider if you will the attempt by Unite Eurotherapy to register the mark 7SECONDS for "hair detangler." The Board affirmed a Section 2(e)(1) refusal to register, finding the mark merely descriptive of the goods...

Specimens Don't Match Drawing, So TTAB Affirms Refusal to Register "AT C-LEVEL" for Magazines

Posted on September 03, 2008
In another of our "Would you have appealed?" series of decisions, the Board affirmed a refusal to register the mark AT C-LEVEL for "magazines featuring economic information specific to municipalities" on the ground that the mark depicted in the drawing is not a substantially exact representation of the mark shown in Applicant's specimens of use, as required by Rule 2...

"DISPENSE-A-PILL" Merely Descriptive of Pill Dispenser, Says TTAB, Painlessly

Posted on September 02, 2008
In a terse six-page decision, the Board quickly dispensed with Applicant HealthOne Medical's hopeless appeal of a Section 2(e)(1) mere descriptiveness refusal of the mark DISPENSE-A-PILL for "machines, and cartridges sold in connection therewith, for dispensing pre-determined dosages of medication in pill and capsule form...

TTAB Posts September 2008 Hearing Schedule

Posted on August 29, 2008
The Trademark Trial and Appeal Board has scheduled four (4) hearings for the month of September, 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)]...

TTAB Affirms 2(d) Refusal of "PROTIVA" for Smart Cards over "PROTEVA" for Computers

Posted on August 28, 2008
Because "computers" is "an extremely broad term encompassing a wide range of devices which could be sold to a wide range of potential purchasers," the Board sustained a Section 2(d) opposition to registration of the mark PROTIVA for "multi-factor authentication apparatus for logical access consisting primarily of encoded smart cards, digitally encoded tokens, and authentication software...

Finding "BELL'S & Design" and "OLA BELL'S" Confusingly Similar for Stuffing, TTAB Affirms 2(d) Refusal

Posted on August 27, 2008
The near identity of the involved goods was the critical factor in the Board's affirmance of a Section 2(d) refusal to register the mark OLA BELL'S for "croutons, stuffing consisting of bread; shred which is a form of bread stuffing; dried bread, batters; spices, namely blends for croutons and stuffing...

TTAB Affirms Section 2(e)(1) and 2(a) Refusals of "NEUROBOTICS" for Augmented Surgical Goods and Services

Posted on August 26, 2008
Applicant Neurobotics, Inc. struck out in its attempt to register the mark NEUROBOTICS for augmented surgical control systems and related consulting and engineering services. The Board affirmed the PTO's alternative Section 2(e)(1) and Section 2(a) refusals to register, finding the mark to be merely descriptive of the goods and services or, alternatively, deceptively misdescriptive and deceptive therefor...

TTABlog Photo Day

Posted on August 22, 2008
I took a one-day trip to Alexandria, Virginia yesterday to present a final argument before the TTAB. So I thought I'd take a TTABreak today. Back Monday..

Divided TTAB Panel Finds "ALAVERT" and "WAL-VERT" Confusingly Similar for Antihistamines

Posted on August 20, 2008
A divided Board panel sustained Wyeth's opposition to registration of the mark WAL-VERT for "antihistamines and allergy relief preparations," finding it likely to cause confusion with Opposer's registered mark ALAVERT for allergy relief and antihistamine preparations...

Heavner and Luepke Review "The Top Fifteen Mistakes of Foreign Applicants"

Posted on August 18, 2008
In the latest issue of The Trademark Reporter, B. Brett Heavner and Marcus H.H. Luepke present an informative discussion of the "15 most common mistakes" made by foreign applicants, offering "practical solutions for avoiding these pitfalls." All this in their article, Avoiding Trademark Pitfalls in the "Land of the Unlimited Possibilities": The Top Fifteen Mistakes of Foreign Applicants in the U...

"DAYTONA" Trademark Licensee Denied Second Bite at TTAB Apple

Posted on August 15, 2008
HBP, Inc. made a return trip to the Board in order to challenge registration of the mark DAYTONA THUNDERWEAR for women's clothing, but it ran into a TTABrick wall. The Board granted Respondent's motion for judgment on the ground of res judicata, ruling that HBP's claim was barred because of its earlier failed opposition to the same mark...

"SPICE SHOT" Merely Descriptive of Ammunition, Says TTAB, Affirmingly

Posted on August 14, 2008
Brett W. Holm of Chaska, Minnesota, took a shot at registering the mark SPICE SHOT for "ammunition for firearms" [SHOT disclaimed], but he missed the target. The Board affirmed a Section 2(e)(1) refusal, finding the mark merely descriptive because the ammunition is comprised of spices formed into pellets (so that, according to his website, one may simultaneously shoot, kill, and season a bird)...

TTAB Affirms Two Genericness Refusals: "CONFERENCECALL.COM" and "CORPORATE PRO BONO" for ... Guess What?

Posted on August 13, 2008
Two genericness cases illustrate the proposition that a term may be generic for services if it names the "key aspect" or "central focus" of the services. In In re West Corp., Serial No. 78739755 (July 31, 2008) [not precedential], the Board found CONFERENCECALL...

TTAB Finds "RAMBLER" Mark Abandoned for Autos, but Sustains 2(d) Opposition to "RAMBLER" for Autos

Posted on August 12, 2008
Pro se applicant Anthony S. Pimpo was thwarted in his attempt to register the mark RAMBLER for automobiles and parts. Although the old Nash mark has been abandoned for decades with regard to automobiles, the Board found that use of the mark on licensed goods (like key rings, calendars, and owner's manuals) beginning in 1995 provided a sufficient basis for a likelihood of confusion finding...

USC Bests USC in TTAB 2(d) Confusion Bowl

Posted on August 11, 2008
The Trojans of USC (California) topped the Gamecocks of USC (South Carolina) in a Section 2(d) opposition proceeding involving their respective SC logos. The Board explicated its reasoning in an exhausting 93-page decision penned by Judge Charles Grendel...

TTAB Affirms Mere Descriptiveness Refusal of "ITALIAN SUSHI" for ... Guess What?

Posted on August 08, 2008
In another one of those futile ex parte appeals that leads one to ask "why bother?", the Board affirmed a Section 2(e)(1) mere descriptiveness refusal of the mark ITALIAN SUSHI for "food items consisting of seafood ... and cheese ... and prosciutto combined with other ingredients served in a roll and ring form for on or off premises sales...

Precedential No. 39: Evidentiary Errors Lead to Dismissal of 2(d) Opposition for Failure to Prove Priority

Posted on August 07, 2008
In this train wreck of a Section 2(d) proceeding, Opposer Life Zone Inc. failed to properly introduce its trademark registrations and failed to provide evidence establishing common law rights in its marks from a date prior to Applicant's filing date. The Board therefore dismissed the opposition for lack of priority...

TTAB Reverses 2(d) Refusal, Finds "CLIMAX" and "JELLY CLIMAX MAXIMIZER" Not Confusingly Similar for Vibrators

Posted on August 06, 2008
Despite overlapping goods purchased by the same ordinary consumers and moving through the same presumed channels of trade, the Board reversed a refusal to register the mark CLIMAX for adult sexual aids, finding it not likely to cause confusion with the registered mark JELLY CLIMAX MAXIMIZER & Design for vibrators [JELLY CLIMAX disclaimed]...

New Legislation Aims to Cure Possible Defect in Appointment of Some TTAB Judges

Posted on August 05, 2008
The Patently O patent law blog reports here that the U.S. House and Senate have passed "A bill to amend title 35, United States Code, and the Trademark Act of 1946 to provide that the Secretary of Commerce, in consultation with the Director of the United States Patent and Trademark Office, shall appoint administrative patent judges and administrative trademark judges, and for other purposes...

TTAB Posts August 2008 Hearing Schedule

Posted on August 04, 2008
The Trademark Trial and Appeal Board has scheduled seven (7) hearings for the month of August, 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)]...

"LIFETIME WARRANTY" Merely Descriptive of Clothing, Says TTAB, Not Surprisingly

Posted on August 01, 2008
When I first saw this decision, I thought it involved Ray Allen of the World Champion Boston Celtics. But it's not In re Ray Allen, it's In re Allen, as in Vergil M. Allen of Santa Clara California. The latter Allen threw up an air ball in his attempt to register the mark LIFETIME WARRANTY for various clothing items...

TTAB Affirms 2(d) Refusal of "CINDERELLA" for Peanut Butter over Disney Registration for Related Goods

Posted on July 31, 2008
This applicant's attempt to register the mark CINDERELLA (shown immediately below) for "peanut butter" had a grim ending. The mark had been in use since 1895, according to Applicant, and was registered until 2001, but unfortunately the registration was allowed to lapsed by Applicant's predecessor...

"SEXY 'N SASSY" Confusingly Similar to "SEXY HAIR" for Hair Care Products, Says TTAB, Unconvincingly

Posted on July 30, 2008
In a less than convincing decision, the Board found that a "non-de minimums" [sic!] number of consumers would likely be confused, and so it sustained a Section 2(d) opposition to registration of the the mark SEXY N' SASSY in view of the registered mark SEXY HAIR [HAIR disclaimed], both for for various hair care products...

TTAB Finds "ZABA'S" for Restaurant Services Confusingly Similar to "ZABAR'S" for Catering and Retail Store Services

Posted on July 29, 2008
In this cross-country service mark battle, the Board sustained a Section 2(d) opposition to registration of the mark ZABA'S, in standard character and design form, for "restaurant services," finding it likely to cause confusion with the previously-used and registered mark ZABAR'S (in various forms) for food catering services, retail store services, and mail order services for gourmet food and related items...

Appellant Petitions Commissioner for New Hearing, Claims PTO Argument Was Inaudible and Unintelligible

Posted on July 28, 2008
Well here's another document for your form file: a Petition to the Commissioner for a do-over of the oral argument in an ex parte appeal. Counsel for Applicants Diane M. and Richard G. Hyatt appeared on May 21, 2008, for the oral argument in their appeal from a Section 2(d) refusal to register...

Fame Factor Fuels Victory in TTAB 2(d) Opposition Against "ROAD RUNNER" for Batteries

Posted on July 25, 2008
The "significant fame" of the ROAD RUNNER word and character marks carried Opposer Time Warner to victory in its opposition to registration of the word mark ROAD RUNNER for batteries. The Board found Applicant's goods to be "sufficiently related" to Opposer's action figures, accessories therefor, and hand-held video games, for purposes of the second duPont factor...

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