Intellectual Property Law

TTAB Holds "NEW MEXICO RAILRUNNER" ITU Application Void Under Section 10 Due To Improper Assignment

Posted on July 24, 2008
Finding that Applicant New Mexico Mid-Region Council of Governments ("MRCOG") had violated Section 10 of the Trademark Act when it assigned its ITU application for the mark NEW MEXICO RAILRUNNER to the New Mexico Department of Transportation ("NMDOT"), the Board granted summary judgment to Opposer Railrunner N...

TTAB Finds "DIGITALBOOK" Trademark Specimen Unacceptable

Posted on July 23, 2008
Affirming the PTO's refusal to register, the Board found Applicant Sagoma's specimen of use unacceptable for the mark DIGITALBOOK for, inter alia, binders for holding media discs. The specimen (shown below) fails to qualify as a display associated with the goods because it does not contain adequate ordering information...

"CHINATOWN BRASSERIE" Not Primarily Geographically Deceptively Misdescriptive for Restaurant Not in NYC's Chinatown, Says TTAB

Posted on July 22, 2008
Reversing a Section 2(e)(3) refusal to register, the Board found the mark CHINATOWN BRASSERIE & Design [BRASSERIE disclaimed] not primarily geographically deceptively misdescriptive for restaurant services, even though Applicant's restaurant is located one-half mile outside of New York City's Chinatown...

Tenth Circuit Applies MedImmune in Trademark Declaratory Judgment Action

Posted on July 21, 2008
The Filewrapper blog reports here on a recent 10th Circuit ruling that applies the Supreme Court's MedImmune declaratory judgment analysis in a trademark case. The court found that the interactions between the parties, coupled with five TTAB proceedings, were sufficient to satisfy the Article III "case or controversy" jurisdictional requirement...

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Precedential No. 38: TTAB Dismisses Opposition as Untimely - Electronic Payment Incomplete and Faxed Filing Ineffective

Posted on July 18, 2008
The vibes were not good for Vibe Records, Inc. when its president tried to file an opposition to registration of the mark VIBE REVOLUTIONS for "Providing links to web sites of others featuring retail stores, coupons, online music purchases and magazine subscriptions...

TTABlog Photos for Today

Posted on July 17, 2008
I went to the soccer game at Gillette Stadium last night with my two sons, and we saw the Revolution beat Mexican side Pachuca 1-0 in the Superliga Tournament. That adventure, and the dearth of interesting decisions from the Board, led me to post these two photographs, taken by my son Jack of my son Peter, a few months ago in Paris...

Precedential No. 37: Judge Rogers Beams as Section 2(d) Case is Tried Without Discovery

Posted on July 16, 2008
The Board dismissed a Section 2(d) opposition to registration of the mark ONE FAB FIT for women's foundation garments, undergarments, and intimate apparel, finding the mark not likely to cause confusion with the mark ONE TRUE FIT, registered for outwear, including coats shorts, skirts, jeans, and pants...

TTABlog Euro 2008 Soccer Pool Winners Announced

Posted on July 15, 2008
The winners of the TTABlog Euro 2008 Soccer Pool accept their prizes at the offices of Lowrie, Lando & Anastasi, LLP. Left to right: James De Vellis (Germany), yours truly, and Lisa Saunders (Spain).Photograph Copyright Geraldine MacLellan 2008.

TTAB Reverses Mere Descriptiveness Refusal of "SAFETY JOGGER" for Work Shoes

Posted on July 14, 2008
The Board reversed a Section 2(e)(1) refusal to register the mark SAFETY JOGGER, finding it not merely descriptive of "clothing, namely, work shoes and boots, and headwear." In re Cortina N.V., Serial No. 79019306 (July 1, 2008) [not precedential].The PTO relied on dictionary definitions of the word "safety" and on Internet advertisements referring to various athletic shoes as "joggers...

Finding Laches in 62-Month Delay, TTAB Dismisses 2(d) Cancellation Petition

Posted on July 11, 2008
Sustaining Respondent Braided Accents, L.L. C.'s affirmative defense of laches, the Board dismissed a petition for cancellation of the mark BRAIDED ACCENTS & Design ["BRAIDED" and the pictorial representation of a braid disclaimed] for moldings, door frames, window frames, rails and wainscotting...

Divided TTAB Panel Reverses Mere Descriptiveness Refusal of "CRAZY GOOD" for Toaster Pastries

Posted on July 10, 2008
It took 32 pages and three opinions for the Board to reverse the PTO's mere descriptiveness refusal of CRAZY GOOD "for toaster pastries, [and] fruit preserve filled pastry product[s]." Judges Hohein and Bucher agreed that the term would be seen as overblown hyperbole and "mere puffery" and not as descriptive of the goods in any particular way...

Precedential No. 36: Finding Specimen Doesn't Match Drawing, TTAB Affirms Refusal of "UPPER 90" for Clothing

Posted on July 09, 2008
In its attempt to register the mark UPPER 90 for various clothing items, Applicant Yale Sportswear Corp. was shown a red card because it violated Trademark Rule 2.51(b), which states that "the drawing of the mark must be a substantially exact representation of the mark as used on ...

Precedential No. 35: Despite Amendment of Application, TTAB Sustains Fraud Claim in "GRAND CANYON WEST" Opposition

Posted on July 08, 2008
The Hualapai Tribe was knocked out in the second round in its attempt to register GRAND CANYON WEST for various sightseeing services. In the first round [TTABlogged here], the Board sustained in part the opposition of Grand Canyon West Ranch on the ground of nonuse of the subject mark for some of Applicant's services, and it granted Applicant's motion to deleted those "unused" services...

Precedential No. 34: TTAB Okays Stipulation Between Red Sox and "RAD SEX" Applicant to Waive Initial Disclosures

Posted on July 07, 2008
Bostonian Harry F. Chaveriat III, is seeking to register the mark RAD SEX for baseball caps, sweatshirts, t-shirts, and track pants. The Boston Red Sox have balked at the idea and have filed an opposition on the grounds of likelihood of confusion, false connection, and disparagement [TTABlog query: dilution?], and on the ground that the mark is immoral or scandalous...

TTAB Agrees that "BIOSILK" is Deceptive for Clothing

Posted on July 03, 2008
It took only seven pages for the Board to explain its affirmance of the PTO's Section (a) deceptiveness refusal of BIOSILK for men's and women's clothing. Applicant argued, to no avail, that consumers would not be deceived but would recognize the term as merely an expansion of Applicant's well-known cosmetics mark to a new product line...

TTAB Affirms Rejection of Catalog Page as Trademark Specimen of Use

Posted on July 02, 2008
Distinguishing In re Valenite Inc., 84 USPQ2d 1346 (TTAB 2007), the Board found Applicant U.S. Tsubaki, Inc.'s specimen of use unacceptable, and so affirmed a refusal to register the mark TSUBAKI: THE CHOICE FOR CHAIN for machines and various machine parts...

TTABlog Quarterly Index: April 2008 - June 2008

Posted on June 30, 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. Note also the new Babelfish translation box that appears in the column on the right (scroll down). You may now translate the postings into any of eight languages...

TTAB Cancels "JONATHAN LOGAN" Clothing Registrations: Trade Name Use is not Trademark Use

Posted on June 27, 2008
Finding no evidence that Respondent used the trademark JONATHAN LOGAN for clothing since 2002, the Board granted a petition for cancellation of two registrations for that mark (one in block letters, the other in the stylized form shown below). Although Respondent One Step submitted documents displaying use of the trade name "Jonathan Logan," the Board found no basis to infer that "clothing sold by the 'Jonathan Logan' company necessarily was branded with the JONATHAN LOGAN trademark...

Precedential No. 33: TTAB Affirms Refusal of "FREEDOM STONE" for Cornerstones as Title of a Single Work

Posted on June 26, 2008
After ruling that an amendment of Applicant's mark from FREEDOMSTONE to FREEDOM STONE was not a material alteration of the mark, the Board affirmed the PTO's refusal to register on that ground that Applicant's mark is the title of a single artistic work, namely, the cornerstone for the Freedom Tower building under construction at the World Trade Center site in New York City...

Precedential No. 32: Double Entendre Argument Remedies "THE FARMACY" 2(e)(1) Refusal, Says TTAB

Posted on June 25, 2008
The Board fell for Applicant Tea and Sympathy's claim that The mark THE FARMACY is a double entendre and therefore is not merely descriptive of "retail store services featuring natural herbs and organic products; and on-line retail store services featuring natural herbs and organic products" (in International Class 35), and "providing integrated health services at retail locations in the nature of dietary and nutritional guidance and providing information about dietary supplements and nutrition" (in International Class 44)...

On Summary Judgment, TTAB Finds "BRIDGELOAN.COM" to be Generic for Commercial Lending Services

Posted on June 23, 2008
Granting a motion for summary judgment, the Board not surprisingly found the term BRIDGELOAN.COM to be generic for "financial services, namely commercial lending services," and ordered Respondent's registration cancelled. East West Bank v. BridgeLoan Investors, Inc...

Despite Claim that "MERROW" Means "Mermaid," TTAB Affirms 2(e)(4) Surname Refusal

Posted on June 20, 2008
Finding that three of the four surname factors support the PTO's refusal, and the fourth is neutral, the Board affirmed a Section 2(e)(4) refusal to register the mark MERROW for "toys, namely playsets for toy figures and plastic character toys; toy action figures and accessories therefor; stuffed and plush toy animals...

Affirming 2(d) Refusal of "SMOKEYS HOUSE OF BARBEQUE," TTAB Finds Clothing and Sauce Related to Restaurant Services

Posted on June 19, 2008
Applicant Full Service Deli Distributors could not argue its way around the PTO's evidence in support of a 2(d) refusal of SMOKEYS HOUSE OF BARBEQUE for "wearing apparel, namely, shirts, T-shirts, shorts and aprons," "food preparations, namely, salad dressing, barbeque sauce, marinade, ketchup and hot sauce," and "restaurant services" ["BARBEQUE" disclaimed]...

TTAB Affirms 2(d) Refusal Despite Sophistication of Customers for Computer Software and Services

Posted on June 17, 2008
Although the relevant consumers of the involved products and services may exercise a high degree of care, the Board nonetheless affirmed a Section 2(d) refusal to register the mark shown below left, for various computer related services, finding it likely to cause confusion with the registered mark shown below right, for computer design and development services and for software...

PTO Proposes Potpourri of Trademark Rule Changes

Posted on June 16, 2008
Bill Heinze, at his I/P Updates blog, has spotted two sets of proposed PTO trademark rule changes. I decided that, rather than spend the weekend reading and summarizing the many and varied proposed changes, I would entrust TTABlog readers to do so. [Frankly, I'm too busy watching the Celtics v...

TTAB Affirms Genericness Refusal of "BEADCHIP" for .... Guess What?

Posted on June 13, 2008
Finding that the PTO had met its burden to prove genericness by clear evidence, the Board affirmed a refusal to register the term BEADCHIP on the Supplemental Register, for "single or multiple randomly assembled microbead arrays for use in medical research and scientific applications; kits for arrays and assemblies comprising nucleotide probes or proteins attached to microbeads for use in medical research and scientific applications" in International Class 1, and for "single or multiple randomly assembled microbead arrays for use in diagnostic applications; kits for arrays and assemblies comprising nucleotide probes attached to microbeads for use in diagnostic applications" in International Class 5...

"SLURP-EZE" for Pet Bowls Confusingly Similar to "SLURPEE" for Frozen Drinks, Says TTAB

Posted on June 11, 2008
The TTAB put the kibosh on Applicant Mark D. Morrison's attempt to register the mark SLURP-EZE for "dog bowls, cat bowls, ferret bowls," finding the mark likeliy to cause confusion with 7-Eleven's registered SLURPEE and various SLURP marks for frozen confections and soft drinks, plastic beverage containers, clothing, candy, and bubble gum...

Tip from the TTABlog: Hands Off the Playboy Bunny!

Posted on June 10, 2008
Adam Bennett of Houston, Texas got too close to the Playboy bunny and the TTAB gave him a good smack upside the head. Bennett, appearing pro se, collided with the fame of the Playboy bunny marks and was unable to pull the proverbial rabbit out of the hat with his slightly imaginative but ultimately incredible and futile attempt to explain the origins of his mark: he claimed the design was merely "a hand signal that we do in Houston...

Precedential No. 31: TTAB Reviews Specimen Brochure, Affirms Failure-to-Function Refusal

Posted on June 09, 2008
Finding that the mark fails to function as a service mark, the Board affirmed a refusal to register LIQUIDADVANTAGE, in standard character form, for "custom manufacturing of pharmaceuticals featuring liquid fill and finish technology." In the specimen of use, the term was used to refer to Applicant DSM's proprietary software but not to the recited services...

Precedential No. 30: TTAB Grants Summary Judgment in Opposition Because Applicant Was Contractually Prohibited From Using Subject Mark

Posted on June 06, 2008
In 1982, Applicant Karl Storz GmbH reached an agreement with Opposer's predecessor specifying how each may use the word "STORZ" in a trademark or service mark sense. In 1989, Opposer's predecessor wrote to Karl Storz, objecting to use of the mark STORZ THE WORLD OF ENDOSCOPY, shown immediately below...

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