Intellectual Property Law

TTAB Finds "HERBAL REPUBLIC" and "THE REPUBLIC OF TEA" Confusingly Similar for Tea

Posted on February 05, 2008
Some say a trademark registration is like a tea bag: you don't know how strong it is until you put it in hot water. The registration of HERBAL REPUBLIC (in the stylized form shown below) for tea, herbal teas, and other tea-related products proved to be not very strong...

"AMERICAN MASALA" Geographically Descriptive of Food Products, Says TTAB

Posted on February 04, 2008
The TTAB found unsatisfactory the recipe offered by author and Chef Suvir Saran for registration of the mark AMERICAN MASALA for various food items and for restaurant services [MASALA disclaimed]. The Board affirmed the PTO's Section 2(e)(2) refusal because the mark is primarily geographically descriptive...

TTAB Posts February 2008 Hearing Schedule

Posted on February 01, 2008
The Trademark Trial and Appeal Board has scheduled six hearings for the month of February, 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 Dimisses 2(d) Opposition for Lack of Evidence: Opposer's Notice of Reliance Mailed to Wrong PTO Address

Posted on January 31, 2008
Another Section 2(d) opposition when off the track when an opposer failed to submit evidence properly into the record. Here, Opposer El Dorado Park Self Service attempted to file a Notice of Reliance, but mailed it to the old PTO address in Arlington, Virginia, rather than the new address in Alexandria...

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Mesmerized by Fame of "VANITY FAIR" Mark, TTAB Sustains 2(d) Opposition to "VANITY INSANITY" for Clothing

Posted on January 30, 2008
Here's the scenario: famous mark holder versus pro se applicant in a TTAB 2(d) opposition. Take a guess as to who wins? Not Applicant Kelly C. Hainline. Like the lady who backed into the airplane propeller, it was "dis-as-ter" when she tried to register the marks VANITY INSANITY, VANITY & SANITY, and VANITY N SANITY for clothing and athletic apparel...

Precedential No. 1: TTAB Reverses Mere Descriptiveness Refusal of "SUGAR No. 11" For Futures Exchange Services and Finds Specimen of Use Acceptable

Posted on January 29, 2008
In its first precedential decision of 2008, and an unusually dull ruling at that, the Board reversed the PTO's Section 2(e)(1) refusals to register the marks SUGAR NO. 1 1 , SUGAR NO. 14, and COTTON NO. 2 [SUGAR and COTTON disclaimed], finding the marks not merely descriptive of "financial services, namely, futures exchange and related commodity trading services...

PTO Letters of Protest: Is "CYBERLAW" Registrable?

Posted on January 28, 2008
In Blawg Review #144, Kevin A. Thompson reports that a Washington, D.C. lawyer named Eric Menhart has filed an application to register the term CYBERLAW as a service mark for various legal services (Serial No. 77341910). Mr. Menhart has been so bold as to send a cease-and-desist letter to another blogger...

TTAB Reverses Oranamental Refusal of Embossed Design on Tire; PTO Fails to Make Prima Facie Case

Posted on January 28, 2008
The Board reversed an "ornamental" refusal to register the design mark shown below for vehicle tires, finding that the PTO Examining Attorney had failed to make a prima facie case that the mark is merely ornamental and does not function as a trademark (Sections 1, 2, and 45 of the Trademark Act)...

Finding Acquired Distinctiveness and Substantial Exclusivity Lacking, TTAB Cancels Registration for the Color Gold for Fluorescent Lamps

Posted on January 25, 2008
In a rare "color" case, the Board granted the consolidated petitions of three companies for cancellation of the registration for a mark comprising the single color gold applied to the end caps of fluorescent lamps. It ruled that the subject mark had not acquired distinctiveness under Section 2(f) and that Respondent's use of the mark had not been substantially exclusive...

TTAB Rule of Thumb: Introduce No Evidence, Lose Your Opposition

Posted on January 24, 2008
One may safely posit the following rule: an Opposer who fails to introduce evidence will lose at the TTAB. Healix Infusion Therapy, Inc. fell victim to that rule in its opposition to registration of the mark HELIX for computer software in the healthcare field...

The Ten Worst TTAB Decisions of 2007? [Part 2 of 2]

Posted on January 23, 2008
Here for your reading pleasure is the second batch of the "ten worst" Board decisions of last year. The first five were TTABlogged here yesterday. As you read these postings, please bear in mind that it takes a skilled carpenter to build a barn, but any jackass can knock it down...

The Ten Worst TTAB Decisions of 2007? [Part 1 of 2]

Posted on January 22, 2008
Every year, as a prologue to the "10 Worst" list, I remind readers that no one is perfect, not even yours truly. After all, Babe Ruth failed to hit safely 65% of the time and Michael Jordan missed about half his shots. So is it any wonder that, out of the 500 or so final decisions issued by the TTAB in 2007, there were a few that were "off the mark," so to speak? I list below what I consider to be the Board's ten worst decisions of last year...

TTAB Finds "OLD TIMER" and "OLD TIMERS' HOCKEY CHALLENGE" for Clothing Too Dissimilar, Reverses 2(d) Refusal

Posted on January 18, 2008
Old Timers games are usually slow, dragged-out affairs, but that's not the case if Judge Grendel is the referee. His six-page decision brought a quick and successful conclusion to the appeal of Taylor Brands from the PTO's Section 2(d) refusal of the mark OLD TIMER for various outdoor apparel items...

TTABlog Flotsam and Jetsam: Issue No. 11

Posted on January 17, 2008
It's been more than 18 months since the last "Flotsam and Jetsam" posting. But with a temporary lull in the Board's issuance of decisions, now is a good time to catch up on a few recent, newsworthy items.TTAB's ACR Program: Bill Heinze, at his I/P Updates blog, reports here on the TTAB's new "Accelerated Case Resolution" (ACR) program, which offers parties the chance to streamline the inter partes process so that the Board may render a final decision on what is largely a stipulated record...

The Top Ten TTAB Decisions of 2007® [Part 2 of 2]

Posted on January 16, 2008
In Part 1 of this posting, which appeared here yesterday, the TTABlog presented half (or maybe six-elevenths) of the Top Ten TTAB Decisions of 2007. The remaining five are summarized below. The decisions are not necessarily listed in order of importance, although they may be...

The Top Ten TTAB Decisions of 2007® [Part 1 of 2]

Posted on January 15, 2008
The TTAB issued 500 or so final decisions in 2007, as well as numerous interlocutory rulings. Sixty-six of its decisions and rulings were deemed precedential (listed in yesterday's posting here). Once again, yours truly has unabashedly chosen the ten decisions that he believes are the year's most important and/or interesting...

TTAB Issued 66 Precedential Decisions in 2007

Posted on January 14, 2008
The TTAB issued 66 precedential decision in calendar 2007, topping last year's total by nine. Set out below is a compilation of those precedential rulings, categorized according to subject matter. [The accompanying photographs were taken in the vicinity of my office; they are not meant as commentary on the Board or its decisions, precedential or otherwise...

TTABlog Hat Tip: Two Blog Anniversaries

Posted on January 14, 2008
Here's a tip of the fedora to trademark blogger Ron Coleman, whose Likelihood of Confusion blog has reached its third anniversary. I just wish I could write as well as Ron. And kudos to Marc Randazza. His consistently entertaining and enlightening The Legal Satyricon blog recently celebrated its first birthday...

TTAB Finds "FYBY" for Silkscreening Services Confusingly Similar to "FUBU" Clothing Mark

Posted on January 11, 2008
Another pro se trademark crusader kicked the TTABucket in his lonely quest for the Holy Grail of trademark registration. The Board deep-sixed the application of Guy R. Wilson, Jr., of Hoschton, Georgia, to register the mark shown immediately below, for "silk screen painting on clothing...

"LEGSTICK" Confusingly Similar to Famous "L'EGGS" Mark for Hosiery, Says TTAB

Posted on January 10, 2008
Essentially ruling that Applicant Amine Mahmoud had no leg to stand on, the Board sustained a Section 2(d) opposition to registration of the mark LEGSTICK for various clothing items, including hosiery and panty hose. It found the mark likely to cause confusion with the famous mark L'EGGS, registered and previously used for hosiery and panty hose...

Deeming "CREATINE-D2T" a Unitary Mark, TTAB Dimisses Opposition Demanding Disclaimer of "CREATINE"

Posted on January 09, 2008
In a rather unusual inter partes case, the Board dismissed on summary judgment an opposition to registration of the mark CREATINE-D2T for dietary supplements, rejecting Opposer's assertion that the term CREATINE must be disclaimed. Ultimate Nutrition, Inc...

Sophisticated Purchasers, Differences in Financial Services Lead TTAB to Reverse 2(d) Refusal of "BRIDGER CAPITAL" over "BRIDGER COMMERCIAL FUNDING"

Posted on January 08, 2008
"Notwithstanding the similarities between the marks, the significant differences between the nature of the services [together with] the high level of sophistication of purchasers tip the scales in favor of a finding of no likelihood of confusion." That's the reason the Board reversed a Section 2(d) refusal of the mark BRIDGER CAPITAL for "hedge fund services for high-net-worth investors" [CAPITAL disclaimed]...

TTAB Rejects Parody Claim; Finds "IVY LEAGRO" Confusingly Similar to Famous "IVY LEAGUE" Marks

Posted on January 07, 2008
Boola Boola! The Council of Ivy Group Presidents frustrated Brown graduate Robert R. L. Gray in his attempt to register the mark IVY LEAGRO for goods in classes 16 (printed publications) and 25 (clothing), and for information services in the field of education (class 41)...

TTAB Cancels "FEBAL USA" Registrations Obtained Fraudulently for U.S. Distributor

Posted on January 04, 2008
Mariner Ventures, Inc. committed fraud in the procurement of two registrations for the mark FEBAL USA for furniture because it knew that it was not the owner of the marks when it applied for registration. The Board therefore granted the petitions for cancellation filed by the Italian manufacturer...

"KIDS INN" and "CHILDREN'S INN" Confusingly Similar, At Least According to the TTAB

Posted on January 03, 2008
Vinod Bhandari must have thought he was home free when he convinced the TTAB in 1999 to reverse a Section 2(d) refusal of his application to register the mark KIDS INN for hotel, motel, and restaurant services. The PTO had refused registration on the ground of likelihood of confusion with the registered mark CHILDREN'S INN, owned by NIH, for "lodging services for use of children and their families who are patients at NIH," but the Board found the likelihood of confusion to be de minimis...

Fourth Circuit Rules that Foreign Company Must Appear in the USA for TTAB Testimony Pursuant to E.D.Va. Subpoena

Posted on January 02, 2008
In a surprising and dubious decision, a divided panel of the U.S Court of Appeals for the Fourth Circuit has ruled that a foreign corporation must obey a subpoena issued by the U.S. District Court for the Eastern District of Virginia, pursuant to a Rule 30(b)(6) notice in a TTAB proceeding, and must appear in Virginia to give trial testimony...

TTAB Posts January 2008 Hearing Schedule

Posted on January 01, 2008
The Trademark Trial and Appeal Board has scheduled three hearings for the month of January, 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)]...

TTABlog Quarterly Index: October - December 2007

Posted on December 31, 2007
This past quarter saw many of the TTAB Rule changes go into effect, although reportedly the first discovery conference with Board participation will not occur until January 2008. The flow of decisions from the TTAB seemed to slow in the fourth quarter, perhaps because the Board was focusing on getting ready for implementation of the new Rules package...

TTAB Affirms 2(e)(3) Refusal of "FRENCH & FLIRTY" as Primarily Geographically Deceptively Misdescriptive of Lingerie

Posted on December 28, 2007
Rejecting Applicant's flimsy assertions that "French" means "sexy" and that purchasers buy lingerie based on "look and feel" rather than geographic origin, the Board found the mark FRENCH & FLIRTY to be primarily geographically deceptively misdescriptive for lingerie...

Reversing Disclaimer Requirements, TTAB Finds "STEELBUILDING.COM" Has Acquired Distinctiveness for On-Line Building Sales

Posted on December 27, 2007
The Board reversed a refusal to register the marks STEELBUILDING.COM & Design (shown immediately below) and STEELBUILDING.COM THE FUTURE OF METAL BUILDINGS [METAL BUILDINGS disclaimed] for "computerized on-line retail services in the field of pre-engineered steel buildings and roofing systems...

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