Intellectual Property Law

Foreign Manufacturer, Not US Distributor, Owns "NITRO" Marks for Helmets, Says TTAB

Posted on December 26, 2007
In a battle over the marks NITRO and NITRO RACING for motorcycle helmets and protective clothing, the Board ruled in favor of Opposer/Petitioner Lloyd Lifestyle in finding that Applicant/Registrant Soaring Helmet was not the owner of the marks at the time it applied for registration...

New York Court of Appeals Says Yes and No to "Famous Marks" Doctrine

Posted on December 24, 2007
In its March 28, 2007 decision, the United States Court of Appeals for the Second Circuit held that the Lanham Act cannot be read to include a "famous marks" exception. (TTABlogged here). The court certified to the New York State Court of Appeals the question of whether New York common law recognizes the doctrine...

TTAB Dismisses 2(d) "INSPIRATION" Opposition: Marks Dissimilar, Goods/Services Unrelated

Posted on December 21, 2007
It took a mere six pages for the Board to render its decision in Inspiration Software, Inc. v. Correales, Opposition No. 91164064 (December 12, 1007) [not precedential]. It found Applicant's mark PARENTS INSPIRATION INSTITUTE for educational services in the field of parenting [PARENTS and INSTITUTE disclaimed] not likely to cause confusion with Opposer's registered mark INSPIRATION for "computer programs in the field of idea development through visual diagramming, outlining and text creation" and "computer education training...

Recommended Reading: "An Introduction to the New Trademark Trial and Appeal Board Rules"

Posted on December 20, 2007
In their Trademark Reporter article entitled "An Introduction to the New Trademark Trial and Appeal Board Rules" (pdf here), James R. Robinson and Kathleen E. McCarthy provide a useful summary of the new TTAB rules, with commentary on some of the decisions that practitioners will face in practicing under the new regime...

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"B.V.D." and "DVD EMPIRE" Confusingly Similar for Clothing? No Way!

Posted on December 19, 2007
Way! The Board sustained a Section 2(d) opposition to registration of the mark DVD EMPIRE for shirts, finding it likely to cause confusion with the marks B.V.D. and BVD, registered for underwear, t-shirts, shirts, and shorts. B.V.D. Licensing Corp. v...

Precedential No. 66: TTAB Finds "YOSEMITE BEER" Geographically Descriptive, Affirms 2(e)(2) Refusal

Posted on December 18, 2007
Merced, California is 80 miles from Yosemite National Park, but that was not far enough for Applicant Spirits of New Merced to avoid the Board's ruling that the mark YOSEMITE BEER is primarily geographically descriptive for alcoholic beer [BEER disclaimed]...

Recommended Reading: Scot Duvall on the The Trademark Dilution Revision Act of 2006

Posted on December 17, 2007
Scot Duvall has provided his enlightening commentary on the TDRA in an article in the latest issue of The Trademark Reporter, entitled "The Trademark Dilution Revision Act of 2006: Balanced Protection for Famous Brands." (download pdf here). Scot represented Petitioner Moseley in the landmark Moseley v...

USPTO Issues Annual Report for Fiscal 2007

Posted on December 14, 2007
In case you missed it, on November 15, 2007, the USPTO issued its Performance and Accountability Report for Fiscal Year 2007 (downloadable here). The Report states that "Our Trademark organization continued to demonstrate excellence today and outstanding planning for tomorrow...

TTAB Affirms Refusal to Allow Amendment of "SILENT FIREMAN" to "YOUR SILENT FIREMAN"

Posted on December 13, 2007
The Board affirmed the PTO's refusal to register the mark SILENT FIREMAN for flame retardant goods and fire prevention inspection services, because the mark in the drawing (i.e., the word mark SILENT FIREMAN) is not an exact representation of the mark in the specimens of use...

Recommended Reading: Ted Davis on "Trade Dress Protection for Product Designs"

Posted on December 12, 2007
Ted Davis gave an excellent presentation on "Trade Dress Protection for Product Designs" at IPO's PTO Day Seminar last week. He has graciously allowed me to provide a link to his article (here). Trademark practitioners know that when Ted speaks, they should listen...

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