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Category: TTAB


ZERO-ing in on the Right Legal Test for Genericness
June 27, 2018
Post by Blog Staff
In Royal Crown Co. v. The Coca-Cola Co., the United States Court of Appeals for the Federal Circuit (CAFC) vacated a decision of the Trademark Trial and Appeal Board (TTAB) dismissing Royal Crown’s opposition to the registration of Coca-Cola’s trademarks for soft drinks and sports drinks with the term ZERO. The CAFC concluded that the TTAB used the wrong legal test to determine whether ZERO is generic, o.......
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What's In A Name?
August 02, 2017
Post by Blog Staff
Theresa Earnhardt, widow to professional race car driver Dale Earnhardt and step-mother to Kerry Earnhardt, appealed the Trademark Trial and Appeal Board’s decision that her stepson’s mark, EARNHARDT COLLECTION, was notas a whole primarily a surname. Theresa Earnhardt is the owner of trademark registrations and common law rights in the use of the mark DALE EARNHARDT. Kerry Earnhardt, as CEO of Kerry Earn.......
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'Fame' is Not All-Or-Nothing
June 06, 2017
Post by Blog Staff
The Court of Appeals for the Federal Circuit (“CAFC”) vacated a decision by the Trademark Trial and Appeal Board (the “Board”) denying a petition by Joseph Phelps Vineyards, LLC for cancellation of a trademark held by Fairmont Holdings, LLC. The CAFC held that the Board used an incorrect standard when analyzing the ‘fame’ factor for likelihood of confusion. The court remanded for redetermination using th.......
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Trademark Description: Does job placement software render the service of professional placement and recruitment?
December 22, 2016
Post by Blog Staff
In 2004 JobDiva registered the service mark JOBDIVA (U.S. Registration 2,851,917, hereinafter ‚¬Ëœ917) for "personnel placement and recruitment"services. In 2005, JobDiva registered the service mark JOBDIVA (plus design) (U.S. Registration 3,013,235, hereinafter ‚¬Ëœ235) for "personnel placement and recruitment services; computer services, namely, providing databases featuring recrui.......
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Unity of Control over a Family of Marks
November 16, 2016
Post by Blog Staff
Wise F&I, LLC and a number of its subsidiaries recently opposed Allstate Insurance Company's application to register the marks MILEWISE and ALLSTATE MILEWISE for " insurance services, namely, writing and underwriting of property and casualty insurance and providing ancillary services thereto, namely, administration and claims adjustment,"in International Class 36. Wise F&I, LLC and subsidiaries jo.......
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USPTO Data Visualization Center
November 10, 2016
Post by Jonathan L. Kennedy
Jonathon L. Kennedy Have you ever wondered how long the typical time before a first Office Action in a pending patent or trademark application is?  Or am I the only one waiting for some months after filing an RCE to have my patent application reexamined?  Or what is the average length of time a patent application or trademark application is examined before allowance?  The USPTO Data V.......
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"White" Color Mark
July 18, 2016
Post by Blog Staff
In In re Hodgdon Powder Company, Inc., the TTAB overturned a prior refusal to register a color mark for gunpowder. In doing so, the TTAB found that Hodgdon Powder Co. had proven acquired distinctiveness under Section 2(f) of the Trademark Act of 1946, 15 U.S.C. § 1052(f), for the color "white"as applied to gunpowder in International Class (IC) 13. The description of the ma.......
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Who owns the Trademark: Distributor v. Manufacturer
August 11, 2015
Post by Blog Staff
The Trademark Trial and Appeal Board (TTAB) has previously held that in the absence of an agreement between a manufacturer and a distributor, there is a legal presumption that the manufacturer is the owner of the trademark. The presumption that the manufacturer is the owner of a disputed mark may be rebutted. In determining which party has superior rights, the TTAB has looked to severa.......
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Cancelation of Trademarks due to First Actual Use After Application
March 04, 2015
Post by Blog Staff
Federal registration of a trademark provides a number of benefits to the trademark owner, including protection throughout the entire country, advantageous litigation position—for example presumption of validity and enhanced monetary damages—and enlistment of the U.S. Customs Service to stop importation of counterfeit goods. The federal trademark system provides two separate avenue.......
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USPTO Cancels Washington, D.C. NFL Franchise's Trademark Registrations
June 19, 2014
Post by Blog Staff
The United States Patent and Trademark Office issued a decision yesterday cancelling six federal trademark registrations owned by the Washington, D.C. National Football League franchise. The cancellation proceeding was brought by five Native American petitioners on the basis that the marks disparage persons or bring them into contempt or disrepute in violation of 15 U.S.C. § 1052(a). The Trademark Trial and.......
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Second Circuit: If you want a court to order the USPTO, ask in your pleadings, not after you win
September 25, 2008
Post by Blog Staff
In a recent decision, the Second Circuit affirmed a district court's decision in a trademark case not to enter an order pursuant to 15 U.S.C. § 1119. § 1119 permits a court to enter an order regarding registrability and cancellation of marks at the USPTO. The prevailing defendant asked the district court to order the USPTO to dismiss a related cancellation proceeding. The party had not requested.......
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Party defaulting before district court and enjoined cannot attack registration via cancellation
April 17, 2008
Post by Blog Staff
In a decision this week, the Federal Circuit held that a party against whom a default judgment was entered in a trademark infringement case before a district court cannot thereafter petition to cancel the registration at issue before the TTAB. The TTAB held the claim barred by res judicata. The court held that res judicata did not apply, because an invalidity counterclaim in the district court was not compulsor.......
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Fourth Circuit: Subpoena to foreign corporation valid even though no U.S. business contacts
December 31, 2007
Post by Blog Staff
The Fourth Circuit last week addressed a district court's ability to issue subpoenas to foreign witnesses in USPTO administrative proceedings. The court held that a district court may issue a Rule 30(b)(6) subpoena to a foreign corporation who is party to an opposition, even if the party has no officers, directors or managing agents who reside within the jurisdiction. The decision generated a lengthy dissent.......
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Ninth Circuit: DJ dismissal reversed; concurrent TTAB proceedings, Rule 408 don't warrant dismissal
October 17, 2007
Post by Blog Staff
On Monday, the Ninth Circuit addressed the issue of a federal court's subject matter jurisdiction over a trademark declaratory relief action when an infringement action has not been brought and proceedings related to the trademark are pending at the Trademark Trial and Appeal Board (TTAB). The district court dismissed the case as not presenting a sufficient case or controversy to support jurisdiction, and a.......
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Revised TTAB rules published, some take effect August 31, others November 1
August 01, 2007
Post by Blog Staff
As noted last week, the revised TTAB rules were published in today's Federal Register. The final rules are somewhat different than those proposed last January. Some of the new rules include:Opposers/Petitioners will serve copies of the notice of opposition or cancellation petition on the opposing party directly, rather than having the TTAB send out the papers [Revised 37 C.F.R. § 2.105]Adoption of mand.......
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Revised TTAB rules coming soon
July 27, 2007
Post by Blog Staff
The TTABlog reports that the revised TTAB rules initially proposed in a notice of proposed rulemaking on January 17, 2006 are likely to be published in the Federal Register in the next week. The summary of the rules as initially proposed is as follows:The United States Patent and Trademark Office (Office) proposes to amend its rules to require plaintiffs in Trademark Trial and Appeal Board (Board) inter par.......
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Federal Circuit affirms requirement to amend listing of goods to exclude goods in another class
July 23, 2007
Post by Blog Staff
In the first of two Federal Circuit rulings today, the court affirmed that the USPTO was within its authority when it refused to allow an applicant to rely on the international classification to clarify ambiguities in the listing of goods for a trademark. In affirming the TTAB, the court emphasized the deference due to the USPTO when determining the sufficiency of description of goods and services in a trademark .......
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Federal Circuit affirms dismissal of opposition proceeding for lack of standing
July 11, 2007
Post by Blog Staff
In another nonprecediential ruling today, the Federal Circuit affirmed the TTAB's dismissal of an opposition filed against registration of the Dykes on Bikes mark.There are two requirements to have standing to file an opposition with the TTAB. The would-be opposer must have "both a real interest in the proceedings and a reasonable basis for a belief that he would be damaged by its registration." .......
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Federal Circuit: less distinctive portions of a mark still considered in likelihood of confusion
June 22, 2007
Post by Blog Staff
In a case decided today, the Federal Circuit reversed the Trademark Trial and Appeal Board's denial of an opposition to registration of a trademark. Specifically, the court rejected the Board's finding that there was no likelihood of confusion because the Board improperly considered an element present in both marks a "weak component" of the competing marks and that other components of the mark.......
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"Aspirina" descriptive of analgesic goods; denial of registration affirmed
May 24, 2007
Post by Blog Staff
In a decision today, the Federal Circuit affirmed a decision by the TTAB that the term "ASPIRINA" is descriptive of analgesics, and therefore not subject to trademark protection in the United States absent a showing of secondary meaning. While the evidence of record was conflicting as to whether ASPIRINA was descriptive, given the deferential standard of review, the panel majority affirmed the decisio.......
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Today's lesson from the Federal Circuit (that you should already know): Don't miss deadlines
February 27, 2007
Post by Blog Staff
In a case decided today, the Federal Circuit affirmed the TTAB's dismissal of a party's cancellation claim. The party seeking cancellation sought to do so by proving uncontrolled licensing of the trademark, but failed to file a notice of reliance with regard to the relevant testimony on the issue before the deadline. The TTAB denied the motion to reopen the testimony period, finding no excusable neglect. The Fe.......
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TTAB now allows citation of nonprecedential opinions
January 24, 2007
Post by Blog Staff
In a notice posted in the USPTO Official Gazette yesterday, the TTAB has changed its rules, now allowing citation to TTAB decisions designated non-precedential. Under the former rule, any non-precedential decisions cited before the TTAB were disregarded. Now, while only opinions designated as precedential are binding on the TTAB, a non-precedential opinion "may be cited for whatever persuasive value it might hav.......
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2006 TTAB year in review
January 12, 2007
Post by Blog Staff
John Welch at The TTABlog has compiled a list of all citable opinions of the TTAB in 2006 organized by the substantive legal issue in each decision. This is a useful tool when looking for the most recent TTAB case law on a particular issue. The 57 citable decisions in 2006 are almost double the total number of citable decisions for the past two years: there were only 18 in 2005 and 13 in 2004. Wel.......
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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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