Dramatic change in UK trademark policy; Australia eliminates obligation to disclose search reports There have been two interesting changes in foreign IP practice over the past month. Effective October 1, 2007, the UK Trade Marks Office changed its policy such that it will no longer raise objections to applications based on prior existing applications/registrations. Instead, it will be the policy to write to owners of earlier potentially conflicting […] Continue Reading →
Ninth Circuit: DJ dismissal reversed; concurrent TTAB proceedings, Rule 408 don’t warrant dismissal 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 […] Continue Reading →
Sixth Circuit: No likelihood of confusion between competing wines using same geographic term In a decision last week, the Sixth Circuit affirmed a district court ruling that use of the mark "Chateau de Leelanau Vineyard and Winery" did not create a likelihood of confusion among consumers with the plaintiff's "Leelanau Cellars" federally-registered mark. "Leelanau" in both marks is a reference to a peninsula in Michigan where the wine […] Continue Reading →
Trademark licensing hall of shame: why trademark owners need to monitor their licensees Owners of trademarks should take care that they control how licensees use their marks. This should be common knowledge for most trademark owners, as inconsistent or unauthorized use of a trademark can dilute its distinctiveness, and in extreme cases, cause loss of rights. The owners of one of the most famous trademark brands, the New […] Continue Reading →
Ninth Circuit: Reversible error to only consider one of the likelihood of confusion factors In a trademark case yesterday, the Ninth Circuit held that the similarity-of-the-marks factor could not be considered exclusive of the other likelihood of confusion factors in determining trademark infringement. In doing so, the court reversed the grant of summary judgment against the defendant's counterclaims of trademark infringement, as well as the defendant's counterclaims for copyright […] Continue Reading →
Revised TTAB rules coming soon 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 […] Continue Reading →
Federal Circuit affirms requirement to amend listing of goods to exclude goods in another class 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 […] Continue Reading →
Federal Circuit affirms dismissal of opposition proceeding for lack of standing 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 […] Continue Reading →
Seventh Circuit: no evidence of use of “Stealth” mark, cancellation affirmed In a ruling today, the Seventh Circuit affirmed the cancellation of one of Leo Stoller's many "STEALTH" registrations (owned by one of his companies) for lack of use. The registration in question for "baseball bats, softball bats, and t-ball bats," was the basis for a suit brought against baseball hall of famer George Brett and […] Continue Reading →
Federal Circuit: less distinctive portions of a mark still considered in likelihood of confusion 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 […] Continue Reading →