Check it Twice: TTAB Puts Attorney on “Naughty List” for Intent to Deceive USPTO

By Nicholas J. Krob

While it is not advisable for anyone to sign something without reading it first, the same is especially true for lawyers, who are paid to focus on the details. As demonstrated by a recent Trademark Trial and Appeal Board (TTAB) decision, inattention to such details can have costly repercussions when dealing with the United States […]

Clearly using “clear” for Non-Transparent Goods is Deceptively Misdescriptive.

By Julie L. Spieker

Dolce Vita Footware, Inc. sought registration of the mark CLEAR for various bags, purses, wallets, and card cases – excluding transparent goods. The Examiner refused registration on the grounds that it is deceptively misdescriptive and on April 29, 2021 the Trademark Trial and Appeal Board (the “TTAB”) affirmed. In its original registration, Dolce Vita identified […]

“Naked” at the Federal Circuit

By Julie L. Spieker

On December 4, 2020, the US Court of Appeals for the Federal Circuit (“Federal Circuit”) denied petitions by Naked TM, LLC for a panel rehearing and a rehearing en banc of the decision in Australian Therapeutics Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3D 1370 (Fed. Cir. 2020). The Trademark Trial and Appeal Board […]

USPTO to Increase Trademark Fees in 2021

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The United States Patent and Trademark Office (USPTO) has recently announced increases to certain trademark fees beginning on January 2, 2021. The fees will increase for trademark applications, post-registration maintenance filings, and certain filings with the Trademark Trial and Appeal Board (TTAB). Below are some of the more significant and noteworthy fee increases: The fee […]

In a Galaxy Not So Far, Far Away: Millennial Falcon v. Millennium Falcon

By Sarah M.D. Luth

In October the U.S. Trademark Trial and Appeal Board issued a decision regarding the opposition proceedings against the trademark application “Millennial Falcon.” The trademark application “Millennial Falcon,” filed by Applicant Ilan Moskowitz aka Captain Contingency was directed to “entertainment services in the nature of live visual and audio performances by a live musical performance group, […]

ZERO-ing in on the Right Legal Test for Genericness

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 […]

What’s In A Name?

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 […]

‘Fame’ is Not All-Or-Nothing

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 […]

Trademark Description: Does job placement software render the service of professional placement and recruitment?

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 recruitment and employment, employment advertising, career information and resources, resume […]

Unity of Control over a Family of Marks

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 jointly […]