Posts Tagged: "Trademark Trial and Appeal Board"

The Trademark Trial and Appeal Board (TTAB) on Wednesday, March 20, denied APPLE JAZZ mark owner Charles Bertini’s petition to cancel Apple, Inc.’s mark APPLE for entertainment services. While the Board found that Bertini had “proven and maintained his entitlement to a statutory cause of action,” it ultimately held that he had failed to make a prima facie showing of Apple’s abandonment of the APPLE mark for those services.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision on Thursday vacating the Trademark Trial and Appeal Board’s (TTAB’s) denial of a petition to cancel a trademark for a medicated tea product to treat colic in babies. Naterra International, Inc. petitioned the TTAB to cancel the mark BABIES’ MAGIC TEA based on likely confusion in the market with its own registrations for the mark BABY MAGIC, which cover “numerous toiletry goods.” The Board found that Naterra failed to prove confusion under the 13 DuPont Factors.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today denied Charles Bertini’s petition for a writ of mandamus asking the court to order the U.S. Patent and Trademark Office (USPTO) to decide his trademark cancellation case against Apple, Inc. According to Bertini, the cancellation case has been in limbo at the Trademark Trial and Appeal Board (TTAB) for more than three years, “despite [the TTAB’s] policy and frequent public statements by top USPTO officials that it decides cases after trial in approximately ten weeks.” Furthermore, a Petition to the USPTO Director filed on May 4, 2023, has yet to be decided, “despite the fact that most Petitions to the Director are decided in approximately two months.”

In October of 2023, a divided panel of the U.S. Court of Appeals for the Federal Circuit ruled in Great Concepts, LLC v. Chutter, Inc., 84 F. 4th 1014 (Fed. Cir. 2023) that a fraudulent filing for incontestability under Section 15 of the Lanham Act is not a proper ground for the Trademark Trial and Appeal Board (TTAB) to cancel a registration under Section 14 of the Act. In so holding, it endorsed prior rulings to the effect that fraud in filing a Section 8 affidavit of continuing use, or a renewal application under Section 9—acts of “maintaining” a registration—constitutes “obtaining” a registration within the meaning of Section 14, while rejecting earlier TTAB decisions that had treated Section 15 affidavits the same way.

In September 2023, one man grabbed the authors’ attention with his astonishing story about defending his trademark registration from an opposition by professional trademark attorneys using ChatGPT. His months-long battle began in December 2022, less than a month after the public launch of the now infamous AI chatbot. Nine months later, Jamiel Sheikh — an entrepreneur, tech-guru, and adjunct professor — survived the pressure from formal proceedings and obtained a settlement from his opposer without spending a dime. As young trademark attorneys, we were horrified yet extremely curious about what he had done. This article is the result of speaking with Sheikh about his experience and the evolving needs and expectations of sophisticated legal service consumers.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday vacated and remanded a Trademark Trial and Appeal Board (TTAB) decision that had sustained an opposition to the mark GET ORDAINED, holding that the TTAB had failed to “furnish a reasoned explanation for departing from its established practice of deeming unargued claims waived.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday ruled in a precedential decision  that the U.S. Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB) cannot cancel a trademark based on the filing of a fraudulent declaration under Section 15 of the Lanham Act. Section 15 of the Lanham Act deals with acquiring incontestability status for an already-registered trademark. In the present case, the attorney for Great Concepts, LLC submitted a false declaration to the USPTO in an attempt to obtain incontestable status for the mark DANTANNA’S for a steak and seafood restaurant.

The U.S. Patent and Trademark Office (USPTO) today announced new guidance on empaneling procedures for the Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB). Under the guidance, PTAB and TTAB management will “avoid empaneling cases to judges who hold stock or bonds (publicly traded or privately held) in any of the disclosed parties or real parties in interest, regardless of the dollar value.”

On August 18, the owner of the APPLE JAZZ trademark filed an opposition to Apple’s motion to amend its trademark application for the mark APPLE MUSIC with the Trademark Trial and Appeal Board (TTAB). In its motion, the tech giant asked the TTAB to allow the company to remove “live performance services, as well as related services,” from the application. In July, the U.S. Court of Appeals for the Federal Circuit (CAFC) denied Apple’s request to rehear a decision that effectively canceled the tech company’s application to register the APPLE MUSIC mark.

On August 1, Apple filed a motion to amend its trademark application for the mark APPLE MUSIC with the Trademark Trial and Appeal Board (TTAB) following its recent loss at the U.S. Court of Appeals for the Federal Circuit (CAFC). Apple is asking the TTAB to allow it to remove “live performance services, as well as related services,” from the application in order to get around the CAFC’s ruling and since the Opposer, Charles Bertini, did not make the argument on which the ruling was based before the TTAB.

On Monday, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential opinion that vacated a Trademark Trial and Appeal Board (TTAB) ruling that a trademark registration from GPS vehicle tracking company Spireon was likely to be confused with three trademarks from supply chain management company, Flex LTD. The appeals court found that the TTAB made several significant errors and thus vacated and remanded the case. Flex LTD opposed Spireon’s FL FLEX trademark due to likely confusion with three of its marks, FLEX, FLEX (stylized), and FLEX PULSE. The TTAB determined whether there was a likelihood of confusion using the Dupont factors. The Board found that Flex’s marks were inherently distinctive under the first factor, and using the second, third, and thirteenth Dupont factors concluded that there was overlap between the two companies’ marks and ruled that Spireon registered its mark in bad faith.

The U.S. Supreme Court today granted a petition brought by U.S. Patent and Trademark Office (USPTO) Director Katherine Vidal that asks, “whether the refusal to register a mark under Section 1052(c) violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.” The case was decided by the U.S. Court of Appeals for the Federal Circuit (CAFC) in February of last year, and the full court denied a request for panel rehearing or rehearing en banc in August. The February CAFC decision held the Office’s application of Section 2(c) of the Lanham Act to reject the mark TRUMP TOO SMALL was unconstitutional. Specifically, the CAFC panel held that “applying section 2(c) to bar registration of [Steve] Elster’s mark unconstitutionally restricts free speech in violation of the First Amendment.”

The owner of the trademark for APPLE JAZZ has won his appeal from the Trademark Trial and Appeal Board (TTAB), which dismissed his opposition to Apple, Inc.’s application to register the mark APPLE MUSIC. The U.S. Court of Appeals for the Federal Circuit (CAFC) said the TTAB legally erred in allowing Apple to claim absolute priority for all of the services listed in its application based on a showing of priority for one service. Apple filed Trademark Application No. 86/659,444 for APPLE MUSIC, which the company has been using since 2015, when it launched its music streaming service. Charles Bertini, the owner of APPLE JAZZ, registered his mark in New York state in 1991 for entertainment services but began using the mark well before that, in 1985. Unaware that he did not have a federal registration, Bertini filed an opposition against Apple, Inc.’s federal registration for APPLE MUSIC in 2016, along with an application to register APPLE JAZZ with the USPTO.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday upheld a decision of the Trademark Trial and Appeal Board (TTAB) affirming an examiner’s refusal to register the mark OXIPURITY for chemical products. The court agreed with the TTAB that OXIUPURITY is likely to be confused with the previously registered mark, OXYPURE, for ““hydrogen peroxide intended for use in the treatment of public and private potable water systems and supplies.”