Posts Tagged: "Trademark Trial and Appeal Board"

On March 17, the U.S. Court of Appeals for the Fourth Circuit reversed and remanded a decision from the U.S. District Court for the Western District of North Carolina in a Lanham Act statutory interpretation case. The case involved plaintiffs Snyder’s-Lance, Inc. and Princeton Vanguard, LLC (collectively “Princeton Vanguard”) and defendant Frito-Lay North America, Inc. (“Frito-Lay”). The district court held that a party to a trademark dispute who appeals a decision of the Trademark Trial and Appeal Board (TTAB) to the U.S. Court of Appeals for the Federal Circuit (CAFC), resulting in the vacatur, remand and issuance of a new decision by the TTAB, may not then seek judicial review of that second decision in federal district court. The Fourth Circuit disagreed and ultimately reversed and remanded the case back to the district court.

On January 8, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the United States Patent and Trademark Office, Trademark Trial and Appeal Board (TTAB) dismissing QuikTrip West, Inc.’s (QuikTrip) opposition to Weigel Stores, Inc.’s (Weigel) registration of the mark W WEIGEL’S KITCHEN NOW OPEN on the ground that there was not likelihood of confusion with QuikTrip’s registered design mark, QT KITCHENS (QuikTrip West, Inc. v. Weigel Stores, Inc.).

The USPTO recently published a Final Rule setting new fees for trademark filings and TTAB proceedings, which will be effective January 2, 2021. The last time trademark fees were adjusted was about three years ago. The increases range from modest to fairly substantial. To file an application using the TEAS Plus option, the fee has increased from $225 per class to $250 per class, and the processing fee for failing to meet the TEAS Plus requirements has been reduced from $125 per class to $100 per class. However, the fee for TEAS Standard per class has jumped $75, from $275 to $350, which many trademark owners who commented found unreasonable.

On October 27, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) in Corcamore, LLC v. SFM, LLC. In an opinion authored by Circuit Judge Reyna, the CAFC affirmed the TTAB’s decision that SFM was entitled to bring and maintain a petition under 15 U.S.C. § 1064 because it met the requirements to bring a cancellation action against Corcamore’s registered mark, and that the TTAB did not abuse its discretion in imposing default judgment as a sanction.

Following the widely discussed BOOKING.COM Supreme Court genericness case, the Trademark Trial and Appeal Board (Board) took up a genericness case of its own. Int’l. Dairy et al. v. Interprofessionnel du Gruy?re addresses whether a geographic certification mark for GRUYERE is generic for cheese or eligible for registration as a certification mark. In addition to providing an extensive roadmap for how to prove a genericness claim, the case may also be of interest to food and beverage industry applicants seeking to obtain and enforce certification marks.

A case that is currently before the Trademark Trial and Appeal Board (TTAB), Proceeding No. 92071980, is no run-of-the-mill cancellation petition. Elevated Faith LLC v. GODISGHL, LLC,  concerns the right to register religious symbols and exposes critical flaws in trademark examination; in some ways it might be considered a progeny of Matal v. Tam and Iancu v. Brunetti. Naturally, it also involves a celebrity.

Under the Lanham Act, a trademark is any combination of words, names, symbols, or devices that are used to identify and distinguish goods or services and to indicate their source. Am. Express Co. v. Goetz, 515 F.3d 156, 159 (2nd Cir. 2008). Therefore, a trademark, in order to be deserving of protection as such, must be used in such a manner that it designates the source of the goods or services (even if that source is unknown). 15 U.S.C. § 1127. (Unless otherwise indicated, references to “trademarks” are intended to encompass “service marks” as well.)

The U.S. Court of Appeals for the Federal Circuit ruled yesterday that Australian Therapeutic Supplies Pty. Ltd. has “a real interest” in cancelling the registration for NAKED for condoms, owned by Naked TM, LLC. While the Trademark Trial and Appeal Board (TTAB) had found that Australian lacked standing to petition for cancellation because “it had contracted away its proprietary rights in its unregistered marks,” the Court held that “a petitioner seeking to cancel a trademark registration establishes an entitlement to bring a cancellation proceeding under 15 U.S.C. § 1064 by demonstrating a real interest in the cancellation proceeding and a reasonable belief of damage regardless of whether petitioner lacks a proprietary interest in an asserted unregistered mark.” Judge Wallach dissented from the majority opinion, which was authored by Judge Reyna.

The U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the Trademark Trial and Appeal Board (TTAB) that denied registration of Stratus Networks, Inc.’s trademark (the STRATUS mark) on grounds of likelihood of confusion with UBTA-UBET Communication Inc.’s registered trademark (the STRATA mark). The CAFC reviewed the Board’s factual findings for each of the considered DuPont factors, determined that the Board’s findings were supported by substantial evidence, and found no legal error in the Board’s determination.

The Trademark Trial and Appeal Board (TTAB) has recently issued a decision allowing an opposition proceeding to continue after finding that opposer AT&T Mobility had standing to bring the proceeding to the TTAB. Applicants Mark Thomann and Dormitus Brands had argued that AT&T Mobility did not have standing to oppose applications to register “CINGULAR” trademarks because the opposer abandoned its own marks when it changed its business name more than a decade earlier. Although AT&T Mobility has demonstrated to the TTAB its basic ability to bring claims in the opposition proceeding, Eric Perrott, trademark and copyright attorney with Gerben Law Firm, notes that the low threshold AT&T Mobility has cleared doesn’t mean that the entity will be successful on its claims.

On February 28th, the Court of Appeals for the Federal Circuit (CAFC) affirmed the Trademark Trial and Appeal Board’s (TTAB) decision to refuse registration of two trademark applications belonging to JC Hospitality LLC (JC). Both applications sought to register the mark THE JOINT under different classes of services (Class 41 and Class 43). See In re JC Hospitality. The CAFC agreed with the TTAB that the marks were merely descriptive of JC’s services, and lacked any showing that the marks acquired distinctiveness as source identifiers.

Beyoncé is more than just one of the music industry’s most recognizable stars. She has built a business empire that extends into entertainment production, fashion, major product endorsements and even streaming music distribution through the Tidal platform with her husband, Jay-Z. Forbes named Beyoncé its Most Powerful Woman in Entertainment on two occasions, having sold more than 100 million records worldwide. With such a track record of success, it should come as no surprise that Beyoncé is extremely savvy about the importance and value of personal branding and intellectual property. Through her BGK Trademark Holdings, LLC, the singer owns a number of trademarks related to various products and services, ranging from clothing and accessories to cosmetics and charitable services. Case in point: Beyoncé is engaged in a fierce trademark battle with the owner of a Massachusetts wedding planning business over “Blue Ivy”—the name shared by the wedding event business and the singer’s young daughter.

The Trademark Public Advisory Committee (TPAC) held its first quarterly meeting of 2019 on January 25… Despite the projection that without a long term solution to the government shutdown funding would run out by mid-April for Trademark Operations, USPTO Commissioner for Trademarks Mary Boney Denison said that the Office was still planning to proceed with hiring new trademark examiners… The first quarter of 2019 and last quarter of 2018 indicated a decline in filings for the first time since FY2010, which could mean that the USPTO’s projection that trademark filings will increase by 6.1% this year is incorrect… In discussing levels of TTAB filings, Rogers noted that the last few years had seen significant increases in the number of oppositions and petitions for cancelling trademarks coming in through the front door of the TTAB’s filing system. While appeals were increasing, they were being outpaced by oppositions and petitions to cancel.

The Girl Scouts of the United States of America have filed suit to force the Boy Scouts of America to put the “Boy” back into “Boy Scout.” The two venerable youth organizations will soon face off in a high-stakes trademark battle in federal court.  The Girl Scouts filed a trademark complaint in November 2018 in the U.S. District Court for the Southern District of New York. In it, the Girl Scouts claim the Boy Scouts’ use of the trademarks SCOUTS, SCOUTING and SCOUTS BSA without the word “boy” for programming for girls has and will continue to create confusion for families seeking to enroll their daughters in Girl Scouts.

Trademarks protect distinctive marks, such as brand names, logos, and designs.  This protection allows a trademark holder to exclude others from using the mark without permission of the owner. The following includes important, basic information about trademarks, as well as how start-ups can protect their trademarked intellectual property.