Posts Tagged: "ttab"

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.

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.

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.

Trademarks consisting solely of a color applied to products or their packaging have been protectable under U.S. law for decades—if they meet a heightened standard for protection. Since the U.S. Supreme Court decisions in Qualitex Co. v. Jacobson Products Co. and Wal-Mart Stores, Inc. v. Samara Brothers, Inc., an applicant for a color mark has been required to prove that the color actually serves as an indicator of source in the minds of consumers by showing that the mark has acquired distinctiveness (otherwise known as secondary meaning). Yet that longstanding requirement no longer applies to all color marks, after a new decision by the Federal Circuit in In re Forney, which opens the door for the first time to certain color marks gaining protection as inherently distinctive.

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.

This week in Other Barks & Bites: the Federal Circuit issues precedential decisions regarding its authority to remand to the PTAB, patent prosecution history estoppel and expert testimony on motivation to combine for obviousness findings; China nominates its choice for WIPO Director while pledging to reach “social satisfaction” on IP protections by 2025; INTA announces Ayala Deutsch as the organization’s new president; the USPTO seeks public comments on information collection related to national security concerns; the TTAB applies Federal Rules of Civil Procedure to discovery requests; Hewlett Packard shares drop after quarterly revenues fall short of analyst expectations; and the PTAB allows additional briefing in a case after the possibility of Administrative Procedure Act violations were raised by a patent owner.

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.

While all eyes are on China and how it plans to tackle bad faith infringers, the United States Patent and Trademark Office (USPTO) also is cleaning house, implementing stricter rules for acquiring and maintaining trademark registrations. Unlike other countries, the U.S. is a “first to use” country, not “first to register.” This means, generally speaking and with some exceptions, you acquire ownership by being the first to use a trademark, not the first to register. You acquire these automatic common law rights through use, not registration. Why register then? Aside from being able to use that nifty registration symbol and obtain additional remedies in an infringement suit, you also expand your trademark rights nationally. Suddenly, with a registration in hand, your common law rights in, say, California and Nevada expand presumptively (and over time conclusively) to all 50 states. This is why registrations are so valuable, and this is why the USPTO’s initiatives to remove fraudulently obtained and dead marks have such a significant impact on brand conscious clients. Over the last two years, the USPTO has launched several pilot programs and initiatives.

On May 2, 2019, the USPTO issued a new examination guide titled “Examination of Marks for Cannabis and Cannabis-Related Goods and Services after Enactment of the 2018 Farm Bill.” A hasty reader may have assumed that this guide would offer options for the cannabis business whose federal trademark applications have been thwarted by the lawful use requirement, but this is not the case.The lawful use requirement, as explained by the USPTO, mandates that “use of a mark in commerce must be lawful use to be the basis for federal registration of the mark.” TMEP §907, citing to 37 C.F.R. §2.69 and §§1, 45 of the Lanham Act. In other words, if a product cannot be legally sold in interstate commerce then, according to the USPTO, the mark cannot be used legally in interstate commerce and, lacking trademark use, the trademark cannot be registered. Alas, the new examination guide only allows federal trademark registrations under very narrow circumstances. Under Sections 6 and 297A of the Farm Bill 2018, “the plant Cannabis sativa L. and any part of that plant, including the seeds thereof and all derivatives, extracts, cannabinoids, isomers, acids, salts, and salts of isomers, whether growing or not, with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis” are removed from the Controlled Substances Act (CSA). In effect, these plants and their parts have become legal. Similarly, cannabidiol—commonly referred to as CBD—and those CBD products that have very low THC content, have become legal under the CSA. Being legal under the CSA means that these products can be legally sold in interstate commerce.

This week in Other Barks & Bites, IPWatchdog’s IP news roundup: the House of Representatives passes drug patent legislation, while antitrust legislation targeting patent-related activities is introduced into the Senate and the Trump administration mandates pricing information for pharmaceutical ads; the Patent Trial and Appeal Board (PTAB) issues a pair of precedential decisions on cases with multiple petitions; the USPTO issues marijuana-related trademark guidelines and a notice on modifying patent term adjustment practices; Gilead strikes a settlement with Teva to bring generic Truvada to the U.S. market in 2020; a new music licensing entity is created in Canada; Fourth Circuit rules that bankruptcy can eliminate damages for trade secret violations; and several amicus file briefs asking the U.S. Supreme Court to eliminate the Federal Circuit’s “blocking patent” doctrine.

While readers of this website will be well aware of the damaging impact of “patent troll” rhetoric that has reached the highest levels of American political discourse, many players in the trademark space have been shining a light on the issue of “trademark trolls” in recent years. Trademark trolls can take several different forms, according to a December 2015 article published in the INTA Bulletin. Generally, a troll will register a trademark, often viewed as a frivolous mark by others in the industry, and then demand licensing payment, threaten litigation or issue serial takedowns on e-commerce platforms through assertion of the mark. These can include companies that file for domestic trademarks for a mark owned by a foreign company that hasn’t yet entered that market or entities, including individuals, who claim trademark use and registration to threaten infringement or issue takedowns against other entities, even when their use of the mark is in unrelated areas. Last spring, the word “troll” was thrown around once or twice to describe Faleena Hopkins, a romance novel writer who was asserting her trademark rights to the use of the word “Cocky” against other writers using that word in their book titles. Last June, changes to Canadian trademark laws that shifted requirements for trademark registration from first-to-use to first-to-file had sparked some fears that trademark trolling could result.

The United States Patent and Trademark Office (USPTO) Trademark Public Advisory Committee (TPAC), a small group of senior industry trademark professionals who provide guidance to USPTO leadership, kicked off the New Year with the first quarterly meeting held on January 25, 2019. The meeting covered a broad range of changes and updates to the Trademark Office’s policies, procedures, and operations. Members Bill Barber and Brian J. Winterfeldt provide an insider look at the top four issues of importance for every intellectual property (IP) owner. Bill Barber, Founding Member of Pirkey Barber PLLC, is serving in his second term on TPAC and is currently its Chair. Brian J. Winterfeldt, Founder and Principal of Winterfeldt IP Group, PLLC, is serving in his first term as a TPAC member.

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.