Posts Tagged: "ttab"

On June 21st, however, an administrative trademark judge at the Trademark Trial and Appeal Board (TTAB) granted Blue Ivy’s motion for early discovery. The discovery is limited to the grounds of no bona fide intent and fraud on the USPTO. Blue Ivy alleges that, although BGK Trademark Holdings is claiming the use of the BLUE IVY CARTER mark for a wide range of goods and services, that there’s no true intent to use the mark in commerce at all.

In Lyons v. American College of Veterinary Sports Medicine the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (“Board”) cancellation of Sheila Lyons’s registration of the service mark, THE AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND REHABILITATION (“the mark”) on the Supplemental Register on the grounds that she does not own the mark… Ownership of a service mark, as between a group and a departing member, depends on the objective intentions and expectations of the parties and on who the public associates with the mark and stands behind the quality of services offered under the mark.

The Federal Circuit vacated and remanded the Trademark Trial and Appeal Board’s decision to deny the trademark cancellation petition, finding that the Board used an incorrect standard for “fame” in its likelihood of confusion analysis… The Court rejected the Board’s all-or-nothing analysis, holding that it must consider all of the relevant confusion factors, on a scale appropriate to their merits, under the totality of the circumstances. It explained that the proper legal standard for evaluating the fame of a mark is the class of customers and potential customers of a product or service, not the general public…

The Supreme Court heard oral argument on the cloudy Wednesday morning of January 18, 2017. Although the Justices posed tough questions and intricate hypotheticals to both sides, the tone of each Justice’s questions and their individual jurisprudences indicate an even 4-4 split, with Justices Breyer, Ginsberg, Kagan, and Sotomayor favoring the USPTO, and Justices Alito, Kennedy, Thomas, and Chief Justice Roberts favoring Tam. Of course, oral argument is often shaky, at best, when predicting the outcome of a case, especially one with such potential for a drastic overhaul of a body of law… Although no one can know for certain the outcome of Lee v. Tam, one consequence that appears very likely is that, if the Court does rule in favor Tam, it would strike the entirety of Section 2(a), not just the portion prohibiting disparaging marks that forms the central issue of the case. John C. Connell, counsel for Tam, went so far as to call that result “inevitable” in response to Justice Ginsberg’s question on the topic.

The highest federal court in the United States declines to hear an appeal from tech giants on applying common sense to patent validity challenge proceedings. A group of pharmaceutical giants duke it out in a patent battle over a topical ointment for treating acne. The capital’s district court hears arguments in a case about compulsory copyright licenses. Also, President Trump signs a bill authorizing billions in funding for the nation’s space agency.

On the menu this week for Other Barks & Bites, the Supreme Court hears oral arguments in a case challenging the Lanham Act’s disparagement provision, a six-figure damages verdict goes in favor of former USPTO Deputy Director Russell Slifer, a TTAB petition is filed to challenge the trademark application for an NFL franchise currently in the relocation process, an announcement by a Japanese academic-industry research project that claims to have doubled the effectiveness of solar cell panel conversion rates, the FTC takes action against a pharmaceutical company and much more.

The Supreme Court has scheduled oral argument in Lee v. Tam for January 18… The genesis of the case is a Portland, Oregon all-Asian-American band called The Slants, founded by petitioner Simon Shiao Tam. An application for trademark was made and the USPTO said “NO” on the basis that “The Slants” is a highly disparaging term and therefore must be denied registration under Section 2(a) of the Lanham Act… The cultural and societal value of the free flow of speech trumps government regulation. The Supreme Court should uphold the Constitution and confirm the importance of robust political debate, cultural discourse, and the right to use ANY words as part of a personal identity.

In April 2015, the National Basketball Association’s Milwaukee Bucks announced that it was in the midst of a project to redesign the team’s logo. Reports indicated that the logo would retain a version of the deer’s head which had graced the team’s previous logo, but with a new green and cream color scheme… The TTAB petition filed by Jägermeister identifies a series of eight U.S. trademarks held by the liqueur maker as grounds for opposition to the Bucks’ ‘186 trademark application. The vast majority of these marks have only been registered for use in trademark class 33 which covers alcoholic beverages except for beers.

The Federal Circuit vacated the Trademark Trial and Appeal Board’s (“Board”) cancellation of two JobDiva service mark registrations—one in whole and the other in part—and remanded for further consideration. As the Court pointed out in its opinion, JobDiva could have avoided the issues in this case by initially registering “marks to identify both software and services performed by software.” Practitioners should take care to register a mark for all goods and services for which the mark may be used.

Instagram’s TTAB action targets U.S. Trademark Application No. 86663305, which would protect Microsoft’s use of the standard character mark “ACTIONGRAM” on goods including computer software for virtual reality realization, manipulation, immersion and integration of audio, video, text, binary, still images, graphics and multimedia files, as well as computer software for controlling wearable hardware and wearable computer peripherals. The application for this trademark was filed in June 2015. Microsoft is currently offering a beta version of Actiongram, a virtual reality service for Hololens users where users can create holograms which they can share with social contacts.

A decision to deny trademark registration for two marks to be used on marijuana related goods was handed down in late October by the USPTO’s Trademark Trial and Appeal Board. On October 27th, a TTAB judicial panel decided In re JJ206, LLC by refusing to register two trademarks which were being sought by JUJU Joints, a developer of pre-loaded cannabis oil devices. TTAB affirmed trademark examiner decisions that two standard character marks, “POWERED BY JUJU” and “JUJU JOINTS” cannot be registered for federal trademark protection “because Applicant’s identified goods constitute illegal drug paraphernalia under the [Controlled Substances Act].” JUJU Joints was seeking to use the marks in commerce for goods such as smokeless cannabis vaporizing apparatuses and cannabis delivery devices.

The Federal Circuit reversed the cancellation of two trademarks by the Trademark Trial and Appeal Board (“Board”) and remanded for further consideration… “Use in commerce” under the Lanham Act encompasses any activity that falls under Congress’s Commerce Clause power, including in-state sales to an out-of-state resident. Activities that are within such regulatory authority are unlikely to be disqualified as merely “de minimis,” e.g. in economic impact.

Cubs fans have been able to “fly the W” a number of times this postseason, referring to the win flag that is raised at Wrigley Stadium after every Cubs win. This “W” forms the basis of another TTAB challenge recently filed by the baseball organization. On the same day that it filed a TTAB challenge against CopyClear, the Cubs also filed a petition challenging U.S. Trademark Serial No. 86705124, a mark filed last July 2015 by design firm Laserwave Graphics of New Brunswick, NJ. It covers the use of an illustration including wording which consists of a large stylized “W” within a circle. Laserwave Graphics has registered the mark to be used on watches, including jewelry watches and watch parts, online retail store services featuring watches and providing a website featuring computer application software which can be used to design and purchase watches.

The Trademark Trial and Appeal Board (TTAB or the Board) Rules of Practice will change on January 14, 2017. The new rules will be applicable to all inter partes (oppositions, cancellations, concurrent use) and ex parte appeal proceedings, including those pending on January 14, 2017. The main changes to be aware of are outlined below:

Subsidiaries of larger companies who are preparing to file a trademark application may want to think twice before deciding who to list as the Applicant. In April 2016, The United States Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) issued a precedential decision canceling the trademark registration of a subsidiary because the parent company was the only one using the mark… Given the outcome of this cancellation action, companies with multiple entities should be on alert. Companies should first confirm that the entity actually using and controlling the mark is the one listed on the registration. If not, to avoid cancellation of the trademark, the entities should consider entering into a trademark license or an assignment.