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McCarthy speaks

This is really something!  I always knew John Welch was the definitive resource online, and then some, for what’s going on at the Trademark Trials and Appeal Board — the TTAB, of course — via his seminal, inimitable and comprehensive TTABlog®.  But I didn’t know that his blog was now an official resource for ex cathedra pronouncements from Himself!

Check. This. Out. July 11, 2016 on the TTABlog:

Professor McCarthy Criticizes the TTAB’s Dilution Analysis

Professor J. Thomas McCarthy has been a consistent critic of the TTAB’s analysis in dilution cases, particularly the Board’s failure to properly consider the issue of “impairment” or “damage” arising from the alleged dilution. He sent me the following comment for posting:

I wish the T.T.A.B. would stop saying that dilution of a mark can be shown merely by proving that the challenged mark causes people to think of the famous mark. In its March 31, 2016 decision in theOmega case (118 U.S.P.Q. 2d 1289, 1298) it quoted from its last year’s decision in the New York Yankees case (114 U.S.P.Q. 2d 1497, 1506). It said that dilution by blurring occurs when “a substantial percentage of consumers, on seeing the junior party’s use of a mark on its goods, are immediately reminded of the famous mark and associate the junior party’s use with the owner of the famous mark, even if they do not believe that the goods come from the famous mark’s owner.” That’s just a part of what dilution demands and is not what the statute says. . . .

The Supreme Court made it clear that as a matter of basic dilution theory, proof of association is itself neither proof of blurring nor proof that blurring is likely: “‘[b]lurring’ is not a necessary consequence of mental association. (Nor, for that matter, is ‘tarnishing.’)” Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 434 (2003).

This is the best thing in the world, and the way it ought to be, because you won’t believe what happened next!

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Semaphores and metales

Originally posted 2013-05-09 14:32:26. Republished by Blog Post Promoter

The CraftsmanTwo kinds of analogy, as scrambled by an old and dear friend. Evidently, there is another kind. John Welch writes about a TTAB decision cancelling trademark registrations based on the petitioners use of the mark, for purposes of avoiding a defense of abandonment against the putative senior user, that is not quite trademark use but is “analogous to trademark use.”

John writes about the rather thin reed on which the TTAB places the weight of this cancellation for the mark “ALS IK KAN” — Finnish for “All I Can” — by noting that the Board seemed to have done all it could to return the ownership of the mark to a lineal descendant of the senior user. I would have liked to hear more from John about this entire concept of “analogous to trademark use” use. Maybe I will.

Powerful precedent

Originally posted 2008-02-06 17:36:25. Republished by Blog Post Promoter

John Welch of the TTABlog

Ver veist besser fun John?

The TTABlog:

Whenever the TTAB issues a precedential decision, I try to discern what point the Board is trying to make.

Good idea! When it comes to John Welch, that’s usually a pretty high level of discernment. But in the case linked to, you don’t have too read to hard to figure it out.

Best of 2009: “Keeping it real — the ultimate use in commerce”

Originally posted 2009-12-27 16:56:22. Republished by Blog Post Promoter

This was first posted on May 7, 2009.

The TTABlog® reports, again, on the fraud issue, but that’s not what interests me here so much this time. Rather, it’s the question of the lifecycle of a trademark’s “use in commerce” status when plotted against that of a specific product which may no longer be manufactured, but which arguably may have trademark significance.

Ron ColemanI have looked at this question in other contexts before, particularly in this post where I wrote about a company called River West Brands, that pokes through the junk-heap of “abandoned” consumer-products trademarks and tries to make money off them. The focus in that post was on trademarks for lines of goods that no longer exist, and I linked to related items by Pam Chestek and, guess what, John Welch that dealt with the issue. But here there’s a twist: The trademark, WAVE, is very much alive in Bose’s successful line of high-end audio equipment. But, as befits a “fraud on the PTO” case, the focus here is on one particular product in the list of goods and service that is no longer in production. Can the trademark still be a trademark?

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Talking the Slants talk

You might want to click through and read the whole exchange between me and a few interested (and interesting) friends last night about the trademark news of the day, if that stuff intrigues you at all after the deluge, or just for laughs.

Here are other places people have talked about the case since the last roundup: Ars Technica; Eugene Volokh; The Washington Post; Forbes — an article that makes important points omitted in most non-legal publications; IP Watchdog; The National Law Review; TTABlog, of course; Duets Blog; Eric Goldman; and I really don’t get the point of why I’m doing this. It’s a famous case, and they’re mostly saying the same thing.

UPDATE:  Lawrence E. Ashery of Caesar Rivise actually doesn’t say the same thing as everyone else; he actually gets what everyone else missed, and which I come to terms with here.  Yes, this is kind of hidden.  That’s how it’s going to be.

We are the world

Giuseppe_Garibaldi_-_Italian_Navy_-_4

Italian flagship.

Originally posted 2008-08-21 11:59:14. Republished by Blog Post Promoter

A classic explanation, via the case method, of trademark law’s doctrine of foreign equivalents:

Affirming a Section 2(d) refusal, the Board found Applicant’s mark AMMIRAGLIA for “wines, sparkling wines, liqueurs,” likely to cause confusion with the registered mark FLAGSHIP for vodka. The Board concluded that AMMIRAGLIA means flagship in Italian, and it found no evidence that AMMIRAGLIA would not be translated by the ordinary American purchaser who is knowledgeable in the English and Italian languages. In re Marchesi de’ Frescobaldi Societa’ Agricola S.p.A., Serial No. 79021733 (August 11, 2008) [not precedential].

Plus, now you know how to say “flagship” in Italian!

When you say BUD®

Vintage-Budweiser-Ad

Of course he’s happy. The restaurant popped open that can special for him!

Disputes involving the great BUDWEISER trademark are even older than LIKELIHOOD OF CONFUSION® — the blog, not the secondary meaning thing.  You know that because even in 2006 I wrote — already sounding like a tired old man — how ubiquitous Anheuser Busch’s enforcement adventures were.

Here’s the latest one to come to notice, via John Welch, and it does have to make you pine for a cold frosty to read how this went:

The TTAB sustained an opposition to registration of the mark WINEBUD for “alcoholic beverages except beers; wines and still wines and sparkling wines; beverages containing wine, namely, sparkling fruit wine and still fruit wine; ready to drink alcoholic beverages except beers,” finding the mark likely to cause confusion with the famous mark BUD registered for beer. The Board deemed the marks to be highly similar, the involved goods to be related, and the channels of trade and classes of consumers overlapping. The goods are purchased by ordinary consumers who are unlikely to exercise care in their purchases. Survey evidence corroborated the Board’s conclusion. Anheuser-Busch, LLC v. Innvopak Systems Pty Ltd., Opposition No. 91194148 (August 17, 2015) [precedential]. . . .

The marks: Applicant argued that WINEBUD is a “fanciful compound noun formed from the nouns WINE and BUD, an analogy to horticultural words such as ‘rosebud.'” It contended that wine drinkers would perceive the latter half of its mark as connoting the bud of a vine, not as a reference to BUDWEISER the beer or the BUD family of marks. According to Applicant, BUD refers to BUDWEISER and BUDWEISER refers to someone or something from Budweis, and Budweis is the former name of Ceské Budejovice, which is a small Czech town.

The Board was not persuaded, observing that there was no evidence that consumers would associate the mark BUDWEISER with a geographical location. Likewise as to the mark BUD, which is the more relevant mark here, there was no evidence that consumers would make a geographical connection.

There’s a lot more in John’s post, as usual, including the important issue of the role of a senior trademark holder’s fame in an opposition proceeding, which, as the TTAB’s opinion notes, while “not enough to establish likely confusion . . . puts a heavy thumb on Opposer’s side of the scale.”

 

Heavy thumb indeed (he said, foreshadowingly).

So I want to just think, together with you — which is better than thinking alone — about a couple of aspects of this opposition proceeding. Read More…

Best of 2009: Keeping it real — the ultimate use in commerce

Bose-Wave-AW1This was first posted on May 7, 2009.

The TTABlog® reports, again, on the fraud issue, but that’s not what interests me here so much this time. Rather, it’s the question of the lifecycle of a trademark’s “use in commerce” status when plotted against that of a specific product which may no longer be manufactured, but which arguably may have trademark significance.

I have looked at this question in other contexts before, particularly in this post where I wrote about a company called River West Brands, that pokes through the junk-heap of “abandoned” consumer-products trademarks and tries to make money off them. The focus in that post was on trademarks for lines of goods that no

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

longer exist, and I linked to related items by Pam Chestek and, guess what, John Welch that dealt with the issue. But here there’s a twist: The trademark, WAVE, is very much alive in Bose’s successful line of high-end audio equipment. But, as befits a “fraud on the PTO” case, the focus here is on one particular product in the list of goods and service that is no longer in production. Can the trademark still be a trademark?

As John Welch explains, “The TTAB, in Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (TTAB 2007)…, found that Bose had committed fraud in its 2001 renewal of a registration for the mark WAVE for, inter alia, audio tape recorders and players.”

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Update (and clarifications) about the SLANTS appeal (UPDATED)

Slant Storytelling SeriesThere has been some press coverage of the intention of my client, The Slants, to appeal the denial of their application to register THE SLANTS.  Some of what has been reported is inaccurate or imprecise.  This is not the place to argue the appeal, but because the case has garnered some extra-judicial attention and there has been a great deal of extra-judicial misunderstanding, here is a bit of clarification:

This is an appeal from the determination of a federal agency, so under 28 USC § 2107(b) the time to appeal is 60 days after the September 26, 2013 date of the order.  (This differs from the usual 30 day deadline to appeal from a court order under 28 USC § 2107(a)).  See below for a link to the brief we filed.

Now, some reports and commentators have given the impression that the applicant is fighting the PTO’s conclusion that “slants” is an ethnic slur, or that the Slants argue that it was one in the past but is not one any more, along the lines of the unsuccessful TTAB appeal of the PTO’s denial of the HEEB application.

This is error.  That was not the applicant’s argument in the TTAB with respect to the application that was actually denied in this proceeding — here’s the Slants’ TTAB brief.  I tried to get that across in this earlier post, but I will try again:

SlantFinThe assertion that “slants” is not an ethnic slur, based on evidence that contradicts what the PTO claimed as the evidentiary basis for its determination, was the applicant’s argument — but that was in an earlier application for the same trademark.  Indeed, rejection of that argument was, we assert, one basis of the TTAB’s affirmance of the PTO’s refusal to register.  We argued in our TTAB brief that in refusing to allow the registration based on the Slants’ second application — the one before the TTAB — the PTO rejected an argument the Slants did not make in its response to the Office Action.

This is not to say that the applicant concedes the underlying substantive point.  It does not, but this is not the subject of the appeal.
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Secret defrauder ring (UPDATED)

I want one, too!

What is the FRAUD-O-METER™?  Its creator, John Welch, explains:

Some say that a picture is worth a thousand words, and that is certainly true with regard to the TTABlog FRAUD-O-METER™ brand legal indicator. We all know that the CAFC in In re Bose Corporation jettisoned the TTAB’s “knew or should have known” standard for fraud set out in Medinol v. Neuro Vasx, ruling that the Board had “erroneously lowered the fraud standard to a simple negligence standard.”  The appellate court also held that proof of intent to deceive is required to establish fraud and it indicated that even “gross negligence” is not enough, but it declined to address the issue of whether “reckless disregard for the truth” would suffice.

The FRAUD-O-METER™ illustrates the current state of trademark fraud jurisprudence: the now defunct Medinol standard is depicted by the grey arrow resting in the “Negligence” wedge, while the white arrow, representing our post-Bose uncertainty, unsurely leans toward the “Reckless Disregard” wedge.

If the chart looks a bit blurry, then I suggest that you (1) move closer to your computer screen; (2) check your eyeglass prescription; or (3) double click on the chart for a larger version that you can print out or save as your computer wallpaper.

Or, kids, you can collect the whole set!

This is very clever.  Yet I have the sneaking feeling that John…  he is not to laugh from this PTO fraud, so much.

UPDATED:  The Beta for version 2.0 is out!  John explains:

The Board has yet to decide whether “reckless disregard for the truth” is enough to support a fraud ruling. There are some suggestions (including a recent article by TTAB Judge Lorelei Ritchie [TTABlogged here]) that “willful blindness” may be enough. With that in mind, I have created Version 2.0 of the Fraud-O-Meter, still in beta testing.