Tag Archives: John Welch

TTABlog Celebrates Third Anniversary

Originally posted 2013-05-13 23:09:01. Republished by Blog Post Promoter

Three years of KEEPING TABS ON THE TTAB® — well spent, John Welch!

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!

Read More…

The trademark year that was

Our hero John Welch is the guest on this podcast thingy (you know I’ve never really understood that stuff — “pod”?) on the Legal Talk Network called, “2011 Intellectual Property Year in Review and Outlook for 2012 – Part II: Trademarks.

Yeah, I know, but did I mention they have John on it?  They do, it seems, but there’s a picture of attorney Peter Lando, who I knew was not John because he has much less hair than John, who has much more.  But nice.  And he is evidently  the Lando in Lando & Anastasi, which is John’s firm.  So little by little, see, I’m catching on.

But you click on it, it seems, and there’s guitar music and then people talk.  Talk about:

important trademark cases and issues of 2011 that may continue well into the new year.  Peter and John discuss the high profile trademark battle between designers, Christian Louboutin and Yves St. Laurent, over a trademark for the color red for shoe soles; the trademark “bullying” report from the U.S. Commerce Department; recent happenings regarding fraud at the USPTO; the latest cases interpreting the trademark statute on dilution by blurring; and the effect of the recent launch of generic TLD’s on trademark owners.

That sounds worthwhile, and one of the voices for sure sounds like John, so there you go.  Go and pod with it.  Or cast your pod.  Cast.

Keeping tabs on the worst

John Welch presents the “Ten Worst TTAB Decisions of 2007.”

I love stuff like this!

TTABlog: Eight years of keeping tabs on the TTAB

Busy as John Welch of the TTABlogwe were last week licking our wounds from the aftermath of really bad weather, I missed the opportunity to wish a timely mazal tov to John “@TTABlog” Welch on the eighth anniversary of the TTABlog.  As John explains,

The first TTABlog posting went up on November 8, 2004. The subject? Former TTAB nemesis, Leo Stoller. Two-thousand four-hundred posts later, it’s still going. Thanks for reading!

When he says “it’s still going strong,” John assuredly does not mean Leo Stoller.

I try to acknowledge the significant blogmarks of those who preceded me and who are still at it, and as brilliantly as John Welch is especially.  Not that everyone appreciates my recollections, but, still, I speak truth to, uh power.