Originally posted 2009-06-09 12:37:25. Republished by Blog Post Promoter
Now I have a chance!
And do the unhappy Indians have a chance? They think they do.
Originally posted 2009-06-09 12:37:25. Republished by Blog Post Promoter
Now I have a chance!
And do the unhappy Indians have a chance? They think they do.
Originally posted 2007-03-27 14:42:28. Republished by Blog Post Promoter
Applicant Anatoliy Bondarchuk failed to fend off a petition for cancellation of his registration of the mark MARC CHAGALL for vodka. The Board not surprisingly found that the mark creates a false suggestion of a connection with the painter Marc Chagall, in violation of Section 2(a) of the Lanham Act, and it therefore sustained the petition.
The irony is that Chagall’s paintings always struck me as the kind of thing you would, indeed, find at the bottom of a bottle of vodka. Animals and people getting just a l-i-i-i-ittle too close… fowl showing up in the most inappropriate places … lots of questionable aloofness — flying around in the air, that is.
I always thought these paintings looked as if Chagall had stayed for one l’chaim too many. Or that he had a very odd family, indeed. Maybe so — but it’s not for Anatoliy Bondarchuk to profit from it, and so too says the TTAB.
Originally posted 2006-04-17 12:23:01. Republished by Blog Post Promoter
Legal Times reports:
The Supreme Court on Wednesday adopted a historic rule change that will allow lawyers to cite so-called unpublished opinions in federal courts starting next year. The new rule takes effect unless Congress countermands it before Dec. 1.
The justices’ vote represents a major milestone in the long-running debate over unpublished opinions, the sometimes-cursory dispositions that resolve upward of 80 percent of cases in federal appeals courts nationwide. In some circuits these dispositions have no precedential value and cannot be cited. . . .
Unpublished opinions first came into vogue in the 1960s as a time-saving device for appellate judges. Though the propriety of an essentially secret judicial process has been debated for years, the catalyst for change came in 2000, when the late 8th Circuit Judge Richard Arnold ruled in a routine case that stripping unpublished opinions of precedential value was unconstitutional because it gave judges a power not authorized by Article III of the Constitution.
Sounds right to me. I wrote this on the INTA list last winter:
The issue of non-citability and “not precedential” rulings in the federal courts is a troubling one, because it goes square against the idea of the common law and statutory interpretations as being based on accretions of precedent. There is usually no way for the mortal to know why one decision is regarded as worthy of being deemed precedential and others are not, nor to understand why, if it is not good enough for precedent, the ratio decidendi (if you will!) of a given opinion was good enough for that case. Judge Kozinski takes a shot at explaining why citation to unpublished opinions is not allowed here, essentially arguing from the not-too-principled position that they’re not written all that well, but this still leaves us with the question of published TTAB decisions not being citable.
The suggestion by a list member that attorneys should “always note that they are not offered as precedent but as indicative of how the TTAB has approached similar matters in the past” isn’t too helpful to me. I understand his distinction, I guess – that the decisions are not offered as _binding_ precedent – but his use of it is still what I think lawyers call precedent. Since so few cases really are binding in the sense that no distinction can be made between a precedent and the case at bar, this just strikes me as the plain old use of precedent — precisely to demonstrate how other tribunals have approached similar matters in the past.
Judge Kozinski is quoted in the article cited above as saying, “When the people making the sausage tell you it’s not safe for human consumption, it seems strange indeed to have a committee in Washington tell people to go ahead and eat it anyway.” But Judge Kozinsky, you’re not allowed to sell sausage that’s unfit for human consumption. If you want to do that, go into the arbitration business — not an Article III judge-for-life job, or for that matter, a fairly comparable gig with the TTAB.
UPDATE: A good (not new, but good) treatment here.
Originally posted 2007-07-17 14:38:05. Republished by Blog Post Promoter
This item’s title would be a good name for a “Hardy Boys” book, but no, we’re talking about Bayport, Minnesota, home of the Anderson Corporation, not the home town of those All-American detective brothers. Still, a mystery remains: Is it easier to convince yourself an argument passes the “red-face test” or “smell test” before the Trademark Trial and Appeals Board than in “regular court”?
You’d think so from this stinker: the company that makes Anderson Windows, in a failed cancellation proceeding, trying to convince the Board that its trademark for PERMA-SHIELD windows is likely to be confused with the same mark for “coatings sold as a component part of power saw blades.” The blades are made by a tool company called Freud. Anderson’s argument: Well, they sell both of them at Home Depot, right?
Wrong. John Welch explains:
Andersen posited two situations in which a consumer might purchase both products: first; a small contractor who buys both products, cuts a hole in a wall with a saw, and inserts a window, while being exposed to both marks; second, a building contractor who sees both products displayed in a small lumberyard showroom. The Board, however, found Andersen’s claim of likely confusion to amount to “only a speculative, theoretical possibility.”
We are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal. Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388, 1391 (Fed. Cir. 1992).
Finding the connection between petitioner’s goods and respondent’s goods to be “so tenuous that the public would not view the goods as having a common source, even when sold under identical marks,” the Board dismissed the petition for cancellation.
I’m sorry, I have to repeat this one: “a small contractor who buys both products, cuts a hole in a wall with a saw, and inserts a window, while being exposed to both marks.” That is classic.
Now that I’ve had my fun and Freud has reaped this joyous result, what, really, can we learn from this?
I don’t believe the Anderson lawyers ever really thought this argument was a winner. I’m not suggesting bad faith, Heaven forfend, but I am suggesting this flimsy claim was filed in the anticipation of a “business solution.” In other words, Anderson’s guess was that Freud would fold. Freud, wisely, relied on its analysis, and enjoyed the catharsis.
Originally posted 2010-05-16 20:48:22. Republished by Blog Post Promoter
Jihad Watch and Atlas Shrugs — two websites run by friends of mine who have very clearly articulated views about Islamic radicalism, and controversial ones about what to do about it — are busy, and then some, with this story:
A federal agency has rejected a request for a trademark by the organization “Stop Islamization of America” because its name may “disparage” Muslims.
The group launched by Atlas Shrugs blogger Pamela Geller and Robert Spencer of Jihad Watch has drawn national attention for its bus-sign campaign offering support for Muslims who want to leave Islam. SIOA currently is organizing opposition to plans for an Islamic mosque at Ground Zero in New York City.
Now the group reports the U.S. government has refused its request for a trademark designation for its name.
The government response, posted on the site, states, “The applied-for mark refers to Muslims in a disparaging manner because by definition it implies that conversion or conformity to Islam is something that needs to be stopped or caused to cease.
“The proposed mark further disparages Muslims because, taking into account the nature of the services (‘providing information regarding understanding and preventing terrorism’), it implies that Islam is associated with violence and threats,” the government agency said.
Forget the politics of this. Besides the fact that I have no idea why these two thought a word trademark (as opposed to protection for the logo) was needed here — being dubious, as I am in general, to the extension of trademark protection to words people say to mean things in English — I’m not too surprised about the outcome of their application on the “scandalous or offensive” denial.
This is because, as I’ve written before (and of course I’m in good company), while the PTO’s criteria for “scandalous and offensive” denials under Section 2(a) of the Trademark Act are a conceptual and a practical mess, the outcome’s certainly predictable when it comes to racial, ethnic or other “protected class” categories: Only the politically correct need apply.
That’s a “criterion” Pam and Bob are not going to meet!
Predictable or not, though, that “standard” doesn’t have much to recommend it as either law or policy. But I can’t blame these two bloggers for not knowing this when they dove head-in to their trademark registration application the way they do with everything else in life: With passion and abandon. They know more than I’ll ever forget (maybe more than I want to remember; certainly more than others want to even think) about radical Islam.
But what could they do if they just didn’t know a decent radical trademark lawyer?
A very popular post around here, based on server logs and SEO power, is this one: Trademark do it yourself? In that post I dissect an article by a bright, well-meaning fellow who wrote about how he, reminiscent of Woody Allen’s clever plan to “beat the medic,” determined not to pay for some trademark lawyer to help him obtain a trademark registration. He crows that he figured out how to do it himself, and indeed did it himself, and see?
My response: ”A homemade trademark registration — or even one cranked out by Legalzoom or Trademarkia — could be good for your business. But unless you’re very, very fortunate, if you ever want to make use of that piece of paper, it’s more likely to be good for mine,” i.e., as a litigator of trademark claims. Because, as I explain, that registration may not be what you hoped for. Garbage in, garbage out kind of thing.
I’m so clever. But I probably conceded too much, because in fact a large percentage of do-it-yourselfers waste a lot of time on the process of finding out that they didn’t get a registration they were actually entitled to get, legally speaking, because they didn’t know what they were doing. I suppose I took that tack in the original post because I wanted to rebut the presumption that you can’t argue with “success” — obtaining a registration — by demonstrating that this only true if you have properly defined “success.” And just getting “a trademark registration,” without expert guidance, may not be the success it seems to be.
Now, however, we can back it up a bit. Via Cohen the trademark attorney, I found this post on the Brandaide blog here are the five reasons your trademark registration will be rejected:
1. Failure to Search.
2. Filing to Protect a Descriptive “Mark.”
3. Improper Use on Your Website.
4. Filing too late.
5. Confusing color versus black and white design mark filings.
Those are the reasons, not the blog post — the author, Cheryl L.Hodgson, explains these points in detail.
A couple of quibbles. If you’re a regular reader, you’ll know I’m going to sic on number 4, “filing too late.” My view is that this is almost never a problem, because trademark rights are based on priority of use, not filing or registration. If anything people spend too much early-stage money on “trademark work,” as I explained in criticizing a like suggestion by another trademark lawyer whose work I respect, in this post from a while ago. Read More…
Originally posted 2006-08-09 23:33:11. Republished by Blog Post Promoter
Remember the Washington Redskins trademark tussle? CNBC reports that it’s back — again — and better than ever. This time the focus is an interesting technical tactic related to an aspect of the case involving the equitable doctrine of laches:
[T]he U.S. District Court of the District of Columbia . . . in 2003 reversed the TTAB’s decision on disparagement. The court also determined that the petitioners were barred by laches, a legal doctrine applied when a court decides that a party has taken too long to assert a right or claim and that the passage of time is deemed prejudicial to an adverse party.
”The way laches works is that it looks at the delay from when the petitioners are roughly 18 years old,” Mause said. Because of the age of many of the original petitioners, the U.S. District Court of the District of Columbia determined that too much time had passed before they filed suit.
In 2005, the U.S. Court of Appeals for the District of Columbia Circuit reversed the lower court’s ruling on the grounds that the youngest petitioner, Mateo Romer, only reached the age of majority in 1984 and, therefore, may not be chargeable with prejudicial delay (laches). The appeals court sent the case back to the district court, ordering it to determine whether Romero’s case is barred by laches. The case is pending. Mause said the firm will continue to fight Romero’s claim.
The six new American Indian petitioners are between the ages of 18 to 24, so laches should not be applicable in their petition. Mause said the new petition will force the courts to look at the real issue.
The trademark “disparagement” claim is a dubious issue in a time when nothing is deemed offensive save for the politically incorrect, but the idea that laches should play into it is fairly hard to fathom. If I were a legal realist I would suggest that the courts don’t want to touch this with a first-down chain*, but readers know me too well to ascribe such a philosophy to Likelihood of Confusion.
UPDATE: The case, glacially, moves again.
*Apologies to foreigners and other non-Americans, native or otherwise. This is a first-down chain.
Originally posted 2006-05-11 13:18:53. Republished by Blog Post Promoter
UPDATE: More, and related, here.
Originally posted 2008-05-12 17:36:20. Republished by Blog Post Promoter
John Welch reports on a case involving the would-be registration for IRESTMYCASE.COM, an attorney’s website, wherein the TTAB reminds us that a URL (website address) alone does not constitute a trademark.
Originally posted 2007-07-02 00:04:52. Republished by Blog Post Promoter
The American Intellectual Property Law Association (AIPLA) wants to see a climb down on findings of “fraud on the PTO” based on the innocent misdescription of goods in trademark applications. The problem is trademark lawyers who tell the PTO, when applying for a trademark registration, that a mark has been used along with a raft of goods and services which are, perhaps, exaggerations shall we say?, in order to get as broad protection as possible for the applicant. As the AIPLA explains:
The resolutions respond to a series of decisions by the Trademark Trial and Appeal Board that have found fraud on the Office based on a heightened duty of candor, including Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205, 1209-10 (TTAB 2003). In Medinol, a cancellation petition was filed against a registrant whose intent-to-use application listed stents and catheters as the goods to which its mark would be applied. It subsequently filed its statement of use, in which it checked a box next to a statement that it was using the mark with the goods in the Notice of Allowance; however, it in fact had stopped using the mark for stents.
The TTAB agreed with the cancellation petitioner that the registrant committed fraud in filing the erroneous statement of use.
The AIPLA (a group which is dominated by patent lawyers, by the way — just so you know) says hey, we all make mistakes. It is a crime to err? Should the whole trademark be cancelled because of a little puffing or a slip of the quill?
To which John Welch says, “Yeah, we’ve all of us here been framed, too – so what’re you in for, bub?”
Originally posted 2008-09-02 00:01:43. Republished by Blog Post Promoter
This story won’t die — especially judging from the prominence of related words among search terms that reach this blog. The latest, which we missed when it came out in July and we were otherwise engaged, is that the NFL’s Washington Redskins again prevailed in a lawsuit brought by a group of American Indians, but by all lights not on the central question of whether the REDSKINS trademark should be canceled on the ground that it is “immoral” or “scandalous”:
In a ruling dated June 25 and first circulated [in early July], U.S. District Judge Colleen Kollar-Kotelly ruled that the youngest of the seven Native American plaintiffs waited too long after turning 18 to file the lawsuit that attempts to revoke the Redskins trademarks.
The lead plaintiff, Suzan Shown Harjo, said Friday the group will appeal.
“She ruled as we anticipated she would: for the loophole that would allow everyone to avoid the merits of the case,” said Harjo, president of the Washington-based Morning Star Institute that advances Native American causes.
Harjo and her fellow plaintiffs have been working since 1992 to have the Redskins trademarks declared invalid. They initially won — the U.S. Patent and Trademark Office panel canceled the trademarks in 1999 — but Kollar-Kotelly overturned the ruling in 2003 in part because the suit was filed decades after the first Redskins trademark was issued in 1967.
The U.S. Court of Appeals then sent the case back to Kollar-Kotelly, noting that the youngest of the plaintiffs was only 1 year old in 1967 and therefore could not have taken legal action at the time.
But Kollar-Kotelly’s new ruling rejects that possible argument. She wrote that the youngest plaintiff turned 18 in 1984 and therefore “waited almost eight years” after coming of age to join the lawsuit.
The judge did not address whether the Redskins name is offensive or racist. She wrote that her decision was not based on the larger issue of “the appropriateness of Native American imagery for team names.”
Well, from our point of view, “avoiding” the merits is the right thing for a judge to do when “mere technicalities” actually preclude a court’s legal authority to decide the merits. But sooner or later, we’re going to have to deal with this claim, and the whole rat’s nest of problems arising from the “immoral and scandalous” provision of the Trademark Act.
Originally posted October 3, 2012.
In a recent TTAB case my office faced a motion to compel answers to interrogatories requesting what would seem like a very relevant, and very critical, piece of litigation information: The date on which our client’s trademark “acquired distinctiveness,” i.e., achieved secondary meaning in association with our client’s goods or services. Its birthday as a trademark, in other words.
Our response to both the demand and the motion was that while we could — and wanted to – acknowledge that we must demonstrate that the mark acquired distinctiveness, that wasn’t really amenable to proof of a date certain. Kind of interesting question, really — you know it has to be by a certain date, and certainly before the date you claimed priority over someone else.
Opposer’s demand for a “specific date when secondary meaning was allegedly required” is meritless. As the Federal Circuit recently explained in Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012), the acquisition of secondary meaning is a complicated fact question.
To establish secondary meaning, or acquired distinctiveness, an applicant must show that in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself. To determine whether a mark has acquired secondary meaning, courts consider: advertising expenditures and sales success; length and exclusivity of use; unsolicited media coverage; copying of the mark by the defendant; and consumer studies. Acquired distinctiveness is a question of fact which is reviewed under the clearly erroneous standard.
Id. at 1379 (internal citations and quotes omitted). Similarly, in Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d 1108, 1114 (9th Cir. 2010), the Ninth Circuit acknowledged:
In distinguishing between suggestive and descriptive marks, we are aware that “[d]eciding whether a mark is distinctive or merely descriptive is far from an exact science and is a tricky business at best.” Lahoti[ v. VeriCheck, Inc., 586 F.3d 1190], 1197 (9th Cir.2009) (quotation marks omitted); 2 McCarthy § 11:66 (“The descriptive-suggestive borderline is hardly a clear one”), § 11:71 (observing that the descriptive-suggestive dichotomy is not “some kind of concrete and objective classification system”).
The “date” on which secondary meaning is acquired is not some precise moment in time which can be proved by a date-stamped receipt showing that from that instant, but not before then, a mark has acquired distinctiveness. Opposer would very much like Applicant to box itself in by asserting such a date, but cites no authority for the proposition that Applicant must do so, or that any applicant could.
The TTAB agreed, Read More…