Tag Archives: PTO Practice

Vintage PTO “fraud”?

Originally posted 2009-11-15 15:10:54. Republished by Blog Post Promoter

The TTABlog® almost breathlessly — and, quite understandably, considering — links to Seattle Trademark Lawyer, who reports on a case,  One True Vine, LLC v. The Wine Group LLC, just now being uncorked in a California District Court that could well answer a lot of the questions about application of the new “fraud on the PTO” legal standards to an old, familiar fact pattern:

This factual situation looks a lot like the facts in Medinol v. Neuro Vasx: two listed items in the identification of goods, use on only one of the two, a claim of inadvertent mistake. Of course, the Board found fraud in Medinol under the TTAB’s “should have known” standard that was recently rejected by the CAFC in Bose.No whine

What standard will the court apply? How will defendant prove fraud? Is it enough for plaintiff to say that the error was inadvertent? Suppose the two listed goods were wine and nuclear reactors, and the Registrant claimed that the inclusion of “nuclear reactors” was inadvertently overlooked? Suppose plaintiff here had never sold any white wine at all under any label? What if Defendant showed that plaintiff had made the same error in other registrations?

Well, in vino veritas, right?

We’re all looking forward to the answers, which we will no doubt learn… though not before their time.

How to describe a Catch 22

Originally posted 2009-04-02 16:00:41. Republished by Blog Post Promoter

Michael Hall considers the PTO’s “Heads I Win, Tails You Lose” policy, by which it uses trademark registrations as evidence to refuse new applications on the basis of “descriptiveness”:

[T]he Office routinely relies upon them in issuing merely-descriptive refusals, yet when an applicant introduces third-party registrations to support its position, the Office will often dismiss them with a form paragraph stating that third-party registrations are “without evidentiary value.”

It’s good to be the king!  Michael says this policy may be inching toward improvement, but, really, this whole concept that the PTO is exempt from any accountability for its prior determinations — now that’s what needs examination.

I enjoy being a trademark lawyer

Originally posted 2009-03-27 17:28:28. Republished by Blog Post Promoter

John Welch at the TTABlog® has up what even he acknowledges is an “excit[ing]” post, in which he both imagines himself a woman and quotes this lively Trademark Trial and Appeals Board opinion excerpt concerning the resolution of the Chippendale’s dancer-boy trademark appeal I discussed a while back:

The TTAB appeal was a washout

The TTAB appeal was a washout

Judge David Bucher . . . asked “what purpose is served by prosecuting this application in light of applicant’s [incontestable] registration,” particularly in light of the burden it placed on the PTO? “Trademark Examining Attorneys laboring under demanding production requirements cannot afford to be time travelers, and few have advanced degrees in dramaturgy and theatre arts.”

Nonetheless, he found that the subject mark “would appear to be an original creation and an immediately recognizable symbol belonging to applicant alone, and hence, inherently distinctive.”

Judge Bucher accepted [drama iconology expert] Dr. Shteir’s conclusion that “the expectations of the all-female audience to whom the show was originally presented are critical to our decision herein.”

Yay for Judge Bucher!  Unfortunately for Chippendale’s, however, as well as LIKELIHOOD OF CONFUSION®, which opined that the seedy purveyor of undercooked beefcake should (not “would,” Mr. Welch!) win this one, the ellipsis above elides the words, “in a lively dissent.”

See John’s blog for learned analysis of the opinion, as well as thoughtful consideration of the practical lawyering and IP-strategy issues originally addressed in the comments here.

Redskins redux 2

Originally posted 2009-06-09 12:37:25. Republished by Blog Post Promoter

I didn’t have a chance to mention that last month, the order denying the legal challenge to the Washington Redskin’s use of its trademark American Indian logo was upheld.

Now I have a chance!

And do the unhappy Indians have a chance?  They think they do.

UPDATE: They don’t (via @ABAJournal).

Drink to me only with thine eyes

Originally posted 2007-03-27 14:42:28. Republished by Blog Post Promoter

A week or so ago it was the sad story of Jimi Hendrix on the bottle. Now the TTABlog reports on another famous-dead-guy-as-booze-trademark case:

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.

No more Star Chamber opinions

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.

The Defenestration of Bayport

Originally posted 2007-07-17 14:38:05. Republished by Blog Post Promoter

Hardy Boys Footprints Under the Window

Detectives, defenestration -- delightful!

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.

defenestration-of-prague.jpg

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.

Mark their words

Originally posted 2010-05-16 20:48:22. Republished by Blog Post Promoter

Stop Islamization of America Logo

Very incorrect.

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.

This is the application; the Office Action is here.

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 racialethnic 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?

Amateur trademark filings, gauzy brand aids

The Gifted Amateur

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…

Redskins redux

Originally posted 2006-08-09 23:33:11. Republished by Blog Post Promoter

Redskins Logo

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.

No, no, a thousand times no. Homey.

Originally posted 2006-05-11 13:18:53. Republished by Blog Post Promoter

Dead Honky

Damon Wayans is rejected again in his attempt to file a trademark that only black people would be allowed to use. Or am I missing something?

UPDATE:  More, and related, here.

Give it a rest!

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.