Welch’s top ten
America’s greatest natural Trademark Trial and Appeal Board resource, John Welch, has posted part one of his Top Ten TTAB Decisions of 2011. From his introduction:
Dilution by blurring made a particularly big splash in the TTAB pool during that last few months of the year. The Board relaxed its requirement that a plaintiff show that the marks at issue are identical or substantially similar in order to win a dilution claim, but it increased its focus on proof that any association between the marks will cause a diminution of the distinctiveness of the famous mark.
In a significant procedural ruling, the Board thankfully sank a defendant’s attempt to obtain sweeping e-discovery. And an application to register a top level domain name (TLD) as a service mark was torpedoed by a genericness refusal.
Meanwhile, the issue of fraud treaded water; in fact, not a single fraud claim has been upheld by the Board since the CAFC’s Bose decision in 2009. A nonprecedential fraud ruling was noteworthy because the Board excused an applicant’s filing of a fabricated specimen of use – an act that most would consider a prime example of fraud – because the applicant’s president, as a layperson, had an “honest misunderstanding” of what was proper.
Read the whole thing!