Pattishall IP Blog

June 18, 2014

REDSKINS Trademark Registrations Canceled After 8 More Years of Litigation

Filed under: TM Registration, Trademark (General), TTAB — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:38 pm

 

PB LRby Phillip Barengolts, Partner, and Kristine A. Bergman, Summer Associate

In the long-running dispute between representatives of Native Americans and Pro-Football, Inc. AKA the Washington Redskins (“Washington”), the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (“TTAB”) cancelled six of Washington’s registrations for the mark REDSKINS.[1] It was not the first time the TTAB ruled against Washington, finding that the REDSKINS trademark was disparaging and, therefore, not registrable under Section 2(a) of the Federal Trademark Act.[2] Of course, that has been the nickname of the Washington football team since 1932.

Despite mass media misinterpretation of the implications of this opinion, as the TTAB expressly stated, “This decision concerns only the statutory right to registration under Section 2(a). We lack statutory authority to issue rulings concerning the right to use trademarks.” (emphasis original). This decision does not require the Washington team to change its name. It does not prevent the team from continuing to use the REDSKINS nickname in marketing. It does not affect the team’s ability to license merchandise using the REDSKINS name.[3] Furthermore, it does not prevent the team from suing to enforce its rights in the REDSKINS name against others who may try to use it.[4] It merely prevents the team from enjoying the special protections afforded to an owner of a federal registration.[5]

Ultimately, the TTAB found that the registrations for REDSKINS “were disparaging to Native Americans at the respective times they were registered…” This finding is remarkable because the original registration for THE REDSKINS issued in 1967.

In its analysis, the TTAB first determined that the term “redskins,” although associated with the football team, had not been “stripped” of its ethnic meaning. Second, the TTAB found that a “substantial composite” of Native Americans were disparaged by the mark. [6] The primary basis for this conclusion was a resolution issued in 1993 by the National Congress of American Indians (“NCAI”), which represented approximately 30 percent of Native Americans during the relevant time. This resolution also was found to be competent evidence of the past views of Native Americans.

The TTAB also revisited Washington’s laches defense, which was discussed in the Harjo case. The TTAB rejected the defense because it “does not apply to a disparagement claim where the disparagement pertains to a group of which the individual petitioner or petitioners comprise one or more members.” Laches is an equitable defense and, therefore, the TTAB highlighted that “it is difficult to justify a balancing of equities where a registrant’s financial interest is weighed against human dignity.” Moreover, the TTAB noted that laches is inapplicable in cases presenting a broader public policy concern. Finally, the TTAB stated that, even on the merits, the defense could not stand because there was no showing that the petitioners had unreasonably delayed in bringing the petition after each reached the age of majority or that there was economic prejudice to Washington due to the delay.

Unusually for a TTAB decision, there was a dissent. Lest the dissenting judge be deemed insensitive, the primary criticism levelled at the majority was that the evidence presented by the petitioners was insufficient to prove that “redskins” was a disparaging term in 1967 (and when the subsequent trademark registrations issued). For purposes of the eventual appeal, the dissent has some merit because the evidence relied on by the petitioners was the same as that relied on by the Harjo petitioners – and which was deemed insufficient by the D.C. Circuit to support the TTAB’s original decision finding REDSKINS disparaging.

Despite pressure from the Obama administration, Washington team owner Dan Snyder has refused to change the team’s name.[7] So, stay tuned for the eventual appeal.

*          *          *

Phillip Barengolts is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois. Pattishall McAuliffe represents both petitioners and defendants in trademark, copyright, trade secret and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues. Mr. Barengolts’ practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, unfair competition, trade secret, Internet, and copyright law. He teaches trademark and copyright litigation at John Marshall Law School, and co-authored Trademark and Copyright Litigation, published by Lexis Publishing.

Kristine A. Bergman is a summer associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP.

 

[1] http://ttabvue.uspto.gov/ttabvue/v?pno=92046185&pty=CAN&eno=199.

[2] The original petition to cancel the REDSKINS trademark registrations was brought on September 10, 1992, and the petitioners prevailed before the TTAB. See Harjo v. Pro Football, Inc., 30 U.S.P.Q.3d 1828 (TTAB 1994). The United States District Court for the District of Columbia reversed the TTAB’s original decision, which was upheld by D.C. Circuit Court of Appeals. However, that ruling relied on the defense of laches because the petitioners had waited too long to bring the petition to cancel after reaching the age of majority — the issue of disparagement on the merits was not resolved.

[3] Unless a specific license had a requirement that the mark be registered, which the NFL undoubtedly would not have agreed to, given the long pendency of this objection.

[4] But see http://tushnet.blogspot.com/2014/06/unregistrable-means-unprotectable-by.html. The decision discussed by Prof. Tushnet here addresses very different facts, but it raises an interesting potential defense to any infringement claims Washington may bring over the REDSKINS mark in the future, if the TTAB decisions is upheld on appeal, of course.

[5] Perhaps of greatest importance in the context of merchandising would be the unavailability of a claim of counterfeiting, for which registration is required.

[6] Of note, the TTAB stated that a “substantial composite” need not be a majority and ultimately found that “thirty percent is without doubt a substantial composite.”

[7] U.S. Patent and Trademark Office Cancels Redskins Trademark, Huff. Post (June 18, 2014 at 10:22 A.M), http://www.huffingtonpost.com/2014/06/18/redskins-trademark-canceled_n_5507169.html.

 

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January 17, 2012

ROLEX vs. ROLL-X: TTAB Says that ROLL-X for X-ray Tables Does Not Dilute Famous ROLEX Mark

Filed under: Dilution, TTAB — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:10 pm

By Janet Marvel, Trademark Attorney

In a precedential decision issued on December 5, 2011, the Trademark Trial and Appeal Board (“TTAB”) held that ROLEX was famous for watches under the Trademark Dilution Revision Act of 2006, 15 USC 1125 (c) (“TDRA”), but the mark ROLL-X was not sufficiently similar to create a likelihood of dilution.  See Rolex Watch U.S.A. Inc. v. AFP Imaging Corp., 101 USPQ2d 1188 (TTAB 2011).  The decision provides guidance on the TTAB’s test for determining similarity for purposes of dilution and its interpretation of survey evidence.

AFP Imaging Corp. (“AFP”) filed an application in 2008 for ROLL-X for “x-ray tables for medical and dental use.”  AFP claimed that it adopted the mark as an extension of its DENT-X brand (also for x-ray products).  It also stated that it adopted ROLL-X because the mark evoked the description of its product, namely a rolling tray for taking x-rays.  Both of these facts proved critical to the TTAB’s decision.  Upon publication of the application, Rolex opposed.  The case went to trial on two issues: (1) whether ROLL-X diluted ROLEX by blurring the significance of the ROLEX mark, and (2) whether AFP had a bona fide intention to use ROLL-X.

On dilution, the TTAB found for Rolex on every factor, except two: the similarity of the marks, and AFP’s intent to dilute.  To determine whether the marks were similar for dilution purposes, the TTAB applied its previously iterated test:  “[A]re applicant’s and opposer’s marks ‘sufficiently similar to trigger consumers to conjure up a famous mark when confronted with the second mark?’”  citations omitted.   The Board stated that while the marks were pronounced identically, “[b]ecause of the hyphen between ROLL and X, consumers are likely to view the mark as consisting of the English word ROLL, which has various meanings including ‘to move on rollers or wheels,’…and the letter ‘X,’ which, when the mark is used in connection with applicant’s goods, is likely to be perceived as suggesting the term ‘x-ray’ ….”  The Board cited applicant’s CEO’s testimony, confirming AFP’s intent to create that association.  Because of this stated intent, the Board found there was no evidence that AFP intended to dilute.

The Board also found that Rolex’s own survey supported a lack of dilution.  Forty-two percent of qualified respondents stated that “ROLEX” came to mind when they encountered ROLL-X in a telephone survey.  However, 32 percent said “portable/movable/rolling,” 18 percent said “x-ray tables/equipment” and seven percent said “x-rays.”  While 42 percent would, at least in the context of a confusion survey, be considered a compelling number, “[t[his figure is not persuasive given that a higher percentage…thought of a feature of the goods…or the actual goods themselves."  In other words, respondents understood ROLL-X to convey the impression AFP sought to convey.

The Board cited a common problem with dilution surveys: they prove association, but not likelihood that the applicant's mark will impair the distinctiveness of the opposer's mark."  Since AFP's application was based on intent-to-use, it seems nearly impossible to construct a survey that could establish likelihood of impairment.

The Board also found that Applicant had a bona fide intent to use the ROLL-X mark when it filed the application.  AFP did not have any documentary evidence of its intent to use the mark, therefore, it carried the burden to show that it did have such an intent.  The Board found that AFP's prior use and registration of DENT-X was evidence that "ROLL-X is consistent with an extension of [AFP's] current product line.” In addition, the Board found that AFP’s production of DENT-X x-ray products showed it had the capacity to produce other x-ray-related products, like those to be sold under the ROLL-X brand.

Here, AFP was saved because it could establish that it intended ROLL-X to be suggestive of its products’ characteristics.  Overall, the case emphasizes the significant difficulty of proving a dilution case.  Moreover, it underscores a best practice, namely that applicants should maintain documentary evidence of intent to use trademarks at the time of filing, so that they may overcome oppositions on the basis that they lacked this intent.

*     *     *

 Janet Marvel is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Fifth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

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December 8, 2011

“Classic” Case of Trademark Infringement? Top Tobacco and North Atlantic Operating Company Argue Whether CLASSIC CANADIAN and CLASSIC AMERICAN BLEND are Confusingly Similar

Filed under: TTAB — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:47 am

By Janet Marvel, Trademark Attorney

Top Tobacco, L.P. v. North Atlantic Operating Co., Inc. (TTAB Nov. 21, 2011) (available at http://ttabvue.uspto.gov/ttabvue/v?pno=91180231&pty=OPP&eno=14) shows the very fluid application of facts to law in trademark cases, and therefore, that reasonable minds can differ.  Top filed oppositions before the Trademark Trial and Appeal Board (the “Board”) to various trademark applications filed by North Atlantic for the mark CLASSIC AMERICAN BLEND in logo form and standard characters, and petitioned to cancel North Atlantic’s registration of ZIG ZAG CLASSIC AMERICAN BLEND.  Top based its actions on a claim of likelihood of confusion with Top’s rights in and registration of CLASSIC CANADIAN.  Both parties’ marks covered the same goods, namely, tobacco products.

The Board found CLASSIC CANADIAN and CLASSIC AMERICAN BLEND to be confusingly similar and ruled on the oppositions in Top’s favor.  Given the extreme weakness of the marks, this ruling is somewhat mystifying.  The Board did not consider CLASSIC CANADIAN and ZIG ZAG CLASSIC AMERICAN BLEND to be confusingly similar, however, and denied Top’s petition to cancel.

In the oppositions, the Board evaluated the Dupont likelihood of confusion factors.  Most interesting is its evaluation of the similarity of the marks.  The Board found, not surprisingly, that “[t]he record overwhelmingly establishes that the CLASSIC CANADIAN mark has little intrinsic distinctiveness.”  As to “Classic,” Top’s own statements in the prosecution history for its CLASSIC CANADIAN registration were evidence, although not dispositive, that CLASSIC was suggestive of a “well-known” or “typical” type.

In addition to finding Top’s CLASSIC CANADIAN mark to be weak, the Board also agreed with North Atlantic that the parties’ ten years of co-existence without actual confusion weighed in favor of a finding of no likelihood of confusion.  However, the Board’s agreement with North Atlantic in the oppositions ended here.

The Board was apparently swayed most by the exact identity of some of the parties’ goods, noting that less similarity of marks is required for a finding of likelihood of confusion when marks are used on identical goods than would be required for a comparison of differing goods.  It noted that CLASSIC CANADIAN and CLASSIC AMERICAN were “equally highly suggestive” of a style of tobacco (a finding that could easily have supported a conclusion that the marks were not likely to be confused).  Thus, the Board found in Top’s favor on the oppositions.

However, the Board found for North American on Top’s petition to cancel ZIG ZAG CLASSIC AMERICAN BLEND, finding that inclusion of ZIG ZAG in North Atlantic’s mark “may avoid likely confusion where the marks in their entireties convey significantly different commercial impressions or the matter common to the marks is so suggestive or weak that any source-indicating value it has is overwhelmed by the addition of an arbitrary, distinctive element.”  Top argued that ZIG ZAG CLASSIC AMERICAN BLEND actually created “reverse confusion,” where the junior user’s use overwhelms that of the senior user.  In such circumstances, use of a house mark (like ZIG ZAG) is often held to increase, rather than diminish, confusion.  However, the Board held that there was insufficient evidence that North Atlantic was a ‘significantly larger or prominent newcomer’ who had ‘saturated the market’ with the ZIG ZAG CLASSIC AMERICAN BLEND mark, to have caused reverse confusion.

In this author’s opinion, confusion between these marks in the “real world” seems unlikely.  Board proceedings, however, look primarily at the marks and descriptions of goods in the parties’ registrations/applications.  In this case, neither party relied on a survey, which may or may not have supported a finding of no confusion.  Knowledge of the differences between federal court and Board practice, as well as an understanding of some rather arcane evidentiary rules, is required to effectively litigate a case before the Board.

*     *     *

Janet Marvel is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Fifth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

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December 6, 2011

“WE THE PEOPLE” Should Avoid Trashing Our Own Trademarks

Filed under: TTAB — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:52 pm

By Janet Marvel, Trademark Attorney

One of the most common reasons trademark applications are refused registration is that the applied-for marks are confusingly similar to other marks that are already registered.  There may be a great temptation to argue that the applicant’s and registrant’s marks are not confusing because they are among many similar marks.  Therefore, the argument goes, consumers are likely to be able to make fine distinctions among these marks in a “crowded field.”

Such arguments are risky.  They may significantly diminish the value of any resulting registration.  In re Bernstein, 2011 WL 6012206 (TTAB, Nov. 17, 2011 (non-precedential)) illustrates.  There, the Trademark Trial and Appeal Board (“TTAB”) refused to register applicant’s mark WE THE PEOPLE PLAN, for “information about political elections; providing an internet website featuring news and information in the field of national and international politics; providing information regarding political issues, knowing how to vote and knowing how to register to vote.”  The TTAB found the mark confusingly similar to a prior registration for WE THE PEOPLE for “promotion of public awareness of the need for political reform.”

Arguing against the refusal, Applicant, who represented himself, stated:

… [I]t can only be that which follows that can distinguish one mark from another, … It [is] beyond the scope of this letter to even begin to argue against the initial trademark of the sole expression “We The People”, all universal expressions, be it We The People, The Declaration of Independence, LIFE, LIBERTY, and The PURSUIT OF HAPPINESS, … should be required to ADD a follow-on qualifier (as in our case, the word PLAN). To my mind, it’s akin to someone simply registering “United States” … it should be forbidden. It should ONLY be allowed WITH a qualifier “United States X”. … As stated, the weighted emphasis shouldn’t simply be on the WE THE PEOPLE, because it is common to both, … it is vital to look at the next word or series of words keeping in mind that we make NO claim to the expression “we the people” by itself (and as I stated previously, I’m surprised that ANYONE was allowed to because this is one [of] those few expressions that I think belongs to all of us, as Americans … what comes after “we the people” it’s the first phrase in The U.S. Constitution; it’s the expression that identifies ALL Americans AS Americans … the fact, that we are having difficulty being We The People PLAN because someone was allowed to be “we the people” seems strange….

Applicant also submitted a long list of federal registrations including “We the people” as evidence of extensive third party use.  The TTAB refused to consider these for a variety of reasons, including that the marks covered different goods from those of Applicant and Registrant.

Applicant’s arguments were unavailing, and the TTAB affirmed the Trademark Examining Attorney’s refusal to register WE THE PEOPLE PLAN.

Had applicant been successful, its arguments in the record of the prosecution of its registration would have severely limited its ability to enforce its mark against third parties.  Applicant had itself argued that WE THE PEOPLE was such a common phrase that only “PLAN” could distinguish it from other marks.  It would be easy for anyone Applicant accused of trademark infringement to quote Applicant’s own statements, and hence to make a strong showing of no likelihood of confusion.  Thus, while Applicant presumably wanted to register his mark to have a weapon against infringing use, he substantially undercut the value of any registration.

Federal registrations are valuable tools to use in attacking infringement.  However, one must be cognizant in prosecuting a trademark application to protect the value of the resulting registration.  While there is sometimes no alternative to arguing that a crowded field of similar marks allows room for one more, namely the one in the application, where this argument can be avoided, it is often wise to do so.

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Janet Marvel is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Fifth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

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December 1, 2011

E-Discovery In The Board: A Reasoned Approach

Filed under: E-Discovery, TTAB — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:27 pm

by Phillip Barengolts, Trademark Attorney

The Trademark Trial and Appeal Board (the “Board”) generally follows the Federal Rules of Civil Procedure for purposes of its proceedings, including with respect to discovery.  Thus, discovery of electronically stored information (“ESI”) has become as important in Board proceedings as in federal court litigation.  Unlike a number of federal courts, which have struggled with these issues and sometimes ruled in ways that greatly increase the costs of litigation, the Board recently struck a reasonable balance for engaging in e-discovery in its proceedings.  Specifically, the Board denied an applicant’s motion to compel an opposer to engage in extensive e-discovery in the precedential decision in Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, Opposition No 91195552 and Cancellation No. 92053001 (T.T.A.B. Nov. 16, 2011).[1]

The underlying dispute involves Frito-Lay’s opposition to Princeton’s application to register PRETZEL CRISPS for “pretzel crackers.”[2]  During their mandatory discovery conference, the parties failed to agree on discovery of ESI.  After both both parties served requests for documents, including ESI, Princeton extensively reviewed and produced its relevant ESI – costing Princeton approximately $200,000, with an anticipated $100,000 more to comply with its ongoing obligations under the Federal Rules.  Frito-Lay was less forthcoming, so Princeton moved to compel Frito-Lay to produce ESI in the same manner as Princeton.

At its heart, the dispute is best summed up in the words of the parties’ attorneys (as quoted in the Board’s Order):

  • Princeton’s counsel complained that Frito-lay had not conducted “attorney-managed electronic data retrieval and search” and this “failure to conduct an attorney-supervised ESI retrieval, search (using appropriate keywords) and review has substantially prejudiced [Princeton’s] ability to defend.”  Moreover, “[n]o cost, burden or other reason allows [Frito-Lay] to rely on custodians to search their own files where the results of that policy are clearly insufficient. . .”;
  • Frito-Lay’s counsel responded that Frito-Lay had conducted a “reasonable investigation to locate, gather and produce documents reasonably responsive” to Princeton’s discovery requests, including by identifying document custodians and asking them to search their own files and computers.  Further, attorney-supervised searches of ESI would cost Frito-Lay an additional $70,000 – $100,000, “an expense that would far outweigh the benefit of any information in determining the matters at issue in this proceeding,” especially since the claims in the proceeding pertained solely to Princeton’s mark and Frito-Lay.[3]

For the litigators among you, this dispute likely has a familiar ring.  (more…)

April 22, 2011

The United States Patent and Trademark Office Seeks Comments on whether the Trademark Trial and Appeal Board should become More Involved in Settlement Discussions

Filed under: TTAB — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:09 pm

Categories: TTAB
Tags: TTAB, USPTO, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

The USPTO issued a notice of inquiry in the April 22, 2011 Federal Register seeking stakeholder comments on whether the TTAB “should become more directly involved in settlement discussions of parties to inter partes proceedings. . .”  See http://edocket.access.gpo.gov/2011/pdf/2011-9801.pdf.  Specifically, the USPTO wants to determine whether the involvement of an Administrative Trademark Judge (“ATJ”), Interlocutory Attorney (“IA”), or third-party mediator would be desirable.  The deadline to submit comments is June 21, 2011.

The comments on the notice of inquiry suggest that a procedural requirement to discuss settlement with Board personnel might increase the speed with which Board proceedings settle, if not the frequency.  The USPTO, therefore, also requests comments on when in a proceeding the Board should intervene, e.g., after initial disclosures or prior to the answer being filed.  The USPTO further posits that, even if Board involvement does not help settlement progress, it could help parties to narrow issues for trial.

The USPTO posed the following eight specific questions for commentators to answer:

(more…)

January 26, 2010

Trademark Trial and Appeal Board Provides Post-Bose Guidance for Pleading Fraud on the Patent and Trademark Office

Filed under: Litigation, TTAB — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:07 pm

By Andrew N. Downer, Trademark Attorney

Recently, the Trademark Trial and Appeal Board (“TTAB”) issued a decision providing guidance on the proper way to plead a fraud claim under the new Bose standard.  The case – DaimlerChrysler Corp. and Chrysler, LLC v. American Motors Corp., Canc. No. 92045099 (Jan. 14, 2010) – is the TTAB’s first post-Bose decision to find a fraud claim to have been sufficiently pled.  The DaimlerChrysler case also offers some interesting insights into the ability for fraud plaintiff’s to obtain summary disposition of their claims.

On August 31, 2009, the Federal Circuit overturned a line of TTAB decisions that had held that an applicant/registrant committed fraud in the procurement of a trademark registration when it “knew or should have known” that a material statement made to the PTO was false.  In re Bose Corp., 91 U.S.P.Q.2d 1938 (Fed. Cir. 2009).  The Federal Circuit found that the TTAB’s decisions lowered the standard for finding fraud to simple negligence, and instead held that an applicant’s/registrant’s subjective intent to deceive the PTO must be proven through clear and convincing evidence.  Id. at 1940-41. (more…)

October 30, 2009

Trademark Trial and Appeal Board Holds that a Formerly Registered Mark is Not Automatically Entitled to Re-Registration

Filed under: TTAB — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:54 pm

by Teresa Tambolas, Patent and Trademark Attorney

In In re Davey Products Pty Ltd., 92 USPQ 1198 (TTAB 2009), the Trademark Trial and Appeal Board affirmed the Trademark Office’s refusal to re-register a trademark based on a likelihood of confusion with two registered marks that it had coexisted with on the Register.

Davey Products Pty Ltd. (“DP”), had owned a registration of DAVEY for “electric motors for machines; waterpumps with fluid flow or pressure control for domestic, industrial and commercial use; and parts and fittings therefore” (Reg. No. 2,327,761).  The Trademark Office cancelled this registration because DP failed to file a declaration of continued use under Section 8 of the Trademark Act.  About a month after this cancellation, DP filed a new application to register the same mark for the same goods. (more…)

September 2, 2009

Putting the Intent Back Into Fraud: The Federal Circuit Overturns the TTAB’s Should Have Known Standard

Filed under: TTAB — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:30 pm

By Andrew N. Downer, Trademark Attorney

On August 31, 2009, the Federal Circuit issued an opinion that significantly impacts U.S. trademark owners, allowing them the opportunity to breathe a little easier with respect to their statements to the Patent and Trademark Office (“PTO”).   The case – In re Bose Corp., No. 08-1448[1] – essentially overturns the PTO’s decision in Medinol v. Neuro Vasx, Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003), and re-grounds the establishment of a claim of fraud on the PTO in traditional notions of intent.  Medinol had relaxed the standard for proving fraud such that a claimant only had to prove that the applicant/registrant “should have known” a statement was false.  The Federal Circuit’s opinion reestablishes that the applicant/registrant must have an intent to deceive the PTO, contrary to the PTO’s post-Medinol jurisprudence.

In the underlying case, Bose challenged Hexawave’s application to register the mark HEXAWAVE based on a likely confusion with Bose’s prior registration of WAVE.  Hexawave counterclaimed for cancellation of Bose’s WAVE registration, alleging that Bose committed fraud when renewing its WAVE registration.  Hexawave contended that Bose falsely claimed use of the mark on all of the listed goods when, in fact, it knew that it had stopped selling certain of the goods, namely, audio tape recorders and players.  During discovery, Bose’s general counsel testified that he believed the WAVE mark was still in use in commerce because Bose was repairing those trademark-bearing goods and shipping them back to customers.  The Board held that Bose’s belief was not reasonable, and cancelled Bose’s WAVE registration on the ground of fraud. (more…)

June 2, 2009

Federal Circuit Oral Argument – Bose v. Hexawave: Have the Trademark Trial and Appeal Board’s Medinol Fraud Cases “Crossed a Very Fundamental Line”?

Filed under: TTAB — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:57 pm

by Trademark Attorney, Janet Marvel

On May 5, 2009, the Federal Circuit heard oral argument in Bose v. Hexawave, Opposition No. 91157315.  This case has been closely watched for its impact on the U.S. Patent and Trademark Office (“PTO”) standard for finding fraud based on false claims of use.  The presiding judges’ comments during oral argument indicate that the Court may adopt a higher standard of proof of intent to deceive than the Board currently uses in fraud cases.

In 2003, the Board decided Medinol v. Neuro Vasx, Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003), where it appeared to apply a strict liability/negligence standard to find fraud on the PTO. In Medinol, the registrant, Neuro Vasx, signed a Statement of Use, in which it alleged that it was using its mark in connection with “medical devices, namely neurological stents and catheters.”  Medinol petitioned to cancel Neuro Vasx’s registration for fraud because Neuro Vasx was not using its mark on stents when it filed its Statement of Use.  Neuro Vasx responded that it had made the misstatement that it was using the mark on stents unintentionally, rather than fraudulently, and tried to amend its registration to delete “stents.” The Board accepted Neuro Vasx’s explanation that it had “overlooked” inclusion of stents, but stated:  “Respondent’s explanation for the misstatement (which we accept as true) – that the inclusion of stents in the notice of allowance was ‘apparently overlooked’ – does nothing….Respondent’s knowledge that its mark was not in use on stents – or its reckless disregard for the truth – is all that is required to establish intent to commit fraud in the procurement of a registration.”   Hence the Board found that even a careless error was enough to create a fraud on the PTO. (more…)

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