Pattishall IP Blog

March 1, 2012

Does CRACKBERRY Parody BLACKBERRY? TTAB Says “No”

Filed under: First Amendment, TM Registration — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:32 pm

By Janet Marvel, Trademark Attorney

On February 27, 2012, the Trademark Trial and Appeal Board issued its precedential opinion in Research in Motion Limited v. Defining Presence Marketing Group, Inc. and Axel Ltd. Co., Opposition No. 91181076,[1] refusing registration of CRACKBERRY because it is likely to be confused with and to dilute RIM’s famous BLACKBERRY mark.  Defendant’s (“Axel”) main defense was that CRACKBERRY parodied BLACKBERRY.  Axel’s parody defenses failed, perhaps primarily because, according to the Board, Axel competes directly with RIM, rather than simply making a commentary on the BLACKBERRY product.

The Board summarily dealt with Axel’s parody defense to likelihood of confusion, noting that in federal court “the protective penumbra of free speech may well support the premise that members of the public have a right to use words in the English language to interest and amuse other persons.”  However, the Board only has power to bar registration, not use.  Thus “[t]he First Amendment claim is not as strong as with issues of restraint on use.”  In addition, “[t]he center of balance changes even further when the risk of confusion of source, affiliation, approval, or endorsement by the source of the known expression outweighs the newcomer’s claim to the right to adopt and register a humorous moniker.”  The Board concluded that – at least for the purpose of registration – “likelihood of confusion will usually trump any First Amendment concerns.”  The Board then had no trouble finding that the DuPont factors supported the conclusion that CRACKBERRY was likely to be confused with BLACKBERRY.

The TTAB also found that CRACKBERRY is likely to dilute BLACKBERRY.  Again, Axel hung its hat on the parody defense.  Again, it failed.  The Board first noted that the parody exclusion in the federal dilution statute, 15 U.S.C. 1125(c), by its terms does not apply to defendant’s use of its mark “as a designation of source for the person’s own goods or services.”  Axel obviously used CRACKBERRY as a mark.

However, the Board held that the statutory language does not end the analysis.  The Board quoted the famous parody case Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007), explaining: “Like the Fourth Circuit, the Board will assess the alleged parody ‘as part of the circumstances to be considered for determining whether the [opposer] has made out a claim for dilution by blurring.'”  In finding dilution by blurring, the Board considered it persuasive that Axel itself did not create the parody – instead it adopted a term already in common parlance.  Perhaps more importantly, the Board noted that Axel’s CRACKBERRY services are closely related to those of RIM.  Thus, if CRACKBERRY was a parody at all, it was not a very good one.

Axel operates an online retail store under the CRACKBERRY name, where it sells electronic handheld devices among other things that, the Board found, “are quite closely related” to RIM’s BLACKBERRY devices.  The CRACKBERRY site uses “the Blackberry mark as if their own source identifier.”  This likely was Axel’s undoing.  While the site may include a chat room for BLACKBERRY users, sale of goods on the site no doubt ended any “joke” Axel was trying to make of the CRACKBERRY name, and put it squarely in competition with RIM’s BLACKBERRY products and services.

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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.


February 9, 2012

Defendant Hoist Manufacturer Awarded Attorney’s Fees in Trade Dress Case Secalt v. Wuxi Shenxi Construction Machinery

Filed under: Litigation, Trade Dress — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:30 pm

By Janet Marvel, Trademark Attorney

In Secalt S.A. v. Wuxi Shenxi Construction Machinery Co., Ltd., Nos. 10-17007 & 11-15066, 2012 WL 373102 (9th Cir. Feb. 7, 2012), plaintiff, a manufacturer of traction hoists (typically used for commercial building and window washing), alleged that it owned trade dress rights in the following design:

The Ninth Circuit ruled for the defendant, the maker of an apparently identical product.  The court’s opinion rested on its conclusion that, to paraphrase, no one cares what a traction hoist looks like, as long as it works.  Id. at *4.  Since plaintiff’s design was not the subject of a federal trademark registration, plaintiff was required to prove that it was non-functional and that it had secondary meaning.  Plaintiff could not prove non-functionality.  A design is functional if it “is essential to the use or purpose of the article, or affects the cost or quality of the article.”  Inwood Laboratories v. Ives Laboratories, 456 U.S. 844 n.10 (1982).

The Ninth Circuit, after citing the confusing de jure and de facto definitions of functionality (which have been rejected as unhelpful by the TTAB), considered the much more understandable factors set forth in Disc Golf Ass’n v. Champion Discs, Inc., 158 F.3d 1002 (9th Cir. 1988).  Those factors are:  “(1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture.”  Secalt, 2012 WL 373102, at *4 (citing Disc Golf, 158 F.3d at 1006).

No factor supported the plaintiff.  Plaintiff’s own engineers testified that the hoist’s features were utilitarian.  There were alternative designs, but they were functional too.  Plaintiff’s own advertising stated that its hoists were rectangular (“cubist” in plaintiff’s trade dress parlance) so they would not roll off of tables.  All hoists cost pretty much the same, so the last factor was neutral.  The court found that plaintiff’s evidence was so lacking that defendant was entitled to its attorney’s fees.

The Secalt case provides the opportunity to revisit a best practice in trade dress protection.

Although a utilitarian design can only be protected for a limited time, and a purely ornamental design does not necessarily function as a source indicator, when designing a product, the  developer has the opportunity to consider adding a unique feature and repeating it throughout a product line.  If this is possible, then the product manufacturer has the opportunity to use the feature to develop and support brand recognition, even after its utility patent for the product expires, at which time copyists otherwise legally would be allowed to create competing identical products.

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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.

For a printer-friendly version, click here.

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.

For a printer-friendly version, click here.

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.

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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.

For a printer-friendly version, click here.

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.

For a printer-friendly version, click here.

June 10, 2011

First Circuit: Supreme Court Decision Calls into Question Presumption of Irreparable Harm in Trademark Infringement Preliminary Injunction Cases

Filed under: Litigation, Trademark (General) — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:37 pm

Categories: Trademark (General), Litigation
Tags: Litigation, Preliminary Injunction, 1st Circuit, Janet A. Marvel

by Janet Marvel, Trademark Attorney

In eBay v. MercExchange L.L.C., 547 U.S. 388 (2006), the Supreme Court reaffirmed that courts must apply “traditional rules of equity” in deciding whether to grant permanent injunctions in patent cases.  It found that the Federal Circuit’s “general rule” in patent cases “that a permanent injunction will issue once infringement and validity have been adjudged” except in “exceptional circumstances” was improper.  Essentially, then, the Court found that courts cannot presume irreparable harm in the patent injunction context.

In many jurisdictions, irreparable harm has been presumed in trademark infringement preliminary injunction proceedings.  After eBay v. MercExchange, courts have considered, and sometimes avoided, the question of whether that presumption remains valid.  See Osmose, Inc. v. Viance LLC, 612 F.3d 1298 (11th Cir. 2010) (“Because the district court did not rely on a presumption of irreparable injury, we need not decide whether such a presumption still applies in the wake of eBay); N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211 (11th Cir. 2008) (vacating and remanding preliminary injunction for consideration of whether a presumption of irreparable harm should be applied after the eBay decision); Lorillard Tobacco Co. v. Engida, 213 Fed. Appx. 654 (10th Cir. 2007), cert. denied, 127 S.Ct. 3016 (2007) (“We need not consider how eBay may apply in this context . . . because in any event Lorillard has not shown that any harm Lorillard would suffer in the absence of an injunction outweighed the potential harm to I and G”).  Compare Lorillard Tobacco Co. v. Amouri’s Grand Foods, Inc., 453 F.3d 377 (6th Cir. 2006) (court presumed irreparable harm on a showing of likelihood of success on the merits); Harris Research, Inc. v. Lydon, 505 F. Supp. 2d 1161 (D. Utah 2007) (“The Supreme Court has recently disapproved the use of categorical rules in connection with injunctive relief in intellectual property actions, and Plaintiff must show irreparable injury to support a preliminary injunction.”) (internal quotations and citations omitted).  (more…)

May 27, 2011

Federal Court Determines that Filing of Opposition Along with Settlement Discussions Regarding Use of a Mark is Not Grounds for Declaratory Judgment

Filed under: Litigation, Trademark (General) — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:41 pm

Categories: Litigation, Trademark (General)
Tags: Litigation, Declaratory Judgment, Janet A. Marvel

by Janet Marvel, Trademark Attorney

The Supreme Court in Medimmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), set out a new standard for determining whether a case or controversy creates jurisdiction under the Declaratory Judgment Act.  The Medimmune standard states:

[T]he question in each case is whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interest, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.

Id. at 127.  The court in Vina Casa Tamaya S.A. v. Oakville Hills Cellar, Inc., No. 10 Civ. 3025, 2011 WL 1642524 (S.D.N.Y. Apr. 26, 2011),[1] applied that new test in the context of trademark oppositions.  There, Vina Casa Tamaya sought a declaratory judgment that its TAMAYA mark did not infringe Oakville Cellars’ MAYA mark.  Oakville sent Vina Casa a cease and desist letter objecting to its application for federal trademark registration of TAMAYA, but not to its use.  When Vina Casa did not respond, Oakville filed an opposition to registration.  The parties then tried to settle; apparently they discussed use of the TAMAYA mark, but Oakville would not settle on terms permitting continued use.  Vina Casa had used the TAMAYA mark in the U.S. for seven years prior to the suit. (more…)

June 8, 2009

Pattishall Partners Author New Essential Books

Filed under: Pattishall — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 7:27 pm

Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP is proud to announce the recent release of the Seventh Edition of the widely used law school coursebook Trademarks and Unfair Competition, authored by David C. Hilliard, Joseph N. Welch II and Uli Widmaier. Also just released is the Fourth Edition of the highly regarded Trademarks and Unfair Competition Deskbook for practitioners, authored by David C. Hilliard, Joseph N. Welch II and Janet A. Marvel.  Both books are published by LexisNexis and are available at bookstores as well as online at http://www.lexisnexis.com.

Pattishall, McAuliffe is also proud to announce the release of Alternative Dispute Resolution:  An Essential Competency for Lawyers, the most recent book authored by Mark V.B. Partridge.  Mark’s book is published by Oxford University Press and is available both from the publisher and at http://www.amazon.com.

At Pattishall, we differ from other law firms not only because of our litigation and counseling expertise relating to trademarks, unfair competition, copyrights, product design, trade secrets, the Internet, advertising and design patents, but also because so many of our partners author the leading books on these topics.

Return to www.pattishall.com.

For a printer-friendly version, click here.

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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