Pattishall IP Blog

October 27, 2010

USPTO Registers Unique “Non-Traditional” Service Mark: A 109-Word Narrative Story — Registration of The Peabody Hotels’ “Legend of the Ducks” Follows Earlier Motion Mark Registration of its Iconic Duck March

Filed under: Pattishall, TM Registration — Tags: , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:13 pm

Categories: Pattishall Involvement, Trademark (General)
Tags: Andrew N. Downer, Belinda J. Scrimenti, Non-Traditional Marks, Trademark Prosecution, TTAB, USPTO

By Belinda J. Scrimenti, Trademark Attorney

The famous Peabody Hotels in Memphis, Orlando and Little Rock are known for their iconic March of The Peabody Ducks, in which trained mallard ducks, guided by the “Duckmaster,” delight audiences twice-daily.  A red carpet is rolled out, and the ducks leave their rooftop “penthouse,” proceed down an elevator, and march across the red carpet, up steps and into the beautiful fountains in The Peabody Hotels’ lobbies.  The ducks spend their days leisurely swimming in the fountain, and at day’s end perform the March in reverse and retire for the night.  The Ducks have appeared on numerous television broadcasts, including Oprah and numerous travel programs, and received enormous print publicity.

Knowing that the Duck March had become synonymous with The Peabody Hotels, the Hotels’ owner recognized the importance of protecting the valuable intellectual property of both the Duck March and “The Legend of the Ducks” – the 109-word story about how decades ago the Ducks came to march daily to The Peabody fountain. (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…)

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…)

May 12, 2009

Trademark applications filed by foreign entities may be void if applicant cannot document its intent to use

Filed under: TM Registration — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 1:36 pm

Sanjiv Sarwate, trademark attorney, explains how trademark applications filed by foreign entities may be void if applicant cannot document its intent to use.

In Honda Motor Co., Ltd. v. Friedrich Winkelmann, the Trademark Trial and Appeal Board held that a trademark application by a foreign entity was void because the applicant could not document or otherwise prove it had a bona fide intent to use the mark in U.S. commerce at the time it filed the application.

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