Posts Tagged ‘anatomy’

Because I like to practice what I preach, our firm owns more than 10 trademark registrations. An application to register Tuesday Trademark Tip. That application was refused registration on the Principal (or stronger) register, as the USPTO has asserted that the name is descriptive. I contested this ruling and appealed it to the administrative judges of the Trademark Trial and Appeal Board (TTAB). A hearing in the appeal was held recently.

A decision of the USPTO refusing an application for registration can be appealed to the TTAB once it is a “Final Office Action.’ The appeal is called an Ex Parte Appeal. The applicant and the USPTO examining attorney each submit briefs. A hearing is held if the Applicant requests one. And then the judges then make a ruling. The entire process can take about year from the time the appeal is started, especially if the applicant requests a hearing, which takes some time to schedule.

The decision – and the hearing if there is one – is by a three judge panel. During the appeal process, no new evidence can be entered into the record by the Applicant or the Examining Attorney. The USPTO filing fee for an Ex Parte appeal is $100.

The hearing allows the Applicant 20 minutes to argue and the Examining Attorney 10 minutes.  The Applicant may reserve some of its time for rebuttal.

The hearings are open to the public.  Parties – and even judges – may appear in person or via live video transmission.

I always advise that an appeal is an “uphill battle” but if there are strong arguments that the USPTO has ignored or evidence that has been misunderstood, it may be worthwhile to get the case in front of three new faces instead of the examining attorney who has already made up his or her mind.


Pictures outside of the USPTO last recently following my hearing on the Tuesday Trademark Tip application.

Anatomy of a Motion for Sanctions

Posted by ipelton on: March 12th, 2015

In an opposition or cancellation case at the Trademark Trial and Appeal Board (TTAB) it is sometime necessary to bring a Motion to Sanctions when a Motion to Compel has already been brought and the Board’s instructions are not complied with and a party continues to fail to meet its discovery obligations.

No two motions for sanctions will look the same, because the history and circumstances will always vary from case to case.

Below is a sample Motion for Sanctions at the TTAB from a real case (publicly available here). Sanctions can include dismissal of the entire case.

For more details about sanctions, see the TTAB Manual of Procedure (TBMP) Section 527.

Sample Motion for Sanctions (TTAB)

Anatomy of a Motion to Compel

Posted by ipelton on: March 10th, 2015

In an opposition or cancellation case at the Trademark Trial and Appeal Board (TTAB) it is sometime necessary to bring a Motion to Compel to deal with a party failing to meet its discovery obligations.

Below is a sample Motion to Compel at the TTAB from a real case (publicly available here).

For more details about motions to compel, see the TTAB Manual of Procedure (TBMP) Sections 400 (Discovery) and 523 (Motion to Compel Disclosure or Discovery).


Sample Motion to Compel – Trademark Trial and Appeal Board (TTAB)

Anatomy of backing down from a trademark infringement allegation

Posted by ipelton on: February 2nd, 2015

A few weeks ago, there was much hub-bub in the craft brewing world as Lagunitas filed a lawsuit against Sierra Neva alleging that the particular use of “IPA” on the label of Sierra’s Hop Hunter IPA constituted trademark infringement. See below for the comparison.

In essence, the lawsuit alleged that that Lagunitas had rights in the font and design used with the letters IPA, and that Sierra Nevada’s use of IPA was too similar.

The online backlash was rapid and large. How much protect could such a graphic, featuring the generic letters “IPA” really have? And Sierra Nevada’s lettering was not identical. And how many other beer labels use IPA in big bold lettering?

In a rare move, the complaining party quickly backed down and dropped the lawsuit. Not only was that fact and the speed with which it was done rather astonishing — you can imagine the discussions with the very same lawyers who advised them to file the lawsuit — but their public apology was tremendous It sounded sincere and not written exclusively by attorneys. Lagunitas posted the following message on their website on January 14, just one day after the lawsuit came to light and just two days after the lawsuit was filed:

Yesterday in the Lagunitas nexus of the Twitterverse was the worst day ever in 23 years of growing our brewery. Worst. Growing a business over time sometimes involves defending that business. Defending a business requires answers to Hard Questions. Questions like: Are our Foundations Strong? Are our Flavors right? Are our Labels, our very identity, something that we can defend? There are many courts in the world in which to find those answers. For us, over the last month, one court was a series of rebuffed phone calls to another brewer. Another was a court of law. Today was in the hands of the ultimate court; The Court of Public Opinion and in it we got an answer to our Question; Our flagship IPA’s registered federal trademark has limits. We don’t know the answer to every question beforehand so we feel around for the edges and we try to learn. Today we were seriously schooled and we heard you well…! The Customer is always right and here in the 21st Century that maxim is truer than ever. Today we will Drop the Infringement Suit & get back to work answering other questions instead. We needed to raise the question because it matters, and through the miracle of Twitter the answer came back much sooner than we thought and in a different Court than we expected. The best thing is to have friends. Can we say thank you?

Other’s accused of trademark mismanagement or trademark bullying should take notice — mistakes happen. Poor judgment exists. By owning the mistake and acknowledging it, some good can potentially balance the harm done to the brand that erred in its trademark judgement.

Note: While Chik-fil-A appears to have backed down from their complaints about EAT MORE KALE they have never issued any kind of a statement, explanation or apology. Their brand image may have suffered considerably less embarrassment and ridicule if they had done something similar to Lagunitas.


A US trademark application can be generally based on use in commerce or a “bona fide intent to use” the mark in commerce with the goods and services featured in the application. (Note that a US application can also be based on a foreign application or registration, but these are much more rare than “use” and “intent to use” applications.)

When an application is filed based upon an “intent to use” the mark with the goods and/or services, if it meets all the other procedural and substantive requirements for registration, proper evidence of use must be submitted before the registration process can be completed.

There are many benefits to filing an “intent to use” application – it allows the trademark owner to file as early as possible and begin preserving rights in the trademark and putting the public on notice regarding a new name, logo, or other trademark that it plans to use.  If a business is planning to use a name, but does not file to protect it with the USPTO until sales begin, someone else could come along and begin using a similar name, or file with the USPTO, during the pre-sales period and potentially usurp any rights to the name. The launch could then need to be re-done (likely with a  considerable expense and delay) or use of the name could be quite risky as it may not be unique and may even expose the user to a potential claim for infringement.

A necessary part of completing the “intent to use” application is the filing of the evidence which may be called a Statement of Use or an Amendment to Allege Use (“AAU”). The allegation of use has the following main elements:

  • specimen showing use of the trademark in connection with the relevant goods or services
  • the dates the mark was first used in commerce and first used anywhere
  • a proper signature on the declaration

An allegation of use could be submitted on paper or electronically. Below is an example, from the USPTO public records, of an electronically filed Allegation of Use.

SAMPLE Trademark Allegation of Use (AAU) by Erik Pelton

While you can file a trademark application – and begin getting some protection – before using it, provided you have a “bona fide intent” to the trademark in commerce with the goods or services in the application, the application process cannot be completed unless all the requirements for registration are met including the submission of acceptable evidence of use.