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Posts Tagged ‘TTAB’

Yesterday at the Spring IP conference of the ABA Section of Intellectual Property Law, following a live hearing of a TTAB cancellation case, Chief Administrative Law Judge Rogers provided a summary of the recently proposed rules changes.

The proposed rulemaking was made public on Monday. Comments to the TTAB are due by June 3, 2016.

The proposed changes are, in my opinion, significant in several ways. They aim to streamline cases to make them a bit less complex and less costly for the parties involved. While generally that would be a admirable goal, and one that could benefit small businesses in particular, my concern is whether it runs contrary to the guidance provided by the Supreme Court last year in B&B Hardware, Inc. v. Hargis Industries, Inc.135 S. Ct. 1293 (2015)The Supreme Court said that  TTAB proceedings have a preclusive effect in later District Court actions when the proper conditions are met. The guidance from the Supreme Court leads me to believe that a preclusive effect could be found in many TTAB cases. For example, the oral hearing that the Board heard yesterday at the conference involved possible cancellation of a registration, and included extensive evidence (including depositions) and arguments regarding sales, advertising, consumers, channels of trade, actual confusion, and more. In short, the case covered essentially all of the same ground that an infringement matter would cover. Simplifying the procedure for the case could effect the chances of a full and fair adjudication of the merits.

It will be interesting to see the nature of the comments from practitioners, bar associations, and other stakeholders in response to the proposed rulemaking.

The TTAB’s summary of the major changes, distributed at the conference, is below. 

The full rulemaking can be found at https://www.federalregister.gov/articles/2016/04/04/2016-06672/miscellaneous-changes-to-trademark-trial-and-appeal-board-rules-of-practice.

Doc Apr 07, 2016, 1823_001

Doc Apr 07, 2016, 1823_002

I am honored to have written Chapter One in the newly published book from the American Bar Association, A Legal Strategist’s Guide to Trademark Trial and Appeal Board Practice. The book covers the entire TTAB Opposition and Cancellation process, as well as Ex Parte Appeals, and is a true practitioner’s guide to the rules and procedures of the TTAB.

Chapter One (Inter Partes Matters: General Background and Prefiling Considerations) by yours truly is available for now as a free sample on the publishers website, where the entire book can be purchased:

http://shop.americanbar.org/eBus/Store/ProductDetails.aspx?productId=233249703

Jonathan Hudis has edited this wonderful resource that features many other excellent authors, and I am thankful to Jonathan and the ABA Section of Intellectual Property Law for the opportunity to contribute to this work.FullSizeRender

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Are the Chicago Cubs champion trademark bullies?

Posted by ipelton on: October 22nd, 2015

Regardless of what happens on the field this October, there is a strong argument that the Chicago Cubs are ahead of the pack when it comes to filing trademark oppositions at the TTAB. The team files myriad trademark oppositions at the USPTO. Of course, a “C” logo is not unique, neither is use of the term “Cub.” (Although admittedly there may not be any other sports teams using the “Cub” term.)

I don’t throw around the phrase “trademark bully” lightly. But to me there is no question that the Cubs are arguably in that category. Does the team (business) take protecting its trademarks too far? I look at two factors to asses whether a “bullying” label is appropriate: whether the claim is over-reaching and whether the tactics are heavy handed. Over-reaching occurs when the alleged infringer is really making no commercial impact on the enforcer. For example, when the alleged infringer’s use is trivial; their industry or market or products or services are quite different; or there are already tons of third party uses of similar marks and the claim has no merit. The “bully” label may fit even if just one factor is present, i.e. the claim is very over-reaching or the tactics are very heavy-handed, especially is there is a pattern of behavior.

In addition to protect “C” and “Cubs,” the team also makes a lot of claims regarding “W.” You will see in the list below, that many of the filings are against companies that make products or services that have little or nothing to do with baseball.

I am not the first to raise this issue:

Below are some of the Oppositions filed by the Cubs at the TTAB since the beginning of 2014. You can review the records by clicking on the links:

  • Trademark image– Breakfast cereals
  • Trademark image– Underwear for girls, boys and men, undershirts for girls, boys, and men, underwear for women, and rompers
  • Trademark image– Providing an on-line and mobile directory of information regarding merchants who accept contactless mobile payments
  • Trademark image and Trademark image– Providing and rental of advertising space on the internet; On-line social networking services
  • Trademark image– cellular telephone accessories, namely, antenna bases, antenna warning lights, replacement antennas, replacement batteries, flashing batteries, wireless cellular phone headsets, pouch bags for carrying cellular phones, battery chargers for car and travel, data cables, face plates, devices for hands free use of cellular phones, holders, clips, magnets for attachment of mobile phones to metal surfaces, LCD screens specially adapted for cellular phones; MP3 accessories, namely, protective carrying cases for portable music players, fitted silicone films known as skins for covering and providing a scratch proof barrier or protection for electronic devices, namely, MP3 players, mobile telephones, smart telephones, digital cameras, global positioning systems, and personal digital assistants; protective covers specifically adapted for protecting screens of personal electronic devices, and decorative charms for cellular telephones; retail store and on-line retail store services featuring cellular telephones, equipment, and accessories
  • Trademark image– Distributorship services featuring frozen desserts
  • Trademark image– advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of third parties, through text, audio, video, digital and on-line medium; entertainment and educational services, namely, providing information, news commentary and reporting in the fields of entertainment, education, current events, pop culture, and sports; providing requests, reviews, recommendations, rankings, trackings, votes, and information related to people, places and things, and products and services and events in the fields of current events, pop culture, entertainment, education, and sports; internet based computer services, namely, hosting on-line web facilities for others for organizing and conducting online meetings, gatherings and interactive discussions and the transfer and exchange of information; computer services, namely, creating an on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, and engage in social networking; computer services, namely, enabling online users to create personal profiles featuring social networking information, creating virtual communities, and transmitting audio, video, photographic images, text, graphics and data; providing temporary use of nondownloadable computer software for uploading, posting, sending, transmitting, displaying, filtering, tagging, blogging, sharing, viewing, searching, scanning, navigating, compiling, indexing, and organizing electronic media and information over the internet and other communications networks; providing temporary use of nondownloadable computer software for uploading, posting, sending, transmitting, displaying, filtering, tagging, blogging, sharing, viewing, searching, scanning, navigating, compiling, indexing, and organizing user-generated content; providing customized on-line web pages featuring user-defined information which includes search engines and on-line web links to other web sites; providing news and information in the field of fashion and lifestyles; on-line social networking services
  • Trademark imageand Trademark image– : Containers of plastic for storage of feminine products for household or domestic use; General purpose storage bins for household use; Plastic storage containers for domestic use; Plastic storage containers for household or domestic use
  • Trademark image– Clothing, namely t-shirts, shirts, sweatshirts, jackets, hats, caps
  • Trademark image and Trademark image– Footwear
  • Trademark image– Paper goods and printed matter, namely,address books; children’s activity books; comic books; coloring books; notebooks; composition books; picture books; children’s story books; books containing puzzles and games; instructional manuals and printed strategy guides for games; book covers; scrapbook albums; arts and crafts kits for painting and drawing; stamp albums; photograph albums; diaries; invitations; lunch bags; modeling materials and compounds for use by children; paper table cloths; trading cards; writing pads; posters; book marks; non-electronic personal planners and organizers; artist materials, namely, pencils, pens, sketchbooks; gift wrap paper; paper gift tags; paper gift bags; paper gift boxes; correspondence note paper; greeting cards; paper party decorations; paper napkins; paper ribbons; paper party bags; postcards; stickers; sticker books; calendars; temporary tattoos; school and office supplies, namely, drafting and drawing rulers, pencils, pens, markers, glue for stationery or household use, desk top organizers, desk stands and holders for pencils, pens, tape, paper clips, and notepads; binders; stationery; notepads; pencil cases; pencil sharpeners; desk pads and stationery sets comprised of paper, envelope, seals, notepads; stencils; read-along children’s books and cassette tapes sold as a unit; printed children’s books featuring electronic sound buttons; patterns for making costumes; arts and crafts paint kits containing sponges, brushes, paint and paint cups; activity kits containing stamper markers, rubber stampers, ink pad, colored pencils, stamperholder; modeling compounds and accessories for use therewith, namely, molds andextruders; crayon and color by number kits containing crayons and coloring books; series of fiction books in the field of entertainment and science fiction; : Toys, games and playthings, namely, dolls, doll clothing and doll accessories; doll playsets and accessories; toy action figures and accessories for use therewith; toy vehicles and accessories for use therewith; toy playsets for use with toy action figures and toy vehicles; children’s multiple activity toys; plush toys; stuffed toys; bean bag toys; toy modeling compounds; toy molds and toy extruders for use with toy modeling compounds;plastic and vinyl toy characters and toy animals; ride-on toys; pull toys; pushtoys; mechanical toys; toy constructionsets; building toys; wind-up toys; water squirting toys; inflatable toys; role-playing toys; toy ball and dart shootersand foam toy balls and darts for use therewith; board games; parlor games; skill and action games; card games; playing cards; trading card games; hand held units for playing electronic games other than those adapted for use with an external display screen or monitor; jigsaw puzzles; paper party hats; video game apparatus, namely, video game machines for usewith televisions

Anatomy of a trademark Ex Parte Appeal Brief

Posted by ipelton on: October 15th, 2015

A recent application for CLEAN ENERGY OPTION was refused as descriptive. On appeal, the matter was resolved with the examiner before a final decision by the Trademark Trial and Appeal Board (TTAB). All of this information and these materials are public record, of course.

The brief shows the formatting of an appeal brief. It also provides some examples of substantive arguments regarding descriptiveness, in particular double entendre.  Note that an Ex Parte Brief generally features far more formalities than an office action response.

Upon receiving a Final Refusal from the USPTO to a trademark application, the applicant may file an appeal to the Trademark Trial and Appeal Board. When such an appeal is made, each party (the applicant and the USPTO Examining Attorney) will submit briefs and potentially an oral argument to a panel of three administrative judges from the Board who will then rule regarding the registrability of the trademark.

What does an Appeal Brief consist of? Generally, it cannot present new evidence but must rely on the record already created. The Appeal Brief may present arguments regarding the registrability and the evidence, and may attempt to counter arguments made by the Examining Attorney in the Final Refusal. The Appeal Brief should also describe the evidence of record and the procedural history, along with an index of the cases and statutes cited.

Trademark Ex Parte Appeal Brief: Clean Energy Option

TPAC Meeting Summary – September 2015

Posted by ipelton on: September 29th, 2015

On Friday, the Trademark Public Advisory Committee (TPAC) met at the USPTO headquarters in Alexandria, VA.  The handouts from the meeting are at the bottom of the post. Below is a summary of the key points discussed at the meeting:

The Friday meeting marked some firsts and some lasts. This was the first time USPTO Director Michelle Lee was able to attend the meeting and address the committee. The meeting also marked the end of the fiscal year (September 30th) and saw the end of the TPAC term of three members of the committee: Dee Ann Weldon-Wilson, vice chair Kathryn Barrett Park, and chair Maury Tepper.

Comments from the Director – Undersecretary of Commerce for Intellectual Property and Director of the USPTO Michelle Lee

Director Lee expressed her appreciation for the committee’s work, and noted that she once served on TPAC’s patent counterpart, the Patent Public Advisory Committee. The Director told the committee about upcoming openings of regional offices in Silicon Valley and Dallas, both set for this fall. The offices will play a big role in the PTO’s continuing educational outreach efforts. The Director also noted that the PTO expects to continue normal operations if Congress does not pass a budget or continuing resolution next week.

Trademark Trial and Appeal Board – Chief Administrative Trademark Judge Gerard Rogers

  • The TTAB is meeting its goals for shortening the pendency for cases and motions before the Board.
  • The Board is not making any major changes in the wake of the Supreme Court’s decision in B&B Hardware v. Hargis. The Board is likely to be more nuanced in its use of language and more clear in its opinions about how submitted evidence factors into its decisions, however, in a nod to the Supreme Court’s holding that TTAB decisions can be preclusive.
  • The Board is going to continue public outreach efforts. In particular, the Board will continue holding oral arguments in public forums, including one coming up at Loyola Law School in California.
  • As the Board has discussed for some time, it is likely that we will see rules changes concerning process and procedure soon, possibly as early as year. We learned that TPAC has already seen draft copies of the proposed rules. The Chief Judge expects that as a result of B&B Hardware, discovery at TTAB may expand, but only in those where use in commerce is really at issue.

Legislative Update – Dana Robert Colarulli (Director, Office of Governmental Affairs)

  • There isn’t currently a lot of trademark activity in Congress, although the Washington football team’s name is still an issue. H.R. 3487, introduced by DC’s non-voting member Del. Eleanor Holmes-Norton, attempts to strip the NFL’s anti-trust exemption as long as the name stays in use.
  • Congress has been very involved with the USPTO’s efforts at the World Intellectual Property Organization (WIPO), which was discussed in more detail later in the meeting.
  • Colarulli provided some more insight into the Congressional budget talks. He noted that the PTO would need authorization from OMB to stay open if there was no continuing resolution. He expressed optimism that there would be no shutdown.
  • There was discussion about a provision in a pending patent litigation abuse bill that concerns trademark appeals. The bill would change jurisdiction for certain TTAB appeals. In cases where the appellant appealed to the district court instead of the Federal Circuit, the bill would send any appeal of the district court judgment to the Federal Circuit instead of the appropriate regional circuit court. The PTO expressed support for the bill, while members of the committee disagreed, citing concerns of the IP bar.
  • Finally, committee discussed the current state of the Copyright Office, including possibility of putting it under the USPTO agency.

USPTO Budge Update – Tony Scardino (Chief Financial Officer)

  • Fiscal Year 2015 closes at end of this month, and the budget for 2017 was just submitted to OMB.
  • Revenues were in line with projections. Although application numbers were up, the reduction of certain trademark fees implemented January 17, 2015 reduced overall revenue a drop.
  • This year, the PTO made use of “overflow” money to help pay for continued development of the IT systems.
  • USPTO is conducting a biennial review of all its fees, including some proposals to adjust trademark and TTAB fees. A decision on whether to propose changing any fees next year will be coming soon, and must be made at least 30 days before the start of the next presidential administration.

Trademark Operations – Commissioner Mary Boney Dennison

  • Commissioner Denison thanked the outgoing members of the committee with certificates of appreciation.
  • The Commissioner noted that filings are up, pendency goals are within targets, and quality goals are above targets, too. Filings are up10.8% above last fiscal year (prediction had been 6%), and the PTO expects 7-8% increases annually from 2016-2020.
  • The PTO employs 456 examining attorneys. 85% of EAs telework full time from 29 states. The PTO hired 43 new EAs this year, and will have 20 new EAs starting in November. Trademarks is also likely to hire approximately 30 in the next few months.
  • New hires now go to an entirely new law office rather than be divided among existing law offices. This is part of an ongoing pilot training program.
  • Trademarks has a new administrative position: Deputy Commissioner for Trademark Administration, for which Trademarks will be interviewing candidates soon. This position will include IT oversight.
  • Trademarks is working on a plan for enhancing customer service, including website instructions. The Trademarks will have a training day in April 2016 for all employees.
  • Commissioner Denison shared updates on two additional pilot projects at the PTO. First, the PTO is exploring post-registration ID changes due to technology evolution (i.e., subbing out 8-track tapes for MP3s). The pilot program commenced on Sept 1. See the PTO website for more details.
    The PTO also concluded its post-registration use pilot, which studied the actual use of marks for their registered goods upon filing of Section 8 renewals. The PTO is still considering its next options. Random audits of registered marks are the most likely plan for now.
  • Finally, public outreach efforts continue. A “Basic Facts” video had 345,000 views online, and bar association roundtables will be held at the new satellite offices in Silicon Valley and Dallas.

International Policy – Shira Perlmutter and Amy Cotton

  • The PTO’s International Policy team has been very busy dealing with the World Intellectual Property Organization and the members of the Lisbon Treaty on Geographic Indications.
  • Lisbon Union countries have not been adequately supporting implementation through fees, which the PTO believes has resulted in U.S. patent and trademark owners subsidizing the WIPO’s work under the treaty.
  • New regulations were adopted this spring over the strong objection from the U.S. and other countries. These regulations create perpetual protection once on the international register and prohibit those indications from becoming generic, which is all antithetical to U.S. principles of IP law.
  • The U.S. is exploring alternative approaches, and may be prepared to ‘block’ the WIPO budget over these issues.
  • The EU is undergoing changes in its IP system. The EU’s trademark office, OHIM (Office for Harmonization in the Internal Market) will soon be reorganized. There were also several new regulations passed as part of a new directive. The EU now has a “traditional terms” refusal, which will refuse marks that contain traditional terms such as “Chateau.”

IT Update Chief Information Officer John Owen II & Manager Raj Dolas

  • The IT updates and development of TMNG (Trademark Next Generation) continues, although slowly. The project is facing a lot of difficulties dealing with both the old legacy systems and the new systems, and the team is constantly discovering new problems with merging the two systems. Right now, much of the work is focusing on the back-end and systems for the Examining Attorneys and trademark staff.
  • The IT team has rolled out a new Trademark ID manual. The team has also finished the big task of migrating all images (5+ million) and documents (200+ million) from the legacy system to the next generation system.
  • The team has also increased the size limit for attachments in the legacy system, making filing responses with evidence easier.
  • The IT team received a lot of questions from the committee about the timeline of updates and problems the team faces, as this portion of the meeting has some of the greatest impact on trademark owners and trademark law practitioners.

2015 09 25 TPAC Handouts