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Is Duke University a champion trademark bully?

Posted by ipelton on: April 6th, 2015

Tonight, Duke University plays for the college men’s basketball championship. They are a great team this year, and have had tremendous success for many years on the court under Coach Mike Krzyzewski.

Duke files myriad trademark oppositions at the USPTO. And Duke of course is not a coined word. In fact, according to a USPTO search of TESS (“(duke)[BI] and (live)[LD] not (“Duke university”)[on] not (0)[rn]“) the term “Duke” appears in more than 150 current USPTO trademark registrations that are not owned by Duke University.

I don’t throw around the phrase “trademark bully” lightly. But to me there is no question that Duke is arguably in that category. Does the university 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.

Below are some of the Oppositions filed by Duke at the TTAB in just the last 12 months. You can review the records by clicking on the links:

  • Trademark image (Housing services, namely, rental of student housing; Rental of apartments; Shopping center services, namely, rental of shopping center space; Rental of office space; Rental of retail space)
  • Trademark image (Custom made to measure suits for men and women; custom made to measure equestrian apparel in the nature of suits, shirts, pants, vests, and coats; equestrian apparel in the nature of suits, shirts, pants, vests, coats, ties, gloves, boots, and hats; custom made to measure professional wear in the nature of men’s and women’s business suits, shirts, jackets, coats, pants, vests, and skirts; men’s and women’s suits, shirts, jackets, coats, pants, vests, ties, and skirts; and clothing accessories, namely, pocket squares; Wholesale and retail stores services featuring equestrian apparel and professional apparel in the nature of men’s and women’s suits, shirts, vests, pants, skirts, ties; retail store services featuring clothing accessories, namely, collar bars, pins, pendants, gloves, hats, boots, ties, and pocket squares; and online and mobile retail stores services featuring equestrian apparel and professional apparel in the nature of men’s and women’s suits, shirts, vests, jackets, pants, coats, skirts, hats, boots, gloves, and ties; Custom fabrication, production, and fitting of clothing, namely, equestrian riding suits, custom men’s professional suits, shirts, jackets, vests, and pants, and women’s professional suits, jackets, skirts, vests, pants, and shirts; Consulting in the field of clothing design)
  • BLUE BALL CHILLER (Alcoholic beverages except beers)
  • DRANK UNIVERSITY (Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Baseball caps and hats; Caps; Hooded sweat shirts; Hooded sweatshirts; Knitted caps; Leather hats; Open-necked shirts; Polo shirts; Rugby shirts; Short-sleeved or long-sleeved t-shirts; Skull caps; Sports caps and hats; Sweat bands; Sweat jackets; Sweat pants; Sweat shirts; Sweat shorts; Sweat suits; T-shirts; Tee shirts; Wearable garments and clothing, namely, shirts)
  • TRUE BLUE (On-line retail store services featuring auto parts; On-line wholesale store services featuring auto parts)
  • MY LITTLE DEVIL (Clothing, namely, scarves)
  • DUKE KABOB (Restaurant services)
  • Trademark image(sunglasses and spectacles; contact lenses; protective eyewear; parts, fittings and accessories therefor in this class including lenses, frames, chains, cases and other protective covers)
  • THIS GIRL LIKES THE D (t-shirts)
  • THE DRINK OF THE DEVIL (Alcoholic beverages except beers; Distilled Spirits; Liqueurs)
  • BLEED BLUE (Water beverages)
  • THE DUKE SADDLE (Riding saddles; Saddles)
  • DUKE OF DENIM (Clothing made in whole or substantial part of denim, namely, caps, coats, denims, dresses, gloves, hats, jackets, jeans, pants, shirts, shorts, T-shirts, tops and footwear, shoes and underwear)
  • THE D (Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette cartridges)
  • Trademark image(Athletic apparel, namely, shirts, pants, jackets, footwear, hats, caps and athletic uniforms; Sporting equipment for baseball and softball, namely, bats, balls, bags, gloves, mitts, and bat and glove racks; catcher’s protective gear for baseball and softball, namely, leg guards, chest protector, and face mask; baseball and softball training aids, namely, one hand trainer, short bat trainer, under load trainer, power swing trainer, overload trainer, flat glove trainer, wood bat baseball trainer, wood bat softball trainer, infield glove trainer, outfield glove trainer, catcher’s glove trainer, training batting gloves, and batting tees)
  • Duke’s Butt (Adult sexual stimulation aids, namely, artificial penises, artificial vaginas)
  • Rare Devil (Beer, ale, lager, stout, porter, shandy)
  • Trademark image (Business consulting services, namely, providing assistance in development of business strategies and creative ideation)
  • OVERDUE BLUE (Alcoholic beverages except beers)
  • Trademark image (Protective clothing for life-preserving purposes for sports, namely, motoring, motorcycling, cycling, skiing and mountaineering, riding, in the nature of suits, jackets, trousers, helmets, gloves and boots containing air bags for the prevention of injury; protective helmets; protective helmets for sports, namely, motoring, motorcycling, cycling, skiing and mountaineering, riding; protective footwear for the prevention of accidents and injury; protection devices for personal use against accidents, namely, air bags; protective glasses; protective glasses for sports, namely, motoring, motorcycling, cycling, skiing and mountaineering, riding; protective gloves for protection from accidents; diving gloves; triggering software for inflatable protective devices; accelerometer sensors; impact sensors for measuring deceleration and accident impact severity; electronic control units for air bags; Apparatus for locomotion by land, air or water, namely, cars, trucks, motorcycles, bicycles, boats, motorboats, sail boats and airplanes; inflatable air bags for apparatus for locomotion by land, air or water for the prevention of injury in case of accidents; air bags; Clothing articles, namely, raincoats, T-shirts, trousers, shirts, jackets, gilets, sweaters, sports jackets, coats, overalls; headwear; belts; shoes; boots; gloves; ski gloves; motorcycle gloves; riding gloves; Protective paddings in the nature of parts of sport suits, namely, for driving motor vehicles, motorcycling, cycling, skiing and mountaineering, and riding)

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.

This week, the Supreme Court issued what is likely the most important trademark opinion in years. In may take a few years before we know the full ramifications of the Court’s decision  that  TTAB proceedings have a preclusive effect in later District Court actions when the proper conditions are met. I will post more about my opinion of the opinion in the coming days (but my prediction after the hearing – which can be found here – was fairly accurate).

In the interim, here is a roundup of stories and blog posts from others around the web with links and key takeaways:

  • TTABlog (“The Court remanded the case to the Eight Circuit, directing it to apply the following rule: “So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply.””)
  • Ron Coleman / Likelihood of Confusion (The decision “may very well have implications for some of the pending litigation involving that popular topic of late, Section 2(a) of the Lanham Act.”)
  • SCOTUSBlog (“The Court apparently designed its decision Tuesday in B&B Hardware v. Hargis Industries to answer as narrow a question as possible”)
  • JD Supra article (“Parties in TTAB proceedings should be keenly aware that if they concurrently file a lawsuit in district court, the determinations made by the TTAB could be binding on the district court, which could have significant consequences to the arguably more important district court litigation. In most instances, seeking to stay the TTAB proceeding pending a determination of the district court litigation would likely be the safest and most efficient course of action.”)
  • PATENTLYO (“For patent attorneys, the case will have an obvious impact on the interplay between the Patent Trial and Appeal Board (PTAB) and parallel district court litigation.  The same reasoning that led the Supreme Court to its decision in B&B will apply equally with determinations made during inter partes and post grant review proceedings.  Importantly, issue preclusion applies to individual decisions of fact or law and thus may be important for sub-issues such as claim construction, scope and content of the prior art, level of skill in the art, etc.”)
  • The Recorder (“Whatever the outcome, inter partes proceedings before the TTAB are not likely to be treated the same after B&B Hardware. Trademark owners and applicants should anticipate the potential of TTAB decisions having some preclusive effect in subsequent trademark litigation and should conduct their TTAB proceedings accordingly.”)
  • Butzel Long
  • Collen IP (“Now, more than ever, trademark owners who believe that another party is infringing its trademark rights should consider commencing a trademark opposition proceeding by filing a notice of opposition with the U.S. Trademark Trial and Appeal Board.”)
  • Barnes & Thornburg (“if the TTAB does not consider the marketplace usage of the parties’ marks, the TTAB’s decision should have no later preclusive effect in a suit where actual use in the marketplace is the paramount issue”)
  • Crowell Moring (“Major exceptions notwithstanding, the Court’s decision in B&B Hardware has elevated the potential importance of TTAB proceedings, once largely thought to be critical only to the right to register a mark and not the right to use that mark”)
  • Pattishall IP Blog (“An unintended consequence of the Supreme Court’s opinion may be protracted litigation in the lower courts about the preclusive effect of TTAB decisions.”
  • Incontestable (Naresh Kilaru / Finnegan) (“In view of the Court’s decision, it remains to be seen whether parties will now choose to go “all out” at the TTAB with the knowledge that the decision may be accorded preclusive effect, or whether they will skip the TTAB altogether and head straight to district court. It means that TTAB decisions should be appealed to preserve factual issues. And district courts will have to wrestle with the question of what it means for the TTAB to consider “marketplace usage.” As a strategic matter, TTAB plaintiffs may want to think twice about asserting common law rights outside the scope of their pleaded registrations or introducing other evidence of marketplace use, so as to preserve their ability to bring an infringement action later.”)
  • Duets Blog (“Before instituting a cause of action against another party, trademark owners will have to engage in some pre-litigation planning to position the case in the most beneficial forum.”)
  • Goodwin Proctor (“the U.S. Supreme Court ruled in favor of Goodwin Procter client B&B Hardware, Inc., in a decision that may change the way trademark cases are litigated.”)
  • Kaye Scholer (“We expect that lower courts will grapple with these issues for many years to come.”)
  • Fenwick & West (“This decision unquestionably raises the stakes for TTAB proceedings. While both the majority opinion and concurrence note that many TTAB decisions may not bind district courts, this may offer little comfort to trademark litigants deciding on a litigation strategy.”)
  • Morrison & Foerster (“The Supreme Court’s decision will likely raise the stakes in opposition and cancellation proceedings before the TTAB.”)
  • World Trademark Review (“Ultimately, the issue of preclusion will continue to play out in the courts and it remains to be seen what level of impact this decision will ultimately have. However, it does give trademark counsel plenty to think about in terms of current practice strategies.”)
  • Cooley LLP (Going forward, to get the benefits of issue preclusion in a later infringement case, plaintiffs in TTAB opposition and cancellation cases may increasingly offer evidence of actual use of the marks in the marketplace, like courts consider in deciding likelihood of confusion. That may tend to make TTAB adversarial proceedings more complicated, as plaintiffs build more extensive evidentiary records with a subsequent infringement action in mind. But it also may streamline the ensuing infringement litigation.”)
  • Ropes & Gray (“As for the TTAB, it may decide to better harmonize its analysis with that used by the federal courts by (for example) giving greater weight to how the marks it considers are used in the marketplace.”)
  • Husch Blackwell (“No doubt the real impact of the B&B decision will materialize over time as lower courts feel their way through its teachings. For now, parties involved in proceedings before the PTO’s TTAB should reevaluate their approaches to either prosecuting or defending that action to place themselves in the best possible position, whatever the outcome.”)

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)