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Posts Tagged ‘TTAB’

Yesterday, the Supreme Court heard a trademark case for the first time in several years. The issues in the case (B&B Hardware, Inc. v. Hargis Industries, Inc.) are not straightforward, and the procedural history is quite complex as the two parties involved have been engaged in various forms of trademark disputes with each other for more than a decade. For more details and the parties’ briefs, see SCOTUS blog here.

I anticipated the hearing on Tuesday would focus more on administrative law principles and the complex history in the case. I was wrong, the oral arguments and questions from the judges involved many fundamental trademark law issues. At its core, the argument came down to whether a TTAB proceeding is akin to full court dispute, and whether the issues and evidence available in an inter partes dispute at the TTAB are different from the issues and evidence available in an infringement action in District Court.

It was my first time ever inside the Supreme Court, and it did not dissappoint. Elegant, formal, and enormous. The building and the aura are impressive.

At its core, the discussion centered around whether a TTAB proceeding and a District Court infringement proceeding are similar enough such that if the TTAB has ruled regarding two marks used in commerce, should another action regarding the same marks and good/services in federal court be precluded?

While they are not identical proceedings, the differences are not huge, in my opinion. There really are no limitations in a TTAB proceeding other than no live testimony before the judges. And a TTAB litigant could remove the case to District Court if they believe infringement is an issue and the procedures or other aspects of the TTAB case harm the party’s potential to make their case. Furthermore, a TTAB case can be reviewed de novo on appeal, with new evidence, by a District Court. This point was reiterated by several of the judges on the Supreme Court multiple times.

A central issue that came up in the arguments repeatedly is whether, or how, the TTAB considers the circumstances of use. Despite some differences in the statutory language, most of the judges appeared ready to conclude that of course the TTAB considers the context of use on the goods or services. The Board often does consider those issues, in my experience. And a party that believe those issues are relevant can certainly introduce evidence about the issues. Furthermore, a party that believes that clarification of a description of goods at the USPTO would have a bearing on the proceeding may move, under Section 18 of the Trademark Act and/or a counterclaim, to restrict the registration or application at issue (although this was not raised by either of the parties or any of the judges). For example, a party in a Board proceeding could move for “shirts” to become “fireproof shirts sold for industrial purposes,”  or for “electronic publications in the field of healthcare” to become “electronic publications in the field of healthcare, namely, newsletters for cardiologists in the field of cardiology.” While it was not raised in the hearing before the Court, the availability of Section 18 means that the manner of use or the details of how a mark is used with the goods can be made at issue before a Board proceeding by any party if it properly raises the issue.

My Prediction:

After the hearing today, I believe it is likely that the Supreme Court will find preclusion, while allowing for standard exceptions.

Why? Because while the TTAB and infringement proceedings are not identical they are similar enough such that: (A) the TTAB always suspends its proceedings if there is a separate District Court action between the parties, and (B) I am not aware of any case in which the TTAB did not follow the same findings and outcome of  District Court decision. In other words, I’m not aware of any time when a District Court – while considering all the conditions of sale and marketplace factors – has ever reached an outcome that the TTAB did not follow, even thou the scope of the issues on the table at the TTAB relating to “four corners” of the application or registration were not precisely the same.

If the Supreme Court does find preclusion, how might that changes trademark practice and the types of proceedings before the TTAB? If my predicted outcome is correct, will it lead to more TTAB litigation or less in the future? I believe it could lead to more, because TTAB cases are more manageable and more predictable and less expensive. TTAB disputes fit better into the budgets and plans of corporations. I think that using Section 18 to limit the scope of marks involved in proceedings – so that on paper they match the circumstances in the marketplace – will certainly continue to grow as a option used by parties.

A few other notes from the hearing:

The Solicitor General’s office pronounced TTAB as “T-T-A-B.” Counsel for both parties used “T-Tab.”

Counsel for both parties and the Solicitor’s office all did a terrific job addressing the many questions from the Court.

Below is a photo if me on a cold wet morning in front of the mighty steps of the highest court in the land.

 

IMG_5206

Last week, several notable and interesting trademark opposition cases were filed at the Trademark Trial and Appeal Board of the USPTO:

Trademark image Trademark image

  • Selfie Inc. opposed registration of SELFIE + for Downloadable camera app for photo distribution
  • The Edison Institute DBA The Henry Ford (which includes the Henry Ford museum and attracts nearly 2 million visitors) opposed THE WRIGHT BROTHERS bumper stickers and other items from The Wright Family Foundation

As with Oppositions in general, many of these cases will be likely settled. Some of the application will likely be abandoned. Neither action is necessarily an indication of whether the claims had legal merit.

 

Major League Baseball teams oppose many trademark applications. Got a “W” or a “C” in your logo? Better be prepared to hear from Washington Nationals or Chicago Cubs. Got “Boston” or “Detroit” in your name? You might be hearing from the Red Sox or the Tigers.

For example, the Chicago Cubs recently opposed this logo:

In one recent week, MLB teams filed at least 8 oppositions at the USPTO. See below for details — click TTABvue for the full USPTO records.

Are MLB teams pushing the boundaries of reasonable trademark enforcement? Are they trademark bullies? Are they using their power and money to expand their trademark protection beyond where the law is meant to allow? I think these questions are worthy of discussion. For now, I will leave the answers up to you.

For more filings at the TTAB, including those from MLB, see www.TTABulator.com.

TTABVue 91215978 CFAN DESIGNS, INC. 85945826 C/FAN Chicago Cubs Baseball Club, LLC
TTABVue 91216093 BROOKLYN ARENA, LLC 85837679 BROOKLYNTASTE Los Angeles Dodgers, LLC
TTABVue 91216090 CAPTURE MEDIA INC. 86028767 C CAPTURE Chicago Cubs Baseball Club, LLC
TTABVue 91215982 EBSCO INDUSTRIES, INC. 85944984 PAWS N CLAWS Detroit Tigers, Inc.
TTABVue 91216073 EDGE ATHLETIC CLUB, INC. 85313268 EDGE ATHLETICS Athletics Investment Group d/b/a The Oakland Athletics Baseball Company
TTABVue 91215980 GRAND PRIX ENTERTAINMENT HOLDINGS, LLC 85918689 ROYAL Kansas City Royals Baseball Corporation
TTABVue 91215977 MG ENTERTAINMENT GROUP INC, MG ENTERTAINMENT GROUP, INC. 85929544 DUELO DE GIGANTES San Francisco Baseball Associates LLC
TTABVue 91216104 UBISOFT ENTERTAINMENT 85966322 RAYMAN Tampa Bay Rays Baseball Ltd.

 

On behalf of the American Bar Association’s Section of Intellectual property law, I have been involved in helping to organize this webinar on February 13th at 1pm EST.

Trademark Trial and Appeal Board Tips: Motions for Summary Judgment webinar to feature TTAB Judge.

On Thursday, February 13, 2014, the ABA-IPL will present this webinar featuring an in depth discussion of summary judgment and related issues in disputes before the USPTO’s trademark appeal board. Featuring TTAB Judge Michael Adlin and Interlocutory Attorneys Cheryl Goodman and Cheryl Butler, the panel will cover a variety of topics related to Summary Judgment Motions, including procedures, discovery, and accelerated case resolution (ACR). The webinar will run from 1:00 -2:30 PM EST and qualifies for 1.5 CLE hours in 60-minute-hour states and 1.8 CLE hours in 50-minute-hour states.

Register Now at: : http://apps.americanbar.org/cle/programs/t14msj1.html Event Code: CET4MSJ.

American Bar Association

Top Trademark Trends from 2013

Posted by ipelton on: January 13th, 2014

The world of trademarks in 2013 once again reflected the overall culture and economy of the United States. Trademark application filings increased slightly by just over 1%. The year’s most popular terms made it into many trademark applications, and the biggest news stories of the year were also reflected in the trademark records.

  • BOSTON STRONG. The Boston Marathon bombing in April was a major news story. Regrettably, within days multiple parties had filed to register BOSTON STRONG trademarks. Most of these applications have been refused initially by the USPTO for failing to function as an indicator of the source of goods or services.
  • REDSKINS. The Trademark Trial and Appeal Board at the USPTO heard oral arguments in a case seeking to cancel the registered trademark rights of the Washington Redskins football team. The plaintiffs alleged that the term ‘Redskins’ is disparaging and thus cannot be registered. While the hearing before the Board was held in March, a decision is still forthcoming. The controversy over the ‘Redskins’ name continued throughout the year as players, celebrities, the President, and the NFL Commissioner all provided comments about their position on the name.

  • Top pop culture terms of 2013. The most popular words and phenomena in pop culture made their way into many trademark filings. Such applications included TWERKING, TWERK TEAM, TWERK FOR TROOPS, HASHTAG LABS, HASHTAG LUNCHBAG, HASHTAG CLOTHING, YOLO HOTEL, YOLONOTES, YOLO KIDS, YOLO DONUTS, MUSTACHE SMASH, MUSTACHE PRETZELS, MOUSTACHE BREWING CO.
  • #HASHTAGS. Dozens of trademark applications were filed with the USPTO in 2013 for marks featuring hashtags, including: #DREAMJOB, #RUNTHISTOWN, #WECANDOTHAT, and #TAGMEBRO.
  • Non-traditional marks. Brands in 2013 continued to expand their use and registration of non-traditional trademarks. Sounds, shapes, colors, moving graphics, and other non-traditional trademarks continue to be effective ways for brands to connect with consumers in a world where it is increasingly difficult to stand out among the myriad of advertisements. For example, Facebook applied to register the design of part of its mobile app menu, Lego applied to register the configuration of is yellow head piece, Pepperidge  Farm applied to register the three-dimensional configuration of its Goldfish cracker, and the University of Arkansas applied to register the sound of its “Woooooooo. Pig. Sooie!” cheer.
  • gTLDs. New “dot anything” top level domain names finally began going live late in 2013. To date, their impact on the internet and on brand owners has been less than most feared.
  • Trademark scams continue. Solicitations offering negligible or questionable services continue to get sent by a variety of companies, often with government-looking notices, to US trademark applicants and registrants. At the end of 2013, The U.K. intellectual property office began to crack down on such entities, partnering with the Advertising Standards Authority (ASA) to handle complaints and consider legal sanctions. Perhaps the USPTO will follow suit in 2014?

What to look for in 2014. As the economy continues to grow slowly, it is likely that the number of new trademark applications will continue to rise. Expect even more trademark disputes to go viral via social media.

About Erik M. Pelton: Erik Pelton® has been making trademarks bloom since 1999® as the founder of Erik M. Pelton & Associates, PLLC®, a boutique trademark law firm in Falls Church, Virginia. The firm has registered more than 1,900 U.S. trademarks for clients and has represented dozens of parties in trademark disputes. In 2013, Erik presented on trademark and branding issues to a variety of audiences, including the American Bar Association, Catholic University School of Law, and two high school classes.