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Category Archives: TTAB

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Madonna Not Scandalous for Wine Anymore

Posted in Articles, Branding, First Amendment, Marketing, Trademarks, TTAB, USPTO

The headline might be considered old news to some, but since intellectual property attorneys from around the world will be descending upon Minneapolis for the remainder of the week, and since I’ll be speaking tomorrow at the American Intellectual Property Law Association Spring Meeting at the Minneapolis Hilton, on the history and public policy behind… Continue Reading

ELLE Fails to Un-ring Bell, DJ Action Sticks

Posted in Agreements, Articles, Branding, Civil Procedure, Contracts, Dilution, Law Suits, Marketing, Trademark Bullying, Trademarks, TTAB

Question for the day, how common is the given name Elle? I’m really not sure, I don’t believe I’ve ever personally known anyone with that name, and Mongabay doesn’t even include Elle in its listing of girl’s first names, but it does rank Ella (210), Elena (412), Ellie (1198), Elly (2802), and Ellamae (3514) among… Continue Reading

Whose Intent Matters in an Abandonment Claim?

Posted in Advertising, Loss of Rights, TTAB

The Trademark Trial and Appeal Board (TTAB) granted a Petition to Cancel based on an abandonment claim involving a parent-subsidiary relationship. Floorco Enterprises applied for and received a registration for the mark NOBLE HOUSE for “furniture.” Noble House Home Furnishings later applied for the NOBLE HOUSE HOME FURNISHINGS mark for “on-line retail store services featuring… Continue Reading

Scandalous and Disparaging Marks: The Race to the Trademark Office Is On

Posted in Advertising, Branding, Idea Protection, Infringement, Loss of Rights, Non-Traditional Trademarks, Squirrelly Thoughts, Television, Trademarks, TTAB, USPTO

Owners of scandalous, immoral, or disparaging marks are on notice: now is the time to place your $275 bet with the USPTO. And soon, the Trademark Office database may be “NSFW.” Last Thursday, the USPTO issued Examination Guide 01-16 to address the impact of recent federal court decisions on Section 2(a) of the Trademark Act. That section prohibits registration of… Continue Reading

Consent or Not, No Trademark Registration for Brewer’s TIME TRAVELER BLONDE Mark

Posted in Agreements, Almost Advice, Branding, Product Packaging, Trademarks, TTAB, USPTO

When an application has been refused registration in view of another’s prior filed mark, one way to resolve the issue is through a consent agreement wherein the registrant consents to the registration and the parties set out the reasons why the parties believe that there is no likelihood of consumer confusion between the marks.  A… Continue Reading

Kylie v. Kylie

Posted in Dilution, Fashion, Mixed Bag of Nuts, Trademarks, TTAB

Kylie Minogue has filed an opposition to Kylie Jenner’s attempt to register the KYLIE mark in connection with “Advertising services, namely, promoting the brands, goods and services of others; endorsement services, namely, promoting the goods and services of others,” claiming priority and likelihood of confusion, dilution by blurring, and dilution by tarnishment. The opposition calls… Continue Reading

Dude, It’s Gotten GNARLY for Beer and Wine

Posted in Agreements, Almost Advice, Branding, Infringement, Marketing, Product Packaging, Trademarks, TTAB, USPTO

Trademark issues regarding breweries and wineries are increasingly intertwined as both breweries and wineries grow, flower, and spread out throughout the country.  I have talked before about the issues relating to a perceived likelihood of confusion between marks on beer used by breweries and marks on wine used by wineries (see here, here, and here)…. Continue Reading

The Strategic Use of TTAB Proceedings to Advance Trademark Registration Efforts

Posted in Almost Advice, Articles, Trademarks, TTAB, USPTO

Yesterday we wrote about how petitions for partial cancellation under Section 18 of the Lanham Act can be creative and powerful tools when an applicant is confronted with likelihood of confusion registration refusals under Section 2(d), based on over-broad federal registrations. Today, we’re speaking about this important tool that should be found in any trademark… Continue Reading

Thinking Outside Section 2(d) Refusals

Posted in Articles, Infringement, Loss of Rights, Trademark Bullying, Trademarks, TTAB, USPTO

Section 2(d) of the Trademark Act is the statutory basis for refusing registration based on likelihood of confusion with another mark. It is invoked on an ex parte basis by USPTO Examining Attorneys, and it is also raised in the context of inter partes cases between adversaries. When an applicant seeking to register its mark… Continue Reading

Will USPTO Director Michelle Lee’s Signature Adorn a SLANTS Certificate of Registration?

Posted in Articles, Branding, Copyrights, Trademarks, TTAB, USPTO

Let’s hope not, for a variety of reasons. In other words, let’s hope the Supreme Court straightens out the unfortunate ruling last week that the federal government is powerless to deny requests to federally register marks on grounds that they consist of or comprise racial slurs or other matter that may disparage persons. The CAFC… Continue Reading

PATRÓN Tequila Bottle Design Enforcement?

Posted in Advertising, Articles, Branding, Dilution, Famous Marks, Infringement, Marketing, Non-Traditional Trademarks, Product Packaging, Sight, Trademarks, TTAB, USPTO

When we write about non-traditional trademark enforcement here on DuetsBlog, we almost always are referring to the protection of non-traditional marks like product configurations, product containers, product packaging, color marks, scent marks, tactile marks, and other non-verbal indications of source for a product or service. But, today we’re adding a little twist to our normal… Continue Reading

On Mastering U.S. Trademark Registration

Posted in Articles, Branding, Marketing, Trademarks, TTAB, USPTO

For those interested in learning more about the valuable benefits of federal trademark registration and how to successfully navigate the registration process at the USPTO, it’s time to mark your calendars for an upcoming educational opportunity in Minneapolis on Tuesday February 16, 2016. Here is the official brochure for the event, here is an online… Continue Reading

The TAKE YO PANTIES OFF Argument

Posted in Famous Marks, First Amendment, Law Suits, Loss of Rights, Mixed Bag of Nuts, Trademarks, TTAB

  In appealing the cancellation of six trademarks, the Washington Redskins filed their opening brief in the Fourth Circuit this week.  Cancellation of the team’s REDSKINS trademarks was upheld by a federal district court in July.  The marks were deemed “disparaging” under Section 2(a) of the Lanham Act, which denies trademark protection to marks that… Continue Reading

Bud…Bud-WINE-Err?

Posted in Advertising, Branding, Famous Marks, Trademarks, TTAB, USPTO

You might be familiar with the popular mid-90s commercials suggested by the title of this post.  However, the intention of this post is about the use of trademarks on beer to refuse trademark protection for wineries and vice versa, which is an increasing problem for the growing craft alcohol industry. Recently an Austrailian company, Innvopak… Continue Reading

The Board Lends a Blow to Celebrities

Posted in Famous Marks, Fashion, Marketing, Mixed Bag of Nuts, Technology, Trademarks, TTAB

The celebrity known as will.i.am from the musical group the Black Eyed Peas sought to register three marks for “I AM” in connection with cosmetics, cell phones, artificial eyelashes, sunglasses, and brass wrist cuff bracelets, among other goods. In three precedential opinions,the Trademark Trial and Appeal Board (“Board”) refused to register these marks based on… Continue Reading

Ads Touting Function Shoot Down Trademark

Posted in Advertising, Almost Advice, Articles, Branding, Loss of Rights, Marketing, Non-Traditional Trademarks, Patents, Product Configurations, Trademarks, TTAB, USPTO

This isn’t the first time we’ve written about brand owners who shoot themselves in the foot with their advertising. And, I’m sure it won’t be the last. As we’ve discussed before, touting the function of a product design feature can kill any hope of owning non-traditional trademark protection in that feature. The latest example from… Continue Reading

Lego Adds a “Brick” to its Enforcement Strategy

Posted in Fair Use, Infringement, Non-Traditional Trademarks, Product Configurations, Product Packaging, Trademark Bullying, TTAB

The Danish Lego Group is no stranger to trademark disputes. Understandably, Lego enforces its rights in the LEGO mark against third-parties who use LEGO without their permission. Lego also claims trade dress rights in product shape and configuration of its blocks and enforces those rights against other building block manufacturers. Some competitors claim that these… Continue Reading

What Does the Trademark Registration Say?

Posted in Articles, Branding, First Amendment, Trademarks, TTAB, USPTO

Remember a while back when many were humming to the tune “What Does the Fox Say“? Today, I’m asking, what does the trademark registration say? Not, what does the trademark say — that is a different and more complicated question, depending on the specific mark, but at a minimum, answering that question involves the meaning… Continue Reading

Navigating Trademark Oppositions and Cancellation Proceedings at the TTAB

Posted in Articles, Branding, Law Suits, Marketing, Trademarks, TTAB

In case you missed the webinar from last year, we’re having another Strafford IP webinar on “Navigating Trademark Oppositions and Cancellation Proceedings at the TTAB,” next Tuesday August 18, at noon CST. Here are the details for the webinar. This year, we’ll have the benefit of knowing how the Supreme Court decided the B&B Hardware… Continue Reading