Boys baseball occupied a fair portion of my evenings last week and this past weekend, a game where almost everyone has at least heard: The tie goes to the runner (when it comes to running the bases anyway – because when it comes to the final score the game continues until someone wins, even if it takes twenty… Continue Reading
Category Archives: TTAB
Subscribe to TTAB RSS FeedSheetz Flushing Subway’s Footlong TM Hope?
Posted in Branding, Food, Infringement, Law Suits, Marketing, Trademark Bullying, Trademarks, TTAB, USPTOIt has been almost six months since oral argument before the TTAB over the question of whether the word “footlong” is a trademark or a generic name for a type of sandwich. What type of sandwich you ask? One about twice as long as a six inch sandwich, let’s say about twelve inches in length, making it, oh, about a foot long. Needless… Continue Reading
Monster Cable Ordered to Pay Monster Daddy Attorneys Fees in Meritless Appeal
Posted in Contracts, Law Suits, Trademark Bullying, Trademarks, TTABTechdirt has written extensively about why Monster Cable is considered ”somewhat famous as a trademark bully.” Numerous comments to a TTABlog post reinforce this view. One of the examples Mike Masnick over at Techdirt has highlighted is a TTAB case we handled for a Monster Cable victim a few years back, reported here, with pleadings here. This victory led us… Continue Reading
NFL Thwarts Ownership of Harbowl TM
Posted in Trademark Bullying, Trademarks, TTABAs many have written about before me, the NFL is quite protective of its rights in the SUPER BOWL trademark, so much so that some think it has earned the pejorative ”trademark bully” label, so I spilled a little digital ink on the topic last year: Insuring a Great Super Bowl Trademark Fight This year, given the… Continue Reading
No Plaque on This Scope Bottle Trademark
Posted in Branding, Marketing, Non-Traditional Trademarks, Product Packaging, Sight, Trademarks, TTABWould you place this mouth wash bottle on your bathroom counter or hide it under the counter? The answer to this question, it appears, can have a material impact on whether the shape and design of the bottle functions as a non-traditional trademark. The Procter & Gamble Company created this elegant container design — to counter the out-of-sight-out-of-mind… Continue Reading
Camouflage Patterns as Trademarks
Posted in Non-Traditional Trademarks, Trademarks, TTAB–Dan Kelly, Attorney The U.S. Navy seems to have cleared all necessary hurdles to register the camouflage pattern to the right as a trademark for use in connection with uniforms and fabrics. Among the many hurdles that the Navy cleared, one is a refusal on the basis of “ornamentation,” or failure of the proposed design to… Continue Reading
Trademark Fraud Claims Won’t Go Away Despite CAFC’s In re Bose Decision
Posted in Articles, Law Suits, Trademarks, TTAB, USPTOTrademark fraud claims aren’t going away, despite the fact that the Trademark Trial and Appeal Board (TTAB) has not found fraud in a single trademark opposition or cancellation since the Federal Circuit decided In re Bose in 2009, rejecting the prior “knew or should have known” standard in favor of the much more difficult and heightened… Continue Reading
Chick-fil-A’s “Eat More” Stealth USPTO Trademark Enforcement Strategy Succeeds
Posted in Advertising, Articles, Branding, Dilution, Famous Marks, Food, Infringement, Marketing, Trademarks, TTAB, USPTOEating more isn’t necessarily a bad thing. Yeah, I saw the documentary Super Size Me; admittedly, I haven’t viewed certain fast food the same way since, but it all depends on what it is you’re eating, right? Common sense dictates that if it’s good for us, we should eat more of it. Indeed, Lexi Petronis of Glamour writes… Continue Reading
Gone Fishing, in Sin City
Posted in Branding, International, Marketing, Trademark Bullying, Trademarks, TTAB, USPTOSpring break brings my family to Las Vegas this year; when we made the plans, we never anticipated leaving behind better weather in Minneapolis, especially this time of year. Oh, well. At least it isn’t slowing down our hiking adventures in the amazing Red Rock Canyon area. Meanwhile, closer to the strip and all the… Continue Reading
Eat More Anything?
Posted in Advertising, Branding, Food, Infringement, Marketing, Television, Trademark Bullying, Trademarks, TTABAn allegation of trademark bullying is in the news again, this time Chick-fil-A is the accused Goliath – charged with overreaching in its enforcement efforts relating to intellectual property rights in the very clever and creative EAT MOR CHIKIN a/k/a The Cow Campaign and advertisements: Perhaps you’re wondering what aspect of the Cow Campaign Chick-fil-A is seeking to protect?… Continue Reading
Protecting the Least Sophisticated Potential Consumers
Posted in Famous Marks, Infringement, Trademark Bullying, Trademarks, TTABWhen the “trademark bully” epithet is hurled at a trademark owner “caught in the act” of enforcing or otherwise protecting its intellectual property rights, another common accompaniment is the expressed outrage and indignation that no one could ever possibly be confused. Here are a few points worth noting: The test of infringement is likelihood of confusion, not actual confusion. Likelihood of confusion is… Continue Reading
Willa-n-Wella, Living-n-Harmony Now
Posted in Branding, Famous Marks, Infringement, Law Suits, Trademark Bullying, Trademarks, TTABThe New York Times has been following a trademark battle between Christy Prunier’s body and beauty care start-up business apparently geared toward preteen and teenage girls (Willagirl LLC) and industry giant Procter & Gamble, owner of the well-known, if not famous, more than century old WELLA hair care brand, with U.S. trademark rights dating back at least to the early… Continue Reading
Trademark Fraud No More?
Posted in Law Suits, Trademarks, TTABJust over two years ago, we reported on the CAFC’s landmark trademark fraud decision of In re Bose, here, here, and here. In addition, I wrote a piece for Thomson Reuters’ Client Times Online called True Lies, Trademark Fraud, and the Medinol Detour: The Federal Circuit Reverses In re Bose." Our friend, John Welch over at the… Continue Reading
Taste Infringement?
Posted in Advertising, Branding, Food, Guest Bloggers, Infringement, Marketing, Non-Traditional Trademarks, Taste, Trademarks, TTABWe’ve spent some time here discussing the world-famous Coca-Cola brand. Most recently, David Mitchell wrote about the incredible consistency of the Coca-Cola brand over the past 125 years. A while back Dave Taylor wrote a nice Ode to the Brand of Brands, the King of Cola: Coke. And, let’s not forget my humble suggestion that… Continue Reading
Who Owns a Dead Brand?
Posted in Branding, Goodwill, Guest Bloggers, Loss of Rights, Marketing, Trademarks, TTAB- John Reinan, Senior Director at Fast Horse, a Minneapolis marketing agency I love “orphan” cars — the marques that have gone out of business. Most of them are barely remembered by Baby Boomers, much less anyone younger. Packard, Hudson, Nash, Studebaker, Willys – these and other automakers often were stylistically and technically more advanced… Continue Reading
USPTO Issues Report to Congress on Trademark Litigation Tactics (f/k/a/ “Trademark Bullying”)
Posted in Infringement, Trademark Bullying, Trademarks, TTABHat tip to Jack Clifford for providing a copy of the USPTO’s April 27, 2011 Report to Congress, pdf is here. I’ll be certain to circle back with you for another good “trademark bullying” discussion after digesting it.
TryMe? Trademark or Informational Matter?
Posted in Branding, Fair Use, Food, Guest Bloggers, Loss of Rights, Marketing, Trademarks, TTABI’d venture to say that virtually every product sitting on a store shelf is crying out "try me" — some more colorfully than others, some more subtly than others, some more creatively than others, some more persuasively than others. However, most don’t just some out and say the words. Assuming that to be the case, is… Continue Reading
Numbers for Thought & The “Trademark Bully” Debate
Posted in Trademark Bullying, Trademarks, TTAB“Trademark law is a complex, specialized area of law,” according to the International Trademark Association (INTA), as set forth in a recent communication to the USPTO. So, I must ask, does substantial experience or the lack of substantial experience in handling trademark matters impact the current trademark bullying debate? And, if so, how? Here are some interesting numbers… Continue Reading
View Free Webinar Here: Strategies for Dealing With “Trademark Bullies”
Posted in Trademark Bullying, Trademarks, TTABLast month I mentioned a trademark bullying webinar available through Minnesota Continuing Legal Education (MinnCLE), here. Tuition was $95 for 75 minutes of action-packed discussion on this very hot topic, so, a real bargain. Now, MinnCLE is graciously making it available for viewing free, here, so enjoy. (No CLE credit). By way of preview, yours truly set up the topic… Continue Reading
Strategies for Dealing with “Trademark Bullies”
Posted in Infringement, Law Suits, Trademark Bullying, Trademarks, TTABOn Wednesday March 2, 2011, in Minneapolis, Minnesota, at 1:15 PM CST, we’ll be discussing “Strategies for Dealing With “Trademark Bullies” — a pdf of the brochure is here. I’ll be moderating a 75 minute panel discussion with these distinguished speakers: Jacqueline A. Leimer, Chicago-Kent College of Law Mike Masnik, Techdirt Craig Krummen, Winthrop & Weinstine, P.A…. Continue Reading
USPTO Extends Comment Period on “Trademark Bully” Survey
Posted in Infringement, Trademark Bullying, Trademarks, TTABLast October, as you may recall, I wrote this in a post entitled “The Mark of a Real Trademark Bully“: [T]he U.S. Patent and Trademark Office (USPTO) is currently seeking information about various litigation tactics, including whether “you think trademark “bullies” are currently a problem for trademark owners, and if so, how significant is the problem?” If you have… Continue Reading
Foreign Equivalents?
Posted in Branding, Infringement, Trademark Bullying, Trademarks, TTABSeems as though any trademark owner who sends a cease and desist letter is bound to be called a trademark bully by someone. In fact, the USPTO has extended the period for comments by a month with a new deadline of February 7, 2011. If you had started selling shirts, pants, and under the trademark and brand KAKATOO,… Continue Reading
Trademark Bullies Beware the Seventh Circuit
Posted in Infringement, Law Suits, Trademark Bullying, Trademarks, TTABActually, not just the Seventh Circuit Court of Appeals (governing appeals from the federal district courts in Illinois, Indiana, and Wisconsin), but the Seventh Circuit is the most recent to reaffirm that our current legal system does, in fact, provide protection against real “trademark bullies” — and more generally — those who abuse the legal process with unfounded Lanham Act claims…. Continue Reading
A Good Old-Fashioned Priority Fight
Posted in Almost Advice, Trademarks, TTAB–Dan Kelly, Attorney The Trademark Trial and Appeal Board issued a rare decision at the end of last month in the case of Weatherford/Lamb, Inc. v. C&J Energy Services, Inc. The two companies offer, among other things, oil and gas well fracturing services (explanation here). Weatherford uses the trademark FRACSURE for its services, and C&J… Continue Reading
Duets Blog Authors
Steve Baird
Just so you know, I'm all about brands and the law, both professionally and personally. I regularly annoy family and friends in retail stores by focusing on product labels—not to buy the product, but to read the fine print and ask, "Who owns these brands" and "Did they really register those marks?" More...
Brent Lorentz
Although I wish I could say my path to the law was the result of a lifelong dream or calling, it was more the result mere curiosity and an affinity for leather-bound books. More...
Tiffany Blofield
Although my initial career path was to be one of the Supremes (not the musically talented ones with platform shoes and sequins, but rather, the nine wearing sensible shoes and pressed black robes in DC), I will likely stay in Minnesota as I have never lived anywhere else. More...
Brad Walz
My law career started on the ice…as a defensive hockey player (we’re not talking professionally…and if I were, I probably wouldn’t have gotten into law). More...
Derek Allen
In hindsight, writing about creativity and the law may have always been in the cards for me. I began training for a career in litigation at an early age by finding ways to disagree with pretty much anyone about pretty much anything. In my longest-running “case,” I argued with my middle school math teacher, Mrs. Jabs, for the better part of four years over whether, even if I got the right answer, I had to show my work to get full credit. More...
Martha Engel
Although my interest in gadgetry and my aptitude for math eventually led me to become an engineer, my ad executive father and artistically gifted mother fostered an appreciation for the creative from a young age. More...
Anjali Shankar
When I was in elementary and middle school, I loved writing short stories. Creativity and imagination seem to come naturally to people when they are young. More...
Timothy Sitzmann
I have always considered myself to be a creative person. Full disclosure: I'm not claiming that I've created anything good, merely that I have created things that exist.More...
Cathleen Dahl
Trademarks and I met through a small job advertisement in the back of a local newspaper, and little did I know that I would spend the next 18 years (and counting) deriving a living from their existence and importance. More...