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Category Archives: TTAB

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Bo Knows, How To Beat a Trademark Bully

Posted in Advertising, Articles, Branding, Food, Marketing, Social Media, Trademark Bullying, Trademarks, TTAB, USPTO

This Bo might not have won the Heisman Trophy, he might not have played in the NFL or MLB, he might not have enjoyed a lucrative Nike endorsement deal, and he might not have been named ESPN’s greatest athlete of all time, but this Bo — the defiant Vermonter, a/k/a Bo Muller-Moore, knows how to… Continue Reading

Channeling Justice Ginsburg of U.S. Supreme Court on the Right to Register a Trademark

Posted in Articles, Branding, Civil Procedure, Infringement, Law Suits, Trademarks, TTAB, USPTO

We sounded the alarm exactly six months ago about a trademark case of great importance to brand owners: B&B Hardware v. Hargis Industries. Earlier this week, the U.S. Supreme Court heard oral argument in the case, and here is a link to the transcript (hat tip to Draeke). As you will recall, our concern in… Continue Reading

Does the United States Patent and Trademark Office Perpetuate Sexism in Branding?

Posted in Advertising, Branding, First Amendment, Guest Bloggers, Marketing, Mixed Bag of Nuts, Trademarks, TTAB, USPTO

- Draeke Weseman, Weseman Law Office, PLLC Now the dilemma…what to name the place. Simple. What else brings a gleam to men’s eyes everywhere besides beer, chicken wings and an occasional winning football season? Hence the name Hooters. Supposedly they were into owls. Strange. — Hooters  This NFL season, civil rights advocates continue to make… Continue Reading

Reeejected!

Posted in Almost Advice, Trademark Bullying, TTAB

Think an undefended opposition proceeding is a slam dunk, then you better think again.  In Emminence, LLC v. Lisa Kelly, Opposition No. 91205286 (October 8, 2014), the Trademark Trial and Appeal Board dismissed an opposition proceeding even though the defendant did not offer any evidence or even a trial brief in support of her case…. Continue Reading

When is a Flavor/Taste Trademark Possible?

Posted in Articles, Food, Infringement, Law Suits, Non-Traditional Trademarks, Sight, Taste, Trademarks, TTAB, USPTO

Are your intellectual taste buds craving more discussion of non-traditional trademarks? It’s not every day we have the opportunity to write about a restaurant’s claimed trademark protection for the flavor or taste of certain food dishes and a restaurant’s claimed trade dress in the chef’s unique plating or visual presentation or appearance of certain food… Continue Reading

Gibson Guitar Facing 15 Trademark Opposers

Posted in Articles, Audio, Genericide, Loss of Rights, Non-Traditional Trademarks, Product Configurations, Sight, Trademarks, TTAB, USPTO

A brand owner’s non-traditional trademark application will sometimes gain the critical attention of multiple direct competitors. Gibson Guitar’s unlucky number is apparently fifteen. Last Thursday, Gibson’s guitar configuration application shown to the right and below was opposed by far more competitors than it has strings on the above ebony Gibson ES-339 Studio Electric Guitar: U.S…. Continue Reading

Amy, Whatcha Wanna Do (About this TM)?

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

As we start to think about welcoming in the weekend, why don’t we all hum this Pure Prairie League tune, while viewing this image and reading this very brief blog post: As this image (that I snapped this morning) shows, the skyway in downtown Minneapolis is sporting a relatively new snack shop called Amy’s. I’m… Continue Reading

Converse: Stomping Out Counterfeits through Int’l Trade Commission Proceedings

Posted in Articles, Counterfeits, Famous Marks, Fashion, Infringement, Law Suits, Non-Traditional Trademarks, Product Configurations, Trademarks, TTAB, USPTO

Earlier this week, Converse launched an all-out offensive to combat what it considers counterfeit and knock-off versions of its Chuck Taylor All-Star line of sneakers. Reports peg the number as at least 22 separate lawsuits against more than 30 companies, both in district court and at the International Trade Commission (the “ITC”). The defendants read… Continue Reading

You Can McDo It, But You Might Get McSued.

Posted in Famous Marks, Infringement, Trademarks, TTAB

Shares in McDonald’s jumped surprisingly high earlier this week, causing some to wonder whether any notable investors might be involved, possibly with inside information. Or maybe it was somebody hoping to get an inside track on McDonald’s Monopoly game, which began yesterday (do the stock certificates come with as many peel-off game pieces as a… Continue Reading

Coca-Cola’s Significant Interest in Zero Marks

Posted in Articles, Branding, Food, Genericide, Infringement, Law Suits, Loss of Rights, Marketing, Trademarks, TTAB, USPTO

Coca-Cola just announced it is introducing Coke Zero in India, which will make it the sub-brand’s 149th market in the world, a truly remarkable reach. As the popular Coke Zero brand is approaching its tenth anniversary in the U.S., it seems like a good time to explore Coca-Cola’s trademark position in COKE ZERO and COCA-COLA… Continue Reading

Amici Weigh in on “Right to Register v. Right to Use” Trademark Case at Supreme Court

Posted in Articles, Infringement, Law Suits, Trademarks, TTAB, USPTO

More than three months ago, we sounded the alarm about an important trademark case to consider the interplay between the right to register and the right to use a trademark: “Every so often there is a moment when trademark types, marketing types and brand owners need to pay close attention to where the law could be headed. Today, I’m… Continue Reading

Will Chick-fil-A, uh Chicken Out?

Posted in Almost Advice, Articles, Branding, Food, Genericide, Loss of Rights, Marketing, Social Media, Social Networking, Trademark Bullying, Trademarks, TTAB, USPTO

Just so you know, this is not the post I planned to write today. Hat tip to you, Bo! It has been exactly one year since Bo Muller-Moore — the “Eat More Kale” guy from Vermont — submitted a comprehensive 71-page response to the registration refusal based on “Eat Mor Chikin” issued by the USPTO… Continue Reading

Role Reversal: David Bullying Goliath?

Posted in Branding, Famous Marks, Goodwill, Infringement, Marketing, Trademark Bullying, Trademarks, TTAB

When claims of trademark infringement make the news, it is often because a billion dollar corporation is suing old man Donaldson’s tavern for trademark infringement (Although, McDonaldson’s might have been a bad choice…).  You’ve got your Ikeas, your Googles, Chick-fil-As, and your NFLs of course (not the National Forensics League, they’re cool).  David can fight back and win, but David… Continue Reading

Trademark Pronunciation Revisited

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

Remember this little gem on trademark pronunciation from the DuetsBlog archives two years ago? Open Wide and Say Ahh: Probing Brand Name & Trademark Pronunciation Judging from a search of Google, the JD Supra version of this post has gotten lots of traction. Well, a few weeks ago the Court of Appeals for the Federal Circuit (CAFC) issued an interesting… Continue Reading

Navigating Trademark Oppositions and Cancellation Proceedings at the TTAB

Posted in Articles, Law Suits, Trademarks, TTAB, USPTO

Please join me for a live and informative 90 minute Strafford law webinar a week from tomorrow, on Wednesday August 13, at noon CST. The topic to be covered is “Navigating Trademark Oppositions and Cancellation Proceedings at the TTAB,” and here is a link for more information. For the discussion, I’m joined by two very capable TTAB… Continue Reading

Harley-Davidson Booze Coming Soon?

Posted in Branding, Food, Marketing, Non-Traditional Trademarks, Trademarks, TTAB, USPTO

With the 74th Anniversary of the famous Sturgis Motorcycle Rally less than a week away, it seemed like a good time to check in on recent Harley-Davidson trademark activity at the USPTO. As it turns out, a very interesting intent-to-use trademark application was filed just two weeks ago, seeking federal registration of the world-famous HARLEY-DAVIDSON word mark… Continue Reading

Dethroning a Right to Register a Trademark?

Posted in Agreements, Articles, Branding, Contracts, Dilution, Famous Marks, Infringement, Marketing, Trademark Bullying, Trademarks, TTAB, USPTO

Last month, you will recall we wrote about the important difference between the right to register a trademark and the right to use a trademark, here and here. Despite the fact that in most cases, a “likelihood of confusion” test governs both determinations, the right to use and the right to register are not necessarily coextensive rights – defeating… Continue Reading

Brewing Brewery Brawl: Busch Not Happy with NATTY

Posted in Advertising, Branding, Dilution, Infringement, Marketing, Trademark Bullying, Trademarks, TTAB, USPTO

You know that beer that you would drink in a basement, but now that you acknowledge that you are actually an adult, you would not be caught dead buying in a liquor store or requesting at a bar or restaurant?  We’ve all got one.  Having spent my college drinking days in “the good land”, my… Continue Reading

Trademark Disparagement Kills the R-Word

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

My father-daughter time was wonderful in London when the news hit about the USPTO ordering cancellation of the six ”Washington Redskins” trademarks as disparaging to Native Americans. Thanks for your patience in waiting for my perspective on the subject — you know I’m thrilled if you know me well, if you know of my involvement in the… Continue Reading

Rubber Hits the Road: Rust-Oleum Trademark Case Leaves TTAB for Minnesota Federal Court

Posted in Agreements, Articles, Civil Procedure, Infringement, Law Suits, Product Packaging, Trademarks, TTAB, USPTO

Lately we’ve been discussing more and more the difference between the right to register a trademark and the right to use a trademark. In many trademark disputes the perfect forum for an amicable resolution is the Trademark Trial and Appeal Board (TTAB) of the USPTO. The TTAB can be a cost effective forum for parties to achieve… Continue Reading

(Just) the Right to Register a Trademark

Posted in Articles, Branding, Civil Procedure, Infringement, Law Suits, SoapBox, Trademarks, TTAB, USPTO

Every so often there is a moment when trademark types, marketing types and brand owners need to pay close attention to where the law could be headed. Today, I’m sounding the alarm. If the U.S. Supreme Court decides to follow the advice it recently sought and received from the U.S. Solicitor General (SG) of the Department of Justice, those of… Continue Reading

SKEE THE PEOPLE: Bar games, brewskies, and trademark disputes

Posted in Genericide, Social Media, Trademark Bullying, Trademarks, TTAB, USPTO

In addition of course to good beer and good friends, a good bar for me is defined by a good game: photo hunt (the NSFW version) and foosball at Murphy’s, bar olympics at Steny’s (where I dominated at the tricycle races), volleyball at Fat Daddy’s, bocce ball in the basement of Half Time Rec, lawn… Continue Reading

Pretzel Crisps Genericness Decision Appealed

Posted in Articles, Branding, Food, Genericide, Loss of Rights, Product Packaging, Trademarks, TTAB

A couple of months ago you will recall that the USPTO’s Trademark Trial and Appeal Board (TTAB) held ”Pretzel Crisps” generic for pretzel crackers. Here are links to our previous coverage of the case: Packaging that Kills (a Trademark) Crisps = Chips = Crackers? A Picture is Worth a Thousand Words Tie Goes to the Brand or Generic Name?… Continue Reading