Posts Tagged: "Trademark Trial and Appeal Board"

In Lyons v. American College of Veterinary Sports Medicine the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (“Board”) cancellation of Sheila Lyons’s registration of the service mark, THE AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND REHABILITATION (“the mark”) on the Supplemental Register on the grounds that she does not own the mark… Ownership of a service mark, as between a group and a departing member, depends on the objective intentions and expectations of the parties and on who the public associates with the mark and stands behind the quality of services offered under the mark.

The Federal Circuit vacated and remanded the Trademark Trial and Appeal Board’s decision to deny the trademark cancellation petition, finding that the Board used an incorrect standard for “fame” in its likelihood of confusion analysis… The Court rejected the Board’s all-or-nothing analysis, holding that it must consider all of the relevant confusion factors, on a scale appropriate to their merits, under the totality of the circumstances. It explained that the proper legal standard for evaluating the fame of a mark is the class of customers and potential customers of a product or service, not the general public…

The Supreme Court heard oral argument on the cloudy Wednesday morning of January 18, 2017. Although the Justices posed tough questions and intricate hypotheticals to both sides, the tone of each Justice’s questions and their individual jurisprudences indicate an even 4-4 split, with Justices Breyer, Ginsberg, Kagan, and Sotomayor favoring the USPTO, and Justices Alito, Kennedy, Thomas, and Chief Justice Roberts favoring Tam. Of course, oral argument is often shaky, at best, when predicting the outcome of a case, especially one with such potential for a drastic overhaul of a body of law… Although no one can know for certain the outcome of Lee v. Tam, one consequence that appears very likely is that, if the Court does rule in favor Tam, it would strike the entirety of Section 2(a), not just the portion prohibiting disparaging marks that forms the central issue of the case. John C. Connell, counsel for Tam, went so far as to call that result “inevitable” in response to Justice Ginsberg’s question on the topic.

In April 2015, the National Basketball Association’s Milwaukee Bucks announced that it was in the midst of a project to redesign the team’s logo. Reports indicated that the logo would retain a version of the deer’s head which had graced the team’s previous logo, but with a new green and cream color scheme… The TTAB petition filed by Jägermeister identifies a series of eight U.S. trademarks held by the liqueur maker as grounds for opposition to the Bucks’ ‘186 trademark application. The vast majority of these marks have only been registered for use in trademark class 33 which covers alcoholic beverages except for beers.

The Federal Circuit vacated the Trademark Trial and Appeal Board’s (“Board”) cancellation of two JobDiva service mark registrations—one in whole and the other in part—and remanded for further consideration. As the Court pointed out in its opinion, JobDiva could have avoided the issues in this case by initially registering “marks to identify both software and services performed by software.” Practitioners should take care to register a mark for all goods and services for which the mark may be used.

Instagram’s TTAB action targets U.S. Trademark Application No. 86663305, which would protect Microsoft’s use of the standard character mark “ACTIONGRAM” on goods including computer software for virtual reality realization, manipulation, immersion and integration of audio, video, text, binary, still images, graphics and multimedia files, as well as computer software for controlling wearable hardware and wearable computer peripherals. The application for this trademark was filed in June 2015. Microsoft is currently offering a beta version of Actiongram, a virtual reality service for Hololens users where users can create holograms which they can share with social contacts.

A decision to deny trademark registration for two marks to be used on marijuana related goods was handed down in late October by the USPTO’s Trademark Trial and Appeal Board. On October 27th, a TTAB judicial panel decided In re JJ206, LLC by refusing to register two trademarks which were being sought by JUJU Joints, a developer of pre-loaded cannabis oil devices. TTAB affirmed trademark examiner decisions that two standard character marks, “POWERED BY JUJU” and “JUJU JOINTS” cannot be registered for federal trademark protection “because Applicant’s identified goods constitute illegal drug paraphernalia under the [Controlled Substances Act].” JUJU Joints was seeking to use the marks in commerce for goods such as smokeless cannabis vaporizing apparatuses and cannabis delivery devices.

The Federal Circuit reversed the cancellation of two trademarks by the Trademark Trial and Appeal Board (“Board”) and remanded for further consideration… “Use in commerce” under the Lanham Act encompasses any activity that falls under Congress’s Commerce Clause power, including in-state sales to an out-of-state resident. Activities that are within such regulatory authority are unlikely to be disqualified as merely “de minimis,” e.g. in economic impact.

Cubs fans have been able to “fly the W” a number of times this postseason, referring to the win flag that is raised at Wrigley Stadium after every Cubs win. This “W” forms the basis of another TTAB challenge recently filed by the baseball organization. On the same day that it filed a TTAB challenge against CopyClear, the Cubs also filed a petition challenging U.S. Trademark Serial No. 86705124, a mark filed last July 2015 by design firm Laserwave Graphics of New Brunswick, NJ. It covers the use of an illustration including wording which consists of a large stylized “W” within a circle. Laserwave Graphics has registered the mark to be used on watches, including jewelry watches and watch parts, online retail store services featuring watches and providing a website featuring computer application software which can be used to design and purchase watches.

The Trademark Trial and Appeal Board (TTAB or the Board) Rules of Practice will change on January 14, 2017. The new rules will be applicable to all inter partes (oppositions, cancellations, concurrent use) and ex parte appeal proceedings, including those pending on January 14, 2017. The main changes to be aware of are outlined below:

Subsidiaries of larger companies who are preparing to file a trademark application may want to think twice before deciding who to list as the Applicant. In April 2016, The United States Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) issued a precedential decision canceling the trademark registration of a subsidiary because the parent company was the only one using the mark… Given the outcome of this cancellation action, companies with multiple entities should be on alert. Companies should first confirm that the entity actually using and controlling the mark is the one listed on the registration. If not, to avoid cancellation of the trademark, the entities should consider entering into a trademark license or an assignment.

Based on the question presented in Lee v. Tam, the Supreme Court made clear that its grant of review is only as to the disparagement provision in Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), but the outcome of this case will affect the other types of marks excluded by Section 2(a), such as marks that may be viewed as immoral or scandalous. Indeed, in a footnote in its en banc decision the Federal Circuit “recognized…that other portions of § 2 may likewise constitute government regulation of expression based on message, such as the exclusions of immoral or scandalous marks….”

Oakville Hills Cellar, Inc. (“Oakville”), doing business as Dalla Valle Vineyards, appealed from the decision of the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) dismissing its opposition to a trademark application filed by Georgallis Holdings, LLC (“Georgallis”) to register a MAYARI mark for use on wine. Oakville had previously registered the mark MAYA, also for wine. Because there was substantial evidence to support the finding of the TTAB that there would be no likelihood of confusion, the Federal Circuit affirmed a registration of the mark MAYARI for wine products, affirming the TTAB’s decision and dismissing Oakville’s opposition.

In a May 13, 2016 decision, the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision upholding an Examiner’s denial of registration based on a finding that the term CHURRASCOS was generic as used for a restaurant, because the word “refer[s] to beef or grilled meat more generally” and that the term “identifies a key characteristic or feature of the restaurant services, namely, the type of restaurant.”

Two cases making their way through the Federal courts may force the Supreme Court to consider the issue of what sorts of trademarks should be considered “disparaging,” and whether the government may lawfully prevent the registration of such trademarks… The Redskins appealed to the Fourth Circuit in August 2015 and the parties’ and amici briefs have been rolling ever since. As of April 25, 2016, the Redskins have petitioned the United States Supreme Court to review their case, skipping over the Fourth Circuit Court of Appeal.