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IP Law Alert

Practical Perspectives on Intellectual Property Legal Developments

Tag Archives: Trademark Prosecution”

Washington Redskins Seek Reversal of TTAB Decision Canceling its Trademark Registrations

Posted in Trademark
On August 14, 2014, Pro-Football, Inc. (“Pro-Football”) appealed the Trademark Trial and Appeal Board’s (“TTAB”) June 18, 2014 decision to cancel its registrations for six REDSKIN-formative trademarks. As we previously reported, the TTAB’s 2-1 decision found that those trademarks were not entitled to be registered on the basis that a “substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with [the football team’s] services” during the time period when registration was sought… Continue Reading

McDonald’s Triumphs over BioMcDiesel

Posted in Trademark, USPTO
On July 14, 2014, the United States Trademark Trial and Appeal Board (TTAB) found the trademark “BioMcDiesel” for biodiesel fuel likely to cause confusion with McDonald’s Corporation’s (“McDonald’s”) famous family of MC-formative trademarks. McDonald’s Corporation v. Joel D. Joseph, Opposition No. 91194117 (July 14, 2014) [not precedential]. The applicant, Joel Joseph, appeared pro se to defend his application, which was based on intent to use. McDonald’s challenged the application on three bases under the Lanham Act, namely, likelihood of confusion under Section 2(d), dilution under Sections 13 and 43(c), and on the basis that Mr. Joseph filed the application in bad faith, in that he lacked a bona fide intent to use the mark and solely filed the application for the purpose of selling or licensing the mark to McDonald’s. The TTAB’s decision addressed only the likelihood of confusion claim, and found the “BioMcDiesel” mark was not entitled to registration… Continue Reading

USPTO Cancels Washington Redskins’ Trademark Registrations

Posted in Trademark
Earlier today, six trademark registrations for the Washington Redskins football team were cancelled on the basis that they are disparaging. In the long-awaited decision of Blackhorse v. Pro-Football, Inc., the Trademark Trial and Appeal Board (“TTAB”) found that the petitioners had shown “by a preponderance of the evidence that a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with [the football team’s] services” during the time period when registration was sought… Continue Reading

Coach Loses Design Mark Battle Against E&D Trading, Inc.

Posted in Trademark
Coach Services, Inc., of the design house offering handbags, footwear and other luxury goods, recently lost a design mark battle challenging registerability of E&D Trading, Inc.'s ("E&D") mark for DP in stylized format (the "Challenged Mark") on the basis that it is likely to cause confusion with Coach's federally registered "Signature C Design" marks. The parties' marks both cover eyewear, among other goods. Coach's protest was lodged with the Trademark Trial and Appeal Board ("TTAB"), an administrative body that is part of the Trademark Office and has authority to rule on challenges to registerability of marks, among other issues. TTAB proceedings and procedure are governed by the Federal Rules of Civil Procedure, as well as the detailed rules set forth in the TTAB's Manual of Procedure ("TBMP")… Continue Reading

Free Speech May Allow Disparagement, but the Trademark Office Does Not: TTAB Affirms Refusal to Register STOP THE ISLAMISATION OF AMERICA

Posted in Trademark
On February 7, 2013, the Trademark Trial and Appeal Board affirmed the refusal to register the mark, STOP THE ISLAMISATION OF AMERICA, for "providing information regarding understanding and preventing terrorism" on the basis that the mark "may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols." The registration of disparaging marks is explicitly prohibited by Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a)… Continue Reading

The Trademark Rush Continues: HARBOWL and KAEPERNICK ….

Posted in Trademark
The upcoming Super Bowl, pitting San Francisco 49ers Head Coach Jim Harbaugh against his older brother, Baltimore Ravens Head Coach John Harbaugh, has been dubbed "Harbowl" by some. An individual in Rockville, Maryland is attempting to take this name to a new level, by filing a federal trademark application for use of the mark "HarBowl" on athletic apparel… Continue Reading

New USPTO Filing Fees Announced ….

Posted in Patent
IP practitioners are well aware of the new rules heralded by the America Invents Act ("AIA"). Section 10 of the AIA authorizes the Director of the USPTO to set or adjust any patent fees under Title 35 or Title 15 of the United States Code to "recover the aggregate estimated costs to the Office for processing, activities, services, and materials relating to patents... and trademarks..., including administrative costs of the Office with respect to such patent or trademark fees." Beginning on March 19, 2013, new fees will be instated, as published Friday, January 18, 2013, in the Code of Federal Registration, 37 C.F.R. Parts 1, 41, and 42 ("CFR")… Continue Reading

The GOLD GLOVE Trademark Infringement Action: Will Rawlings Strike Out For Failure to Adequately Plead Its Case?

Posted in Trade Dress
On January 7, 2013, Cincinnati Reds second baseman, and three-time Gold Glove Award-winner, Brandon Phillips, moved to dismiss Rawlings Sporting Goods Co. Inc.'s ("Rawlings") trademark infringement action arising from his use of a glove with gold-colored features… Continue Reading

Tim Tebow Time in the Trademark Office . . . .

Posted in Trademark
The U.S. Patent and Trademark Office ("PTO") recently published for opposition the mark TIM TEBOW. The applicant for the mark in these various goods and services is XV Enterprises LLC of Denver, Colorado, who has indicated that Tim Tebow, the two-time Heisman Trophy winner and New York Jets quarterback (formerly with the Denver Broncos), has consented to the applications… Continue Reading

Declaratory Judgment Suit Over ROHAN Trademark

Posted in Trademark
D'Artagnan Trademarks LLC, ("DT") recently sued the Saul Zaentz Company ("SZ") in the District of New Jersey regarding the trademark ROHAN. In December 2011, DT filed a trademark application for ROHAN in connection with the sale of poultry, namely, duck. The PTO approved the application and SZ opposed its registration when it published for opposition in late March. SZ alleged that it has exclusive rights to certain trademarks (the "Marks") derived from the trilogy of books known as "The Lord of the Rings," by J.R.R. Tolkien. Readers might recall that in the books, "Rohan" is a fictional realm within the fantasy world of the stories. SZ alleges it owns federal trademark registrations for ROHAN, RIDERS OF ROHAN and ROHAN NUTRITION, relating to animal feed and feed supplements for horses, plastic figurines for use with table top hobby battle games, and website services about computer games. SZ has a number of licensees using these marks… Continue Reading

Already v. Nike: Petitioner’s Brief Asserts that Jurisdiction Remains Despite Covenant Not to Sue

Posted in Patent, Trademark
In a prior blog, we reported that the Supreme Court had granted certiorari in Already, LLC dba Yums v. Nike, Inc., No. 11-982, to an appeal from the Second Circuit's decision affirming the Southern District of New York's holding that a covenant not to sue entered in a trademark dispute ended the case and controversy between the parties… Continue Reading

ICANN Releases Listing of gTLD Applications

Posted in Trademark
Today, ICANN, the Internet's domain name registration watch dog, will publish a listing of nearly 1,900 new generic Top-Level Domains ("gTLDs") that may be approved for use as early as March 2013. We previously wrote about ICANN's expansion program and suggested safeguards that companies could implement to protect themselves… Continue Reading

Protecting Your Company – Trademark Basics You Need to Know

Posted in Trademark
The Gibbons Women's Initiative is hosting an upcoming program for in-house counsel entitled, "Protecting Your Company - Trademark Basics You Need to Know," on Thursday, March 8 from 8:30 - 10:15 am at Gibbons Newark Office. This program will feature Catherine M. Clayton, a Director in the Gibbons Intellectual Property Department, who leads the firm's trademark practice. Ms. Clayton has a broad range of experience in trademark and copyright law, and her practice encompasses litigation, licensing and prosecution… Continue Reading

The “Linsanity” Continues …..

Posted in Trademark
The New York Knicks' rising superstar point guard, Jeremy Lin, continues to wow fans around the world. Lin's NBA ascent also has prompted a rush to the Trademark Office. Over 20 applications for word marks that bear the letters L-I-N already have been filed. These include LIN-SATIONAL; ALL LIN; LINSPIRATION; I'M A LINNER; LINSOMNIA: LINCREDIBLE; and other derivations using the star's last name. The frenzy began with applications for the seemingly ubiquitous LINSANITY catch phrase, which were filed on February 7 and February 9, as the star's career took off. Most of the applications to date have been filed on an intent to use basis, that is, the applicant has expressed a bona fide intent to use the mark in interstate commerce… Continue Reading
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