Category Archive: TTAB Practice

Nike sued competitor Already (dba Yums) in New York federal court for infringement of its registered trade dress in the super popular Air Force 1 footwear, an example of which is shown above. Yums filed counterclaims for declaratory relief that there was no infringement and that Nike’s Air Force 1 trade dress was invalid, seeking …

Continue reading »

Permanent link to this article: http://cobaltlaw.com/supreme-court-rules-on-trade-dress-dispute-already-v-nike-broad-covenants-not-to-sue-just-do-it-sort-of/

The TTAB recently released a non-precedential opinion cancelling registration of this mark, and rejecting registrant’s parody defense. Where will this opinion fall in the lineup of parody cases? The opinion arose out of Polo Ralph Lauren Corporation’s cancellation proceeding against Thread Pit, Inc.’s registration of the above-referenced mark in connection with t-shirts and collared polo …

Continue reading »

Permanent link to this article: http://cobaltlaw.com/the-boards-not-horsing-around/

Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111 (TTAB 2010) [precedential] While FIAT is quite a well-known brand in Europe and other regions of the world, cars made by the Italian company aren’t all available in the U.S.… yet (Fiat reportedly has plans to bring more of its small car models to the …

Continue reading »

Permanent link to this article: http://cobaltlaw.com/the-ttab-issues-a-fiat-on-fiat-foreign-company-might-be-able-to-rely-on-fame-of-the-mark-abroad-even-without-current-use-in-the-u-s-market-provided-it-pleads-properly-and-has-intended-use/

The Trademark Trial and Appeal Board has sustained Opposer, shoe maven Kenneth Cole’s contention that LE TIGRE for clothing is confusingly similar to Applicant’s use of LE TIGRE for pens. Cole failed to establish that its LE TIGRE mark was famous. The Board pointed out that Cole had not provided sales data or advertising information …

Continue reading »

Permanent link to this article: http://cobaltlaw.com/kenneth-cole-gives-pen-maker-the-boot-over-le-tigre-trademark/

Gary Benson might not remember Serpentine Fire, but he sure felt the heat when the Trademark Trial and Appeal Board sided with Maurice White and rejected Benson’s application to register “WE NEED A REBIRTH OF THE EARTH. EARTH, WIND, AND FIRE (and Design)”. Benson applied to register the foregoing mark for arranging concerts with ecological …

Continue reading »

Permanent link to this article: http://cobaltlaw.com/earth-wind-fire-has-trademark-applicant-singing-the-blues/

Major League Baseball is calling foul on Don Mattingly and has let him know with their own sentiment: an opposition. MLB is not happy with Mattingly’s choice of logo, claiming in large part that the logo is confusingly similar to its well-recognized MLB logo. This is not the first inning. In fact, MLB took its …

Continue reading »

Permanent link to this article: http://cobaltlaw.com/don-mattingly-may-strike-out-with-new-baseball-logo/

In re General Technologies, Inc., Serial Nos. 77052472 and 77052485 (July 23, 2009) While never inherently distinctive, a color can function (and register) as a trademark if the applicant can show that the color has acquired secondary meaning and that it is not functional; meaning that the purchasing public identifies the color with the source …

Continue reading »

Permanent link to this article: http://cobaltlaw.com/registering-color-as-trademark-continues-to-be-an-uphill-battle-ttab-refuses-to-register-color-maroon-for-steel-anchors-for-lack-of-acquired-distinctiveness/

OpBiz, LLC hearts The TTAB, which ruled recently that OpBiz’ application to register HEART for “cocktail lounges, restaurant and bar services” was not confusingly similar to the registration KOKORO for “restaurant service.” In deciding the matter, the TTAB underscored a position it has taken in the past, namely, that the doctrine of foreign equivalents may …

Continue reading »

Permanent link to this article: http://cobaltlaw.com/ttab-has-a-heart-for-applicant-finding-the-mark-is-not-the-foreign-equivalent-of-the-japanese-trademark-kokoro/

It’s tempting to do, but according to the Federal Circuit, use just ain’t use in commerce until it’s a bona fide offer for sale to the actual intended purchasing public. Theoretical ability to provide the service, brochures that never got sent, and business plans showing intent are not sufficient to establish use. Aycock Engineering, Inc., …

Continue reading »

Permanent link to this article: http://cobaltlaw.com/air-taxi-company-gets-grounded-in-federal-court-for-fudging-use-in-commerce-dates/

If we didn’t learn the Trademark Trial and Appeal Board was prickly when it comes to procedure from the Blue Man case, we just got another lesson. The Board is handing out some more tough love on counsel. In the precedential decision, Syngenta Crop Protection, Inc. v. Bio-Chek, LLC (Opposition No. 91175091, March 12, 2009), …

Continue reading »

Permanent link to this article: http://cobaltlaw.com/the-ptos-not-just-another-pretty-federal-face-rules-the-ttab-it-tosses-out-opposition-for-procedural-failures/

Older posts «