In In re Nielsen Business Media, the Trademark Trial and Appeals Board ("TTAB") affirmed an examining attorney's refusal to register a mark under Section 2(e)(1) of the Trademark Act. After considering and rejecting the applicant's claim that the acquired distinctiveness of the applicant's previously registered marks could "tack" onto the new mark, the TTAB agreed with the examiner's finding that the mark THE BOLLYWOOD REPORTER (Serial Nos. 77223725 and 77223738) for entertainment news papers and online publications was merely descriptive of the goods. (more...)
Archive for the ‘United States: Trademarks’ Category
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TTAB rules minimual evidence of actual confusion suffuicent for summary judgemnt on liklihood of confusion where mark identical to prior famous mark used on identical goods
In Texas Department of Transportation v. Richard Tucker, the Trademark Trial and Appeal Board ("TTAB") unanimously granted the Texas Department of Transportation's ("TxDOT") motion for summary judgment, holding no genuine issue of material fact existed and Richard Tucker's ("Tucker") mark was likely to cause confusion.
TxDOT and Tucker both claimed use of and registered the same mark, "DON'T MESS WITH TEXAS" for goods, specifically clothing. TxDOT, claiming priority of use and a likelihood of confusion under 15 U.S.C. § 1052, filed a petition to cancel Tucker's registration and a notice of opposition against Tucker's pending application under 15 U.S.C. § 1064 and 15 U.S.C. § 1063 respectively. The two cases were consolidated. (more...)
CAFC holds Cancellation Petitioner Has Initial Burden to Overcome Presumption of Registered Mark’s Acquired Distinctiveness Since Under 37 C.F.R. 2.122 Application File Is Part of Evidence Record
In The Cold War Museum, Inc. v. Cold War Air Museum, Inc. the Court of Appeals for the Federal Circuit ("CAFC") reversed the Trademark Trial and Appeal Board's ("TTAB") decision (#92047391), which had cancelled the registration of the Cold War Museum's service mark THE COLD WAR MUSEUM (Serial 76487216).
The TTAB had initially dealt with the issue of whether the registrant's Cold War Museum's service mark had acquired distinctiveness and was registrable pursuant to section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f). However, the TTAB erred in cancelling the registration after it held registrant Cold War Museum had not proven the acquired distinctiveness of its mark. The CAFC, upon de novo review of the TTAB's legal conclusions, reversed the decision. (more...)
TTAB Reverses Examiner’s finding of confusion citing arbitrary meaning of VOLTA, non-relatedness of vodka and wine
In In re White Rock Distilleries, Inc., the Trademark Trial and Appeal Board ("TTAB") reversed an examining attorney's decision refusing registration of the mark VOLTA (Ser. No. 77093221) under section 2(d) of the Trademark Act [15 U.S.C. § 1052(d)] based on likely confusion with the registered mark TERZA VOLTA (Reg. No. 3247456). The TTAB considered the similarity of the marks as well as the similarity of the goods and conluded they were not so similar as to cause confusion. (more...)
TTAB denies summary judgment in opposition alleging fraudulent use claim where no industry-specific definition of service ‘production of energy’ existed
In Enbridge, Inc. v. Excelerate Energy, LP (Opp. No. 91170364) , the Trademark Trial and Appeal Board ("TTAB") unanimously denied the motion for summary judgment brought by Opposer Enbridge, Inc. ("Enbridge") based on fraud. The TTAB found that there was not "clear and convincing" evidence that Applicant Excelerate Energy, LP ("Excelerate") intended to deceive the USPTO. (more...)
TTAB rejects opposition based solely on expert testimony concerning descriptiveness
In Anheuser-Busch, Inc. v. Kelly J. Holt (App. No. 91180119), the Trademark Trial and Appeal Board ("TTAB") rejected the Opposer's (Anheuser-Busch Inc.) arguments challanging the Applicant's applied-for marks: "BEER 1" (77063889), "ONE BEER, BEER 1" (77065796) and "BEER 1 MMVII and design" (77090584). The TTAB held there was no basis to refuse the registration of the marks based on arguments primarily supported by expert testimony that the marks were merely descriptive or deceptively misdescriptiveand and lacked secondary meaning, or that if the marks were registrable, elements should be disclaimed. (more...)
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