Under Section 2(e)4 of the Trademark Act a mark that is primarily merely a surname can not be registered on the Principal Register absent a showing of acquired distinctiveness under Section 2(f) of the Trademark Act. See Suisman, Shapiro, Wool, Brennan, Gray & Greenberg P.C. v. Suisman, 80 U.S.P.Q.2d 1072,…
Since 2009 the Yankees have been fighting to block several trademarks that were intended to parody two of their own trademarks and on May 8, 2015 they succeeded. IET Products and Services Inc. (“Applicant”) filed two applications with the United States Patent & Trademark Office (“USPTO”) seeking to register the…
The Court of Appeals for the Federal Circuit (Federal Circuit) vacated and remanded the matter of Princeton Vanguard, LLC vs. Frito-Lay North America, Inc. No. 2014-1517 (Fed. Cir. May 15, 2015) back to the Trademark Trial and Appeal Board. See our blog post entitled The TTAB Agrees With Frito Lay, Pretzel…
In a recent precedential decision of the Trademark Trial and Appeal Board (the Board) issued on April 21, 2015 the Board affirmed the Examiner’s refusal to register the mark BUYAUTOPARTS.COM with a disclaimer for “.com”. Meridian Rack & Pinion (the “Applicant”) sought registration on the Supplemental Register for the mark…
Hughes Furniture Industries, Inc. (“Applicant”) was seeking to register a stylized mark H HUGHES FURNITURE -MOTION EAZE RECLINERS for furniture. The application was refused and the Applicant appealed to the Trademark Trial and Appeal Board (“Board”). The application was refused under Section 2(d) of the Trademark Act on the grounds…
H.J. Heinz Company and Promark Brands (collectively “Opposers”) commenced opposition proceedings against GFA Brands (the “Applicant”) attempting to block registration of the mark SMART BALANCE based on their registrations for the mark SMART ONES. The Opposers use their mark to brand frozen entrees, frozen desserts and other frozen foods, while…
Kinney Family Vinters LLC doing business as Occasio Winery (“Applicant”) filed a trademark application for the mark APOTHEOSIS for various types of wine. E. & J. Gallo Winery (“Opposer”) filed a Notice of Opposition, claiming prior use of the mark APOTHIC for wine. It was undisputed that the Opposer has…
On March 24, 2015 the U.S. Supreme Court held there could be Trademark Trial and Appeal Board (TTAB) decisions warranting a preclusive effect on judgments by federal district courts, reversing the Eighth Circuit’s decision and remanding the matter for further proceedings. Attorneys and litigants alike were eagerly awaiting this U.S.…
A recent decision of the Trademark Trial and Appeal Board (the “Board”) highlights what the Board looks for when determining which user of the trademark has priority of use. See Parley, LLC v. Vi-Jon, Inc., Cancellation No. 92055751 (February 27, 2015). One common issue often raised in cancellation proceedings is…
We frequently receive inquiries from our clients regarding what if any methods exist to submit evidence to the USPTO to prevent the registration of a third party’s mark. The answer of course is it depends on the type of evidence you wish to submit and the reason for submission. The…