TTAB Finds Two “MAGIC CITY” Logos Confusable for Overlapping Clothing Items
LAIPLA Blog | Los Angeles Intellectual Property Law Association
by John L. Welch
1M ago
The Board affirmed another Section 2(d) refusal, finding the mark shown first below, for “clothing, namely, shirts, hats, sweatshirts, shorts and sweatpants,” likely to cause confusion with the registered mark shown second below, for “shorts; sports caps and hats; sweat shirts; t-shirts.” The goods overlap, so the Board must presume that those goods travel in the same trade channels to the same classes of consumers, who are not necessarily sophisticated purchasers. What about the marks? In re West Flagler Associates, Ltd., Serial No. 87921527 (December 16, 2022) [not precedential] (Opini ..read more
Visit website
TTABlog Test: Is THREEGUN Confusable With THERAGUN For Massage Apparatus?
LAIPLA Blog | Los Angeles Intellectual Property Law Association
by John L. Welch
1M ago
Therabody, Inc. opposed an application to register the mark THREEGUN (in slightly stylized form) for various medical devices and products, including massage apparatus, on the ground of likelihood of confusion with its registered mark THERAGUN for various medical devices, including massage apparatus. So, the goods overlap, but what about the marks? How do you think this came out? Therabody, Inc., by change of name from Theragun, Inc. v. Shanghai Three Gun (Group) Co., Ltd., Opposition No. 91264121 (November 17, 2022) [not precedential] (Opinion by Judge Jyll Taylor ..read more
Visit website
TTAB Reverses Section 2(d) Refusal of EPIGENE Due to Failure to Prove Relatedness of Gene Databases to Diagnostic Preparations and Apparatus
LAIPLA Blog | Los Angeles Intellectual Property Law Association
by John L. Welch
1M ago
In the twelfth Section 2(d) reversal of 2022 (versus 156 affirmances), the Board overturned a Section 2(d) refusal to register the mark EPIGENE for “electronic database in the field of genes recorded on computer media,” finding confusion not likely with the identical mark registered for “Diagnostic preparations for medical purposes” and for “Apparatus for medical diagnostic testing in the fields of cancer or other tissue-based diagnostic testing, cytology and cell-based testing.” The Board found the USPTO’s evidence insufficient to prove the similarity or relatedness of the goods or ..read more
Visit website
Precedential No. 26: TTAB Denies “HAPPIEST HOUR” Cancellation Petition for Failure to Prove Priority Via Technical or Analogous TM Use
LAIPLA Blog | Los Angeles Intellectual Property Law Association
by John L. Welch
1M ago
Petitioner JNF LLC was undoubtedly unhappy with the result of its petition to cancel a registration for the mark HAPPIEST HOUR for bar and restaurant services. JNF claimed prior use of THE HAPPIEST HOUR for the identical services, but it failed to prove priority. Its evidence regarding its first rendering of services under the mark was “characterized by contradictions, inconsistencies, and indefiniteness.” Its claim of use analogous to trademark use failed because its prior publicity “was not sufficiently clear, widespread and repetitive.”  JNF LLC v. Harwood Int ..read more
Visit website
TTABlog Test Is “YOU’RE AN IDIOT” for Card Games Confusable With “YOU MUST BE AN IDIOT” for Board Games?
LAIPLA Blog | Los Angeles Intellectual Property Law Association
by John L. Welch
8M ago
Each of the parties to this Section 2(d) cancellation proceeding filed a motion for summary judgment. Respondent stipulated to petitioner’s priority, as well as to all of the essential DuPont factors except the first factor: the similarity or dissimilarity of the marks. The Board granted one of the motions, but which one? Are the marks YOU’RE AN IDIOT and YOU MUST BE AN IDIOT confusingly similar or not? R & R Games, Inc. v. TwoPointOh Games, Cancellation No. 92076580 (May 23, 2022) [not precedential]. The Board began by noting that the filing of cross-motions for summary judgment does not ..read more
Visit website
TTAB Affirms “EVERLAST” Refusal on Res Judicata and Section 2(d) Grounds
LAIPLA Blog | Los Angeles Intellectual Property Law Association
by John L. Welch
8M ago
The Board affirmed the USPTO’s refusal to register the mark EVERLAST & Design for “wet well mounted pumping stations; wastewater pumping stations; sewage pumping stations” on two grounds: res judicata, since the Board had already affirmed the same refusal of the same mark for the same goods; and likelihood of confusion (again) with the same registered mark EVERLASTING for “valves for controlling the flow of fluids.” In re Smith & Loveless, Inc., Serial No. 88497482 (May 16, 2022) [not precedential] (Opinion by Judge Christopher Larkin). On June 26, 2019,  the Board affirmed a Sec ..read more
Visit website
Despite Strength of Kate Spade Marks, TTAB Dismisses Opposition to “WOLV & Spade Logo” for Watches
LAIPLA Blog | Los Angeles Intellectual Property Law Association
by John L. Welch
8M ago
The Board dismissed Kate Spade LLC’s opposition to registration of the mark WOLV & Design (shown below left) for watches, finding the mark to be too dissimilar to the KATE SPADE word mark and the “spade logo” mark (below right) to support opposer’s Section 2(d) likelihood-of-confusion and its Section 43(c) dilution-by-blurring claims. Despite identical goods, presumably identical channels of trade and classes of consumers, and the high level of strength of opposer’s marks, the Board deemed the first DuPont factor to be dispositive. Kate Spade LLC v. Wolv, Inc., Opposition No. 91241442 (Ap ..read more
Visit website
CAFC Denies Rehearing, Slightly Modifies Brooklyn Brewery Opinion; Professor McCarthy Not Impressed
LAIPLA Blog | Los Angeles Intellectual Property Law Association
by John L. Welch
1y ago
On January 18, 2022, the CAFC denied Appellant Brooklyn Brewery’s petition for panel rehearing and rehearing en banc in the recent Brooklyn Brewery case. [CAFC opinion here; denial of rehearing here], in which the court held that the Brewery lacked Article III standing to challenge the Board’s ruling on likelihood of confusion involving non-competing goods. On that same day, the court issued an “Errata” page [pdf here] making two changes in one sentence in the opinion, as set out below. Professor McCarthy criticized the court’s stance regarding Article III s ..read more
Visit website
Precedential No. 34: TTAB Affirms Nonuse Refusal – Service Mark Use Requires Rendering of the Services, Not Just Preparation
LAIPLA Blog | Los Angeles Intellectual Property Law Association
by John L. Welch
1y ago
In a somewhat muddled decision, the Board affirmed a refusal to register the proposed mark HAVE SOME DECENCY for various charitable fund raising services on the ground that the mark was not in use as of the applicant’s Section 1(a) filing date. Applicant Suuberg made preparatory measures to use the mark but never rendered the services before her filing date. In re Alessandra Suuberg, Serial No. 88234650 (December 10, 2021) [precedential] (Opinion by Judge Albert Zervas). In an application based on use in commerce under Section 1(a) of the Lanham Act, the applicant must use the mark i ..read more
Visit website
TTABlog Test: Is “SAMSUNG WIZ” for Smartphones Confusable with “THE WIZ” for Consumer Electronics Retail Services?
LAIPLA Blog | Los Angeles Intellectual Property Law Association
by John L. Welch
1y ago
P.C. Richard & Son opposed an application to register SAMSUNG WIZ for “smartphones; tablet computer[s],” alleging a likelihood of confusion with its registered marks THE WIZ and NOBODY BEATS THE WIZ for retail store services featuring consumer electronics. The Board wasted little time in finding the goods and services to be related, but what about the marks? Are they close enough? And how strong is THE WIZ anyway? How do you think this came out? P.C. Richard & Son Long Island Corp. v. Samsung Electronics Co., Ltd., Opposition No. 91222405 (November 9 ..read more
Visit website

Follow LAIPLA Blog | Los Angeles Intellectual Property Law Association on Feedspot

Continue with Google
OR