The Trademark Trial and Appeal Board (“TTAB” or “Board”) reversed the Examining Attorney’s refusal for likelihood of confusion based on identical trademarks, RAO’S for wine and restaurant services. See In re 1729 Investments LLC, Serial No. 90694523 (April 24, 2023) [not precedential]. This is not the first time, the Board reversed on this basis, see our blog post entitled, The TTAB Reverses a Refusal Relying On the Something More Standard (where the applicant applied for beer and the registration covered restaurant services). For more on the “something more” rule see our blog post entitled, T ..read more

The Trademark Trial and Appeal Board (“TTAB”) ordered cancellation of a trademark registration for the mark DANTANNA’S for restaurant services, finding that the Registrant’s Attorney recklessly executed the Section 15 Declaration of Incontestability and disregarded the truth. See, Chutter, Inc. v. Great Management Group, LLC and Chutter, Inc. v. Great Concepts, LLC, 2021 USPQ2d 1001 (TTAB 2021) [precedential]. The Court of Appeals for the Federal Circuit (“CAFC”) reversed this decision in a precedential split decision, finding that a party is not entitled to use a Section 14 Cancellation Proce ..read more

In a recent Board Decision, the Petition for Cancellation was dismissed because Petitioner relied on its common law rights while alleging likelihood of confusion and priority, and was unable to prove acquired distinctiveness (secondary meaning) for its mark LITTLE NOTES for announcement cards; greeting cards; note cards; postcards and greeting cards; printed invitations. See Comptime, Inc. DBA Comptime Digital Printing v. E. Francis Paper, Inc., Cancellation No. 92073884 (May 10, 2023) [not precedential], where the Petitioner sought to cancel the Respondent’s mark LITTLE NOTES registered on th ..read more

In a recent precedential decision, the Trademark Trial and Appeal Board (the “Board”) denied a petition to cancel for failure of the petitioner to prove technical trademark use or use analogous to trademark use before respondent’s priority date, see JNF LLC v. Harwood International Incorporated, 2022 USPQ2d 862 (TTAB 2022) [precedential]. The respondent applied to register the mark HAPPIEST HOUR in standard characters for bar and restaurant services and was successful. About two years after the mark registered, the petitioner filed an application for the mark THE HAPPIEST HOUR for the identica ..read more

In a recent decision from the Trademark Trial and Appeal Board (the “Board”), a Cancellation Petition is denied on all grounds. Both parties are claiming rights to the same mark for use with a magazine. The subject mark is THE NATIONAL POLICE GAZETTE & Design Logo, and the Petitioner’s grounds for cancellation included: (1) priority and likelihood of confusion; (2) no use of the mark at the time the application was filed; (3) abandonment; (4) false suggestion of a connection; (5) deceptiveness; (6) the registration is misrepresenting the source of the services; and (7) fraud. The Petitione ..read more

Recent Trademark Trial and Appeal Board (“Board”) Decisions continue to reinforce the importance of good evidence demonstrating similar trademarks in use to weigh against finding a likelihood of confusion. See In re Loew’s Hotels, Inc., Serial Nos. 88425357, 88433338, 88433342, and 88433348 (May 11, 2022) [not precedential], where two refusals for registration were affirmed and two refusals were reversed. The applicant was seeking to register 4 marks: (1) CLOVER CLUB (CLUB disclaimed) standard characters and three stylized or composite marks; (2) ESTD. CLOVER CLUB 2019; (3) CLOVER CLUB MADE IN ..read more

The Trademark Trial and Appeal Board (the “Board”) issued a precedential decision last week that will be helpful to applicants submitting either a Consent Agreement or a Coexistence Agreement to overcome a likelihood of confusion refusal. Dare Foods Inc. filed an application to register the proposed mark RAINCOAST DIP in standard characters with a disclaimer for “DIP” for snack foods. The Examining Attorney refused the application based on a registration for RAINCOAST TRADING, in standard characters with a disclaimer for “TRADING” for various seafood products. The Board reversed the refusal st ..read more

In two recent precedential decisions of the Trademark Trial and Appeal Board (the “Board”), it was determined that the proposed trademark CLEAR for footwear, lingerie, and other related clothing items and for purses and other types of handbags was deceptively misdescriptive of the goods. See In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478 (TTAB 2021) [precedential] and In re Dolce Vita Footwear, Inc., 2021 USPQ2d 479 (TTAB 2021) [precedential]. See our webpage entitled, Trademark Application Refusal Based On Descriptiveness and Deceptiveness, for more details on deceptively misdescriptive ref ..read more

The Trademark Modernization Act (“TMA”) was enacted on December 27, 2020, and most rules go into effect on December 27, 2021. Many believe that the Trademark Act of 1946 needed this update. Two of the most significant rule changes include creating ex parte procedures for petitioning the Director for expungement and reexamination of registrations that have allegedly failed to meet the mandatory “use in commerce” requirement. A third party can initiate either of the two new proceedings or the Director can initiate the proceedings. The fee set for filing a Petition to the Director for either expu ..read more

If you are an owner of either a supplemental registration or of common law rights, and you are challenging another party before the TTAB based on priority and likelihood of confusion, you would face similar hurdles. Only a trademark registration on the principal register will receive all the rights provided by the Trademark Act of 1946. A Principal Registration is entitled to: (1) constructive notice to the public of the registrants claim of ownership; (2) a legal presumption of ownership of the mark and of the exclusive rights to use the mark in commerce for the goods and services listed in t ..read more