Peter Stris is one of the most prominent business litigators of his generation.  He serves as a lead strategist and presenter in must-win trials, landmark appeals, and rapid media-response campaigns.  Chambers USA has identified Peter as a leading advocate in multiple nationwide categories. Reuters has recognized him as one of the nation’s most influential lawyers before the U.S. Supreme Court, where he has argued 10 cases. And the Daily Journal has repeatedly named him to its annual list of the Top 100 California Lawyers. Peter regularly liti ..read more

The USPTO is seeking applications for the position of Deputy Chief Administrative Trademark Judge at the Trademark Trial and Appeal Board. Applications are accepted until March 15, 2024. Further details may be found at the USA Jobs website, here. DutiesAs the Deputy Chief Administrative Trademark Judge you will have the opportunity to serve as a full voting member of the Trademark Trial and Appeal Board. You’ll serve under the administrative direction of the Chief Administrative Trademark Judge, who reports to the Office of the Under Secretary and Director of the USPTO. As the DCATJ you will ..read more

The USPTO refused registration of the mark TABLEAU for wine, finding confusion likely with the identical mark registered for “restaurant and bar services; cocktail lounges.” Applicant Caymus Vineyards argued that the Office failed to prove the “something more” required to establish relatedness between these goods and services, and further argued that, of the 600,000 restaurants in the U.S., the Office’s evidence of third-party overlapping use constituted only “25 ten-thousands of one percent, or fewer than one in 10,000.” How do you think this came out? In re Caymus Vineyards, Serial No. 9704 ..read more

The Los Angeles Intellectual Property Law Association (“LAIPLA”) is proud to announce that it is seeking applicants for the 2024 Diversity Fellowship. This year, LAIPLA is proud to announce that Lewis Roca Rothgerber Christie LLP and Morrison & Foerster LLP will graciously sponsor the Diversity Fellowship Program. Tubi, the video on-demand company owned by Fox Corporation, and American Honda Motor Co., Inc., will each be a host for the Diversity Fellowship. Lewis Roca Rothgerber Christie LLP will sponsor the Fellow for Tubi and Morrison & Foerster LLP will sponsor the Fellow for Ameri ..read more

Cancellation Petitioner Waterdrop Microdrink GmbH relied on the Trademark Board Manual of Procedure when its attorney signed and served a subpoena on third-party Ecolife Technologies, Inc. in order to take the latter’s deposition under FRCP 30(b)(6). Respondent’s counsel refused to accept service, and also stated that the subpoena was improperly issued. When Waterdrop moved to compel compliance, the U.S. District Court for the Central District of California sided with Ecolife. Waterdrop Microdrink GmbH v. Qingdao Ecopure Filter Co., Cancellation No. 92079118. Ecolife contended that, under 35 ..read more

Game Plan, Inc. opposed six applications to register the marks I AM MORE THAN AN ATHLETE and MORE THAN AN ATHLETE for clothing and entertainment services, claiming likely confusion with its registered mark I AM MORE THAN AN ATHELETE & Design (shown below) for “Charitable fundraising services by means of selling t-shirts to raise funds for educational and entertainment programs” and with its common law mark MORE THAN AN ATHLETE for t-shirts. Applicant UNIP (apparently owned in part by LeBron James) counterclaimed for cancellation of that registration on the ground of likelihood of con ..read more

The Board granted a petition for cancellation of a registration for the mark CS for “amplifiers,” finding that Petitioner Adamson Systems proved by a preponderance of the evidence that Respondent Peavey Electronics had discontinued use of the CS mark on amplifiers, with intent not to resume use. Peavey’s de minimis domestic sales of amplifiers under the CS mark between 2016 and 2021 were “insufficient to constitute bona fide use of that mark in the ordinary course of trade,” and there was no evidence “showing any intention to resume use of the mark, much less evidence excusing Respo ..read more

Affirming a Section 2(e)(4) refusal, the Board found the proposed mark LAFOND for ‘Fruit conserves; Fruit preserves; Fruit spreads; Jellies, jams; Nut butters” and for “Tea; Fruit sauces” to be primarily merely a surname. The Board agreed with Examining Attorney Claudia A. Kopenski that LAFOND is not an uncommon surname, that it has no other recognized meaning, and that the term has the look and sound of a surname. In re St. Dalfour International Incorporated, Serial No. 90527587 (September 21, 2013) [Opinion by Judge Thomas L. Casagrande]. The LexisNexis database of phone numbers included 80 ..read more

In a whopping 82-page opinion, the Board affirmed the USPTO’s refusal to register PARKING.COM, on either the Principal Register or the Supplemental Register, as a service mark for “website providing information regarding parking availability.” The Board first found the term to be generic for the services, and then, in the alternative, found it to be merely descriptive and lacking in secondary meaning. In re SP Plus Corporation, Serial No. 87906630 (August 11, 2023) [not precedential] (Opinion by Judge Elizabeth A. Dunn).   Genericness:The first 79 pages of the opinion deal with the ..read more

The Board overturned a refusal to register Duracell’s sound mark consisting of three musical notes for batteries, rejecting the Office’s position that the specimens of use (.mp3 files, example here) constituted mere advertising material. Instead, the Board ruled that transmission of the sound mark in retail locations where the goods are sold is “equivalent to” a display associated with the goods. In re Duracell U.S. Operations, Inc., 2023 USPQ2d 861 (TTAB 2023) [precedential] (Opinion by Judge Michael B. Adlin).   Section 45 of the Lanham Act provides that, for goods, a mark is in use in ..read more