The TTABlog

APRIL 12, 2024

a) of the TBMP and authorities discussed therein, regarding the proper designation of confidential matter. Text Copyright John L. Welch 2024. Prior to their meeting, the parties must review Section 412.01(a) TTABlogger comment: Suppose Chisena had not been represented by counsel before the TTAB.

Confidentiality 62

Confidentiality Designs Design Reporting 62

The TTABlog

SEPTEMBER 2, 2022

The issue also includes a provocative article proposing the elimination of the separate Lanham Act provisions for geographical marks because of the so-called 'Google effects' on human memory, which the author argues have rendered the “generally known geographic location” test meaningless." Text Copyright John L. Welch 2022.

Reporting 67

Reporting Trademark Branding Brands 67

The TTABlog

JANUARY 24, 2024

a)(2), which states that a subpoena may be issued by the clerk of judge of the court in the district where the deponent resides, or by " an attorney authorized to practice in that jurisdiction." Text Copyright John L. Welch 2024. Waterdrop pointed to TBMP Section 404.03(a)(2), emphasis added].

Trademark 73

Trademark Technology Copyright Law 73

The TTABlog

AUGUST 30, 2023

or with authorized, U.S.-licensed Text Copyright John L. Welch 2023. The USPTO is required by the Lanham Act to collect applicants’ domicile information, which serves as confirmation that the applicant is a real or juristic person (such as a corporation) domiciled in the U.S. licensed representation (as required under “the U.S.

Registration 73

Registration Licensing Trademark Copyright 73

The TTABlog

MARCH 22, 2023

Greater Orlando Aviation Authority v. Sanford Airport Authority , Oppositions Nos. Text Copyright John L. Welch 2023. 91234602 and 91235774 (March 14, 2023) [not precedential] (Opinion by Judge Martha B. Read comments and post your comment here. TTABlogger comment: Hint: not all were sustained.

Registration 70

Registration Designs Design Art 70

The TTABlog

JULY 21, 2023

Rather, the manual describes current practice and procedure under the applicable authority and incorporates amendments to the Trademark Act, Trademark Rules of Practice, Federal Rules, and updates in case law, where applicable, as of March 3, 2023. Text Copyright John L. Welch 2023. Read comments and post your comment here.

Trademark 40

Trademark Litigation Law Copyright 40

The TTABlog

SEPTEMBER 7, 2023

The author of the renowned treatise McCarthy on Trademarks and Unfair Competition shares what led him to write it and reflects upon how the law has changed in the fifty years since the treatise was first published. Text Copyright John L. Welch 2023. Commentary: Fifty Years of McCarthy on Trademarks , J. Thomas McCarthy.

Reporting 56

Reporting Trademark Intellectual Property Law Intellectual Property 56

The TTABlog

OCTOBER 17, 2022

In Settec , the Board found "[i]t is not uncommon for a software provider to display its product marks or relevant corporate logos on computerized images created by distributed software, or on the website page where licensed users are given authorized access to the software product. Text Copyright John L. Welch 2022.

Advertising 94

Advertising Advertising Licensing Trademark 94

The TTABlog

SEPTEMBER 8, 2023

Respondent, appearing pro se, admitted that use of the word OFFICIAL in its mark "suggests to consumers that the services Respondent provides via its website are the authority on [] Jekyll Island or come from an ‘official’ source related to Jekyll Island." Jekyll Island-State Park Authority v. Text Copyright John L.

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Government Registration Marketing Marketing 48

The TTABlog

FEBRUARY 2, 2023

The applicant maintained that the mark is not merely descriptive because applicant’s database access authorization software does not provide medical services such as advanced illness management services.] Text Copyright John L. Welch 2022. In re Rows GmbH , Serial No. Read comments and post your comment here. See any WYHAs here?

Art 70

Art Copyright 70

The TTABlog

FEBRUARY 9, 2024

The Board, however, was unable to entertain that claim: Adjudication of this sort of claim, however, is beyond our limited statutory authority. Text Copyright John L. Welch 2024. Nonetheless, the Board did not consider this a forfeiture of respondent's defenses, and it left petitioners with the burden to prove their case.

Registration 73

Registration Intellectual Property Contracts Law 73

The TTABlog

FEBRUARY 17, 2022

The court also noted that the TMA further confirmed the Director’s previously implicit authority to exercise supervisory authority by rehearing TTAB decisions. Text Copyright John L. Welch 2022. Under the heading "CASE LAW DEVELOPMENTS: RECENT DECISIONS" (p. Schiedmayer Celesta GmbH.

Reporting 114

Reporting Registration Trademark Copyright 114

The TTABlog

DECEMBER 17, 2021

Perhaps the solution the authors propose should be called the "Germain De-stacking Doctrine." Text Copyright John L. Welch 2021. Intell Prop. Download here ]. This is not the first time that Ken Germain has raised this issue, as the article points out. Read comments and post your comment here.

Design Patent 57

Design Patent Designs Design Law 57

The TTABlog

NOVEMBER 2, 2021

The authors explore the challenges and opportunities posed to Internet users generally and trademark owners specifically by new generic top-level domains (gTLDs) under the "New gTLD Program" launched by the Internet Corporation for Assigned Names and Numbers in 2011. Text Copyright John L. Welch 2021.

Reporting 60

Reporting Trademark Intellectual Property Branding 60

The TTABlog

OCTOBER 26, 2022

First, as a matter of good writing form, the authors define the term lick mat to introduce the reader to the subject of the article. Second, the definitions of lick mat by the authors of the articles uniformly define a lick mat as a mat that pets lick for feeding or amusement. Text Copyright John L. Welch 2022.

Trademark 62

Trademark Copyright 62

The TTABlog

AUGUST 14, 2023

And, or course, the Board has the inherent authority to manage its docket. Text Copyright John L. Welch 2023. Whether to allow any expert reports other than those expressly provided for in Fed. 26(a) and (e) is left to the discretion of the tribunal. Coffee Studio LLC v. Reign LLC , 129 USPQ2d 1480, 1482 n.7

Reporting 97

Reporting Trademark Copyright 97

The TTABlog

JULY 28, 2022

Text Copyright John L. Welch 2022. In re Ucorp Pty Ltd, LLC , Serial No. In re Ucorp Pty Ltd, LLC , Serial No. Read comments and post your comment here. TTABlog comment: How did you do? See any WYHAs?

Designs 62

Designs Design Copyright 62

The TTABlog

MAY 16, 2022

Text Copyright John L. Welch 2022. securities. and/or related financial instruments."] Read comments and post your comment here. TTABlog comment: How did you do? See any WYHAs?

Settlement 52

Settlement Designs Design Business 52

The TTABlog

JULY 8, 2021

This article by two survey experts on the evergreen topic of Eveready surveys revives a TMR tradition of our authors engaging in a robust and respectful dialogue about issues of importance. Text Copyright John L. Welch 2021. Expropriation of Intellectual Property Rights: The HAVANA CLUB Trademark , Pablo Balañá-Vicente.

Reporting 54

Reporting Trademark Intellectual Property Copyright 54

The TTABlog

DECEMBER 23, 2022

In this first-ever TMR article based on the Trademark Case Files Dataset released by the Office of the Chief Economist of the United States Patent and Trademark Office, the authors analyze forty years of trademark application data (beginning in 1981) and offer data-informed insights that every brand owner should know. Text Copyright John L.

Reporting 44

Reporting Trademark Intellectual Property Branding 44

The TTABlog

DECEMBER 29, 2022

It pointed out that the the added term "managing" encompasses administrative control or authority that exceed the scope of "marketing consulting," which consists of providing professional advice in the field of advertising, shipping, storing and selling goods by producers or sellers to consumers. Text Copyright John L. Welch 2022.

Marketing 70

Marketing Marketing Social Media Advertising 70

The TTABlog

DECEMBER 20, 2021

In this Ladas Memorial Award-winning article, the author addresses the current debate on cultural misappropriation—the aping or commodification of some unique cultural aspect of a marginalized community by members of the dominant culture, without consent or against the will of the original community. Text Copyright John L.

Reporting 48

Reporting Trademark Trademark Law Publishing 48

The TTABlog

MAY 9, 2023

Applicant argued that it is a person authorized by state law to manufacture, possess, or distribute its goods. Second, any authorization by the State of Colorado "cannot override the laws of the other states or federal law outside Colorado." Text Copyright John L. Welch 2023. Read comments and post your comment here.

Registration 75

Registration Designs Design Law 75

The TTABlog

APRIL 15, 2024

In Eurostar , the Board held that "in a case involving likelihood of confusion, we should not exercise our authority under Section 18 to permit an action to restrict an application or registration where such a restriction is divorced from the question of likelihood of confusion.” Text Copyright John L. Welch 2024.

Registration 54

Registration Copyright 54

The TTABlog

JUNE 25, 2021

that because Administrative Patent Judges are inferior officers appointed by the Secretary of Commerce, their exercise of "unreviewable authority" to decide inter partes review cases is in violation of the Appointments Clause of the Constitution. Text Copyright John L. Welch 2021. Arthrex, Inc.

Trademark 52

Trademark Copyright Patent 52

The TTABlog

JULY 26, 2022

Text Copyright John L. Welch 2022. In re CN Smokeless Company, LLC , Serial No. 88814027 (July 21, 2022) [not precedential] (Opinion by Judge Marc A. Read comments and post your comment here. TTABlog comment: How did you do? See any WYHAs?

Designs 57

Designs Design Copyright 57

The TTABlog

FEBRUARY 15, 2022

TTABlogger comment: See also the very recent, nonprecedential HARBOR HEMP COMPANY decision [ TTABlogged here ], also authored by Judge Shaw, which is on all fours with this decision. Text Copyright John L. Welch 2022. PS: the first full sentence on page 3 of the PUREXXXCBD opinion doesn't make sense to me.

Law 51

Law Marketing Marketing Copyright 51

The TTABlog

AUGUST 5, 2022

The Pennsylvania long-arm statute authorizes its courts to exercise personal jurisdiction to "the fullest extent allowed under the Constitution of the United States." Text Copyright John L. Welch 2022. Daimler AG v. Bauman , 571 U.S. 117, 125 (2014). Consequently, plaintiff cannot establish specific jurisdiction in this court.

Registration 62

Registration Trademark Business Copyright 62

The TTABlog

JANUARY 24, 2023

Because the TTAB lacks authority to resolve all the issues raised in this case, the parties will wind up back in this Court regardless of the TTAB outcome. Text Copyright John L. Welch 2023. Under similar circumstances, courts routinely reject requests to stay proceedings pending the outcome of parallel TTAB actions.

Registration 70

Registration Litigation Registering Trademarks Trademark 70

The TTABlog

JUNE 8, 2022

Authors Vijay Toke, Martin Schwimmer, and Jennifer Gregor summarized the argument as follows: In granting summary judgment of non-infringement to VIP Products, LLC. , Text Copyright John L. Welch 2022. The petition was denied, but the brief is worth reading. Read comments and post your comment here.

Trademark 40

Trademark Designs Design Copyright 40

The TTABlog

JUNE 16, 2023

In addition, evidence of promotion and recognition of the author’s name would have to be of the type that would identify the author as the source of the series of works. Text Copyright John L. Welch 2023. There must also be evidence "that the name functions as a mark." Scholastic , 23 USPQ2d at 1778.

Music 52

Music Trademark Social Media Designs 52

The TTABlog

NOVEMBER 9, 2023

and authorities cited therein." Text Copyright John L. Welch 2023. . § 11.307 ('A practitioner shall not act as advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness' except in limited circumstances); see also TBMP §513.02

Law 62

Law Designs Design Trademark 62

The TTABlog

MARCH 7, 2022

In the process, the Agency has overstepped the limits of its statutory authority and undermined federal trademark policy. Text Copyright John L. Welch 2022. It suggests that in requiring compliance with other laws for registration, the PTO has lost sight of the one statute it is supposed to administer.

Trademark Law 52

Trademark Law Law Trademark Registration 52

The TTABlog

SEPTEMBER 1, 2022

September 23, 2022 - 11:30 AM (New Mexico CLE Event): Greater Orlando Aviation Authority v. Sanford Airport Authority , Oppositions Nos. Text Copyright John L. Welch 2022. September 22, 2022 - 1 PM: In re Matosantos Commercial Corporation , Serial No. September 28, 2022 - 1 PM: In re Nike, Inc. Serial Nos.

Registration 57

Registration Trademark Branding Brands 57

The TTABlog

SEPTEMBER 28, 2022

The Board did not cite any authority for this ruling. Text Copyright John L. Welch 2022. Petitioner Narita submitted declarations from its president, Mr. Narita, and from the former president of a company referred to as "TI Express." Read comments and post your comment here.

Branding 52

Branding Brands Branding Law 52

The TTABlog

OCTOBER 18, 2021

Rather, based on the evidence of record and the applicable authorities, REPUBLIC OF LONDON is a phrase referencing a fictitious place that does not exist, and the addition of “REPUBLIC OF” to “LONDON” shifts the primary significance of the mark away from LONDON proper. Text Copyright John L. Welch 2021.

Registration 52

Registration Trademark Designs Design 52

The TTABlog

APRIL 1, 2022

Applicant cited the Administrative Procedure Act (APA) but offered "no authority for making an APA challenge in an administrative forum that is part of the same agency that adopted the rules and policy guidance." Text Copyright John L. Welch 2022. And so, the Board affirmed the refusal Read comments and post your comment here.

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Privacy Ownership Blogging Registration 52