The Opposer or Petitioner in a proceeding before the Trademark Trial and Appeal Board (the “Board”) has the burden of proof to demonstrate there was no use of the mark in commerce prior to the time the trademark application was filed. This showing must be made by a preponderance of…
The Trademark Trial and Appeal Board (the “Board”) issued a decision two days ago that reaffirmed to trademark practitioners that the doctrine of foreign equivalents must be seriously considered when conducting trademark clearances and rendering trademark clearance opinions to clients. See In re S Squared Ventures, LLC, Serial No. 86813357…
It appears that more often than not the Trademark Trial and Appeal Board (the “Board” or the “TTAB”) issues favorable decisions for the big corporations. However, this one came down against Williams-Sonoma Inc. (the “Applicant”) last month. See In re Williams-Sonoma, Inc., Serial No. 86092589 (June 28, 2017), where the…
In the case of Christian M. Ziebarth v. Del Taco, LLC, Cancellation No. 92053501 (March 31, 2015) [not precedential], the Trademark Trial and Appeal Board set forth the standards for trademark abandonment. Christian Ziebarth (the “Petitioner”) filed a petition to cancel the mark NAUGLES, a standard character mark for restaurant…
Equitable considerations play a role in the Trademark Trial and Appeal Board’s (the “Board”) deliberations when determining whether or not to grant a Petition to Cancel a trademark registration. See Teledyne Technologies, Inc. v. Western Skyways, Inc., 78 USPQ2d 1203 TTAB (2006) [precedential], where the Board denied a cancellation petition…
A frequently asked question in our practice is, can an acronym register at the United States Patent & Trademark Office (USPTO) and be protected as a federal trademark? The answer is it depends on the circumstances, but under the right circumstances acronyms as well as abbreviations can function as trademarks.…
This Trademark Trial and Appeal Board (TTAB) dispute involves the mark SHAPE (in both standard character and stylized format) owned by Weider Publications, LLC (Opposer) and the trademark SHAPES in standard character format owned by D & D Beauty Care, LLC’s (Applicant). See Weider Publications, LLC v. D & D…
Trademark practitioners will encounter a 2(d) Refusal (refusal due to a likelihood of confusion with a prior trademark registration) or a Notice of Opposition sooner or later in their practice. The case of Embarcadero Technologies, Inc. v. RStudio, Inc., 105 USPQ2d 1825 (TTAB 2013) [Precedential], reminds practitioners and applicants alike…
One reoccurring question we receive in our practice is what constitutes “use in commerce” for a service mark. This question sounds simple enough, but often it involves a complicated analysis that is fact dependent. In a recent case before the Trademark Trial and Appeal Board (TTAB), David Couture (Couture), the…