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TTABulous webinar replay

December 2, 2018

Trademark oppositions and cancellations are quite different from applications and office actions, even if they share much of the same body of law. The procedures, deadlines, dockets, rules, and writing styles are all different. If the very thought of a Notice of Opposition or Petition for Cancellation makes you nervous, this is the class for you. Whether you have never handled a TTAB case, or have handled a few but would like to learn the process in more depth, this course will deliver including, templates for pleadings, motions, and discovery.

The 2.5 hours TTABulous course features Erik Pelton sharing experience from nearly 20 years and dozens of TTAB cases.

  • Click here for more information and a syllabus.
  • Click here to purchase replay ($497)
  • Click here to purchase workbook ($597) – This unique TTAB workbook features more than 150 templates and samples covering pleadings, motions, discovery, testimony, case resolution, and much more. (You can use image of the workbook cover please – attached)

TTABulous2

Testimonials for Erik and Sonia’s courses:

  • The course was great and came at the right time for me as I am adding more and more trademark work to my core patent practice. The material answered directly some simple practical questions I had – e.g., how to retrieve only registered live marks in a search and downloading multiple records for evidence – and also provided valuable depth to legal arguments for traversing refusals. Kudos to Sonia and Erik! ” — BETSY DOWD
  • I just wanted to reach out and say thanks. I purchased your Office Action Boot Camp. You and Erik absolutely crushed it. The info was so helpful and actionable.”  — JOEY VITALE

Supreme Court #trademark hearing (B&B Ha

December 5, 2014

Supreme Court #trademark hearing (B&B Hardware v Hargis) transcript: http://www.supremecourt.gov/oral_arguments/argument_transcripts/13-352_kifl.pdf audio: http://www.supremecourt.gov/oral_arguments/audio/2014/13-352

USPTO Solicitor issues ruling regarding

January 17, 2013

USPTO Solicitor issues ruling regarding amendment to Louboutin registration, but 2nd cir arguments are possible: http://ow.ly/gTRoK

Love it or Leave it: Cheerios trademark

July 13, 2011
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Cheerios® cereal is celebrating its 70th birthday this year. It is a great name and logo. Simple. Suggestive — happy, fun and “O” shaped. The logo and packaging has been remarkably consistent for years. Kids love it – it is fun and easy to say.

Believe it or not, the product was initially launched as “Cheeri-oats” for the first four years. And it was changed because of a trademark dispute with Quaker Oats! I’d say the change worked out rather well!

Some other Cheerios facts (from “Cheerios cereal celebrates its 70th birthday” via ABC 7):

  • Cheerios are produced at a plant in Buffalo.
  • In 1979, Honey Nut Cheerios were introduced, followed by Apple Cinnamon Cheerios in 1988, MultiGrain Cheerios in 1992, Frosted Cheerios in 1995, Berry Burst Cheerios in 2001 and Chocolate Cheerios in 2010.
  • Since 2009, Honey Nut Cheerios have outsold plain Cheerios.
  • Cheerios are made by heating balls of dough then shooting them out of a puffing gun at 100 mph.

USPTO Registrations:

  • CHEERIOS – ready-to-eat cereal
  • – breakfast cereal

Lesson: sometimes a change of brand name – even when the result of a trademark dispute – is a positive move that makes a brand even better.

explosion of app icon trademark filings

July 11, 2011

The big discussion in recent weeks in the trademark community has been about new domain name extensions. The Internet Corporation for Assigned Names and Numbers (ICANN) recently approved procedures for the creation of new TLDs, meaning .apple, .work, .computer, .facebook, and the like could be in our future. Of course, this could be fertile grounds for trademark disputes. Who should be permitted to own and control .bank? or .delta? or .smith?

But in my opinion there is a bigger and growing “domain” that will see many more trademark disputes in the coming months and years: mobile app icons. Only so much graphics and text that can fit within a small square icon on a phone. If a company other than Google uses a logo featuring a lowercase “g”, would it infringe Google’s trademark? These types of questions will likely arise with greater frequency as the number of apps continues to explode and as companies realize the trademark protection implications in the app world.

For example, the following icons have been registered by the USPTO in the first half of 2011:

[click images for USPTO TARR records]

In addition, dozens of new applications for app icons have been filed in 2011, including Google and Amex.

More brands creating and launching apps and more app users will inevitably lead to more trademark disputes related to the app names and logos.

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introducing new #trademark tool: GenericTrademarkPage.com

July 8, 2011
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Introducing the beta version of GenericTrademarkPage.com, a free tool for trademark practitioners and owners! GenericTrademarkPage.com contains easy to use searches and links to many USPTO functions and other commonly used tools.

GenericTrademarkPage.com is a single webpage from which users can conduct a variety of searches:

  • USPTO pages:
    • TESS
    • TARR
    • TDR
    • TTABvue
    • Trademark Assignments
  • Other pages:
    • IPRS database from U.S. Customs and Border Patrol
    • Google internet search
    • Google news search
    • Google blog search
    • Yahoo! internet search
    • Hoovers search
    • Twitter search
    • MySpace people search
    • YouTube video search
    • eBay search

As this project is a work in progress, any feedback or suggestions are most welcome!

Non-traditional trademarks: Lighting displays

July 7, 2011

I love non-traditional trademarks and have spoken and written about them many times.  My favorites include the marching ducks of the Peabody Hotel and “goats on a roof” at a restaurant.

I recently came across a new category of non-traditional trademarks: lighting displays. Can the way something such as a building is lit serve to indicate the source of the services or products offered? Sure.

The Gloria Gemma Breast Cancer Resource Foundation has registered the lighting display below in connection with ‘Promoting public awareness of the importance of the early detection of breast cancer’

  • – The mark consists of a white capitol building illuminated in different shades of pimk and white lighting, with green trees in the foreground and black shadowing all around

Six Continents Hotels, Inc. (Holiday Inn?)owns registered trademarks for the following lighting designs in connection with hotel services (click images for USPTO records):

  •   – The mark consists of green lighting formed by four light fixtures placed in a symmetrical fashion near the entryway of the building. One set of two green lights is evenly placed on columns to the right and left of the entryway and direct the green lighting downward thereby casting a green shadow down the length of the column; while the other set of two green lights is evenly placed on the building wall above the entryway and direct the green lighting upwards, casting a green shadow up the length of the wall and roof overhang. The matter shown by the dotted lines is not a part of the mark and serves only to show the position of the mark
  • – The mark consists of blue lighting formed by four light fixtures placed in a symmetrical fashion near the entryway of the building. One set of two blue lights are evenly placed on columns to the right and left of the entryway and direct the blue lighting downward thereby casting a blue shadow down the length of the column; while the other set of two blue lights are evenly placed on the building wall above the entryway and direct the blue lighting upwards, casting a blue shadow up the length of the wall and roof overhang. The matter shown by the dotted lines is not a part of the mark and serves only to show the position of the mark

What about lighting within a store? Presumably it could serve as a trademark as well, provided the lighting display was unique within the industry and not merely functional. While not exactly for lighting, Washington Mutual banks owns a USPTO registration for the color plumb on a variety of surfaces including the lighting fixtures. Lighting fixture designs and locations are frequently included in the descriptions for trademark registrations covering store displays and configurations, like this one from Huddle House.

Are there other lighting displays which function as a trademark? Are trademark lawyers and owners missing an opportunity here to register and protect more lighting as trademarks?

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