Thursday, February 17, 2005

TTAB Refuses To Reconsider Slokevage "Trade Undress" Decision

The TTAB grants about one request for reconsideration per year, and it is thus not surprising that the Board denied Joanne Slokevage's request regarding its decision in In re Slokevage, Serial No. 75602873 (November 10, 2004) [not citable], reconsideration denied, February 4, 2005. As discussed previously in the TTABlog (here), the Board affirmed a refusal to register Slokevage's mark comprising the words FLASH DARE! as part of a particular clothing design. The Board found that the mark "constitutes a product design which is not inherently distinctive, and would not be perceived as a trademark under Section 1, 2 and 45 of the Trademark Act."

The interesting part of the decision on reconsideration concerns Slokevage's response to the Board's previous statement that, if she disclaimed "the holes and flaps portion" of her mark, the mark would be passed to publication. She submitted a disclaimer, but not the one the Board proposed. And then . . .
"applicant telephoned the author of this opinion and was told that there was some question about whether her proposed disclaimer would be acceptable as written."
In paper no. 45, Slokevage described the telephone conversation with Judge Bucher as follows:
"Judge Bucher returned phone call to applicant on 12/14/04 and said the 12/10/04 Disclaimer wording was not acceptable, and that he would speak to the lead judge call the applicant back. Probably due to Hanukah, Christmas, New Year's, the Judge did not call." [sic]
[Slokevage then withdrew her proposed disclaimer, and submitted one that disclaimed only the flaps. That too was rejected.]

Was there anything improper in Judge Bucher's speaking to this pro se applicant during the pendency of her ex parte appeal? Certainly judges should avoid even the appearance of impropriety. Does this cross the line? Should TTAB judges refuse to speak to applicants in such cases, when there is no adverse party who might be prejudiced?

In another case recently discussed at the TTABlog (here), those tempestuous teddy bears are still going at each other. Vermont Teddy Bear has filed a request for reconsideration of the Board's decision in Vermont Teddy Bear Co. v. Build-A-Bear Workshop, LLC, Opposition No. 91115198 (December 17, 2004) [not citable]. The Board granted summary judgment and dismissed Vermont's Section 2(d) opposition, finding that Vermont's prior use of a heart "does not constitute trademark use and is not protectable under the Lanham Act."

Vermont claimed prior rights in the use of a heart-shaped object in a stuffed toy animal, but the Board found that Vermont's use consisted of "advertising and selling toy animals and toy animal kits, usually teddy bears, that include a heart-shaped object and instructions for the consumer to insert the object into the toy animal."

In its request for reconsideration, Vermont does not challenge the Board's decision directly, but instead seeks to address two other issues that it asserts were raised in its Notice of Opposition but not contested in Build-A-Bear's motion for summary judgment. First, Vermont claims that Build-A-Bear committed fraud on the PTO when filing its application to register, and that Vermont discovered the fraud only during discovery while Build-A-Bear's summary judgment motion was pending. Since the case was suspended regarding all issues not germane to the summary judgment motion, Vermont argues, it did not have the opportunity to raise the fraud claim before the Board dismissed the case. Second, Vermont argues that, even if it does not own trademark rights, it still was a prior and continuous user of the heart-in-teddy-bear "mark", and therefore Build-A-Bear's mark is not capable of registration: i.e., Build-A-Bear's "mark" is at a best product configuration that would require secondary meaning, which Build-A-Bear cannot establish in light of Vermont's prior and continuous use.

Will Vermont's request for reconsideration be the one request the Board chooses to grant in 2005? Stay tuned for the next round of the War of the Teddy Bears.

Text ©John L. Welch 2005. All Rights Reserved.


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