Thursday, August 18, 2005

TTABlog: More August Reading

The TTAB isn't cranking out much in the way of interesting decisions these days, as evidenced by recent TTABlog postings. So we'll obviously need some more reading material to get through the rest of the month.

Rock Harbor. Orleans, MA.

First, here's a nice article on the lack of "popularity" of the Madrid Protocol for U.S. trademark owners. Lisa Shuchman explores why, "[d]espite the initial hype, U.S. companies have not been using the Madrid Protocol system for registering trademarks." "Missing the Mark," IP Law & Business, July 2005.

Second, also worth perusing is a recent and rare federal court decision involving fraud in the prosecution of a trademark application. In an unfortunately murky opinion, the district court in Maryland ruled that a company failed to satisfy its duty to the PTO to make a full disclosure of all relevant facts when it obtained a registration for the mark shown below for various sauces. Daesang Corp. v. Rhee Bros., Inc., Civil No. AMD 03-551 (D.Md. May 13, 2005).

"Soon Chang Chap Sal and Gochujang"

In particular, in 1998, Defendant Rhee Bros., Inc., obtained U.S. Registration No. 2,140,224 for that Korean character mark shown above for "sauces, excluding cranberry and apple sauce, spice, rice and hot bean paste used as condiment" (class 30). The characters transliterate to "Soon Chang Chap Sal and Gochujang," meaning "Soon Chang Sweet Rice Hot Bean Paste." [Rhee disclaimed "Sweet Rice" and "Hot Bean Paste."] However, Rhee knew that "Soon Chang" was a province in South Korea famous for high quality gochujang, but it never revealed to the PTO the geographical significance of that term. [In fact, Rhee's product did not come from that province.] The court concluded that "this material omission, in combination with all the evidence in the record, points to Rhee Bros.' fraudulent intent in concealing this highly relevant information from the PTO."


Third, Eric Goldman, at his Technology & Marketing Law Blog, discusses the recent district court opinion in the GEICO v. Google key word case. Government Employees Ins. Co. v. Google, Inc., No. 1:04cv507 (E.D. Va. Aug. 8, 2005). This is the written decision promised by Judge Brinkema when she issued her oral ruling last December. I will not attempt to improve upon Prof. Goldman's analysis, found here.

Text and fish shack photograph Copyright John L. Welch 2005


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