TTABlog Flotsam and Jetsam - Issue No. 10

Tomorrow, U.S. Coach Bruce Arena names the 23-man USA roster for the 2006 World Cup. I'm trying to put together an office pool for the World Cup, but it's very difficult because of the way group play and the brackets work. It's not at all simple like the NCAA bracketing. [If anyone has a suggestion, please let me know]. There's a very handy Excel spreadsheet available here for downloading, that keeps track of the World Cup groups and the brackets.

But enough with the frivolity! On to serious issues!

USA v. HollandCMGI (now Gillette) StadiumMay 19, 2002
New TTAB Judge: Interlocutory Attorney Peter W. Cataldo has just been appointed Administrative Trademark Judge, bringing the total number of TTAB Judges to 15. Judge Cataldo served as a Trademark Examining Attorney before becoming a TTAB Interlocutory Attorney. He holds a B.A. from Canisius College, and a J.D. from Albany Law School.

Peter W. Cataldo
I.P. Protection of Fashion: The Design Piracy Prohibition Act, H.R. 5055, introduced on March 30, 2006, would provide copyright-like protection to fashion designs (similar to the type of protection accorded vessel hull designs under the Vessel Hull Design Protection Act).

According to its sponsor, the Design Piracy Act would protect fashion designers "by amending the Copyright Act to also include protections for fashion designs. Because the production life cycle for fashion designs is very short, this legislation similarly provides a tailored period of protection that suits the industry - three years. This legislation further establishes damages for infringing a fashion design at the greater of $250,000 or $5 per copy."


Under the proposed law, a "fashion design" is defined as "the appearance as a whole of an article of apparel, including its ornamentation." The term "apparel" means: (a) an article of clothing, including undergarments, outerwear, gloves, footwear, and headgear; (b) handbags, purses, and tote bags; (c) belts; and (d) eyeglass frames. To be eligible for registration, the design owner must apply for registration within 3 months of the date on which the design is first made public.

For a discussion of the current state of the law vis-a-vis IP protection of fashion, see Raustiala, Kal and Sprigman, Chris, "The Piracy Paradox: Innovation and Intellectual Property in Fashion Design" (January 2006), UCLA School of Law Research Paper No. 06-04. (Available for download here.)


DYKES ON BIKES Opposition: Applicant San Francisco Women's Motorcycle Contingent has filed a motion to dismiss the opposition of Michael J. McDermott to its application to register the mark DYKES ON BIKES for "Education and Entertainment Services" for women motorcyclists. (Opposition No. 91169211, filed on February 15, 2006). [See TTABlog postings here, here, and here.] Applicant SFWMC asserts that McDermott is a mere "intermeddler" who lacks standing to oppose and who fails to identify any specific ground for opposition. Instead, "McDermott's objections are all patently irrelevant to the Board's duties and instead relate solely to his subjective political agenda."


TTABlog comment: On the standing issue, the CAFC set a rather low threshold in Ritchie v. Simpson, 50 USPQ2d 1023 (Fed. Cir. 1999). It ruled that Opposer Ritchie had standing to oppose certain trademark applications filed by O.J. Simpson for the marks O.J. SIMPSON, O.J., and THE JUICE, based on Ritchie's allegation that registration of the marks "that allegedly are synonymous with wife-beater and wife-murderer" would disparage Ritchie's"alleged belief in a loving and nurturing relationship between husband and wife." As to McDermott's failure to plead a proper ground for opposition, SFWMC seems to have a good point.


1st Circuit Trademark Decision: The trademark of the opinions authored by 1st Circuit Judge Bruce M. Selya is his habit of employing rather obscure words in an otherwise clear writing style. The recent opinion in Borinquen Biscuit Corp. v. M.V. Trading Corp., 78 USPQ2d 1454 (1st Cir. 2006) is no exception. [try these: "anent," "cynosure," "protean," "withal," "devoir," "get the grease from the goose," "supererogatory"]. In its 21-page decision, the appellate court affirmed the grant of a preliminary injunction in a case involving galletas (cookies, more or less) sold in Puerto Rico under the federally-registered trademark RICA.

The federal registration of the RICA mark gave it a presumption of distinctiveness, but interestingly Plaintiff Borinquen had not bothered to file the requisite Section 15 declaration to make its 1969 registration incontestable. Therefore, as Judge Selya explained, rather than being conclusive, the presumption of distinctiveness was rebuttable. Defendant M.V. Trading, however, failed to overcome the presumption.

Text and USA/Holland photograph Copyright John L. Welch 2002, 2006.