TTABlog Flotsam and Jetsam, Issue No. 16: COHIBA Appeal (Again); TM Guide for 2(c) Refusals; LeBron Deposition

Here's a new edition of "Flotsam and Jetsam," wherein I provide, on an irregular basis, timely tidbits to the TTABar. The last edition was a mere nine years ago.

COHIBA Appeal: General Cigar has filed a complaint [.pdf here] in the U.S. District Court for the Eastern District of Virginia, seeking Section 1071 review of the TTAB's recent decision [TTABlogged here] ordering cancellation of two registrations for the mark COHIBA for cigars, based on violation of Article 8 of the Pan American Convention. We can surely expect a few more chapters to be written in this 25-year-old brouhaha.

Examination Guide 1-23: On February 22nd, the USPTO issued a Guide for "Examination for Compliance with Section 2(c) While Constitutionality of Section 2(c) as Applied to Marks That Are Critical of Government Officials or Public Figures Remains in Question." [pdf here]. In short, pending the outcome of In re Elster (the TRUMP TOO SMALL case) at the Supreme Court, the Office will suspend action on pending applications involving marks subject to refusal under section 2(c). You will recall that in Elster, the CAFC "held that the application of section 2(c) to marks that are critical of government officials or public figures is unconstitutional, absent a showing of actual malice, because it impermissibly restricts free speech." [TTABlogged here]. On January 27, 2023, the USPTO filed a petition to the U.S. Supreme Court for a writ of certiorari to review the CAFC's decision.

LeBron James deposition: On February 1, 2023, the Board issued an order requiring LeBron James to appear for deposition in Opposition No. 91249886, involving the mark KING JAMES for various clothing items. [pdf here]. The parties are ordered to attend a telephone conference with the Board before March 3rd, to set a date for the deposition within 60 days of the telephone conference. Although the NBA playoffs begin in mid-April, this will likely not present a problem, since the Lakers, even if they do make the playoffs, probably won't stay long.

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Text Copyright John L. Welch 2023.