Friday, September 25, 2020

Three Recent Affirmances in Unacceptable Specimens of Use Cases

Okay, I admit it's an awkward title, but it's an awkward time. I always wonder, in applications where specimens of use are rejected by the Examining Attorney, whether it would be better to amend to an intent-to-use basis (in order to buy some time to get a proper specimen into use) than to appeal and lose. Anyway, here are three recent specimens of failed specimens of use.
In re Iguana Yachts, Serial No. 87868306 (September 17, 2020) [not precedential] (Opinion by Judge Cindy B. Greenbaum). [Affirming rejection of specimens of use for the mark PRO IGUANA & Design for "Boats; amphibious vehicles; professional boats and professional amphibious vehicles in the fields of security, military, rescue and transport of goods and people." The specimens comprised: (1) a large sign or banner propped up on the floor, supported on the left and right lower front corners by the side arms of two red couches or chairs (see below); (2) a business card or "distributor hand-out from trade show"; and (3) a website extract with a "custom build quote form. There was no evidence that the banner or the business card were displayed or distributed at a trade show. Likewise there was no evidence as to how the quote form was used to place orders. In short, there was no evidence, only attorney argument, that would qualify these items as point of sale displays rather than mere advertisements.]

In re Charlie's EnterprisesEnergy, LLC, Serial No. 88200043 (September 21, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Affirming rejection of specimen of use for the mark JUST SAY PEAS OK PRODUCE & Design, for Peas, fresh; Vegetables, fresh." The specimen consisted of “[a] picture of the trademark phrase in use as a trailer wrap.”  The Board observed that in some cases like distribution of bulk goods, a trailer wrap my be a common method of displaying the mark and thus an acceptable specimen, but a trailer wrap is not common packaging for vegetables. In addition, the mark in the application drawing did not match the display on the truck.]

In re Systemax Inc., Serial Nos. 88150991 and 88151072 (September 23, 2020) [not precedential] (Opinion by Christen M. English) [not precedential]. [Affirming rejection of specimens of use for the mark SYSTEMAX & Design for "holding company services, namely, providing business management, business administration, and human resource management services to subsidiaries and affiliates.”  The specimens comprised website screenshots and copies of annual reports, none of which showed an association between the mark and the recited holding company services. Applicant's request to amend the filing basis of the application to Section 1(b) intent-to-use was denied as untimely.] 

Read comments and post your comment here.

TTABlog comment: Maybe someone should offer a webinar on specimens of use.

Text Copyright John L. Welch 2020.

Thursday, September 24, 2020

TTABlog Test: Is NUB GLOVE Merely Descriptive of Bowling Gloves, Balls, and Hole-Drilling Services?

The USPTO refused to register the mark NUB GLOVE for "Bowling gloves and bowling balls" and for "Installation of custom bore inserts in bowling balls," on the ground of mere desctrptiveness under Section 2(e)(1). Applicant argued that the mark is incongruous, since gloves are designed to cover one’s hands, but “the protruding nubs on Applicant’s bowling gloves will not be covered by the bowling gloves as a hand would be.” Did Kwiatkowski throw a strike or a gutterball? In re Robert Kwiatkowski, Serial No. 88367537 (Septeimber 17, 2020) [not precedential] (Opinion by Judge Frances S. Wolfson). 

Kwiatkowski got off on the wrong foot when he provided an evasive answer to Examining Attorney Wendell S. Phillips III's requet for information under Rule 2.61: "Do (or will) any of applicant’s goods feature “nubs” as that term is defined in the attached evidence, or any other similar bumps or textured surface? If so, please indicate which goods have this feature and explain the nature and purpose of these nubs." Kwiatkowski answered "no," but that answer was contradicted by the evidence and by his own admission that his gloves "will include a protruding nub that can be received by a bore of a bowling ball." That evasive answer allowed the Board to draw an adverse evidentiary inference against Kwiatkowski, and further served as a basis in and of itself to affirm the refusal to register.

As to mere descriptiveness, Kwiatkowski asserted that, at the bowling alley, "nubs" refer to inward projections on an insert in a bowling ball hole that grasp the finger (see picture below), not to nubs extending outwardly from a sleeve put on a finger. But that statement was belied by his own admission, and ran counter to the Board's inference.

As to Kwiatkowski's hole-boring services, the word “NUB” describes "a function or purpose of the services, namely that Applicant installs custom bore inserts and drills holes in bowling balls to make them compatible with gloves that feature nubs." The word “GLOVE” is "generic for bowling gloves, and merely descriptive for bowling balls adapted for use with bowling gloves and the related services of making or adapting bowling balls to accommodate Applicant’s gloves." The Board brushed off Kwiatkowski's incongruity argument, observing that consumers are not likely to consider that NUB GLOVE reverse to nubs on the inside of a bowling glove. Nor is any multi-step reasoning process required to discern the meaning of "nubs" in relation to the involved goods and services.

The Board concluded that NUB GLOVE is merely descriptive of Kwiatkowski's goods and services, and it therefore affirmed the Section 2(e)(1) refusal.

Read comments and post your comment here.

TTABlogger comment: The dude did not abide. WYHA? Maybe on the services portion of the refusal, but then the Rule 2.61 issue was fatal anyway.

Text Copyright John L. Welch 2020.

Wednesday, September 23, 2020

"DOOR-IN-DOOR" Lacks Acquired Distinctiveness for Electric Refrigerators, Says TTAB

The Board affirmed a refusal to register the proposed mark DOOR-IN-DOOR for electric refrigerators, on the ground of mere descriptiveness (and lack of acquired distinctiveness). Applicant LG conceded that the term is merely descriptive but pointed to its more than five years of use of the term and to its now-cancelled Registration for DID DOOR-IN-DOOR. In re LG Electronics Inc., Serial No. 88055289 (August 26, 2020) [not precedential] (Opinion by Judge Christopher Larkin).

Trademark Rule 2.41(a) provides that an applicant’s “ownership of one or more active prior registrations on the Principal Register . . . of the same mark may be accepted as prima facie evidence of distinctiveness if the goods or services are sufficiently similar to the goods and services in the application.” LG's registration of DID DOOR-IN-DOOR, on the Principal Register, was in existence at the time the subject application was filed, but it included a disclaimer of DOOR-In-DOOR. The Board agreed with Examining Attorney Anthony Rinker that LG cannot rely on this cancelled registration since the disclaimer was an admission of mere descriptiveness at the time it was entered.

LG next contended that its Supplemental Registration for DOOR-IN-DOOR “confirms Applicant’s use of the mark at least as early as June 2012.” It further contended that the CAFC in Converse ruled that “‘five years’ substantially exclusive and continuous use [of a mark weighs] strongly in favor of a finding of secondary meaning,” The Board disagreed with LG's reading of Converse, observing that the Board still follows the CAFC's Louisiana Fish Fry decision:

Although Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f), provides that the PTO may accept five years of “substantially exclusive and continuous” use as prima facie evidence of acquired distinctiveness, the statute does not require the PTO to do so. Particularly for a mark that is as highly descriptive like FISH FRY PRODUCTS, the Board was within its discretion not to accept Louisiana Fish Fry’s alleged five years of substantially exclusive and continuous use as prima facie evidence of acquired distinctiveness.

Furthermore, LG's Supplemental Registration cannot be relied on to show the length of use of the term because Supplemental Registrations do not receive the advantages and presumptions of Section 7(b) of the Trademark Act.

The Board agreed with the examining attorney that "given the highly descriptive nature of the proposed DOOR-IN-DOOR mark, Applicant’s unsubstantiated and unspecific claim of 'extensive use of the mark . . . since at least as early as 2012,' has little probative value" on the Section 2(f) issue.

LG did not offer declaration or affidavit evidence regarding its use of the term DOOR-IN-DOOR, but instead relied on assertions of its counsel. It did offer a two-page excerpt from a marketing study purporting to show consumer recognition of the term and association with LG, but it provided no explanation of the origin, purpose, nature, or methodology of the study, and therefore the Board had now way to assess its probative value. In any event, the study was conducted in 2012, and would have little value regarding LG's current claim.

LG's advertising figures did not support its"grandiose claim of “persistent and continuous use of a mark in various media for nearly a decade.” There was not information that would put the advertising figures in context for the industry. Moreover, its advertising makes frequent use of the "LG" mark adjacent the phrase DOOR-IN-DOOR, and so those expenditures prove little.

The Board concluded that LG "did not carry its heavy burden of showing that its highly-descriptive proposed mark DOOR-IN-DOOR for electric refrigerators has acquired distinctiveness."

Read comments and post your comment here.

TTABlogger comment: I guess life's not so good for LG at the TTAB.

Text Copyright John L. Welch 2020.

Tuesday, September 22, 2020

TTABlog Test: Is "KEZAR" for Pharmaceutical Products Primarily Merely a Surname?

The USPTO refused to register the proposed mark KEZAR for pharmaceuticals and chemicals for use in the manufacture of pharmaceuticals, finding the term to be primarily merely a surname under Section 2(e)(4). The examining attorney argued that KEZAR has no recognized meaning other than as a surname, while applicant contended that KEZAR has “geographic significance” because it is the name of a stadium in San Francisco. The examining attorney conceded that KEZAR is an uncommon surname, but pointed out that the San Francisco stadium was named after a prominent citizen named Mary Kezar. How do you think this appeal came out? In re Kezar Life Sciences Australia Pty Ltd, Serial No. 79256294 (August 27, 2020) [not precedential] (Opinion by Judge Thomas W. Wellington).

The examining attorney did not contest applicant's assertion that no one with the surname KEZAR is connected with applicant. The Board noted, however, that this does not establish one way or the other whether KEZAR is primarily merely a surname.

Negative dictionary evidence was submitted by the examining attorney to show that KEZAR has no meaning other than as a surname. Applicant claimed that KEZAR has geographic significance, and that it chose the  mark because it is “headquartered in an area of San Francisco near Kezar Stadium, which served as the home of the San Francisco 49ers from 1946 until 1970.” However, applicant provided no evidence showing Kezar used in reference to a geographic area. A single article dated 1989 referred to "Kezar Corner" but this was insufficient for purposes of proving the geographical significance of KEZAR. The Board therefore found that KEZAR has no non-surname meaning.

The examining attorney asserted that KEZAR has the structure and pronunciation of a surname, like Kazar, Kozar and Kyzar. The evidence, however, indicated that these surnames are not common, Lexis/Nexis showing 373 hits for Kazar, 1586 for Kozar, and 673 for Kyzar. These numbers "are not impressive and do very little, if anything," to show that KEZAR has the structure and pronunciation of what the public will perceive as a surname. The Board therefore found that KEZAR does not have the structure and pronunciation of a surname.

Turning to the extent of exposure of KEZAR as a surname, the Office's evidence uncovered 404 persons with the surname Kezar in the Lexis/Nexis database. "The number of persons with the surname indicates it is not a common surname; however, we point out that even rare surnames may be held primarily merely surnames if the primary significance conveyed to purchasers is that of surname." See, e.g., Beds & Bars, 122 USPQ2d at 1551 (finding BELUSHI’S to be primarily merely a surname despite only five persons with that surname).

The examining attorney claimed that "Kezar is routinely presented to the general public as a surname, and regularly referenced as a surname," but the evidence thereof fell short. It showed that that the stadium received its name from “prominent San Franciscan Mary Kezar,” who in 1922 left $100,000 to the city to build a memorial in honor of her mother and uncles. A dozen or so Lexis/Nexis excerpts referred to individuals named "Kezar," but all of the excerpts were dated in the 1979-1991 time period.

Taking all of the evidence as a whole, we cannot conclude that there has been or currently is an appreciable amount of public exposure to KEZAR being used as a surname. The demonstrated number of individuals having this surname in the U.S., 404 persons, is extremely low. * * * Because KEZAR has no other recognized meaning and the record does not show sufficient exposure to KEZAR as a surname, we consider the possibility that consumers will view Applicant’s use of KEZAR as an arbitrary term in the context of the applied-for goods and services, pharmaceuticals and medical research.

Applicant submitted the results of a 48-respondent survey conducted during a lunch hour at Sears Tower in Chicago, but the Board agreed with the examining attorney that the survey methodology was flawed and the results were not sufficiently reliable to be probative.

In conclusion, "[b]ecause the term KEZAR is so rarely used as a surname and there is very limited use of it in other contexts with surname significance," the Board ruled that KEZAR will be not perceived by consumers of applicant's products as being primarily a surname. And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: How did you do? Harder to guess than in a Section 2(d) case, without knowing the evidence.

Text Copyright John L. Welch 2020.

Monday, September 21, 2020

Webcast - Sept 22, 7PM EST: Ken Germaine: Does the Constitution Allow Dual Protection Under Design Patent and Trade Dress Regimes for the Same Subject Matter?

Ken Germain, Of Counsel, Wood Herron & Evans LLP., will provide a webinar entitled "Does the Constitution Allow Dual Protection Under Design Patent and Trade Dress Regimes for the Same Subject Matter?" on Tuesday, September 22nd at & 7:00 PM (Eastern Standard Time). Register here

Traditionally, product designs have been protected both as design patents and trade dress. But should different intellectual property law regimes protect the same features of a product consecutively or even concurrently? The Constitution's Patent/Copyright Clause (Art. I//8/8) certainly can and the Commerce Clause (Art. 1/8/3) probably can provide such protection. But is it allowable and appropriate for both of them to apply to the very same design? Join the Patent Law Committee as it hosts a conversation with Ken Germain as he discuss the PC Cl. and Commerce Cl., and what type of IP protection is available.


The Board sustained this opposition to registration of FOUNDATIONAL MEDICINE REVIEW for "journals in the field of medicine" and "providing on-line non-downloadable articles in the field of medicine and health care" [MEDICINE REVIEW disclaimed], finding confusion likely with Opposer's registered mark FOUNDATION MEDICINE for the provision of medical data and information to healthcare professionals [MEDICINE disclaimed]. The Board found the involved goods and services to be legally identical and the marks to be highly similar - a solid foundation for its ruling. Foundation Medicine, Inc.v.Albert F. Czap, Opposition No. 91243763  (September 18, 2020) [not precedential] (Opinion by Judge Michael B. Adlin).


Opposer Foundation Medicine provides information under its marks not only to researchers, healthcare providers and biopharmaceutical companies, but also to “patients and families of patients who may have been diagnosed with cancer .” Applicant Czap, claimed that his goods and services “are offered to the public for no cost to consumers” via his website and via social media. 

Czap argued that Foundation's informational services are narrowly targeted to genomic testing and diagnostic services, but there was no such limitation in Foundation's registrations. His argument regarding sophistication of consumers was shot down for a similar reason, the Board noting that it must consider the least sophisticated consumer in its Section 2(d) analysis.
As to the marks, the Board found little to distinguish the word FOUNDATIONAL from the word FOUNDATION in appearance, sound or meaning. Moreover, even in Foundation's word-plus-design mark, shown above, the word FOUNDATION is dominant.  
In short, FOUNDATION MEDICINE (in both its standard character and design forms) and FOUNDATIONAL MEDICINE REVIEW are highly similar in appearance, sound, meaning and commercial impression, so much so that some consumers familiar with Opposer’s marks could even perceive Applicant’s as identifying one of Opposer’s publications.
Czap pointed to seven third-party registrations in an attempt to show that FOUNDATION is a weak formative, but the Board found them to be "qualitatively and quantitatively insufficient: "either the marks, or the goods or services, or both, are too different from Opposer’s mark and services for the third party registrations to be probative."
The Board concluded that confusion is likely, and so it sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: Opposer Foundation Medicine is represented in this proceeding by Douglas Wolf, John L. Strand, and Ryan van Olst of Wolf Greenfield.

Text Copyright John L. Welch 2020.

Friday, September 18, 2020

TTABlog Test: Is GNARLED ORCHARD for Hard Cider Confusable With GNARLY HEAD for Wine?

Delicato Vineyards opposed this application to register the mark GNARLED ORCHARD for hard cider, claiming a likelihood of confusion with its registered mark GNARLY HEAD for wines. Applicant Strother maintained that the goods are fundamentally different, that wine drinkers are increasingly sophisticated, and the the marks differ in connotation and commercial impression. How do you think this came out? Delicato Vineyards v. Philip Carter Strother, Opposition No. 91244351 (September 16, 2020) [not precedential] (Opinion by Judge David K. Heasley).

Channels of Trade: Although wine and cider are different goods, the question is whether consumers would mistakenly believe that the involved goods many emanate from the same source. The evidence showed that Applicant Strother sells both wine and hard cider. Neither the application nor opposer's registration contained any limitations as to channels of trade. The Board concluded that "the DuPont factors concerning the similarity or relatedness of Applicant’s and Opposer’s goods, classes of consumers, and channels of trade weigh in favor of finding a likelihood of confusion."

Consumer Care: Strother claimed that due to the enormous growth in sophistication of wine buyers, confusion is not likely between an apple cider and a grape wine. However, as the Board previously pointed out, the question is source confusion, not product confusion. The consuming public consists of  purchasers of alcoholic beverages, and "there is no reason to believe that these customers will be particularly sophisticated." Moreover, the Board must consider the least sophisticated purchaser. [What it the purchaser is so unsophisticated that he or she can't tell wine from hard cider? - ed.]. There are no limitations in the application or registration regarding price or quality. And consumers often order these beverages by the glass with little opportunity to carefully inspect the brand names.

Strength of Opposer's Mark: Delicato's sales and advertising figures were substantial, and it has successfully expanded its brand in fifteen years across the entire country, from its original zinfandel to a variety of varietals. The Board found that Delicato had achieved a "high degree of commercial strength" under the GNARLY HEAD brand name, and therefore is entitled to "'stronger' protection—protection over a wider range of related products and services and variations on visual and aural format."

The Marks: The Board found that "GNARLY overlaps GNARLED in sight, sound, connotation, and commercial impression." Moreover, "Opposer’s GNARLY encompasses both meanings: dangerous and twisted with age. *** Thus, the words GNARLED and GNARLY overlap in connotation and commercial impression. They appear prominently as the first word in each mark."

Given this marked similarity in the marks’ dominant lead components, the differences in their suffixes, HEAD and ORCHARD, do not suffice to distinguish them. According to Opposer, GNARLY HEAD refers to the twisted heads of aged vines, such as those depicted in its advertisement .... According to Applicant, GNARLED ORCHARD refers to an orchard that is weathered and bent. Both parties seek to evoke a similar impression: twisted, fruit-bearing plants from which their fermented alcoholic beverages are made.

In view of the noisy and sometimes chaotic conditions in bars and restaurants, where beverages are often order by the glass without an opportunity to see the label, minor differences in sound may go undetected. Consumers who do discern the differences in the marks may believe that one mark is a slight variation of the other.

Conclusion: Balancing the relevant duPont factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: Did you guess correctly? Do you think, in the real world, there is any likelihood of confusion here? 

Text Copyright John L. Welch 2020.

Thursday, September 17, 2020

All Ohio Annual Institute on Intellectual Property: Video Conference - October 7 & 8th

On Thursday, October 8th at 1PM, Yours Truly, The TTABlogger, will venture into the virtual wilderness of Ohio to present a webinar entitled "Meanwhile, Back at the TTAB," a review of recent developments and decisions at the CAFC and the Board. Register here. The program brochure may be downloaded here.

At 11AM on Wednesday, trademark law expert Ken Germaine will discuss recent Trademark Developments. Other speakers will review the past year in patent, copyright, advertising, and trade secret law.

Precedential No. 34: TTAB Rules That gTLD ".CAM" is Incapable of Functioning as a Source Indicator

The Board affirmed refusals to register the term ".CAM" in standard character and stylized form (shown below) on the Supplemental Register for an extensive list of services in International Classes 35, 38, 42 and 45, finding that ".CAM", in either form, is incapable of functioning as a source indicator under Section 23 of the Lanham Act. Applicant AC Webconnecting did not provide any evidence that .CAM is perceived as a service mark rather than a gTLD (generic top level domain name). In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048 (September 15, 2020) [precedential] (Opinion by Judge Peter W. Cataldo).

After the applications at issue were filed, AC Webconnecting entered into a registry agreement with ICANN, whereby AC Webconnecting was designated as the Registry Operator for the .CAM gTLD. The applications at issue do not explicitly and directly recite registry operator or registrar services, but AC Webconnecting acknowledged that its Class 45 services includes domain name registration, conducting domain name searches, legal services and consulting, all related to the .CAM gTLD.

In order to qualify for registration on the Supplemental Register under Section 23, a service mark must be "capable of distinguishing" the applicant's services, a determination that hinges on consumer perception. The TTAB has previously found that a proposed mark consisting solely of a gTLD "engender(s) the commercial impression merely of a top-level domain associated with the term comprising the proposed mark." AC Webconnecting argued it does not use its mark solely as a gTLD as it is always used and will always be used by Applicant to identify Applicant as the source of its numerous, high-quality services.” However, its website consistently refers to .CAM as a gTLD and not as a mark. Moreover, excerpts from third-party websites demonstrated that .CAM is perceived only as a gTLD "intended to be used by multiple parties as part of their domain names to identify multiple websites offering a variety of goods and services."

Turning to the specific services recited in the subject application, the Board found that for at least one service in each class, the term .CAM is incapable of serving as a source indicator: domain name registration and related services in Class 45; database management services in class 35; providing access to databases, the Internet and transmission of multimedia communications via the Internet in class 38;  and web site hosting services and search engine optimization in class 42. Because the proposed marks are incapable of distinguishing source with regard to at least one service in each of the four classes, they are unregistrable as to all refused services recited in those classes.

With regard to the stylized version of .CAM, the Board observed that "for a term otherwise unregistrable to be capable of distinguishing an applicant’s goods, the presentation of the term must be sufficiently striking, unique or distinctive so as to overcome its inherent incapacity and render the mark capable of serving as a source indicator." The mark at issue here failed to meet that standard. 

"The term '.CAM' is displayed in a very slightly stylized script that is not unique or unusual and the “dot” is displayed in the color green with no additional stylization or design." The green color of dot emphasizes the nature of the designation as a gTLD and will not be perceived as creating a separate commercial impression.

In sum, the proposed stylized mark "conveys the commercial impression of a gTLD." The stylization  does not present any unique characteristics. "It does not create a commercial impression separate from the unregistrable."

The Board therefore affirmed both refusals to register.

Read comments and post your comment here.

TTABlogger comment: I think the proposed mark .CAM is capable of serving as a mark, but AC Webconnect hasn't done enough to make it one. In my view, the Board applied the wrong test. Unless no gTLD can ever be a trademark, why isn't .CAM capable of becoming one? It may "fail to function" as a trademark but is it incapable of ever doing so?

Text Copyright John L. Welch 2020.

Wednesday, September 16, 2020

TTABlog Test: Is "MF MIRANDA FRYE & Design" Confusable with "FRYE" for Jewelry?

The USPTO refused to register the word-plus-design mark shown below, for jewelry, on the ground of likelihood of confusion with the registered mark FRYE, also for jewelry. Since the goods overlap, the Board must presume that the channels of trade and classes of consumers for those goods are the same. But what about the marks? How do you think this came out? In re Miranda Frye Inc., Serial No. 88347449 (September 10, 2020) [not precedential] (Opinion by Judge Thomas W. Shaw).

The Board noted that the cited mark is in standard characters and could be displayed in a style similar to that of applicant. Nothing in the record suggested that FRYE has any significance other than as a surname.

[A] surname preceded by a given name or initials is a common, highly conventional combination of word elements, and the name MIRANDA FRYE could well be interpreted as a more specific reference to a person or company that is otherwise identified by the surname FRYE.

The Board has held that the addition of a given name to a surname is insufficient to distinguish the combination from the surname alone, for Section 2(d) purposes. For example BRUCE WINSTON similar to WINSTON for jewelry; JOSE GASPAR; SAM EDELMAN.
The Board acknowledged that the initials MF and the surname MIRANDA appear prominently in applicant's mark, and it is often the first part of a mark that is more likely to be remembered and used to call for the goods. "Taken as a whole, MF MIRANDA FRYE could be perceived as the full name and initials of the person or company identified by the surname FRYE alone."
The Board found the word FRYE to be the dominant portion of the marks, and that they are "far more similar than they are different and, overall, convey similar commercial impressions. That is to say, the marks appear to be variations of each other that nonetheless point to a common source."   

And so the Board affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlogger comment: How did you do? If FRYE is a surname, would consumer expect there to be different, unrelated people with that same surname?

Text Copyright John L. Welch 2020.

Tuesday, September 15, 2020

Recommended Reading: Prof. Christine Farley, "The Lost Unfair Competition Law"

Professor Christine Farley of American University Washington College of Law, in her article, "The Lost Unfair Competition Law," notes the oft-repeated assertion that trademark law “is but a part of the broader law of unfair competition.” But what is the broader protection that unfair competition provides? Her article "explains why we have lost sight of this answer and become confused about the scope of unfair competition law today by providing a historical examination of the drafting and enactment of the act and mysterious treaty [The Inter-American Convention], and their forgotten connection."

Professor Farley observes that unfair competition law reached its high point in 1918 in International News Service v. Associated Press. Edward S. Rogers, a major architect of the Lanham Act, was one of the few who drafted the Inter-American Convention, which contains substantial unfair competition protection. However, the legislative history of the Lanham Act "reveals a disinclination to create a federal unfair competition cause of action." Section 43(a) is often enlisted to fill the gap (although it has led to erratic results like Belmora v. Bayer, in which Section 43(a) was read to provide a cause of action to a plaintiff whose pleaded trademark had never been used in the United States). Professor Farley has some suggestions as to how reclaim the lost law of unfair competition can be reclaimed.

Part I identifies the confusion about the scope of unfair competition law that exists today. Part II traces unfair competition law from the beginnings of U.S. trademark law in the late 1800s to the 1946 Lanham Act. *** Part III tracks Edward Rogers’s contributions to the international and domestic development of unfair competition law. Part IV describes the pioneering protection of unfair competition provided by the Inter-American Convention. Part V discusses how the emergence of the Erie Doctrine in the late 1930s threatened to create a void because state laws on trademark and unfair competition were underdeveloped compared with federal law. Part VI interrogates the history of Section 44 of the Lanham Act, demonstrating that it was meant to incorporate by reference the unfair competition provisions from Inter-American Convention. This section describes how the robust unfair competition protection enabled through Section 44 continues to lie dormant, and Part VII recounts how Section 43(a) instead emerged as the vehicle for unfair competition. *** Finally, Part VIII will offer some suggestion about how, in light of this history, the unfair competition law that was lost might be reclaimed.

Read comments and post your comment here.

TTABlogger comment: Thank you to The Trademark Reporter for granting permission to the TTABlog to provide a link to this issue. Copyright © 2020 the International Trademark Association. Reprinted with the permission of The Trademark Reporter®, 110 TMR No. 4 (July-August2020).

Text Copyright John L. Welch 2020.

Monday, September 14, 2020

Decisions of the TTAB and the CAFC on Registrability Issues July 2019 to August 2020

In preparation for two webinar presentations coming up in the next four weeks, I have put together an article summarizing the precedential decisions of the TTAB and the CAFC over the past 14 months. Download pdf here: "Decisions of the Trademark Trial and Appeal Board and the Federal Circuit on Registrability Issues: July 2019 – August 2020."

Read comments and post your comment here.

Text Copyright John L. Welch 2020.