Friday, April 22, 2005

TTABlog: Friday Flotsam and Jetsam

It's Earth Day, and I feel I should be sending a greeting card (on recycled paper, of course), but to whom? Anyway, this seems like a good time to clean out my "things-to-blog" folder.

**** The paper I delivered on April 14, 2005, at that ABA 20th Annual Intellectual Property Law Conference in Arlington, VA, is now available for downloading (in pdf form): "The TTAB in 2004: What Was Hot, What Was Not." I shared the podium with TTAB Judge Carlisle Walters, who reviewed the workings and benefits of ESTTA (the Board's electronic filing system), noted the steady increase in the number of electronic filings, pointed out that electronic filing is required in certain circumstances (see the Madrid-related rule changes), and encouraged use of ESTTA whenever possible.

Boston Public Gardens
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**** I am pleased to note that the TTABlog was included in the presentation "60 Sites In 60 Minutes" at the ABA TECHSHOW 2005 Conference in Chicago earlier this month. (I'm particularly pleased that the blog made the "serious" list rather than the "offbeat" list.) The blogs and websites on the lists are well worth checking out; and don't miss the "Hall of Fame" websites from prior years.

The Art Institute of Chicago
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**** Turning to perhaps more substantive matters, on April 19, 2005 (Appeal No. 05-1165), the CAFC dismissed the appeal in the ARCHIE comic books v. ARCHÉ cosmetics case, TTABlogged here. The reason for the dismissal is not revealed, but my guess is that the appellant calculated that the likelihood of success on appeal was not great.

**** Finally, on April 19th, the U.S. House of Representatives passed the new dilution bill, The Trademark Dilution Revision Act of 2005 (H.R. 683), by a vote of 411-8. This new bill substantially re-writes Section 43(c) of the Trademark Act. As discussed in the House Report, the bill was spurred by the Supreme Court's Victoria's Secret decision, which held that (in a civil action) a claim under the FTDA requires a showing of actual dilution, not just a likelihood of dilution. The proposed new Act specifies that relief is available if dilution is likely.

In addition, the bill plugs another hole in the FTDA by making blurring by tarnishment actionable. Among other things, the bill also requires that a mark must be "widely recognized by the general consuming public" in order to qualify as famous, sets forth a list of factors to be considered in determining dilution by blurring, and provides an express exclusion for parody, criticism, and commentary.

The Capitol
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In the TTAB context, the bill amends Sections 13 and 14 of the Trademark Act to specify that the "likelihood of dilution" standard applies in opposition and cancellation proceedings, and that blurring by tarnishment is also an available ground. The TTAB had already concluded that under the current version of the FTDA, likelihood of dilution is the applicable standard (at least when the challenged mark has not been put into use). In that regard, see Section II. A of my "TTAB in 2004" article, linked above.

Senate passage of this bill is fully expected, although when that will happen remains to be seen in light of current Congressional controversies.

Text and three photograph ©John L. Welch 2005. All Rights Reserved.


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