Tuesday, November 22, 2005

TTABlog Flotsam and Jetsam -- Issue No. 8

It's been a while since the last issue of Flotsam and Jetsam, but with the flow of decisions from the Board reduced to a trickle, why not take a break?

TTABlogger on duty at INTA Leadership Meeting
Naples, Florida

INTA Leadership Meeting: One thing I learned from the INTA mid-winter meeting: book your hotel early, or you may wind up at a golf resort 5 miles from the main hotel. I suppose many readers wouldn't mind staying at a golf resort, but I gave up golf when I was in college. I still remember shooting a frustrating 76 on my last round: I took a 9 on one hole because I couldn't get through the windmill. Anyway, I've already booked a room at the headquarters hotel in Toronto for INTA 2006. If you wait too long, you'll probably wind up at some distant ice hockey resort.

Judge Chapman to Retire: A well-placed source has informed the TTABlog that Administrative Trademark Judge Beth A. Chapman will retire at the end of the calendar year. She has served on the TTAB since 1998, after serving as an Examining Attorney, as a Law Office Managing Attorney, and as a TTAB interlocutory attorney. Notably, Judge Chapman was the only TTAB judge to attend the "Meet Two Bloggers" event at INTA 2005 in San Diego (noted here).

Judge Chapman

USPTO Annual Report: The United States Patent and Trademark Office’s annual Performance and Accountability Report is now posted at the PTO's website, and is available for downloading here in pdf form. "The report provides a comprehensive account of the agency’s programmatic activities for the year as well as production and financial data for FY 2005."

The exhaustive (and exhausting) 154-page report includes a wealth of statistical information regarding trademark-related filings. With regard to the TTAB, the report states (p. 143) that 10,855 cases are pending as of September 30, 2005, about 1/4 of which are ex parte appeals and the rest inter partes proceedings. During the fiscal year, 8,652 new cases were filed, and 8,655 were disposed of, meaning that the Board reduced its caseload by 3 cases during the year. The report also states that:

"The TTAB met its pendency goal in FY 2005. The goal was to issue final decisions and decisions on trial motions, on average, within ten weeks of the time they were submitted for decision. During FY 2005, the TTAB issued decisions, on average, in nine and a half weeks." (p. 34).

Gibson Guitar revisited: Last January, in a discussion here of trade dress rights in musical instruments, the TTABlog noted a pending lawsuit in Tennessee concerning, inter alia, alleged infringement of the product configuration trade dress of Gibson's "Les Paul" guitar. The case (and an article from The Trademark Reporter) raised interesting issues about the de jure functionality of the guitar's features. The Sixth Circuit recently reversed the district court's grant of a preliminary injunction to Gibson on its claim of trademark infringement, but did not reach the functionality issues. Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, Appeal No. 04-5836/5837 (6h Cir., September 12, 2005).

In a less than impressive opinion, the majority of the appellate court panel rejected claims of initial interest confusion and post-sale confusion. Because Gibson had conceded that there was no confusion at the point of sale, the court reversed the lower court's ruling. In light of the holding of no confusion, it was unnecessary for the court to consider the validity of the trademark.

The appellate court ruled that initial interest confusion is inapplicable to product configurations, because "[m]any, if not most, consumer products will tend to appear like their competitors [sic] at a sufficient distance." Its discussion of post-sale confusion oddly focused on the quality of defendant's guitars, rather than on Gibson's potential loss of control over its reputation should defendant's guitars decline in quality.

Text Copryight John L. Welch 2005.


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