Wednesday, April 25, 2012

Three Motions to Amend Marks: How Would You Rule?

Here are three recent cases involving motions to amend an opposed mark, each motion having the consent of the non-moving party. Of course, even with consent, such an amendment will be accepted only if it does not materially alter the mark. How would you rule?

MasterCard International Incorporated v. CambridgeCommerce, Inc., Opposition No. 91155999 (April 4, 2012) [Applicant's motion to amend its mark from that shown above to that shown below].

Free Spirit Publishing Inc. v. Robert L. Styles, Opposition No. 91204026 (April 4, 2012) [Motion to amend Applicant's mark from A BULLY FREE WORLD to A WORLD WITHOUT BULLYING].

Diageo North America, Inc. v. Spirits Of The USA LLC, Opposition No. 91204026 (March 27, 2012) [Motion to amend Applicant's mark from PELICAN BAY RUM to PELICAN RUM].

TTABlog hint: They all came out the same way.

Text Copyright John L. Welch 2012.


At 7:34 AM, Anonymous Anonymous said...

I agree with the second and third cases, but the first one? Really?

At 7:34 AM, Anonymous Anonymous said...

This comment has been removed by a blog administrator.

At 11:05 AM, Anonymous Anonymous said...

All three should have been refused.

At 11:27 AM, Anonymous Anonymous said...

First case decided incorrectly. Absolutely the same commercial impression.

At 1:04 PM, Anonymous Anonymous said...

Agree with all three. The first one goes from the impression of two rings forming an infinity symbol to two rings forming the number 8.

At 7:26 AM, Anonymous Anonymous said...

The interpretation of the mark in the first case as being the infinity symbol pre-amendment but the number 8 post-amendment seems rather strained. Neither the infinity symbol nor the number 8 appear to have any significance with respect to the identified services, so why wouldn't the consumer simply view the design element as two broken interlocking rings? The rings overlap so they don't even really look like the infinity symbol or the number 8.

At 8:24 AM, Blogger Robert said...

I also thought "infinity" vs. "8" in the first case. Also the parties thought the difference significant enough to be a part of their settlement. While the parties apparently thought it not so significant to be a material change, that might be too fine a parsing.

At 11:17 AM, Anonymous Morris Turek said...

I think the first case was decided incorrectly. I view the design element as two interlocking letter C's, since the words next to it both start with the letter C. I don't think switching the from horizontal to vertical makes any difference whatsoever and I don't think most people would see the amended design as the number 8 anyway.


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