The Last Two Slides from My INTA Presentation
Thank you for attending the INTA presentation yesterday. Because of my own technical incompetence, the last two slides in my presentation yesterday were given short shrift. A few people said they would like to see them, so here they are. If you click on each one, you will get a larger picture.
Read comments and post your comment here.
TTABlogger comment: See you next year, I hope.
Text Copyright John L. Welch 2024.
posted by John L. Welch @ 5/23/2024
17 comments
17 Comments:
Sophistication of consumers? Maybe a loser more often than not but it's often a tipping factor and it's out of place on that list of 100% losers
#11: “client” as a verb, lol
I really enjoyed your presentation yesterday at the INTA Annual Meeting - it was very informative (as your posts and presentations always are). Thank you for all of the work you do to keep us informed (and entertained). - Dani
What is the context for "8. Family of marks"?
Your slide suggests that every argument is doomed to fail. I cannot think of any argument that is not among the top ten Losing Arguments you have listed. I would love to see a summary of the top ten winning arguments, or even one.
What? No complaint about "T- TAB" ???
Well, I didn't get to explain the top ten list. I don't claim that every one of these arguments always loses. I do think items 1, 2, 7, and 10 always lose. Nos. 4, 8, and 9 nearly always lose. And the rest usually lose. Maybe I should re-order them in terms of likelihood to fail. As to what are winning arguments, there are lots of them - provided you have the evidence.
Good suggestion: I'll add "T-TAB" to the first list.
I should say 5 also loses : lack of actual confusion.
So, to re-cap:
1, 2, 5, 7, and 10 always lose.
4, 8, and 9 nearly always lose.
3 and 6 usually lose.
Incontestable registration -- that's just shorthand for "much harder to cancel." So I think "no such thing" is overstated.
As for # 1 -- reading limitations is a loser, but adding them is not. I once had a case where we amended to limit the goods to wholesale transactions, and then we one at the TTAB.
The 2001 version of the Top Ten list was presented in this article: https://wolfgreenfield.com/hubfs/The_Top_Ten_Losing_TTAB_Arguments.pdf
The term "incontestable registration" does not appear in the Lanham Act. It is use of the mark that becomes incontestable, if a Section 15 declaration is filed.
A registration can always be cancelled on the ground of abandonment, fraud, misrepresentation under 14(3), for example. So, no registration is "incontestable."
A registration may be more than five years old, and thus immune to certain attacks under Section 14, but that's the case regardless of whether a Section 15 Declaration of Incontestability is filed.
JLW
A great succinct presentation. I appreciate your list of Terms to Avoid and your list of Losing Arguments is one that invites one to look behind the bald face of the term to ascertain why the argument fails.
From the Australian in the hat, well done.
Bob Kelson
Agreed!
Lack of actual confusion is a loser in the TTAB, but a winner in front of most article 3 courts. The TTAB lives in the land of make believe.
Of course, in the courts one can bring in facts that are not considered at the TTAB, like trade dress, marketing approach, and actual channels of trade. Agreed that the TTAB is not the real world.
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