Articles Posted in TTAB – Trademark Trial And Appeal Board

Los Angeles, CA – Trademark attorneys for Metrokane sought review and reversal, at the Federal District Court in Los Angeles, of the final decision of the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) cancelling the registration of its Houdini trademark. Metrokane’s Houdini trademark was registered with the USPTO on February 11, 2003, for use on lever-pull corkscrews and other bar accessories.

los-angeles-trademark-attorney-ttab-uspto-houdini.jpgIn 2005, Defendant Houdini, Inc. filed applications with the USPTO to register its “Houdini” mark for use in connection with, among other things, corkscrews, coasters, wine glasses, and gift baskets. The Trademark Examining Attorney rejected Defendant’s applications because its Houdini marks were likely to cause confusion with Metrokane’s prior registration. In response, Defendant filed with the TTAB a Petition to Cancel Metrokane’s trademark registration, wherein Defendant claimed prior use of the Houdini mark in connection with its gift basket design. The TTAB, in turn, granted the Defendant’s petition for cancellation and cancelled Metrokane’s trademark registration.

Metrokane, through its complaint filed with the federal district court, now seeks de novo review of the TTAB’s decision, pursuant to 15 U.S.C. § 1071(b). Metrokane contends that the TTAB decision was incorrect because: (1) the TTAB incorrectly rejected Metrokane’s laches defense, (2) the TTAB incorrectly accepted Defendant’s unsubstantiated allegations of prior use, and (3) the TTAB incorrectly found a likelihood of confusion. The case is titled Metrokane, Inc. v. Houdini, Inc., CV 08-05428 DSF (C.D. Cal. 2008).

The Trademark Trial And Appeal Board (“TTAB”) issued a ruling in In re Right-On Co., Ltd., affirming the examining attorney’s refusal to register Right-On’s three trademark applications, covering stitching on the back pockets of jeans, because they were a form of ornamentation and were not inherently distinctive to function as trademarks. Click HERE To Read The Opinion.

jeans-stitching.jpgRight-On filed applications to register as trademarks on the Principal Register the pocket-stitching designs shown to the right for various apparel and garment goods. The focus of the appeal to the TTAB was restricted to jeans only. All three applications were based on a request for extension of protection under Section 66(a) of the Trademark Act, 15 U.S.C. §1141f(a) or, in other words, extension to the United States was sought from an international registration. The Examining Attorney refused registration of the pocket-stitching designs because they are “decorative or [] ornamental feature[s] of the goods that are not inherently distinctive and thus would not be perceived as [] mark[s] by the purchasing public without further evidence of acquired distinctiveness.” The applicant, surprisingly, “elected not to attempt a claim of acquired distinctiveness under section 2(f)” but instead appealed the final refusal to the TTAB.

The TTAB judges were not persuaded by the applicant’s argument that other stitching-designs on jeans have been held inherently distinctive and registerable, noting that each case must be decided on its own set of facts. Applicant’s arguments and citations to other allowed trademarks “provides little insight other than to indicate that pocket stitching designs have sometimes been found to be inherently distinctive and sometimes found not to be inherently distinctive.”

A trademark cancellation proceeding – which is similar to a lawsuit – was filed at the Trademark Trial and Appeal Board (TTAB) by John Lennon’s widow, Yoko Ono, against Lennon Murphy, the registrant of the “Lennon” trademark. Murphy, a musician, filed an “intent to use” trademark application with the United States Patent and Trademark Office (USPTO) for the trademark “LENNON” on April 11, 2001. The trademark application was published on October 29, 2002 and was registered on January 21, 2003.

JohnLennon.jpgOno alleges that she is the owner of two registered trademarks for “John Lennon” (although she fails to disclose that they are for a design – John’s signature pictured to the left – and not a word mark) for use with “paper products, tote bags and address books” and “eyewear and eyewear accessories.” Murphy’s registration, on the other hand, is for the use of the “Lennon” trademark on musical sound recordings and entertainment services by a musical group.

Ono alleges that the use of the “Lennon” trademark will dilute, either by blurring or tarnishment, the power of her John Lennon trademarks. Ono further alleges that Murphy committed fraud on the USPTO in her application by not disclosing that “Lennon” was her first name and that Murphy lied to the USPTO when she stated that she began using the trademark in 1997, at the age of 15. Click To Read Ono’s Filing.