All TTAB practitioners are familiar with the heightened standard of proof required to prove fraud before the USPTO. However, many forget that proving an intent to deceive the USPTO, not the falsity of the statement or its materiality, is the lynchpin of every fraud claim. In a recent decision, the TTAB reminded practitioners of this
Be Precise When Expressly Abandoning a Trademark Application or Face the Consequences
In a recent precedential decision, the Trademark Trial and Appeal Board (“TTAB”) cautioned practitioners to be careful what they ask for and to draft their filings accordingly.
On September 8, 2021, the TTAB denied Applicant Grüne Erde Beteiligungs GmbH’s (“Grüne Erde”) motion for relief from judgment following its express abandonment of its opposed multi-class application
Precedential TTAB Decision Revisits Claim and Issue Preclusion
In a recent precedential decision, the TTAB again revisited the doctrines of claim and issue preclusion.
Valvoline Licensing & Intellectual Property LLC (“Valvoline”) opposed Sunpoint International Group USA Corp.’s (“Sunpoint”) application to register the mark MAXVOLINE on the sole ground of likelihood of confusion. Sunpoint moved for summary judgment based on the defense of res
Which Time Zone Controls the Timeliness of Discovery Requests at the TTAB?
In a recent precedential decision, the TTAB confronted the issue of timeliness of discovery requests served in opposition and cancellation proceedings—namely, whether Eastern Standard Time (EST) controls the timeliness of service of such discovery requests, regardless of the geographic location of the serving party. While not a particularly exciting legal issue, it is no doubt
TTAB Cancels Registration for Gun Barrel Trade Dress on Grounds of Functionality
On May 20, 2021, the TTAB issued a lengthy and comprehensive precedential opinion canceling Proof Research, Inc.’s registration for the trade dress of a gun barrel (as shown below) on grounds of de jure functionality under Section 2(e)(5).
The registered trade dress “consists of trade dress applied to gun barrels formed with a mottled pattern
USPTO Issues Warning to U.S. Attorneys Not to Aid Others in Circumventing the U.S. Counsel Rule
Yesterday, the USPTO issued an alert regarding emails that U.S. attorneys have been receiving from unlicensed persons offering to pay attorneys in exchange for use of the attorneys’ bar credentials in trademark filings. The USPTO views such communications as a tool intended to circumvent the U.S. counsel rule.
The USPTO cautioned U.S. attorneys that, by
Selection of Federal Circuit Review of a TTAB Decision Does Not Bar District Court Review of a Later TTAB Decision Issued in the Same Case
On March 17, 2021, in a matter of first impression, the United States Court of Appeals for the Fourth Circuit held a party appealing a decision of the United States Trademark Trial and Appeal Board (“TTAB”) may seek review of the decision in either the United States Court of Appeals for the Federal Circuit or
TTAB Cautions Applicants: Change of Conditions or Circumstances is Necessary to Excuse Application of Res Judicata
On March 5, 2021, the U.S. Trademark Trial and Appeal Board (“TTAB”) issued a precedential decision affirming refusal of SolarWindow Technologies, Inc.’s application to register the word mark POWERCOATINGS. The decision is a cautionary tale, for counsel and applicants alike, of the potential future ramifications of allowing an application to go abandoned following
The Trademark Modernization Act of 2020 is Enacted
On December 27, 2020, Congress signed the Trademark Modernization Act of 2020 (the “Act”), which had rare bipartisan support, into law.
The Act makes substantive changes to the Lanham (Trademark) Act that will better protect the relevant consuming public from confusion regarding the source of goods and services, and implement procedures that the
The TTAB Continues Its Recent Trend of Failure-to-Function Refusals
On December 1, 2020, the TTAB continued its recent trend of decisions refusing to register marks on the ground of failure-to-function. In another precedential decision, the TTAB refused Applicant Lee Greenwood’s (“Greenwood”) application to register the phrase GOD BLESS THE USA for use in connection with “accent pillows; decorative centerpieces of wood” and