Likelihood of Confusion – SoCal IP Law Institute

January 8, 2018 Trademark Office’s Bar on Immoral or Scandalous Marks is Unconstitutional Under the First Amendment ; Is DRIVEWISE confusingly similar with auto technology and insurance?

For our weekly SoCal IP Institute meeting on Monday, January 8, 2018, we will discuss the following cases: In Re Brunetti, (CAFC, December 15, 2017) (available here). Applicant tried to register the mark FUCT for clothing. The Examining attorney refused registration and the TTAB affirmed the refusal based on § 2(a) of the Lanham Act [...]

By SoCal IP|2018-01-08T09:18:01-08:00January 4th, 2018|Trademark, TTAB, Likelihood of Confusion|0 Comments

SoCal IP Institute :: July 31, 2017 :: Clothing Trademarks ; Functional Designs

For our weekly SoCal IP Institute meeting on Monday, July 31, 2017, we will discuss the following cases: In re Critelli, (TTAB. July 24, 2017) (available here). The USPTO refused to register the mark LAVA for outdoor survival clothing. LAVA ACCESSORIES had already been registered for "scarfs; travel clothing contained in a package comprising reversible jackets, pants, skirts, [...]

By SoCal IP|2017-07-26T09:31:05-08:00July 26th, 2017|Trademark, TTAB, Invalidity, Likelihood of Confusion|0 Comments

SoCal IP Institute :: July 13, 2015 :: Standard for exceptional case and ownership of a registered trademark as between a foreign manufacturer and a U.S. seller

Our weekly SoCal IP Institute meeting on Monday, July 13, 2015 will be a discussion of the following cases: UVeritech, Inc. v. Amax Lighting, Inc., TTAB Cancellation No. 92057088, June 29, 2015 (available here). In this TTAB cancellation proceeding, the U.S. seller petitioned to cancel the foreign manufacturer's trademark. The TTAB ruled in favor of the U.S. seller and [...]

By SoCal IP|2015-07-12T13:26:14-08:00July 12th, 2015|Patent, Trademark, TTAB, Attorney's Fees, Exceptional Case, Likelihood of Confusion|0 Comments

SoCal IP Institute :: April 13, 2015 :: A Citeable TTAB Decision (ProMark v. GFA) and Timely Atty Fees Motion in Slep-Tone

Our weekly SoCal IP Institute meeting on Monday, April 13, 2015 will be a discussion of the following cases: ProMark Brands Inc. v. GFA Brands Inc. (TTAB March 27, 2015) (available here). Here, ProMark (later assigned to H.J. Heinz Company) opposed GFA's trademark application for the plain word mark SMART BALANCE for: frozen appetizers containing poultry, meat, seafood or [...]

By SoCal IP|2015-04-10T15:26:53-08:00April 10th, 2015|Litigation, Patent, Trademark, TTAB, Use in Commerce, Attorney's Fees, Attorneys' Fees, Descriptiveness, Exceptional Case, Likelihood of Confusion, Opposition|0 Comments

SoCal IP Institute :: March 30, 2015 :: False Endorsement by Bob Marley and Issue Preclusion Based Upon TTAB Decisions

Our weekly SoCal IP Institute meeting on Monday, March 30, 2015 will be a discussion of two cases. The first is a 9th Circuit trademark case involving the exploitation of Bob Marley's likeness. For this case, we will be joined by Paul Bost, an associate in the Los Angeles office of Sheppard Mullin. He is [...]

By SoCal IP|2015-03-27T17:15:25-08:00March 27th, 2015|Trademark, Exceptional Case, Likelihood of Confusion, Issue Preclusion, Issue Preclusion|0 Comments

SoCal IP Institute :: February 9, 2015 :: The Broadest “Reasonable” Interpretation & Likelihood of Confusion at the TTAB

Our weekly SoCal IP Institute meeting on Monday, February 9, 2015 will be a discussion of: In re Imes, Case No. 2014-1206 (Fed. Cir. January 29, 2015 ) (available here). Here, Mr. Imes appeals a rejection of his U.S. patent application number 09/874,423 directed to a device for communicating a digital camera image and video [...]

By SoCal IP|2015-02-06T17:39:51-08:00February 6th, 2015|Patent, Trademark, TTAB, Claim Construction, Likelihood of Confusion|0 Comments

SoCal IP Institute :: November 17, 2014 :: 9th Circuit Relieves Insurance Co. of Duty to Defend IP Claims; TTAB 2(d) Refusal of “BLUE SANTA STEW HOLIDAY FEAST”

Our weekly SoCal IP Institute meeting on Monday, November 17, 2014 will be a discussion of a recent 9th Circuit case regarding insurance coverage of IP cases and an unusual TTAB holding. Brief synopses appear below. Street Surfing, LLC v. Great American E&S Ins., Case No. 12-55351 (9th Cir. 11/14/14 (available here): In an Amended Opinion, the 9th [...]

By SoCal IP|2014-11-14T17:23:24-08:00November 14th, 2014|Trademark, TTAB, Likelihood of Confusion, Insurance Coverage|0 Comments

SoCal IP Institute :: August 4, 2014 :: Patent infringement and Trademark oppositions

Our weekly SoCal IP Institute meeting on Monday, August 4, 2014 will be a discussion of a patent infringement case and a trademark opposition. Brief synopses of the cases appear below. Amdocs (Israel) Limited v. Openet Telecom, Inc., No. 2013-1212 (Fed. Cir. August 1, 2014) (available here). Amdocs sued Openet for infringing four of its [...]

By SoCal IP|2014-10-29T09:51:36-08:00August 3rd, 2014|Patent, Trademark, TTAB, Claim Construction, Descriptiveness, Likelihood of Confusion, Noninfringement, Opposition|0 Comments

Our weekly SoCal IP Institute meeting on Monday, July 7, 2014 will be a discussion of a Supreme Court case on copyright infringement and a California Appellate opinion on trade secrets. Brief synopses appear below. ABC v. Aereo (U.S. June 25, 2014) (available here). The Supreme Court held that Aereo's service, which provided subscribers the [...]

By SoCal IP|2014-10-29T09:51:36-08:00July 7th, 2014|Uncategorized, dilution-by-blurring, Fame and Distinctiveness, independent economic value, Non-Disclosure Agreement, Trade Secret, Trademark, TTAB, Use in Commerce, Attorneys' Fees, Damages, Dilution, Infringement, Intent to Use, Likelihood of Confusion|0 Comments

SoCal IP Institute :: June 2, 2014 :: TTAB Says ‘Chanel’ For Real Estate Services Dilutes the Fashion Brand; Altavion, Inc. wins trade secret case against Konica Minolta Systems Laboratory regarding its digital stamping technology

Our weekly SoCal IP Institute meeting on Monday, June 2, 2014 will be a discussion of a recent TTAB precedential case and state trade secret opinion. Brief synopses appear below. Chanel, Inc. v. Jerzy Makarczyk (TTAB May 27, 2014) (available here.). Here, Karczyk (“applicant"), filed an application pursuant to Section 1(a) of the Trademark Act to [...]

By SoCal IP|2014-10-29T09:51:37-08:00June 1st, 2014|Uncategorized, dilution-by-blurring, Fame and Distinctiveness, independent economic value, Non-Disclosure Agreement, Trade Secret, Trademark, TTAB, Use in Commerce, Attorneys' Fees, Damages, Dilution, Infringement, Intent to Use, Likelihood of Confusion|1 Comment