1 / 5

Prosecution Group Luncheon

Prosecution Group Luncheon. May, 2011. General Announcements. Version 3 of TBMP now available online; copies in the print rooms USPTO submits “Trademark Litigation Tactics” report to Congress, April 2011. Eva’s Bridal – 7 th Cir.

carney
Download Presentation

Prosecution Group Luncheon

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

E N D

Presentation Transcript

  1. Prosecution Group Luncheon May, 2011

  2. General Announcements • Version 3 of TBMP now available online; copies in the print rooms • USPTO submits “Trademark Litigation Tactics” report to Congress, April 2011

  3. Eva’s Bridal – 7th Cir. • Owner of the EVA’S BRIDAL mark had been licensing the name to relatives for other stores • One license agreement expired and owner sued for using the mark without a license and without payment • Dist. Ct. – owner had abandoned the mark by engaging in naked licensing (not exercising reasonable control over quality) • Owner argued that they never doubted the high standards of the other store owners and had no reason to regulate - all stores sold the same designer dresses - consumers essentially do their own regulating • 7th Cir. affirmed • There is no requirement to ensure “high quality” goods – rather, trademark owners must ensure “consistent and predictable quality” • How much control is enough? Case by case basis • In this particular case, there was no control Eva’s Bridal Ltd. v. Halanick Enterprises Inc., 98 USPQ2d 1662 (7th Cir. 2011)

  4. The ‘Eddie Bauer Guarantee’ Fails • Eddie Bauer filed on the mark: OUR GUARANTEE EVERY ITEM WE SELL WILL GIVE YOU COMPLETE SATISFACTION OR YOU MAY RETURN IT FOR A FULL REFUND • Does not function as a trademark • Commercial impression to the relevant public is merely informational In re Eddie Bauer Licensing Services LLC, Serial No. 77585551 (May 2, 2011) [not precedential]

  5. Different Word – Same Meaning • ITOWNS and IVILLAGE confusingly similar for news services • TTAB noted the differences in sound and appearance, but ruled that their "similarity or identity" in meaning outweighed the differences so that the marks as a whole are similar in commercial impression. • "The ordinary meaning and usage of the two words are so close as to render the marks similar in the minds of ordinary consumers, who are not likely to be experts in the definitions of municipalities." • CLOUDBANKS and FOGBANKS confusingly similar for wine • TTAB ruled that the substantially similar meaning between 'fog' and 'cloud' outweighs any differences in appearance and sound. • "The ordinary meaning and usage of the two words are so close as to render the marks similar in the minds of ordinary consumers, who are not likely to be experts in meteorological terms." In re The Hartford Courant Company, Serial No. 77404276 (April 22, 2011) [not precedential] Fast Forward Brands, LLC v. Houdini, Inc., Opposition No. 91188001 (April 22, 2011) [not precedential]

More Related