TTAB Posts August 2013 Hearing Schedule
The Trademark Trial and Appeal Board has scheduled seven (7) oral hearings for the month of August, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.
August 8, 2013 - 2 PM: In re Datapipe, Inc., Serial No. 85173828 [Section 2(e)(1) mere descriptiveness refusal of YOUR CLOUD for "electronic data storage services, namely, storing electronic data at data centers; Computer services in the nature of providing an integrated suite of data and computer related services, namely, electronic data storage"].
August 13, 2013 - 10 AM: Clear Choice Holdings, LLC v. Implant Direct Int'l., Opposition No. 91190485 [Section 2(d) opposition to registration of REAL CHOICE in view of the registered marks CLEARCHOICE, CLEARCHOICE DENTAL IMPLANTS, and CLEARCHOICE DENTAL IMPLANT CENTER, all for dental implant services].
August 21, 2013 - 2 PM: In re Monica Krause, Serial No. 79071482 [Refusal of CE'REAL for "confectionery, namely, candy, chocolate and chocolate products, namely, chocolates and chocolate candy, wafers, pastilles; pastries, cookie based snack bars, ice-cream, preparations for making the aforementioned goods, namely, cocoa powder, cake mixes, cookie mixes, mixes for making ice-cream" on the grounds of mere descriptiveness under Section 2(e)(1) and improper deletion of the standard character claim (as an unacceptable amendment to the drawing)].
August 22, 2013 - 11 AM: Harry Winston, Inc. and Harry Winston Ultimate Timepiece SA v. Bruce Winston Gem Corp., Opposition No. 91153147 [Opposition to registration of BRUCE WINSTON for jewelry on the grounds of likelihood of confusion with the registered mark WINSTON and HARRY WINSTON for jewelry, and fraud].
August 27, 2013 - 10 AM: In re Visionstar, Inc., Serial No. 85319715 [Section 2(d) refusal of MAXGAIN for "natural supplements for male enhancement" in light of the registered mark MAXIMUM GAIN for food, herbal, and other supplements].
August 28, 2013 - 11 AM: In re Autodesk, Inc., Serial No. 78852798 et al. [Refusals to register DWG, DWG & Design, DWG TRUEVIEW, DWG TRUECONVERT, and DWG EXTREME for "computer software for data management and creation and manipulation of engineering and design data, particularly adapted for engineering, architecture, manufacturing, building, and construction applications, together with instruction manuals sold as a unit; computer-aided design software; computer software for animation, graphics and design modeling applications" on the ground that DWG is merely descriptive of the goods and lacks acquired distinctiveness].
August 29, 2013 - 2 PM: Carl Karcher Enterprises, Inc. v. Carl's Bar & Delicatessen, Inc., Opposition No. 91188150 [Opposition to registration of CARL'S BAR and CARL'S BAR & DELICATESSEN for "restaurant, bar and catering services" on the ground of likelihood of confusion with, and likely dilution of, the registered mark CARL'S, JR., in standard character and various design forms, for restaurant services].
Text Copyright John L. Welch 2013.
posted by John L. Welch @ 8/01/2013
2 comments
2 Comments:
The YOUR CLOUD appeal is fascinating because yesterday applicant filed a paper with the Board stating that it just learned from the new examining attorney assigned to the case that the descriptiveness refusal issued as the result of an internal USPTO guideline to examining attorneys instructing them to treat "MY ____" marks (where the blank is a descriptive term) as distinctive but "YOUR ____" marks as descriptive. This is contrary to a nonprecedential decision in which the Board stated it saw “no reason why, in general, a distinction should be made between the words MY and YOUR in terms of whether a mark is descriptive.”
Applicant writes in yesterday's filing:
"Applicant learned only two days ago from the new examining attorney in this case that the disparate treatment between MY CLOUD [in approved applications/registrations] and YOUR CLOUD was apparently based upon a distinction between the words MY and YOUR made in an internal, nonpublic examination guide. That guide was not referenced in the office actions of the prior examining attorney, but has obviously tied the hands of the new examining attorney who candidly disclosed how the examination guide’s provisions on MY and YOUR produced the refusal. Thus, Applicant just recently learned that it has been fighting against a phantom provision that it wasn’t previously aware of.
It really is outrageous. I'm a former examining attorney and frankly didn't give these internal guidelines that much thought when I was at the Office. If you're an examining attorney, you do what you're told. But think about it: someone in the Commissioner's Office is essentially making a finding of fact for all such marks, and this finding dictates all examining attorneys' treatment of these marks. Yet this guideline is not incorporated into the TMEP or otherwise made public. It's secret law.
Kudos to applicant's attorney for fighting this.
Applicant's attorney might consider an FOIA request to get a copy of the internal guideline driving the examining attorney's refusal.
http://www.uspto.gov/ip/boards/foia_rr/submit.jsp
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