Trademark Update

January 16, 2014

Applicant Must Pay PTO Fees

• District court review of an ex parte appeal decision by the TTAB

• Section 1071 (b)(3) – In any case where there is no adverse party ...

all the expenses of the proceeding shall be paid by the party bringing the case, whether the final decision is in favor of such party or not.

• Applicant must pay PTO’s expenses (including attorneys’ fees), win or lose

• This particular case = over $36,000 (after losing on Summary Judgment)

• Shammas V. Focarino (E.D.Va. Jan. 2014)

District Court Reverses TTABDescriptiveness Rejection

• TTAB found INTELLIGENCE QUARTZ merely descriptive of watches– Consumers will understand the mark to mean

that the watch contains a quartz component controlled by a computer chip

• In actuality, the quartz is not controlled by a computer chip, rather the quartz oscillates to provide a time base for the device

• Mark does not convey an immediate idea, requires imagination and multistep reasoning, therefore suggestive

• Timex Group USA, Inc. v. Focarino (E.D.Va. Dec. 2013)

668-Word Trademark

• Applicant sought to register mark for cartoon strips and other printed matter

• Examiner refused registration for “failure to function” as a trademark, TTAB affirmed:– Proposed mark is “simply too great to be a useful means for

consumers to differentiate one source from another.”• Distinguished from McDonald’s registration:

– TWOALLBEEFPATTIESSPECIALSAUCELETTUCECHEESEPICKLESONIONSONASESAMESEEDBUN 

• In re Prema Jyothi Light, Serial No. 76293326 (2013)