Prosecution Group LuncheonTrademark Updates

November, 2011

TEAS 4.9 Enhancements• Applicants will have the opportunity to list multiple

email addresses for receipt of USPTO emails.  • sound/motion/multimedia files may be uploaded

directly • Saved portable forms will retain any attachments • The Response to Suspension Inquiry/ Letter of

Suspension form will be enhanced to merge the existing form with the Response to Office (ROA) action form

• Others

Not Black and Not Fleece??• Brooks Brother filed for BLACK FLEECE for clothing, "not made

of fleece fabric," – rejected as deceptively misdescriptive• Applicant conceded that the term "'black fleece' is facially

misdescriptive of apparel that is not made of black fleece," but it contended that consumers are not likely to believe the misrepresentation

– applicant points to 18 million impressions of the January 2009 cover of GQ magazine featuring a photograph of the actress Jennifer Aniston wearing a BLACK FLEECE necktie.

the record does not reveal whether viewers of the image of an otherwise unclothed Ms. Aniston paid attention to her necktie or if they recognized it as belonging to the BLACK FLEECE collection.

– Three consumer declarations were "hardly overwhelming evidence" of customer perception of the mark, and were "far from conclusive" as to "source-indicating recognition by consumers."

• In re Retail Brand Alliance, Inc., Serial No. 77049126 (September 15, 2011) [not precedential].

Fraud Extends Beyond Registration• a trademark for which the registration was procured

by fraud is unenforceable.• P violated oath when it filed for Firehouse Grill & Pub,

when it had been unsuccessful in procuring a co-existence agreement with a more senior user.

• "Calli Baker's Firehouse Bar & Grill," benefitted by using fraud as a defense– P’s Registration was void/unenforcable– P’s Common law rights were not enforceable

• Is this ever curable? enforceable again?• Firehouse Restaurant Group, Inc. v. Scurmont LLC, Civil Action No. 4:09-cv-00618-RBH (D.S.C.

Oct. 17, 2011).