Seattle Trademark Lawyer

Last March the U.S. Trademark Trial and Appeal Board rolled out a pilot program to expedite the cancellation of abandoned registrations. 

The U.S. Patent and Trademark Office’s administrative law arm now randomly selects over half of all cancellation petitions that allege abandonment or nonuse as a claim. Participation is voluntary, but if the parties opt in, they can get a decision in about 50 days. They also enjoy streamlined discovery and a decision on summary judgment-style briefs.

Here’s how the TTAB describes the program:

“Under the pilot, the TTAB identifies newly-filed cancellation proceedings limited to abandonment or nonuse claims that may benefit by some form of the Board’s existing Accelerated Case Resolution (ACR) procedures. The TTAB has an established practice of offering ACR in inter partes proceedings to simplify and speed up proceedings, allowing the parties to save time and expense. The standards of proof in an ACR proceeding remain the same as those in a traditional proceeding, and a final decision rendered under ACR may be appealed in the same manner and under the same time frames as non-ACR decisions.”

If the only issue is whether the registrant is not using the mark in the marketplace, the process should be easy, right? That’s the TTAB’s thinking, and it’s smart. The normal process to test whether a registrant is entitled to maintain its registration is often too cumbersome and expensive to be useful.

The standard for abandonment is three years of consecutive nonuse of a trademark, coupled with an intent not to resume use. If a company is out of business or its branded product has been permanently shelved, the trademark owner’s registration shouldn’t block others. It’s a zombie that should be quickly cancelled when attacked.

The high cost of the usual process drives abandoned claims to the sidelines. In the TTAB’s words, the overall default rate is “fairly high.” That’s my experience as well. While that’s not necessarily a bad thing, it would be better to have as many claims as possible decided on their merits. Making the cancellation process quicker and easier should help more parties to do so.

As TTABlogger John Welch pointed out on Friday, the Trademark Trial and Appeal Board has published the third edition of the Trademark Board Manual of Procedure (TMBP).

Nonlawyers, newbies, and non-trademark specialists, take note. This is a valuable resource.

Experienced TTAB practitioners routinely consult the TBMP for quick guidance on procedure. It’s easy.

The third edition incorporates changes in the law through November 15, 2010. It’s downloadable as a complete book; it’s searchable; it’s indexed; and it’s easily browsable. There’s even a table describing updates from the second edition, which the TTAB published in 2004.

This version covers the discovery conference, initial disclosure, expert disclosure, and pretrial disclosure obligations the Board began to require in November 2007. It also details the Board’s Accelerated Case Resolution program, its effort to streamline cases and save parties money.

Clearly, the TTAB put a lot of work into this. Take advantage of it. I know I will.

BeauxKat’s (left) and Franciscan’s raven logos

Redmond, Wash.’s BeauxKat Enterprises, LLC, filed an intent-to-use application to register BLACK RAVEN BREWING COMPANY as a trademark with the Patent and Trademark Office for beer with “brewing” and “company” disclaimed.

Franciscan Vineyards, Inc., opposed on an alleged likelihood of confusion with its prior registrations for RAVENSWOOD, RAVENS WOOD, RAVENS, RAGIN’ RAVEN, and a stylized raven bird design for wine, clothing, and sauces.

On June 21, the Trademark Trial and Appeal Board sustained the opposition.

“We find that the du Pont factors, on balance, weigh in favor of a finding of likelihood of confusion. We conclude that consumers familiar with opposer’s wine sold under the mark RAVENS, would be likely to believe, upon encountering applicant’s mark BLACK RAVEN BREWING COMPANY for beer, that the goods originate from or are associated with or sponsored by the same entity.”

The Seattle-based Brewery Log Blog calls the decision “somewhat of a travesty,” noting the TTAB continues to lump beer and wine together, which could cause problems for both industries.

“This country has a glut of wine and beer producers,” it argues. “Many have extremely similar names (i.e. Stone Cellars v. Stone Brewing; Fat Cat Beer v. Red Cat Wine; Sea Dog, Laughing Dog, Lazy Dog, Spotted Dog and [a] whole mess of other dog breweries and wineries). This could open the floodgates for more challenges in between these two industries.”

Well, I wouldn’t say floodgates, and I question the precedential value of the decision, but TBLB’s point is well taken. And props for watching the TTAB!

The case cite is Franciscan Vineyards, Inc. v. BeauxKat Enterprises, LLC, Opposition No. 91181755 (TTAB June 21, 2010).

What remained of the trademark dispute between Autodesk, Inc., and Open Design Alliance has settled. (See previous STL posts on the Western District part of the dispute here, here, here, and here.)

Autodesk sells design, engineering, and entertainment software, including AUTOCAD computer-aided design (CAD) software. The Seattle-based Open Design Alliance is an association of CAD customers and vendors that promote open industry-standard formats for the exchange of CAD data.

The dispute centered on Open Design Alliance’s use and registration of an open drawing format for CAD data called OPENDWG, which Autodesk claimed infringed its trademark rights in DWG.

In 2007, the parties entered a stipulated Consent Judgment that disposed of the Western District portion of the suit (summarized here).

Autodesk summarized the settlement of the Trademark Trial and Appeal Board portion as follows: “Autodesk initiated proceedings with the United States Patent and Trademark Office, Trademark Trial and Appeal Board (TTAB) in 2007 to cancel the ODA’s DWG-based trademark registrations to avoid confusion with Autodesk’s established DWG brand and trademark. The ODA has agreed to cancel its DWG-based trademark registrations and cease use of DWG and DWG-based trademarks in its product marketing and branding, and Autodesk has agreed to withdraw the cancellation proceedings with the TTAB. The settlement does not preclude ODA from developing interoperable software or from using the .dwg extension in its file names. Terms and conditions of the settlement agreement are confidential.”

The case cite is Autodesk, Inc. v. Open Design Alliance, Cancellation No. 92047002 (TTAB). 

Plaintiff One True Vine, LLC, sells wine under the LAYER CAKE trademark. Defendant The Wine Group LLC under the CUPCAKE trademark. OTV sued Wine Group in the Northern District of California for trademark infringement.

Some background: OTV filed an intent-to-use application for the LAYER CAKE mark with the PTO in March 2006. Its application stated OTV intended to use the mark in connection with “white wine, red wine.” The PTO published the mark for opposition in August 2006. The opposition period closed, the application was allowed, OTV submitted its statement of use and supporting declaration, and the PTO issued a registration.

The wrinkle is OTV admitted that it does not sell, and has never sold, white wines under its LAYER CAKE mark. OTV has only sold red wines under that mark. Plaintiff contends it did not realize that the statement of use included “white wine, red wine” and not merely “wine.”

In October 2007, Wine Group filed an application to register its CUPCAKE mark for use in connection with “wine.” The USPTO published the mark for opposition in February 2008. In May 2008, during the opposition period, OTV sent Wine Group a letter demanding that Wine Group abandon its application to register the CUPCAKE mark and cease using the CUPCAKE mark on its wines. When Wine Group made no move to do so, OTV opposed Wine Group’s application. After determining that OTV never sold white wine under the LAYER CAKE mark, Wine Group moved to amend its answer to OTV’s notice of opposition before the Trademark Trial and Appeal Board to include a counterclaim for cancellation of OTV’s registration based on fraud.

OTV filed its lawsuit in March 2009. In April 2009, the TTAB suspended proceedings pending final disposition of this action. Wine Group answered the complaint and counterclaimed for cancellation based on fraud. In May 2009, Wine Group filed a motion for summary judgment on its counterclaim, which the court denied.

OTV then moved to amend its registration to delete “white wine” from the listed goods. This amendment would modify the listing of goods on which the LAYER CAKE mark is used in commerce to read “red wine” instead of “white wine, red wine.” OTV argued it has good cause to amend the register because the register is a public document that provides notice to the public and should therefore be made accurate. Plaintiff further argued that such an amendment would alter only the list of products used in connection with the mark, not the mark itself.

On Nov. 4, the court granted OTV’s motion.

“Defendant [Wine Group] does not argue that such an amendment would materially alter the character of the mark. Rather, defendant argues that the motion is ‘both too late and too early.’ According to defendant, the proposed amendment is too late because plaintiff [OTV] has failed to amend the registration in the past — and because plaintiff has already asserted the existing registration in the TTAB and in this court, as the basis for its infringement claim. Defendant points to no authority, however, suggesting the existence of a time limit on the court’s authority to correct the register pursuant to the Lanham Act.

“Defendant also argues that the proposed amendment is too early. This is so, according to defendant, because defendant’s counterclaim to cancel plaintiff’s registration has not yet been adjudicated. Defendant is apparently concerned that such an amendment will in some way moot or invalidate its counterclaim. Yet plaintiff cannot nullify a claim that it procured its trademark through fraud on the USPTO by now amending its trademark registration. If, as defendant alleges, plaintiff committed fraud on the USPTO, a post hoc amendment of the trademark register does not serve to moot or rectify such fraud. Granting the instant motion does not render the counterclaim moot. Accordingly, there is no reason not to amend the register to correct what all agree is erroneous information.”

The case cite is One True Vine, LLC v. Wine Group LLC, 2009 WL 3707512, No. 09-1328 (N.D. Calif. Nov. 4, 2009).