Trademark Trial & Appeal Board

Apparel

1. Opposition Scandalousness and Disparagement Claim

   Although the Board failed to find that Applicant's mark SEX ROD for clothes was likely to be confused with our client's baseball club's mark RED SOX in the same stylized lettering, the Board sustained our arguments that the applied-for mark would be viewed as a sexually vulgarized disparaging version of the club's mark for which lack of confusion and parody were not defences. Boston Red Sox Baseball Club Limited Partnership v. Brad Francic Sherman, 88 U.S.P.Q. 2d 1581 (T.T.A.B. 2008)
2. Opposition Confusion Claim Based on our client's registered mark ENYCE for apparel, successfully opposed application to register Enyce for custom automotive accessories. The opinion was designated as a citable precedent because it found that the applicant did not have a bona fide intention to use the applied-for mark. L.C. Licensing, Inc. v. Berman, 86 U.S.PQ. 2d 1883 (T.T.A.B. 2008)

Automotive

1. Opposition Functionality Claim

   Successfully opposed application to register tire tread design on grounds of functionality. Goodyear Tire and Rubber Co. v. Interco Tire Corp., 49 U.S.P.Q. 2d (T.T.A.B. 1998).

Cosmetics; Fragrances

1. Opposition Confusion

   Based on our client's registered mark LOVE YOUR BABY for lotions and baby care products, successfully opposed application to register LOVE MY BABY for body soaps. F.D.C. Wholesale Corp. v. La Cibeles, Inc., 1999 TTAB LEXIS 439 (T.T.A.B. 1999).

Food; Supplements; Beverages; Restaurants

1. Cancellation Bona Fide Use Defense

   Defeated summary judgment motion by owner of KISSES trademarks claiming that our client's single sale of SWISSKISS to a candy wholesale distributor was not a bona fide use in commerce and that the subsequent interruption of use was not due to special circumstances including fear of legal proceedings. Hershey Chocolate & Confectionery v. Promotion in Motion, Inc., 2007 TTAB LEXIS ________ (T.T.A.B. 2007).

2. Cancellation Confusion Claim

   Based on our client's prior use of the marks LONGEVITY NETWORK and LONGEVITY for vitamins, obtained cancellation of registration of AMERICAN LONGEVITY (with 'American' disclaimed), affirmed by summary judgment on appeal to a federal district court. We subsequently obtained a jury verdict of $3.1 million. Longevity Network, Ltd. v. Wallach, 2004 TTAB LEXIS 171 (T.T.A.B. 2004), aff'd, not reported (W.D. Cal. 2005).

3. Opposition Confusion Claim

   Based on our client's registered trademark THE SHARK BAR for bar and restaurant services, successfully opposed application to register SHARK BAR for restaurant services. Shark Rest. Corp. v. Miranda, 2000 TTAB LEXIS 558 (T.T.A.B. 2000).

Jewelry

1. Opposition and Cancellation Confusion Defense

   Successfully defended against claim that our client's membership mark and service mark LEADING JEWELERS OF THE WORLD & Design was likely to cause confusion with membership mark MEMBER LEADING JEWELERS GUILD & Design. Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 U.S.P.Q.2d 1901(T.T.A.B. 2007).

Music

1. Opposition Confusion Claim

   Based on our client's ownership of BUDDAH, BUDDHA RECORDS and BUDDAH RECORDS for musical sound and video recordings and music information services for its record label, successfully opposed application to register YOU DA BUDDHA for sound recordings, downloadable music, live performance and fan club services for a band. The Board found our client's marks to be famous and thus entitled to a broad scope of protection. BMG Special Products, Inc. v. David Anthony Jagosz, 2003 TTAB LEXIS 534 (T.T.A.B. 2003).

2. Opposition Confusion Claim

   Based on our client's ownership of 'dog and phonograph design' mark for musical and video sound recordings, radios and television sets, successfully opposed application to register a 'bunny and phonograph design' mark for pre recorded tapes and CDs featuring music. General Electric Co. v. Asha Records, Inc., 1998 TTAB LEXIS 135 (T.T.A.B. 1998).

Publishing

1. Cancellation Confusion Claim

   Based on our client's prior use of mark 21ST CENTURY MARKETING for mailing list marketing services, successfully cancelled registrations for TWENTY-FIRST CENTURY MARKETING GROUP and 21ST CENTURY MARKETING GROUP for public relations services. Twenty-First Century Products, Inc. v. 21st Century Marketing Group, Inc., 1999 TTAB LEXIS 598 (T.T.A.B. 1999).

Sports

1. Opposition and Cancellation Infringement Claims and Defenses

   We represent Major League Baseball Properties in all opposition and cancellation proceedings.

2. Opposition Confusion Claim

   Based on our client's prior uses of the mark BABY BOMBERS for the Staten Island Yankees baseball club, successfully opposed application to register BABY BOMBERS for clothing; affirmed on appeal. Hart v. New York Yankees Partnership, 2006 U.S. App. LEXIS 14315 (Fed. Cir. 2006).

Tobacco

1. Cancellation Priority; Non-use Claims

   Successfully represented British American Tobacco in canceling the U.S. registration of the mark BELMONT for cigarettes by Philip Morris on the ground that the mark was abandoned due to a lack of bona fide use of the mark in the United States by Philip Morris. British American Tobacco Co. v. Philip Morris USA, Inc., 2004 TTAB LEXIS 472 (T.T.A.B. 2004).

2. Opposition Descriptiveness Defense

   Obtained dismissal of opposition against our client's application to register NEW LOOK for cigarettes. Board found that NEW LOOK is neither merely descriptive nor deceptively misdescriptive. R.J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 U.S.P.Q. 169 (T.T.A.B. 1985).

3. Genericism Claim

   Successful as lead counsel for a group of 20 opposers in obtaining summary judgment, affirmed on appeal, against a concurrent use trademark application filed by BellSouth to register the yellow pages Walking Fingers logo for classified telephone directories. Court found that the Walking Fingers logo does not function as a trademark. BellSouth Corp. v. DataNational Corp., 60 F.3d 1565 (Fed. Cir. 1995).

Web Services

1. Cancellation Confusion Defense

   Successfully defended against attempted cancellation of TAG ONLINE, TAG ONLINE MALL and TAGX for web-related services brought by owner of TAG originally for computers which subsequently expanded into the web design field. Technology Advancement Group, Inc. v. TAG Online, Inc., 2005 TTAB LEXIS 290 (T.T.A.B. 2005).

Prior results do not guarantee a similar outcome.