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Trademark Trial & Appeal Board

  • Opposition Lack of Bona Fide Intent and Confusion Claim
    The Board sustained our client’s opposition against an intent to use application to register CUBNOXIOUS as a trademark for "shirts" based on  (1) a lack of documentary evidence of intent amounting to an "application merely to reserve a right in the mark," and (2) a finding that the extensive evidence we introduced established that our client’s marks were "commercially strong" and "conceptually strong," had been used and registered in variant ways, and that a typically nonflattering term such as this might be considered a badge of honor by Cubs fans.  Chicago Cubs Baseball Club LLC v. Ronald Mark Huber, Opposition No. 91232736 (May 3, 2019). 

  • Cancellation Claim
    The Board cancelled a supplemental register registration of MAJOR LEAGUE ZOMBIE HUNTER with a design incorporating the silhouette of a hunter for various articles of clothing granting a summary judgment that there had been a lack of bona fide use on the listed items other than t-shirts, and after a full trial, finding a likelihood of confusion with our client’s inherently distinctive commercially strong trademark consisting of MAJOR LEAGUE BASEBALL with a design incorporating the silhouette of a baseball batter.  Major League Baseball Properties, Inc. v. Christopher Webb, Cancellation No. 92060903 (July 18, 2018).

  • Opposition Dilution Claim
    In a precedential ruling issued by a seven judge panel, the Board sustained the Yankees’ opposition against an application to register THE HOUSE THAT JUICE BUILT, and a top had design mark, for clothing and mugs, finding a likelihood of dilution of the Yankee’s famous marks THE HOUSE THAT RUTH BUILT and top hat logo. New York Yankees Partnership v. IET Products and Services, Inc., 114 U.S.P.Q. 1497 (T.T.A.B. 2015)

  • Opposition Confusion Claim
    The Board sustained our client’s opposition against an intent to use application to register BASEBALLS EVIL EMPIRE as a trademark for clothing based on the extensive public usage in news stories, internet articles, blog entries, message board postings, and otherwise of EVIL EMPIRE to refer to the New York Yankees. New York Yankees Partnership v. Evil Enterprises, Inc., Opposition No. 91192764 (T.T.A.B. 2013)

  • 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 defenses. Boston Red Sox Baseball Club Limited Partnership v. Brad Francic Sherman, 88 U.S.P.Q. 2d 1581 (T.T.A.B. 2008)

  • 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)

  • 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
  • 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
  • Opposition Dilution Claim
    The Board held that the registered depiction of our client's building, the Empire State Building, is a famous mark that would be likely to be diluted by the applicant's proposed logo consisting of the words NYC BEER LAGER surrounding a depiction of our client's building proposed to be used for beer and related goods. ESRT Empire State Building, L.L.C. v. Michael Liang. Opposition No. 91204122 (T.T.A.B. 2016)

  • Opposition Confusion Defense
    Successfully defended our client A & P’s application to register GREEN WAY for a variety of supermarket goods against consolidated oppositions brought by Publix based on its prior use and registrations of GREENWISE for identical or closely related goods since it was found that the Publix mark was not famous, “green” was weak, and the marks otherwise were sufficiently dissimilar that confusion was unlikely.  Publix Asset Management Co. v. The Great Atlantic & Pacific Tea Company, Inc., Opposition nos. 91186148 and 91186863 (T.T.A.B. 2015).

  • Concurrent Use Defense
    Successfully defeated an upstate New York DELMONICO’S restaurant’s application for a concurrent use registration that would have been nationwide in scope except for zones around New York, New Orleans and Las Vegas, since our client Emeril Lagasse’s DELMONICO’S, was sufficiently well known even in upstate New York that there would be a likelihood of confusion.  Southwestern Mgmt., Inc. v. Ocinomled, Ltd. and Emeril’s Food of Love Productions, LLC, Concurrent Use Proceeding No. 94002242 (T.T.A.B. 2015) aff’d per curiam, (C.A.F.C. 2016).

  • 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).

  • 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).

  • 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).
Motion Pictures
  • Opposition Priority & Fraud Claims
    Successfully defended against a claim that the use of “Bol” as the title of a single motion picture gave priority rights against our client’s application to register BOL for motion pictures and recordings, and that our client’s claim of exclusive rights constituted fraud. Independent Media Corporation (PVT.) Ltd. v. BOL Enterprise (PVT.) Ltd., Opposition Nos 91216909, 91216942 and 91219384 (T.T.A.B. 2016).
  • 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).
  • 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).
  • 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).
  • 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).
  • Opposition and Cancellation Infringement Claims and Defenses
    We represent Major League Baseball Properties in all opposition and cancellation proceedings.
  • Opposition Confusion Claim
    The Board held that our client’s mark WORLD SERIES has achieved a “very high level of fame” based on the substantial evidence of its use since 1903 for events, advertising relating to them, references in popular film and television programs, extensive licensing and use for a wide variety of goods and services, and dictionary definitions, and it refused to register HIGH SCHOOL WORLD SERIES for the promotion of products and services relating to international sports events on the ground that consumers were likely to believe that the applicant’s services are a variation of our client’s WORLD SERIES services rendered at the high school level, Office of the Commissioner of Baseball v. S9 Sports, LLC, Opposition No. 91200934 (T.T.A.B. 2016).
  • 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).
  • Opposition/Genericism Claim 

    Successfully represented opposers in opposition proceeding challenging claimed rights in the designations 1.25 and 1.5 for cigarette rolling papers.  Following trial, the Board issued a 98 page opinion holding that the decimal designations were generic or alternatively were descriptive without secondary meaning. North Atlantic Operating Company, Inc. et al. v. DRL Enterprises, Inc., 2016 TTAB LEXIS 282 (T.T.A.B. 2016).

  • 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).
    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).
Web Services
  • 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.

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