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Seattle Search Engine Optimizer SEOmoz Opposes Effort to Register SEO as a
2008-06-07 20:43:00 Fellow Seattle law blogger Sarah Bird, general counsel of Seattle search engine optimizer SEOmoz, Inc., tipped me off in her post this week about her company’s efforts to oppose a California resident’s application to register “SEO” as a trademark with the Patent and Trademark Office. According to PTO records, in May 2007, Jason Gambert filed a use-based application for the mark in International Class 35 for “marketing services- in the field of computers in the nature of providing marketing services for the benefit of others by compiling advertising campaigns, promotional services, and consulting for customers.”SEOmoz and two other companies then filed notices opposing the application. SEOmoz’s notice of opposition summarizes the examining history as follows:“In August 2007, the reviewing attorney correctly refused the application on the grounds that ‘SEO’ is (1) generic and (2) merely descriptive of ...
TTAB Grants Summary Judgment Against Seattle Spirits Distributor
2008-06-04 05:55:00 John Welch today reports on Seattle-based Fine Spirits Distribution, LLC’s loss on summary judgment in the Trademark Trial and Appeal Board opposition proceeding that E. & J. Gallo Winery brought objecting to Fine Spirits’ application to register FALCON for distilled spirits. Gallo successfully argued that mark was likely to cause confusion with Gallo’s FALCON RIDGE trademark for wine. Central to the decision was Fine Spirits’ failure to respond to Gallo’s requests for admission (or to withdraw or amend those admissions).As the TTABlog explains:“Th-ese admissions established that the involved goods are ‘related and competitive,’ that the goods are ‘impulse items, sold to customers at retail,’ that such consumers ‘will assume they are related,’ and that Gallo has priority of use. The Board therefore granted the motion for summary judgment.”In my experience, requests for admission usually are&nb...
Starbucks May Oppose Seattle's Rat City Rollergirls Trademark Application
2008-05-31 19:02:00 Confusingly similar? Likely to cause dilution?Sorry for the delay, but this hit the media while I was at INTA…. Starbucks Corp. has been granted an extension of time to oppose the Rat City Rollergirls, LLC’s application to register its design mark used in connection with “Coordination of recreational sporting opportunities for individuals who wish to participate in team league sports; Promoting sports competitions and/or events of others.” The Rat City Rollergirls are Seattle’s roller derby league.The Seattle Post-Intelligencer quotes a Starbucks spokesperson as saying: “We haven’t opposed it — we have asked for more time to look at it.” She added: “There’s a lot of room for us to work together to find a mutually beneficial conclusion here.”The paper also quotes Rat City’s lawyer as saying: “The Starbucks lawyer said that the girls on the roller derby team look scary,...
Seattle-Based McSweet Faces McDonald's in TTAB Opposition Proceeding
2008-04-22 05:45:00 On Friday, the Puget Sound Business Journal ran a story about a Trademark Trial and Appeal Board case involving Maple Valley, Wash.-based McSweet LLC. McSweet, which has sold MCSWEET-branded pickled cocktail onions for almost 20 years, decided to apply to register its mark with the Patent and Trademark Office. That’s when McDonald’s Corp. stepped in to oppose. McDonald’s alleges that MCSWEET infringes and dilutes its family of famous MCDONALD’S trademarks, including MC, MCCAFE, MCPIZZA, MCRIB, MCMUFFIN, MCFLURRY, and others. McSweet denies the allegations.The article says McDonald’s offered to consent to allow McSweet to continue to use MCSWEET if McSweet dropped its application to register the mark. McSweet reportedly refused.The article quotes me as saying: “If you have a famous trademark like McDonald’s, it casts a long shadow that others have to avoid with their trademarks....
Seattle Racing Helmet Manufacturer Loses at TTAB
2007-12-28 01:34:00 In 2005, Lloyd Lifestyle Limited and Lloyd IP Limited filed an opposition proceeding with the U.S. Trademark Trial and Appeal Board opposing Tukwila, Wash.-based Soaring Helmet Corp.’s intent-to-use application to register NITRO as a word mark for “motorcycle helmets and protective clothing.” Lloyd IP Limited and VSJ Limited separately petitioned to cancel Soaring Helmet’s registration for NITRO RACING, also a word mark used in connection with “motorcycle helmets and protective clothing.”On Dec. 11, the TTAB ruled in favor of Lloyd in both proceedings.TTABlogger John Welch describes the decision as follows:“In a battle over the marks NITRO and NITRO RACING for motorcycle helmets and protective clothing, the Board ruled in favor of Opposer/ Petitioner Lloyd Lifestyle in finding that Applicant/Registrant Soaring Helmet was not the owner of the marks at the time it applied for registration. Consequently, the Board sustained ...
Seattle Times Discusses TTAB's Spam Arrest Decision
2007-12-02 18:19:00 This morning, The Seattle Times wrote about the Hormel v. Spam Arrest decision as part of its “Sunday Buzz” feature. As discussed here, Seattle-based Spam Arrest won the proceeding, enabling it to keep its federal registration for SPAM ARREST in connection with software that fights unsolicited commercial email. The decision involving Seattle-based Spam Arrest marked the “first and only” win a software company has had over Hormel, the maker of SPAM canned meat, over the everyday use of the word “spam” in a trademark to refer to unsolicited commercial email. The article quotes me as saying this is the first time I can think of in which a trademark became a common word not through genericide (as happened with aspirin and escalator) but through mutation. Spam Arrest doesn’t use “spam” to refer to canned meat — a proprietary use Hormel retains — but to mean unsolicited commercial email.&#...
TTAB Dismisses Hormel's Petition to Cancel SPAM ARREST Registration
2007-11-27 03:56:00 On Nov. 21, the Trademark Trial and Appeal Board dismissed Hormel Foods Corp.’s petition to cancel the trademark registr-ation owned by Seattle-based Spam Arrest, LLC, for SPAM ARREST, with the word “spam” disclaimed, for “computer software, namely software designed to eliminate unsolicited commercial electronic mail.” Hormel had argued Spam Arrest’s mark was not entitled to registration based on a likelihood of confusion with and dilution of Hormel’s family of famous SPAM trademarks. Spam Arrest responded that “spam” is a generic term, which in connection with the word “arrest” is not likely to cause confusion or dilute Hormel’s marks. (For more background, see STL’s report on the Feb. 23 hearing, which I was fortunate enough to attend.) TTAB Judges David Sams, Ellen Seeherman, and Gerard- Rogers unanimously sided with Spam Arrest: “The word ‘s... |
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