1

2

“FROM THE ORIGINAL MAKERS OF CHIRO-

KLENZ”…

In re Strategic Partners, Inc., 102 U.S.P.Q.2d 1397 (TTAB 2012)

3

ANYWEARS

4

ANYWEARS

“Any other established fact probative of the effect of

use.”

S

NASDAQ v. NASDAQ (sporting goods & clothing) – 2003

The Other White Meat v. The Other Red Meat (salmon) – 2010

[Nike] Just Do It v. Just Jesu It (clothing) – 2011

Motown v. Motown Metal (toy vehicles) - 2011

5

Coach Services Inc. v. Triumph Learning LLC,668 F.3d 1356 (Fed. Cir. 2012)

6

Research in Motion Ltd. v. Defining Presence Mktg. Group and Axel Ltd. Inc.,

102 U.S.P.Q.2d 1187 (TTAB 2012)

7

Academy of Motion Picture Arts and Sciences v. Alliance of Professionals & Consultants, Inc.,

104 U.S.P.Q.2d 1234 (TTAB 2012)

8

Section 1125(c)(6) – Ownership of a federal registration is a complete bar to any action:

(A)(i) [now (A)] is brought by another person under the common law or a statute of a State; and

(ii) [now (B)(i)] seeks to prevent dilution by blurring or dilution by tarnishment; or

(B) [now (B)(ii)] asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.

9

Duopross Meditech v. Inviro Medical, 685 F.3d 1046, 103 U.S.P.Q.2d 1753 (Fed. Cir. 2012)

11

SNAPSNAP SIMPLY SAFER; and

For medical syringes and needles

Duopross Meditech v. Inviro Medical, 685 F.3d 1046, 103 U.S.P.Q.2d 1753 (Fed. Cir. 2012)

12

Forthwith conveys an immediate idea of the ingredients, qualities, or characteristics of the goods

Requires imagination, thought, and perception to reach a conclusion about the nature of the goods

Duopross Meditech v. Inviro Medical, 685 F.3d 1046, 103 U.S.P.Q.2d 1753 (Fed. Cir. 2012)

13

May ascertain the meaning and weight of each componentMust consider the mark as a wholeMust consider the mark in relation to the goods

14

Duopross Meditech v. Inviro Medical, 685 F.3d 1046, 103 U.S.P.Q.2d 1753 (Fed. Cir. 2012)

15

Duopross Meditech v. Inviro Medical, 685 F.3d 1046, 103 U.S.P.Q.2d 1753 (Fed. Cir. 2012)

16

• Self-laudatory and puffing marks are regarded as descriptive

• SNAP SIMPLY SAFER - lauds the safety of the products

In re Tennis Industry Association, 102 U.S.P.Q.2d 1671 (TTAB 2012)

17

“A Blend of Cabernets -Merlot - Syrah”

In re Sadoru Group, Ltd.,__ U.S.P.Q.2d ____ (TTAB 2012)

20