IP Law Bulletin

Recently the Ninth Circuit ruled that Google’s trademark for search engines has not become generic and is still enforceable as to search engines. As Bayer learned with its previously-existing trademark aspirin, when a court determines a trademark to be generic, the mark is no longer protectable. In effect, a generic (no longer a) trademark is re-appropriated by the public such that the mark is no longer a source-identifier for the related goods and services. A generic (no longer a) trademark tells the public what the good and services are rather than who makes and/or sells the goods or services. Additional examples of trademarks that courts held to be generic include cellophane, thermos, and trampoline[1].

The Trademark Trial and Appeal Board of the United States Patent and Trademark Office has recently become a more dangerous place.

The Trademark Trial and Appeal Board—usually referred to by its acronym “TTAB,” which is spoken (most often) as four separate letters (tee, tee, ay, bee) rather than the obvious and more concise vocalization of “tee-tab”—is the tribunal where you can go on appeal if you do not like the examiner’s rejection of your trademark application. It is also the tribunal that hears and adjudicates “Oppositions” filed by third party “opposers” against “applicants” seeking registration and “Petitions for Cancellation” where third party “petitioners” proceed against “respondents” registrations they feel were improvidently granted.

Summary: Recently the United States Trademark Trial and Appeal Board (TTAB) considered the implications of competing filings that occurred on the same day. In particular, a trademark applicant filed an express abandonment of its trademark application, and, later that same day, a third party filed an opposition against the trademark application. While the TTAB agreed with the applicant and both dismissed the opposition without prejudice and allowed the application to be abandoned without prejudice, the timing of the filings played no role in reaching this decision. To the contrary, the TTAB stated that it “shall not take cognizance of fractions of a day” and assumed that the parties’ opposition and express abandonment filed on the same day were filed at the same instant. What impact did the decisions being “without prejudice” as opposed to “with prejudice” have on the parties though?