Showing posts with label intellectual property. Show all posts
Showing posts with label intellectual property. Show all posts

Tuesday, September 9, 2014

The TTAB Trademark Tally: BIG CAT & the Benefits of FAME

Caterpillar Inc. may not be as recognizable as the most famous Hollywood Celebrities, but who says fame can't have its benefits for heavy machinery companies as well.

News out of Alexandria, Virginia this past week with the TTAB issuing an anticipated final ruling in the Caterpillar Inc. "BIG CAT" Opposition, Finding for the Opposer and Refusing the Registration of the Applican'ts BIG CAT Application. The final ruling came as the final step in the Opposition Filed By Caterpillar, Inc. in 2012 in their attempt to block an energy company's attempt to register the term "BIG CAT" in connection with various oil and gas well technology.

While an initial review of the basic variables in this Likelihood of Confusion Opposition might leave some practitioners and trademark aficionados unconvinced that the two respective channels of trade and the specific goods and services with which the respective marks are used in connection with over lap significantly enough to establish a likelihood of confusion, the TTAB Board made another crucial finding prior to proceeding with the aforementioned analysis so as to impact the criteria and analysis of facts in the analysis.

After careful examination of the evidence relating to the determination that Caterpillar's "CAT" trademark is famous and thus entitled to a more broad and pervasive level of protection.  The ownership of a famous trademark also entitles the owner of such a mark the benefit of a more careful examination by USPTO Examining Attorney's of new U.S. Trademark Applications that are themselves sufficiently similar to the famous Mark/s when comparing the look sound and feel of the Marks.

 The Board stated: "Nonetheless, as discussed infra, we have concluded that Opposer’s CAT marks are famous, in no small measure because, as the record shows, CAT-branded equipment is pervasive on natural gas well sites throughout the entire life-cycle of the well. Hence, based upon all of the evidence in the record, including the respective registrations and applications, there exists a relationship between Applicant’s hydrogeological technology 
and Opposer’s listed heavy machinery, engines and generator sets."
 
The BIG CAT Case is illustrative of the more favorable and broad application of the Likelihood of Confusion analysis that is employed when a Board recognized famous trademark is that mark which is allegedly being infringed upon by the Applicant's Mark.

The fame of the BIG CAT Mark resulted in a more strong and conclusive determination that the channels of trade within which the respective marks in the Opposition were sufficiently similar.  In addition, the goods and/or services themselves were deemed similar and overlapping and thus represented another indication that the Applicant's Mark represented a likelihood of confusion with the Opposer's Famous Marks.

Due to the strong evidence that resulted in the strong agreement that the Opposer's Mark was famous, the Board was able to issue a confident ruling that the Applicant's Mark did establish a likelihood of confusion with the Opposer's Famous Trademark/s and thus the Board, exercising their limited judicial and jurisdictional authority, ruled that the Applicant's Mark should be refused and subsequently cancelled on marked DEAD on the USPTO Principal Register.

For the TTAB's Final Ruling, the PDF Can Be Found Here.
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Monday, July 9, 2012

iPad: Is Apple's Trademark Generic or Just a Valuable Brand?

Apple has always been afforded substantial trademark protection for their various device trademarks that place an "i" in front an otherwise generic word. However, as an attorney who works with the USPTO daily, I have noticed that most other companies are afforded no such protection. On one hand, Apple is extremely capable of proving acquired distinctiveness, which is commonly proven by such factors as marketing budgets and surveys proving consumer awareness and association with a particular company.

Acquired distinctiveness is a status that typically requires a period of five years of sole use that is uninterrupted by third party use of the trademark. As Apple's legal team is surely to use their vast resources to ensure their marks remain solely used by and associated with Apple, it is likely they never have a problem with third party usage. On the other hand, there is a point where you cannot offer such protection to any marks as it becomes so synonymous with a product or service it would be akin to allowing Ford to have exclusive rights to refer to a line of their cars as "stationwagons".

Therein lies the give and take is such determinations, and is the reason that while Apple is likely safe for the time being, there may come a point that putting a mere "i" in front of otherwise generic word will no longer allow Apple to monopolize such wording as PAD, POD, PHONE, etc. It is one of the paradoxes of trademark law and brand protection, that especially those marks that are most recognizable and strong are at the same time the most vulnerable to such challenges based on genericness (see Google and the recent challenge in Federal Court over the genericness of their search engine trademark, and see also TiVo's strict trademark guidelines for an example of intensified policing efforts). These companies use vast resources to ensure they do not suffer the same fate of brands that suffered a complete loss of highly valuable trademarks (see BANDAID and THERMOS for examples).

An article by the LA Times recently published discusses Apple's most recent challenge to one of their most valuable brands, one that is sure to be a highly valuable IP asset for years to come, and even more so as tablets lead the charge as one of the devices looking to replace traditional computers.

Wednesday, November 16, 2011