Obviousness and Predictability Chief Judge Gerard Rogers, TTAB

2 OBVIOUS RESULT?

3 (8/3/11): Logo Showdown: Iowa Hawkeyes Clips Southern Miss Golden Eagle – 3 comments questioning result and urging appeal thettablog.blogspot.comthettablog.blogspot.com (8/5/11): Divided TTAB Panel Sustains Iowa's Opposition to Eagle's Head Design Mark of Southern Mississippi – 3 comments, 2 against decision

4 OBVIOUS RESULT? TTAB 2-1 decision for Iowa not a precedent NBA Atlanta Hawks also opposed, but it and applicant stipulated to withdrawal. Applicant did not appeal. (Unpredictability of result?)

5 OBVIOUS RESULT? In re Creative Beauty Innovations Inc., 56 USPQ2d 1203 (TTAB 2000): TTAB panel unanimous in precedential decision reversing refusal of mark as not inherently distinctive. Board relied on accolades for design, fact that there were no other containers like it in the record, and it was difficult (not easier) to make.

6 OBVIOUS RESULT? In re Brouwerij Bosteels, 96 USPQ2d 1414 (TTAB 2010): TTAB panel unanimous in precedential decision affirming refusal of mark as not inherently distinctive, and without acquired distinctiveness. Board relied on evidence showing marketing of Yard, Half Yard and Foot of Ale glasses as goods in trade, and discounted third party registrations of closed containers. No appeal.

7 PREDICTABLE RESULT? In re Cook Medical Technologies LLC, __USPQ2d ___ (TTAB 2012) ( ): TTAB panel unanimous in precedential decision, affirming refusal under Section 2(d), of application to register the color teal applied to “medical devices, namely, guiding sheaths,” in view of prior registrations for color blue applied to part or all of “catheters” and “multi-lumen and single-lumen central venous catheters.” Decision based on breadth of description of registered marks.

8 BOARD ANALYSIS PREDICTABLE Board does not consider: Use of house mark or limited fonts/colors/displays Actual goods, cost of goods, consumers, channels of trade are narrower than ID Board must assume: Standard character mark can appear in any form Goods, services include very cheap & very costly Marketing in any way to all potential buyers

9 PREDICTABILITY OF PROCESS Ex Parte Appeals: Rules very clear; timelines compact Rules often ignored; recons and remands common Inter Partes cases: 98% not tried; majority see no significant activity Length of proceeding predictable, motion practice is not, and significantly lengthens some cases Focusing on merits allows for process predictability

10 ACR – A MORE PREDICTABLE PROCESS First, as a summary bench trial, use predates 2007 amended rules. Miller Brewing Co. v. Coy Int’l Corp., 230 USPQ 675 (TTAB 1986) Second, parties can stipulate to facts (some, many or all), and/or evidence to be considered, and methods of introduction. Target Brands, Inc. v. Shaun N.G. Hughes, 85 USPQ2d 1676 (TTAB 2007)

11 THANK YOU Questions on ACR? See “ACR & ADR” info on web: appeal/index.jsp