1 Edom Labs., Inc. v. Lichter, 102 U.S.P.Q.2d 1434 (TTAB 2012)

2 CHIRO-KLENZ v. SUPER CHIRO “FROM THE ORIGINAL MAKERS OF CHIRO- KLENZ”…

In re Strategic Partners, Inc., 102 U.S.P.Q.2d 1397 (TTAB 2012) 3 ANYWEARS

4 “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) Dilution Cases

Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012) 6 Lack of Dilution: Coach v. Coach

Research in Motion Ltd. v. Defining Presence Mktg. Group and Axel Ltd. Inc., 102 U.S.P.Q.2d 1187 (TTAB 2012) 7 Dilution: Blackberry v. Crackberry

Academy of Motion Picture Arts and Sciences v. Alliance of Professionals & Consultants, Inc., 104 U.S.P.Q.2d 1234 (TTAB 2012) 8 Federal Registration Defense

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 Federal Registration Defense

Duopross Meditech v. Inviro Medical, 685 F.3d 1046, 103 U.S.P.Q.2d 1753 (Fed. Cir. 2012) 11  SNAP  SNAP 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 component  Must consider the mark as a whole  Must 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