Prosecution Group Luncheon May, 2011

General Announcements Version 3 of TBMP now available online; copies in the print rooms USPTO submits “Trademark Litigation Tactics” report to Congress, April 2011

Eva’s Bridal – 7 th Cir. Owner argued that they never doubted the high standards of the other store owners and had no reason to regulate - all stores sold the same designer dresses - consumers essentially do their own regulating 7 th Cir. affirmed –There is no requirement to ensure “high quality” goods – rather, trademark owners must ensure “consistent and predictable quality” How much control is enough? Case by case basis –In this particular case, there was no control Eva’s Bridal Ltd. v. Halanick Enterprises Inc., 98 USPQ2d 1662 (7 th Cir. 2011) Owner of the EVA’S BRIDAL mark had been licensing the name to relatives for other stores One license agreement expired and owner sued for using the mark without a license and without payment Dist. Ct. – owner had abandoned the mark by engaging in naked licensing (not exercising reasonable control over quality)

The ‘Eddie Bauer Guarantee’ Fails Eddie Bauer filed on the mark: OUR GUARANTEE EVERY ITEM WE SELL WILL GIVE YOU COMPLETE SATISFACTION OR YOU MAY RETURN IT FOR A FULL REFUND Does not function as a trademark –Commercial impression to the relevant public is merely informational In re Eddie Bauer Licensing Services LLC, Serial No (May 2, 2011) [not precedential]

Different Word – Same Meaning ITOWNS and IVILLAGE confusingly similar for news services –TTAB noted the differences in sound and appearance, but ruled that their "similarity or identity" in meaning outweighed the differences so that the marks as a whole are similar in commercial impression. –" The ordinary meaning and usage of the two words are so close as to render the marks similar in the minds of ordinary consumers, who are not likely to be experts in the definitions of municipalities." CLOUDBANKS and FOGBANKS confusingly similar for wine –TTAB ruled that the substantially similar meaning between 'fog' and 'cloud' outweighs any differences in appearance and sound. –"The ordinary meaning and usage of the two words are so close as to render the marks similar in the minds of ordinary consumers, who are not likely to be experts in meteorological terms." In re The Hartford Courant Company, Serial No (April 22, 2011) [not precedential] Fast Forward Brands, LLC v. Houdini, Inc., Opposition No (April 22, 2011) [not precedential]