Trademark May 2015

Pay the USPTO’s ATTORNEY FEES??? Ex parte appeal to D. Ct. for De Novo Review –must name the Director of the PTO as a defendant; and –must pay "all the expenses of the proceeding," whether the final decision is "in favor of such party or not," unless the expenses are unreasonable. §1071(b)(3) 4 th Cir: USPTO attorney and paralegal salaries are qualified expenses – award of $33,000 Dissent: American Rule should apply absent “explicit statutory authority” Shammas v. FocarinoShammas v. Focarino, Appeal No (4th Cir. April 23, 2014)

Preclusive Effect of USPTO Decision Can be issue preclusion if: same issue Likelihood of confusion – may be different usage (market vs. abstract) –Not expected to normally create preclusion; however, it may actually be the exception B & B Hardware, Inc. v. Hargis Indus., 135 S. Ct (2015).

Same Standards in USPTO and Court use in commerce; abandonment; genericness; functionality; deceptiveness; deceptive misdescriptiveness; primarily geographically deceptive misdescriptiveness; immorality, scandal, and potential disparagement.

COW CREEK vs. Bull Creek USPTO refused COW CREEK for beer, based on confusion with BULL CREEK BREWING –BREWING is a merely descriptive or generic term that is accorded less weight –EA: the general impression of the word "cow" would include any domestic bovine of either gender. TTAB: definitions of "bull" as a male cow support that "cow" is used to refer to both males and females - the marks at issue engender the same commercial impression. In re BWBC, Inc., Serial No (May 19, 2015) [not precedential].In re BWBC, Inc.

Trademark May 2015