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Posted: 04/25/12
RMSC CLIENT ALERT
U.S. Court of Appeals for the Federal Circuit Holds NATIONAL CHAMBER Mark is Merely Descriptive
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Posted: 02/03/12
RMSC CLIENT ALERT
Louis Vuitton Case on Contributory and
Vicarious Liability of Web Hosts
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Posted: 01/09/12
TRADEMARK NEWS-CLIENT ALERT
Trademark Trial & Appeal Board Dispenses with Need for “Substantial Similarity” to a Famous Mark in TTAB Dilution Cases
The federal courts and the U.S. Patent & Trademark Office Trademark Trial & Appeal Board (“TTAB”) continue to issue important decisions interpreting the 2006 Trademark Dilution Revision Act (‘TDRA”). The TDRA protects famous marks against likelihood of dilution by “blurring” or “tarnishment,” but is silent on the critical question of how similar the two marks must be before dilution will be found.
Under the 1996 Federal Trademark Dilution Act (“FTDA”) that the 2006 TDRA replaced, courts and the TTAB had often found that the marks must be “identical” or “substantially similar” for dilution to be found. In an important citable decision issued on August 9, 2011, the TTAB expressly set aside the prior requirement of “substantial similarity” that it had applied in dilution cases.
In Nike, Inc. v. Peter Maher and Patricia Hoyt Maher, 2011 TTAB LEXIS 234 (TTAB August 9, 2011), the TTAB set out the test that it will apply to future dilution claims pending before it. In that case, Nike had opposed the Mahers’ registration of the mark, JUST JESU IT for articles of clothing, arguing dilution by blurring of its famous JUST DO IT mark. The Mahers had admitted the fame of Nike’s mark. In evaluating the similarity of the marks, the TTAB decided that it would apply the same test it uses in determining whether consumer confusion is likely under Section 2(d) of the Lanham Act. The TTAB compared the marks in their entireties as to their similarities or dissimilarities in: (1) sound, (2) appearance; (3) meaning; and (4) commercial impression. Id. at 9. On the facts of the case, the Board found the marks similar in overall commercial impression due to similarities in appearance and pronunciation, despite different meanings, and therefore, a likelihood of dilution by blurring. Id. at 12.
This decision brings the TTAB into accord with the Second and Ninth Circuit courts of appeal that have found the degree of similarity of the marks need not be “identical” or “substantially similar” for dilution to be found. However, courts have not applied the exact same test for similarity as the TTAB in this case. Still, the decision sheds light on how the TTAB will handle dilution cases in the future.
Posted: 09/16/11
RMSC CLIENT ALERT
Leahy-Smith America Invents Act
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Posted: 08/11/11
JULY IP NEWSFLASH
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Posted: 02/24/11
MARCH IP NEWSFLASH
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Posted: 4/16/10
TRADEMARK NEWS-CLIENT ALERT
Dear Colleagues:
The owners of U.S. registrations under the Madrid Protocol now have the benefit of six-month grace periods immediately following the statutory time periods. Previously, no grace period existed at the end of the six-year period following the date of registration in the U.S. and only a three-month grace period existed following the expiration of each successive 10-year period following registration. The newly enacted grace periods match those given to other trademark registrants.
Effective March 17, 2010 the US Trademark Act was amended to permit Madrid Protocol registrants to file the Declaration of Use (or Excusable Nonuse) within a six-month grace period after both the sixth anniversary and tenth anniversary of issuance of the US Certificate of Registration, with the payment of an additional fee for filing in the grace period.
As you know, the holder of international registrations with an extension of protection to the United States under the Madrid Protocol must timely file the Declaration of Use (or Excusable Nonuse) referenced on the US Certificate of Registration at the USPTO based on the US registration date (not the international registration date).
Posted: 3/23/08
Announcement...
We Are Pleased to Announce That Edward F. Kenehan, Jr. Has Joined Our Firm.
Mr.
Kenehan will practice in our Washington Area office.
Click below to read about Mr. Kenehan...
Edward F. Kenehan, Jr.
Posted: 8/22/08
Announcement...
May 1, 2008 – Roberts Mlotkowski & Hobbes is pleased to announce a reorganization. Effective immediately, we are now Roberts Mlotkowski Safran & Cole, P.C.
Our new website address is www.rmsclaw.com and new e-mail address is info@rmsclaw.com. Our address, telephone and fax numbers will remain the same.
Posted: 7/1/08
Announcement...
We Are Pleased to Announce That Thomas Steinberg Has Joined Our Firm.
Mr.Steinberg will practice in our Washington Area office.
Click below to read about Mr.Sreinberg...
Posted: 10/25/07
KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.127 S. Ct. 1727 (2007)
KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL. 127 S. Ct. 1727 (2007)
Posted: 10/10/07
USPTO Rule Changes to Focus the Patent Process in the 21st Century
USPTO Rule Changes to Focus the Patent Process in the 21st Century
Announcement...
We Are Proud to Announce That Several Attorneys Have Recently Joined Us!
Click below to read about our newest attorneys...
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Past News Stories:....
(Summer 2006)
We moved into a new office!
7918 Jones Branch Drive, Suite 500
McLean, VA 22102
Contact us!
Several new attorneys will be joining us.
July 1, 2005
RMH Law opens new office in San Antonio, Texas
Roberts Mlotkowski & Hobbes PC is pleased to announce
the opening of its San Antonio office at:
280 River Bend Road
P.O. Box 425
Hunt, Texas 78024
and its resident partner, Dennis P. Santini
Roberts Mlotkowski & Hobbes, PC
Our new location will provide more immediate
contact with our Southwest and Gulf Coast clients
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