Catching up with TTAB cases

The Trademark Trial and Appeal Board (TTAB) has seen a slew of unusual cases this year. John Welch, an attorney with Wolf Greenfield in Boston who writes about the TTAB on his appropriately named site The TTABlog, will this afternoon at the AIPLA Annual Meeting discuss a number of interesting and precedential cases, from motion to marijuana and fire power to fraud.

In the In re Loggerhead Tools decision the TTAB upheld the denial of Loggerhead's attempt to register a trademark for the motion of the jaws of a wrench or crimper opening and closing. Loggerhead tried a number of novel arguments about its design patents, but ultimately these failed the Board's four-part Morton-Norwich test. "The Board said, 'Sorry, there's a patent on this," says Welch, "this is a function of a device, and a trademark can't be for something that's functional." Welch will delve more deeply into the intricate crossovers of design and utility patents and trademarks at play in the case.

As marijuana becomes legal or decriminalized in an increasing number of states, the issue is drifting into the TTAB too. But applicants for marijuana-related marks face sticky issues when trying to register nationally-recognized marks for marijuana because the product is still illegal in most states. That leaves the booming marijuana industry to either attempt to circumvent Trademark Act provisions, or "would leave them to get state registrations, but in states where they can't get a Federal registration," says Welch.

Some surprising registrations have survived the TTAB this year too, such as a color mark for "white" for "preformed gunpowder charges for muzzleloading firearms" in the In re Hodgdon Powder Company decision. As Welch comments on his blog, "I can't remember the last time that a single-color mark passed muster at the TTAB." As if that weren't novel enough, the color wasn't even a true color and the product is another subject of legal contention. Welch will explain how a trademark for a single color could be issued on the grounds of being an anomaly.

Welch will also discuss a fraud case handed down from the TTAB in September. Since the laws governing fraud in the TTAB were changed in 2009 (following In re: Bose), only once such case has been upheld by the TTAB. This case, involving an auto dealer, was no exception to the rule that "it's still very hard to prove fraud," as Welch says, and the details of the case that he will unpack will demonstrate why.

The TTAB this month published a notice of final rule making of its "Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice."

The amended rules require all plaintiffs to file complaints through the Electronic System for Trademark Trials and Appeals, with the exception of ex parte appeals. The Board also shifted the responsibility for serving the defendant with a complaint back from the plaintiff to the Board itself. Now, however, this service, as well as all other correspondences and stipulations, will be done online, through email or online links, and not through mail.

The new rules require all discovery to be served in time so that the responses are submitted before the discovery period is over. This deprives practitioners of a tactical tool, but it is hoped that the discovery period will be prevented from bleeding over into the testimony period, which "kind of screws up everything and causes delays," says Welch. In the final rule, parties are limited to 75 requests for admissions and document production and all discovery must be done in a six-month discovery period.

The amendments also allow plaintiffs to submit a declaration or affidavit for their testimonies. "Once you get this sort of canned declaration, you can use it over and over again," says Welch, "so you don't have to go through the rigmarole of live testimony every time."

The amendments are meant to streamline and make TTAB proceedings more efficient, but that doesn't necessarily mean they will move any faster. The new rules are "more efficient in the sense that less effort has to go into it to get through the hoops," says Welch. "But it's still the same hoops, more or less, in the same order, with the same timing."