Tag Archives: TTAB

Thinking more about MISTER FLUFFY…

As with other trademark practitioners, I can’t stop thinking about MISTER FLUFFY, a trademark allowed to be registered by the Trademark Trial and Appeal Board in part because the opposer, Tootsie Roll, failed to properly make its trademark registrations of record.

Mmm. Fluffy. But dangerous?

Mmm. Fluffy. But dangerous?


The TTAB denied Tootsie Roll’s opposition, not on “substantive” grounds (that is by comparing the likelihood of confusion under 2(d) of the Lanham Trademark Act) but rather because Tootsie Roll failed to prove priority in the mark, even though Tootsie Roll owned federal trademark registrations for FLUFFY STUFF and FLUFFY STUFF COTTON CANDY PUFFS for the same goods and services MISTER FLUFFY was being registered for.  Why? Because, when you put in “testimony” before the TTAB (which is just submitting documents, depositions, exhibits, and other information on paper), to make a trademark registration properly of record, the proponent must either (a) provide photocopies of printouts from the USPTO’s TESS and TARR databases (for all proceedings started after August 31, 2007) with the initial pleading (notice of opposition or petition to cancel), or (b) provide “status and title” copies of the registration, which must be ordered specially from the USPTO, or (c) provide live witness testimony as to the status and title of each registration. (Rule here (pdf).) Over and over again, trademark attorneys forget about or ignore this rule, resulting in many (pdf), many oppositions (pdf) and cancellation proceedings being dismissed.

The rule seems easy enough to read and understand, but also seems to confound trademark practitioners.  Why? Maybe because trademark practitioners are (usually) Internet savvy, and rely extensively on the USPTO’s online TESS and TARR databases.  If we use them every day and rely upon them in our practice, why can’t the USPTO?  Perhaps it’s because trademark practitioners take for granted that their clients own registrations, and the organization that grants registrations (the USPTO) is adjudicating whether this other application or registration should be allowed. Shouldn’t the left hand know what the right hand does?

But the violation of this rule is so clear, wouldn’t an attorney’s failure to either attach the TESS and TARR records on the initial pleading or procure a status and title copy of the registrations amount to malpractice?  It would seem that recklessly violating a clear rule of the TTAB, which has been subject to so many TTAB opinion, could constitute a violation of the duty of care.   I suppose there are two stumbling blocks for clients whose attorneys dropped the ball.  First, to be successful in legal malpractice, a disappointed client must prove that the attorney’s violation was the but-for and proximate cause of losing the case.  Because TTAB opposition proceedings in which the senior user’s registrations are at issue are often based upon (a) priority, and (b) a likelihood of confusion, and because likelihood of confusion is extremely fact specific, based upon a multi-factor balancing test, and is presented to a board that believes that each proceeding is decided on its own facts of record, it would be very difficult to prove that, but for the registration, the opposer would have won.  Second, a critical element of malpractice, like any negligence action, is damages. Because the TTAB does not have jurisdiction to decide whether infringement has occurred, or even whether any particular user is entitled to use a trademark in any particular situation, but rather whether an owner has the right to register the trademark, I would think it would be nearly impossible to measure damages incurred by the junior user’s subsequent registration of a confusingly similar trademark. (That’s why injunctive relief is most common in trademark infringement cases that don’t involve counterfeiting.)


So, trademark owners, don’t be a MISTER FLUFFY, be a Mr. Powerful, and make sure you (or your counsel) properly places in the record the apropriate registrations.


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What it takes to be a successful trademark blogger…

While I put my computer away yesterday, enjoying the magnificent inauguration and subsequent celebrations, John Welch was busy blogging about a recent decision of the Trademark Trial and Appeal board, denying an opposition brought by Tootsie Roll for for failure to establish priority. And instead of also enjoying the day, Ryan Gile, a/k/a Las Vegas Trademark Attorney, can only think about MISTER FLUFFY instead of the momentus events taking place.

As cool as MISTER FLUFFY is, I think I’m glad I enjoyed the day.

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Meep-Beep-Huh? New Mexico’s trademark troubles

As reported by the New Mexico Business Weekly, a Massachusetts company called RailRunner N.A, Inc., which develops truck-and-rail systems and is the owner of RAILRUNNER (U.S. Trademark Reg. No. 3,227,113) and RAILRUNNER (Stylized) (U.S. Trademark Reg. No. 2,966,296), for, among other things “Railway bogies,” “Railway vehicles,” “Repair of railway vehicles” “Logistics management in the field of railway vehicles,” “Custom manufacture of railway vehicles,” and “Educational services [related to maintanence and operation of railway vehicles” has sued the New Mexico Department of Transportation for its use of NEW MEXICO RAIL RUNNER  EXPRESS for a commuter passenger rail system running from Santa Fe to Albuquerque to Belen, NM.

The allegedly offending mode of transport

The allegedly offending mode of transport

According to the article, RailRunner (the company) has been warning New Mexico authorities about the use of the name for a while now.  RailRunner also brought an opposition to the state’s application to register NEW MEXICO RAIL RUNNER, and the Board granted summary judgment to RailRunner on the ground that the New Mexico agency that originally applied for the mark wrongfully transferred the application (an “intent-to-use” application) to another New Mexico agency, in violation of Section 10 of the Lanham Act.

Now that the state (and its subdivisions) have not renamed the commuter line, RailRunner’s speeding them off to federal court in Massachusetts.

A state official was quoted in the article as saying that she was “confident” that the state would be able to work something out, but, on the merits, it looks like the state should be expecting to end up face-first in a big, flat rock.

Who's the coyote, and who's the Road, er RailRunner?
Who’s the coyote, and who’s the Road, er RailRunner?

But, the state may have one saving grace– Sovereign Immunity.  The Eleventh Amendment to the U.S. Constitution essentially prevents individuals from suing states in federal court, and the U.S. Supreme Court has specifically recognized that Congress can’t “force” a state to waive that right through the Lanham Act.  As I’ve not been extensively involved in any trademark litigation matters in federal court against state subdivisions, and I’ve not been involved in this apparently long-running dispute between these parties, I don’t know whether sovereign immunity is available in this situation or whether any of the actions of the state has resulted in a sovereign immunity waiver.  But only time will tell who’s a wile coyote with their branding and litigation strategy and who’s just Wile E. Coyote, missing the prize and ending up with flattened face and some seared fur.

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