Intellectual Property Law

Chapter 6 Internet Resources Solutions

1. Use the USPTO’s trademark search database and locate U.S. Registration
3780175. Select “TTAB Status” and review the proceeding brought by the
registrant against Teeshirtmania.biz.llc. Review the answer filed on June 9, 2011.
What was the fifth affirmative defense asserted by the applicant?

“Opposer’s rights in and to its alleged COTWEET, TWEET and
RETWEET service marks are generic or, in the alternative, merely
descriptive of the services under the marks. Opposer’s alleged marks
are therefore inherently unprotectable absent acquired
distinctiveness, which the alleged COTWEET, TWEET and
RETWEET marks lack.”

2. Use the USPTO’s trademark search database and locate U.S. Registration No.
4464325. Select “TTAB Status.”

a. Who filed a Petition to Cancel the Registration on April 21, 2014?
Apple, Inc. filed the Petition to Cancel.

b. Review the Petition to Cancel. What three claims were alleged?
The three claims were Claim Preclusion, Likelihood of
Confusion, and Dilution.

c. Review the document filed on September 3, 2015 (Document 25). What
reason was given for the filing of this document?
The document stated that the parties were actively engaged in
negotiations for the settlement of the matter. Apple requested
that the proceeding be suspended for 60 days to allow the
parties to continue their settlement efforts.

3. Use TTABVue (at the website of the Trademark Trial and Appeal Board) and
look for the proceeding involving Serial No. 86145979. Review the Request for
Extension of Time to Oppose, filed on February 17, 2015. What was the “good
cause” cited in the Request?
The opposer stated: “Potential opposer needs additional time to
investigate the claim.”

4. Use TTABVue (at the website of the Trademark Trial and Appeal Board) and
review Opposition No. 91212239.

a. Who was the opposer?
The opposer was Disney Enterprises, Inc.

b. Briefly describe the marks objected to by the opposer.
The marks were opposer’s various DONALD DUCK marks.

c. Review the TTAB’s decision dated November 18, 2014. What was the
result of this opposition?
The opposition was sustained. The petition to cancel was
granted. Judgment was entered against the respondent, and
motions for sanctions were granted.

5. Review Chapter 3 of the Trademark Trial and Appeal Board Manual of
Procedure.

a. May two or more parties file a notice of opposition or petition to cancel
jointly?
Yes (but a fee is required for each party).

b. What is a “combined complaint”?
A combined complaint is a single pleading that combines a
notice of opposition to one or more applications and a petition
to cancel one or more registrations (provided each application
and registration is owned by the same defendant).