1. Trademark Update
January 16, 2014

2. Applicant Must Pay PTO Fees
• District court review of an ex parte
appeal decision by the TTAB
• Section 1071 (b)(3)
– In any case where there is no adverse party ...
all the expenses of the proceeding shall be paid
by the party bringing the case, whether the final
decision is in favor of such party or not.
• Applicant must pay PTO’s expenses (including
attorneys’ fees), win or lose
• This particular case = over $36,000 (after
losing on Summary Judgment)
•
Shammas V. Focarino (E.D.Va. Jan. 2014)

3. District Court Reverses TTAB
Descriptiveness Rejection
• TTAB found INTELLIGENCE QUARTZ
merely descriptive of watches
– Consumers will understand the mark to mean
that the watch contains a quartz component
controlled by a computer chip
• In actuality, the quartz is not controlled by a
computer chip, rather the quartz oscillates to
provide a time base for the device
• Mark does not convey an immediate idea,
requires imagination and multistep reasoning,
therefore suggestive
• Timex Group USA, Inc. v. Focarino (E.D.Va. Dec. 2013)

4. 668-Word Trademark
• Applicant sought to register mark for cartoon strips and
other printed matter
• Examiner refused registration for “failure to function” as a
trademark, TTAB affirmed:
– Proposed mark is “simply too great to be a useful means for
consumers to differentiate one source from another.”
• Distinguished from McDonald’s registration:
– TWOALLBEEFPATTIESSPECIALSAUCELETTUCECHEESEPI
CKLESONIONSONASESAMESEEDBUN
• In re Prema Jyothi Light, Serial No. 76293326 (2013)