July’s practice group lunch included an overview of recent news from the U.S. Patent and Trademark Office (USPTO) and decisions from the Trademark Trial and Appeal Board (TTAB). The USPTO continues to revise its manuals for trademark practice (TMEP and TBMP) on a rolling basis, and has issued new rules and guidance on certain specific types of trademarks, such as collective marks and repeating patterns. The TTAB has decided that it will presume that, between a manufacture and an exclusive distributor, the manufacture owns the mark, subject to rebuttal (UVeritech v. Amax Lighting). Another TTAB case addresses the interaction between the courts and the USPTO, where the TTAB refused to vacate a decision even though the parties later settled the case while on appeal (University of Alabama v. Pitts).

1. Trademark and Copyright
Updates
July 2015

2. USPTO
• TMEP Update July 2015
• TBMP Update July 2015
• Final rule relating to Changes in Requirements
for Collective and Certification Marks
• Effective June 1, 2015, the daily limit per
credit card account was lowered to
$24,999.99.
• New Exam Guide on Repeating Pattern Marks

3. Local Copyright Plaintiff
• Richard Bell has sued 100’s of people
for © infringement for photo of Indy
• Generally demands ~$3,000
• Sued someone who hadn’t used photo – J.
Pratt ordered fees to defendant of $34,000:
• “The Court is persuaded by Mr. Lantz’s
argument that the motivation of Mr. Bell in filing
this action appears to be an attempt to extract
quick, small settlements from many defendants
instead of using the judicial process to protect
his copyright against legitimate infringing
actors,”

4. Distributor Owns TM, not MFG
• presumption that, between a mfg. and an exclusive
distributor, the mfg owns mark, but rebuttable:
(1) which party created and first affixed the mark to
the product;
(2) which party's name appeared with the trademark
on packaging and promotional materials;
(3) which party maintained the quality and uniformity
of the product, including technological changes;
(4) which party does the consuming public believe
stands behind the product, e.g., to whom customers direct
complaints and turn to for correction of defective products;
(5) which party paid for advertising; and
(6) what a party represents to others about the source
or origin of the product.
• UVeritech, Inc. v. Amax Lighting, Inc., Cancellation No.
92057088 (June 29, 2015) [precedential].

5. Don’t Count on Vacating
• In 2013 TTAB issued a ruling dismissing
opposition to HOUNDSTOOTH MAFIA
• Appealed to Dt. Ct.  Settled by assignment
• Consent Judgement 1) allow to register and 2) for
the TTAB to vacate decision
• TTAB REFUSES TO VACATE
– D.Ct. can adjudge registerability and can
authorize “necessary actions”, but vacating not
necessary – b/c of assignment, TTAB could
allow registration without vacating decision
– No finding that decision was wrong
• The Board of Trustees of The University of Alabama and Paul W.
Bryant, Jr. v. William Pitts, Jr. and Christopher Blackburn, Opposition
No. 91187103 (June 23, 2015) [precedential].

6. Where’s Waldo? (TRULICITY)

7. Where’s Waldo? (TRULICITY)
• EA refused specimen:
– the word TRULICITY is in the same size and
style of font as the surrounding wording
– is not "set out from the surrounding text."
– have to search even to find the mark.
• TTAB Reversed: "a trademark ... need not be
displayed in any particular size or degree of
prominence." Question is, will it be understood
as indicating the origin of the goods – yes,
especially b/c coined term.
• In re Eli Lilly and Company, Serial No. 85183667 (June
18, 2015) [not precedential].