Trademark Prosecution Luncheon

October 2014

USPTO – New Guide for Service Specimens

• “in direct association with” the services– Used in advertisements or while rendering

• a source-indicating function

• Technology/software related services– Sign in screens– Webpages– screenshots

Corsearch – Brand Analysis Service

• Analyze trademark use/misuse• Use in marketing presentations?

Zombie Cinderella Not Disney’s

• App: ZOMBIE CINDERELLA for dolls, rejected in view of WALT DISNEY’S CINDERELLA & Design registration

• TTAB: CINDERELLA is a weak formative. – third-party "Cinderella" dolls– long history as a fairy tale, – ZOMBIE with CINDERELLA is incongruous with

Disney

• In re United Trademark Holdings, Inc., Serial No. 85706113 (October 9, 2014) [not precedential].

“Someone said” they were similar??

• Artist sues director of Avatar, alleges ecosystem is copied from his artwork– third parties in articles and anonymous Internet

postings, commented on similarities between film and plaintiff's works and speculated as to whether works inspired the look of the film

• Third party speculation is irrelevant to substantial similarity

• Dean v. Cameron, 1:13-cv-04479, (S.D.N.Y., 9/17/14)

Fraud Is Not Dead!• Ahmad applied for NATIONSTAR for

–“Real estate brokerage; . . . residential and commercial property and insurance brokerage; mortgage brokerage …”

• Use based application, after fraud alleged applicant amended to 1(b) – amendment allowed, but can’t cure fraud

• the statement as to use of the mark for particular goods is "unquestionably material to registrability."

• Nationstar Mortgage, LLC v. Mujahid Ahmad, Opp. No. 91177306 (Sept. 30, 2014) (precedential)

• Ahmad is a real estate agent in Virginia. He was not a real estate broker, insurance broker, or mortgage insurance broker, each of which require a state license, when he filed.

• testimony "so lacking in conviction and credibility as to be virtually incapable of corroboration." The documents provided were of "virtually no probative value"

• deceptive intent may be inferred from the surrounding facts and circumstances.