Emily Mola

Emily Mola

Ms. Mola earned her Bachelor’s degree in History, magna cum laude, from the Florida International University, and a Juris Doctor degree and Certificate in Intellectual Property Law from the Florida International University, College of Law. While at FIU Law, she served as the President of the Intellectual Property Student Association. As a result of her dedication to intellectual property law, she earned three CALI Excellence for the Future Awards in focused academic coursework. Ms. Mola is the recipient of the International Trademark Association’s 2020 Ladas Memorial Award for her article, Trademark Law’s Capability to Protect Traditional Cultural Expressions from Unauthorized Borrowing and Theft. Ms. Mola is a 2018 Microsoft/Hispanic National Bar Association’s Intellectual Property Legal Institute scholar.

In response to the COVID-19 pandemic and the critical need to develop and help speed to market medical products and services to combat COVID-19, the U.S. Patent & Trademark Office (“PTO”) initiated the COVID-19 Prioritized Trademark Examination Program in June of 2020. This program allowed applicants to file a Petition to Director (fees waived) under 37 CFR § 2.146(a)(3) seeking to have the Director exercise supervisory authority to advance the initial examination of the application out of its regular order. To be eligible for prioritized initial examination under this procedure, an applicant must seek registration for one or more of the following medical goods or services related to COVID-19:

  • Pharmaceutical products or medical devices such as diagnostic tests, ventilators, and personal protective equipment, including surgical masks, face shields, gowns, and gloves, that prevent, diagnose, treat, or cure COVID-19 and are subject to approval by the United States Food and Drug Administration; and/or
  • Medical services or medical research services for the prevention, diagnosis, treatment of, or cure for COVID-19.

For more information, click HERE.

To further support efforts to combat COVID-19, the U.S. PTO is now initiating a Pilot Prioritized Review Program for Appeals Related to COVID-19. With this program, the Trademark Trial & Appeal Board (“TTAB”) will expedite the review of and the issuance of ex parte appeal decisions for applications examined under the COVID-19 Prioritized Trademark Examination Program. Under this program, the TTAB aims to issue the appeal decision for an application examined under the COVID-19 Prioritized Trademark Examination Program within six (6) months of the filing of the notice of appeal, provided: 1) the applicant does not file a request for reconsideration, 2) no requests for remand are filed and granted, and 3) no extensions of time to file the briefs are requested. In addition, the U.S. PTO is initiating a Conference Pilot Program for Oppositions Against Applications Related to COVID-19. With this program, a TTAB attorney or judge may participate in the parties’ mandatory settlement and discovery planning conference (discovery conference) if the involved application was examined under the COVID-19 Prioritized Trademark Examination Program. These programs are being offered on a temporary basis. For more information, click HERE.

In 2016, Monster Energy Company (“Monster”) filed four Oppositions against Maple Leaf Sports & Entertainment Ltd. and NBA Properties (“Applicants”) on the basis of likelihood of confusion between the Applicants’ claw logo marks and its “M-Claw” mark. The TTAB recently dismissed Monster’s Oppositions. In its decision, the TTAB found that the Applicants fame was only in the context of energy drinks and did not extend to other products or services. In particular, the TTAB concluded that “the significant differences in appearance, sound (if any), meaning, and commercial impression” between the marks precluded a finding of likelihood of confusion. Additionally, the TTAB dismissed Monster’s dilution claims because its mark “is not sufficiently famous for dilution purposes.” In the same decision, the TTAB dismissed the Applicants’ Counterclaim alleging a likelihood of confusion between Monster’s mark and another claw mark. The TTAB concluded that the “Prior Claw Mark is so different from Monster’s M-Claw Mark in appearance, sound (if any), meaning, and overall commercial impression to preclude a finding of likelihood of confusion.”

To read the full decision, click here.

Monster Image

The U.S. Patent & Trademark Office's ("U.S. PTO") Native American tribal insignia database is a part of the Trademark Electronic Search System (TESS).  This database records the official tribal insignias of federally or state-recognized American Indian and Alaska Native tribes (Native American tribes).

 The U.S. PTO considers the tribal insignias in its database when examining trademarks in pending applications.  Tribes who choose to participate allow the U.S. PTO to evaluate whether a trademark may suggest a false connection to their tribal insignia and refuse registration.  This gives tribes the benefit of helping to protect their intellectual property and cultural heritage.

 There are no fees or forms.  For more information about participating in the database, see the refreshed Native American tribal insignia database page on the U.S. PTO website.  Please contact This email address is being protected from spambots. You need JavaScript enabled to view it.This email address is being protected from spambots. You need JavaScript enabled to view it., or call the Office of Liaisons and Petitions at 571-272-8950 with any questions.  See U.S. PTO Trademark Alert bulletin.

 A well-known trademark infringement/dilution case involving a Native American mark was brought in 2012 by the Navajo Nation (one of this country's largest Native American tribes) against Urban Outfitters (a multinational lifestyle retail corporation) and its subsidiaries over the use of "NAVAJO"/"NAVAHO" on apparel, jewelry, and other goods in the U.S. District Court of New Mexico.  The public knows acts like these as "cultural appropriation," "cultural misappropriation," and/or "cultural theft" of cultural words, insignias, or other forms of traditional cultural expressions which corporations use for profit without recognition to its origin.  This case was ultimately settled in late-2016, and both parties agreed to work together under a license and supply agreement to create and market authentic Navajo products.  See  https://indiancountrytoday.com/archive/navajo-nation-and-urban-outfitters-reach-agreement-on-appropriation.

 

After a nearly five-year battle, Apple, Inc. (“Apple”) prevailed in a U.S. PTO Trademark Trial & Appeal Board ("Board" or "TTAB") Opposition proceeding initiated by Charles Bertini (“Bertini”) over its APPLE MUSIC trademark.

Apple filed U.S. Serial No. 86/659,444 for “APPLE MUSIC” (“Apple’s Mark”) in connection with various entertainment services on June 11, 2015. Since its filing, APPLE MUSIC became one of the biggest music and video streaming services on the market, with over 75 million songs available on its platform. On September 6, 2016, Bertini, also known by his professional name as APPLE JAZZ, filed a Notice of Opposition against Apple’s Mark based on priority and likelihood of confusion with its mark APPLE JAZZ (U.S. Serial No. 87/060,640) in connection with various entertainment services, which was filed on June 05, 2016. Bertini alleged it had used its mark in commerce since at least as early as June 5, 1986, in connection with “a wide variety of services, including those which are the same as or substantially identical to services intended to be offered by [Apple]”.

To prevail on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, based on a previously used mark, it is the opposer’s burden to prove both priority of use and likelihood of confusion by a preponderance of the evidence. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000). Bertini alleged that he had acquired common law rights in the mark APPLE JAZZ for the services identified in his application “long prior” to any date on which Applicant may rely for the applied-for mark. Evidence showed Bertini first used his APPLE JAZZ mark in commerce on June 13, 1985, and has since offered APPLE JAZZ concerts in and around the Cortland, New York area. On the other hand, Apple has used the APPLE word mark in connection with personal computers and mobile communication and media devices, as well as with a variety of related software, services, and accessories since at least as early as 1977. Since the 1980s, Apple has used the APPLE word mark in connection with an audio player and audiorecording functionalities on its computers and mobile devices. The Board, however, found Apple’s audio player and audio-recording functionalities did not establish use of the APPLE word mark in connection with the services identified in its Trademark Application because they were insufficiently related.

Apple relied on an acquisition of trademark rights from 2007 to establish priority over Bertini. In 1963, the musical group The Beatles set up a United Kingdom corporation to produce and distribute the group’s music, under the name The Beatles Limited. By 1968, the name of the corporation was changed to Apple Corps Limited ("Apple Corps"). Since 1968, Apple Corps continuously used the APPLE word mark in connection with the production and/or distribution of sound recordings and film in the U.S. In 1997, Apple Corps registered the mark APPLE in typed form (U.S. Reg. No. 2,034,964) for “Gramophone records featuring music; [pre-recorded audio tape cassettes featuring music;] audio compact discs featuring music [; pre-recorded video tape cassettes featuring music] [; video laser discs featuring music],” claiming a date of first use of August 1968. In 2007 Apple Corps registered the mark APPLE in standard characters (U.S. Reg. No. 3,317,089) for, inter alia, “musical sound recordings.” In January of 2018, Apple acquired all of Apple Corps’ trademark and service mark rights in its APPLE marks (above-referenced). The Agreement assigned to Apple all Apple Corps’ APPLE marks, which were defined as “any Trademarks of [Apple] Corps or any Apple Corps Group Company that utilize or feature the word ‘apple’ in any form . . . and/or any symbols, designations, signs, logos, depictions or representations of an apple, in whole or in part[.]” Apple then granted back to Apple Corps a license to continue using the marks, which use inured to Apple’s benefit.

The Board found Apple could gain priority over Bertini by tacking rights Apple obtained from Apple Corps in the APPLE marks to Apple’s APPLE MUSIC mark. “‘[T]acking’ is a defense that must be pleaded to put opposer on notice of new matter that applicant is placing at issue (i.e., a mark previously used by applicant that is the legal equivalent of applicant’s opposed mark, and that provides the basis or applicant to claim prior use).” See H.D. Lee Co., Inc. v. Maidenform, Inc., 87 USPQ2d 1715, 1720 (TTAB 2008). Tacking requires the acquired and later mark to be “legal equivalents” and have “the same or similar” goods or services marketed under the later mark. Therefore, by tacking the use of the APPLE mark by Apple Corps, Apple established use of the APPLE MUSIC mark for the “production and distribution of sound recordings” as early as August 1968.

 

Nusret Gökçe, better known as "Salt Bae", (the "Defendant") is the Turkish chef and restaurateur who rose to fame in 2017 through a series of viral Internet videos and memes showing his technique to prepare and season meat. 

 

On April 12, William Logan Hicks (the "Plaintiff"), an artist based in Brooklyn, New York, best known for his photorealistic stenciled paintings and murals, filed suit in the U.S. District Court Southern District of New York against the Defendant and its related entities (the “Defendants”) for copyright infringement.  In the Complaint, the Plaintiff alleged that after being commissioned, alongside another artist, to create several original murals depicting “Salt Bae” is his “salt-sprinkling pose” in late 2017, the Defendants decided “that rather than continue to lawfully contract and compensate [the Plaintiff] for additional use of his copyrighted images, they would instead willfully engage in a massive, global infringement scheme in complete disregard for [the Plaintiff's] rights under the law”. The Plaintiff holds copyright registration VAu001293548 in the Pattern.  Joseph Iurato (non-party) obtained copyright registration VA0002244316 in the Stencil and, thereafter, assigned all rights in the Stencil to the Plaintiff pursuant to a copyright assignment agreement.  Accordingly, the Plaintiff is the owner of the copyrights in both Original Works.  An image of the Original Works included in the Complaint is below: 

The Defendants requested that the Plaintiff and Mr. Iurato combine the Original Works to create the final artwork for the Defendants’ Miami steakhouse ("Miami Artwork").  In November 2018 and February 2019, respectively, the Defendants' commissioned the Plaintiff and Mr. Iurato to create additional artwork derived from the Original Works to be displayed in other restaurants.  By early 2020, the Plaintiff claimed to have discovered the Defendants' were "engaging in widespread, unauthorized distribution and use of the Original Works in, among other places, Nusr-et steakhouses and Saltbae Burger restaurants in New York, Dubai, and Istanbul.  Among other uses, Defendants have been prominently using the Original Works in their window displays and digital signs, menus, wipes, and takeout bags.”  An image of the Miami Artwork, similar to the other commissioned work, included in the Complaint is below:

The Plaintiff seeks actual damages, all of Defendants' disgorged worldwide profits "attributable to Defendants' willful copyright infringement", statutory damages under the Copyright Act, 17 U.S.C. § 504(c), as well as attorney’s fees and costs under the Copyright Act, 17 U.S.C. § 505, $25,000 per violation of 17 U.S.C. § 1202(b), ordering the impounding of all existing copies of the Infringing Materials, Infringing Artworks and Infringing  Products under 17 U.S.C. § 1203, and awarding costs and attorney’s fees under 17 U.S.C. § 1203, no less than five million dollars ($5,000,000) in connection with the foregoing claimed damages as a result of Defendants’ "willful unlawful conduct", an injunction that permanently restrains and enjoins Defendants from copying, reproducing, distributing, adapting, and/or publicly displaying the Infringing Materials, Infringing Artworks, Infringing Products, or any unlawful copy of the Original Works, interest, including prejudgment interest, on the foregoing sums, and any such other and further legal and equitable relief as the Court may deem just and proper.

Recently, the U.S. PTO’s Trademark Trial & Appeal Board (“TTAB” or “Board”) affirmed the refusal to register the Timberland Boot Design on the basis that the mark's drawing lacked acquired distinctiveness.

The Timberland Boot, invented in 1973, is outdoor footwear known for its yellow color.  By the late 90s, the Timberland Boot became a cultural icon and fashion statement through its association with musicians, athletes, and other celebrities.  In 2015, TBL Licensing LLC ("TBL") sought protection of the Timberland Boot Design in the form of a Federal Trade Dress Application.  See U.S. Serial No. 86/634,819 for use in connection with "footwear, namely, lace up boots" in International Class 025 with a first use date of December 01, 1988.  After receiving six Office Actions refusing registration of the design, TBL filed a Notice of Appeal with the TTAB on December 04, 2018.  Nearly 2.5 years later, the Board affirmed the Examining Attorney's refusal to register the Timberland Boot Design on the basis that the mark's drawing lacked acquired distinctiveness.  See image.  In the Appeal, TBL had the burden to prove that the product design sought to be registered was perceived by relevant consumers not just as the product (or features of the product), but as identifying the producer or source of the product.  In affirming the Examining Attorney's refusal, the Board referred to the Converse factors to determine whether TBL’s evidence supported a finding of acquired distinctiveness.  See Converse, Inc. v. Int'l Trade Comm'n, 907 F.3d 1361, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018) (“(1) association of the trade[mark] with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark.”). 

In its analysis, the Board found TBL’s declaration testimony had little probative value on the issue of acquired distinctiveness because the declarations did not come from average consumers but retailers for these boots.  The Board also found the evidence of celebrities wearing the Timberland boots “demonstrate[d] the popularity of Applicant’s lace-up boots, but [did] not show that the celebrities wearing the Timberland boots associate[d] Applicant’s claimed trade dress with the source of the boots they are wearing.”  While TBL demonstrated over 30 years of continuous use of its applied-for product trade dress, the Board determined that the record showed TBL’s use was not “substantially exclusive” given the numerous third-party uses and lack of efforts by TBL to police its product design. TBL introduced evidence that it sold more than 15 million pairs of boots over the last 15 years, amounting to at least $1.3 billion in revenue, and spent $1.5 million on marketing and adverting its lace-up boots bearing the applied-for trade dress from 2011-2016.  While the Board found TBL’s sales figures impressive, there was little evidence that the “features which Applicant claim[ed] as its mark – the bulbous toe box, ankle collar, outsole shape and color, rear heel panel, vamp from back to front, and eyelets – have been advertised, or are recognized, individually or collectively as source indicators for the identified lace-up boots.”  Finally, the Board determined that while the record was replete with evidence of unsolicited media coverage of TBL's Timberland boot, “such coverage [was] insufficient to establish acquired distinctiveness, because there [was] simply no evidence that the media coverage and celebrity usage [] focused on the product trade dress Applicant seek[ed] to register.”  After considering all of the evidence relevant to the Converse factors, the TTAB concluded that TBL did not establish that its proposed product design had acquired distinctiveness as a source identifier in connection with its lace-up boots.

 

Monday, 05 April 2021 22:01

U.S. PTO Trademarks Data Q1 2021

The U.S. Patent & Trademark Office ("PTO") recently released data indicating record levels of trademark application filings since the first quarter of 2020.

Over 260,000 trademark applications were filed by Q1 2021 compared to over 151,000 applications filed by Q1 2020. In light of the COVID-19 pandemic, there was a substantial increase in trademark applications filed by the end of 2020. Specifically, Q2 2020 saw 157,877 applications filed, Q3 2020 saw 180,961 applications filed, and Q4 2020 saw 247,807 applications filed. The majority of trademark applications through Q1 and Q3 2020 were filed on an intent-to-use basis. The average time for an Examining Attorney to be assigned to a trademark application has increased from 2.5-3 months to around 4-5 months. Please note that the U.S. PTO's target number of months from the date of application filing to the Examining Attorney's first office action is between 2.5 and 4.5 months. By Q1 2021, the total number of new application classes prior to the first office action awaiting examination was 358,298. By Q1 2021, 93,580 trademark applications matured to registrations. Similarly, there has been a gradual increase in registrations since 2018. Learn more on "Trademarks Data Q1 2021 at a glance".

 

In 2019, Virginia Urology Center, P.C. (“Registrant”) filed a trademark application at the U.S. Patent and Trademark Office (“PTO”) for VASECTOMY MAYHEM in connection with (Int’l. Class: 044) “Physician services; medical services, namely, treatment services in urology for adults; medical evaluation services, namely, functional assessment program for patients receiving urological treatment services for purposes of guiding treatment and assessing program effectiveness; urologic surgery”. This mark became registered on September 01, 2020, Reg. No. 6,143,370. On February 4, 2021, the National Collegiate Athletic Association (“NCAA”) filed a Petition for Cancellation before the U.S. PTO’s Trademark and Appeal Board (“TTAB”) based on priority, likelihood of confusion, and dilution by blurring. In support of its Petition, the NCAA cited numerous of its trademark registrations for MARCH MAYHEM, MARCH MADNESS, and MUNCH MADNESS (the majority which have achieved “incontestable” status).

In its Petition, the NCAA alleged that Registrant adopted and used the mark VASECTOMY MADNESS to promote its medical services by “making explicit references to NCAA’s Tournament in order to associate Registrant and its services with NCAA and the Tournament.” Further, the NCAA alleged Registrant assigned its rights in VASECTOMY MADNESS to NCAA and that the NCAA licensed the mark to Registrant to use in a "proscribed manner for a limited period of time". Finally, the NCAA alleged that after the license expired, Registrant used and registered VASECTOMY MAYHEM to promote its medical services using basketball/NCAA references and imagery, in the same manner as it did with VASECTOMY MADNESS, without NCAA’s consent or permission. The NCAA alleged its marks have become “distinctive and famous in accordance with 15 U.S.C. § 1125(c).”

In late November 2020, the New York Times (“NYT”) brought suit against Time Magazine (“Time”) for trademark infringement, among other claims, in the U.S. District Court for the Southern District of New York. NYT alleged Time’s TIME100 TALKS was confusingly similar to its TIMES TALKS series. NYT alleged Time’s launched a “competing series of live and virtual recorded events consisting of conversations between journalists and leading talents and thinkers” in early 2020. See Case No. 1:20-cv-09787.

In mid-2020, Time filed U.S. Trademark App. No. 88/961,167 for TIME100 TALKS in connection with (Int’l. Class: 038) Streaming of video material on the Internet and (Int’l. Class: 041) Arranging, organizing, conducting, and hosting online educational and entertainment events; providing a website featuring non-downloadable videos. A few months later, and before the suit, an Examining Attorney at the U.S. PTO refused to register the mark on a likelihood of confusion basis with U.S. Trademark Reg. Nos. 2,475,639, 3,697,025, and 4,179,358 for TIMES TALKS, owned by NYFT.  

NFT dismissed the suit with prejudice, and the suit settled in late February 2021. Time’s trademark application became abandoned on March 02, 2021.

The U.S. PTO Trademark Trial and Appeal Board (TTAB) affirmed the Examining Attorney’s refusal to register "ONLINETRADEMARKATTORNEYS.COM " as a trademark because it was merely descriptive of its services.

Sausser Summer PC (Applicant) is the owner of a trademark registration for “ONLINETRADEMARKATTORNEYS.COM” on the Supplemental Register in connection with (Int’l. Class: 045) legal services.  See U.S. Trademark Reg. 4,590,561.  Five years after registration on the Supplemental Register, Applicant filed a trademark application for “ONLINETRADEMARKATTORNEYS.COM” on the Principal Register under a Section 2(f) claim for “acquired distinctiveness”.  See U.S. Trademark App. No. 88/626,569.  However, the Examining Attorney refused to register the applied-for mark on the basis that it was merely descriptive of Applicant's services.  Applicant filed an Appeal Brief in October 2020 requesting reversal and submitting evidence showing that the “ONLINETRADEMARKATTORNEYS.COM” mark had acquired distinctiveness as required by the Trademark Act and that the addition of a general top level domain “.COM” made the mark distinctive.

On the basis of the dictionary definitions, third-party uses of “online trademark attorneys,” and Applicant’s own description of its business model, the TTAB found that “on the scale ranging from generic to merely descriptive,” "ONLINETRADEMARKATTORNEYS.COM" was much closer to the generic end of the scale than to the merely descriptive end, making it is highly descriptive of the “legal services” identified in the application.  See Royal Crown Cola Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1048 (Fed. Cir. 2018).  The TTAB found that the combination of the words “online,” “trademark,” and “attorneys” with the top-level domain “.COM” immediately and unequivocally described the key feature or attribute of the “legal services” identified in the application, namely, that Applicant provides trademark attorneys who are “[a]ccessible via a computer or computer network.”  The TTAB ultimately concluded Applicant’s evidence on the Converse factors fell far short of carrying Applicant’s heavy burden of showing that its highly descriptive proposed mark ONLINETRADEMARKATTORNEYS.COM had acquired distinctiveness for legal services.  See Converse, Inc. v. ITC, 909 F.3d 1110, 1120, 138 USPQ2d 1538, 1546 (Fed. Cir. 2018) (Converse factors: (1) association of the mark with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of adverting; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage).

The TTAB did not find persuasive Applicant’s arguments that the addition of the “.COM” TLD to the highly descriptive phrase supported a finding that the mark as a whole had acquired distinctiveness.  In 2020, the U.S. Supreme Court rejected the rule that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” was automatically generic.  See USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2020 USPQ2d 10729 (2020).  Notwithstanding, a mark must be capable of serving as a source indicator, rather than indicating that the term, as a whole, is merely the name of the class or category of the goods and/or services identified in the application, or merely descriptive of a quality, feature, function, or characteristic of an applicant's goods and/or services.  The TTAB concluded that the fact that some consumers may recognize that the “.COM” TLD in Applicant’s mark can identify only one entity at any one time has “little probative value” regarding the exclusivity of Applicant’s use of the mark as a whole, particularly when the record contains evidence of various third-parties describing their legal services as provided by “online trademark attorneys”.

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