Tag Archives: pittsburgh trademark lawyer

USPTO Update—New TTAB Manual and Trademark Dashboard Released

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

Last month, the USPTO issued new rules and provided information that will be useful to trademark practitioners. In May 2011, the USPTO published the third edition of the TTAB Manual of Procedure (TBMP), which is the first update since 2004. The latest edition “incorporates all case law, statutory changes,  and changes to the Trademark Rules of Practice and Federal Rules where applicable as of November 15, 2010.” The complete version can be downloaded here. Trademark practitioners before the Trademark Trial and Appeal Board (TTAB) will need to review the changes and become familiar with these new rules.

In addition, building on its successful patent dashboard, the USPTO launched a trademarks dashboard. This dashboard, in the USPTO’s Data Visualization Center, provides up-to-date information about trademark filings at the USPTO, such as the average time to the first action, average total pendency of an application, number of applications, and other relevant statistics. This information will allow trademark attorneys to better inform their clients of the delays they may face in filing for a trademark. The USPTO now has three dashboards (patent, trademark, and policy and external affairs) that provide current statistics for the public, which builds on Director Kappos’ goal of providing more transparency about USPTO procedures.

Judge Unclogs Issue on Redirection of Internet Traffic Between Competing Companies

by:  Joseph R. Carnicella, intellectual property associate with Picadio Sneath Miller & Norton, P.C.

On February 15, 2011, Judge Schwab of the Western District of Pennsylvania ruled in favor of Fagnelli Plumbing Company, Inc. on its motion for summary judgment and found that there were no genuine issues of fact relating to the claims against Gillece Plumbing and Heating, Inc., et al., for a cybersquatting violation of the Anticybersquatting Consumer Protection Act (ACPA), a violation of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A), and common law trademark infringement and unfair competition.  

According to the Judge’s Memorandum Opinion, Fagnelli Plumbing has been the registrant of the domain name “fagnelliplumbing.com” since 2000, and Gillece Plumbing purchased and registered the domain name “fagnelli.com” with GoDaddy in March 2007.  After learning that internet traffic was being redirected to Gillece Plumbing’s website and requesting in a letter that Gillece Plumbing cease and desist from redirecting internet traffic, Fagnelli Plumbing commenced the lawsuit on May 18, 2010. 

With respect to Fagnelli Plumbing’s cybersquatting claim, the Court analyzed the ACPA and concluded that the name “Fagnelli” was a distinctive mark entitled to protection, the registration of “fagnelli.com” was identical or confusingly similar to the name “Fagnelli” and Gillece Plumbing acted in bad faith with the intent to profit.  In regard to the alleged Lanham Act violation, the Court noted that generally the Lanham Act does not protect surnames unless they are distinctive or famous, yet held that “Fagnelli” acquired a distinct and secondary meaning with Western Pennsylvania at the time when Gillece Plumbing began to use the mark.  The Court also determined that Gillece Plumbing’s use of “Fagnelli” created a likelihood of confusion in the marketplace.  Moreover, the Court granted summary judgment on Fagnelli Plumbing’s claims for common law trademark infringement and unfair competition because the Court found these claims to be identical to the violation of the Lanham Act claim.  In addition to granting Fagnelli Plumbing’s motion for summary judgment, the Court also granted a permanent injunction prohibiting Gillece Plumbing from redirecting internet traffic from fagnelli.com or any other domain name using the word “Fagnelli” and owning the domain name fagnelli.com or any similar domain name.  The Court noted that a subsequent proceeding will be held to determine damages against the Defendants.

New Trademark Infringement Action Filed in Western District of Pennsylvania

by: Joseph R. Carnicella, an intellectual property associate at Picadio Sneath Miller & Norton, P.C., jcarnicella@psmn.com

Plaintiff Taza Systems, LLC filed suit against Defendants Taza 21 Co., LLC, et al. in the Western District of Pennsylvania on January 19, 2011.  Plaintiff alleges that it owns various federally-registered service marks, all of which include the term “TAZA,” and has used these marks to identify its restaurant and bar services continuously since 2005.  Plaintiff alleges that Defendants have been on notice of these marks, yet have used the name “TAZA” to identify and advertise their restaurant services without permission from Plaintiff.   Plaintiff has asserted claims of trademark infringement, dilution, unfair competition and cyberpiracy.  Defendants have not filed a response to the Complaint.

We will continue to monitor and update the status of this case.

New Trademark Infringement Action Filed in Western District of Pennsylvania

by: Joseph R. Carnicella, an intellectual property associate at Picadio Sneath Miller & Norton, P.C., jcarnicella@psmn.com

On January 5, 2011, Entrepreneurial Ventures Capital Co., LLC filed an action against V.P. Racing Fuels, Inc. for trademark infringement, dilution of trademark rights and unfair competition.  According to the Complaint, Plaintiff alleges that it owns the mark, “WORK THE MACHINE,” and claims that Defendant has been using “FUEL THE MACHINE” in violation of Plaintiff’s rights.  Plaintiff is seeking, inter alia, injunctive relief and damages.  Defendant has not filed a response to the Complaint. 

We will continue to monitor and update the status of this case.