Wednesday, October 20, 2004

DSS loses dualsand trademark case at CAFC

DSS appealed to the Federal Circuit a decision of the TTAB denying registration of the trademark "dualsand" on the ground it was descriptive. DSS argued that "dualsand" was suggestive.


In the final office action of the examination, the examining attorney cited 13 articles from the internet to conclude that "dual sand" was a term of art. DSS submitted third party registrations to substantiate the suggestiveness argument, but these were not considered because DSS did not provide copies of the registrations to make them of record.

Appeal to the TTAB

On appeal, the TTAB sustained the examining attorney. Of the suggestive/descriptive boundary, the TTAB cited In re Quick Copy Shops, 616 F2d 523 (CCPA 1980).

Appeal to the Federal Circuit (CAFC)

In turn, the CAFC affirmed the TTAB decision, finding substantial evidence sustained its decision. The CAFC quickly disposed of the argument of DSS that the internet citations were not credible. A due process argument about the failure to consider the registrations failed, especially because the TTAB had stated it would have reached the same decision even if the registrations had been considered. [HOWEVER, on this particular point, recall the dissent of Judge Newman in a different due process case [Nelson v. Adams], and recall that the dissent of Judge Newman was largely embraced by the US Supreme Court, which obliquely characterized the CAFC majority view of due process as being like Alice in Wonderland. Thus, the better reasoning is that there was due process, not that its absence did not matter. And remember the infringement defendant in Nelson v. Adams, although winning at the Supreme Court, ended up losing when he got his due process, courtesy of collateral estoppel.]


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