On October 5, 2015 Scott Slavick's article, "When evidence isn't, fame is fleeting" was published in InsideCounsel.
Make Sure Strong Evidence Supports Your Claim to Fame,
Says Slavick
At the TTAB, it's critical to submit evidence that supports
the Board in making findings of fact regarding the fame of your
mark, says Brinks' Slavick in his latest article for
InsideCounsel.com.
In Overstock.com, Inc. v. J. Becker Management, the TTAB
concluded that Mattress Overstock was not confusingly
similar to Overstock.com, and dismissed Overstock.com's
opposition to J. Becker's application to register Mattress
Overstock. The Board's denial was largely based on its
conclusion that Overstock.com's key evidence of the fame of its
mark, the company's 2012 annual report, was admissible but not
probative because the Board held it was hearsay.
Slavick points out that the case is instructive to opposers and
applicants alike. The Board is a stickler for evidence, he notes:
litigants must ensure that evidence is accepted on the terms they
want, not just made of record, and that it is strong enough to
prove the fame of a mark. He also raises the question of whether
the TTAB's finding that Overstock is not famous would
have preclusive effect if Overstock.com were to sue J. Becker in
district court, given the Supreme Court's recent decision in
B&B Hardware v. Hargis.
This article is intended to provide information of general interest to the public and is not intended to offer legal advice about specific situations or problems. Brinks Gilson & Lione does not intend to create an attorney-client relationship by offering this information and review of the information shall not be deemed to create such a relationship. You should consult a lawyer if you have a legal matter requiring attention. For further information, please contact a Brinks Gilson & Lione lawyer.
