Yesterday I participated in “The TTAB comes to Boston” event at Northeastern University School of Law. I didn’t quite know what to expect from the invitation, but the event turned out to be an actual TTAB proceeding with actual attorneys and actual judges, the only unique aspect was that the arguments were held in Boston. Rather than focus on the case, which was Lockheed Martin v. Raytheon, arguing whether Paveway, a term associated with laser-guided bombs, is generic by virtue of its use, I wanted to talk about some interesting points that were raised in the couple of talks given immediately preceding the hearing.
Prior to the hearing, Pamela Chestek, gave a talk on the trademark issue of ownership. By the way, she has a blog (http://propertyintangible.com). She highlighted that unlike copyright or patent law, where the statute explicitly deals with ownership, the Lanham Act does not have a provision for determining ownership. Consider a group of people using a mark and then individuals within the group going off on their own to use the mark. This happens in family businesses, churches, and entertainment groups, where individuals splinter off from the original entity. How do you analyze the ownership issue? First use? Not really, because both parties were using the mark at the same time originally. Priority? No again. Dilution? Likelihood of confusion? It’s a stretch because both inquiries deal with an original standard from which both parties stemmed from. Trademark law is ill-equipped at handling ownership currently, but it is developing case law at the TTAB. Pamela cited to a few recent cases in particular. Please check out her blog for further information.
The next speaker was one of the judges for the hearing, David Mermelstein. He gave advice for those who would be arguing cases before the TTAB. He then talked about an interesting procedure that the TTAB allows, accelerated case resolution. Through this, parties can agree to certain procedural rules, which speeds up the case, reduces risk and reduces cost for both parties. I do not believe that the BPAI has a similar procedure, but I was really impressed with the program. Maybe the BPAI should look in to something similar.
Overall, it was a great event. Trademarks is an interesting area of IP, that I’d like to get more familiar with.