About the Author

Scott Slavick

Scott Slavick

Scott Slavick is a shareholder at Brinks Gilson & Lione, where his practice focuses primarily on trademark prosecution and trademark litigation. Scott maintains all aspects of his large corporate clients’ trademark portfolios, and has extensive experience in international trademark matters, including litigation, licensing and prosecution, determining international filing strategies, negotiating worldwide co-existence agreements and implementing strategies to defend trademarks and prevent infringements.

Article List

  • 'Sophisticated? Maybe.' Says TTAB

    In determining whether a trademark can be registered, the foundational question before the U.S. Patent and Trademark Office’s examiner is whether an applied-for mark is likely to cause confusion in the marketplace.

  • Far from heaven, too near on earth

    Predictably, the advent of the Internet has created consternation for holders of concurrent use registrations. Obviously, the Internet has no geographic boundaries, and that creates more potential for confusion.

  • Confused? Just the Carfax, ma'am!

    In May, in a non-precedential ruling in Carfax, Inc. v. American Automobile Association, Inc., Cancellation No. 92056568 (May 7, 2015), the Trademark Trial and Appeal Board (TTAB) at the United States Patent and Trademark Office (USPTO) granted a petition for cancellation of the American Automobile Association’s registration for the mark...

  • Federal Circuit repairs ‘cracked’ pretzel logic

    In a recent precedential decision, a unanimous Federal Circuit panel vacated the Trademark Trial and Appeal Board’s decision holding the mark Pretzel Crisps to be generic for "pretzel crackers," and remanded the case to the Board for application of the legal standard set forth in Marvin Ginn.

  • Time runs out on Omega

    In Omega S.A. v. Alliant Techsystems, Inc., Opposition Nos. 91173785 and 91174067 (April 29, 2015) [not precedential], the Board dismissed watchmaker Omega S.A.’s oppositions to Alliant Techsystems’ application to register a stylized version of Omega and Omega Elite, both with the initial Greek letter Ω as opposed to the Roman...

  • Fee-shifting or fundamental fairness? You decide.

    The appellate court’s ruling in Shammas could lower the number of appeals of USPTO rulings being filed in district courts, because applicants will have to think twice about being stuck with the USPTO’s fees.

  • New life for Naugles? Del Taco dinged at TTAB

    Absent a reversal of this ruling on appeal, Ziebarth's application will now proceed to publication. But the case raises a couple of interesting questions.

  • One more drink’s one too many for TTAB

    While stating this copyright rule is easy, applying it involves trying to draw lines between various types of products—lines often blurry not only to seasoned practitioners but to courts.

  • Don’t park this truck! Dino-dress ruled distinctive

    The TTAB reversed a USPTO’s examiner’s earlier ruling and approved Frankish Enterprises’ application to register the design of its monster truck—a cab decked out with horns, scales, eyes and other dinosaur-like features—for entertainment services.

  • Stretched to its limit, Panini strikes out at TTAB

    In The Topps Co., Inc. v. Panini Amer., Inc., the TTAB sustained an opposition filed by Topps against sports trading card manufacturer Panini’s application to register the word limited for use in connection with its own cards.

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