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

  • Wham! Bam! You're flattened, Batmen!

    Imitation, they say, is the sincerest form of flattery. But parody can fall flat.

  • Too Trulicity to be good?

    When is a mark not a mark? That's what the Trademark Trial and Appeal Board (TTAB) was grappling with in a June 18, 2015 non-precedential decision In re Eli Lilly and Co., Serial No. 85/183,667.

  • When evidence isn't, fame is fleeting

    In Overstock.com, Inc. v. J. Becker Management, Opposition No. 91203624, the board concluded that Mattress Overstock was not confusingly similar to Overstock.com for online wholesale and retail store services featuring general consumer merchandise, including furniture, linens, and pillows.

  • Slerring yer werds? Too much Brewnette fer yer

    The owners of the restaurant chain Twin Peaks sought to register the mark Knotty Brunette for beer, ale and lager, but the USPTO’s examiner refused to register it, judging it confusingly similar to B.J's Restaurants, Inc.'s registered mark Nutty Brewnette for beer.

  • Pour me another, barman. Make it a double-take.

    Then there are times when the TTAB goes down a rabbit hole and pops out with something so counter-intuitive it forces you to look twice —such as in the recent ruling in In re Rabbit Hole Spirits, LLC, Serial No. 86/193,667 (June 11, 2015) [not precedential]—where it's not even clear...

  • '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...

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