This episode is about Fairway Fox and their case before the TTAB, where we learn about the importance of knowing the true owners of rights. Then we hear from Ed Timberlake and his passion for trademark prosecution. And finally, we tell you more about Google, the right to be forgotten and the recent decision of the European Court of Justice.

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IP FRIDAYS

 

Co-Presenters:

Rolf Claessen and Kenneth Suzan

 

Episode 8 – August 8, 2014

 

RC = Rolf Claessen

KS = Kenneth Suzan

ET = Ed Timberlake

 

My name is Ed Timebrlake and I usually don’t like to use the term “IP” but I make an exception in the case of IP Fridays.

 

KS: Hello and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

 

RC: Thank you so much for tuning into yet another episode of IP Fridays. Today we are talking about the right to be forgotten and what the legislators in Europe have to say about Google. Then we have a really cool interview with one of our first listeners, Ed Timberlake. He is a very passionate trademark prosecutor and he tells us about trademark prosecution in the U.S. and some pitfalls and his favorite parts of the work as a prosecutor. Then, we also have a story about Fairway Fox and it is interesting because it has been a TTAB case that has been recently decided. The parties they used Accelerated Case Resolution procedures and that might be interesting for the practitioners listening to this podcast. But before we do that, we want to point out that one of our very faithful listeners, Robert Turlington, he pointed out that in our last episode we talked about Verisign and in fact Verisign is not a registrar as we said but in fact a registry. This is an important distinction because domains are not purchased from registries like Verisign, they are purchased from registrars like GoDaddy and so on.

 

So, without further ado, I hand over to Ken and he will tell us about the Fairway Fox.

 

KEN SUZAN’S DISCUSSION REGARDING FAIRWAY FOX

 

KS: Rolf, the TTAB issued an opinion on July 3, 2014, that has interesting factual issues and procedural points for the TTAB practitioner.

 

The opinion concerns former business partners Kristin Conolty and Kathryn O’Connor, who started a business together in 2008 to make “upscale, fashionable golf clothing” under the mark Fairway Fox. However, according to the TTAB there was no evidence that they had started doing business under Fairway Fox until 2009 when the partners sent sample clothing to potential customers. Conolty registered a sole proprietorship doing business as “Fairway Fox Golf” while O’Connor formed a single member LLC called Conolty O’Connor NYC LLC, a combination of the two partners’ names. However the partners had a falling out in 2012, after which both sold Fairway Fox golf clothing separately.

 

O’Connor applied to register the mark Fairway Fox, and Conolty opposed the application on the grounds of likelihood of confusion and claiming prior use. At this point the parties agreed to the Accelerated Case Resolution procedures, in which the parties submitted cross-motions for summary judgment with affidavits of evidence. The parties also stipulated to a likelihood of confusion, so the only issues before the Board were priority use and O’Connor’s defenses.

 

However, even though Conolty, the opposer, noticed only priority use as grounds for her opposition,