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New SUPPLEMENT!
Products Comparison
Manual for Trademark
Users, third Edition, with
Thank you for your order!
2014 SUPPLEMENT AND CD-ROM
By Francis M. Pinckney
David R. Higgins, Contributing Author
“As someone who was a PTO trademark examining
attorney before entering private practice, I can
unequivocally state that Pinckney’s Products Comparison
Manual for Trademark Users is indispensable when
evaluating likelihood of confusion issues.”
—Jeffrey R. Cohen,
Millen, White, Zelano & Branigan, P.C.
>>>>>>>>>>>
Also Inside:
779-PC14
• Secondary Trademark
Infringement
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New SUPPLEMENT!
Products Comparison
Manual for Trademark
Users, THIRD Edition,
with 2014 SUPPLEMENT AND
CD-ROM
2013/2,100 pp. Hardcover
with 2014 Supplement
Order #9515P/$495.00
2014 Supplement only
ISBN 978-1-61746-515-4
Order #2515/$255.00
By Francis M. Pinckney
David R. Higgins, Contributing Author
More than 83,000 product comparisons
with cites to USPQ, unpublished TTAB decisions,
and TTAB proceeding numbers
::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::
One of the biggest problems facing trademark attorneys who deal with selecting new
trademarks, prosecuting trademark applications in the Patent and Trademark Office (PTO),
or litigating trademark rights is determining whether a client’s mark used to identify a
particular product might be “confusingly similar” to another mark used to identify other
products. Products Comparison Manual for Trademark Users guides practitioners
through both the Trademark Trial and Appeal Board’s (TTAB) and the courts’ findings on
similarity of products for trademark uses—and it has been for more than two decades. This
handy reference makes 84 years of Board decisions readily accessible to practitioners for
use in trademark infringement proceedings and for trademark registration matters.
The Third Edition together with the 2014 Supplement contains more than 83,000
product comparisons, decided by the courts and TTAB. It also includes citations for every
comparison, making it easy to find decisions on the PTO website or in Bloomberg BNA’s
U.S. Patents Quarterly.
To help practitioners conduct the most complete search possible of similar products,
the authors have analyzed the findings of the courts and/or the Board in order to impose
editorial uniformity on the descriptions of products listed in the cases and have assigned
U.S. Class numbers to each product. The Third Edition covers TTAB proceedings through
December 31, 2012, including 3,300 comparisons from that year alone.
The 2014 Supplement covers TTAB proceedings through December 31, 2013, and
contains 3,100 new comparisons.
The accompanying CD-ROM fully incorporates the new data from each annual update into
the Third Edition, providing one seamless data file spanning 84 years of TTAB action.
Virtually all of the product comparisons are provided on the CD-ROM, allowing for electronic
searching and linking, in most cases, to the full text decisions either on the PTO’s TTAB
Decisions website or, for Bloomberg BNA subscribers, on the IP Law Resource Center.
>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>
SUMMARY OF CONTENTS
• Preface
• Introduction
• How to Use This Book
• List of Abbreviations
• Finder Index of U.S.
Classes in Appendix
• List of Products
Compared
• Appendix: Listing of
All Products/Services
Under U.S. Classes
• U.S. Classes
about the authors
Francis M. Pinckney, retired, was Of Counsel for K&L Gates LLP, Charlotte, N.C., where
he focused his practice solely on intellectual property. Mr. Pinckney earned his law degree
from the The George Washington University Law School, Washington, D.C. He was
selected to the North Carolina Super Lawyers in 2007, 2008, and 2009.
David R. Higgins is with the firm of Tillman Wright, PLLC, Charlotte, N.C., where his
areas of practice include patent and trademark law, with a particular focus on patent
preparation and prosecution.
Visit www.bna.com/bnabooks/pcm for more detailed information.
Products Comparison Manual for
Trademark Users, THIRD Edition,
with 2014 SUPPLEMENT AND CD-ROM
>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>
How To Use The Manual
A client has developed computer software specifically for pharmacists and wants
to name the product “MedFind”. A search confirms that MEDFIND is a registered
trademark, but it is registered for an ultrasound machine.
Five questions immediately come to mind:
1. Are computer software and a diagnostic apparatus so closely related as to cause
confusion?
2. Have the courts or the Board compared these products for trademark purposes?
3. Were they held similar or dissimilar?
4. What is the citation number so that the decisions can be located in United States
Patents Quarterly or on the PTO website?
5. How should you advise your client?
The Products Comparison Manual for Trademark Users provides an instant
index to all the answers:
Sample Entry—Quickly Locate All Products Under
Consideration, the Board’s Holding, and the Citation
Product/Service (Class No.)
Compared to (Class No.)
Holding
Cite
Computers (26)
Computer software (26) 1
Computer software, distribution
services (100)
Computer software, electrical
distribution (26)
Computer software, financial (26)
Computer software, information
storage (26)
Computer software, interfacing (26)
Computer software, leasing
services (100)
Computer software, medical (26)
Modules, multi-port (26)
Books, technology (38)
Computer software
accounting (26)
Data processing services
(101)
Banking services (102) 2
Computer software, data
transmission (26)
Computer software (26)
Computer software,
accounting (26)
Ultrasound diagnostic
apparatus (44)
Computer software,
spreadsheet (26)
Computer software,
graphic display (26)
S
S
D
74459297
74596434
1160:83—OG
D
S
S
23:1460—
PQ2
3:1561—PQ2
1135:21—OG
D
D
74518782
91100151
D 3
75141467
D
74612608
S
74621349 4
Computer software, medical (26)
Computer software, server design
(26)
1 Find the Product
Cross-references make it easy. Plus, the U.S. Class number (according to the PTO
system) is in parentheses.
2 Related Product(s) Compared by Court or Board
See virtually every reported product comparison case since 1929.
3 Were the Products Found Similar (“S”) or Dissimilar (“D”)?
At a glance, find the basis of insightful research without researching headnotes.
4 Cites for Details
In addition to all relevant decisions reported since 1929 in U.S. Patents Quarterly,
locate cites to unreported rulings of the Trademark Trial and Appeals Board (TTAB)
as summarized in the PTO’s Official Gazette.
Complete Coverage
Check the Appendix—an exhaustive list of products and services—for other closely related
categories compared in the book.
SECONDARY TRADEMARK
INFRINGEMENT
By Jane Coleman and Griffith B. Price, Jr.
Thorough analysis and guidancE in this
rapidly growing area of intellectual property law
:::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::
Secondary Trademark Infringement is the first and only
work that provides a comprehensive treatment of the law of
contributory and vicarious trademark infringement, combining
in-depth examination of the case law with expert practical
insights into litigating secondary liability cases. Beginning with the early “passing off”
cases, this treatise covers the development of the law that has become one of the most
rapidly expanding areas involving the Internet. Meticulously organized and accessible,
Secondary Trademark Infringement covers key topics in the field, such as:
2013/632 pp. Hardcover
ISBN 978-1-61746-271-9
Order #2271/$285.00
> > Infringement
liability of businesses that offer Internet facilities to third parties
using trademarks or trademark-protected goods in commerce, including
retailers, auctioneers, and distributors
> > Company exposure to liability for the online activities of their hosting customers
or advertisers
> > Legal issues arising from Web-hosting, other Internet infrastructure, or
connectivity
> > Exposure reduction measures for companies and institutions that do not use or
facilitate trademark use directly but are part of a commercial chain of activity
This new reference features extensive and detailed case law, analysis, commentary,
and practice notes on a wide variety of subjects of practical interest and importance
to attorneys and business executives alike. These practice notes provide commentary
and guidance, based on real-world litigation experience, about the substantive
and procedural issues in secondary trademark infringement cases (from both the
trademark owner’s and the accused infringer’s point of view), recovery of damages
and injunctive relief, and guidelines for trademark protection and enforcement, as well
as risk management for Internet service providers and other service providers.
Secondary Trademark Infringement addresses developing areas of law, including:
corporate officers’ liability for the trademark infringement of their companies; whether
each “subspecies” of trademark infringement should be governed by the same
secondary liability standard; the relationship between secondary trademark and
secondary copyright infringement; secondary liability for trademark infringement on
the Internet,including keyword advertising cases; damages for contributory trademark
infringement; and contributory trademark dilution and contributory cybersquatting.
>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>
“The book is logically and meticulously well-organized and easy to read and use
as a reference. Enhanced by an engaging and user-friendly writing style, and a
straightforward approach to its subject, the book offers analysis of the applicable case
law as well as practice notes. It’s an instant necessity for the desktop or bookshelf of
any serious trademark practitioner.”
—Robert C. Cumbow, Attorney, Graham & Dunn PC
>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>>
About the AuthorS
Jane Coleman is creator of and author at www.secondarytrademarkinfringement.com,
and a former Assistant Director in the Legal Affairs department for the national office of
the Anti-Defamation League in New York, N.Y.
Griffith B. Price, Jr., is senior counsel at Finnegan, Henderson, Farabow, Garrett &
Dunner, LLP, Washington, D.C.
Visit www.bna.com/bnabooks/sti for more detailed information.
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