TTAB Has No Appetite for Concurrent-Use Delmonico’s Application
New Defense Rule Changes Reporting of Cyber Incidents


TTAB Has No Appetite for Concurrent-Use Delmonico’s Application
Timothy J. Lockhart

The Trademark Trial and Appeal Board (TTAB) denied the application of Southwestern Management, Inc. (the Applicant) for a concurrent use registration for DELMONICO’S for restaurants. Southwestern Management, Inc. v. Ocinomled, Ltd. and Emeril’s Food of Love Productions, LLC, 115 USPQ2d 1007 (TTAB 2015) [precedential]. The TTAB found that the registration would be likely to cause confusion with the use by Ocinomled, Ltd. (Ocinomled) and Emeril’s Food of Love Productions, LLC (Emeril’s) of marks including DELMONICO’S or DELMONICO.

The Applicant, which operates five restaurants in New York and Florida, originally sought an unrestricted registration for DELMONICO’S, but both Ocinomled and Emeril’s opposed the application based on their use of similar marks in New York, Louisiana and Nevada. The Applicant then sought a concurrent use registration excluding a 40-mile radius around New York City’s Empire State Building and a 40-mile radius around the New Orleans Superdome and the Stratosphere in Las Vegas.

Concurrent use registrations are granted if “confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used” (15 U.S.C. § 1052(d)). The TTAB noted the two “conditions precedent to the issuance of concurrent registrations”:

  1. that the party seeking registration be entitled to use the mark in commerce, notwithstanding concurrent use by others; and 

  2. that there be no likelihood of confusion, mistake or deception in the marketplace as to the source of the relevant goods or services resulting from the continued concurrent use of the trademark (quoting In re Beatrice Foods Co., 429 F.2d 466, 473–74 (C.C.P.A. 1970)).

The TTAB found that the Applicant had met the first condition by demonstrating that it was entitled to use its mark in commerce. Both Ocinomled and Emeril’s had applications pending for their DELMONICO marks, but their applications were filed after the Applicant’s.

The TTAB then considered whether a likelihood of confusion would result from the Applicant’s registration of DELMONICO’s. The TTAB held that the marks were “essentially identical” and discussed whether the Applicant’s services could be distinguished from those of Ocinomled and Emeril’s. The TTAB noted that at trial “Applicant emphasized the difference in nature as between its moderately priced restaurants on the one hand and, on the other, [Emeril’s] high-end restaurants under the direction of a celebrity chef, and [Ocinomled’s] high-end restaurant associated with a particular historic location.” However, the TTAB said no party had suggested how the Applicant’s restaurants might be defined in the registration so as to avoid confusion.

The TTAB found that the reputation of Emeril’s DELMONICO mark “reaches most geographic regions of the United States, including . . . New York.” Likewise, the TTAB found that Ocinomled’s “DELMONICO’S mark has a fairly widespread reputation,” that “its reputation is particularly strong in New York City,” and that “it [is] likely that the reputation of [Ocinomled’s] restaurant could easily travel between New York City” and the upstate location of the Applicant’s restaurants. Accordingly, the TTAB denied the application.

As appeared in the September 15, 2015, INTA Bulletin


New Defense Rule Changes Reporting of Cyber Incidents
Dawn L. Merkle

If you have a contract with the Department of Defense (DoD) or are a subcontractor or vendor on a DoD contract, you need to review the new rule regarding safeguarding covered defense information and reporting cyber incidents. On August 26, 2015, through the publication of an interim rule, the DoD expanded what information must be protected as well as the security and reporting requirements.

Under the interim rule, effectively immediately, DoD contractors and subcontractors with information systems that process, store, or transmit “covered defense information” must provide specified network security to protect “covered defense information” from unauthorized access and disclosure. Prior to the interim rule, the DoD’s safeguarding and reporting requirements related only to contractors that had contracts or subcontracts requiring the safeguarding of “unclassified controlled technical information.”

The new rule introduces the term “covered defense information” of which controlled technical information is only a subset. The new term also includes information in the following categories:  “critical information” (specific facts identified through the Operations Security process), “export control” (information that if exported could adversely affect “national security and nonproliferation objectives”), and “any other information” that is so identified in the contract and requires safeguarding pursuant to law, regulations, or government-wide policies.

The duty to report cyber incidents has also been revised and expanded to encompass “covered defense information.” The revisions extend the reporting requirements to covered subcontractors, requiring the subcontractors to report cyber incidents directly to the government as well as the prime contractor. A contractor or subcontractor that discovers a cyber incident must conduct a review for evidence of compromise of the information. The DoD acknowledges that the reporting requirements may require an IT expert. To be able to report a cyber incident in accordance with the new rule, a contractor or subcontractor must have a medium assurance certificate, which must be purchased through approved vendors.

The security measures required for contractor information systems are delineated between those that are part of an IT service or system operated on behalf of the government and all other contractor information systems. If the system is operated on behalf of the Government, the contractor must comply with a clause on cloud computing services and with the specific contract requirements for other IT services.

If the system is not operated on behalf of the government, the contractor must follow the security requirements in the National Institute of Standards and Technology SP 800-171, which is specifically designed for nonfederal information systems. According to the DoD, this change is meant to ease the burden on the contractor for compliance as well as increase the protections of government information. The contractor may ask to use alternative measures, which must be approved in writing prior to contract award, or may explain why the requirements are not applicable.

DoD is soliciting comments for the final rule through October 26, 2015, and is particularly interested in public comments on “[w]hether this collection of information is necessary for the proper performance of the DFARS and will have practical utility” and ways to minimize the burden. The DoD expects this rule may have significant economic impact on small entities.

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