Eckert Seamans posts another win

June 27, 2017

What do you think of when you see or hear the word “PATINA.” It is probably not metal roofing.

The Oxford English Dictionary defines “patina” as “a thin coating or layer, spec. an incrustation on the surface of metal or stone, usually as a result of an extended period of weathering…”

That was the challenge for Eckert Seamans when one of its clients, Rheinzink GmbH, which makes metal roof tiles and panels, received a cease and desist letter from Western States Decking charging that its use of the phrase “THE PATINA LINE” infringed its U.S. Trademark Registration No. 4,408,887 for “PATINA”.” This registration was for “metal roofing, metal roofing panels, metal roofing tiles,” and also “metal tiles for walls and ceilings.”

To fend off the charge of infringement and enable Rheinzink to continue using the word “PATINA” in its product literature and advertising, Eckert Seamans needed to prove that the word was “generic” for the goods. Eckert Seamans had to show that, in the mind of the purchasing public, the mark referred to the class or category of goods for which it was registered: i.e. metal roofing.

Eckert Seamans filed a Petition for Cancellation of the registration and attempted to obtain a covenant not to sue from WSD that would allow Rheinzink to use the phrase “THE PATINA LINE” in connection with its products. However, WSD refused settlement and the battle before the Trademark Trial and Appeal Board was on. On June 21, 2017, three years and many attorney hours later, the Board issued a decision. It found the asserted “mark” was generic for the goods and ordered that the registration be cancelled.

This successful outcome was the result of three attorneys at Eckert Seamans, Karl Milde, Roberta Jacobs-Meadway, and Roger LaLonde working as a finely tuned IP team, along with litigation paralegal John Metzger.

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