TTABlogger Road Trip: Florida Bar IP Symposium, Orlando March 1-2

Yours truly will be heading to Florida to speak at the 3rd Annual Intellectual Property Law Symposium of The Florida Bar in Orlando (March 1 and 2) (webpage here). I will appear on Friday, March 2nd. The topic: TTAB Developments! All around trademark expert Anne Gilson Lalonde will be Friday's keynote speaker: "Non-Traditional Trademarks and the Future of Aesthetic Functionality." The brochure for the event may be found here.

Test Your TTAB Judge-Ability on this Section 2(d) Refusal of READYSHIP over SHIPREADY

Are you ready to shape up or ship out? The PTO refused registration of READYSHIP for "expedited product shipment services, namely shipment of plumbing products and bathroom accessories," on the ground of likely confusion with the registered mark SHIPREADY for various transportation services, including "storage and delivery of goods, "shipping and freight forwarding," and "forwarding of cargo." Applicant Brasstech appealed. How would you rule? In re Brasstech, Inc., Serial No. 77810266 (January 24, 2012) [not precedential].


The marks: The Board got right down to brass tacks. Its precedents hold that confusion is likely between two marks consisting of reverse combinations of the same words if they convey the same meaning or substantially similar commercial impressions. [E.g., RUST BUSTER and BUST RUST; THE WINE SOCIETY OF AMERICA and AMERICAN WINE SOCIETY]. [Or, hypothetically: PAPER SCISSORS ROCK; SCISSORS ROCK PAPER; SCISSORS PAPER ROCK; ROCK SCISSORS PAPER; ROCK PAPER SCISSORS; and PAPER ROCK SCISSORS. - ed.-].

Here, "the transposed marks engender the same commercial impression."

The services: Brasstech lamely argued that its shipping services are offered as a convenience to its customers, and it does not make the actual delivery. The Board, however, was constrained to decide the case based on the recitations of services in the application and the cited registration. [Not sure that why that would make a difference anyway - ed.].

Registrant's services are not limited as to type of goods shipped; they encompass "expedited" shipment of plumbing and bathroom products. Therefore the services are legally identical.

Moreover, for what it's worth, third-party registrations showed that both shipment and delivery services are of a kind that may emanate from a single source under a single mark.

And so the Board found confusion likely and it affirmed the refusal.

TTABlog comment: What about ROCK PAPER ROCK?

Text Copyright John L. Welch 2012.

Cindy B. Greenbaum Appointed as 19th TTAB Judge

Cindy B. Greenbaum has been appointed an Administrative Trademark Judge at the Trademark Trial and Appeal Board, bringing the total number of TTAB judges to nineteen, by my count. [See the roster here.]


Ms. Greenbaum has been the Managing Interlocutory Attorney at the TTAB for approximately five years. She began her career with the USPTO as a Trademark Examining Attorney, and spent seven years as an Interlocutory Attorney at the TTAB. For several years prior to joining the USPTO, Ms. Greenbaum was in private practice in New York and Washington, D.C.

Ms. Greenbaum received her law degree from the New York University School of Law and her undergraduate degree from The Wharton School of the University of Pennsylvania.

Use of Mark for Menu Item Insufficient for Restaurant Services Application, Says TTAB

The Board affirmed a refusal to register the mark CHA CHA for restaurant services on the ground that Applicant failed to submit an acceptable specimen of use. The Board ruled that the applied-for mark served only to identify a menu item and did not function as a service mark for restaurant services. In re The Restaurant Company, Serial No. 77508734 (January 17, 2012) [not precedential].


The definition of "service mark" in the Trademark Statute requires that the mark "identify and distinguish" the services from those of others, and indicate the source of the services. A mark will be deemed to function as a service mark "only if purchasers will directly associate the asserted mark with the services in question."

Applicant's specimens of use (shown above) consisted of various promotional pieces [table tents? - ed.]. But, the Board noted, "a proposed mark that serves only to identify an item on a menu does not function as a service mark for restaurant services."

The Board agreed with Examining Attorney Jeffrey C. Coward that the mark CHA CHA, as it appear on the specimens, identifies only a particular food items (wings) and not restaurant services.

[P]urchasers would not directly understand and perceive the mark as it appears on the displays as a source-indicator for the restaurant services. This is so, even though purchasers obviously are aware that applicant is rendering restaurant services because they are in the restaurant when they encounter the mark and can purchase wings while eating in the restaurant. Such a generalized association in the purchaser's mind between the product mark and the restaurant services does not suffice as the requisite “direct association” between the mark and the services which would make the asserted mark a service mark for the restaurant services themselves.

And so the Board affirmed the refusal to register.

Text Copyright John L. Welch 2012.

TTAB Seeks to Fill Managing Interlocutory Attorney Position

The Trademark Trial and Appeal Board is seeking to fill the position of Managing Interlocutory Attorney.The open period for applications is Wednesday, February 01, 2012 to Tuesday, February 07, 2012. Job posting here.

TTAB Posts February 2012 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled eight (8) oral hearings for the month of February, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.


February 2, 2012 - 10 AM: In re Vibrynt, Inc., Serial No. 77701760 [Section 2(d) refusal of PREVAIL for “medical devices, namely, abdominal implants comprised of artificial materials and associated surgical instrument sets" in view of the registered mark PEEK PREVAIL for “surgical implants comprising artificial material"].


February 2, 2012 - 2 PM: In re MDF Italia SPA, Serial No. 79063250 [Section 2(e)(2) refusal of MDF IT & Design for furniture, furniture fittings, and furniture catalogs, on the ground that the mark is primarily geographically descriptive of the goods].


February 7, 2012 - 10 AM: Lush Ltd. v. Luscious, LLC, Opposition No. 91158982 [Section 2(d) opposition to LUSCIOUS COSMETICS for cosmetics, including bath soaps, in view of the registered mark LUSH for overlapping products].


February 7, 2012 - 2 PM: In re Advanced Armament Corp., LLC, Serial No. 77770899 [Section 2(a) refusal to register the mark shown below for "silencers for firearms" on the ground that the mark is immoral or scandalous].


February 9, 2012 - 10 AM: In re da Vinci, S.A., Serial No. 77651154 [Section 2(d) refusal of DA VINCI for various clothing items in view of the registered marks L’IL DAVINCI and DON DAVINCI for various clothing items].


February 9, 2012 - 2 PM: In re Fedrigoni, S.p.A., Serial No. 79069010 [Section 2(e)(1) mere descriptiveness refusal of MULTILEVEL for various products used in the security printing and anti-counterfeiting industry, including printed holograms and security threads].

February 14, 2012 - 10 AM: Valentino, S.p.A. v. Matsuda & Co., Opposition No. 91174169 [ Opposition to registration of VALENTINO RUDY (Stylized) for watches, spectacles, fabric, clothing, and sporting goods, in view of the registered mark VALENTINO for overlapping goods].


February 28, 2012 - 2 PM: In re IO Data Centers, LLC, Serial No. 77902194 [Refusal to register I/O ANYWHERE for "high density enclosures for computer servers and computer equipment" based on Applicant's failure to disclaim "I/O"]


Text Copyright John L. Welch 2012.

Test Your TTAB Judge-Ability on this Section 2(d) Design Mark Refusal

Applicant applied to register the design mark shown below left, for various pharmaceutical preparations and pharmaceutical research services, but the PTO refused registration under Section 2(d), finding the mark likely to cause confusion with the mark shown below right, for various pharmaceuticals. How would you rule on the appeal? In re Alvogen IP Co. S.a.r.l., Serial No. 77939659 (January 20, 2012) [not precedential].


The Board found that Applicant's goods and the goods of the cited registration are identical in part. As to the remaining goods and the services, the Examining Attorney submitted a number of third-party registrations showing that these goods and services may emanate from a single source under a single mark. Applicant did not contest this issue.

As to the marks, the Board noted once again that a side-by-side comparison is not the proper approach to the issue of similarity. [How about one atop the other? -ed.]. And because the goods are in part identical, the degree of similarity between the marks necessary to support a finding of likely confusion is diminished as to the parties' goods.

Applicant maintained that its mark would be perceived as the letter "A" due to "the gap in the right side, [and] the thickening and thinning of the line which evokes the stroke of a writing implement" whereas Registrant's mark will "overwhelmingly be perceived as a design rather than a letter."

The Board was not convinced: "Applicant's mark is so highly stylized that it cannot be presumed that it would be perceived as the letter 'A;' it would take some study to discern a lower-case letter 'A' in applicant's mark."

At best, applicant's mark is in the grey area between a pure design mark which cannot be vocalized and a mark which would readily be identified as a letter.

Applicant did not introduce any evidence as to its promotion of the mark or on consumer perceptions of the mark. Thus the Board had to decide the case based solely on the visual similarity of the marks. It considered applicant's mark "as a pure design rather than simply a stylized display of a letter mark." [What happened to the grey area? - ed.]

The Board concluded that, on balance, the marks are more similar than dissimilar. "This, of course, is a subjective determination, and hence we need not comment on the specific similarities and differences between the marks asserted in the briefs."

Finally, the Board observed that when pharmaceuticals are involved, and thus confusion as to source may have serious consequences, it is "extremely important to avoid that which will cause confusion."

And so the Board affirmed the refusal.

TTABlog comment: How did you do? Look, this is a subjective test, so you can't be wrong. Just disqualified for a judgeship.

Text Copyright John L. Welch 2012.

Precedential Nos. 1 and 2: TTAB Rules that Section 2(b) Bars Registeration of a Government Entity's Own Official Insignia

Facing an issue of first impression in two separate cases, the Board, in well-reasoned decisions, affirmed the PTO's refusals to register the two design marks shown below on the ground that each mark comprises a governmental insignia that is barred from registration by Section 2(b) of the Trademark Act.


In re The Government of the District of Columbia, Serial No. 77643857 (January 18, 2012) [precedential]. The Board affirmed a refusal to register the official seal of the District of Columbia for various goods, including clocks, cufflinks, memo pads, pens and pencils, cups and mugs, and various clothing items.

Section 2(b) prohibits registration of any mark that “consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.” Here there was no dispute that the applied for mark was the official seal, nor that the District of Columbia qualifies as a “municipality” under the statute.

The Board found the language of Section 2(b) to be “plain and clear on its face.” The text of the statute provides for no exception to the ban on registration, even when a governmental entity is the applicant.

Applicant argued that, based on Congressional intent, Section 2(b) should be interpreted to include an exception for governmental entities seeking to register their own insignia. But the Board noted that such an exception is absent from the statutory text, and it refused to presume that Congress intended such an exception. The Board observed that Section 2(c) and 2(d) contain express exceptions like that which Applicant proposes. These provisions clearly show that Congress is fully capable of providing statutory exceptions when it intends to do so. Moreover, Congress has revisited the trademark law numerous times in the 100 years since the prohibition against registering governmental indicia was first enacted, and it has not provided the proposed exception. Consequently, the Board found it hard to believe that Congress intended this governmental exception but failed to expressly provide it.

Applicant contended that this prohibition was originally enacted with the intent of implementing the Paris Convention, which aims to prohibit others from registering government indicia, not governments themselves. The Board, however, pointed out that this prohibition was first enacted into United States trademark law in 1905. Although the Paris Convention currently does not require that signatories to the Convention prohibit registration of official insignia when authorized by the relevant government body, prior to 1911 there was no mention of a “registration with authorization” exception. This suggests that prior to 1911, the Convention's ban on such registrations was to be applied to all such marks, regardless of authorization or the identity of the applicant. Thus it might be presumed that in 1905 Congress intended to adopt the more restrictive approach of the 1883 text of the treaty that was then in effect.

The fact that Section 6ter of the current Paris Convention does not require the United States to bar registration of all governmental insignia is of no help to Applicant because the Paris Convention is not self executing. It creates no rights that Applicant can directly rely on. Even if it were self-executing, the Convention requires only that signatories refuse registration without authorization. It does not require signatories to accept registration when authorized.

Applicant also argued that the central purpose of Section 2 of the Act is to prevent confusion, whereas registration of indicia by the pertinent governmental body would not result in confusion. But the Board easily knocked down that argument, pointing to the ban on immoral and scandalous marks found in Section 2(a) and the various provisions of Section 2(e), none of which relate to confusion. Likewise, Section 2(b) prohibits registration of marks regardless of whether confusion is involved.

Applicant next maintained that Section 2(b) is ambiguous, as evidenced by the PTO’s issuance of three third-party registrations for governmental insignia, as well as by the TTAB’s decision in In re U.S. Dep’t of the Interior, 142 USPQ 506 (TTAB 1964), where the Board reversed a refusal to register a logo of the National Park Service. The Board observed, however, that in the Interior case it concluded that the involved logo was not the type of mark prohibited by Section 2(b) because it was not an official insignia of national authority. In other words, Section 2(b) does not bar a government body from registration of any and all marks, just insignia "of the same class as the flag or coats of arms of the United States."

As to the third-party registrations, the actions of the Examining Attorneys in approving those applications did not create any ambiguity in the statute, nor do they provide Applicant with a right to register its mark. The Board pointed out that arguments based on alleged examining inconsistencies have been consistently rejected. Each mark must be reviewed on the record submitted with the application. “Simply put, the goal of consistency does not require that [the Board] ignore a statutory directive.”

Finally, Applicant argued that Section 2(b) is unconstitutional because it denies Applicant its Fifth Amendment right to due process, and further that the refusal of its application is unconstitutional because it discriminates against Applicant in view of the three third-party registrations of record. The Board disagreed on both counts, but more importantly observed that the TTAB is not an Article III court and has no authority to declare provisions of the Trademark Act unconstitutional.

The Board therefore affirmed the refusal to register.

In re City of Houston, Serial No. 77660948 (January 18, 2012) [precedential]. Following its reasoning in the District of Columbia case, the Board affirmed a Section 2(b) refusal to register the official seal of the City of Houston for various municipal services.

Applicant Houston asserted that the statute is “silent” as to whether governmental entities may register their own official insignia, but the Board flatly disagreed. Section 2(b) categorically provides that all such insignia are barred from registration. It need not set forth or spell out every subset of marks that falls within the ban.

Applicant contended that Section 2(b) was enacted to prevent desecration of the flag and other government symbols by denying their registration, not to prevent government bodies from protecting their own insignia. The Board was unable to verify Applicant’s theory regarding enactment of Section 2(b), but even if it accepted Applicant’s premise, it does not necessarily follow that Congress intended that governments should be able to register their own indicia; rather it appears that Congress chose a complete ban on registration of such indicia in order to prevent their commercial exploitation. As pointed out in the District of Columbia decision, Congress could easily have provided an exception in Section 2(b), but it did not do so. Accordingly, the Board presumed that Congress intended Section 2(b) to apply universally, regardless of the identity of the applicant.

Relying on certain language in In re U.S. Dep’t of the Interior, Applicant urged that it sought registration of its seal not as a “symbol of authority,” but rather in connection with specific municipal services, and therefore its application falls outside the Section 2(b) bar. The Board, however, found that interpretation to be a misreading of Interior because that case does not support the contention that the nature of the involved goods or services is a factor in determining whether Section 2(b) prohibits registration.

The Board in Interior decided that the mark in question [shown above] was not of the type that falls within Section 2(b) because it was not similar in kind to the flag or Great Seal of the United States. In Interior, the Board discussed the nature of the services involved only in the context of determining whether the mark was in fact “the flag or coat of arms or other insignia” of the government.” If the mark is never used as an emblem of authority, but only to identify some service or program provided by a government agency [in Interior the mark was used in connection with recreational and educational services], the mark does not fall within Section 2(b). However, if it is determined that the mark does fall with the Section 2(b) prohibition, then the goods or services identified in the application to register are irrelevant. Here, the City of Houston’s seal is admittedly an official insignia under Section 2(b), and Applicant’s discussion of the particular services recited in its application is of no consequence .

Finally, Applicant pointed to the PTO’s inconsistent treatment of such marks, relying on a list of thirteen third-party registrations. The Board noted that the mere list was of little probative value because it was not even clear that the involved marks were official governmental insignia. In any event, even assuming that the listed registrations are inconsistent with the refusal to register in this case, reversal is not required. The Board is not bound by prior decisions of examining attorneys, nor do applicants have a substantive right to consistency. The Board must decide each case on the record before it.

The Board agreed with Applicant that legal determinations should be applied consistently, but the Board’s obligation is to make the decision correctly. This obligation may not be abdicated to examining attorneys. To the contrary, it is the Board’s role to correct the examining attorney who applies an incorrect legal standard when the case comes before the Board. Even if all of the listed registrations should have been refused registration, those errors do not require the PTO to improperly register Applicant’s mark.

The Board therefore affirmed this refusal to register.

Text Copyright John L. Welch 2012.

TTAB Affirms Genericness Refusal of CHRISTMAS ALE for ... Guess What?

The Board affirmed a refusal to register CHRISTMAS ALE for beer [ALE disclaimed], on the ground of genericness, and alternatively as merely descriptive under Section 2(e)(1). Despite use of the designation by Applicant Great Lakes Brewing Co. for nearly two decades, the Board found Applicant's evidence of acquired distinctiveness to be insufficient in view of the highly descriptive nature of the applied-for mark. In re Great Lakes Brewing Co., Serial No. 77464553 (January 9, 2012) [not precedential]


Examining Attorney Florentina Blandu submitted dictionary definitions of CHRISTMAS and ALE, as well as evidence showing that "ale is a subset of beer." Internet website pages referred to "Christmas Ale" as a type of seasonal beer available from any number of sources.

Great Lakes pointed to other registrations for marks the include the word CHRISTMAS (but none for beer). The Board found these registrations irrelevant, in part because it is not bound by prior decisions of examining attorneys in other cases.

The Board deemed the genus of goods to be "beer," and it found that CHRISTMAS ALE is understood by the relevant public to refer to the genus of goods, or a subgenus thereof. Therefore it concluded that CHRISTMAS ALE is generic for beer.

As to the claim of acquired distinctiveness, Great Lakes pointed to its use of CHRISTMAS ALE since 1992, annual growth in sales of 30%, its receipt of various awards, its sale of collateral merchandise, and a number of media mentions. The Board, however, ruled that Applicant's commercial success demonstrated only the popularity of the product, not that consumers view CHRISTMAS ALE as a trademark. The record contained "little direct evidence" that relevant consumers perceive CHRISTMAS ALE as a source indicator for the goods. Given the (at least) highly descriptive nature of CHRISTMAS ALE, the Board "would need to see a great deal more evidence (especially in the form of direct evidence from customers) than what applicant has submitted in order to find that the designation has become distinctive of applicant's goods."

And so the Board affirmed both the genericness refusal and the alternative Section 2(e)(1) refusal.

TTABlog comment: The Board deemed CHRISTMAS ALE to be more akin to a compound word than a phrase, but that ruling had no effect on the outcome, since the evidence showed use of the phrase "Christmas Ale" by third parties.

Text Copyright John L. Welch 2012.

Feathers! Survives: USPTO Will Continue TARR Database

Noting that the trademark user community has raised concerns about the retirement of "old" TARR [see, for example, this TTABlog post], the USPTO has announced [here] that it will "continue to service the 'old' TARR links beyond the February 29th date when the 'old' front page of the USPTO web site will be retired." This is good news for the many trademark practitioners who rely on Carl Oppedahl's fabulous (and free) "Feathers!" trademark database program.


Text Copyright John L. Welch 2012.

TTABlog on the Road: Paris

Grey, drizzly, and cold in Paris this week. But who's complaining? Here are a few photos, some of which I've brightened up a bit, but others remain in their original grayness. [Click twice on a photo for a larger image].











Text and photos Copyright John L. Welch 2012.

TTAB Dismisses Section 2(e)(3) Petition for Cancellation of SWEDISH FIRESTEEL for Fire Igniters

Petitioner Ronald W. Fontaine sought to cancel a registration for the mark SWEDISH FIRESTEEL for "hand-operated fire igniter in the form of metal sticks with a holder and a tin, and hand-operated fire strikers" [SWEDISH disclaimed] on the ground that the mark is primarily geographically deceptively misdescriptive under Section 2(e)(3). Fontaine's petition went up in smoke, however, when he failed to satisfy the second element of the Section 2(e)(3) test. Ronald W. Fontaine v. Light My Fire, AB, Cancellation No. 92051304 (January 12, 2012).


A mark is primarily geographically deceptively misdescriptive if "(1) the primary significance of the mark is a generally known geographic location; (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark (i.e., that a goods/place association exists), when in fact the goods do not come from that place; and (3) the misrepresentation would be a material factor in the consumer's decision to purchase the goods."

Prong 1: The Board agreed with Petitioner that the primary significance of the mark SWEDISH FIRESTEEL is geographical. The addition of FIRESTEEL to SWEDISH does not detract from the primary geographic significance of the mark.

Prong 2: The second element of the test raises two inquiries. As to the first inquiry - whether consumers will believe that the goods come from Sweden - Petitioner offered no evidence.

[P]etitioner has not proved that consumers associate the country of Sweden with the type of goods of respondent. The sole evidence petitioner can point to in the record is respondent’s admission that the Swedish military uses fire starter devices. This, by itself, is insufficient to establish a goods/place association.

As to the second inquiry under Prong 2 - whether the goods come from Sweden - Petitioner argued that because the "only essential part" of Respondent's device is not made in Sweden, then the entire product should be considered as not originating in Sweden: "Specifically, respondent contends that the flint rod is the 'only essential part' of respondent’s fire starter device because it is impossible to produce a spark in the absence of pyrophoric metals or ferrocerium."

The Board, however, found that each part of the device is equally important and essential, and that the five other component parts originate in Sweden: (1) striker, (2) striker handle, (3) flint handle, (4) lanyard, and (5) lock.

Moreover, Respondent is a Swedish company with headquarters, research facilities, and production facilities in Sweden. The finished (not Finnish - ed.) product is assembled in and distributed from Sweden. Therefore the Board concluded that Respondent's goods do originate in Sweden.

And so, having found that Petitioner Fontaine wholly failed to satisfy the second prong of the 2(e)(3) test, the Board declined to consider the third prong and instead dismissed the petition for cancellation.


TTABlog comment: Respondent's registration was more than five-years old when the petition for cancellation was filed [wrong! see below]. However, a registration more than five-years old may be cancelled on the ground of geographic deceptiveness. See Consorzio del Prosciutto di Parma v. Parma Sausage Products, Inc., 23 USPQ2d 1894 (TTAB 1992). [However, Parma is an old Section 2(a) deception case, not a 2(e)(3) case.]

TTABlog correction: Anne Gilson Lalonde has pointed out to me that the registration was not five-years old when the petition was filed. The Board's citation of the K-Swiss decision in footnote 1 is strange because it is simply irrelevant here: not only was the subject registration less than five-years old, but also there was no evidence that Respondent changed the geographic source of its goods after the registration issued. Furthermore, as Anne points out in her comments, it is not at all clear that a Section 2(e)(3) claim is available against a 5-year old registration!

Text Copyright John L. Welch 2012.

WYHO? TTAB Dismisses BVD's 2(d) and 43(c) Opposition to BOSIDENG BSD and Design

Bosideng applied to register the mark shown immediately below for "suits, coats, overcoats, shirts, trousers, skirts, sweaters, T-shirts, pajamas, underwear, leather shoes." B.V.D. opposed on the grounds of likelihood of confusion and dilution. The Board dismissed both claims, finding the involved marks too dissimilar and deeming the BVD mark not famous enough for dilution purposes. If it were up to you, would you have opposed? The B.V.D. Licensing Corporation v. Bosideng Co., Ltd., Opposition No. 91173468 (January 10, 2012] [not precidential


Likelihood of Confusion: B.V.D. relied on nine registrations for the mark B.V.D. or BVD, and on use of the mark since about 1876. Sales figures, dictionary entries recognizing BVD as a trademark, the extremely long period of use, and third-party magazine survey evidence of the marks' renown led the Board to conclude that BVD is famous for purposes of likelihood of confusion.

The goods of the parties are in part identical, and therefore the Board presumed that they travel in the same channels of trade to the same classes of consumers. The Board found underwear is not purchased on impulse. Although these are relatively inexpensive goods, "[t]here is no per se rule that low price equates to a low degree of purchaser care especially when opposer’s own witness testified that the purchase of underwear is a 'planned purchase.'" However, the factual record was incomplete on this issue, and so the Board considered this du Pont factor to be neutral.

As to the marks, the Board found that Applicant's mark is dominated by the word BOSIDENG, a coined word. "The letters BSD are so buried in the middle of applicant’s mark and so innocuous that consumers will not perceive applicant’s mark as being similar in appearance or sound to opposer’s mark." Moreover, the marks create different connotations and commercial impressions.

The Board found the dissimilarities in the marks to be dispositive and it dismissed the Section 2(d) claim.

Dilution by Blurring: The standard for fame in the dilution context is more stringent than that for fame in the Section 2(d) context. BVD failed to clear the higher hurdle. "[T]he transformation of a term into a truly famous mark" means that the mark must be a household name."

BVD's evidence fell short. There was no evidence regarding advertising expenditures, no evidence regarding how many people saw BVD's advertising, and no media evidence showing widespread recognition of the BVD mark, other than the aforementioned magazine surveys. However, those surveys were "most akin to a brand awareness study but they are of limited probative value because opposer did not proffer a witness with first-hand knowledge of the study to explain how the study was conducted, how many people participated in the study or how many people read the published study."

B.V.D. argued that the Board should take judicial notice of the fame of its mark, based upon a 1988 CAFC decision in which the court took judicial notice of “the fact that within our jurisdiction, which is the whole United States, the B.V.D. trademark is at least widely, if not universally, known.” The Board pointed out, however, that the issue there was likelihood of confusion, not dilution. The Board "will not take judicial notice of the fame a mark for purposes of dilution."

[J]udicial notice may be taken of adjudicative facts [i.e., the facts that would normally go to a jury in a jury trial] and judicial notice of facts should only be taken when the matter is “beyond reasonable controversy.” *** We should not use a debatable supposed fact [i.e., the fame of the B.V.D. mark] to bootstrap a dubious conclusion to support an element of opposer’s dilution claim.

For the sake of completeness, the Board also considered the similarity or dissimilarity of the marks in the dilution context. It found the marks "so different" that Bosideng's mark will not "trigger consumers to conjure up" the BVD mark. "Accordingly, applicant’s mark will not create an association with opposer’s BVD mark to support opposer’s dilution claim."

And so the Board dismissed BVD's Section 43(c) claim as well.

TTABlog comment: I think this decision should be precedential, at least for the discussion of judicial notice.

[Please excuse the inconsistent use of BVD and B.V.D. Sometimes the mark is referred to in one way, sometimes the other.]

Text Copyright John L. Welch 2012.

A Sampling of TTAB Motion Practice

As we all know, the vast majority of TTAB proceedings never reach final decision. But many involve motion practice of one sort or another. The TTABlog focuses primarily on final decisions, but here is a sampling of recent rulings on assorted interlocutory motions.


Embarcadero Technologies, Inc. v. Delphix Corp., Opposition No. 91197762 (January 10, 2012) [not precedential]. Motion to strike four affirmative defenses. Defense of failure to state a claim stricken, but motion denied as to laches and acquiescence (generally unavailable in an opposition proceeding) because Applicant relied on the Morehouse doctrine, and denied as to equitable estoppel. [See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 U.S.P.Q. 715, 717 (C.C.P.A. 1969) (no injury from registration of BLUE MAGIC for pressing oil when applicant owned prior registration for BLUE MAGIC for hair dressing and “while there are trifling differences [between the marks] it takes careful inspection to detect them and the record showed the products sold under the two marks were ‘one and the same’”)].

Tata Sons Limited v. Tata’s Natural Alchemy, LLC, Opposition No. 91193987 (January 10, 2012) [not precedential]. Motion to amend notice of opposition denied as untimely because Opposer unduly delayed in bringing its motion (to add a registration issued eleven months before the filing of the motion, on an application that was on file when the notice of opposition was filed).

The Clorox Company v. Hermilo Tamez Salazar, Opposition No. 91198922 (January 12, 2012) [not precedential]. Applicant's motion for discovery under Rule 56(d) granted as to relatedness of the goods, classes of purchasers, and trade channels, but denied as to other topics first raised in Applicant's reply brief in support of the motion.

Robert P. Hornsby, Jr. v. Megan L. Murphy, Cancellation No. 92047058 (January 12, 2012) [not precedential]. Order to show cause dismissed as to Petitioner's failure to file a brief, but motion for leave to file the brief denied because Petitioner did not establish excusable neglect under the Board's Pumpkin test.

Oneida Ltd. v. Oneida Indian Nation of New York, Oppositions Nos. 91151254 and 91151404 (January 13, 2012) [not precedential]. Opposer's motion to re-open Applicant's testimony period for purposes of cross-examination denied under the excusable neglect standard, and its motion to extend its rebuttal period by sixty days denied under the good cause standard. However, the rebuttal period was re-set to give Opposer the ten days remaining in its rebuttal period when it filed its motion.

Text Copyright John L. Welch 2012.