Thursday, April 27, 2017

Report on HAWKWIND Oral Hearing: Raphael Gutierrez

The TTAB heard oral argument on April 24th in Dave Brock v. Nicholas Turner, Opposition No. 91214199, involving Nik Turner's application to register the mark NIK TURNER'S HAWKWIND for "Entertainment services, namely, live musical performances by an individual or musical group." Opposer Dave Brock claims ownership and priority of use of the mark HAWKWIND, likelihood of confusion under Section 2(a), and false association under Section 2(a). The parties’ briefs, testimony, evidence, and other papers may be found here.

Dave Brock

Dave Brock alleges that he co-founded the band HAWKWIND in 1969 and has been the only person who has been a member of the band continuously since its founding. Brock asserts that he has controlled the style and quality of the band's music, that he is therefore the owner of the mark HAWKWIND, and that the mark is famous and is entitled to a broad scope of protection.

Applicant Nik Turner claims that HAWKWIND is not famous, but just an obscure "cult" band, that Brock is not the prior user in the United States, and that Brock has abandoned any rights he may have had.

Nik Turner

Friend of the TTABlog Raphael Gutierrez attended the oral hearing and provides the following observations and comments:

Attendance: About 40 people. The room could have accommodated about 100. Most appeared to be law students with their professors.

Panel:
- Deputy Chief Judge Susan Richey
- Judge Lorelei Ritchie
- Judge Francine Gorowitz

Neither party was present.

Counsel for the Parties:
- For Opposer Dave Brock: first year associate Jodi Benassi of McDermott Will Emery. Another attorney was at the table, but did not argue.
- For Applicant Nik Turner: Evan Cohen of Manifesto Records

The Board stated that each side would get 30 minutes to present its case. When asked if Opposer would like to reserve time for rebuttal, Opposer indicated it would like to reserve 20 minutes for rebuttal. Judge Richey asked if Opposer was sure and Opposer replied that it was. After 10 minutes of argument, Judge Richey offered Opposer 10 more minutes for argument, leaving 10 for rebuttal. Opposer accepted the offer.

The Judges did not let either party get far into their arguments before starting in with questions.

Opposer opened with the factual history, but was reminded by the judges that they were familiar with it. The judges asked Opposer to move on to the legal arguments. Opposer argued that he is the proper owner of the HAWKWIND trademark because he was a founder of the band and the most consistent member since the beginning. Applicant, on the other hand, started as a roadie before joining the band. He was eventually fired after about 8 years. Opposer argued that 9th Circuit case law [Robi v. Reed] makes clear that the name of a band does not move with a member who has been kicked out. Judge Gorowitz asked whether Opposer knew that 9th Circuit law was not binding on the Board and whether Opposer had any Federal Circuit precedent; Opposer responded yes and no, respectively. Opposer admitted infrequent touring in the US using the HAWKWIND name, citing the difficulties of touring and complications due to “medical issues” arising from stress caused by Applicant’s use of HAWKWIND. Opposer also claimed that consistent record sales (a rough average of 1,000/year) showed no abandonment of the mark in the past 40 years. The Board’s toughest questions related to Opposer’s false association claim and the fame of the party asserting the claim. The Board was dubious of Opposer’s claim that HAWKWIND was famous among all concert-goers. Judge Gorowitz pointed out that she had never heard of the band.

Applicant argued that HAWKWIND was not and is not a famous band, even amongst the narrower subset of enthusiasts of the “prog rock” genre. Applicant made the point that there has been a revolving door of artists, but did not emphasize that as a result there is no singular source for HAWKWIND music. Applicant argued that Opposer’s use of the HAWKWIND mark in the United States for musical recordings (1,000 albums sold per year) was de minimis and that Opposer had abandoned the mark for live musical performances, not having performed in the US for over 10 years. This led to questions from the Board about how much use is enough to constitute use of the mark. Judge Richey asked if Applicant was familiar with the Adidas v. Christian Faith Fellowship case. He was not, so she did not press with further questions. [One might have countered that Adidas related to use sufficient to support a trademark registration - not use sufficient to establish nationwide common law rights.] Upon further questioning Opposer did go on to suggest that something like record sales of 10,000/year would probably be sufficient use to support a trademark claim. Applicant admitted there was confusion, but said it was not dispositive because there were lots of different versions of HAWKWIND the band. However, much of the confusion related to people emailing Opposer or posting on blogs with questions like “Which version of HAWKWIND is this?” Applicant might have argued that these were mere inquiries, not evidence of actual confusion.

The Board asked tough questions of both parties, but did not indicate which way they were leaning.

Read comments and post your comment here.

TTABlog comment: Thank you, Rafa. BTW: there are hundreds of comments to the original blog post regarding the hearing (here).

Text Copyright John L. Welch 2017.

Wednesday, April 26, 2017

TTAB Reverses 2(d) Refusal of ARC: Different Services and Channels of Trade, Sophisticated Purchasers

The Board reversed a Section 2(d) refusal of the mark shown below, for "litigation support services provided exclusively to law firms, namely, conducting electronic legal discovery in the nature of reviewing e-mails and other electronically stored information that could be relevant evidence in a laws," finding the mark not likely to cause confusion with the registered mark ARC for "legal services." The Board found that the differences in services and the care with which they would be purchased outweighed the similarities in the marks. In re Iris Data Services, Inc., Serial No. 86455558 (April 24, 2017) [not precedential] (Opinion by Judge Lykos).


The Marks: The cited mark is registered in standard character form, and could be used in the same font, color, and design as the applied-for mark. Moreover, it is the literal portion of the mark that will be used in calling for the services. And the design portion of applicant's mark merely reinforces the meaning and connotation of the word ARC. And so the Board found that the first factor weighed in favor of affirmance of the refusal.

The Services and Channels of Trade: The Examining Attorney contended that registrant's "legal services" encompass "all manner of legal services activities, including legal discovery and legal document review." Applicant argued that its services are computer-based services offered to legal professionals.

The Board sided with applicant, noting that the Examining Attorney offered no evidence to show that the involved services are related. The restriction of applicant's services to those provided "exclusively to law firms" made the channels of trade distinct. There was no evidence that the persons at law firms who are responsible for purchasing electronic discovery services are also the same individuals who retain "legal services" within the context of a traditional attorney/client relationship.

Therefore the Board concluded that these du Pont factors favored applicant.

Conditions of Sale: Although registrant's legal services encompass both high-priced and low-priced services, and even pro bono services, consumers will exercise a relatively high degree of care in their purchasing decisions. Applicant's services are of a specialized nature and are offered on a subscription basis at a relatively high price. Purchasers of applicant's services are likely to be highly sophisticated professionals knowledgeable about electronic discovery and information technology.

Therefore this factor favored applicant.

Conclusion: Balancing the relevant du Pont factors, the Board found confusion unlikely and it reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Seems like the right decision to me. What about you?

Text Copyright John L. Welch 2017.

Monday, April 24, 2017

WYHA? NANOCHIP Merely Descriptive of RFID Tags, Says TTAB

The USPTO refused registration of the mark NANOCHIP, finding it merely descriptive of "radio frequency identification (RFID) tags." Examining Attorney Sophia S. Kim maintained that the mark immediately describes a feature or characteristic of the goods, namely, that the products "feature a very small microchip." The Board agreed. Would You Have Appealed? In re Nanochip ID, Inc., Serial No. 86694656 (April 12, 2017) [nor precedential] (Opinion by Judge Bergsman).


A term is merely descriptive within the meaning of Section 2(e)(1) if it "immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used." The determination of mere descriptiveness is made not in the abstract, but rather in the context of the relevant goods.

The Examining Attorney submitted dictionary definitions of "nano" ("denoting a very small item") and chip ("Also a microchip. Electronics. A tiny slice of semiconducting material, generally in the shape of a few millimeters long, cut from a larger wafer of the material, on which a transistor or an entire integrated circuit is formed.") Applicant’s website identified its “radio frequency identification (RFID) tags” as microchips.

Applicant’s mark NANOCHIP retains the dictionary definitions of its component parts when used in connection with “radio frequency identification (RFID) tags” engendering the commercial impression that Applicant’s product is or is comprised of a very small microchip that functions as an identification tag.

Excerpts from Applicant’s website (nanochipid.com) touting the small size of the product supported the Board's finding.

Applicant argued that NANOCHIP is merely suggestive because “it fails to convey the use or purpose of that microchip, in the instant application as a part of a RFID tag." The Board pointed out, however, that a mark is merely descriptive if it "directly conveys to consumers a feature of Applicant’s product, namely, an RFID that is or is comprised of a very small microchip."

Applicant also contended that NANOCHIP is a double entendre, referring both to the size of the chip and its low cost. The Board, however, pointed out that, although the word “nano” may have multiple meanings in the abstract, when Applicant uses NANOCHIP in connection with RFID tags, it clearly conveys the message that its product is or is comprised of a very small microchip."

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Nano Nano!

Text Copyright John L. Welch 2017.

TTAB Reverses False Association Refusal of ME AND THE MOUSE TRAVEL & Design

The Board reversed a Section 2(a) refusal of the mark shown below for travel agency services, rejecting the USPTO's contention that the mark includes matter that falsely suggests an association with Disney Enterprises, Inc. The evidence showed that the image of Mickey Mouse qualifies as an "identity" of Disney, but was insufficient to establish that the applied-for mark is a close approximation of the Mouse cartoon character or that it points unmistakably to Disney. In re Me and the Mouse Travel, LLC, Serial No. 76717725 (April 21, 2017) [not precedential] (Opinion by Judge Gorowitz).


The first two prongs of the Section 2(a) test require that (1) the mark at issue be the same as, or a close approximation of, the name or identity previously used by another person or institution; and (2) the mark be recognized as such, in that it points uniquely and unmistakably to that person or institution. The Examining Attorney contended that the applied for mark not only contains the word "mouse" but also contains a design element (the gloved hand) that is a close approximation of a design element of Mickey Mouse.


The probative evidence establishes "both that Disney is a well-known company and that Mickey is a famous character and mark. Moreover, the evidence establishes that Mickey Mouse is so well-recognized as a symbol of the company that the cartoon character’s image qualifies as an “identity” of Disney within the meaning afforded that term by the relevant precedents.

The Board concluded, however, that the USPTO had failed to show that the applied-for mark is a "close approximation of Disney’s Mickey Mouse cartoon character or that it points unmistakably to Disney." First, the mark incorporates the term "THE MOUSE" not "Mickey Mouse." Also, Mickey has three fingers and a thumb whereas the applied for mark shows four fingers and a thumb. And Mickey Mouses is not the only cartoon character sporting white gloves; later Disney characters also had white gloves, as did non-Disney characters such as such as Bugs Bunny, Woody Woodpecker, and Mario.

Thus, this record does not support a finding that characteristics of the Mickey Mouse figure are so well known that the depiction of a narrow arm a with a white-gloved hand would be recognized as being being unique to a body part of the Mickey character, versus that of another cartoon character or some other arbitrary figure.

And so the Board reversed the Section 2(a) refusal.

Read comments and post your comment here.

TTABlog comment: Do you agree with the Board's decision? When you see the word "mouse" and the cartoonish gloved hand in the drawing, what do you think of?

Text Copyright John L. Welch 2017.

Friday, April 21, 2017

TTABlog Webcast: California Bar IP Section - May 2nd Noon PDT: "TTAB Year in Review"

Yours truly, the TTABlogger - who some say has a face for radio and a voice for blogging - will nonetheless present a webinar on Tuesday, May 2nd at 12 Noon Pacific Daylight Time, sponsored by the Intellectual Property Section of the California Bar. The topic? Wait for it ................. "TTAB Year in Review." Register here.


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TTAB Test: Are Sauces and Spice Rubs Related to Beer and Bakery Goods?

The USPTO refused registration of the mark SOUTHERN GIRLS GOURMET SAUCES for "sauces; spice rubs" [GOURMET SAUCES disclaimed), finding the mark likely to cause confusion with the mark SOUTHERN GIRL registered by one owner for beer and by another owner for bakery products. The Board found the marks confusingly similar, but what about the goods? How do you think this came out? In re Southern Girls Gourmet Sauces LLC, Serial No. 86932732 (April 19, 2017) [not precedential] (Opinion by Judge Taylor).


The Marks: Not surprisingly, the Board found the marks to be similar in sound, appearance, and meaning, and very similar in overall commercial impression. Applicant pointed to the fact that the two cited registrations are owned by different entities, arguing that if those two registrations can co-exist on the Register, its mark can too. The Board was unmoved.

While the Office strives for consistency in examination, the Board is not bound by the prior decisions of examining attorneys in allowing marks for registration. It is well established that each case must be decided on its own facts. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)

The Board further noted that, to the extent applicant contends that the cited registrations should be treated in the same manner as third-party registrations, these two registrations "do not persuade us that the phrase SOUTHERN GIRL(S) 'has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that [term] is relatively weak.'" Juice Generation, Inc. v. GS Enters., 115 USPQ2d 1671 (Fed. Cir. 2015). In short, two registrations are not enough to show that SOUTHERN GIRLS carries a suggestive or descriptive connotation and is a weak formative for the involved goods.

The Goods: Examining Attorney Tara L. Bhupathi relied on various websites showing use of the same mark for both sauces and/or spice rubs and bakery goods and beer. She also made of record third-party use-based registrations for marks covering items in the subject application and cited registrations. The Board found this evidence sufficient to establish the relatedness of the goods, "such goods all being comestibles and flavorings for food that are often sold by the same source under the same mark."

Conclusion: With the marks similar, the goods related, and the channels of trade and classes of purchasers overlapping, the Board found confusion likely and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: What do you think? Did the registrants get the gold mine and the Southern Girls the shaft?

Text Copyright John L. Welch 2017.

Thursday, April 20, 2017

TTAB Affirms Section 2(d) Refusal Despite Addition of House Mark "ISATORI" to "BIOGROW" for Supplements

The Board affirmed a Section 2(d) refusal of iSatori Bio-Gro for "dietary and nutritional supplements" in view of the registered marks BIOGROW, BIOGROWN, and BIOGROWTH, owned by the same entity, for "nutritional supplements.' The goods are in part identical, but applicant argued that the term "iSatori" distinguished the marks, just as in yesterday's case, the word CROSBY distinguished CROSBY QUIC-TAG from QUICK TAG. Nope, said the Board. In re iSatori, Inc., Serial No. 86397344 (April 18, 2017) [not precedential] (Opinion by Judge Adlin).


As to the identical goods, the Board must presume that they travel in the same, normal channels of trade to the same classes of consumers. Not only do these factors weigh heavily in favor of a finding of likely confusion, but they reduce the degree of similarity between the marks necessary to support a Section 2(d) refusal.

The Board found the marks to be highly similar in appearance, sound, connotation, and commercial impression. In fact, applicant's mark may be seen as another variation of registrant's marks.

The Board found that the added word "iSatori" may exacerbate confusion, based in part on the appearance of applicant's specimen of use (above), in which BIO-GRO is displayed in larger letters than iSatori.

The Board noted that in a number of analogous cases, the addition of a house mark to a registered mark has been found to be "in essence, an 'aggravation rather than a justification.'"Although BIOGROW is somewhat suggestive of nutritional supplements, "it is nowhere near as suggestive as the marks in which the addition of a house mark was found to be sufficiently distinguishing to avoid a likelihood of confusion." For example, in Knight Textile, the mark ESSENTIALS was found to be highly suggestive for clothing in light of 23 third-party registrations for marks that included the word ESSENTIALS. Here the evidence in not on a part with that evidence; dictionary  definitions of BIO and GROW and 12 third-party registrations for marks including the term BIO  for nutritional supplements [but not GROW].

In short, ESSENTIALS, and English word commonly used by numerous  parties for clothing, is significantly more suggestive than BIOGROW and forms thereof, which is not a word and which has not been revealed to be used by anyone other than Applicant and Registrant for nutritional supplements.

Finally, the Board accepted applicant's argument that the goods would be purchased with a heightened degree of care, but that factor was "easily outweighed" by the other du Pont factors that favored the Section 2(d) refusal.

Finding confusion likely, the Board affirmed.

Read comments and post your comment here.

TTABlog comment: Lots of case citations in this one. Note Board's pooh-poohing the import of federal court decisions in infringement cases (footnote 6).

Text Copyright John L. Welch 2017.

Wednesday, April 19, 2017

TTAB Reverses Section 2(d) Refusal of CROSBY QUIC-TAG over QUICK TAG for Identification Tags

The Board reversed a Section 2(d) refusal to register the mark CROSBY QUIC-TAG for "radio frequency identification (RFID) tags for material lifting equipment; computer software and firmware for reading radio frequency identification (RFID) tags for material lifting equipment," finding it not likely to cause confusion with the registered mark QUICK TAG in the form shown to the right, for "metal identification tags" [TAG disclaimed]. The Board found that "although Applicant’s and Registrant’s goods are somewhat related, the dissimilarities in their respective marks, coupled with the mostly diverse channels of trade and sophisticated classes of purchasers, create 'a confluence of facts which persuasively point to confusion as being unlikely.'" In re The Crosby Group LLC, Serial No. 86780353 (April 17, 2017) [not precedential] (Opinion by Judge Heasley).


The Marks: The Board found the word CROSBY to be the dominant element in applicant's mark. Although CROSBY is a surname, applicant has used the mark CROSBY for more than five years and owns two registrations for the mark for various forms of material lifting equipment. The Board ruled that the acquired distinctiveness of the two registered marks carries over to the instant application. Moreover, the evidence demonstrated that "purchasers of material lifting equipment and related goods have been conditioned over time to associate CROSBY with a single source: Applicant."

The words in the cited mark QUICK TAG are "at best highly suggestive and at worst generic." The disclaimed word TAG is generic for metal identification tags. QUICK is highly suggestive because it indicates that Registrant’s tags are provided quickly [via vending machines]. The lightning bolt design element reinforces that suggestion. "QUICK TAG is thus highly suggestive―so much so that the addition of CROSBY, a dominant, distinctive component, suffices to distinguish it."

The Goods: The issue of the similarity of the goods arises with respect to applicant's RFID tags and registrant's metal identification tags. The Board found that registrant’s metal tags "can be considered somewhat related to Applicant’s RFID tags." The fact that they fall in different USPTO classes is irrelevant, since Section 2(d) makes no reference to classification. The evidence of third-party use showed that the goods may emanate from a common source, and may overlap at times.

Channels of Trade/Sophistication of Purchasers: Given the limitation of applicant's goods to tags and readers used in connection with material lifting equipment, the only overlap in customers would be businesses that purchase and use material lifting equipment. Considering the nature of the material lifting equipment industry, "it stands to reason that its institutional purchasers will exercise greater care in making their purchases than the general purchasing public."

Thus, while Registrant could offer its products to industries requiring material lifting equipment, it is unlikely that the purchasers in those industries will confuse its mark with Applicant’s CROSBY-formative mark.

Therefore the third and fourth du Pont factors favor applicant.

Conclusion: Considering the relevant factors, the Board found confusion unlikely and it reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Sometimes the addition of a "house" mark will avoid likelihood of confusion: see, e.g., the Knight Textiles case (ESSENTIALS, so highly suggestive of clothing that the applicant’s addition of the house mark NORTON MCNAUGHTON sufficed to distinguish the marks).

Text Copyright John L. Welch 2017.

Tuesday, April 18, 2017

TTAB Affirms Section 2(e)(2) Refusal of LAUGHLIN RANCH: Geographically Descriptive of Golf Courses and Spas

The Board affirmed a Section 2(e)(2) refusal of the mark LAUGHLIN RANCH, finding it to be primarily geographically descriptive of retail store services featuring golf products and apparel in
Class 35; golf club services; golf courses in Class 41; restaurant and bar services; catering services in Class 43; and health spa services; hair salon services; hair styling and cutting services; manicure and pedicure services in Class 44. Applicant unsuccessfully maintained that, although the word LAUGHLIN is geographically descriptive, the entire mark is not. In re IMH LR Clubhouse, LLC, Serial No. 86338122 (April 13, 2017) [not precedential] (Opinion by Judge Goodman).


Applicant acknowledged that its services originate in Laughlin, Arizona and that LAUGHLIN is geographically descriptive of the services. Laughlin is a place generally known to the public [although it seems to be in Nevada, not Arizona].

Examining Attorney Karen K. Bush maintained that the addition of the descriptive term RANCH does not change the primary geographic significance of the term LAUGHLIN. Applicant contended, however, that RANCH "is not generic or so highly descriptive as to make the mark geographically descriptive overall."

Third-party web site evidence showed use of the term RANCH in connection with golf club, dining, spa services, and retail store services. The examining attorney asserted that RANCH is "a term of art that identifies resorts and communities located on large areas of land in which various activities, such as golfing, restaurants, spa services etc. are offered." The Board concluded from this evidence that RANCH is a "highly descriptive term" when used in connection with ranch-style resorts and communities that offer golf, dining, spa, and retail store services.

The Board then found that combining RANCH with LAUGHLIN does not detract from the geographical descriptiveness of the mark as a whole.

Finally, the Board observed that when the geographical significance of a term is its primary significance, and when the place is not obscure or remote, a services/place association in the minds of consumers may be presumed when the services emanate from that place. Laughlin, Nevada is the third largest gambling venue in Nevada and is a generally known geographical location, and so the Board presumed that a services/place association would be made.

The Board therefore affirmed the Section 2(e)(2) refusal.

Read comments and post your comment here.

TTABlog comment: The Examining Attorney had accepted applicant's 2(f) claim, and so the mark will proceed to publication under Section 2(f).

Text Copyright John L. Welch 2017.

Monday, April 17, 2017

TTABlog Road Trip: New York City Bar Association, April 24th

Your truly, the TTABlogger, will venture down to the Big Apple for the New York City Bar's symposium called "On Your Marks: Frontline Issues in Trademark and Advertising Law." My topic will be ..... guess what? The event will run from 9am to 5pm, at the New York City Bar, 42 West 44th Street, New York, NY 10036. Register here.


9:00 am – 9:10 am - Introduction

9:10 am – 10:25 am - New World, New Marks: Trademark Issues Presented by Brexit and Market Expansion into Cuba: (Michelle DiGruttolo, Ainslee A. Schreiber, and Phil Sherrell).  2016 saw dramatic developments in both Europe and Cuba that are changing the business environment in those countries. What does Brexit mean for U.S. rights holders, and what should you be doing now to protect your brands in Europe? On the other side of the Atlantic, how should U.S. trademark holders protect their marks in the fast-changing economy that is Cuba?

10:25 am – 10:40 am - Break

10:40 am – 11:55 am - Digitally Clear: Tips for Clearance of Advertising on Social Media and Online Apps: (June Casilmir, Nicole D. D’Amato, Zev Parnass, and Fara S. Sunderji).  In today’s digital world, social media and mobile apps are becoming increasingly important in consumer marketing. When is an online posting an advertisement? What are the applicable rules and the potential penalties for violating them?

11:55 am – 12:20 pm - An Ambassador’s View: International Trade and IP Challenges for the Trump Administration: Ambassador Ronald Kirk: Former U.S. Trade Representative (USTR) in the Obama Administration, Currently Senior Of Counsel, Gibson, Dunn & Crutcher

12:20 pm – 1:45 pm - Networking Luncheon

1:45 pm – 3:00 pm - Trademark Battle Roundup: Annual Review of Leading Trademark Decisions by Federal Courts and the TTAB: (Dale M. Cendali and John L. Welch). What were the major decisions of 2016 in both at the Trademark Trial and Appeal Board and in the courts? This session will provide a comprehensive summary of the past year’s most important rulings and their impact on rights holders.

3:00 pm – 3:10 pm - Break

3:10 pm – 4:00 pm - Disruptive Strategies to Combat Infringement in Cyberspace: (Joseph V. DeMarco and Roxanne Elings). In today’s connected world, infringers can take advantage of U.S. commerce from outside the United States. This session explores practical and litigation strategies taken within the United States that can disrupt the infringer’s business and bring a return on investment for the rights holder.

4:00 pm – 4:50 pm - In All Honesty: How to Navigate Ethical Issues in Trademark Investigations: (Susan Upton Douglass and Tony Yarborough). Investigating trademarks that potentially block a client’s proposed mark, or investigating a potential adverse party before sending a cease and desist letter or bringing a lawsuit can raise complicated ethical issues. In this session, a trademark attorney and investigator address the potential ethical pitfalls and ways to avoid them.
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TTAB Schedules HAWKWIND Hearing for April 24 at Silicon Valley USPTO

The Board has scheduled an oral hearing on April 24th at 3PM at Silicon Valley USPTO, California Room, Rm. 109 (lobby level), 26 S. Fourth Street, San Jose, CA 95113, in Dave Brock v. Nicholas Turner, Opposition No. 91214199., involving Nik Turner's application to register the mark NIK TURNER'S HAWKWIND for "Entertainment services, namely, live musical performances by an individual or musical group." Opposer Brock claims ownership and priority of use of the mark HAWKWIND, likelihood of confusion under Section 2(a), and false association under Section 2(a).


Dave Brock alleges that he co-founded the band HAWKWIND in 1969 and has been the only person who has been a member of the band continuously since its founding. Brock asserts that he has controlled the style and quality of the band's music, that he is therefore the owner of the mark HAWKWIND, and that the mark is famous and is entitled to a broad scope of protection.

Nik Turner

Applicant Nik Turner claims that HAWKWIND is not famous, but just an obscure "cult" band, that Brock is not the prior user in the United States, and that Brock has abandoned any rights he may have had.

David Brock

Read comments and post your comment here.

TTABlog comment: Thoughts? Any HAWKWIND fans out there? Wikipedia explains how the name was chosen.

Text Copyright John L. Welch 2017.

Friday, April 14, 2017

TTAB Reverses Section 2(d) Refusal of "PAPER" over "BAMBOO PAPER" for Digital Notebooks

Third-party registration and use of the word "paper" in connection with digital writing devices led the Board to reverse a Section 2(d) refusal of the mark PAPER for software for writing on electronic devices with a stylus or finger. The USPTO had deemed the mark confusable with the registered mark shown below, for input devices for computers, including computer software for digital drawing and painting. In re FiftyThree, Inc., Serial No. 86180291 (April 12, 2017) [not precedential] (Opinion by Judge Bergsman).


The Goods: The Board concluded that both applicant's application software and registrant's electronic whiteboards and software identify digital notebooks that simulate paper notebooks, and so the goods are in part identical.

The Marks: Applicant submitted evidence of use of marks containing the word PAPER by three third parties for products related to digital notebooks. [Pen and Paper, PAPERLESS DRAW, and ePAPER]. In addition, applicant provided nine third-party, used-based registrations for such mark.

The third-party uses of marks consisting of the word “Paper,” in whole or in part, and the third-party registrations for marks consisting of the word “Paper” in connection with computer applications allowing for the substitution of digital data for writing or drawing on paper are sufficient to prove that the word “Paper” has been extensively adopted, registered and used as a trademark or part of a trademark for computer software or related goods and services of this type. As a result, a mark comprising, in whole or in part, the word “Paper” in connection with such goods or services should be given a restricted scope of protection.

In addition, applicant is the owner of a registration for the mark PAPER BY FIFTYTHREE for the same goods as in the application at issue. The evidence led the Board to conclude that:

● Registrant was satisfied to register its mark BAMBOO PAPER and design side-by-side with all the other PAPER marks by requesting an extension of protection under Section 66 of the Trademark Act, 15 U.S.C. § 1141f;

●The USPTO has been registering PAPER marks for computer software and related services for creating and utilizing digital data so long as there has been some difference between the marks as a whole or between the goods or services; and

● The number of registrations for various PAPER marks reflects a determination by the USPTO that various PAPER marks can be used and registered side-by-side without causing confusion, provided there are minimal differences between the marks and the goods or services.

Considering the marks in their entireties as to appearance, sound, connotation, and commercial impression, the Board concluded that BAMBOO is the prominent element in the cited mark, since "Paper" is a weak term for the involved goods.


The Board noted that registrant uses BAMBOO as a stand-alone mark on its stylus, and also in several BAMBOO-formative marks to identify its products. The Board concluded that "the marks are distinguishable because BAMBOO is the dominant part of Registrant’s mark and Applicant’s mark PAPER is very weak because it is highly suggestive, if not descriptive."

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: This is one of the infrequent, post-Juice Generation TTAB decisions in which the number of third-party uses (3) and registrations (9) were sufficient to affect the Section 2(d) outcome, even without proof of the manner and extent of use of the third-party marks. In other words, they had probative value on their face(s).

Text Copyright John L. Welch 2017.

Thursday, April 13, 2017

Finding Watches and Clothing Related, TTAB Affirms Section 2(d) Refusal of MARIE-ANTOINETTE

The Board affirmed a Section 2(d) refusal to register the mark MARIE-ANTOINETTE for various goods in classes 9, 18, and 25, including sunglasses, handbags, and clothing, finding the mark likely to cause confusion with the registered mark BREGUET MARIE-ANTOINETTE for jewelry and watches. Applicant contended that BREGUET is the dominant element in the cited mark, but the Board cut short that argument. In re Tempting Brands Netherlands B.V., Serial No. 79161682 (April 11, 2017) [not precedential] (Opinion by Judge Bergsman).


The Marks: The Board observed that there is no per se rule as to how the addition of a house mark or a designer name to similar product marks affects the analysis of whether marks are similar or dissimilar.

[S]uch addition may actually be an aggravation of the likelihood of confusion as opposed to an aid in distinguishing the marks so as to avoid source confusion. On the other hand, where there are some recognizable differences in the asserted conflicting product marks or the product marks in question are highly suggestive or merely descriptive or play upon commonly used or registered terms, the addition of a housemark and/or other material to the assertedly conflicting product mark has been determined sufficient to render the marks as a whole sufficiently distinguishable. In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (citations omitted) (Applicant's LE CACHET DE DIOR is similar to the registered mark CACHET).

When the common part of the marks is identical, as here, purchasers familiar with registrant’s mark are likely to assume that the house mark or designer name simply identifies what had previously been an anonymous source. The name MARIE-ANTOINETTE is an arbitrary term in this context because it describe or suggest any qualities, characteristics or features of eyeglasses, handbags, clothing, jewelry or watches.

The Board concluded that that involved marks are similar in appearance, sound, connotation, and commercial impression.



The Goods: Examining Attorney Christopher M. Law submitted numerous third-party web pages showing the same mark in use for sunglasses, handbags, clothing, and jewelry or watches. The third-party uses included designer names or house marks (e.g., TOMMY HILFIGER), and the Board recognized that "because such marks may be licensed for a broader range of unrelated goods and services they may be of less probative value to show that goods are related."

[T]he third-party uses are persuasive evidence because, as vigorously argued by Applicant, Registrant’s mark includes a house mark, and consumers understand that Registrant would sell or license its BREGUET name/mark on a wide variety of products. Thus, consumers familiar with BREGUET MARIE-ANTOINETTE products in connection with jewelry and watches, encountering MARIE-ANTOINETTE eyeglasses, handbags, and clothing may mistakenly believe that those fashion products emanate from the same source.

Moreover, these items are used together "in the scheme of presenting oneself in a desired, stylish manner; they are related to the extent that the goods are part of the overall fashion picture which encompasses apparel and accessories"

Finally, applicant argued that registrant's goods are very expensive and would be purchased with care, but the Board pointed out that there were no such limitations in the registration. Registrant's broadly-written identification of goods encompasses inexpensive watches.

Conclusion: The Board affirmed the refusal to register

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TTABlog comment: Was this a close case? I think not.

Text Copyright John L. Welch 2017.