WYHA? TTAB Affirms Mere Descriptiveness Refusal of "POLYMERLATEX" for Chemicals

Applicant failed to bounce back from a Section 2(e)(1) mere descriptiveness refusal of POLYMERLATEX for various chemicals, sealing agents, and other stuff. The Board affirmed, easily knocking down every argument made by Applicant. Which leads to the question, WYHA? In re PolymerLatex GmbH, Serial No. 79053418 (August 19, 2010) [not precedential].


Examining Attorney Chrisie Brightmire King submitted dictionary, encyclopedia, and Wikipedia entries, scientific journal articles, and excerpts from Applicant's own website, in convincing the Board to conclude that "the term 'Latex' in applicant's mark, POLYMERLATEX, describes the nature of applicant's goods, which are, or include, 'latex' in one form or another, and, at a minimum, the term 'polymer' describes a component of the latex compound." [And I thought I used a lot of commas! - ed.] Moreover, Applicant's own descriptive use of "polymer" and "latex" at its website is "strong evidence that the mark is descriptive."

Several patent applications owned by Dow Chemical and BASF confirmed that polymer emulsions and dispersions like those produced by Applicant are commonly referred to as "polymer latex." The fact that Applicant's largest competitors use the term descriptively "is persuasive evidence that purchasers for applicant's latex would view the term descriptively as well."

As to another patent application using the term descriptively, Applicant argued that it now owns that application and so the application does not show "others using the mark with similar goods." The Board, however, found that this is simply more evidence of Applicant's own descriptive use. [I guess they should have amended the application, huh? - ed.].

Of course, the fact that the term is used as two words instead of in Applicant's compound form is legally insignificant.

Finally, the Board noted Applicant's prior registration for POLYMER LATEX & Design for essentially the same goods, in which registration POLYMER LATEX is disclaimed. Although a disclaimer does not preclude Applicant from obtaining registration for that term, the disclaimer is "further evidence that POLYMERLATEX, the equivalent of POLYMER LATEX, is a descriptive term."

And so the Board affirmed the refusal.

TTABlog comment: These WYHA? cases make me wonder whether I ever should have posted this song. Am I partly to blame for encouraging these quixotic trips to the TTAB?

Text Copyright John L. Welch.

TTAB Posts September 2010 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled five (5) hearings for the month of September, 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.


September 14, 2010 - 11 AM: In re Blandi International, LLC, Serial No. 77482010 [Section 2(d) refusal to register the mark PRONTO for "hair lotions and cosmetics" and for "providing information about the application to hair of lotions and cosmetics for cosmetic use and hair care," in view of the identical mark registered for "hair shampoos and hair conditioners"].


September 14, 2010 - 2 PM: Cake Divas v. Charmaine V. Jones, Opposition No. 91173301 [Fraud and Section 2(d) opposition to registration of the mark CAKEDIVA for "greeting cards featuring photographs of cakes and cookies" and for "cakes ... and edible decorations made of sugar for cakes and cookies," in light of the mark CAKE DIVAS for "custom cake making, baking, designing and decorating services for edible and faux cakes"].


September 21, 2010 - 2 PM: Stoncor Group, Inc. v. Stonel Inc., Opposition No. 91177161 [Section 2(d) opposition to registration of the mark STONEL & Design for "Bricks; Concrete building materials namely, thin face brick on prefabricated panels," based upon an alleged family of "STON"-formative marks for flooring, coating, sealing and bonding products].


September 22, 2010 - 2 PM: Swatch AG v. Bernard, Opposition No. 91169312 [Sections 2(d) and 43(c) opposition to registration of the mark SWAP (Stylized) for "watch faces, ribbon watch bands, slide pendants, and beaded watch bands" in light of the registered mark SWATCH for watches and parts thereof].



September 23, 2010 - 2 PM: Morinaga & Co., Ltd. v. Crown Confectionary Co., Ltd., Opposition No. 91171726 [Section 2(d) opposition to registration of the mark MYCHEW (Stylized) for "chewing gum; candy; caramels" in view of the registered mark HI-CHEW (Stylized) for candy.]



Text Copyright John L. Welch 2010.

TTAB Affirms 2(d) Refusal of "MARSHLAND" Over "MARSHLANDER," Finding Camouflage Fabric and Raingear Related

The Board affirmed a Section 2(d) refusal to register the mark MARSHLAND for camouflage fabric "sold as an integral component of finished clothing items," finding the mark likely to cause confusion with the registered mark MARSHLANDER, in standard character and design form, for raingear. In re NTA Enterprise, Inc., Serial No. 77575867 (August 6, 2010) [not precedential].


The Marks: Not surprisingly, the Board found the marks to be similar. The "ER" suffix is not sufficient to differential the marks, and the design element of Registrant's mark merely reinforces the "impression of [a] person from a marshy or swampy region (i.e., a marshlander)."

Applicant pointed to six third-party registrations for marks that include the word "MARSH" for clothing items, but there was no evidence that the marks "are actually being used, much less that the extent of such third-party use is so great that consumers have become accustomed to seeing the various marks and, therefore, have learned to distinguish them."

The Board observed that third-party registrations may be used in the manner of a dictionary to show that a term is descriptive or suggestive of goods or services, but six registrations "do not prove that the term MARSHLANDER is so weak and diluted that applicant's change to MARSHLAND is sufficient to distinguish the marks." "At most, 'Marshlander' may suggest that the clothing or fabric has an outdoor theme," and the mark is therefore inherently distinctive.

The Goods: Examining Attorney John M. Wilke submitted excerpts from various websites "advertising clothing referencing the fabric from which the clothing is made."

This evidence demonstrates that retailers advertise clothing and fabrics together and, therefore, consumers of finished clothing items may come in contact with the fabric and the mark for the fabric from which the clothing items are made. Accordingly, we find that consumers are likely to ascribe a common origin to fabric and finished clothing that share a similar trademark.

The Board also noted that the website evidence included numerous examples of camouflage raingear: "Consumers could easily mistakenly believe that applicant's camouflage fabrics and registrant's raingear emanate from the same source because of the similarity of the marks."

Moreover, the involved goods would move through the same retail clothing channels and would be encountered by the ultimate consumer.

And so the Board concluded that confusion is likely.

TTABlog comment: Note that there was no evidence that both fabric and clothing is sold under the same mark. But still, if you saw a MARSHLANDER brand jacket next to a jacket featuring MARSHLAND brand fabric, you would likely be confused, wouldn't you?

Text Copyright John L. Welch 2010.

WYHA? TTAB Affirms Mere Descriptiveness Refusal of "ZEOLITE" for Dishwashers

This applicant tried everything but the kitchen sink in attempting to overcome a Section 2(e)(1) mere descriptiveness refusal of the mark ZEOLITE for dishwashers. Nonetheless, its appeal went right down the drain. Would You Have Appealed? In re BSH Bosch und Siemens Hausgeraete GmbH, Serial No. 77586001 (August 13, 2010) [not precedential].

zeolite
Examining Attorney Tasneem Hussain maintained that "zeolite" is a specific type of silicate material and that Applicant's own website touts the use of zeolite in its dishwashers.

Applicant contended that the dictionary makes no mention of dishwashers in defining "zeolite" [I'm shocked! - ed.]; that "zeolite" does not convey any immediate information regarding the goods [What about that website? - ed.]; that the term is infrequently used and therefore consumers won't perceive that it names a feature of the goods; and that registration of the mark will not deprive competitors of the ability to use the term descriptively.

From a review of the record evidence, the Board litotically found it "hard not to conclude" that zeolite is not a significant feature of Applicant's appliances: several pounds of zeolite are held in a special compartment that is accessed during the machine's drying phase.

In short, the Board had "no doubt" that the mark immediately describes Applicant's goods.

Applicant, however, boldly urged that ZEOLITE is non-descriptive, like the mark SHEER ELEGANCE for pantyhose. The Board, however, contrasted ZEOLITE with that mark, and with SUGAR AND SPICE, CHABLIS WITH A TWIST, and NO BONES ABOUT IT, and found no double-entendre in Applicant's mark. [What if Applicant had used the advertising slogan: ZEOLITE UP MY LIFE? - ed.]

The purported fact that Applicant is the first and only user of the mark ZEOLITE does not, of course, avoid mere descriptiveness. And the fact that others could still use the term "zeolite" in its dictionary sense does not justify registration:

To recognize this as an inherently distinctive source-indicator for dishwashers would be to create potential disruption in the marketplace where competitors would be leery of using the term in its ordinary, descriptive sense for fear of infringing applicant’s registered mark.

Finally, Applicant' insisted that zeolite has so many uses that the term would not convey an immediate idea regarding the nature or characteristics of Applicant's dishwashers. The Board, however, pointed out for the umpteenth time that the mere descriptiveness determination is not a guessing game and that the proposed mark must be considered in relation to the goods.

The proto-typical consumer of our legal test for mere descriptiveness is not blindfolded, but knows full well that applicant is not using the mark in connection with cars, software, phones, etc. Rather, the relevant consumer knows that applicant is manufacturing and marketing dishwashers having a special drying feature that saves energy. We also presume that this prospective purchaser understands the relevant connotation of the word “Zeolite.” We find that such a consumer, upon first encountering applicant’s Zeolite goods in the marketplace will immediately, without conjecture or multi-stage reasoning, reach a conclusion as to one significant feature, function or characteristic of applicant’s dishwashers.

And so the Board affirmed the refusal.

TTABlog comment: I think this decision should be precedential. Even though it's pretty straigthforward, the opinion includes nice explanations of several facets of the law of mere descriptiveness.

TTABlog note: Applicant's identification of goods reads "household and kitchen machines and equipment, namely, electric kitchen machines and equipment, namely, dishwashers; structural parts of all aforementioned goods in International Class 7.1." Couldn't it just say "dishwashers and structural parts therefor?"

Text Copyright John L. Welch 2010.

Free Case Book: "Fundamentals of Intellectual Property Law" by Prof. Thomas G. Field, Jr.

Professor Tom Field of the University of New Hampshire School of Law has made available his casebook entitled ""Fundamentals of Intellectual Property Law." [Downloadable here]. "The PDF is approximately the 20th revision of a conventional 470 pp. casebook. It has been used twice annually in 3-semester-hour survey courses since 1999. Except for a few years when it was published by Carolina Academic Press, it has been revised each semester. This edition will be used in the spring 2010."

Pamela Chestek Comments on "METAL GEAR" WYHO Case

Pamela Chestek, ip ownership maven, comments here on the ownership issue in the recent METAL GEAR case. [TTABlogged here].

So DAT thought up the mark, spec'd the goods, and arranging for manufacturing with several companies - in other words, did what every brand name company who manufactures offshore does. The opposer then bought unauthorized goods and had the nerve to claim that the cheating manufacturer owned the mark. I should hope a fraud claim wouldn't fly.

You said it, Pam!
.

Rejecting Broad Interpretation of Cited Registration, TTAB Reverses 2(d) Refusal of "RED BOX DIVERSITY SYSTEM"

The Board reversed a refusal to register the mark RED BOX DIVERSITY SYSTEM in the design form shown below [DIVERSITY SYSTEM disclaimed], for "education services, namely, providing training, by way of classes, seminars, conferences and workshops in the field of cultural diversity, community education and human relations." The Examining Attorney had deemed the mark confusingly similar to the registered mark RED BOX for "books, pamphlets, brochures and journals relating to financial, legal, corporate and other business related topics," but the Board found the involved goods and services not to be related. In re Beyond Diversity Resource Center, Inc., Serial No. 77722602 (August 19, 2010) [not precedential].


Not surprisingly, the Board promptly found the marks to be similar, since the words RED BOX constitute the dominant portion of Applicant's mark. Moreover, the color red and the design portion of the mark simply reinforce the meaning of RED BOX.

As to the goods and services, however, the Board did some thinking outside the box. It agreed that educational service and printed materials may be related, but it refused to accept the Examining Attorney's interpretation of the scope of the cited registration.

According to the Examining Attorney, "How one interacts with fellow employees is a quintessential business topic. ... It is integral to understand, accommodate and maximize the potential benefits employee diversity entails in order to have a successful business."

The Board, however, concluded that, taken as a whole, "registrant’s identification is not so open-ended to include any possible service any business or organization may need. The wording, 'financial, legal, corporate' provides the framework for the general scope of the identification."

Applicant’s training in diversity, community education and human relations is not a business-related topic except in an extremely broad sense of the term. The examining attorney’s interpretation would include anything, for example, cafeteria services, where businesses provide access to meals onsite, or child care services, where businesses provide onsite daycare.

Furthermore, there was no evidence of record that shows "diversity training services and printed matter on financial, legal, corporate, and other business-related topics being offered by a single source."

And so the Board found that Registrant's goods are not related to Applicant's services. Furthermore, Applicant's services would be purchased with "sufficient care to preclude confusion.

The Board therefore reversed the refusal.

TTABlog comment: Seems like the overly-broad identification of goods in the registration is a candidate for a Section 18 partial cancellation.

Text Copyright John L. Welch 2010.

We Have a TTABlog Stress Ball Winner: Michael Tschupp

TTABlog Email Subscriber No. 1000 is Michael E. Tschupp of Miami, Florida. Michael recently launched his own blog called Sustainable Marks, where he focuses on "trademarks, patents, and advertising - from a green perspective." Congratulations, Michael! Your stress balls are in the mail.

Be E-mail Subscriber No. 1000 and Win a Pair of TTABlog Stress Balls

The TTABlog E-mail subscriber list stands at 997. You can be the One-Thousandth subscriber and win two TTABlog stress balls! Enter your E-mail address in the subscription box on the right.

Precedential No. 33: Opposer Proves Priority Based on Sale of Ventilators for Test Purposes

Opposer Automedx breathed more easily after the Board sustained its Section 2(d) opposition to registration of the mark SAVE for medical "ventilators," finding the mark likely to cause confusion with Opposer's mark SAVe for portable ventilators. The sole contested issue was priority of use, and the Board sided with Opposer Automedx based on its earlier sale of ventilators to the Air Force for purposes of testing and refinement. Automedx, Inc. v. Artivent Corporation, Opposition No. 91182429 (August 17, 2010) [precedential].


Judge Bergsman laid out the facts and the issues in his usual well-organized fashion. This posting will attempt to hit the high points.

Applicant was entitled to claim the filing date of its I-T-U application, October 10, 2006, as its date of first use. Automedx relied on sales prior to that date, which sales were "made for purposes of testing and were completed prior to FDA approval of opposer's ventilators for human use." Applicant contended that those sales constituted neither bona fide use, nor lawful use.

Bona Fide Use: As to the sales themselves, the issue was "whether Opposer's April 2005 and August 2006 sales were test sales for legitimate commercial purposes in the ordinary course of trade or token sales to reserve the mark for registration." The Board found the former and not the latter.

The Board disagreed with Applicant's assertion that FDA approval is required before a sale may be bona fide. The sales were "mutually beneficial in that they allowed the military to test the initial units before committing to a larger purpose, and they permitted opposer to refine the produce to make it commercially attractive." These were arms-length transactions in which properly labeled SAVe ventilators were sold and transported in commerce. The fact that they were sold for testing purposes does not make the sale and transportation of the goods less legitimate.

Applicant pointed to the lack of documentary support for the April 2005 sale, but the Board found the testimony of Opposer's witnesses to be consistent, definite, and without contradictions.

Lawful Use: The determination of lawful use involves two questions: (1) whether there is a previous determination that a party has not complied with a relevant statute; or (2) whether there is a per se violation of a statute. Here, there was no prior determination of illegality, and so Applicant relied on the per se prong of the test.

According to applicant, if the portable ventilators are goods in trade, which they must be in order for opposer to claim priority, then the sale of the portable ventilators must be approved for human use by the FDA to constitute lawful use in commerce.

The Board, however, quickly dismissed this argument: "While they were not sold for human use, they were bona fide sales and there is no perceptible violation of any laws or regulations." There is no requirement of FDA approval for goods sold to the military for testing purposes.

And so the Board sustained the opposition.

TTABlog comment: The devices were tested on the laboratory bench and in swine studies. What if the tests had included human guinea pigs? BTW: FDA approval was obtained in 2007.

Even if the Board found these early sales not to qualify as trademark use, would they have constituted use analogous to trademark use for priority purposes? Or were they not public enough?

Text Copyright John L. Welch 2010.

TTAB Reverses 2(d) Refusal of "WISH YOU WERE HERE" for Underwear

The "strong differences" in the marks, coupled with the differences in the goods, led the Board to reverse a Section 2(d) refusal to register WISH YOU WERE HERE (in standard character form) for underwear. The Examining Attorney maintained that the mark was likely to cause confusion with the mark depicted immediately below, for "women’s dresses, shirts, skirts and apparel." In re Diane R. Gunter, Serial No. 77227513 (August 20, 2010) [not precedential].


The Marks: The Board agreed with Applicant Gunter that the Examining Attorney improperly focused on the common phrase "wish you were here."

The words “Love, Jetsy” and the overall postcard design are very noticeable and they have the effect of catching the eye and engaging the viewer before the viewer even looks at the phrase “Wish you were here!” In this context, the “Wish you were here!” phrase is a postcard cliché that acts merely to reinforce the design element of the postcard, and would not otherwise make an impression on the viewer.

The Board concluded that the marks differed "significantly in appearance, pronunciation, connotation and commercial impression."


The Goods: As to the goods of the cited registration, the Board refused to read "shirts" to include underwear, and it pointed out that "apparel" means outer garments. The Examining Attorney's probative Internet evidence (two websites) at most showed that the trade channels for the involved goods overlap, but that was not enough to prove that the goods are "closely related."

The Board therefore reversed the refusal to register.

TTABlog comment: It seems to me that the phrase "wish you were here" on underwear has quite a different connotation from "wish you were here" on a postcard. Unless maybe it's a French postcard?

Text Copyright John L. Welch 2010.

Test Your TTAB Judge-Ability: Is "ONCE A MARINE, ALWAYS A MARINE" on Clothing a Trademark, Or Merely Informational?

Eagle Crest applied to register the mark ONCE A MARINE, ALWAYS A MARINE for various clothing items. The Examining Attorney refused registration, maintaining that the phrase, as it appears on the specimens of use (see photos below), would be perceived as merely informational and not as a trademark. Applicant appealed. How would you decide? In re Eagle Crest, Inc., Serial No. 77114518 (August 10, 2020) [not precedential].


The Board began by observing that "not every designation adopted with the intention that it performs as a trademark and even labeled as a trademark necessarily accomplishes that purpose." Some designations are "inherently incapable of functioning as trademarks." The crucial issue is public perception.

Slogans and other terms that are considered to be merely informational in nature, or to be common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry, are not registrable.

Here, Eagle Crest admitted that the phrase ONCE A MARINE, ALWAYS A MARINE is a "motto associated with and used by and about marines by them and their admirers." Said the Board: "There is no dispute that the phrase ... is an old and familiar Marine expression, and as such it is the type of expression that should remain free for all to use." In fact, the evidence showed that it is commonly used by others as informational and ornamental matter on t-shirts and other items. "Applicant is not entitled to appropriate the slogan to itself and thereby attempt to prevent competitors from using it to promote the sale of their own clothing."

Applicant's manner of use of the slogan likely reinforces the perception of ONCE A MARINE, ALWAYS A MARINE as merely informational. Applicant's website offers this slogan along with eight other military or patriotic messages that the consumer may choose for imprinting on a clothing item. Clearly, consumers want to display their support for the Marines.


Eagle Crest asserted that other common Marine expressions, such as "HOOAH" and "GUNG-HO" are "trademarked." The Board perceptively remarked, "It is not clear what applicant means by 'trademarked," and it then pointed out that the other registrations for mottos or slogans are irrelevant to the case at hand.

And so, the Board affirmed the refusal.

TTABlog comment: Hooray for the Board in pointing out that "trademark" is not a verb. But I wonder about the Board's statement that ONCE A MARINE, ALWAYS A MARINE could never be a trademark. Does it depend on usage? What if the slogan appeared only on the sewn-in label of the garment and was not viewable when the garment is worn? Would it be just informational in that case? Or is the slogan unregistrable anyway, because such a registration would hinder use by others.

If the latter, where do you draw the line between unregistrable common phrases and registrable ones?

Text Copyright John L. Welch 2010.

WYHO? TTAB Tosses Out Feeble Fraud and Mere Descriptiveness Claims

Eighty-sixing Opposer's fraud and mere descriptiveness claims, the Board dismissed this opposition to registration of the mark METAL GEAR for "enclosures for external computer hard drives" [METAL disclaimed]. Opposer Galaxy alleged that Applicant DAT committed fraud when DAT represented that is was the owner of the mark, but Galaxy failed to prove fraud "to the hilt." And its Section 2(e)(1) claim fell well short of the mark. Would You Have Opposed? Galaxy Metal Gear, Inc. v. Direct Access Technology, Inc., Opposition No. 91184213 (August 10, 2010) [not precedential].


Fraud: Galaxy alleged that "[b]oth Opposer and Applicant purchased products with Metal Gear mark from a foreign supplier known as Data Stor [sic], who is the real owner and first user of Metal Gear mark in U.S. Commerce." [SIC!] According to Galaxy, Applicant DAT is a "mere importer and distributor" of the goods.

The Board pointed out that, under Bose, fraud must be proven "to the hilt" with "clear and convincing evidence." Here, however, DAT's principal gave "convincing testimony that he believed and continues to believe that applicant is the owner of the METAL GEAR mark":

Q: At the time the application was filed, do you
believe that Metal Gear was DAT’s trademark?
A: Yes.
Q: How about today?
A: Still is.
Q: Why do you believe it’s DAT’s trademark?
A: Because we came up with the brand name and we contact the manufacturer to manufacture product for us under the brand name.
Q: Who set the specifications for the product?
A: I did. DAT did.
Q: Did you personally come up with the specifications for the product?
A: Yes.

The Board observed that, even if the witness were incorrect in his belief that DAT owned the mark, Galaxy failed to prove a subjective intent to deceive. And so the Board tossed out the fraud claim. [Instead of alleging fraud, thereby invoking the impossibly high Bose standard of proof, why didn't Opposer just allege non-ownership? - ed.]

Mere Descriptiveness: Galaxy relied on dictionary definitions of "metal" and "gear," but its own principal conceded that "there's nothing about the Metal Gear trademark that makes [him] think it describes" an enclosure.

The Board found that "to refer to computer hard drive enclosures as 'gear' is at worst suggestive. The enclosures do not inherently have any 'gears' nor can they simply be described as 'equipment.'"

The Board therefore found that METAL GEAR is suggestive, and it dismissed this Section 2(e)(1) claim.

TTABlog comment: Where did the term "eighty-six" come from? The best explanation I've heard is this: The Lexington Avenue subway line in New York City used to stop at Eighty-Sixth Street. When the train reached Eighty-Sixth, the conductor would toss all sleeping bums off the train. They would be "eighty-sixed."

Text Copyright John L. Welch 2010.