Monday, April 20, 2015

CAFC Affirms TTAB: NOPALEA Merely Descriptive of Supplements Containing Nopal Juice

In an enervating yet precedential ruling, the CAFC affirmed the Board's decision (here) upholding a Section 2(e)(1) mere descriptiveness refusal of the mark NOPOLEA as a trademark for dietary and nutritional supplements "containing, in whole or in substantial part, nopal juice." In re TriVita, Inc., Appeal No. 2014-1383 (Fed. Cir. April 17, 2015) [precedential].

Appellant TriVita argued that the addition of the letters EA to NOPAL makes the mark NOPALEA substantially different in sight and sound. The CAFC observed, however, that "nopalea" is not a made-up word obtained by adding arbitrary letters. The record showed, and the Board found, that "nopalea" is a genus of cacti from which nopal juice is derived.

TriVita contended that the ordinary purchaser of its products will be of low botanical sophistication and will not immediately recognize the botanical meaning of the word "nopalea." However, the court agreed with the Board that there is "abundant evidence, scientific and non-scientific, of the words 'nopalea' and 'nopal' being used interchangeably," largely in the context of discussions of the health benefits of this class of cactus.

The Board found that the relevant consumer, knowing that the goods are supplements containing nopal cactus juice, would understand the mark NOPALEA to convey information that the goods contain ingredients from the Nopalea cactus. The Board based its finding on evidence that “nopalea” is the name of a genus of cacti used in food and supplements, that the word “nopal” is a common name for prickly pear cacti including cacti in the genus Nopalea, and that the words “nopal” and “nopalea” are used interchangeably to refer to cacti of that genus. Substantial evidence supports the Board’s findings, and its conclusion that “nopalea” is merely descriptive of TriVita’s goods.

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Text Copyright John L. Welch 2015.

Friday, April 17, 2015

Five Presentations from the Trademark Office Comes to California

Here are five PowerPoint presentations from the Trademark Office Comes to California program, held this week in Los Angeles and San Francisco.

Chief Judge Gerard F. Rogers and Deputy Chief Judge Susan Richey, The State of the TTAB the Evolution of Board Proceedings

Judges Ellen Seeherman and Lorelei Ritchie, Practice Tips from the TTAB

Commissioner for Trademarks Mary Boney Denison (keynote address), The State of the Trademark Office

Commissioner for Trademarks Mary Boney Denison and Sharon Marsh, Commissioner for Examination Policy, Hot Topics from the Patent and Trademark Office

Dr. E. Deborah Jay, President/CEO, Field Research Corporation, and Dr. Jerry Ford, Ford Bubala & Associates, Mark My Words: Contemporary Trademark Surveys

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Text Copyright John L. Welch 2015.

Thursday, April 16, 2015

Meet the Bloggers XI: Monday, May 4th, 8 PM, Henry's Pub

MEET THE BLOGGERS, perhaps the best non-INTA event ever devised by woman or man, will be held for the eleventh time (XIth), on Monday, May 4th, at 8 PM. at Henry's Pub and Restaurant, 618 Fifth Avenue, in San Diego (Henry's was the site of the first MtB). Come and meet some of the best trademark attorneys in the world, and while you're at it say hello to the sponsors of this year's event. For details, directions, a look at the sponsoring bloggers, and the RSVP link, go here.

MEET THE BLOGGERS I, San Diego, May 2005
Click on photo for larger picture

PS: Can you name the movie from which the name MEET THE BLOGGERS was derived?

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TTABlog note: No, it wasn't "Night of the Living Dead."

Text Copyright John L. Welch 2015.

Wednesday, April 15, 2015

TTAB Test: Is SUNRISE for Guitar Picks Confusable With PUKANA LA for Guitars?

The USPTO refused regsitration of the mark SUNRISE for guitar picks, finding the mark likely to cause confusion with the registered mark PUKANA LA & Design for guitars (shown below). The English translation of the Hawaiian term "pukana la" provided in the registration is "sunshine, sunrise." The examining attorney contended that the marks have the same connotation under the doctrine of foreign equivalents. Applicant argued that the doctrine should not be applied because Hawaiian is not a "common, modern" language. How do you think this came out? In re Christopher A. Fahey, DBA Gravity Guitar Picks, Serial No. 86250337 (April 13, 2015) [not precedential].

Both applicant and the examining attorney argued that the similarity or dissimilarity of the marks was dispositive. As to the doctrine of foreign equivalents, the Board observed:
Under the first du Pont factor, we focus on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. Yet, when focusing on the perceptions of ordinary American consumers who are multilingual, we are tasked with calibrating a bewildering balance – namely weighing (1) the closeness with which the non-English-language term denotes the putative equivalent term in the English-language, against (2) the quite obvious and inevitable differences of sight and sound involved in comparison.

The Board found that Hawaiian is clearly a modern language. Despite colonial attempts to eradicate the language, Hawaiian remains viable and important to the Hawaiian people. It cannot be equated with a deal language like Ancient Greek.

However, the doctrine of equivalents will not be applied when the language is obscure - when it is "not spoken by an appreciable number of individuals sufficient to sustain a finding of a likelihood of
confusion." The Board agreed with applicant that Hawaiian does not fit the bill:

The record herein shows that approximately eighteen thousand Hawaiian language speakers live in the state of Hawaii and seven thousand more Hawaiian speakers live elsewhere in the United States. Moreover, there is substantially no population of Hawaiian speakers elsewhere around the globe.

Therefore, since the doctrine of equivalents is not applicable, the Board found the marks to be "totally dissimilar and it reversed the refusal to register.

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TTABlog note: How do you say "congratulations" in Hawaiian to FOB Paul Reidl for this victory? The entire opinion is three-pages long but right on target.

Text Copyright John L. Welch 2015.

Tuesday, April 14, 2015

TTAB Reverses BRUTOPIA BREWERY Refusal, Finding Pubs Not Related to Beer Festivals

Applicant Grill 505 came away with its glass half full in this appeal from a Section 2(d) refusal to register BRUTOPIA BREWERY for "beer" and for “pubs” [BREWERY disclaimed]. As to beer, the Board found the mark likely to cause confusion with the registered mark BREWTOPIA for “providing beer events and beer festivals; and providing online information regarding the beer events and beer festivals.” But evidence was lacking to show that applicant’s pubs are related to registrant’s beer event services. In re Grill 500 LLC, Serial No. 85951305 (March 31, 2015) [not precedential].

Not surprisingly, given the disclaimer of BREWERY in the applied-for mark, the Board found the involved marks to be similar in appearance, sound, connotation, and commercial impression. Applicant conceded as much in its brief on appeal.

Turning to the goods and services, the Board found, on the face of the respective identifications, that applicant’s beer and registrant’s services are complementary. Applicant’s beer could be purchased or sampled at registrant’s festivals, or could be the subject of registrant’s information regarding festivals. According to the USPTO’s website evidence, the principal subject of beer festivals is a wide variety of beers. [No kidding? ed.].

Applicant lamely argued that its beers are artisan craft beers local to the State of Rhode Island, whereas registrant’s services are not offered in connection with a brewery. The Board, of course, pointed out that there are no geographical restrictions in the application or cited registration, and that the involved services need not be identical but merely related in order to find confusion likely.

Applicant feebly asserted that consumers for the involved goods (applicant’s local craft beer sold only in a pub setting), and services would be highly sophisticated, thus minimizing the likelihood of confusion. The Board noted that applicant’s beer is relatively low priced, and that consumers of registrant’s services will include ordinary seeking to taste a variety of beers, without any particular level of sophistication. In any event, even sophisticated consumers may be confused when substantially similar marks are used on closely related goods and services.

However, the Board found no evidence to support the assertion that pubs are related to registrant’s services. The single webpage submitted by the examining attorney did not demonstrate the relatedness of the services.

The fact that breweries showcase their beer at beer events and festivals simply does not demonstrate that consumers who frequent both pubs and beer events and beer festivals will mistakenly believe that both types of services emanate from a common source, or otherwise are commercially related, even when the respective services are offered under similar marks.

The Board therefore affirmed the refusal as to applicant’s beer, but reversed the refusal as to pubs.

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Text Copyright John L. Welch 2015.

Monday, April 13, 2015

WYHA? PUP SCOUTS and DOG SCOUTS OF AMERICA Confusable for Pet Services, Barks TTAB

The USPTO refused registration of PUP SCOUTS as a collective membership mark for "indicating membership in an organization for pets and their human counterparts," finding it likely to cause confusion with the registered mark DOG SCOUTS OF AMERICA, in standard character and design form, for retail store, educational, and association service in the field of pet training and pet parenthood and ownership [DOG and AMERICA disclaimed]. Applicant pointed out that registrant's services are offered only in certain states and certain channels of trade, and differ in kind from applicant's membership services. Would you have appealed? In re Pup Scouts, LLC, Serial No. 86048207 (April 2, 2015) [not precedential].

The Board began by noting that the Section 2(d) analysis for a collective membership mark is somewhat different than that for a service mark because the former does not involve purchasers or users of goods and services. A collective membership mark "serves only to identify the fact that such members belong to the collective organization and to inform relevant persons of the members’ association with the organization." The "relevant persons" for Section 2(d) are the persons for whose benefit the membership mark is displayed.

Thus, in the case of Applicant’s collective membership mark and Registrant’s service mark, the question is whether relevant persons are likely to believe that the collective organization, i.e., Applicant, is endorsed by or in some way associated with the provider of the association services.

The Board found it clear, on the face of the application and cited registration, that applicant's organization and registrant's services "both involve pets and their owners." The fact that applicant offers memberships for the benefit of pets and their owners, while registrant offers its services directly to pets and their "human counterparts" does not detract from "the clear and obvious nexus on the face of the identifications."

Applicant feebly argued that registrant's service, according to its website, are limited to certain states and certain channels of trade. But applicant was barking up the wrong tree. [Apologies. - ed.] But there were no such restrictions in the cited registration.

As to the marks, the Board found that both "give the commercial impression of a dog or young dog that is a scout," and suggest an organization similar in style to the Boy Scouts or Girl Scouts, or an association, focusing on dogs. The Board concluded that the marks are extremely similar in meaning and overall impression, though not so much with regard to sight and sound.

Applicant's founder declared that applicant attracts highly sophisticated dog owners [the owners, not the dogs - ed.] who want to honor their pets. The Board noted, however, that there was no evidence as to the price range for registrant's services or applicant's memberships, and there were no limitations in the application or registration as to type of consumer. Potential customers and members would include all dog owners, sophisticated or not.

The Board therefore found confusion likely, and it affirmed the refusal.

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TTABlog note: What about CAT SCOUTS?

Text Copyright John L. Welch 2015.

Friday, April 10, 2015

TTAB Denies Petition to Disqualify Opposer's Attorney for Signing Applications

The TTAB, under authority delegated by the USPTO Director, decides petitions for disqualification of counsel. Here, the Board denied a petition to disqualify counsel for Opposer INTS, ruling that, although the attorney had signed and verified certain documents pursuant to a power of attorney from opposer, he was not the sole source for information regarding those documents and therefore was not a "necessary witness." INTS It Is Not The Same, GmbH v. Disidual Clothing, LLC, Opposition No. 91212768 (March 28, 2015) [not precedential].

Oppposer's counsel signed and filed applications, statements of use, renewals, and/or declarations of use and incontestability, in connection with opposer's pleaded registrations, pursuant to a Power of Attorney from opposer. He was identified in opposer's initial disclosures as a person likely to have discoverable information about "Opposer's knowledge of Opposer's registrations; matters related to the filing of Opposer's Notice of Opposition against Applicant's application; information related to the current opposition proceeding."

Section 11.307(a) of the USPTO Rules of Professional Conduct indicates when a "practitioner for a party" who may become a witness in a USPTO proceeding should be disqualified:

(a) A practitioner shall not act as advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness unless:
(1) The testimony relates to an uncontested issue;
(2) The testimony relates to the nature and value of legal services rendered in the case; or
(3) Disqualification of the practitioner would work substantial hardship on the client.

Thus the first question was whether opposer's attorney was a "necessary witness," i.e., whether "no other person is available to testify in his place." In other words, "[a] necessary witness is one who offers evidence that is not available from another source."

The Trademark Rules specifically state that an attorney may sign verifications on behalf of an applicant or registrant. "Indeed, it is common for attorneys to do so." The mere signing of a document on behalf of an applicant does not make an attorney a "necessary witness."

Here, there was no showing that opposer's counsel alone would need to testify to the contents of the documents he signed. "Evidence and information as to the contents of those submissions can be found elsewhere." Thus opposer's attorney was not a necessary witness. The Board observed:

In passing, a policy of disqualifying an attorney for signing a declaration on behalf of his client, especially where it is permitted by the Trademark Rules of Practice, without anything more, would have an undesired consequence of rendering many attorneys practicing before the Board eligible for disqualification.

With regard to the identification of the attorney in Opposer's initial disclosures, the stated topics were merely ministerial aspects associated with the filing of the application and subsequent submissions. That information is available from USPTO databases and from opposer. The identification of the attorney in the initial disclosures, although unusual, did not make him a "necessary witness" in light of the nature of the topics listed.

And so the petition for disqualification was denied.

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TTABlog note: Many practitioners are reluctant to verify documents on behalf of a client for fear of possible disqualification in subsequent proceedings. Maybe that fear is unwarranted. Hat tip to FOBs John Egbert and Kevin Wilson for tipping me off to this ruling.

Text Copyright John L. Welch 2015.

Thursday, April 09, 2015

TTAB Test: Is BOLAN for Musical Instruments Primarily Merely a Surname?

The USPTO refused registration of the mark BOLAN for musical instruments, piano benches, recording systems, and related management and repair services, finding the mark to be primarily merely a surname under Section 2(e)(4). The name "Bolan" appeared 455 times in a public record database. How do you think this came out? In re Grand & Piano Parts Distribution B.V. Serial No. 85946217 (March 31, 2015) [not precedential].

The Board applied its standard Benthin test, looking to the rareness of the surname, any connection of the surname with someone associated with applicant, other meanings, and the "look and feel" of the term.

The examining attorney provided a database listing in which the surname BOLAN appeared 455 times. There was no showing that anyone named BOLAN had achieved wide renown or publicity. The Board concluded that BOLAN is "an extremely rare surname."

There was no evidence that anyone named "Bolan" was associated with applicant. The Examining attorney produced "negative dictionary evidence" from a single dictionary, and the Board found that this factor "very slightly" favored the PTO's position.

As to "look and feel," the examining attorney maintained that BOLAN is similar to other surnames found on a genealogy website: Boland, Boling, Bolin, and Boylan, but the Board noted that each name appeared only once. Due to the dearth of evidence, the Board was unable to make a definitive determination regarding this factor.

Bearing in mind that any doubt must be resolved in favor of the applicant, the Board found that BOLAN, "largely due to its rareness," is not primarily merely a surname.

And so the Board reversed the refusal.

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TTABlog note: Half a century ago, the Red Sox had a shortstop named Milt Bolling, whose brother Frank played for the Tigers, if I recall correctly. Frankly, Bolan looks like a surname to me.

Postscript: a loyal FOB recalled the late Marc Bolan of T-Rex.

Text Copyright John L. Welch 2015.

Wednesday, April 08, 2015

Test Your TTAB Judge-Ability on these Four Mere Descriptiveness Appeals

Here are four recent appeals from mere descriptiveness refusals under Section 2(e)(1). Let's see how you do with them, keeping in mind that, by my estimation, the Board affirms more than 80% of these refusals. [Answers in first comment].

In re Internet Promise Group LLC, Serial No. 85892404 (March 23, 2015) [not precedential]. [Mere descriptiveness refusal of EAR NATURAL for "a packaging with a dropper that contains limited quantity of mustard oil, for dropping oil drops in the ear canal, for cure of middle ear infection, without use of antibiotics"].

In re EBCO, Inc., Serial No. 85894991 (March 27, 2015) [not precedential]. [Mere descriptiveness refusal of LOCKDOWN MAGNET for "magnets" [MAGNET disclaimed]].

In re Hookah Portable Enterprises, Inc., Serial No. 85829768 (March 27, 2015) [not precedential]. [Mere descriptiveness refusal of HOOKAH PORTABLE & Design for "electronic hookahs; hookahs" [HOOKAH disclaimed]].

In re Dish Network LLC, Serial No. 85851513 (April 2, 2015) [not precedential]. [Mere descriptiveness refusal of SMARTBOX for "set-top box"].

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TTABlog note: See any WYHAs here?

Text Copyright John L. Welch 2015.

Tuesday, April 07, 2015

PANDORA'S for Cosmetics Confusable with Famous Mark PANDORA for Jewelry, Says TTAB

The Board affirmed an opposition to registration of the mark PANDORA'S for cosmetics and related retail store services, finding the mark likely to cause confusion with the mark PANDORA for jewelry and related retail services. The fame of opposer's mark and the near identity of the goods weighed heavily in opposer's favor. The Board was unmoved by applicant's lamentations that it was a tiny David in a duel to the death with Goliath. Said the Board, "[w]e have indeed seen corporate bullying, and this is not such a case." Pandora Jewelry, LLC v. Pandora's Makeup Box Inc., Opposition No. 91196078 (April 1, 2015) [not precedential].

Priority was not an issue as to opposer's pleaded registrations, including one for the mark PANDORA in a design form shown in the picture above. Opposer also demonstrated common law use of PANDORA as of 2003, well before the filing date (constructive first use date) of the opposed application.

Opposer's products are sold through a nationwide network of retailers and are advertised and promoted widely in various media. Its sales figures and promotional expenditures are "quite impressive," and it has become one of the most recognizable jewelry brands in the country. The Board found opposer's mark PANDORA to be famous for Section 2(d) purposes, for a wide variety of jewelry products and for retail store services featuring jewelry and other fashion accessories. As we know, fame plays a dominant role in the likelihood of confusion analysis.

As to the marks, not only did opposer establish common law rights in the mark PANDORA, but the word PANDORA was the dominant term in opposer's registered marks. Applicant's adoption of the possessive form is not source-distinguishing. The close similarity between the involved marks weighed strongly in favor of opposer.

The evidence established that jewelry and cosmetics are advertised in the same magazines and sold through the same channels of trade. Applicant argued that the vast majority of opposer's products are expensive, but the Board found that most of the involved products are relatively inexpensive, and might even be purchased on impulse. Moreover, both parties market their goods to the same classes of consumers.

The key issue, then, was the relatedness of the involved goods and services. Applicant seemingly argued that, under established law, jewelry and cosmetics cannot be related. The Board, however, found the question to be one of fact.

Opposer submitted third-party registrations in which the same entities offered both jewelry and cosmetics under the same mark. Website evidence showed that jewelry and cosmetics are offered under the same brand. Women's magazines feature advertising for both types of goods. Witnesses for both parties testified that large department stores often locate the make-up counter quite closely to the jewelry counters. The Board concluded that cosmetics and jewelry are closely related for Section 2(d) purposes.

With regard to retail store services, both parties "are targeting the same demographic for gifts and purchases for the same pot of discretionary income." The Board therefore found the services of the parties to be related.

The Board observed that opposer has been expanding the use of its PANDORA brand beyond jewelry, to include sunglasses, watches, and apparel. Related goods like cosmetics are natural areas of expansion for a jewelry brand.

Although applicant contended that the likelihood of confusion was minimal, the Board found otherwise.

Opposer has invested a great deal of time, effort, and money in building its famous PANDORA brand. From the humble beginnings in 2002 of sales out of the trunk of a car, Opposer has built one of the most recognized jewelry brands in the United States. Should Applicant's mark - nearly identical to opposer's mark - be allowed to register for related goods and services, the potential for customer confusion and damage to Opposer is manifest.

The Board therefore found confusion likely and it sustained the opposition.

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TTABlog note: The issue of priority was a little murky. Applicant, a Canadian company, defeated opposer Pandora in a trademark battle in Canada, and it claimed use of its mark in the USA beginning in 2000. Footnote 32 addresses the issue, and seems to say that applicant's proof of early use was inadequate or irrelevant. I'm not sure what the phrase "falling through the Looking Glass" is supposed to mean in this context. [I guess I should go ask Alice.] I think it means that, because applicant did not seek to cancel opposer's registrations, priorty was not an issue as to the registered marks and the goods and services in the registrations. But then why mention applicant's constructive first use date at all?

Text Copyright John L. Welch 2015.