Friday, July 31, 2015

TTAB Test: Are MAYARI and MAYA Confusable for Wine?

Oakville Hills Cellar opposed registration of the mark MAYARI for wine, alleging a likelihood of confusion with its registered mark MAYA, also for wine. The goods are identical, the channels of trade and classes of consumers are presumed to be the same, and the application and registration encompass inexpensive wines purchased with no more than ordinary care. But are the marks confusingly similar? Oakville Hills Cellar, Inc., dba Dalla Valle Vineyards v. Georgallis Holdings, LLC, Opposition No. 91211612 (July 16, 2015) [not precedential].

Of course, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Opposer Oakville argued that the first part of the opposed mark is more likely to be remembered, but the Board saw no reason to consider the letters MAYA separate from the letters RI.

Oakville contended that, at certain orientations of the wine bottle, the word MAYARI on applicant's label may appear as MAYA, depending on the vagaries of how the wine bottles are placed on a shelf. The Board, noted, however, that although "mistake" is to be considered under Section 2(d), the likelihood of such a mistake was a matter of speculation absent relevant evidence.

As to sound, the Board recognized that MAYARI may be pronounced with emphasis on the second or third syllables. Oakville argued that the likelihood of confusion is increased when the goods are ordered by name "in a bar under noisy, chaotic conditions," where the small difference of the RI may not be perceived.

The parties disagreed vigorously as to the meanings of the marks. The Board found that most consumers would likely perceive MAYA "as a female personal name or the name of the pre-Columbian civilization, while most customers would perceive MAYARI as a coinage without meaning." Consumers "would likely find the term MAYA to be somewhat familiar, while finding MAYARI unfamiliar."

The Board concluded that, overall, the marks at issue create "significantly different commercial impressions." Therefore, the first du Pont factor weighed against a finding of likelihood of confusion.

Opposer Oakville claimed that its mark MAYA is famous, but its evidence was too scant to establish fame. Applicant Georgallis argued that the presence of FDA-required information on wine labels would assist in distinguishing the sources of the involved goods, but the Board pointed out that such information will not reliably serve to distinguish confusingly similar marks. And, of course, the label information is irrelevant when the marks are used in advertising, etc.

Applicant pointed to several third-party MAYA-formative marks registered for beverages, but the Board found that evidence irrelevant absent proof of use of the marks. The lack of any evidence of actual confusion was a neutral factor since there did not appear to be a reasonable opportunity for confusion to occur, given the vast difference in actual price between the parties' goods.

Balancing the relevant du Pont factors, the Board found the marks to be "sufficiently different that, under normal commercial conditions for the sale of wines, confusion is not likely."

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TTABlog comment: Well, how did you do? I probably would have sided with Opposer.

Text Copyright John L. Welch 2015.

Thursday, July 30, 2015

TTAB Affirms Refusal of Deer Logo with "Phantom" Antlers, for Coffee, on Four Grounds

Bar NND Ranches sought registration of the mark shown immediately below, for "coffee; coffee based beverages; roasted coffee beans," but Examining Attorney Justin R. Jackson refused registration on four grounds: applicant sought to register more than one mark; the specimen of use did not show the mark as depicted in the application drawing; and the drawing and description of the mark were unacceptable. The Board affirmed all four refusals. In re Bar NND Ranches, LLC, Serial No. 77928601 (July 28, 2015) [not precedential].

Applicant Bar NND Ranch described the mark as follows: "The mark consists of a two dimensional fanciful deer design; the deer is holding a coffee mug which has the words “UNGULATTE”; the matter shown by the dashed lines in the drawing show placement of the mark; the matter shown by the dashed lines in the drawing is a “non-claimed” feature of the mark and serves to show the position of the mark." Applicant's specimen of use displayed the mark thusly:

Applicant explained that the antlers depicted on the deer are different depending on the strength of the coffee in the container. Antlers having more points or tips indicate stronger coffee. For decaffeinated coffee, applicant applies felt to the antlers.

Phantom element: The examining attorney contended that applicant was seeking to register more than one mark because the antlers, show in broken line on the application drawing, "constitute a changeable, phantom element of the marks." The Board noted that, under the Trademark Act, "a trademark application may only seek to register a single mark." A proposed mark that contains a changeable, or "phantom," element constitutes more than one mark.

Applicant argued that the antlers are not a "claimed element" and are not an "integral" part of the mark, and therefore the use of dashed lined for the antlers is proper and does not comprise a phantom element.

The Board noted that in both the application drawing and the specimen of use, that antlers are attached to the deer. It therefore found that the antlers "are integrated into the image of a deer holding a steaming mug of coffee."

Applicant’s stylized deer, with antlers of either size, constitutes a unitary composite mark conveying a single commercial impression that does not vary with the size of the antlers or the strength of Applicant’s coffee.

Applicant did not indicate that any antler configuration would be limited within a range of size, shape, or number of points. Thus this case is distinguishable from In re Dial-A-Mattress, where the phantom element was an area code, "the possibilities of which are limited by the offerings of the telephone company."

The Board therefore agreed with the examining attorney that the dashed lines in applicant's mark represent a phantom element, and it therefore affirmed the refusal to register on the ground that applicant was seeking to register more than one mark, in violation of Sections 1 and 45 of the Trademark Act.

The Board also found that the specimen of use "does not match and show use of the mark in the drawing, as required by Trademark Act Sections 1 and 45." [In other words, mutilation of the deer - ed.].

Twisting applicant's antlers even further, the Board affirmed two more refusals, finding applicant's drawing unacceptable under Section 1(a) and its description of the mark unacceptable under Trademark Rule 2.37. "These two refusals flow from the substantive issue that Applicant is seeking to register more than one mark in a single application."

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TTABlog comment: Oh, deer. What if applicant had left the antlers off the drawing altogether? That would get rid of the phantom mark refusal. But the specimen wouldn't match the drawing.

I'm not convinced that applicant was trying to register more than one mark. It did not describe the mark as including antlers of various shapes. It was trying to register the deer without antlers. That, in my book, constitutes one mark.

Text Copyright John L. Welch 2015.

Wednesday, July 29, 2015

TTAB Test: Which One of These Four Mere Descriptiveness Refusals Was Reversed?

By my estimation, somewhere around 80-85% of all Section 2(e)(1) mere descriptiveness refusals that reach the TTAB are affirmed on appeal.  Well, here are four appeals that were decided this month. One refusal was reversed. Which one, pray tell? [Answer in first comment].

In re Tesher, Serial No. 85405171 (July 10, 2015) [not precedential] [Mere descriptiveness refusal of COLLEGE BIDS for "On-line trading services in which a seller posts items to be sold at a set price; online trading services in which a seller posts items to be sold in an auction-style format where bidding is done electronically; and providing evaluative feedback and ratings of sellers' goods and services, the value and prices of sellers' goods, buyers' and sellers' performance, and delivery and overall trading experience in connection with the foregoing, all for commercial purposes," and a further refusal based on failure to disclaim COLLEGE as to feedback and ratings services.]

In re Masco Corporation of Indiana, Serial No. 86037351 (July 22, 2015) [not precedential]. [Mere descriptiveness refusal of DOWNPOUR for "plumbing products, namely showerheads and handheld showers."]

In re LLC, Serial No. 86165003 (July 23, 2015) [not precedential]. [Mere descriptiveness refusal of DIP PEARLS for "Paint additive made of recycled material to add texture, color, or reflection; Textured additives for paint."]

In re PJCL Hughes Family Trust, LLC, Serial No. 86109353 (July 23, 2015) [not precedential]. [Mere descriptiveness refusal of REVERSE IONIZER for "water treatment equipment, namely, an electromagnetic water activator for influencing the energetic quality of water by amending the information contained in the clusters of water molecules."]

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TTABlog comment: See any WYHAs here?

Text Copyright John L. Welch 2015.

Tuesday, July 28, 2015

Precedential No. 23: Abandonment and Opposition Filed on Same Day, TTAB Dismisses Opposition Without Prejudice

On December 31, 2014, Applicant Stacy Lee Huggins filed electronically an abandonment of his application to register the mark COKE HEAD for t-shirts. On that same day, 3PMC filed a notice of opposition via the TTAB's ESTTA system. Two months later, the Board entered judgment against Applicant Huggins under Rule 2.135 based on his abandonment of the application without consent. The Board, however, has granted Huggins's Rule 60(b) motion for relief from judgment, ruling that "a day is an indivisible period of time for purposes of the situation presented here." The Board, assuming that the abandonment and notice of opposition were filed at the same instant, held that Huggins's application was not subject to opposition when it was abandoned. 3PMC, LLC v. Stacy Lee Huggins, Opposition No. 91219982 (July 24, 2015) [precedential].

Opposer 3PMC filed its notice of opposition via the TTAB's ESTTA electronic filing system. On that same day, Applicant Huggins filed an abandonment of his application via the USPTO's TEAS electronic filing system.

In his motion for relief from the judgment under FRCP 60(e), Huggins contended that his abandonment had been filed before the opposition was filed, and therefore the opposition proceeding should be dismissed without prejudice.

The Board reaffirmed its holding in In re First Nat’l Bank of Boston, 199 USPQ 296, 301 (TTAB 1978), that it "shall not take cognizance of fractions of a day," and it therefore assumed that the opposition and the express abandonment were filed "at the same instant." "In accordance with our precedent, we conclude that the involved application was not subject to an opposition when it was abandoned, and therefore Trademark Rule 2.135 does not apply."

 The Board noted that the Boston case was decided when all documents were filed on paper and it was not possible to decide which document was filed first. Greater certainty as to timing may be available with electronic filing, but even now computer systems are subject to technological limitations. Moreover, the interaction between TEAS, ESTTA, and TRAM is complicated by the fact that some data is inputted automatically and some by hand.

The Board considered the prejudice that opposer would suffer if the opposition were dismissed without prejudice. Opposer contended that it "may be subject to opposition or cancellation proceedings by Applicant 'down the road' and 'will be forced to monitor the activities of Applicant at the USPTO for an indeterminate amount of time.'" The Board, however, deemed those concerns to be a cost of doing business that did not rise to the level of "manifest injustice" requiring further consideration.

Finally, opposer argued that the Board's ruling here would reduced the period for filing an opposition by one day. The Board pointed out, however, that an applicant may abandon its application at any time during the opposition period, thus completely eliminating the statutory time period for filing an opposition.

The Board therefore granted applicant’s Rule 60(b) motion, vacated its earlier judgment, and dismissed the opposition without prejudice. Opposer's filing fee for the opposition will be refunded.

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TTABlog comment: Well, at least opposer got its money back. But what about interest?

Text Copyright John L. Welch 2015.

Monday, July 27, 2015

Precedential No. 22: Unreasonable Party Loses Right to Substantive Objections to Document Requests

The Board granted Respondent Meenaxi's motion to compel Petitioner Cadbury to respond to Meenaxi's Rule 34 request for documents, which Cadbury had refused to do based on an "an obvious and inadvertent" typographical error in the request. The Board found that Cadbury's position was "unreasonable" and "resulted in the filing of an unnecessary motion, wasting the time and resources of both parties and the Board." It ordered Cadbury to respond to the requests without substantive objections. Cadbury UK Limited v. Meenaxi Enterprise, Inc., Cancellation No. 92057280 (July 21, 2015) [precedential].

Respondent Meenaxi simultaneously served interrogatories and document requests on Cadbury. Cadbury objected to the interrogatories but did not respond or object to the document requests. In the preamble to the document requests Meenaxi referred to Petitioner as "Venture Execution Partners, Inc.," instead of "Cadbury UK Limited." Although the document was correctly captioned, and although Cadbury requested and Meenaxi granted four extensions of time to respond to its "discovery," Cadbury contended that the typographical error was a "crucial mistake, the result of which is that the document requests were never directed to Petitioner."

Cadbury agreed that Meenaxi might serve corrected requests, and so the dispute boiled down to whether Cadbury, by its complete failure to respond, had waived its right to object to the requests.

Cadbury feebly contended the extensions of time for its responding to "discovery" did not contemplate document requests. The Board found Cadbury's claim to be "disingenuous at best." There was no doubt that Cadbury knew that the document requests were served in and related to this cancellation proceeding.

The isolated reference to Venture Execution Partners, Inc., was clearly a typographical error; it did not cause a matter of real confusion or misunderstanding. The motion to compel is the result of Petitioner’s attorney apparently concluding, upon the discovery of a typographical error, that he had found an excuse to become pedantic, unreasonable, and uncooperative. The Board expects each party to every case to use common sense and reason when faced with what the circumstances clearly show to be a typographical error.

The Board noted that if Cadbury had any doubt, it should have contacted Meenaxi for clarification rather than refusing to respond. Or Cadbury could have objected based upon the supposed ambiguity. At a minimum, it should have accepted Meenaxi's explanation, during that latter's good faith effort to resolve the issue, that the single reference to a different company was a typographical error.

The Board will not allow a party to avoid its discovery obligations due to an obvious typographical error such as this one. *** Petitioner’s unreasonable position here has resulted in the filing of an unnecessary motion, wasting the time and resources of both parties and the Board. The Board expects that when there is an obvious and inadvertent typographical error in any discovery request or other filing—particularly where, as here, the intended meaning was clear—the parties will not require the Board’s intervention to correct the mistake.

Granting the motion to compel, the Board gave Cadbury thirty days to respond to the document requests and to produce the requested documents, without objection on the merits. See Amazon, Inc. v. Was, 93 USPQ2d 1702, 1706 n.5 (TTAB 2009) ("Objections going to the merits of a discovery request include those which challenge the request as overly broad, unduly vague and ambiguous, burdensome and oppressive, as seeking non-discoverable information on expert witnesses, or as not calculated to lead to the discovery of admissible evidence. In contrast, claims that information sought by a discovery request is trade secret, business-sensitive or otherwise confidential, is subject to attorney-client or a like privilege, or comprises attorney work product, goes not to the merits of the request but to a characteristic or attribute of the responsive information."). Cadbury was also ordered to provide a privilege log within thirty days.

It also must be stressed that Petitioner’s conduct has not demonstrated the good faith and cooperation that is expected of litigants during discovery. Such conduct has delayed this proceeding, unnecessarily increased the litigation costs of the parties, wasted valuable Board resources, and interfered with Respondent’s ability and, indeed, its right, to take discovery.

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TTABlog comment: Wow! The TTABlogger's cardinal rule of practice is to at least try to look reasonable before the Board.

Text Copyright John L. Welch 2015.

Thursday, July 23, 2015

Forget Parody: GOTHAM BATMEN Confusable with Famous BATMAN, Says Split TTAB Panel

A divided Board panel sustained this opposition to registration of the mark GOTHAM BATMEN, in standard and design form (shown below), for "general business networking referral services, namely, promoting the goods and services of others by passing business leads and referrals among group members" and for "entertainment in the nature of amateur softball games." The panel majority found the marks confusingly similar to the registered mark BATMAN, deemed famous for comic books and movies. Applicant's parody claim went, as usual, nowhere before the Board. DC Comics v. Gotham City Networking, Inc., Opposition No. 91194716 (July 17, 2015) [not precedential].

This post shall not recapitulate the evidence of fame. The panel majority found that the fame of the BATMAN mark "is transferred to a vast array of collateral or merchandising products that are purchased because they bear the BATMAN trademark." In other words, "consumers have come to associate the fame of BATMAN with the products bearing that mark." [Huh? So BATMAN is famous for every product that bears the mark? - ed.]. Once the BATMAN mark was accorded that scope and strength, it was three strikes and out for applicant.

Because Opposer’s BATMAN mark is famous and it has been licensed for use on a myriad of products, countless individuals have been exposed to Opposer’s BATMAN mark and to its use on or in connection with collateral products, including t-shirts and baseball balls and bats. Under these circumstances, individuals familiar with Opposer’s BATMAN marks and their associated goods and services, when confronted with Applicant’s mark in connection with softball games and networking services, will consider such activities to be sponsored by or affiliated with Opposer.

With little or no discussion, the majority also deemed Opposer's "batwing" logo to be famous. The addition of GOTHAM to BATMEN does not distinguish the marks, said the panel majority, since it is "undisputable" that the superhero is known to hang out in a place called Gotham. Furthermore, any aural dissimilarity would be outweighed by "the recognition of that fact by those familiar with opposer's marks."

Parody? Fuggeddaboutit. "The right of the public to use words in the English language in a humorous and parodic manner does not extend to such words as trademark if such use is likely to cause confusion." [Kind of begs the question, doesn't it? - ed.]. Moreover, it is not Opposer's BATMAN marks that are the target of the parody but Applicant's own members (i.e., the superiority of their softball and networking prowess). The parody is an inside Joker. [But applicant wasn't laughing - ed.].

And so the Board sustained the opposition under Section 2(d).

Dissent: Judge Taylor dissented, contending that Opposer had not met its burden to prove fame. She would find that the BATMAN marks are not famous and, because the gods and services of the parties are so different, that confusion is not likely, or at least that Opposer did not prove that confusion is likely.

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TTABlog comment: I subscribe to the theory that some marks are so famous that the likelihood of confusion is diminished, the public not being completely gullible, but able to recognize an obvious parody.

Text Copyright John L. Welch 2015.

Wednesday, July 22, 2015

CAFC Reverses and Remands TTAB 2(d) Decision Due to Inadeqate Appreciation of PEACE & LOVE

In a precedential decision, the U.S. Court of Appeals for the Federal Circuit vacated and remanded  the TTAB's decision in GS Enterprises LLC v. Juice Generation, Inc.., Opposition No. 91206450 (June 18, 2014). The Board had found the mark PEACE LOVE JUICE & Design, shown immediately below, for "juice bar services" [JUICE disclaimed] likely to cause confusion with the registered mark PEACE & LOVE for "restaurant services." The CAFC ruled that the Board "did not adequately assess the weakness of GS's marks and did not properly consider the the three-word combination of Juice Generation's marks as a whole." Juice Generation, Inc. v. GS Enterprises LLC, Appeal No. 2014-1853 (Fed. Cir. July 20, 2015) [precedential].

In comparing the marks, the Board deemed "PEACE LOVE" to be the dominant part of applicant's mark, and it found that the additional word "JUICE" and the non-distinctive design features did not serve to sufficiently distinguish the marks at issue. The Board observed that GS's mark PEACE & LOVE was registered in standard character form and thus was not limited to any particular display, but, the CAFC noted, it "did not elaborate on its consideration of the three-word combination 'PEACE LOVE & JUICE' in its entirety."

The Board also considered the testimony of applicant's founder regarding third party uses of similar marks - "Peace Love and Pizza," "Peace Love and Popcorn," and others - but this evidence did not enable the Board to find that "customers have become conditioned to recognize that other entities use PEACE AND LOVE marks for similar services."

Finally, the Board gave little weight to statements made by GS, during the prosecution of its own marks, that the words "peace" and "love" lack distinctiveness.

The CAFC concluded that the Board's treatment of the evidence of use of third-party marks did not sufficiently appreciate the force of that evidence. Even though specific evidence as to extent and impact of use was not submitted, the evidence was "nonetheless powerful on its face." The uncontradicted testimony showed that a considerable number of third parties use similar marks. Third party registrations, the court observed, are relevant to show that some segment of a mark has a "normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that the segment is relatively weak."  Of course, weak marks merit less protection on the Section 2(d) battlefield.

The Board, however, never inquired as to whether PEACE & LOVE has a suggestive or descriptive connotation. See, e.g., Anthony's Pizza & Pasta Int'l, Inc., 95 USPQ2d 1271 (TTAB 2009) (Evidence of third-party use of "Anthony's" in connection with restaurants indicated that the word suggests an Italian restaurant, or even a New York style Italian restaurant).

This third-party evidence was "particularly important" here in view of the statements made by GS in prosecuting its own applications, when distinguishing its marks from "PEECE LUV CHICKEN" by suggesting that its mark creates "the impression of a restaurant that has a theme and atmosphere of the countercultures prevalent in the 1960's and 1970's." Comments made during prosecution, the CAFC has ruled, are "illuminative of shade and tone in the total picture confronting the decision maker."

The CAFC concluded that the Board gave inadequate consideration to the strength or weakness of the cited mark, and it instructed the Board to undertake that inquiry upon remand.

The court also concluded that the Board had not paid sufficient heed to the commercial impression of applicant's mark as a whole. The Board did not consider "how the three-word phrase in Juice Generation's mark may convey a distinct meaning - including by having different connotations in consumers' minds - from the two-word phrase used by GS." Although the Board may properly assign more or less weight to a given component of a mark, it still must consider the mark as a whole.

The Board did not err in giving less emphasis to the word JUICE when it noted that the term is generic. *** But the Board did not set forth an analysis showing that it avoided the error of giving no significance to the term, which is impermissible notwithstanding that the term is generic and disclaimed.

On remand, the Board must undertake a consideration of the applied-for mark as a whole.

The court therefore vacated the decision and remanded the case to the Board.

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TTABlog comment: What is descriptive or suggestive bout the phrase PEACE & LOVE in the restaurant/juice bar context? Hippie food?

Text Copyright John L. Welch 2015.

Tuesday, July 21, 2015

Recommended Reading: Peter Karol, "The Constitutional Limitation on Trademark Propertization"

Associate Professor Peter J. Karol of New England Law School argues that the Constitution places critical limits on the power of Congress to regulate trademark signifiers that are unattached to goods or services. Karol, The Constitutional Limitation on Trademark Propertization, 17 Penn. Journal of Constitutional Law 1065 (2015). "Trademark propertization ... requires a separate and distinct Commerce Clause analysis from that used to justify regulation of trademarks affixed to
goods and services." Although this constitutional limitation on propertization is "distant and unreachable in most cases," it nonetheless serves as a brake on such controversial trademark doctrines as dilution and the rule against assignments in gross, and it prevents Congress from ever granting trademark rights upon the mere creation of a new trademark.

The following article seeks to apply the retrenchment in constitutional Commerce Clause jurisprudence of the last few decades to the phenomenon of trademark propertization, the expansive and largely federal movement towards protecting trademarks as assets apart from any connection to referent goods and services. Trademark scholars have filled the trademarks literature with critiques of propertization that generally object, on policy and historical grounds, to the trend and offer constructions of the Lanham Act designed to check its progress. With the notable exception of an article published in 2000 by Professor Kenneth Port, however, the literature has largely avoided addressing the question of whether the United States Congress possesses the authority to push trademark law so far in that direction.

Building off of Barton Beebe’s semiotic account of trademark law, the article observes that much of the Commerce Clause case law in the trademark space is muddied by the failure to draw an analytic distinction between the trademark as such (i.e., the trademark’s signifier) and the goods and services with which it is used. Moreover, many of the seminal cases in the area predate such important new contributions to Commerce Clause juris prudence as United States v. Lopez, Gonzalez v. Raich, and National Federation of Independent Business v. Sibelius.

Upon close review of these and other recent precedents, and a thorough application of contemporary, three-category Commerce Clause analysis to trademark propertization, the article concludes that there is a firm constitutional limit to Congresses’ ability to regulate trademark signifiers detached from goods and services. Namely, Congress may not recognize or protect a property interest in trademarks as such except as a rational means of furthering the regulation of referent goods or services. Although distant and unreachable in most cases, this constitutional ceiling serves as a critical constructional limit on certain controversial trademark doctrines like dilution and the rule against assignments in gross, and prevents the U.S. Congress from ever recognizing pure trademarks in the abstract as property upon creation. Although a complete defense of trademark “localism” is outside of the article’s scope, it ends by offering some basic policy and structural justifications for accepting this limit on federal authority in the trademark sphere.

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Text Copyright John L. Welch 2015.

Monday, July 20, 2015

Precedential No. 21: TTAB Sides With Band in "WONDERBREAD 5" Ownership Dispute

The Board granted a petition for cancellation of a registration for the mark WONDERBREAD 5 for "entertainment services in the nature of live musical performances," ruling that the underlying application was void ab initio because Respondent and ex-band member Patrick Gilles was not the owner of the mark at the time of his filing the underlying application. Wonderbread 5 v. Patrick Gilles a/k/a Wonderbread 5 and/or Wonderbread Five Cancellation No. 92052150 (June 30, 2015) [precedential].

Evidentiary Issues: Respondent Gilles timely mailed his pre-trial disclosures, but to the wrong address for Petitioner's counsel. The disclosures were eventually received by Petitioner's successor counsel. Since it was highly unlikely that Petitioner was surprised that Gilles intended to testify, the Board declined to strike his testimony.

Gilles, however, failed to provide "a general summary or list of the types of documents and things which may be introduced as exhibits during [his] testimony" Rule 2.121(e). The disclosures merely stated that "Registrant may introduce exhibits to be identified in a Notice of Reliance." The disclosures were therefore inadequate and defective. The Board therefore struck all of Respondent's trial exhibits and all testimony referring thereto.

Petitioner had its own evidentiary problems. Under notice of reliance, it submitted an affidavit that Respondent Gilles had submitted in connection with a summary judgment motion. The Board declined to consider it. An affidavit or declaration is inadmissible as trial testimony absent a stipulation from the other party. See Rule 2.123(b). Petitioner also submitted Respondent's answer to its admission requests, including admissions and denials. The admissions were deemed properly of record, but denials are not admissible. See Rule 2.120(3))(i).

Ownership: The petition for cancellation asserted claims of likelihood of confusion and fraud, and included allegations that Gilles did not own the mark at the time of filing his application to register. Ownership of a mark is an element of every Section 2(d) claim. [W]hen both parties are relying upon activities the two conducted in concert with one another, each in an attempt to establish prior rights in a mark over the other, the dispute centers on ownership of the mark."

Despite the absence of any agreement, Petitioner claimed to own the WONDERBREAD 5 mark as a partnership under California law. It alleged that two days after Gilles was terminated as a partner, he filed the underlying application without the Petitioner's knowledge or consent. He concealed the existence of the application in subsequent state court litigation with Petitioner, which culminated in a buy-out and release of all of Respondent's claims.

Gilles claimed the he was one of two founding members of the band and therefore he owned a 50% interest in the partnership. The lawsuit, he contended, dealt only with monetary relief, not trademark rights.

The Board found, based on the totality of the evidence, that Gilles was not individually the owner of the mark at the time he filed his application to register. His actions with regard to the state court lawsuit confirmed that he understood that the band was a partnership of which he was no longer a member.

The Board also considered the "legal framework courts and commentators have developed to deal with" disputes regarding musical band names when there is no written agreement or other legal formalities that clearly delineate ownership rights. The Board observed that Professor McCarthy's test has been adopted by several courts and is a "useful adjunct" to the Board's findings here. Professor McCarthy frames the question as "Does Mark Identify the Group Regardless of its Members?"

In these performing group cases, it must first be determined whether the group name is personal to the individual members or not. If not, a second question then must be determined: for what quality or characteristic is the group known and who controls that quality? The answer should identify the person or entity that owns the group name as a mark

Temporal continuity of identification is an important factor, according to the Professor. The issue is "whether the mark signifies personalities, or style and quality regardless of personalities."

The Board concluded that the WONDERBREAD 5 mark was not "personal" to Respondent Gilles or any other of the band members. The mark signified the "style and quality" of the group: a Jackson 5 tribute band, not a "particular performer combination." As one band member testified, the band was "a bunch of Caucasian boys playing Jackson 5 songs."

The bands discontent with Respondent Gilles began with his refusal to wear the "over the top" costumes that the band's public persona required. Thus the band monitored and controlled the "style" of its musical services, not Gilles. The band's use of prerecorded music and substitute musicians further supported the conclusion that the music performed by the band was not personalized by the performers.

The Board concluded that at the time Gilles filed his application to register, "the consuming public did not associate the mark WONDERBREAD 5 with [him], but rather with the style of a Jackson 5 tribute band costumed in exaggerated 1970s regalia. It was the group/partnership consisting of WONDERBREAD 5 that controlled this quality or characteristic of the band."

The Board sustained the petition for cancellation, ruling that Respondent Gilles was not the owner of the mark at the time of filing his application, and therefore that the application was void ab initio.

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TTABlog comment: Easy as ABC. Is "WONDERBREAD 5" dilutive of the bread? [No, not the band, BREAD, the bread bread]. One Oneders.

Text Copyright John L. Welch 2015.

Friday, July 17, 2015

Applying Claim Preclusion, TTAB Affirms 2(e)(1) Refusal of Re-filed RESTORE LIFT Application

In July 2013, the Board affirmed (here) a Section 2(e)(1) refusal to register the mark RESTORE LIFT, finding the mark merely descriptive of "cosmetic and plastic surgery, namely, a minimally invasive face/neck lift done under local anesthesia." In February 2014, the same applicant (through the same attorney) filed a new application to register the same mark for the same services. When that application was refused under Section 2(e)(1), Applicant Southeastern Dermatology, S.A. appealed. In re Southeastern Dermatology, PA, Serial No. 86187997 (July 15, 2015) [not precedential].

The Board found this appeal to be barred by claim preclusion, sometimes referred to by people of a certain age as res judicata. Under that doctrine, "a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies based on the same cause of action."

The Board noted that claim preclusion must be applied with caution. However, prior Board decisions have applyied the doctrine when an applicant "had already been refused registration for the same mark and goods in a prior ex parte proceeding and the applicant did not demonstrate a change of circumstances so as to justify not applying preclusion based on the prior judgment."

Here Applicant made no contention that circumstances had changed. In fact, applicant submitted the identical arguments and evidence as in its prior failed application. Its appeal briefs in the two cases were substantially identical.

The Board concluded that the requirements for claim preclusion were met and it affirmed the refusal on that ground.

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TTABlog comment: Geez, Louise! What's there to say?

Text Copyright John L. Welch 2015.