TTAB Reverses 2(d) Refusal of BACIO: Not Confusable with KISS for Restaurant Services

The Board reversed a Section 2(d) refusal to register the mark BACIO for hotel, bar, and restaurant services, finding it not likely to cause confusion with the mark KISS & Design, shown below, for restaurant and coffee house services.  Although the application stated that the English translation of the Italian word "bacio" is "kiss," the Board found dispositive the differences in sound, appearance, and overall commercial impression. In re Tropicana Las Vegas, Inc., Serial No. 85450247 (June 4, 2013) [not precedential].

Applicant argued that its restaurant is "an Italian trattoria in [a] Las Vegas hotel featuring white linens and fresh flowers," whereas the cited mark "signifies the iconic rock band Kiss and is used in connection with Kiss-themed coffeehouses and/or casual restaurants decorated with neon lights and Kiss memorabilia." The Board, however, pointed out for the umpteenth time that it cannot consider such distinctions because they are not reflected in the subject application or cited registration. Therefore, the involved services are considered in part identical, and this duPont factor favored a finding of likely confusion.

As to the marks, they have no visual similarity to each other. The Board noted that Applicant's standard character mark might be used in any font, size, style or color, but "even if applicant’s mark were displayed in a style of lettering highly similar to that of registrant’s mark, the two marks would still not be visually similar." With regard to sound, the Board saw no similarity between the marks, "regardless of whether applicant’s mark is pronounced as an Italian word or in any likely alternative pronunciation."

Applicant argued that "bacio" has other meanings in other languages, such as Portuguese, Croatian, Serbian, Spanish and Latin. But even if true, that does not make the Italian significance irrelevant: those who understand the Italian meaning of BACIO are not immune from confusion by the fact that others may translate BACIO differently.

Applicant also contended that the doctrine of foreign equivalents should not be applied because the PTO failed to show that an appreciable number of consumers would "stop and translate" the mark. The Board noted that it has frequently applied the doctrine to Italian terms with little or no discussion regarding how many Americans speak the language. And even if, as Applicant asserted, only 0.384% percent of the U.S. population speaks Italian at home, that would still amount to more than one million people. The Board therefore saw not reason to ignore the English meaning of BACIO.

The Board, however, perceived a "meaningful distinction" in the overall commercial impressions of the two marks, even though both "bacio"and "kiss" suggest "a loving or affectionate gesture." It observed, however, that the cited mark

contains suggestions that run contrary to the impression of a loving or affectionate gesture. The stylized lettering is jagged, aggressive, and perhaps threatening. The stylized letters SS suggest lightning bolts and the style of the mark creates an impression that, when combined with the standard meaning of "kiss," is incongruous. Such incongruity is absent from applicant’s mark. Accordingly, we find the overall commercial impressions created by the two marks to be quite different.

The Board concluded that the dissimilarities in sound, appearance, and overall commercial impression outweighed the similarity in meaning, and so it reversed the refusal.

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Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Is "SW3 UK" Geographically Deceptively Misdescriptive of Clothing?

The PTO refused registration of the mark SW3 UK & Design, shown below, for women's clothing, deeming it to be primarily geographically deceptively misdescriptive under Section 2(e)(3). Applicant Lankshear admitted that SW3 is a London postal code for the Chelsea district, but denied that relevant consumers would know that fact. How do you think this came out? In re John Lankshear, Serial No. 85239139 (June 6, 2013) [not precedential].

To support a Section 2(e)(3) refusal, the PTO must first show that the place named in the mark is generally known to relevant consumers, and not remote or obscure. Purchasers must readily recognize the designation as the name of a geographical place, and not merely as an arbitrary term being used as a trademark.

The Examining maintained that the designation SW3 is synonymous with the Chelsea District of London, famous for its shopping and designer clothing boutiques. Therefore, he asserted, consumers would assume that Applicant's goods come from England. He relied on various Internet pages referring to various stores within the SW3 postal area, and to a Wikipedia entry referring to "Swinging Chelsea."

Applicant argued that the general purchasing public is not aware of the fact that SW3 refers to the Chelsea District of London. Furthermore, he pointed to a several registered marks that refer to zip codes or postal codes (SW2, SW3, SW4, BEVERLY HILLS 91210 & design, DR. 90210, and 33139).

The Board focused on the words SW3 and UK, observing that the crown design and the disclaimed word BESPOKE have "less probative significance" in the Section 2(e)(3) analysis.

There was no dispute that SW3 connotes a geographical location. The question was "how many people in the United States would know the geographical significance of SW3? That is, how many American consumers would know that SW3 identifies the district of Chelsea in particular?"

The Board found the PTO's evidence "inadequate to show that an average American consumer purchasing women's clothing would, upon seeing applicant's mark, conclude that it relates to a neighborhood in London, namely, Chelsea." Even if consumers recognized that SW3 is a British postal code, "there is little evidence that they would recognize it as the code for Chelsea." The designation UK, appearing in very small letters, "does nothing to aid prospective consumers in identifying Chelsea." The Board concluded that the geographical significance of SW3 to the average American consumer is so minor or obscure that it must be considered an arbitrary designation for applicant's goods.

Moreover, to the extent that consumers recognize the meaning of SW3, it would connote a "trendy style, viewed more as evoking an attitude of a place. As to the third-party registrations, only one (33139) covered clothing, but the Board saw no reason to deviate from PTO practice of registering such marks, absent a stronger showing by the PTO.

Finally, the Board noted that the evidence was also insufficient to show a goods/place association with Chelsea, i.e., that Chelsea is associated with the production of clothing.

And so the Board reversed the refusal.

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TTABlog note: for a collection of Section 2(e)(3) cases, go here.

Text Copyright John L. Welch 2013..

Precedential No. 22: WYHA? TTAB Affirms Failure-to-Function Refusal of "No More RINOs!" for Bumper Stickers, T-Shirts, and Buttons

This applicant sought to register the phrase No More RINOs!, in standard character form, for bumper stickers, clothing, and campaign buttons, but the Board affirmed the PTO's refusal to register under Sections 1, 2, and 45 on the ground that the applied-for mark is a merely ornamental or informational political slogan that fails to function as a trademark. Would you have appealed? In re Thomas J. Hulting d/b/a No More RINOs! Enterprises Serial No. 77666826 (June 10, 2013) [precedential].

The Board observed that "there are certain designations that are inherently incapable of functioning as trademarks to identify and distinguish the source of products in connection with which they are used." Common laudatory phrases ordinarily used in business or in a particular trade or industry are not registrable (E.g., ONCE A MARINE, ALWAYS A MARINE; DRIVE SAFELY; and THINK GREEN). [How about ALWAYS THINK SAFELY LIKE A GREEN MARINE? - ed.].

The key issue, of course, is how the designation in question would be perceived by relevant consumers. In that context, the Board must consider how the proposed mark is displayed on the specimens of use: the size, location, dominance, and significance of the alleged mark are all relevant factors.

Examining Attorney Tricia Sonneborn submitted evidence that "No More RINOs!" is a commonly-used political slogan meaning "No More Republicans In Name Only." The evidence showed that consumers are accustomed to seeing that phrase on bumper stickers, t-shirts, novelty pins, and other items, from a variety of sources. Consequently, they will not perceive this phrase as a source indicator, but rather as a political message or statement.

Moreover, the size, placement, and dominance of the wording on Applicant's specimens of use are consistent with informational or ornamental use, not trademark use. Even though the phrase as displayed on Applicant's t-shirt (above) is smaller than on its other specimens of use, "given the significance of the phrase, it does not have the commercial impression of a source indicator."

Applicant pointed to its substitute specimens of use [see example below], which added the tagline "By Statesman Enterprises." However, the inclusion of that tagline on the specimens made no difference in the Board's analysis, since it is not part of the applied-for mark. Finally, Applicant's intent that the slogan should function as a trademark is likewise irrelevant.

And so the Board affirmed the refusal.

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Text Copyright John L. Welch 2013.

Precedential No. 21: TTAB Dismisses Belatedly-Filed Opposition, Rejects Claim of Privity With Extension Recipient

The Board dismissed this opposition for lack of jurisdiction because the notice of opposition was filed too late. Opposer Renaissance Rialto claimed the benefit of an extension of time to oppose that was obtained by a third-party, Lakeside Cinema, by way of a "Transfer Agreement," but the Board ruled that Opposer failed to show that Lakeside used the mark that it purported to transfer or that Opposer and Lakeside were in the position of parent-subsidiary, licensor-licensee, or any other relationship of privity. Renaissance Rialto Inc. v. Ky Boyd, Opposition No. 91197602 (May 31, 2012) [precedential].

Applicant Boyd sought to register the mark RIALTO CINEMAS for movie theaters. Opposer Renaissance Rialto instituted the opposition on November 23, 2010, claiming, inter alia, likelihood of confusion and genericness. The original opposition deadline was October 7, 2010. The third-party, Lakeside Cinema had obtained an extension of time to January 5, 2011 to file an opposition, but Lakeside did not file a notice of opposition. Instead, it executed a "Transfer Agreement" purporting to transfer to Opposer its right to initiate and prosecute this opposition. The question, then, was whether Opposer may claim the benefit of the extension of time granted to Lakeside.

Under Rule 2.102(b), the party filing an opposition during an extended period for filing must have obtained the extension of time in its own name or must be in privity with the person that obtained the extension of time. The concept of "privity" includes, among other things, the relationship of successive ownership of a mark. See TBMP Section 206.02. The Board therefore looked to the terms of the Transfer Agreement to see whether Lakeside effectively transferred its right to oppose (and the benefit of the extension of time to do so). "Typically, the right to go forward with an opposition may be transferred when the opposer, or its pleaded mark and the goodwill associated therewith, has been acquired by another party." SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994).

The Transfer Agreement, dated November 1, 2010, recited that Lakeside owned a leasehold interest in a movie theater, that for several years prior to Lakeside obtaining said interest the theater had been operated as "Rialto Cinemas," that Lakeside file a request for extension of time to oppose the instant application, and that Lakeside "has now decided to use a different name." By its terms, the Transfer Agreement assigned to Opposer any right that Lakeside might have to use of the name RIALTO CINEMAS, as well as its right to oppose the subject application pursuant to the extension of time that Lakeside had obtained. [To further complicate matters, the prior leaseholder was Ky Boyd, the applicant here].

The Board, however, found it "not at all clear" from the agreement that Lakeside Cinema ever used the mark or had any goodwill therein to transfer to Opposer Renaissance Rialto. Nothing in the record indicated that Lakeside used the mark in a manner that would create trademark rights that could be transferred to Opposer. Applicant Boyd testified that he did not license use of his mark to Lakeside, nor was he aware of anyone else using the RIALTO CINEMAS mark for movie theaters. Opposer's owner testified that Lakeside had not used that mark, and that the right to oppose that was purportedly transferred was not based on any use of the mark by Lakeside, but rather on "a natural right of a competitor to stop applicant from using what opposer deems to be a generic term."

Therefore, the Board found that the record evidence was insufficient to establish that Lakeside had a proprietary interest in the RIALTO CINEMAS mark. Opposer's acquisition of another's right to oppose, independent of a transfer of trademark rights, is an insufficient basis upon which to assert privity for purposes of claiming the benefit of an extension of time obtained by another person.

Because Opposer's did not timely file its notice of opposition, the Board had no jurisdiction over the matter and it dismissed the opposition, but without prejudice to Opposer's filing a petition for cancellation if and when appropriate.

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Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Is “THE ORIGINAL & Oval Design” Merely Descriptive of Kitchen Towels?

The PTO refused registration of the mark shown below under Section 2(e)(1), finding it merely descriptive (laudatory) of “cleaning mitts of cloth and cleaning cloths; dish drying mats made of fabric and foam; gloves for household purposes, namely, dish drying gloves,” and for “kitchen towels and dish cloths.” Moreover, the PTO deemed the stylization of the mark insufficient to support registration on the Principal Register (with the words disclaimed) How do you think this came out? In re Schroeder & Tremayne, Inc., Serial No. 85157275 (May 24, 2013) [not precedential].

Both applicant and Examining Attorney Aretha C. Somerville submitted third-party registrations, some for marsk with the word ORIGINAL disclaimed, some not. This evidence did not reflect any clear PTO policy regarding the word and therefore, although the PTO strives for consistency, in this “battle of the registrations” there is “little persuasive value in the registrations submitted.” See In re Nett Designs Inc., 57 USPQ2d at 1566.

Instead, the Board turned to dictionary definitions to determine whether THE ORIGINAL has a laudatorily descriptive meaning. The Examining Attorney provided definitions of "original" as "new; fresh; inventive; novel: an original way of advertising." The Board also noted the definition "the first and genuine form of something, from which others are derived." The Board concluded that the word "original" "directly conveys the laudatory information that applicant’s goods are new, fresh, novel or the first and genuine form of the goods."

We understand applicant’s argument that it does not claim to be the original maker of kitchen towels and dish cloths, which it says “have certainly existed and been used for as long as kitchens and woven goods have existed.” *** However, it is not necessary that purchasers perceive the mark as describing the originator of the goods in general for ORIGINAL to be found merely descriptive. ORIGINAL is a term that also describes that a product has a new characteristic.

The Board noted, not surprisingly, that the addition of the word THE did not affect the laudatory meaning of ORIGINAL.

Applicant argued in the alternative that the mark as a whole is registrable with a disclaimer of THE ORIGINAL because it has a distinctive stylization and design. The Board referred to its discussion of this issue in In re Sadoru Group Ltd., 105 USPQ2d 1484 (TTAB 2012), in which it extensively analyzed the relevant cases. [TTABlogged here].

The Board found, again not surprisingly, that "the stylization and design elements of applicant’s mark are not sufficient to create a separate and inherently distinctive commercial impression apart from the term itself." The oval background design is common, and the stylized script is in a "rather ordinary font." Furthermore "the 'tildes' on either side of the words are not significant either."

In short, the Board found the subject mark to be "far more similar to the marks in which the stylization/design element was found not to create an inherently distinctive display."

And so the Board affirmed the refusal.

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TTABlog comment: This case reminds me that the (ersatz?) rock group Spinal Tap was first called "The Originals," but upon learning of another group that already used that name, they changed to "The New Originals." Do you think THE NEW ORIGINAL would be registrable as inherently distinctive for dish towels? Is it oxymoronic, or merely doubly laudatory?

Text Copyright John L. Welch 2013.

TTAB Enters Summary Judgment: BABY GAGA Confusable With LADY GAGA for Clothing

Lady Gaga put a stop to Adam Swan's attempt to register the mark BABY GAGA for various clothing items, including t-shirts [BABY disclaimed]. The Board granted Opposer's motion for summary judgment, finding the applied-for mark likely to cause confusion with the common law mark LADY GAGA for a number of clothing items, including t-shirts. Ate My Heart Inc. v. Adam Swan, Opposition No. 91202493 (May 24, 2013) [not precedential].

The Board first considered the issue of standing, noting that Opposer had failed to properly make its registrations of record. Opposer submitted photocopies of the registrations (rather than certified status-and-title copies, or proper TESS documents), accompanied by a declaration stating only that Opposer owns the registrations: nothing about the status of the registrations. Consequently, Opposer had to rely on its common law rights in the LADY GAGA mark.

A declaration from Opposer's CEO established that Opposer has continuously used the LADY GAGA trademark for clothing since 2008, including at the on-line Lady Gaga official store, a date prior to Applicant Snow's filing date. Snow did not provide any evidence of use of his mark, nor did he contest standing.

Opposer claimed that the LADY GAGA mark is famous, submitting copies of magazine covers and media articles featuring Lady Gaga and pointing out that since 2008, Lady Gaga has sold more than 23 million albums and 64 million singles worldwide, that both Time Magazine and Forbes included Lady Gaga in its annual Time 100 list of most influential people, that Forbes placing her as number seven on their annual list of the World’s 100 Most Powerful Women, that Lady Gaga has received numerous awards and industry acknowledgements, and that she has been featured in several fashion magazines, including Vogue, Vanity Fair, and Elle. Applicant Swan "essentially conceded" that the mark LADY GAGA is famous by acknowledging Opposer’s contention that "so famous is she, when people say 'Gaga'  in 'press and in casual reference,' they mean her."

As to clothing, however, the evidence did not, as required, clearly establish fame, and so the Board could not conclude that there was no genuine dispute as to the fame of LADY GAGA with respect to clothing. However, because the Board did not, in its further analysis, treat the mark as famous, Opposer’s evidence on this factor did not raise a genuine dispute as to a material fact that would preclude the entry of summary judgment.

With regard to channels of trade, the opposed application did not include any limitation or restriction, and so the Board must presume that applicant’s goods will be travel in all normal channels (to all the usual classes of purchasers), which would include sales to the general public via the Internet.

Turning to the marks, because the goods are identical in part (t-shirts), the degree of similarity between the marks necessary to support a finding of likelihood of confusion is decreased. There was no dispute that the marks are similar. "GAGA combined with LADY or BABY does not have any particular meaning that is apparent to us, and applicant has not pointed to any particular meaning for its mark."

Applicant contended that "any determination that there is no genuine dispute that the marks are similar is based on speculation because applicant has not yet sold his 'Baby Gaga clothing.' The Board brushed that aside, since actual use of the marks at issue is not necessary in order to to determine whether there is a genuine dispute as to the similarity of the marks: the test is likelihood of confusion, not actual confusion.

Therefore, the Board found no genuine dispute over the similarity of the marks in terms of appearance, sound, and commercial impression.

Finally, the Board turned to Swan's affirmative defense of "unclean hands." He claimed that Lady Gaga committed copyright infringement by using in her name, a part of the title of a third party’s musical recording ("Radio Ga-Ga/I Go Crazy" as recorded by Queen). The Board, however, observed that the defense of unclean hands must be related to Opposer’s claim and it concluded that Swan's was not related (e.g., Swan did not allege that Opposer is not the owner of the mark LADY GAGA).

The Board therefore entered summary judgment on Opposer's Section 2(d) claim. It declined to reach Opposer false connection (2(a)) and dilution claims, giving Opposer thirty days to decide whether it wished to pursue those claims (after proper re-pleading).

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Text Copyright John L. Welch 2013.

TTAB Finds TROPICAL ESCAPE for Soap and Air Fresheners Not Confusable

Despite the identity of the marks and the relatedness of the goods, the Board reversed a Section 2(d) refusal to register TROPICAL ESCAPE for "antibacterial soap; bar soap; bath soaps; deodorant soap; liquid soaps; body washes," finding it not likely to cause confusion vis-a-vis the identical mark for room fragrances and air freshening preparations; room perfume sprays, household and room deodorants, and odor neutralizers. Third-party registrations and uses, along with the 13th duPont factor, allowed this Applicant to escape the Tropic of Unregistrability. In re Pure & Natural Company, Serial No. 77433737 (May 13, 2013) [not precedential].

Applicant maintained that TROPICAL ESCAPE is a very weak mark in view of numerous third-party marks used on similar goods. It submitted 30 third-party registrations for marks that include the term TROPICAL or ESCAPE, which marks are used on personal care products, fragrances, scented sprays, and the like. Applicant also made of record 11 third-party Internet printouts showing use of TROPICAL ESCAPE on a variety air fresheners and scented candles.

The Board, however, saw no reason to decide whether TROPICAL ESCAPE is a weak mark for the relevant goods. Instead it found that "the frequent registration of the terms TROPICAL and/or ESCAPE for their suggestive meaning on soaps and detergents as well as on household fragrances and scented sprays together with the evidence of third-party use of TROPICAL ESCAPE on various types of scented products suggests that consumers are able to distinguish the source of these distinctly different scented products bearing similar or even identical names."

As to the relatedness of the goods, the Examining Attorney made of record 9 third-party registrations (including one owned by the applicant), demonstrating that both applicant’s and registrant’s types of goods are offered under a single mark by third parties as well as by Applicant itself. Consequently, this du Pont factor favored a finding of likely confusion.

Under the thirteenth du Pont factor, the Board may consider any other probative facts. Here, Applicant claimed ownership of a prior registration for the identical mark TROPICAL ESCAPE for "laundry detergents; laundry soap; fabric softeners.”

Thus, we are presented with the unusual situation wherein an applicant's existing registration for the same mark for related goods has coexisted with the cited registration for a number of years. When we consider this fact under the thirteenth du Pont factor, we find in this case that this factor weighs heavily in applicant’s favor against a finding of a likelihood of confusion.

Balancing the relevant du Pont factors, the Board found that there is no likelihood of confusion.

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Text Copyright John L. Welch 2013.

MERLO'S MERLOT for Wine is Primarily a Surname, Confusable with LAGO DI MERLO, Says TTAB

Applicant Perry David Merlo tripped over two hurdles in his quest for registration of the mark MERLO'S MERLOT for "grape wine; red wine": Sections 2(e)(4) and 2(d) of the Trademark Act. The Board agreed with Examining Attorney Robert J. Struck that the applied-for mark is primarily merely a surname, and further is confusingly similar to the registered mark LAGO DI MERLO for wines. In re Perry David Merlo, Serial No. 85510114 (May 23, 2013) [not precedential].

Section 2(e)(4): The Board did not find MERLO to be "a particularly rare surname." It appeared 866 times in a national directory of surnames, and 2,697 times in the 2000 census. Of course, Applicant's own name was further evidence that MERLO has surname significance. Negative dictionary evidence showed that MERLO has no other meaning in English. [Applicant belatedly submitted evidence that the Italian word "merlo" means "blackbird" in English, but the Board gave that evidence no consideration.]

Finally, MERLO has the "look and feel" of a surname, as evidenced by the fact that the Merlo family of California produces the wine sold under the cited mark LAGO DI MERLO. Use of the possessive MERLO'S by Applicant reinforced the surname significance.

Applicant argued that MERLO’S MERLOT "has a unique meaning above an[d] beyond merely a surname and a generic term” and "constitutes “a play on two similarly sounding words which sound the same and are interchangeable." The Board, however, was unimpressed by this homophonicity, finding that it did not displace or diminish the surname significance of the phrase "in designating a type of good (merlot wine) offered by applicant (Mr. Merlo)."

Section 2(d): The goods of the application and cited registration are legally identical, and the Board must presume (absent any express limitations) that they travel through the same, normal channels of trade to the usual classes of consumers. These factors strongly support the refusal to register. Moreover, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

The cited mark LAGO DI MERLO translates into English as “Lake of Merlo.” Because there was no dispute regarding this translation, the Board "must therefore assume that the ordinary U.S. consumer familiar with Italian would 'stop and translate' the foreign wording in registrant’s mark to 'Lake of Merlo.' See Palm Bay Imps. Inc., 73 USPQ2d at 1696."

The Board found MERLO and its possessive form, MERLO’S, to be the dominant portions of the respective marks, and further that consumers are likely to view the subject marks as "creating similar commercial impressions." In the cited mark, the Board concluded,  the phrase "LAGO DI" modifies "MERLO." [Seems more like a unitary phrase to me - ed..  "Given the structure of applicant’s mark, consumers who are familiar with registrant’s LAGO DI MERLO goods would view the term MERLO’S MERLOT, when used in association with applicant’s goods, as designating a particular varietal of registrant’s wines."

Balancing the relevant duPont factors, the Board found confusion likely and it affirmed the Section 2(d) refusal.

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TTABlog comment: I disagree with the 2(d) ruling. I don't think the marks are sufficiently similar. The cited mark identifies a lake. The applied-for mark attaches a name to a type of wine.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability On This Mere Descriptiveness Refusal of THE MOSQUITO PATCH & Design for Insect Repellants

The PTO refused registration of the mark shown below [THE MOSQUITO PATCH disclaimed], finding it to be merely descriptive of "insect-repellants" under Section 2(e)(1). In other words, even the design portion of the mark was merely descriptive, and the mark as a whole was not distinctively stylized. The Applicants appealed. How do you think this came out? In re Ronald Bennett and Jacob Fakouri, Serial No. 85485633 (May 13, 2013) [not precedential].

The Board, of course, must consider the mark as a whole when determining mere descriptiveness. By their disclaimer, Applicants conceded the mere descriptiveness of the phrase THE MOSQUITO PATCH. The question, then, was whether the composite mark was merely descriptive.

Applicants feebly argued that the mosquito logo could be used in connection with a number of products and services, "such as a fly swatter, insecticide for plants, exterminator services," etc. Moreover, urged Applicants, the word "patch" may refer to a garden patch, or a patch on clothing to cover up a stain or a hole in a garment. The Board didn't bite. The applied-for mark is not to be considered in the abstract, but in the context of the identified goods. Clearly, the mark conveys information about Applicants' goods: their function is to repel mosquitoes.

Applicant also pointed to seven third-party registrations for marks incorporating images of an insect and the universal prohibition symbol, for insect repellant and extermination services. Examining Attorney Dawn Han countered with five registrations in which the universal symbol and/or a realistic depiction of a bug are/is disclaimed.

The Board pointed out that prior decisions in other applications are not binding on the Board. However, "third-party registrations featuring the same or similar goods as applicants' goods are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed." Moreover, the design portion of Applicants' mark is merely descriptive of an important feature of the goods: they repel mosquitoes. The applied-for mark "thus comprises two merely descriptive elements that in combination retain their descriptive significance in relation to the goods."

Finally, the Board concluded that the degree of stylization in the applied-for mark "is not sufficiently striking, unique, or distinctive so as to create a commercial impression separate and apart from the other components of the mark."

And so the Board affirmed the refusal.

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Text Copyright John L. Welch 2013.

Precedential No. 20: Cancellation Respondent Can't Undo Voluntary Surrender of Registration

Respondent International Expeditions, rather than answer Christiane E's petition for cancellation on the ground of abandonment, filed a voluntary surrender of the challenged registration without Petitioner’s consent pursuant to Trademark Rule 2.134(a). In such circumstances, the Rule provides that "judgment shall be entered against the respondent." About four months later, and before the Board had acted on the surrender, Expeditions moved to withdraw the surrender. The Board said no dice. Christiane E, LLC v. International Expeditions, Inc., 106 USPQ2d 2042 (TTAB 2013) [precedential].

Although this case presented an issue of first impression for the Board, it found instructive In re Glaxo Group Ltd., 33 USPQ2d 1535 (Comm’r 1993), involving abandonment of an application during ex parte examination. There, when the applicant petitioned to withdraw the abandonment, the Commissioner denied the petition, "noting that such a withdrawal would be allowed 'only in an extraordinary situation' in view of 'the interests of third parties and the administrative requirements of the Office' and determined that '[n]either the applicant's reevaluation of the importance of the mark, nor the fact that the petition was filed before the Office had formally processed the express abandonment is deemed to be an extraordinary situation.'"

The Board found that the principles underlying Glaxo applied here as well. Expeditions voluntarily relinquished an interest and that relinquishment became part of the public record available for inspection the public and by employees of the PTO, "some of whom may have relied to their detriment on the filing." Furthermore, the voluntary surrender of the challenged registration during the proceeding "directly implicates the concrete rights of petitioner." The Board saw no reason to apply a less stringent standard than that applied in Glaxo.

Expeditions, in justification of its change-of-mind, stated that "it did not know that Petitioner was … formed by a founder of one of the Registrant's predecessors [and that] Petitioner has hired at least one of the Registrant’s employees." That was, the Board observed, not only irrelevant but unsupported by any evidence.

In short, the Board did not find this to be an "extraordinary situation" that would warrant the granting of Expeditions' request to withdraw its surrender.

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Text Copyright John L. Welch 2013.