Friday, October 09, 2015

Precedential No. 38: Fame of "" Can't Save "I AM" Trademark Applications From 2(d) Bar

In three separate opinions, the Board affirmed Section 2(d) refusals to register the mark I AM for cosmetics and personal products in class 3, for sunglasses and sunglass cases in class 9, and for jewelry, watches, and other goods, including "rubber wristbands in the nature of bracelets" in class 14, "all associated with William Adams, professionally known as," in view of the registered marks I AM for perfume, I AM (Stylized) for sunglasses and jewelry, and I AM for "silicone stretchable wrist band in the nature of a bracelet"]. In re, llc, Serial Nos. 85044494, 85044495, and 85044496 (October 7, 2015) [precedential] [Refusals to register the mark

William Adams, known as "," became well known as a member of the musical group, The Black-Eyed Peas. Applicant, his assignee, maintained that there was no likelihood of confusion because its marks identify its founder, "," its goods are exclusively associated with him, the goods under the cited marks are marketed differently, and the cited marks are not famous.

Regarding the language in the applications that the goods are all "associated with William Adams, professionally known as ','" the Board did not find that to be a meaningful limitation on the goods, the trade channels, or the classes of consumers. The language is merely "precatory" and not binding on consumers when they encounter the applied-for mark. Purchasers are unlikely to know of the statement in the registration that applicant's goods are limited to those associated with Mr. Adams.

Applicant contended that the applied-for mark will be perceived as identifying Mr. Adams, but the Board pointed out that mark is I AM, not WILL.I.AM. The evidence did not establish that Mr. Adams is widely known as "," or that "" and "" are used interchangeably by Mr. Adams or the public.

Moreover, even if Mr. Adams were know as "" and even if the applied-for mark had gained notoriety, the Trademark Act still protects the senior user from "adverse impact due to use of a similar mark by a newcomer" - i.e., reverse confusion.

The language in the identification of goods simply is not a reasonable basis to assume that purchasers would be able to distinguish the source of such goods from those emanating from the prior Registrant. As we view it, the language essentially is a distinction without a difference for purposes of our likelihood of confusion analysis.

The differences in the way applicant's goods and the goods of the cited registrations are marketed are, of course, irrelevant, since the Board must make its Section 2(d) determination based on the goods as identified in the application and the registration. Here there were no limitations in that regard.

Finally, as to the asserted lack of fame of the cited mark, the Board observed that, given the nature of the evidence required to prove fame, an examining attorney is not required to establish the fame of a cited mark. In an ex parte context the factor of fame is normally treated as neutral.

Balancing the pertinent du Pont factors, the Board found confusion likely and it affirmed all three refusals.

Read comments and post your comment here.

TTABlog comment: Applicant's only chance was to sell the "fame" concept, but celebrity fame doesn't work. See, for example, the RINGO case, TTABlogged here, and the KUTT KALHOUN case, TTABlogged here. Some people refer to these as "noisufnoc" cases, i.e., reverse(d) confusion. Just plug "reverse confusion" into the TTABlog search engine and see what you get.

What if applicant's mark had been "I AM by"? Probably same result, I think.

BTW, I'm counting these three decisions as one precedential ruling, since the opinions are to a large extent identical.

Text Copyright John L. Welch 2015.

Thursday, October 08, 2015

Rifle Barrel Configuration Unregistrable Due to Functionality, Says TTAB

The Board affirmed a Section 2(e)(5) refusal to register the product configuration shown below, for "rifle barrels, rifles," finding the proposed mark to be (de jure) functional. The mark comprises the configuration of external helical fluting on a gun barrel. Applicant owns two relevant patents, one utility, one design. Applying the four-factor test of Morton-Norwich, the Board found the former more significant than the latter. In re E.R. Shaw, Inc.., Serial No. 85797528 (September 29, 2015) [not precedential].

In applicant's utility patent for a "Fluted Gun Barrel," internal and external spiral grooves produce a lighter gun barrel and permit the gun to cool more quickly. The internal and external fluting is included in the patent claims, and they are an "integral part of the invention." Although the patent is directed to the combination of internal and external fluting while the subject trademark application involves only the external fluting, the grant of trademark registration here would prevent others from practicing the invention, even after the patent expired.

Applicant argued that the existence of the design patent "presumptively indicates that the [applied-for mark] is not de jure functional," citing the the CAFC's decision in In re Becton, Dickinson. The Board pointed out, however, that the "mere existence of a design patent is not dispositive and may be outweighed by other evidence."

The Board considered the design patent, but ultimately found its probative value outweighed by other evidence, including the utility patent.

[A]lthough the spiral lines on the gun barrel are described as "ornamental" in the design patent and may be aesthetically pleasing, the question remains whether, on balance, this design is merely incidental to the overall purpose of the article or whether it "adopts a significant portion of the invention disclosed in the [utility] patent."

Here, the Board found that the proposed configuration mark is a "significant portion" of the invention described in the utility patent. Therefore this Morton-Norwich factor supports a finding of functionality.

In its advertising, Applicant mentions a "unique appearance" to the fluting, but it also asserts the same utilitarian advantages identified in the patent. [Couldn't the fluting be both unique in design and utilitarian at the same time? Is the Board mixing up de jure and de facto functionality here? - ed.].

The existence of alternative designs is probative, but "does not detract from the functional character of the product design where the subject matter sought to be registered is 'the preferred or a superior design.'" [Note that applicant is not trying to register as a trademark, all spiral designs, and there seemed to be no evidence that its particular spiral design was the preferred design. Surely one could imagine a design for the fluting - say, lighting bolts - that would perform the function (i.e., be de facto functional, but not be the preferred design (i.e., not be de jure functional) - ed.]

Helical fluting, the Board found, was clearly superior to the other fluting designs in the record: straight flutes, pocked indentations, or other grooves.

Applicant's spiral fluting may be more expensive to produce than, say, straight fluting, "but the fact that other designs are simpler and cheaper to make does not weigh very much in applicant's favor."

The Board concluded that the the applied-for configuration mark "comprises matter that, as a whole, 'is essential to the use or purpose of the article or ... affects the cost or quality of the article,' as contemplated by Inwood, and thus is functional and not registrable on that basis."

Read comments and post your comment here.

TTABlog comment: How does this case differ from the Hershey case (here), in which the scoring on a Hershey bar [plain, not with almonds], despite the existence of a utility patent on candy bar scoring. There are surely other ways to include spiral fluting on a gun barrel, like my lightning bolt example. Or suppose every other spiral line was much thicker than the adjacent lines, creating an eye-catching pattern. Could that not be registrable as a trademark? Maybe the hurdle for proving acquired distinctiveness might be high, and maybe the scope of protection would be narrow, but would it be de jure functional?

I am campaigning to revive the use of the terms de facto and de jure functionality, because I think they help clarify the analysis under Section 2(e)(5). See my TTABlog post here.

Text Copyright John L. Welch 2015.

Wednesday, October 07, 2015

Another TTAB Test: Are "FLUFF IT UP" and "FLUFFY STUFF" Confusable for Cotton Candy?

After yesterday's "F-bomb"-filled post, it's good to return to a more family-oriented discussion. [No - not the Manson family]. Tootsie Roll opposed registration of the mark FLUFF IT UP for "natural cotton candy," alleging likelihood of confusion with its registered marks FLUFFY STUFF and FLUFFY STUFF COTTON CANDY POPS, both for cotton candy [COTTON CANDY POPS disclaimed]. The parties invoked the Accelerated Case Resolution (ACR) procedure, stipulating to standing and priority, as well as to a number of pertinent facts. Applicants argued that their cotton candy is hand-made from natural ingredients, and sold at weddings, fairs, and other events, rather than in grocery, drug, and convenience stores. Also, they maintained, the mark CHARMS always appears adjacent FLUFFY STUFF on Tootsie's goods. How do you think this came out? Tootsie Roll Industries, LLC v. Keelen and Breckenfeld, Opposition No. 91212895 (October 5, 2015) [not precedential].

The Board focused only on Opposer's FLUFFY STUFF mark, for obvious reasons. Tootsie Roll's cotton candy contains artificial flavors, chemical preservatives, and food coloring, while Applicants' natural cotton candy is of "artisan quality." The Board, however, pointed out for the umpteenth time that it must make its Section 2(d) determination in light of the goods as identified in the opposed application and cited registration, regardless of actual marketplace conditions. Here, opposer's "cotton candy" encompasses "natural cotton candy," and thus the involved goods are legally identical. This du Pont factor weighed heavily in Tootsie Roll's favor.

Moreover, there are no limitations as to channels of trade or classes of consumers in either the opposed application or the cited registration, and since the goods are legally identical, they must be presumed to travel in the same, normal channels of trade to the same classes of consumers. The specific differences in the actual channels of trade are irrelevant. This du Pont factor also weighed heavily in Tootsie Roll's favor.

Turning to the marks, the Board observed for the zillionth time that when the involved goods are legally identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board pulled the two marks apart, examined and compared the pieces, and concluded that although the marks are somewhat different in sound, "the overall similarities in appearance and sound outweigh the differences." Moreover, the two marks have similar meanings, and "in their entireties engender similar overall commercial impressions."

Applicants' argument regarding the appearance of opposer's mark CHARMS on packaging for the goods was simply irrelevant. The Board must compare the mark shown in opposer's registration certificate to the mark shown in the application drawing. Likewise, difference in packaging, trade dress, and labeling are immaterial.

The involved goods are relatively low priced products clearly subject to impulse purchases. Purchasers would include ordinary consumers who would be expected to exercise no more than ordinary care in their purchasing decisions.

Finally, there were no other FLUFF or FLUFFY formative marks registered for cotton candy. [stipulated]. Neither FLUFF nor FLUFFY is descriptive for cotton candy. [stipulated]. Based on sales figures, opposer's FLUFFY STUFF marks are well-known. [Stipulated].

Balancing the relevant du Pont factors, the Board found confusion likely, and it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: This case illustrates how the Board usually handles actual marketplace conditions in a Section 2(d) case: it ignores them.

Text Copyright John L. Welch 2015.

Tuesday, October 06, 2015

TTAB Test: Is "F**K PROJECT" Scandalous for Handbags and Clothing?

The USPTO refused registration of the mark shown below, for "Leather and imitations of leather; leather and imitation leather goods, namely bags, suitcases, backpacks, traveling bags, purses, key-cases of leather and skins, wallets, briefcases for documents; umbrellas" (in class 18), and "Clothing, namely, T-shirts, shirts, jumpers, trousers, skirts, jeans, jackets, underclothes, bathing suits, hats and caps, footwear" (in class 25), deeming the mark to be immoral or scandalous under Section 2(a) of the Lanham Act. Applicant Giorgio S.R.L. appealed, arguing that "f**k" is an accepted euphemism employed as a substitute for "fuck," the latter being too vulgar for use in written media. How do you think this came out? In re Giorgio S.R.L., Serial No. 79141996 (September 30, 2015) [not precedential].

The Board's opinion includes a main opinion, a concurring opinion, and a dissent, and runs for 22 pages That in and of itself makes this case rather extraordinary. I will hit only the high points here.

Judge Shaw wrote the main opinion, finding the applied-for mark to be immoral or scandalous and thus barred from registration by Section 2(a). Because this is a family blog, I will not repeat the dictionary definitions of "fuck" (you know them anyway), which established that the word "fuck" is considered vulgar and obscene. The examining attorney submitted Internet evidence showing that F**K is commonly used in place of "fuck," Therefore, "the former may be considered equivalent to the latter, particularly in meaning and commercial impression." The asterisks in F**K "serve as a typographical 'fig leaf' to protect readers from the visual vulgarity of the word 'fuck' but the terms are nonetheless equivalents."

Credulity was strained by applicant's argument that the term F**K could refer to an infinite number of socially acceptable words, such as "fork" of "flack." [How about FINK or FOLK? - ed.] Writers use asterisks in the term F**K precisely because the asterisks mask the vulgar appearance of the word 'fuck' in its entirety, while at the same time leaving no doubt in the reader's mind of the meaning."

Judge Adlin concurred, under different reasoning, noting that "if we were writing on a clean slate," he would join the dissent. In cases involving euphemisms or alternative spellings of "bad words," the Board has generally found these terms to be scandalous. He also noted that the PTO has been consistent in refusing registration of marks analogous to F**K PROJECT.

Unless and until a court or a larger panel of the Board adopts a new course in situations such as this, it is not appropriate to disturb the settled expectations resulting from the Office’s prior and relatively consistent treatment of this type of mark.

If serving on a larger panel, however, Judge Adlin would view the evidence as does the dissent. He would not agree that F**K is vulgar, but rather he would find it to be a euphemism used precisely because it is not vulgar. The evidence showed that "public, for-profit websites, and book, movie, and clothing sellers use alternative spellings of 'fuck' in an apparent effort to not offend, or at least to reduce the level of offense arising out of calling to mind the word 'fuck.'"

Judge Seeherman dissented, emphasizing that the mark at issue is not FUCK PROJECT, which she would find scandalous, but F**K PROJECT. The judge did not agree with the conclusion that if a term would be readily understood as offensive, a substitute term is also offensive.

In Judge Seeherman's view, F**K is a non-offensive way of depicting the word FUCK. "F**K is a sanitized version of the vulgar word 'fuck,' but because it is sanitized by the fig leaf asterisks, it should not be treated as being the same as the vulgar word that the fig leaf asterisks are obscuring."

At the very least, the record shows that there is some question about whether "f**k" would be perceived as an offensive or vulgar word, or as a euphemism for the offensive word “fuck.” This is enough to show that there is doubt as to whether the applied-for mark, F**K PROJECT in stylized form, is scandalous and, accordingly, such doubt should be resolved in favor of publishing the mark for opposition.

Read comments and post your comment here.

TTABlog comment: I've read enough F-bombs for one night, thank you. What do you think about the outcome?

Text Copyright John L. Welch 2015.

Monday, October 05, 2015

Precedential No. 37: TTAB Affirms Functionality Refusal of Hot Bonder Product Design

The Board affirmed a refusal to register the product configuration shown below, comprising the arrangement of various components on a portable interface unit for "hot bonders," finding the purported mark to be functional under Section 23(c). The Board concluded that the "overall design of Applicant's configuration is 'essential to the use or purpose of the article'" [TrafFix] and therefore that the configuration as a whole is functional and not registrable. In re Heatcon, Inc., Serial No. 85281360 (September 29, 2015) [precedential].

Heatcon sought registration of the design on the Supplemental Register, for "equipment for controlling and recording the application of heat and pressure in a process for fabricating bonded composite materials, namely, woven glass, aramid fibers and carbon fabric, and adhesives bonds to composite or metallic components." It described the mark as a "three dimensional configuration of the arrangement of the HCS9200M Composite Repair Set's (Hot Bonder's) user interface components."

Section 23(c) permits registration on the Supplemental Register, of a mark that "may consist of any ... configuration of goods ... that as a whole is not functional ... but such mark must be capable of distinguishing the applicant's goods or services." However, the Board observed, "the case law applying Section 2(e)(5) and addressing functionality prior to the 1998 amendments to the Trademark Act, which added Section 2(e)(5) and amended Section 23(c), remains equally applicable because the issue, functionality, is the same."

The Board applied that old favorite, the CCPA's Morton-Norwich test, in assessing functionality.

Under the first Morton-Norwich factor, a utility patent that claims the features of a product design is "strong evidence that those features claimed therein are functional." Third-party patents may be relied on as evidence; ownership of the patent is irrelevant. [i.e., no hearsay problem. But why not? - ed.]. Examining Attorney Tracy Cross cited a third-party utility patent for a "Portable Curing System for Use with Vacuum Bag Repairs and the Like," which claimed a carrying case and various components. She pointed out that both the patented device and Heatcon's unit locate "the display screen and printer opposite the power input port and vacuum connector ports [so that] [t]operator can connect cords, cables and/or wires away from the user and avoid entangling the connections or hindering access to the other sensors, buttons and components of the panel."

Heatcon argued that the utility patent was irrelevant because the patent claims did not reference the arrangement of the components, and the patent figures showed "one possible arrangement of a virtually infinite number of possible arrangements." However, the Federal Circuit has pointed out that a utility patent may be relevant even though it does not claim "the exact configuration for which trademark protection is sought." A patent's specification "illuminating the purpose served by a design may constitute equally strong evidence of functionality." Citing In re Becton, Dickinson and Co.. [See comment below]. Here, the specification of the cited patent explained the utilitarian advantages of the particular arrangement of the features.

Figure from cited patent

The Board therefore found that the cited patent "discloses the utilitarian advantages of the various parts ... of an interface for a portable hot bonder. In view of the "strong weight" to be accorded patent evidence under TrafFix, the Board found the cited patent to be sufficient to establish a prima facie case of functionality. [Utility patent = game over - ed.].

As to the second Morton-Norwich factor, Heatcon's advertising references to "ergonomic design," "convenient hook up," and "circuit breakers on front panel" were probative as to the functionality of Heatcon's applied-for mark. Third parties touted Heatcon's display, and competitor's promoted the convenience of similar arrangements. The Board concluded that the advertising evidence supported a finding of functionality.

Turning to the third Morton-Norwich factor, Heatcon submitted several third party products as evidence of alternative designs. The examining attorney pointed out, however, that these designs do not necessarily provide the same utilitarian benefits of Heatcon's design: hot bonders lacking a raised display are not alternatives for hot bonders with a raised display, and single zone bonders that have a display screen on the side are not dual zone hot bonders. The examining attorney also pointed out that industry and safety standards play a roll in the arrangement of the components for Heatcon's product.

Noting that there is no need to consider alternative designs if functionality is found based on other considerations, the Board concluded that the alternative examples proffered by Heatcon did not support a finding of non-functionality.

As to the fourth Morton-Norwich factor, there was insufficient evidence for the Board to make a determination as to the comparative costs of different designs. In any case, even if Heatcon's interface is not comparatively simple or inexpensive to manufacture (as Heatcon asserted), that does not mean that the design is not functional.

Heatcon argued that, although the arrangement of its interface is composed completely of functional parts, the arrangement by itself is not functional. Not so, said the Board.

[T]he functional features far outweigh any nonfunctional aspect of the arrangement which is incidental and hardly discernible as a separate element from the functional parts. While we do not foreclose the possibility, it is difficult to imagine a situation where the sum of a configuration’s entirely functional parts adds up to a design capable of indicating the source of the product. In any event, the case before us presents no such exception.

Moreover, the Board observed, even if it did not weigh the functional features against the asserted non-functional arrangement, the record established that "the arrangement of significant functional features is directed by utilitarian concerns to make the device easier, safer, and more efficient."

The Board concluded that the examining attorney satisfied her burden to make out a prima
case. Heatcon failed to submit sufficient evidence to overcome that prima facie case by a preponderance of the evidence. It found that the "overall design of Applicant's configuration is "essential to the use or purpose of the article" [TrafFix and therefore the configuration as a whole is functional and not registrable.

The Board also affirmed a refusal to register on the ground of Applicant Heatcon's failure to comply with the examining attorney' requirement for a new drawing. Although the finding of functionality rendered the drawing issue moot, the Board chose to discuss the issue. It agreed with the examining attorney that, "in view of the functionality of the individual components, the requirement to depict them in broken lines is appropriate." It disagreed with Heatcon's assertion that such a depiction would be "unclear."

[t]o the extent it would be “unclear” the requirement to insert a statement in the description of the mark identifying these elements and declaring that these elements are not part of the mark and that they serve only to show the position of the mark on the goods is also appropriate.

Read comments and post your comment here.

TTABlog comment: Quite a job by Examining Attorney Tracy Cross in gathering evidence, don't you think?

The Board noted that, according to the TMEP, the terms de jure functional and de facto functional were "retired" at the USPTO in 2002. Apparently the CAFC did not get the message, since it used those terms, and explained the differences, in In re Becton, Dickinson and Co., 102 USPQ2d 1372 (Fed. Cir. 2012). I found those two terms useful in this March 2015 TTABlog posting entitled "Some Thoughts on de facto and de jure Functionality."

Text Copyright John L. Welch 2015.

Sunday, October 04, 2015

CAFC Hears En Banc Oral Argument in THE SLANTS Appeal

On Friday, October 2nd, the CAFC heard oral argument en banc in in re Tam, the issue being whether "the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate[s] the First Amendment?" You too can hear the argument by going to this link and typing in the date of 2015-10-02 and the appeal number 2014-1203. Prior TTABlog postings regarding this case may be found here [TTAB], here [CAFC], and here [CAFC].


Read comments and post your comment here

Text Copyright John L. Welch 2015.

Saturday, October 03, 2015

TTABlog Quarterly Index: July-September 2015

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. You may also follow the blog on Twitter (here). And don't forget to leave your comments! [Note that E-mail subscribers may have to surf to the blog to see comments]. Finally, please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at

Section 2(a) - Disparagement:
Section 2(d) - Likelihood of Confusion:

Section 2(e)(1) - Mere Descriptiveness:
Section 2(e)(1) - Deceptive Misdescriptiveness:
Section 2(e)(2) - Geographical Descriptiveness:
Section 2(f) - Acquired Distinctiveness:

Failure to Function/Specimen of Use:
Lack of Bona Fide Intent:
Concurrent Use:

CAFC Decisions:
Recommended Reading:
Text and photos Copyright John L. Welch 2015.

Friday, October 02, 2015

Precedential No. 36: TTAB Gives the Boot to Nike's Inadequate Section 2(a) and 2(c) Claims

The Board granted Applicant Palm Beach Crossfit's motion to dismiss two of Nike's four claims in this opposition proceeding, finding that Nike had inadequately pleaded claims under Section 2(a) and 2(c) of the Lanham Act. Nike asserted that applicant's design mark shown below left, for athletic clothing and athletic training services, would falsely suggest a connection with former hoopster Michael Jordan, and further that the mark comprises a portrait of a living individual (Jordan) without his consent. Nike, Inc. v. Palm Beach Crossfit Inc. d/b/a Crossfit CityPlace, Opposition No. 91218512 (September 11, 2015) [precedential].

Nike's Section 2(d) and 43(c) (dilution-by-blurring) claims, which were based on Nike's ownership of registrations for the mark shown above right, survived the motion to dismiss. Applicant argued that the marks are so dissimilar that, as a matter of law, these two claims must be jettisoned, but the Board disagreed. The Board ruled that applicant's services are not so unrelated to Nike's sporting goods that the issue can be determined on a motion to dismiss.

Turning to the Section 2(a), the "initial and critical requirement" for a false association claim is that the identity allegedly being misappropriated is unmistakably associated with the person or institution identified. Nike alleged that applicant's "handstand" mark falsely suggests a connection not with Nike, but with Michael Jordan - but the hoop star is not a party to the proceeding.

While Opposer alleges generally its relationship with Michael Jordan has led to a close association between the two in the minds of the public, Opposer does not assert that the public would recognize Applicant’s marks as pointing uniquely to Opposer (or to Michael Jordan), or that Applicant’s Handstand marks are a close approximation of Opposer’s (or Michael Jordan’s) identity or “persona,” an element necessary to a false suggestion of a connection claim.

The Board therefore dismissed Nike's Section 2(a) claim.

As to the Section 2(c) claim, a plaintiff must allege that the marks "consists of or comprises" the name, image, likeness, or signature of a particular living individual, and that "he or she is so well known that the public would that the public would reasonably assume a connection between the mark and the individual, or that, because the individual is publicly connected with the business or field of the identified goods or services, such connection would be assumed."

Section 2(a) may be invoked by an entity, but Section 2(c) requires reference to "a particular living individual." Opposer alleged that it has a licensing relationship with Michael Jordan and that it has developed and used trademarks comprising Jordan's image, giving Nike a monetary interest in the image of Michael Jordan. However, Nike did not assert that the "licensing relationship" gives in a proprietary right to assert a Section 2(c) claim on Jordan's behalf.

Accordingly, the Board dismissed the Section 2(c) claim for insufficient pleading.

The Board allowed Nike 20 days within which to file an amended notice of opposition, if it "believes sufficient grounds exist to re-plead its Section 2(a) and 2(c) claims."

Read comments and post your comment here.

TTABlog comment: Seems like the 2(a) claim may be easily fixed, but what about 2(c)? I suppose you'd have to look at the licenses.

Text Copyright John L. Welch 2015.

Thursday, October 01, 2015

TTAB Posts October 2015 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled five (V) oral hearings for the month of October, as listed below. The first four hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. The fifth will be held "off-site" (at the AIPLA annual meeting in Washington, D.C.) The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner). Briefs and other papers for these cases may be found at TTABVUE via the links provided.

October 7, 2015 - 2 PM: In re Apple, Inc., Serial No. 77078496 [refusal to register the mark IPHONE for various services in International Classes 41 (providing online information and entertainment) and 42 (computer consulting services) on the ground that the specimens of use do not show the mark in use with the recited services].

October 13, 2015 - 11 AM: In re Caliburger, Serial No. 85810919 [Alternative refusals of CALIBURGER for restaurant services, on the grounds that the mark is of primarily geographically descriptive under Section 2(e)(2) of the Trademark Act, or merely descriptive under Section 2(e)(1)].

October 21, 2015 - 2 PM: In re Neato Robotics, Inc. , Serial No. 85751529 et al. [Mere descriptiveness refusal of BOTVAC, and requirement of disclaimer of BOTVAC in the mark NEATO BOTVAC for, inter alia, robotic vacuum cleaners and parts therefor].

October 22, 2015 - 11 AM: In re PACCAR, Inc., Serial No.85769536 [Section 2(e)(4) refusal to register KENWORTH for transmission fluids, motor vehicle lubricants, and all-purpose lubricants, on the ground that the mark is primarily merely a surname].

 October 22, 2015 - 2PM: Balance Bar Company v. GFA Brands, Inc., Opposition Nos. 912142477 et al. [Opposition to registration of EARTH BALANCE and SMART BALANCE for various food items, including  "nut and seed-based snack bars" and "meal replacement bars," on the ground of likelihood of confusion with the registered marks BALANCE and BALANCE BAR, and various BALANCE-formative marks, for snack bars].

Read comments and post your commenthere.

TTABlog note: Any predictions? See any WYHA?s here?

Text Copyright John L. Welch 2015.

Wednesday, September 30, 2015

Precedential No. 35: TTABang! SMART SERIES Merely Descriptive of Firearm Safes

The Board affirmed a Section 2(e)(1) refusal to register the mark SMART SERIES, finding the mark to be merely descriptive of "metal safes specifically designed to store firearms." The Board agreed with Examining Attorney Susan Leslie DuBois that the mark describes applicant's safes as "belonging to a larger product line" and featuring "a particular level of  technology, such as microcomputers or microprocessors." In re Cannon Safe, Inc., Serial No. 85651960 (September 24, 2015) [precedential].

Applicant feebly argued that even if SMART SERIES conveys some information about applicant's goods using "some sort of technology and that they are part of some sort of line of products," such information is vague and not conveyed with sufficient particularity to invoke a Section 2(e)(1) bar. Moreover, Applicant asserted, even if the words "smart" and "series," standing by themselves, would each be descriptive, the phrase SMART SERIES is registrable because it is a combination mark with an incongruous meaning. [And what meaning is that? - ed.].

Applicant indicated that its safes will be equipped with microprocessors and microcomputers. The Board therefore concluded that the goods have a "smart" component, and applicants identification of goods is broad enough to include gun safes with microprocessors. Moreover, the evidence showed that the word "smart" in the field of safes has been used to describe those that include microprocessors to provide safety. In fact, contemporary gun safes include built-in microprocessors for such features as fingerprint recognition and tampering protection.

The Board found that consumers will readily understand from the word SMART that applicant's gun safes contain automated, technological devices such as microprocessors that make them "smart."

As to the word SERIES, applicant uses the word "series" for several other lines of gun safes. Moreover, it is not uncommon [litotes?! - ed.] in the industry to consider safes as a "series." For example, Liberty Safes offers the "Lincoln Series."

The combination of SMART and SERIES "does not result in a mark which as a whole has a nondescriptive or incongruous meaning." Each component retains its merely descriptive significance, resulting in a mark that is merely descriptive. Consumers will understand SMART SERIES as identifying "another of Applicant's various series of safes, i.e., a line of safes offering enhanced capabilities made possible by the use of microprocessors."

The Board therefore affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA? My goodness, the "precedential" tag is certainly thrown around loosely these days. If these safes did not contain microprocessors, would the mark be deceptive under Section 2(a)?

Text Copyright John L. Welch 2015.