Mueller's Bests Barilla in TTAB 2(d) Food-Fight Over "AMERICA'S FAVORITE PASTA"

The Italian company, Barilla, was foiled in its attempt to register the mark BARILLA - AMERICA'S FAVORITE PASTA for pasta [AMERICA'S FAVORITE PASTA disclaimed]. The Board sustained a Section 2(d) opposition brought by the successor to Mueller's, finding Barilla's mark likely to cause confusion with Opposer's common law mark AMERICA'S FAVORITE PASTA for the same goods. American Italian Pasta Co. v. Barilla Alimentare S.p.A., Opposition No. 91161373 (May 13, 2008) [not precedential].


The simmering battle between Mueller's and Barilla over the mark AMERICA'S FAVORITE PASTA finally came to a boil before the TTAB. Newcomer Barilla had become the highest selling brand of pasta in the United States by the early 2000s, which motivated Barilla to seek registration of the subject mark. But Mueller's opposed, claiming rights to the mark going back to at least 1989.

Opposer (the successor to Mueller's rights) admitted that the phrase "America's Favorite Pasta" is not inherently distinctive. Consequently, Opposer's claim of priority "turns upon opposer's demonstrating that this term had acquired distinctiveness prior to June 18, 2002, when applicant filed its intent-to-use application."

Barilla contended that "American's Favorite Pasta" is incapable of acquiring distinctiveness as a trademark, but the Board disagreed. Unlike the phrase BEST BEER IN AMERICA, which was deemed so highly laudatory and descriptive as to be incapable of acquiring distinctiveness, "America's Favorite Pasta" is not a common phrase used descriptively by others. Furthermore, the "word 'Favorite' in the context of this phrase cannot be said to be a clear claim of superiority." In addition, Opposer submitted dozens of third party Supplemental Registrations for marks containing the identical construction "America's Favorite ...."


The "critical and hotly contested" issue before the Board was whether Opposer established acquired distinctiveness prior to Barilla's filing date. Reviewing the "voluminous" evidence, the Board sided with Mueller's, even while recognizing that Opposer had not shown use of "America's Favorite Pasta" as a stand-alone brand.

"For good or ill, at the time applicant filed this application, opposer and its predecessors in interest had spent more than 135 years building the goodwill of a branding image tied to the 'American-ness' of the Mueller's brand of pasta. Evidence of this fact is not tied to extensive media advertising, but is tied first and foremost to the packaging on more than a hundred million pounds of pasta a year, and supported by aggressive coupon campaigns distributing many millions of coupons to markets throughout Muellerland."

Applicant's branding image, on the other hand, "has been linked to the continuing perception that truly authentic pasta is associated with its Italian roots." Since arriving in the USA in 1995, Barilla, "through its pasta promotion and pasta product packaging - adorned in red, white and green, the colors of the Italian flag - has unapologetically embraced its Italian heritage. In fact, applicant has a federal trademark registration for its own long-used tag-line, ITALY's #1 PASTA."


Noting that product differentiation in this fiercely competitive field may turn on subtle nuances, the Board was convinced "that opposer has strengthened an American-themed brand identity that Mueller's owners ha[ve] been building for more than 130 years, and which should not be subject to taking by the new market leader - whose success in this market has been built on a very different brand-identity."

Having found that Opposer has priority, the Board didn't noodle around before reaching the conclusion that confusion between the marks in question is likely. In short, it observed that consumers who see the phrase "Barilla-America's Favorite Pasta" are likely to assume that there is some relationship between Mueller's and Barilla.

The Board therefore sustained the opposition.

Text Copyright John L. Welch 2008.

TTAB Affirms Surname Refusal of "HARRINGTON OAK" for Flooring

Applicant Mannington Mills was floored by the PTO's Section 2(e)(4) refusal of the mark HARRINGTON OAK for "oak floor boards; oak wooden flooring" [OAK disclaimed]. The Board affirmed the refusal, agreeing with Examining Attorney Monique C. Miller that the mark is primarily merely a surname. In re Mannington Mills, Inc., Serial No. 78783771 (April 22, 2008) [not precedential].


The PTO relied upon U.S. Census Bureau data showing that "Harrington" ranks 478th in terms of surname frequency, and that 0.024% of the population has that surname. A white pages website listed more than 300 Harringtons, and the People Finder database contained 30,887 telephone listings for that surname. Seven third-party Harrington registrations reside on the Supplemental Register or under 2(f) on the Principal Register. The PTO also submitted website pages referring to former Detroit Lions quarterback Joey Harrington, professional golfer Padraig Harrington, and actor Pat Harrington.

Applicant submitted various items showing use of "Harrington" as the name of a font, as the name of towns in Delaware, New Jersey, Maine, and Washington, as street in Teaticket, Massachusetts and in the Bronx, and as a type of jacket. It also provided three third-party registrations in which the word "Harrington" was not disclaimed.

The Board applied its standard surname test found in In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995). Pointing to the statistical proofs, it first found that HARRINGTON is "not a rare surname." In addition to the statistics, it was impressed that celebrities such as Joey Harrington, Padraig Harrington, and Pat Harrington "are subjects of news stores appearing in newspapers throughout the country." [TTABlog comment: what does that have to do with the surname's rareness?]

Next, it noted that there was no evidence that anyone connected with applicant has that surname.

Thirdly, the Board considered other meanings of "Harrington." It observed that the word has no dictionary meaning and it concluded that the primary meaning of HARRINGTON is that of a surname: "There is no persuasive evidence in the record that indicates any significant consumer recognition and association between HARRINGTON and any geographical association, font, or any other item other than a surname."

Finally, as to the fourth plank in the Benthin platform, whether the mark has the "look and feel" of a surname, the Board pointed out that this is a highly subjective factor. It promptly concluded that HARRINGTON "has the clear look and feel of a surname."

The addition of the word "oak" has no trademark significance, "and, in fact, emphasizes that HARRINGTON is a surname by engendering the commercial impression of oak flooring offered by or designed by an individual named Harrington."

Considering all the evidence, the Board laid the wood to Applicant by affirming the 2(e)(4) refusal to register.

TTABlog note: For a criticism of the TTAB's current surname test, see Section V of the article "The TTAB in 2007: Rules, Rulings, and Repercussions", which launches off from Judge Seeherman's concurring opinion in In re Joint-Stock Company "Baik", 84 USPQ2d 1921 (TTAB 2007) [TTABlogged here].

Text Copyright John L. Welch 2008.

TTAB Says "No Way" to "JOSE," Finds it Confusingly Similar to "JOSE CORTEZ" for Tequila

Applicant Tequila Cuervo, owner of the mark JOSE CUERVO, was foiled in its attempt to register the mark JOSE for tequila and non-alcoholic mixes for use with tequila. The Board sustained Opposers' 2(d) opposition, finding the mark likely to cause confusion with the mark JOSE CORTEZ, registered for tequila. Chatam International Incorporated and 750 ML, LLC1 v. Tequila Cuervo La Rojena, S.A. de C.V., Opposition No. 91170109 (April 28, 2008) [not precedential].


The critical issue was, of course, the similarity or dissimilarity of the marks. Applicant argued that Opposers' mark JOSE CORTEZ is a unitary mark and that, because JOSE is a common name, the CORTEZ portion renders the mark readily distinguishable from the mark JOSE. According to Applicant, if JOSE calls to mind another mark, it will be Applicant's JOSE CUERVO mark, which, Applicant contended, is a well-known mark in this country.

Applicant further contended that multiple third-party registrations for marks containing the name JOSE in the alcoholic beverage field establish that consumers will look to the remainder of the marks, rather than the word JOSE, to distinguish the sources of the goods.

The Board found that Applicant's ownership of the JOSE CUERVO mark was of little probative value, and moreover that Applicant did not establish that JOSE CUERVO is a famous mark in connection with tequila. The third-party registrations show only that JOSE is a common term in marks for alcoholic beverages, and that additional matter in the marks serves to distinguish those marks.

"The record contains only two entities, applicant and opposers, owning registered marks for tequila that are names beginning with JOSE: JOSE CUERVO and JOSE CORTEZ, respectively. As such, the mark JOSE is equally likely to be perceived as a shortened reference to Opposers' JOSE CORTEZ tequila as it is to applicant's JOSE CUERVO tequila products."

Finally, the Board distinguished two cases cited by Applicant in which the Board found no likely confusion, one involving CRISTAL and CRYSTAL CREEK for champagne and wine, and the other involving FRIAR JOHN and LONG JOHN for whiskey. As to the first, the marks had "very different connotations," and in the second, the different first words in the marks also gave "very different connotations" to the marks.

"In our case, there is no such distinction in connotation - both marks are names, one is a first name and the other is the same first name with a surname. Applicant's mark has no additional term, such as CUERVO, to distinguish it from opposers' mark."

The Board sustained the opposition.

TTABlog comment: What if Applicant had produced evidence of the fame of its JOSE CUERVO mark, so that most, or even a large majority, of consumers would perceive JOSE as a shortened reference to JOSE CUERVO? Would that change the outcome here? What if survey evidence showed that consumers never heard of JOSE CORTEZ, and that the mark JOSE brought to mind either JOSE CUERVO or was perceived as a totally new brand of tequila?

Text Copyright John L. Welch 2008.

TTAB Summary Judgment: Applicant Admittedly Was Not the Owner of the Mark at Filing

Applicant Tracy Artman filed an application to register the mark TRACY'S TREATS NATURAL PRODUCTS FOR REMARKABLE SKIN for various soaps and related products. Unfortunately, she admitted in her answer to Opposer's amended notice of opposition that Tracy's Treats, Inc. was the owner of the mark. She is the President of Tracy's Treats Inc., but filed the application in her name. Opposer successfully moved for summary judgment on the ground that her application is void ab initio because Tracy Artman was not the owner of the mark when the application was filed. Tracie Martyn, Inc. v. Tracy Artman, Opposition No. 91173009 (May 1, 2008) [not precedential].


The Board observed that when an application is filed in the name of the wrong party, the defect cannot be cured by amendment or assignment. However, if the application is filed by the owner but a mistake is made in the manner in which applicant's name is set forth, that may be corrected.

37 C.F.R.§ 2.71(d) The applicant may amend the application to correct the name of the applicant, if there is a mistake in the manner in which the name of the applicant is set out in the application. The amendment must be supported by an affidavit or declaration under § 2.20, signed by the applicant. However, the application cannot be amended to set forth a different entity as the applicant. An application filed in the name of an entity that did not own the mark as of the filing date of the application is void.

Section 1201.02(c) of the TMEP provides examples of correctable and non-correctable errors in the identification of the applicant. If there is an inconsistency -- i.e., if the application names an individual as the owner in one place, and a corporation in another -- the application may be amended to clarify the inconsistency. However, here the example of non-correctable error applies:

President of Corporation Files as Individual. If the president of a corporation is identified as the owner of the mark when in fact the corporation owns the mark, and there is no inconsistency in the original application as between the owner name and the entity type (such as a reference to a corporation in the entity section of the application), the application is void as filed because the applicant is not the owner of the mark.

Here, there was no inconsistency in the application. There was no reference to the company and no mention that Tracy was an officer of the company. Accordingly, the application is void ab initio, and judgment was entered summarily in favor of Opposer.


However, the Board then noted that Opposer might wind up opposing a new, properly filed, application for the mark at issue. So, in the interest of judicial economy, the Board allowed Opposer thirty days to decide whether it wants to proceed with this opposition and seek a determination on the merits of its Section 2(d) claim, or withdraw that claim as moot.

TTABlog comment: I find it strange that the Board would allow this proceeding to continue when Tracy Artman is the wrong party. She is not the owner of the mark at issue. Is she expected to defend the opposition? Should her company be substituted for her as the defendant? Must the company consent to the substitution?

In support of this procedural ruling, the Board cited a case in which a registration involved in a cancellation proceeding had inadvertently expired, but the petitioner was allowed to proceed with the cancellation anyway. But there, at least the correct entity was already the party defendant and was the owner of the mark in question.

Text Copyright John L. Welch 2008.

Finding PTO Evidence Inadequate, TTAB Reverses 2(a) and 2(d) Refusals of "HEINEKEN" for Meat Juices

Canadian Robert V. Marcon has done it again. In March 2008, the Board reversed a Section 2(a) refusal of his application to register L'OREAL PARIS for aloe vera drinks because the PTO failed to prove that the French company of that name "is of sufficient fame or reputation to consumers in the United States" that a false connection would be presumed." (TTABlogged here). This time he not only knocked out a Section 2(a) refusal of the mark HEINEKEN for "meat juices," again because of the PTO's inadequate proof, but he also overcame a Section 2(d) refusal. In re Robert V. Marcon, Serial No. 78288366 (April 28, 2008) [not precedential].


Section 2(a): The PTO submitted only the following evidence in support of its refusal: (1) two sets of GOOGLE brand search engine "hit list" result pages; and (2) printouts from the Heineken brewery website. Based on this "scant" evidence, the Board was unable to find "that the HEINEKEN name is of sufficient fame that a connection with Heineken brewery will be presumed."

"Hit list" submissions are of little probative value because insufficient text is available "to determine the nature of the information, and, thus its relevance." Without actual printouts of the web pages, the Board cannot examine "the content and context within which the term 'Heineken' is being used."

As to the printouts from the Heineken website, the information contained therein was of "little consequence" to the issue of the fame of the Heineken name. Moreover, there is a "strong likelihood" that Heineken might engage in "puffery" in stating the importance or fame of the Heineken brewery. Therefore the Board gave this evidence "limited weight in view of the source of the information."

In reversing the 2(a) refusal, the Board noted that "a different result might have been possible" had it been "privy to a fuller record."

Likelihood of confusion The Board focused on one of the 10 registrations cited by the Examining Attorney, namely, for HEINEKEN for "beers and malt beverages." It found its analysis "inhibited" by the lack of any clear definition of applicant's goods, i.e., 'meat juices.'"

The Examining Attorney feebly asserted that third-party registration evidence established that "a single owner provides meats, meat extracts and beer." Also, "restaurants, such as microbreweries of beer and lager also provide meat dishes that may be prepared with beer." Finally, she pointed to Internet excerpts "showing that that beer is used as a marinade to tenderize and season meats."

The Board was not impressed. As to the registrations covering beer and meat products, they are all owned by foreign entities and are based on Section 44(e) with no use in commerce. Therefore, that have no probative value here.

The fact that a restaurant serves beer and meat dishes is "wholly irrelevant to establishing that beer is somehow related to 'meat juices.'" And the Internet evidence at best "established a connection between beer and meat, albeit a tenuous one."

Finding no evidence on which to conclude that "purchasers are likely to assume or expect that beer (and malt beverages) and 'meat juices' originate from a single source," the Board found the second duPont factor to be dispositive, and it reversed the 2(d) refusal.

TTABlog query: What do you think the odds are that this mark will clear the opposition stage?

Text Copyright John L. Welch 2008.

TTAB Overturns PTO Refusal, Finds "LAY'S GET YOUR SMILE ON" to be Unitary Mark

Finding that Frito-Lay's mark LAY'S GET YOUR SMILE ON!, as it appears on the specimen of use (shown immediately below) is a unitary mark, the Board reversed the PTO's refusal to register. The Examining Attorney had maintained that the applied-for mark actually consists of two marks, LAY'S and GET YOUR SMILE ON! In re Frito-Lay North America, Inc., Serial No. 78555200 (May 2, 2008) [not precedential].


In the Final Refusal, the Examining Attorney made the strange argument that the fact that Frito-Lay had registered the mark in the design form shown below (with the same specimen of use) was evidence that "applicant recognizes this application contains two separate marks."

"The question in this case is whether the applied-for mark is a registrable unitary composite mark engendering a unique and distinct commercial impression. *** Applicant cites to cases involving mutilation; however, the issue in this case is the converse of the situation where the applied for mark is missing integral subject matter as show on the specimen...."

The Board observed that this question "is resolved by comparing the specimens to the drawing and our analysis is necessarily subjective."

"On the back of the packaging, the LAY's design appears immediately above the phrase GET YOUR SMILE ON! The phrase is curved up at the ends like a smile and it both follows the contour of the circular LAY's design and it is in close proximity thereto. Therefore, we conclude that the commercial impression fostered by applicant on the specimen of use is that of a single unitary mark."

Therefore, the Board reversed the refusal.


Text Copyright John L. Welch 2008.

Precedential No. 26: Specimens of Use Display Web Address, Not Service Mark Use

Los Angeles lawyer Vicki Roberts lost her case before the TTAB when she appealed the PTO's refusal to register her alleged mark irestmycase (in non-standard character form) for legal services. The Board agreed with Examining Attorney Steven W. Jackson that, as it appears on Applicant's specimens of use, irestmycase fails to function as a service mark under Sections 1, 2, 3, and 45 of the Trademark Act. In re Vicki Roberts, Serial No. 76649075 (may 2, 2008) [precedential].


The Board observed that Applicant's specimens did not show use of irestmycase per se. The originals specimens did not show use of that designation at all, and her substitute specimens showed the designation "imbedded in her Internet website address, www.irestmycase.com." Finding In re Eilberg, 49 USPQ2d 1955 (TTAB 1999), to be controlling, the Board pointed out that:

"In the case before us, irestmycase.com appears along with applicant's other contact information on her letterhead, and is specifically identified as one of her Internet website addresses or 'legal service portals' by means of which 'she can be reached' on her Internet message board. However, in neither [substitute] specimen is irestmycase used at all, or www.irestmycase.com used to indicate the source of applicant's legal services. Rather, such designation as it appears on her substitute specimens simply serves as an address by means of which one may reach applicant's Internet website."

The Board noted that irestmycase could serve as a source identifier, if used in a way that the designation would be perceived as a mark. But Ms. Rogers failed to do that.


And so the Board affirmed the refusal to register.

Text Copyright John L. Welch 2008.

"MEET THE BLOGGERS IV" Set for May 19th in Berlin

Jeremy Phillips of the IPKat blog has taken the laboring oar in planning MEET THE BLOGGERS IV (or if you prefer, "Treffen Sie die Bloggers IV") for the evening of Monday, May 19, from 8:30 to 10:30 at the top of Potsdamer Platz 1, 10785 Berlin. All are welcome!


The first "Meet the Bloggers" was held in San Diego in 2005. Marty Schwimmer and yours truly were the bloggers to be met.

MEET THE BLOGGERS - San Diego 2005(Click on photo from larger picture)
The roster of expected blogger attendees at the Berlin event has grown considerably, both in number and in geographical scope:

• Afro-IP
• Catch Us If You Can !!!
• Class 46
• IMPACT
• IP Finance
• IPEG
• IPJUR
• IPKat
• Lucentinus
• Naked Law
• Petit Musee des Marques
• Rick's IP Blog
• Rychlicki.net
• Seattle Trademark Lawyer
• SOLO IP
• Spicy IP
• Trademark Blog
• Transblawg
• TTABlog

If you are planning to attend, please send an e-mail here to this year's host sponsor, Olswang.

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Precedential No. 25: TTAB Affirms Refusal of Mark Having a Phantom Element

Finding that Applicant Primo Water's proposed mark [shown immediately below] contains a phantom element ("namely, text and graphic material or a combination thereof that are identical but inverted copies of each other"), the Board affirmed a refusal to register the mark under Section 1(a)(1) and Rule 2.52. In re Primo Water Corp., Serial No. 78684820 (April 29, 2008) [precedential].


Applicant sought to register, for "bottled drinking water," a mark that it described as follows:

The mark consists of the placement and orientation of identical spaced indicia on a water bottle having a handle, namely the placement of indicia on one side of the handle and the placement of identical indicia on the other side of the handle in inverted orientation. The indicia can be text, graphics or a combination of both. The dotted outline of the bottle and the indicia is not a part of the mark but is merely intended to show the placement of the mark. The dotted outline of Applicant’s logo does not constitute a portion of the trademark of this application but instead merely illustrates indicia.

The Board noted that an application "must be limited to only one mark." A mark that contains a changeable or "phantom" element is considered to be more than one mark. The registration of such marks "does not provide proper notice to other trademark users, thus failing to help bring order to the marketplace and defeating one of the vital purposes of federal trademark registration." (quoting In re International Flavors and Fragrances Inc., 51 USPQ2d 1513 (Fed. Cir. 1999)).


Applicant argued that "the relative placement and orientation of identical indicia on a bottle of drinking water -- not the indicia itself -- can constitute a protectable trademark. The Board disagreed: "applicant is, in effect, attempting to obtain exclusive rights to all labels and the like that would be identical inverted versions of each other."

"In fact, because the placement of a label or indicia on opposite sides of a bottle used in a water cooler would be a normal method of identifying the source of the bottled water, it is the indicia itself, and the fact that they are identical but inverted copies of each other, that must be considered a significant part of the mark. In other words, the (varying) indicia must be viewed by consumers before they can perceive the repetition and inversion elements of applicant's mark."

The Board found this case similar to In re Upper Deck Co., 59 USPQ2d 1688 (TTAB 2001), which involved an application to register a hologram device for trading cards, regardless of the size, shape, location, or content of the hologram. The Board found that Upper Deck was attempting to register an idea or concept, rather than a single mark.

Here, the Board observed, Applicant Primo is also attempting to register a concept: "the use of indicia on a water bottle that will be in an upright position on the bottle whether the bottle is sitting on its base, prior to use, or when the bottle is upended and placed in a water cooler."

The Board concluded that, "[b]ecause the text and graphic material or a combination thereof is a changeable element, the application is for more than a single mark, and thus registration is prohibited pursuant to 15 U.S.C. Sec. 1051(a)(1) and Trademark Rule 2.52."

TTABlog comment: Not all changeable elements disqualify a mark from registration. See, e.g., In re Dial-A-Mattress Operating Corp., 57 USPQ2d 1507 (Fed. Cir. 2001) [(xxx)-M-A-T-T-R-E-S registrable where xxx is an area code. Also note that the mark THE TOP TEN TTAB DECISIONS OF 20** was registered by yours truly in 2005, the symbols ** representing "the last two digits of the year being reviewed." The key to these registrations is that the variable element has a limited number of possibilities.

Text Copyright John L. Welch 2008.

DC Circuit Rules TTAB Party May Raise New Issues in 21(b) Civil Action for Review

The U.S. Court of Appeals for the District of Columbia Circuit has reversed in part a district court ruling in a civil action under Lanham Act Section 21(b), seeking review of the TTAB's decision in Aktieselskabet af 21. November 2001 v. Fame Jeans, Inc., Opposition No. 91163436 (January 30, 2006). [TTABlogged here]. The TTAB had dismissed the Danish company's Section 2(d) opposition to registration of the mark JACK & JONES for clothing because the Canadian applicant, Fame Jeans, had priority. Neither company had used the mark in the USA, but the Canadian company had the earlier filing date. In the civil action, Opposer added several new grounds for its opposition, but the district court dismissed the complaint, deciding that the new grounds were waived because Opposer did not present them before the TTAB, and further that the TTAB had correctly ruled on the Section 2(d) claim. The court of appeals reversed, holding in part that the new claims were properly before the district court. Aktieselskabet af 21. November 2001 v. Fame Jeans, Inc., Appeal No. 07-7105 (D.C. Cir. April 29, 2008).


Opposer attempted to add two claims in the district court action: (1) that Fame's application was void ab initio because Fame lacked a bona fide intent to use the mark, and (2) that Fame had misrepresented its intent to the PTO. The D.C. Circuit faced this question: "whether a party may ... introduce new issues not brought before the TTAB." The court joined "several of our fellow circuits in allowing new issues in Section 21(b) actions. See, e.g., Pioneer Healthcare, Inc., 75 F.3d 75, 80 (1st Cir. 1996); CAE, Inc. v. Clean Air Eng'g, Inc., 267 F.3d 660, 674 (7th Cir. 2001)."

The court observed that under Section 21(b) the district court is to decide "as the issues in the proceeding may require." The word "proceeding" refers to the district court action. "Thus, in a Section 21(b) action, a district court should decide on the issues before it, including new issues."

The court then looked at Opposer's 2(d) claim. It agreed with the TTAB that Opposer could not establish any constructive use via Section 44 prior to Fame's Section 1(b)filing date. However, it ruled that Opposer had "adequately pleaded actual use," noting that technical trademark used is not required. Citing the CAFC's Niagara decision, the Board stated that "[a]n opposer may rely on myriad forms of activities besides sales themselves, including, among others, regular business contacts, after-sales services, advertising of various forms, and marketing." The court ruled that Opposer's complaint gave "fair notice of a claim to analogous use."

"Simply put, the allegation of marketing in the United States, together with the inference of public association, is enough to give Fame fair notice of what it must contest. No more is required of a complaint."

As to Opposer's lack of bona fide intent claim, the court again found that Opposer had adequately pleaded the claim. It noted that "an opposer may defeat a trademark application for lack of bona fide intent by proving the applicant did not actually intend to use the mark in commerce or by proving the circumstances at the time of filing did not demonstrate that intent."

Finally, the court affirmed the dismissal of Opposer's common-law fraudulent misrepresentation count on the ground that Opposer "did not claim to have relied on Fame's supposedly false statement." [TTABlog note: the appellate court did not treat this claim as the usual fraud-on-the-PTO claim that we are used to; it cited only one precedent from the local D.C. court, and none of the TTAB fraud precedents].

And so, the district court judgment was reversed in part and affirmed in part.

TTABlog comment: Under Section 21(b), if the defendant resides in a foreign country, the United States District Court for the District of Columbia shall have jurisdiction. Remembering the TTAB's recent LASALLE decision [TTABlogged here], in which the successful applicant was a French trademark company specializing in the "revival" of old trademarks, would you consider bringing a civil action under Section 21(b) in the District of Columbia federal court in order to raise the issue of bona fide intent?

Text Copyright John L. Welch 2008.