TTABlog Flotsam and Jetsam: Issue No. 14

It's time for another edition of "Flotsam and Jetsam," wherein I provide timely tidbits to the TTABar. The last edition was a mere four and one-half years ago, but who's counting?



Judge Holtzman Retires: Judge Terry E. Holtzman retired from the Board In November 2013. She was appointed to the Board in 1999.

Judge Grendel Retires: Judge Charles M. Grendel retired from the Board as of January 1st, after some 14 years as an Administrative Trademark Judge. His departure, by my count, brings the number of TTAB judges to twenty-one (21 or XXI).  [The current roster of TTAB judges may be found here.]

TTAB Seeks Applicants for "Deputy Chief Administrative Trademark Judge": The PTO is seeking candidates for the position of Deputy Chief Administrative Trademark Judge. The application period runs to April 2, 2014. Details here.

Erik Pelton's Report on Trademark Public Advisory Committee: Erik Pelton reports here on the latest quarterly TPAC meeting, held on February 28, 2014. As to our favorite tribunal, Chief Judge Gerard F. Rogers announced (1) that the 2014 revision of the TBMP will be out in June, and (2) that the TTAB is on target for meeting all of its 2014 goals. Also notable is the pending legislation in Congress to permit the registration of official insignia by state and local governmental entities, in a reaction to the District of Columbia and City of Houston decisions, TTABlogged here.

CAFC Affirms TTAB: DOCTORS MAKING HOUSECALLS Generic: Yesterday, the CAFC issued a Rule 36 affirmance in the appeal from a TTAB decision upholding the PTO's genericness refusal of DOCTORS MAKING HOUSECALLS for ... wait for it ... "providing on-site medical services to patients at their homes, apartments, senior communities, offices, or other designated locations." [TTABlogged here]. [When one appeals a WYHA? to the TTAB and then to the CAFC, that makes it a double WYHA? or WHYA?-squared. Now if the Supreme Court affirms ....]

Read comments and post your comment here.

Text Copyright John L. Welch 2014.

Precedential No. 8: Catalogs Lacked Necessary Ordering Information to Qualify as Trademark Specimen, Says TTAB

Once again visiting the "catalog as trademark specimen" issue, the Board affirmed a refusal to register the mark TSUBAKI: THE CHOICE FOR CHAIN for "industrial machine parts, namely, chains and sprockets" on the ground that Applicant Tsubaki failed to provide an acceptable specimen of use. Tsubaki submitted six catalogs in which potential purchasers were invited to call the company phone number to obtain information and place an order. That was not, however, sufficient information to qualify the catalogs as acceptable specimens of trademark use. In re U.S. Tsubaki, Inc., Serial No. 85267349 (March 7, 2014) [precedential].



Trademark Rule 2.61(b) states that "[a] trademark specimen is a label, tag, or container for the goods, or a display associated with the goods." TMEP § 904.03(g) explains that a qualifying "display" will essentially comprise “point-of-sale material such as banners, shelf-talkers, window displays, menus, and similar devices.”

Tsubaki argued that its catalogs are acceptable as specimens because they satisfied the requirement set forth in TMEP §904.03(h) that they "offer to accept orders and provide instructions on how to place an order.” Examining Attorney Michele-Lynn Swain maintained that the catalogs do not contain the necessary ordering information and therefore are mere advertisements for the goods.

The determination of whether a specimen of use is a display associated with the goods or merely advertising is a question of fact: "whether the purported point-of-sale display provides the potential purchaser with the information normally associated with ordering products of that kind." In re Anpath Group, Inc., 95 USPQ2d 1377 (TTAB 2010) (flyer that provided website and/or a telephone number for contacting applicant’s sales representatives lacked sufficient information to be considered a display associated with its goods). Reviewing Tsubaki's specimens of use, the Board agreed with the Examining Attorney:

Applicant's catalogs do not have the characteristics that would make a catalog a point-of-sale display (e.g.. sales forms, ordering information, minimum quantities, cost, payment plans, shipping, etc.). After reviewing applicant’s catalogs, prospective customers are not yet at the point of purchase and would need to contact applicant to obtain additional information. It is only after obtaining such information, which is not provided on the specimens, that the purchaser would be in a position to make a purchasing decision.

The specimens simply do not contain adequate information for making a decision to purchase the goods and placing an order.... The mere listing of telephone numbers for corporate headquarters and a website URL does not turn what is otherwise an ordinary advertisement into a point-of-sale display or a “display used in association with the goods” and, thus, into a valid specimen showing technical trademark use.

Despite the assertions of Tsubaki's attorney, there was no evidence that Tsubaki's industrial chains were typically ordered by telephone following customer review of technical information in the catalogs and consultation with Tsubaki's employees. Compare In re Valenite Inc., 84 USPQ2d 1346, 1348 (TTAB 2007) (appellant submitted the declaration of its director of marketing who testified that appellant’s customers, after reviewing information and selecting a product at Valenite's website,  regularly contact the customer service department by telephone to confirm the correctness of the selection and place an order).

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

Text Copyright John L. Welch 2014.

Precedential No. 7: TTAB Enters Judgment as Sanction For Intransigent Defendant's Failure to Attend Discovery Conference

When Respondent Joseph Azzolini, appearing pro se, failed to attend the mandatory Rule 2.120 discovery conference, the Board issued an order requiring him to show cause why judgment should not be entered against him as a sanction. Finding Azzolini's arguments and explanations unconvincing, and in view of the "continuing nature of respondent’s violations despite multiple prior admonitions," the Board concluded that any sanction short of judgment would be futile and unfair to the petitioner. Patagonia, Inc. v. Joseph Azzolini, 109 USPQ2d 1859 (TTAB 2014) [precedential].

On June 28, 2012, Petitioner Patagonia filed a petition for cancellation of Azzolini's registration for the mark EL CAP for various clothing items. Azzolini diddled and daddled, ignoring several Board orders that attempted to move the proceeding forward. Not until February 24, 2013 did Azzolini file his answer, and failed to serve it on petitioner until a month later.

The Board set May 24, 2013 as the deadline for the discovery conference. Patagonia requested that a Board interlocutory attorney participate in the conference. Azzolini agreed by email to "May 24th Thursday" at at 11 AM the time and date of the conference. However, May 24th was a Friday. The interlocutory attorney tried unsuccessfully to reach Azzolini, while Petitioner's counsel made himself available both at 11 AM on Thursday and all day on Friday. Azzolini never called.

One week later, Azzolini informed the Board that he had traveled to the Poconos for the Memorial Day weekend, and his phone lost any connection. When he came home, he realized he had left his phone in the Poconos.

In light of Azzolini's history of ignoring Board orders and "making this case more difficult than necessary," the Board on June 20, 2013, issued a notice of default and an order to show cause why judgment should not be entered against him for failure to participate in the discovery conference. In response, Azzolini lamely pointed to his Memorial Day trip, and he took exception to the interlocutory attorney's "sua sponte" issuance of the show cause order.

The Board pointed out that it is the responsibility of both parties to ensure that a discovery conference takes place by the appointed deadline. Here, Petitioner and the Board "bent over backwards" to provide Azzolini with multiple opportunities to comply with the Rules. Azzolini, on the other hand, "on those occasions when he has bothered to offer any explanation - has offered a series of mostly unsupported excuses which, to put it mildly, strain credulity." The Board's patience had been exhausted.

The issuance of the show cause order was appropriate under Trademark Rule 2.120(g)(1), which states that the Board may make "any appropriate order, including those provided in Rule 37(b)(2) of the Federal Rules of Civil Procedure." The Board is not required to first issue a order compelling attendance at the discovery conference. Azzolini had ample notice and an opportunity to be heard on the sanction issue.

The Board concluded that in view of Azzolini's failure to participate in the discovery conference, and in view of the continuing nature of his violations despite multiple admonitions, "any sanction order short of judgment would be futile and unfair to petitioner, which brought this case well over a year ago and has been unable, despite diligent efforts, to move it forward, due to respondent's intransigence."

In short, Azzolini failed to show good cause as to why the sanction of judgment should not be entered. The Board therefore granted the petition for cancellation.

Read comments and post your comment here.

TTABlog note: Yes! The lesson here: don't be an Azzolini when dealing with the Board.

Text Copyright John L. Welch 2014.

Ninth Circuit Rules That Cancellation Is Not An Independent Cause of Action

The U.S. Court of Appeal for the Ninth Circuit has ruled that Section 37 of the Lanham Act does not provide an independent cause of action for cancellation of a trademark registration. Cancellation may be sought in federal court only "if there is already an ongoing action that involves a registered mark." Air Aromatics, LLC v. Victoria's Secret Stores Brand Management, Inc., Appeal No. 12-55276 (9th Cir. February 28, 2014).

In 1991, a company called Airs International entered into a consent-to-use agreement allowing Victoria's Secret to use the mark DREAM ANGELS in connection with various personal care products. In 2008, Victoria's Secret stopped making payments under the agreement when Airs International became involved in a dispute over its ownership of the mark. In 2011 the owner of Airs International attempt to transfer rights in the mark to a new company, Air Aromatics, which new company filed a complaint against Victoria's Secret for breach of contract, and sought cancellation of eight registrations that that Victoria's Secret had obtained for the mark DREAM ANGELS .

The district court dismissed the complaint, finding that Air Aromatics lacked standing for the cancellation claim because it had failed to adequately plead its continued usage of the DREAM ANGELS mark, and it also dismissed the breach of contract claim because there was no breach. Air Aromatics appealed only from the dismissal of the cancellation claim.

The appellate court held that the cancellation claim would not "provide an independent basis for subject-matter jurisdiction on remand standing alone."

Section 37 of the Lanham Act gives a district court power to order cancellation of a trademark registration "in any action involving a registered mark." This plain language specifies that cancellation may be sought only if "there is already an ongoing action that involves a registered mark: it does not indicate that a cancellation claim is available as an independent cause of action." The court noted that each circuit that has addressed this question has held that the statutory language "creates a remedy for trademark infringement rather than an independent cause of action."

And so the court affirmed the dismissal of the cancellation claim.

Read comments and post your comment here.

Text Copyright John L. Welch 2014.

CAFC Hears Oral Argument in Appeal From "STOP THE ISLAMISATION OF AMERICA" Disparagement Refusal

The CAFC heard oral argument [mp3 here] on Tuesday in the appeal from the Board's affirmance of a Section 2(a) refusal to register the mark STOP THE ISLAMISATION OF AMERICA for "providing information regarding understanding and preventing terrorism." The Board found the mark to be disparaging to a substantial composite of Muslims in the United States. In re Pamela Geller, Serial No. 77940879 (February 7, 2013) [not precedential]. [TTABlogged here].


Read comments and post your comment here.

TTABlog comment: Based on the argument, I predict an affirmance.

Text Copyright John L. Welch 2014.

TTAB Rejects "CRAZY HORSE" Opposition, Finding No Likelihood of Confusion and No Fame for Dilution

In 53-page opinion, the Board dismissed an opposition brought by The Crazy Horse Memorial Foundation to registration of the mark CRAZY HORSE for online adult entertainment services, finding that opposer had failed to prove a likelihood of confusion with its monument-related goods and services, and failed to prove the required fame to support its dilution-by-tarnishment claim. The Crazy Horse Memorial Foundation v. Frank B. Spencer, Opposition No. 91204980 (February 26, 2014) [not precedential].

Morehouse Defense: The Board first considered and rejected (as usual) Applicant Spencer's prior registrations defense (a/k/a Morehouse defense). According to that defense, a plaintiff cannot be harmed by registration of a mark if the defendant already owns a registration for the same or a substantially identical mark for the same or substantially the same good/services. Spencer owns a registration for CRAZY HORSE for "entertainment services, namely, exotic dance performances." Not close enough, said the Board,since the opposed application includes online services, namely, "providing a website featuring pictures and information in the field of exotic dancing ..." Although these additional services may be related to the exotic dance performances of the registration, they are not substantially the same, and therefore the Morehouse defense was inapplicable.

Fame: The Board next turned to the issue of fame, because fame, if established, plays a dominant role in the likelihood of confusion analysis. Clear proof is required to establish fame, but Opposer's proofs fell short. Although it has used the mark CRAZY HORSE since 1949, and more than 1.3 million people annually visit the Crazy Horse Monument Complex, it submitted sales and advertising figures only for the year 2012, and those were not comparable in size to the "numbers upon which fame has been found in prior cases." The evidence was insufficient to allow the Board to assess the degree of exposure of the mark and any resulting recognition by relevant purchasers.

The Board had little doubt about the historical renown of the Lakota leader, Crazy Horse, but Opposer failed to show that the mark CRAZY HORSE is famous for its goods and services separate and apart from the fame of the individual.

Likelihood of Confusion: The involved marks are identical or virtually identical, and that factor weighed "heavily" in opposer's favor. The crucial issue, then, was the relatedness of the respective goods and services of the parties. Opposer enjoyed prior use of the mark CRAZY HORSE for its services (other than online services), and it claimed that some of the involved services "are identical, such as ... dance performance services."

Opposer relied on dictionary definitions of "adult" and "exotic" (unusual or different) in asserting that "both parties' services are provided to adults" and "both parties' dance performances are exotic." The Board was not persuaded. The terms "adult" and "exotic" in the context of Spencer's "adult entertainment" services refer to services that are "sexual in nature and are intended for adults only, namely ecdysiast displays for others."

The record was "absolutely devoid" of evidence that the consuming public would ever perceive any of opposer's goods or services as emanating from the same source as those recited in the opposed application. This dissimilarity weighed heavily in applicant Spencer's favor.

The Board found the factors of third-party use and registration, sophistication of customers, and lack of actual confusion to be neutral.

The Board concluded that, in this case, "confusion amounts to only a speculative, theoretical possibility, rather than a likelihood." On balance, the relevant du Pont factors favor a conclusion of no likelihood of confusion.

Simply put, consumers are not likely to confuse the source or origin of opposer's goods and/or services related to its monument complex, even its historical or cultural dancing performances, with applicant's adult entertainment services, whether online services or exotic dancing performances, even when offered under identical marks.

Dilution by Tarnishment: Applicant's evidence of fame for likelihood of confusion purposes was insufficient, and so it was perforce insufficient to meet the higher fame standard applicable in the dilution context.

And so the Board dismissed both claims.

Read comments and post your comment here.

TTABlog note:  Thoughts?

Text Copyright John L. Welch 2014.

Precedential No. 6: TTAB Finds PRETZEL CRISPS Generic for Pretzel Crackers

In this consolidated opposition and cancellation proceeding, the Board found the designation PRETZEL CRISPS to be generic for "pretzel crackers" [PRETZEL disclaimed]. In reaching its decision, the Board gave controlling weight to dictionary definitions of the constituent words, evidence of use by the public, including use by the media and by third-parties in the food industry, and applicant Princeton Vanguard's own use of the term. Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, Opposition No. 91195552 and Cancellation No. 92053001 (February 28, 2014) [precedential].


There was no dispute that the genus of goods was adequately defined by the identification of goods in Princeton Vanguard's opposed application and challenged (Supplemental) registration: namely, "pretzel crackers." The relevant consuming is public comprised ordinary consumers who purchase and eat pretzel crackers. The question, then, was whether the relevant public understands the term "pretzel crisps" to refer primarily to the genus of goods.

The Board noted that "in cases where the proposed mark is a compound term (in other words a combination of two or more terms in ordinary grammatical construction), genericness may be established with evidence of the meaning of the constituent words." If the terms "remain as generic in the compound as individually, ... the compound is itself generic." (quoting In re Gould). However, if the proposed mark is a phrase (like SOCIETY FOR REPRODUCTIVE MEDICINE), the Board cannot rely merely on definitions and generic uses of the constituent terms. It must conduct and inquiry into "the meaning of the disputed phrase as a whole." (quoting In re Dial-A-Mattress, citing In re American Fertility).

The Board found that when "pretzel" and "crisps" are combined, no additional meaning results, and therefore the purported mark PRETZEL CRISPS may be analyzed via its constituent terms, in accordance with In re Gould, using "the ordinary grammatical construction."

There was no question that "pretzel" is generic for pretzel snacks, including pretzel crackers. As to the term "crisps," Frito-Lay submitted evidence of use of the word "crisps" by competitors to identify "crackers," of use of the word "crisps" in the media to identify "crackers," and of Princeton Vanguard's use of "crisps" to refer to its own "pretzel crackers" on its packaging. The Board also noted Frito-Lay's evidence of use of the combined term "pretzel crisps" by third-parties.

Each party submitted the results of a "Teflon" survey, but the Board accorded them little significance in its decision. Frito-Lay's survey (finding that 41% of respondents perceived PRETZEL CRISPS as a generic term and the same number as a brand name, 18% being undecided) was given little probative weight because the survey expert did not conduct a "mini-test," as recommended by Professor McCarthy, to make sure that his survey respondents understood the difference between a brand name and a common (or category) name. Princeton Vanguard's survey results indicated that 55% of respondents thought PRETZEL CRISPS was a brand name, and 36% thought it a common name.

The Board found that PRETZEL CRISPS, as used by Princeton Vanguard, would be understood by the relevant public to refer to "pretzel crackers." In making that determination, the Board considered the entirety of the record "including the surveys (which in any event arrive at different conclusions)," but it gave "controlling weight to the dictionary definitions, evidence of use by the public, including use by the media and by third-parties in the food industry, and evidence of use by defendant itself."

Finally, the Board pointed out that, even if it had analyzed PRETZEL CRISPS as a phrase, its conclusion would be the same, "as the words strung together as a unified phrase also create a meaning that we find to be understood by the relevant public as generic for 'pretzel crackers.'"

And so the Board granted Frito-Lay's petition for cancellation of defendant's Supplemental Registration, and it sustained the opposition to defendant's pending application.

Read comments and post your comment here.

TTABlog note:  I'm hoping this case goes up on appeal to the CAFC, so that the appellate court can get rid of the compound word/phrase dichotomy that now confuses the Board's genericness determinations. The Board has seemingly been ignoring that dichotomy with increasing frequency by declaring that two-word phrases are actually "compound words."

By the way, I tried out Frito-Lay's "Teflon" survey at my firm. Of the twenty respondents, 9 thought it was a brand name, 7 thought it to be a category name, and 4 were not sure.

Text Copyright John L. Welch 2014.

The Trademark Reporter's "Annual Review of U.S. Trademark Cases"

The Trademark Reporter has published its Annual Review of U.S. Trademark Cases: "The Sixty-Sixth Year of Administration of the U.S. Trademark (Lanham) Act of 1946," by Theodore H. Davis, Jr. and yours truly, John L. Welch. (pdf here).

Ted Davis observes in his Introduction that the Supreme Court has taken an uncharacteristic interest in the Lanham Act of late, with three cases now on its docket: one currently under advisement (Static Control v. Lexmark), a certiorari petition granted in another (Pom Wonderful v. Coca-Cola), and an invitation to the Solicitor General to provide his views on whether the Court should issue a writ of certirorari in a third (B&B Hardware v. Hargis). Of course, that's just the tip of the iceberg in Ted's comprehensive review of trademark law in the courts.

Back at the TTAB, with its narrow focus on registrability, the issue of fraud remained essentially dormant, while dilution and lack-of-bona-fide-intent receded into the background as well. Non-traditional trademarks took center stage, as trademark practitioners continued to probe the outer limits of registrability. In these and other cases, the Board kept a close eye on whether a purported mark actually functions as a trademark.

TTABlog note: Thanks again to The Trademark Reporter for granting permission to provide a link to this issue, which is Copyright © 2014 the International Trademark Association and reprinted with the permission of The Trademark Reporter®, 104 TMR 1 (January-February 2014).

Text Copyright John L. Welch 2014.

TTAB Posts March 2014 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled 6 (six) oral hearings for the month of March, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. 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.

March 5, 2014 - 11 AM: 1047406 Ontario Ltd. and Purifics ES, Inc. v. UVCleaning Systems, Inc. dba Puralytics Corporation, Opposition No. 91194706 [Opposition to registration of the mark PURALYTICS for "waste water purification units; water purification and filtration apparatus; water purification units" on the ground of likelihood of confusion with the mark PURIFICS registered for "environmental remediation services, namely, soil, waste and water treatment services and air purification services" and also used for water purification goods].

March 6, 2014 - 11 AM: Multi Access Limited v. Wang Lao Ji Food & Beverage subsidiary, Yangcheng Pharmaceutical Stock Corp. Ltd of Guangzhou, Cancellation No. 92054959 [Petition to cancel a registration for the mark shown below [transliteration: WANG LAO JI] for "processed tea leaves packaged in bags," on the ground of fraud in that a Section 8 Declaration of Use for said registration was fraudulently signed by one Kevin Whang as "Owner" of the mark when he was neither owner of the mark or authorized to practice before the USPTO].

March 18, 2014 - 2 PM: Anheuser-Busch Incorporated v. Innvopak Systems PTY LTD, Opposition No. 91194148 [Opposition to registration of the mark WINEBUD for "alcoholic beverages except beers; wines and still wines and sparkling wines; beverages containing wine, namely, sparkling fruit wine and still fruit wine; ready to drink alcoholic beverages except beers," on the grounds of likelihood of confusion with, and likely dilution of, the registered marks BUD, BUDWEISER and others for beer].

March 19, 2014 - 10 AM: In re LAMB-GRS LLC, Serial No. 77756492 [Section 2(a) refusal to register the mark L.A.M.B. for various clothing items on the ground of deceptiveness].

March 19, 2014 - 2 PM: In re Somerset Soup Works, Inc., Serial No. 85034559 [Appeal from  refusal of  SOUP SINGLES for frozen soups on the grounds of Section 2(e)(1) mere descriptiveness (including insufficiency of Section 2(f) evidence of acquired distinctiveness) and failure to disclaim "SOUP"].

March 20, 2014 - 2 PM: In re Nieves & Nieves LLC, Serial No. 85179243 [Two refusals to register PRINCESS KATE for jewelry, bedding, wallets, handbags, and the like, and clothing, on the grounds that (1) under Section 2(a) because the mark may falsely suggest a connection with Catherine, Duchess of Cambridge, the wife of Prince William of England, and (2) under Section 2(c) because the mark consists of or includes a name, portrait, or signature identifying a particular living individual whose written consent to register the mark is not of record].

Read comments and post your comment here.

TTABlog comment: Any predictions? Any WYHAs?

Text Copyright John L. Welch 2014.

Lack of Bona Fide Intent Dooms Two "FUTURE" Applications, Says TTAB

The Board sustained these two oppositions to registration of the mark FUTURE, in standard character and stylized forms, for various services in classes 35 and 36, finding that applicant Kent G. Anderson lacked a bona fide intention to use the mark with the services as of the filing date of the applications. The class 36 services related to banking and finance, while the class 35 recitation encompassed services ranging from shopping malls and aircraft dealerships to talent agencies and dog breeding. Lincoln National Corporation v. Kent G. Anderson, Opposition Nos. 91192939 and 91194817 (February 21, 2014) [not precedential].

In its 46-page decision, the Board concluded that Anderson was "merely attempting to reserve a general right in his FUTURE mark when he filed his intent-to-use applications." His "idealistic hopes for forming a futuristic company" (described at his website and in his testimony), did not suffice to establish a bona fide intention to use the mark.

The legislative history of Section 1(b) provided support for the Board's finding. It provides as an example of objective evidence that may cast doubt on an applicant's bona fides, the filing of "an excessive number of intent-to-use applications in relation to the number of products the applicant is likely to introduce." Although Anderson filed for many classes in a each of the two applications here opposed, rather than filing a multiplicity of applications, the same reasoning applied: the sheer number of classes and their diverse scope led the Board to find it "highly unlikely" that Anderson would be able to introduce the class 35 and 36 services during the pendency of his applications.

There was no record evidence to show that Anderson ever had the capacity to provide any of the services in class 35 and class 36. He admitted same, testifying that if he had the resources and knowledge, he would provide the services. His efforts and activities regarding implementation of his plans for the FUTURE mark were too non-specific to support a finding of a bona fide intent.

And so the Board sustained the oppositions on the ground of lack of bona fide intent. The Board also sustained the oppositions, in part, on a Section 2(d) ground, which we will not discuss here.

With regard to the two opposed applications, nine classes remain in one and seven in the other.

Read comments and post your comment here.

TTABlog note:  Mr. Anderson has appeared twice before at this blog. In 2009, the Board affirmed a refusal based upon his failure to comply with a Rule 2.61 request for additional specimens for his mark TOMORROW, in classes 1 and 3 goods, because of the wide range of unrelated articles listed in his application. [TTABlogged here]. And in 2012, the Board applied collateral estoppel against Mr. Anderson and certain applications to register the FUTURE mark, based upon prior inter partes rulings against him. [TTABlogged here].

Text Copyright John L. Welch 2014.

TTAB Affirms Refusal of "4D" as Merely Descriptive or Deceptively Misdescriptive of Amusement Park Attraction

The Board affirmed the PTO's alternative refusals of the mark 4D for "entertainment services in the nature of an amusement park attraction, namely, a themed area featuring mirror labyrinths with rotating mirrors therein," finding the mark either merely descriptive or deceptively misdescriptive of the services under Section 2(e)(1). Applicant Amazing Mazes argued that, in common parlance, "4D" refers to special effects such as moving seats, water mists, or scents. But the Board found the meaning of the term to be not so limited, and if it were, then it misdescribes applicant's services. In re Amazing Mazes LLC, Serial No. 85122528 (February 25, 2014) [not precedential].

Mere Descriptiveness: Examining Attorney Ramona Ortega Palmer submitted evidence that the term "4D" in the entertainment industry means that an attraction includes special effects which, the Board found, would include "rotating mirrors" or special lighting. Particularly probative was applicant's use of the term in a descriptive sense in its own advertising: "One of San Antonio's newest attractions, Ultimate Mirror Maze will have you seeing double in an amusing 4D moving mirror maze experience." Moreover, applicant's specimen of use (depicted above) also serves to emphasize the descriptive nature of "4D."

The Board concluded that, when considered in the context of applicant's services, the term "4D" would be perceived by consumers as identifying or describing the special effects of rotating mirrors and lighting. Competitors in the field should be able to use the term "4D" when describing their own mirror maze or labyrinth.

Deceptive Misdescriptiveness:  Assuming for the sake of argument that the term "4D," as suggested by applicant, is perceived to refer to such special effects as water sprays, odors, shaking or sound and does not encompass rotating mirrors or special effects lighting, then the term misdescribes applicant's services because potential customers would expect such special effects.

Would consumers believe the misrepresentation to be true? Applicant argued that consumers would not because they would not expect special water or movement effects in an enclosed maze environment. The Board pointed out, however, that "4D" also includes odor, sound, or wind effects, which might be found in a maze. Consumers are therefore likely to believe that applicant's services would include some type of "4D" special effects typical of other "4D" amusement park attractions but absent from applicant's maze.

Therefore, since both prongs of Section 2(e)(1) had been satisfied vis-a-vis this refusal, the Board affirmed it as well.


Read comments and post your comment here.

TTABlog note:  If the misdescription were material to the purchasing decision, the term might also be refused as deceptive for the services under Section 2(a). The Examining Attorney did not make that refusal.

Text Copyright John L. Welch 2014.

Test Your TTAB Judge-Ability: Are These Two "WELLS" Logos Confusable for Frozen Confections?

Margverz, Inc. sought to register the mark shown below, left for frozen confections (among other things) [FRUIT CANDY disclaimed], but Examining Attorney Paul Moreno refused registration under Section 2(d), deeming the mark likely to cause confusion with the mark shown below, right for "frozen confections" [FAMILY COMPANY and SINCE 1913 disclaimed]. Applicant appealed. What did the TTAB decide? In re Magverz, Inc., Serial No. 85614128 (February 21, 2014) [not precedential].

Because the involved goods are, in part, identical, the Board must presume that these identical goods travel in the same channels of trade to the same classes of consumers. Magverz lamely argued that the goods are different because it uses its mark exclusively with sugar-free mints and confectionery products that are "vitamin enhanced," whereas the cited mark is used with frozen confections sold under the BLUE BUNNY BRAND. Irrelevant, said the Board. Its determination must be made based upon the goods identified in the application and cited registration, regardless of how the marks are actually used.

Next, Magverz feebly argued that WELLS is a weak term, citing eleven registered marks: SIMPLY WELL, WELLMADE, WELLABY'S, OPTIWELL, WELLTHY CHOCOLATES, MEDWELL FOODS, WEL CREAM DESSERTS, TEACH THEM WELL, SOY WELL, EAT WELL BE WELL, and OATWELL. The Board found two major problems with this evidence: (1) there was no proof as to whether these marks are in use or whether the public is familiar with them; and (2) none of the marks are as similar to the registered marks as is the applied-for mark. In fact, the commercial impression of each of the involved marks is the surname "Wells." The Board concluded that the strength of the registered mark is a factor favoring a finding of likely confusion.

Comparing the marks, the Board noted that when the goods are (in part) identical, a lesser degree of similarity between the marks is necessary to support a Section 2(d) refusal. Here, the board found, not surprisingly, that the word WELLS is the dominant portion of each of the marks. The other words in the marks are descriptive with little trademark significance, or generic. The design elements (primarily a round carrier and an oval carrier) merely serve as background designs for the word WELLS, which word projects the primary significance of each mark.

Magverz asserted that its mark has a "modern, cooler appearance," in contrast to the nostalgic look of the cited mark. However, the Board observed, customers for registrant's goods may view the applied-for mark as an update of the registrant's mark for its "Fruit Candy" line of products.

In sum, the Board found the marks to be similar in appearance, sound, connotation, and commercial impression. Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  Wells, how did you do? Do you think this is a WYHA? Why wasn't the article "A" disclaimed?

Text Copyright John L. Welch 2014.