Test Your TTAB Judge-Ability: Must NATURALLY be Disclaimed in NATURALLY POWERED for All-Natural Beverages?

The PTO refused registration of the mark NATURALLY POWERED for "all-natural coconut-based beverages," because Applicant Zico refused to disclaim the word NATURALLY. The Examining Attorney insisted that NATURALLY is merely descriptive of the goods, and must be disclaimed under Section 6(a) of the Act. Zico argued that NATURALLY POWERED is a unitary expression and a double entendre. How do you think this came out? In re Zico Beverage LLC, Serial No. 85284093 (May 9, 2013) [not precedential].

The Examining Attorney relied on dictionary definitions of "naturally" in maintaining that the word conveys to consumers that Applicant's beverages do not contain synthetics, chemicals, preservatives, artificial ingredients, and other non-natural substances.

The Board, however, agreed with Zico that NATURALLY POWERED is a unitary expression. "A unitary mark is a mark with multiple elements that creates a single and distinct commercial impression separate and apart from the meaning of its constituent terms." The Board concluded that "the term NATURALLY in applicant's NATURALLY POWERED mark clearly modifies the term POWERED to create a unitary phrase that only suggests a feature of applicant's goods."

Moreover, the Board agreed that NATURALLY POWERED is a double entendre: on the one hand, it connotes goods that are powered by forces of nature, and on the other, goods that are powered in a natural manner, without special intervention. Thus consumers will view NATURALLY POWERED as having several connotations.

And so the Board reversed the refusal.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.

WYHA? TTAB Affirms Mere Descriptiveness Refusal of PADPIVOT for Pad Computer Stands

Examining Attorney Alice Benmaman issued a Section 2(e)(1) refusal of the mark PADPIVOT, deeming it merely descriptive of a "[s]tand specially adapted for holding tablet computers, PC tablets, pad computers, digital book readers and electronic book readers." She relied on dictionary definitions of "pad" and "pivot," and on a photograph of Applicant's goods taken from his website (shown below). Would you have appealed? In re Bernie Graham Application No. 85255894 (May 10, 2013) [not precedential].

The Examining Attorney concluded that the combination of "pad" and "pivot" is descriptive of a "stand specially adapted for holding ... pad computers...."

Applicant argued that because a certain retailer required a label change to add the phrase "portable table stand," the subject mark was not sufficient "to describe the nature of the device so as to entice sales." He asserted that "[r]easonable consumers without knowledge of the PADPIVOT mark and goods were unable to understand what the goods were with the PADPIVOT mark applied directly thereto without additional language that would qualify as “merely descriptive”'to provide such information to consumer."

The Board disagreed. First, the retailer did not say that consumers were unable to understand "what the goods were," but only that it wanted to emphasize that the goods function as a stand. Secondly, the determination of descriptiveness is not madde in a vacuum, but in relation to the goods in question. Moreover, whether a mark will "entice sales" is wholly irrelevant to the issue at hand.

Applicant next argued that various dictionaries do not include a definition of "pad" that applies to his product. However, Applicant refers to a "pad computer" in its identification of goods, and the Examining Attorney supplied a pertinent definition from an on-line dictionary. The picture from Applicant's website shows a ball-and-socket joint that would allow a pad computer to "pivot."

Finally, the concatenation of "pad" and "pivot" provides no new meaning to the two words.

And so the Board affirmed the refusal.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Are ROUGH COUNTRY and WILD COUNTRY Confusable for Tires?

TBC Trademarks, LLC, owner of the registered mark WILD COUNTRY for tires, opposed Heckethorn Products' application to register ROUGH COUNTRY for "tires for off road vehicles and trucks," claiming a likelihood of confusion under Section 2(d). The goods obviously overlap, but what about the marks? How do you think this came out? TBC Trademarks, LLC v. Heckethorn Products, Inc., Opposition No. 91179460 (May 2, 2013) [not precedential].

The Board noted that, in comparing marks for identical goods, "it is proper to consider their appearance, sound and meaning. *** But a combination of all three factors need not necessarily exist, and an opposition to registration may be sustained if the marks are identical or so similar in meaning that confusion as to source is deemed likely."

Here, the Board found, the marks engender the same commercial impression: "uninhabited, unpopulated, rugged country."

Applicant Heckethorn contended that many other off road tire companies try to project the same connotation, and it pointed to eight third-party registrations for marks that include the word "Country" for tires, including ALL COUNTRY, OPEN COUNTRY, and HIGH COUNTRY. Moreover, Applicant sells DICK CEPEK MUD COUNTRY tires and FUN COUNTRY tires. Applicant's President, Michael Heckethorn, testified that he saw all eight marks in use on the Internet.

DICK CEPEK
The Board pointed out, however, that third-party registrations are not evidence of what actually happens in the marketplace, or of the public's familiarity with the marks. For the same reason, the testimony of Applicant's President is not very probative on those issues. Moreover, Applicant did not submit the Internet pages about which its President testified.

Finally, the Board noted that Opposer began using the WILD COUNTRY mark in 1977 and its evidence showed significant sales. Applicant, as the newcomer, had a "heavy burden" to avoid consumer confusion.

Based upon the identity of the goods, the presumptive identity of channels of trade and classes of customers, the market strength of the WILD COUNTRY mark, and the similarities in connotation and commercial impression of the marks at issue, the Board found confusion likely, noting that any doubt must be resolved in favor of Opposer.

And so the Board sustained the opposition.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.

TTAB Affirms Genericness Refusal of POMEGRANATEA for Tea-Based Beverages

Argo Tea sought to register POMEGRANATEA as a trademark for "tea-based beverages," but Examining Attorney Michael P. Keating refused registration on the ground of genericness. The Board agreed with the PTO, finding the applied-for term to be generic for "pomegranate-flavored tea," a sub-set of the identified goods. In re Argo Tea, Inc., Serial No. 85011197 (May 9, 2013)[not precedential].

The PTO must establish genericness by "clear evidence," the key issue being whether the relevant public primarily uses or understands the applied-for term to refer to the category or class of goods at issue. Here the "broad genus" in question is tea-based beverages, and the relevant public comprises ordinary consumers who purchase and drink tea.

The Board first found that POMEGRANATEA is the equivalent of "Pomegranate Tea" because the individual words retain their ordinary meaning when compounded. Dictionary definitions, Argo's website, and third-party Internet evidence convinced the Board that POMEGRANATEA, as used by Argo, identifies a type or category of tea-based beverage.

The extensive third-party use makes clear that “Pomegranate Tea” is widely used to refer to pomegranate flavored tea. In short, POMEGRANATEA is the name of a category of tea. Because the term POMEGRANATEA directly names the most important or central aspect of applicant’s tea, that is, that the tea is pomegranate flavored, POMEGRANATEA is generic. And because POMEGRANATEA describes a category of tea-based beverages, it should be freely available for use by competitors.

A term is generic if it refers to narrower category of goods encompassed by the broader identification of goods. See, e.g., In re Central Sprinkler Co., 49 USPQ2d 1194, 1197 (TTAB 1998) (ATTIC for “automatic sprinklers for fire protection ” falls within the narrower category of sprinklers for fire protection of attics). Here, "Pomegranate Tea" is a generic term for pomegranate-flavored tea, which is a sub-category of tea-based beverages.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability on this Trademark Specimen of Use

Manchester Cigarette applied to register the mark MANCHESTER SUUM CUIQUE PLACET, in standard character form, for cigarettes and related goods. Its specimen of use is pictured below. Examining Attorney Khanh M. Lee refused registration on the ground that the mark is not a substantially exact representation of the mark as used on the goods, as required by Rule 2.51(b). What say you? In re Manchester Cigarette Tobacco Limited, Serial No. 85260060 (May 3, 2013) [not precedential].

The Examining Attorney maintained that the word MANCHESTER and the phrase SUUM CUIQUE PLACET create two separate commercial impressions rather than a unitary commercial impression. Applicant argued that MANCHESTER and SUUM CUIQUE PLACET form a unitary commercial impression because "they are typed words appearing on a uniform red background thereby tying the words together."

The Board agreed with the Examining Attorney: "The separate and distinct manner of presentation of these elements creates separate commercial impressions for MANCHESTER and SUUM CUIQUE PLACET in contrast to the unitary phrase applicant seeks to register in unitary form."

And so the Board affirmed the refusal.

TTABlog comment: WYHA?

Text Copyright John L. Welch 2013.

Who are These People?

Hint: Photo taken at INTA13 in Dallas.

Five Hosts of MEET THE BLOGGERS IX

Can you name them? Don't be a wise guy: I mean their real names!

CAFC Hears Oral Arguments in Houston and District of Columbia Section 2(b) Appeals

On May 8, 2013, the U.S. Court of Appeals for the Federal Circuit heard oral argument in two Section 2(b) cases. In the first, In re City of Houston, 101 USPQ2d 1534 (TTAB 2012) [precedential], District of Columbia, the Board affirmed a Section 2(b) refusal to register the official seal of the City of Houston for various municipal services. In the second, In re The Government of the District of Columbia, 101 USPQ2d 1588 (TTAB 2012) [precedential], the Board affirmed a refusal to register the official seal of the District of Columbia for various goods, including clocks, cufflinks, memo pads, pens and pencils, cups and mugs, and various clothing items.


Section 2(b) prohibits registration of any mark that "consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof."

The Board's decisions were TTABlogged here. The Houston oral argument is found here. The District of Columbia argument is here.

TTABlog note: Comments by the court during oral argument, such as "the legislation is plain on its face," and "why aren't you on Capitol Hill seeking to change the law?," and "where does the Paris Convention require that the United States register governmental insignia?," suggest that these two appellants are not likely to succeed on their respective appeals.

It would not be surprising if the CAFC affirmed the Board's decisions under the court's Rule 36.

Text Copyright John L. Welch 2013.

Anthony L. Fletcher: "Separating Descriptive Sheep From Generic Goats"

I always enjoy reading Tony Fletcher's articles in the Trademark Reporter, both for his wisdom and his humor. Here he probes the genericness/descriptiveness dichotomy, concluding that, "[q]uite simply, the problem is that it is impossible to foresee with tolerable accuracy where courts, or the USPTO, will draw the line between generic names and descriptive terms." Anthony L. Fletcher, "Separating Descriptive Sheep From Generic Goats," 103 TMR 487 (2013).

Anthony L. Fletcher
Why is this issue important?

[I]t is critical to understand the “generic”– “descriptive” dichotomy for trademark management and planning purposes. Promoting a name that can never become a trademark as if that name were a trademark is an exercise in futility. While promoting a generic name as a trademark might result in a degree of trademark recognition by the public, when that begins to happen, competitors can step in and, with impunity, appropriate to themselves and/or their products whatever degree of de facto trademark meaning might have been created.

TTABlog note: Thanks again to The Trademark Reporter for granting permission to provide a link to this article issue, which is Copyright © 2013 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 103 TMR 487 (March-April 2013).

Ted Davis: Annual Review of U.S. Federal and State Case Law

Here is a link to Ted Davis's article for the 2013 INTA Annual Meeting, entitled "Annual Review of U.S. Federal and State Case Law." Thank you, Ted, for permitting me to post this link.

Ted Davis
[NOTE: E-mail subscribers must surf to the blog in order to download the pdf].

INTA Outline: 2012-2013 Decisions of the Trademark Trial and Appeal Board and the Federal Circuit on Registrability Issues

Here is a link to my outline for the 2013 INTA Annual Meeting, entitled "2012-2013 Decisions of the Trademark Trial and Appeal Board and the Federal Circuit on Registrability Issues." This outline covers decisions issued from January 2012 through February 2013.

TTAB Affirms Refusal of Clear Cube Package for Parlor Games as Not Inherently Distinctive

Ruby Mine, Inc. applied to register as a trademark its clear plastic cube packaging for "parlor games," but Examining Attorney Edward Fennessy refused registrations on several grounds, including failure to function as a trademark. Applicant did not claim acquired distinctiveness, so the question became whether the packaging was inherently distinctive. The Board agreed with the Examining Attorney and affirmed the refusal. In re Ruby Mine, Inc., Serial No. 85287700 (April 16, 2013) [not precedential].

The alleged mark was described as a "two-piece, clear plastic, hollow cube having ... walls sufficiently thick to produce an aesthetic prismatic effect at the wall ends as a function of ambient light conditions." The Board applied the CCPA's Seabrook test to determine whether the proposed packaging configuration was inherently distinctive.

Under Seabrook, the Board considers whether the configuration is (1) a common basic shape or design; (2) unique or unusual in a particular field: (3) a mere refinement of a commonly adopted and well known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; or (4) capable of creating a commercial impression distinct from the accompanying words.

The Examining Attorney relied on cube-shaped parlor games (including some of clear plastic, just like that of Applicant), clear plastic card holders (some cubic, not necessarily for games), cube-shape plastic display cases (for golf balls and baseballs), and general cubic packaging, all to show that Ruby Mine's packaging comprised a common design and/or a mere refinement of a well-known form of trade dress for the goods.

The Board was convinced that "a cube shape is a common shape for packaging of games and is a mere refinement on the ubiquitous, rectangular, box-shaped packaging." It found that the described aspects of the applied-for mark are mere refinements of common attributes of parlor games.

Moreover, the "aesthetic prismatic effect" of Ruby Mine's packaging was merely incidental to the use of transparent plastic and is not likely to create its own commercial impression. In fact, in its brief, Applicant admitted that this effect is "an unavoidable effect of the overall design" under certain light conditions.

Ruby Mine submitted a declaration from its President and founder, stating that he had never seen any packaging for game cards that was even remotely similar to the subject cube-shape package. The Board observed that, even accepting those assertions, they dud not overcome the evidence submitted by the PTO.

The Board therefore affirmed the refusal to register.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.