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 TBC Trademarks, LLC v. Heckethorn Products, Inc., Opposition No. 91179460 (May 2, 2013) [not precedential].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.

TTAB Dismisses 2(d) Opposition: TAMAYA Not Confusable With MAYA, Both For Wine

Finding that the dissimilarity of the marks and their different commercial impressions outweighed the other relevant duPont factors, the Board dismissed this opposition to registration of the mark TAMAYA for wines. Opposer Oakville Hills claimed likely confusion with its registered mark MAYA for wine, but failed to prove its claim by a preponderance of the evidence. Oakville Hills Cellar, Inc. dba Dalla Valle Vineyards v. Vina Casa Tamaya S.A., Opposition No. 91189443 (April 15, 2013) [not precedential].

The Marks: Although Applicant Vina Casa’s mark includes the letters or term MAYA, it comprises three syllables and begins with TA. Therefore the marks at issue look and sound differently. Moreover, the Board noted, it is often the first part of the mark that is “likely to be impressed upon the mind of a purchaser and remembered.”

In addition, the evidence showed that the connotations and overall commercial impressions of the marks are different. The term MAYA has several known meanings in this country: that of a member of the Mayan people and also the name of a girl. In fact, Social Security records show that “Maya” has been in the top 100 for girl’s names for the past ten years. Therefore consumers are likely to perceive the mark MAYA as the popular girl’s name.

Applicant, at its website, explained that TAMAYA means “highest point” in the Diaguita dialect, and also is the name of a hill on Applicant’s property in Chile.

Opposer argued that the Diaguta dialect is obsolete and obscure, and that the doctrine of equivalents should not be applied to translate the word TAMAYA. The Board agreed, concluding that American consumers are likely to perceive the mark as a coined term without any meaning.

The Board therefore found that the first duPont factor “weighs heavily" against a finding of likely confusion.

Strength of Opposer’s Mark: Applicant argued that he mark MAYA is diluted and weak. It relied on several third-party registrations for marks containing the word or term MAYA and on Internet website pages offering MAYA wine along with MAYACAMAS wine, MAYACAMAS MOUNTAINS wine, and MAYACAMAS RANGE wine sold by three different companies. The Board, however, found that this relatively limited evidence, balanced against the arbitrariness of the mark MAYA for wine and Opposer’s policing efforts, “does not indicate significant weakness in opposer’s MAYA mark.”

Fame: Opposer claimed that its mark MAYA is famous, but its proofs were woefully inadequate. It relied on a single magazine article, but acknowledged that it never advertised MAYA wine at trade shows or in print publications.

The Goods: Applicant attempted to distinguish the marks by pointing to the requirements of the U.S. Tobacco and Alcohol Bureau (TTB) regarding the labeling and advertising of wine. Under these requirements, Applicant’s wine is labeled as originating in the Limari Valley of Chile, whereas Opposer’s wine originates in the Napa Valley in California.

The Board, however, pointed out that the issue of likelihood of confusion in this proceeding must be determined based on the goods recited in the opposed application and the pleaded registration. There are no limitations as to country of origin, type, or appellation, and therefore the Board must assume that all wines are included and must consider the involved goods to be identical.

Channels of Trade: Similarly, because there are no limitation as to channels of trade in the involved application and registration, the Board must assume that they travel through the same, normal channels of trade.

Conditions of Sale: Although Applicant’s wine sells for $10 to $16 per bottle, and Opposer’s wine for $200 to $559 and more per bottle, there are no corresponding restrictions in the involved application and registration. Consequently, the Board must assume that the products are sold to the same classes of purchasers under the same conditions.

Balancing the Factors: The Board concluded that the first duPont factor, the dissimilarity of the marks and the differences in commercial impression, “are so great as to outweigh the other DuPont factors." And so the Board dismissed the opposition

Read comments and post your comment here.

TTABlog note: Add this one to the TTABlog collection of 2(d) wine decisions, here.

Note all the evidence that was not considered by the Board in this proceeding. Surely that evidence would have been admitted in a trademark infringement suit. So should a TTAB decision on likelihood of confusion have preclusive effect in a civil action? See the last TTABlog post, here.

Text Copyright John L. Welch 2013.

Divided 8th Circuit Panel Says TTAB 2(d) Decision Has No Preclusive Effect in Infringment Suit

B & B Hardware sued Hargis Industries for trademark infringement, claiming that defendant's use of the mark "Sealtite" for "self-drilling and self-taping screws" infringed B&B's mark "Sealtight" for fasteners used in the aerospace industry. The TTAB had sustained B&B's opposition to registration of the "Sealtite" mark on the ground of likelihood of confusion with B&B's mark. The district court rejected B&B's contention that the TTAB decision should be given preclusive effect on the likelihood of confusion issue and the United States Court of Appeals for the Eight Circuit agreed. The panel majority ruled that because the TTAB is not an Article III court, its decision on the issue of likelihood of confusion is not entitled to preclusive effect in a subsequent trademark infringement action between the parties. B & B Hardware, Inc. v. Hargis Industries, Inc., Appeal No. 11-1247 (8th Cir. May 1, 2013).

The appellate court distinguished an earlier 8th Circuit precedent in which a decision of the CCPA (the CAFC's predecessor) was given preclusive effect on the issue of likelihood of confusion, observing that the CCPA was an Article III court at the time. The TTAB is not an Article III court and therefore the appellate court need not follow the earlier decision.

Moreover, even if the TTAB decision were entitled to preclusive effect, that would not be appropriate here because "the same likelihood-of-confusion issues were not decided by the TTAB as those brought in the action before the district court."

The simple fact that the TTAB addressed the concept of “likelihood of confusion” when dealing with Hargis’s attempt to register its mark does not necessarily equate to a determination of “likelihood of confusion” for purposes of trademark infringement. In reaching its determination, the TTAB used only 6 of the 13 factors from In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) .... *** When considering the question of likelihood of confusion for purposes of trademark infringement, in this Circuit, courts apply the six-factor test from SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980). *** Although some of the I.E. DuPont factors are the same or comparable to the SquirtCo factors, "for collateral estoppel to apply, the [TTAB] must have examined the 'entire marketplace context'" as is done in trademark infringement cases.

The TTAB ignored the marketplace usage of the marks and products, and so preclusion is not appropriate here, said the majority. The products were not similarly priced, similarly marketed, or intended to be used in conjunction with or in substitution for one another. And so the district court properly refused to apply preclusion.

The appellate court further ruled that the TTAB decision was not entitled to deference, and that the district court did not abuse its discretion in excluding the evidence of the TTAB decision before the jury. Hargis had argued that this evidence would be too prejudicial.

The dissent would have accorded preclusive effect to the TTAB's decision, in line with a statement by the Supreme Court that "giving preclusive effect to administrative factfinding serves the value underlying general principles of collateral estoppel: enforcing repose."

As to the test applied by the district court, the dissent urged that the modest differences in analytical approach between the TTAB test and the 8th Circuit test do not justify the refusal to apply collateral estoppel. Moreover, the dissenting judge asserted that the TTAB did consider the entire marketplace context.

TTABlog comment: There seems to be a split in the circuits on this issue. Hello, Mr. Court, Mr. Supreme Court, please pick up the white courtesy phone!

Text Copyright John L. Welch 2013.