Friday, September 30, 2016

TTAB Quarterly Index: July-September 2016

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Section 2(a) - Deceptiveness:
Section 2(a) - False Association:
Section 2(d) - Likelihood of Confusion:

Section 2(e)(1) - Mere Descriptiveness:
Section 2(e)(1) - Deceptive Misdescriptivenss:
Section 2(e)(2) - Geographically Descriptive:
Section 2(e)(3) - Geographically Deceptively Misdescriptive:

Section 2(e)(4) - Primarily Merely a Surname:
Section 2(e)(5) - Functionality:
Section 2(f) - Acquired Distinctiveness:
Application Requirements/Lawful Use/Specimen of Use:
Concurrent Use:

Failure to Function:
Unclean Hands:
Recommended Reading:
Text Copyright John L. Welch 2016.

Precedential No. 28: Claim Preclusion Inapplicable To Fraud Claim Due To Different Transactional Facts

The Board entered summary judgment in favor of petitioner on the issue of claim preclusion in this proceeding seeking cancellation of a registration for the mark DANTANNA'S for "steak and seafood restaurant." Respondent contended that petitioner's sole claim, based on the allegedly fraudulent filing of a Section 15 declaration, could have been raised in an earlier cancellation proceeding brought by petitioner and dismissed for failure to prosecute, and therefore the claim was barred in this second proceeding. The Board, however, ruled that the claim of fraud in this proceeding was not based on the same transactional facts as the earlier fraud claim, and therefore was not barred. Chutter, Inc. v. Great Concepts, LLC, Cancellation No. 92061951 (August 30, 2016) [precedential].

The earlier petition for cancellation was based on Section 2(a) false association and on fraud, the latter claim being founded on the allegation that respondent, while prosecuting the underlying application, failed to inform that examining attorney that the mark identified a living individual. That earlier proceeding was suspended pending the outcome of a lawsuit between the parties, and during the suspension respondent filed its combined Section 8 and 15 declaration, stating that there was "no proceeding involving the rights [to register the same or keep the same on the register] pending and not disposed of either in the U.S. Patent and Trademark Office or in the courts."

When the lawsuit ended, the Board sua sponte reviewed the petition for cancellation and found both claims insufficiently pleaded. It allowed petitioner to file an amended petition, but petitioner did not do so, and so the Board dismissed the proceeding with prejudice.

Respondent argued that petitioner is now barred from raising the issue of fraud vis-a-vis the Section 15 declaration because that claim could have been raised in the prior proceeding, but was not.

Under the doctrine of claim preclusion (f/k/a res judicata), a judgment on the merits in a prior suit bars a second suit involving the same parties (or their privies) and based on the same cause of action. "A valid and final judgment rendered in favor of the defendant bars another action by the plaintiff on the same claim and encompasses claims that were raised or could have been raised in the earlier action."

In short, a second suit will be barred by claim preclusion if :  (1) there is identity of the parties (or their privies); (2) there has been an earlier final judgment on the merits of a claim; and (3) the second claim is based on the same set of transactional facts as the first.

Here there was no dispute as the the first and second requirements. As to the third, however, respondent maintained that petitioner could have brought the fraud claim based on respondent's Section 15 filing before the first cancellation proceeding was dismissed.

The Board observed, however, that the "could have been raised" does not refer to any claim whatsoever that was ripe at the time of or during the prior proceeding, but only to "a different cause of action or theory of relief" based on "the same transactional facts" as earlier involved.

The Restatement of Judgments refers to a "common nucleus of operative facts." "[R]elevant factors include whether the facts are so woven together as to constitute a single claim in their relatedness in time, space, origin, or motivation, and whether, taken together, they form a convenient unit for trial purposes." The precedents caution against readily extending claim preclusion to claims that were not before the court, particularly when the prior action was dismissed on procedural grounds.

The Board noted that here the first fraud claim concerned a failure to reveal during ex parte examination of the underlying application, that the mark identified a living individual. In contrast, the second proceeding involves alleged fraud based on a different representation made at a time removed by six years from the ex parte issue involved in the prior proceeding. The earlier claim involved communication with the examining attorney, while the later claim involved communication with the Post Registration Section of the USPTO. "These are very different fact sets, and the transactions are unrelated; the are not "so woven together as to constitute a single claim in there relatedness in time, space, origin, or motivation ...."

Therefore the Board denied respondent's motion for summary judgment and instead entered summary judgment sua sponte in favor of petitioner on the defense of claim preclusion.

Read comments and post your comment here.

TTABlog comment: Query: is the Section 15 declaration material to the validity of the registration? Fraud requires materiality. A Section 8 declaration must be filed, and so is material to the continued viability or maintenance of the registration. But the Section 15 declaration is voluntary.

Section 15 incontestability refers to the exclusive right to use the mark. It has nothing to do with maintenance of the registration, nor is it needed to invoke the Section 14 five-year statute of limitations on cancellation petitions. Can fraud on the USPTO be found where the false statement is not material to the viability or maintenance of the registration? Where is the materiality here?

Text Copyright John L. Welch 2016.

Thursday, September 29, 2016

Precedential No. 27: TTAB Rejects Fraud Claim in QUIRK Cancellation Proceeding

The Board dismissed a petition for cancellation of registrations for the marks QUIRK and QUIRK AUTO PARK for "automobile dealership" because petitioner failed to prove its claim of fraud on the USPTO. Petitioner asserted that respondent's underlying applications were executed fraudulently because respondent knew of and failed to disclose petitioner's allegedly prior rights in the marks QUIRK and QUIRK WORKS TO SAVE YOU MONEY for auto dealerships. However, petitioner failed to establish its prior rights, and it also failed to demonstrate that respondent intended to deceive the USPTO. Daniel J. Quirk, Inc. v. Village Car Company, Cancellation No. 92057667 (September 27, 2016) [precedential].

As we all know, fraud must be proven "to the hilt" with clear and convincing evidence. To prevail on its fraud claim, petitioner was required to prove that:

(1) Petitioner was the user of the same or a confusingly similar mark at the time the oath was signed;
(2) Petitioner had legal rights superior to Respondent’s rights at the time Respondent signed the applications for registration;
(3) Respondent knew that Petitioner’s rights in the mark were superior to Respondent’s and either believed that a likelihood of confusion would result from Respondent’s use of its mark or had no basis for believing otherwise; and that
(4) Respondent in failing to disclose these facts to the USPTO, intended to procure a registration to which it was not entitled.

Fraud will not lie against a party who holds an honest and good faith belief in its right to register a mark, and who verifies the statutorily prescribed ownership statement, which is phrased in terms of subjective belief.

As to the first requirement, the evidence showed that petitioner was using the term QUIRK at the time respondent filed its underlying applications. As to priority, however, petitioner's evidence fell short of proving it was the first user of the QUIRK marks.

The parties proceed via Accelerated Case Resolution (ACR), stipulating that each could rely on the evidence submitted with their earlier, unsuccessful cross-motions for summary judgment. Petitioner relied on its own interrogatory responses, which was allowable because the responses had been submitted with its summary judgment motion. Nonetheless, the Board gave the responses limited weight. Although oral testimony may suffice to establish priority, petitioner's interrogatory responses "are not oral testimony, and are not conclusive on the question of priority." The Board deemed the interrogatory responses ineffective to prove petitioner's priority.

Because petitioner failed to prove superior rights in the mark QUIRK, its fraud claim failed. The Board nonetheless proceeded to consider the issue of fraudulent intent, finding that the record evidence was insufficient.

Respondent acknowledged that, at the time its underlying applications were signed, it was aware that petitioner was using its mark QUIRK in Southeastern Massachusetts. However, respondent stated that it believed that no likelihood of confusion would result from concurrent use of the marks because respondent was located in Maine, 250 miles from petitioner. There was nothing in the record to indicate that this was not an honest belief that respondent had superior rights because petitioner's use was merely intrastate. While that belief may have been mistaken, that does not amount to fraud.

Petitioner contended that "[t]he simple act of causing the .... Applications to be filed ... demonstrates the intention to procure registrations to which [respondent] was not entitled." The Board, however, observed that the mere filing of an application does not provide an inference that the applicant intended to deceive.

Petitioner also contended that deceptive intent may be inferred from respondent's unprompted disclosure to the USPTO of petitioner's use. The Board, however, saw that disclosure as demonstrating the opposite of a bad intent.

Finally, petitioner asserted that intent may be inferred from the fact that, based on his education, intellect, and experience in signing important documents, respondent's president would appreciate "the legal consequences - and pitfalls - of singing oaths while withholding personal knowledge of information to the contrary." The Board was unimpressed, noting that Mr. Quirk demonstrated candor in his communications with the USPTO.

To prove fraud, petitioner was required to provide specific facts supporting an inference of respondent's fraudulent intent. No evidence illuminated respondent's beliefs as to its rights in the QUIRK or QUIRK-formative marks, or its beliefs as to the likelihood of confusion between the involved marks. In short, petitioner failed to show, by direct or indirect evidence, that respondent intended to deceive the USPTO.

And so the Board dismissed the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: The treatment of petitioner's interrogatory responses as being insufficient to prove priority was an interesting quirk in the decision. Perhaps interrogatory responses are downgraded because they are typically prepared by the attorney involved, as opposed to live testimony under oath and subject to cross-examination. But then, why accept affidavits or declarations?

In the third requirement for fraud, listed above, the "no reason for believing otherwise" language is interesting. Does this suggest that fraud may be based on reckless disregard for the truth? On willful blindness?

Text Copyright John L. Welch 2016.

Wednesday, September 28, 2016

Rejecting Abandonment by Naked Licensing, TTAB Sustains 2(d) Opposition to LUCKY DILL for Restaurant Services

The Board sustained this opposition to registration of LUCKY DILL in the design form shown below, for food kiosk and restaurant services, finding it likely to cause confusion with Opposer's common law mark LUCKY DILL and THE LUCKY DILL for restaurant services. Applicant asserted that opposer abandoned its mark through naked licensing, but the fact that LUCKY DILL continues to identify opposer negated any inference of abandonment. CB Specialists, Inc. v. Central Avenue Deli, LLC d/b/a Lucky Dill Deli, Opposition No. 91212366 (September 26, 2016) [not precedential].

The Mitow family opened the first LUCKY DILL restaurant in the Tampa area in 1991. Jason Mitow, son of the founder, opened three more LUCKY DILL restaurants. Applicant operates a restaurant on Central Avenue in St. Petersburg, which it purchased in 2008 as an ongoing business, under the name "Lucky Dill Deli."

Applicant contended that opposer abandoned its rights in the name LUCKY DILL by allowing Jason Mitow and then subsequent purchasers of his three restaurants to continue to use the name without quality control. The Board, however, found that Jason opened the three restaurants with the implicit consent of opposer, and that a license can be implied. Opposer relied on Jason to control the quality of the goods and services offered.

Jason was trained by his parents to run a restaurant. His mother developed standards that Jason followed. She knew Jason was using the marks, she was familiar with and visited the restaurants, and she taste-tested menu items and gave her approval.

While there was no formal system of quality control over the restaurants opened by Jason, an inference of abandonment is not drawn if satisfactory quality has been maintained such that no deception of purchasers has occurred.

The next question was whether, after Jason sold his three restaurants, opposer engaged in naked licensing with the subsequent owners, resulting in the abandonment of the LUCKY DILL mark. Applicant contended that opposer and two unrelated parties operated restaurants within 30 miles of each other under the name "Lucky Dill."

The Board, however, found that because LUCKY DILL continues to identify opposer as one of the sources of the restaurant services, opposer has not abandoned its mark. "[A] mark becomes abandoned only when the mark loses all significance as an indication of origin in the mark holder, not merely because it  may longer be viewed as indicating only the mark holder as a single source."

Moreover, unrestricted rights to use the LUCKY DILL name were not necessarily transferred with the sale of the business to applicant. Opposer did not give Jason the right to sell the name. Moreover, the mark involved in this proceeding is different from the name "The Lucky Dill Deli," which applicant received with its purchase of the restaurant in 2008. Applicant purchased only the rights to that trade name at one location. In 2008, the other two "Lucky Dill" restaurants that Jason sold were out of business.

[R]egardless of whether Applicant may have a right to use the Lucky Dill name at its location, the fact that LUCKY DILL continues to identify Opposer as one of the sources of the restaurant services, negates any inference of abandonment.

Turning to the Section 2(d) issue, the Board found that opposer has priority, that the services are identical in part, and that the marks are very similar.

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Just what rights does Applicant own in "Lucky Dill Deli"? Will applicant oppose opposer's pending application, filed in 2013? On what ground(s)? Did you notice that I showed great restraint in not using the word "pickle" to describe applicant's predicament?

Text Copyright John L. Welch 2016.

Tuesday, September 27, 2016

TTAB Test: Is "HOPNOTIC" for Beer Confusable With "HPNOTIQ" for Liqueur?

Heaven Hill Distilleries petitioned to cancel Cricket Hill's registration for the mark HOPNOTIC for "beer" on the ground of likelihood of confusion with the registered mark HPNOTIQ for "liqueur." Heaven Hill proved priority, and since all beverages are related at the TTAB [as a practical matter], it all came down to the marks. How do you think this came out? Heaven Hill Distilleries, Inc. v. Cricket Hill Brewing Co., Inc., Cancellation No. 92060811 (Sept. 23, 2016) [not precedential].

Relatedness of the Goods: Beer and liqueur are sold in the same channels of trade to the same classes of consumers. Moreover, brand extension have become more frequent in the alcoholic beverage industry. Even if consumers are aware of the difference in the manufacture of beer and liqueur, they may assume that there is a licensing arrangement concerning the two.

Conditions of Purchase: Beer is an inexpensive drink and may be purchased on impulse. Liqueurs are more expensive, but are still relatively inexpensive items. A cocktail containing HPNOTIQ liqueur may cost as little as $5.00.

Strength of Petitioner's Mark: The Board concluded that consumers would understand petitioner's mark to be the equivalent of "hypnotic," an arbitrary term for liqueurs. In addition to the inherent strength of the mark, the evidence established that the mark HPNOTIQ is a "big brand" with larger sales than popular brands like Chambord and Cointreau. And there was no evidence of third-party use or registration of a mark having a "hypnotic" or "hypnosis" formative. The Board therefore concluded that HPNOTIQ is a strong, but not famous, mark.

The Marks: Consumers who make impulse purchases are not likely to notice the different spellings of the marks. Even if consumers notice the "O" in respondent's mark, they will see HOPNOTIC as a variation of the HPNOTIQ mark that suggests a connection between "hops" and beer.

The marks are also similar in pronunciation. In a noisy bar, a waiter or bartender may not be able to distinguish between the two. Although when the customer is served the error would be corrected, there still would be initial confusion. Even putting aside the similarity in sound, the similarity in meaning dictates a finding in favor of petitioner regarding this du Pont factor.

The Board concluded that, when the marks are considered in their entireties, they are similar in appearance, pronunciation, meaning and commercial impression.

Lack of Confusion Evidence: Respondent argued that the lack of actual confusion despite twelve years of concurrent use, was dispositive. The Board, however, pointed out that there was almost no evidence of the extent of respondent's use of its mark, and so it was not possible to determine whether there has been a reasonable opportunity for confusion to occur. In any case, it is not necessary to show actual confusion in order to prove likelihood of confusion.

After considering all the relevant du Pont factors, the Board found confusion likely and it granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: How did you do? In the real world, do you think anyone would be confused as to the source of these two products?

Text Copyright John L. Welch 2016.

Monday, September 26, 2016

Mark Your Calendar: USPTO's National Trademark Expo: October 21-22

Mark your calender for the USPTO's National Trademark Expo to be be held on October 21st and 22nd at the Andrew W. Mellon Auditorium, 1301 Constitution Ave. NW, Washington, D.C. More information here.


The Expo is open to any owner of a federally-registered trademark. This free, family-fun, educational event includes exhibitors, kids programs, costumed characters, seminars, and more. The Andrew W. Mellon Auditorium is a very brief walk from the Federal Triangle Station of the Washington Metropolitan Area Transit Authority (WMATA) subway station and provides very convenient access.

The theme of the 2016 Expo is “Movement and Energy.” Space is limited. Those interested in applying should submit the 2016 Application to exhibit.

Read comments and post your comment here.

Copyright John L. Welch 2016.

Precedential No. 26: Finding a Repeating Pattern Not Distinctive, TTAB Affirms Failure To Function Refusal of Hookah Ornamentation

The Board affirmed a refusal to register the proposed mark shown below, consisting of a repeated diamond pattern applied to the lower third of the cylinder of "electronic hookahs," deeming it to be a non-distinctive, merely ornamental design that lacks acquired distinctiveness under Section 2(f). In re Fantasia Distribution, Inc., Serial No. 86185623 (September 21, 2016) [precedential].

The Board noted that the refusal to register is consistent with TMEP Section 1209.19 (April 2016), incorporating a 2015 USPTO examination guide that addressed the potential lack of inherent distinctiveness of repeating patterns because they often serve an ornamental function. Analogous to color and product design, repeating patterns are often used to make products more attractive, and so consumers would not be predisposed to equate the pattern with source. The Board did not rule out the possibility that a repeating pattern could be inherently distinctive, but in most cases it would not be. "A pattern may function as a mark only 'if it is arbitrary and distinctive and its principal function is to identify and distinguish the source of the goods to which it is applied ....' See In re Soccer Sport Supply Co., 184 USPQ 345, 347 (CCPA 1975)."

Inherent Distinctiveness: To assess the inherent distinctiveness of the pattern, the Board followed Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 196 USPQ 289 (CCPA 1977), adapting its factors to the following:
  • the nature of Applicant's goods and whether there is an industry practice of ornamenting such goods;
  • the nature of the pattern, including whether any element of the pattern might be perceived as source indicating if it were standing alone;
  • how common the pattern is, whether is is composed of common or unusual repeating shapes, whether such shapes repeat in a common or unusual manner, and whether the overall pattern is similar to, or a mere refinement or variation of, a common or well-known form of ornamentation;
  • the manner in which the repeating pattern appears on the product, including the size and location of the pattern on the product and how much of the product is covered by the pattern; and
  • whether the pattern creates a distinct commercial impression apart from any accompanying wording and design elements.

Examining Attorney April Roach submitted evidence regarding three other brands of electronic hookahs that display patterns placed at one end of the device, in a manner similar to applicant's pattern, contending that this evidence demonstrated that such placement of ornamental designs is a common practice in the industry. The Board rejected applicant's contention that the evidence must show other diamond patterns, pointing out that even if applicant's is the first and only user of a diamond pattern, that fact alone "does not imbue the design with source-identifying significance, where Applicant's design merely repeats an ordinary shape in an unremarkable pattern and places it on the goods in an unremarkable way."

Applicant's basic diamond pattern blends with other elements of the trade dress and does not make a distinct commercial impression. It appears in a location often used for ornamentation in this industry.

The Board concluded that applicant's repeating diamond pattern is not inherently distinctive. It "plays a significant role in giving the devices and attractive appearance," and consumers would not be predisposed to view the pattern as source-indicating.

Acquired Distinctiveness: Of course, an ornamental element may be registrable as a trademark on the Principal Register upon proof of acquired distinctiveness. The Board found, however, that applicant's proofs fell short. There was no evidence of "look for" advertising, and the handful of Internet references to applicant's diamond pattern did not indicate its significance. The evidence showed that applicant's are sold in packaging that hides the diamond pattern from view. Moreover, the wording and pattern color signify the flavor of the hookah, and thus the diamond pattern blends with the other elements of trade dress rather than standing out on its own.

The Board therefore concluded that the proposed mark lacks acquired distinctiveness.

And so the Board affirmed the refusal to register under section 1, 2, and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlog comment: It seems to me that if ornamentation at the lower end of the hookah is common in the industry, this may indeed be a way of distinguishing source.

Maybe applicant should try to register this at the U.S. Pattern and Non-Trademark Office.

Text Copyright John L. Welch 2016.

Friday, September 23, 2016

TTAB Test: How Did These Four Section 2(d) Appeals Turn Out?

I once heard a TTAB judge say that the outcome of most Section 2(d) likelihood of confusion cases may be predicted just by looking at the marks and the identified goods/services, without more. Well, try that approach on these four recent appeals that were decided two days ago, keeping in mind that about 85% of Section 2(d) appeals result in affirmance of the refusal. How do you think these came out? [Answer in first comment.]

In re Universal Entertainment Corp., Serial No. 79161731 (September 21, 2016) [not precedential]. [Section 2(d) refusal of GODDESSES HERA for gaming machines, slot machines, and the like, in view of the registered mark HERA’S GOLD for computer game software and gaming].

In re Peag, LLC, Serial No. 86019875 (Se, 2016) [not precedential]. [Section 2(d) refusal of EPIC BY JLAB, in the stylized form below, for "ear buds," in view of the registered mark EPIC for "loudspeakers."

In re Oncor Corporation aka DMK Cosmetics, Serial No. 86131491 (September 21, 2016) [not precedential]. [Section 2(d) refusal of A2Z for"skin care products, namely skin cleansers,non-medicated exfoliating gels for skin, non-medicated acne treatment preparations," in view of the registered mark HEALTHA2Z for pharmaceuticals for the treatment of various conditions, including acne, and for other drugs].

In re The Line and Dot LLC, Serial No. 86170528 (September 21, 2016) [not precedential]. [Section 2(d) refusal of LUMIÈRE for "women's clothing, namely blouses tops dresses, pants and sweaters," in light of the registered mark LUMIERE PLACE for "Blouses; Coats; Foul weather gear; Gloves; Headwear; Jackets; Jogging suits; Pants; Polo shirts; Robes; Shirts; Shorts; Socks; Sweat pants; Sweat shirts; Sweaters; Swimwear; T-shirts; Tank tops; Vests; Wristbands"].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Thursday, September 22, 2016

Christopher Larkin Appointed As TTAB Administrative Trademark Judge

Christopher Larkin has been appointed to the position of Administrative Trademark Judge at the Trademark Trial and Appeal Board. His appointment brings the total number of TTAB judges to 26.

Christopher Larkin comes to the Board from his position as a partner in the Los Angeles law firm of Seyfarth Shaw LLP. He has been a partner there since 2002 and at other firms for the preceding 15 years. Previous law firm partner positions include those at the Los Angeles firms of Small Larkin and Graham & James. Before taking on his first partnership position, Mr. Larkin served as an associate in the firms of Graham & James and Townley & Updike (in New York). In all of these law firm positions, spanning 35 years of law practice, Mr. Larkin has been involved in a wide-ranging intellectual property practice, focused primarily on such matters as trademark clearance, prosecution, counseling, licensing and litigation. The litigation practice has involved proceedings in state and federal courts, including federal appellate courts, and before the Trademark Trial and Appeal Board.

Mr. Larkin has also served many years as a Lecturer in Law at the University of Southern California Law School, teaching Internet Law, Trademark Law and Trademark Law in Practice. His professional affiliations are many and varied, and include a number of leadership positions on committees of the International Trademark Association (INTA). He was the author of the INTA amicus curiae brief to the United States Supreme Court in Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995). Mr. Larkin has been a frequent author, lecturer and presenter on trademark topics for more than 20 years and has co-chaired six Practising Law Institute programs on practice before the USPTO and TTAB in trademark matters.

A Phi Beta Kappa graduate of Stanford University, Mr. Larkin earned his J.D. from Columbia Law School in New York, where he was a Harlan Fiske Stone Scholar and a Young B. Smith Prize recipient.

Read comments and post your comment here.

Text (except for quoted material) Copyright John L. Welch 2016.

Wednesday, September 21, 2016

Erik Pelton's Report on Sept. 16th TPAC Meeting

A tip of the fedora to FOTTABlog Erik M. Pelton, who once again provides a report (here) on the latest meeting of the Trademark Public Advisory Committee (a/k/a TPAC). Note particularly the slides provided at the end of Erik's blog post.

With regard to our favorite tribunal, TTAB Chief Administrative Trademark Judge Gerard Rogers reported the following:
  • The latest TTAB pendency statistics were reviewed (see slides), showing that pendency times in general continue to decrease.
  • New proceeding filings at the TTAB are up considerably in FY2016, including Notice of Opposition filings up 11%.
  • New TTAB Judge Christopher Larkin begins work this week.
  • The TTAB rulemaking package will be issued this month, with an effective date of January 14, 2017.
  • The new rules will apply to all cases, with judges having discretion where needed in applying them to pre-existing cases.
  • The new rules retain the Board processes considered significant by the Supreme Court last year in B&B Hardware.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

Tuesday, September 20, 2016

TTAB Denies Unclean Hands Defense, Grants AACHI Cancellation Petition

In are rare decision discussing the affirmative defense of unclean hands, the Board granted a petition for cancellation of a registration for the mark AACHI AAPPAKADAI & Design for "restaurant and catering services" [AAPPAKADAI disclaimed], finding the mark likely to cause confusion with petitioner's registered mark AACHI for various food products. The Board dismissed respondent's fraud defense since the validity of a pleaded registration may be attacked only via a counterclaim for cancellation. But the Board entertained respondent's unclean hands defense, ultimately finding it wanting. Aachi Spices & Foods v. Kalidoss Raju, Cancellation No. 92058629 (September 13, 2016) [not precedential].

Unclean hands The Board dismissed all eleven of respondent's so-called affirmative defenses, including laches, "fair use," and fraud. The unclean hands defense merited the most attention. The Board observed that "[t]he equitable doctrine of unclean hands prevents a plaintiff from relying on its registration if it made a false statement during the prosecution of its application for registration or maintenance of its registration."

Petitioner, in obtaining its two registrations, stated that "aachi" means "distinguished lady" in English. Respondent asserted that that statement was false, since "aachi" should properly be translated as "grandmother." According to respondent, had petitioner provided a proper translation, the PTO would have conducted a search of all marks that contained the words grandmother, mother, and grandma, and would have found hundreds of trademarks. The PTO may then have refused registration of petitioner's mark.

However, the evidence showed that "aachi" has several meanings (e.g., distinguished lady, elderly woman, grandmother, etc.), and so the Board could not find that petitioner made a false statement in its translation. Moreover, it was not clear that the examining attorney would have translated the word as "grandmother," nor was there any evidence that an appreciable number of consumers would be aware that the Tamil word "aachi" means "grandmother." Finally, respondent did not provide any evidence to support its assertion that there are numerous marks comprising the words "grandmother," etc.

Likelihood of Confusion: Although finding that the word AAPPAKADAI is the dominant part of respondent's mark, the Board found the involved marks to be similar in appearance, sound, connotation, and commercial impression. Consumers may believe that AACHI AappaKadai is the restaurant and catering line of the AACHI food products company

To show the relatedness of the involved goods and services, petitioner introduced 450 use-based, third-party registrations covering both food products and restaurant and/or catering services. Excerpts from 31 websites demonstrated that restaurant and grocery store services, and particularly Indian restaurant and grocery services, move in the same channels of trade to the same classes of consumers.

The Board noted that under Jacobs v. International Multifoods Corp., a party must show something more than that similar or even identical marks are used for food products and restaurant services, in order to establish likelihood of confusion. Applicant's evidence of third-party use and registration, along with the fact that the involved marks share a similar arbitrary term, satisfied that requirement.

Read comments and post your comment here.

TTABlog comment: For some reason, this case reminded me of former Mets pitcher Bob Apodoca.

Text Copyright John L. Welch 2016.

Monday, September 19, 2016

TTABlog Tweets and Re-Tweets

If you are not a Twitter subscriber, you missed these recent TTABlog tweets and re-tweets @TTABlog.

Gainesville, Florida

Massachusetts district court denies preliminary injunction motion in HEALTH NEW ENGLAND trademark dispute (here).

Beneath Louis Vuitton’s inability to take a joke, a serious First Amendment question. (here)

Looking for a basic primer on Design Patents? Try this.

Why granting TM protection to hashtags is bad. Harvard Journal of Law and Technology (here).

WIPO. At a glance: How the International Trademark System works –

Read comments and post your comment here.

Text Copyright John L. Welch 2016.