Friday, January 23, 2015

TTAB Test: Must "47AG" Be Disclaimed for SiIver Jewelry?

The USPTO refused registration of the mark COOMI 47AG for "silver jewelry," absent a disclaimer of "47AG." Applicant appealed. Examining Attorney Patty Evanko maintained that "Ag" is the chemical symbol for silver and "47" is silver's atomic number, and so "47AG" describes the material composition of applicant's jewelry. Applicant argued that typical jewelry shoppers would not immediately recognize that meaning of "47AG." How do you think this came out? In re Bhasin Enterprise Corporation, Serial No. 86025037 (January 2, 2015) [not precedential].

The Board pointed out that silver jewelry "is a consumer item of potentially universal appeal to individuals." The subject application contains no limitation as to the nature of the consumers, and so the Board must presume that they include "all normal customers for such goods, including individuals who have knowledge of the meaning of the terms 'Ag' and '47.'" Moreover, the Board has previously recognized the descriptive significance of chemical symbols (e.g., ZN-PLUS, MN-PLUS, and CA-PLUS). And the terms "Ag" and "47" are not jargon, but long-established and universally recognized scientific terms that may even be learned in high school. Thus many consumers, even those without a scientific background, would be aware of the terms.

There is nothing incongruous or unique about the combination of "47" and "AG." The evidence showed that they commonly appear together or in close proximity (see illustration above). The Board disagreed with applicant's argument that a multi-stage reasoning process would be required in order to derive an understanding of the term "47AG." When used together, "47" and "AG" merely reinforce each other in meaning.

The Board therefore found "47AG" to be merely descriptive of silver jewelry, and it affirmed the requirement of a disclaimer of the term. Applicant was allowed thirty days to submit the required disclaimer.

Read comments and post your comment here

TTABlog note: What is element 43? What is the atomic number of Kryptonite? Would "46AG" be half-descriptive?

Text Copyright John L. Welch 2015.

TTABlogger Named to 2014 "World Trademark Review 1000"

It's happened again! Yours truly has been included in the 2014 edition of the World Trademark Review 1000. (link here). [This time, the blog got a mention. It's something like having a child bring home a good report card.]

Thursday, January 22, 2015

Richmond IP Boutique Seeks Trademark/IP Attorney

The Leading-Edge Law Group, a two-lawyer firm in Richmond, Virginia, is looking to hire a full-time attorney in intellectual property law. The firm's practice includes trademarks (with heavy emphasis on trademark infringement monitoring and policing), copyrights (heavy emphasis on policing), technology licensing and development, and patents. Several years of experience preferred, particularly including trademark litigation. For more details, contact John Farmer (jfarmer at


Supreme Court Holds That Jury Should Decide Tacking Issue

The U.S. Supreme Court affirmed the ruling of the U.S. Court of Appeals for the Ninth Circuit, holding that a jury should make the determination of whether tacking is available in a given (jury) case. "The Ninth Circuit correctly held that whether two marks may be tacked for purposes of determining priority is a question for the jury. Accordingly, the judgment of the Ninth Circuit is affirmed." Hana Financial, Inc. v. Hana Bank, 13–1211 (S. Ct. January 21, 2015).

When Hana Financial sued Hana Bank for infringement, the latter invoked the tacking doctrine in claiming priority. Tacking applies when the two marks create the same, continuing commercial impression. The later mark should not differ materially from the earlier mark to be tacked. In other words, the two marks must be "legal equivalents." The circuits are split as to whether tacking is a question of law or an issue for the jury.

The Supreme Court ruled that tacking is an issue for the jury to decide.

Application of a test that relies upon an ordinary consumer’s understanding of the impression that a mark conveys falls comfortably within the ken of a jury. Indeed, we have long recognized across a variety of doctrinal contexts that, when the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decisionmaker that ought to provide the fact-intensive answer.

Of course, a judge may decide the tacking issue in a non-jury case, and may do so in a jury case if the facts warrant it on a motion for summary judgment or for judgment as a matter of law. But otherwise, when a jury trial has been requested, "the question whether tacking is warranted must be decided by a jury."

The Court found that the district court had properly instructed the jury on the issue, and it therefore affirmed the district court judgment of non-infringement.

Read comments and post your comment here

TTABlog note: The issue of tacking comes up relatively rarely. But does this decision have broader implications? Does it suggest that likelihood of confusion is a jury issue? The circuits are split on the question.

Text Copyright John L. Welch 2015.

Wednesday, January 21, 2015

TTAB Test: Is Wine Related to Alcohol/Fruit Juice Beverages?

Here we go again. Vini, Vidi, non Vici. The USPTO refused registration of the mark MASQUERADE for "sparkling wines; wines," finding the mark confusingly similar to the registered mark MASCARADE for "mixed beverage containing alcohol and fruit juice." Applicant appealed. Examining Attorney Rebecca Smith relied on a number of third-party registrations the covered wine and other alcoholic beverages, but applicant pointed out the none of the registrations included the specific goods identified in the cited registration. How do you think this came out? In re 8 Vini, Inc., Serial No. 85857391 (January 16, 2015) [not precedential].

Applicant urged that MASCARADE is a French word that translates into English as "farce," while MASQUERADE is an English word meaning, roughly, a party where people where masks. The Board, however, refused to apply the doctrine of foreign equivalents because the relevant consumers were not likely to translate MASCARADE, and also because its was not sufficiently clear that it the word would be translated as applicant contended.

Instead, the Board applied its "traditional" approach to consideration of the marks. It found that the marks have similar spellings, that the first portion of the marks sounds the same, that the meanings will be perceived as the same since consumers will see MASCARADE as a variant of MASQUERADE, and therefore that the marks are similar in overall commercial impression.

But what about the goods? The USPTO's evidence included 14 use-based registrations that included both wine and alcoholic beverages containing fruit, although none of the registrations included the specific goods of the cited registration. Applicant argued that "mixed beverages" or mixed drinks are beverages that are typically prepared by a bartender and sold on the premise: i.e., they are "mixed," and not just a combination of alcohol and fruit juice. The Board pointed out, however, that nothing in the cited registration required that the beverages be mixed by a bartender, nor did any record evidence support such an implication.

Several websites and a Wikipedia entry indicated that cocktails may be mixed with wine, and therefore the beverages of the registration, containing "alcohol and fruit juice," may include wine and fruit or fruit juice. And the Board noted that various alcoholic beverages have been found to be related for the purposes of the likelihood of confusion analysis. [E.g., beer and ale, tequila and malt liquor, beer and wine, scotch whiskey and gin and vodka, brandy and beer, cola flavored liqueur and brandy, fruit juice and wine].

Based on the nature of the goods, the third-party registrations and Internet evidence before us, we conclude that Applicant’s wines are related to Registrant’s mixed beverage containing alcohol and fruit juice, such goods being alcoholic beverages that may emanate, as shown by the evidence, from the same source and under the same mark. Further, the evidence shows that wine, as an alcoholic beverage, may be combined with fruit and/or fruit juice to make cocktails.

The Board presumed that the respective goods would travel in all normal channels of trade, including the same liquor stores, bars, or restaurants, to the same ordinary consumers.

The Board therefore concluded that confusion is likely, and it affirmed the refusal.

Read comments and post your comment here

TTABlog note: Well, do you agree with the Board? Are you convinced by the opinion?

Text Copyright John L. Welch 2015.

Tuesday, January 20, 2015

Recommended Reading: Sandra Edelman on Cancellation of Non-Use-Based Registrations Less Than 3-Years Old

In the latest issue of the Trademark Reporter, Sandra Edelman discusses the pros and cons of seeking cancellation of a Section 44(e) or 66(a) registration during the three-year period for a statutory presumption (of abandonment) has elapsed, in her article entitled "Why Wait Three Years? Cancellation of Lanham Act Section 44(e) and 66(a) Registrations Based on Non-Use Prior to the Three Year Statutory Period for Presumption of Abandonment."

Based on the statutory definition and the prima facie evidence of abandonment that arises when there has been proof of non-use of a mark for more than three years, it is undoubtedly easier for a party to prevail on a claim of abandonment when there has been more than three years of non-use. Absent evidence of three years of non-use, however, a party can still succeed on a claim of abandonment, but it will need to carry its burden of persuasion by a preponderance of direct and/or circumstantial evidence that the mark owner has ceased using the mark without an intent to resume use.


[T]here are viable bases for cancelling Section 44(e) and 66(a) registrations on the ground of abandonment prior to the third anniversary of registration. In addition, as the opinions in Honda v. Winkelmann and Sandro Andy demonstrate, Section 44(e) and 66(a) registrations, particularly those that cover an excessive identification of goods and services, may also be vulnerable to cancellation on the ground that there was a lack of bona fide intent to use the mark on each and every good or service covered by the registrations.

Read comments and post your comment here.

TTABlog note: Again I thank The Trademark Reporter for granting permission to provide links to these two commentaries, which are Copyright © 2014 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 106 TMR No. 6 (November-December 2014).

Text Copyright John L. Welch 2015.

Friday, January 16, 2015

Free ABA Webinar (Jan. 21): "Design Patent and Trade Dress Litigation: More than Meets the Eye"

The Trademark Litigation and the Patent Litigation Subcommittees of the IP Litigation Committee of the ABA Section of Litigation will host a FREE webinar entitled "Design Patent and Trade Dress Litigation: More than Meets the Eye." Date and time: Wednesday, January 21st from 1pm to 2pm (EST). ABA membership is not required. Details below. Register here.

Design Patent and Trade Dress Litigation:
More than Meets the Eye

Description: From the design houses of New York City, to the storied industrial design firms of Chicago, to the cutting-edge think tanks of Silicon Valley, the desire for effective and enforceable design protection is at an all-time high. Simply put, looks matter. Recently released statistics show that applicants are securing U.S. design patents at record rates. With more design patents issued, there also has been a marked uptick in design patent litigation filings. While design patents share much in common with utility patents and trade dress, they have significant and distinct differences from those rights, which if not understood, can present unique traps for the unwary when it comes to litigation. In this CLE, leading Design IP attorney Christopher V. Carani will discuss design patent-specific litigation issues, including best practices for asserting, and defending against, claims of design patent infringement, the design patent infringement standard, design patent claim construction, the ins and outs of design patent drawings, design patent defenses of prosecution history estoppel, anticipation, obviousness, indefiniteness. Along the way, Mr. Carani also will offer insights and strategies for cases involving both trade dress and design patent infringement claims.

Speaker: Christopher V. Carani is a partner at the Chicago-based intellectual property law firm of McAndrews, Held & Malloy, Ltd. For over 15 years, Chris has been a leading voice in the field of Design IP, which regards the intersection of design rights, trade dress and copyright law. Chris counsels clients on strategic design enforcement and protection issues; he is often called upon to render infringement, validity and design-around opinions and serve as a legal consultant/expert in Design IP cases.

CAFC Reverses TTAB: NEWBRIDGE HOME Not Geographically Descriptive of Cutlery

The CAFC reversed the TTAB's decision [TTABlogged here] upholding a Section 2(e)(2) refusal to register the mark NEWBRIDGE HOME for "silverware, jewelry, and kitchen goods" [HOME disclaimed]. After a lengthy discussion of the history and development of refusals to register geographical names, the court ruled that the USPTO had failed to satisfy the first prong of the applicable test: that the place named by the mark be generally known to the relevant consuming public. In re The Newbridge Cutlery Co., Appeal No. 2013-1535 (Fed. Cir. January 15, 2015) [precedential].

In order to refuse registration on the ground that a mark is primarily geographically descriptive, the USPTO must show (1) that the mark is the name of a place that is generally known to the public, (2) that the public would make a goods/place association in that it would believe that the involved goods originate in that place, and (3) that the involved goods come from that place. Here, the USPTO failed to meet the first requirement.

The TTAB concluded that Newbridge is a place generally known to the public because (1) it is the largest town in County Kildare and the seventeenth largest in the Republic of Ireland; (2) it is listed in the Columbia Gazetteer of the World; and (3) a number of websites describe Newbridge as a "large commercial town" with a "silverware visitor centre," as well as museums, gardens, historical battle sites, and a famous horse racing track.

The CAFC ruled that "[t]he conclusion that Newbridge, Ireland, a town of less than twenty thousand people, is a place known generally to the relevant American public is not supported by substantial evidence." The fact that Newbridge is the second largest town in its county and the seventeenth largest in Ireland reveals nothing about the perception of the American consumer, nor was there any evidence that the consumer would be familiar with the locations listed in the gazetteer. Similarly, listings on websites mean little because the Internet contains enormous amounts of information, and there was no evidence that the American consumer "would have any meaningful knowledge of all of the locations mentioned in the websites cited by the PTO."

Moreover a place is not necessarily "generally known" because the purchaser is informed that the mark is the name of the place. [E.g., AYINGER BIER for beer, even though the label showed the brewery to be located in the obscure location of Aying, Germany]. And the fact that "Newbridge" has other meanings, some geographical, also makes it less likely that Newbridge, Ireland is generally known as the name of a place.

The CAFC concluded that the evidence as a whole suggested that Newbridge, Ireland is not generally known. Therefore the first prong of the Section 2(e) test was not met. The court found it unnecessary to address the issue of goods/place association.

Read comments and post your comments here.

TTABlog note: Given its lack of investigatory resources, what proof could the USPTO have mustered to establish that Newbridge is a generally known place in this country?

Text Copyright John L. Welch 2015.

Thursday, January 15, 2015

TTAB Test: Which of these Three Mere Descriptiveness Refusals Did the TTAB Reverse?

Here are three recent appeals from mere descriptiveness refusals under Section 2(e)(1). One of them was reversed. Let's see how you do with them. [Answer in first comment].

In re Injex Pharma AG, Serial No. 79119172 (December 22, 2014) [not precedential]. [Mere descriptiveness refusal of INJEX for a needle-free injection system.]

In re Whole Foods Market IP, L.P., Serial No. 85820807 (January 6, 2015) [not precedential]. [Refusal of COLLECTIVE CHEESE for, inter alia, cheese, dips, and spreads.]

In re Hollywood Stock Exchange, LLC, Serial No. 85775831 (January 9, 2015) [not precedential]. [Refusal of BOLLYWOOD STOCK EXCHANGE for, inter alia, providing an online prediction market game for trading virtual entertainment securities.]

Read comments and post your comment here

Text Copyright John L. Welch 2015.

Wednesday, January 14, 2015

TTAB Issued 45 Precedential Opinions in 2014

In calendar year 2014, the Board issued 45 precedential opinions - the same number as last year. [Note that the USPTO operates on a fiscal year that ends on September 30, and so its annual count of precedential opinions is likely different].  The REDSKINS and FLANAX decisions are currently the subject of district court actions for review under Section 1071(b). The appeals regarding the decisions in THE SLANTS and in the PRETZEL CRISPS cases were argued earlier this month at the CAFC.

Amanda Blackhorse

Section 2(a) - Immoral or Scandalous:
Section 2(a) - Disparagement:
Section 2(c) - Consent of Living Individual:
Section 2(d) - Likelihood of Confusion:

Section 2(e)(1)) - Mere Descriptiveness:

Section 2(e)(2) - Primarily Geographically Descriptive:
Section 2(f) - Acquired Distinctiveness:

Lack of Bona Fide Intent:
Identification of Goods:
Nonuse/Specimen of Use:
Cancellation Under Section 14(3):

Concurrent Use:

Text Copyright John L. Welch 2015.

Tuesday, January 13, 2015

TTAB Test: Are Beer and Wine Related for Section 2(d) Purposes?

The USPTO refused registration of the mark BLACKHAWK for wine, finding it likely to cause confusion with the registered mark BLACK HAWK STOUT for "malt beverages, namely, beer, ales, and stout" [STOUT disclaimed]. The marks are certainly similar, but what about the goods? Are they related? How do you think this came out? In re Sonoma Estate Vintners, LLC, Serial No. 85842056 (January 9, 2015) [not precedential].

Examining Attorney Raul Cordova submitted 15 third-party use-based registrations covering both beer and wine. Applicant asserted, however, that only three of the 15 third-party marks were actually in use for both beer and wine because only three had been issued a Certificate of Label Approval (COLA) for both beer and wine in the past five years. [As to ten of the marks, no COLAS were issued, while as to the remaining two, a COLAs were issued for beer but not for wine]. Thus, according to applicant, in only three of the 15 cases were both beer and wine legally sold under the pertinent cited mark.

The Board, however, concluded that this evidence did not completely rebut the examining attorney's third-party registration evidence. The Board noted that applicant did not submit any evidence as to whether the registrants were using the marks in the registrations. [Does the Board expect applicant to prove the negative? That the marks are not in use? - ed.].

The certificates of registration are prima facie evidence of the validity of the registered marks, the registrants’ ownership of the marks, and of the owners’ exclusive right to use the marks in commerce. Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b). It is possible that the registrants are using the marks for beer and wine and there is some reason or explanation that Applicant did not find their COLA applications.

The Board observed that applicant could also argue that any use of their marks by the 12 registrants who did not obtain COLA certificates was unlawful. However, in order to prove unlawful use, applicant would have to show either a per se violation of a statute regulating the sale of the goods, or a court or agency determination of illegality. Here there was no evidence of any final determination of illegality. As to the issue of per se violation, applicant showed only that it could not find COLA applications. It is therefore not clear that there has been a violation of the regulations, and there is no opportunity for registrants to be heard in this context. [Nor was there evidence that selling wine without a COLA certificate would invalidate a registration, or would merely be a collateral defect that could be rectified].

Moreover the Board noted that although the examining attorney submitted only 15 third-party registrations, there could be more, since there is no requirement that the examining attorney submit all the evidence that supports his position. Indeed, the Board would be "very critical if the examining attorney were to submit an inordinate number of registrations."

The examining attorney also submitted excerpts from nine third-party websites showing use of the same mark for both beer and wine.

Applicant provided 11 sets of "the same or similar marks" registered to different entities for beer and wine (or other alcoholic beverages) in an attempt to rebut the USPTO's evidence. The Board was not impressed, noting that it has previously held such evidence to be relevant but unconvincing. For one thing, the owner of any one of the marks may have obtained another registration for the other goods.

The Board found the evidence of third-party registrations and websites to be sufficient to demonstrate the relatedness of beer and wine, and it therefore affirmed the refusal.

Read comments and post your comment here

TTABlog note: Do you think that the Board leaned a bit too far in the examining attorney's direction in its consideration of the evidence? As I've said before, there is no per se rule that beer and wine are related, but it doesn't take much evidence to convince the Board that they are.

Text Copyright John L. Welch 2015.

Monday, January 12, 2015

The Top Ten TTAB Decisions of 2014 [Part 2]

Here is the second half of the TTABlog's "top ten" list of 2014 TTAB decisions. Part 1 may be found here. Section 2(d) likelihood of confusion cases and Section 2(e)(1) mere descriptiveness appeals account for the vast majority of final decisions in ex parte cases. Most inter partes matters involve Section 2(d) and are very fact-specific, seldom venturing into uncharted territory regarding the applicable law. So the decisions that deal with other issues tend to stand out. This past year was no exception. If you would have selected other cases for the top ten, please say so in the comments.

Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013 (TTAB 2014) [precedential]. [TTABlogged here]. The Board sustained Chanel, Inc.’s opposition to registration of the mark CHANEL for “real estate development and construction of commercial, residential and hotel property,” finding the mark likely to cause dilution-by-blurring of opposer’s famous CHANEL mark. Applicant Makarczyk, appearing pro se, agreed to proceed under the Board’s Accelerated Case Resolution (“ACR”) regime, following the “summary judgment model.” [When Makarczyk did not submit evidence or a brief, Chanel requested a decision, and seven months later the Board issued this one]. Chanel established that it began using its mark in the United States in the 1930s, and the mark has consistently been ranked as one of the most recognized and famous brands in the United States. Survey evidence demonstrated that the mark is “extremely well known and enjoys an unusually high degree of unaided and aided recognition.” Considering the six non-exhaustive factors set forth in Section 43(c)(2)(B)(i)-(vi), the Board found that opposer would likely suffer an impairment of the distinctiveness of its mark, even though opposer had no current involvement in real estate, since many luxury brands have licensed use of their marks in connection with hotels, and other have found opportunities in related areas, like interior design services and bathroom fixtures.

Boi Na Braza, LLC v. Terra Sul Corp. a/k/a Churrascaria Boi Na Brasa, 110 USPQ2d 1386 (TTAB 2014) [precedential]. [TTABlogged here]. This contested concurrent use proceeding involved an application to register the mark BOI NA BRAZA, in standard character form, for restaurant and bar services, with a geographic restriction claiming the entire United States except New Jersey. Defendant claimed that it had used its mark CHURRASCARIA BOI NA BRASA in New Jersey, New York, and elsewhere and that Plaintiff BNB's mark should be denied registration or the registration should be restricted to BNB's three areas of actual use: Dallas, Atlanta, and Cincinnati. This case presented the unusual circumstance in which the plaintiff/applicant owned an “incontestable registration” for a composite mark shown below that incorporates the term BOI NA BRAZA. Pursuant to Sections 15 and 33(b)(5) of the Trademark Act, use of such a mark cannot be challenged on the basis of prior rights and likelihood of confusion. A prior user normally may carve out of an incontestable registration only “the specific areas in which it has established its prior rights prior to actual or constructive notice of said registration.” Since its first use of its mark in 1996, Defendant never expanded beyond its Newark, New Jersey neighborhood. BNB, the junior user but the first to file an application to register, offered restaurant services in three cities geographically remote from one another and from Defendant Terra Sul. Noting that there is a policy of encouraging prompt registration of marks, and that the concurrent use provision of Section 2(d) exhibits no bias in favor of the prior user, the Board concluded that BNB is entitled to a nationwide registration, excluding New Jersey and New York.

In re Fiat Group Marketing & Corporate Communications S.p.A., 109 USPQ2d 1593 (TTAB 2014) [precedential]. [TTABlogged here]. Applying the “Ordinary-Meaning” test, the Board affirmed a refusal to register the mark FIAT 500 for “retail store services and on-line retail store services featuring a wide variety of consumer goods of others,” in International Class 35, on the ground that the proposed wording exceeded the scope of the original recitation of services (“advertising services; business management; business administration; office functions”). Although the proposed language itself would fall within Class 35, it was not encompassed by the original recitation of services – even though the original recitation is identical to the class heading for Class 35. Finding no support in the record for Fiat’s assertion that the meaning of the term “business management” includes “operating a retail store,” the Board agreed with the Examining Attorney that the proposed amendment violated Rule 2.71(a) because it improperly broadened the recitation of services. The Board observed that, although some Madrid Protocol countries have adopted a “class heading covers all” policy, “no provision in U.S. law or any obligation by treaty obliges the USPTO to deviate from or make an exception to its longstanding practice governing the scope and interpretation of identifications and in deciding what amendments are permissible.”

FUJIFILM SonoSite, Inc. v. Sonoscape Co., 111 USPQ2d 1234 (TTAB 2014). [precedential] [TTABlogged here]. In this Section 2(d) opposition, Applicant Sonoscape won a partial victory in its motion to strike certain evidence in Opposer’s notice of reliance. The Board ruled that FUJIFILM could not rely on a newly issued registration because the underlying application had not been pleaded in the notice of opposition, but the Board deferred until trial a ruling on whether the registration had any probative value at all. It agreed that, as to certain other documents (673 pages in all) purportedly relevant to the likelihood of confusion issue, opposer was required to indicate the relevance of each page by du Pont factor. Newly issued registration: Opposer Fuji claimed ownership of a family of “Sono-” formative marks, and sought to add a newly issued registration to its arsenal. Since FUJIFILM did not plead ownership of the application, the Board ruled that FUJIFILM “cannot use an unpleaded registration as a basis for the opposition,” but it refused to strike the exhibit, accepting it for “whatever probative value” it may lend to opposer’s showing under the du Pont factors in its case-in-chief. Other evidence: Although FUJIFILM stated that certain documents were relevant to three likelihood of confusion factors, that was not good enough: “The Board will not expend its resources guessing which pages the propounding party is relying upon…. Opposer should have indicated which web page or group of web pages within each exhibit support each specific du Pont factor.” Fuji was allowed 15 days to submit a revised notice of reliance.

Turdin v. Trilobite, Ltd., 109 USPQ2d 1473 (TTAB 2014) [precedential] [TTABlogged here]. In another decision favorable to the first filer, the Board ruled that Defendant Trilobite, Ltd. was entitled to a geographically unrestricted federal registration for its mark TRILOBITE for audio and video recording and production services. The concurrent use application of Peter Turdin, Jr., seeking a registration of TRILOBITE PICTURES for “motion picture film production, and animation services,” restricted to New York City and Connecticut, was refused because Turdin was unable to establish that there was no likelihood of confusion if the involved marks were concurrently used in these two areas. Although Trilobite, Ltd. had never rendered its services in New York City, the Board relied on First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 476 F.3d 867, 81 USPQ2d 1375, 1378 (Fed. Cir. 2007), in awarding priority to Trilobite, Ltd. based on its business contacts in Gotham. As for Connecticut, the Board applied the Weiner King factors (Weiner King, Inc. v. The Weiner King Corp., 615 F.2d 512, 204 USPQ 820, 830 (CCPA 1980)) in ruling in favor of Trilobite, Ltd. Although there was no evidence that Trilobite had previous business activity in Connecticut, and no evidence of any significant business in states contiguous to Connecticut (other than in New York City), its president testified that there is “quite an overlap of people who live in the Connecticut area and work in New York….” Consequently, Plaintiff Turdin failed to persuade the Board that confusion is not likely “if Turdin is granted Connecticut as part of his concurrent use territory.”

Read comments and post your comment here

Text Copyright John L. Welch 2015.

Friday, January 09, 2015

The Top Ten TTAB Decisions of 2014 [Part 1]

Yours truly, the TTABlogger, has again chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year. This is the first of two posts, the first five selections being set out below. Additional commentary on each case may be found at the linked TTABlog posting]. The cases are not necessarily listed in order of importance (whatever that means).

Section 2(d) likelihood of confusion cases and Section 2(e)(1) mere descriptiveness appeals account for the vast majority of the TTAB’s final decisions in ex parte cases. Most inter partes matters involve Section 2(d) and are very fact-specific, seldom venturing into uncharted territory regarding the applicable law. So the decisions that deal with other issues tend to stand out. This past year was no exception.

For the first time in five years, the Board sustained a claim of fraud, convinced by the applicant’s evasive testimony that he intended to deceive that USPTO when he filed a use-based application for the mark NATIONSTAR for real estate brokerage services. The decision states no new principles of law, and so is perhaps more notable for its curiosity value than its substantive impact as legal precedent.

In a long anticipated and controversial ruling, a divided Board panel ordered cancellation of six registrations for marks comprising or containing the word REDSKINS, on the ground that the marks disparaged Native Americans. Judge Bergsman dissented, concluding that the petitioners had failed to prove disparagement in the context of registrant’s entertainment services.

In an extremely rare ruling under Section 14(3), the Board ordered cancellation of a registration for the mark FLANAX for neproxin sodium analgesics, finding that the registrant had used the mark to misrepresent the source of the goods. And a petitioner was allowed to invoke the often overlooked Section 18 of the Trademark Act in seeking to restrict the registration of a color mark to a particular shade of that color.

Dilution-by-blurring claims are seldom decided by the Board because they are usually coupled with likelihood of confusion claims, and the Board will typically decide the latter claim and choose not to consider the former. But the Board upheld a claim of dilution-by-blurring with regard to the famous mark CHANEL, concluding that Opposer Chanel would likely suffer an impairment of the distinctiveness of its mark even though Chanel has no involvement in applicant’s field of real estate.

In the sole non-precedential decision on this list, the Board ruled that a title of a single book or DVD is registrable if acquired distinctiveness is established. Many other decisions had held that a title of a single work is incapable of serving as a trademark, but the Board held that Section 2(e)(1) mere descriptiveness was the appropriate basis for refusal, thus opening the door to a Section 2(f) showing.

Two concurrent use proceedings were resolved in favor of the junior user but first filer. The Board observed that the concurrent use provisions of the Trademark Act exhibit no bias for the first user, but instead encourage the prompt registration of marks. In the TRILOBITE case, plaintiff Turdin faced the difficult burden of proving that confusion with defendant’s mark was not likely in his trading area. In the BOI NA BRAZA matter, the Board awarded the first filer nearly the entire country because the defendant/senior user had never expanded beyond its original New York/New Jersey trading areas.

In a bit of “inside baseball” for trademark prosecutors, the Board applied the “Ordinary-Meaning” test in interpreting a Section 66(a) applicant’s recitation of services that recited the Class 35 heading, refusing to allow amendment to particular services that fell within the class but not within the ordinary meaning of the original recitation. And in the inter partes procedural realm, the Board confirmed that a party, in its notice of reliance, must indicate the relevance of each document by reference to the applicable du Pont factor.

Nationstar Mortgage LLC v. Ahmad, 112 USPQ2d 1361 (TTAB 2014) [precedential]. [TTABlogged here].  In a case perhaps more significant as a curiosity than as a jurisprudential landmark, the Board sustained a fraud claim for the first time since the CAFC issued its 2009 decision in In re Bose. The Board upheld an opposition to registration of the mark NATIONSTAR for, inter alia, real estate brokerage, residential and commercial property and insurance brokerage, and mortgage brokerage services. The Board found that Applicant Ahmad’s averments as to his use of the NATIONSTAR mark for the identified services were fraudulent. Ahmad testified that he chose the name in 2004-2005 after checking corporate records and the USPTO databases. Opposer Nationstar Mortgage contacted Ahmad in early April 2006, and within days, Ahmad himself filed the application at issue under Section 1(a). However, he was not a real estate broker, insurance broker, or mortgage insurance broker, each of which requires a state license. Ahmad’s testimony regarding use as of his filing date was of grave concern to the Board because it was “so lacking in conviction and credibility as to be virtually incapable of corroboration.” The Board distinguished the case from Bose in that here the applicant made false statements about his own industry and his own activities, knowing that he did not have the appropriate licenses. Although Ahmad was allowed, after the opposition was filed, to amend his filing basis to Section 1(b), the Board observed that fraud cannot be cured once an opposition is filed.

Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080 (TTAB 2014) [precedential]. [TTABlogged here].  A divided TTAB panel granted a petition for cancellation of six registrations for marks containing the word REDSKINS, finding that the marks, at their respective dates of registration, disparaged Native Americans. Judge Bergsman dissented, concluding that the petitioners had failed to prove disparagement by a preponderance of the evidence. This is the second time the TTAB considered a petition for cancellation of these registrations. In the first case, the United States Court of Appeals for the District of Columbia Circuit ultimately ruled that the claims of the Native American petitioners were barred by laches. Six new petitioners who had recently reached the age of majority brought this proceeding. The test for disparagement under Section 2(a) has two parts: (1) what is the meaning of the term as it appears in the mark and as the mark is used?; (2) does the meaning disparage Native Americans? As to the first, the Board concluded that the term REDSKINS, when used in connection with professional football, means Native Americans. As to the second, based on a general analysis of the word (dictionary definitions, reference books, and expert testimony), and the specific views of the referenced group (deposition testimony, newspaper articles, official records, personal letters, and a 1993 Resolution of the NCAI), the majority concluded that “a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with respondent’s services during the relevant time frame of 1967-1990.”

Bayer Consumer Care AG v. Belmora LLC, 110 USPQ2d 1623 (TTAB 2014) [precedential]. [TTABlogged here]. In what the Board called "a matter of first impression," the Board granted Bayer’s petition to cancel Belmora’s registration for the mark FLANAX for “orally ingestible tablets of Naproxen Sodium for use as an analgesic,” on the ground that the mark was being used by Belmora to misrepresent the source of its goods in violation of Section 14(3) of the Trademark Act. The Board found that the record evidence “readily establishes blatant misuse of the FLANAX mark in a manner calculated to trade in the United States on the reputation and goodwill of petitioner’s mark created by its use in Mexico.” Belmora challenged Bayer’s standing at every stage of the proceeding, pointing out that Bayer does not own a registration for the mark FLANAX in the United States and had not used and did not plan to use the mark here. In short, Belmora asserted, no use means no trademark rights. Bayer responded that Section 14 of the Trademark Act, in contrast to Section 2(d), imposes no use requirement. The Board pointed out that Belmora was focusing only on Bayer’s commercial activities within the United States, but was overlooking its own use of the FLANAX mark in this country. The Board found that Bayer met the CAFC’s liberal standard for standing because it established that “it has an interest in protecting its Mexican FLANAX mark.” Belmora asserted that, because its own name and not Bayer’s appears on its product, it could not have misrepresented the source of the product, but the Board found that Belmora's activities indicated otherwise.

In re King Productions, Inc., Serial No. 76703458 (November 19, 2014) [not precedential]. [TTABlogged here].  The Board ruled, in a surprising decision, that the title of a single book or a single DVD is properly refused registration under Section 2(e)(1) on the ground of mere descriptiveness, but is registrable under Section 2(f). The Board observed that, although the registration of a title has often been refused registration under Sections 1, 2, and 45, the proper basis for refusal is Section 2(e)(1) because the title describes the work. The Board reasoned that since a title is capable of registration if it is used for a second work (i.e., as the title of a series), and since courts have protected the title of a single work once secondary meaning has been established, a title is capable of functioning as a trademark. Of course, a Section 2(e)(1) refusal can be overcome by a showing of acquired distinctiveness under Section 2(f). Applicant had a “significant burden” under Section 2(f) because a title is highly descriptive of a book or DVD. Applicant sold only 884 sets of the book and DVD. Its website displayed the mark with apparel and workshops, but the evidence failed to show the extent of exposure of the website (e.g., the number of hits or visitors). The Board found applicant's evidence insufficient to establish acquired distinctiveness, and so it affirmed the refusal under Section 2(e)(1).

Covidien LP v. Masimo Corp., 109 USPQ2d 1696 (TTAB 2014) [precedential]. [TTABlogged here]. In another case of first impression, the Board denied respondent Masimo’s FRCP 12(b)(6) motion to dismiss, ruling that a petition under Section 18 of the Trademark Act is a proper vehicle for restricting a registration of a color mark to a particular shade of that color. Covidien’s application to register the color pink (Pantone PMS 806) for medical connectors and lead wires, was refused under Section 2(d) in view of Masimo’s Supplemental Registration for the color “red” for patient monitoring sensors and cables. Covidien then filed a petition under Section 18 to restrict the cited registration to the particular shade of red (Pantone PMS185) actually used by Masimo. Covidien alleged that such a restriction would avoid a likelihood of confusion. Masimo moved to dismiss, urging that such a restriction is permitted only when the description of the mark is “ambiguous or overly broad,” citing Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478 (TTAB 1998). The Board, however, “also reads § 18 as allowing for, and thus encompassing, relief where a plaintiff alleges that a feature of the description of the mark renders the description not specific to the mark actually used by the defendant.” The Board refused to dismiss Covidien’s petition, but required Covidien to set forth a more definite statement as to respondent’s color, in ordinary language. [Covidien subsequently amended its petition to describe the color of Masimo’s mark as “fire engine red.”]

Read comments and post your comment here.

Text Copyright John L. Welch 2015.