Madrid's Route 66(a): Closed for Repairs?

For the second consecutive week, not a single Section 66(a) application was published for opposition today. Carl Oppedahl, my expert on the subject, says the next batch of 13 Madrid requests for extension will be published on Tuesday, December 14th.


Carl has speculated that the holdup has something to do with the PTO's handling or printing of "special characters" included in some Section 66(a) applications. Those "special characters" may be found here, and are not to be confused with the "standard character set" found here at pages 55775 to 55781.

TTAB Says No To Trade "Undress" Applicant

In what might be the Board's first trade "undress" case, pro se Applicant Joanne Slokevage failed in her cheeky attempt to register the mark FLASH DARE! and Design for pants, overalls, shorts, culottes, dresses, and skirts. In re Slokevage, Serial No. 75602873 (Nov. 10, 2004) [not citable].



Slokevage described her mark as:

"A configuration located on the rear hips comprised of: A label in the center with the words 'FLASH DARE!' on a V-shaped background; and on each of the two sides of it there is a clothing feature (a cut-out area, or 'hole', and flap affixed to seat area with a closure device); the top borders of the 'holes' also forming and continuing the 'vee' shape. The matter shown by the dotted lines is not part of the mark, and the dotted lines serve only to show the position of the mark."

She contended that the elements of the mark, taken together, "create an edgy, eye-catching message suggesting the wearer might 'dare-to-flash' some skin on her posterior."

Ms. Slokevage declined to disclaim the design features, and she likewise declined to offer proof of acquired distinctiveness. The Examining Attorney therefore cited Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 US 205, 54 USPQ2d 1065 (2000) in refusing registration on the ground that clothing features can never be inherently distinctive.

Applicant countered that Wal-Mart is inapplicable because her words-plus-design mark is a unitary mark that is not subject to dissection, and that the combination of all the features provides inherent distinctiveness.

The Board, however, sided with the PTO, rejecting the argument that the subject mark is unitary: "these various elements are not so merged together that they cannot be divided and treated as separable elements." The Board also found the PTO's reliance on Wal-Mart to be well-bottomed, agreeing that the "holes and flaps" portion of the mark constitutes a product design, which cannot be registered absent a showing of secondary meaning. Thus the Board affirmed the PTO's refusal to register on the ground that the mark "constitutes a product design which is not inherently distinctive, and would not be perceived as a trademark under Section 1, 2 and 45 of the Trademark Act."

Under Rule 2.142(g), Applicant was allowed thirty days within which to file a disclaimer of the holes and flaps portion of the mark.

Unlike many applicants seeking trademark protection for a product shape, Ms. Slokevage had already obtained a design patent for her "holes and flaps" invention: U.S. Design Patent No. 410,689, entitled "Garment Rear." (At her website she refers to the patent as follows: "The Hole and Flap Feature is a Registered trademark, U.S. Patent No. Design 410,689.") Owners of inventive product designs typically wait until the market success of the product has been established before considering intellectual property protection. By then, it is usually too late to seek patent protection, since a patent application must be filed within one year of the first sale or offer for sale. Ms. Slokevage, however, did not make that mistake.

[My thanks to Peter Chiabotti for the link to the FLASH DARE! website, which eluded me].

TTAB Nixes Baby Carrier Shape As Functional

In In re Baby Bjorn AB, Serial No. 75751554 (November 18, 2004) [not citable], another product configuration failed to clear the de jure functionality hurdle. Baby Bjorn sought to register the configuration shown here for "soft baby carriers worn on the body," but the Board affirmed the Section 2(e)(5) refusal to register. The Board's functionality analysis, however, left something to be desired.



Applicant described its mark as follows:

"The mark comprises the configuration of a flared, kite-shaped outside front panel of a baby carrier and two vertical stripes placed thereon. The portions of the drawing shown in dotted lines are not part of the mark but are merely intended to show the position of the mark."

After reviewing the applicable law, the Board concluded, in a rather perfunctory analysis, that "the flap design sought to be registered is functional as a whole."

"The curved top of the flap is clearly designed for and promoted as providing support for the baby's head. In addition, the openings near the top of the flap are intended to be used as arm openings for the baby. These openings are clearly functional. Because the flap narrow near the bottom, the baby's legs may easily be placed on either side of the flap."

As to the vertical stripes, even if they are merely ornamental, incidental, or arbitrary, "registration on this application cannot be permitted" because Applicant sought to register the entire flap configuration.

The Board noted the existence of alternative designs for baby carriers, but declared:

"In view of the evidence establishing the functionality of applicant's flap design, these alternative designs do not show that applicant's flap design is not functional."

But did the evidence show anything more that the de facto functionality of the design features? No doubt, the arm and leg openings perform a function, as does the curved top of the flap, but that doesn't mean the design is de jure functional. The question should be whether these particular design features are "essential to the use or purpose of the article or . . . affect[] the cost or quality of the article." TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001). Couldn't these same functions be performed just as well by a baby carrier having a different shape -- e.g., the other carriers on the market?

In my view, the issue should not be whether the design features in question perform a function, but whether Applicant's design performs the functions better than the alternative designs. The Board so indicated at page 7 of its decision:

"The question is not whether there are alternative designs that perform the same basic function, but whether these designs work 'equally well.' Valu Engineering Inc. v. Rexnord Corp., 61 USPQ2d 1422, 1427 (Fed. Cir. 2002), quoting, 1 McCarthy on Trademarks and Unfair Competition, Sec. 7:75, 7-180-1 (4th ed. 2001)."

Unfortunately, the Board failed to analyze whether the features of the Baby Bjorn design perform their functions better than the alternative designs of record. Instead, this Board panel seemed to equate de facto functionality with de jure functionality rather than apply the proper test.

[For the sake of completeness, the Board also considered Baby Bjorn's claim of acquired distinctiveness. It found Baby Bjorn's proofs (12 years of use, over 1 million units sold, and $2 million in advertising expenditures) insufficient, noting that Applicant's advertisements "do not contain any indication that it has promoted the asserted product designs as trademarks, and we have no evidence that consumers have come to recognize applicant's designs as indications of origin.' M-5 Steel Mfg. Co. v. O'Hagin's Inc., 61 USPQ2d 1086, 1098 (TTAB 2001)."]

"THE BEEF JERKY OUTLET" Not Generic For Beef Jerky Outlets

In In re American Food Co., Serial Number 76101362 (September 29, 2004) [not citable], the Board reversed a genericness refusal of the mark THE BEEF JERKY OUTLET for "retail services featuring meat products," even though "beef jerky" and "outlet" were recognized as generic for, respectively, a type of beef snack and a commercial market.


The Board first ruled that the genus of services may be identified as "retail store services featuring beef snacks." Turning to the phrase in question, it applied In re American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999), which holds that, in determining the genericness of a phrase, "the board cannot simply cite definitions and generic uses of the constituent terms of a mark. . . . in lieu of conducting an inquiry into the meaning of the disputed phrase as a whole." 51 USPQ2d at 1836 (emphasis added).

The record evidence, limited to two definitions and Applicant's own brochure, "pertains only to the constituent terms of the mark, BEEF JERKY and OUTLET." Thus the Board was "constrained" to find that "[w]hile THE BEEF JERKY OUTLET is certainly an apt name for a retail establishment that sells strips of dried beef, the evidence does not show that it is used as a generic name for such services. Aptness is insufficient to prove genericness."

The Board, however, expressed some uneasiness with the result:

"Although we have concerns here about the genericness of applicant’s designation, it is the record evidence bearing on purchasers’ perceptions that controls the determination, not general legal rules or our own subjective opinions. Any doubts raised by the lack of evidence must be resolved in applicant’s favor. * * * On a different and more complete record, such as might be adduced by a competitor in an opposition proceeding, we might arrive at a different result on the issue of genericness."

My own uneasiness with the result stems from the fact that the CAFC and the Board apply different tests to the genericness of a phrase and to the genericness of a compound word. In the latter case, dictionary definitions of the constituent words in a mark (like the term SCREENWIPE in In re Gould Paper Corp., 5 USPQ2d 1110 (Fed. Cir. 1987)) may alone be sufficient to establish genericness.

Thus under current genericness principles, the Board may well have found the compound word THEBEEFJERKYOUTLET to be generic. That is something to chew on over the holiday.
.

TTAB OKs "REALTOR" For Tires

Noting the "relatively sparse evidence of record," the TTAB ruled in National Ass'n of Realtors v. Titan Int'l, Inc., Opposition No. 91125778 (Sept. 28, 2004) [not citable], that the mark REALTOR for tires is not likely to cause confusion with the National Association of Realtor's registered marks REALTOR, REALTOR.COM, and REALTOR VIP for various real estate-related services.
NAR pointed out that its REALTOR VIP member benefits program provides a $500 cash allowance toward the purchase of certain automobiles, and further that its "REALTOR Family marks" are used in connection with other consumer products and services unrelated to real estate, such as museum memberships and flowers. Thus Opposer argued that its members are

"likely to see a direct parallel between applicant's use of the REALTOR mark on tires and Opposer's allowing its REALTOR Family of marks to be used to identify other products or services of third parties whom Opposer is recommending to its members."

The Board, however, pointed out that what the NAR provides to its members is the discount, not the actual goods or services. The fact that "applicant's mark may call to mind opposer's REALTOR mark is not dispositive of the likelihood of confusion claim herein."

NRA contended that its REALTOR mark is famous, but its proof of fame fell short; in any case, the Board found no evidence that such fame would extend to the REALTOR VIP discount program.

"Simply put, opposer has not shown that it has become known for the sale of any consumer products like tires, or that its REALTOR mark has become identified with such goods. * * * To hold otherwise would result in giving opposer a right in gross which is contrary to principles of trademark law and to Section 2(d) of the Trademark Act."

TTAB Says "WAREHOUSE" Generic for Retail Store Services

In In re Warehouse Fashion Limited, Serial No. 76048329 (October 19, 2004) [not citable], the TTAB affirmed a genericness refusal of the term WAREHOUSE for retail store and mail order services in the field of clothing, footwear, and other personal consumer goods.


NEXIS and Internet evidence clearly demonstrated that "warehouse retailing" is the "generic designation of a genus of retailing," in which goods are sold "in a superstore type of warehouse atmosphere where a premium is placed on speeding up the transactions. The facilities are typically in warehouse-sized structures with a minimum of services offered, and the consumer forms the bulk of the functions in a self-service mode."

Applicant contended, however, that although the evidence may show that "warehouse retailing" is generic, WAREHOUSE by itself is not. The Board shelved that argument with a citation to In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998), in which the term ATTIC was held to be generic for sprinklers:

". . . we recognize that applicant's mark does not present the classic case of a generic noun, but rather a generic adjective. In this case, because the term ATTIC directly names the most important or central aspect or purpose of applicant's goods, that is, that the sprinklers are used in attics, this term is generic and should be freely available for use by competitors." 49 USPQ2d at 1199

In Warehouse Fashion the Board ruled that "the mere fact that applicant herein has chosen to not include the term 'retailing' in the mark sought to be registered should not lead to the registrability of the word WAREHOUSE standing alone."

The Board's approach regarding the genericness of this word mark is in rather stark contrast with its treatment of phrases. In considering the genericness of a phrase, the TTAB follows In re American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999), which requires (1) evidence of the genus of goods or services at issue and (2) proof that the general public understands the phrase as a whole to refer to the genus. 51 USPQ2d at 1836. In American Fertility, the TTAB had affirmed a refusal to register AMERICAN SOCIETY FOR REPRODUCTIVE MEDICINE on the Supplemental Register absent a disclaimer of SOCIETY FOR REPRODUCTIVE MEDICINE. The CAFC reversed because the PTO failed to provide any evidence of the public'’s understanding of the phrase as a whole.

In Warehouse Fashion, the Board affirmed the genericness refusal despite the absence of evidence that WAREHOUSE alone is perceived as a genus designation for retail store services. I wonder what the result would have been had Applicant presented the proposed mark as a two-word phrase: WARE HOUSE?

Text Copyright John L. Welch 2005.

Traffic Halts on Madrid's Route 66(a)

Not a single Section 66(a) application was published for opposition today. In fact, this week's Trademark Official Gazette is a mere 295 pages long. Last week's issue contained 712 pages, and the week before, 1245.

My guess is that this slowdown is a consequence of the PTO's move from Arlington to Alexandria. When I run my Feathers! software, it's apparent that not many applications are advancing at the PTO these days. Maybe this is a good time to take a few days off.

TTAB Gives "PERSONAL POST OFFICE" Its Stamp of Approval

I was thinking about taking a hike to my personal Post Office in Nonantum when I was jolted out of my reverie by In re Luppen Holdings, Inc., Serial No. 75372720 (October 26, 2004 [not citable].


Applicant Luppen overcame not one, not two, but three PTO refusals to register PERSONAL POST OFFICE for "hand-held metal scales for weighing letters and packages."

The Board first dispatched the PTO's Section 2(e)(1) mere descriptiveness refusal. The Examining Attorney contended that the mark "immediately conveys that the identified goods are of a 'personal nature' and 'provide a Post Office function.'" But the Board agreed with Luppen that the mark is merely suggestive:

"The combination of PERSONAL and POST OFFICE results in an incongruous term. A prospective purchaser must use a multistage reasoning process to understand the nature of applicant's goods, i.e., the scales are small in size and are for personal use; the scales are a 'substitute' for weighing letters and packages at a post office; thus the scales are in the nature of a 'personal post office.'"

The Board next shredded the PTO's Section 2(a) false connection refusal, finding that POST OFFICE does not point uniquely to the United States Postal Service in light of Luppen's evidence of other uses of the term -- e.g., various summer camps use "post office" to refer to their internal mail processing facility.

Finally, the Board found that the PTO failed to deliver the goods on its Section 2(d) refusal. The Examining Attorney cited four registrations owned by the U.S. Postal Service, including one for the block letter mark UNITED STATES POST OFFICE, for mail services and retail services featuring "mailing materials." The Board, however, concluded that POST OFFICE is "highly descriptive or generic of registrant's services," and is "not a basis for finding the marks in their entireties to be similar." As to the goods and services, the Board observed (somewhat questionably) that hand-held metal scales are "very different" from the stationery, mailing materials, and promotional type items that the U.S. Postal Service sells, and further that such scales are not related "in any meaningful way to the services in the cited registrations."

I have no quarrel with the Board's decision, except for the very last part. I would not be shocked to find the U.S.P.S. selling hand-held metal scales right alongside the bubble wrap and padded envelopes that line the walls of my personal Post Office.

Thus Far In 2004: 12 Citable TTAB Decisions

Through November 2nd, the TTAB has deemed 12 of its decisions "citable," out of about 536 rulings rendered this year. This fraction (1/45) of citable decisions is the lowest since the turn of the century, despite the clamor of the trademark bar for more precedential TTAB rulings. Moreover, the 12 decisions that have been deemed citable cannot exactly be called monumental.

In the last several years, the Board rendered noteworthy rulings on the issues of fraud, dilution, and trade dress protection, but the year 2004 is shaping up to be considerably less interesting. Perhaps the most significant of this year’s citable cases is In re Dell, in which the Board may be signaling an easing of the standard for trademark specimens when the mark is used in connection with products sold on the Internet.

Here are the 12 citable decision, listed in chronological order. Ten of the 12 have been published in the United States Patents Quarterly.

In re Los Angeles Police Revolver and Athletic Club, Inc., 69 USPQ2d 1630 (TTAB 2004) [Section 2(a) - falsely suggesting a connection]

In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) [Rule 2.61(b) - PTO request for information]

Zimmerman v. National Ass’n of Realtors, 70 USPQ2d 1425 (TTAB 2004) [genericness]

In re Gregory, 70 USPQ2d 1792 (TTAB 2004) [Section 2(e)(4) - primarily merely a surname]

Yahoo! Inc. v. Loufrani, 70 USPQ2d 1735 (TTAB 2004) [Section 13 - timely filing of opposition]

Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301 (TTAB 2004) [laches]

Finger Furniture Co. v. Finger Interests Number One, Ltd., 71 USPQ2d 1287 (Dir. of PTO 2004) [attorney disqualification]

Baseball America, Inc. v. Powerplay Sports, Ltd., 71 USPQ2d 1844 (TTAB 2004) [Section 2(d) - likelihood of confusion]

In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004) [Rule 2.56(b)(1) - trademark specimen of use]

In re Consolidated Specialty Restaurants, Inc., 71 USPQ2d 2004 (TTAB 2004) [Section 2(e)(3) - primarily geographically deceptively misdescriptive]

In re Candy Bouquet Int’l, Inc.¸ S.N. 78058216 (Sept. 8, 2004) [genericness]

In re White, S.N. 78175476 (Sept. 8, 2004) [Section 2(a) - falsely suggesting a connection]

Archie Overreaches

I confess that I was never a fan of ARCHIE comics. SUPERMAN better fit my self-image. And I still can't stand that early '70s bubblegum pop song by The Archies, "Sugar, Sugar."

Sugar, ah, honey, honey
You are my candy girl
And you've got me wanting you
Honey, ah, sugar, sugar
You are my candy girl
And you've got me wanting you

Maybe that's why I took particular interest in the TTAB's recent decision in Archie Comic Publications, Inc. v. Chaoyang Baolansi Meticulous & Chemical Co., Opposition No. 91111889 (September 30, 2004) [not citable].

Applicant Chaoyang Baolansi sought to register the mark ARCHÉ in stylized form for various cosmetics.

Archie opposed under Section 2(d), relying on three registrations for the mark ARCHIE (one in block letter form) for comic books, and on its licensing of the marks for comic-related toys, games, and novelty items.

The Board found no likelihood of confusion in view of the dissimilar commercial impressions created by the marks and the differences between comic books and cosmetics. Archie contended that cosmetics are in its "natural zone of expansion," but the Board noted that Archie provided "no evidence of any attempt to bridge the gap from its current or past licensing efforts to cosmetics."

Although the Board acknowledged that ARCHIE comic books have been "very successful and long lasting in the comic book field" and have spawned numerous ARCHIE comic-themed products and various entertainment ventures and promotions, the Board stopped short of embracing Archie's claim of fame: "we conclude only that the marks are well known for comic books. Accordingly, fame is not a dispositive factor in this case."

The Board also found no support for Archie's assertion that its comic books and Chaoyang Baolansi's cosmetics "could be low-priced items bought by unsophisticated girls under the age of 15:" "Opposer has put nothing into the record to establish what percentage of girls 6-14 who subscribe to comic books also are potential purchasers of cosmetics."

Now I know next to nothing about this subject, but I am surprised at the suggestion that, in this electronic day and age, there are still girls out there who subscribe to comic books.

Six Potential Pitfalls In Trademark Prosecution

Several people* have told me that they liked my paper entitled "The Board's-Eye View: Six Potential Pitfalls In Trademark Prosecution," which I presented at the "Hot Topics In Trademark Law" seminar hosted by the Boston Patent Law Association on November 3, 2004.

The paper is divided into six sections, dubbed:

1. Avoiding the "F" Word (i.e., fraud)
2. Dodging Drawing Disasters
3. Passing the Genericness Test
4. Those Phantom Marks Just Keep On Coming!
5. When the Examining Attorney Says Jump . . .
6. Acronym This!

It will also appear in the December issue of Allen's Trademark Digest, and subsequently on the bottom of bird cages across America.

______
* Each person was also asking me for a loan at the time, so I take the compliments with several grains of rock salt.

Ho-Hum! CAFC Affirms TTAB's "DUALSAND" Decision

When the CAFC issues an uncitable decision affirming an uncitable decision of the TTAB, one can hardly expect scintillating reading.

In In re DSS Environmental, Inc., Appeal No. 04-1041 (Fed. Cir. 2004) [not citable], the CAFC affirmed the TTAB's uncitable decision in Application Serial No. 76317128, in which the Board upheld a Section 2(e)(1) mere descriptiveness refusal of the mark DUALSAND for "water and wasterwater filters."

The Board relied on two utility patents (one belonging to Applicant DSS) and 13 Internet articles in finding that "dual sand" is a term "used in the water and wastewater treatment industries to describe a type of filtration process." In fact, Applicant's own patent "uses the term 'dual-sand filtration system' to describe an invention that treats wastewater by using two filters connected in series."

DSS complained that the PTO should have considered its list of third-party registrations purportedly showing how "dual" and "sand" may be used in a "permissibly suggestive manner." The CAFC pointed out, however, that the TMEP, the TBMP, and relevant case law make clear that submission of a list of third-party registrations is not sufficient to make the registrations of record. The court agreed with the PTO's rationale for that policy: "given the high volume of applications with which each examiner works, an expectation that examiners should bear the burden of pringint copies of the listed registrations is unreasonable." In any event, the CAFC noted that, according to the Board, the third-party registrations would not have made a difference anyway.

Therefore, the CAFC upheld the Board's refusal to consider the third-party registrations, and sustained "the Board's decision rejecting DSS's registration application."

Increasing Traffic on Madrid's Route 66(a)

Today's Trademark Official Gazette includes 22 more Section 66(a) applications published for opposition. These Madrid applications are not segregated from the non-Madrid. I found them by opening the .pdf file in Adobe Acrobat Reader 6.0, and then searching for the term "SN 79" (since all Section 66(a) applications have a Serial Number beginning with "79").

To me, the most interesting of the 22 appears at page 328, an application to register what appears to be a stylized letter "P" for certain clothing items. Why does that mark remind me of a certain baseball team in Philadelphia?

Willie Mosconi and Firmant Arthur Franke: Historic Figures and Section 2(e)(4)

I've heard of Willie Mosconi, the master pool player. But Firmant Arthur Franke? Didn't he kidnap the Lindbergh baby? I can barely find him in a GOOGLE (brand) search. All of which makes me think that the TTAB got it right in two recent "surname" decisions.


In considering whether a mark is primarily merely a surname under Section 2(e)(4) of the Trademark Act, the Board considers four principal factors: (1) Is the word a common or rarely used surname? (2) Does anyone connected with the applicant have that surname? (3) Does the word have meaning other than as a surname? (4) Does the word look and sound like a surname? If the Examining Attorney establishes a prima facie case, the burden shifts to the applicant to show that the primary significance of the mark is something other than that of a surname.

In two recent cases, applicants attempted to overcome the PTO's prima facie showing by proving that the surname in question will be viewed by the relevant public as referring to a particular historic figure, and thus would not be viewed primarily merely as a surname. One applicant succeeded, one failed.

In In re Indian Indus., Inc., S.N. 76481665 (Sept. 22, 2004) [not citable], the Board found the mark MOSCONI for billiard equipment not to be primarily merely a surname. The applicant found itself behind the proverbial 8-ball when the Examining Attorney established that the word "Mosconi" looks and sounds like a surname, that individuals connected with Applicant have this surname, and that “the ordinary meaning of the term MOSCONI is merely as a surname.” But the PTO's evidence was outweighed by Indian's proof of the "strong association between the involved goods and the late Willie Mosconi," a figure of historical significance in the field of billiards whose name is “synonymous with the game.” The Board found this case analogous to In re Pyro-Spectaculars, Inc., 63 USPQ2d 2022 (TTAB 2002), in which the mark SOUSA was deemed registrable for fireworks and entertainment services "because potential purchasers would associate patriotic events with an historic figure well known in our history for his patriotic music."

Curiously, Indian's survey evidence showed that "at least 21%" of the relevant purchasing public associated Mosconi with the game of pool. Doesn't that raise the following question? -- what percentage of the survey respondents thought MOSCONI was merely a surname, and never heard of Willie Mosconi? What if that figure was more than 21%?

In the second case, In re Gibson Piano Ventures, Inc., S.N. 76411174 (Sept. 22, 2004) [not citable], the applicant's "historic figure" approach hit a sour note: the Board affirmed a surname refusal of the mark FRANKE for pianos. The PowerFinder database includes 3,564 residential listings for the surname FRANKE, and the Examining Attorney submitted the results of a search that retrieved 14,675 articles containing references to persons named FRANKE. Negative dictionary evidence also supported the refusal (i.e., there appears to be no other meaning for the word "franke," other than its surname meaning). Gibson contended that purchasers would perceive the mark as referring to “Firmant Arthur Franke,” an allegedly famous Polish piano maker. However, Gibson provided no evidence to support that contention, and the Board therefore found this case to be readily distinguishable from those involving the names of famous historical personages like SOUSA, M.C. ESCHER, and DA VINCI.

Too bad the Gibson decision is not citable. Were it citable, Firmant Arthur Franke may have finally achieved some measure of the fame that apparently has escaped him to date.

Manny, Moe & Jack Cry "Fraud!" -- And the Board Agrees.

Growing up in Chicago, I never saw a "Pep Boys” store. Our automotive needs were served by the Western Auto on Halsted Street. I was, however, vaguely familiar with Manny, Moe & Jack from their anatomically incorrect caricatures that appeared on a matchbook someone showed me at school.

In the past two years, however, the TTAB has twice found that PEP BOYS is a famous mark for Section 2(d) purposes. But in each case the Section 2(d) claims were dismissed because the challenged mark and the PEP BOYS mark were too dissimilar.

The Boys provided a carload of evidence to show that PEP BOYS is a famous mark for retail stores services featuring automotive parts and accessories. The Board noted that the PEP BOYS mark has been in use for 80 years, that annual sales now approach $2 billion, and that PEP BOYS ranks as one of the top five automotive service providers in the country.

Nonetheless, in The Pep Boys Manny, Moe & Jack of California v. Cherng Lian Ent Co, Opposition No. 91108772 (April 16, 2003) [not citable], the Board found the PEP BOYS mark not confusingly similar to the mark ROADBOY & Design for automobile lights. And in The Pep Boys Manny, Moe & Jack of California v. Hanharutaivan, Opposition No. 91105133 (Sept. 29, 2004) [not citable], the Board dismissed a Section 2(d) claim directed at the mark CARRYBOY & Design for various truck accessories. (The Board also dismissed a dilution claim in the first case for the same reason – the marks were too dissimilar.)

However, in the Hanharutaivan case the PEP BOYS were victorious on two grounds. First, the opposed application was deemed void ab initio because Applicants failed to show any “technical trademark use” of the challenged mark in commerce as of the time they filed their use-based application. Although Applicants had made “internal” shipments of product from Thailand to the US and had displayed the product at a trade show prior to the filing date, the first sale of goods occurred more than six months after the filing date.

Second, the PEP BOYS prevailed on the ground of fraud. During prosecution, Applicant falsely declared to the PTO that “goods have been shipped in interstate commerce between Thailand and the U.S. beginning March 1994 by the distributor, Truck Style, Inc.” In fact, no one shipped goods beginning in March 1994 between Thailand and the U.S. Applicants tried to explain their misstatements on the basis of “language difficulties” and confusion as to the meaning of “use in commerce,” but the Board was not sympathetic:

“we agree with the Opposer that the statements made in the declaration were made knowingly. This Board will not tolerate a situation where applicants knowingly provide false, material information to counsel for preparation of a declaration so critical to the application process.”

Thus one is left to conclude that the PEP BOYS may be eighty years old, but they sure have some fight left in them.

Trade Dress and the TTAB

Since the Supreme Court’s decisions in Wal-Mart (2000) and TrafFix (2001), the TTAB has not been kind to product configuration trade dress. The Board’s approach to registrability is summed up in the title of my recent article, "Trade Dress and the TTAB: If Functionality Don’t Get You, Nondistinctiveness Will," 18 Allen’s Trademark Digest 5 (November 2004).

The TTAB’s two most recent (and uncitable) product configuration decisions, oddly both involving wire cage devices, demonstrate the difficulty faced by an applicant seeking to overturn a refusal to register a product shape. In each case, the Applicant’s own boastful advertising (coupled with pertinent utility patents in one case) proved fatal on the issue of functionality. Furthermore, in each case the Board, for the sake of completeness, went on to consider the secondary meaning issue, and (as a sort of bonus refusal) ruled that the Applicant had failed to meet the higher Section 2(f) burden applicable in product configuration cases.

In the first case, In re Backflow Prevention Device Inspections, Inc., Serial. Nos. 76016339-41 (Aug. 31, 2004), the Board affirmed Section 2(e)(5) refusals to register three product configurations as trademarks for “enclosures for protection of backflow assemblies, namely, a metal cage placed over backflow assemblies,” finding the marks to be de jure functional. Each mark consisted of “a configuration of an enclosure with no sharp corners . . . .”


Applying the CAFC’s Morton-Norwich factors, the Board noted that Backflow’s own advertisements stated that pedestrian safety is an important function of the enclosures (which cover above ground water pipes and the like) and that the “no sharp corners” feature of the designs is critical to this function. As to Backflow’s acquired distinctiveness claim, the Board found its proofs inadequate: unimpressive sales and advertising figures and several uniform and conclusory statements from purchasers and industry personnel, but nothing to indicate the designs themselves were promoted as trademarks.

In the second, In re The Danielson Co., S.N. 76406586 (Oct. 27, 2004), the Board affirmed a Section 2(e)(5) refusal to register the configuration of a crab trap “having a generally square foot print and a height generally between 40% and 60% of its length or width.”


This Board panel applied the Valu Engineering factors (a/k/a the Morton-Norwich factors), and found that utility patents and advertising materials disclosed the utilitarian advantages of the applied-for design – namely that half-square traps “set more easily” and are “less likely to tip over.” As to acquired distinctiveness, despite Danielson’s use of the “mark” since 1975 and its sales of $500,000, there was no indication that it had promoted the design as a trademark or that consumers recognize the design as a source indicator.

As discussed in my article, if the utilitarian advantages of the product design are disclosed or claimed in a utility patent, or if the advantages have been touted in advertising, there is little or no change that an Applicant can convince the Board to overturn a Section 2(e)(5) refusal. Even if the de jure functionality hurdle is cleared, the applicant must then face the heavier Section 2(f) burden that applies to product shapes. Unless the applicant has made a significant effort to promote the product shape as a trademark, there is little hope that the Board will find the evidence sufficient to prove secondary meaning.

Some Suggestions for Streamlining TTAB Proceedings

By the time I got to Phoenix for the INTA Mid-Year Meeting, I had a chance to read John M. Murphy's recent article entitled "Playing the Numbers: A Quantitative Look At Section 2(d) Cases Before The Trademark Trial and Appeal Board," 94 Trademark Reporter 800 (July-August 2004). Articles about the TTAB are rare, and this one deserves thoughtful consideration.
JW Marriott Desert Ridge Resort & SpaPhoenix, Arizona
Mr. Murphy reviews the TTAB's Section 2(d) inter partes cases decided in the year 2003, some 67 in all, and concludes that Board proceedings take too long and are unnecessarily complicated. The median time from filing to decision was 3.2 years, with the longest running 18.2 years (with the help of 22 extensions of time). In nearly half of the decisions, the first two du Pont factors – the similarity of the marks and the similarity of the goods/services – were the only decisive, with other factors (like channels of trade and the defendant’s intent) playing a subsidiary role.

Murphy lays the blame for these problems on the lack of supervision of proceedings by the Board and on the extensive discovery permitted. He thinks that, in light of the simplicity of the issues in many cases, more proceedings should be decided on summary judgment. Murphy also urges that discovery be curtailed -- through mandatory disclosures coupled with limits on the number of depositions and interrogatories -- and he recommends closer case management by the Board to reduce “delay, nuisance and expense.”

In my own experience, cases are often delayed because the parties want them delayed – e.g., in order to discuss settlement, or just to avoid the expense of going forward at that time. Thus “delay” in and of itself is not necessary undesirable. We can all agree, however, that “nuisance” should be eliminated and “expense” minimized. That’s where the Board and its interlocutory attorneys should aim their efforts – by keeping a close and critical eye on the duration of the discovery period, and by expanding the use of telephone conferences between the interlocutory attorney and counsel to decide discovery disputes promptly and rein in obvious abuse. I would also limit the number of interrogatories to 40 instead of 75, jettison the Rule allowing a responding party merely to file a general objection if it believes the interrogatory count exceeds the limit, and require responses to the first 40 parts and subparts regardless of the total count. I also believe that some type of mandatory disclosure should be instituted, and that the Board’s standard protective order should be entered automatically in every case, unless the parties jointly request that it be modified or eliminated in a particular case.

I expect to discuss TTAB reforms in future postings. If you have any thoughts on the matter, please e-mail them to me at jwelch@foleyhoag.com.

Ouch! The Worst TTAB Decisions of 2004?

or the past several years, I have been so bold as to publish my choices for what I call "The Top Ten TTAB Decisions" for the year. My selections for 2003 may be found here. This year, I'm thinking of compiling another list: the worst decisions of 2004. This idea struck me like a toothache recently when I read the Board's decisions in Fox v. Hornbrook , Opposition No. 91121292 (Aug. 25, 2004), and In re Donell, Inc., Serial No. 75527923 (Sept. 24, 2004).

In Fox v. Hornbrook, an opposition involving dueling dentists, the Board came to the remarkable conclusion that the phrase DENTISTRY FOR THE QUALITY CONSCIOUS is generic for dental services. In an analysis that may be generously described as perfunctory, the Board ruled that “such phrase is so commonly used in the field of dentistry as a designation for a high level of, or excellence in, dental care services as to be generic, in the sense that the slogan essentially denotes a category or class of dentistry to the general public as well as to members of the dental profession.” Opposer Fox did not claim that the phrase was merely descriptive, and so the Board, in its apparent eagerness to sustain the opposition, chose to force-fit the applied-for mark into the genericness pigeonhole in order to deny registration. (Reminds me of my last trip to the dentist.) One is left to wonder whether there is a class of dental services called DENTISTRY FOR THE QUALITY UNCONSCIOUS? In Donell, the Board ruled that the mark BOO BOO CREAM is not merely descriptive for a topical wound cream, concluding that BOO BOO CREAM falls on the suggestive side of the distinctiveness teeter-totter. According to the Board, for Applicant’s goods the term BOO BOO is “unique and inventive in the sense that it is a child’s term used to denote a sophisticated product.” Judge Holtzman wrote: “[f]rom a child’s perspective, you do not ‘heal’ a boo boo, you ‘make it better’ which in that child’s mind has nothing to do with ‘topical wound healing agents.’” I would have thought, however, that parents are the purchasers of topical wound creams, not children. I dare say that the cutesy phrase “boo boo cream” conveys quite a bit of information about a skin cream: that it's meant for slight wounds like those occasionally suffered by children. Well, that makes two for my "worst" list. Please e-mail your nominations to me at jwelch@foleyhoag.com

First Section 66(a) Application Published Today!

Today, for the first time, a Section 66(a) Request for Extension of Protection was published for opposition. Reportedly, 22 more are in the queue for publication next Tuesday, November 16th. Today's application is Serial No. 79000752, owned by Merck KGaA of Darmstadt, Germany, for the mark OSTEOSOFT for certain chemicals and pharmaceuticals. Carl Oppedahl, at Oppedahl & Larson's patents.com website, provides some interesting comments here regarding this application.

TTAB practitioners should note that the rules for opposing a Section 66(a) application differ in some important respects from those applicable to a "non-Madrid" opposition. Those differences are discussed in a paper that I co-authored with Ann Lamport Hammitte, entitled "TTAB Practice and the Madrid Rule Changes," published early this year in Intellectual Property Today.

For example, once a Notice of Opposition to a Section 66(a) application has been filed, the Notice may not be amended to add grounds for opposition after the opposition period ends. Thus, unlike in "non-Madrid" oppositions, a Section 66(a) opposer cannot wait for discovery to determine whether a ground such as fraud is available. On the other hand, FRCP 11, applicable to opposition proceedings pursuant to Trademark Rule 2.116(a), requires that an attorney or unrepresented party have a good faith factual and legal basis for the allegations made in a pleading. The TTAB practitioner thus may face a drafting dilemma in preparing the Section 66(a) Notice of Opposition.

Leo Stoller loses again

Leo Stoller, frequent TTAB litigant, has lost another one. On October 8, 2004, the CAFC affirmed (in an unpublished opinion in Appeal No. 04-1305), the TTAB's decision in Stoller v. Ponce, Opp. No. 91120339 (Jan. 22, 2004). Here's the skinny on the Board's decision (from the item I wrote for the March 2004 issue of Allen's Trademark Digest): The Board dismissed this opposition to registration of the mark STEALTH SHELF for "shelving," on the ground that Opposer Leo Stoller failed to introduce properly any evidence to demonstrate standing or to support any of his pleaded grounds. 

The "testimonial depositions" submitted by Stoller were apparently prepared by him rather than a court reporter. As to his own deposition, Stoller asked a single "question": "I am submitting into evidence the attached affidavit of Leo Stoller in support of Opposer's opposition." The document was signed before a notary and an affidavit of Stoller was attached. The trial deposition of the other witness was submitted in like fashion.

The Board rejected these purported testimony depositions because they violate Trademark Rule 2.123: affidavits may be accepted as testimony only with the written agreement of the parties. Although Applicant Ponce, appearing pro se, did not move to strike Opposer's testimony, the Board refused to find the rule "for taking testimony by having questions and answers recorded by an officer to be a merely technical requirement . . . . Rather, such a procedure goes to the very heart of the taking of an oral deposition."