TTAB Says "ALL AMERICAN WOMAN" Not Merely Ornamental

In one of the shorter opinions of this short year, the Board reversed an ornamentality refusal to register ALL AMERICAN WOMAN for wearing apparel (WOMAN disclaimed). In re Big American Man, Serial No. 76200528 (January 18, 2005) [not citable].

Big American Man's specimen of use was a t-shirt on which the mark appeared "in a very small manner on the upper left corner of the front of the shirt (i.e., above the breast pocket)." The Examining Attorney cited Sections 1, 2, and 45 of the Trademark Act in refusing registration on the ground that "the specimen shows the proposed mark used as mere ornamentation."

Applicant's specimen of use
The Board totally disagreed:

" . . . we fail to understand the Examining Attorney's argument that consumers would perceive applicant's mark ALL AMERICAN WOMAN, as used on applicant's specimen, as anything other than a trademark. Applicant's mark is not presented in an extremely large fashion such that it might be perceived as a statement about the wearer, and thus serve as mere ornamentation. Likewise, applicant's mark is not repeated over and over on the specimen such that it might appear as mere ornamentation."

To this writer, the term "All American Woman" might well be perceived as a boastful "statement about the wearer," even if it appears only in small type. Perhaps this clothing line is aimed at shy women who prefer to boast discretely!

Does this decision point the way for other clothing applicants to obtain registration of their arguably ornamental marks: place them discretely on the clothing specimens, preferably in "a very small manner over the breast pocket?"

All American Woman?

USPTO Approves "UCKFAY" Trademark For Clothing

My pig-Latin is a bit "ustyray," but it seems to me that the mark UCKFAY, published for opposition on November 16, 2004, fits into the same scandalous pigeonhole as A**HOLE. Readers will recall that A**HOLE was deemed vulgar by the TTAB in the recent In re Zaharoni decision, discussed here by the TTABlog. [For those who are not pig-Latin literate, lessons may be found here and an English-to-Pig Latin translator here.]


The UCKFAY application (Serial No. 78366377) was filed on February 11, 2004, based on the applicant's intent-to-use the mark for various clothing items. It sailed through PTO examination. A check of the TTABVUE database indicates that an opposition has not been filed, and so we can expect a Notice of Allowance to issue soon. The PTO will have another opportunity to examine the application when and if a Declaration of Use if filed. Generally, such a "second examination" will not re-visit issues that could have been raised in the initial examination, but in cases of "clear error" -- i.e., "an error that, if not corrected, would result in issuance of a registration in violation of the Act" -- the PTO may issue new requirements or refusals. See Trademark Manual of Examining Procedure, Section 1109.08. It remains to be seen whether UCKFAY will survive a "second examination."

The same applicant, an individual residing in New Jersey, owns 32 other pending applications for what might loosely be called a "family" of pig-Latin marks. Included are more marks in the UCKFAY mold: ITCHBAY, UCKSAY, ODAY EMAY (that's a tricky one), ARDHAY, ASSWAY, ICKLAY, ICKDAY, and EXSAY -- all of which have been published for opposition. Some of the marks are rather innocuous (e.g., OOLCAY, UPIDSTAY, UMBDAY), some rather amusing (IGPAY, ATINLAY).

The identified goods are ordinary clothing items like suits, ties, shirts, and tuxedos. [Maybe it's just me, but I can't see someone wanting to wear an UCKFAY brand tuxedo.]

Perhaps this applicant is cleverly exploiting a hole in the doctrine of foreign equivalents. Does that doctrine apply to pig-Latin? I hope a few law students read this, because that's definitely a topic for a third-year paper.

The TTAB's Dysfunctional "Family of Marks" Doctrine

The "family of marks" doctrine is often invoked by hopeful Section 2(d) opposers, but its applicability is almost always rejected by the Board. For example, recently in Virgin Enterprises Ltd. v. Kay Guitar Co., Opposition No. 91154392 (November 23, 2004) [not citable], Opposer Virgin proved use and registration of dozens of VIRGIN marks in various forms, but the Board turned a deaf ear to its claim to a family of "Virgin" marks. As usual, the Board cited J&J Snack Foods Corp. v. McDonald's Corp., 18 USPQ2d 1889 (Fed. Cir. 1991), for the proposition that "[s]imply using a series of similar marks, or the mere fact of registration of many marks with a common 'surname,' does not of itself establish the existence of a family."


In the J&J Snack Foods case, McDonald’s successfully opposed applications to register McDUGAL McPRETZEL and McPRETZEL in stylized forms for soft frozen pretzels. McDonald's relied on a family of marks "wherein the 'Mc' formative is combined with a generic name, including the marks McDONUT for doughnuts, McPIZZA for a pizza product, and McMUFFIN, McCHICKEN, and McRIB for sandwich-type products." J&J argued that its marks were not confusingly similar to any one of the McDonald's marks, and pointed out that McDonald's did not use or own the "Mc" formative by itself as a trademark. The CAFC, however, agreed with the Board that McDonald's owns a family of "Mc" marks, and that the public is likely to view J&J's marks as part of that family.


The J&J Snack Foods case, however, is not very informative as to what one must prove to establish a "family of marks." McDonald's extensively promoted its various marks using the "Mc" formative, and the CAFC noted McDonald's 1987 annual sales of more than $14 billion dollars. But there apparently was no evidence that McDonald's promoted the "Mc" formative by itself, or utilized any so-called "look for" advertising that would call attention to the "Mc" formative. Thus did McDonald's do anything more than use a series of similar marks? In Virgin, the Board said that mere use of "a series of similar marks" was not enough to establish a family. Why was it enough for McDonald's in the J&J Snack case?

A rare exception to the Board's general practice of rejection of the "family of marks" claim is found in Miss Universe L.P. v. Rainbow Productions and Publications, Inc., Opposition No.. 91122676 (November 10, 2004) [not citable]. The Board ruled that Opposer Miss Universe owns a family of MISS . . . USA marks for beauty pageants, but the decision provides virtually no analysis as to how the Board reached that ruling. [In any case the Board made no apparent use of the "family of marks" finding in reaching its decision.]


Perhaps part of the explanation for these "family or marks" rulings lies in the fact that one expects the terms "Mc" and "Miss" to be followed by another term. "Mc" and "Miss" are themselves formatives, and use of several marks with either of those formatives will more likely be perceived as establishing a "family" of related marks. "Virgin," on the other hand, does not suggest family formation.

In any case, the establishment of a "family of marks" claim remains a hit-or-miss proposition for opposers -- mostly miss.

USPTO Launches TDR System For Online Access to Pending Application Files

The TDR system has been launched. I wasn't kidding when I blogged an hour ago that it would be available "very soon."

For access, go to this webpage.


[My thanks to Michael Hall for bringing this to the TTABlog's attention].

PTO Announces TDR System for Online Access to Pending Application Files

In a significant development for TTAB practitioners, the USPTO is about to launch its TDR (Trademark Document Retrieval) system, which will allow online access to trademark application files. Initially, users will be able to access all pending applications and all Madrid filings. Access to files of issued registrations will follow.


According to the PTO website:

"... the USPTO is pleased to highlight here the up-coming deployment of Trademark Document Retrieval (TDR). TDR will be accessible by clicking on "View Documents," under the heading of Trademarks on the front page of the USPTO web site.

"Through TDR, a user will be able to view and download any or all documents contained in the electronic file wrapper of all pending Trademark applications, as well as many Trademark Registrations. When TDR is first deployed, a user will be able to access all pending applications and all Madrid Protocol filings, as well as many Trademark Registrations via TDR. The USPTO is in the process of converting all remaining Registrations into a digital format so as to permit future TDR access. This conversion process is expected to take several years.

"Downloads will be converted into PDF format, for viewing with any PDF viewer."

A formal PTO announcement of the launching of the TDR system is expected very soon.

Leo Stoller Claims TTAB Constitutional Violations After Dismissal Of Opposition

After dismissal of an opposition due to his filing fee error, frequent TTAB litigant Leo Stoller has charged the TTAB with violation of his rights to due process and equal protection under the 5th and 14th Amendments, respectively.

U.S.S. Constitution, Charlestown Naval Yard
In Central Mfg. Co. v. Market America, Inc., Opposition No. 91158582, the Board invoked Rule 2.101(d)(3)(1) in dismissing the opposition as a nullity because it was not timely filed with a sufficient filing fee. After the opposition was instituted, the Board recognized that Opposer's check for the $300 filing fee had been returned for insufficient funds. The Board stated:

"If an otherwise timely opposition is submitted on paper, and if the opposition is not accompanied by any fee or a sufficient fee to pay for one person to oppose the registration of a mark in at least one class, the opposition will be rejected."

Central and Stoller have filed a request for reconsideration of the Board's ruling, alleging Constitutional violations. Stoller claims that he did not have notice of the PTO's change prior to his filing of the Notice of Opposition on November 4, 2003. He asserts that notice was first given at the PTO website on November 6, 2003, when the PTO made available an index to changes in the Trademark Board Manual of Procedure. Stoller states that, had he been given proper notice, he would not have relied on the Board's prior practice and would have obtained a certified check.

"Not allowing a party the opportunity to cure a fee requirement, as was previously the case, clearly is an outrageous violation of the Opposer's Due Process and Equal Protection Rights."

However, one should note that the amendment to Rule 2.101 appeared in the PTO's Final Rule published in the Federal Register on September 26, 2003, which states that the rule changes would become effective on November 2, 2003.

As pointed out in Welch and Hammitte, "TTAB Practice and the Madrid Rule Changes," Intellectual Property Today (February 2004), the wise practitioner can avoid this insufficient fee problem by authorizing the PTO to charge necessary fees to a properly-maintained deposit account.

Stoller is not completely without a remedy here. The TTAB will, in denying his request for reconsideration, likely point out that Stoller may petition for cancellation of any registration that issues on the subject application.

Text and photograph ©John L. Welch 2005. All Rights Reserved.

Clear Bottle Appeal May Clarify TTAB Functionality Doctrine

Those of us who are still struggling to get a handle on the current state of functionality law should keep an eye on pending CAFC Appeal No. 05-1029 (docketed 10/15/04) from the TTAB's decision in Texaco Inc. v. Pennzoil-Quaker State Co., Opposition No. 91120520 (May 28, 2004) [not citable]. Texaco motored to victory in its challenge to registration of "the color clear used on containers for motor oil." The Board found the applied-for mark to be de jure functional and, in the alternative, lacking in acquired distinctiveness.


In its decision, the Board continues to follow its own path through the functionality forest. Although noting that "[a]ny discussion of utilitarian functionality" should begin with TrafFix Devices, Inc. v. Marketing Displays Inc., 523 U.S. 23, 58 USPQ2d 1001 (2001), it once again turned to CAFC precedent as the foundation for its decision. The Board pointed out that in Valu Engineering, Inc. v. Rexnord Corp., 61 USPQ2d 1422 (Fed. Cir. 2002), the CAFC "held that this decision [TrafFix] does not alter the oft-cited case of its predecessor in the area of functionality, In re Morton-Norwich Prods., Inc., 213 USPQ 9 (CCPA 1982)":

"The Morton-Norwich case, cited by both parties to this proceeding, clarified that in determining whether the configuration of a plastic spray bottle container was de jure functional, one needs to look to the competitive need to copy the claimed design feature."

Although TrafFix seemingly ruled out a "competitive need" analysis in cases of utilitarian functionality, the CAFC and the TTAB continue to consider alternative designs as relevant to the issue of "whether a feature is functional in the first place." Valu Engineering, 61 USPQ2d at 1427.

The Board found the evidence under the third Morton-Norwich factor (the availability of alternative, functionally-equivalent designs) to be the most damaging: Pennzoil-Quaker introduced the clear bottle after determining that there was an "obvious competitive advantage" to displaying the coloration of its products, even though the clear bottle is more expensive to manufacture.

Furthermore, under the second Morton-Norwich factor (advertising that touts the design's utilitarian advantages), Applicant occasionally promoted the utilitarian benefits of the clear bottle: e.g., consumers can see what they are buying; it gives consumers the impression that the oil is pure and clean; and consumers can tell exactly how much oil has been used.

Thus Texaco made a prima facie showing of de jure functionality: it pointed out "numerous non-reputation related reasons for adopting a clear container, and these are competitive reasons that should not be denied to applicant's competitors." Pennzoil-Quaker failed to rebut that showing.


For purposes of completeness, the Board also considered Pennzoil-Quaker's evidence of acquired distinctiveness, noting that in a case such as this the Section 2(f) showing must be "much greater" than for a descriptive term, a slogan, or a label. The Board took particular note of "the ubiquity of nearly identical packaging for many related automotive products." Despite Pennzoil-Quaker' expenditure of millions of dollars promoting its motor oils, its prominent use of such slogans as "The Difference is Clear," and its inclusion of the statement "CLEAR BOTTLE IS A TRADEMARK OF PENNZOIL QUAKER STATE COMPANY" on the containers, Pennzoil-Quaker's proofs fell short on the Section 2(f) issue.

Many of the federal courts have struggled with interpretation and application of the Supreme Court's TrafFix ruling. The TTAB and the CAFC have chosen to adhere to an approach that they find comfortable, one they have applied since the 1982 decision. The appeal of the Texaco decision may provide the CAFC with another opportunity to explain its view of functionality law.

As a final note, a fuller discussion of the Board's functionality decisions over the last few years may be found in my recent article, "Trade Dress and the TTAB: If Functionality Don’t Get You, Non-Distinctiveness Will."

Text Copyright John L. Welch 2005. All Rights Reserved.

Still More Reading: McCarthy on Dilution

The Trademark Reporter has made available on-line, Professor J. Thomas McCarthy's recent article entitled "Dilution of a Trademark: European and United States Law Compared", 94 Trademark Reporter 1163 (November-December 2004). McCarthy's comments and observations are well worth reading. This brief note will focus on his views regarding American dilution law.

McCarthy observes that, in this country, the almost 400 reported judicial decisions (trial and appellate) interpreting the FTDA have shed "more heat than light" on the meaning of the anti-dilution law. He says that, in his experience, the concept of dilution has created more "doctrinal puzzlement and judicial incomprehension" than any other part of trademark law. That should make us all breathe a little more easily as we grapple with the FTDA.

McCarthy finds the Supreme Court's decision in Moseley v. V Secret Catalogue, Inc. to be "terse and cryptic." In his view, the Court created confusion regarding the type of proof required to establish a dilution claim, particularly when the marks at issue are not identical. Apparently, in such cases, mental association is not enough to prove actual dilution, and additional proof (in the form of expert testimony and survey evidence) will be needed. How much will be needed remains unclear.

Moseley requires proof of actual dilution,not mere likelihood of dilution
More generally, his view is that dilution law should stick rather closely to the proposal originally set forth in the seminal article by Frank I. Schechter, "The Rational Basis of Trademark Protection," 40 Harv. Law Rev. 813 (1927), reprinted in 60 Trademark Reporter 334 (1970): "The Schechter proposal for a new form of protection was limited to situations where the junior mark was identical, when the famous mark was coined or arbitrary and only if the uses were on non-competing and non-similar goods or services."

McCarthy believes that the "extraordinary remedy of an anti-dilution law requires evidentiary rigor by the courts." If a "likelihood of dilution" standard is adopted, as urged by many trademark practitioners, judges should demand "persuasive evidence" that dilution is "probable." That proof should be actual evidence, not mere "theoretical assumptions about what possibly could occur or might happen."

A mark should not be deemed "famous" under the FTDA unless that fame extends throughout a "substantial portion" of the United States. As to "niche" market fame, he repeats his position that the "super weapon" of dilution need not be invoked when "garden variety infringement" principles (i.e., likelihood of confusion) would seemingly suffice.

In short, Professor McCarthy believes the anti-dilution remedy "should be viewed as a unique legal tool to be used only in an unusual case." It should be "reserved for a small, elite group of truly renowned marks," and a violation of the law "should be proven only by an unambiguous case resting on a solid evidentiary base."

It is expected that Congress will, in this session, re-visit the FTDA. An upcoming summit of relevant committees of the ABA, the AIPLA, and INTA will attempt to agree on proposed changes to the statute, one of which changes will be the adoption of a "likelihood of confusion" standard. Professor McCarthy's timely article is a must read for those who plan to join the upcoming debate over the FTDA.

TTAB 2004 Tally: One Dozen Citable Decisions

The polls are now closed and the final results are in. The total number of citable decisions issued by the TTAB in the year 2004 is 12. [TTABlog update: Not exactly. See note below.] Out of some 600 or so decisions rendered by the TTAB during the year, that comes to one citable decision out of every 50, the smallest ratio in recent memory. The dozen citables were listed in an earlier TTABlog posting, here.

This unusual dearth of precedential rulings may well result in an increased clamor for more citable decisions. Could it come to this?

Trademark practitioners march onTTAB offices to protest dearth of citable decisions.

TTABlog Correction: A 13th citable 2004 decision has bobbed to the surface. Details here.

Text ©John L. Welch 2005. All Rights Reserved.

Recommended Reading: "Qualitex Revisited"

In "Qualitex Revisited," 94 Trademark Reporter 1017 (September-October 2004), Christopher C. Larkin traces the curious transformation of the Supreme Court's decision in Qualitex Co. v. Jacobson Products, Inc., 514 U.S. 159, 34 USPQ2d 1161 (1995), from a narrow ruling on whether color alone can serve as a trademark, to an important and unanticipated foundation for subsequent Court decisions on distinctiveness (Wal-Mart) and functionality (TrafFix).

At issue in Qualitex was the green-gold color of certain dry cleaning press-pads. Qualitex Company had been selling green-gold press pads for more than 30 years when it sued Jacobson Products for infringement of its color trademark, registered under Section 2(f). The Supreme Court took the case in order to resolve a split in the circuits, and it ruled that color alone could be registered and protected as a trademark.


Larkin observes that the practical impact of Qualitex on color marks has not been great. Reviewing post-Qualitex color decisions and registration activity, he concludes that "while the decision clarified the requirements for the protection and registration of single colors as marks, it did not relax them significantly or otherwise incentivize numerous would-be registrants to seek to appropriate single colors as marks."

Larkin finds it ironic that Qualitex is now more likely remembered for two issues that were only tangentially addressed by the Court and were not the basis for its decision.

In Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000), the Court cited Qualitex for the proposition that "“with respect to at least one category of marks -- colors -- we have held that no mark can ever be inherently distinctive." 529 U.S. at 211, citing Qualitex, 159 U.S. at 162-163. The Court then ruled that product configuration trade dress is another category that can never be inherently distinctive. Larkin notes, however, that the existence of secondary meaning was not in dispute in Qualitex, and thus any observations therein regarding inherent distinctiveness were arguably dicta. Nonetheless, Qualitex and Wal-Mart are now cited for the rule that a single color cannot be an inherently distinctive trademark.


More troubling to Larkin is the Court's citation of Qualitex in TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001), for the position that the doctrine of functionality is applied differently depending on whether utilitarian or aesthetic functionality is at issue. TrafFix involved straightforward utilitarian functionality -- particularly, the effect of an expired utility patent on the trade dress protectability of a display sign. In order to draw a distinction between the two types of functionality, the Court referred to Qualitex as a case in which aesthetic functionality was at issue.


But as Larkin points out, aesthetic functionality was not the question in Qualitex, and the comments by the Qualitex Court regarding functionality were again mere dicta. Larkin agrees with Professor McCarthy's observation that the reference to Qualitex in TrafFix "further clouded and obscured the issue of whether aesthetic functionality is to be given any weight." However, Larkin notes that most courts have "rejected the doctrine of aesthetic functionality hinted at in TrafFix," at least when expressed as the idea that a purely aesthetic feature can be functional.

Larkin concludes that, fortunately, the reinterpretation of Qualitex has had a "relatively benign" impact on the law of distinctiveness and of functionality. Nonetheless, an understanding of the role of Qualitex is indispensable to understanding of current distinctiveness and functionality principles, and Larkin's article is a very helpful roadmap.

Leo Stoller Faces Formidable Foe in TTAB "STEALTH" Bowl Battle

Jay Spiegel, intellectual property attorney and sometime inventor, is locked in a gridiron battle with frequent TTAB litigant Leo Stoller. Recent filings in Central Mfg. Co. v Premium Products, Inc., Opposition No. 91159950, indicate that this is no friendly scrimmage.

The opposition relates to one of Spiegel’s inventions, the GROUND ZERO® brand football kicking tee, used by every NFL team for the past six years.

Actual GROUND ZERO^® brand tee used by Adam Vinatieriin New England Patriots' Super Bowl XXXVI victory
Recently, Spiegel got the idea of selling his kicking tee in the color green, so that the tee would blend into the grass on a football field and thus might reduce distraction of the kicker. Because of the “stealthy” nature of a green tee placed on green grass, Spiegel chose the mark GROUND ZERO STEALTH for this new version, and he filed a trademark application for that mark in the name of his company, Premium Products, Inc., identifying the goods as “football kicking tees in a green color.”

Central Mfg. Co, owned by Stoller, has opposed the GROUND ZERO STEALTH application on the basis of Central’s ownership of 34 federal registrations and 15 pending applications for marks comprising or including the word STEALTH for a variety of goods and services, several in the sporting goods class.

In a recently-filed memorandum in opposition to Central’s summary judgment motion, Premium describes Central’s STEALTH portfolio as “a mile wide and a millimeter deep.” According to Premium, Central’s evidence of actual use of these marks is “either scarce or non-existent.” Moreover, although Central claims to have dozens of license agreements under its STEALTH marks, it apparently has no written evidence of any steps taken to control the quality of the goods/services offered under the marks. Premium also challenges Central's claims that it has a "family" of STEALTH marks and that its STEALTH marks are famous. Coupling these factual issues with the differences in the involved marks and goods, Premium contends that Central's summary judgment motion must be denied.

Stoller claims that Northrup Grummanuses the STEALTH mark under agreement with Central
For any trademark practitioner who has encountered or will encounter Mr. Stoller and his companies, the papers filed in the GROUND ZERO STEALTH opposition are a treasure trove of information regarding Stoller and his "policing" operations. This is definitely one turf tussle that bears watching.

"TORREY PINES" TTAB Dispute Roils San Diego

A TTAB dispute over the TORREY PINES trademark has the San Diego community all atwitter. Torrey Pines, the city's municipal golf course, is scheduled to be the site of the U.S. Open in 2008. Consequently, the TORREY PINES trademark is about to become a much more valuable property.
The Lodge at Torrey Pines, located adjacent the golf course and the Torrey Pines State Reserve, has petitioned to cancel a registration for the mark TORREY PINES for clothing, golf equipment, and golf instruction services, owned by the Torrey Pines Club Corporation, which runs the pro shop at the golf course. In a pending summary judgment motion, the Lodge contents that the registrant was not the owner of the mark when it sought registration, but was a mere non-exclusive licensee of the city of San Diego. Therefore, the Lodge argues, the registration is void. Registrant apparently argues that the license granted by the city was a "naked" license, and thus the city abandoned its rights in the mark, which registrant now owns. A recent news article in the San Diego Union-Tribune provides background for the TTAB story.

Attendees at the 2005 INTA annual meeting, slated for San Diego in May 2005, may want to take a busman's holiday to the Torrey Pines Golf Course to see just what this brouhaha is all about.

TTAB Sticks A Fork In "STEAKCOUNTRY" Mark

Several years ago, in an article entitled "The Top Ten Losing TTAB Arguments", I chose as the number one losing argument a party's attempt to overcome a Section 2(d) likelihood of confusion refusal by seeking limitation of the identification of goods or services in an involved application or registration. The TTAB, of course, looks to the goods and services as identified, and will not read in limitations based on actual use of the marks.

That same meatless argument was served up by the unsuccessful applicant in In re Lidl Stiftung & Co. KG, Serial No. 76297319 (December 30, 2004) [not citable], in which the Board affirmed a Section 2(d) refusal to register the mark STEAKCOUNTRY for meat products and prepared meals, finding it likely to cause confusion with the mark STEAKOUNTRY, registered in both block-letter and stylized form for restaurant services.


The Examining Attorney contended that the marks are "very similar in commercial impression and identical in pronunciation." Numerous third-party registrations showed "it is reasonable for purchasers to expect both food products and restaurant services to emanate from a single entity" under the same mark.

Lidl Stiftung urged that "STEAK" is a weak formative and that the marks are otherwise distinguishable. As to the involved goods and services, it argued that they are distinct and are offered in different channels of trade: Applicant's goods in its own discount retail food stores, and registrant's services in its own all-you-can-eat buffet restaurants.


The Board not surprisingly agreed with the PTO that the marks are substantially identical. As to the goods/services, the Board pointed out once again that it must analyze the case based upon the goods and services as set forth in the application and registration -- not on the actual use of the marks. Citing, as usual, Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 1 USPQ2d 1813 (Fed. Cir. 1987), the Board declared:

"Because there are no limitations in the respective application and registrations relating to the channels of trade or classes of purchasers, we must presume that applicant's goods and registrant's services encompass all goods and services of the type described, and that they move in all normal channels of trade to all potential customers."

The Board therefore concluded that consumers would likely be confused as to the source of Lidl Stiftung's STEAKCOUNTRY products.

As a side note, in cases in which the identification of goods or the recitation of services in a cited registration is overly broad (e.g., a registration for "computer software"), partial cancellation under Section 18 of the Trademark Act may be available. Such partial cancellations are, if not rare, at least medium rare.

Revised Section 66(a) Chart

The December 14, 2004 TTABlog posting predicted that 84 Madrid-based Section 66(a) applications would be published for opposition on January 11, 2005. That prediction, based on information from a source whose identity will not be disclosed, turned out to be incorrect. In fact, 106 Section 66(a) applications were published on January 11, bringing the total published through that date to 143.

Here is an appropriately revised chart reflecting the number published by the PTO each Tuesday from November 9, 2004 to January 11, 2005. The perceptive reader will recognize that the tower on the right edge of the chart is relatively about 25% taller than that in the previous, erroneous chart.

"COLLEGETOWN" Opposer Flunks TTAB Priority Test

Opposer Collegetown Relocation, LLC, a provider of educational and real estate information services, and purported purveyor of clothing, failed to block registration of the mark COLLEGETOWN for various clothing items. Collegetown Relocation, LLC v. Garan Services Corp., Opposition No. 91122058 (December 29, 2004) [not citable]. With regard to its own items of COLLEGETOWN brand clothing, Opposer was unable to beat Applicant Garan's constructive first use date of August 31, 1998, the filing date of Garan's ITU application. As to Opposer's services, the Board was not persuaded that confusion would be likely vis-vis Garan's goods.


Opposer claimed that it first used the mark COLLEGETOWN for hats and t-shirts on August 12, 1998. The Board pointed out that Collegetown could establish its prior rights either through "technical trademark use" -- i.e., use in commerce as contemplated by Sections 2(d) and 45 of the Trademark Act -- or by use "analogous to trademark use" -- e.g., use in advertising or any other manner of public use that creates an association of the mark with the goods.

Opposer proved a single shipment of a hat and a t-shirt embroidered with "COLLEGETOWN" from Princeton, New Jersey to a woman in Pennsylvania who was a personal friend and a member of Opposer's advisory board. She was asked for her "artistic comments because we will be doing greater production someday and we want to get it right." On August 24, she responded with her observations regarding the font used for the mark.

The Board found this to be "a token, albeit interstate, shipment that was done merely to reserve a right to use the mark on clothing at some future time." The recipient was not an actual or potential customer, but an advisor. Moreover, this transaction was not followed with "any genuine effort or intent to engage in commercial use." During the next two and one half years, Opposer did not sell or distribute any clothing, nor did it have a formal business or marketing plan. The Board concluded that Opposer's activities constituted neither technical trademark use, nor use analogous to trademark use.

Turning to Opposer's services, there was no issue of priority because Opposer owned registrations for the marks COLLEGETOWN and COLLEGETOWN RELOCATION. However, the Board found confusion unlikely because the word "Collegetown" is suggestive of Opposer's services, because Opposer's marks have had minimal public exposure and are thus not entitled to broad protection, and because Opposer failed to show that its services and Applicant's clothing items are related.

". . . opposer has not competed in applicant's intended market. Nor has opposer presented any evidence that it intends to do so. Moreover, . . . there is no persuasive evidence of any genuine intent by opposer to expand into the clothing field."

According to Opposer's website, it remains "hopeful that our products will be available for purchase in early 2005, pending the outcome of a lingering trademark related issue." Right now, prospects are not looking too good for Opposer's clothing line.

The TTAB Blues

It was glacially slow at the Office over the end-of-year holiday, and so I had some time to spare. I tried to watch the movie Ishtar on HBO, but it was so bad that I stopped after 15 minutes and deleted it from my TiVo brand recording machine. However, I figured that even I could write better songs than the ones Dustin Hoffman and Warren Beatty performed. Which led to the 12-bar blues song that I penned below. I haven't written the music yet (my older son says, "don't bother"), but just think of a song like "So Glad Your Mine," recorded by Elvis Presley in 1954, and written by Arthur "Big Boy" Crudup.

<
The TTAB Surname Blues

Filed my application
based on fifty years of use.
Never even dawned on me
the thing could be refused.
But now I feel diluted,
and actually confused.
They won't accept my surname.
I got the TTAB Blues.

Filing was so easy
once I found the Internet.
I fell in love with ESTTA,
but much to my regret,
I didn't read the fine print,
I thought you couldn't lose.
cannot get back my money.
I got the TTAB Blues.

The Board got kinda nasty
when they labelled me "pro se."
I hear they won't reconsider
much of anything they say.
So I guess I should forget it,
Although I hate to lose.
Suppose I could appeal it.
I got the TTAB Blues.

One thing I did discover -
I still can use my name.
Without that circled R, though,
it won't look quite the same.
I wish they'd made it citable,
then I could generate some news.
Yah, and hell could freeze over,
I got the TTAB Blues.
Yah, until hell freezes over,
I got the TTAB Blues.

©John L. Welch 2005

TTABlog Makes The IP Blog "Top Ten"

What a country! A lad from the South Side of Chicago can grow up to make the Top Ten IP Blog list of Managing Intellectual Property! [Free trial subscription required to view the article.]

The 9 other IP blogs chosen (in no particular order) are:

• Trademark Blog
• Invent Blog
• IP Updates
• Lessig Blog
• Eliopoulos IP Law
• IPKat
• IP Litigation
• AUTSMBM
• PHOSITA

TTAB Sees "A**HOLE" As Scandalous

The Board took a dim view of the mark "THE COMPLETE A**HOLE'S GUIDE TO ..." for a "series of books providing information relating to advice, counseling, self-help, and humor." It affirmed a Section 2(a) refusal to register on the ground that the mark comprises immoral or scandalous matter. In re Zaharoni, Serial No. 76351811 (January 4, 2005) [not citable].


The Examining Attorney relied on dictionary definitions and Internet articles to show that "A**HOLE" is a shortened version of "asshole," and "asshole" is a scandalous term. (E.g., a Salon.com article bearing the headline: "Trump revelation. 'I am an a**hole.'").

Applicant Daniel Zaharoni argued that "asshole" also has the non-vulgar meaning of "anus, the posterior opening of the alimentary canal," and thus his mark should be registrable under In re Mavety, 31 USPQ2d 1923 (Fed. Cir. 1994)[BLACK TAIL not scandalous for adult magazines]. Moreover, according to Zaharoni, society does not consider "a**hole" to be scandalous, but rather "has adopted the term . . . as a non-offensive alternative when attempting to categorize provocative products or people."

The Board found the PTO's argument to be well bottomed. The dictionary definitions of record "overwhelmingly indicate that the term 'asshole' is vulgar slang for a contemptible or detestable person." It is that definition that is referred to in Zaharoni's mark, not the body part. In the context of applicant's books, "the non-vulgar meaning of 'asshole' has no applicability."

Thus the Board readily distinguished this case from Mavety, in which the term "tail" in the context of applicant's adult magazines had both a vulgar and equally applicable non-vulgar meaning. Here there was no such double entendre: i.e., an a**hole is an a**hole, and there's no two ways about it.

One piece of evidence that might have helped Zaharoni was absent from the record. The Complete A**hole's Guide to Handling Chicks is available at Wal-Mart. So how scandalous can it be?

Text Copyright John L. Welch 2005. All Rights Reserved.

More Reading: TrafFix and the Expired Design Patent

Clifford W. Browning stirs the still smoldering embers of the Supreme Court's TrafFix decision in his thought-provoking article entitled "TrafFix Revisited: Exposing the Design Flaw in the Functionality Doctrine," 94 Trademark Reporter 1059 (September-October 2004). TrafFix, of course, concerned the impact of an expired utility patent on trademark protection for a product feature. Browning ponders the possible impact of an expired design patent.


In TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001), the Supreme Court refused to decide whether pursuant to the Patent Clause of the Constitution, by its own force, a product feature claimed in an expired utility patent may be freely copied -- i.e., is not a proper subject for trade dress protection. The Petitioner had requested such a ruling, but the Court saw no reason to decide that question:

"If, despite the rule that functional features may not be the subject of trade dress protection, a case arises in which trade dress becomes the practical equivalent of an expired utility patent, that will be time enough to consider the matter." 532 U.S. at 35.

Thus the Court deemed its functionality test to be sufficient for the problem at hand, ruling that an expired utility patent claiming the product feature is "strong evidence of functionality," and that one who seeks trade dress protection in such case carries a "heavy burden" to show that the feature is not functional, "for instance, by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device."

Slokevage "Garment Rear" U.S. Design Patent 410,689
Here, according to Browning, the "design flaw" in the Supreme Court's functionality doctrine is exposed. A product feature that is merely "ornamental" is a potential subject for a design patent. Indeed, new, original, and ornamental designs for articles of manufacture are the very subject matter of design patents. See 35 U.S.C. §171. Browning asks, does TrafFix suggest that an expired design patent would be evidence of the nonfunctionality of the product feature? If so, then TrafFix "puts the functionality doctrine at direct cross-purposes with the view that there is a federal right to 'copy and use' the inventions of expired patents." The functionality doctrine would not prohibit trade dress protection, and yet patent-like protection (of the design variety) would be accorded the product feature despite expiration of its patent protection.

Browning asserts that, should this design patent question ever come before the Court, it will force a decision on the "right to copy and use" issue. The Court will not be able to say, as it did in TrafFix, that the functionality doctrine suffices, because ornamental designs are not functional.

TTAB Not Sold On "ONE PRICE BUYING"

In "The Gambler," Kenny Rogers sings “You got to know when to hold ‘em, know when to fold ‘em,” but joint venturer Ken Rodgers ignored the singer's sage advice. Rodgers and Templeton played out their losing hand in In re Templeton and Rodgers, Serial No. 75544444 (December 21, 2004) [not citable]: the Board affirmed a Section 2(e)(1) refusal to register the mark ONE PRICE BUYING, finding it merely descriptive of publications and instructional materials in the field of marketing (ONE PRICE disclaimed).

Kenny Rogers, not Ken Rodgers

The Examining Attorney relied on dictionary definitions, Internet excerpts, and advertising materials from the applicant’s own car dealerships (Templeton Dodge-Oldsmobile and Ken Rodgers Ford) to demonstrate that ONE PRICE BUYING will be understood by relevant purchasers as signifying the use of the printed materials in marketing or selling goods at a single price.

Templeton Dodge-Oldsmobile, Tysons Corner, Virginia
Templeton and Rodgers (the joint venture) hopelessly argued that the mark is merely suggestive, that the PTO did not establish “any contextual link of the phrase to the class of goods,” and that the mark is “wholly arbitrary” with regard to class 16 goods. It also asserted that the Examining Attorney was incorrect in concluding that it was “reasonable to assume that the printed matter will contain information on one price buying.”

The Board, however, pointed to the Examining Attorney's request under Rule 2.61(b) for "information as to whether any of [the] identified goods will be associated with the marketing or selling of automobiles.” Applicant “did not expressly deny that its involved goods will be about ‘one price buying’” but instead provided a "nebulous" response:

“The mark ‘ONE PRICE BUYING’ is arbitrary and not descriptive of any particular articles in commerce. The term is not associated with any particular goods including automobiles.”

The Board, however, was not impressed with Applicant's sales pitch, instead finding it:

"reasonable to conclude that applicant’s printed materials and instructional materials in the field of marketing of goods will involve the marketing concept of ‘one price buying’ as the literal subject matter thereof -- whether used in training applicant’s employees in applicant’s apparent car dealership, or as marketing to consumers on the showroom floor.”

Templeton and Rodgers, like most applicants who appeal Section 2(e)(1) mere descriptiveness refusals, should have folded their hand sooner. See, e.g., Kenny Rogers, "The Gambler."

Recommended Reading: Trade Dress Rights in Musical Instruments

Robert M. Kunstadt and Ilaria Maggioni present an entertaining and enlightening discussion of current trade dress law in the context of the design of a guitar, in "Tell Tchaikovsky the News: Trade Dress Rights in Musical Instruments," 94 Trademark Reporter 1271 (November-December 2004).


After a brief review of the historical development of acoustic and electric guitars and their basic shapes, the authors turn to the protection of guitar features as trademarks. With the emergence of dominant electric guitar brands in the 1950s, manufacturers looked to the guitar headstock as a way to distinguish the brands. In the seminal TTAB decision in Yamaha Int'l Corp. v. Hashino Gakki Co., 231 USPQ 926 (TTAB 1986), affirmed, 840 F.2d 1572 (Fed. Cir. 1988), the Board found registrable two Hoshino headstock designs for Ibanez brand guitars, and it dismissed Yamaha's oppositions.

Ibanez, Fender, and Gibson headstocks
Although a guitar headstock is de facto functional (it obviously performs the function of holding one end of each guitar string in position at the appropriate tension), the particular shape of an electric guitar's headstock has no effect on the guitar's performance, and thus is not de jure functional.

Other guitar features, however, may and do affect the performance of the guitar -- a fact that, to the authors' dismay, was substantially ignored in the recent federal district court decision in Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 70 UPSQ2d 1911 (M.D. Tenn. 2004). Defendant PRS copied the shape of Gibson's "Les Paul" guitar, which featured a single "cutaway" at the intersection of the guitar's neck and body, rather than the double cutaway commonly found.


The Gibson design, the authors assert, has an important impact on the guitar's performance:

"Having only a single cutaway permits a more rigid connection of the neck to the body. Since the neck and body act as a resonant unit, weakening the connection with a second cutaway reduces the punch of the guitar. The LES PAUL model is well-known for, and desired because of, its ability to punch through the sound of a loud rock band due to its full sound. . . ."

Nonetheless, the federal court ignored the evidence of this functionality, and in addition accorded Gibson trade dress rights in several other arguably de jure functional features of the Gibson design. In the authors' view. this recent decision is a "substantial and unwarranted extension of trade dress protection for musical instruments." They conclude, with apparent justification, that:

"had the court properly appreciated how to play a LES PAUL guitar, the court would not have granted summary judgment for Gibson. At a minimum, the functionality of the alleged Gibson trade dress features presents fact issues for trial."

More generally, the authors urge that, before a design feature of a musical instrument is granted trademark status, a proper investigation and analysis should be conducted as to the functionality of the feature in terms of its impact on the "sound and playability" of the instrument.

TTAB Finds Confusion Unlikely Between "SPANGLE" and "PAILLETTES"

Applicant Derma Sciences, Inc. completed a successful end run around the doctrine of foreign equivalents, convincing the Board to reverse a Section 2(d) refusal of the mark SPANGLE for various bath and cosmetic products. The Board found the mark not likely to cause confusion with the registered mark PAILLETTES for toilet soaps, perfumes, and similar products. In re Derma Sciences, Inc., Serial No. 78127417 (December 22, 2004) [not citable].
The Examining Attorney contended that, since the subject goods are legally identical and the registration indicates that PAILLETTES is translated as "gold dust, spangle," a likelihood of confusion existed in view of the doctrine of foreign equivalents.

Derma Sciences argued that the doctrine is not an absolute rule and that the marks SPANGLE and PAILLETTES are not exact equivalents. It pointed to various dictionary entries translating PAILLETTES as, for example, a "scrap of gold one finds in sands," a "small sliver of a shiny material used to decorate fabrics, certain clothing," and as sequins, spangles, speck, and flake. Derma Sciences contended that “where the foreign word is capable of several translations, there can be no similarity in connotation." Moreover, consumers are not likely to translate PAILLETTES into English in view of the word’s suggestion of “the allure of the French lifestyle.” And even if the mark PAILLETTES were translated into an English word, it is so different in sound and appearance from SPANGLE that confusion is unlikely.

The Board agreed with Derma Sciences, observing that "any similarity in connotation must be weighed against dissimilarity in appearance and pronunciation as well as other factors before reaching a conclusion on the question of likelihood of confusion." Noting that SPANGLE and PAILLETTES are not exact foreign equivalents, that the word "paillette" appears in English language dictionaries and thus need not always be translated by a consumer, and that the words are "totally different in sound and appearance," the Board reversed the refusal.

In this writer’s view, the appearance of the word “paillettes” in English language dictionaries tipped the scale in favor of Derma Sciences. One might note that the Board cited Webster’s Third New International Dictionary of the English Language (Unabridged), 1993, which perhaps has more of an "international" bent than other English dictionaries. However, the link immediately above to the The American Heritage Dictionary of the English Language: Fourth Edition, 2000, and the "paillettes" website link further support the Board’s position.

"BBQ PIT STOP" Passes TTAB Mustard

Because of "significant differences" between the marks, the Board reversed a refusal to register THE BBQPITSTOP & Design for restaurant services, finding it not likely to cause confusion with the two registered marks shown on the right, likewise for restaurant services. In the cited registrations, the terms "Gourmet Barbecue Drive-Thru" and "Gourmet Barbecue," respectively, are disclaimed. In re Butts, Serial No. 76481350 (December 21, 2004) [not citable].
The Examining Attorney maintained that BARBECUE PIT-STOP "represents a significant element of the registrant's marks." Since the services are identical, he reasoned, confusion is likely.

The Board disagreed, noting in detail the differences in the designs and the wording in the marks. It agreed with Applicant Jonathan D. Butts that MAURICE'S "would likely be the term that prospective customers would use to distinguish registrant's restaurant services from those of others." And the Board pointed out that the term "Barbecue/BBQ" is a generic term for these restaurants and merits little weight in the likelihood-of-confusion analysis. Finally, the Board observed that, although "it is possible that some consumers may believe that there is an association between the marks," the Trademark Act concerns likelihood of confusion, not the mere possibility.

As a side note, the two registrations cited by the Examining Attorney are, according to the TESS database, owned by Piggy Park Enterprises Inc. of West Columbia, South Carolina. Maurice Bessinger, who appears to be the driving force behind that company, has been a somewhat controversial figure in recent years as a result of his legal battles (one of which reached the Supreme Court) and political stance. It remains to be seen whether the registrant will challenge the Butts application when and if published for opposition.

TTAB Derails "RAILDRIVER" Mark

The TTAB may have gone off the track in affirming a Section 2(e)(1) mere descriptiveness refusal of the mark RAILDRIVER for "electronic train controllers." In re P.I. Engineering, Serial No. 76404455 (November 18, 2004) [not citable].
P.I. Engineering described its RAILDRIVER product as a joystick-type control unit for use with computer software like Microsoft Train Simulator: "it provides levers, switches and buttons that make the enthusiast feel like they [sic] are driving the simulated train on the screen of the computer, using a throttle and reverser, and brake lever specialized for such purposes."

The Examining Attorney submitted NEXIS evidence showing that train operators are also called rail drivers, but only in reference to public employees who operate trains as part of a public transportation system. But the Board saw "no reason [the term] would not also be understood to describe or name drivers of any other type of train as well."

The Board concluded that RAILDRIVER is merely descriptive of P.I. Engineering's product "because it directly informs purchasers of a key feature and purpose of the product, i.e., that the product allows users to simulate the experience of being a rail driver."

It is noteworthy that the Board seemed to shift the burden of proof onto Applicant to show that the term "rail driver" would not apply to any type of train operator. Moreover, isn't the Applicant supposed to enjoy the "benefit of the doubt" when it comes to a Section 2(e)(1) refusal?