TTAB Says Palindromes Make Stronger Marks

Most everyone's favorite palindrome is "A MAN, A PLAN, A CANAL - PANAMA," but did you ever think it would make a good trademark? The TTAB (or at least one panel thereof) has embraced the idea that palindromes make stronger marks!

Panama Canal
In In re Independent Pharmaceutica AB, Serial No. 78160932 (January 25, 2005) [not citable], the Board affirmed a Section 2(d) refusal to register the mark NICCIN for "vaccines and anti-smoking pharmaceutical preparations in the form of tablets," finding the mark likely to cause confusion with the mark NICOCIN for "pharmaceutical preparations, namely, medications for suppressing, reducing, or eliminating smoking and the urge to smoke."

In analyzing the marks, the Board panel found persuasive the Examining Attorney's argument that palindromes make stronger marks. Examining Attorney John Dwyer wrote in the PTO's brief:

"The act on the part of a potential purchaser of consciously recognizing that the registrant's mark is a palindrome adds a memorable creative aspect to the registrant's mark that further strengthens it as a mark. That is, the registrant's coined mark is made even stronger because it is an easily remembered palindrome."

Moreover, the Board also liked the following argument of the Examining Attorney that because both marks at issue are palindromes, confusion is more likely:

"Potential purchasers of smoking cessation pharmaceutical preparations, upon encountering two nearly identical marks, both being palindromes, would be more likely to believe that both products originate from the same source, and that the one letter difference is intended to differentiate betweens [sic] aspects of the products, such as that one is the newer version or that the potency is different between the two."

Sorry, but Judge Welch isn't buying. For one thing, I didn't even notice that NICOCIN is a palindrome -- maybe because I would pronounce the first "c" with a "k" sound (from "nicotine"), and the second with an "s" sound. (NIK-O-KIN just doesn't sound right). Nor did I pay any attention to the fact that applicant's mark is also a palindrome.

Where, may I ask, is the support for the Examining Attorney's assertion that consumers consciously recognize or more easily remember palindromes? That may be true for a clever phrase like “A man, a plan, a canal -- Panama,” but is it true for a single palindromic word? And what is the basis for the contention that, because two marks are palindromes, they would more likely cause confusion? No cases are cited. No scientific studies. Not even a single blog posting!

Moreover, what is the support for the Examining Attorney's assertion that consumers would be likely to believe that the one letter difference in the marks would be perceived as indicating that one product is a newer or different version of the other? A better argument would seem to be that consumers likely wouldn't notice the extra letter, than that they would draw the PTO's conclusion.

Actually, I don't have a quarrel with the Board's ultimate decision, but its acceptance of these particular PTO arguments without any support is a bit unnerving.

By the way, what about "MADAM, I'M ADAM" for a men's cologne?

P.S. Of the Top 100 Brands of 2003, according to Business Week, not a single one was a palindrome.

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

TTAB Grants Summary Judgment On Dilution Claim: Marks Too Dissimilar

The TTAB seldom decides dilution issues. Plaintiffs typically couple dilution claims with Section 2(d) claims, and when the Board finds likelihood of confusion, it will decline to rule on dilution. When the Section 2(d) claim fails, the Board will usually dismiss the dilution claim with little discussion -- after all, if a plaintiff's mark is not strong enough to support a Section 2(d) claim, it won't be strong enough for a Section 43(c) claim.

The Board will, however, tackle one particular dilution issue, and will even do so on summary judgment: whether the marks involved are sufficiently similar to support a dilution claim.


The Board granted partial summary judgment to Applicant Armour Gear LLC, dismissing Opposer's dilution claim in K.P. Sports, Inc. v. Armor Gear LLC, Opposition No. 91157069 (February 14, 2005) [not citable]. Opposer's mark UNDER ARMOUR (in block letter and design form) was just too dissimilar from Applicants mark ARMOR GEAR (in block letter and design form).

"For the Board to find that dilution has occurred, or is likely to occur, we must find that the involved marks are more than merely similar; a party must show that the marks are identical or 'very or substantially similar.' See Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1183 (TTAB 2001). *** [W]e find that there is no genuine issue that the marks in their entireties are not substantially similar for dilution purposes."

TTAB defendants should take note: a quick, inexpensive, and effective way to de-rail a dilution claimant is to move for summary judgment on the issue of the similarity of the marks.

For a review of TTAB dilution jurisprudence, see my article entitled "Dilution at the TTAB: What to Prove and How to Prove It", 17 Allen's Trademark Digest 7, pp. 9-19 (January 2004). In addition to the cases discussed in that article, two decisions reported by the TTABlog should be noted. Because the marks involved were too dissimilar, the Board dismissed dilution claims in: The Pep Boys Manny, Moe & Jack of California v. Hanharutaivan, Opposition No. 91105133 (Sept. 29, 2004) [not citable]. [PEP BOYS/CARRYBOY & Design], discussed here; and Dream Merchant Co. v. Fremonster Theatrical, Opposition No. 91152686 (June 17, 2004) [not citable], reconsideration denied (September 28, 2004). [CIRQUE DU SOLEIL/CIRQUE DE FLAMBE], discussed here.

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

TTAB To Hear Oral Argument in NYC in "FIRST NIAGARA" Case

The Buffalo News is reporting that the TTAB will hear oral argument tomorrow in New York City in six consolidated opposition proceedings involving the mark FIRST NIAGARA and variations thereof for banking, insurance, and financial services. See First Niagara Insurance Brokers Inc. v. First Niagara Financial Group, Inc., Oppositions Nos. 91122072 et al. Those in attendance may want to check out the briefs at the TTABVUE website.


The argument will take place as part of a Practicing Law Institute (PLI) seminar on trademark practice.
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Text ©John L. Welch 2005. All Rights Reserved.

TTAB Turns Thumbs Down On "GREEN THUMB CLUB" In 2(d) Opposition

Advanced Impact Marketing Services, Inc.'s failure to introduce any evidence played a major part in its downfall in TruServ Corp. v. Advanced Impact Marketing Service, LLC, Opposition No. 91124078 (February 4, 2005) [not citable]. The Board sustained Opposer's (True Value's) opposition to registration of the mark GREEN THUMB CLUB for "providing on-line chat rooms for transmission of messages among computer users concerning gardening" (in class 38), and "gardening club; providing gardening information via on-line electronic communications network" (class 42) (CLUB disclaimed), finding the mark likely to cause confusion with True Value's previously used and registered mark GREEN THUMB for lawn and gardening products.


True Value fell short in attempting to prove its mark famous (its evidence of sales and advertising covered only four years, and it provided no evidence of its share of the lawn and gardening market). Applicant urged that the mark GREEN THUMB is highly suggestive and thus entitled only to narrow protection. The Board, however, found that the mark "has acquired a not insubstantial measure of consumer recognition or strength and . . . it therefore cannot be considered as 'not distinctive,' as urged by applicant." The Board also noted that "there is no evidence that any third party currently is using a mark which consists of or contains the term 'GREEN THUMB' in connection with lawn and/or gardening products."

The Board not surprisingly had no hesitation in finding the marks GREEN THUMB CLUB and GREEN THUMB to be "substantially identical."

However, the Board went out on a limb in finding the goods and services at issue to be "closely related." The evidence showed that True Value markets its products on the Internet, and also provides "an avenue whereby actual and prospective customers can request gardening advice."

"While such advice has not been offered under opposer's 'GREEN THUMB' marks, the evidence nevertheless is significant inasmuch as it shows that consumers interested in purchasing lawn and gardening products could reasonably expect to encounter, as an adjunct thereto, a web-based information service devoted to chatting about and providing gardening advice. Such discussions and advice, as applicant acknowledges, could plainly include the recommendation of a specific brand or brands of lawn and gardening products."

Therefore, the Board reasoned, consumers familiar with Opposer's products could reasonably believe that Applicant's chat rooms and on-line information are sponsored by or affiliated with True Value.


Concluding that confusion is likely, the Board declined to reach Opposer's dilution claim (although it seems apparent that True Value's failure to prove its mark famous for Section 2(d) purposes would perforce mean that it could not have met the standard for proving its mark famous for dilution purposes).

There are two things that are unsettling about the Board's decision. First, the record does not seem to support its conclusion that the goods and services at issue are "closely related." Second, the Applicant's failure to submit any evidence left the record devoid of proof that "green thumb" is a ubiquitous term in the gardening field.

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

Sharp Appeals TTAB's "THINKSHARP" 2(d) Dismissal

Sharp Corporation has filed an appeal (CAFC Appeal No. 05-1220, docketed February 11, 2005) from the TTAB's decision dismissing its opposition to registration of the mark THINKSHARP for educational computer software, videocassette tapes, and CD-ROMS, and for educational services in the field of problem solving and critical analysis. Sharp relied on use and registration of the mark SHARP for a wide range of electrical and electronic products (including computers, videotape players, and CD-ROM players), in claiming both likelihood of confusion and dilution. Sharp Kabushiki Kaisha v. ThinkSharp, Inc., Opposition No. 91118745 (March 31, 2004) [not citable].


The Board swiftly discarded Sharp's dilution claim because it was insufficiently pleaded: Sharp failed to allege that its marks became famous prior to ThinkSharp, Inc.'s use of its mark. Moreover, although Sharp made several references to dilution in its brief, the issue was not tried by express or implied consent of the parties, and in any case, Sharp did not prove its claim.

Turning to the Section 2(d) issue, Sharp contended that it owns a "family" of SHARP marks (including SHARPVISION, SHARP CORPORATION, and BE SHARP), but once again the Board found the proofs wanting: "the mere fact that opposer uses marks that consist of or include SHARP does not in itself prove that a family of marks exists."

Based on Sharp's many years of use, substantial sales ($3B annually), and extensive advertising ($60M annually), the Board found that the fame of the SHARP mark entitled it to "a broad scope of protection against competing marks." Nonetheless, the Board concluded that SHARP and THINKSHARP "are not similar in appearance, pronunciation, connotation or commercial impression." Moreover, "opposer's goods are not commercially related to the goods and services set forth in applicant's application such that" confusion would be likely.

As to ThinkSharp's goods:

"[s]imply because [they] may be used in opposer's goods is not a sufficient basis to find that the goods are related. Opposer’s goods are hardware, while applicant's goods are bought for the content contained in the physical object."

ThinkSharp's application limited the offering of its services to classroom instruction, the Internet, and satellite transmission. The Board found that:

"the only overlapping trade channel for opposer's goods and applicant's services is the Internet. However, inasmuch as thousands of goods and services are offered through the Internet, the mere fact that both opposer's goods and applicant's services are offered through the Internet to ordinary consumers is certainly not a basis to find that they are related within the meaning of the Trademark Act."

Therefore, the Board concluded that confusion is not likely, and it dismissed the opposition.

Sharp Electronics Corporation - Mahwah, New Jersey
Sharp also attempted to raise the issue of res judicata (claim preclusion), pointing out that it had opposed ThinkSharp's simultaneously-filed application to register the design mark shown below for the identical goods and services as in this case. ThinkSharp did not file an answer, and judgment by default was entered. The Board first ruled that Sharp had waived this issue by failing to raise it until final briefing.

Sharp requested reconsideration of the Board's decision, and the Board partially granted same. Sharp pointed out that it had raised its res judicata claim in a letter accompanying its notice of reliance. Because ThinkSharp did not object to the introduction of the prior judgment, the Board concluded that the issue was tried by the implied consent of applicant.

Considering, then, the merits of the res judicata claim, the Board distinguished the precedent relied upon by Sharp, wherein an applicant had adopted an insignificantly different mark after judgment had been entered on its first mark:

"Applicant did not file its application to register the mark THINKSHARP in typed drawing form merely as an attempt to evade the preclusive effect of the judgment entered against it in the application to register THINKSHARP and design. Applicant was entitled to pursue the registration of only one of its marks, rather than defending the two oppositions."

From this author's viewpoint, ThinkSharp probably dropped its design application because it thought its chances of success were better with the compound word mark. In the design mark, the word "Sharp" is separated from the word "Think," and that separation might give Opposer Sharp a better argument regarding the similarity of the marks at issue. To me, that seems like sharp thinking on the part of ThinkSharp.

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

TTAB Vacates "E-LAMP" Decision To Allow Oral Argument

The Board has vacated its decision in In re Advanced Lighting Technologies, Inc., Serial No. 76422584 (November 15, 2005) [not citable]. The TTABlog discussed that decision here.

In an Order dated January 13, 2005, the Board acknowledged that Applicant had requested oral argument, but the request was never associated with the file. The Board granted Applicant's motion to vacate, and will schedule an oral hearing in due course.


The attorney for Applicant is in an interesting position: he already knows exactly what the Board is thinking, but he has also failed to persuade the Board in his brief on appeal. Clarence Darrow, where are you?

TTABlog Update: On April 21, 2005, after hearing oral argument, the Board reversed the refusal to register, as discussed here.

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

University of South Florida Fails TTAB 2(d) Test

The University of South Florida didn't have a snowball's chance in Tampa when it appealed the PTO's decision in In re University of South Florida, Serial No. 78193899 (February 4, 2005) [not citable]. The TTAB wasted little time or paper (5 pages) in affirming the PTO's Section 2(d) refusal to register the mark USF for "educational services, namely, providing courses of instruction for others at the university level," finding it likely to cause confusion with the University of San Francisco's marks USF and USF SAN FRANCISCO, registered in the design forms shown below for identical services.


The Board observed that, given the legal identity of the services, the degree of similarity in the marks necessary to support a conclusion of likelihood of confusion is decreased. As to the marks, Judge Elmer W. Hanak, writing for the Board, pointed to what he found to be a "somewhat startling statement" in Florida's brief that conceded too much:

"The respective marks are acronyms and are identical in appearance, sound and connotation." (emphasis supplied by Judge Hanak)."

Based on these two factors -- the "identical, virtually identical or extremely similar" marks and the identical services -- the Board readily concluded that there exists a likelihood of confusion under Section 2(d), and it affirmed the refusal to register.

Florida chose to devote its appellate energy to two hopeless arguments. First, it asserted that consumers "are highly discriminate as to their choice of school," but the Board observed again that when the marks in question are extremely similar or identical, even sophisticated consumers are likely to be confused.


Florida spent even more time asserting that confusion is unlikely because the schools are "dissimilar in terms of their geographic locations, total student enrollments and the like." The Board observed, as it so often does, that absent limitations in the recitation of services in the involved application and registration, the TTAB must decide the Section 2(d) issue in light of the services recited, rather than the services as actually rendered. See Canadian Imperial Bank v. Wells Fargo Bank, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).

Let's just hope that students intending to matriculate at the University of South Florida don't mistakenly wind up spending four years at the wrong school, and vice versa.


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

TTAB Affirms PTO'S Refusal of "MARAJ" As Surname

In a straightforward application of its Section 2(e)(4) analysis, the Board affirmed the PTO's refusal to register the mark MARAJ for entertainment and performing arts services, finding the mark to be primarily merely a surname. In re Charlton, Serial No. 76463959 (February 1, 2005) [not citable].

The Examining Attorney's NEXIS search yielded several hundred stories referring to individuals with the surname MARAJ (including Champion Racing owner Dave Maraj), and the "USFIND Person Locator – Nationwide" database produced 308 hits across the country. The Board concluded that the surname was “somewhat rare,” but not so unusual that it would not be recognized by a substantial number of people.

Dave Maraj
The Board noted that no one associated with Applicant is named "Maraj," but remarked that the lack of such an association is a neutral factor in its analysis.

As to whether the word MARAJ has any other recognized meaning, Applicant Lacretia R. Charlton asserted that she wanted “the public to connect my services and my groups of performers with, and suggestive of the word 'Mirage.'" [sic] However, the Board pointed out that just because a surname is phonetically equivalent to a common word, that does not overcome its surname significance. See In re Pickett Hotel Co., 229 USPQ 760 (TTAB 1986) (PICKETT/picket). Moreover, it questioned whether MARAJ and "mirage" would be "viewed as essentially the same." In sum, Charlton was unable to show that MARAJ has any meaning other than as a surname.

Mirage Hotel and Casino, Las Vegas
Finally, as to the most subjective of the Section 2(e)(4) factors, the Board agreed with the Examining Attorney that MARAJ has the "look and feel" of a surname, particularly since MARAJ does not appear to be an arbitrary term, there are numerous references to individuals named MARAJ, and the word appears to have no other significance.

The Board concluded that "the public would have no reason to conclude that [the mark] was not a surname," and it affirmed the refusal to register.

Surname refusals are quite difficult to overcome if the PTO comes up with any appreciable number of database hits. Unless the term in question has some other meaning or significance*, success on appeal will be no more than a mirage.

* See, e.g., In re Pyro-Spectaculars, Inc., 63 USPQ2d 2022, 2024 (TTAB 2002) (SOUSA for fireworks); In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000) (HACKLER for alcoholic beverages).

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

TTAB Refuses To Reconsider Slokevage "Trade Undress" Decision

The TTAB grants about one request for reconsideration per year, and it is thus not surprising that the Board denied Joanne Slokevage's request regarding its decision in In re Slokevage, Serial No. 75602873 (November 10, 2004) [not citable], reconsideration denied, February 4, 2005. As discussed previously in the TTABlog (here), the Board affirmed a refusal to register Slokevage's mark comprising the words FLASH DARE! as part of a particular clothing design. The Board found 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."


The interesting part of the decision on reconsideration concerns Slokevage's response to the Board's previous statement that, if she disclaimed "the holes and flaps portion" of her mark, the mark would be passed to publication. She submitted a disclaimer, but not the one the Board proposed. And then . . .

"applicant telephoned the author of this opinion and was told that there was some question about whether her proposed disclaimer would be acceptable as written."

In paper no. 45, Slokevage described the telephone conversation with Judge Bucher as follows:

"Judge Bucher returned phone call to applicant on 12/14/04 and said the 12/10/04 Disclaimer wording was not acceptable, and that he would speak to the lead judge call the applicant back. Probably due to Hanukah, Christmas, New Year's, the Judge did not call." [sic]

[Slokevage then withdrew her proposed disclaimer, and submitted one that disclaimed only the flaps. That too was rejected.]

Was there anything improper in Judge Bucher's speaking to this pro se applicant during the pendency of her ex parte appeal? Certainly judges should avoid even the appearance of impropriety. Does this cross the line? Should TTAB judges refuse to speak to applicants in such cases, when there is no adverse party who might be prejudiced?

In another case recently discussed at the TTABlog (here), those tempestuous teddy bears are still going at each other. Vermont Teddy Bear has filed a request for reconsideration of the Board's decision in Vermont Teddy Bear Co. v. Build-A-Bear Workshop, LLC, Opposition No. 91115198 (December 17, 2004) [not citable]. The Board granted summary judgment and dismissed Vermont's Section 2(d) opposition, finding that Vermont's prior use of a heart "does not constitute trademark use and is not protectable under the Lanham Act."


Vermont claimed prior rights in the use of a heart-shaped object in a stuffed toy animal, but the Board found that Vermont's use consisted of "advertising and selling toy animals and toy animal kits, usually teddy bears, that include a heart-shaped object and instructions for the consumer to insert the object into the toy animal."

In its request for reconsideration, Vermont does not challenge the Board's decision directly, but instead seeks to address two other issues that it asserts were raised in its Notice of Opposition but not contested in Build-A-Bear's motion for summary judgment. First, Vermont claims that Build-A-Bear committed fraud on the PTO when filing its application to register, and that Vermont discovered the fraud only during discovery while Build-A-Bear's summary judgment motion was pending. Since the case was suspended regarding all issues not germane to the summary judgment motion, Vermont argues, it did not have the opportunity to raise the fraud claim before the Board dismissed the case. Second, Vermont argues that, even if it does not own trademark rights, it still was a prior and continuous user of the heart-in-teddy-bear "mark", and therefore Build-A-Bear's mark is not capable of registration: i.e., Build-A-Bear's "mark" is at a best product configuration that would require secondary meaning, which Build-A-Bear cannot establish in light of Vermont's prior and continuous use.

Will Vermont's request for reconsideration be the one request the Board chooses to grant in 2005? Stay tuned for the next round of the War of the Teddy Bears.

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

The TTABlog Goes To Washington: 20th Annual ABA IP Law Conference

Virginia, actually. TTABlogmeister John L. Welch will share the podium with the Hon. Carlisle Walters, TTAB Administrative Trademark Judge, at the ABA's 20th Annual Intellectual Property Law Conference, April 14-16, 2005. The Conference will be held at the Crystal Gateway Marriott Hotel in Arlington, Virginia.
United States Supreme Court
Judge Walters and Mr. Welch will offer their "Trademark Trial and Appeal Board: Year in Review" on Thursday, April 14th, from 1:45 to 2:45 pm, as part of an afternoon General Session that will, in addition, focus on two particular "hot topics" in trademark law:

2:50 to 3:50 pm -- "Fair Use and Initial Interest Confusion: Key Issues for the Future," presented by Stephen W. Feingold, of Pitney, Hardin, Kipp & Szuch, New York, NY, and Elizabeth H. Cohen of Arent Fox PLLC, Washington, D.C.

4:00 to 5:00 pm -- "The Use and Misuse of 'Use in Commerce,'" presented by Jordan S. Weinstein and Jason A. Cody of Oblon, Spivack, McClelland, Maier & Neustadt, P.C., Alexandria, Virginia, and Robin Smith, counsel, LEGO Systems, Inc.

Mr. Welch's paper, entitled "The TTAB in 2004: What Was Hot, What Was Not," will be available for downloading at The TTABlog immediately after the conference.

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

"MALIBU ROCKS" Crushed In TTAB 2(d) Opposition

Pro se Applicant Lattis R. Richards wiped out in her attempt to register the mark MALIBU ROCKS for "white chocolate covered walnuts and pecans" (MALIBU disclaimed). The TTAB applied a formulaic DuPont approach in finding a likelihood of confusion with Opposer's mark MALIBU (registered in block-letter and design form) for "liqueur." Allied Domecq Spirits & Wine USA, Inc. v. Richards, Opposition No. 91116378 (January 25, 2005) [not citable].
Allied Domecq had its own difficulties navigating the TTAB opposition waters. Its attempt to plead a dilution claim hit the shoals because of inadequate pleading: Opposer alleged that the MALIBU ROCKS mark would "seriously impair the uniqueness of" and "dilute the strength of" its "famous MALIBU marks." That is not what the statute says.

Opposer also included in its notice of reliance a citation to a non-precedential TTAB decision. The Board pointed out that a party may not rely on such a decision for its statement of law. General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1275, n. 9 (TTAB 1992). And since Applicant was not a party to the prior decision, that ruling could not be relied upon for its factual findings (under any claim preclusion or issue preclusion theory).

Ms. Richards, who operates out of Reseda, California, under the trade name "SWEETREATS BY LATTIS," took no testimony and offered no admissible evidence. In her brief, she argued that the term ROCKS will be seen as referring to "pebbles strewn on the beaches of Malibu," while Opposer contended that ROCKS would be perceived as meaning "ice," as in the term "on the rocks" used in preparing alcoholic drinks. The Board perceptively observed:

"We disagree with opposers insofar as it is highly unlikely that any consumer of applicant's goods would think of ice cubes when contemplating the mark MALIBU ROCKS used on or in connection with chocolate covered nuts."

In any event, the Board concluded that the marks are both "evocative of a particular place in California," and have "very similar" commercial impressions.

Allied Domecq proved that its liqueur has been extensively advertised and widely sold as an ingredient in cocktails. While the Board did not find the mark to be famous, the evidence was "more than sufficient to prove the mark to be strong and distinctive."

As to the products, although they are not competitive, they are related: "they are products that could be served during the course of a single meal." Moreover, the record showed that it is "not uncommon for liqueurs to be used as ingredients in confectionery products, or for the same marks to be registered for liqueurs and confectionery products." Finally, the Board noted that Allied Domecq has one license for use of the MALIBU mark for a frozen dessert that includes Opposer's liqueur as an ingredient.

Applicant Richards admitted that her product "contains a rum flavor [but no rum per se] in a wonderful orange marinade." And the Board carefully noted that:

"while applicant's product may be considered more a nut product than a chocolate product, it is still a product made by combining various ingredients and flavorings, as with confectionery products that do include a liqueur as an ingredient."

Although Ms. Richards argued that her products are sold only as a gourmet or gift item, in outlets different from those for MALIBU liqueur, the Board once again noted that its determination must be based on the identification of goods in her application, which has no limitation on channels of trade, and not on the real world situation.

The Board concluded that, in light of the similarity of the marks, the overlap in prospective customers and channels of trade, and the probability that "consumers would likely assume some relationship as by licensing, common sponsorship or authorization by opposers for applicant to use opposers' mark," confusion of consumers is likely.

This writer finds the Board's decision less than convincing. Frankly, I find quite plausible Applicant Richards' assertion -- given the shape of her product -- that the mark MALIBU ROCKS for chocolate covered nuts would bring to mind pebbles or rocks on Malibu Beach. Perhaps its time to add a 14th factor to the Board's DuPont likelihood of confusion analysis: common sense.

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

TTAB Reverses Genericness Refusal of "VIRUSSCAN"

Genericness refusals are not often overcome, but Applicant Network Associates accomplished not only that feat, but it also established the acquired distinctiveness of its mark VIRUSSCAN for computer utility software. In re Network Associates Technology, Inc., Serial No. 76426050 (January 25, 2005) [not citable]. [Applicant markets the popular VIRUSSCAN product through its business affiliate, McAfee, Inc.]

Both the Examining Attorney and Network Associates introduced "significant evidence" in support of their respective positions. The former contended that the term "virus scan software" is "commonly used as an alternative generic form of 'antivirus software.'" She provided numerous LEXIS/NEXIS printouts showing use of the phrase "virus scan" in connection with utility software, as well as dictionary and Internet evidence defining the phrases "virus scan" and "virus scanner" and the individual words "virus" and "scan."

Network Associates countered with "examples of how anti-virus software is marketed, advertised, and displayed without using the term VIRUSSCAN except as a trademark of applicant," with excerpts from on-line and print dictionaries that do not list the term "virus scan," and with NEXIS search results in which 96% of the hits for the term VIRUSSCAN referred to Applicant. It introduced the results of a survey directed to some 150 persons responsible for making software purchases for their companies; when asked what they would call "the type or category of computer software that is designed to protect and secure computer data, software, and computer communications networks," only one person responded "virus scan," and one said "virus protection scan."

Network Associates also proved that it spends $2 million annually for advertising, that 40,000 businesses are customers, that its VIRUSSCAN online software subscription services have nearly 2 million subscribers, and that more than 20 million persons visited its website in one particular month.

The Examining Attorney challenged Applicant's survey as being "limited to a small, non-random sample." Network Associates argued that the PTO gave insufficient weight to its evidence that its "principal competitors in the marketplace do not use the word 'SCAN' to identify their anti-virus products."

The TTAB noted that the key issue in genericness cases is "whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question." H. Marvin Ginn Corp. v. Int'l Assn. of Fire Chiefs, Inc., 228 USPQ 528, 530 (Fed. Cir. 1986). It found that the Examining Attorney had met her initial burden of establishing a prima facie case of genericness.

The question then became whether Network Associates had overcome that prima facie case. The Board noted Applicant's evidence of its extensive sales and marketing, and of its competitors' business practices. As to Applicant's survey evidence, however, the Board found it "less impressive" on closer analysis. "Applicant's survey questions are more like a guessing game. The questions provide just enough information so that participants can guess about applicant's product but not enough information to understand what the specific product is." Nonetheless, the Board did give the survey evidence some weight, because "[v]irtually no respondent identified 'virus scan' as the name of the software."

In view of all the evidence, the Board concluded that the PTO did not meet its ultimate burden to clearly show that the term VIRUSSCAN is understood by the relevant public to refer to the genus of Applicant's goods.

McAfee Coliseum -- Oakland, California
Turning to the issue of secondary meaning, the Board ruled, with little analysis or discussion, that Network Associates had met its burden under Section 2(f).

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

"BOSTON" Fans Block "BOSTON HARBOR," Says TTAB

The Board threw a Boston Tea-TAB Party for Seattle-based Sound International, Inc. It deep-sixed Sound's application to register the mark BOSTON HARBOR for oscillating, stand, table, wall, ceiling, electrical household, and portable fans (BOSTON disclaimed), finding the mark likely to cause confusion with the registered mark BOSTON for "fans." In re Sound Int'l, Inc. Serial No. 76337681 (January 28, 2005) [not citable].

Boston Harbor
The Board agreed with the Examining Attorney that the goods at issue are legally identical, since registrant's "fans" encompass Sound's more specifically-identified products. Sound feebly argued that it currently sells "ceiling mounted fans," while registrant's goods are "fans that rest on surfaces," and also that its goods are sold exclusively to independent hardware and home improvement stores, while registrant's are sold to office supply stores. But the Board (not surprisingly) quickly jettisoned those arguments, observing once again that:

"the question of likelihood of confusion must be determined based on an analysis of the goods identified in applicant's application vis-a-vis the goods identified in the cited registration, rather than what the evidence shows the goods actually are." Canadian Imperial Bank v. Wells Fargo Bank, 1 USPQ2d 1813, 1815 (Fed. Cir. 1992)

Moreover, the Board pointed out that, absent limitations in the identifications of goods, it must be assumed that the goods travel in all normal channels of trade; thus the trade channels here must be considered to be identical.


As to the marks, the Board noted that when marks appear on virtually identical goods, a lesser degree of similarity is needed to support a Section 2(d) refusal. The term BOSTON has the same geographic significance in each mark, and the addition of the word HARBOR does not change that significance. In the marketplace, purchasers do not have an opportunity for side-by-side comparison of the marks, and so the proper test looks to the similarity of the overall commercial impressions created by the marks. Here, the Board concluded, addition of the word HARBOR does not distinguish the marks, since purchasers are likely to retain only a general impression of the marks, and not a recollection of specific differences.

The TTAB also tossed overboard as irrelevant Applicant's list of fifty third-party registrations for marks that include the word BOSTON, and its hopeless argument that its product packaging differs from registrant's.

One might sum up by saying that, at this point in time, and in more ways than one, BOSTON fans are riding high.

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

CAFC Clarifies duPont Fame Test In Affirming TTAB's "VEUVE ROYALE" Decision

Ruling that fame for likelihood of confusion purposes is to be measured with regard to "the class of customers and potential customers of a product or service, and not the general public," the CAFC affirmed the TTAB's August 4, 2003 decision refusing registration of the mark VEUVE ROYALE for sparkling wine. The Board had found the mark likely to cause confusion with Opposer's trademark and trade name VEUVE CLICQUOT, and its registered marks VEUVE CLICQUOT PONSARDIN for champagne wines and THE WIDOW for wines. In its precedential ruling, the CAFC agreed vis-a-vis the first two marks, but reversed the Board's conclusion as to the third mark. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689 (Fed. Cir. 2005).


The CAFC first considered Opposer's two VEUVE marks:

Applicant Palm Bay contended that the Board was wrong in it findings on four of the duPont likelihoood of confusion factors: the similarity of the marks; third-party use of the term VEUVE; the fame of Opposer's marks; and the sophistication of purchasers.

As to the marks, the CAFC noted that the Board made a "minor misstatement" regarding the test for similarity "in an otherwise proper analysis." The Board treated "commercial impression" as the ultimate conclusion, rather than as a separate factor to be considered with appearance, sound, and meaning. But that was not reversible error. As to the relative importance of the words VEUVE and CLICQUOT, the Board correctly concluded that VEUVE is "prominent in the commercial impression" created by Opposer's mark, and "the dominant feature" in Palm Bay's mark. "The presence of this strong distinctive term as the first word in both parties' marks renders the marks similar, especially in light of the largely laudatory (and hence non-source identifying) significance of the word ROYALE.

Palm Bay next argued that the Board erred in rejecting evidence of five different third-party uses of VEUVE for alcoholic beverages. The CAFC, however, pointed out that most of Palm Bay's evidence -- listings in industry directories -- was not evidence of the consuming public's awareness of these marks. As to its marketing evidence regarding one of the third-party users, that evidence "does not rise to the level of demonstrating that the single third-party use was so widespread as to 'condition' the consuming public" to distinguish between different VEUVE marks.

As to the Board's finding of fame, Palm Bay asserted that the Board was incorrect in measuring fame with regard to a narrow class of purchasers rather than the general public. The CAFC noted that prior fame cases had not directly addressed this issue, and it agreed with the Board by holding:

"the proper legal standard for evaluating the fame of a mark under the fifth duPont factor is the class of customers and potential customers of a product or services, and not the general public."

Considering Opposer's proofs -- substantial sales and advertising expenditures since 1980, ranking as the second leading champagne brand in this country, widespread media exposure, an admission of fame by Palm Bay's President, and several WIPO domain name decisions finding the marks to be famous -- the CAFC ruled that "substantial evidence supports the Board's finding of fame."

Finally, as to the sophistication of consumers, the Board did not err in holding that this factor was "neutral, at best." The CAFC agreed that "champagne and sparkling wines are not necessarily expensive goods which are always purchased by sophisticated purchasers who exercise a great deal of care in their purchases." And even sophisticated consumers could conclude that VEUVE ROYALE was Opposer's sparkling wine.

Madame Clicquot
Turning to Opposer's mark THE WIDOW, the Board had found similarity in part under the doctrine of foreign equivalents, because "an appreciable number of purchasers in the U.S. speak and/or understand French, and they 'will translate' applicant's mark as 'Royal Widow.'" [This was inconsistent with the Board's assertion, when comparing Opposer's VEUVE marks with Palm Bay's mark, that purchasers are not likely to translate VEUVE into "widow."] The CAFC observed that the doctrine of foreign equivalents should be applied only when it is likely that the "ordinary American purchaser would 'stop and translate [the word] into its English equivalent.'" It found that substantial evidence did not support the Board's finding on this issue, and it therefore reversed as to the mark THE WIDOW.

The TTABlog notes particulary the CAFC's comments regarding the relevance of WIPO domain name arbitration decisions that had found Opposer's marks to be famous. Although WIPO examined fame on a worldwide basis, rather than in the USA only, those decisions "nonetheless provided a 'confirmatory context' for [Opposer's] other evidence of fame." This is believed to be the first time the CAFC has indicated that the findings in a UDRP arbitration may have some relevance in a TTAB proceeding, and it is a ruling that is rather troublesome, since Palm Bay was not a party to the UDRP proceedings and had no opportunity to contest the finding of fame that the Board used against it.

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

TTAB Issues Rare Concurrent Use Decision in "HUBCAP HEAVEN" Dispute

Concurrent use decisions are as rare as a traffic cop in Boston, but the TTAB has just issued its decision in Hubcap Heaven, LLC v. Hubcap Heaven, Inc., Concurrent Use No. 94001147 (January 25, 2005) [not citable]. In an otherwise mundane ruling, the Board raised an interesting question regarding the continued viability of the concurrent use registration in view of growing use of the Internet by businesses large and small.

The Board ruled that Applicant Hubcap Heaven LLC of Suitland, Maryland, is entitled to a concurrent use registration for the service mark HUBCAP HEAVEN for "wholesale and retail store, mail order, and on-line electronic catalog sales order services in the field of new, reconditioned, and used automotive parts." (HUBCAP disclaimed). Applicant was awarded the entire United States except for the areas within a 50-mile radius of four cities: Pittsburgh, Memphis, Virginia Beach, and Metairie, Louisiana. Applicant's 1993 registration for the same mark for "automotive hubcaps, wheel covers, and wheels" was also part of the proceeding, and it was likewise geographically restricted.


Applicant began its business in 1979, when a "huge snowstorm in the Washington DC area result[ed] in roads with potholes which in turn resulted in hubcaps all over the roadside." The enterprising Jackson brothers gathered up some 800 hubcaps and began selling them "on a street corner near a carwash (where their sister worked) in Marlow Heights, Maryland." Eventually, the trio leased a building in Suitland, Maryland (1984), and then the business expanded to stores in Alexandria, Virginia (1991) and Hyattsville, Maryland (1996). Applicant distributes a catalog on the East Coast, and operates a website (link above).

Applicant listed the four locations of the Excepted User (and defendant) Hubcap Heaven, Inc., "because user assertedly used the mark HUBCAP HEAVEN in those four locations prior to November 15, 1990, the filing date of the application that matured into applicant's involved Registration." Plaintiff's subject concurrent use application was filed on October 13, 1995.

However, the Board observed that, because User does not have a federal application or registration, priority is not an issue: "applicant's use obviously is 'prior to' any theoretical future filing by user." Applicant thus satisfied the "jurisdictional requirement" or "condition precedent" for a concurrent use proceeding: use in commerce before User's filing date. See TBMP Section 1103.01(b).

The Board then turned to the issue of likelihood of confusion because of concurrent use by the parties in common territories. User provided no evidence of overlap in the physical trading areas of the parties. However, the Board paused when considering the use of the marks on the Internet:

"We acknowledge that the juxtaposition, on the one hand, of use of a mark on the Internet, and on the other hand, the seeking of a geographically restricted registration is troubling. Indeed, in the age of the Internet, concurrent use registrations premised on geographically distinct uses appear to be a legal fiction as the Internet is accessible not only nationwide but world-wide."

But the Board noted that there is "little judicial precedent or guidance" as to the impact of Internet websites on trademark infringement suits or concurrent use proceedings. It declined to create an absolute rule barring geographically restricted registration when one or more of the parties does business via the Internet. Instead, the Board must look at the facts of each case.

"Here, there is no evidence of applicant achieving sales to consumers in any of user's four excepted territories. Moreover, consumers are becoming more computer and Internet-savvy and they are likely to understand how business is done on the Internet. Thus, the fact that a business has a website does not necessarily mean to consumers that the business is a nationwide business."

Therefore, the Board found that Applicant established "jurisdictional" priority and that confusion is not likely, "notwithstanding that applicant does business on the Internet."


The TTABlog notes that, although use of the marks on the Internet had little impact in this concurrent use proceeding, other, more vigorously contested proceedings may well make it clear that concurrent use registrations are, in this Internet Age, a dying breed.

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

TTAB Finds "PSYCHOSOMATIC ENERGETICS" Merely Descriptive

Swiss company Rubimed AG ran into a Section 2(e)(1) roadblock in its attempt to register the mark PSYCHOSOMATIC ENERGETICS for educational materials and medical services in the field of naturopathy, empirical therapeutics, and holistic medicine. In re Rubimed AG, Serial No. 76213128 (December 29, 2004) [not citable]. The Board affirmed a refusal to register on the ground of mere descriptiveness.
The Examining Attorney relied on dictionary definitions of "psychosomatic" and "energetics," on NEXIS excerpts showing that "energetic medicine" is a field "involving the study of energy changes in relation to healing," and on Applicant'’s own advertising, in contending that the mark describes the subject matter and a significant feature of the goods/services: they "involve the use of energetic medicine to treat psychosomatic disorders."

Rubimed argued that the two words taken together have no readily understood meaning, that its goods and services "relate to the "patient's soul, not to the medical/psychiatric focus on the mind as the basis of healing," and that its services "are spiritual, not medical." The Board, however, noted that the subject application and Rubimed's own website refer to its "medical services." The Board ruled that the combination of the two words does not create an "incongruous or unique" mark: "relevant consumers will readily understand that applicant's goods and service focus on the energetic healing method and the mind/body connection."

The Board noted that, to prove a phrase merely descriptive, the Board need not "obtain evidence of all the words used together in order to make a prima facie showing that a multiple word mark is merely descriptive." In a footnote, it contrasted this situation with the case of a genericness refusal, as to which the PTO must prove that the phrase as a whole is in use. Thus

"even if Rubimed was the first (and/or only) entity to use the phrase 'psychosomatic energetics' in relation to printed materials and medical services, in the field of inter alia, holistic medicine, such is not dispositive where, as here, the phrase unquestionably projects a merely descriptive connotation."

Rubimed Ag -- Hergiswil, Switzerland

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

Cirque Du Soleil Appeals TTAB's "CIRQUE DE FLAMBE" Ruling

The Dream Merchant Co. has appealed (CAFC Appeal No. 05-1174, docketed January 11, 2005) from the TTAB's decision dismissing its opposition in Dream Merchant Co. v. Fremonster Theatrical, Opposition No. 91152686 (June 17, 2004) [not citable], reconsideration denied (September 28, 2004). Dream Merchant sought to block registration, on the grounds of likelihood of confusion and dilution, of the mark CIRQUE DE FLAMBE for "entertainment in the nature of circuses" (CIRQUE disclaimed), relying on its registered mark CIRQUE DU SOLEIL for entertainment and theatrical services. But a major procedural snag disrupted its effort.
Cirque de Flambe
Applicant Fremonster, after its first attempt at an answer to the Notice of Opposition was rejected by the Board, filed an acceptable answer on December 10, 2002, accompanied by the following request:

"We are seeking legal counsel to continue this application and we will hopefully, be presenting an attorney soon, to take over our application process. If we can request a 30-day extension to this filling or the next filling [sic], we wish to do so now, to allow any new attorney to catch up on the issues involved."

Nothing happened in the case until after testimony periods had closed (on August 15, 2003). The Board issued an order on February 10, 2004, allowing Dream Merchant to show cause why its failure to file a brief should not be treated as a concession of the case under Trademark Rule 2.128(a)(3). Opposer filed a response together with a motion to re-open discovery and testimony, stating that its failure to take testimony and submit a brief was the result of its "reliance on applicant's explicit request for an extension of time to file an answer and obtain counsel," and on its "good faith belief that applicant had not submitted a proper answer . . . and was planning on abandoning its mark."

The Board lifted the show cause order (i.e., concluding that Opposer had not lost interest in the case), but ruled that Dream Merchant failed to meet the FRCP Rule 6(b)(2)standard for re-opening discovery and testimony: namely, excusable neglect. In that connection, it applied the Supreme Court's four-factor test set out in Pioneer Inv. Serv. Co. v. Brunswick Assoc. Ltd., 507 U.S. 380 (1993).

The Board disagreed with Dream Merchant's characterization of Fremonster's request as an "explicit" extension request for additional time to file its answer. "Instead, a more logical reading of this cover letter is that applicant is requesting additional time to find legal counsel, and making a contingent request that, if any other filing deadline should be imminent that it be extended." The Board pointed out that, during the one year period between close of discovery and Opposer's response to the show cause order, "opposer could have inquired as to the status of this case." It concluded that even if Fremonster "will not be substantially prejudiced" by the delay and even if opposer acted in good faith, those two factors did not overcome the two that are not in Dream Merchant's favor (the length of and reason for the delay).

Cirque du Soleil
The Board then turned to the merits of the case -- the record consisting of the pleadings and Applicant's file history. Fremonster admitted that Dream merchant is owner of the pleaded registrations, that Opposer has priority, and that the mark CIRQUE DE SOLEIL is famous and was famous prior to Fremonster's claimed first use date.

With regard to the likelihood of confusion claim, the Board deemed the services to be identical and the CIRQUE DU SOLEIL mark entitled to a broad scope of protection. Nonetheless, the Board found the differences in the marks to be the critical du Pont factor: because the word "cirque" is descriptive or generic for the involved services, the two marks are dominated by the phrases "de flambe" and "du soleil," respectively, which phrases differ in sound, appearance, and meaning. The Board therefore ruled that confusion is not likely.

As to Opposer's dilution claim, the Board found it unnecessary to answer what is perhaps the major unresolved issue in TTAB dilution jurisprudence: what standard applies when the accused mark is already in use: likelihood of dilution or actual dilution? Dream Merchant had no proof of record regarding "any blurring or tarnishment or any sort of lessening of the distinctiveness of plaintiff's famous mark." Thus if an actual dilution standard applied, Opposer's claim would fail. The Board observed, however, that the marks at issue are clearly not "virtually identical," as required for a plaintiff to prevail on a TTAB dilution claim. Consequently, Dream Merchant's Section 43(c) claim would fail regardless of which standard applied, and there was no need to answer the unanswered question.

The TTABlog notes that this case is an unfortunate example of the TTAB's typically rigid stance in the face of a party's innocent failure to adhere to the Board's scheduling order. This form-over-substance approach flies in the face of the Board's professed desire to decide cases on the merits rather than on procedural niceties. The Board's emphasis on a party's prompt action in seeking to re-open a case stands in ironic contrast with the Board's frequent tardiness in deciding matters. Let's face it, the TTAB is not a "rocket docket."

In this writer's view, Dream Merchant should have been afforded the opportunity to put in all of its evidence so that a decision could be made on a full record. There was no proof of any prejudice to Applicant due to the delay, and the Board apparently accepted Opposer's assertion of good faith. Shouldn't those two factors be the important ones in the Pioneer analysis?

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

USPQ Publishes TTAB's Uncitable Jiu-Jitsu Decision While Citables Go Unpublished

In its January 31, 2005 issue of the United States Patent Quarterly, BNA includes the TTAB's uncitable, interlocutory, and uninteresting ruling in Rickson Gracie LLC v. Gracie, 73 USPQ2d 1379 (TTAB 2004). It is simply a mystery why BNA would choose to publish this unremarkable November 2004 decision while two citable TTAB decisions from September 2004 remain unpublished: namely, In re Candy Bouquet Int’l, Inc., Serial No. 78058216 (Sept. 8, 2004) and In re White, Serial No. 78175476 (Sept. 8, 2004).
The Gracie case involves a bout between two members of the Brazilian Gracie family, internationally famous in the field of jiu-jitsu. Rickson Gracie seeks to cancel Rorion Gracie's registration for the mark GRACIE JIU-JITSU ACADEMY for a "school for instruction in the art of Jiu-Jitsu." Petitioner amended its originally defective cancellation petition to set out allegations of a false connection under Section 2(a). Respondent filed a motion to dismiss for failure to state a claim. The Board denied the motion, but noted that Petitioner had failed to include in the amended petition an allegation of prior common law rights in the GRACIE name. Petitioner was given 20 days to add that allegation (which was included in its opposition brief on the motion). The Board also issued a scheduling order setting discovery and trial dates.

The TTABlog has no problem with BNA publishing uncitable TTAB decisions, even if they are as dull as Gracie. But citable decisions should receive priority treatment, don't you think?

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

"COMMERCE TRUST" TTAB Tiff Heads To The CAFC

Martell & Associates has appealed to the CAFC (No. 05-1186, docketed January 14, 2004) from the TTAB's ruling in Commerce Bancorp, Inc. v. Martell & Assoc. Financial Services Co., Opposition No. 91124853 et al. (October 5, 2004) [not citable]. The Board found the applied-for marks COMMERCE TRUST (in block letter and design forms, with TRUST disclaimed) for banking and mortgage services, likely to cause confusion with Opposer's previously used but unregistered mark COMMERCE BANK C and Design for banking and mortgage services.


Opposer asserted ownership of a "family" of "COMMERCE" marks, registered and unregistered, for various banking, financial, and insurance services: COMMERCE BANK C and Design, COMMERCE CAPITAL MARKETS, COMMERCE CHECKVIEW, COMMERCE ON-LINE, THE COMMERCE ADVANTAGE, COMMERCE!WOWZONE, COMMERCE!WOWZONE and Design, COMMERCE, COMMERCE BANK, and COMMERCE NATIONAL. Once again, however, the Board rejected the "family of marks" claim: Opposer never pleaded ownership of a "family" in its notices of opposition, and in any case Opposer submitted nothing more than "a few advertisements in which more than one of its marks containing the word COMMERCE is shown" -- not enough to demonstrate "that consumers would recognize the COMMERCE marks to represent a family."

Turning to the du Pont analysis, third party usage of similar marks for similar services played a "dominant role." Applicant Martell submitted Internet excerpts from 14 third-party websites, various yellow page listings, and numerous newspaper article excerpts showing use of the word "COMMERCE" as part of a business name in connection with banking services. Moreover, Opposer itself, in prior submissions to the PTO while seeking registration of its own trademarks, acknowledged that there are many third-party uses of "COMMERCE" and it asserted that "COMMERCE" is a suggestive term for financial services. In once case, Opposer submitted a list of 191 registered marks that contain the word "COMMERCE," 39 of them in class 36. Although Opposer's prior statements to the PTO are not binding on the Board, "they are 'illuminative of shade and tone in the total picture confronting the decision maker.'"

The Board concluded that the "scope of protection of opposer's COMMERCE marks is extremely limited. Essentially, opposer may use these marks only to prevent the registration of virtually identical marks for virtually identical services."

The Board then focused its attention on the common law mark COMMERCE BANK C and Design, because the rest of Opposer's marks "are for services that, in the context of the highly suggestive nature of the mark COMMERCE, are too different" from Applicant's services to support a likelihood of confusion finding.


Opposer established priority of use of its COMMERCE BANK C logo for services identical to those of Applicant Martell, offered through the same channels of trade to the same classes of customers. The Board deemed the marks at issue to be "virtually identical," their differences being "too minor to distinguish the marks." The supposed care and discrimination with which customers purchase financial services supported Martell's position, as did the third-party usage evidence. The lack of evidence of actual confusion, however, did not weigh against Opposer because the record did not contain information regarding the scope of Martell's use of its marks.

Balancing the du Pont factors, the Board concluded that "opposer's mark COMMERCE BANK C logo and applicant's COMMERCE TRUST marks are so similar that, when used on identical services, we find that applicant's marks are likely to cause confusion."

As pointed out in the CAFC's recent decision in Shen Mfg. Co. v. The Ritz Hotel Limited, 73 USPQ3d 1350 (Fed. Cir. 2004), the appellate court reviews the Board's conclusions of law de novo and its findings of fact for substantial evidence. Likelihood of confusion is a question of law based on underlying facts. Thus the CAFC may agree with the Board's assessment of the facts, yet may draw a different conclusion on the likelihood of confusion issue.

TTABlog Update: On December 7, 2005, the CAFC affirmed the Board's decision per curiam under Rule 36.

Text Copyright John L. Welch 2005.

USPTO Issues First Madrid Protocol Extension of Protection

On February 1, 2005, the United States Patent and Trademark Office issued its first certificate of Extension of Protection under the Madrid Protocol. Merck KGaA of Darmstadt, Germany, received Registration No. 2,923,503 for the mark OSTEOSOFT for certain chemical products.

Merch KGaA
The TTABlog noted on November 9, 2004, that the application for OSTEOSOFT was the first Madrid Request for Extension of Protection to be published for opposition.

The Certificate issued by the USPTO for the OSTEOSOFT mark is interesting in that it nowhere states that it represents a Certificate of Extension of Protection. Moreover, it does not make reference to the underlying International Registration, nor to the Madrid Protocol, nor to the particular provisions of the Trademark Act under which it was issued.

The sure indicator of the origin of the registration, however, is the prefix "79" in the serial number. Only Madrid requests for extension have the "79" prefix. (Thanks to reader Orrin Falby for the reminder) .

Costa Del Mar Files Appeal From TTAB Confusion Ruling Re "EX FRAME" For Sunglasses

Costa Del Mar Sunglasses, Inc. has appealed to the CAFC (Appeal No. 05-1185, docketed January 14, 2005) from the TTAB's ruling sustaining a Section 2(d) opposition to registration of the mark EX-FRAME for "optical and sunglass frames." Oakley, Inc. v. Costa Del Mar Sunglasses, Inc., Opposition No. 91120006 (October 4, 2004) [not citable]. The Board found Applicant's mark likely to cause confusion with the registered mark X METAL for sunglasses.Opposer Oakley, Inc. introduced registrations for the marks M FRAME, O FRAME, E-FRAME, E WIRE, T WIRE, PRO M FRAME, X METAL, and several others, for various eyewear products, and asserted that these marks comprise a "family" consisting of "single letter marks in combination with the word 'frame' or 'wire.'" The Board, however, once again rejected the 'family of marks' claim, noting that Opposer "has no clearly defined 'family' with a single 'surname'" -- i.e., "there is no particular feature which characterizes its asserted 'family.'"

"To rule otherwise would be to allow parties to claim a 'family' of marks which consist of different single syllable words (e.g., pro, ex); or based on the use of a few single letters, essentially grant a party rights to the entire alphabet of single letters."

In any case, there was insufficient evidence showing use of these marks together as a "family."

The Board therefore turned to Oakley's individual marks, and focused particularly on Oakley's X METAL mark for sunglasses. The Board found Cost Del Mar’s sunglass frames to be substantially identical to Oakley's sunglasses (and Applicant did not argue otherwise). Since neither the opposed application nor Oakley's registration included any limitations as to channels of trade or purchasers, the Board assumed that they are the same.


As to the marks, the Board noted that, when the goods at issue are virtually identical, the degree of similarity of the marks necessary to support a likelihood of confusion finding is lessened. The Board found the marks to be similar in sound, appearance, connotation. and commercial impression:

"both . . . consist of a beginning which is 'X' or 'EX' followed by a generic or highly descriptive word. Thus the beginning sounds are identical and the structure of the marks is similar. The connotation of both marks is that of 'x' as it relates to the younger generation such as 'x' games and 'extreme sports.'"

In conclusion, the Board noted that if it had any doubt in this case, it must resolve that doubt in favor of the registrant.

Although a rather formulaic application of the du Pont factors led the Board to a likelihood of confusion finding, the TTABlog's view is that EX-FRAME and X METAL are just not close enough to cause confusion. No wonder Oakley was pushing a "family of marks" argument.

Minnesotans Survive Toothless Texan TTAB Priority Challenge Re "NEXT STAGE" Mark

Hopkins, Minnesota-based Stages Theatre Company survived a feeble Section 2(d) opposition to its registration of the mark NEXT STAGE for "entertainment in the nature of theater production in the fields of dramatic arts, music, literature, and dance." Nextstage Entertainment Corp. v. Stages Theatre Co., Opposition No. 91121402 (January 11, 2005) [not citable]. Priority was the crucial issue, and each party stumbled in its attempt to finish first.
Stages Theatre Company
Opposer Nextstage Entertainment, based in Grand Prairie, Texas, relied on common law rights in the mark NEXTSTAGE, claiming use of that mark since January 1998 in connection with the promotion of live musical events. Applicant claimed a first use date of May 11, 1998 in its application, but filed a motion to amend its first use dates to April 15 (anywhere) and June 15, 1997 (in commerce).

Applicant took no testimony, submitted no evidence, and did not file a brief. Its motion to amend its dates of use was denied by the Board because its affidavit evidence failed to meet the applicable standard: to establish a date earlier than that alleged in an application, an applicant's proof "must be clear and convincing and must not be characterized by contradiction, inconsistencies and indefiniteness." Applicant submitted a 1997-1998 season schedule and a printer's invoice for the schedule, but no proof that the performances actually occurred. This failed to satisfy the definition of service mark use set out in Section 45 of the Trademark Act, which requires that a mark be "used or displayed in the sale or advertising of services" and that the services "be rendered in commerce . . . ." Applicant submitted no other "convincing evidence of use," and therefore the earliest date on which it could rely was its filing date of July 31, 1998.

Nextstage Entertainment Corp.
Opposer took no testimony, but submitted a notice of reliance introducing a number of purported "publications" to prove its first use date. However, the "publications" consisted of, inter alia, an employee name tag, a schedule of costs for promotion, a client/contact list, an information sheet, and various brochures, newsletters, and performance schedules." The Board ruled that none of these documents was admissible by way of notice of reliance: "They do not qualify as either printed publication, such as books and periodicals, available to the public, or as official records, as contemplated by Rule 2.122(e)." Accordingly, these materials were given no consideration.

Thus, not only did Opposer fail to prove priority, but it "failed to properly introduce any evidence that its mark NEXTSTAGE was used at all, let alone used prior to the filing date of applicant's application." Opposer therefore could not prevail on its claim of likelihood of confusion, and the opposition was dismissed.