TTABlog Quarterly Index: January - March 2005

It's time for another index of TTABlog postings. The index for November and December 2004 postings may be found here. During the first quarter of 2005, I posted more than sixty items at the TABlog, typically one per weekday. My goal is to highlight interesting cases, review topical articles, and generally keep myself and the TTABlog's readers informed regarding current TTAB practice and procedures. Comments, criticisms, and corrections are welcome.

Faneuil Hall
Section 2(a) - immoral or scandalous:

• TTAB Finds "TWATTY GIRL" Not Immoral or Scandalous
• USPTO Approves "UCKFAY" Trademark For Clothing
• TTAB Sees "A**HOLE" As Scandalous

Section 2(d) - likelihood of confusion:

• Fame Of "PYREX" Mark Yields TTAB 2(d) Victory Over "PYR-O-REY"
• Pepperdine Wins Left Coast TTAB Battle Over Wave Logos
• TTAB Denies Leo Stoller Summary Judgment Motion In "GROUND ZERO STEALTH" Opposition
• TTAB Affirms 2(d) Refusal Of Afrikaans "SONOP" For Wine
• TTAB Deems "ELLIS BLACK" Confusingly Similar to "PERRY ELLIS"
• TTAB Rules Gospel Music Association Off-Key In 2(d) Appeal
• Gibson Guitar Axed In TTAB "EXP" 2(d) Cancellations
• TTAB Reverses 2(d) Refusal of "McHEALTH CLINIC & Design"
• TTAB Turns Thumbs Down On "GREEN THUMB CLUB" In 2(d) Opposition
• Sharp Appeals TTAB's "THINKSHARP" 2(d) Dismissal
• TTAB To Hear Oral Argument in NYC in "FIRST NIAGARA" Case
• University of South Florida Fails TTAB 2(d) Test
• "MALIBU ROCKS" Crushed In TTAB 2(d) Opposition
• "BOSTON" Fans Block "BOSTON HARBOR," Says TTAB
• CAFC Clarifies duPont Fame Test In Affirming TTAB's "VEUVE ROYALE" Decision
• Cirque Du Soleil Appeals TTAB's "CIRQUE DE FLAMBE" Ruling
• "COMMERCE TRUST" TTAB Tiff Heads To The CAFC
• Costa Del Mar Files Appeal From TTAB Confusion Ruling Re "EX FRAME" For Sunglasses
• Minnesotans Survive Toothless Texan TTAB Priority Challenge Re "NEXT STAGE" Mark
• Leo Stoller Faces Formidable Foe in TTAB "STEALTH" Bowl Battle
• TTAB Sticks A Fork In "STEAKCOUNTRY" Mark
• "COLLEGETOWN" Opposer Flunks TTAB Priority Test
• TTAB Finds Confusion Unlikely Between "SPANGLE" and "PAILLETTES"
• "BBQ PIT STOP" Passes TTAB Mustard

Section 2(e)(1) - merely descriptive:

• TTAB Reverses 2(e)(1) Descriptiveness Refusal of "BERLING" For Typeface Software
• CAFC Affirms TTAB Re "TICK TAPE" 2(e)(1) Refusal
• TTAB Sustains 2(e)(1) Opposition to "CERTIFIED SPECIALITY COFFEE"
• TTAB Affirms 2(e)(1) Refusal Of "WATER WEIGHTS," But Finds Secondary Meaning
• TTAB Vacates "E-LAMP" Decision To Allow Oral Argument
• TTAB Finds "PSYCHOSOMATIC ENERGETICS" Merely Descriptive
• TTAB Not Sold On "ONE PRICE BUYING"
• TTAB Derails "RAILDRIVER" Mark

Section 2(e)(3) - primarily geographically deceptively misdescriptive:

• TTAB Reverses 2(e)(3) Refusal Of "SWISSCELL" For Batteries

Section 2(e)(4) - primarily merely a surname:

• CAFC Rules That Section 44 Applications Must Meet Lanham Act Section 2 Requirements
• TTAB Affirms PTO'S Refusal of "MARAJ" As Surname

Section 2(e)(5) - functionality:

• Clear Bottle Appeal May Clarify TTAB Functionality Doctrine

Section 2(f) - acquired distinctiveness:

• TTAB Affirms 2(e)(1) Refusal Of "WATER WEIGHTS," But Finds Secondary Meaning
• TTAB Reverses Genericness Refusal of "VIRUSSCAN"
• Clear Bottle Appeal May Clarify TTAB Functionality Doctrine

Concurrent Use:

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

Dilution:

• TTAB Grants Summary Judgment On Dilution Claim: Marks Too Dissimilar
• Cirque Du Soleil Appeals TTAB's "CIRQUE DE FLAMBE" Ruling

Fraud:

• TTAB Finds SOU Fraudulent, Invalidates "PHYSICIANS COMPLEX" Registration
• TTAB Finds Fraud, Summarily Cancels "IT'S A GIRL THING" Registration

Genericness:

• TTAB Affirms Genericness Refusal of "BLINDSANDDRAPERY.COM" In Citable Decision
• TTAB Reverses Genericness Refusal of "VIRUSSCAN"

Logan Airport
Not a Trademark/Service Mark:

• TTAB Refuses To Reconsider Slokevage "Trade Undress" Decision
• TTAB Says "ALL AMERICAN WOMAN" Not Merely Ornamental

Standing/Timeliness:

• TTAB Tosses Out Premature Opposition As A Nullity
• TTAB Dismisses "DOUBLE CHEW" Opposition For Failure To Prove Standing

Trade Dress/Product Configuration

• TTAB Refuses To Reconsider Slokevage "Trade Undress" Decision
• Clear Bottle Appeal May Clarify TTAB Functionality Doctrine

Recommended Reading:

• Still More Reading: McCarthy on Dilution
• Recommended Reading: "Qualitex Revisited"
• More Reading: TrafFix and the Expired Design Patent
• Recommended Reading: Trade Dress Rights in Musical Instruments

Leo Stoller:

• TTAB Denies Leo Stoller Summary Judgment Motion In "GROUND ZERO STEALTH" Opposition
• Leo Stoller Faces Formidable Foe in TTAB "STEALTH" Bowl Battle
• Leo Stoller Claims TTAB Constitutional Violations After Dismissal Of Opposition

Other:

• PTO Letters of Protest: The "PODCAST" Paradigm
• TTAB Affirms 80% Of Ex Parte Refusals
• Fancy Footwork: TTAB Allows Change Of Filing Basis During Appeal
• The TTABlog Goes To Washington: 20th Annual ABA IP Law Conference
• USPQ Publishes TTAB's Uncitable Jiu-Jitsu Decision While Citables Go Unpublished
• USPTO Issues First Madrid Protocol Extension of Protection
• The TTAB's Dysfunctional "Family of Marks" Doctrine
• TTAB 2004 Tally: One Dozen Citable Decisions
• "TORREY PINES" TTAB Dispute Roils San Diego
• Revised Section 66(a) Chart
• The TTAB Blues
• TTABlog Makes The IP Blog "Top Ten"

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

TTAB Reverses 2(e)(3) Refusal of "SWISSCELL" For Batteries

Applying the strict standard of In re California Innovations, Inc., 66 USPQ2d 1853 (Fed. Cir. 2003), the Board reversed a Section 2(e)(3) refusal to register the mark SWISSCELL for batteries for lighting, finding the mark not primarily geographically deceptively misdescriptive. In re Glaze Inc., Serial No. 76565437 (March 17, 2005) [not citable]


In California Innovations the CAFC ruled that:

". . . the PTO must deny registration under [Lanham Act] Section 1052(e)(3) if (1) the primary significance of the mark is a generally known geographic location, (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place, and (3) the misrepresentation was a material factor in the consumer's decision." 66 USPQ2d at 1855.

The Examining Attorney contended that consumers are likely to believe that the batteries of Applicant Glaze Inc. (of Edison, New Jersey) come from Switzerland because it is a country where batteries are designed and manufactured, and that this belief would affect the purchasing decision because "batteries manufactured in Switzerland have a high quality." He relied mainly upon website evidence regarding two Swiss companies that cell batteries, one referring to "Swiss quality."

Regarding the first factor of the CAFC test, the Board found the primary significance of SWISSCELL to be geographic, noting that the highly descriptive word CELL does not take away from the geographic significance of SWISS.

As to the second factor, the Board took judicial notice that Switzerland has a "prosperous and stable modern market," but observed that, taken along with the website information, this is "tenuous evidence that purchasers would expect batteries for lighting to come from Switzerland." Contrasting this case with the recent Board decision in In re Consolidated Specialty Restaurants, Inc., 71 USPQ2d 1921 (TTAB 2004) [affirming a Section 2(e)(3) refusal of COLORADO STEAKHOUSE & Design], the Board ruled that the PTO had not established the required goods/place association between Switzerland and batteries for lighting.

And as to the third factor, the materiality of the misrepresentation, "the evidence falls far short of demonstrating that batteries are a principal product of Switzerland nor does the evidence show that Switzerland is noted for batteries for lighting." There was simply no showing of a "heightened association" between the country and the product that would raise an "inference of deception or materiality." See In re Les Halles de Paris J.V., 67 USPQ2d 1539, 1542 (Fed. Cir. 2003).

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

Fame Of "PYREX" Mark Brings TTAB 2(d) Victory Over "PYR-O-REY"

Finding that PYREX is a famous mark for Section 2(d) purposes, the Board sustained an opposition to registration of the mark PYR-O-REY for "ovenware, namely glass casseroles and bakeware." Corning Inc. v. Vitrocrisa S.A. de C.V. Co., Opposition No. 91119107 (March 14, 2005)[not citable].


Much of the evidence offered by Opposer Corning Incorporated to prove the fame of the PYREX mark was submitted under seal as confidential, and therefore the Board did not provide the details. However, it found that:

"[t]he extraordinary amount of time that [the PYREX mark] has been used for cookware products, the amount of sales and the expenditures on advertising, the strong brand awareness, and household penetration, all to go demonstrate the fame of the mark."

The opinion does point out that the PYREX mark has been in use since 1915. In 1995, sales were $125M, with advertising expenditures of $3M. Sales in 1996 were in the $169M range (apparently the prior year's advertising effort paid off), when Corning spent "over $800,000 on television advertising." Corning's witness testified regarding survey results for 1994-95 indicating that 92% of those surveyed had heard of the brand.

The Board repeated its standard mantra that fame "plays a dominant role" in the Section 2(d) analysis. "As a mark's fame increases, the Act's tolerance for similarities in competing marks falls." Kenner Parker Toys, Inc. v. Rose Art Indus. Inc., 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).

Turning to the most difficult issue, the similarity of the marks, the Board noted that, because the goods of the parties are in part identical, "the degree of similarity necessary to support a conclusion of likely confusion declines." The Board acknowledged the differences in appearance and pronunciation, but observed that "these differences fade in light of the fame of opposer's mark, the legally identical goods, and the fact that the goods may be purchased without care or deliberation."

Moreover, in a bit of a stretch, the Board noted that the connotations of the marks may be considered the same in some respects: "PYREX can be seen as being composed of the Greek word 'fire' and the Latin word 'king.' *** The literal translation of applicant's mark . . . is 'Fire of the King.'" [According to Applicant's testimony, the PYR-O-REY mark was chosen to indicate that its glassware is produced in Monterrey, Mexico].

Planta M de Vitrocrisa, en Monterrey, Nuevo León.
The seldom-referenced DuPont factors regarding "market interface" and "any other established fact" played a role in the Board's Section 2(d) analysis. Vitrocrisa at one time had a business relationship with Corning and, despite being aware of Corning's view that confusion would be likely if the PYR-O-REY mark were used in the USA, proceeded to file the subject ITU application. "[t]his history reinforces that we should apply the well-established principle that doubt must be resolved in favor of opposer."

Corning also asserted a dilution claim, but the Board (as usual) elected not to consider it. Had the Board done so, the claim would likely have failed because the marks at issue are not "identical or 'very or substantially similar,'" as required for a finding of dilution. See the TTABlog post here.

In any case, why should an opposer undertake the expense and effort required to prove a dilution claim when the Board provides very broad rights to "famous" marks under Section 2(d)?

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

TTAB Reverses 2(e)(1) Descriptiveness Refusal of "BERLING" For Typeface Software

Sympathetically noting the "limitations of copyright and design patent protections available to typeface designers," the Board reversed a Section 2(e)(1) refusal to register the mark BERLING, finding it not merely descriptive of "computer software for use in displaying and printing digital typeface designs and typographic ornaments." In re Verbum AB, Serial No. 78064146 (March 10, 2005) [not citable].

Berling Roman
The Examining Attorney contended that BERLING is "the name for a particular, well-known typeface . . . and that consumers will immediately understand that applicant's software features the Berling typeface, a particular genus of font type and, therefore, that the mark identifies a key feature of the goods." In support, she introduced webpages using the term BERLING to identify for sale a particular computer font.

Applicant Verbum argued that the term BERLING "has long been recognized as a mark for a typeface design and that the involved goods, computer software, are used to create this typeface design."

The Board observed that the Examining Attorney apparently based her position "upon the misapprehension . . . that the names of long-standing typefaces, as well as the resulting digital fonts of the same name (e.g., that one sees daily on the pull-down menus of computer word processing applications) must necessarily be in the public domain." Applicant Verbum pointed out, however, that although some terms (e.g., Garamond) have passed into the public domain, the names of other well-known fonts have not: e.g., Helvetica®, Arial®, and Times New Roman® are proprietary names legally used only under license.

The Board found persuasive an affidavit from an officer of one of Verbum's licensees, indicating that trademarks "have been important to typeface designers from the time of the manuscript calligraphy of the fifteenth century, and that trademarks continue to be critical to the digital type face designers and type foundries of the twenty-first century." He explained that "[t]he Berling font has inclined and blunt serifs and ascenders that exceed the height of the capital letters . . . . This typeface was originally designed by Karl-Erik Forsberg [in the 1950's] for the Berling typeface foundry."

Karl-Erik Forsberg
The Board particularly noted the "intellectual property law challenges facing typeface designers" -- i.e., "the limitations of copyright and design patent protections available." While not dispositive, "these details:"

"highlight the significance of applicant's argument that affirming the Trademark Examining Attorney on this record would fly in the face of 'hundreds of registered trademarks for font names,' . . . including many with historical ties to preexisting typefaces."

While design patent protection may be available for a typeface design, the term is rather short (14 years) and the scope of protection somewhat uncertain. Copyright protection is not available for typeface designs (as opposed to the software code (i.e., the font software)).

Trademark protection for BERLING, of course, protects only the font name, not the typeface design itself. A similar typeface or font sold under a different name, or perhaps promoted as being "like the Berling typeface," would seemingly not infringe the trademark.

A brief, informal discussion of some of these issues may be found here.

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

CAFC Rules That Section 44 Applications Must Meet Lanham Act Section 2 Requirements

In a precedential opinion, a CAFC panel majority ruled that applications filed under Section 44 of the Lanham Act must meet the Act's Section 2 eligibility requirements. The court affirmed the TTAB's ruling that the marks DR. RATH and RATH are primarily merely surnames and thus are barred from registration under Section 2(e)(4). In re Rath, Appeals Nos. 04-1419 and 04-1420 (March 24, 2005).

Dr. Matthias Rath
Dr. Matthias Rath did not contest the Board's holdings that the marks are primarily merely surnames. Instead, he argued that "the surname rule is at odds with the Paris Convention as applied to those holding foreign registrations" because that rule "does not fall within any of the three enumerated exceptions to the registration of foreign marks."

The three Convention exceptions, in short, are for marks that infringe another mark, marks that are devoid of any distinctive character, and marks that are contrary to morality or public order. The PTO urged on appeal that surname marks are descriptive and therefore "devoid of any distinctive character," thus falling within the second enumerated exception.

The CAFC, however, concluded that it need not decide whether the surname rule conflicts with the Paris Convention because "the Paris Convention is not a self-executing treaty and requires congressional implementation."

Alternatively, Dr. Rath argued that Section 44(e) of the Lanham Act is congressional legislation implementing the Paris Convention, and that "Section 44(e) itself requires registration because the Paris Convention requires registration." The panel majority disagreed, noting that Section 44(e) provided for registration of a foreign mark "if eligible."

"There is no question but that Congress generally intended section 44 of the Lanham Act to implement the Paris Convention. But this does not mean that Congress intended to do so in every respect or that it actually accomplished that objective in all respects or that it correctly understood the requirements of the Paris Convention in enacting section 44. *** [T]he history generally confirms that the principal register was available to foreign registrants and United States citizens on equal terms -- both had to meet the eligibility requirement of United States law."

The panel majority ruled that the phrase "if eligible" in Section 44(e) refers to eligibility for registration on the principal register, not eligibility under the Paris Convention. It concluded that "Section 44 applications are subject to the section 2 bars to registration, of which the surname rule is one."

In a concurring opinion, Circuit Judge Bryson would not reach the issue of whether the Lanham Act "trumps" the Paris Convention, but would decide on the narrower ground adopted by the TTAB and urged here by the PTO: that the surname rule and the Paris Convention are not inconsistent, that surnames are a subset of "merely descriptive" marks, and that they lack "distinctive character" under the Convention.

This short summary of the CAFC's decision should by no means serve as a substitute for a thorough reading of the court's opinion.

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

Pepperdine Wins Left Coast TTAB Battle Over Wave Logos

Pepperdine University, whose location in Malibu, California accounts for its choice of the awful name "Waves" for its athletic teams, had little difficulty in warding off a Section 2(d) attack on its wave logo mark shown immediately below, for various clothing items. Pacific Sunwear of California, Inc. v. Pepperdine University, Opposition No. 91159978 (March 8, 2005) [not citable]


Fellow left coast denizen Pacific Sunwear claimed likelihood of confusion with three of its marks, shown here, for like clothing items:

The Board cut right to the chase, ruling on summary judgment that "the single DuPont factor of the dissimilarity of the marks in their entireties outweighs any other relevant factors and is dispositive." The Board construed "the remaining relevant presented DuPont factors" in Pacific Sun's favor, including the "fame" factor. To the extent that Pacific Sun "may have raised" an issue of material fact as to Pepperdine's intent -- Pacific Sun contended that Pepperdine knew of its marks -- "this fact is not material to the Board's decision" in view of the dissimilarities in the marks.

Noting that when designs are involved, a subjective "eyeball" test is applied to determine similarity of appearance, the Board found that "although the designs in question may be characterized as waves, they are vastly different visually." The Board particularly noted the "surfboard element" that is "readily apparent" in Pacific Sun's designs, but absent from Pepperdine's mark.

As to the inclusion of the term KIRRA in two of Pacific Sun's marks, this "further serves to emphasize the differences in the involved marks."


Therefore, the Board granted Pepperdine's summary judgment motion, giving Pacific Sun the evil eyeball as it waved goodbye to this left coast logo loser.

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

TTAB Tosses Out Premature Opposition As A Nullity

Hawaiian haberdasher Only The Best, Inc. jumped the gun in its attempt to oppose an application to register MAUI SURF COMPANY for various clothing items. It filed its opposition before the application was published for opposition, and so the Board tossed out the opposition as untimely. Only The Best, Inc. v. OPS Sales, Inc., Opposition No. 91163053 (March 17, 2005). Maui Surf Company "KEMO" Pink Surfer Boots OPS Sales, Inc.'s application was published for opposition on November 9, 2004, but Only The Best, Inc. mailed its Notice of Opposition under the PTO's express mail procedure on November 3rd. The PTO stamped the notice with an "Office date label" of November 3, 2004. The correspondence was actually received by the PTO on November 15, 2004. "Under these circumstances, the controlling date is the date on the 'Office date label.'" Section 13 of the Trademark Act states that an opposition may be filed "within thirty days after publication." Because the timeliness requirement is statutory, it cannot be waived. Ergo, the notice of opposition was a nullity. Only the Best, Inc. argued that the date of actual receipt by the PTO is controlling, and that the PTO received the notice on November 15th according to the TARR database entry. Applicant OPS, however, provided a printout from the USPS website, showing that the package was received by the PTO on November 5th. The Board noted that the TARR date "merely reflects the date the notice of opposition was entered into the database and has no legal effect." Thus even under Only The Best's erroneous argument, the notice was still premature and untimely. Only The Best, Inc. may take some solace in the Board's closing footnote:

"Only The Best, Inc. is advised that its remedy, if any, lies in the filing of a petition for cancellation, pursuant to Section 14 of the Trademark Act. See TBMP Section 306.04. Further, this matter will be referred to the Finance Branch of the Office of consideration of the refund of the $300.00 opposition fee. Id."

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

PTO Letters of Protest: The "PODCAST" Paradigm

At The Trademark Blog, Marty Schwimmer recently noted here the filing of a trademark application to register the alleged mark PODCAST for an "online prerecorded radio program over the internet." (Application Serial No. 78564869, filed February 5, 2005).

Martin Schwimmer, Esq.
Other bloggers have expressed various levels of disgust and/or outrage at the attempted "trademarking" of this word. [Editor's note: I am ready to lead a crusade to ban all usage of the word "trademark" as a verb.] Of course, the mere filing of an application does not mean that the word "podcast" is or ever could be a trademark for the identified goods, nor does it mean that the applicant, Shae Spencer Management LLC of Fairport, New York, owns any rights whatsoever in that word as a trademark.

Nonetheless, those who believe "podcast" is generic or descriptive and are concerned that the USPTO might actually find this mark registrable, need not sit on their hands. The PTO provides a means for registering one's objection: the letter of protest.

Letters of protest are discussed at Section 1715 of the Trademark Manual of Examining Procedure. A letter of protest may be sent to the Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451. The letter should not be send directly to the Examining Attorney.

As to the contents of the letter, Section 1715(a)(1) sets forth several "Issues Appropriate As Subject of Letter of Protest." The first of the three "most common areas of protest" is applicable here:

"(1) A third party files an objection to the registration of a term because it is allegedly generic or descriptive. The objection must be accompanied by evidence of genericness or descriptiveness. The evidence should be objective, independent, factual evidence that the examining attorney can use to support the suggested refusal. Personal opinions are subjective and may be self-serving, and are not forwarded to the examining attorney. If the protest is granted, the examining attorney is informed that an objection to registration has been filed on the ground that the mark is generic or descriptive, and is given a copy of any factual evidence submitted with the letter of protest."

The fee required for filing a letter of protest: nothing. The satisfaction to be gained from voicing your objection: priceless!

Giant pod, cast of "Invasion of the Body Snatchers"
Text ©John L. Welch 2005. All Rights Reserved.

TTAB Finds SOU Fraudulent, Invalidates "PHYSICIANS COMPLEX" Registration

And the hits just keep on coming on W-F-R-A-U-D! The TTAB invalidated another registration on the ground of fraud in Physicians Formula Cosmetics, Inc. v. Cosmed, Inc., Cancellation No. 92040782 (March 11, 2005) [not citable].


In its Statement of Use, Registrant Cosmed, Inc. "affirmed to the PTO that [it] had used the involved mark on all of the listed goods. . . ." During discovery, however, Cosmed's counsel stipulated that Cosmed had never used the PHYSICIANS COMPLEX mark on several of the cosmetics products listed in its registration. Cosmed's president testified that his brother, as Treasurer, signed the Statement of Use: "It was that we intended to use it."

Petitioner Physicians Formula Cosmetics, Inc. amended its Section 2(d) petition for cancellation to add a claim of fraud, and then succeeded on its partial summary judgment motion on that added ground. The Board found that Petitioner had carried its burden to prove its allegation of fraud "'to the hilt' with clear and convincing evidence."

"Specifically, the stipulation regarding respondent's non-use of certain goods [sic] identified in the registration, combined with the above-quoted testimony of respondent's president, establish that when respondent signed the statement of use, respondent knew, or should have known, that the averment regarding use of the mark on all of the goods identified therein was false."

The Board agreed with Petitioner that Cosmed's excuse -- that it intended to use the mark on all the goods in question -- was legally insufficient.


The Board needed only seven pages to recite the facts and explain its reasoning. In light of current case law, including Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003), no other result was possible.

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

TTAB Denies Leo Stoller Summary Judgment Motion In "GROUND ZERO STEALTH" Opposition

In an Order dated March 11, 2005, the TTAB has (not surprisingly) denied Central Mfg.'s summary judgment motion in the GROUND ZERO STEALTH football kicking tee opposition. Central Mfg. Co. v. Premium Products, Inc., Opposition No. 91159950. The summary judgment motion was previously discussed here at the TTABlog.

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.

Actual GROUND ZERO^® brand tee used by Adam Vinatieriin New England Patriots' Super Bowl XXXVI victory
Summary judgment for a Section 2(d) opposer is, of course, very difficult to obtain. Unless the marks are nearly identical and the goods/services overlapping, a genuine issue of material fact is likely to be found among the DuPont factors. Here there were many such factual issues:

"We find that there are genuine issues of material fact, at a minimum, with respect to the similarity, commercial impression and connotation of the parties' respective marks, and the relatedness of the parties' respective goods. In addition, we find that there are genuine issues of material fact regarding the strength of opposer's marks and whether they constitute a family of marks."

The Board re-set discovery and trial dates, with discovery to close on August 30, 2005.

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

TTAB Affirms 80% Of Ex Parte Refusals

TTABlog reader Kevin Grierson asked me yesterday for an estimate of the reversal rate for TTAB ex parte appeals. I responded, "about 20%." [That was based on a statement made by former Judge Cissel at a conference a few years ago]. But I decided to take a look at last year's TTAB final decisions to see whether that estimate holds up.


Based on a review of the TTAB's summaries of its 2004 final decisions, I counted 92 reversals of 464 appealed refusals to register. According to my MILANO brand Museum of Modern Art calculator (shown above), that comes out to a reversal rate of 19.8%, or conversely, an affirmance rate of 80.2%

Meanwhile, Kevin checked the Board's decisions for the first nine weeks of 2005 (through March 4), and counted 16 reversals out of 67 refusals, for a reversal rate of about 23.9%, or an affirmance rate of 76.1%.

Thus it appears that the 20% reversal rate is a pretty handy rule of thumb.


I decided to probe further into the 2005 decisions to break them down a bit:

33 of the ex parte decisions (about 50%) concerned Section 2(d) likelihood of confusion refusals, and the Board affirmed the PTO as to 25 of the refusals -- or about 75%.

19 of the decisions (about 28%) involved a Section 2(e)(1) mere descriptiveness refusal. The Board affirmed 14 of those refusals -- or about 74%

The TTABlog, for its next statistical project, will similarly break down the Board's 2004 ex parte decisions. A report will follow.

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

TTAB Affirms 2(d) Refusal Of Afrikaans "SONOP" For Wine

The sun has gone down on the attempt of South African winery Savisa to register the Afrikaans word SONOP for wines, distilled spirits, and liqueurs. The Board affirmed a Section 2(d) refusal to register, finding the mark likely to cause confusion with the registered mark SUNRISE, owned by Chilean winemaker Concha y Toro for wine. In re Savisa (Pty) Ltd., Serial No. 78154196 (February 24, 2005) [not citable].


Savisa conceded that SONOP "translates into English as SUNRISE." Since the goods at issue are, in part, legally identical, Savisa had one principal argument: "because SONOP is a word in Afrikaans, an appreciable number of American consumers would not be familiar with the translation of SONOP as SUNRISE.

Savisa submitted an excerpt from TheFreeDictionary.com which, according to Applicant, shows that Afrikaans is "a language spoken by less that 0.1% of Americans." The Board noted, however, that the excerpt actually shows "percentages of 'Primary Language at Home.'" This is not that same as the "percentages of Americans who know a particular language." The Board noted that, other than Spanish, no other language reached the level of 1% -- not even Italian (0.384%), which is "a common, major language in the world and is spoken by many people in the United States."

The Examining Attorney submitted a report from the USPTO Translator for, inter alia, Afrikaans, which indicated that:

"Afrikaans is a well-established language, recognized by all of the advanced and developed nations, and is a form of old Dutch. It 'is a European language, and that is why it is familiar in the USA.' It is also one of the principal Germanic languages, spoken by more than 20 million people."

The Board noted that Afrikaans is one of the official languages of South Africa, that it is taught in South African schools, and that all road signs in South Africa are in Afrikaans and in English. The Board concluded that Afrikaans is not an obscure language: it is "a modern language of a very large country, as well as a major language of five other countries."

"People from the Republic of South Africa are likely to emigrate to or visit the United States, and obviously the English-speaking people from that country would not encounter a language barrier here. *** Because of the diversity of the population of the United States, coupled with temporary visitors, all of whom are part of the United States marketplace, commerce in the United States utilizes innumerable foreign languages."

The Board therefore ruled that the doctrine of foreign equivalents applies here, and that the marks at issue should be considered to have the same meaning. The Board's DuPont analysis led inevitably to its conclusion that confusion is likely.


Applicant Savisa apparently bottles its wine in the vicinity of Sonop, South Africa. Would it have made a difference here if Applicant had argued that SONOP would be recognized by Afrikaans-speaking people as the name of a town or geographical area, rather than as the Afrikaans word for SUNRISE?

Postscript: Compare the TTAB's treatment of SONOP with the CAFC's recent discussion of the French word "veuve" in Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689 (Fed. Cir. 2005), discussed here at the TTABlog. In Palm Bay, the CAFC ruled that the doctrine of foreign equivalents should be applied only when the "ordinary American purchaser would 'stop and translate [the word] into its English equivalent.'" It then held that the record evidence did not support the Board's finding that the ordinary consumer would translate "veuve" into the English "widow." Where is the evidentiary support for the TTAB's conclusion that the "ordinary American purchaser" would stop and translate the Afrikaan "sonop" into "sunrise?"

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

Fancy Footwork: TTAB Allows Change Of Filing Basis During Appeal

In a maneuver worthy of Rogers & Astaire, Applicant Oppedahl & Larson lithely danced around a PTO refusal to register based on faulty specimens of use. In the midst of appeal from this and several other refusals, O&L changed the filing basis of its application from Section 1(a) use to Section 1(b) intent-to-use -- and then for an encore filed an Amendment to Allege Use accompanied by a new specimen. As explained below, the TTAB looked on approvingly despite the PTO's displeasure.


Oppedahl & Larson LLP is the Dillon, Colorado law firm that provides a wealth of information for intellectual property attorneys at its patents.com website. The usefulness of its Feathers! software for tracking trademark applications (software that is free and downloadable from the firm's website) cannot be overestimated.

Last year the law firm challenged the TTAB's notion that TLDs can never have any trademark significance when incorporated as part of a mark. The CAFC in In re Oppedahl & Larson LLP, 71 USPQ2d 1370 (Fed. Cir. 2004) [PATENTS.COM merely descriptive for Internet-available software for tracking patents], ruled that, although the addition of a TLD to an otherwise unregistrable mark "will typically not add any source-identifying significance," this is not a "bright-line, per se rule;" "exceptional circumstances might yield a different result."

Currently, Oppedahl & Larson is pursuing an application to register the same mark PATENTS.COM for "on-line services in the field of intellectual property law." The PTO has refused registration on various grounds: genericness, mere descriptiveness, and failure of the applied-for mark to function as a service mark. The latter refusal is based on O&L's original specimens: according to the Examining Attorney, the appearance of PATENTS.COM on those specimens "would be perceived only as part of an Internet address for applicant's website."

O&L appealed from the final refusal, and the appeal was suspended pending a decision in the CAFC case. Now that the CAFC has ruled, the Board has returned to this file. Rather than consider the substance of the appeal, however, it first made a few procedural rulings. In re Oppedahl & Larson, Serial No. 75051843 (March 11, 2005) [not citable]

In order to remove the "improper specimen" issue from the case, Oppedahl & Larson made a clever move. First, with its brief on appeal (April 8, 2003), it filed a "Substitution of Basis" to change the filing basis of its application from Section 1(a) use to Section 1(b) intent-to-use. Then, several months after oral argument (held on November 18, 2003), it submitted an Amendment to Allege Use, providing a new (and arguably acceptable) specimen of use, and claiming the same dates of first use (in July 1995) that it had originally claimed when it filed its application way back in February 1996. The new specimen shows the term "patents.com" at the top of the firm's webpage, thusly:


The Examining Attorney maintained that "[i]t is too late to amend the application at the brief stage," but he failed to cite any authority for that position. The Board, however, pointed to Trademark Rule 2.35 and TMEP Section 806.03(c) in observing that nothing in the Trademark Rules prevents such an amendment while the application is on appeal. It therefore entered the amendment.

The Examining Attorney also contended that Oppedahl & Larson's request to change its filing basis was "inapposite" in light of its Section 2(f) claim because "a mark must be in use in order to claim acquired distinctiveness." Wrong again. An ITU applicant can, for example, claim secondary meaning from use of the mark on other goods or services; that secondary meaning will transfer to the applied-for mark when use in commerce commences. See In re Dial-A-Mattress Operating Corp., 57 USPS 1807 (Fed. Car. 2001)

The Board then decided to suspend the appeal and remand the case to the Examining Attorney for consideration of the propriety of the amendment to allege use and the new specimen. See TBMP Section 1206.01 (2d ed. Rev. 2004). The appeal will eventually be resumed and, if necessary, further briefing will be allowed as to any new issues raised by the Examining Attorney's action.

The TTABlog looks forward to O&L's return engagement with the Board, when the firm will attempt both to overturn the PTO's genericness refusal and to convince the Board of the sufficiency of its proof of acquired distinctiveness in the PATENTS.COM mark. That may be a daunting task, but it is one recently completed by McAfee, Inc. in In re Network Associates Technology, Inc., Serial No. 76426050 (January 25, 2005)[VIRUSSCAN], discussed here at the TTABlog.

TTABlog update: On March 17, 2005, the Examining Attorney issued an Office Action accepting O&L's Amendment to Allege Use and withdrawing the refusal to register under Sections 1, 2, and 45 of the Trademark Act. The application has been returned to the Board for resumption of the appeal on the remaining issues.

Further update: On March 31, 2006, the TTAB affirmed the genericness and mere descriptiveness refusals, as well as the rejection of O&L's claim of acquired distinctiveness. See TTABlog entry here.

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

CAFC Affirms TTAB Re "TICK TAPE" 2(e)(1) Refusal

In a non-precedential ruling, the CAFC affirmed the TTAB's decision sustaining a refusal to register the mark TICK TAPE for a "hand tool for removing insects attached to human or animal hosts," on the ground of mere descriptiveness. In re Innovation Development Group, Inc., Appeal No. 04-1058 (March 14, 2005).

Innovation contended that substantial evidence did not support the Board's finding of mere descriptiveness. The PTO Solicitor asserted that, when used in connection with the hand tool described in Innovation's patent application (now issued), the mark TICK TAPE "would immediately indicate that one component of [the] hand tool is an adhesive tape and that the hand tool is particularly useful in removing ticks."

U.S. Patent No. 6,718,686
Reviewing the patent application that Applicant provided to the PTO, the CAFC agreed with the Solicitor:

"an essential feature of Innovation Development's product is a foam structure that folds around an insect, such as a tick, and has adhesive qualities so as to be capable of removing the tick from the host. Innovation Development's product consequently falls squarely within the definition of 'tick tape.'"

The CAFC brushed off Innovation's argument that, because "tape" is defined as a flexible strip, "its tool cannot be tape because its tool must have 'some rigidity.'" The court noted that "[t]he patent application expressly states that the 'adhesive surface . . . folds along a central folding axis.'" [emphasis in original]. That was enough flexibility for the court.


The TTABlog refuses to speculate whether the TICK TAPE tool for taking off ticks will take off, but one wonders whether Applicant Innovation will be ticked off enough to try to take its case to the Top Tribunal.

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

TTAB Sustains 2(e)(1) Opposition to "CERTIFIED SPECIALITY COFFEE"

Two coffee associations ground their way through a Section 2(e)(1) opposition, with Opposer handily winning this battle of the beans. Opposer SCAA successfully blocked registration of the mark CERTIFIED SPECIALITY COFFEE for "high quality and estate coffee" (CERTIFIED and COFFEE disclaimed), on mere descriptiveness grounds. Specialty Coffee Ass'n of America, Inc. v. CSC-Italia Associazione Caffe Speciali Certificati, Opposition No. 91156520 (February 23, 2005) [not citable].
Because Applicant CSC-Italia disclaimed CERTIFIED and COFFEE, the principal disagreement between the parties centered on the word SPECIALITY. SCAA contended that the term "specialty coffee" is a "term of art in the United States . . . as a shorthand expression for high quality coffee beans and the beverage derived therefrom." It argued that there is no difference in meaning between "specialty coffee" and "speciality coffee" -- "specialty" being the preferred spelling in this country, while "speciality" is preferred in Europe. Applicant CSC-Italia contended that the two words are not equivalent.

The Board cited McCarthy on Trademarks and Unfair Competition, Section 11:66, in applying the following four tests for "determining descriptive-suggestive distinction:"

(1) the dictionary definition test -- as a whole, dictionary evidence indicated that "speciality" and "specialty," are "interchangeable," especially when combined with the word "coffee," and that the term "specialty coffee" is "at the very least descriptive for high quality and estate coffee."

(2) the imagination test -- the Board found the applied-for mark to be "a fairly straightforward combination of words that creates no double entendre, no incongruity, no contradictory or odd meanings, no play on words, etc."

(3) competitors' need test -- Opposer CSAA is "the largest trade group in the world representing those in all facets of the high-quality coffee market from growers to office place coffee vendors." As such, it "might be uniquely positioned to 'certify' a variety of items connected with the sale of coffee beans." In fact, CSAA uses other terms that include the word CERTIFIED, and has plans to certify "specialty/speciality coffees." The Board found that Applicant's competitors and others will have a need to use the applied-for term.

(4) competitors' use test -- Although Applicant may be the only entity using the term at issue, that fact does not justify registration.

In sum, "[a]ll the evidence of record demonstrates that 'specialty coffee' is a readily recognized term." The word CERTIFIED means "'to guarantee as meeting a standard,' and is descriptive of the fact that 'applicant's coffee meets a standard.'" Therefore, CERTIFIED SPECIALITY COFFEE "is an apt term to describe applicant's goods," and is merely descriptive under Section 2(e)(1).


One could say that, once Applicant CSC-Italia's arguments percolated through the TTAB's four descriptiveness tests, what was left was a feeble brew that the Board found unpalatable.

Punning aside, the TTABlog notes that the Board seldom applies this four-test approach in mere descriptiveness cases -- or at least it seldom articulates its analysis in this way. Here, the Board adopted Applicant CSC-Italia's approach to the issue, and its approach does provide some helpful structure to the analysis.

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

TTAB Deems "ELLIS BLACK" Confusingly Similar to "PERRY ELLIS"

Pro se Applicant Stacey L. Ellis was called out on strikes in his attempt to register the mark ELLIS BLACK for various articles of clothing [BLACK disclaimed]. In an unconvincing decision, the Board found the mark likely to cause confusion with the mark PERRY ELLIS registered in several forms and combinations for a closetful of clothing items. PEI Licensing, Inc. v. Ellis, Opposition No. 91151870 (February 24, 2005) [not citable].

Perry Ellis (1940-1986)
As to the identified goods, the Board quickly found them to be either legally identical or otherwise closely related. Therefore they must be assumed to travel in the same channels of trade to the same class of customers -- despite Applicant's assertion that he intends to sell his products to "an ethnic consumer base, consisting of people whose body structure he describes as being the same as African-Americans, and that he intends to sell his goods in his own stores."

The Board then turned to a consideration of the marks at issue, noting that the degree of similarity necessary to support a conclusion of likelihood of confusion diminished when the marks would appear on virtually identical goods. It was here that the Board made some questionable calls in favor of Opposer.

The Board found PERRY ELLIS to "the only or dominant feature of opposer's marks, and ELLIS to be the dominant feature of applicant's mark," noting that Applicant disclaimed the word BLACK. Because they include the common element ELLIS, the Board reasoned, the marks in question "share a similarity in appearance and pronunciation." Moreover, the Board made the following dubious finding:

"[The marks] have a similar connotation in that ELLIS is clearly a surname in opposer's marks, and as used in applicant's marks [sic] it will appear to many consumers to be a surname as well. Because the word BLACK in applicant's mark describes the ethnic group to which the clothing is directed, the connotation of the mark is of ELLIS clothing which is specifically designed for a black audience."

Turning Applicant's own words against him, the Board made the following odd observation:

"As Applicant himself stated, his mark has the meaning that 'it's created by Ellis, you know, for the black body structure.' *** Although opposer's marks do not describe its goods as being for a specific ethnic clientele, the marks have a similar connotation, in that they indicate clothing from the ELLIS designer line, and specifically from PERRY ELLIS."

Opposer PEI managed, however, to hurl a few wild pitches before throwing a third strike. PEI claimed to own a "family" of PERRY ELLIS marks, but once again the Board was not buying: "opposer has not submitted any evidence to demonstrate that it has promoted its marks together, such that we can find that it has a family of PERRY ELLIS marks. Cf. J&J Snackfoods Corp. v. McDonald's Corp., 18 USPQ2d 1889 (Fed. Cir. 1991)."

PEI also claimed that the PERRY ELLIS marks are famous, but its proofs fell short: although PEI introduced testimony that the PERRY ELLIS marks have been in use since 1977, and submitted impressive sales and advertising figures, the testimony did not indicate which marks had been in use that long, nor did it specify what portion of sales and advertising involved the particular PERRY ELLIS marks asserted here. Nonetheless, the Board did find PEI's marks to be "strong marks."

In sum, the Board found all of the applicable DuPont factors to be either in favor of PEI or neutral. It concluded that consumers seeing the ELLIS BLACK mark on clothing are likely to believe that the mark is a variation of the PERRY ELLIS mark for goods that are made for African-Americans.

Ellis Burks
This writer finds it difficult to agree with the Board's ruling, perhaps because the ELLIS BLACK mark brings to mind a certain major league baseball player who has twice donned the regalia of the Boston Red Sox (as well as that of the White Sox, Rockies, Indians, and Giants). Maybe it's just the time of year -- in my mind I hear the crack of the bat echoing across the Florida swamps -- but I can't imagine people not perceiving ELLIS BLACK as a person's name, one quite different from PERRY ELLIS.

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

TTAB Rules Gospel Music Association Off-Key In 2(d) Appeal

The Gospel Music Association was silenced in its attempt to register the mark GMA in block-letter and design form (shown below) for entertainment and educational services in the field of gospel music, including conducting seminars and conferences (in class 41).


The Board affirmed a Section 2(d) refusal to register on the ground of likelihood of confusion with the mark GMA registered by the Grocery Manufacturers of America, Inc. for "arranging and conducting educational seminars and conferences" in class 41, and for "association services, namely, promoting the interests of members of the grocery manufacturers industry" in class 42. In re Gospel Music Association, Serial Nos. 76400500 and 76400501 (February 7, 2005) [not citable].

The Board found the marks at issue to be "highly similar in sound, appearance, connotation and commercial impression." The design element in Applicant's second mark was not sufficient to distinguish it from the cited mark: "Consumers are not likely to remember this design, or if they do, they will view it as a variation of the registered mark GMA."

As to the services, the Board observed that the issue is framed not by what the actual services are, but by how they are identified in the registration and the applications at issue. The Board found Applicant's services sufficiently different from Registrant's class 42 associational services in the grocery field that confusion is not likely. But Registrant's class 41 educational services are not limited to the grocery field, and they presented a different kettle of fish:

"These services, as identified, encompass the more specific educational services in the field of gospel music offered by applicant. *** The Board cannot read restrictions into the identification of services based on the cited registrant's name or because of a restricting phrase appearing in other classes of services in the same registration...."

Similarly, because the class 41 services are legally the same, the channels of trade and the classes of purchasers for the services must be considered, at least partly, the same.


Even if the purchasers of the services are sophisticated, the Board observed, they are not immune from confusion when the marks at issue are substantially identical. And Applicant's assertion that there has been no actual confusion over the several decades of concurrent use was unavailing, since that may be because Registrant's educational seminars in fact "dealt with grocery manufacturing issues rather than gospel music."

Finally, the Board noted that the Gospel Music Association could have asked the Grocers for a consent, or it could have sought partial cancellation of the cited registration under Section 18 of the Trademark Act ("i.e., a request that the registration be amended to include appropriate restrictive language regarding the cited registration's educational services"). It did neither.

The TTABlog notes that the Gospel Music Association's attempt to read restrictions into a cited registration is one of the most frequent losing arguments made before the Board. An applicant who recognizes at any early stage the problem posed by a broad blocking registration may save time and expense by extracting a consent from the owner of the registration, particularly if the applicant indicates that the other choice for the registrant is a partial cancellation proceeding.

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

TTAB Affirms Genericness Refusal of "BLINDSANDDRAPERY.COM" In Citable Decision

The TTAB's first citable decision of 2005 is not exactly earth-shaking, but it does provide the Board's view of the CAFC's recent Oppedahl decision regarding the source-identifying significance of TLDs. The Board affirmed, on the ground of genericness, a refusal to register BLINDSANDDRAPERY.COM on the Supplemental Register for various services relating to the distribution and sale of blinds and drapery, including retail sales via the Internet. In re Eddie Z's Blinds and Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005).


Dictionary definitions of "blinds," "drapery," and ".com," NEXIS excerpts, and various Internet website pages demonstrated both that "blinds and drapery" is a designation used by many businesses for a class of products, and that businesses are referred to by that designation: i.e., as "blinds and drapery" businesses.

Relying on the CAFC's wacky compound word/phrase dichotomy, Applicant Eddie Z's argued that its "mark" should be treated as a phrase, just like the mark 1-888-M-A-T-R-E-S-S, found registrable in In re Dial-A-Mattress Operating Corp., 57 USPQ2d 1807 (Fed. Cir. 2001). Eddie Z's contended that the Examining Attorney's evidence regarding the components "blinds and drapery" and ".com" (as opposed to evidence showing use of the phrase as a whole) must be deemed insufficient to prove genericness. See In re American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999).

The Board, however, pointed to its decisions in In re CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB 2002) [BONDS.COM] and In re Martin Container, Inc., 65 USPQ2d 1058 (TTAB 2002) [CONTAINER.COM], as the more pertinent precedents:

"Generic terms coupled with a TLD . . . are considered compound words. See CyberFinancial and Martin Container, supra. In this case, therefore, we have a compound formed by joining the generic term 'blinds and drapery' and the generic TLD '.com.' Thus, under Gould, the examining attorney may carry her burden of proving, by clear evidence, the genericness of BLINDSANDDRAPERY.COM by introducing, as she has, evidence of the genericness of 'blinds and drapery' and '.com.'"

Furthermore, the mattress mark is a mnemonic representing a single telephone number, which can be used only by a single entity. In contrast, "the precise generic term and TLD combination employed by applicant can be incorporated into other domain names." Another "blinds and drapery" business should not be precluded from using that term as part of a different domain name.


Finally, the Board noted Eddie Z's reliance on the CAFC's recent decision in In re Oppedahl & Larson LLP, 71 USPQ2d 1370 (Fed. Cir. 2004) [PATENTS.COM merely descriptive], in which the CAFC ruled that, although the addition of a TLD to an otherwise unregistrable mark "will typically not add any source-identifying significance," this is not a "bright-line, per se rule;" "exceptional circumstances might yield a different result." The Board observed that a TLD may have some source-identifying significance when "the coupling of an otherwise unregistrable term and a TLD create a whole greater than the sum of its parts." The case at hand, the Board opined, is not an "exceptional" one.

Obviously, the CAFC's Oppedahl decision provides little comfort to Applicants seeking to register marks incorporating ".com" or another TLD. One could say that the Eddie Z's case makes clear that Oppedahl is thus far little more than window dressing on the jurisprudence of the TTAB.

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

TTAB Dismisses "DOUBLE CHEW" Opposition For Failure To Prove Standing

Proving standing in a TTAB opposition is about as easy as stepping over a sidewalk crack, but Petra Pet failed to clear that hurdle in Petra Pet, Inc. v. Aspen Pet Products, Inc., Opposition No. 91154069 (February 17, 2005) [not citable]. Petra Pet opposed, on the ground of mere descriptiveness, the application of Aspen Pet Products, Inc., to register the mark DOUBLE CHEW for "rawhide chews for pets." (CHEW disclaimed).

Aspen 11" Double Chew
In its Notice of Opposition, Petra Pet claimed ownership of a pending application for the mark 2 CHEWS TO CHOOSE for "edible dog treats," and alleged that Aspen had threatened a lawsuit if Petra used the mark. Because Aspen would, in such a lawsuit, rely on the registration for DOUBLE CHEW, Petra claimed it would be damaged by registration.

The Board noted that "[t]he amount of evidence required to demonstrate that an opposer has standing is not onerous." A Section 2(e)(1) opposer must show merely that "it is a competitor or, at the very least, 'one who has a sufficient interest in using the descriptive term.'" (citing McCarthy on Trademarks and Unfair Competition, Sec. 20:11 (4th ed. 2004)). Opposer Petra established neither.


Petra's evidence consisted of documents concerning Aspen's design patent and copies of Aspen's advertising. Aspen, in its answer to the Notice of Opposition, did not admit that it threatened Petra, but merely said that "the correspondence speaks for itself." Petra failed to introduce the correspondence into the record.

Moreover, Petra did not allege that the opposed application had been cited as a bar to its pending application. "Obviously, the mere ownership of a pending application does not in itself provide standing to oppose other applications."

Consequently, because Petra proved neither that it is a competitor of Aspen nor "even that it has a sufficient interest in using the term" at issue, the Board dismissed the opposition for lack of standing.

The TTABlog has only the briefest comment: I'll be doggone!

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

TTAB Finds Fraud, Summarily Cancels "IT'S A GIRL THING" Registration

The folks at Happy Rompers were not happy campers when the Board granted a summary judgment motion cancelling its registration for the mark IT'S A GIRL THING on the ground of fraud. J.E.M. Int'l, Inc. v. Happy Rompers Creation Corp., 74 USPQ2d 1526 (TTAB 2005) [not citable].

The registration listed some 150 clothing items -- from aprons and ascots to wrist bands -- and in its Statement of Use (filed electronically), Happy Rompers claimed use of its mark on all the goods listed in its intent-to-use application. However, after the petition for cancellation was filed and discovery commenced, Happy Rompers changed its tune: it moved to amend the registration to delete more than 100 items. In light of the Board's ruling, however, that motion became moot.

ascot
J.E.M. International moved for summary judgment on the ground of fraud, relying on Happy Rompers' discovery responses, which showed that Rompers was not using, and had never used, its mark in connection with the subsequently-disavowed clothing items. J.E.M. urged that, under TTAB precedent, the entire registration should be declared void.

Happy Rompers, not surprisingly, contended that its submission of a statement of use without a request to divide was an "administrative error and oversight resulting from a lack of knowledge as to Trademark Office procedures; and that respondent did not have advise [sic] of counsel to file a request to divide." Its president declared that Rompers did not intend to defraud the PTO, and therefore Rompers argued that the summary judgment motion should be denied.

The Board was not impressed with Rompers' argument or its actions. While noting that "[o]rdinarily, cases involving questions of intent are unsuited to resolution by summary judgment," the Board agreed with J.E.M. that Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003) is applicable here:

"A trademark applicant commits fraud in procuring a registration when it makes material representations of fact in its declaration which it knows or should know to be false or misleading. Id. at 1209. *** As in Medinol, respondent herein denies that its intent in submitting its statement of use was fraudulent. *** [T]aking into consideration the circumstances of a case, the appropriate inquiry is not into the registrant's subjective intent, but rather into the objective manifestations of that intent." Id.

The Board pointed out that the first nine items on the list of goods were among those 100 for which Rompers had not used its mark. "In their position at the beginning of the list, such items would be the first to catch a reader's eye and bring into question the breadth of actual use being made by respondent at the time of filing."

Even accepting respondent's statement "that it did not intend to make a misrepresentation and that its mistake was inadvertent," the Board noted that respondent signed its Statement of Use "[knowing] that such willful false statements may jeopardize the validity of . . . any resulting registration.... Statements made with such degree of solemnity clearly are -- or should be -- investigated thoroughly prior to signature and submission to the PTO."

The Board concluded that "respondent knew or should have known that its Statement of Use was materially incorrect."

"Respondent's knowledge that its mark was not in use on about 100 of the approximately 150 identified items -- or 'its reckless disregard for the truth -- is all that is required to establish intent to commit fraud in the procurement of a registration.' See Medinol v. Neuro Vasx, 67 USPQ2d at 1210."

Lance Armstrong wristband
This writer finds the Board's explanation of its decision to be a bit muddled. If it accepted Rompers' assertion that Rompers did not intend to commit fraud, how can the Board then say that intent was established by Rompers' actions? Wouldn't it have been better to rule that, even accepting Rompers' assertion, its reckless disregard for the truth constituted fraud. Why rely on "intent" while at the same time accepting Rompers' claim of no intent to commit fraud?

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

Gibson Guitar Axed In TTAB "EXP" 2(d) Cancellations

J. D'Addario & Co. need no longer fret over the fate of its trademark registrations for the marks EXP and EXP COATED for "strings for musical instruments." The Board gave the axe to Gibson Guitar's petitions to cancel those registrations in Gibson Guitar Corp. v. J. D'Addario & Co., Cancellations Nos. 92041175 and 92041688 (February 17, 2005) [not citable]. As petitioner, Gibson had the burden to establish its case for cancellation by a preponderance of the evidence, but it failed to carry that weight.


For its first use date, D'Addario relied on the filing date of the applications that issued as the subject registrations: December 8, 2000. Gibson claimed common law rights in EXP for guitars dating from at least September 15, 1993, but its proofs were inadequate to support the claim.

Reviewing the record evidence in detail, the Board noted that all of Gibson's uses involved the term EXP accompanied by other letters and/or numbers, primarily as part of a model abbreviation for its EXPLORER brand guitars. The Board was therefore "hard pressed" to find technical trademark use of EXP: "There is no evidence that petitioner has used the term EXP by itself in any context prior to respondent's priority date."

"A key question, therefore, is whether petitioner has demonstrated that its use of EXP is use analogous to trademark use or that others use the term EXP to refer to petitioner's guitars."

In order to rely upon use "analogous to trademark use," Gibson had to show that its use of EXP was "a public use . . . calculated to attract the attention of the viewer." Gibson provided no evidence of use of EXP in advertising, nor did it show that the media refers to its guitars as EXP. But it did submit price lists and invoices.

However, Gibson's price lists, even if shown to customers, "would not be calculated to reach a sizable segment of the public." As to its invoices, which were addressed to businesses, "it is not clear that the consumer, as opposed to the dealer, would actually see the invoice." Nor was it apparent to the Board that "even dealers would ordinarily surgically remove the 'EXP' from such Product No. entries as 'EXP2EBGH1' and 'EXP2KOGH1.'"

Gibson EXPLORER
Looking at the evidence as a whole, the Board concluded that Gibson "at best" demonstrated:

"that it used the term EXP along with other letters and/or numbers on some price lists and invoices prior to respondent's priority date. Some of these documents may have been seen by prospective purchasers. [That] is simply not of the caliber of the evidence that shows that the term EXP's use was analogous to trademark use."

Perhaps the lesson here is this: before you pick a fight based on common law trademark rights, make sure your proofs are well tuned, or you may wind up singing the blues.

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

TTAB Finds "TWATTY GIRL" Not Immoral or Scandalous

The TTAB reversed a Section 2(a) refusal to register the mark TWATTY GIRL, finding it not immoral or scandalous for "cartoon strips, cartoon prints and newspaper cartoons." In re Watkins, Serial No. 76138675 (February 8, 2005) [not citable].


The Examining Attorney, relying on dictionary definitions of "twat" and of the suffix "-y" and on GOOGLE search results, maintained that TWATTY GIRL is "offensive to the conscience of a substantial composite of the general public," because "twat" is a vulgar term for a woman's vagina or genital area. The GIRL portion of the mark merely "adds to the immoral or scandalous connotation of the mark," the Examining Attorney argued.

Applicant Ava Watkins introduced an online dictionary (indicating that "twatty" means "daft"), along with the results of an Internet GOOGLE search and various website printouts showing that "twatty" has a different meaning than "twat." Thus, Watkins argued, the PTO "cannot fairly rely on dictionary definitions of a different word, 'twat,' in refusing registration."

Applicant also submitted several alternative, non-vulgar uses of TWAT -- as acronyms for "The War Against Terror," "The War Against Tobacco," and "Texas Women Anglers Tournament" -- but that evidence had little effect (other than to provide the TTABlog with the opportunity to include illustrations with this otherwise problematical posting).


The Board noted the Examining Attorney's argument that, generally, the addition of "y" to a word with a strong connotation does not alter its meaning, but pointed out that "the viability of the argument is greatly diminished when the new adjectival term has a non-vulgar meaning as in the present case."

Recognizing that any doubt as to the immoral or scandalous nature of a mark must be resolved in favor of the Applicant, the Board reversed the refusal to register.

One side note of interest: part of Applicant's proof of non-vulgar use of TWATTY came from British websites. Nonetheless, "given that the Internet websites originating in the United Kingdom are easily accessible in this country," the Board gave that evidence "some probative weight." That particular ruling continues a gradually growing trend toward greater acceptance of Internet evidence from foreign websites in view of its ready accessibility.

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

TTAB Affirms 2(e)(1) Refusal Of "WATER WEIGHTS," But Finds Secondary Meaning

The TTAB affirmed a Section 2(e)(1) refusal to register the mark WATER WEIGHTS, finding it to be merely descriptive of Applicant's load testing services and systems. In re Imes Group Ltd., Serial No. 75622598 (January 25, 2005) [not citable]. However, the Board reversed the Examining Attorney's finding that Applicant's evidence was insufficient to establish acquired distinctiveness.


The Board noted that Applicant Imes Group Limited describes its product as consisting of "a strong bag that is filled with water and used, individually or in groups of bags, as weight to test the load of various types of heavy equipment." Moreover, the Board noted that the "main feature of applicant's services is the use of these water bags to conduct load testing for customers." Third-party websites showed descriptive use of the term "water-weight." Thus the Board found that WATER WEIGHTS "immediately describes, without conjecture or speculation, a significant feature or function of applicant's goods and services."

As to secondary meaning, the Board observed that in Section 2(f), Congress left it to the PTO and the courts to decide upon "the exact degree of proof necessary to qualify a mark for registration." Here, Applicant's evidence consisted of two declarations and numerous letters from customers. The declarations indicated that the mark has been in substantially exclusive use since 1986, and that the goods and services "are expensive and are advertised to, and bought by, a very specific group of purchasers who are likely to be exercising great care." Applicant spent more than $400,000 in the USA in advertising and marketing during the period 1998-2002, with sales of $8.5 M. And a "significant number of non-form letters from its customers attest[ed] to their recognition of WATER WEIGHTS as a trademark of applicant." The Board found this evidence sufficient to establish secondary meaning.


One disconcerting aspect of the Board's decision is its statements that the Examining Attorney "refused registration under Section 2(f)," and it ruling reversing the "refusal under Section 2(f)." Section 2(f) does not provide a ground for refusal to register. It provides a means of overcoming refusals to register founded upon other subsections of Section 2. Thus there is no such thing as a "refusal to register under Section 2(f)." See In re Capital Promotion Counselors, Inc., 219 USPQ 916, 917 (TTAB 1983) at n. 2. The proper refusal should be that Applicant’s evidence is insufficient to demonstrate that the mark has acquired distinctiveness, and therefore registration is refused under Section 2(e)(1), 2(e)(2), or Section 2(e)(4), as applicable.

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

TTAB Reverses 2(d) Refusal of "McHEALTH CLINIC & Design"

Dr. Baharat A. Jamil and his family overcame the PTO's "family of marks" argument in persuading the TTAB to overturn a Section 2(d) refusal to register the mark McHEALTH CLINIC & Design (CLINIC disclaimed) for "healthcare services, namely, preventative, alternative, and conventional healthcare." In re Jamil, Serial No. 76032587 (February 17, 2005) [not citable].


The Examining Attorney relied on 5 registrations owned by McDonald's Corporation for marks containing the words RONALD McDONALD HOUSE, for providing temporary lodging and hospitality rooms in hospitals for families with hospitalized children (HOUSE disclaimed).


The Board found the services to be related for Section 2(d) purposes: the services "on their face appear to be complementary," since "families of children in need of clinical or hospital care not infrequently require" hospitality rooms and temporary housing.

As to the marks, the Examining Attorney contended that, because the McDonald's Corporation "has established a famous family of marks containing the prefix 'MC,'" the cited registrations should be accorded a broad scope of protection. As support for her assertion, the Examining Attorney cited two prior Board decisions that "recognized the fame of these ['MC'] marks as well as the establishment of a family of marks by McDonald's Corporation."

The Board rightly found several flaws in the PTO's argument: not only were the two cited cases 9 and 14 years old, but more importantly, the Applicant here was not a party to those proceedings. Thus the Board's factual findings in those cases and its conclusions of law based thereon "do not constitute evidence which is binding on either applicant or the Board in this proceeding." [emphasis in original].

The Board pointed out that the record contained "no proof that the cited marks are part of a famous family of marks," and it then turned to a Section 2(d) analysis based upon "each of the cited marks individually." Under that approach, the Board concluded that the marks at issue are not confusingly similar.

Ronald McDonald House -- Knoxville, Tennessee
The Board, however, added a note of caution that the victorious Jamils should heed: "a different result might pertain in a proceeding (such as an opposition) in which evidence that registrant possesses a family of 'MC'-prefixed marks is made of record." Perhaps the Jamils might take a gander at last year's TTAB decision in McDonald's Corp. v. 2Bell B.V., Opposition No. 91118911 (April 22, 2004) [not citable], in which McDonald's successfully opposed registration of the mark McDATE for dating services, based in large part on staggering evidence that the "MC" family of marks is strong and famous and entitled to a broad scope of protection under Section 2(d).

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