TTABlogger Offers "The Top Ten TTAB Decisions of 2004"

As promised, this writer's annual list of the ten most important and/or interesting TTAB decisions of the last calendar year is now available here.

TTABlogger on the road
The Board was seemingly on cruise control during 2004. Its 13 citable decisions included "no neck-bending accelerations into new legal territory, no significant swerves from the straight-and-narrow, and certainly no U-turns."

Perhaps the year 2005 will bring some exciting TTAB twists and turns. Perhaps not.

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

TTAB Sustains 2(d) Opposition, Finding Wine and Soft Drinks Related

A thorough du Pont analysis led the Board to sustain a Section 2(d) opposition to the application of Floridian Stephen M. Schwartz to register the mark shown below for "sparkling wine." Opposer South Beach Beverage Co. relied on its registration and use of the mark SOBE for soft drinks, iced teas, fruit drinks, and other nonalcoholic beverages. South Beach Beverage Co. v. Schwartz, Opposition No. 91121457 (May 9, 2005) [not citable].


As to the marks, the Board not surprisingly found "SoBé" to be the dominant portion of Schwartz's mark. Moreover, because “there is no correct pronunciation of a trademark, someone who has heard applicant’s mark and seen opposer's SOBE mark may well pronounce the words the same.” With regard to connotation, people will either understand the marks to refer to the South Beach area of Miami, Florida, or if not aware of that meaning, will see both as the same arbitrary term.

Opposer South Beach Beverage's sales of $247.5 million in 2001 and $225 million in 2003, its advertising expenditures of $17 million and $19 million in those two years, extensive media coverage, a website with more than 10 million hits per month (exceeding even the TTABlog!), and the receipt of several packaging awards for its goods, convinced the Board that SOBE is a "well known and strong mark entitled to a broad scope of protection." It is not a "famous" mark, however. As the Board observed,"[f]ame is relative … opposer has not demonstrated that its SOBE mark has attained the level of 'fame' within the meaning of the du Pont factors, as such marks as COCA-COLA or FRITO-LAY."

Turning to the goods, Opposer submitted evidence showing that "several companies [e.g., Anheuser-Busch, Seagram's, and Hansen's] manufacture and sell both alcoholic and non-alcoholic beverages, sometimes under the same or similar marks." Also, both alcoholic and non-alcoholic beverages are advertised in the same magazines (e.g., "Rolling Stone" and "Beverage Aisle"). Prior Board decisions have also found these good to be related (in the particular factual contexts there involved). Therefore, the Board found the beverages of the parties here to be related for Section 2(d) purposes.


The Board refused to buy Schwartz's argument that the purchasers of his wine will exercise particular care, and would be "more likely to ask for recommendations" before purchasing wine.

"These are inexpensive goods that may be purchased on impulse without the purchaser exercising any particular care in making the purchasing decision."

Finally, the Board noted that Opposer has registered its mark for a number of goods, and distributes a number of promotional items, including hats, golf balls, mouse pads, and guitars. It also licenses the SOBE mark for use on gum and chocolate bars.

"Purchasers aware of the variety of Opposer's goods sold under the mark SOBE may well assume that opposer is now offering sparkling wine under the mark SOBE."

TTABlog comment: SOBE it.

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

TTAB Affirms Refusal Of Bottle Cap Trade Dress For Lack Of Distinctiveness

Like Icarus, Sunrider International crashed and burned in its attempt to register the packaging trade dress of its bottle cap as a trademark for nutritional supplements and herbal food beverages. The Board found that the purported trademark was not inherently distinctive and lacked acquired distinctiveness. In re The Sunrider Corp., Serial No. 74716136 (May 2, 2005) [not citable].


Sunrider's trade dress comprised the "connected top and bottom levels" of its cap. It disclaimed any rights in the bottle itself, or in the middle stage of the cap.

Inherent Distinctiveness: The Board distinguished this case from In re Creative Beauty Innovations Inc., 56 USPQ2d 1203 (TTAB 2000), in which the unique, unusual, and award-winning container configuration shown below for bath products and cosmetics, was found to be inherently distinctive.

Here, Sunrider's cap is comprised of a plain circular disk and an equally plain circular ring -- common geometric shapes that, according to Creative Beauty, are considered not inherently distinctive. Moreover, the record evidence indicated that two other makers of dietary supplements utilize very similar three-level caps. Thus it is not likely that consumers would perceive Sunrider's cap as a distinguishing feature.


Acquired Distinctiveness: In view of the nature of the claimed bottle cap design -- which consisted of "common geometric shapes ... particularly suited to covering the bottle (via the circular disk) and ensuring that the covering is not detached or separated from the bottle (via connection to the retention ring)" -- and in view of the diminutive size of the bottle cap (the entire cap is about one-half inch high and three quarters of an inch in diameter), the Board ruled that the evidence required to prove secondary meaning "ought to be rather significant."

Sunrider submitted a declaration attesting to five years of substantially exclusive and continuous use, and to growth in sales from 130,000 units in 1993 to 1,350,000 units in 1996. Three other declarations discussed the "perceived distinctiveness of applicant's container."

The Board observed that, depending on the nature of the mark, a five-year declaration may not be sufficient to establish a prima facie case of acquired distinctiveness. Moreover, the three other declarations did not focus on the top and bottom sections of the bottle cap, but rather on the middle section and on the bottle as a whole. Sunrider conceded that it does not advertise its products and its brochures show the products only in packaging. And as to the sales figures, "healthy sales alone do not prove purchaser recognition of a design proposed for registration." Distinguishing these facts from those in cases where the Board has found acquired distinctiveness, the Board ruled that Sunrider had failed to meet its Section 2(f) burden.

TTABlog comment: For a discussion of secondary meaning in the trade dress context, see my article entitled "Trade Dress and the TTAB: If Functionality Don't Get You, Nondistinctiveness Will."

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

Heard Through The TTAB Grapevine: "WESTSIDE RED" Confusingly Similar to "WESTSIDE BLUE" For Wine

Perhaps "sour grapes" explains why Applicant Treana Winery bothered to appeal the PTO's refusal to register WESTSIDE RED for wine (RED disclaimed) on the ground of confusing similarity to the registered mark WESTSIDE BLUE for wine. The Board readily affirmed the Section 2(d) refusal in In re Treana Winery LLC, Serial No. 76532863 (May 12, 2005) [not citable].


Although the identified goods are identical, Treana asserted (without evidentiary support) that the parties' wines are different:

"applicant's mark is used on a red wine which is produced in the Napa Valley, California. The cited registrant has a single function for its wine products -- special low-alcohol served in a blue bottle for the Jewish holidays."

The Board noted that even if this were properly proven, it would be irrelevant here, since the issue of likelihood of confusion must be determined on the basis of the goods identified in the involved application and the cited registration, regardless of what the evidence actually shows the goods to be. See Canadian Imperial Bank v. Wells Fargo Bank, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).


As to the marks, the Board repeated its often-applied rule that when the goods at issue are legally identical, the degree of similarity necessary to support a Section 2(d) refusal declines. Here, the disclaimed word RED is acknowledged by Treana to be descriptive. And Treana pointed out that Registrant Royal Wine Corp.'s wine comes in a blue bottle, and so the word BLUE would be viewed as merely indicating the color of the bottle. Thus, the Board noted, "[n]ot only is WESTSIDE the only arbitrary portion of both marks, it is 'the first word' in both marks, a factor which makes 'the marks similar.'" (citing Palm Bay Imports, Inc. v. Veuve Cliquot, 73 USPQ2d 1689, 1690 (Fed. Cir. 2005)).

Moreover, the Board pointed out that, since each mark is depicted in block letters, the Board is "mandated to 'visualize what other forms the mark[s] might appear in.'" Phillips Petroleum Co. v. C.J. Webb Inc., 170 USPQ 35, 36 (CCPA 1971).

"One reasonable manner of presentation for both marks would be to depict the arbitrary portion WESTSIDE in large lettering on one line, and then depict the subsidiary elements (RED or BLUE) in decidedly smaller lettering on a second line. When so depicted, the two trademarks would be extremely similar, and their use on identical goods would result in not a mere likelihood of confusion, but rather in an extremely high probability of confusion."

TTABlog comment: Dear reader, I ask again, would you have pursued this appeal? I don't think I would have.

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

"LASER TONING" Generic For Skin Rejuvenation Services, Rules TTAB

New York City's Doctor Roy G. Geronemus failed to remove an unsightly PTO genericness refusal of the term LASER TONING for "medical services, namely, skin rejuvenation." In re Geronemus, Serial No. 76238774 (May 12, 2005) [not citable]. The Board found that "'laser toning' is understood by the relevant public as the generic name for a skin procedure whereby a laser is used to promote better tone or glow to the skin."

Dr. Roy G. Geronemus
The Examining Attorney relied on printouts from Applicant's website and from third-party websites, on articles from general circulation publications, and on NEXIS excerpts, to demonstrate generic use of the term "laser toning."

The Doctor noted that all of the PTO's evidence is dated after his first use date in 1999, and he contended that "not enough time has elapsed for the term to be considered generic." He likened this case to In re Merrill, Lynch, Pierce, Fenner & Smith, Inc., 4 USPQ2d 1141, 1143 (Fed. Cir. 1987), wherein the coined term CASH MANAGEMENT ACCOUNT was found registrable despite some subsequent generic usage.

The Board, however, distinguished Merrill Lynch, where the CAFC noted that the evidence "showed recognition in a substantial number of publications that the source of the CASH MANAGEMENT ACCOUNT was [Merrill Lynch]." Here, there are no "mixed uses" (i.e., some generic, some source-identifying) of LASER TONING. All uses are generic uses.


The Board observed that the issue of genericness must be determined "on the basis of the factual situation as of the time when registration is sought."

"Even assuming arguendo that the term 'laser toning' was initially used by applicant as a service mark, the term is clearly now used by the dermatology industry as the generic name of the involved service, and the relevant public so understands the term."

TTABlog note: for further discussion of Merrill Lynch, see the recent TEACHERS' INSURANCE PLAN decision, blogged here.

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

TTAB Finds "CONTACT YOGA" Merely Descriptive Of Yoga Publications

Applicant Lynda Guber was no doubt bent out of shape by the Board's decision affirming a refusal to register the mark CONTACT YOGA for publications on the subject of meditation and exercise (YOGA disclaimed). In re Guber, Serial No. 76469243 (April 22, 2005) [not citable].

Lynda Guber
The PTO Examining Attorney relied on Internet articles and advertisements wherein "contact yoga" is used to describe "a relatively new form of yoga where one practices with a partner." Applicant Guber argued, without evidentiary support, that she created the mark CONTACT YOGA and that she has made efforts to stop others from using her mark.


The Board, however, noted that, even if Guber were the creator of the mark, it is still merely descriptive of her publications. Moreover, if she indeed has made efforts to police the mark, those efforts have apparently been unsuccessful, given the PTO's Internet evidence of descriptive use.

TTABlog comment: Dear reader, ask yourself whether you would have filed this appeal? I don't think I would have.

TTABlog note: After reading this decision, I asked a friend if she would like to join me in contact yoga. She slapped me in the face. I suppose that might be considered akin to a refusal to register.

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

TTABlog Flotsam and Jetsam: Issue No. 3

In the last few weeks, the output of the TTAB has slowed to a trickle, so this is an opportune time to empty out my "things-to-blog" folder once again.

Newly-named TTAB judge: You may have noticed the appearance of a new name on a few recent decisions (for example, here): Judge Grendel. This judge is newly-named, but not a new judge. "Grendel" is the new surname of the Administrative Trademark Judge formerly known as Charles Bottorff.

click on photo for larger picture
Upcoming TMR TTAB article: You may expect a TTAB-related article in the July-August 2005 issue of The Trademark Reporter. The July-August 2004 issue included an article by John M. Murphy entitled "Playing the Numbers: A Quantitative Look At Section 2(d) Cases Before The Trademark Trial and Appeal Board." (discussed here at the TTABlog). The new article (whose author I shan't name) will take a "qualitative" look at TTAB practice and procedure and will reportedly offer suggestions for reducing TTAB delay and improving the system. In the TTABlog posting linked immediately above, I offered a few of my own ideas in that regard.


The Top Ten TTAB Decisions of 2004: My "Top Ten" article for last year appears in the May 9th issue of the National Law Journal, under the title "Top Ten TTAB decisions bear witness to quiet 2004." The subtitle is even more scintillating: "Trademark Trial and Appeal Board issued no earthshaking rulings." The same article, under its original, eye-catching title, will appear in the June issue of Allen's Trademark Digest, and a link to the article will soon appear at the TTABlog.


ADR and the TTAB: For the last seven years of so, the TTAB has offered ADR to TTAB litigants, but in not one single case have the parties taken up that offer. I wonder why not?


TTABlog souvenir key tag: Shown above, the TTABlog key tag made quite a splash at INTA San Diego. For those of you who were lucky enough to latch onto one of these collector's items, please remember they are "floating" key tags, not "squeezable, stress-reducing" key tags. Too much squeezing may destroy the printed indicia, and then where will you be?

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

TTAB Says "Forget It" to "TAG-IT" For Mutation Detection Kits

The Board affirmed a Section 2(d) refusal to register the mark TAG-IT for mutation detection kits used in the determination of particular genotypes in samples of nucleic acid, finding the mark likely to cause confusion with the registered mark TAGIT for N-hydroxysuccinimidyl 3-(4-hydroxyphenyl) propionate (a protein-modifying reagent also know as the "Bolton-Hunter Reagent"). In re TM Bioscience Corp., Serial No. 76485778 (April 26, 2005 [not citable].


Although the record failed to reveal a single vendor marketing both products, and although there was no evidence that both products would be used simultaneously in a given project, the Board found the goods sufficiently related for Section 2(d) purposes. Noting that the test is not whether customers “would confuse a labeling product with a mutation detection kit,” the Board observed:

"By analogy, perhaps these complex biotech products are different from each other in much the same way that a hammer is different from a pair of wire cutters. Both are tools, but inasmuch as one is used in construction and the other in electrical wiring, neither one would be effective in accomplishing the other's task. Nonetheless, if identical marks were to be used on both of these hand tools, confusion as to source would be likely."

The Board was "convinced that individuals ordering materials for a lab would come across both products, and could mistakenly assume a common source."

TM Bioscience's "sophisticated customer" argument went nowhere, the Board offering its oft-repeated explanation that "even sophisticated customers may be confused as to source by substantially identical marks." Moreover,

"[t]he technical staff of a laboratory, including those responsible for ordering replacement goods, may not exercise such a high degree of deliberation in their product selections, and may not be as knowledgeable as the lead researchers, and this could well lead to misplaced ordering."

And although the term TAGIT may be suggestive of the goods of both parties, "even suggestive marks are entitled to protection against registration of a substantially similar mark used in connection with closely related goods."

"In summary, we find that the marks are substantially identical as to overall commercial impression, that TAGIT has not been shown to be a weak mark in the field of biotechnology products, that the goods are related, and could well move through the same channels of trade to the same classes of consumers."

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

TTAB Finds "ACCUMULATOR BONUS MAXXX" Not Confusingly Similar To "BONUS MAX"

Reversing a Section 2(d) refusal to register, the Board found the mark ACCUMULATOR BONUS MAXXX for insurance services, including consultation and brokerage in the field of annuities ("BONUS" disclaimed), not likely to cause confusion with the registered mark BONUS MAX for annuity underwriting services. In re Allianz Life Insurance Co. of North America, Serial No. 75627987 (April 20, 2005) [not citable].


Applicant Allianz did not bother to argue that the involved services are unrelated, and so the Board focused on the similarities and dissimilarities in the respective marks. It found that the ACCUMULATOR portion of Applicant's mark "contributes to a composite that is pronounced very differently from registrant's mark."

As to the appearance of the marks, although the registered mark "can be 'seen' within applicant’s mark, the marks are not visually similar."

As to connotation, ACCUMULATOR is suggestive in Applicant’s mark (the services are backed by an "accumulation of diverse assets"), but BONUS is descriptive (bonus interest is available), and MAXXX is laudatory.

"Overall, the connotation of applicant's mark is that of [a] flexible insurance or annuity product which gathers together or accumulates various features desirable by the consumer, with a bonus interest feature, and is a great or maximum value."

The Board found that the registered mark BONUS MAX "does not have the connotation of a product or service that gathers or accumulates various desirable features (or any of the other possible connotations that might be ascribed to ACCUMULATOR)," and this subtle difference in connotation, coupled with the "clear differences" in appearance and sound, led the Board to conclude that confusion is not likely.

TTTBlog comment: Do you think it's easy finding a picture of "insurance services?"

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

TTABlog Posts Pair Of Photos From "Meet Two Bloggers" INTA Event

The "Meet Two Bloggers" event at Henry's Pub was a smashing success. Except for a brief but harmless run-in with a group of over-the-hill rugby players, the attendees enjoyed spirited conversation in an atmosphere of true camaraderie.

Welch, Schwimmer preside over TTAB happy-hour Table Topic meetingClick on photo from larger picture

Welch confers with TTAB Judge Beth Chapman [not citable]click on photo for larger picture
Plans are already being made for the second annual "Meet Two Bloggers" gathering in Toronto in 2006. Details to follow.
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"NETENTERPRISE" Generic For An Internet Business, Says TTAB

Honolulu-based NetEnterprise, Inc. was left stranded on the TTABeach by the Board's affirmance of a refusal to register NETENTERPRISE on the Supplemental Register: the Board found the term generic for Internet businesses, including Applicant's services of providing Internet access for businesses. In re NetEnterprise, Inc., Serial No. 76219917 (April 20, 2005) [not citable].


The Examining Attorney relied on dictionary definitions and Internet and Nexis excerpts in contending that registration of the term "would prevent applicant's competitors from adequately describing their own such services." (TTABlog comment: hinder maybe, but not prevent).

Applicant conceded that "net enterprise" is generic for a "generic" business providing services over the Internet. However, it asserted that the 80-90% of the Google hits for the single compound word "netenterprise" referred to Applicant's company, and further that its services are specifically those of a "hosting data center," for which "netenterprise" is not generic.

Internet access
The Board found the genus of the services at issue to be "providing Internet access for businesses," and concluded that "net enterprise" is generic for a business operation conducted over the Internet, of which Applicant's business is an example. See In re Central Sprinkler, 49 USPQ2d 1194 (TTAB 1998)[ATTIC generic for automatic sprinklers for fire protection.]

As to the Google hits for "netenterprise," the Board found it "perhaps not surprising that when one searches 'netenterprise' as a single run-together term on Google, many of the hits will be to applicant's trade name." Moreover, a misspelling of a generic term (here, elimination of the space) "does not change the generic significance to the purchaser."

TTABlog comment: For a case in which an Applicant smartly overcame a genericness refusal, see the VIRUSSCAN decision, blogged here.

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

Cloudy, Dismal Monday Sends TTABlog Indoors At San Diego INTA

Spirits remain high as grey, dour Monday weather strikes San Diego.

John Welch Welch(Inside Joke)
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Dissimilarity Of Goods Dispositive: TTAB Grants Summary Judgment In "SURE-LOK" 2(d) Opposition

Occasionally a single du Pont factor is dispositive in the Board's Section 2(d) likelihood-of-confusion analysis. That was indeed the case in Hancor, Inc. v. Mollewood Export, Inc., Opposition No. 91156211 (March 31, 2005) [not citable].


Mollewood Export, Inc. of Wixom, Michigan, sought to register the mark SURE-LOK for "collapsible containers made from processed wood materials utilizing a metal clip for use in the automobile industry." Opposer Hancor, Inc. of Findlay, Ohio, relied on its registration and use of the identical mark SURE-LOK for "plastic corrugated pipe and tubing with smooth interior using an integral bell coupler for drainage systems, storm sewers, and sanitary sewers."

Mollewood filed a motion for summary judgment, asserting that the parties' goods are "so vastly different that as a matter of law, on this basis alone, there cannot be a likelihood of confusion." Hancor contended that the goods are similar "in that they utilize a unique releasable structure to join two pieces of the product." As to channels of trade, Hancor asserted that one of its competitors could use Mollewood's shipping containers to ship plastic pipe and accessories." In addition, Hancor urged that its mark is famous as a result of $100M in sales in the past year and $1M in advertising expenditures on average.

Hancor watched its opposition go right down the drain, as the Board ruled that the parties goods are not related: Mollewood's are used with sewers, Hancor's in the automotive parts industry. As to the argument that both products use a "unique locking feature," the Board noted that "[t]his could be said for a glass jar and a screen door."

glass door, screen ajar
The Board was not impressed with Hancor's argument that the channels of trade could overlap: "[we] cannot imagine ... that the building and construction markets overlap with packing and shipping of automotive parts industry." [sic]

Even viewing all other du Pont factors in Hancor's favor, including fame -- and the Board pointed out in a footnote that the mark SURE-LOK is suggestive of Hancor's goods -- "the dissimilarity of the goods is so vast as to preclude a likelihood of confusion."

TTABlog comment: The Board does not often grant summary judgment in Section 2(d) cases, given the many factual issues that may arise under the du Pont factors. Here, however, the motion for summary judgment must have looked to Mollewood like a sure lock.

TTABlog note: I could not locate a photo of the Mollewood product, nor a photo of a glass jar and a screen door to illustrate the Board's analogy. Therefore, I decided to include the "door ajar" photo, in a feeble attempt at humor.

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

TTABlog On Duty At INTA San Diego

It's tough work, but someone has to do it!

Sunday afternoon
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TTAB Tosses Out Two 2(d) Oppositions For Failure To Make Prima Facie Case

It is a fundamental principle of TTAB inter partes practice and procedure that the party in the position of plaintiff has the burden to establish at least a prima facie case prior to the close of its testimony period. There are various pathways by which a a party may proffer its evidence: testimony deposition, notice of reliance, stipulation, judicial notice, etc. (See, generally, Chapter 700 of the TBMP.) On occasion, however, a plaintiff fails to put in any evidence prior to the close of its testimony period, and when that happens, the party is over.

Jojoba
For example, in Int'l Flora Technologies, Ltd. v. Desert Whale Jojoba Co., Opposition No. 91157402 (April 29, 2005) [not citable], Opposer Flora sought to prevent registration of the mark JOJOBASOMES for soaps, essential oil, cosmetics and hair lotions, alleging a likelihood of confusion with its registered marks METASOMES, FLORASOMES, JOJOBEADS, and JOJOBUTTER. In its answer, Applicant Desert Whale admitted none of the elements of Flora's Section 2(d) claim. Neither side submitted anything further to the Board until Flora filed its brief at final hearing, accompanied by certain exhibits. Desert Whale objected, and the Board ruled in its favor and dismissed the opposition.

The Board pointed out that Flora did not make its registrations of record, and that the Board does not take judicial notice of USPTO records. Nor did Flora introduce any evidence during its assigned testimony period. Evidence that first appears as an attachment to or part of a final brief is untimely and improper.

As a last resort, Flora must have been jojoking when it asked the Board to take judicial notice "as a matter of public record" of Flora's "tremendous reputation in the field of botanically derived goods." That, of course, is not a proper subject for judicial notice.

With no evidence properly in the record and no admissions from Applicant, Flora was finished.


A similar fate befell Opposer Sleepcare in its opposition to registration of the mark shown immediately above for retail and mail order services featuring products to help people sleep. Sleepcare, Inc. v. Sleepco, Inc., Opposition No. 91157829 (March 31, 2005) [not citable].

Sleepcare claimed prior common law rights in the trademark and trade name SLEEPCARE for mattresses and box springs, and contended that confusion would be likely vis-a-vis Applicant's mark. When it came to submitting its evidence, however, Sleepcare fell asleep.

Applicant denied the salient allegations of the notice of opposition. Neither party submitted anything other than Opposer Sleepcare's brief at final hearing, to which it attached an affidavit with exhibits. Of course, as noted, the final brief is not a proper vehicle for the introduction of evidence. Moreover, affidavits are not acceptable as testimony without a stipulation or agreement from the other party.

Ergo, the Board dismissed the opposition because Sleepcare failed to submit proper proof to support its claim.

TTABlog comment: Yikes!

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

In A Non-Precedential Opinion, CAFC Affirms Genericness Of "PRECISION CUTS"

Precision Cuts, Inc. of Bend, Oregon, lost its appeal to the CAFC from the TTAB's ruling that PRECISION CUTS is generic for barbershop services. In re Precision Cuts, Inc., Appeal No. 05-1024 (May 11, 2005). PCI sought, under Section 2(f), to register the stylized mark shown immediately below, for "barbershop and tanning salon services," but the Examining Attorney required a disclaimer of the words "PRECISION CUTS."


The TTAB affirmed the refusal to register (link), relying on some 60 NEXIS excerpts showing that "the term 'precision cut(s)' has been used to identify a type or style of haircut." The Board brushed aside PCI's argument that 60 articles out of millions of articles in the database is an insufficient basis on which to conclude that "these words are or will be recognized by at least a majority of the relevant purchasing public, that is, barbershop customers, to primarily signify the name of applicant's services."

On appeal, PCI contended that the requisite "substantial evidence" was not of record to support the genericness finding, but the CAFC disagreed:

"The quantum of evidence required is 'such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.' A reasonable person's credulity would be satiated by the hundreds of NEXIS search returns that the examiner, and the Board, relied upon to establish a prima facie case that the terms are generic."

Noting that "[a]ny competent source suffices to show the relevant purchasing public's understanding of a contested term," the court ruled that the 60 "representative" articles submitted by the PTO were enough. There is no requirement that the PTO "administer consumer surveys to discharge its burden, and the absence of survey results from this record does not alter the sufficiency of the evidence."

Thus the CAFC concluded that the Board's decision is supported by substantial evidence, and it affirmed.


TTABlog comment: In the Board's decision, PCI was given thirty days to file a disclaimer of "PRECISION CUTS," in which case the refusal to register would be set aside and the mark would be registered under Section 2(f) (based on PCI's 15 years of use of the stylized mark).

However, as the CAFC noted, the acceptance of the Section 2(f) declaration establishing secondary meaning for the mark as a whole has no effect on the requirement that the generic phrase be disclaimed.

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

Columbia Pictures Takes On Leo Stoller In "STEALTH" Movie DJ Action

Columbia Pictures has brought a civil action in federal court in Chicago, seeking a declaratory judgment that its use of the title "Stealth" for a movie scheduled for release on July 29, 2005, does not infringe upon or dilute Leo Stoller's purported rights in the mark STEALTH. Columbia Pictures Indus., Inc. v. Stoller et al., Civil Action No. 05-C-2052 (N.D. Ill.).


In its 14-page complaint (available for downloading here), filed on April 7, 2005, Columbia asserts that Stoller and his companies "improperly seek to deprive Plaintiff of the right to use as the title of a literary work . . . a word in the English language that expressively communicates the content of the Motion Picture to its intended audience." Columbia describes the movie as follows:

"The Motion Picture 'Stealth,' starring Academy Award®-winner Jamie Foxx, Josh Lucas, Jessica Biel, and Sam Shephard, tells the fictional story of a top-secret military program involving a fully autonomous and very lethal prototype stealth fighter bomber that unexpectedly develops human-like consciousness."

Columbia contends that the title "Stealth" has logical and artistic relevance to the film because it:

"refers among other things to the bombers featured in the Motion Picture -- which have the ability to "go stealth" and fly undetected through the skies -- the secrecy surrounding the fictional military program, and the treacherous and stealth-like actions of many of the characters in the Motion Picture."

Stoller, in his March 2005 correspondence with Plaintiff threatening litigation (copies attached as exhibits to the complaint), claims that the STEALTH mark has been built into a "national brand" and is famous. He further asserts that defendants "are receiving numerous communications from third parties who are confused regarding Sony's STEALTH movie as to source." Stoller offered to license the STEALTH mark to Plaintiff on royalty terms that are a bit incomprehensible: "On a quarterly basis, or any portion thereof . . . 1% (two percent) of the gross selling price per quarter." Apparently, Columbia has declined that offer.

Columbia's complaint includes a handy list of reported federal court cases involving Stoller and/or his companies. Columbia asserts that "No court in any reported opinion has ever found any infringement or dilution of any rights held by Stoller or his companies."


Columbia further notes, with a list of citations, that Stoller "has often been sanctioned and ordered to pay attorneys' fees and costs arising from the initiation of meritless litigation."

And finally, Columbia observes (again with citations) that "courts have repeatedly held that the trademark rights of Stoller and his companies in the STEALTH trademark are weak, to the extent they exist at all."

TTABlog comment: If I were a betting man, I'd put my money on Columbia in this one.

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

Meet Two Bloggers At INTA San Diego!

Marty Schwimmer (of The Trademark Blog) and I invite you to meet one or both of us at an informal gathering at:

Henry's Pub
618 Fifth Ave.
San Diego, CA 92101

Date: Tuesday, May 17th.
Time: 4:30 to 6:00 pm

We hope you find the time to drop by for a chat. We promise that all comments made will be off the record. (What happens at INTA stays at INTA).


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"TEACHERS' INSURANCE PLAN" Flunks TTAB Genericness Test

Despite some recognition as the source of the involved services, Applicant Direct Response failed to overcome the PTO's refusal to register TEACHERS' INSURANCE PLAN on the Supplemental Register (INSURANCE PLAN disclaimed). The Board agreed that the term is generic for "Insurance services, namely underwriting insurance in the fields of property, casualty and automobile insurance; Insurance claims administration and processing; insurance consultation and insurance brokerage services." In re Direct Response Corp., Serial No. 76121702 (March 8, 2005).


Applying the CAFC's two-step genericness analysis set forth in H. Marvin Ginn Corp. v. Int'l Assn. of Fire Chiefs, Inc., 228 USPQ 528, 530 (Fed. Cir. 1986), the Board, as if often does, found the identification of services in the application to be "an appropriate description of the class [or genus] of services." The Board also concluded that it must "review the evidence of record to determine what is the likely perception of TEACHERS' INSURANCE PLAN by a relatively broad 'relevant public.'"

The Board noted that Direct Response's web pages "do not contain any self-defeating uses of 'teachers' insurance plan,' i.e., use in a way that would be perceived as generic." More probative, however, were dictionary definitions and Nexis excerpts.

Although the three words in combination retain their ordinary dictionary meanings, under In re American Fertility Society, 51 USPQ2d 1832, 1836-7 (Fed. Cir. 1999), that is not enough:

"When, however, words are combined in a phrase, although we still consider dictionary definitions of the individual words as evidence of the likely perception of the whole phrase, the examining attorney must present additional evidence establishing generic use of the phrase."

The Nexis evidence submitted by the PTO and by Direct Response was a "“mixture"” of generic uses and references to Applicant. The Board observed that in In re Merrill, Lynch, Pierce, Fenner & Smith, Inc., 4 USPQ2d 1141, 1143 (Fed. Cir. 1987), a similar mixture of uses led to the conclusion that CASH MANAGEMENT ACCOUNT was not generic "because, inter alia, there was 'recognition in a substantial number of publications that the source of the CASH MANAGEMENT ACCOUNT was [Merrill, Lynch].'" However, the Board distinguished that case:

"we find that 'teachers' insurance plan' has been a name for insurance plans for teachers since well prior to applicant's first use of the proposed mark in October 2000, in conjunction with applicant's attempts to expand what was a business conducted in a limited area under a composite word and design mark that included a disclaimer of the words now proposed to be separately registered as a mark. *** Unlike Merrill Lynch, this is not a case in which applicant has pioneered a product or service and only later has had to deal with generic uses of its proposed mark by others."

The Board concluded that, although Direct Response may have developed "some recognition ... as a source of the identified services," when the phrase is used by others it "could not be perceived as anything but the name of insurance plans for teachers."

TTABlog comment: For a discussion of the CAFC's current tests for genericness, which differ for compound words as opposed to phrases, see Section IIB of my recent article, "The TTAB in 2004: What Was Hot, What Was Not."

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

TTABlog: Friday Flotsam and Jetsam (Issue No. 2)

Welcome to the second issue of "Friday Flotsam and Jetsam," an occasional vehicle for clearing out my "things-to-blog" folder and for posting a few irrelevant photographs that I like.

Searching the TTABlog: In case you didn't know it, the TTABlog is completely word-searchable by utilizing the search box at the upper left corner of the blog. For example, put in the word "TrafFix" (or "traffix"), and Google will provide a list of the TTABlog entries that include that word. In addition, I posted a quarterly index at the end of March 2005, and an end-of-year index at the close of 2004, categorizing the blog entries by subject matter.

Post Office SquareClick on photo for larger picture
TMEP 4th edition now available: On April 29th, the PTO posted the 4th and latest revision of the Trademark Manual of Examining Procedure (here). Strangely, at that link, the manual is referred to as the "Trademark Manual of Examination Procedures," which appears to be a typographical error. See, for example, the Forward, where the work is referred to by its usual name.

The Top Ten TTAB Decisions of 2004: My annual Top Ten article will be appearing in the May 9th issue of the National Law Journal (in the Intellectual Property insert), which I believe will be distributed at the INTA Annual Meeting in San Diego. This is the fourth consecutive year that NLJ has carried my annual list. NLJ, however, chooses its own title, for better or worse. Two years ago my "Top Ten TTAB Decisions of 2002" was rather anticlimactically dubbed "TTAB issued no earthshaking decisions last year."

Meanwhile, my application to register the trademark THE TOP TEN TTAB DECISION OF 20** remains mired in the PTO. On July 23, 2003, the Examining Attorney refused registration on the ground of mere descriptiveness, and he also deemed the mark unregistrable because it purportedly contains a "phantom" element. I responded to that office action, and subsequently filed an Amendment to Allege Use. The PTO has yet to take up the file again. (For a discussion of the TTAB's evolving position on "phantom" marks, see Section IB of my article entitled "The TTAB in 2004: What Was Hot, What Was Not.")

José Cancela, New England RevolutionClick on photo for larger picture

More reading material: Looking for something to read on the flight to INTA San Diego? Thanks to The Trademark Blog, here's a link to a new article by Uli Widmaier entitled "Use, Liability, and the Structure of Trademark Law," 37 Hofstra Law Review 693 (2005). In brief, Mr. Widmaier's thesis is that recent decisions in the Internet realm have improperly extended the reach of trademark law, and that courts need to return to the fundamental trademark principle that use of a mark as a mark is a prerequisite for all trademark claims. That, my friends, is an extremely terse summary of this 107-page article.

Electronic Hearing Room: On April 27, 2005, the PTO announced the launch of a "state of the art" electronic facility available for hearing TTAB appeals and contested cases. (Link). Attorneys will be able to present their arguments to the Board while the judges see the attorneys on a large plasma screen and receive evidence electronically. Many law firms reportedly have the necessary equipment to enable such hearings; alternatively, attorneys may participate from the PTO Depository Libraries in Sunnyvale, California; Detroit, Michigan; and College Station, Texas (Texas A&M).

The TTABlog wonders, what's next for the Board? Internet streaming of TTAB arguments? Podcasts? C-Span? American Idol-type electronic voting for best oral argument? (Randy: "Hey dawg, you really brought it today!" Paula: "What can I say? You're a pleasure to listen to!" Simon: "Frankly, I can hear a better argument on any evening in any pub in England.")

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

TTAB Reverses Mutilation Refusal of Ciba's "RECYCLOSSORB" Mark

Although its specimen of use (shown below) displays the term "RECYCLOSSORB ® 550", Ciba Specialty Chemicals persuaded the Board that the specimen supported its application to register the word RECYCLOSSORB by itself. In re Ciba Specialty Chemical Corp., Serial No. 76438403 (April 25, 2005) [not citable].


Ciba sought to register RECYCLOSSORB for "chemicals, namely, light stabilizers for use in the manufacture of outdoor articles, namely, plastic, lumber, crates, drums and the like." It stated that "The numbers following the mark are not part of the mark as shown." The Examining Attorney inquired as to whether the number 550 is "merely a grade designation or model number," and requested Ciba to submit evidence showing use of RECYCLOSSORB "with other similar notations." Ciba responded that this is the first product in the RECYCLOSSORB line, and thus no other specimens were available. [As to the PTO's treatment of grade and model designations, see TMEP Section 1202.10 (4th edition)].

The Examining Attorney then required Ciba to submit a substitute specimen showing use of RECYCLOSSORB alone. Ciba had no such specimen. It argued that "550" is not being used in a trademark sense, and that "use of numbers (or letters) as a composition description is a 'standard practice of the industry.'" Ciba supplied screen prints from its own website and from third-party websites to show industry practice.

The Examining Attorney made final his refusal, asserting that the mark RECYCLOSSORB is not a "substantially exact reproduction" of the mark shown on the specimen, as required by Rule 2.51(a).

The Board sided with Ciba:

"It is clear that it is common industry practice to utilize the number not as a mark or part of a mark, but as a chemical composition designation to differentiate between the specific products in a series of related chemical products."

The Board also noted that Ciba "has clearly stated that its product sold under RECYCLOSSORB 550 is the first product in a product line."

"Certainly, the evidence from applicant's website indicates that its various product line marks are, in fact, used with composition designation numbers Such use is analogous to use of a mark followed by a generic term for the particular goods. The Examining Attorney, on the other hand, offers only speculation that applicant will not use the mark RECYCLOSSORB for a line of products."

The Board concluded that "applicant's drawing presents a substantially exact representation of the mark as actually used in commerce, and applicant need not submit a new specimen showing the mark without the number designation."

mutilated photo from Ciba website?
TTABlog comment: The Board ignored the ® symbol that improperly appears on the specimen. The Examining Attorney pointed out in a footnote in his Statement on appeal that use of the symbol was improper. See TMEP Section 906 (4th ed.).

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

Oral Argument Persuades TTAB To Reverse "E-LAMP" 2(e)(1) Refusal

A TTABlog hat-tip to counsel for Applicant in In re Advanced Lighting Technologies, Inc., Serial No. 76422584 (March 9 2005) [not citable]. He persuaded the Board, on oral argument, to change its mind and rule that the mark E-LAMP is not merely descriptive of "metal halide lighting system components, namely, ballasts and electrical controls" (in class 9) and "metal halide lamps and metal halide lighting systems consisting of lamps, ballasts, and electrical controls, sold as a unit" (in class 11).

Photo from Venture Lighting brochure

As previously discussed here, in its original decision the Board affirmed the PTO's mere descriptiveness refusal, but as noted here, that decision was vacated in order to give Applicant the oral hearing it had requested.

The Examining Attorney relied on dictionary definitions of the prefix "E-", on Internet webpages, and on NEXIS excerpts, in contending that E-LAMP "merely describes to consumers that applicant's goods are lamps that contain an electronic component."

Applicant argued that the "E-" prefix "means information or functions involving computers," noting that the definitions of "E-" relied on by the PTO refer to computers or the Internet.

"During the oral hearing, applicant's counsel made a particularly cogent argument that while the prefatory letter "E" is readily seen as connoting "electronic" in the context of the Internet, it is not perceived this way as used in connection with electronic devices ('gadgets' or 'gizmos,' as characterized by applicant's counsel)."

The Board was therefore "not persuaded that the letter 'E' is a readily recognized shorthand for 'electronic' apart from functions involving the Internet or computers."

"... where the popular media, dictionary definitions or earlier Board decisions indicate that the 'E' prefix means the 'electronic or Internet nature of an item or service...' (In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002)), it may well be most accurate to think of Internet as a clarifying appositive modifying the word 'electronic,' and not the broader alternative argued by the Trademark Examining Attorney."

The Board therefore could not conclude, "on the facts of this case," that E-LAMP is "shorthand for 'electronic lamp' in the context of lamps (or light bulbs) without electronic components." It frankly admitted that some doubt exists, but it resolved that doubt in favor of the applicant and in favor of publication for opposition.

Two particular points raised doubt: (1) Applicant's E-LAMP system is described at the website of Venture Lighting -- apparently a company related to Applicant -- as "A Revolutionary Electronic System From the Leaders of Lighting Innovations." The Board explained cryptically that "while components of applicant's lighting systems may have electronic components, the lamps, or light bulbs, clearly do not." (The TTABlog wonders, what about the "controls?"); and (2) Several years ago a type of light bulb called an E-lamp was available, but "it would appear that this product was not particularly successful in the commercial residential market since there is no evidence of the use of 'E-lamp' since the early 1990's." The Board concluded that this limited evidence failed to establish that purchasers of applicant's goods would understand "E" to mean "electronic."

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

Finding No Likely Confusion or Dilution, TTAB Dismisses Nike's Opposition To "NIKEPAL"

Despite finding the NIKE mark famous both for Section 2(d) and Section 43(c) purposes, the Board dismissed Nike's opposition to registration of the mark NIKEPAL for "import and export agencies and wholesale distributorships featuring scientific, chemical, pharmaceutical, biotechnology testing instruments and glassware for laboratory use, electrical instruments, paper products, and household products and cooking appliances." Nike Inc. v. Nikepal Int'l Inc., Opposition No. 91124869 (April 21, 2005) [not citable].

Fluid Pump
Opposer Nike pleaded ownership of 29 registrations for the mark NIKE, both alone and combined with other words, mostly for athletic footwear and clothing. Its staggering sales ($57 billion during the period 1979-2003) and advertising figures ($10 billion during the same period), its association with such famous athletes as Tiger Woods, Michael Jordan, Derek Jeter, and Mia Hamm, and the ranking of the NIKE mark as the 33rd most valuable brand in the world, led the Board to conclude that, for purposes of the Section 2(d) du Pont analysis, NIKE is a famous mark entitled to "substantial weight" and to a "broad scope of protection against competing marks."

The Board found the marks NIKEPAL and NIKE to be similar in sound, appearance, connotation, and overall commercial impression. However, "the significant differences in the parties' respective goods and services" led the Board to conclude that confusion is not likely.

Nike contended that the "paper products," "household products," "cooking appliances," and "electrical instruments" included in Nikepal's application could encompass items that the public would associate with Nike: e.g., Nike uses its mark on posters, binders, student planners, notebooks, and portfolio covers, as well as on many promotional items, like pens, pencils, cups, mugs, name tags, and flying discs. Thus, Nike argued, consumers may associate paper products, household products, and even some electrical instruments and cooking appliances, with Opposer and may believe that the NIKE mark has been licensed for these products.

The Board, however, wasn't buying: "The problem with opposer's argument is that applicant's application does not cover electrical instruments, paper products, cooking appliances, and household products themselves, but rather import, export and distribution services featuring these products." [emphasis in original]. The Board observed that the record contained no evidence on which to conclude that consumers would assume that the involved goods and services emanate from the same source. Nor did Nike offer any evidence that Nikepal's services represent a natural area for the collateral use of the NIKE mark. Therefore, the Board concluded that Nike's goods and services and Nikepal's services are not related.

Shoe
Turning to the issue of dilution, the Board had "no hesitation" in finding that the NIKE mark meets the "truly famous" standard of Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1178 (TTAB 2001). However, the marks NIKE and NIKEPAL are not substantially similar, as required for dilution purposes. Id. at 1183. The addition of the term PAL "results in a mark which has a sufficiently different overall commercial impression." Consequently, the Board found that "there is no dilution."

TTABlog comment: In 2003, the fame of the NIKE mark carried Nike to a questionable Section 2(d) victory in Nike Inc. v. Pleasures of the Table, Inc., Opposition No. 115,293 (July 10, 2003) [not citable]. (The Board declined to reach the dilution issue). Applicant Pleasures sought to register the mark NIKE in the design form shown below -- which included a depiction of a statute of Nike, the Greek goddess of victory -- for restaurant and catering services. The Board found confusion likely:

". . . in view of the evidence that opposer in fact operates a food service at its conference centers under the NIKE mark . . . we find that this service is a logical expansion of opposer's business, certainly of its events and convention center services, into obvious collateral services."

That decision led me to wonder whether the owner of a famous mark should even bother to raise a dilution claim -- with its onerous evidentiary requirements -- since the owner could expect very broad protection for its mark under Section 2(d). See pages 17 and 18 of my article entitled "Dilution at the TTAB: What to Prove and How to Prove It."

TTABlog update: On July 21, 2005, Nike, Inc. filed a civil action (No. 05-01468) in the U.S. District Court for the Eastern District of California, seeking review of the Board's decision pursuant to Section 1071(b) of the Trademark Act.

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

TTAB Rules On Admissibility Of Electronic Evidence In Dismissal Of "SEA ISLAND" Oppositions

In dismissing oppositions based on Sections 2(d) and 2(e)(3), the Board issued several interesting evidentiary rulings in Sea Island Co. v. Kroehler Corp., Oppositions Nos. 91120712 and 91121447 (March 31, 2005) [not citable]. Opposer Sea Island, owner of the resort called "The Cloister" on Sea Island, Georgia, sought to block registration of Applicant's marks SEA ISLAND COLLECTION and AMERICAN SIGNATURE SEA ISLAND COLLECTION for furniture and furniture store services (now owned by American Signature, Inc.). The Board ruled on the admissibility of certain proffered Internet website pages, an entry from an encyclopedia on CD-ROM, radio transcripts downloaded from NEXIS, and copies of magazine pages bearing only handwritten notations regarding source.


Internet website pages: Opposer Sea Island moved to strike certain print-outs from Internet websites submitted by Applicant via a notice of reliance. Internet website excerpts are usually not admissible without proper authentication, and cannot be introduced into evidence by mere notice of reliance. Unlike "printed publications" under Rule 2.122(e), they are not self-authenticating. Applicant accompanied the print-outs with a declaration of its counsel, and argued that Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998) is applicable. However, as the Board pointed out, Raccioppi concerned evidence submitted on a summary judgment motion, not evidence submitted for final decision. Thus live testimony was required to authenicate these documents, not merely an affidavit. (Compare TBMP Sections 528.05(e) and 703.08)). The Board ruled in favor of Sea Island:

"Most excerpts from Internet websites differ from printed publications, which may be introduced by notice of reliance. Regardless of the ubiquitous nature of the Internet, most website excerpts are not analogous to printed publications because of the fact that the website is always subject to change, i.e., the subject matter of the website may not be the same the next time the website is accessed, whether it is ten minutes or ten days later, and there may be no indication thereon that it has been changed."

The Board noted that, if the Internet website mirrors a printed publication, excerpts therefrom "would be analogous to print publications and amenable to submission by notice of reliance."


CD-ROM encyclopedia entry: Sea Island also moved to strike an entry from the 2001 edition of the Microsoft Encarta Encyclopedia CD-ROM on the ground that the encyclopedia does not exist in print and therefore "is not the electronic equivalent of a printed publication."


This time, the Board sided with Applicant, ruling that this CD-ROM encyclopedia is self-authenticating:

"While a publication on CD-ROM is not a 'printed' publication because it may not also appear on paper, it may be self-authenticating if it is analogous to a printed publication by being an identifiable version of the publication that is only subject to change by the issuance of a new version that is identifiably different from the previous version (e.g., the 2000 edition of an encyclopedia versus the 2005 edition of the same encyclopedia)."

The CD-ROM encyclopedia also met the requirement of Rule 2.122(e) that it be "available to the general public." The Board noted Applicant's assertion that the Encarta encyclopedia is provided to consumers with every purchase of a Windows-based computer, and is available in libraries.


NEXIS radio transcripts: The Board likewise denied Sea Island's motion to strike certain radio transcripts downloaded from NEXIS, applying the same analysis as that applied to the CD-ROM encyclopedia.

"Both the nature of the exhibit, i.e., a transcript of an actual and identifiable radio broadcast, and the facts that it was broadcast to the general public, the transcript was made available to the general public, and it was obtained from a reliable database that is widely available to the public, lead us to conclude that it is self-authenticating and, thus, may be admitted in evidence by notice of reliance."

Hand-annotated magazine pages: Applicant moved to strike certain magazine articles and advertisements submitted with Sea Island's notice of reliance, on the ground that the materials were not properly authenticated: they contained no source-identifying information other than Sea Island's handwritten notations. The Board, however, agreed with Sea Island that "there is no requirement that a party submit such a printed publication with a copy of the cover page or other identification from the publication." The necessary authentication was provided by the description of each item in the notice of reliance and by the notations on the document.

* * * * * * * * * * * *

As to the substantive issues, the Board went through its standard du Pont analysis in finding no likelihood of confusion under Section 2(d), the most important factor being the lack of relatedness of the involved goods/services.

SEA ISLAND COLLECTION
As to Section 2(e)(3), Sea Island claimed that Applicant's use of the term AMERICAN in the mark AMERICAN SIGNATURE SEA ISLAND COLLECTION caused the mark to be primarily geographically deceptively misdescriptive. The Board ruled that Sea Island's proofs were inadequate on three counts. Opposer failed to establish that AMERICAN would be understood as indicating a geographic origin: "It is equally likely that purchasers would understand the phrase AMERICAN SIGNATURE as indicative of a style of furniture." Secondly, there was inadequate proof that Applicant's use of AMERICAN is false, since its furniture is designed in the United States. And most importantly, "there is absolutely no evidence establishing the materiality of the geographic source of the goods or services to purchasers." See In re California Innovations, Inc., 66 USPQ2d 1853 (Fed. Cir. 2003) and In re Les Halles De Paris J.V., 67 USPQ2d 1539 (Fed. Cir. 2003).

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