Thursday, June 30, 2005

TTABlog Quarterly Index: April -- June 2005

It's quarterly index time at the TTABlog! The blog has been around for nearly eight month and is approaching its 200th posting. Your comments, corrections, and criticisms are always welcome.

The index for November-December 2004 postings may be found here , and for the January-March 2005 postings here. Please be reminded that the TTABlog is word-searchable: just enter the search term in the Google search box at the upper left corner of the blog page. A Google search results listing will then appear.

Cape Cod 2004
Click on photo for larger picture

Section 2(d) - likelihood of confusion:

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

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

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

Section 2(f) - acquired distinctiveness:

Provincetown Harbor
Click on photo for larger picture

Dilution:

Genericness:

Not a Trademark/Mutilation

TTAB Discovery/Evidence/Procedure:

Res Judicata:

Standing/Timeliness/ESTTA/Etc.:

First Encounter Beach, Eastham, MA
Click on photo for larger picture

CAFC Decisions:

Recommended Reading:

Leo Stoller:

Other:

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

Wednesday, June 29, 2005

TTAB Reverses Poorly Supported PTO Genericness Refusal Of "ENGINEERED PRODUCTS"

The PTO didn't come close to providing the "clear evidence" required to prove the mark ENGINEERED PRODUCTS generic for "storage and materials handling systems, namely, metal racks, metal pallets, conveyors and conveyor controls sold as a unit." Ergo, the Board reversed the genericness refusal, but it affirmed the PTO's Section 2(e)(1) refusal and its rejection of Applicant's 2(f) claim of acquired distinctiveness. In re Engineered Products, Inc., Serial No. 76511361 (June 3, 2005) [not citable].

engineered products

The Examining Attorney feebly contended that ENGINEERED PRODUCTS "aptly and commonly describes a salient feature of the system .... [I]t tells the public that said system was the result of scientific development and testing." In support, he provided dictionary definitions of the constituent words and excerpts of three items (a press release and two wire service stories) obtained from the NEXIS database, and he pointed to Applicant's specimen of use, which referred to the company as "engineers ... for warehousing, storage, and handling systems."

The Board was not impressed. It found no clear evidence "as to how ... purchasers would perceive ENGINEERED PRODUCTS in relation to the identified goods," and it found the NEXIS excerpts of no probative value.

"The press release describes a Commission report of the European Communities concerning 'human tissue engineering.' The wire service reports are directed to business, technology and environmental editors, not purchasers. Thus, the NEXIS evidence fails to reflect the relevant public's understanding of the term 'engineered products.'"

Moreover, it was not clear from the PTO's evidence that "'engineered products'" designates applicant's particular category of products."

Perhaps in exasperation at the PTO's failure of proof, the Board noted that "[a] different and more complete record, however, presented perhaps in the context of an inter partes proceeding, may produce a different result."

Human tissue engineering?

Turning to the question of distinctiveness, the Board first noted that Applicant had not reserved the question of inherent distinctiveness, and therefore its Section 2(f) claim was "tantamount to a concession that the mark is not inherently distinctive." In view of the "highly descriptive nature of ENGINEERED PRODUCTS," Applicant faced a heavier Section 2(f) burden of proof, a burden it failed to carry. It submitted a declaration attesting to five years of use (although it had claimed fifty), but no sales figures or advertising expenditures, and no evidence as to "how the purchasing public would view the designation."

Therefore, the Board affirmed the PTO's mere descriptiveness refusal.

TTABlog comment:The Board agreed with the PTO that ENGINEERED PRODUCTS is an "apt" name for the goods and thus would "without question" be considered highly descriptive of the product. But was the skimpy proof provided by the PTO sufficient to show the phrase to be "highly descriptive"? The Board noted the flimsiness of the NEXIS evidence, and so essentially the PTO's only sound proof consisted of the dictionary definitions. By declaring the mark "highly descriptive," the Board, of course, could apply a higher standard of proof for secondary meaning.

The TTABlog suggests that, once the PTO failed to prove its genericness case, this Board panel was determined not to let this mark be registered. So it jumped to the conclusion that a higher 2(f) standard of proof was applicable, and thus it was easier to find that the proof was inadequate. That conclusion seems to be the product of some bad human issue engineering.

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

Tuesday, June 28, 2005

Recommended Reading: Two TMR Articles On TTAB Delay (Available Here)

I am pleased to make available for downloading (with permission, of course) two recent articles from The Trademark Reporter discussing delay at the TTAB and offering suggestions for improving the situation.

John M. Murphy, in his article in the July-August 2004 issue of The Trademark Reporter, reviewed the TTAB's Section 2(d) inter partes cases decided in the year 2003, some 67 in all, and concluded that Board proceedings take too long and are unnecessarily complicated. That article, entitled "Playing the Numbers: A Quantitative Look At Section 2(d) Cases Before The Trademark Trial and Appeal Board," 94 Trademark Reporter 800 (July-August 2004), was discussed here at the TTABlog last November, where I reported:

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

In the latest issue of the TMR, Anthony Fletcher provides a "qualitative look" at TTAB delay, and offers some suggestions for improvement. Anthony Fletcher, "TTAB Delay: A 'Qualitative' View," 95 Trademark Reporter 583 (May-June 2005).

Anthony Fletcher

Based on his many years of experience in litigation before the courts and the TTAB, Mr. Fletcher identifies and addresses four causes of delay at the TTAB:
  1. parties stipulating to seemingly endless extensions and suspensions;
  2. the TTAB's opting-out of several federal rules for case management;
  3. a culture to which case management is alien; and
  4. seemingly endless delays in the decisional process.
In a nutshell, Mr. Fletcher suggests, inter alia, limiting the number of extensions and suspension in most cases, adopting and adapting several of the "unutilized" Federal Rules to provide more case management by the Board, mandating that the parties provide automatic disclosure on certain subjects, developing a "case management culture" at the Board, and streamlining the decisional process. His article, and that of Mr. Murphy, deserve careful reading and serious consideration.

Like those two authors, I also suggested (in my November 2004 posting) that more active case management by the TTAB was needed. I'm sure that most attorneys who have been involved in Board inter partesproceedings would make the same recommendation. Fortunately, Messrs. Fletcher and Murphy have provided us with a solid foundation for further discussion of TTAB reform.

TTABlog Thank You: to The Trademark Reporter for granting permission to provide links to the Murphy and Fletcher articles. The Murphy article is Copyright © 2004 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 94 TMR 800 (July-August 2004). The Fletcher article is Copyright © 2005 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 95 TMR 583 (May-June 2005).

Text Copyright John L. Welch 2005. All Rights Reserved

Monday, June 27, 2005

TTABlog Declines To Comment On Grokster

In an impressive display of self control that stunned many denizens of the blogosphere, the TTABlog completely refrained from commenting on the Supreme Court's Grokster decision. While every other known blawg had something to say about Grokster, or at least provided a brief summary of the ruling and a link to the opinion, the TTABlog stuck to its guns and said nothing.

United States Supreme Court

TTABlogger John L. Welch explained: "Of course I was tempted to blog something about Grokster. I'm always looking for content, and given the dearth of TTAB decisions lately, it looked like a juicy plum worth picking. But then I stopped and thought, 'Johnny, keep your eye on the ball. And for you that means the TTABall.' Also, I couldn't really think of anything to say, but even if I could have, I wouldn't have."

He promised that readers can expect the TTABlog to continue to keep its eye on the ball -- the TTABall.

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

TTAB Banishes "EDEN GARDEN" From PTO Paradise In View Of Likely Confusion With "EDEN" For Food Products

The TTAB didn't say Applicant Brenkwitz Farms was a bad apple in attempting to register EDEN GARDEN & Design (shown below) for fresh fruit, but the Board showed no forgiveness in finding a likelihood of confusion with the mark EDEN used and registered by Eden Foods, Inc., in various forms and combinations for a wide variety of vegetable, fruit, and beverage products. Eden Foods, Inc. v. Brenkwitz, Opposition No. 91151474 (June 16, 2005) [not citable].

Lined for the colors red, orange, yellow,
blue, purple, and brown.

The Board plowed its way through the du Pont factors, finding the goods (fresh fruit and processed fruit) related, the channels of trade (supermarkets and the Internet) and customer base identical, and the marks "highly similar in overall commercial impression." It also found Opposer's marks to be strong and well-known and entitled to a broad scope of protection, based upon 35 years of use, recent annual sales of $100 million, $2 million per annum in advertising expenditures, use of the marks on a wide array of food and beverage products, and an aggressive trademark enforcement program.


Applicant Berkwitz managed to dredge up one touching but fruitless argument regarding the marks:

"The possibility that purchasers with imperfect recall are likely to believe Applicant's homespun, busy artwork, viewed in its entirety, as simply another of corporate Opposer's simple word-marks is vanishingly small."

The Board also found that Opposer established a "family of marks," though that finding had no apparent effect on the outcome of the proceeding. The Board pointed out once again that the mere adoption, use, and registration of a group of marks having a common feature is insufficient to establish a family of marks. It must be shown that the marks are "used and promoted together in such a way as to create among purchasers an association of common ownership based upon the family characteristic."

Here, throughout various promotional materials Opposer used the housemark EDEN and the tradename EDEN FOODS "along with EDEN as a product mark and all of the other EDEN-formative marks claimed herein." Sales sheets and catalogues depicted "a sizeable number of EDEN and EDEN-formative marks on a myriad of different food items. Advertisements promote, and the authors of articles use, these various marks together in such a manner as to create among purchasers an association of common ownership based upon EDEN, the family surname."

Consequently the Board found that "opposer indeed possesses a family of EDEN marks.


TTABlog comment:
The TTABlog has previously pointed out the lack of clarity in the TTAB "family of marks" jurisprudence. See "The TTAB's Dysfunctional "Family of Marks Doctrine", posted on January 28, 2005. The EDEN GARDEN decision does little to explain what a mark owner is supposed to do in order to establish a family of marks. As usual, the Board states that mere use and registration of a group of marks is not sufficient. Yet in finding an EDEN family of marks here, the Board fails to specify exactly what Opposer did, other than use and register a group of marks, to "create among purchasers an association of common ownership." Did Opposer employ "look for advertising?" Did it specifically describe its EDEN marks as a "family." Did it depict the marks seated around a dinner table? All that this Board panel provided is the conclusion without sufficient explanation, leaving TTAB practitioners in limbo once again.

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

Friday, June 24, 2005

"SUPERIOR QUALITY" For Buttons Lacks Secondary Meaning, Says TTAB

Despite its claim of 169 years of use, Applicant OGS Technologies (formerly known as The Waterbury Button Company) failed to establish secondary meaning for its mark SUPERIOR QUALITY for "buttons for clothes." In re OGS Technologies, Inc., Serial No. 76301434 (June 8, 2005) [not citable].


Applicant's specimen of use.
SUPERIOR QUALITY appears on back of button

Relying on dictionary definitions and on numerous Internet excerpts showing third party use of "superior quality" to refer to clothing, buttons, fabric, and other notions, the Examining Attorney contended that the mark is "highly laudatory/highly descriptive, thus requiring a higher burden of applicant in proving acquired distinctiveness" -- a Section 2(f) burden that OGS failed to carry.

OGS claimed use of the mark since 1833, annual sales of more than $600,000 for the years 1998-2002, and advertising expenditures of more than $60,000 per annum. It submitted a list of Google hits, Internet website printouts from those hits, and four unverified customer statements (on OGS letterhead). And it claimed that its buttons are "well known among collectors and some of [the] buttons sell for hundreds and thousands of dollars each."

The Examining Attorney countered by pointing out that OGS "submitted no advertisements, no brochures, no catalogs, and no other promotional materials," and asserted that the Internet excerpts show that the phrase SUPERIOR QUALITY is a "back mark" denoting quality and does not indicate source.

Civil War button with SUPERIOR QUALITY back mark

The Board agreed with the PTO that SUPERIOR QUALITY is "highly laudatory/highly descriptive and is used to refer to the quality of these various items." The Board likewise agreed that the level of evidence necessary to establish secondary meaning is consequently "extremely high," and it concluded that OGS's evidence was not sufficient.

"Despite applicant's claim that the term was first used for buttons for clothing in 1833, there is a lack of evidence of recognition by the purchasing public now. Our determination of whether SUPERIOR QUALITY has acquired distinctiveness is based on the perception of the purchasing public today."

The Board found OGS's sales figures "not particularly large" and its advertising expenditures "likewise limited in amount." Moreover, OGS failed to place those figures in context vis-a-vis the total market for buttons. "[G]iven the high degree of descriptiveness of the term, a more substantial showing of sales and advertising figures would be required to establish acquired distinctiveness."

The Board noted the lack of advertising and promotional evidence, and it found the four customers statements (which provided little information) to be of "limited probative value." OGS's website evidence showed "mixed uses": not all the Google hits referred to Applicant, nor did they all depict "superior quality" in capital letters. And some may refer to the condition or quality of the button and may not necessarily indicate a trademark. Finally, the fact that Applicant's buttons are well know to collectors is irrelevant to the Section 2(f) issue:

"Moreover, even if collectors of Civil War era (and other such) buttons may regard SUPERIOR QUALITY as a trademark for buttons used at the time of the Civil War, nonetheless, there is no evidence that consumers regard SUPERIOR QUALITY as a trademark for buttons today."

Therefore the Board affirmed the refusal to register under Section 2(e)(1) and the rejection of OGS's Section 2(f) claim.

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

Thursday, June 23, 2005

Third-Party Uses Lead TTAB To Find "TORRE MUGA" And "TORRES" For Wine Not Confusingly Similar

A thorough review of the du Pont factors, with particular emphasis on Factor No. 6 (third-party use), led the Board to dismiss a Section 2(d) opposition to registration of the mark TORRE MUGA & tower design (illustrated below) for wine. Opposer Miguel Torres, S.A. relied on nine registrations for marks that include the word TORRES for wine, brandy, and liqueur. Miguel Torres, S.A. v. Bodegas Muga S.A., Opposition No. 91112586 (June 10, 2005) [not citable].



Third-Party Use (Factor 6): Applicant Bodegas Muga argued that TORRES is a "very weak mark" due to extensive third party use and registration. The Board noted that "[n]ormally, this type of evidence is easily dismissed because there is no evidence of use or the evidence of use is limited." Here, however, Applicant submitted proof that was "quantitatively and qualitatively different from what is normally encountered in likelihood of confusion cases." The evidence showing third-party use included menus from various restaurants listing wines with TORRE in their names, bottles of wine, and website pages for online wine stores offering various wines with names including "Torre." In addition, Opposer's witness acknowledged that he was aware of wines with "Torre" in their names, and Applicant submitted several trademark registrations for marks including the word "Torre" for wine. The Board found this to be "substantial evidence that weighs in applicant's favor."

Lack of actual confusion (Factor 8): The Board observed that a lack of actual confusion does not necessarily mean the absence of a likelihood of confusion. Here, however, "there is evidence that applicant's and opposer's marks are encountered by identical customers at the identical time." The parties have marketed their wines in the United States since 1997, in the same types of wine stores and restaurants, and they have been reviewed and listed in the same publications. Therefore, the lack of confusion is a factor favoring Applicant.

bodegas_muga_60_pradoTorres


Strength of Opposer's marks (Factor 5): Opposer argued that its marks are famous, noting that its wines have won numerous awards and have been very favorably reviewed. It also claimed that it has successfully policed its mark. However, Opposer did not offer any direct evidence of public recognition of its marks, other than its awards (which are "not uncommon"). The Board concluded that Opposer's marks are not famous, but have "acquired some recognition," a factor that "does not weigh heavily in opposer's favor."

Similarity or dissimilarity of the marks (Factor 1): The Board noted that the term "torre" means "tower" in Spanish, but because "Torres" is a common surname in the United States, for many purchasers of Opposer's goods the word "Torres" is likely to be viewed as a surname. Applicant's Opposer's mark is likely to be understood as meaning "Muga tower," Muga also being a surname. Thus the connotations and the commercial impressions of the marks are different. Compared in their entireties, "despite the similarities in the mark[s], there are significant differences as well. Thus, this factor is not dispositive."

Balancing the factors: On balance, the du Pont factors led the Board to conclude that "there is at best a possibility of confusion and not a likelihood of confusion."

TTABlog quiz: Can you name the two Torre(s) pictured here? Answers below.



Text Copyright 2005 John L. Welch. All Rights Reserved
(Quiz Answer: Johnny Torres, Milwaukee Wave; Joe Torre, New York Yankees)

Wednesday, June 22, 2005

TTAB Deems "EMBASSY CHEFS" Merely Descriptive Of TV Shows Featuring Embassy Chefs

No surprise here. The Board affirmed a Section 2(e)(1) refusal to register the mark EMBASSY CHEFS, finding it merely descriptive of "providing television programs in the field of culture and cuisine." In re Nostalgia Network, Inc., Serial No. 78147904 (June 10, 2005) [not suitable].

Norway embassy chef Frode Selvaag

The Examining Attorney submitted printouts from the Nostalgia Network website describing Applicant's television show as follows: "Tour Washington D.C.'s famous Embassy Row.... Then meet the embassy's chef and find out how food ties into the national culture as they [sic] prepare a menu fit for a state dinner." Nonetheless, Nostalgia Network rather bizarrely contended that "the fact that a chef appears to demonstrate how to prepare the cuisine is ancillary to Applicant's services," and it argued that the mark should be deemed merely suggestive. The Board found that contention unpalatable.

Nostalgia also argued that this case is similar to Stork Restaurant, Inc. v. Sahati, 76 USPQ 374 (9th Cir. 1948), but that argument laid an egg. The Board noted the court's finding that:

"'The Stork Club' is a trade name that, in the language of the books, might be described as 'odd,' 'fanciful,' 'strange,' and 'truly arbitrary.' It is in no way descriptive of the appellant's night club, for in its primary significance it would denote a club for storks. Nor is it likely that the sophisticates who are its most publicized customers are particularly interested in the stork."

In contrast, the Board ruled that "[t]here is nothing odd or fanciful about referring to a show that features embassy chefs as EMBASSY CHEFS. As such, the term EMBASSY CHEFS is merely descriptive of applicant's services, and we affirm the examining attorney's refusal."

The Board also affirmed a refusal under Section 1051(a)(1), based upon Applicant's failure to submit an acceptable specimen of use. The Examining Attorney contended that Nostalgia's specimen "is an announcement or informational sheet about future services." The specimen [which is available for perusal via the PTO's Trademark Document Retrieval (TDR) database], begins with following statement before proceeding proceeds to describe what the show will feature:

"Goodlife TV Network proposes a unique program designed to foster understanding and celebrate the varied cultures of the world we share through the fellowship of food."

The Board agreed with the PTO that Nostalgia's specimen refers to future programming and not to services being offered at the time. The Board pointed out that the mere adoption of a mark is not sufficient; a service mark must be used in the sale or advertising of services. It noted, moreover, that there was no evidence that Nostalgia's entertainment services were even in existence at the time it filed the subject use-based application.

Royal Norwegian Embassy
Washington, D.C.

TTABlog comment: On second thought, there is something surprising here. It's surprising that this applicant even bothered to appeal.

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

Tuesday, June 21, 2005

2(d) Refusal Of "ICEBERG" For Cheese Melts Under TTAB Demand For "Something More"

As discussed here at the TTABlog, in restaurant/food product cases, CAFC precedent requires "something more" than mere similarity or identity of the marks to support a likelihood of confusion refusal. That "something more" was lacking in In re Roth Kase U.S.A. Ltd., Serial No. 76479059 (June 8, 2005). Consequently, the Board reversed a Section 2(d) refusal to register the mark ICEBERG for cheese, finding it not likely to cause confusion with the mark ICEBERG DRIVE INN, registered for restaurant services.

Original ICEBERG DRIVE INN
Salt Lake City

The Examining Attorney relied on seven third-party registrations each covering restaurant services and food items, as well as on a copy of an ICEBERG DRIVE INN menu showing that the fare includes cheeseburgers, Philly cheesesteaks, and chili cheese dogs.

Roth Kase cheese

The Board applied In re Coors Brewing Co., 68 USPQ2d 1059 (Fed. Cir. 2003) -- a decision that neither the Applicant nor the Examining Attorney discussed -- in ruling that "there is not substantial evidence in the record to establish that purchasers are likely to assume that a source connection exists." The third-party registration evidence and Registrant's menu failed to establish the required "something more."

"Only three of the third-party registrations cover both restaurant services and cheese, per se. That cheese may be an ingredient in other of the food items covered by the third-party registrations, and an ingredient in several of the items on the cited registrant's own menu, is not enough, under In re Coors Brewing Co., supra, to persuade us that a likelihood of confusion exists."

TTABlog comment: No quarrel with this one. Why on earth would anyone think ICEBERG brand cheese would have a connection with the ICEBERG DRIVE INN chain? It would be a different story if it were McDONALD's for cheese, wouldn't it? Do you think the cited registrant will oppose? I think it would be a Titanic mistake.

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

Monday, June 20, 2005

TTABlog Flotsam And Jetsam -- Issue No. 4

I'm back from my European road trip, and fortunately while I was gone the TTAB was not very prolific in issuing decisions. So this is an opportune time to update a few prior TTABlog postings.

CAFC dismisses appeal in "clear bottle" dispute. On June 10th, The CAFC dismissed without opinion Pennzoil's appeal from the TTAB's decision in Texaco Inc. v. Pennzoil-Quaker State Co., Opposition No. 91120520 (May 28, 2004) [not citable], discussed here at the TTABlog. The Board sustained Texaco's opposition to Pennzoil's application for registration of "the color clear used on containers for motor oil." The Board found the applied-for mark to be de jure functional and, in the alternative, lacking in acquired distinctiveness.


It would have been useful to have another CAFC ruling on the issue of product configuration/trade dress functionality, but it was not to be. Instead all we have is a dismissal without opinion of an uncitable TTAB decision -- and that, my friends, is a clear disappointment.

Reconsideration denied in ORAL MAX opposition. The chances that the TTAB will grant a request for reconsideration are as thin as a razor's edge. In 2005, all ten requests for reconsideration of a final Board decision have been rejected. Thus it was hardly surprising that the Board denied Gillette Canada's request for reconsideration of the recent ORAL-MAX decision.

As discussed here at the TTABlog, in Gillette Canada Co. v. Robin Research Labs., Inc., Opposition No. 91124984 (April 12, 2005) [not citable] the Board dismissed Gillette's opposition to registration of the mark ORAL MAX & Design for "electric toothbrush and dental flossing units" because Gillette failed to get into evidence its registrations and failed to prove prior use of its ORAL-B marks.


In its reconsideration request, Gillette argued that Rule 2.122(d)(2), which governs the submission of status and title copies of registrations, does not distinguish between filing during the main testimony period and during the rebuttal period, and therefore Gillette's notice of reliance submitted during its rebuttal period was proper. The Board disagreed, noting that Rule 2.121(b)(1) specifies that the Board set "a testimony period of the plaintiff to present its case in chief." Submission of the registrations should have been part of Gillette's case in chief.

Gillette also pointed out that Applicant Robin Research never objected to the tardy notice of reliance, but the Board observed out that "opposer had no right to presume that the Board would consider improperly adduced evidence."

Reconsideration denied in "heart-in-a-teddy-bear" case. The Board likewise denied Vermont Teddy Bear's request for reconsideration of the decision in Vermont Teddy Bear Co. v. Build-A-Bear Workshop, LLC, Opposition No. 91115198 (December 17, 2004) [not citable]. As discussed here at the TTABlog, the Board dismissed Vermont's Section 2(d) opposition, finding that Vermont's prior use of a heart "does not constitute trademark use and is not protectable under the Lanham Act."


Vermont's request for reconsideration was summarized here at the TTABlog. In denying the request, the Board ruled that Vermont's notice of opposition was filed "solely under Section 2(d)" and did not include a fraud claim, as Vermont contended. Consequently, the Board did not prematurely grant summary judgment since there was no other pleaded ground to consider.

The Board also held that Vermont was mistaken in its assertion that it was prohibited from moving to amend its notice of opposition (to add a fraud claim) after issuance of the Board's summary judgment suspension order. That order stated that the parties should not file any papers other than those germane to Build-A-Bear's summary judgment motion. The Board pointed out that, according to TBMP Sec. 528.03, the examples of papers that are germane include a motion to amend a party's pleading.

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

Friday, June 17, 2005

With An Eye On Cole Porter, TTAB Says "NIGHT & DAY" Not Merely Descriptive Of Opthalmic Lubricants

It was just one of those things, I guess. The Board reversed a Section 2(e)(1) refusal to register the mark NIGHT & DAY, finding it not merely descriptive of "opthalmic lubricant in the form of gels, solutions, drops and ointments for the eye." In re Ocusoft, Inc., Serial No. 76378707 (June 10, 2005) [not citable].


The Examining Attorney contended that the mark "merely describes a feature of opthalmic lubricants, namely, that they may be used during the night and day." In support, she pointed to Applicant's own statements regarding the goods: "Since Tears Again NIGHT & DAY Lubricant Gel will not blur vision like ointments, it may be used day and night!"

Applicant Ocusoft dimly argued that the mark is merely suggestive, and does not "convey to consumers that the goods are opthalmic lubricants that will not blur vision."

The Board saw things differently. It found that NIGHT & DAY has a "double connotation or significance in that it evokes the famous Cole Porter song 'Night and Day.'" Because of this "double meaning," the mark:

"indicates more than a mere description or feature of applicant's opthalmic lubricants. The immediate impression evoked by this mark prompts an association with the song 'Night and Day.' Even absent the song, the mark has a double connotation due to the expression 'night and day' as used in, for example, 'I've been working night and day.'"

Therefore the Board concluded that NIGHT & DAY is not merely descriptive of Applicant's goods.

Cole Porter

TTABlog comment: What's going on here? Where's the proof that "Night and Day" is a "famous" song? And what's the test for fame in this context? What percentage of today's population even knows who Cole Porter is? Didn't this Board panel step out of bounds here by substituting its own knowledge and experience for evidence? When the phrase "night and day" is considered not in the abstract, but in connection with Ocusoft's goods, isn't the primary meaning the descriptive one?

As to the Board's reference to "I've been working night and day," I just don't get it. How is that different from Ocusoft's use of the phrase?

TTABlog wisecrack: What's next, I wonder? BEGIN THE BEGUINE deodorant? YOU'RE THE TOP hair spray? IN THE STILL OF THE NIGHT facial cream? Etc., etc.

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

Thursday, June 16, 2005

Finding Motorcycles and Tires Related, TTAB Sustains 2(d) Opposition To "SHADOW" Mark

American Honda rolled to victory over tire maker TBC Corp. in its opposition to registration of the mark SHADOW for tires. American Honda Motor Co. v. TBC Corp., Opposition No. 91121151 (May 31, 2005) [not citable]. The Board found the mark likely to cause confusion with the identical mark registered by Honda Motor Co., and used by exclusive licensee American Honda, for motorcycles and structural parts therefor.

Shadow Aero

The Board first dealt with several procedural issues. American Honda argued that TBC "admitted" likelihood of confusion because it opposed a third-party's application by arguing that marks used for motorcycles and tires are likely to cause confusion. The Board noted, however, that a party's position on likelihood of confusion in another proceeding is not binding on the Board, "but rather is merely illuminative of the shade and tone in the total picture." The Board must still decide the case on the entire record.

TBC asserted that American Honda was estopped from asserting likelihood of confusion because Honda had reached an agreement with TBC in Canada, allowing TBC's registration of SHADOW for tires. But the Board pointed out that the right to object in this country is "completely independent of the respective foreign trademark rights of the parties."

TBC Corporation
Palm Beach Gardens, Florida

Turning to the issue of priority, the Board ruled that American Honda could not rely on the Section 7(b) presumptions that are accorded a federal registration because it was not the owner of the registration. Therefore it had to prove prior use of the SHADOW mark, which it did with little difficulty.

Because the marks at issue are identical, "there need be only a viable relationship between the respective goods in order to find that a likelihood of confusion exists." Here, TBC's tires and American Honda's motorcycles are related products. Although TBC actually sells automobile tires under the opposed mark, its application is not restricted to any particular type of tire, and so the Board must assume that motorcycle tires are included. Motorcycles and motorcycle tires are "clearly complementary products that are purchased by a common class of consumers."

"Persons familiar with opposer's SHADOW motorcycles, upon encountering applicant's SHADOW tires, may well believe that such tires are designed for use on opposer's SHADOW motorcycles."

TBC's arguments regarding the weakness of the mark SHADOW in view of third-party registrations, the sophistication of purchasers, and the lack of actual confusion, all hit a dead end, and the Board raised its checkered flag for American Honda.

TTABlog comment: Noteworthy is the absence of proof that any company sells motorcycles and tires under the same trademark.

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

Wednesday, June 15, 2005

TTAB Finds "LEMONLAW.COM" Merely Informational, Generic For Legal Services

The Board squeezed the juice out of a Pennsylvania law firm's attempt to register LEMONLAW.COM as a service mark for "legal services." In re Kimmel & Silverman, P.C., Serial No. 76233689 (May 25, 2005) [not citable]. Not only did the firm's specimen advertisements fail to show proper use of the term as a mark, but the Board also found the term to be generic, and if not generic, devoid of secondary meaning.


The Board first affirmed the refusal under Sections 1, 2, 3, and 45 of the Trademark Act because the specimens of use "do not show LEMONLAW.COM as a mark but only as an element of what would be perceived as informational matter, i.e., a listing of applicant's www.lemonlaw.com web site address." Noting the size and placement of the alleged "mark," the Board agreed with the PTO that In re Eilberg, 49 USPQ2d 1955 (TTAB 1998), is controlling.

As to genericness, the Board found, based on the record evidence, that "lawyers and laypersons alike considering the term 'lemon law' in conjunction with the class or genus 'legal services' will immediately consider it to be the name of a field of law as well as a legal practice specialty." Although "legal services" may encompass a broad range of legal practice specialties, that does not render the term "non-generic" for the practice of lemon law. See In re CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB 2002) [BONDS.COM generic for financial information services].

Applicant argued that LEMONLAW.COM is similar to 1-888-M-A-T-R-E-S-S, found to be non-generic in In re Dial-A-Mattress Operating Corp., 57 USPQ2d 1807 (Fed. Cir. 2001). But the Board disagreed, noting that, under Board precedent, LEMONLAW.COM is a compound word whereas 1-888-M-A-T-R-E-S-S is "conceptually closer to a phrase." See In re Martin Container, Inc., 65 USPQ2d 1058 (TTAB 2002). Under In re Gould, 5 USPQ2d 1110 (Fed. Cir. 1987), the PTO carried its burden of proving genericness of a compound word by means of evidence of the genericness of the components "lemon law" and ".com".

www.lemonlaw.com

For the sake of completeness, assuming arguendo that the term at issue were merely descriptive, the Board also considered Applicant's Section 2(f) claim of acquired distinctiveness. The law firm offered a statutory 5-year declaration of use, and pointed to its ownership of a federal registration for 1-800-LEMON-LAW. As to the former, the Board noted that the declaration was not direct evidence of distinctiveness, but merely allows an inference of secondary meaning, an inference the Board refused to make. As to the prior registered mark, it is not the legal equivalent of the term at issue here, and therefore no "transfer" of secondary meaning is appropriate. (Compare In re Dial-A-Mattress, supra.)

TTABlog comment: On the genericness issue, see also the recent citable Board decision (blogged here) in In re Eddie Z's Blinds and Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005), finding BLINDSANDDRAPERY.COM to be generic.

TTABlog query: Ok, we know that lemon law is a legal specialty. What about lime law?

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

Tuesday, June 14, 2005

TTAB Dismisses "RIVER CATS" 2(d) Opposition, Finding Clothing And Seafood Unrelated

The Board made several questionable calls as Opposer Rivercat Foods, Inc. of Folsom, California, struck out in its attempt to prevent the Sacramento River Cats from registering the mark RIVERCATS & Design (shown below) for various clothing items. Rivercat Foods, Inc. v. Sacramento River Cats Baseball Club, LLC, Opposition No. 91150539 (May 24, 2005) [not citable].


Opposer relied on its registration and use of the mark RIVERCAT for seafood and deli meats, pointing to Applicant's admissions that "fast foods such as hot dogs and other sandwiches are served at Applicant's baseball stadium events," and that "the dominant portion of both marks sounds the same when spoken."


The Board found the marks to be, rather than quite similar, merely "more similar than dissimilar." It made the curious statement that, as applied to Applicant's goods, the term "rivercat" is "likely to be perceived as the name of applicant's baseball team," while as to Opposer's food products the connotation is "not clear, but we cannot conclude on this record that it has anything to do with baseball." [The TTABlog wonders why the word "rivercat" wouldn't have the same connotation for all the goods involved? There is nothing in Applicant's identification of goods that limits its clothing items to sales in connection with a baseball team. Nor is there anything inherent in the term "rivercat" that suggests baseball.]


In any case, the differences in the involved goods proved to be dispositive. The Board assumed that Opposer's food products might be offered for sale at Applicant's baseball games, and thus that the trade channels for Opposer's food items and Applicant's goods are "potentially overlapping." However, the record was devoid of evidence that attendees at baseball games "are likely to assume that a source, sponsorship or other connection exists between the clothing items that applicant sells at its baseball stadium and opposer's food products." [The TTABlog asks why the Board limited its consideration to clothing sold at baseball games? There is no such "baseball" limitation in either Applicant's identification of goods or in Opposer's registration. Shouldn't the Board consider all normal channels of trade for clothing and food items, and evaluate relatedness in that context?]

"There is no evidence in the record from which we might infer or conclude that baseball teams typically use, or license or otherwise allow others to use, their team names as trademarks on food products, or that the relevant purchasers are aware of such practice if it exists."

The Board concluded that despite the similarity of the marks and the overlap in channels of trade and classes of purchasers, "the goods themselves are simply too dissimilar and unrelated to support a finding of likelihood of confusion."

TTABlog trivia question: The Sacramento River Cats are a Triple-A affiliate of the Oakland A's. Can you name two former Oakland A's pitchers with "cat" nicknames? Hint: both had the first name "James."


TTABlog P.S.: My Boston buddy, Doug Wolf, has come up with a third A's pitcher with a "cat" nickname. First name isn't James, however, but Steve.

14876

TTABlog comment: Apparently Opposer was unaware of this product:


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

Monday, June 13, 2005

TTAB Confuses Snow White With Cinderella. Harmless Error?

My Foley Hoag colleague, Charles Weinstein, just pointed out to me that the "Mirror, mirror on the wall" phrase is from Snow White, not Cinderella. Both the Board and the Applicant got it wrong in In re Glaze, Inc., blogged here.

snowwhitequeenmirror
The evil queen

As my law school professor, Benjamin Kaplan, used to say, a lawyer's job is to wash everything in cynical acid -- even fairytales. Thank goodness Charles was on duty.

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

TTABlog Answer To "Double Positive" Quiz

TTABlog quiz: We all know that a double negative produces a positive, right? E.g., "not unfriendly" or "not unusual." Can you think of a double positive that yields a negative? Answer below:


The late Sidney Morgenbesser, Professor of Philosophy at Columbia University, was renowned for his quick wit. According to the NY Times obituary:

"The most widely circulated tale — in many renditions it is even presented as a joke, not the true story that it is — was his encounter with the Oxford philosopher J. L. Austin. During a talk on the philosophy of language at Columbia in the 50’s, Austin noted that while a double negative amounts to a positive, never does a double positive amount to a negative.From the audience, a familiar nasal voice muttered a dismissive, 'Yeah, yeah.'"

Other versions of this scenario may be found on the Internet, typically featuring a wise-acre college student replying to the "double positive" question with the response, "yeah, right!"

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

Friday, June 10, 2005

TTAB Finds "MIRROR MIRROR" Merely Descriptive Of A Double Mirror

The Board spent little time reflecting on Applicant's arguments before finding the mark MIRROR MIRROR merely descriptive of a "double mirror with arm extension." In re Glaze, Inc., Serial No. 76528004 (May 31, 2005) [not citable]. Oddly, Applicant Glaze disclaimed the "second" MIRROR apart from the mark as shown.

example of intended product

Glaze argued that the disclaimer of the second MIRROR makes the mark as a whole less descriptive, and further that MIRROR MIRROR has a "bizarre meaning." The Board, however, found that MIRROR is descriptive of Applicant's goods, and that MIRROR MIRROR "is equally descriptive ... and the disclaimer does not render the mark any less descriptive." As to the supposed "bizarre meaning," the Board noted that Glaze failed to point out what that meaning might be.

In support of its ruling, the Board quoted In re Disk Jockeys Inc., 23 USPQ2d 1715 (TTAB 1992), wherein the mark DJDJ was found to be merely descriptive of disk jockey services:

"If one were to express the view that milk was 'creamy creamy' or that a red bicycle was 'red red' or that a razor was 'sharp sharp', the repetition of the words 'creamy', 'red' and 'sharp' would be understood as emphasis and the combinations of these words would not, simply because of their repetition, be rendered something more than descriptive. Nothing new or different is imparted by the simple repetition of the descriptive expression DJ. Thus the composite is, in our view, equally descriptive as used in connection with the identified services."

Glaze had one arrow left in its quiver, but again it missed the mark. It contended that "purchasers may associate MIRROR MIRROR with the chant in the Cinderella fairytale of 'Mirror mirror on the wall ....'" The Board was not moved: "even assuming that purchasers would associate the chant in the Cinderella fairytale with applicant's goods, the primary meaning of MIRROR MIRROR in the context of applicant's goods is that of a double mirror."

Cinderella

TTABlog musings: Is MIRROR MIRROR generic for mirrors? Would such a finding require proof of actual use of the term "mirror mirror" by others, under the applicable genericness test for phrases? Even if not generic, is the phrase so descriptive as to be incapable of acquiring secondary meaning?

TTABlog quiz: We all know that a double negative produces a positive, right? E.g., "not unfriendly" or "not unusual." Can you think of a double positive that yields a negative? Answer on Monday.

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

Thursday, June 09, 2005

TTAB Curiously Says "CONTACT YOGA" Not Merely Descriptive Of Exercise Mats

Remember Lynda Guber? In April, the TTAB ruled that her mark CONTACT YOGA was merely descriptive of publications on the subject of meditation and exercise (YOGA disclaimed). In re Guber, Serial No. 76469243 (April 22, 2005) [not citable]. See TTABlog posting here.

Lynda Guber

The very same Board panel has now ruled on another Guber application, this time finding the CONTACT YOGA mark not merely descriptive of "personal exercise mats, exercise blocks and exercise straps" (YOGA disclaimed). In re Guber, Serial No. 76469246 (June 1, 2005) [not citable].

A review of the file histories of these two applications indicates that the PTO's evidence was identical in both this and the prior Guber case. [The same Examining Attorney issued both final refusals.] In the second case, however, the Board minimized the significance of that evidence: "the Examining Attorney has made of record just two articles and one advertisement." Judge Hanak referred to this evidence as "meager," and asserted that:

"The Examining Attorney has simply not presented any evidence showing that the term "contact yoga" is used to describe any goods that persons may utilize when they practice contact yoga, including exercise mats, blocks or straps."

I have two problems with that statement: first, in the prior Guber decision, there was no evidence of use of CONTACT YOGA for publications, yet the refusal was affirmed; second, the issue here is mere descriptiveness, not genericness, and proof of use of the phrase at issue is not required.

In the second case, the Board went on to note that Applicant's goods may be used for various sports and exercise routines. So what? They certainly may be used for contact yoga, and that's what matters.

Judge Hanak continued:

"To be blunt, the Examining Attorney has never articulated, much less demonstrated, how applicant's mark CONTACT YOGA conveys any information about the qualities or characteristics of exercise mats, exercise blocks or exercise straps with the required 'degree of particularity.'"

Again, this writer suggests that Judge Hanak is not applying the correct test. The phrase "contact yoga" may not describe a "quality" or "characteristic" of exercise mats, but it certainly describes an end use for the goods. See TMEP Sec. 1209.03(p)(3); In re Wallyball, Inc., 222 USPQ 87 (TTAB 1984) [WALLYBALL held descriptive of sports clothing and game equipment]; In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977) [BURGER held merely descriptive of cooking utensils].

Would Judge Hanak find "wrestling" or "aerobics" not merely descriptive of exercise mats? Shouldn't competitors be free to use the term "contact yoga" in connection with exercise mats, without fear of an infringement charge?

In sum, the TTABlog is at a loss to reconcile these two decisions. Maybe they were written by two different interlocutory attorneys. In any event, I think the Board got it right the first time.

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

Wednesday, June 08, 2005

TTAB Affirms Rejection of Materially Altered Drawing For "SPACE ADVENTURES" Design Mark

The Board affirmed a refusal to register the mark SPACE ADVENTURES & Design, shown immediately below, because that mark, submitted in an amended drawing, is a material alteration of the mark as originally filed. In re Space Adventures, Ltd. , Serial No. 76391912 (May 26, 2005) [not citable].

amended drawing

The original drawing depicted the mark as follows:

original drawing

The Examining Attorney contended that the amendment "materially alters the character of the mark" under Rule 2.72: the "proposed drawing eliminates all reference to the moon design that helped form the letter 'A' in the term 'SPACE' which the Examining Attorney describes as a 'non-generic, distinctive element.'" According to the Examining Attorney:

"The moon design reinforces the 'out of this world' commercial impression formed by the totality of the original mark. In addition, the moon design assisted in creating the predominant term, SPACE, and was reinforced as the visual center of the mark. It appeared in the center of the mark, in the predominant term of the mark and was framed by the high arching line of the letter 'A,' just like a picture frame highlights a picture."

Space Adventures, Ltd. argued that the horizontal line, not the moon design, forms the letter "A" and that the moon is merely background and is not an essential feature of the mark.

Having fun at zero gravity

The Board observed that the "touchstone for permissible amendments to the mark is that the mark retains the same overall commercial impression." After reviewing several prior decisions, the Board ruled that the mark in the amended drawing "would be a material alteration of the mark in the original drawing."

"We cannot say that the presence of the moon in the center of applicant's mark is a simple, background design, nor is it a generic, non-distinctive design element. Instead, it is prominently located in the center of the largest letter in applicant's design that is in the center of the mark. The moon design in the context of the words 'Space Adventures' is an eye-catching design that fills a space that would otherwise be void and reinforces the 'Space Adventures' theme of the mark."

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

Tuesday, June 07, 2005

TTAB Reverses Flow Of "PEARL RIVER" 2(d) Refusal

The Board reversed a Section 2(d) refusal to register PEARL RIVER for "retail department store services, featuring traditional Chinese goods," finding the mark not likely to cause confusion with the registered mark PEARL RIVERS for "mother of pearl jewelry" (PEARL disclaimed). In re Pearl River Chinese Products Emporium, Inc. , Serial No. 75406111 (May 26, 2005) [not citable].

PEARL RIVER department store
Canal & Broadway, NYC

As to the marks, the Board found that "the meanings of the marks differ to consumers." Applicant's mark is likely to be seen as a reference to the Pearl River in China. The registered mark (which may suggest an individual's name) "would likely refer to the composition of the pearl jewelry and to rivers where pearls are found." Thus the registered mark has a suggestive meaning and is not entitled to a broad scope of protection.

With regard to the relatedness of the goods and services, the Board agreed with applicant that "there is no 'under the same roof' rule that all products with similar marks sold in one store will cause confusion." Likewise, "there is no per se rule that confusion is likely simply because the marks involved concern department store services and an item that could be sold in a department store." While the Board did not disagree with the Examining Attorney's contention that Chinese department stores may sell jewelry, it could not find on this record that the goods and services involved are closely related.


PEARL RIVERS mother of pearl

The Examining Attorney submitted two third-party registrations (owned by I. Magnin's and Dillard's) that cover department store services and jewelry, as well as other third-party registrations for department store services featuring, inter alia, the sale of jewelry as part of those services. The Board noted that the latter registrations do not support the argument that "department stores use the same mark for the department store services and as a house mark for jewelry sold in the store." As to the former two registrations, they are "not sufficient for us to make such a finding."

Balancing the du Pont factors, the Board held that confusion is not likely.

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

Monday, June 06, 2005

Distinguishing Land's End and Dell, TTAB Affirms Refusal To Register Based On Failure To Provide Proper Specimen Of Use

The Board affirmed a refusal to register the mark ALL-IN-ONE ATM for automated teller machines (ATM disclaimed) because Applicant Cash Systems, Inc. failed to provide a proper specimen of use. In re Cash Systems, Inc. , Serial No. 76461663 (May 23, 2005) [not citable].

Cash Systems specimen
Click on photo for larger picture

The Board found that Cash Systems' advertisement, shown above, satisfied two of the three requirements of Land's End v. Manbeck, 24 USPQ2d 1314 (E.D. Va. 1992): it includes a picture of the relevant goods, and it shows the mark sufficiently near the goods to associate the mark with the goods. However, the third requirement -- that it include information necessary to order the goods -- was not met.

The Board contrasted the instant situation with those of Land's End and In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004). In the former, Land's End's catalog page allowed the consumer to "identify a listing and make a decision to purchaser by filling out a sales form and sending it in or by calling in a purchase by phone." In the latter, the Board observed that the Dell webpage provided a link for ordering the goods.

Dell QUITECASE specimen
Click on photo for larger picture

Here, however, Cash Systems offered to provide more information via a phone number, an e-mail address, or a website address. However, no mention is made of ordering the goods, and no price is given.

"Applicant's specimen does not lead to 'a decision to purchase by filling out the sales form and sending it in or by calling in a purchase by phone.' *** Here, Applicant's specimen like most advertising simply attracts a prospective purchaser's attention and encourages the purchaser to obtain more information."

A proper specimen must be "calculated to consummate a sale." "The simple addition of a phone number or a web address to an advertisement containing some product specifications does not automatically convert mere advertising into displays associated with the goods."

The Board concluded that Cash Systems' specimen is not calculated to consummate a sale, and therefore the Board affirmed the refusal to register.

TTABlog comment: Sorry, but I still don't think the Dell webpage is a proper specimen of use. The phrase "QuietCase(TM) acoustic environment" is buried in one of several bullet points, and hardly leaps off the page and grabs the reader. And what is an "acoustic environment," anyway?

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

Friday, June 03, 2005

Light Blogging Ahead For TTABlog

Dear Readers: the TTABlogger is still on the road, and blogging will be sporadic for the next few days. Ciao!


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