Bizarre Appeal Charges TTAB With Destroying Al Qaeda-Related Evidence

In one of the strangest TTAB cases in years, Jet Airways, Inc. of Bethesda, Maryland, has appealed to the CAFC from a TTAB interlocutory order striking the company's "Response" to a Petition for Cancellation filed by an Indian company, Jet Enterprises Pvt. Ltd. The Petitioner seeks to cancel on Section 2(d) grounds, U.S. Registration No. 2,839,676 for the mark JET AIRWAYS & Design (shown immediately below) for various air transportation services ("JET AIRWAYS" disclaimed). (Cancellation No. 92044201).

Petitioner's own applications to register the mark JET AIRWAYS THE JOY OF FLYING & Design ("JET AIRWAYS" disclaimed) have been blocked by the challenged registration, leading to the filing of the cancellation petition, in which Petitioner alleged priority of use and likelihood of confusion.


Registrant, in its 25-page pro se "Response," ignored the specific allegations of the Petition To Cancel, and instead asserted, inter alia, that the petition:

"is an attempt by a terrorist group to gain a foothold into the United States by obtaining permission to operate an international airlines which can fly in to the United States for evil intentions through the issuance of a trademark. Petitioner Jet Airways (India) Ltd. will become a commuter airline for Al Qaeda if granted the Registrant's JET AIRWAYS trademark and landing rights." (page 24).

Petitioner moved to strike the "Response" on the ground that it failed to properly address the allegations of the Petition To Cancel, contained irrelevant and impertinent matter, and failed to comply with the Rules of Procedure. The Board, through the assigned Interlocutory Attorney, agreed. On June 23, 2005, it issued an Order striking the "Response" and allowing Registrant 30 days to file "an amended answer that conforms" with the applicable rules. The Interlocutory Attorney also gave Registrant some advice:

"The Board notes that in its original answer, respondent raises numerous assertions that fall outside the Board's narrow jurisdiction. Respondent is advised that the Board will not consider any allegations touching on matters not within our jurisdiction." (page 5).

On July 7, 2005, Jet Airways, Inc. filed a lengthy Notice of Appeal from the Board's Order (docketed July 19, 2005 as CAFC Appeal No. 05-1473), alleging that the Order violated various federal laws and denied "her" (i.e., Nancy M. Heckerman, Appellant's president) constitutional rights by "removing, mutilating, obliterating, or destroying all pleadings and evidence contained in" its Response, evidence "which proved that the Petitioner in this cause, Jet Enterprises Pvt. Ltd., was, and still is, directly and indirectly linked to Al Qaeda, a known Enemy of the United States." (pages 3-4). It also asserts that "a great amount of injury will be released upon the United States by the Petitioner Jet Enterprises Pvt. Ltd. if it is allowed to steal the Appellant's American Registered trademark in order to enter the U.S. and operate its Al Qaeda jihad airline." (page 4).

According to Appellant, by destroying these documents the "officers of the TTAB have violated their Oath of Office and thus, the Constitution of the United States, to support a known terrorist organization," and have committed "treason against the United States." (pages 4, 12).

The Board has now suspended the cancellation proceeding pending the outcome of the CAFC appeal.


TTABlog comments: At the heart of the CAFC appeal is Appellant's erroneous belief that, because the TTAB granted the motion to strike the Response to the Petition to Cancel, the documents that comprised the response were actually destroyed. In fact, the Response (including the exhibits) is publicly available for viewing and downloading at the TTABVUE website. For that reason alone, the appeal seems doomed.

Apparently the boundaries of this controversy are not limited to the TTAB. A press release available at Petitioner's website states that "Ms. Nancy Heckerman had made scandalous, scurrilous and baseless allegations regarding alleged links of Jet Airways (India) Limited with undesirables in a letter of objection to the US Department of Transportation," and that the Indian company has engaged the services of a leading American law firm "to initiate legal charges against the President & CEO, Ms. Nancy Heckerman of Jet Airways Inc."

TTABlog update: The appeal to the CAFC was dismissed on February 10, 2006, without opinion.

Text Copyright John L. Welch 2005.

TTAB Sustains 2(d) Opposition to "A thru Z Advantage" for Nutritional Supplements

Sustaining a Section 2(d) opposition to registration of the mark A THRU Z ADVANTAGE (in the stylized form shown immediately below) for "dietary and nutritional supplements," the TTAB found the mark likely to cause confusion with the registered mark FROM A TO ZINC for "vitamin and mineral preparations." Wyeth Holdings Corp. v. Walgreen Co., Opposition No. 91151171 (June 21, 2005) [not citable].

Applicant Walgreen took no testimony and offered no evidence, but it did file a brief in which it made "a number of factual assertions." However, those assertions were not supported by any evidence, and thus they were essentially ignored by the Board.

The Board found the involved goods to be legally identical for Section 2(d) purposes, since Opposer's goods "are included within the scope of Applicant's broadly identified goods." Because there are no limitations on the channels of trade, the Board was required to assume that they move in the same, normal channels of trade to the same class of purchasers. In any case, Walgreen admitted that Wyeth's goods may be sold at its stores.


The Board noted that when the goods are identical, a lesser degree of similarity between the marks is required to support a finding of likely confusion. Walgreen contended that the difference between the marks is the single du Pont factor that outweighs all others. The panel disagreed.

The Board considered "significant" the similarity in usage of "A" and "Z" to "A" and "ZINC." Moreover,

"[t]he connotation of the 'A THRU Z' portion of applicant's mark draws from the same well as opposer's FROM A TO ZINC mark. They convey the same general idea and stimulate the same mental reaction, namely, that the products run the full gamut of nutrients."

It observed that "similarity of connotation or commercial impression alone is sufficient to support a finding of likelihood of confusion ... even if the marks exhibit aural and optical dissimilarity when they convey the same general idea or stimulate the same mental reaction."

The Board found the "A THRU Z" portion of Walgreen's mark to be the most prominent element, given the size of the "A" and "Z" and the position of "A THRU Z," and it concluded that "the similarities between the marks outweigh any points of dissimilarity."

Finally, Walgreen admitted in its brief that Wyeth's mark is "fairly well known." The Board therefore considered FROM A TO ZINC to be a strong mark entitled to a broad scope of protection.

Considering all the du Pont factors, the Board ruled that "a likelihood of confusion exists."

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

"MICROCELL" Merely Descriptive of Small Fuel Cells, Says TTAB

The Board wasted little energy in affirming a Section 2(e)(1) refusal to register the mark MICROCELL, finding it merely descriptive of "power source and energy supply devices, namely, fibrous fuel cells, fibrous batteries, and energy storage fuel cells." In re Microcell Corp., Serial No. 75931410 (July 13, 2005) [not citable].


Applicant Microcell Corporation offered a battery of arguments that were non-starters: that its goods are not necessarily "micro" in size; that the words "micro" and "cell" have a multiplicity of meanings (e.g., "trivial and slight" and "a small room where a prisoner is kept"); that the mark requires "mature thought" to "determine the involved goods;" that its goods are not small in size; and that there is no evidence that others in the field use the word descriptively.

Examining Attorney Heather D. Thompson, who played a leading role in Monday's TTABlog posting, again relied on her handy American Heritage Dictionary for definitions of "micro" (small scale) and "cell" (a single unit for electrolysis or conversion of chemical into electrical energy); on NEXIS database excerpts containing the word "microcell"; on Microcell's s website (referring to "compact fuel cells"); and on its statement that "Essentially more energy can be produced from a smaller compartment."

The Board, for the umpteenth time, pointed out that the determination of mere descriptiveness is not to be made in a vacuum, but in relation to the involved goods:

"Consequently, '[w]hether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.' In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). Rather, the question is whether someone who knows what the goods or services are will understand the term or phrase to convey information about them."

The Board agreed with the PTO that MICROCELL immediately and directly conveys information about a significant feature of the involved goods: "that applicant's fuel cells are compact, offering more energy from a smaller compartment, and/or can literally be small in size." It found that Microcell's identification of goods "is broad such that it encompasses small fuel cells or fuel cells with small, compact compartments."


Finally, the Board observed once again that even if Applicant were the first or and/only user of the term MICROCELL in relation to its goods, the term is still merely descriptive. "[A]pplicant's competitors would have a competitive need to use this term."

TTABlog comment: I suppose that if one considered the word "microcell" in the abstract, one might think it referred to a tiny cage for incarceration of a wee insect.

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

TTAB Affirms Refusal to Register Bose Speaker Shape (Again)

Bose Corporation hit another dead end in its nearly thirty-year quest to register as a trademark the product configuration shown below for "speaker systems." In re Bose Corp., Serial No. 74734496 (July 12, 2005) [not citable]. Bose eloquently described the configuration as "an enclosure and its image of substantially pentagonal cross section with a substantially pentagonal-shaped top with a curved front edge parallel to a substantially pentagonal-shaped bottom with a curved front edge."


The Examining Attorney refused registration on, inter alia, the following three grounds: (1) that the subject application (filed on September 26, 1995) is barred by res judicata (claim preclusion) in light of Bose's previous failed attempt to register the same mark for the same goods; (2) that even if claim preclusion does not apply, the proposed mark is de jure functional and unregistrable; and (3) even if registration were not barred under one of the first two grounds, Bose's evidence of acquired distinctiveness under Section 2(f) is insufficient. The Board affirmed the PTO on the first two grounds but, for the sake of completeness, considered the third ground and reversed the PTO's finding regarding acquired distinctiveness.

Res judicata: In 1977, Bose filed Application Serial No. 73127803 for the mark shown below left for "loudspeaker systems." In 1985, the U.S. Court of Appeals for the Federal Circuit deemed that shape to be functional and unregistrable because it was a "superior design." Bose here argued that the factual situation is now different because "the prior adjudication did not include a clear and concise description of the mark limiting the mark to the top and bottom having a curved front edge." Bose also contended that it had not been possible "to state in the prior application that there was no use by others of anything resembling the mark since 1976, a period of nearly 27 years, additional evidence of absence of functionality."

The Board found the first argument to be "disingenuous" because the curved front edge of the configuration has not changed, even though it was not specifically described in the first application. In fact the Court of Appeals noted that the "front edge is bowed."

As to the second argument, Bose contended that this case should be treated exactly like In re Honeywell, Inc., 8 USPQ2d 1600 (TTAB 1988), in which the Board refused to apply claim preclusion vis-a-vis Honeywell's circular thermostat design due to what had "happened in the marketplace" in the seventeen years after registration was refused. The Board, however, found two important factual distinctions between that case and this: first, the later Honeywell configuration differed from the earlier one; and second, the round thermostat configuration was chosen for source-identifying purposes, whereas here "the pentagonal shape is a clear derivative of the angled rear panels that are integral to the utility patents herein."

De jure functionality: Assuming arguendo that claim preclusion did not apply, the Board found that Bose's product configuration is de jure functional and unregistrable. Applying the time-honored Morton-Norwich factors, the Board saw the most important factor to be the first one: Bose owns two expired utility patents that "repeatedly disclose the utilitarian advantages of this particular configuration."

Fig. 10, U.S. Patent 4,146,745
As to the second factor, Bose's advertisements "tout the utilitarian advantages of the product design."

With regard to the third factor, "the availability to competitors of feasible alternative designs -- i.e., whether the design is superior to other designs," the Board cited TrafFix in asserting that detailed speculation about other designs was unnecessary because "[t]he pentagonal shape ... and the precise placement of the back panels ... are the reasons applicant claims the device works as it does." Bose suggested that the angled back panels could be fitted into, say, a triangular or an octagonal speaker enclosure, but the Board noted that such a design-around "would result in increased costs and major inefficiencies in the manufacturing and shipping processes."

As to the fourth Morton-Norwich factor -- whether the design results from a comparatively simple or inexpensive method of manufacture -- the Board noted that Bose's own utility patent states that the configuration "is compact and relatively easy and inexpensive to manufacture."

The Board concluded that all four Morton-Norwich factors weigh against Bose, and it therefore found the design at issue to be de jure functional.

Acquired distinctiveness: Noting its own determination in 1983 that the Bose design had acquired de facto secondary meaning, and noting that Bose has subsequently racked up twenty-two more years of promotion and exclusive use of the design, the Board reversed the PTO's Section 2(f) determination. Thus if Bose can obtain reversal of the res judicata and functionality rulings, it will be entitled to registration of the subject design.


TTABlog note: Bose's request for reconsideration was denied on October 4, 2005. An appeal to the CAFC was docketed on January 12, 2006 as Appeal No. 06-1173.

TTABlog comment: The Board pointed out in a footnote that Bose owns Registration No. 992,282, issued in 1974, for the pentagonal design shown below for "loudspeaker systems." This design appears to have a straight, rather than curved, front edge. Apparently, the PTO did not deem this design to be de jure functional. One wonders why.


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

TTAB Finds "PRINCETON PHARMACEUTICAL PRODUCTS" Geographically Descriptive

Bristol-Myers Squibb ran into a New Jersey barrier in its attempt to overcome the PTO's refusal to register the mark PRINCETON PHARMACEUTICAL PRODUCTS for a "house mark for a line of pharmaceutical preparations." The Board affirmed the Section 2(e)(2) refusal, finding the mark to be primarily geographically descriptive. In re Bristol-Myers Squibb Co., Serial No. 78222332 (July 15, 2005) [not citable].

Nassau Hall
The Board observed that a mark is primarily geographically descriptive if: "(1) the mark's primary significance is a generally known geographic location; and (2) ... the relevant public would be likely to make a goods/place association, i.e., would be likely to think that the goods originate (or will originate) in the place named in the mark."

Examining Attorney Heather D. Thompson submitted an American Heritage Dictionary entry identifying Princeton as a "borough of central New Jersey north-northeast of Trenton," and as "the seat of Princeton University." Bristol-Myers did not deny that Princeton is a generally known geographic place. Instead, it contended that the primary significance of Princeton is its association with Princeton University, as well as with other "esteemed educational institutions." The Board, however, agreed with the PTO that Princeton is "first and foremost" a geographic location. "To the extent that 'Princeton' does evoke an association with educational centers and institutions, that meaning is geographic as well." The addition of the generic and/or merely descriptive term PHARMACEUTICAL PRODUCTS does not overcome the primarily geographic significance of the mark as a whole.


As to the second prong of the test, the Examining Attorney argued that purchasers are likely to believe that the goods will originate (it was an I-T-U application) in Princeton because (1) Bristol-Myers researches and develops drugs in Princeton, and (2) Princeton is known for pharmaceutical products and companies. The Examining Attorney had asked Applicant whether the goods would be produced in, or have some other connection with, Princeton, but Applicant's response was "evasive." Although the Examining Attorney did not pursue that question, the Board nonetheless found that the uncontroverted evidence "shows that the goods do or will in fact come from Princeton."

"Even if applicant's 'PRINCETON' line of pharmaceuticals is or will not be actually manufactured in Princeton.... Clearly, the record shows that a public association is likely between applicant's goods and Princeton, New Jersey, in view of the fact that, at a minimum, applicant has a pharmaceutical research facility and moreover its pharmaceutical research headquarters there."

In addition, Applicant's own evidence showed that Princeton is the home of numerous national and international corporate research centers and headquarters.

The Board therefore found that the PTO had satisfied the second prong of the test: that the public is likely to believe that Applicant's products emanate from Princeton, New Jersey.

Bristol-Myers Squibb research facilityPrinceton, New Jersey
Bristol-Myers pointed to its incontestable Registration for the same mark for "analgesics and anti-inflammatory pharmaceutical preparations," but the Board noted that the current identification of goods is broader and that "[o]wnership of an incontestable registration does not give applicant a right to register the same mark for different goods."

Applicant also pointed to a now-cancelled registration for the same mark for the same goods as in the current application, but again Bristol-Myers struck out:

"A cancelled registration is not entitled to any of the statutory presumptions of Section 7(b) of the Trademark Act. See, e.g. In re Hunter Publishing Co., 204 USPQ 957, 963 (TTAB 1979) (cancellation 'destroys the Section [7(b)] presumptions and makes the question of registrability "a whole new ball game" which must be predicated on current thought).'"

The Board's "current thought" is that the house mark PRINCETON PHARMACEUTICAL PRODUCTS is primarily geographically descriptive, and therefore the Board affirmed the refusal to register.

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

TTAB Affirms Surname Refusal of "PICCHIOTTI" for Jewelry

Well, here we go again with another Italian surname case, but this time the Board got it right. It affirmed a Section 2(e)(4) refusal to register the mark PICCHIOTTI for jewelry and related goods. In re Messrs. Picchiotti S.r.l., Serial No. 76476489 (June 24, 2005) [not citable].


Examining Attorney Hannah Fisher relied on database search results revealing 36 residential listings for the surname Picchiotti, as well as on 4 NEXIS excerpts mentioning people with that surname. Another NEXIS excerpt referred to Giuseppe Picchiotti as owner of Applicant. She also submitted "negative" dictionary evidence in the form of pages from two dictionaries, neither of which included an entry for the word "picchiotti."

Applicant Messrs. Picchiotti S.r.l. contended that the PTO's evidence showed PICCHIOTTI to be a rare surname, "and thus it would not be perceived by the public as a surname." It argued that extensive use of the mark and, oddly, the fact that its mark is registered in many other countries proves that PICCHIOTTI has meaning other than as a surname. And, of course, it urged the PTO to resolve any doubt in its favor.

The Board applied once again the standard Section 2(e)(4) test of In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995), which requires consideration of four factors:

1. the degree of a surname's rareness;
2. whether anyone connected with applicant has that surname;
3. whether the word has any recognized meaning other than that of a surname; and
4. the structure and pronunciation or "look and sound" of the surname.

The Board agreed that, on this record, PICCHIOTTI must be considered a rare surname. As to the second factor, however, Applicant conceded that "someone connected with applicant has the subject term as a surname." In addition, the appearance of the word PICCHIOTTI in Applicant's company name "makes apparent its surname significance." That factor obviously weighed against Applicant.

musician Mark Picchiotti
Applicant's contention that the term has another meaning because of extensive sales under the mark and because of foreign registrations cut no ice with the Board: Applicant did not seek registration under Section 2(f), and so the extent of use of the term is irrelevant; ownership of foreign registrations is likewise irrelevant to registration of a surname in the United States.

Finally, as to "look and sound," the Board recognized that "this factor is subjective in nature." Without further explanation, it concluded that PICCHIOTTI looks and sounds like a surname.

The Board therefore ruled that the PTO established a prima facie case that PICCHIOTTI is primarily merely a surname, and that Applicant failed to present sufficient evidence to rebut the PTO's case.

TTABlog TTABad pun: A picchiotti of cake for the Board?

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

TTABlog Predicts TTAB Reversal of "DYKES ON BIKES" Refusal

As noted at Marty Schwimmer's Trademark Blog and Patrick Guevara's Bridging The Gap last week, the PTO denied reconsideration of a Section 2(a) refusal to register the mark DYKES ON BIKES for "education and entertainment services in the nature of organizing, conducting, and promoting parade contingents, community festivals, events, street fairs, forums, seminars, parties and rallies to support, organize and motivate women motorcyclists everywhere to do the same, thereby fostering pride in a wide variety of sexual orientations and identities, namely lesbian, bisexual and transgender." (Application Serial No. 78281746). I doubt that the PTO''s refusal will survive an appeal.


The Examining Attorney deemed DYKES ON BIKES unregistrable under Section 2(a) "because the proposed mark consists of or comprises matter which may disparage or bring into contempt or disrepute to [sic] the lesbian, bisexual and transgender communities." Office Action of February 20, 2004. That refusal was made final on October 28, 2004, and on April 28, 2005 Applicant San Francisco Women's Motorcycle Contingent timely filed its notice of appeal along with a request for reconsideration. That request was denied on May 25, 2005. On July 18th, the TTAB issued an order requiring the filing of Applicant's brief on appeal within sixty days -- i.e., on or before September 16, 2005.

The Examining Attorney applied the disparagement test set out in Greyhound Corp v. Both Worlds Inc., 6 USPQ2d 1635 (TTAB 1988): "a disparagement claimant must show that the proposed mark (1) would reasonably be understood as referring to the disparaged party; and (2) is in fact disparaging, that is, would be considered offensive or objectionable by a reasonable person of ordinary sensibilities." Applicant argued that Greyhound [which concerned a design of a defecating greyhound dog, for polo shirts and T-shirt] applied only to commercial entities, and that for a group the proper test is set forth in the TTAB's "REDSKINS" decision, Harjo v. Pro-Football, Inc., 50 USPQ2d 1705 (1999), rev'd on other grounds, Pro-Football, Inc. v. Harjo, 68 USPQ2d 1225 (D.D.C. 2003):

"it is only logical that in deciding whether the matter may be disparaging we look, not to American society as a whole ... but to the view of the referenced group." 50 USPQ2d at 1739 (slip op., p. 100).

The Examining Attorney continued to cite Greyhound in making the refusal final, but she did point out that Applicant's own evidence includes a "dictionary" definition that "makes it clear that the term is offensive to the disparaged party in stating 'DYKE: The edgy alternative to lesbian, though use with caution. Some women (generally those 40 and older) still prefer lesbian and may deem Dyke a slur.'" [See Exhibit C to Applicant's Response of August 20, 2004, a three-page article entitled "The New Queer Dictionary" appearing in the 2004 Official San Francisco Pride Guide].

With its request for reconsideration, Applicant submitted a stack of declarations and exhibits, arguing that "dyke" is not disparaging to the lesbian, bisexual, and transgender communities. The Examining Attorney was not impressed: "The fact that a certain segment of the disparaged group has adopted the term and now seeks to obviate the vulgar context of the term does not overcome the Section 2(a) refusal."


TTABlog comment: Expect reversal of the PTO's refusal to register. The TTAB will surely agree with Applicant that Greyhound is not the proper test for disparagement of a group. The proper test is that of Harjo: whether a substantial composite of individuals in the group (not necessarily a majority) would find the term derogatory. On that point, the record contains a dearth of evidence.

The Examining Attorney submitted definitions of the word "dyke" from various on-line dictionaries (e.g., Merriam-Webster OnLine and Bartleby.com), but do those definitions show how members of the subject group consider the term? The Examining Attorney did cite an entry from "The New Queer Dictionary," but is that a recognized reference work? Even if it is, does that single citation suffice to carry the PTO's burden to establish a prima facie case of disparagement? All that definition says is that "some women (generally those 40 and older) still prefer lesbian and may deem Dyke a slur." [empahsis supplied]. Some may? Is that enough to prove that a "substantial composite" of the group in question considers DYKE disparaging? I don't think so.

Moreover, the Examining Attorney ignored another important point: the mark at issue must be considered in the context of its use. If someone were attempting to register DYKES ON BIKES for products blatantly insulting to the lesbian community, that would be an entirely different situation from this particular Applicant's attempt to register the mark for services offered by and directed to members of the supposedly disparaged group. As stated in Harjo, "the question of disparagement must be considered in relation to the goods or services identified by the mark in the context of the marketplace." (slip op., p. 109). Returning to the definition in "The New Queer Dictionary," would lesbian women 40 and over find disparaging Applicant's use of the word DYKE as part of a service mark for these particular services? Or is that definition referring to use of DYKE in other contexts?

In sum, I expect the TTAB to reverse this refusal to register because the PTO failed to establish a prima facie case that DYKES ON BIKES, when used in connection with Applicant's services, would be considered disparaging by a substantial composite of the relevant community.

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

"DOCSS" And "DOCSSITE" For Document Management Software Not Confusingly Similar, Says TTAB

Despite the near identity of the involved computer software, the Board reversed a Section 2(d) refusal to register the mark DOCSS in the stylized form shown below, finding it not likely to cause confusion with the registered mark DOCSSITE. In re Adept Data Technologies, Inc., Serial No. 78110053 (June 21, 2005) [not citable].

The Examining Attorney contended that the goods are legally identical, that the marks are confusingly similar because they both combine the word "doc" with a "double-S," and that any doubt should be resolved in favor of the prior registrant.

Applicant Adept relied on a computer dictionary definition of "docs" as short for "documents," numerous third-party registrations for marks containing the designation "doc" or "docs," Google results, and website printouts. Adept also submitted a declaration of its president attesting to the care with which its goods are purchased.

Specimen of use
The third-party registrations and dictionary evidence convinced the Board that the term "doc" or "docs" is "quite weak" when used in connection with document management software. The Board recognized that the two marks at issue were "the only marks of record which employ a 'double-S' feature in connection with 'doc,'" but it found that "this point of similarity is an insufficient basis to support a conclusion that confusion is likely." As to the connotations of the marks, the Board found that the cited mark "connotes a 'documents site,'" but applicant's mark does not. And it found that purchasers "are not likely to purchase these goods on impulse but instead may reflect on their decision [sic] to purchase."

The Board concluded that "applicant's mark and registrant's mark are simply too dissimilar to support a likelihood of confusion finding."

TTABlog aside: Okay, so this isn't the most scintillating decision the Board has ever issued. The TTABlogger doesn't promise excitement every day. At least not on the blog.

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

In a Citable Decision, TTAB Reverses Surname Refusal of "FIORE"

In a citable (but questionable) decision, the Board applied the doctrine of foreign equivalents in reversing a Section 2(e)(4) refusal of the mark FIORE for sports bags, purses, and other goods in class 18. The Board concluded that FIORE, an Italian word meaning "flower," is "the type of term that potential customers would stop and translate," and therefore that FIORE is not "primarily merely a surname." In re Isabella Fiore, LLC, 75 USPQ2d 1564 (TTAB 2005).


The PTO established a prima facie case under Section 2(e)(4) by submitting more that 5,000 database and Internet hits establishing that FIORE is not a rare surname, along with "negative" dictionary evidence showing that FIORE has no meaning in English. The Board agreed with the PTO that FIORE has the "look and feel" of a surname, but did not "think this factor strongly favors the examining attorney's position." Applicant Isabella Fiore, LLC did not dispute "that the word FIORE is a surname."

Applicant contended, however, that FIORE "has an alternative, recognized meaning: it means 'flower' in Italian," and it submitted evidence that "Italian is increasingly popular as a language for study and practice in the United States, such that a 'beginner word' like 'flower' would be readily understood by a wide variety of people."

For the Board, the question was "whether we can consider the meaning a surname has in a foreign language in our surname analysis." Observing that the TTAB applies the doctrine of foreign equivalents in Section 2(e)(1) mere descriptiveness cases and in Section 2(d) likelihood of confusion cases, the Board held that "whether a term is primarily merely a surname must take into consideration the meaning the term has in a foreign language."

Applying the doctrine of foreign equivalents, the Board found that "'Fiore' is an Italian word that is listed as the only translation of the common English word 'flower.' It is the type of term that potential customers would stop and translate. Italian, as a major, modern language, is not an obscure language such as Old English." The Board had no doubt that "the term would be recognized as the Italian word for 'flower.'"

"When we consider the common meaning of 'Fiore' in Italian, we conclude that it does have a meaning that detracts from the surname significance of the term. The term does not have such an obvious 'look and feel' of a surname that potential purchasers would overlook its Italian language meaning."

Noting that any doubt on the issue must be resolved in favor of the Applicant, the Board reversed the refusal to register.

TTABlog comment: Balogna? Section 2(e)(4) bars registration of a mark that is "primarily merely a surname." It doesn't say "primarily merely a surname, unless the mark comprises a foreign word that translates into a common English term." Here, the PTO established that FIORE is not a rare surname and has no other meaning in English other than as a surname. Applicant conceded that it is indeed a surname. The Board recognized that it has the "look and feel" of a surname, but then downplayed that factor. Instead it gave decisive weight to the fact that "fiore" means "flower" in Italian.

What the Board failed to do is consider the purpose of Section 2(e)(4) and how the doctrine of foreign equivalents jibes with that purpose. When foreign words are translated into English for purposes of Section 2(e)(1) or Section 2(d), the goal presumably is to protect those Americans who are knowledgeable about the foreign language: in the former case, to make sure that words that they would find descriptive remain unregistered, and in the latter case to keep off the Register marks that they would find confusingly similar to another registered mark. The purpose of Section 2(e)(4), derived from common law principles, is to keep surnames free for use by those having the particular surname in question, without the threat of an infringement charge by a registration owner. The Board makes no mention of protection of those interests, but instead blindly imports the doctrine of foreign equivalents into the Section 2(e)(4) analysis.

Doesn't the word "primarily" merely anything in Section 2(e)(4)? Surely it means that, although a term may have some other meanings (including meanings in a foreign language), if its primary meaning is that of a surname, it should not be registrable (absent proof of secondary meaning, or course). Here, in light of the PTO's evidence, the Applicant's concession that FIORE is a surname, and the Board's recognition that FIORE has the "look and feel" of a surname, can there be any doubt that FIORE, based on this record, is primarily merely a surname? There is no evidence that a substantial number of Americans would recognize FIORE as meaning "flower." There is no evidence that "fiore" is a foreign word that has been adopted into the English language (like, say, "balogna"). What is the basis for concluding that its translated meaning "flower" is more significant than its surname meaning?

The Board cited Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee EN 1772, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005)[a Section 2(d) case] for the proposition that "[t]he doctrine should be applied only when the ordinary American purchaser would stop and translate the word into its English equivalent." Where is the proof that the ordinary American purchaser would translate FIORE into "flower"? Does the Board really believe that the average American purchaser of sports bags and purses knows the Italian language, or even the rudiments of Italian? [I am reminded of the H.L. Mencken quip: "the average American is below average."]

In the Board's recent uncitable LATAS decision (blogged here), it took into account the translation of "latas" from Spanish as "tin cans," but there the Board also found that LATAS was a "very rare surname" and that it did not have the "look and feel" of a surname. In sharp contrast, FIORE was found not to be a rare surname and it was found to have a surname's "look and feel."

It seems to me that only in cases like the LATAS case should the foreign meaning be decisive. It should not have been decisive here without real proof that "flower" is the primary meaning of FIORE to the ordinary American purchaser.

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

Court of Appeals Remands "REDSKINS" Case on Laches Issue

In a ruling issued on July 15, 2005, the U.S. Court of Appeals for the District of Columbia Circuit remanded the long-running REDSKINS trademark case to the district court for further consideration of the issue of laches with regard to one of the petitioners. Pro-Football, Inc. v. Harjo, 75 USPQ2d 1525 (D.C. Cir. 2005).

Mateo Romero
The district court granted summary judgment on two alternative grounds: that the TTAB should have found the Native Americas' petition for cancellation barred by laches, and that in any case the TTAB's decision was unsupported by substantial evidence. Pro-Football, Inc. v. Harjo, 68 USPQ2d 1225 (D.D.C. 2003). The TTAB had granted Harjo's petition for cancellation of six registrations for marks containing the word REDSKINS (or a variation thereof) for football entertainment services. It found that the marks "may disparage" Native Americans or "bring them into contempt or disrepute" in violation of Section 2(a) of the Trademark Act.

The court of appeals agreed with the Native Americans that the district court mistakenly applied the doctrine of laches to one of the petitioners -- namely, Mateo Romero, who was only one-year old in 1967 when the district court started the clock for laches. (The petition for cancellation was filed in 1992). The court explained that laches is an equitable doctrine "founded on the notion that equity aids the vigilant and not those who slumber on their rights." It ruled that, as to Romero, the district court's approach ran afoul of the "well-established principle of equity that laches runs only from the time a party has reached his majority."


Pro Football argued that such a ruling would mean that trademark owners "could never have certainty, since a disparagement claim could be brought by an as yet unborn claimant for an unlimited time after a mark is registered." The Board was not moved:

"Why should equity elevate Pro-Football's perpetual security in the unlawful registration of a trademark over the interest of a Native American who challenged this registration without lack of diligence. Why should laches bar all Native Americans from challenging Pro-Football's 'Redskins' trademark registrations because some Native Americans may have slept on their rights?"

On remand, the district court is directed to evaluate "Romero's laches," and particularly the "trial and economic prejudice" to Pro-Football that would have been avoided "had the petitioner acted more diligently in seeking cancellation."

TTABlog comment: Even if it turns out that Mr. Romero's claim is barred by laches, how long will it be before another Native American steps forward -- say one who has just reached his or her majority -- to challenge the REDSKINS trademark registrations? Even if the evidence in Harjo turns out to be inadequate, won't the next petitioner provide even more evidence, and the next even more, and so on? I suspect that even if Pro-Football wins the Harjo case, its problems with the REDSKINS registrations will not be over soon.

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

Leo Stoller and the "MERCHANT OF VENICE"?

Leo Stoller, trademark entrepreneur and frequent TTAB litigant, has already taken on Columbia Pictures regarding its soon-to-be-released movie "Stealth." (blogged here and here; trailer here). He is also opposing the application of Dreamworks to register the mark REX HAVOC for video games and other goods. (blogged here). I'm wondering whether Mr. Stoller has his eye on the Sony Pictures film, "The Merchant of Venice"? (trailer here).


I ask this question because Mr. Stoller owns U.S. Registration No. 2,107,047 for the mark MERCHANT OF VENICE for "restaurants." The registration issued on October 21, 1997, and on September 4, 2003, Mr. Stoller filed a Declaration Under Section 8 in which he verified that the mark "has been in continuous use in interstate commerce for five consecutive years from the date of the registration to the present" and that " such mark is still in use in interstate commerce."

Now I haven't been able to find Mr. Stoller's restaurant in my recent Google searching, but then that may be a result of my ineptness. I thought the specimen of use filed with his Section 8 Declaration might be of help, but not so. The specimen, reproduced immediately below (from the TDR database), merely suggests that the MERCHANT OF VENICE® is in Chicagoland.

Click on picture for larger view
Perusal of that specimen of use, however, leads me to ask, why did the PTO ever accept it? Shouldn't the specimen of use for restaurant services be a menu, an advertisement, a table tent, or something that shows the mark in use in connection with the restaurant? According to Rule 2.62(a)(2), "A service mark specimen must show the mark as actually used in the sale or advertising of the services." In my experience, the PTO is a bit more lenient in accepting specimens of use at the Section 8 Declaration stage than it is at the application stage. But come on! This is ridiculous!

As you know, the 2007 INTA annual meeting will be held in Chicago (my home town), and I'm going to have to find a venue for the 3rd annual "meet the bloggers" event. My favorite restaurant happens to be the original PIZZERIA UNO® at 29 East Ohio.


But wouldn't Leo Stoller's restaurant be an interesting choice? Maybe a TTABlog reader in Chicago can help me find the MERCHANT OF VENICE®. Maybe Leo's vocal group, AIRFRAME®, could perform for us. (See Central Mfg. Co.'s Registration No. 2,137,059, which covers, inter alia, "musical entertainment services by a vocal group."). I haven't been able to find out much about that group either. Once again, the specimen of use that Mr. Stoller filed (along with the Section 8 Declaration) is not very helpful:

Click on picture for larger view
Seriously, though, I think the PTO needs to tighten up its specimen-of-use requirements and it needs to train its personnel to apply those requirements properly. In addition, given the stream of fraud decisions that the Board has issued in the last few years, maybe it's time to change the rule that one specimen per class is sufficient proof of use for the entire class. Maybe the PTO should require a specimen for as many as five items per class, coupled with a requirement that the applicant or registrant state the first use date for each of those items. I'll be writing more about that soon.

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

TTAB Finds Three "REAL TIME" Marks Merely Descriptive Of Computer Training Services

I've been having a heck of a time trying to find interesting TTAB decisions to blog. That's why I've been reduced to presenting cases like the ones in this posting. Thank goodness the CAFC came down with a decision Monday, giving me a one-day reprieve. Oh well, here goes....

Global Mentoring Services, Inc., of Columbia, Maryland, had a real TTABad time in June, as three of its marks -- REAL TIME MENTORING, REAL TIME LEARNING, and REAL TIME LAB -- were deemed merely descriptive of "training services in the field of computer applications and technical training for businesses via the Internet." For some reason, the cases were not consolidated and the Board issued three separate opinions, two (nearly identical) by veteran Judge Hohein and one by rookie Judge Walsh. In re Global Mentoring Services, Inc., Serial Nos. 76487220 (June 7, 2005), 76487218 (June 21, 2005), and 76487221 (June 30, 2005) [not citable].


Examining Attorney Brendan D. McCauley, who handled all three cases, relied on various electronic search results, website excerpts, dictionary definitions, and Applicant's own specimens of use in solidly supporting the refusals to register.

Applicant Global Mentoring's argument had two prongs, neither sharp: first, it pointed to various third-party registrations for marks that contain one or more of the constituent terms, but the Board observed for the millionth time that "[e]ven if some prior registrations had some characteristics similar to [applicant's] application, the ... allowance of such prior registrations does not bind the Board or this court." In re Nett Designs Inc., 57 USPQ2d 1564, 1566 (Fed Cir. 2001). In other words, each Section 2(e)(1) descriptiveness case must be decided on the particular record before the Board. Doh!

Second, Global offered the oft-rejected and wholly futile argument that the Examining Attorney failed to provide any evidence that a consumer who encounters the mark ... will immediately understand that Applicant's services are 'training services in the field of computer applications and technical training for business via the Internet.'" Judge Walsh repeated the standard TTAB response to that lame contention: "Whether consumers could guess what the product is from consideration of the mark alone is not the test." In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). Judge Hohein didn't even bother to address the argument.

TTABlog comment: When I compiled my list of The Top Ten Losing TTAB Arguments a few years ago, high on the list was the "descriptiveness as a guessing game" approach offered by Global. Apparently the "popularity" of this hopeless argument continues.

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

TTAB Reverses Surname Refusal Of "LATAS" For Avocado Rootstocks

Applying the standard Section 2(e)(4) test of In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995), the Board reversed a Section 2(e)(4) refusal to register the mark LATAS for "avocado trees, namely, avocado rootstocks," finding the mark not to be primarily merely a surname. In re Hans Merensky Holdings (Pty) Ltd., Serial No. 76528639 (June 28, 2005) [not citable]. The Board first found that LATAS is a "very rare surname." The Examining Attorney located "no more than 80 or so examples of the LATAS surname ... through extensive searches," including only one example from New York City, one from Los Angeles, and none from Chicago. Applicant Merensky Holdings represented that no person connected with it has the surname LATAS. It claimed that the mark was chosen because of its Hungarian meaning: "sight or vision." Applicant also noted the Spanish translation, meaning "can." Thus, Applicant argued, "the term has recognized meaning other than as a surname, and ... such meanings are more common than the surname that the Examining attorney has unearthed." The Examining Attorney, in turn, discounted the Hungarian meaning and asserted that dictionaries provided no other significant meaning for the word. Dr. Hans Merensky The Board agreed with Merensky Holdings. It took judicial notice of a Spanish-English dictionary definition of "lata" as "tin can." The PTO's own Google evidence indicated that this Spanish meaning of LATAS is "significant."

"Of the twenty [Google] results, there are only two people named Latas mentioned.... On the other hand, as many as 12 of the twenty results appear to refer to the Spanish word LATAS. This evidence alone is at least sufficient to cast serious doubt with regard to the the contention that the primary significance of LATAS is as a surname."

Given the wide familiarity with Spanish in the United States, the Board found it appropriate to consider the Spanish meaning of LATAS under the doctrine of "foreign equivalence." [sic]. Finally, the Board found that LATAS does not have the "look and feel" of a surname because it saw no evidence that LATAS resembles a common surname in structure and pronunciation. The Board concluded that Applicant had overcome the PTO's prima facie showing. At a minimum, Applicant's evidence raised serious doubts that must be resolved in its favor. TTABlog comment: The PTO could have done a better job on the "look and feel" issue. The term LATAS immediately brought to my mind two people of some notoriety: USA soccer player Alexi Lalas, and movie star Fernando Lamas. LATAS certainly has the same structure and general pronunciation as Lalas and Lamas. Maybe the latter are not "common surnames," but perhaps the "famousness" of these two people would count for something. I wonder what the folks at Ladas & Parry think about this look-and-feel issue? Text Copyright John L. Welch. All Rights Reserved.

CAFC Vacates Genericness Refusal Of "STEELBUILDING.COM"

In a precedential opinion, the CAFC vacated the TTAB's decision that STEELBUILDING.COM is generic for "computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems." In re Steelbuilding.com, 75 USPQ2d 1420 (Fed. Cir. 2005). The court, however, affirmed the TTAB as to the PTO's Section 2(e)(1) mere descriptiveness refusal, and as to the inadequacy of Applicant's proof of secondary meaning.


The court ruled that the Board had incorrectly defined the genus for Applicant's services, a ruling that hinged on the interactive nature of Applicant's website. The Board at one point defined the genus as "the sale of pre-engineered 'steel buildings' on the Internet," and at another, "computerized on-line retail services in the field of pre-engineered metal buildings including steel buildings." The court noted that, although "the definitions of the Applicant and the Board appear nearly identical, the parties understand the phrase 'computerized on-line retail services' differently." The record "indicates that [Applicant] provides services beyond mere sales." Its website permits a customer to design a building and then determine the price for its own design. The Board failed to "acknowledge this interactive feature of the applicant's goods and services." This misunderstanding was, the court opined, a sufficient ground for vacatur of the Board's decision. The court, however, went on to consider "generally" the Board's findings.

In deciding whether the public uses the term STEELBUILDING.COM as the genus of Applicant's services, the Board erred in considering "STEELBUILDING" and ".COM" separately, and in "apparently" concluding "STEELBUILDING is generic for 'steel buildings.'" But it ignored the other possible meaning of "steelbuilding."

"The Board does not seem to acknowledge an alternative genus, namely 'the building of steel structures.' In this case, the genus might be both formulations.

The court observed that the record lacked "substantial evidence that 'STEELBUILDING,' in common usage, is a compound word used to mean either 'steel building' or 'steel buildings.'"

"The record does not contain any examination of dictionary definitions or other sources that might have indicated that joining the separate words 'steel' and 'building' would create a word that, in context, would be generic. The Board merely cited evidence that when customers or competitors talked about a steel building, they used the phrase 'steel building.' That evidence shows that 'steel building' is generic, but does not address the composite term STEELBUILDING."

The court was also not happy with the Board's treatment of the ".com" TLD. The Board construed the TLD as no more than a designation of a commercial entity on the Internet, like "company." However, the CAFC shot down that approach last year in In re Oppedahl & Larson LLP, 71 USPQ2d 1370 (Fed. Cir. 2004), in which it ruled that, although the addition of a TLD to an otherwise unregistrable mark "will typically not add any source-identifying significance," this is not a "bright-line, per se rule" -- "exceptional circumstances might yield a different result." The court found this to be such an exceptional situation:

"In this unusual case, the addition of the TLD indicator expanded the meaning of the mark to include goods and services beyond the mere sale of steel buildings. Specifically, the TLD expanded the mark to include internet services that include 'building' or designing steel structures on the web site and then calculating an appropriate price before ordering the unique structure. The record therefore does not contain evidence sufficient to support the Board's finding that 'STEELBUILDING.COM' is generic for applicant's services."

The court concluded that the Board erroneously: "(1) construed the genus of applicant's services and goods [sic] too broadly; (2) discounted the ambiguities and multiple meanings in the mark; and (3) dismissed the addition of the TLD indicator despite its expansion of the meaning of 'STEELBUILDING.COM.'"


Turning to the Section 2(e)(1) refusal, the court agreed that "steel buildings" are "at least a significant feature of Applicant's services," and that a consumer "would recognize the compound word "STEELBUILDING" as conveying the same impression, at least for trademark purposes, as the phrase 'steel buildings.'" Also, it agreed that the addition of .COM "simply means that services associated with the generic term are performed in an on-line or 'e-commerce' environment."

As to secondary meaning, the CAFC ruled that the Board was correct in finding that Applicant's evidence fell "far short" of meeting the "high level of secondary meaning" required for a "highly descriptive" mark.

In partial dissent, Judge Lynn stated that he would have vacated the ruling of no acquired distinctiveness and remanded that issue to the Board for further consideration. He opined that the Board erred in discounting evidence of "domain name recognition," gave too little weight to applicant's advertising through banner ads and other Internet channels, and failed to address evidence that Applicant's sales rose quickly as a result of its advertising.


TTABlog comment: The Board has some homework to do after this decision. What is the impact, if any, on the Board's test for genericness of compound words, which holds that (unlike phrases) dictionary definitions of the constituent words are sufficient to establish genericness? The Board's decision was based on In re Gould, 5 USPQ2d 1110 (Fed. Cir. 1987), but here the court asserted that in Gould the applicant "admitted that 'screenwipe' denoted a 'screen wipe,'" whereas this Applicant denied that "STEELBUILDING" merely describes "steel buildings." [Actually, the applicant in Gould did not make that admission, but merely described its product as "a ... wipe ...for ... screens."]

Or is the impact of this case limited because of its peculiar facts, and particularly the fact that "steelbuilding" may have two meanings: either a building made of steel or the act of building steel structures?

And what about the addition of the TLD? In Oppedahl, the CAFC already jettisoned the Board's prior position that ".com" is merely an entity designation of no trademark significance. Now when the Board considers the registrability of a ".com" mark, must it review the website in question to see whether the suffix may indicate that the applicant is offering additional services beyond mere retail sales -- like design capability or other Internet-based features?

The Board will surely have to be more careful now in defining the genus at issue in genericness cases -- of course, especially those with a ".com" suffix. Typically the Board spends little time in analyzing the "genus" issue, often merely adopting the identification of goods or the recitation of services of the subject application as the genus in question. That approach will have to change.

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

TTAB Says Peabody Hotels' 182-Word Duck "Legend" Does Not Function As A Mark

You might say that the Peabody Hotels laid an egg in their attempt to register the alleged mark set out in the paragraph below, comprised of 182 words (for convenience, referred to as "THE LEGEND"), for hotel and facilities services. Or you might say that the TTAB filled the egg-laying role. In any case, the Board found that "the matter sought to be registered does not function as a service mark for the services identified in the application." In re Peabody Management, Inc., Serial No. 76068295 (June 30, 2005) [not citable].

THE LEGEND OF THE DUCKS. HOW DID THE DUCKS IN THE PEABODY FOUNTAIN BEGIN? BACK IN THE 1930'S FRANK SHUTT, GENERAL MANAGER OF THE PEABODY, AND A FRIEND, CHIP BARWICK, RETURNED FROM A WEEKEND HUNTING TRIP TO ARKANSAS. THE MEN HAD A LITTLE TOO MUCH TENNESSEE SIPPIN' WHISKEY, AND THOUGHT IT WOULD BE FUNNY TO PLACE SOME OF THEIR LIVE DUCK DECOYS (IT WAS LEGAL THEN FOR HUNTERS TO USE LIVE DECOYS) IN THE BEAUTIFUL PEABODY FOUNTAIN. THREE SMALL ENGLISH CALL DUCKS WERE SELECTED AS "GUINEA PIGS", AND THE REACTION WAS NOTHING SHORT OF ENTHUSIASTIC. THUS BEGAN A PEABODY TRADITION WHICH WAS TO BECOME INTERNATIONALLY FAMOUS. THE ORIGINAL DUCKS HAVE LONG SINCE GONE, BUT AFTER MORE THAN 60 YEARS, THE MARBLE FOUNTAIN IN THE HOTEL LOBBY IS STILL GRACED WITH DUCKS. TODAY, THE MALLARDS ARE RAISED BY A LOCAL FARMER AND FRIEND OF THE HOTEL. THE DUCKS LIVE IN THE FOUNTAIN UNTIL THEY ARE FULL GROWN AND, ON RETIREMENT FROM THEIR PEABODY DUTIES, ARE RETURNED TO THE WILD. THE PEABODY DUCKS MARCH AT 11:00 AM AND 5:00 PM DAILY.

Applicant Peabody claimed that its hotels are "famous for the Peabody Duck March" -- a parade of ducks that march into the hotel lobby in the morning, and depart the lobby in the evening, all to "great fanfare." This gimmick has, according to Peabody, "become a part of the Hotel lore itself" and the applied-for mark must be considered in that context. Peabody acutely recognized that its proposed mark is "not a traditional one," but asserted that it is "no different than a variety of nontraditional marks that have been registered." Three identically-worded customer declarations attested to the source-identifying function of THE LEGEND.

Peabody pointed out that the THE LEGEND appears on brochures, napkins (in abbreviated form), and other promotional and ancillary materials, and on the hotels' website. Thus, it argued, THE LEGEND functions as a service mark for the identified services.

Specimen of Use (brochure)Click on illustration for larger view
The Examining Attorney contended that the length of the alleged mark is a factor to be considered: a longer collection of words is more likely a proper subject for a copyright, and not a trademark. Peabody, she argued, "is using the 182 words as a story about its hotels, and not as a service mark for its services."

The Board framed the question thusly: "Would THE LEGEND mark sought to be registered be perceived as a source indicator or merely an informational story?" It agreed with the Examining Attorney that the length of the proposed mark is a factor to be considered. But in any case, the Board concluded, "[a]s used by applicant, THE LEGEND simply would not be viewed as a service mark for applicant's services."

"applicant's specimen does not show use of THE LEGEND to identify the services for which applicant seeks registration; to the contrary, THE LEGEND conveys history and current information in the nature of an advertisement for the Duck March. We particularly note that THE LEGEND even sets forth the time of day of the Duck March ('11:00 AM and 5:00 PM DAILY')."

The three customer declarations submitted by Peabody caused the Board to pause briefly in its march to affirmance of the refusal to register:

"We are not persuaded by the declarations to reach a different result. What the declarations do tend to suggest is that at least three individuals recognize THE LEGEND and associate it with applicant. Although THE LEGEND may be associated with applicant's hotel, we cannot conclude, based on the present record, that the matter sought to be registered functions as a service mark."

The Board dubiously relied on In re Deister Concentrator Co., 129 USPQ 314, 320 (CCPA 1961), for the proposition that "not everything that enables one to determine source is a trademark. *** [n]ot everything that enables goods to be distinguished will be protected as a trademark." Applying that sweeping statement, the Board swept aside the declarations, pointing out that Applicant's designation, to qualify as a registrable trademark, must be used as a mark: "Given the nature of how THE LEGEND is actually used, some level of recognition by only three individuals is hardly sufficient to make unregistrable matter into a service mark."


TTABlog comment:The Board's reliance on Deister here is highly questionable. Deister concerned the registrability of a product configuration: namely, the rhomboidal outline of the working surface of an ore concentrating and coal cleaning table. The CCPA ruled that, because the shape was functional, it could not be registered as a trademark, regardless of whether it had acquired de facto secondary meaning. It was in that context that the CCPA broadly stated that "A trademark distinguishes one man's goods from the goods of others; but not everything that enables goods to be so distinguished will be protected as a trademark."

Deister "shaking" table
Not only is the CCPA’s broad statement in Deister mere dictum, but the facts in Deister are wholly different from those involving THE LEGEND. A de jure functional product shape can never be a trademark, but a 182-word slogan could be, if used properly. Thus Deister has no relevance to the instant case. In the context of evaluating whether THE LEGEND is perceived by customers as a trademark, the three customer declarations merit consideration -- much more consideration that the backhanded attention accorded by the Board.

As to Peabody's evidence of secondary meaning, what if, instead of three customer declarations, Peabody had submitted survey evidence regarding source identification? Would the Board still have concluded that THE LEGEND is not a service mark? What if Peabody had put THE LEGEND on towels, sheet, pillowcases, ashtrays, t-shirts, matchbooks, etc.? Would that have satisfied the Board that THE LEGEND was being used as a mark?

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

TTABlog Flotsam And Jetsam -- Issue No. 5

While waiting for a few more interesting TTAB decisions to come down the pike, I thought I'd clear out my "things-to-blog" folder. As you will see, some exciting things are happening at the PTO.


New Commissioner For Trademarks Appointed: I am reliably informed that Lynne G. Beresford has been named Commissioner for Trademarks. She has been serving as the Acting Commissioner. Her biography may be found here.


Three New TTAB Judges Appointed: If you haven't already noticed, you soon will be noticing three new names on TTAB opinions (in addition to Judge Grendel, who used to be Judge Bottorff). That's because three new Administrative Trademark Judges have been appointed. [Judge Rany Simms retired earlier this year, as did Judge Robert R. Cissel in April 2004.]

Karen Kuhlke: Judge Kuhlke served several years as an Examining Attorney, and for the last five years as a TTAB staff attorney. She also spent three years in private practice with Steptoe & Johnson in Washington, D.C. Judge Kuhlke holds an undergraduate degree from the University of Kansas, a master's degree from Columbia University, and a law degree from Georgetown.

James Walsh: For the past ten years, Judge Walsh has been trademark counsel to the Washington, D.C. law firm of Arnold & Porter. Prior thereto, he served as Administrator for Trademark Policy and Procedure in the Office of the Assistant Commissioner for Trademarks, and as editor of the Trademark Manual of Examining Procedure. Mr. Walsh received his undergraduate degree from Holy Cross and his law degree from Georgetown.

Albert Zervas: Judge Zervas spent the past six years as a TTAB staff attorney, after several years as a trademark Examining Attorney. He also has more than six years of private practice experience with Kaye Scholer in New York and Marks & Murase in Washington, D.C. Mr. Zervas holds undergraduate and law degrees from the University of Virginia.

Please note that these TTAB judges should not be confused with the Board Members of the other T.T.A.B. (the Trinidad & Tobago Association of Baltimore).


TESS Improvement Provides Direct Link To TTABVUE: Carl Oppedahl, father of the fabulous FEATHERS! software program, pointed out that the PTO's TESS search result page has been augmented with three new clickable buttons: "ASSIGN status", "TDR status", and "TTAB status."


Each button links directly with the corresponding Assignment, TDR, or TTABVUE page for the serial number or registration under review. This makes it unnecessary to copy and paste the serial number or registration number from one screen to the next.


PTO Issues Rules On Reduced Electronic Filing Fees: Now for one last bit of excitement from the PTO. On July 6th it issued amended Rules that permit an applicant to pay reduced fees for certain applications filed and prosecuted under the TEAS electronic filing system. A fee of $275 per class will apply to "TEAS-Plus" applications that meet certain additional filing requirements. The applicant must also agree to prosecute the application electronically. All is explained here in the Federal Register. Effective date is July 18, 2005.


Shortest TTAB 2(d) Opinion Ever? Judge Grendel wasted no paper in rendering the Board's decision in Viniar v. Clark, Opposition No. 91156752 (June 21, 2005) [not citable]. The entire opinion just barely exceeds two pages. Since the case involved the identical mark MEDIATION WORKS for "mediation and dispute resolution services," on the one hand, and "mediation and alternative dispute resolution services," on the other, how much was there to say? Opposer Viniar did move for summary judgment, but the motion was untimely (i.e., it was filed after Opposer's testimony period had begun). Applicant Clark didn't bother to file an opposition to the summary judgment motion, nor did she file a trial brief. Why bother?

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

Confusion Not Likely Between "ZANELLA" Clothing And Wood Flooring, Says TTAB

A punster might say that Opposer Zanella Ltd., well-known for its high-end men's slacks, was caught with its pants down in its unsuccessful opposition to registration of the mark ZANELLA for wood flooring. Zanella Ltd. v. Saroyan Lumber Co., Opposition No. 91153249 (June 23, 2005) [not citable].


Opposer relied on its use and registration of the mark ZANELLA for trousers and various other items of men's and women's apparel. Based on Opposer's sales (hundreds of millions of $$ in the past 5 years) and advertising expenditures (hundreds of thousands of $$), the Board found that Opposer's ZANELLA mark has "acquired some public recognition," but that this recognition is "mainly confined to the limited segment of high-end trousers, and little else." The proofs fell short of establishing fame, and Opposer did not argue otherwise.

The "crux" of Opposer's case was its assertion that "the goods are commercially related inasmuch as flooring is within opposer's natural scope of expansion." According to Opposer:

"The expansion by apparel designers is a natural one. Apparel and flooring have important characteristics in common. Both are designed and sold based in part on aesthetic, emotional factors such as style, color, and texture. Both are expressions of one's personal image. In the marketing of their flooring products, many designers have aggressively conveyed to the public that their expansion into flooring products is a logical extension of their business and expertise."

Applicant Saroyan Lumber, however, pointed out that, while certain designers like Laura Ashley, Liz Claiborne, Armani may have expanded their range of products through licensing of their very famous marks, Opposer's use of its ZANELLA mark has been limited to clothing. Moreover, Opposer has never licensed its mark.


The Board observed that it was without question that "clothing and wood flooring are not naturally related goods." However, under the doctrine of natural expansion, the first user of a mark possesses superior rights not only against subsequent users for the same or similar goods, but also as to goods "which purchasers might reasonably expect to emanate from it in the normal expansion of business under the mark." The question is whether purchasers would likely be confused "as to sponsorship, affiliation, or connection."

The Board agreed with Applicant:

"Opposer's comparison of its ZANELLA mark with several famous designer marks is, in our view, the proverbial 'comparing apples and oranges.'

"Opposer has not met its burden of showing that a lesser known designer in a more limited clothing field, primarily known for men's trousers, would normally expand its less than famous name brand to wooden flooring, or that purchasers would expect such goods to emanate from the same source."

In ruling against Opposer, the Board delivered one last kick in the trousers, quoting the CAFC's observation that: "We are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal." Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388, 1391 (Fed. Cir. 1992).

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

TTAB Finds "STORAGE OUTLET" Generic for Self-Service Storage Facilities

Insomniacs will want to save this decision involving California-based CT Realty's failed attempt to overturn a genericness refusal of the mark STORAGE OUTLET for "providing self-service storage facilities for general consumer and business use." In re CT Realty Corp., Serial No. 75841424 (June 22, 2005) [not citable]


CT Realty sought registration on the Supplemental Register, but the Examining Attorney deemed the term incapable of distinguishing Applicant's services. (Section 23).

Under the Marvin Ginn test, the PTO was required to show by "clear evidence" that the relevant public understands the term STORAGE OUTLET primarily to refer to self-service storage facilities for general consumers and business use.

The Examining Attorney relied on NEXIS excerpts of newspaper and magazine articles using the terms "storage outlet" and "self-storage outlet" to refer to a type of self-storage facility. CT Realty argued that many of these excerpts were irrelevant, and that the evidence failed to show that a "majority" of the public regards STORAGE OUTLET as generic.

CT pointed to print outs from the websites of other companies and to newspaper articles in which the terms "self-storage facilities," "self-storage [mini] warehouses," and "self-storage centers" are used to refer to the same services, but not "storage outlet." It argued, based on dictionary definitions of the constituent words, that "storage" and "outlet," either alone or combined, are not generic for its services. And it noted that the industry trade association is called the "Self Storage Association," not the "Storage Outlet Association," and that local California yellow pages do not include a category for "storage outlets."


The Board, however, found "clear and sufficient" evidence in the record that STORAGE OUTLET is generic for Applicant's services. Contrary to Applicant's contention, it found the dictionary definitions of "storage" and "outlet" directly applicable: "applicant's service consists essentially of the retailing of storage space."

"The term 'STORAGE OUTLET' thus plainly designates a category or class of self-services storage facility services and ... the relevant examples of third-party use of such designation are sufficient to confirm that its primary significance to the purchasing public is that of a generic term."

The Board once again pointed out that a service may have more than one generic name, but all of them are in the public domain.

The Board conceded that the NEXIS excerpts offered by the PTO were not "numerous." Moreover, it agreed that the articles from foreign websites are irrelevant (although in several recent cases the TTAB has "liberalized its practice" in this regard when highly sophisticated scientific or technical fields are involved). However, "the relevant excerpts furnished by the Examining Attorney are unambiguous." Moreover, nearly all of the excerpts pre-date Applicant's filing date and first use date.

Therefore, the Board affirmed the PTO's refusal under Section 23.


TTABlog self-serving outlet: On the issue of the admissibility of foreign Internet evidence, see Part I.D. (pages 8-10) of "The TTAB in 2004: What Was Hot, What Was Not."

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

Leo Stoller Article In NY Times Provides Boost For TTABlog

The July 4th article in the New York Times regarding Leo Stoller, the trademark "entrepreneur," provided a nice shot-in-the-arm to the TTABlog. Thousands of surfers flocked to the TTABlog posting (here) of May 11, 2005, regarding the Columbia Pictures lawsuit.


I found the article to be rather wimpy and uninformed, but then the Times never seems to do a very good job on intellectual property issues, does it? However, you have to love that photograph of Mr. Stoller, who looked to me to be in a kind of "stealth" mode (if I may use that term).

Copyright John L. Welch 2004. All Rights Reserved.

Citable TTAB Decision: "NORTON MCNAUGHTON ESSENTIALS" Not Confusingly Similar To "ESSENTIALS" For Women's Clothing

In the fifth citable TTAB decision of 2005, third-party registration evidence played a crucial role in the Board's dismissal of an opposition to registration of the mark NORTON MCNAUGHTON ESSENTIALS for women's clothing. The Board found the mark not likely to cause confusion with Opposer's registered mark ESSENTIALS for essentially the same goods. Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005).

Specimen of Use
Twenty-three registrations in the clothing field (owned by twenty-one different owners) for marks that include the word ESSENTIALS corroborated the dictionary definition of that word, and led the Board to conclude that ESSENTIALS is a "highly suggestive term as applied to clothing," and that purchasers "are able to distinguish among various ESSENTIALS marks by looking to other elements of the marks."

The Board explained that third-party registrations are not evidence (under the Sixth du Pont factor) that the registered marks are actually in use or are known to purchasers. Nevertheless, they "may be given some weight to show the meaning of a mark in the same way that dictionaries are used."

The Board concluded that "applicant's addition of its house mark ... suffices to distinguish the two marks when they are viewed in their entireties," and that the dissimilarity of the marks outweighed the other du Pont factors.

Text Copyright John L. Welch 2005. All Rights Reserved