TTABlog Quarterly Index: July - September 2005

Now that the White Sox have clinched their division, I can relax and concentrate on the TTABlog quarterly index. Prior quarterly indices may be found by clicking on December 2004, March 2005, and June 2005 in the Archives list to the right. The top entry will be the quarterly index.

Faneuil Hall and Custom House Tower, Boston(Click on photos for larger image)
Section 2(a) - immoral or scandalous:

• TTABlog Predicts TTAB Reversal of "DYKES ON BIKES" Refusal
• Court of Appeals Remands "REDSKINS" Case on Laches Issue
• Flag Football On The Fourth: Revisiting the TTAB's Old Glory Condom Decision
• Divided TTAB Panel Finds "WIFE BEATER" Immoral Or Scandalous For T-Shirts

Section 2(d) - likelihood of confusion:

• TTAB Reverses 2(d) Refusal: "BEYOND THE EXPECTED" and "BANKING BEYOND YOUR EXPECTATIONS" Too Dissimilar
• "LOVE" No Passport to TTAB 2(d) Happiness
• TTAB Query: "QUINTUS" and "QUANTUM" Confusingly Similar for Wine?
• TTAB Finds "BEYOND VODKA" Confusingly Similar to "BEYOND MERLOT"
• TTAB Sustains St. Nick Music's 2(d) Opposition to "LOLLY-JOLLY" for Candy
• Superman Rules! TTAB Sustains DC Comics' 2(d) Opposition to "KRIPTONITA" for Fruit Cocktail
• TTAB Reconsiders "RIVERCATS" Decision, But Opposer Still Strikes Out
• Simi Winery's Glass One-Fifth Full Following TTAB Fracas
• TTAB Finds "LOT29" Confusingly Similar to "LOT 53" for Clothing
• Citable TTAB Decision Has Blue Man Group Seeing Red
• Finding Bibs and Footwear Related, TTAB Gives "BABY'S FIRST" Applicant a Section 2(d) Spanking
• Yankees Win! Bronx Bombers Best "BABY BOMBERS" in TTAB Battle
• TTAB Says Get Lost to "GET IN. GET OUT. GET GOING."
• TTAB Sustains 2(d) Opposition to "STAR FLY" for Non-Intimate Footwear
• TTAB Condemns "THIS MOLD HOUSE" Despite Poorly Constructed 2(d) Opposition
• TTAB Sustains 2(d) Opposition to "A thru Z Advantage" for Nutritional Supplements
• "DOCSS" And "DOCSSITE" For Document Management Software Not Confusingly Similar, Says TTAB
• Confusion Not Likely Between "ZANELLA" Clothing And Wood Flooring, Says TTAB
• Citable TTAB Decision: "NORTON MCNAUGHTON ESSENTIALS" Not Confusingly Similar To "ESSENTIALS" For Women's Clothing

Section 2(e)(1) - mere descriptiveness:

• "PLAY THINGS" Merely Descriptive of Pet Treats, Says TTAB
• "STRIPE WRITER" Not Merely Descriptive of Pens with Striped Ink, Says TTAB
• TTAB No Fan of "COUNTRY MUSIC CAFE" -- Finds it Merely Descriptive
• "TWIN CHAMBER" Merely Descriptive of Vacuum Cleaners, TTAB Rules
• "MICROCELL" Merely Descriptive of Small Fuel Cells, Says TTAB
• TTAB Finds Three "REAL TIME" Marks Merely Descriptive Of Computer Training Services

Section 2(e)(2) - primarily geographically descriptive:

• "HALF MOON BAY" Primarily Geographically Descriptive For Wine, TTAB Rules
• TTAB Sustains 2(e)(2) Opposition, Finding "BIG D" Primarily Geographically Descriptive
• TTAB Finds "PRINCETON PHARMACEUTICAL PRODUCTS" Geographically Descriptive

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

• TTAB Cancels Registration of Deceptively Misdescriptive "ZHIGULY" for Beer

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

• TTAB Affirms Surname Refusal of "PICCHIOTTI" for Jewelry
• In a Citable Decision, TTAB Reverses Surname Refusal of "FIORE"
• TTAB Reverses Surname Refusal Of "LATAS" For Avocado Rootstocks

Section 2(e)(5) - functionality:

• TTAB Affirms Functionality Refusal of the Color Red for Fake Weapons
• TTAB Affirms Refusal to Register Bose Speaker Shape (Again)

Section 2(f) - acquired distinctiveness:

• TTAB Finds "TRAFFIC LAW CENTER" Registrable under Section 2(f), but with Disclaimer
• TTAB Overturns Disclaimer Requirement, Finds "VIRTUAL MODEL" For Simulation Software Has Secondary Meaning

Abandonment:

• Hasbro "COTTON CANDY" Pony Finishes Out of the Running in TTAB Cancellation Clash

Dilution:

• Superman Rules! TTAB Sustains DC Comics' 2(d) Opposition to "KRIPTONITA" for Fruit Cocktail
• Citable TTAB Decision Has Blue Man Group Seeing Red

Fraud:

• Hasbro "COTTON CANDY" Pony Finishes Out of the Running in TTAB Cancellation Clash

Genericness:

• In a Citable Decision, TTAB Confirms that Varietal Names are Unregistrable, and Affirms Genericness Refusal of "REBEL" for Grass Seed
• TTAB Reverses Genericness Refusal of "MICRO COTTON"
• "SYNTHETEK" Not Generic for Synthetic Paper, Says TTAB
• TTAB Finds "SING-A-LONG" Generic for Karaoke Players
• TTAB Finds "LAWASH" Generic For Flat Bread, Cancels Registration
• CAFC Vacates Genericness Refusal Of "STEELBUILDING.COM"
• TTAB Finds "STORAGE OUTLET" Generic for Self-Service Storage Facilities

City Hall, Boston
Not a Trademark/Mutilation

• TTAB Citable Decision Says Author's Name May be a Trademark, but Refusal of "FERN MICHAELS" is Affirmed
• TTAB Affirms Refusal to Register Title of Single Book
• TTAB Says Peabody Hotels' 182-Word Duck "Legend" Does Not Function As A Mark

TTAB Discovery/Evidence/Procedure:

• TTABlog Reminder: Madrid Oppositions Require Electronic Filing"

Res Judicata:

• CAFC Vacates TTAB's Summary Judgment in "BERKSHIRE" Res Judicata Case
• TTAB Affirms Refusal to Register Bose Speaker Shape (Again)

CAFC Decisions:

• CAFC Vacates Genericness Refusal Of "STEELBUILDING.COM"
• CAFC Vacates TTAB's Summary Judgment in "BERKSHIRE" Res Judicata Case

Leo Stoller:

• Leo Stoller and the "MERCHANT OF VENICE"?
• Leo Stoller Article In NY Times Provides Boost For TTABlog

Other:

• Chief Judge Sams Outlines Current TTAB Initiatives
• Boston Patent Law Association Hosts "Trademark Year in Review: 2005"
• D.C. District Court Tosses Out TTAB "Appeal" That Raised Only New Issues
• TTABlog Flotsam and Jetsam -- Issue No. 7
• TTABlog: More August Reading
• The TTABlog Mid-August Reading List
• TTABlog Flotsam and Jetsam -- Issue No. 6
• Bizarre Appeal Charges TTAB With Destroying Al Qaeda-Related Evidence
• TTABlog Flotsam And Jetsam -- Issue No. 5

Text and photographs ©John L. Welch 2005.

TTAB Affirms Functionality Refusal of the Color Red for Fake Weapons

In a rambling 44-page decision, the Board affirmed a refusal to register on the Supplemental Register the color red as a trademark for "“hand-held, nonfunctioning plastic training equipment in the shape of knives, radios, flashlights, pistols, rifles, handguns and shotguns for use in training law enforcement personnel,"” finding the proposed mark to be de jure functional. In re Armament Systems and Procedures, Inc., Serial No. 75107678 (Sept. 12, 2005) [not citable]. Applicant ASP stated that "“[t]he mark consists of the color [r]ed as applied to the entire surface of the goods."”


ASP, with its sights on the TrafFix test for functionality, asserted that the color red is not essential to the use or purpose of its goods, nor does it affect their cost or quality. ASP pointed out that other bright colors are available to competitors, and it argued that there is consequently no competitive need for the color red.

Examining Attorney Glenn G. Clark contended that red "is commonly applied to guns and gun look-alikes in order to indicate that they are nonfunctioning, such as training articles or toys,"” and that "“there is already a prevalent past practice in the industry of use of the color red for this purpose."” He submitted website excerpts and NEXIS articles to show use of the color red for mock weapons, statutory citations requiring the use of red and other bright colors, and ASP'’s own patent stating that red is the "“color of choice"” for mock weapons [Did Applicant shoot itself in the foot here?].

Application drawing
The Board concluded that the color red "“is essential to the safe use of the goods and in fact is required by both federal regulations and by New York City law." It found that there is a competitive need for the color red to remain available for use by others in the trade because "“permitting the exclusive use of such a safety feature by applicant would hinder competition by putting competitors at a significant non-reputation-related disadvantage."

"“Plainly, if a municipality or other jurisdiction requires that mock firearms for use in law enforcement training be colored red, whether by deference to tradition or otherwise, competitors will be unfairly excluded if only applicant has the recognized exclusive right to use the color red in connection with the sale of such products."”

The Board thus agreed with the Examining Attorney that the proposed mark is functional and therefore ineligible of registration on the Supplemental Register.

TTABlog comment: ASP owns several registrations for the word mark RED GUN for fake weapons. Competitors may apparently use the color red on their guns, and they surely may then refer to those guns descriptively as "“red guns."” Will ASP be gunning for them, armed with its RED GUN registrations? Is RED GUN for fake guns colored red such a weak mark that the competitor will be allowed a wide zone of fair use?

Suppose a unsophisticated gun collector bought a RED GUN brand red fake gun, thinking it was a genuine weapon originating from a communist country. Instead he or she received a fake gun made in the USA. What causes of action would the collector have, and why? Please write legibly, and confine your answer to four bluebook pages.

Text Copyright John L. Welch 2005.

Chief Judge Sams Outlines Current TTAB Initiatives

At the Midwest IP Institute yesterday, TTAB Chief Administrative Judge J. David Sams described several initiatives that the TTAB is currently pursuing in an effort to make TTAB inter partes practice more efficient and effective.

Stephen R. Baird, Judge Gerard F. Rogers, Chief Judge J. David Sams, John L. Welch
Judge Sams pointed out that two means are already available to parties who want to expedite inter partes proceedings: a telephone conference with an interlocutory attorney may be arranged to address troublesome issues that arise, and a standard protective agreement is available for adoption by the parties (and is sometimes imposed by the Board).

The Board is considering the following:

Mandatory initial disclosures: The TTAB opted out of the FRCP 26 requirement of discovery conferences and mandatory initial disclosures. An internal TTAB study group, however, has concluded that such a requirement could work at the TTAB, and the group provided detailed recommendations. The Trademark Public Advisory Committee has reviewed the issue and a plan has been put together. Judge Sams said that the TTAB bar will be hearing "a good deal more about it before too long."

Accelerated case resolution: Another internal study group has recommended a streamlined procedure for submitting evidence (in the nature of cross-motions for summary judgment) as an available alternative to a full trial on the merits. The Trademark Public Advisory Committee had a positive reaction and the TTAB will move forward with this item "in the near term."

Mandatory telephone conference before filing an unconsented motion: Implementation of this initiative doesn't seem to be as imminent as some of the other proposals.

TTAB decisions and orders by e-mail rather than paper: Part of the Board's apparent goal to eliminate paperwork.

Service by e-mail: Judge Sams noted that service by e-mail may already be happening "in a courtesy manner" The Board is working on making this an official method of service.

Service of opposition on applicant: Another proposal that the Board is considering is to have the opposer serve its notice of opposition (or petition for cancellation) directly on the applicant (registrant), rather than first filing it with the Board and waiting for the Board to send out the notice. The Board would simply send out a notice to the parties setting a due date for answer and a discovery/trial schedule. This, according to Judge Sams, is likely to be implemented "before too long."


Reviewing the TTAB from a statistical viewpoint, Judge Sams reported that this year the Board is meeting its goal of rendering a decision within 10 weeks after a case is ready for decision. The average this year has been 9.8 weeks. This contrasts sharply with the average in 1999: 41.5 weeks. As to contested motions, the average time for decision is "close" to the desired 10 weeks.

The total number of filings of oppositions, cancellations, and appeals for Fiscal Year 2005 (in excess of 8,000) is in line with last year's filings, although the Board is expecting an upswing in light of increased trademark filings.

Text Copyright John L. Welch 2005.

In a Citable Decision, TTAB Confirms that Varietal Names are Unregistrable, and Affirms Genericness Refusal of "REBEL" for Grass Seed

In its eighth citable decision of 2005, the TTAB again laid down the lawn [pun!] by reiterating that "varietal names are generic designations and cannot be registered as trademarks." Consequently it affirmed a refusal to register the term REBEL as a trademark for "grass seed." In re KRB Seed Co., LLC, 76 USPQ2d 1156 (TTAB 2005).


Applicant admitted that REBEL is a varietal name for a type of grass seed that was the subject of a plant variety protection certificate. Moreover, the PTO's evidence -- including a listing of REBEL as the "denomination" of a tall fescue variety with the International Union for The Protection of New Varieties of Plants (UPOV) -- independently established that REBEL is a varietal name for grass seed. Therefore, the issue for the Board was "whether the USPTO's application of prior case law and resulting policy treating varietal names as generic is valid."
The Board noted that it has treated varietal names as generic designations for several decades, as reflected in TMEP Section 1202.12. Applicant KRB argued that the PTO's treatment of varietal names is "wrong, dated and inconsistent with modern intellectual property law." It pointed to a passage in a 1942 decision by the U.S. Court of Appeals for the Columbia Circuit, Dixie Rose Nursery v. Coe, 55 USPQ 315 (D.C. Cir 1942), suggesting that a varietal name might be registrable. The Board, however, dismissed the cited passage as mere dictum.

Applicant also urged that the Supreme Court's TrafFix decision supported its position. The plant variety protection certificate for the grass seed sold under the name REBEL expired in 1999. Applicant contended that under TrafFix a "per se rule prohibiting trademark protection, simply because an applicant procured another form of intellectual property protection, no longer applies to design patents, utility patents, or copyrights."

The Board, however, noted that TrafFix does not provide any "real support" for KRB's position, and in fact "provides an analogy that indicates that a varietal name is generic." TrafFix dealt with the role of utility patents in a trademark functionality analysis. With regard to a patent, the owner might be able to show that a feature included in the patent claims was merely an "ornamental, incidental, or arbitrary aspect[] of the device" and thus eligible for trademark protection. However, plant variety protection certificates are a different animal: an applicant for such a certificate must provide a name for the new variety.

"This requirement is certainly not 'an ornamental, incidental, or arbitrary' aspect of the certification, but is a necessary element, showing that the name of the varietal is in the nature of a generic term."

Moreover, the United States is a member of the International Convention for the Protection of New Varieties of Plants (UPOV), which is implemented by, inter alia, the United States Plant Variety Protection Office. That convention requires that a new plant variety be given a denomination which will be its generic name, and member states must ensure that this denomination is freely available for use even after any plant patent protection expires.

"Thus the policy of the USPTO is in accord with the PVPA [the Plant Variety Protection Act], UPOV and case law since 1942, all of which codify and implement the common sense notion that when a new plant is created it must be called something, and that when others begin to sell it after expiration of the breeder'’s protection period they need to call it by the name that it is known [sic] or otherwise consumers will not know what they are buying."

The Board therefore "reiterate[d] the correctness of the case law that 'varietal names are generic designations and cannot be registered as trademarks.'"


TTABlog question: Is this such a seminal case that it deserves to be citable?

Text Copyright John L. Welch 2005

TTAB Citable Decision Says Author's Name May be a Trademark, but Refusal of "FERN MICHAELS" is Affirmed

Fern Michaels fans were undoubtedly crestfallen as the TTAB, in its ninth citable decision of 2005, affirmed a refusal to register the pseudonym FERN MICHAELS for a "series of fictional books." Although the Board, in this case of first impression, ruled that an author's name or pseudonym is registrable for a series of books under appropriate circumstances, it agreed with the PTO that, based on the record evidence, FERN MICHAELS does not function as a trademark for Applicant's goods. Had Applicant timely submitted certain proofs, however, the outcome might have been different. In re First Draft, Inc., 76 USPQ2d 1183 (TTAB 2005).


FERN MICHAELS is a pseudonym of Mary Ruth Kuczkir, Applicant's "principal." Under that pseudonym, Ms. Kuczkir has written 67 romance novels, has sold over 60 million copies worldwide, and in 1995 was inducted into the New Jersey Literary Hall of Fame. The specimen book jackets display her name in the usual places, and include a list of other FERN MICHAELS titles.

The Board first tackled a rather strange side issue that the Examining Attorney "had not specifically argued:" whether a pseudonym or a fictitious name can be a trademark. [Logic asks, "why not?"]. Two pre-Lanham Act cases held that a fictitious name in signature form was not a trademark, but post-Lanham Act cases make it clear that there is no distinction between between actual names and fictitious names -- under proper conditions, they may be trademarks or service marks.

Next, the Board considered a procedural question: the significance of third-party registration files. Applicant First Draft submitted TARR printouts and file wrappers for seven registrations for various author's names. The Examining Attorney argued that these items are "without evidentiary value and not binding on the Office." The Board agreed that decisions in other applications are not binding on the Board, but it did consider the files. However, it disagreed with Applicant that the third-party files established "an Office practice contrary to the refusal advanced in this case."

"The fact that a few third-party registrations have been allowed over a long period of time hardly establishes current Office policy. There may very well be as many or more abandoned applications wherein registration was refused on similar records. The Board's responsibility is to focus on the record at hand. We do not think it a useful exercise for applicants and examining attorneys to spend inordinate resources combing through large numbers of registration or abandoned application files when application of the law to the record at hand should suffice."

In any event the Board noted, "most of the limited number of registrations submitted by applicant are distinguishable from the present case."

Fern Michaels
The Board then turned to the first of two substantive questions before it: "whether an author's name is, as a general rule, to be treated as unregistrable matter and if so, why." It noted that the copyright law provides a rationale for such a general rule: registration of the author's name as a trademark would enable the author, upon expiration of the copyright in the work, to perpetuate his or her monopoly, since without the name the copyrighted material would have little value. In Herbko Int'l Inc. v. Kappa Books, Inc., 64 USPQ2d 1375, 1378 (Fed. Cir. 2002), this copyright rationale provided additional support for the policy against finding proprietary rights in titles of single books. The Board, however, found "no clear precedent" applying the copyright rationale to the issue of registration of an author's name for a series of written works.

The Board also noted another rationale "arguably supporting" a rule that an author's name should not generally be registrable, one rooted in certain cases discussed in Professor McCarthy's treatise: a personal name is essentially descriptive. However, because neither the PTO nor the applicant discussed the descriptiveness issue, the Board declined to consider it as a basis for the refusal.

ABBA
In answering the first question, the Board relied on In re Polar Music Int'l AB, 221 USPQ 315 (Fed. Cir. 1983), wherein the CAFC held the name ABBA to be registrable as a trademark for recorded musical performances by that group. The appellate court cautioned, however, that

"just showing the name of the recording group on a record will not by itself enable that name to be registered as a trademark. Where, however, the owner of the mark controls the quality of the goods and where the name has been used on different records and has therefore come to represent an assurance of quality to the public, the name may be registered as a trademark since it functions as one." Id. at 318.

The Board also looked to its own precedent in In re Scholastic Inc., 23 USPQ2d 1774 (TTAB 1992), which relied on Polar Music. In Scholastic, the Board ruled that repeated use of THE MAGIC SCHOOL BUS in various titles of a series of books, together with evidence of promotion and recognition, "meant" that the designation had become a trademark.


The Board concluded that there are two routes to proving that an author's name for a series of books functions as a mark:

"as a general rule, an author's name is not registrable for a single work, but may be registrable for a series of written works, when there is sufficient indicia that the name serves as more than as a designation of the writer, that is, that it also functions as a mark. This may be shown by providing evidence of the sort presented in Polar Music [quality control]; or it may be shown, akin to the showing in Scholastic, by submitting evidence of promotion and recognition...."

The second substantive question faced by the Board was whether the evidence was sufficient to establish that FERN MICHAELS functions as a mark. There was no doubt that FERN MICHAELS has been used as the author's name for a series of books, and so the question became whether Applicant could meet either the Polar Music or the Scholastic test.

As to quality control, the lack of evidence here was in "stark contrast" to the Polar Music case. Although the Board "would not have been surprised" if First Draft had shown that it "was formed to be the 'corporate entity' of Ms. Kuczkir and to negotiate contracts, licensing, and other issues related to FERN MICHAELS publications, just as Polar Music International AB was the corporate entity of the performing group ABBA in the Polar Music case." However, Applicant here provided no such evidence.

As to the Scholastic analysis, here the evidence of promotion is "indirect and rather scant." Unlike in Scholastic, Applicant First Draft did not submit promotional materials or third-party reviews, nor did it provide information as to sales and advertising, nor declarations from publishers, retailers, or readers.

Thus Applicant's proof failed under both the Polar Music test and the Scholastic test, and therefore the Board affirmed the refusal to register.

TTABlog Query: Suppose Applicant were to seek review of this decision by way of civil action in a federal district court under 15 U.S.C. Sec. 1071(b). Now that Applicant knows what has to be proven, why not submit the required evidence to the district court in a "de novo" review of the Board's decision?

Text Copyright John L. Welch 2005.

CAFC Vacates TTAB's Summary Judgment in "BERKSHIRE" Res Judicata Case

Concluding that the TTAB erred in applying res judicata and collateral estoppel arising out of a prior district court litigation, the CAFC vacated and remanded a summary judgment dismissal of a Section 2(d) opposition involving the mark BERKSHIRE for various clothing items. Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 76 USPQ2d 1310 (Fed. Cir. 2005) [precedential].

In the opposition, filed in 1989, Mayer/Berkshire alleged a likelihood of confusion between Berkshire Fashion's mark BERKSHIRE for various items of apparel (class 25), and Mayer/Berkshire's identical mark registered in class 25. In December 2003, the Board granted summary judgment in favor of Berkshire Fashions, ruling that the issue of likelihood of confusion had been decided in an earlier civil action and could not be re-litigated.

The CAFC observed that "[c]aution is warranted in the application of preclusion by the PTO, for the purposes of administrative trademark procedures include protecting both the consuming public and the purveyors."

"Thus the party objecting to a registration may raise grounds not only of commercial injury to itself, but of confusion or deception or mistake to the consumer. The public policy underlying the principles of preclusion, whereby potentially meritorious claims may be barred from judicial scrutiny, has led courts to hold that the circumstances for preclusion 'must be certain to every intent.'"

Here, the appellate court found that the questions of likelihood of confusion "presented sufficiently different issues and transactional facts to bar the application of preclusion."

The CAFC cited TTAB precedent stating that "in Board proceedings, likelihood of confusion is determined independent of the context of actual usage. In an infringement action, on the other hand, the context of the use of the mark is relevant." In the district court action, the issue was whether Berkshire Fashion's marketing of specific products with either the BERKSHIRE mark or the Berkshire Fashions trade name was likely to cause confusion with the registered BERKSHIRE mark of Mayer/Berkshire. In the opposition, however, the Board must consider "not only what the applicant has already marketed or has stated the intention to market, but of all items for which registration is sought."

Here, the parties disputed the extent to which Berkshire Fashions' application embraced a broader list of goods than those considered by the district court. Mayer/Berkshire pointed out that the trial exhibits did not include any sweaters, vests, or pants, all of which are included in the opposed application. The CAFC observed that since the Board did not consider the additional goods in the application, that alone rendered summary judgment improper.

In addition, in the opposition Mayer/Berkshire offered evidence of actual confusion arising from "materially changed marketing practices" by Berkshire Fashions after the district court's decision. That, too, precluded summary judgment.

The CAFC therefore vacated the summary judgment and remanded the case to the TTAB for further proceedings

Text Copyright John L. Welch 2005

TTAB Reverses 2(d) Refusal: "BEYOND THE EXPECTED" and "BANKING BEYOND YOUR EXPECTATIONS" Too Dissimilar

The first du Pont factor was dispositive in the Board's reversal of a Section 2(d) refusal to register the mark BEYOND THE EXPECTED for "banking services." The PTO had deemed the mark confusingly similar to the registered mark BANKING BEYOND YOUR EXPECTATIONS for banking and financial services (BANKING disclaimed). In re BCPBank N.A., Serial No. 76513504 (September 7, 2005) [not citable].



The Examining Attorney contended that, because BANKING is merely descriptive and was disclaimed in the registered mark, the dominant portion of that mark is BEYOND YOUR EXPECTATIONS, and that BEYOND THE EXPECTED and BEYOND YOUR EXPECTATIONS create similar commercial impressions.

Applicant BCPBank argued that the Examining Attorney improperly dissected the marks, that consumers of banking services are sophisticated and exercise a high degree of care, that there are a number of third-party marks that include the term EXPECT or EXPECTATION, and that there has been no actual confusion despite nearly two years of contemporaneous use.

As to the first point, the Board agreed with BCPBank, finding that the mark in the cited registration is a unitary phrase that the Examining Attorney improperly dissected "by essentially deleting the term BANKING from the mark when considering the phrase." The Board further found that the marks have different connotations:

"BEYOND THE EXPECTED is likely to be perceived as suggesting that the banking services are better than those offered by other banks; whereas BANKING BEYOND YOUR EXPECTATIONS is likely to be perceived as suggesting that the purchaser's individual banking experience will be beyond his or her personal expectation for such services."

Moreover, the third-party registrations -- for identical services and containing the root word EXPECT -- demonstrate that the mark of the cited registration is a "relatively weak laudatory mark."



Manufacturers and Traders Bank, Buffalo, New York
The Board was not persuaded that purchasers of banking services are sophisticated and careful, since the involved services are presumably offered to all classes of customers, including the general public. As to Applicant's assertion regarding the lack of actual confusion, the Board noted that it had "scant evidence" of the nature and extent of use of the marks, and it pointed out once again that the test is likelihood of confusion, not actual confusion.

Therefore, the Board concluded that confusion is not likely, and it reversed the PTO's Section 2(d) refusal to register.

Text Copyright John L. Welch 2005.

"PLAY THINGS" Merely Descriptive of Pet Treats, Says TTAB

In a decision that Applicant Pet Food Centers surely found hard to swallow, the Board affirmed a Section 2(e)(1) refusal to register the mark PLAY THINGS, finding it merely descriptive of "pet treats" in international class 31. In re Pet Food Centers, LLC, Serial No. 78975330 (September 9, 2005) [not citable].


Examining Attorney Jennifer D. Chicoski gave the Board something to chew on: she relied on dictionary definitions of "plaything" (anything that serves to amuse) and on website excerpts showing "treats shaped like bones, shoes, toothbrushes, and balls, and toys which feature treats to motivate and engage the animal," as well as website excerpts "featuring on-line pet supply retailers who categorize items such as rawhide strips, compressed bones, jerky and edible chews as 'pet treats.'" Ms. Chicoski concluded that "the wording comprising the mark clearly indicates that the purpose or use of the goods is that pets are able to play with them, and the mark is thus merely descriptive."

Applicant got off on the wrong paw by doggedly contending that by separating the compound word playthings, "the components of [a]pplicant's PLAY THINGS trademark coalesce to form the essence of a wholly unique source identifier." In addition, Applicant submitted a TESS list of third-party registrations in class 31 that contain the word PLAY, as well as a list of registrations that contain the word THINGS without a disclaimer. And finally Applicant proffered website excerpts containing the term "playthings" or "play things" for goods other than toys, arguing that the term has "various meanings" and thus does not immediately convey information about Applicant's goods.

The Board pointed out that Applicant was barking up the wrong tree regarding the latter argument: the meaning of the phrase is not to be discerned in a vacuum, but in relation to Applicant's goods. Moreover, even if Applicant were the first to use the mark for its goods, that does not mean that it the mark not merely descriptive. As to Applicant's contention that separating the words "enables the customer's imagination to engage in mental leaps," the Board was not persuaded, finding no new, incongruous meaning in the two-word mark.

The straw that broke the chihuahua's back was Applicant's specimen of use (depicted above). The Board noted that the specimen "demonstrate[s] that a pet treat, in addition to being edible, is something to play with or serves to amuse. The packaging depicts a cat and a dog playing and lists the following items as the goods: chews, toys, and other fun stuff."

The Board therefore concluded that "[w]hen applied to applicant's goods, the phrase PLAY THINGS immediately describes, without conjecture or speculation, a significant feature or function of applicant's goods, namely treats that serve to amuse or may be played with."

Text Copyright John L. Welch 2005.

TTAB Reverses Genericness Refusal of "MICRO COTTON"

The PTO failed to produce the required "clear evidence" to support its genericness refusal of the mark MICRO COTTON for bath linen, towels, napkins, clothing items, and related goods, in classes 24, 25, and 28. In re Sharadha Terry Prods. Ltd., Serial Nos. 78027603 and 78027605 (September 1, 2005) [not citable].

Although the Examining Attorney cited Sections 1, 2, and 45 of the Trademark Act (failure to function as a mark), the Board deemed the refusal to be based on genericness, i.e., that MICRO COTTON is "the generic name of the fabric used to make the involved goods." However, the PTO's evidence showed "mixed uses" of the term MICRO COTTON. As pointed out by Applicant, most of the PTO's evidence:

"either refers to applicant's goods sold under its MICRO COTTON trademark, or shows that the term 'micro cotton' does not exist as an industry term, or the uses of the two words do not relate to the use in the context of these applications, or the uses are misuses of the term."

Observing that that "the overwhelming majority of the evidence does not show generic use of the words 'micro cotton' to refer to a type of fabric," the Board found that the PTO failed to show that MICRO COTTON "is generic for the genus of the type of fabric used to make applicant's involved goods."


Turning to the second prong of the genericness test -- how the relevant purchasers (the general public) would perceive this phrase in relation to Applicant's goods -- the PTO's evidence was "again mixed." (In fact, it was the same evidence). In addition, Applicant submitted "significant evidence in rebuttal -- letters from two professors, a declaration from a customer, Internet search results, and a patent search -- all indicating that MICRO COTTON is not a type of fiber or fabric. Thus the PTO failed to prove that purchasers would perceive MICRO COTTON as the name of the fabric used to make Applicant's goods.

The Board did, however, require that Applicant disclaim the word "cotton," for obvious reasons.

Evidentiary rulings: Before it reached the substance of the case, the Board addressed several evidentiary matters.

First, when Applicant objected to PTO evidence from foreign websites, the Examining Attorney cited In re Remacle, 66 USPQ2d 1222 (TTAB 2002) for the proposition that "web sites deriving from foreign sources should be given the same weight as evidence from U.S. sources because the Internet knows no boundaries." The Board, however, pointed out that Remacle was limited to "particular situations" involving "professionals in medicine, engineering, computers, telecommunications...." Here, however, Applicant's goods are offered to the general public, and consequently Remacle is inapplicable. Therefore, the probative value of the Internet evidence cited by the PTO "is quite limited."

Second, Applicant objected to the PTO's list of Google search results (i.e., a "hit" list), but the Board ruled the list admissible, though of limited probative value: "evidence of use of a term or phrase in headings or content on individual websites has far greater probative value." See In re Fitch IBCA Inc., 65 USPQ2d 1058 (TTAB 2002).

Third, Applicant offered new evidence with its brief: the full text of a NEXIS article that the Examining Attorney had submitted in excerpt form, and additional pages from websites from which the PTO had submitted other pages. Applicant cited In re Bed & Breakfast Registry, 229 USPQ 818, 820 (Fed. Cir. 1986) in support of its position. The Board agreed with Applicant with regard to the NEXIS article, but declined to "extend" Bed & Breakfast to web pages because, unlike NEXIS articles, websites are "transitory" (i.e., "Internet websites may be modified or deleted at any time").

Text Copyright John L. Welch 2005

Hasbro "COTTON CANDY" Pony Finishes Out of the Running in TTAB Cancellation Clash

Like the proverbial rented mule, Hasbro, Inc. took a beating in its Section 2(d) opposition to registration of the mark COTTON CANDY CLOUD CASTLE for dolls, dollhouses, and other toys. Hasbro relied on its registration of and common law rights in the mark COTTON CANDY for a "toy pony," but Applicant Mitchell W. Goldman successfully counterclaimed for cancellation of Hasbro's registration on the ground of abandonment. Hasbro, Inc. v. Goldman, Opposition No. 91156238 (August 29, 2005) [not citable].


Hasbro stumbled out of the gate when it failed to submit a status-and-title copy of its COTTON CANDY registration or otherwise prove ownership. However, Goldman's counterclaim for cancellation made the registration of record in the proceeding as a whole. See Rule 1.133(b)(1).

Hasbro's testimony showed that it began using the COTTON CANDY mark in 1982 in conjunction with its "My Little Pony" line of products. However, sales were discontinued during the period 1992-1996, during which time Hasbro "decided to 'rest' the My Little Pony line of products." During 1996-1999, Hasbro re-launched the line, but not including the COTTON CANDY mark. In 2003, Hasbro started up again, and included a "toy pony" under the COTTON CANDY mark. The Board noted Hasbro's testimony that My Little Pony television specials and a movie were made in the 1980s, and a video was sold in 1991 featuring COTTON CANDY, but the evidence was limited and unclear. At most, COTTON CANDY was used as a character name, and not as a mark for a product, "and certainly not as a mark for 'toy ponies' in International Class 28."

Priority: Hasbro strayed way off course in asserting that, even if its registration were cancelled, it would have priority over Goldman because it reintroduced the mark in 2002 and therefore is the "senior user" since ITU applicant Goldman had yet to use the mark. The Board quickly reined in that argument, pointing out the fundamental rule that in an opposition, an ITU applicant is entitled to rely on its filing date as a constructive first use date. See Zirco Corp. v. American Tel. and Tel. Co. 21 USPQ2d 1542 (TTAB 1991).

Abandonment: There was no real dispute that Hasbro discontinued use of the COTTON CANDY mark for three consecutive years prior to Goldman's filing date of February 7, 2001. Under section 45, nonuse of a mark for a three year period constitutes prima facie evidence of abandonment. This shifted to Hasbro the burden to produce evidence showing that it intended to resume use.


Hasbro's testimony that it had an intent to resume use during "the break in use from 1987 through 2002" was accorded little weight (since "[i]n every contested abandonment case, the respondent denies an intention to abandon its mark; otherwise there would be no contest.") Hasbro emphasized:

"(1) that it 'recycled' the various My Little Pony characters; (2) that Hasbro considered the My Little Pony line, including its original characters, such as COTTON CANDY, a 'core brand' for the company; (3) that Hasbro 're-released' the 1991 video 'featuring' the original toy ponies, including COTTON CANDY; and (4) that an avid collector's market existed for the sale of the original toy ponies including COTTON CANDY in the years following 1987."

The Board was not carried away by Hasbro's assertions. It noted that nothing in Hasbro's testimony about recycling or its "core brand" referred to its intentions regarding the COTTON CANDY toy pony. The evidence as to the 1991 video was sparse and at most indicated possible use of COTTON CANDY as a character name in the video. As to the collector's market, Hasbro's evidence concerned a period after 2003, and in any case was "no way probative of what Hasbro's intentions were with regard to any future use of COTTON CANDY on toy ponies from 1987 to 2002."

The Board concluded that Hasbro had abandoned the COTTON CANDY mark as of the filing date of the Goldman application.

Fraud: Goldman also claimed that Hasbro committed fraud when it filed its combined Section 8 and 15 declaration for the COTTON CANDY registration in September of 1989 [the Board erroneously refers to this as a combined Section 8 and 9 declaration], first because it averred that the mark had been in use for five consecutive years. However, the person who signed the combined declaration did not testify, and there was testimony that COTTON CANDY was used in the late 1980s as a "cutie mark" on another toy pony known primarily by another name. Thus the Board found the evidence too ambiguous to permit a finding of fraud.

Goldman also claimed fraud because the combined declaration stated that the mark was in current use, but the specimen did not show "current" use. The Board, however (apparently unwilling to saddle Hasbro with a fraud charge), pointed out that the acceptability of a specimen is not a separate ground for cancellation, and it declined to find fraud on that basis.

Text Copyright John L. Welch 2005.

TTAB Cancels Registration of Deceptively Misdescriptive "ZHIGULY" for Beer

Doyna, Ltd., a New York importer of alcoholic beverages, succeeded in convincing the Board that the registered mark ZHIGULY for beer is primarily geographically deceptively misdescriptive because Zhiguly is a region of Russia, known for beer, whereas Registrant Doyna Michigan Co.'s beer is brewed in Lithuania. Doyna, Ltd. v. Doyna Michigan Co., Cancellation No. 92033012 (September 6, 2005) [not citable].

In re California Innovations, Inc., 66 USPQ2d 1853 (Fed. Cir. 2003) set forth the standard for determining whether a mark is primarily geographically deceptively misdescriptive under Section 2(e)(3):

(1) the primary significance of the mark is a generally known geographic location;
(2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place; and
(3) the misrepresentation was a material factor in the consumer's decision. 66 USPQ2d at 1858.

As to the first prong of the test, Petitioner's evidence clearly showed that the primary significance of the word Zhiguly (also spelled Zhiguli) is its identification of a geographic location in Russia. The area is known for its natural beauty and is referred to as "the pearl of Russia." Zhiguly is not an obscure place nor is it a small region; it includes a town, a mountain range, and a national preserve each named Zhiguly.

As to the second prong, beer has been produced in the Zhiguly region for more than 40 years, and the region is associated with beer. Petitioner imports beer for its "community" of Russian customers, which numbers some 7.5 million people. Zhiguli beer is listed in the 1982 study "Alcohol in the USSR," and in The World Guide To Beer. Registrant admitted that its beer comes from Lithuania.

And thirdly, the misrepresentation of geographic origin was "a material factor in the consumer's decision" because Zhiguly is known for its beer and the relevant public in this country is aware of that connection.

"According to the record, there are seven and one-half million people in the Russian-speaking community in the United States who would purchase this beer specifically because of the geographic connotation. *** This is not an insignificant number. That is, for at least this number of consumers the term 'Zhiguly,' and the belief that the beer comes from the Zhiguly region, is material to their decision to buy."

Ergo, the Board granted the petition for cancellation on Section 2(e)(3) grounds.

TTABlog comment: Along the way to its decision, the Board made various rulings on the admissibility of the 17 items submitted with Petitioner's Notice of Reliance. The Board first noted that, just because Registrant did not object, that doesn't mean that the Board will allow in evidence not offered in accordance with the Trademark Rules.

Items 1-5 comprised copies of maps from various printed publications, all admissible under Rule 2.122(e).

Item 6 was a copy of Petitioner's requests for admission, which went unanswered; they were admissible under Rule 2.120(j)(3)(i).

Items 7-13 were photocopies of pages from Internet websites. Internet materials are "transitory in nature" and are not self-authenticating; thus they are not admissible under Rule 2.122(e) as printed publications. An affidavit accompanying these items and providing information regarding the sources of the printouts was not admissible, since the parties had not agreed in writing to permit submission of affidavits in lieu of testimony. See Rule 2.123(b). Therefore this Internet evidence was not admissible.

Item 14, consisting of photocopies of one-page letters from four beverage distributors, were not admissible because they are not printed publications under Rule 2.122(e), and Registrant did not stipulate to the entry of such evidence.

Item 15, the affidavit of a Russian-born person living in Tennessee, was inadmissible for the same reason as the affidavit accompanying Items 7-13.

Item 16, a photocopy of Respondent's beer label, was admitted by Respondent in its Answer.

Finally, Item 17, a letter sent to the Board by Registrant during this cancellation proceeding, was inadmissible because it is neither a printed publication nor an official record under Rule 2.122(e).

Text Copyright John L. Welch 2005.

"LOVE" No Passport to TTAB 2(d) Happiness

All you need is love? It ain't necessarily so. Fits Corporation learned that painful lesson in its failed attempt at reversing a PTO Section 2(d) refusal of the mark LOVE PASSPORT for cosmetics and toiletries, including perfumes and cologne. The Board found the applied-for mark confusingly similar to the registered mark PASSPORT for "perfume and cologne." In re Fits Corporation KK, Serial No. 76501790 (August 24, 2005) [not citable].


Examining Attorney Brian J. Pino contended that "the wording LOVE does not distract from the more dominant wording PASSPORT when considering the general commercial impression of the respective marks." Applicant Fits, on the other hand, maintained that the marks do not have the same connotation:

"[T]he composite 'love passport' might inspire one to think of a journey toward happiness, love or fulfillment. The is different from the word 'passport' alone, which simply has a utilitarian concept and meaning and would not generally be linked together with the word 'love,' as is the case in the instant composition."

The Board did not love Applicant's argument; instead it embraced the PTO's position, offering a wordy and unconvincing dissertation on the significance of love in this context. First, it noted the dictionary definition of passport as "something that assures the achievement of something else: Hard work is often a passport to success."

"In the marks, the term 'passport' would likely have the same meaning, i.e., 'something that assures the achievement of something else.' The 'something else' in applicant's case is explicitly identified as 'love.'"

Applicant Fits asserted that "love" is a strong and dominant word, particularly since it is the first word in Applicant's mark. The Board was not attracted by that argument:

"'Perfume' is a 'substance, extract, or preparation for diffusing or imparting an agreeable or attractive smell.' *** Obviously, perfume as an attractive scent can be used to appeal to members of the opposite sex for the purpose of romance or love. The use of 'Love' on such a product would hardly seem unusual."

The Board therefore concluded that LOVE PASSPORT and PASSPORT would have the same connotation for perfume "because both would suggest that the perfume is a passport to love or romance."

"The term 'Passport' would be the dominant part of both marks because, in registrant's mark, it is the only term and, in applicant's mark, the additional word 'Love' merely identifies more specifically the goal or destination of the 'Passport.'"

Comparing the marks in their entireties, the Board concluded that, while the marks are not identical, they are "very similar" in meaning and connotation, and their appearance and pronunciation "would not be dissimilar." Ergo, it affirmed the Section 2(d) refusal to register.


TTABlog comment: Remember the J. Giels Band's song, "Love Stinks"? This decision brought that song to mind. I agree with Applicant that "passport" by itself has a different connotation than "love passport." The former brings to mind travel to exotic foreign lands, strange smells, and so forth. "Love passport" brings to mind, well, "love." The "passport" portion suggests that the perfume or cologne will be a free pass to that love. On that point, I agree with the Board.

However, I just don't see the evidence to support the Board's conclusion regarding the connotation of the mark PASSPORT. The discussion and application of the dictionary meaning of "passport" by itself is contrived and unconvincing. In my book, love conquers all.

Text Copyright John L. Welch 2005

Boston Patent Law Association Hosts "Trademark Year in Review: 2005"

The Trademarks and Unfair Competition Committee of the Boston Patent Law Association (BPLA) will host its "TTAB Year in Review: 2005" on the morning of Wednesday, October 19, 2005, at the Seaport Hotel in South Boston. The brochure for the event may be found here.

Highly romanticized representation of the Seaport Hotel
My Committee co-chair, Cynthia Walden Johnson of Fish & Richardson, and I are delighted to present a stellar lineup of speakers:

• Sharon Marsh - USPTO Administrator for Trademark Examination Policy
• Michael Boudett - Foley Hoag LLP
• Pamela S. Chestek - Reebok International Limited
• Douglas R. Wolf - Wolf, Greenfield & Sacks, P.C.
• Prof. Stacey L. Dogan - Northeastern University Law School

These five authorities on trademark law and practice will review the year's significant developments, including the latest changes at the USPTO, important decisions from the Supreme Court, the First Circuit and its district courts, and the TTAB, and recent activities on the legislative front. We hope to see you there.


Text Copyright John L. Welch 2005.

"SYNTHETEK" Not Generic for Synthetic Paper, Says TTAB

The Board reached the right result (but for the wrong reason?) in reversing a refusal to register the mark SYNTHETEK for "synthetic paper" on the Supplemental Register. In re Rocheux Int'l of New Jersey, Inc., Serial No. 78262721 (August 18, 2005) [not citable].

SYNTHETEK
The Examining Attorney relied on a dictionary definition of "synthetic" and on NEXIS and Internet evidence referring to "synthetic paper." She contended that consumers would understand that Applicant's paper is synthetic, that the evidence show that "synthetic paper" is a type of paper, and that Applicant's misspelling of a generic term is still generic.

Rocheux International argued that the PTO may have established that "synthetic paper" is generic, but not that SYNTHETEK is a generic term. Moreover, Applicant pointed out, the suffix "TEK" is the phonetic equivalent of "tech" and could refer to "technical."

The Board sided with Rocheux. noting that the NEXIS and Internet materials submitted by the PTO do not show any use of SYNTHETEK:

"while there is clear evidence that the phase 'synthetic paper' is generic for a particular type of plastic film used for a wide variety of products, there is no evidence that the word SYNTHETEK is the name of the genus for 'synthetic paper."

Even assuming that SYNTHETEK is a phonetic misspelling of "synthetic," the Board went on, the mark is still not generic. The Board distinguished cases involving the generic terms ICE PAK and MINERAL-LYX, because those are misspellings of generic terms, while SYNTHETEK is a misspelling of a word that is not generic.


TTABlog comment: It seems to me that if the term SYNTHETEK were the phonetic equivalent of "synthetic," then SYNTHETEK might well be generic. Wouldn't it be similar to the term ATTIC, held to be generic for sprinklers in In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998)?

". . . we recognize that applicant's mark does not present the classic case of a generic noun, but rather a generic adjective. In this case, because the term ATTIC directly names the most important or central aspect or purpose of applicant's goods, that is, that the sprinklers are used in attics, this term is generic and should be freely available for use by competitors." 49 USPQ2d at 1199

See also the Warehouse Fashion decision from last October (TTABlogged here), in which the Board found the term WAREHOUSE to be generic for retail store and mail order services in the field of clothing, footwear, and other personal consumer goods.

Perhaps the better approach for the Board would have been to say that, while "synthetic" may be generic for Rocheux's goods, SYNTHETEK is not clearly the phonetic equivalent of "synthetic." The syllable "TEK" is pronounced differently that "tic," and in fact may result in the three syllables being accentuated differently.

Text Copyright 2005 John L. Welch.

TTAB Reverses Genericness Refusal, Finds "ULTIMATE FIGHTING" Registrable under Section 2(f)

The Board declared Applicant Zuffa, LLC the victor in its bout with the PTO over the mark ULTIMATE FIGHTING for "entertainment, namely live stage shows and performances featuring sports and mixed martial arts" in Class 41. Not only did the Board overturn the PTO's genericness refusal, but it also found the mark registrable under Section 2(f) in view of Applicant's impressive proofs. In re Zuffa, LLC, Serial No. 75982336 (August 18, 2005) [not citable].


Genericness: The Examining Attorney relied on NEXIS stories and third-party websites in support of her contention that ULTIMATE FIGHTING is generic. The Board agreed with Zuffa, however, that the "overwhelming majority" of the examples refer directly to Applicant, while numerous others are indirect references (referring to events or personalities associated with Zuffa's services). Relatively few references show generic use of ULTIMATE FIGHTING to refer to sporting events.

The Board found that there is "insufficient clear evidence" to satisfy the PTO's burden of proof. The evidence is "mixed" as to how relevant purchasers (fans who either attend or purchase pay-per-view for Zuffa's events) would perceive ULTIMATE FIGHTING. Importantly, none of the PTO's evidence predated Zuffa's first used date in November 1993.


Secondary Meaning: The PTO's evidence did establish that ULTIMATE FIGHTING is merely descriptive of Zuffa's services, and therefore it was Zuffa's burden to establish acquired distinctiveness. Applicant submitted a 5-year use declaration, a declaration from its president, 31 declarations signed by "various people in the mixed martial arts field," printouts from its website, a copy of the Nevada statute defining "mixed martial arts" and not using the words "ultimate fighting," and evidence of Zuffa's policing efforts.

Zuffa proved use of the mark since 1993, advertising and promotional expenditures of more than $10 million, $50 million in "commercial value" from its broadcast partners and licensees, $50 million in ticket sales and broadcast revenues, and several million pay-per-view purchases by "households, sports bars and similar pay-per-view distribution channels." Thus its "nationwide sales revenues and advertising expenditures are substantial."

The Board particularly noted the 31 declarations of "various people," including government officials, boxer/trainer Peter Welch [not my son], owners of competitive events, and members of the media [but not one blogger]. Each declarant averred that ULTIMATE FIGHTING and ULTIMATE FIGHTING CHAMPIONSHIP are trademarks owned by applicant, that they identify Applicant's events, and that the marks are associated exclusively with Applicant.

"These declarations are significant direct evidence of purchaser and user recognition of the phrase ULTIMATE FIGHTING as applicant's mark for its entertainment services."

Consequently, the Board overruled the PTO's rejection of Zuffa's Section 2(f) evidence, and deemed the mark registrable.

Text Copyright John L. Welch 2005.

TTAB Query: "QUINTUS" and "QUANTUM" Confusingly Similar for Wine?

Quite unsurprisingly, the Board quenched the attempt of Chatam International to quash an application to register QUINTUS for wine, an attempt predicated on the Opposer's clearly questionable assertion of confusing similarity to QUANTUM for wine. Chatam Int'l Inc. v. Indomita Wine, S.A., Opposition No. 91155603 (August 24, 2005) [not citable].


Because the goods involved are identical, the Board observed that the degree of similarity in the marks necessary to support a finding of likelihood of confusion is diminished. It sliced and diced the marks in question, picked them apart, and held up the pieces to its collective, discerning eye.

The Board agreed with Opposer's astute observation that the marks have "certain letters in common," but it rejected Opposer's cock-eyed contention that the "QU" combination is unusual and eye-catching. The trademark tribunal authoritatively observed: "'Q' is one of the letters of the western alphabet, and it almost always requires the letter 'U' as the letter following the 'Q.'"

The Board recognized that each mark has seven letters, begins with the letters "QU," and has the letters "NTU" in the middle, but it also cleverly pointed out some differences: "their initial vowel, the third letter, is a different vowel and the final letter is different."

As to pronunciation, Opposer asserted that "five of the seven sounds in 'QUINTUS' are identical to five of the seven sounds in 'QUANTUM.'" Then Opposer got quite fancy:

"Finally and equally important, both 'QUANTUM' and 'QUINTUS' have the same morphemic structure. A morpheme is a minimal meaningful unit. In both cases, there is a morphemic root, 'QUANT' in one case, 'QUINT' in the other, and a morphemic suffix 'UM' in the one case, and 'US' in the other."

The Board, however, side-stepped Opposer's attempt to inject morphemes into the deliberations, and instead cut to the chase: "Ultimately, ... the marks would not sound very similar."

As to meaning, the word quantum is defined as "amount," while quintus is defined as the "fifth voice in medieval music." The Board recognized, however, that most people would be unaware of the dictionary definition of quintus, and would likely view it as a Latin-sounding word, perhaps associating it with the word "quint," meaning fifth. Consequently, our favorite tribunal concluded that the meanings would not be similar.

Finally, the Board found that the commercial impressions of the marks would not be similar: Opposer's mark would be recognized as the English word "quantum," while the unusual term "quintus" would be seen as an arbitrary term or a term with a Roman or Latin connotation.

In sum, the Board acknowledged some similarities between the marks, but the differences in pronunciation, appearance, meaning, and commercial impression outweighed the similarities.

Q.E.D.

Text Copyright John L. Welch 2005.

TTAB Finds "SING-A-LONG" Generic for Karaoke Players

In a less than convincing decision, the Board affirmed a refusal to register the term SING-A-LONG on the Supplemental Register, finding it to be generic for "karaoke players." In re Mana-Tee Concepts USA, LLC,Serial No. 76518416 (August 24, 2005) [not citable].

Applicant's specimen of useClick on photo for larger view
The Examining Attorney submitted Internet evidence showing use of such phrases as "Sing-Along Player/Recorder," "Singalong Microphone," and "sing-a-long tape" in connection with various karaoke equipment. The Board was convinced that "karaoke players are also known as 'sing-a-long' karaoke or cassette players." It noted that "Karaoke" is defined as a Japanese word meaning "a device that plays instrumental accompaniments for a selection of songs to which the user sings along and that records the user's singing with the music." [emphasis in original].

"Therefore, Applicant's term emphasizes to purchasers not familiar with the Japanese word that 'Karaoke' is a sing-a-long device. 'Sing-a-long' is an alternative English generic term that makes clear what a 'karaoke' player is."

The Board noted that "Shoppers at bizrate.com are directed to: 'Karaoke Equipment>Sing Along,'" and that another website "clearly uses the term generically" when it displays the phrase "Care Bears Sing-Along Player/Recorder," which one may use to record "your performances in your sing-along recorder," using a "sing-along microphone." Applicant's own specimen used the term "Sing-A-Long & Record with two Detachable Microphones." According to the Board, this evidence "clearly supports the conclusion that purchasers would understand the term 'Sing-A-Long' to primarily refer to the genus of the goods." [The Board never clearly defined what that genus was].

Applicant purportedly admitted that "sing-along" is a "non-registrable generic term," but it feebly argued that its variation in spelling suffices for registration on the Supplemental Register. The Board quickly pulled the plug on that assertion, noting, inter alia, that a misspelling of a generic term is still generic.

The Board therefore concluded that SING-A-LONG is generic.

TTABlog comment: The finding on this record that "SING-A-LONG" is generic is rather troublesome, since nothing in the PTO's evidence showed use of the term "SING-A-LONG" as a noun -- only as a a verb or as an adjective modifying "karaoke," or "player," or "microphone" or other nouns. Although "karaoke" may be a word of Japanese origin, it has surely been absorbed into the language of the average American consumer. Indeed, the PTO allowed use of the term "karaoke" in Applicant's identification of goods. If the term were not commonly understood in this country, surely the PTO would have required clarification. Therefore, the Board’s assertion that “’Sing-a-long’ is an alternative English generic term that makes clear "what a 'karaoke' player is" seems dubious.

Moreover, the supposed admission of genericness made by Applicant is muddy at best, which is probably why the Board relied on other evidence to support its affirmance.

SING-A-LONG certainly is highly descriptive of karaoke players, and is widely used to describe various electronic devices. In light of this usage, the term should be unregistrable even on the Supplemental Register because it is not capable of distinguishing Applicant's goods -- the requisite exclusivity could not possibly be established. Perhaps the Board felt compelled to find genericness - rather than allow this highly descriptive term to be added to the Supplemental Register -- because that was the only ground on which the PTO had refused registration.

Text Copyright John L. Welch 2005

D.C. District Court Tosses Out TTAB "Appeal" That Raised Only New Issues

Section 21(b) of the Trademark Act, 15 U.S.C. Sec. 1071(b), provides for review of a TTAB decision by way of civil action in a federal district court. Mitchell Cosmetics took that route after the Board's unfavorable decision in Opposition No. 91122317, but its lawsuit was short-lived. The district court threw the case out because Mitchell raised only issues that had not been raised before the TTAB. Mitchell Cosmetics SARL v. Pramil S.R.L. (Esapharma), Civil Action No. 04-1557 (RCL) , 2005 U.S. Dist. LEXIS 18915 (D.D.C. August 29, 2005). [TTABlog update: see the 2008 posting (here) entitled "DC Circuit Rules TTAB Party May Raise New Issues in 21(b) Civil Action for Review."]

Mitchell and Opposer Pramil each claimed rights in the identical design mark (shown above) for skin and body lotions and like products. Thus the only issue in the Section 2(d) opposition was priority of use, and Pramil prevailed. The Board therefore sustained the opposition.

In its appeal, Mitchell did not question the ruling on priority, but instead raised three entirely new issues: (1) that Pramil's product contains an unapproved drug and therefore cannot be legally sold in the U.S.; (2) that Pramil abandoned its rights in the mark; and (3) that Pramil's agents had agreed with Mitchell that the mark would be jointly owned.

Pramil moved for judgment on the pleadings (FRCP 12(c)), or alternatively for summary judgment, arguing that "a party cannot raise an issue in the District Court that was not raised in the Patent Office proceedings." The court agreed, quoting Gold Seal Co. v. Weeks, 129 F. Supp. 928, 937 (D.D.C. 1955):

"we are satisfied that Congress did not intend, by setting up review in this court, to transfer the functions of the Patent Office to the District Court.... We will not pass upon those claims which have not first been considered on the merits by the Patent Office."

The court recognized that the three issues set out in Mitchell's complaint "were never [pled] nor addressed by the parties in their briefs and they are not mentioned in the TTAB's decision."

"Thus all plaintiff's claims here are new issues that are outside the scope of this Court's review. The governing law does not allow the Court to hear the entire trial testimony of the plaintiff for the first time when no testimony was presented before the TTAB concerning these issues. To have a complete trial where all the evidence was being presented for the first time would also be improper since it is beyond the scope of review of the TTAB rulings that Congress established for this Court."

And so the Court granted defendant's motion to dismiss.

Text copyright John L. Welch 2005

TTAB Finds "BEYOND VODKA" Confusingly Similar to "BEYOND MERLOT"

Once again, third-party registrations played a major role in the Board's affirmance of a Section 2(d) refusal to register. It ruled that the mark BEYOND VODKA for vodka ("VODKA" disclaimed) is likely to cause confusion with the registered mark BEYOND MERLOT for wine ("MERLOT" disclaimed). In re Frank-Lin Distillers Prods., Ltd., Serial No. 76419825 (August 24, 2005) [not citable].


In view of the disclaimers, the Board understandably found the word BEYOND to be the dominant part of each mark. In fact, the word BEYOND is emphasized on Applicant's specimen label, a fact which is "probative of the significance which the mark is likely to project to purchasers." In both marks, the term BEYOND "would seem to suggest that the goods are something more than ordinary 'Vodka' or 'Merlot.'" The Board concluded that the marks are similar in their entireties in sound, appearance, meaning, and commercial impression.

As to the goods, the Board noted that the identifications of goods in the application and the registration are unrestricted as to price or quality and thus encompass "relatively inexpensive wine and vodka that would be purchased on impulse by purchasers who were not very discriminating or sophisticated purchasers."

Examining Attorney Georgia Ann Carty Ellis submitted "numerous trademark registrations to show that the same entities have registered a common mark for vodka and wine."

"We have held that although third-party registrations 'are not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, [they] may have some probative value to the extent that they may serve to suggest that such goods or services are the type which may emanate from a single source.' In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)."

Moreover, shifting into litotes, the Board observed that TTAB case law "suggests that wine and vodka are not unrelated goods."

Applicant Frank-Lin Distillers uncorked several worthless arguments that the Board found completely unpalatable: that wine buyers are a "highly sophisticated group;" that evidence of the fame of the registered mark is lacking; that there is no evidence of actual confusion; and that there are no similar marks for similar goods in the PTO records. The last argument was a particularly sour once, since the absence of other registrations "would ordinarily be a fact that would indicate that there is a likelihood of confusion and not, as applicant suggests, a fact that favors its position."

The Board therefore affirmed the refusal to register under Section 2(d)

Text Copyright John L. Welch 2005.

TTAB Sustains St. Nick Music's 2(d) Opposition to "LOLLY-JOLLY" for Candy

Any day now, with the holiday shopping season only three months off, we'll be hearing the song that made Burl Ives semi-famous: "Have a Holly Jolly Christmas." Applicant Lolly-Jolly, Inc. won't be so jolly, however, after the Board sustained a Section 2(d) opposition brought by St. Nicholas Music (owner of the copyright in the song) to registration of the mark LOLLY-JOLLY for "candy." The Board found the mark likely to cause confusion with Opposer's HOLLY JOLLY mark registered for "fruit-based snacks." St. Nicholas Music Inc. v. Lolly-Jolly, Inc., Opposition No. 91155371 (August 24, 2005) [not citable].


St. Nicholas relied on both the fruit-based snacks registration and a second registration of HOLLY JOLLY for song books, plush dolls, musical toys, and entertainment services. Applicant L-J did not take testimony or submit any evidence, although it did submit a brief.

As to the first du Pont factor, the Board found the marks to be "substantially similar" both in appearance and sound. As to connotation, the marks obviously differ: the Board took judicial notice that LOLLY means "lollipop" while HOLLY means "Any of numerous trees or shrubs of the genus Ilex, usually having bright red berries and glossy evergreen leaves with spiny margins." The overall commercial impressions are "substantially similar because the difference in meaning of the first word in the parties' marks is overshadowed by the visual and phonetic similarities, particularly the rhyming qualities of the two words within each of the respective marks." On balance, the Board concluded that the marks are "substantially similar."

In light of this degree of similarity, the degree of relationship between the goods and services of the parties need not be as high to support a finding of likelihood of confusion. The Board noted that Applicant L-J's catalogues include fruit-flavored jelly lollipops, "which could be considered a fruit-based snack." Moreover, St. Nick's packaging "depicts little gummy-type pieces that look similar to candy." Several TESS printouts of third-party registrations "include candy or gummy products and fruit-based snacks or fruit snacks." The goods of the parties would be marketed in the same channels of trade, and would be ordinary consumer items purchased without a great deal of care. "These findings under the second, third, and fourth du Pont factors all weigh significantly in opposer's favor...."

With regard to the song books and entertainment services of St. Nick's other registration, the record did not establish any possible relationship to Applicant's candy. Opposer did submit TESS printouts of third-party registrations that include both candy and toys, but "several of these examples include a wide variety of goods (e.g., Knott's, Atlantis the Lost Empire) and, as such are of limited value as regards candy and toys specifically."

The Board concluded that the record supports a finding of likely confusion between HOLLY JOLLY for fruit-based snacks and LOLLY-JOLLY for candy, and it therefore sustained the opposition.

TTABlog note: Opposer's reference to the song "A Holly Jolly Christmas" was a red herring. St. Nick's evidence of its copyright and of the fame of the song was of "little probative value" because Opposer did not establish any trademark rights in the song title, nor any "link between the song and any derivative fame from the song and opposer's HOLLY JOLLY trademark for the identified goods and services."

TTABlog comment: In my experience, children are the main consumers of candy, and they are discriminating consumers. What child worth his or her sugar would choose a LOLLY-JOLLY thinking it was a HOLLY JOLLY, or vice versa? A LOLLY-JOLLY is obviously a lollipop named Jolly. Holly Jolly is a happy leaf. Q.E.D.

Text Copyright John L. Welch 2005.