CAFC Affirms TTAB in Two Nonprecedential Decisions

Sorry, but no TTABlog treats on this Eve of All Hallows. Just two non-tricky, nonprecedential decisions handed down last week by the CAFC. The first involved frequent TTAB litigant and Cubs fan Leo Stoller and his bungled attempt to oppose registration of the mark DARKSTAR for infrared night vision systems . The second concerned a PTO requirement that the Applicant disclaim the word STEREOTAXIS from its word-and-design mark (shown below) for various magnetic medical devices and related services.

No, it's not from the Paris Hilton videotape!
In Stoller v. Northern Telepresence Corp., Appeal No. 05-1320 (October 28, 2005), the CAFC affirmed the TTAB's dismissal of Stoller's opposition, concluding that "substantial evidence supports the Board's finding that Mr. Stoller failed to file a timely request for extension of time in which to file his opposition." [The TTAB decision is discussed here at the TTABlog]. After calling for and reviewing the full TTAB record, the court agreed that each of Stoller's three attempts to file a request for extension of time was either defective or untimely.


In In re Stereotaxis, Inc., 77 USPQ2d 1087 (Fed. Cir. 2005), the CAFC upheld the Board's decision affirming the PTO's requirement that Applicant Stereotaxis, Inc. disclaim the word STEREOTAXIS in the mark shown immediately above.

The PTO relied on dictionary definitions and a press release from one of Applicant's investors to show that "stereotaxis" is a technique using scanners to create three-dimensional pictures, and that these definitions "describe several uses the Applicant ascribed to its products and services in its trademark registration application."

Stereotaxis argued that the Board "failed to consider dictionary definitions that are 'more reflective of the purchasing public's understanding of the term.'" The court, however, observed that "[t]o prevail in its claim, the Applicant must show that its proposed definition [requiring an external reference frame, a computer, and a scanning device] would be understood by the relevant public -- here the medical profession -- to be the only meaning of the term." Stereotaxis failed to make that showing.


As to the press release, Stereotaxis pointed out that it was neither made on its behalf nor was it contemporaneous with the trademark application. The Board, however, deemed the press release relevant because "it is evidence of the public's perception of the applicant's products and services."

The court therefore ruled that substantial evidence supported the Board's finding that "stereotaxis," as applied to Applicant's products and services, is merely descriptive.

Text Copyright John L. Welch 2005.

"THE GREATEST BAR" Double Entendre Argument Loses Appeal Before TTAB

In the eleventh citable decision of 2005, the Board affirmed a Section 2(e)(1) mere descriptiveness refusal of the mark THE GREATEST BAR for restaurant and bar services. In re The Place, Inc., 76 USPQ2d 1467 (TTAB 2005).


The Board observed that "[l]audatory terms, those that attribute quality or excellence to goods or services, generally are deemed to be merely descriptive" under Section 2(e)(1), citing CAFC decisions involving THE ULTIMATE BIKE RACK and THE BEST BEER IN AMERICA. Therefore, it wasted little time in finding THE GREATEST BAR to be a laudatory mark.

Of more interest to the Board was Applicant's argument that THE GREATEST BAR is not merely descriptive because it is a double entendre, "i.e., it has a second meaning which is not merely descriptive of applicant's restaurant and bar services." According to the Applicant, the second meaning arises from the "trade dress, theme and motif" that Applicant will employ: "a restaurant and bar room experience featuring the most notable people, places, and events in the history of the town in which the establishment is located." For example the bar in Boston will feature:

"the 'greatest' people, places, and events in Boston's history, such as the Blizzard of '78 (asserted to be the greatest snowstorm in Boston's history); Ted Williams (asserted to be the greatest hitter in Boston baseball history); Aerosmith (asserted to be the greatest rock and roll band from Boston); and John F. Kennedy (asserted to be the greatest politician from Boston)." [TTABlog query: What? No Bucky Dent, the greatest nemesis in Boston sports history?]

The Board was "not persuaded." It disagreed with Applicant's premise that "the alleged second meaning of THE GREATEST BAR will be readily perceived by purchasers." [The Board declined to reach the issue of whether the alleged second meaning of the mark is itself merely descriptive of a bar that features the "greatest" elements of the city in which it is located.]

"The multiple interpretations that make an expression a 'double entendre' must be associations that the public would make fairly readily. A mark thus is deemed to be a double entendre only if both meanings are readily apparent from the mark itself. If the alleged second meaning of the mark is apparent to purchasers only after they view the mark in the context of the applicant's trade dress, advertising materials or other matter separate from the mark itself, then the mark is not a double entendre. See In re Wells Fargo & Co., 231 USPQ 95 (TTAB 1986)." [Emphasis in original].

The Board also noted that, although Applicant's current intention or practice is to use its "greatest" theme, the recitation of services is not limited to such use, and thus Applicant would be free to change its theme and motif at any time, leaving it with a registration for a mark with a single, laudatory meaning.


The Greatest BarBoston, MA(click on photo for larger picture)
In sum, the Board found that THE GREATEST BAR "is not a double entendre," but rather is laudatory and merely descriptive of Applicant's services.

Text Copyright John L. Welch 2005.

"SLEEPYHEADS.COM" and "SLEEPY-HEAD HOUSE" Not Confusingly Similar, TTAB Concludes

In a bit of a "yawner," the Board reversed a Section 2(d) refusal to register SLEEPYHEADS.COM for "on-line retail store services featuring clothing," finding the mark not likely to cause confusion with the registered mark SLEEPY-HEAD HOUSE for "retail store services specializing in furniture and bedding." In re Sleepyheads.com Inc., Serial No. 78326944 (Oct. 4, 2005) [not citable].


Trudging somnambulistically through the du Pont factors, the Board found that the "sole point of similarity between the marks, i.e., the presence in both marks of the terms SLEEPYHEADS or SLEEPY-HEAD, is outweighed by the points of dissimilarity." Moreover, the term "sleepyhead" is "highly suggestive as applied to the goods the goods the parties offer." (Applicant's specimen of use included sleepwear). Therefore, the Board ruled that the first du Pont factor favored Applicant.

As to the second factor, the Examining Attorney argued that the services are similar because both Applicant and Registrant are retailers, and she further contended that the "retail store services" of the registration encompass Applicant's "on-line retail store services." The Board disagreed on both points.

The Examining Attorney submitted 12 third-party registrations and applications purporting to show the relatedness of the services (under Mucky Duck). However, the three applications were of no probative value, five of the registrations were for house marks listing a wide variety of goods and services, and sa to the remaining four registrations, "none includes online retailing in its recitation of services, and one does not even include clothing." Consequently, the Board found this evidence to be "de minimis at best, and of little probative value."

The PTO also submitted printouts from several websites, but the Board likewise found them of little probative value. One website primarily concerned Laura Ashley's operations in Europe, and the others "demonstrate that bedding is sold online, but it is not clear that the sources of such bedding also sell clothing, either online or at brick-and-mortar stores."

The Board concluded that the PTO failed to establish that the involved services are related, and so the second du Pont factor favored Applicant.


As to the third factor, the Board found that the services are offered in different channels of trade: "brick-and-mortar stores versus the Internet." The fourth factor pointed in favor of a likelihood of confusion finding: the "purchasers of the respective goods" are the same.

Balancing these du Pont factors, the Board concluded that there is no likelihood of confusion, and it therefore reversed the refusal to register:

"We simply cannot conclude, on this record, that purchasers and prospective purchasers are likely to assume that a brick-and-mortar retail store selling bedding and furniture under the mark SLEEPY-HEAD HOUSE also is or would be a source of clothing which is retailed online under the mark SLEEPYHEADS.COM."

Text Copyright John L. Welch 2005.

TTAB Reverses 2(a) False Connection Refusal of "SANDIA" for Cigarettes

The Board reversed a Section 2(a) "false connection" refusal to register the mark SANDIA for cigarettes, finding that the mark does not falsely suggest a connection with the federally recognized tribe of the Pueblo of Sandia, New Mexico. In re WM Distribution Inc., Serial No. 78195284 (October 13, 2005) [not citable].

Relying on Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 217 USPQ 505 (Fed. Cir. 1983), the Board noted that the elements of a Section 2(a) false connection claim are "distinctly different" from those of a Section 2(d) likelihood of confusion claim. This particular portion of Section 2(a) "resulted from the desire to give statutory effect to the notions of the rights of privacy and publicity." Therefore, the "initial and critical" requirement of this claim is that the mark allegedly appropriated must be unmistakably associated with a particular personality or persona. Following Notre Dame, the Board has enumerated the elements necessary to establish the claim:

1. applicant's mark must be the same as or a close approximation of the "person's" previously used name or identity;
2. applicant's mark would be recognized as such (i.e., the mark points uniquely and unmistakably to that person);
3. the person in question is not connected with the goods or services of the applicant; and
   
4. the person's name is of sufficient fame that when it is used as applicant's mark, a connection with that person would be presumed by purchasers.

Here, the Examining Attorney failed to establish a prima facie case, having satisfied only the third element of the test.

As to the first element, the PTO asserted that "sandia" is defined as "pueblo," which is a recognized tribe. However, the record showed that there are numerous Pueblo tribes, one of which is named Pueblo of Sandia, New Mexico, and that the "Sandia, New Mexico" portion of the tribe name refers to its geographic location. Moreover, as noted below, "'Sandia' has been used in numerous other contexts and has other meanings." Thus, the Board concluded, "it cannot be said that SANDIA specifically names the Pueblo of Sandia, New Mexico tribe."

As to the second element, the record did not support the contention that SANDIA uniquely and unmistakably points to the tribe, such that a connection with the tribe would be presumed.

"The term 'Sandia' has many other significant meanings, including the name of the mountain wilderness, the National Laboratories, and two towns. There are over 100 listings which include the word "Sandia" in their trade names for various businesses in the Sandia Telephone Directory. Also the term is Spanish for 'watermelon.'"

As to the fourth element, the Board concluded that, in light of the many other uses of "Sandia," the word is not famous as the name of the tribe.

There Board therefore reversed the refusal to register.

Sandia National Laboratories
TTABlog comment: As previously mentioned at this blog, Section 2(a) false connection refusals are seldom upheld, an exception being last year's citable APACHE case. In In re White, 73 USPQ2d 1713 (TTAB 2004), the Board affirmed a Section 2(a) refusal to register the mark APACHE for cigarettes, finding that it falsely suggests a connection with the nine federally-recognized and variously-named Apache tribes. [The applicant in that case, Julie White, was the original applicant here; she assigned the SANDIA application to WM Distribution Inc.].

The Board ruled that APACHE "“would be recognized as a name, or equivalent thereof, for each of the tribes;" that the mark points uniquely and unmistakably to the Apache tribes; that Applicant has no connection with the tribes; and that the name APACHE is of sufficient fame or reputation that a connection with the tribes would be presumed by consumers of cigarettes. The evidence showed that "Native Americans not only are engaged in large-scale marketing of cigarettes, but in manufacturing of Native American brands of cigarettes."

In White the Applicant asserted that the term APACHE "does not point uniquely and unmistakably to the Apache tribes," but she failed to properly make of record her evidence of third-party registrations and applications for the mark APACHE. From the decision in this case, it looks like her attorney learned his lesson the second time around.

Text Copyright John L. Welch 2005.

Grrrreat! TTAB Dismisses Madrid Opposition: PTO Failed to Provide Timely Notice to WIPO

The Board was "constrained" to dismiss an opposition brought against a Section 66(a) application (a Madrid request for extension of protection) because the USPTO failed to provide timely notice to the International Bureau (IB) at WIPO under Section 68(c)(1)(C) of the Trademark Act. Kellogg North America Co. v. Provea, Opposition No. 91166663 (October 21, 2005) [not citable].


Applicant Provea, a Swiss company, owns a Section 66(a) application with a filing date of December 25, 2003, by which it seeks to register the mark TONO INTERNATIONAL in the design form shown above, for a "full line of clothing; underwear; footwear; headwear." Kellogg opposed on likelihood of confusion and dilution grounds, based on its ownership and use of various TONY THE TIGER marks, including the mark shown below for clothing. (Kellogg alleged that in Mexico, it uses the name TONO in place of TONY). Provea's mark was published for opposition on May 24, 2005, and on June 23, 2005, Kellogg requested and obtained a 90-day extension of time to oppose.


The United States,upon its accession to the Madrid Protocol, amended the Trademark Act in order to comply with Article 5(2)(c) of the Protocol:

• Section 68(c)(1) of the Trademark Act, in pertinent part, requires that, within 18 months after the date on which the IB transmits to the PTO a request for extension, the PTO must transmit to the IB: (A) a notification of refusal based on examination; (B) a notification of refusal based on the filing of an opposition; or (C) a notification of the possibility that an opposition may be filed after the end of the 18-month period.
  
  
• Section 68(c)(2) states that, if the notice of part (C) above has been sent, a 7-month period is provided from the start of the opposition period, for notification of refusal based on the filing of an opposition.
  
  
• Section 68(c)(4) says that if an appropriate notification as specified above is not sent within the applicable time period, the request for extension of protection shall not be refused.

Here, the opposition was filed on September 21, 2005, and on the next day the TTAB promptly sent to the IB an appropriate notice that an opposition had been filed. [Note that the dismissal order erroneously states the date of the TTAB notice to be October 13, 2005]. However, the USPTO "had not timely transmitted to the IB the notice required by Trademark Act Section 68(c)(1)(C)." [That notice was apparently due on or before June 25, 2005, 18 months after the filing date].

On October 3, 2005, the IB transmitted to the USPTO a "notice of irregularity" in response to the TTAB's notice, pointing out that the opposition may not be maintained because the IB had not received the requisite notice under Article 5(2)(c)(i) of the Protocol. The IB further noted that this irregularity was not correctable.

Consequently, the TTAB could not entertain the opposition, and it dismissed the proceeding without prejudice (noting that the opposer "is not barred from filing a petition for cancellation following issuance of the certificate of protection").

TTABlog comment: For a discussion of Article 5(2)(c) of the Madrid Protocol and its corresponding Trademark Act provisions, see the article that I co-authored with Ann Lamport Hammitte, entitled "TTAB Practice and the Madrid Rule Changes."

As a substantive matter, this ruling may have little impact, since Kellogg may petition to cancel the certificate of protection when it issues. Of course, Kellogg will have gone to some unnecessary expense in preparing and filing its futile opposition. Perhaps the PTO should waive the filing fee if and when Kellogg files a petition for cancellation.

One wonders how many other Madrid oppositions are going to run into this problem? I am aware of four additional oppositions that were dismissed on October 21st due to the PTO's failure to send the required notice of possible opposition.

It would be wise, if one is considering filing an opposition to a Section 66(a) application that is more than 18 months old, to check TARR to see whether the PTO has timely sent the required Section 68(c)(1)(C) notice to the IB. If it hasn't, then it appears that the filing of a notice of opposition would be futile.

Perhaps a PTO announcement will be forthcoming regarding the scope of this apparent problem, and its solution.

Text Copyright John L. Welch 2005.

In a Citable Decision, TTAB Dismisses "FIRST NIAGARA" Opposition Based on Lack of Use in Commerce

In its twelfth citable decision of 2005, the Board dismissed a Section 2(d) opposition to registration of the mark FIRST NIAGARA for insurance brokerage services because Canadian Opposer First Niagara Insurance Brokers Inc. failed to establish "use of its pleaded marks on insurance brokerage services regulable by Congress." Consequently, Opposer "cannot establish priority and cannot prevail on its claim of likelihood of confusion." First Niagara Ins. Brokers Inc. v. First Niagara Financial Group, Inc., 77 USPQ2d 1334 (TTAB 2005).


Opposer FNIB claimed common law rights in the marks FIRST NIAGARA and FIRST NIAGARA INSURANCE BROKERS INC. (in block letter and design form). Applicant FNFG, located in Northpointe, New York, contended that Opposer "has no offices in the United States; that it has no state licenses to conduct insurance brokerage services in any state in the United States; and that the facts are insufficient to support a conclusion that opposer has used its marks ... in commerce in or with the United States."

The Board's opinion sets forth a lengthy discussion of Opposer FNIB's activities, noting various points of contact with the United States. For example, FNIB works with several US brokerage agencies that have U.S. clients with property located in Canada. Some of the insurance policies it has brokered extend to goods in transit in the U.S. and to incidents occurring here. It has brokered life insurance policies for Canadians who subsequently moved to the United States, as well as travel insurance covering travel to the U.S.

FNIB's advertising is "clearly directed to Canadian purchasers" and any "spillover" advertising is minimal. Moreover, advertising and promotion of a mark (whether inside or outside the USA) for services "marketed in a foreign country" does not create priority rights in the U.S. against one who in good faith adopts the mark in this country.

Most importantly, the Board found that Opposer is not licensed as an insurance broker, nor has it acted as a broker, in any state.


Opposer FNIB asserted that "the insurance business is one that squarely falls within the Commerce Clause," but the Board pointed out that federal law expressly grants to states the power to regulate the insurance industry. As noted, FNIB is not licensed in any state, but rather "is licensed in Ontario, Canada, conducts its insurance brokerage services in Ontario, and its services are regulated by Ontario Law. The nexus of its services is Ontario and the activities opposer undertakes in communicating with U.S. brokers and clients are simply a necessary part of its Canadian business."

"The activities with any connection to the United States that opposer has established in this record are de minimis and merely incidental to opposer's rendering of its insurance brokerage services in Canada. Not only are the insurance policies or riders brokered by opposer that extend certain coverages to the United States or U.S. citizens in Canada merely part and parcel of opposer's rendering of its services in Canada, but these policies and riders reflect the rights and liabilities of the underwriters, not those of the broker. Such activities do not constitute rendering of insurance brokerage services in either interstate or foreign commerce."

The Board distinguished this case from a number of TTAB and federal court precedents, including International Bancorp, L.L.C. v. Societe des Bains de Met et du Cercie des Etrangers Monaco, 66 USPQ2d 1705 (4th Cir. 2003), in which services rendered in Monaco to U.S. citizens were deemed to satisfy the commerce requirement of the Trademark Act, where the mark was "used in advertising and displays in the United States." Here, FNIB's activities in the U.S. are "minimal and incidental" and its advertising is directed to Canadian purchasers.

Moreover, the issue of licensure played a major role in the Board's decision:

"It would be antithetical to common sense to permit opposer, who is not engaged in any brokerage services subject to U.S. state regulation, to rely upon the 'use in commerce' provisions of the Trademark Act to establish priority over a New York state-licensed insurance brokerage business while itself avoiding the same state laws requiring, inter alia, licensure, name approval, and payment of taxes. Opposer cannot have it both ways."

Text Copyright John L. Welch 2005.

TTABlog Adds Two More Leo Stoller Sanction Rulings to List

A TTABlog reader has provided two more Leo Stoller-related TTAB sanction decisions, in addition to those listed by the TTABlog on Monday, October 17th (here). If you are aware of additional rulings, please send copies to me in pdf form.

• Bacou USA Safety, Inc. v. S Industries Inc., Opposition No. 91108769 (August 14, 2002) [not citable]. In this opposition involving an application to register the mark STEALTH for sunglasses, eyeglasses, science fiction videotapes, and assorted other class 9 goods, S Industries filed several motions that were "without merit and merely serve to delay and increase the cost of this proceeding." The Board warned that any further motions "that the Board deems meritless or misrepresents [sic] Board case law may result in judgment against applicant." S Industries proceeded to file two more motions, which the Board found "wholly without merit."
  
  

  "A review of applicant's pattern of behavior in this litigation reveals a deliberate strategy of delay, evasion and harassment towards opposer, implied threats to the Commissioner, and now a direct violation of a Board order."
  
  "No sanctions other than entry of judgment in favor of opposer will effectively halt the reckless and dilatory conduct displayed by applicant in this case."



• Bacou USA Safety, Inc. v. Central Mfg. Co., Cancellation No. 92032631 (July 24, 2003)[not citable]. Respondent Central filed a groundless Rule 11 motion, and then "compounded its wrong by filing a groundless motion for reconsideration." As a sanction, the Board issued an order prohibiting Central "from filing any further motions in this case whatsoever, including a motion for reconsideration of this order." Subsequently, Central filed a request for permission to file a motion, but the Board refused to grant permission. This proceeding, which involves a registration for the mark STEALTH for computer software, blank videotape, safety goggles, radios, and cameras, is still pending and is approaching the briefing stage.
  

Text and photo Copyright John L. Welch 2005.

TEAS Manager Craig Morris Reviews PTO Developments at BPLA Trademark Seminar

At the Boston Patent Law Association (BPLA) "Trademark Year in Review: 2005" Seminar yesterday morning, Craig K. Morris, TEAS Project Manager at the USPTO, reviewed recent and upcoming developments concerning the PTO's Trademark Operation. His presentation followed those of Michael Boudett (Foley Hoag LLP) on federal litigation, Pamela S. Chestek (Reebok International Limited) on 1st Circuit litigation, Prof. Stacey L. Dogan (Northeastern University School of Law) on legislative developments, and Douglas R. Wolf (Wolf, Greenfield & Sacks, P.C.) on the TTAB.

Boudett, Chestek, Dogan, Morris, Wolf
Filing statistics: Mr. Morris, with materials prepared by Sharon R. Marsh, Deputy Commissioner for Trademark Examination Policy, provided the latest statistics on PTO trademark filings. In fiscal year 2005, a total of 258,527 applications were filed (an 8.4% increase over FY2004), representing 323,501 classes. The average time between filing and a first action was 6.3 months. For the year, 112,446 marks were registered (143,396 classes), bringing the total number of active registrations to 1.2 million.

Staffing: In FY2005 the PTO employed 358 examining attorneys and it plans to hire 80 more in FY2006. It will also add two new law offices. Approximately 70% of examining attorneys work from home.

TEAS-Plus: Mr. Morris reviewed the requirements for a TEAS-Plus application, and noted that requests for additions to the USPTO "ID Manual" may be sent to Jesse Roberts at TMIDSuggest@uspto.gov. Requests should include the name and address of the sender, and should set forth the requested addition in 25 words or less. Additions to the ID Manual are made once per month. In response to an audience question, Mr. Morris indicated that TEAS-Plus applications are not processed any more quickly than other applications.

Design Search Codes: The PTO is undertaking a project to improve the system for assigning design search codes to non-word marks. Postcards and/or e-mails will be sent to applicants and will indicate the proposed codes to be assigned to a particular mark; applicants will then have an opportunity to approve or correct the coding. Requests for correction may be sent to TMdatabasecorrect@uspto.gov.

Rule Changes?: The PTO is considering changes to the Trademark Rules in connection with extensions of time to file a statement of use, in order to allow an applicant to request more than a single 6-month extension at one time. The Office is also considering a change in the procedure for handling requests for reconsideration after final refusal, a cause of considerable delay in processing applications.

Assignments: Mr. Morris pointed out that requests to record assignment documents that are filed electronically via ETAS (Electronic Trademark Assignment System) are processed in one or two days, compared to the five months required to process assignment documents filed by mail. When an assignment document is filed electronically, the records in TRAM, X-Search, TARR, and TESS are automatically updated.

Pdf attachments: The PTO is planning to begin allowing the attachment of pdf files in addition to jpegs, but initially only with regard to TEAS responses to office actions. The target date for this change is December 17, 2005.

As a final note, Cindy Johnson Walden and I, as co-chairs of the Trademarks and Unfair Competition Committee of the BPLA, want to thank our speakers and attendees for a lively and informative seminar. Those of you who did not attend will want to keep an eye out for next year's "Trademark Year in Review."

Text and Photograph Copyright John L. Welch 2005.

TTAB Suspends Madrid Opposition: Turkish Attorney Cannot File Answer

Invoking Trademark Rule 10.14, the Board suspended an opposition brought against a Section 66(a) application (a Madrid Request for Extension of Protection) because a Turkish attorney filed the answer to the Notice of Opposition. Westpoint Stevens Inc. I v. Universal Tekstil Sanayi Ve Ticaret Limited Sirketi, Opposition No. 91164850.

Westport Stevens commenced a Section 2(d) opposition on April 14, 2005, asserting that Universal Tekstil's mark VELSOFT (Stylized) for bed linen, fabrics, and similar goods in class 24, would be likely to cause confusion with the registered mark VELLUX for blankets, bedspreads, and fabrics. Universal Tekstil's answer was filed on May 23, 2005 by Erdal Handanoglu of Simaj Patent Limited Sirketi, Ankara, Turkey, as "Attorneys for Applicant." Opposer then notified the Board that Mr. Handanoglu did not appear to be qualified to practice before the Board.

In a suspension order dated September 2, 2005, Interlocutory Attorney Nancy L. Omelko pointed out that "Trademark Rule 10.14 does not permit foreign attorneys to practice before the Trademark Trial and Appeal Board unless their country allows reciprocal privileges, which Turkey does not."

VELLUX® brand blankets
Applicant Universal was allowed thirty days within with "to appoint U.S. counsel, or to file a paper stating that applicant chooses to represent itself." The Board noted that if a response is not filed, "the Board may issue an order to show cause why default judgment should not be entered against applicant based on applicant's apparent loss of interest in the case."

As of this date, Universal has not filed a response.

TTABlog note: Currently, Canada is the only country that provides reciprocity to trademark practitioners. See TMEP Section 602.

TTABlog comment: It is noteworthy that, during prosecution of the VELSOFT application, Mr. Handanoglu was allowed to file responses to two PTO official actions, in violation of Rule 10.14. Perhaps that is why he believed he could appear in the opposition proceeding on behalf of Universal.

Text Copyright John L. Welch 2005.

"FRENCH KISS" Deceptively Misdescriptive for Vanilla Flavored Schnapps, Says TTAB

In its odyssey through the PTO registration process, New Orleans-based Sazerac Company found itself unable to navigate between the Scylla and Charybdis of Section 2(e)(1): the Examining Attorney deemed its mark FRENCH KISS either merely descriptive or deceptively misdescriptive of "vanilla flavored schnapps." The Board embraced the latter refusal. In re Sazerac Co., Serial No. 76328505 (Sept. 30, 2005) [not citable].


As to mere descriptiveness, Examining Attorney Samuel E. Sharper, Jr., contended that "FRENCH KISS describe[s] a type of alcoholic beverages [sic] [and] Applicant's goods consist of a type of alcoholic beverage." As to the alternative refusal, he argued that consumers confronted with the mark FRENCH KISS "would assume that applicant's goods are pre-mixed alcoholic cocktails, not schnapps."

Sazerac schnapped back, asserting that its mark is not merely descriptive because there is no one recipe for the drink known as a "french kiss," and therefore "[n]o member of the purchasing public could reasonably expect to receive the same cocktail at any given drinking establishment." Therefore the mark FRENCH KISS does not describe Applicant's goods. As to the refusal on deceptively misdescriptive grounds, Sazerac maintained that its bottles are clearly labeled "vanilla liqueur" and so a purchaser would not be deceived as to its goods.

The Board noted that the record evidence identified "french kiss" as a cocktail that may be made from a variety of recipes, a few including raspberry or peach schnapps, but none including vanilla schnapps. Therefore it concluded that FRENCH KISS is not merely descriptive of a function, feature, characteristic, quality, ingredient, purpose or use of Applicant's goods.

As to the alternative refusal, the Board rather awkwardly stated the test to be "whether FRENCH KISS misdescribes a use of the goods" and, if so, "whether prospective purchasers are likely to believe the misdescription actually misdescribes the goods." [sic]. The Board answered both parts affirmatively, for two reasons:

"First, a 'French Kiss' is a cocktail made up of multiple ingredients, and the record does not reflect that 'vanilla flavored schnapps' is one of the ingredients of a 'French Kiss' beverage. Second, a 'French Kiss' beverage is a mix of ingredients, and applicant's 'vanilla flavored schnapps' is not a mix of ingredients."

The Board also found that "prospective purchasers are likely to believe the misdescription."

"... mixes of alcoholic beverages are available for sale on the retail level. Purchasers who know of a 'French Kiss' cocktail will believe that applicant's goods are the 'French Kiss' cocktail containing a mix of ingredients...."

Finally, as to Sazerac's label argument, the Board noted: "it is well established that the mere fact that the nature of the goods is revealed by matter on labels on the goods themselves does not preclude a determination that a mark is deceptively misdescriptive."

Text Copyright John L. Welch 2005.

TTABlog Provides List of Leo Stoller TTAB Sanction Rulings

I recently had occasion to compile a list of TTAB cases involving sanctions issued against Mr. Stoller or one of his companies, and I thought I would share the list with my dear readers. Many of the rulings were deemed "not citable," and the Board has made it quite clear that such cases are not to be relied upon in arguments made to the Board. Nonetheless, I believe that when Stoller or one of his companies is the adverse party, it is appropriate to refer to these uncitable rulings if one is attempting to show a "pattern" of misconduct.

• S Industries Inc. v. Lamb-Weston, Inc., 45 USPQ2d 1293 (TTAB 1997). The Board found Petitioner S Industries' certificate of mailing and certificate of service on a particular motion paper to be fraudulent, and it granted Respondent Lamb-Weston's motion for sanctions. Petitioner was prohibited from using the certificate of mailing procedure, and was required to serve all subsequent papers on Respondent by Express Mail.



• S Industries Inc. v. S&W Sign Co., Opposition No. 102,907 (Dec. 16, 1999) [not citable]. Noting that "[t]he lack of credibility of Mr. Stoller is a matter of public record," the TTAB ordered him to copy by hand Rule 11 of the Federal Rules of Civil Procedure and certain section of the Trademark Rules of Practice, and to file a signed copy thereof with the Board.



• Central Mfg. Inc. v. Third Millenium Technology, Inc., 61 USPQ2d 1210 (TTAB 2001). The Board sanctioned Leo Stoller individually on the ground that, in filing requests for extension of time to oppose on the basis of non-existent settlement negotiations, Stoller "acted in bad faith and for improper purposes, i.e., to obtain additional time to harass the applicant, to obtain unwarranted extensions of the opposition period, and to waste resources of applicant and the Board." Noting that Stoller and his various corporations appear regularly before the TTAB, the Board found that he "has engaged in a pattern" of submitting papers that are based on "false statements and material misrepresentations." For one year, Stoller was required to obtain written confirmation from any adversary when seeking an extension of time based upon consent or any alleged settlement discussion.



• S Industries Inc. v. Casablanca Industries, Inc., Cancellation No. 24,330 (October 3, 2002) [not citable]. The Board dismissed this opposition on substantive grounds, but stopped short of also relying on equitable grounds, despite Petitioners' sanctionable misconduct. "[P]etitioners (S Industries Inc. and Central Mfg. Co.) consistently failed to follow proper Board practice and procedure at any stage [of] this proceeding; and they have engaged in numerous dilatory tactics to delay this proceeding ***. Moreover, petitioner's litigation strategy of delay, harassment and falsifying documents in other cases is well documented. *** Mr. Leo Stoller, petitioners' officer, has also recently been sanctioned, individually, for making material misrepresentations to the Board regarding an applicant's alleged consent to extensions of time."



• S Industries Inc. v. JL Audio, Inc., Opposition No. 110,672 (May 13, 2003) [not citable]. The Board entered summary judgment against two of Leo Stoller's companies (S Industries Inc. and Central Mfg. Co.), finding that their claims of likelihood of confusion, nonownership, and fraud were "completely devoid of merit." Commenting on the behavior of Opposers in this proceeding, the Board observed that "Opposers' most recent proliferation of filings follows a pattern of voluminous and piece-meal motion practice against which opposers were warned." The Board noted (with case citations) that Leo Stoller's and Opposers' "litigation strategy of delay, harassment, and even falsifying documents is well documented," and it found "compelling evidence that, in essence, Leo Stoller and his companies have perpetuated their misdeeds in this case."




• Central Mfg. Inc. v. Astec Industries, Inc., Opposition No. 116,821 (Sept. 30, 2003) [not citable]. After Opposer Central filed two meritless and repetitious Rule 11 motions, the Board entered judgment against Opposer as a sanction for its abuse of the Rule 11 process.



• Central Mfg. Co. v. Medtronic Sofamor Danek Inc., Oppositions Nos. 91154585 and 91154617 (February 19, 2004) [not citable]. In view of various motions brought by Central that were "without merit, constitute harassment, and can only be assumed to have been brought for purposes of delay," the Board issued Rule 11 sanctions against Opposer, ordering discovery closed and prohibiting Opposer from filing any further motions without leave. The Board noted that:
  

  "While the Board is entering sanctions against opposer here based on opposer's behavior in this case, the Board is cognizant of our experiences in other cases involving the conduct of Mr. Stoller, Central Mfg. and other related entities, as well as the experience of the Seventh Circuit and the Northern District of Illinois. Said experiences may be considered as a 'history in this type of litigation.'"



• Central Mfg. Co. v. Premium Prods. Co., Serial No. 91159950 (September 29, 2004) [not citable]. The Board sanctioned Opposer for omitting the postage meter stamp date from filings with the Board, in apparent violation of Postal Service regulations. The Board stated that it was "hard pressed to think of a more egregious act of bad faith than flouting the United States Postal Service regulations."



• Stoller v. Northern Telepresence Corp., Opposition No. 91162195 (February 11, 2005) [not citable]. In an order granting Northern's motion to dismiss Stoller's opposition as a nullity, the Board exercised its "inherent authority to manage the cases on its docket" in order to "simplify matters" and "avoid unnecessary effort by the parties and undue delay." It ruled that it would "consider only those papers filed herein via the ESTTA system." [TTABlog discussion here].
  
  The genesis of that ruling, and the basis for dismissal, was Stoller's bumbling attempt to file a request for an extension of time to oppose Northern's application to register the mark DARKSTAR for infrared night vision systems. Stoller filed three different paper requests for a 90-day extension of time to oppose. The Board noted the "glaring discrepancies" among the three papers: "Put simply, the record does not support a conclusion that an extension request bearing a signed certificate of mailing was filed on or before the statutory deadline of February 27, 2003. Thus, potential opposer missed the statutory deadline to file an opposition."



• Central Mfg. Co. v. Dreamworks L.L.C., Opposition No. 91156858 (April 6, 2005) [not citable]. The board issued an order [discussed here at the TTABlog] requiring Central to file all of its papers via ESTTA. Again, questions had arisen arose regarding the dates when Central had mailed certain documents:
  

  ". . . the Board recognizes that on at least two occasions, the Board has not received copies of opposer's filings. In fact, with respect to applicant's motion to join, the Board received applicant's reply and supplement thereto on April 1, 2005 and April 4, 2005, respectively, but, as noted above, the Board remains unsure whether opposer actually filed a response, and/or whether such response is timely. The Board also notes that applicant has used the Board's electronic filing systems (ESSTA) [sic!] for all filings in this matter, and the Board has had no problems receiving applicant's filings."

It is unfortunate that neither of the last two case was deemed citable. Requiring electronic filing would seem to be an approprate and attractive procedural device in any case in which questions arise regarding receipt of paper filings. In fact, to quote myself, "it seems inevitable that before too long the Board will require virtually all documents to be filed in electronic form." [See discussion here at the TTABlog] .

Text and photographs Copyright John L. Welch.

TTAB Squashes "GRAPE RANCH" 2(e)(1) Mere Descriptiveness Refusal

Jack D. Whiteman, proprietor of Grape Ranch Vineyards of Okemah, Oklahoma, successfully fended off a PTO mere descriptiveness refusal of his mark GRAPE RANCH for wines. In re Whiteman, Serial No. 78281418 (Sept. 28, 2005) [not citable].


The Examining Attorney relied primarily on dictionary definitions in contending that the mark merely describes "wine that is produced on a large farm where grapes are grown." She also submitted two Internet articles showing use of the term "grape ranch," other articles showing use of the term "ranch" in the trade names of wine producers, and third-party registrations covering wines in which the term "ranch" is disclaimed.

Whiteman argued that the mark is merely suggestive, noting that to most Americans a "ranch" is "a place where cowboys wrangle steers and other livestock," not where wine is produced. He pointed to his logo and asserted that consumers would view the marks "as an amusing and incongruous term conjuring up the image of cowboys herding grapes instead of livestock."

The Board agreed with Whiteman that to most customers "ranch" primarily means a place "where livestock is raised, and not primarily where grapes are grown or wine is made." The two Internet articles showing use of "graph ranch" come from "a book review" and "an article about a book author."

"The mere two instances of record where 'grape ranch' is arguably used in a descriptive manner do not show that consumers would be accustomed to such meaning. Moreover, these two examples do not show use of the term in the trade, but rather in a news context, which could be misuses by journalists and writers."

As to references to wineries that use "ranch" in their names, the Board noted that in most instances the names include the words "winery" or "vineyards," suggesting that the word "ranch" is not merely descriptive of wine. With regard to third-party registrations with "ranch" disclaimed, the Board brushed those aside with the standard observation that it must decide each case on its own merits, unbound by prior PTO actions.


In sum, the Board found the term "grape ranch" to be incongruous when used as a trademark for wine.

"... applicant appears to have applied a suggestive and imaginative twist to a product name that rises above the level of mere descriptiveness and whose use would hardly remove a desired or apt descriptive characterization from the trade repertoire of other makers and sellers of [the goods]." In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983) [SNO-RAKE not merely descriptive for snow removal hand tool].

Although conceding that the issue was "a close one," the Board reversed the refusal to register, noting that "if there is any doubt about the merely descriptive character of a mark, that doubt is resolved in applicant's favor, permitting publication of the mark so that an interested third party may file an opposition to develop a more comprehensive record."

TTABlog note: Okemah, Oklahoma is perhaps best known as the birthplace of the legendary Woody Guthrie. Grape Ranch Vineyards is a sponsor of the annual Woody Guthrie Folk Festival held there.

TTABlog comment: When the Board suggests, in an ex parte case, that a "more comprehensive record" might be developed in an inter partes proceeding, I take that as a signal that the judge may be aware of the existence of material more pertinent than that submitted by the PTO. For example, a TTAB judge might conduct his or her own Internet search and thereby uncover additional information that the Examining Attorney did not proffer. Of course, the Board cannot take judicial notice of that additional material; it must decide the case on the record presented. I wonder if something like that happened here?

Text Copyright John L. Welch 2005.

TTAB Reverses Mutilation Refusal of "THE GRAY FOXES" Design Mark

The Gray Foxes, apparently a golf-related association of some sort located in Palmyra, Virginia, convinced the Board to overturn a PTO refusal to register the logo mark shown below for golf towels, hats, and shirts. The Examining Attorney contended that the mark shown in the application drawing did not "agree with the use of the mark on the specimens." In re The Gray Foxes, Serial No. 76544022 (Sept. 30, 2005) [not citable].

The drawing of the mark
The mark as it appears on Applicant's class 25 specimen is shown immediately below. It includes the wording "LAKE MONTICELLO" curved along the lower edge of the logo shown in the drawing above.


The Examining Attorney required that Applicant submit a new specimen "properly showing the mark as used." [She also indicated that Applicant could not submit a new drawing conforming with the specimens because "the character of the mark would be materially altered."]

The Board stated the issue to be whether the mark shown on the drawing "is a substantially exact representation of the mark as used on the specimens. See Trademark Rule 2.51(a)." In other words, is the mark sought to be registered a "'mutilation' or incomplete representation of the mark that is actually used"?

The Examining Attorney maintained that the wording "LAKE MONTICELLO" together with the logo form a composite word-and-design mark that produces a "unified commercial impression 'that is distinctly different than the mark on the drawing.'" She argued that the wording appears "in extremely close proximity beneath [the design]" and she concluded that "spatial proximity in this case is very significant in the commercial connotation of the mark."

The Board noted that an Applicant may seek to register any portion of a composite mark that creates its own separate and distinct commercial impression. It agreed with the Applicant that the fox logo creates a separate commercial impression apart from the wording "LAKE MONTICELLO." Contrary to the PTO's "apparent position," proximity is a consideration but is not controlling.

Here, the phrase "LAKE MONTICELLO" is physically separated from the design, is smaller in size and in slightly different stylization than the words 'THE GRAY FOXES," and is less prominent. Therefore the Board viewed "LAKE MONTICELLO" as a "visually insignificant part of the composite mark," the removal of which "does not disturb any aspect of the visual continuity" of the mark.

The Board also viewed "LAKE MONTICELLO" as "conceptually insignificant" because it is a "nondistinctive geographic term with no inherent trademark significance." "Moreover, this geographic term is not connected in meaning to any other portion of the composite mark. Instead, it performs a purely informational function and contributes nothing of significance to the overall commercial impression of the mark."

Therefore, the Board held that the mark shown in the drawing is a "substantially exact representation of the mark shown on the specimens."

TTABlog comment: I wonder if THE GRAY FOXES are something like the GRAY PANTHERS, only more athletic?

Text Copyright John L. Welch 2005

Barbecue Grill Maker Falls Flat on its Face in TTAB Appeal

Belgian barbecue grill maker Saey N.V. fell flat on its face in its attempt to register the product configuration shown immediately below as a trademark for barbecue grills and metal products. In re Saey N.V., Serial No. 75826909 (Sept. 21, 2005) [not citable].


Saey said that the mark "consists of two holes and a handle, which are meant to represent and give the appearance of the eyes and nose features of a face on a tubular section of the barbecue." The Board agreed with Examining Attorney Catherine Pace Cain' s contention that this configuration "does not function as a mark and that, therefore, consumers would not perceive the matter as a source indicator for applicant's goods...."

Saey grill
The Board noted that the ventilation handles and holes are a "normal, functional design of barbecue grills, a fact clearly shown by the photographs of competing grills." Despite counsel's creativity in describing the design as a face, the record contained no evidence that Saey refers to the "face" in its advertising or that it promotes the "face" as a trademark, and no evidence of any "look for" advertising. Instead, Saey's brochures refer merely to the function of the holes and handle.

Saey claimed that the mark has become distinctive for its goods under Section 2(f). However, its sales figures (about $1 million over 5 years) were not impressive, and it failed to provide its advertising and promotional expenditures. In any case, there was no evidence that Applicant featured the design as a trademark in its advertising, and no direct evidence that the purchasing public recognizes the design as a source indicator.

The Board's decision may be summarized in four words: "Saey, it ain't so."

Text Copyright John L. Welch 2005.

TTAB Reverses Section 2(a) Disparagement Refusals of "SQUAW"

Finding that the PTO had failed to prove the marks disparaging as used with Applicant's goods and services, the Board reversed Section 2(a) refusals to register SQUAW and SQUAW ONE for clothing (class 25), skis and ski equipment (class 28), and retail sporting goods and clothing store services (class 35). In re Squaw Valley Development Co., Serial No. 76511144 (Sept. 26, 2005) [not citable].


The Examining Attorney cited dictionary definitions and Nexis articles in maintaining that the "ordinary and common meaning of the term 'SQUAW' is that of an offensive or disparaging term for an American Indian woman or wife."

Applicant owns a resort at Squaw Valley, California, the site of the 1960 Winter Olympic Games, and holds registrations for SQUAW VALLEY and SQUAW VALLEY USA for clothing and resort services, respectively. It contended that its use of the term "squaw" does not refer to "identifiable persons" but instead is a "shorthand reference" to its ski resort.

The Board relied on its decision in Harjo v. Pro-Football, Inc., 50 USPQ2d 1705 (TTAB 1999) [reversed on other grounds], in which it applied a two-part test for determining whether matter may be disparaging under Section 2(a):

1. what is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services;


2. if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.

Likely meaning: The Board noted that all of the dictionary definitions and the encyclopedia entry of record "consistently refer to 'squaw' as a disparaging term." However, the Board observed that it must determine the meanings of SQUAW and SQUAW ONE not in the abstract, but in the context of the goods and services of the applications at issue.

As to the clothing items and the retail store services, the applications contain no restrictions as to geographic location, channels of trade, or type of clothing or sporting goods. Moreover, nothing in the specimens of use indicate "that those perceiving the marks would associate SQUAW and SQUAW ONE with the Squaw Valley ski resort." Therefore the Board concluded that in connection with these goods and services consumers would give the word "squaw" its dictionary definition rather than associate the term with Applicant's ski resort.

Applicant's Class 35 specimen of use for SQUAW ONE
However, as to Applicant's ski equipment, the Board found that "the meaning of the term SQUAW ... in the context of the marketplace is applicant's Squaw Valley ski resort in California."

Disparaging?: In considering whether "squaw" is disparaging under Section 2(a), the Board looks not to the perceptions of the general public, but "whether a substantial composite of Native Americans in the United States so perceive the subject matter in question." Harjo at 1472-73.

The Examining Attorney submitted Nexis stories and statements from American Indian groups in support of her contention that Native Americans find the term "squaw" disparaging. She also pointed out that five states have banned use of the term from place names and landmarks. Applicant discounted these proofs, however, contending that the PTO failed to offer any evidence concerning "the view of the referenced group" with respect to use of the term "squaw" in connection with the goods and services identified in the application.

The Board agreed with the Applicant:

"The evidence submitted by the examining attorney does not establish whether a substantial composite of Native Americans find applicant's use of SQUAW in its marks on applicant's identified goods and services to be disparaging. The ultimate legal inquiry here is not whether Native Americans find 'squaw' a pejorative term for Native American women." [emphasis in original].

Consequently, the Board reversed the refusals to register.

TTABlog comment: Evidence of how Native Americans perceive the use of the term "squaw" in connection with Applicant's specific goods and services is not the kind of evidence that would be readily available to a PTO Examining Attorney. An inter partes proceeding, however, would be a different story. Will this case be the next Harjo?

Compare and contrast this decision with the PTO's refusal to register the mark DYKES ON BIKES. The TTABlog predicted reversal of that refusal in a posting here.

Text Copyright John L. Welch 2005.

TTAB Makes "KRYPTONITE" Decision Its 10th Citable of 2005

On September 30, 2005, the Board, "on further consideration," designated as citable its decision in D.C. Comics v. Pan American Grain Mfg. Co., Opposition No. 91125404 (Aug. 24, 2005). [The case is summarized here at the TTABlog.] The Board found the mark KRIPTONITA for "prepared alcoholic fruit cocktail" likely to cause confusion with Opposer's KRYPTONITE mark.


Perhaps the reason for the case's citability is its discussion of "merchandising marks." DC Comics proved that the KRYPTONITE mark, registered for t-shirts and toys, has also been licensed for use with food products: Kraft® macaroni and cheese ("It Sure Beats A Bowl Of Kryptonite") and Diet Coke® ("Caffeine Free. Kryptonite Free."). The Board found that the goods of the parties are related since "consumers recognize that, in the general marketing environment, merchandising marks are used to identify a variety of goods and services."

This brings the total of citable cases for the year to ten, and leads one to wonder whether the Board will break the one dozen barrier for the year.

Text Copyright John L. Welch 2005.

Irked TTAB Takes Counsel to Task In Dismissal of "CAREFIRST" Opposition

In what may be the longest opinion of the year (74 pages, but who's counting?), the Board chastised counsel for their disruptive and contentious behavior and then dismissed the opposition of CareFirst of Maryland, Inc., owner of the registered mark CAREFIRST for various health care services, to registration of the mark FIRSTCAROLINACARE by FirstHealth of the Carolinas, Inc. for overlapping services. Opposer claimed that Applicant's mark would likely cause confusion and dilution of its registered mark, while Applicant unsuccessfully counterclaimed for cancellation on the ground of abandonment due to uncontrolled licensing and failure to use the mark on certain services. Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492 (TTAB 2005) [deemed citable on December 2, 2005 (here)].


The Board noted that "[s]eldom does a Board proceeding generate a record of the size in this case, ... not to mention the level of contentiousness between counsel." In earlier orders the Board agreed with Applicant's criticism of Opposer's behavior as "dilatory gamesmanship" and found Opposer's discovery conduct to be "a waste of both parties' time and of the Board's resources." The Board stated that it was "appalled at the history of these oppositions."

"Reading the testimony in this case required extreme patience given the fact that counsel interposed objection after objection after objection. Many objections appeared to be interposed for no purpose other than to disrupt the flow of the testimony. In certain instances, the objections degenerated into downright hostility and contempt between the attorneys."

After spending seventeen pages dealing with various evidentiary objections, the Board characterized the "gamesmanship" of the parties as "breathtaking" and "wasteful."


Turning to the substantive issues, the Board noted that the services of the parties overlap -- a factor favoring opposer. However, it also observed that "in purchasing healthcare services, even ordinary consumers are likely to exercise greater care and will know with whom they are dealing."

Opposer claimed that its mark is famous, but the Board was not convinced. Quoting from its recent decision in Blue Man Productions, Inc. v. Tarmann, 75 USPQ2d 1811, 1819 (TTAB 2005) [TTABlogged here], the Board pointed out that:

"In view of the extreme deference that is accorded to a famous mark in terms of the wide latitude of legal protection it receives, and the dominant role fame plays in the likelihood of confusion analysis, we think that it is the duty of a plaintiff asserting that its mark is famous to clearly prove it."

Opposer's evidence fell short. Although it submitted documents showing revenues billions, advertising expenditures in the tens of millions, use of the mark for 28 years, and promotion in a variety of media, Opposer failed to provide evidence “attesting to the accuracy” of the revenue figures. Moreover, it failed to segregate revenues under the mark in question from that under other marks, and it failed to provide any context for the sales and advertising figures. Opposer submitted two brand awareness studies, but they were of “little assistance” because they were based on “aided” rather than “unaided” awareness. The Board therefore rejected Opposer's fame claim and instead concluded only that the mark CAREFIRST "has achieved a degree of recognition in the healthcare field."

As to the marks, Applicant hit a grand slam worthy of George Brett: the Board found the marks dissimilar in appearance, sound, meaning, and commercial impression.

Applicant's evidence of third-party use proved to be significant. It adduced testimony from twelve witnesses regarding use of marks or names comprising or containing the words "care" and/or "first" in the healthcare field, leading the Board to conclude that the field "is crowded by marks containing one or both elements. The Board found it "reasonable to conclude that consumers have become conditioned to recognize that many entities in the field use such terms. Thus consumers likely are able to distinguish between entities based on distinctions among the marks, including between CAREFIRST and FIRSTCAROLINACARE."

In sum, the Board found the likelihood of confusion "as amounting to only a speculative, theoretical possibility," which is not enough to satisfy Section 2(d).

As to dilution, the Board dismissed that claim "easily" because the marks are not "identical or very or substantially similar," as required by Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1178 (TTAB 2001).

TTABlog comment: The Board noted that Opposer CareFirst “has been very aggressive in challenging other uses of ‘Care’ and ‘First’ marks in the healthcare field.” CareFirst has “been involved in at least forty-nine trademark actions (seventeen in the federal district courts and thirty two at the TTAB) involving its CAREFIRST mark.”

I think we can expect an appeal in this one.

Text Copyright John L. Welch 2005.

Leo Stoller Posts Job Offer at Rentamark.com Website

Frequent TTAB litigant and TTABlog subject Leo Stoller is looking for legal assistance. From his www.rentamark.com website (Jobs link):

"Rentamark is engaged in full-blown legal warfare to protect its intellectual property. Currently there are no well-known trademarks available. Every one of Rentamark's famous trademarks are being infringed and/or third parties are attempting to register.

"Rentamark is engaged in a full blown legal warfare to protect its famous trademarks from infringers. Rentamark is seeking former prosecutors, Judges, TTAB staff members, CIA, FBI and other individuals with a legal and/or law enforcement background to assist Rentamark in its policing of its famous trademarks.

"Rentamark is especially interested in attorneys, commissioners or former judges who have had previous experience on state Attorney Disciplinary Commissions who are expert in dealing with attorney disciplinary issues in order to file Attorney Disciplinary Complaints against opposing counsel that may violate the state Professional Code of Responsibility while attempting to prosecute a fraudulent trademark application, Opposition, Petition to Cancel and/or District Court Proceeding. Please send your resume to jobs@rentamark.com"

I'm polishing up my resume right now. Being from the Windy City, I may have an edge -- but then I'm not a Cubs fan, and Leo is. I think that explains a lot.

PTO Mistakenly Re-Publishes 143 Marks for Opposition

A Notice issued yesterday by the USPTO states:

"The October 4, 2005 Official Gazette includes 143 trademark applications that were published for opposition by mistake. Each of these applications had been published for opposition previously; the statement of use had been accepted; and the application had been allowed for registration pursuant to §1(d) of the Trademark Act. Due to a processing error, the applications were assigned a new publication date instead of a registration date.

"These applications have been withdrawn from publication. Regarding these cases, the Trademark Trial and Appeal Board (TTAB) will not accept oppositions or requests for extension of time to file an opposition that are based on the October 4, 2005 publication date. Anyone considering filing an opposition to, or request for extension of time to oppose, any application that published in the October 4, 2005 Official Gazette, should first review the prosecution history of the application in the Trademark Application and Registration Retrieval (TARR) system on the USPTO website. If the prosecution history indicates “second publication in error," the TTAB will not accept an opposition or a request for extension of time to file an opposition based on the October 4, 2005 publication date. Note that although some applications may indicate that the application has been “withdrawn” from publication, only those applications that also indicate “second publication in error” are not subject to opposition. For any questions concerning this matter please contact Bonita Royall at 571-272-4382 or bonita.royall@uspto.gov."

TTABlog comment: Please tell me that FEMA's Michael Brown hasn't landed at the PTO!

TTAB Reverses Refusal to Register Background Design for PING Golf Clubs

Overturning the PTO's refusal to register, the Board ruled that the design mark shown immediately below for "golf clubs" is supported by specimens that bear the design mark with the words PING USA on one portion and a "G2 design" on the other. In re Karsten Mfg. Corp., Serial No. 78347910 (Sept. 12, 2005) [not citable].


Rule 2.51(a)(1) states that "the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services." The Examining Attorney contended that Applicant Karsten did not meet this requirement because its drawing does not include the terms PING, G2 and USA, which appear on the specimen of use.


Karsten argued that its background "wedge" design is distinctive, and it provided 23 declarations from golf customers and dealers, all stating that the wedge design is distinctive separate and apart from the writing on the design. [The declarations included a depiction of the design rotated 180 degrees, as it appears on the specimen of use].

The Board noted that a background design used for the display of a word mark is separately registrable without proof of secondary meaning if it is "distinctive or unique enough to create a commercial impression as an indication of origin separate and apart from the remainder of the mark." Common basic shapes, such as circles, ovals, and triangles, are not regarded as inherently distinctive, though they may be registrable under Section 2(f).

The Board concluded here that the wedge background design creates a separate and distinct impression and that the specimen supports registration of the wedge design alone. "Both the overall shape and the two internal figures, which appear in different colors, are somewhat unusual, and the resulting combination is also unusual."

The Board found it important that the design is used on the head of a golf club and, as the declarations showed, the shape and two-tone pattern would be discernible from a distance, even though the writing on the design would not be. [TTABlog note: there is no reason why the mark has to appear on the golf club head, so is this a valid point? Suppose it appeared only on the packaging?]

Finally, the Board distinguished the current case from In re Chemical Dynamics Inc., 5 USPQ2d 1828 (Fed. Cir. 1988), in which an applicant sought to register the medicine droplet and dropper portion of the design shown below. The court held that the three elements of the background in the mark shown below (the dropper, droplet, and watering can) were "interrelated elements of a unified design." Here, Karsten seeks to register the entire background design, not merely a portion.
Therefore the Board reversed the refusal to register, but it "suggested" that Karsten submit a new drawing with the mark rotated 180 degrees.

Text Copyright 2005 John L. Welch.

George Brett Hits Grand Slam in Leo Stoller "STEALTH" Lawsuit

Hall of Fame slugger George Brett and his company, Brett Brothers Sports International, Inc., laid the wood to Leo Stoller in the latter's trademark infringement action brought in the Windy City. Central Mfg Co. v. Brett, 78 USPQ2d 1662 (N.D. Ill. 2005). Judge David H. Coar granted Brett's motion for summary judgment, cancelled Stoller's U.S. Registration No. 2,892,249 for the mark STEALTH for "baseball, softball, t-ball bats," and awarded attorneys' fees to the defendants.


Stoller and his companies claimed that Brett's use of the name STEALTH for a baseball bat infringed upon their rights in the STEALTH mark for baseball bats and other baseball products, under the Lanham Act and the Illinois Deceptive Trade Practices Act.

The court first noted that "Plaintiff Leo Stoller and his stable of corporate entities are not strangers to the legal system and are particularly familiar with the courts in this district. Indeed, as several judges (including this one) have previously noted, Stoller appears to be running an industry that produces spurious, vexatious, and harassing federal litigation."

"Unlike a public corporation, which would be accountable to its shareholders, Stoller's corporate entities appear impervious to Stoller's repeated losses in federal courts in this district and beyond. A search of the court filing system discloses that Plaintiff and one or more of his corporate entities have been involved in at least 49 cases in this district alone. *** No court has ever found infringement of any trademark allegedly held by Stoller or his related companies in any reported opinion. In fact, courts in this district have ordered Stoller or his corporate entities to pay defendants' attorney fees and costs in at least six reported cases."

The court recognized Stoller's modus operandi of offering a license under the STEALTH mark, and if refused, bringing a lawsuit. "The sheer number of cases Plaintiffs have filed in this district raise (sic) serious questions about Plaintiffs' and Plaintiffs' counsel's good faith. In fact, several courts in this district have noted explicitly that Plaintiffs deal in meritless claims and bad faith litigation."


With that introduction, the court turned to the substantive issues. In a less than crystal clear opinion, it found that Brett first used the mark STEALTH for baseball bats in 1999, which was prior to Plaintiff's first use date. This led to cancellation of the '249 registration (which stated a 2001 first use date for bats).

Plaintiffs claimed prior use of the STEALTH mark on other "baseball items," but "failed entirely to provide admissible evidence" of same. In fact, the court found that even if Plaintiffs once owned the mark STEALTH for baseballs, they abandoned that mark prior to Brett's first use in 1999. Plaintiffs' failure to produce documents came as no surprise to the court: Stoller testified on deposition that "he has no set practice for handling purchase orders or invoices. Sometimes he generates them, sometime he does not. He stated that he maintained records in bankers boxes in his office but did not know how many years' worth of records he had."

The court went on to find (if not entirely convincingly) that, even if Plaintiffs owned prior rights in the mark STEALTH for baseball bats, there would be no likelihood of confusion vis-a-vis the Brett bats. The Brett bats prominently display the word BRETT on both sides of the bat with the word STEALTH appearing in "significantly smaller letters," and Defendants emphasize the association with George Brett. Plaintiffs' licensee, Easton, features the word EASTON in prominent letters on one side of the bat and STEALTH on the other. Those facts "militate against finding likelihood of confusion." As to other lieklihood of confusion factors, the court found that Plaintiffs' mark is weak, that consumers would exercise care in purchasing Brett's $49 bat, that the goods travel in different trade channels, and that the lack of actual confusion weighs heavily against Plaintiffs.


Turning finally to the issue of attorneys' fees, the court found that Plaintiffs' conduct met the applicable standards:

"Here, Plaintiffs' conduct clearly rises to the level of 'oppressive.' Plaintiffs offered irrelevant, questionable, and seemingly fantastical documents; inconsistent, uncorroborated, or arguably false testimony from Leo Stoller; and a cascade of so-called license or settlement agreements for unrelated products and unrelated marks. In fact, Plaintiffs failed to produce evidence that Plaintiffs or any of their related companies made a single Stealth baseball bat at any time. Further, the enormous range in license fees listed in the alleged license agreements (from $10 to $25,000) strongly suggests what several courts in this district have suspected: that Plaintiffs engage in a pattern and practice of legitimate actors for the purpose of extracting a settlement amount. The judicial system is not to be used as an aid in such deliberate, malicious, and fraudulent conduct."

The court therefore awarded attorneys' fees under both the Lanham Act and the Illinois Consumer Fraud and Deceptive Business Practices Act.

Text Copyright John L. Welch 2005.

TTAB Blocks NBA Star Chris Webber's Shot at Registration of "CWEBB"

Philadelphia 76er star Mayce Edward Christopher Webber (a/k/a Chris Webber) failed to penetrate the TTAB defensive scheme with his attempt to register the standard character mark CWEBB for various clothing items. Examining Attorney Linda E. Blohm delivered a Wilsonburger to the big guy, and the Board affirmed her refusal to register on the ground that the mark depicted in Applicant's specimen of use (shown below) is not a substantially exact representation of the mark as shown on the drawing. In re Webber, Serial No. 78126211 (September 13, 2005) [not citable].

Specimen of use
The Examining Attorney contended that, although the letters "WEBB" are clearly presented on the specimen, the letter "C" is not immediately or easily recognizable, and thus the specimen did not match the mark on the drawing. Applicant asserted that a "C" is formed by the design above, below, and to the left of the "W." (see enlarged view below).


The Board saw the issue as this: whether a standard character drawing is acceptable because (Applicant argued) the "mark contains only letters. The letters are listed in the Standard Characters Set provided by the USPTO. The mark does not contain a design element."

The Board, however, noted that Applicant overlooked the requirement that the mark in the drawing "must be a substantially exact representation of the mark" on the specimen.

"The specimen clearly shows the letters WEBB in the same size and font. The letter 'C' may be suggested by the design around the letters WEBB but to many, if not most, purchasers it would not. When it is not even clear if the mark is for four or five letters or whether the mark includes a design or another letter, a standard character drawing is not appropriate. 37 CFR Sec. 2.52(a)(2), Trademark Rule 2.52(a)(2) (Standard character drawing appropriate if the 'mark does not include a design element.')"

Applicant Webber established that he is known as CWEBB, and he asserted that consumers of his products will recognize the mark CWEBB on his shoes, even when the C is highly stylized. The Board was not buying that one:

"... even if we accept that applicant's nickname is CWebb, we cannot conclude that prospective purchasers would recognize the letters WEBB with a highly stylized design as CWebb. To take a more extreme example, the shirt in the specimen appears to be a basketball jersey with the name WEBBER on the back. While fans of basketball may view the term 'Webber' as referring to Chris Webber, the specimen would not support an application to register the mark CHRIS WEBBER."

Moreover, the Board noted, Applicant's identification of goods is not limited to any specific purchasers. Ordinary purchasers would not be able to guess that the mark includes the letter "C."


The Examining Attorney also maintained that Webber could not file a substitute drawing showing the mark in stylized form. The Board agreed. Rule 2.72(b) allows an amendment that does not materially alter the mark. Here, however, the mark shown in the specimen "is materially different from the mark in the drawing" and does not convey the same "overall commercial impression."

Therefore, the Board affirmed the refusal to register.

TTABlog comment: Aren't the refusal to register and the refusal to accept a new drawing two sides of the same coin? If the mark applied-for (i.e., the mark shown on the drawing) is not a substantially exact reproduction of the mark in the specimen, then isn't it necessarily true that a new drawing showing the latter mark will constitute a material alteration of the former?

Maybe not. I was just told of a pending application for a word mark, in which the specimen shows use of the word mark with an apostrophe. The Examining Attorney refuses to accept the specimen, but is willing to allow amendment of the mark to add an apostrophe! Perhaps "substantially exact reproduction" is a higher standard than "material alteration?"

Text Copyright John L. Welch 2005.