In a Citable Decision, TTAB Allows Addition of Fraud Counterclaims Based on Evidence Uncovered During Testimony Period

In its fourteenth citable decision of 2005, the Board granted an Applicant's motion to add counterclaims seeking cancellation of five asserted registrations, on the ground of fraud. Although the case was already in Opposer's testimony period, the Board found the motion timely because it was based on evidence that was not previously available to Applicant. Turbo Sportswear, Inc. v. Marmot Mountain Ltd., 77 USPQ2d 1152 (TTAB 2005).

Applicant Marmot seeks to register the two design marks shown above for various goods in classes 18 and 25. Opposer Turbo claimed likelihood of confusion vis-a-vis its design mark show below, the subject of seven registrations covering various clothing items.

On May 31, 2005, Marmot filed a motion to amend its answer in both oppositions to add counterclaims to cancel five of opposer's pleaded registrations, alleging fraud in obtaining or maintaining the registrations. Turbo then moved to amend two of its registrations to delete certain goods.

Marmot asserted that it learned during the April 27, 2005 testimony deposition of Turbo's vice-president that, for example, Turbo's mark was never used on "suits" and "sports jackets," although those goods are included in one of Turbo's registrations. It similarly learned the same regarding goods included in the other four registrations.

Turbo contended that Marmot's motion was untimely because it came during Turbo's testimony period, even though Marmot "was aware of what goods the marks were being used on when it received opposer's responses to its interrogatories in 2003."

The Board noted that counterclaims must be included in a defendant's answer, or brought promptly after the grounds therefor are learned. It concluded that the vice-president's testimony provided "information that may be relevant to each of the five registrations, and ... such information was not previously available to applicant." Turbo's interrogatory answers "dealt only with whether the marks were in use on the goods at the time the responses were provided," and "would not have apprised applicant that the marks were not in use on all of the goods at the times the applications for registration were filed, ... or at the times the Section 8 affidavits were subsequently filed."

The Board next determined that the proposed counterclaims would not be "futile," noting that under Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003), false statements regarding use of a mark may give rise to a valid fraud claim. As to Turbo's proposed deletion of the offending goods, the Board observed that:

"Fraud cannot be cured merely by deleting from the registration those goods on which the mark was not used at the time of the signing of a use-based application or a Section 8 affidavit."

The Board issued an Order re-opening discovery and re-setting trial dates.

TTABlog comment: It remains to be seen what the Board will do with an application or registration as to which the owner has deleted certain goods before an inter partes proceeding is commenced. If an owner of a registration learns that it mark has not been used for some of the identified goods, is it sufficient to amend the registration? Will the registration, if later involved in a proceeding, survive a fraud attack? Is the best course to file a new application and abandon the possibly defective registration?

Text Copyright John L. Welch 2005

TTAB Turns Up Its Collective Nose at Nasal Strip Design Marks

The TTAB affirmed four PTO refusals to register two designs (shown immediately below) for various nasal strips on the grounds that the designs fail to function as trademarks, are merely descriptive under Section 2(e)(1), and have not achieved secondary meaning. In re CNS, Inc., Serial Nos. 76250116 et al. (November 18, 2005) [not citable].


Examining Attorney Yong Oh Kim contended that the alleged marks appear on the packaging for Applicant's goods (sold under the brand name BREATHE RIGHT) as purely "informational matter that merely apprises consumers of the physical appearance of the goods." He argued that manufacturers commonly depict a product on its packaging so that consumers will know what the product looks like, and therefore consumers will perceive such a depiction as merely informational.

As to mere descriptiveness, Attorney Kim pointed out that Applicant's "specimens, advertisements and patents clearly demonstrate that the proposed mark[s] [are] accurate pictorial representation[s] of the goods."

As to Applicant's attempt to show secondary meaning, Kim urged that the marks are highly descriptive, that Applicant therefore bears a "heavy burden" to prove acquired distinctiveness, and that Applicant's showing was insufficient.

The Board agreed on all counts. It found that "the manner in which the alleged marks are used on the specimens of use in these applications is not indicative of trademark use." As to two of the applications, the designs appear on the back of the box and are "used to inform the consumer as to the contents of the box and the different available product sizes." With regard to the other two, the alleged marks do appear on the front of the box, but without a TM symbol, "in contrast to all of the trademarks appearing on the box."

The Board also found that the two designs depict the products accurately, rather than in stylistic fashion, and thus are merely descriptive. The sample of Applicant's product as well as its utility patent drawing demonstrate the accuracy of the depiction. Moreover, design patents owned by competitors show that these designs are a generally common shape for such goods, and thus the designs lack inherent distinctiveness.


Because of the accuracy of the depictions, Applicant CNS faced a "heavier" burden to prove acquired distinctiveness. The Board found the evidence insufficient to permit registration under Section 2(f). Although CNS enjoyed sales of $425 million during the period 1993-2002 and spent $59 million in advertising during 1996-2001, those figures may demonstrate only the growing popularity of the product, not purchaser recognition of the two-dimensional designs as trademarks. There was no evidence that the alleged marks were promoted as source indicators.

CNS pointed to unsolicited media publicity regarding its products, but that evidence did not establish customer perception of the two-dimensional designs as source indicators. Finally, Applicant's five-year declaration of substantially exclusive use may serve as prima facie evidence of acquired distinctiveness under Section 2(f), but the language of the statute is permissive and the weight to be accorded such a declaration depends on the facts of the particular case. Here, based on all the evidence, the Board concluded that Section 2(f) had not been satisfied.

Text Copyright John L. Welch 2005.

TTAB Doesn't Buy PTO's "Designer Marks" Argument, Reverses 2(d) Refusal of "WEILL & Design" for Clothing

Finding the PTO's "designer marks" argument inapt, the Board reversed a Section 2(d) refusal to register the mark WEILL & Design (immediately below) for various clothing items ("PARIS" disclaimed), deeming it not likely to cause confusion with the registered marks PARFUMS WEIL PARIS & Design for perfumes ("PARIS" disclaimed), and the registered marks RAYMOND WEIL, RW RAYMOND WEIL GENEVE & Design, and TANGO BY RAYMOND WEIL for watches and jewelry. In re Vetements Weill, Serial No. 78321221 (November 18, 2005) [not citable].


As to the marks, the Examining Attorney asserted that the dominant feature of each of the cited marks is WEIL, which is the phonetic equivalent of WEILL, the dominant portion of Applicant's mark. As to the goods, she submitted third-party registrations to support her assertion that the involved goods are related because "clothing designers sell, among other things, clothing, perfumes, watches and jewelry under their designer names."


The Board agreed that Applicant's mark and the PARFUMS WEIL mark "are sufficiently similar that, if related goods were sold thereunder, consumers likely would be confused." It therefore observed that "[t]he merits of this refusal turn on the similarity/dissimilarity between the goods."

According to the Examining Attorney, "[a]pplicant is a clothing designer and clothing designers tend to place their marks on watches, jewelry and perfume." Thus "[w]hen used in connection with such similar designer marks, these goods are sufficiently similar to cause confusion in the marketplace."

The Board pointed out the "problem" with the examining attorney's argument:

"there is no evidence indicating that either applicant or registrant is a designer, or that consumers would perceive the term as referring to designers. Thus, we do not view this case as falling within the purview of the designer mark cases wherein more varied goods were found to be related because of the practice of designers to license their names for a wide variety of goods."

The Examining Attorney also relied on third-party registrations in attempting to show the relatedness of the goods. However, upon "close review," those registrations did not support the PTO's position. They showed "only three marks that have been registered by entities (one entity owns two of the marks) for the types of goods involved herein." Moreover, all the registrations "appear to involve designer marks and, as indicated earlier, we have no evidence that applicant's or registrant's mark herein is a designer mark."

Therefore, the Board reversed the Section 2(d) refusal based predicated on the PARFUMS WEIL mark.


Turning to the three RAYMOND WEIL registrations, the Board reversed those refusals as well: "the record does not include evidence that any entity, other than a fashion designer, sells clothing and watches and jewelry under the same mark."

TTABlog comment: Suppose the Examining Attorney had not raised the "designer marks" argument and had simply offered the third-party registrations, citing Albert Trostel and Mucky Duck. If Applicant then argued that the cited registrations were distinguishable because they are owned by "designers," would the Board have bought that argument? How would Applicant prove that the registrants were "designers" and that it was not a designer?

Text Copyright John L. Welch 2005.

In a Citable Section 2(c) Decision, TTAB Partially Cancels "KRAUSE PUBLICATIONS" Registration

Section 2(c) decisions are as rare as a White Sox fan in Boston, but the TTAB has just issued one -- the Board's 13th citable decision of 2005. The Board granted (in large part) Chester L. "Chet" Krause's 2(c) petition to cancel a registration for the mark KRAUSE PUBLICATIONS for various goods and services in classes 16, 35, and 42 relating to coin collecting, antique autos, and various other topics ("PUBLICATIONS" disclaimed). Krause v. Krause Publications, Inc., 76 USPQ2d 1904 (TTAB 2005).

Chet
Section 2(c) of the Trademark Act bars registration of a mark that "consists of or comprises a name ... identifying a particular living individual except by his written consent ...." It was therefore incumbent upon Petitioner to show that the word KRAUSE "points uniquely to him 'as a particular living individual.'" Respondent, in turn, attempted to show consent.

Chet contended that he is renowned in "the multiple fields of numismatics, car collecting, business, publishing and philanthropy; and that he is so well known by the public in general that they would assume a connection between [him] and the mark KRAUSE PUBLICATIONS."

Krause Publications, on the other hand, maintained that Chet's activities from 1964 to 1990 were "through respondent," and it denied that any consent from Chet was necessary when it applied for registration. Respondent asserted that Chet had acquiesced in its use of the name KRAUSE PUBLICATIONS, and had waived any objection thereto.

The record showed that Chet started his publishing business as a sole proprietorship and then was associated with Respondent for nearly 50 years, stepping down as president in 1990. He co-authored at least three publications in the field of numismatics, including "The Standard Catalog of World Coins," which "is considered the worldwide reference authority for coin collectors." He lectured across the country and received awards in recognition of his contributions to the field of numismatics. With regard to car collecting, Chet received the 1995 "Collector Car Hobby's Person of the Year Award," and his "extensive car collection was the subject of a film by the Society of Automotive Historians."


The Board found that Chet is "publicly connected, at the very least, with the fields of numismatics, car collecting, and publishing activities related thereto, such that a connection between petitioner and the mark KRAUSE PUBLICATIONS would be presumed by people who have an interest in these fields."

However, Chet failed to establish that the general public would assume a connection between him and KRAUSE PUBLICATIONS. Nor did Chet demonstrate that "he is publicly connected with the services in class 41, namely, 'entertainment services in the nature of competitions and awards in the field of cutlery.'"

As to the issues of consent, Respondent argued that Chet gave his implied consent when he incorporated the business; when he sold his stock in Respondent to set up an ESOP; and when he (as president and CEO) pledged Respondent's assets, including trademarks and tradenames, to finance expansion and acquisitions. The Board reviewed the various cases cited by Respondent, but concluded that Chet had given no such consent to registration.

Nor did Chet's silence during Respondent's decades-long use of KRAUSE PUBLICATIONS estop him from challenging its registration. Chet brought the cancellation proceeding within six months after issuance of the registration, a delay that cannot be considered unreasonable.

In sum, the Board found that the mark KRAUSE PUBLICATIONS had been registered without the required consent of Chet Krause, and it cancelled the registration as to classes 16, 35, and 42.

TTABlog comment: The Board pointed out that, to prevail on his claim, Chet need not demonstrate that he is publicly connected with all of the goods or services listed in a particular class. It is sufficient that he be publicly connected with "at least some of the goods and services in the class."

Respondent's class 16 goods included magazines relating to interior decorating, comics, collectible card games, fantasy sports, hunting, firearms, rock and roll memorabilia, and various other subjects. It appears that a new application filed by Krause Publications, Inc. that avoided numismatics and antique autos would survive a Section 2(c) challenge from Chet.

Had Respondent filed a timely (and prescient) motion under Rule 2.133(a) to amend the identification of goods and services in its registration to eliminate those related to coins and autos, the Board might have taken up that motion at final hearing and allowed the registration to survive with the offending goods and services deleted.

Text Copyright John L. Welch 2005.

TTABlog Flotsam and Jetsam -- Issue No. 8

It's been a while since the last issue of Flotsam and Jetsam, but with the flow of decisions from the Board reduced to a trickle, why not take a break?

TTABlogger on duty at INTA Leadership Meeting
Naples, Florida
INTA Leadership Meeting: One thing I learned from the INTA mid-winter meeting: book your hotel early, or you may wind up at a golf resort 5 miles from the main hotel. I suppose many readers wouldn't mind staying at a golf resort, but I gave up golf when I was in college. I still remember shooting a frustrating 76 on my last round: I took a 9 on one hole because I couldn't get through the windmill. Anyway, I've already booked a room at the headquarters hotel in Toronto for INTA 2006. If you wait too long, you'll probably wind up at some distant ice hockey resort.

Judge Chapman to Retire: A well-placed source has informed the TTABlog that Administrative Trademark Judge Beth A. Chapman will retire at the end of the calendar year. She has served on the TTAB since 1998, after serving as an Examining Attorney, as a Law Office Managing Attorney, and as a TTAB interlocutory attorney. Notably, Judge Chapman was the only TTAB judge to attend the "Meet Two Bloggers" event at INTA 2005 in San Diego (noted here).

Judge Chapman
USPTO Annual Report: The United States Patent and Trademark Office’s annual Performance and Accountability Report is now posted at the PTO's website, and is available for downloading here in pdf form. "The report provides a comprehensive account of the agency’s programmatic activities for the year as well as production and financial data for FY 2005."


The exhaustive (and exhausting) 154-page report includes a wealth of statistical information regarding trademark-related filings. With regard to the TTAB, the report states (p. 143) that 10,855 cases are pending as of September 30, 2005, about 1/4 of which are ex parte appeals and the rest inter partes proceedings. During the fiscal year, 8,652 new cases were filed, and 8,655 were disposed of, meaning that the Board reduced its caseload by 3 cases during the year. The report also states that:

"The TTAB met its pendency goal in FY 2005. The goal was to issue final decisions and decisions on trial motions, on average, within ten weeks of the time they were submitted for decision. During FY 2005, the TTAB issued decisions, on average, in nine and a half weeks." (p. 34).

Gibson Guitar revisited: Last January, in a discussion here of trade dress rights in musical instruments, the TTABlog noted a pending lawsuit in Tennessee concerning, inter alia, alleged infringement of the product configuration trade dress of Gibson's "Les Paul" guitar. The case (and an article from The Trademark Reporter) raised interesting issues about the de jure functionality of the guitar's features. The Sixth Circuit recently reversed the district court's grant of a preliminary injunction to Gibson on its claim of trademark infringement, but did not reach the functionality issues. Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, Appeal No. 04-5836/5837 (6h Cir., September 12, 2005).


In a less than impressive opinion, the majority of the appellate court panel rejected claims of initial interest confusion and post-sale confusion. Because Gibson had conceded that there was no confusion at the point of sale, the court reversed the lower court's ruling. In light of the holding of no confusion, it was unnecessary for the court to consider the validity of the trademark.

The appellate court ruled that initial interest confusion is inapplicable to product configurations, because "[m]any, if not most, consumer products will tend to appear like their competitors [sic] at a sufficient distance." Its discussion of post-sale confusion oddly focused on the quality of defendant's guitars, rather than on Gibson's potential loss of control over its reputation should defendant's guitars decline in quality.

Text Copryight John L. Welch 2005.

TTAB Refuses to Allow Second Bite at Summary Judgment Apple

The Board refused to entertain a second summary judgment motion filed by Respondent in a cancellation proceeding because the second motion (again aimed at knocking out the Petitioner's abandonment claim) was based on evidence available to Respondent when it filed its first motion. Borland Software Corp. v. EMSoftware Solutions, Inc., Cancellation No. 92042159 (October 18, 2005) [not citable].

Borland Software seeks to cancel, on the ground of abandonment, a registration for the mark SNAP for "computer software used in the design of other computer software programs." In February 2004, Respondent filed its first summary judgment motion, relying "primarily on its president's 'vague' declaration and 'heavily redacted' copies of an asset purchase agreement and two licensing and maintenance agreements asserted by respondent to show continuous use of the subject mark." In October 2004, the Board denied the motion because Respondent failed to demonstrate the absence of a factual dispute. As part of its decision denying the motion, the Board imposed its standard protective order on the parties.

In January 2005, Respondent filed its second summary judgment motion. Respondent contended that the new motion was based on more complete information regarding its use of the SNAP mark, including confidential business information. It claimed that the confidential information could be disclosed only under a protective order.


The Board observed that the new motion was "based on evidence that was available to respondent or was within respondent's control at the time the first motion for summary judgment was filed."

"The underlying purpose of motions for summary judgment is judicial economy. See TBMP Section 528.01 (2d ed. rev. 2004). To allow a party to file repeated motions for summary judgment on the same ground based on evidence that was available to it when it filed its first motion for summary judgment is in contravention of that purpose and unhelpful to the judicial process. ***

"[w]e are unwilling to allow respondent to use the parties' failure to reach agreement with regard to the filing and handling of confidential materials prior to the filing of its first motion for summary judgment as a means of filing a renewed motion for summary judgment on the same ground."

In a parting shot, the Board noted that, even if it had considered the new motion on its merits, the motion still would have failed because Respondent again failed to show the lack of a genuine issue of material fact on the abandonment issue.

Text Copyright John L. Welch 2005

"Gross Misconduct" of Leo Stoller and his Counsel Leads to Dismissal of Chicago Lawsuit

Frequent TTAB litigant Leo Stoller has once again failed dismally in an action for alleged infringement of the mark STEALTH. In a November 16, 2005 ruling by Judge George W. Lindberg, the U.S. District Court for the Northern District of Illinois dismissed the claims of Central Mfg. Co. and Stoller with prejudice, and entered a default judgment on Defendants' counterclaims, in light of the "gross misconduct" of Mr. Stoller and his attorney. Central Mfg. Co. et al. v. Pure Fishing, Inc. et al., Case No. 05-c-0725 (N.D. Ill., November 16, 2005). [Previously discussed here at the TTABlog].

The court noted that Mr. Stoller is a frequent litigant in the Chicago federal court (at least 49 cases) and has "earned a reputation for initiating spurious and vexatious federal litigation." "In keeping with Mr. Stoller's reputation, his actions in the instant litigation have been vexatious and sanctionable."

The court described Mr. Stoller's "business" as obtaining trademark registrations, issuing cease and desist letter, and then threatening "to file an infringement action unless the targeted companies pay him a licensing fee for the use of the allegedly trademark terms."

At a hearing on November 9th, the attorney for Central "admitted to the following conduct:" authorizing Mr. Stoller to sign the attorney's name to pleadings and other filings without independently verifying the contents thereof, including a motion to compel that lacked any evidentiary support "and accused this Court of 'being an integral part of [a scheme] to defraud the Federal Court and to defraud Leo Stoller out of his valuable trademarks.'"


Mr. Stoller, for his part, provided counsel with the information included in the groundless motion to compel, erroneously represented that Central Mfg. Co. is a separate legal entity, filed baseless pro se motions (most notably, meritless motions to disqualify Judge Lindberg and Defendants' counsel), and (despite repeated admonishments that he is not an attorney and cannot represent a corporate entity) filed a pleading on behalf of a corporate counter-defendant.

With regard to the corporate counter-defendants, the court ruled that the attorney was disqualified from representing them, and it entered a default judgment against those parties "for failure to obtain competent representation, despite ample opportunity to do so."

With regard to the conduct of Stoller and his attorney, individually and on behalf of Central, the court concluded that they "repeatedly violated the Federal Rules of Evidence" and also violated Rule 11(b) "by maintaining that Central Mfg. Co. was a Delaware corporation." Stoller knew that he had not incorporated Central Mfg. Co, but he "likely attempted to conceal this fact from the Court because the trademark registrations that are the basis for the infringement claims, state that Central Mfg. Co., not Central Mfg. Inc., owns sole title to the disputed marks."

Finally, turning his attention to Leo Stoller in particular, the court ruled as follows:

"Mr. Stoller appears to believe that this Court exists to serve his selfish interests and to promote his questionable business, rather than to serve the interests of justice. Mr. Stoller is wrong and must be sanctioned in the only manner that will deprive him of the very process he has sought to manipulate and pervert. In light of the above mentioned egregious conduct and flagrant contempt of court, to allow Mr. Stoller and his wholly owned entities to continue to 'invoke the judicial mechanism for [their] own benefit would raise concerns about the integrity and credibility of the civil justice system that transcend the interests of the parties immediately before the court.' [citation omitted]. Accordingly, under the Court's inherent power, plaintiff's case is dismissed with prejudice and a default judgment is entered against Mr. Stoller in his capacity as a counter-defendant."

TTABlog note: Defendants' counterclaims may be found here. The relief requested by Defendants includes cancellation of the STEALTH registrations listed in the Complaint, an award of damages, costs, and attorneys' fees, and an order barring Stoller and his companies, as vexatious litigants, from instituting any further trademark actions or oppositions without leave of the court.

TTABlog comment: In TTAB proceedings, unlike in federal court actions, a corporate entity need not be represented by an attorney:

"Any individual may appear in a trademark or other non-patent case in his or her own behalf. Any individual may appear in a trademark case for (1) a firm of which he or she is a member or (2) a corporation or association of which he or she is an officer and which he or she is authorized to represent, if such firm, corporation, or association is a party to a trademark proceeding pending before the Office." Trademark Rule 10.14(e).

Text Copyright John L. Welch 2005

TTAB Finds "RED BARON" For Gaming Devices, Computer Games Confusingly Similar

The Board shot down an Australian company's attempt to register the mark RED BARON for "gaming devices, namely, gaming machines and associated software," finding the mark likely to cause confusion with the identical mark registered for "computer game programs."In re Aristrocrat Technologies Australia PTY Limited, Serial No. 76460411 (November 3, 2005) [not citable].


The Board noted once again that, when the marks at issue are identical, a lesser degree of similarity between the parties' goods is required to support a likelihood of confusion finding: "there need be only a viable relationship between the respective goods."

Examining Attorney Sonya B. Stephens piloted the PTO's refusal, relying on several third-party registrations that include both gaming devices and computer games in their identifications of goods. Under In re Albert Trostel & Sons. Co., 29 USPQ2d 1783 (TTAB 1993) and In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988), those registration "are entitled to probative value" on the issue of relatedness of the goods.


In addition, the Board found certain regulations of the Nevada Gaming Commission to be of relevance. Applicant submitted those regulations to prove that "the gaming industry is highly regulated, and that the purchasers of gaming devices such as applicant's are casino owners and their representatives who necessarily are professional, sophisticated customers." The Board, however, noted that one of the regulations, relating to the "themes" that are allowable, provides that a gaming device may be based upon or derived from the theme of a computer game.

"That is, the regulation specifically contemplates that a gaming device and a computer game program could be based on the same theme. Thus, consumers who are aware of the practice that gaming devices can be based upon or derived from computer games are likely to believe that applicant's RED BARON gaming device is based upon or derived from registrant's RED BARON computer game, and that there is a connection in sponsorship or source of the gaming device and the computer game."

Applicant argued that its goods are sold at trade shows to "professionals who are careful, sophisticated purchasers," while registrant's goods "are marketed to young video game players who purchase the games, inter alia, at kiosks in shopping malls, and at specialty stores such as Circuit City and Best Buy." The Board, however, noted that the "class of purchasers" for applicant's gaming devices "also include the ultimate users of such gaming devices, i.e., the patrons of the casinos and other gaming establishments who encounter and use applicant's gaming devices."

"Given the fact (of which we take judicial notice) that slot machines and other gaming devices may be played a penny, nickel or quarter at a time, these ultimate users of gaming devices must be deemed to be ordinary consumers and impulse purchasers who do not exercise more than an ordinary degree of care in deciding to play video gaming devices in a casino. These casino patrons are also purchasers of registrant's computer games, either for their own use or the use of their children or others."

The Board therefore found confusion likely, and it affirmed the Section 2(d) refusal to register.

TTABlog note: The RED BARON decision was issued just one day after a different Board panel came to a similar conclusion, on less evidence, in In re Sierra Design Group, Serial No. 78172916 (November 2, 2005) [not citable], finding the mark AMERICAN HEROES for gaming equipment likely to cause confusion with the registered mark AMERICAN HEROES COLLECTION for "computer game software. "

So it wouldn't be much of a gamble to say that at least 1 out of 3 TTAB judges thinks that gaming devices and computer game software are related goods.

Text Copyright John L. Welch 2005.

TTAB Okays Specimen Showing Use of Mark in Rendering of Advertising Services

The Board overturned the PTO's refusal to register the design mark shown below for various advertising services "for others," finding acceptable Applicant's specimen of use comprising a shopping center brochure produced for its tenants (rather than specimens offering the services). In re Caruso Property Management, Inc., Serial No. 78241396 (November 2, 2005) [not citable].


Applicant Caruso operates a shopping center in Los Angeles, called "The Grove." Its specimen brochure included "some pictorial and word games directed at children and three detachable coupons for three businesses located in the mall." [See picture below]. The Examining Attorney contended that the brochure failed to show use of the mark for the identified services:

"These brochures are clearly targeted to the shopping mall patrons, not to the business owners within the shopping mall. They do not offer advertising services to the business owners. They do not offer promotional services. They do not offer any of the services listed in the International Class 35 recitation."

The Board, however, found that this argument failed to consider the possibility that "an acceptable specimen may show use of a mark only in the rendering of the services rather than in the advertisement of the services."

"The Board has observed that use in the 'rendition' of services should be viewed as an element of the 'sale' of the services under Section 45 of the Act. In re Red Robin Enterprises, Inc., 222 USPQ 911, 913 (TTAB 1984). See also In re Metriplex, Inc., 23 USPQ2d 1315 (TTAB 1992); In re Eagle Fence Rentals, Inc., 231 USPQ 228, 230 (TTAB 1986)."

Moreover, when the brochure is distributed or when the coupons therein are presented to the tenant business for redemption, "the tenant businesses will encounter the mark in the rendering of the applicant's services for their benefit."


Coupons from Applicant's specimen brochure
The Examining Attorney also argued that a specimen of use "must explicitly refer to the services," but the Board found that view too narrow. When a mark is used in the rendering of a service, "the specimen need not and often will not include a an explicit reference to the service."

Distinguishing several cases cited by the PTO, the Board concluded that:

"the totality of the record here establishes that the mark applicant seeks to register is one applicant uses to identify its own services, in particular, its advertising services rendered on behalf of the tenant businesses. The record indicates that the mark, as used on the specimen, would be associated with applicant, the shopping center operator, by the tenant businesses, and with the advertising service rendered by applicant for the benefit of those tenant businesses."

The Board therefore reversed the refusal to register.

TTABlog comment: This case does seem a bit strange, but it falls in line with the precedent cited by the Board, in which the specimen at issue was used in the rendering of the services rather than in the offering of the services for sale.

Red Robin concerned a design of a bird costume used as a mark for entertainment services in the nature of personal appearances by a clown. The Board found acceptable as a specimen, a photograph of a person wearing the costume.

In Eagle Fence, a photograph of a fence was deemed an acceptable specimen for a mark consisting of "alternately colored strands of wire" for the service of "renting chain-link fences."

And in Metriplex, the Board accepted a computer screenshot of a display appearing on a computer terminal, as a proper specimen for the word mark GLOBAL GATEWAY for data transmission services provided to subscribers.

I just have a difficult time with the idea that the shopping center tenants would view the design mark appearing in the brochure as a source indicator for advertising services, rather than merely as a source indicator for the shopping mall's services.

Text Copyright John L. Welch 2005.

TTAB Affirms Surname Refusal of "MEARS" for Semiconductor Materials

As quick as you can say "Rick Mears," the Board affirmed a Section 2(e)(4) surname refusal of the mark MEARS for semiconductor materials. In re R.J. Mears LLC, Serial No. 78273336 (October 31, 2005) [not citable].


Examining Attorney Brendan D. McCauley relied on nearly 5,000 hits from the Lexis/Nexis USFIND database, 30 articles from a computerized search of the term MEARS, four third-party registrations in which the mark MEARS is registered on the Supplemental Register, a webpage from www.RootsWeb.com indicating that MEARS is a surname, and so-called negative dictionary evidence (from www.yourdictionary.com) to show that MEARS has no other meaning.

Applicant argued that MEARS is a rare surname and does not have the "look and feel" of a surname. It pulled out its calculator and came up with the futile argument that, based on the PTO's database evidence, a mere 0.00017641 or about 0.01% (one hundredth of one percent) of the total U.S. population has the surname MEARS.

The Board noted that "[t]here is no magic number of directory listings required to establish a prima facie surname case." Based on the PTO's evidence, the Board concluded that "a significant number of people in the United States have the surname 'Mears.'" As to Applicant's calculation:

"we find this 'percentage-of-the-entire-population" argument to be a hollow reed. The rich diversity of surnames in this country is amply reflected in the USFIND computer database evidence. If one were to take a statistical measurement of this database for common names like 'Smith' or 'Jones,' each would constitute a relatively small fraction of the total database content."

The Board noted that there was no "clear" evidence of record that someone with the surname MEARS is associated with Applicant. [TTABlog note: But see Applicant's website here.] The Board also noted that people named MEARS have been prominent in the field of auto racing, including Rick Mears, a four-time Indianapolis 500 winner. "The publicity regarding these individuals named MEARS indicates that the public will view the term as a surname."

Rick Mears
As to any non-surname meaning, the Board observed that Applicant "has not even identified any remote or obscure meanings for this term." Finally, as to look-and-feel, the Board pointed out that MEARS "has the structure and pronunciation of such surnames as Meers, Miers or Myers."

And so the Board affirmed the Section 2(e)(4) refusal to register.

Text Copyright John L. Welch 2005.

TTAB Reverses Mere Descriptiveness Refusal of "CRITICALWIRELESS" for Transceivers

The Board easily dismantled a poorly constructed Section 2(e)(1) refusal to register the mark CRITICALWIRELESS, finding the mark not merely descriptive of a "transceiver unit for remote monitoring systems." In re CriticalWireless Corp., Serial No. 78164647 (November 1, 2005) [not citable].


Uncritically relying on the appearance of the word combination "critical wireless" in various NEXIS excerpts (consisting primarily of newswire releases), the Examining Attorney contended that there is "widespread industry use of the wording 'critical wireless' to identify and define a particular class ... of wireless goods specifically designed to meet business and industrial government critical wireless standards and needs, as well as meet government critical wireless standards." (The Board noted that newswire stories are generally given little probative value, but here Applicant did not object, and indeed relied on these items in its brief).

The Board disagreed. Although some of the NEXIS excerpts use the term "mission critical wireless," when viewed in context the word "critical" modifies the word "mission," not the word "wireless." In fact, in many of the excerpts, the phrase "mission critical" is hyphenated, and in two excerpts, "critical" and "wireless" are separated by a comma: e.g., "a recognized leader in mission critical, wireless networking solutions."

Finally, in three other excerpts in which the word combination "critical wireless" appears, the word "critical" is actually modifying a multi-word phrase: e.g., "Its switching frequency of 3 MHz keeps switching noise out of critical wireless frequency bands."

Therefore the Board reversed the refusal to register because the PTO had failed to carry its burden of proof.

TTABlog comment: Not often are mere descriptiveness refusals reversed, but this one was a glaringly bad one.

Text Copyright John L. Welch 2005.

Supplemental Registration Blocks "HALLOWEEN USA" Design Mark Under Section 2(d), Says TTAB

The next time a client asks "what good is a Supplemental Registration?," this case may be worth mentioning. The Board affirmed a refusal to register the mark HALLOWEEN USA & Design (shown below on the left) for retail store services with a Halloween theme, finding it likely to cause confusion with the mark HALLOWEEN, USA & Design shown on the right ("Halloween" disclaimed), registered on the Supplemental Register for the same services. In re Gags and Games, Inc., Serial No. 76508596 (October 24, 2005) [not citable].

Applicant's mark (left); the cited mark(right)
Applicant Gags & Games feebly argued that the cited Supplemental Registration is "inherently weak" and that confusion is not likely because a "side by side comparison of the two marks shows that they are easily distinguishable from each other."

The Board, however, pointed out that a side-by-side comparison of mark is not the proper test "inasmuch as it is not the ordinary way that customers will be exposed to the marks." It noted that the marks are "identical in sound and meaning," the pumpkin design in Applicant's mark is commonplace for a store that sells Halloween-themed merchandise, and the use of stars ("which on the flag of the United States of American are widely known to represent states") to bracket the geographical term USA "can scarcely be said to distinguish" the marks.

As to the fact that the cited registration is on the Supplemental Register, the Board noted:

"While it is true that the Supplemental Register does not afford registrants the full benefits accorded to registrants on the Principal Register, marks on the Supplemental Register are protected under Section 2(d) of the Trademark Act against registration of confusingly similar marks. See In re Amtel Inc., 189 USPQ 58 (TTAB 1976). Similarly, although the Applicant argues that Registrant's mark is 'inherent[ly]' weak, even weak marks are entitled to protection. In re Clorox Co., 198 USPQ 337 (CCPA 1978)."

The Board also affirmed the PTO's requirement that Applicant disclaim the words HALLOWEEN USA in its mark. Applicant effectively conceded that point in its response to an Office Action in the case, and presented no argument in its appeal brief.

Finally, Gags & Games extracted some small satisfaction when the Board reversed the PTO's refusal to register based on its contention that, under Rule 2.51(a)(1), the mark as shown on Applicant's drawing did not comport with the mark shown on the specimen of use (see below).

Applicant's specimen of use
The Examining Attorney oddly based his refusal on the observation that "in the specimen, the word USA and the two stars appear immediately below the word HALLOWEEN. However, the drawing contains a significant space in between these elements."

The Board disagreed, finding nothing "significant" in the space appearing on the drawing. "Such gap is not so wide or otherwise prominent that it alters in any meaningful way the overall commercial impression of the mark as it appears on the specimens of use."

Text Copyright John L. Welch 2005.

TTAB Reverses Genericness Refusal, Deems "ACADEMIC DECATHLON" Registrable Under Section 2(f)

The Board not only reversed a PTO genericness refusal of the mark ACADEMIC DECATHLON for academic competitions and educational testing, but it also found the mark registrable under Section 2(f) in light of the mark's acquired distinctiveness. In re United States Academic Decathlon Assn., Serial No. 76343540 (October 24, 2005) [not citable].


The Examining Attorney relied on Nexis stories, pages from third-party websites, and Applicant's own website in contending that ACADEMIC DECATHLON has become "a generic term in relation to a class of competition along the lines of spelling bees, chess tournaments and science competitions."

Applicant USAD argued that its mark is a coined term, not a generic term, that much of the PTO's evidence actually refers to Applicant's services, that some of the items are merely misuses by news reporters who failed to use initial capital letters when referring to Applicant's services, that the PTO failed to submit the requisite "clear evidence" of genericness, and that any doubt on the issue must be resolved in Applicant's favor.

With regard to acquired distinctiveness, Applicant averred that it originated its "Academic Decathlon" in 1968 in California and conducted its first national competition in 1981, that its 23rd competition was held in 2004 and was covered by all three major TV networks, that 20,000 students from 1,800 high schools in 40 states participated, that its competitions have received substantial press coverage, and that none of 80 or so other academic competitions uses the phrase "Academic Decathlon."

The Board found "insufficient clear evidence" to establish genericness because "the record ... shows varied uses of the phrase 'ACADEMIC DECATHLON.'" Some of the PTO evidence showed generic use of the phrase, but "many of the examples (even if in lower case letters) are direct references to applicant and/or its licensees." Moreover, none of the PTO evidence predated applicant's first use dates.


The Board did find, however, that the evidence supported a Section 2(e)(1) refusal because the term ACADEMIC DECATHLON is merely descriptive of academic competitions involving ten scholastic events.

Turning to Section 2(f), the Board noted that the evaluation of this evidence requires "a subjective judgment as to its sufficiency based on the nature of the mark and the conditions surrounding it use." The more descriptive the term, the more evidence necessary. The Board found that here:

"there has been substantial exposure to the relevant public. Even though applicant has not supplied annual advertising or sales figures, we find that applicant has established a prima facie case that is [sic] mark has acquired distinctiveness."

The Board therefore reversed the genericness refusal and the Section 2(e)(1) refusal, deeming the mark registrable under Section 2(f).

TTABlog comment: The Board was rather loose with its statutory terminology in this decision. It referred to both the genericness refusal and the mere descriptiveness refusal as falling under Section 2(e)(1) of the Trademark Act. Of course, that is incorrect as to the first refusal. Section 2(e)(1) does not refer to genericness. See TMEP Section 1209.01(c)(ii).

The Board also stated that it reversed the "refusal to register under Section 2(f)." However, Section 2(f) does not provide a basis for refusal, but rather a means for overcoming a refusal. The Board was reversing the 2(e)(1) refusal in light of the evidence of acquired distinctiveness under Section 2(f).

Text Copyright John L. Welch 2005.

Divided TTAB Panel Finds "J.W. Foster" Not Merely a Surname

TTAB Judge Drost, writing for the panel majority, has once again penned a dubious decision regarding Section 2(e)(4) of the Trademark Act, reversing the PTO's surname refusal of the mark J.W. FOSTER for footwear, headwear, and clothing. In re Reebok Int'l Ltd., Serial No. 78271326 (October 26, 2005) [not citable]. In July 2004, Judge Drost wrote the opinion in In re Isabella Fiore LLC, 75 USPQ2d 1564 (TTAB 2004), a citable decision applying the "doctrine of foreign equivalents" in the surname context, and holding that the mark FIORE is not primarily merely a surname because "fiore" means flower in Italian. [See TTABlog discussion here.] That decision was notorious for its lack of consideration of the purpose of Section 2(e)(4). Here, Judge Drost has done it again, eschewing any real analysis of Section 2(e)(4) while reversing the PTO's surname refusal. Although the PTO provided 100,000 listings for the surname Foster in the Lexis-Nexis Finder database, and although two brothers named Joseph William Foster and Jeffrey William Foster founded Reebok, the majority correctly reasoned that FOSTER is a common word in the English language, meaning "to bring up or nourish" and, as such, the word "foster" by itself is not primarily merely a surname. [TTABlog note: I understand that "Foster's" is Australian for beer.] The Board then contemplated whether the addition of J.W. to FOSTER results in a mark that is primarily merely a surname. It noted prior decisions in which the addition of an initial or initials to a word that is primarily a surname (i.e., that has no other common meaning or significance) does not remove it from the surname category. (For example, J.C. Higgins.)

"In the present case, we have the flip side of the coin.... 'Foster' is not a term that has no other significance. Quite simply, it has other significant non-surname meanings. These meanings are not obscure nor are they meanings that are derived from the surname. Therefore, when we consider the term as a whole, we cannot hold that FOSTER is primarily merely a surname, and adding the letters 'J.W' to it does not change it into a surname."

In dissent, Judge Holtzman pointed out that the mark at issue must be considered in its entirety, and that when J.W. is added to FOSTER, the word FOSTER "does not have any other meaning; it would be perceived as a surname."

"The majority ... simply concluded that because FOSTER, itself, is not primarily merely a surname, adding initials to FOSTER does not change it into a surname. This analyis clearly does not take into account the effect of the initials added to FOSTER or the impact of the combination on the purchasing public."

Noting prior holdings that "the addition of initials to a surname reinforces the surname significance of the term" [N. PIQUET, M.E. MULLER, J. TAVERNINI, J.C. HIGGINS, and S. SEIDENBERG & CO.'S], Judge Holtzman urged that when J.W. is combined with FOSTER, "[t]he ordinary dictionary meaning of FOSTER would be lost on purchasers in the context of the mark as a whole."

"While the majority's position might be more persuasive if applicant were seeking registration of J.W. FOSTER for foster care services or some other goods or services relating to the ordinary language meanings of "foster," it is not believable that purchasers would think of any of those dictionary meanings when they view the mark on applicant's shoes and coveralls."

TTABlog comment: Judge Drost's logic is basically flawed: Just because the addition of initials to a word that is primarily merely a surname does not change the overall surname significance of the combined term, that does not mean, in turn, that the addition of initials to a word that is not primarily a surname could not change its primary significance into that of a surname. It seems to me that the Board needs to take a course, en banc, called "Surnames 101." Text Copyright John L. Welch 2005.

PTO Issues Notice Regarding Its Failure to Notify WIPO in Certain Section 66(a) Applications

As reported at the TTABlog here on October 25, 2005, the TTAB was recently forced to dismiss at least five Section 66(a) oppositions because the PTO had failed to provide timely notice to the International Bureau (IB) at WIPO under Section 68(c)(1)(C) of the Trademark Act. In that regard, on November 7, 2005, the USPTO issued the following "Notice Regarding Certain Requests for Extension of Protection Under Trademark Act § 66(a):"

Pursuant to Trademark Act § 68(c)(1), 15 U.S.C. § 1141h(c)(1), the USPTO must, within 18 months of the date a request for extension of protection is transmitted to the USPTO, send to the International Bureau of the World Intellectual Property Organization notice of: (A) a refusal of registration based on examination of the request; (B) an opposition to registration; or (C) the possibility that an opposition may be filed after the conclusion of the 18-month period. If a notice under either subsection (B) or (C) is not sent within the 18-month period, the Trademark Trial and Appeal Board may not entertain an opposition to registration, and “the Director shall issue a certificate of extension of protection pursuant to the request.” Trademark Act § 68(c)(4), 15 U.S.C. § 1141h(d)(4).

The notice required under § 68(c)(1)(C), 15 U.S.C. § 1141h(c)(1)(C), was inadvertently not sent with respect to a number of requests for extension of protection, which are listed below by serial number. Because in each case more than 18 months has passed since transmission of the request for extension of protection to the USPTO, no opposition or extension of time to oppose may be considered, and if filed, will be dismissed. The USPTO will promptly issue a certificate of protection with respect to the listed requests.

Affected parties are not precluded from filing a petition for cancellation of the certificate of protection, if otherwise appropriate.

79000003	79000836	79001205	79001571
79000022	79000924	79001288	79001576
79000233	79000972	79001346	79001620
79000242	79000987	79001393	79001634
79000297	79001011	79001409	79001635
79000443	79001024	79001438	79001642
79000522	79001025	79001471	79001646
79000534	79001037	79001530	79001658
79000546	79001047	79001551	79001666
79000552	79001048	79001560	79001679
79000584	79001129	79001561	79001680
79000756	79001179	79001568	79001687
79001688

TTABlog comment: It is reported on the "Madrid list serve" that the PTO has promised to refund any opposition filing fees expended with regard to these Section 66(a) applications.

BTW: The Madrid list serve is another valuable creation of Oppedahl & Larson LLP, whose website at www.patents.com provides a wealth of information regarding the Madrid Protocol. To join the Madrid list serve: "send email to imailsrv@patents.com and in the body of the message, say 'subscribe madrid Homer Simpson,' using your name rather than Homer Simpson's. To post a message, send email to madrid@patents.com."

Text Copyright John L. Welch 2005.

TTABlunder? Board Finds "AdvaLife" Confusingly Similar to Famous "ADVIL" Mark

In a decision that may merit inclusion in the TTABlog's list of the ten worst TTAB decisions of 2005, the fame of Wyeth's ADVIL mark for analgesics led the Board to sustain a Section 2(d) opposition to registration of the mark ADVALIFE (in the slightly stylized form shown here) for "vitamins, minerals and nutritional dietary supplements." Wyeth v. Graham, Opposition No. 91124967 (October 24, 2005) [not citable].


Applicant David M. Graham did not submit evidence, nor did he file a brief. Wyeth, on the other hand, relied on three registrations for its ADVIL mark and a mound of evidence: The ADVIL brand has been in use for more than 20 years, for products that are "intended for a variety of uses, including relief of pain, cold and sinus pain, migraine pain, flu symptoms, allergy and pain relief, sneezing and runny nose." ADVIL brand products are sold in virtually every consumer outlet in which over-the-counter analgesics are sold. Opposer has spent more than $300 million for advertising and promotion over the past three years, and sales have totaled more than $1 billion in that period. The ADVIL product line is among the top ten non-prescription medications in the country.

In light of this evidence, and in light of survey results showing widespread consumer recognition, the Board found ADVIL to be a "famous mark" under the fifth du Pont factor. The Board pointed out again that "[f]ame, of course, plays a dominant role in cases featuring a well-known or strong mark, as such marks enjoy a wide latitude of legal protection." In other words, "the Lanham Act's tolerance for similarity between competing marks varies inversely with the fame of the prior mark."

The Board observed that the products involved are "both over-the-counter health aids." It assumed, as required, that the goods of the parties would be sold in the same channels of trade and to the same class of consumers. The products are relatively inexpensive and "would not be the subject of a great deal of thought or analysis." [TTABlog query: how much thought or analysis is required to distinguish a pain reliever from a vitamin?]

Turning to a comparison of the marks, the Board went off the track. It found the marks "similar as to appearance and sound:"

"The prefix portion of applicant's mark is substantially the same as opposer's arbitrary mark. This first part of a mark is most likely to be impressed upon the mind of a purchaser and remembered. The upper-case letter 'L' in applicant's special form drawing only accentuates the similarity in appearance between the first five letter of each mark (e.g., 'advil' and 'adval')."

The Board noted that similarity in sound may be sufficient to support a likelihood of confusion, and even more so "given the public interest in avoiding confusion between different health care products."

As to connotation and commercial impression, ADVIS is a "coined term." Applicant's "Life" suffix is "not particularly distinctive for vitamins and mineral supplements," and "[t]he likelihood of confusion is greater given that the number of products in the ADVIL line has increased regularly over the years." [TTABlog note: but they were still all pain relievers!] According to the Board, consumers might believe that ADVALIFE vitamins are the latest addition to Wyeth's product line.

Therefore the Board concluded that the mark ADVALIFE (Stylized) is likely to cause confusion with ADVIL when applied to over-the-counter health aids.

TTABlog comment: Thank goodness this decision is not citable. This is the kind of decision we sometimes get when one party fails to put in any evidence or make the least effort. The Board's analysis of the similarities between the marks is wholly unconvincing. The dominant portion of Applicant's mark is the word "Life," and even if that word is "suggestive" of vitamins [another dubious Board finding], that suggestion only further distinguishes the marks.

Text Copyright John L. Welch 2005.

Leo Stoller Mowed Down by TTAB in "STEALTH" Opposition Dismissal

Frequent TTAB litigants Leo Stoller and his company, Central Mfg. Co., failed miserably in their attempt to block registration of the mark STEALTH for lawn mowers. Stoller and Central claimed likelihood of confusion with their registered mark STEALTH for "lawn sprinklers," and they also alleged ownership of a "family of famous STEALTH marks for a 'range of goods.'" In addition, Opposers alleged mere descriptiveness, fraud, and nonownership in their amended notice of opposition. Stoller v. Sutech U.S.A. Inc., Opposition No. 91117894 (October 26, 2005) [not citable].


The Board first addressed the grounds other than Section 2(d). As to mere descriptiveness, Opposers relied on a statement by Applicant Sutech's vice-president that he believed the mark STEALTH was chosen for Applicant's lawn mower because the front of the mower evoked the Stealth aircraft. The Board found that statement insufficient to establish Opposer's Section 2(e)(1) claim because the mark did not immediately convey information regarding a significant quality, characteristic, function, ingredient, attribute, or feature of the product.

Opposers' wholly bogus fraud claim pointed to Sutech's filing of the subject application on the basis of intent-to-use, when in fact it had already been using the mark. The Board merely noted that there is no prohibition against filing an intent-to-use application even though the mark may be in use.

Opposers' assertion that Applicant did not own the applied-for mark was [surprise, surprise!] without evidentiary support and completely lacking in merit.

Not content with losing only on those grounds, Stoller and Central threw a few more worthless claims into their brief. (Unfortunately, Applicant addressed them rather than ignore them). First, they made the wholly bizarre contention that Sutech's mark STEALTH is functional. The Board noted that Applicant's mark is a word mark in standard character form, and it therefore swiftly dismissed that claim.

Next, Opposers oddly asserted that the opposed application was not viable because of incorrect dates of use, invalid specimens of use, and improper specimens. However, the Board pointed out that the application was based on intent-to-use, and so there were no dates of use or specimens in the application.


Finally, the Board turned to Opposer's likelihood of confusion claim. Stoller and Central claimed rights in 26 federal registrations but failed to submit them properly into evidence. As to use of the marks, Opposers offered the poorly-worded declaration of a single customer that failed to establish "opposer's use of STEALTH as a trademark in connection with lawn sprinklers or any other products." [TTABlog query: how did that declaration get into evidence? Apparently by stipulation.]

In sum, the Board observed that Opposers failed to prove ownership of any registrations, and failed to prove use of the pleaded marks. It concluded that "opposers have not established either standing or priority and, thus, opposers' claim of likelihood of confusion must fail."

TTABlog comment: What, no sanctions, you might ask? Well, not in the final decision anyway. But earlier Opposers were sanctioned under the Board's "inherent authority to sanction a party based on the conduct undertaken in a proceeding." In an Order dated April 8, 2003, the Board entered sanctions because "opposers were ordered by this Board to provide a copy of their previously filed motion and opposers did not do so. In fact, opposers filed an entirely new paper entitled 'amended motion.'"

"Accordingly, in view of opposers' failure to provide a copy of their original motion for summary judgment (allegedly filed via certificate of mailing on September 6, 2002), the Board will not consider either of the summary judgment papers filed by opposers on November 25, 2002."

So we can add this one to the Stoller sanction list previously provided here and here by the TTABlog, bringing the total number of sanction rulings to thirteen.

Text Copyright John L. Welch 2005.

"IQEYE3" and "eye Q" Design Marks Confusingly Similar, Says TTAB.

Although struggling somewhat to explicate why the marks are confusingly similar, the Board affirmed a Section 2(d) refusal to register the mark IQEYE3 for "computerized digital cameras for use in security and surveillance applications," finding it likely to cause confusion with the registered mark shown immediately below, for, inter alia, digital cameras. In re IQinVision, Inc., Serial No. 76300952 (October 7, 2005) [not citable].


The Board agreed with Examining Attorney Michael Kazazian that the goods of the parties are "legally identical in part." Applicant IQinVision feebly and hopelessly contended that its goods "are identified for use in a precisely defined and limited field," whereas Registrant's cameras are not so identified. The Examining Attorney "persuasively" countered that:

"since the identification of the registrant's digital cameras is very broad, without limitation as to a specific purpose or use, it is presumed that the registration encompasses all goods of the type described, including those in applicant's more specific identification, that they move in all normal channels of trade and that they are available to all potential customers."

Turning to the marks, the Board once again noted that "[w]hen marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines."

Applicant argued that its mark is distinguishable because of the letter "I" that begins its mark, the inclusion of a design in the cited mark, and the appearance of the numeral "3" in its mark.


The Board, however, agreed with the PTO that the marks are "confusingly similar:" the marks "share substantial similarities in sound, appearance, connotation and commercial impression." The Board explained:

"Although, in registrant's 'EYE Q' mark, it is the word 'EYE,' rather than a letter 'I' as in applicant's 'IQEYE3' mark, which in conjunction with the letter 'Q' conveys the meaning of the term 'IQ,' both marks still share and readily project, in significant part, the connotation of the term 'IQ.' Both marks prominently feature the word 'EYE,' which in the case of applicant's mark could be depicted, as it is in registrant's mark, in lower case letters with the remaining lettering in all capital letters, i.e., IQeye3."

Because Applicant's mark is in block letters, the Board must consider all reasonable manners in which the mark might be depicted. Applicant therefore cannot validly argue that there is a "distinguishable difference in appearance between its mark and registrant's 'design' mark."


Finally, the inclusion of a "3" at the end of Applicant's mark was an insufficient difference on which to find confusion unlikely.

"even assuming that the sophisticated purchasers of applicant's and registrant's goods would notice the numeral '3' in applicant's mark, such number nonetheless would most liklely be regarded as suggesting, in conjunction with the word 'EYE,' that applicant's 'computerized digital cameras for use in security and surveillance applications' provide a 'third eye' with respect to providing protection of people and/or places and things, just as registrant's digital cameras function so as to provide an extra 'eye' for watching and safeguarding purposes."

As a last gasp, Applicant asserted that it "has not experienced any instances of confusion," but the Board noted that the record not only was devoid of any support for that statement (e.g., an affidavit), but also there was no evidence showing that there has been an opportunity for actual confusion to occur.

Text Copyright John L. Welch 2005.

TTAB Finds Arrowhead Design Marks Confusingly Similar

The Board affirmed a Section 2(d) refusal to register the design mark shown immediately below for motorcycle clothing (including gloves and boots), finding it likely to cause confusion with the two registered marks shown further below, for motorcycle helmets, boots, spectacles, and protective clothing and gear. In re Specialty Sports Ltd., Serial No. 76391643 (October 20, 2005) [not citable].

Applicant's mark
The Board found the goods to be identical in part and otherwise closely related. It also presumed, as required, that the goods of the parties are marketed in the same (normal) trade channels to the same classes of purchasers. And it observed that the goods "would not necessarily be purchased with a great deal of care. Applicant did not contend otherwise.

The cited marks
Instead, Applicant asserted that the marks are so dissimilar that confusion is not likely: its mark is a "forward-looking 'T,' which 'is presented against the background of and within an emblem which itself has the appearance of a forward-looking 'T,' and which includes a distinguishing white band around its perimeter." On the other hand, the cited design-only mark "is a reverse arrowhead-like design presented against a solid, oval-shaped background."

That argument missed the target. The Board pointed out that the fact that the designs are not identical is not dispositive. Rather than a side-by-side comparison, "the focus is on the recollection of the average purchaser, who normally retains a general rather than a specific recollection of trademarks."

Here, the Board observed, "purchasers are likely to remember, generally, the appearances and commercial impressions of the marks as being arrowhead-like designs on dark backgrounds. They are not likely to remember any detailed differences between the marks which are apparent only upon a side-by-side comparison of the marks."

Applicant's contention that its mark is a stylized "T" was "especially unpersuasive." The Board noted that the letter "T" is not part of Applicant's trade name and does not appear to have any connection with its business or goods. Moreover, the alleged "T" is so highly stylized that it is "extremely unlikely" that purchasers will perceive it as a "T."

Finally, the Board noted that, when the goods involved are identical or closely related, the degree of similarity between marks necessary to support a likelihood of confusion finding is lessened.


Turning to the cited design-plus-word mark, the Board found it "similar" to the applied-for mark. The presence of the stylized letters AXO is "insufficient to render the marks dissimilar when the marks are viewed in their entireties." Moreover, "[t]he design feature appears first in the registered mark, on top of the letters, and its contribution to the overall commercial impression of the mark is undeniable."

The Board stated, in closing, that if any doubts exist regarding affirmance of this Section 2(d) refusal, those doubts must be resolved against Applicant.

Text Copyright John L. Welch 2005.

Dissimilarity of Marks, Evidentiary Mistakes Bring TTAB Dismissal of "SOY BUENO" Opposition

Opposer's failure to submit testimony and to introduce properly into evidence the registrations for two of its marks were significant factors in its failed opposition to registration of the mark SOY BUENO for tortillas. El Encanto, Inc. v. La Tortilla Factory Inc., Opposition No. 91159343 (October 20, 2005) [not citable]. El Encanto, Inc. d/b/a Bueno Foods owns registrations for the mark BUENO in block letter and design form, but it submitted only photocopies of the registrations and not status-and-title copies as required by Rule 2.122(d).

El Encanto did manage to get into evidence a third registration, for the word and design mark shown immediately above. [The registration includes a Section 2(f) claim regarding the word "bueno."] But it failed to introduce any testimony establishing priority for its BUENO marks. Instead it attempted to submit "testimony" by way of affidavit, to which Applicant successfully objected.


Thus the only issue before the Board was whether Applicant's mark SOY BUENO for tortillas so resembles the word and design mark shown above for tortillas, that confusion of source or sponsorship is likely.

Applicant El Encanto argued that tortillas "are bought by sophisticated purchasers who exercise a high degree of care," but the Board was not persuaded. Not only did Applicant fail to provide any evidentiary support for its contention, but "it is common knowledge that tortillas are inexpensive food items," often subject to impulse purchasing. The Board, as required, presumed that the parties' goods travel in all the normal channels of trade for goods of this type, and would be purchased by the same class of customers (ordinary consumers)

Nonetheless, the Board found that the marks "are so significantly different in sound, appearance, meaning, and commercial impression that there is no likelihood of confusion." The dominant feature of Opposer's mark is the word GRANDMA'S, since it is in "large, bold lettering, which stands out in sharp contrast to the wording FROM OUR FAMILY TO YOURS SINCE 1951 and BUENO in smaller non-distinct lettering." Purchasers are likely to refer to Opposer's goods by the term GRANDMA'S. As to meaning or connotation:

"applicant's mark translates as 'I am good,' and also as a play on the word 'soy,' the product from which applicant's tortillas will be made. Opposer's mark, on the other hand, due to the dominant word 'GRANDMA'S,' connotes tortillas from Grandma or Grandma's recipe."

The inclusion of the word "bueno" in each mark was an insufficient basis to find the marks similar, since the word is highly laudatory, as evidenced by Opposer's 2(f) claim as well as by third-party registration evidence.


The Board therefore dismissed the opposition.

Text Copyright John L. Welch 2005.