TTABlog Quarterly Index: October - December 2005

Well, The TTABlog has made it through its first full calendar year. Here is the fourth quarter 2005 index. Links to the earlier quarterly indexes are found in the right hand column. Please report any broken links, errors, and the like to me for prompt correction. Happy New Year!

Custom House Tower, Boston
Section 2(a) - immoral or scandalous:

• "KRYPTONITE" Opposition to "KRYPTOKING" Goes up in Smoke at the TTAB

Section 2(a) - disparagement:

• DYKES ON BIKES" 2(a) Refusal Withdrawn by PTO
• TTAB Reverses Section 2(a) Disparagement Refusals of "SQUAW"

Section 2(a) - suggesting a false connection

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

Section 2(c) - name of living individual:

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

Section 2(d) - likelihood of confusion:

• Finding Golf Equipment and T-Shirts Related, TTAB Affirms "MAN O'WAR" 2(d) Refusal
• "KRYPTONITE" Opposition to "KRYPTOKING" Goes up in Smoke at the TTAB
• "ORION" for Golf Clubs and Fishing Rods Likely to Confuse, Says TTAB
• TTAB Designates "CAREFIRST" Decision as Citable No. 17
• "QUALITY" and "QUALITEE" For Auto Parts Not Confusingly Similar, Says TTAB
• Finding "ONFOLIO" and "CARTAGIO" Too Dissimilar, TTAB Grants 2(d) Summary Judgment
• TTAB Says "AMAVIO" and "AMEVIVE" Confusingly Similar for Pharmaceuticals
• TTAB Doesn't Buy PTO's "Designer Marks" Argument, Reverses 2(d) Refusal of "WEILL & Design" for Clothing
• TTAB Finds "RED BARON" For Gaming Devices, Computer Games Confusingly Similar
• Supplemental Registration Blocks "HALLOWEEN USA" Design Mark Under Section 2(d), Says TTAB
• TTABlunder? Board Finds "AdvaLife" Confusingly Similar to Famous "ADVIL" Mark
• "IQEYE3" and "eye Q" Design Marks Confusingly Similar, Says TTAB
• TTAB Finds Arrowhead Design Marks Confusingly Similar
• Dissimilarity of Marks, Evidentiary Mistakes Bring TTAB Dismissal of "SOY BUENO" Opposition
• "SLEEPYHEADS.COM" and "SLEEPY-HEAD HOUSE" Not Confusingly Similar, TTAB Concludes
• TTAB Makes "KRYPTONITE" Decision Its 10th Citable of 2005
• Irked TTAB Takes Counsel to Task In Dismissal of "CAREFIRST" Opposition

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

• "POLITICAL COMPLIANCE SERVICES, INC." Descriptive but not Generic, Says TTAB
• TTAB Deems "BARBELL" Merely Descriptive of Barbell-Shaped Masonry Tools
• TTAB Alert: "MAYDAY" Merely Descriptive of Emergency Transceivers
• On Summary Judgment, TTAB Finds "TOF/TOF" Merely Descriptive of Mass Spectrometers
• Bayer's "ASPIRINA" Merely Descriptive of Analgesics, Says TTAB
• TTAB Reverses Mere Descriptiveness Refusal of "CRITICALWIRELESS" for Transceivers
• "THE GREATEST BAR" Double Entendre Argument Loses Appeal Before TTAB
• TTAB Squashes "GRAPE RANCH" 2(e)(1) Mere Descriptiveness Refusal

Section 2(e)(1) - deceptively misdescriptive:

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

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

• TTAB Affirms Surname Refusal of "MEARS" for Semiconductor Materials
• Divided TTAB Panel Finds "J.W. Foster" Not Merely a Surname

Dilution:

• TTAB Designates "CAREFIRST" Decision as Citable No. 17
• Irked TTAB Takes Counsel to Task In Dismissal of "CAREFIRST" Opposition

Fraud

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

Genericness:

• "POLITICAL COMPLIANCE SERVICES, INC." Descriptive but not Generic, Says TTAB
• TTAB Citable Decision: "LAWYERS.COM" Generic for an Online Legal Database
• TTAB Citable Decision Deems "SPORTSBETTING.COM" Generic
• TTAB Reverses Genericness Refusal of "BSS" for Balanced Salt Solutions
• TTAB Reverses Genericness Refusal, Deems "ACADEMIC DECATHLON" Registrable Under Section 2(f)

Not a Trademark/Mutilation

• Teddy Bear Design on Hanger Not a Trademark, Says TTAB
• TTAB Turns Up Its Collective Nose at Nasal Strip Design Marks
• TTAB Reverses Mutilation Refusal of "THE GRAY FOXES" Design Mark
• Barbecue Grill Maker Falls Flat on its Face in TTAB Appeal
• TTAB Reverses Refusal to Register Background Design for PING Golf Clubs
• TTAB Blocks NBA Star Chris Webber's Shot at Registration of "CWEBB"

Use in Commerce/Specimens of Use:

• TTAB Deems Service Mark Specimens for "LIBERTY BILLIARDS" Unacceptable
• TTAB Okays Specimen Showing Use of Mark in Rendering of Advertising Services
• In a Citable Decision, TTAB Dismisses "FIRST NIAGARA" Opposition Based on Lack of Use in Commerce

TTAB Discovery/Evidence/Procedure:

• "DAYTONA" Licensee Hits Standing Barrier in TTAB 2(d) Opposition
• TTAB's Citable "VIGNETTE" Decision Encourages Discovery Gamesmanship
• In a Citable Decision, TTAB Allows Addition of Fraud Counterclaims Based on Evidence Uncovered During Testimony Period
• TTAB Refuses to Allow Second Bite at Summary Judgment Apple
• PTO Issues Notice Regarding Its Failure to Notify WIPO in Certain Section 66(a) Applications
• Grrrreat! TTAB Dismisses Madrid Opposition: PTO Failed to Provide Timely Notice to WIPO
• TTAB Suspends Madrid Opposition: Turkish Attorney Cannot File Answer

Custom House Tower(behind Flour and Grain Exchange Building)
Leo Stoller:

• "HYPNOSTEALTH" Applicant Moves to Dismiss Leo Stoller Opposition for Lack of Standing
• Surprise! Central Mfg. Co. Sanctioned for Non-Compliance with TTAB Discovery Order
• "Gross Misconduct" of Leo Stoller and his Counsel Leads to Dismissal of Chicago Lawsuit
• Leo Stoller Mowed Down by TTAB in "STEALTH" Opposition Dismissal
• CAFC Affirms TTAB in Two Nonprecedential Decisions
• TTABlog Adds Two More Leo Stoller Sanction Rulings to List
• TTABlog Provides List of Leo Stoller TTAB Sanction Rulings
• Leo Stoller Posts Job Offer at Rentamark.com Website
• George Brett Hits Grand Slam in Leo Stoller "STEALTH" Lawsuit

Other:

• TTABlog Included in "BlawgWorld 2006"
• TTABlog Flotsam and Jetsam -- Issue No. 8
• PTO Issues Notice Regarding Its Failure to Notify WIPO in Certain Section 66(a) Applications
• CAFC Affirms TTAB in Two Nonprecedential Decisions
• TEAS Manager Craig Morris Reviews PTO Developments at BPLA Trademark Seminar
• PTO Mistakenly Re-Publishes 143 Marks for Opposition

Text and Photographs ©John L. Welch 2005.

Finding Golf Equipment and T-Shirts Related, TTAB Affirms "MAN O'WAR" 2(d) Refusal

Third-party registration evidence led the Board to affirm a Section 2(d) refusal of the mark MAN O'WAR for golf clubs, golf balls, golf bags, and various other items of golf equipment. The Board found a likelihood of confusion with the registered mark MANOWAR (Stylized) (shown immediately below) for t-shirts and hats. In re Centex/Taylor, LLC, Serial No. 78975852 (December 16, 2006) [not citable].

Examining Attorney Charles L. Jenkins, Jr. relied on nine third-party registrations covering both t-shirts and golf items, to show the relatedness of the goods. According to In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993), third-party registrations "which individually cover a number of different items, and which are based on use in commerce, serve to suggest that the listed goods are of a type which may emanate from a single source."


Applicant candidly conceded that "golf clubs and t-shirts bearing identical marks are frequently offered by the same registrant" and that past registrations serve to suggest that the goods may emanate from the same source. But Applicant hopelessly argued that Registrant's goods exclude "golf enthusiasts." The Board promptly rejected that argument, since it was based upon an impermissible attempt to read limitations into the identification of goods in the cited registration. Similarly, Applicant's arguments regarding the actual use of Registrant's mark in the marketplace were irrelevant (and unsupported by proof). [The registered mark is owned by Joey DeMaio, leader of the heavy metal band MANOWAR]. The Board noted that the registration is not limited to any specific channel of trade, and therefore it presumed that the involved goods would "overlap in trade channels and ... would be offered to all normal classes of purchasers."


As to the marks, although there are slight differences, the literal portions of the marks are identical and the marks sound the same. The Board found unpersuasive Applicant's argument that its mark would bring to mind the famous race horse.

"Applicant's mark MAN O'WAR when used in connection with golf items is just as likely, if not more so, to evoke the literal meaning 'man of war' than the name of a historical race horse. Registrant's mark would also connote 'man of war,' at least, when spoken."

In view of the "identity of sound" and the "lack of stylization" in Applicant' mark, the commercial impressions of the mark are similar. The minimal stylization of the registered mark was deemed insufficient to distinguish the marks.


Thus the Board concluded that the marks are similar, the goods related, and the channels of trade the same or overlapping. It therefore affirmed the refusal to register.

TTABlog comment: This particular application of the Albert Trostel doctrine (a/k/a the Mucky Duck doctrine) seems particularly irksome. One suspects that third party registrations may be found that include t-shirts and/or hats and almost any other product or service one can think of -- given the common practice of marketing or distributing t-shirts or hats emblazoned with one's trademark.

So does that mean that every trademark clearance search should include a check of t-shirt and hat registrations in class 25? And then a check for registrations that include t-shirts and your client's product? Isn't this a situation where Mucky Duck has run amok?

Text Copyright John L. Welch 2005.

"KRYPTONITE" Opposition to "KRYPTOKING" Goes up in Smoke at the TTAB

The Board slammed the door on Schlage Lock Company in the latter's opposition to registration of the mark KRYPTOKING & design (shown immediately below) for sunglasses, tote bags, wallets, various clothing items, cigars, cigarettes, tobacco, and rolling papers. Schlage claimed that the applied-for mark would cause confusion with and dilute its KRYPTONITE and KRYPTO-formative marks for a wide variety of goods, and that Applicant's mark is immoral and scandalous under Section 2(a). Schlage Lock Co. v. Staiano, Opposition No. 91152703 (December 12, 2005) [not citable].

Before reaching the substantive issues, the Board decided several procedural and evidentiary matters. For example, it rejected Schlage's contention that Applicant Staiano had admitted (by not denying) the Section 2(a) allegations, concluding that the issue had been tried by the parties; it therefore considered Applicant's Answer to be amended to conform to the evidence. And the Board sustained Applicant's objection to several website excerpts submitted under a Notice of Reliance, noting that webpage printouts are not self-authenticating but must be submitted with testimony. See Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998).

The Board promptly rejected Schlage's KRYPTO family-of-marks argument, noting the lack of any evidence regarding how the marks are promoted and perceived by consumers. It likewise rejected Schlage's assertion of "fame" (and its dilution claim), pointing out that the mere ownership of incontestable registrations is not sufficient to establish a mark's fame.

With regard to 12 of the 13 registrations pleaded by Opposer, the various metal locks, cables, and carrying brackets covered by those registrations were not sufficiently similar or related to Applicant's goods. Schlage asserted that its goods would be sold in the same large discount retail stores as Applicant's sunglasses and clothing, but the Board rejected that logic:

"The mere fact that a consumer can purchase a gallon of milk and a car battery at these establishments does not lead to the conclusion that car batteries and milk are related under relevant trademark law."

As to the single remaining registration (for the mark KRYPTONITE), its tote bags for bicyclists overlapped with Applicant's "tote bags." Consequently, the Board proceeded with its du Pont analysis regarding this registration.

Comparing Applicant's mark with the mark KRYPTONITE, the Board found them "substantially different" in appearance, similar in sound only as to the beginning "KRYPTO" portion, different in connotation ("in view of the second portion of applicant's mark, KING"), and, finally, dissimilar as to overall commercial impression. The Board concluded that the marks "are not similar" and that this dissimilarity "simply outweighs the other relevant du Pont factors." It therefore ruled that confusion is not likely regarding these marks.

Schlage's "New York Fahgettaboudit"
Turning to the Section 2(a) claim, the Board noted that the determination of whether a mark comprises immoral or scandalous matter "is to be ascertained in the context of contemporary attitudes, and the relevant viewpoint is not necessarily that of a majority of the general public, but of a 'substantial composite.'" Schlage failed to submit any evidence addressing that viewpoint, but instead offered mere "speculation and dissection of the mark." Schlage claimed that Applicant's mark contains the design of a marijuana leaf and the word "toking," and that the goods "are designed for marijuana smoking."

The Board, however, noted that "the goods for which applicant seeks registration are legal and may be used in connection with legal goods." Moreover, the record was devoid of evidence that a substantial composite of the general public would (1) perceive the leaf design as a marijuana leaf (Applicant described the design element of its mark as "the design of an aloe plant"), (2) "parse out" the word KRYPTOKING to find the word "toking" and know its meaning; or (3) find use of the mark immoral or scandalous for the identified goods.

Thus Shlage's Section 2(a) claim, too, went up in smoke.

Text Copyright John L. Welch 2005.

"DAYTONA" Licensee Hits Standing Barrier in TTAB 2(d) Opposition

Opposer HBP, Inc. claimed to be the exclusive licensee of a family of DAYTONA marks, but it barely got off the starting line in its failed opposition to registration of the mark DAYTONA THUNDERWEAR for "clothing, namely women's blouses and shorts" ["DAYTONA" disclaimed]. Opposer alleged likelihood of confusion and dilution, but was shown the black flag when it failed to prove its standing. HBP, Inc. v. Becker Designs, Inc., Opposition No. 91154068 (December 16, 2005) [not citable].


HBP attempted to rely on 31 registrations owned by International Speedway Corporation for the mark DAYTONA in various forms for auto racing events and assorted goods, but it neglected to submit status and title copies of the registrations. Applicant discussed nine of the registrations in its brief "in a manner that we deem to be an admission that these nine referenced registrations are valid and subsisting and, thus, of record."

However, Applicant did not admit that HBP owns those registrations, or that "opposer is otherwise entitled to rely on these registrations, as alleged in the notice of opposition." In fact, Applicant expressly stated that "opposer has not established its relationship to the record owner of the registrations." The Board agreed with Applicant:

"Opposer has not introduced any evidence or testimony to establish any relationship to the record owner of the registrations or its right to rely on such registrations. We, therefore, conclude that opposer has not established its standing herein and, thus, cannot prevail on its claim of priority and likelihood of confusion."

The Board further observed that, even if HBP had established its standing (by proving its exclusive license), it provided no evidence of its own use of the registered marks. Since HBP is not the owner of the pleaded registrations, it could not rely merely on the registrations, but was required to prove prior use. See Chemical New York v. Conmar Form Systems, Inc., 1 USPQ2d 1139 (TTAB 1986).


HBP's dilution claim was also fatally flawed because HBP failed to allege that its marks became famous prior to the filing date of the involved application. See Polaris Indus. Inc. v. DC Comics, 59 USPQ2d 1798 (TTAB 2000).

Text Copyright John L. Welch 2005.

"POLITICAL COMPLIANCE SERVICES, INC." Descriptive but not Generic, Says TTAB

The Board reversed a genericness refusal of POLITICAL COMPLIANCE SERVICES, INC. ("SERVICES, INC" disclaimed) for "election law compliance services, and related consultation services," but affirmed a mere descriptiveness refusal, paving the way for registration on the Supplemental Register. In re Political Compliance Services, Inc., Serial No. 76286430 (December 5, 2005) [not citable].


The Board found the genus of services to be adequately defined by Applicant's recitation.

As to the relevant public's understanding of the phrase, the Board deemed the relevant public to include "non-connected PACs, party committees, candidate committees, political campaign managers, and candidates." The Examining Attorney submitted relevant Nexis articles in which the term "political compliance" is used in various contexts, third party websites displaying that term, and dictionary definitions of "political" and "compliance." However, she did not provide any examples of the phrase POLITICAL COMPLIANCE SERVICES, INC. in its entirety.

Photograph from Applicant's specimen of use
The Board noted that, to prove a term generic, the PTO "may not simply cite definitions and generic uses of the constituent terms of a mark, but must consider the meaning of the disputed phrase as a whole." In re Dial-A-Mattress Operating Corp., 57 USPQ2d 1807 (Fed. Cir. 2001); In re The American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999).

The PTO failed to provide the "clear evidence" required to prove genericness:

"The record before us does not contain a single example of use of 'POLITICAL COMPLIANCE SERVICES, INC.' (other than applicant's service mark use). In addition, even taking the constituent parts separately, both the number and nature of the uses of 'political compliance' in the record are not sufficient to establish by clear evidence that 'political compliance' is currently generic for the identified services."

Turning to the Section 2(e)(1)issue, the Board found Applicant's mark to be merely descriptive of a "significant feature of applicant's services, specifically that its services involve consultation regarding compliance with regulation in the political field, specifically election laws." The PTO's Nexis and Internet evidence showed use of the term "political compliance" to describe services in the field of election law. Coupling that term with the non-distinctive phrase "SERVICES, INC" does not yield a "new and unique commercial impression. "

In sum, the Section 2(e)(1) refusal to register on the Principal Register was affirmed, but the refusal to register on the Supplemental Register on the ground of genericness was reversed.

TTABlog comment: Suppose the PTO's proofs had been sufficient to establish that "Political Compliance" is generic for Applicant's services. The genericness refusal would still have failed because of lack of proof that the entire phrase is in use, as required by American Fertility. Proof of genericness of the constituent terms is not sufficient; it must be shown that the entire phrase is in use as a generic designation.

Text Copyright John L. Welch 2005.

TTAB Deems "BARBELL" Merely Descriptive of Barbell-Shaped Masonry Tools

Kraft Tool Co. lost its battle to overcome the PTO's disclaimer requirement regarding the word BARBELL in the mark MASONRY BARBELL JOINTER & design for "hand tools; namely, masonry jointers" [MASONRY and JOINTER disclaimed]. The Board found the word BARBELL to be merely descriptive of the shape of Kraft's tool. In re Kraft Tool Co., Serial No. 76578800 (December 5, 2005) [not citable].


Examining Attorney Nicholas K.D. Altree refused registration because Kraft would not disclaim BARBELL. The Board sided with the PTO, noting that "a term or word which merely describes the form or shape of a product falls under the proscription of Section 2(e)(1) of the Trademark Act." The Board cited cases involving the descriptiveness of TOOBS for bathroom and kitchen fixtures in the shape of tubes; WING NUT for electrical connectors shaped like wing nuts; V-RING for antennas shaped like a "v" and a "ring;" CHAMBERED PIPE for an exhaust system comprising a series of small tuning chambers; MATCHBOX SERIES for toys sold in matchbox-sized boxes, and V-FILE for a v-shaped card filing device.

Photographs of Kraft's tool revealed that the product "is a bar with a round head ball-shaped extension on either end."


The Board rejected Kraft's arguments that BARBELL is not descriptive because Kraft's jointer "is not big enough to be an actual barbell" and because the tool is "asymmetrical, with one ball being slightly larger than the other." The Board observed that the tool is clearly shaped like a barbell, and the differenc in ball size is "too slight to overcome the tool's overall barbell-shaped appearance." Moreover, the design portion of Kraft's mark further encourages a purchaser to view the products as barbell-shaped.

Finally, Kraft dragged out the ever-popular double-entendre argument, claiming that BARBELL suggests "strength, power and agility as well as describing the shape of the goods." The Board didn't get it. "[T]his alleged second meaning is so attenuated that, standing alone, it would not be readily apparent to purchasers of these goods."

The Board therefore affirmed the disclaimer requirement, allowing Kraft thirty days within which to submit the necessary disclaimer.

TTABlog comment: I tried a masonry joint once, but I couldn't keep it lit.

Text Copyright John L. Welch 2005.

TTAB Citable Decision: "LAWYERS.COM" Generic for an Online Legal Database

In its 18th citable decision of 2005, the TTAB affirmed a genericness refusal of the term LAWYERS.COM for "providing an online interactive database featuring information exchange in the fields of law, legal news and legal services." It took the Board 29 pages to explain this seemingly inevitable result (and this posting will not attempt to summarize every point of the discussion). In re Reed Elsevier Properties Inc., 77 USPQ2d 1649 (TTAB 2005).

lawyers.com website
Examining Attorney Kathleen M. Vanston refused registration on the Supplemental Register, relying on definitions of "lawyers" and "domain name," on pages from the websites of Applicant and of others "demonstrating that web sites devoted to law, legal news, and legal services also provide information about and/or databases of lawyers," and on webpages showing use of the domain names www.massachusetts-lawyers.com, www.wrongfuldeath-lawyers.com, and other like domain names for lawyer directory websites.


The Board first determined the genus of the services by interpreting "the nature of" Applicant's identified services "in light of what the record shows the database to include." Applicant's specimens of use demonstrated that "applicant's information about the law includes providing information about lawyers and, in fact, is offered for the express purpose of assisting the individual in selecting a lawyer." Reed Elsevier argued that its deletion of the word "lawyers" from its original recitation of services "limited its covered services." The Board found that deletion inconsequential:

"Under the circumstances we find the genus of services to be providing a web site with a database of information covering the identified topics of law, legal news and legal services and that a central and inextricably intertwined element of that genus is information about lawyers and information from lawyers. "

Turning to the issue of the public's understanding of the term LAWYERS.COM, the Board concluded that:

"The relevant public, including both lawyers and non-lawyers, when they consider LAWYERS.COM in conjunction with the class of involved services, would readily understand the term to identify a commercial web site providing access to and information about lawyers."

The Board therefore deemed the term LAWYERS.COM to be generic for Applicant's services.

TTABlog note: The Board cited the BLINDSANDDRAPERY.COM case, decided earlier this year (discussed here at the TTABlog), but it did not cite the very recent, and somewhat similar SPORTSBETTING.COM decision (blogged here). It distinguished the Federal Circuit's s STEELBUILDING.COM decision (blogged here), pointing out that "special circumstances" there led to a determination of non-genericness.

Text Copyright John L. Welch 2005.

TTAB Alert: "MAYDAY" Merely Descriptive of Emergency Transceivers

The Board ignored the AAA's call for assistance and instead affirmed a Section 2(e)(1) mere descriptiveness refusal of the mark MAYDAY for "electronic transceivers for vehicles for requesting emergency police, fire, and rescue service, emergency road service, and for requesting and receiving travel information." In re American Automobile Association, Inc., Serial No. 75719651 (December 7, 2005) [not citable].


Examining Attorney J. Brett Golden applied the brakes to the AAA's drive to registration, maintaining that the mark "is merely descriptive, and not suggestive, of a use or function of the identified goods." He relied on a dictionary definition of "mayday" as "an international radiotelephone signal word used by aircraft and ships in distress," and he contended that "mayday" is "commonly used to describe a distress signal or request for emergency assistance from the user of a motor vehicle." Moreover, he urged that "mayday" has become a "term of art" to describe a system for enabling a motor vehicle operator to request emergency assistance and to communicate with rescue personnel.

AAA asserted that MAYDAY is at most suggestive of its goods because "mayday" has many meanings, as evidence by various Google and Yahoo search engine results.

The Board found that the PTO's Internet evidence established a prima facie case that MAYDAY merely describes a use or function of the goods:

"it is apparent that 'mayday' is a term used to identify or describe a system for alerting emergency police, fire and rescue professionals of a motor vehicle in distress, and that a communication device which sends a distress signal to such professionals, such as an electronic transceiver, is used in such a system. Thus, one use or function of the goods identified in the application is with mayday systems."

AAA argued that the issue of descriptiveness must be evaluated "from the standpoint of the prospective purchaser of the goods," and that the Internet evidence merely shows the "jargon" used by federal and state departments of transportation. The Board found that argument "not well taken," noting that there is no reason why automobile manufacturers who are potential customers for applicant's goods would not review these articles in considering whether to include transceivers in their vehicles. The same is true of individuals who are contemplating installing a transceiver in a vehicle in order to participate in a "mayday system."

Moreover, the Board concluded that "mayday" is a term that is not limited to "aircraft or ships." AAA conceded that "MAYDAY! MAYDAY! is an international radiotelephone signal word used as a distress call." Therefore, "mayday" is a term "that one may use with an electronic transceiver in seeking 'emergency road service,'" and as such it "describes a feature of applicant's goods."

Wikipedia entry for "Mayday"
Finally, the Board dismissed AAA's contention that, because of the multiple meanings of "mayday," a consumer "must employ some imagination, thought, or perception to reach a conclusion as to the nature of Applicant's goods." As the Examining Attorney pointed out, descriptiveness is considered in the context of the applied-for goods, not in the abstract. "[T]he fact that a term may have different meanings in other contexts is not controlling on the question of descriptiveness."

Therefore, because AAA's goods may be used in connection with "mayday systems," the Board affirmed the refusal to register.

Text Copyright John L. Welch 2005.

"ORION" for Golf Clubs and Fishing Rods Likely to Confuse, Says TTAB

After all those years of selling duck-hunting gear, L.L. Bean ran into a duck it couldn't subdue: Mucky Duck. Bean's attempt to register the mark ORION for "fishing rods and reels" was shot down by the TTAB in an affirmance of the PTO's Section 2(d) refusal to register based on confusing similarity to the identical mark registered for golf clubs. In re L.L. Bean, Inc., Serial No. 78238339 (December 5, 2005) [not citable].


Examining Attorney Georgia Ann Carty Ellis contended that ORION is a strong and arbitrary mark for sporting goods, and she relied on 140 third-party registrations covering golf and fishing gear to demonstrate that consumers are "frequently exposed to golfing and fishing products being sold under the same marketing conditions."

Bean argued that the trade channels "cannot overlap," that it uses its house mark along with the ORION mark, and that the customers for these goods are sophisticated and discriminating. It indicated its willingness to amend its application to limit explicitly the channels of trade for its goods to L.L. Bean outlets.

The crucial issue for the Board, of course, was the relatedness of the goods. Since the marks are identical, "the relationship between the goods ... need not be as great or as close as in the situation where the marks are not identical or strikingly similar."

Although acknowledging that there is no per se rule that all "sporting tools" are related, the Board found that the third-party registrations "tend to demonstrate that goods of the type identified in applicant's application and the cited registration can emanate from the same source, and be offered under the same mark." [The Board cited In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993) for this proposition, although In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988), would have been a better fit for the theme of this posting.] Curiously, the Board also pointed to two third-party registrations that "suggest similarities in the underlying technologies used in fabricating golf club shafts and fishing rods."

As to trade channels, Bean argued that "it has established its own channels of trade," namely, its own stores, catalogs, and website. Because Bean does not sell products through third-party vendors or general retail outlets, its ORION brand fishing rod "will not appear in the same sporting goods section of any department store with Orion brand golf clubs." The Board pointed out, however, that even if the parties' goods would never be sold in the very same store, "they would still be sold in the same types of retail stores," and consumers of golf clubs would also be prospective customers for Bean's fishing rods and reels.

With regard to the care with which the goods would be purchased, the Board noted that the opposed application is not limited to "expensive" rods and reels, "nor is there any evidence that fishing rods and reels are inherently expensive." Moreover, even if a certain amount of care and deliberation is employed in the purchase of these goods, "when strong, identical marks are applied to related sporting goods ... even somewhat sophisticated consumers would not be immune to source confusion."


L.L. Bean duck decoys
Finally, as to Bean's offer to amend its identification of goods to limit the channels of trade to its own outlets, the Board agreed with the PTO that such an amendment is untimely. In any case, the amendment would not avoid a likelihood of confusion, since there are no trade limitations in the cited registration. In short,

"when consumers who are familiar with ORION golf clubs encounter ORION fishing rods, even in applicant's catalogues and retail outlets, or through its online promotional efforts, they are likely to believe there is some association."

The fact that the L.L. BEAN house mark is displayed prominently with its goods did not help Applicant. First, the applied-for mark does not include the house mark, and second, there still exists a possibility of "reverse confusion" should Bean "as the junior user, enjoy sales of an overwhelming volume of its ORION fishing rods and reels."

The Board therefore affirmed the 2(d) refusal.

TTABlog comment: Just because Bean states that its goods are sold only through its own outlets, does that mean the public is aware of that fact? Moreover, Bean does sell products of other companies (e.g., VICTORINOX brand knives) through its outlets. So might not a consumer believe that Bean was selling ORION brand goods made or licensed by Registrant?

TTABlog note: Earlier this year, the Board found confusion unlikely in Hoist Fitness, involving soccer goals and dumbbells. Discussion here at the TTABlog.

Text Copyright John L. Welch 2005.

TTAB Designates "CAREFIRST" Decision as Citable No. 17

Upon further consideration, the TTAB has deemed citable its September 20th decision in Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492 (TTAB). That decision was discussed here at the TTABlog, in a posting entitled "Irked TTAB Takes Counsel to Task In Dismissal of 'CAREFIRST' Opposition."

This brings to 17 the number of citable TTAB decision for the year 2005. How many of them can you name?
.

On Summary Judgment, TTAB Finds "TOF/TOF" Merely Descriptive of Mass Spectrometers

Although Applicant PerSeptive Biosystems was able to convince the PTO Examining Attorney that the mark TOF/TOF had acquired distinctiveness for mass spectrometers, it found the going doubly tough (you might say "tough-tough") before the TTAB. The Board granted summary judgment to Opposer Bruker Daltonics, ruling that TOF/TOF is merely descriptive and lacking in secondary meaning. Bruker Daltonics, Inc. v. PerSeptive Biosystems, Inc., Opposition No. 91154595 (November 28, 2005) [not citable].

Bruker Daltonics ultraflex II TOF/TOF
The Examining Attorney had deemed the mark merely descriptive under Section 2(e)(1), but accepted Applicant's Section 2(f) claim of acquired distinctiveness based on its ownership of a registration for the mark MALDI TOF/TOF for an "ion source for mass spectrometer."

Bruker Daltonics opposed on the grounds of genericness and mere descriptiveness. In its motion for summary judgment, it argued that TOF/TOF is "merely a long-standing abbreviation for a tandem (i.e., back-to-back) time-of-flight mass spectrometer," and that Applicant's goods include time-of-flight mass spectrometers. Opposer submitted a number of technical articles, copies of two patents, and dictionary definitions of "time-of-flight" and "TOF."

The Board focused on the issue of acquired distinctiveness, noting that, by seeking registration under Section 2(f), Applicant admitted that its mark is merely descriptive. Applicant had the ultimate burden to prove acquired distinctiveness, and it failed miserably in the attempt.

Bruker Daltonics, Billerica, MA
The Board concluded that TOF/TOF is "highly descriptive of the identified goods and has not acquired distinctiveness." It agreed with Opposer that TOF/TOF describes a key feature or function of the goods, namely that they "comprise, utilize or otherwise employ time-of-flight mass spectrometers in tandem."

Applicant did not even bother to address Opposer's evidence, and it failed to raise a genuine issue of material fact with the "meager" proof it offered.

"applicant essentially relies on its ownership of a registration, makes several unsubstantiated statement regarding use of its mark, and has submitted a one page website printout in support of its position that its mark has acquired distinctiveness."

With regard to Applicant's prior registration for MALDI TOF/TOF, the Board noted that "the goods in the registration are different from those in the subject application and the marks are also different. In any case, ownership of a registration by itself does not raise a genuine issue of material fact as a matter of law - certainly not in this case where applicant's proposed mark is so highly descriptive."

Finally, Applicant offered to submit "a copy of a witness statement" or to "provide more marketing materials" at the Board's request. Needless to say, the Board found this offer "unacceptable and inappropriate."

In sum, Opposer's "overwhelming evidence" led the Board to find that TOF/TOF is highly descriptive of the identified goods. It observed that a "great deal of evidence" would be required to prove acquired distinctiveness for such a term. Here, Applicant failed to submit any evidence that would raise a genuine issue regarding acquired distinctiveness, and the Board therefore granted Opposer's motion for summary judgment.

TTABlog note: The "mass" in "mass spectrometer" does not refer to the Commonwealth of Massachusetts, even though Bruker Daltonics has facilities in Massachusetts, nor to "mass" in the religious sense, but to "mass" in the physical, chemical sense. At least that's what I think.

Text Copyright John L. Welch 2005.

Bayer's "ASPIRINA" Merely Descriptive of Analgesics, Says TTAB

Finding Bayer's mark ASPIRINA to be merely a slight variation or a misspelling of the generic term "aspirin," the Board affirmed a Section 2(e)(1) refusal to register on the ground that the mark is merely descriptive of analgesics. In re Bayer Aktiengesellschaft, Serial No. 78212751 (December 1, 2005) [not citable].


The Examining Attorney contended that the term "aspirina" is the Spanish word for "aspirin" and therefore is merely descriptive of analgesics. Relying on online dictionaries, NEXIS articles, a GOOGLE search report, and an English translation of Bayer's Spanish website, she asserted that ASPIRINA "is the foreign equivalent of ordinary English wording."

Bayer asserted that it owns registrations for ASPIRINA in many countries, that ASPIRINA is a coined term having no specific meaning in any language, and that the term is used only as a trademark for its goods. Bayer acknowledged that U.S. consumers "not familiar with the international fame" of its mark may believe that ASPIRINA is suggestive of the term "aspirin," but because of the differences in spelling, pronunciation, and meaning, consumers will not view the mark ASPIRINA as merely descriptive.

Bayer submitted a Spanish/English dictionary definition of ASPIRINA that conflicted with those of the PTO, and it pointed out that the PTO's NEXIS excerpts were themselves "conflicting" as to whether ASPIRINA is a trademark.

The Board first observed that "aspirin" was long ago determined to be generic for an analgesic -- by Judge Learned Hand in Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921) -- and it took judicial notice of the Webster's dictionary definition of "aspirin" as "a white crystalline compound ... of salicyclic acid used esp. in tablet form as an antipyretic and analgesic." The question, then, was "whether a slight variation, ASPIRINA, is merely descriptive for analgesics"?

Judge Learned Hand
In view of the "closeness in sound, appearance and meaning" between ASPIRINA and "aspirin," the Board saw no need to "engage in the type of foreign equivalent analysis urged by the examining attorney," and it likewise brushed aside the Spanish/English translations and the purported renown of ASPIRINA in foreign countries. Instead it concluded that:

"prospective consumers in this country, aware of the generic term 'aspirin,' will view ASPIRINA as a slight variation (or even a misspelling) of the generic term and, thus, the term is merely descriptive of analgesics. The term immediately conveys the impression that applicant's analgesics are aspirin-based products."

In short, the Board ruled that "the mere addition of the letter 'A' at the end of the generic term 'aspirin' is simply insufficient to transform ASPIRINA into an inherently distinctive mark for analgesics."

The Board also refused to entertain Applicant Bayer's request (untimely made at oral argument) that the case be remanded to the PTO so that Bayer could seek registration on the Supplemental Register.

TTABlog comment: In light of the evidence of record, the Board took a rather strange shortcut to its conclusion. What is the Board's evidentiary basis for saying how "prospective consumers" will perceive the term ASPIRINA, when the NEXIS and dictionary evidence was inconclusive? Should the benefit of the doubt have gone to the Applicant?

Text Copyright John L. Welch 2005.

TTAB Citable Decision Deems "SPORTSBETTING.COM" Generic

In its 16th citable decision of the year, the TTAB affirmed the PTO's refusal to register SPORTSBETTING.COM, finding it generic for various Internet gaming services (which services excluded "actual money wagers"). The Board wrestled with the issue of defining the genus of the services, but it deemed the term generic regardless of whether actual betting is included in the genus. In re DNI Holdings Ltd., 77 USPQ2d 1435 (TTAB 2005).


In particular, DNI identified its services as:

"Provision of casino games on and through a global computer network wherein there are no actual monetary wagers; provision of contests and sweepstakes on and through a global computer network; providing a web site on and through a global computer network featuring information in the fields of gaming, athletic competition and entertainment."

The Examining Attorney relied on dictionary definitions of "sport" and "bet" and on "multiple examples" wherein the words "sports" and "betting" are "actually joined together into a single compound term and used generically by applicant and by its competitors, for both sports wagering and for providing information regarding sports and betting."

DNI contended that because it specifically excluded "money wagering" from its recitation of services, the PTO's refusal to register could not stand.

Q1. What is the genus?

Applying the two-part test of H. Marvin Ginn Corp. v. Int'l Assn. of Fire Chiefs, Inc., 228 USPQ 528, 530 (Fed. Cir. 1986), the Board first sought to determine the genus of DNI's services. Noting that DNI actually does offer sports betting services at its website, the Board asked:

"Must this Board turn a blind eye to the reality of what is being offered on the named website, restricting our purview to the recitation of services in the application itself ....?"

No, said the Board. "[P]articularly where a single website is offering a variety of interrelated, interactive services, it seems appropriate to take all of those largely undifferentiated services into consideration when defining the genus of services. Accordingly, despite applicant's tactical decision to carve them out of its recitation of services, we find that the relevant genus of services herein includes wagering on sporting events."

Nonetheless, the Board pointed out that, even if it ignored the fact that DNI offers wagering at its website, "the class or category of services described in the application still clearly includes that of providing information regarding sports and betting."

Q2. Is the term understood by the relevant public to refer to the genus?

The Board agreed with the PTO that joining "sports" and "betting" yields a term that "in context, would be generic for a service that permits one to wager on sporting events." It distinguished the CAFC's recent In re Steelbuilding.com, 75 USPQ2d 1420 (Fed. Cir. 2005), because that case involved a "double entendre," whereas here there is no such "realistic" double meaning.

"[V]oluminous evidence" of use of the terms "sports betting" and "sportsbetting" convinced the Board that "members of the relevant public, i.e., persons with Internet access who might wager on sports, primarily perceive 'sports betting' and 'sportsbetting,' usually set in lower case letters, as generic."

As to DNI's services of providing information regarding gaming and athletic competition, the Board found that "the information piece of applicant's recited services is inextricably tied into the actual betting." In that connection, the Board referred to its decision in In re CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB 2002) , in which BONDS.COM was held to be generic for information services related to debt instruments and other related investments, even though that applicant did not buy or sell bonds.

Mere descriptiveness

The PTO alternatively deemed SPORTSBETTING.COM to be merely descriptive of DNI's services. It noted that DNI had disclaimed both SPORTSBETTING and COM in an earlier registration. The Board agreed that, if SPORTSBETTING.COM is not generic, then it is "certainly merely descriptive." DNI made no attempt to prove acquired distinctiveness under Section 2(f), and so the Board upheld the refusal to register on the Principal Register.


In sum, the Board affirmed the refusal to register because the designation SPORTSBETTING.COM is incapable of registration under Section 23. It also affirmed the PTO's refusal of registration on the Supplemental Register. In the alternative, in light of the absence of evidence of secondary meaning, it affirmed the refusal to register under Section 2(e)(1).

TTABlog note: If DNI can get the genericness refusal reversed on appeal, then it appears that it may yet obtain a Supplemental Registration for its "mark."

TTABlog further note: In two companion cases (but uncitable) decided the same day, the Board found the designations SPORTSBETTING INFO and SPORTSBET INFO likewise to be generic and incapable of registration, or in the alternative merely descriptive, for the same services as in the citable case.

Text Copyright John L. Welch 2005.

Teddy Bear Design on Hanger Not a Trademark, Says TTAB

Build-A-Bear Workshop, Inc. got hung up in its attempt to register the teddy bear design shown immediately below as a trademark for "toy clothing." The Board affirmed a refusal to register on the ground that the design fails to function as a trademark. In re Build-A-Bear Workshop, Inc., Serial No. 76351071 (November 28, 2005) [not citable].


The application describes the alleged mark as "the configuration of the packaging for toy clothing. The dotted line is not part of the mark but is merely to show the mark's position on the packaging."

Examining Attorney Teresa Rupp contended that the proposed mark is a "hybrid packaging/product design" because the hanger, on which Applicant's toy clothing is sold, may be kept and re-used by a purchaser. In such a case, she argued, Wal-Mart requires a showing of secondary meaning for the design.

Alternatively, she maintained that even if the design comprises merely product packaging, it is not inherently distinctive: "[b]ecause the applicant sells toy clothing for teddy bears, the hanger for the clothing that has a teddy bear motif would not be viewed as inherently a trademark for the goods."

The Board agreed with Applicant B-A-B that the design is "quite clearly only packaging for the goods." "Applicant's goods are toy clothing and the design applicant seeks to register consists of a teddy bear design on hangers for toy clothing." Thus the Examining Attorney's reliance on Wal-Mart was misplaced.

The Board, however, agreed with the PTO that B-A-B's design is not inherently distinctive. Although the design may be "unique" in that no one else is using an identical design,

"consumers are likely to view the teddy bear hanger design used in connection with such goods as simply indicating that the toy clothing is designed for teddy bears. Moreover, the use of designs on hangers is not unusual. The evidence submitted by the examining attorney shows that at least two companies market children's clothes hangers with animal designs."

B-A-B also contented that the PTO's position was inconsistent with the registration of the Applicant's two designs shown below, registered for retail toy store services and for toy footwear, respectively.

The Board pointed out once again that "each case must be decided on its own merits, and the Board is not bound by prior actions of the Office. See In re Nett Designs, Inc., 57 USPQ2d 1564 (Fed. Cir. 2001)." Furthermore, the goods/services covered by the prior application "are different from those involved herein."

Finally, B-A-B asked that it be permitted to submit a claim of acquired distinctiveness. Too late, said the Board. Rule 2.142(g) provides that an application "which is decided on appeal ... will not be reopened except for entry of a disclaimer or upon order of the Commissioner."

The Board therefore affirmed the refusal.

"Santa Bearemy and Christmas Tree"

Text Copyright John L. Welch 2005.

TTAB's Citable "VIGNETTE" Decision Encourages Discovery Gamesmanship

In citable decision number 15 for the year 2005, the TTAB took a rather surprising stand on the consequences of a party's failure to provide requested discovery. It denied Opposer Vignette Corporation's request for reconsideration of the Board's denial of a summary judgment motion predicated on a claim that Applicant Steven Marino did not have a bona fide intention to use the mark VIGNETTE EDITORIAL for post-production video services when he filed the opposed application. Vignette Corp. v. Marino, 77 USPQ2d 1408 (TTAB 2005).


In its summary judgment motion, Vignette pointed to its discovery requests seeking documents that corroborate Marino's purported bona fide intention to use his mark in commerce. In response, Marino stated that there were "no responsive, nonprivileged documents" as of the date of the response, but that he would produce such documents "if and when they come into his possession, custody, or control."

Vignette also pointed to Marino's interrogatory response to a question asking for the basis for his claim of a bona fide intention. Marino responded by referring Opposer to "Applicant's having signed a declaration to that effect in connection with filing the application."

In opposing the summary judgment motion, however, Marino submitted a declaration attesting to various of his activities as evidence of his bona fide intention: making a music video for a band, creating a website, and soliciting potential customers.

The Board denied Vignette's summary judgment motion on the ground that Marino's declaration raised a genuine issue of material fact. The Board also cautioned Marino that he would be precluded at trial from relying on evidence not produced in response to Vignette's discovery requests, relying on Presto Products, Inc. v. Nice Pak Products, Inc., 9 USPQ2d 1895 (TTAB 1988).

In its reconsideration request, Vignette relied on that same case in arguing that the Marino declaration "asserts new facts that were not furnished with applicant's responses to opposer's discovery requests and, therefore, it was improper for the Board to rely on those assertions [in] denying opposer's motion for summary judgment."

The Board analyzed Presto Products in view of FRCP Rule 37(c)(1), which provides that a party who "without substantial justification" fails to disclose requested information or to amend a prior discovery response is not, unless the failure was harmless, permitted to use the evidence at trial, at a hearing, or on a summary judgment motion.

Presto Products involved the introduction of evidence on a summary judgment motion, which evidence had been withheld during discovery based on a claim of attorney-client privilege. The Board there granted a motion to strike an affidavit containing previously undisclosed facts.

The situation here, according to the Board, is distinguishable because there the withholding was unequivocal.

"Thus, in cases where the offending party had absolutely refused to disclose the previously withheld evidence (as in instances such as Presto Products where the attorney-client privilege had been asserted) it is entirely appropriate to sanction the offending party by precluding it from relying on the newly disclosed evidence on summary judgment."

Again according to the Board, Applicant Marino "merely said that such documents were unavailable, and/or referred to his declaration in his application.... This case does not involve an outright statement that the information would not be provided, but rather a failure to supplement discovery responses."

"it would be unduly harsh to impose the preclusion sanction under Rule 37(c)(1). This is particularly true given that discovery responses may be supplemented at any time, even during trial, or after receipt of a summary judgment motion."

The Board limited Presto Products to its particular facts: "that a party cannot introduce evidence on summary judgment that it affirmatively withheld during discovery."

The Board therefore denied the request for reconsideration.

TTABlog comment: If the Board really is concerned about TTAB delay, how can it justify this decision? Isn't this ruling a green light for parties to withhold discovery? Shouldn't the Board have required Applicant Marino to provide "substantial justification" for his withholding, or show that no harm was done? Isn't that required by Rule 37(c)(1)?

How much time and energy was wasted in the preparation and consideration of this summary judgment motion, which presumably would never have been filed if Mr. Marino had provided proper responses in the first place? This decision merely encourages the kind of gamesmanship that is a frequent cause of TTAB delay.

At a minimum, based on this ruling, the savvy TTAB practitioner should surely avoid making any "unequivocal" statements about the client's lack of documents or information.

Text Copyright John L. Welch 2005.

"DYKES ON BIKES" 2(a) Refusal Withdrawn by PTO

As predicted at the TTABlog this past summer (here), the PTO's Section 2(a) disparagement refusal of the mark DYKES ON BIKES for entertainment and educational services did not stand. On reconsideration, the PTO withdrew the refusal on December 5, 2005, and approved the mark for publication.


Lynne Beresford, Commissioner for Trademarks, reportedly said, ""The applicant came in at the last moment with a lot of evidence to show that the community did not consider it disparaging."

A thank you to Bill Heinze at the I/P Updates blog for the nod in my direction.

Soon I will be predicting the outcome of the World Cup, so I suggest that you stay tuned. The prospects for the USA look even bleaker after the group draw yesterday.

"HYPNOSTEALTH" Applicant Moves to Dismiss Leo Stoller Opposition for Lack of Standing

The shock waves from the recent decision by the Chicago federal court in the Pure Fishing case (discussed here at the TTABlog) are beginning to reach the TTAB. Randy L. Marcus of Salem, Oregon, who is seeking to register the mark HYPNOSTEALTH for "instruction in the field of hypnosis," has of course been opposed by frequent TTAB litigant Leo Stoller. Mr. Stoller has filed an opposition based on Central Mfg. Co.'s alleged ownership of the mark STEALTH for a potpourri of goods and services. Applicant Marcus, appearing pro se, has now moved to dismiss on the ground that Central Mfg. Co. does not exist, that it therefore lacks standing and capacity to oppose, and that the opposition "was filed under a false name." Central Mfg. Co. v. Marcus, Opposition No. 91165221.


In Pure Fishing, the district court ruled that Stoller "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."

Will the Board conclude that Stoller has likewise misled the Board regarding ownership of the STEALTH marks? Will Stoller's own stealthful (stealthy?) conduct bring an end to his STEALTH enforcement program? Time will tell.

In the past several weeks, Mr. Stoller has filed dozens of extension requests in the name of an entity called "Central Mfg. Co. (Inc.)." Is this his attempt to make an end run around the ownership problem? Several of the requests involve the Star logo of the Dallas Cowboys. Apparently Mr. Stoller sees the Cowboys' mark as being in conflict with Central Mfg. Co.'s registered DARK STAR word mark.


Text Copyright John L. Welch 2005.

"QUALITY" and "QUALITEE" For Auto Parts Not Confusingly Similar, Says TTAB

The Board unsurprisingly affirmed a Section 2(e)(1) mere descriptiveness refusal of the mark QUALITY for automobile transmissions, but it reversed a Section 2(d) refusal, finding the mark not confusingly similar to the mark QUALITEE registered on the Supplemental Register for various automobile parts. In re Quality Trans Parts Inc., Serial No. 76515615 (November 22, 2005) [not citable].


The Board expended little time or effort in affirming the descriptiveness refusal. Examining Attorney Monique C. Miller relied on a dictionary definition of "quality" as meaning "degree of excellence" and "superiority in kind." The Board saw "no doubt that the word 'quality' would be perceived by purchasers as nothing but a laudatory term as applied to applicant's goods."

Shifting gears to the Section 2(d) refusal, the Board first addressed Applicant's argument that a different standard applies when the cited registration is on the Supplemental Register. Applicant asserted that in such case, the marks must be "substantially similar" to warrant a 2(d) refusal. The Board pointed out that it rejected this very argument in In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). Therefore, the Board undertook "the normal du Pont likelihood of confusion analysis."

The Board found the marks to be identical in sound and connotation, but distinguishable in appearance and overall commercial impression. "Considering the marks in their entireties, and noting the weakness of the cited registered mark, we find that the first du Pont factor weighs in applicant's favor."

Third-party registrations led the Board to conclude that the goods of the parties are related, and therefore the second du Pont supported the refusal. Likewise, since the registration and application did not contain any restrictions on the goods, the third factor supported the PTO.


The fourth factor favored Applicant. The Board found that the goods would be sold to automotive mechanics (both professional and amateur) and professional repair shops. Those purchasers are likely to be somewhat sophisticated (especially regarding Applicant's transmissions, which are presumably fairly expensive).

Finally, the Board noted that the cited registration is on the Supplemental Register, and "it thus may be considered to be a weak, descriptive mark which is entitled to a narrower scope of protection than that which would be afforded a mark which is more distinctive." The presence of the word QUALITY in three third-party registered marks for automotive engine parts further weakened the cited mark.

The Board therefore concluded that confusion is not likely, and it reversed the Section 2(d) refusal.

TTABlog comment: Although the Board pointed out that the same, normal du Pont analysis applies when the cited mark is on the Supplemental Register, in practice did it not apply a more stringent test, requiring just what Applicant said was required: "substantial similarity" between the supplementally-registered mark and the applied-for mark?

Text Copyright John L. Welch 2005.

TTAB Deems Service Mark Specimens for "LIBERTY BILLIARDS" Unacceptable

Douglas K. Kelly got stuck behind the 8-ball in his attempt to register the mark LIBERTY BILLIARDS & Design (shown immediately below) for "manufacture of billiard tables to the order and/or specification of others" (BILLIARDS disclaimed). The Board ruled that Kelly failed to provide a proper specimen for these class 40 services. In re Kelly, Serial No. 76498256 (November 23, 2005) [not citable].

Examining Attorney Tracy Cross issued the refusal to register, maintaining that Kelly's specimens of use were unacceptable, taking her cue from Rules 2.51(a)(1), 2.51(b)(1), and 2.56(b)(2).

Kelly's first specimens, comprising black-and-white and color versions of the letterhead shown below, were embarrassingly improper: they contained the term LIBERTY GROUP, not LIBERTY BILLIARDS.

Mr. Kelly then submitted the specimen shown below, stating that the "name plate ... is affixed to all Liberty Billiards pool tables."


The Examining Attorney found this name plate specimen to be likewise unacceptable because "there must be a direct association between the mark sought to be registered and the services specified in the application, with sufficient reference to the services in the specimen to create this association."

The Board noted that "there is a line of cases that supports the acceptability of specimens that do not themselves set out what the services are when the specimens are used during the performance of the services." In particular, the Board pointed to In re Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984) and In re Eagle Fence Rentals, Inc., 231 USPQ 228 (TTAB 1986). In the former, a photograph of applicant's costume mark on a garbed performer was an adequate specimen for entertainment services; in the latter, a photograph of a two-color fence was an acceptable specimen for fence rental services.

The Board, however, found those cases distinguishable from the instant case. In Red Robin, the applicant owned a prior registration for collateral goods. In Eagle Fence, the applicant promoted the color scheme as a source indicator. Moreover, in those two cases each mark was used "in the rendering of the services." Here there is no evidence of a prior registration or of promotion of the mark, nor any evidence that Kelly uses the mark in the rendering of the services. "Instead, the mark is apparently applied after the services have been rendered."


The Board found more relevant its case law regarding custom manufacturing services: In re Johnson Controls Inc., 33 USPQ2d 1318 (TTAB 1994) and In re Adair, 45 USPQ2d 1211 (TTAB 1997). In those cases, the marks involved were applied to the finished products: iron valves and custom-designed Christmas trees, respectively. In each case, the specimen of use (adhesive packaging labels and tags tied to the trees) was rejected because it did not include a reference to any services.

As to Kelly's specimen, the Board noted that it had "no basis to conclude that these name plates are actually used as a service mark," and it therefore agreed with the Examining Attorney that the specimen does not show valid use of Kelly's mark as a service mark.

TTABlog note: Compare this case with the recent Board decision involving advertising services provided by "The Grove" shopping center in Los Angeles, discussed here at the TTABlog.

Text Copyright John L. Welch 2005.

Surprise! Central Mfg. Co. Sanctioned for Non-Compliance with TTAB Discovery Order

As White Sox broadcaster Ken "Hawk" Harrelson would say, "you can put it on the board." Leo Stoller's company, Central Mfg. Co., chalked up another TTAB sanction to add to Mr. Stoller's growing collection (see here, here, and here). Our favorite Board found that Central failed to comply fully with a Board order compelling it to respond completely to Dreamworks' interrogatories and document requests. Central Mfg. Co. v. Dreamworks L.L.C., Opposition No. 91156858 (November 4, 2005) [not citable]. [previously discussed here].


Central's efforts to comply with the Board's order were "minimal, at best, consisting of three inconsistent faxed statements." After Central had stated that it had no responsive information or documents further to that previously produced, Central faxed to Dreamworks' counsel 58 pages of documents, without specifying the document request or interrogatory to which the documents were supposedly responsive.

The Board concluded that the faxed documents did not constitute "an effective response to any of applicant's document requests." Instead it took as Central's "operative response" its verification that it had no further responsive documents or information.

The Board therefore ruled that Central is prohibited from introducing at trial the 58 pages belatedly produced, and further that Central may not rely at trial on any information and documents that were properly sought by Dreamworks in its discovery requests and not produced by Central.

"a party that withholds responsive documents or information or, due to an incomplete search of its records, fails to provide a complete response to a discovery request, may not thereafter rely at trial on information from its records which was properly sought by any discovery request of its adversary but was not included in the response thereto (provided that the requesting party raises the matter by objecting to introduction of the evidence in question)."

Text Copyright John L. Welch 2005

Finding "ONFOLIO" and "CARTAGIO" Too Dissimilar, TTAB Grants 2(d) Summary Judgment

In my estimation, the Board grants summary judgment in Section 2(d) cases about one time out of ten: typically for the "plaintiff" when the marks and goods/services are essentially the same, or for the "defendant" when either the marks or the goods are just too different. As an example of the latter scenario, the Board granted summary judgment to defendant Onfolio, Inc. because the marks ONFOLIO and CARTAGIO (for computer software) are too different to support a likelihood of confusion claim. Missiontrek Ltd. v. Onfolio, Inc., 80 USPQ2d 1381 (TTAB 2005) [not citable].


Plaintiff Missiontrek sought to cancel Onfolio's registration for the word mark ONFOLIO, and opposed its application to register the mark shown above, for "computer software for capturing, organizing and sharing on-line content." Missiontrek alleged likelihood of confusion with the mark CARTAGIO, registered for various computer software products.

Onfolio moved for summary judgment, conceding for purposes of the motion that the goods are related, but asserting that the marks are completely distinct in sound, appearance, connotation, and commercial impression, and that "the dissimilarity of the marks so outweighs the other du Pont factors that it is dispositive."

Onfolio pointed out, inter alia, that the only common element in the marks is the suffix "IO," which is an ordinary suffix found in numerous registered marks for hardware and software. Moreover, the root of the mark ONFOLIO is the word "folio," meaning a "leaf of paper" or a book made of folded sheets, whereas CARTAGIO has no known meaning, other than "its being similar to the old Latin name of the city of Carthage, Tunisia."

The Board agreed with Onfolio that the first du Pont factor is dispositive, and that the absence of any genuine issue of material fact entitled Onfolio to summary judgment.


Missiontrek principally argued that its survey results showed actual confusion because "25% of the respondents indicated that the product names are so similar that it is likely that the products come from the same source." The Board, however, ruled that the survey failed to raise a genuine issue of material fact regarding the similarity of the marks.


The Board noted that the survey consisted of e-mails sent by Missiontrek's director to 42 people who had recently downloaded the CARTAGIO software. Responses were received from 8 persons, 2 of whom "indicated actual confusion and six indicated no confusion." Thus, according to Missiontrek, "a full 25% of those surveyed indicated confusion."

The Board was not impressed, pointing out that 2 respondents out of 42 inquiries "mathematically does not amount to the inflated percentage calculated by plaintiff (25%)."

"We observe, too, that the survey, at a minimum, is not based on established or recognized survey techniques; was prepared and administered by a biased party; and was not analyzed in any statistically meaningful way."

The Board therefore dismissed the opposition and denied the petition for cancellation.

Text Copyright John L. Welch 2005