TTAB Reconsiders "RIVERCATS" Decision, But Opposer Still Strikes Out

It's not often that the TTAB grants a request for reconsideration, but it did so in Rivercat Foods, Inc. v. Sacramento River Cats Baseball Club, LLC, Opposition No. 91150539 (on reconsideration, August 26, 2005) [not citable]. Opposer Rivercat Foods, after losing its Section 2(d) opposition to registration of the mark RIVERCATS & Design for clothing, asked for reconsideration on two grounds -- grounds that happen to correspond to the two "questionable calls" pointed out here at the TTABlog. What a coincidence!


In ruling against Opposer on its Section 2(d) claim, the Board had found the marks RIVERCAT and RIVER CATS to be merely "more similar than dissimilar." It made the curious statement that, as applied to Applicant's goods (ordinary clothing items), the term "rivercat" is "likely to be perceived as the name of applicant's baseball team," while as to Opposer's food products the connotation is "not clear, but we cannot conclude on this record that it has anything to do with baseball." On reconsideration, the Board reversed this obviously bad call:

"Instead, we now find that the marks have the same connotation and commercial impression, and that the marks are similar, for purposes of the first du Pont evidentiary factor."

The Board also reversed itself on the issue of the channels of trade for the baseball team's clothing items. It had considered the only relevant channel of trade to be Applicant's baseball games, even though the identification of goods in the team's application was not limited as to trade channels. The Board now clarified its decision as follows:

"We presume that opposer's food items and applicant's clothing items are marketed in all the normal channels of trade for such products, and not just at applicant's baseball game events."

Despite its revised view of these two factors, however, the Board stuck to its decision dismissing the opposition because "opposer presented no evidence at trial showing what the normal channels of trade for the respective goods are, much less that those trade channels overlap in any way that would lead purchasers to be confused as to the sources of the respective goods."


The Board may have reached the right decision here, but it swung and missed twice before making contact. Perhaps the CAFC will have to decide whether the TTAB hit a fair ball or a foul.

TTABlog comment: Judge Grendel (formerly Bottorff) has been known for thoughtful and well researched opinions. One might say it was his trademark. For him to eat two crowburgers over one opinion is quite unexpected.

Text Copyright John L. Welch 2005.

Simi Winery's Glass One-Fifth Full Following TTAB Fracas

California's Simi Winery found its glass four-fifths empty after its attempt to cancel (in five separate petitions) four registrations owned by Mr. Container for marks that include the word SIMI. In an exhausting 54-page decision, the Board granted the winery's Section 2(d) petition for cancellation of Respondent's registration for SIMI in stylized form (see below) for vinegar (and other food products), but it denied petitions for cancellation of SIMI for soft drink mix and bouillon cubes, SIMI DOCTOR for baking soda, and SIMI TI MOTO for seasoning. Simi Winery, Inc. v. Mr. Container, Cancellation No. 92030168 et al. (August 18, 2005) [not citable].

The winery relied on its ownership and prior use of the mark SIMI for wines, registered in 1973 and used since the late 1800s -- well before Respondent's first use dates. It also proved prior, albeit limited, use of the SIMI mark for vinegar and olive oil.

The Board began its du Pont analysis with a discussion of the fame of the SIMI mark for wine, again noting that, because of the dominant role that fame plays in that analysis, one who claims fame must "clearly prove it." The winery's annual sales of $23 to $34 million during the 1990s, and its annual advertising expenditures of $400,000 to $500,000 in the 1998-2004 time frame, were not impressive. Simi Winery has received some publicity through the years and may be "quite well known to people who appreciate fine wine," but its evidence was not enough support a finding of fame.

"Although wine connoisseurs may be well aware of the Simi Winery and the SIMI brand, the universe of wine purchasers in the United State is far larger than those who study wine guides or who are interested in reviews of the latest wine releases."

The Board did find, however, that SIMI "has achieved recognition as a mark for wine," that "any surname significance or geographic significance that might once have attached to the mark has long since disappeared," and that the record was devoid of evidence showing any third-party use. Thus SIMI must be considered a distinctive mark for wine, and the strength-of-the-mark factor favored the winery.

The channels-of-trade factor slightly favored the winery, since wines and Registrant's goods may be found in grocery stores. The fact that they are rather inexpensive items also favored the winery. The actual confusion factor was neutral: there was no evidence of actual confusion, but then Registrant exports all its goods and thus there was no opportunity for confusion.

Turning to the particulars of the four registrations, the Board found that use of Respondent's stylized SIMI mark in connection with vinegar would be likely to cause confusion vis-a-vis the winery's SIMI mark for wine, as well as with its common law SIMI mark for wine vinegar. However, after the sweet taste of that first wine course, the next four bottles were sour.

As to SIMI for bouillon cubes, the Board could find no evidence linking wine and bouillon. With regard to SIMI for soft drink mix, the winery's evidence was "woefully lacking in terms of demonstrating that wine and powdered soft drink mix are related." And the registration for SIMI DOCTOR for baking soda survived because the winery "utterly failed to show that the parties' goods are related."

Finally, as to SIMI TI TOMO for seasoning (actually, MSG), the Board was "hard pressed to find that wine and seasonings are related." In any case, any such possible relatedness is "far outweighed" by the differences in the marks. The Board noted that this mark "presents a somewhat unusual situation," because it comprises words in two different "languages," Indonesian and Patois.

"Only a consumer who speaks both Indonesian and this Indonesian Patois is likely to understand the mark as meaning SIMI LITTLE SEASONING, and even this is somewhat questionable, since it is unclear whether such a consumer would realize that two words from different languages/dialects were being combined in a single mark."

Given the uncertainty as to how SIMI TI TOMO would be understood, the Board could not say that SIMI and SIMI TI MOTO convey the same connotations and commercial impressions. In any case, it appeared that the likelihood of confusion would be de minimis, since only "a very small number of consumers in the United States would be familiar with both the Indonesian language and the Patois dialect in which TI is a word."

Final Score: Mr. Container 4, Simi Winery 1.


TTABlog comment: Note that the Board, when considering the fame of the SIMI mark, followed this year's CAFC decision in Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689 (Fed. Cir. 2005). It looked not to the general public but to the universe of wine purchasers, in considering the fifth du Pont factor. [That universe has to be pretty close in size to the "general public"]. However, the Board did not focus on the much narrower universe of "wine connoisseurs," as noted above.

Text Copyright John L. Welch 2005.

TTABlog Flotsam and Jetsam -- Issue No. 7

After a relatively quiescent summer, we can expect the output of the TTAB to increase markedly in the months to come. Maybe the number of citable decisions for 2005, currently at seven, will even reach double digits! Meanwhile, here are a few items worth noting.

T-Stop, South Bostonclick on photo for larger view
PTO Announcement re Bloated Official Gazettes: On August 26th, the PTO announced here that "issues of the Trademark Official Gazette (TMOG) that will be published during the months of August, September, and October, as well as early November, will feature an unusually large number of marks." These issues will each include some 6,000-10,000 marks. A processing backlog resulted from the PTO's move to Alexandria, Virginia, and caused the increase in TMOG size. An August 27th PTO Announcement reports that a new "search line" has been added to TESS to allow users to search any particular issue of the TMOG.

TTABlogger Minnesota-Bound: TTABlogger John L. Welch will appear on two panels at the 2005 Midwest Intellectual Property Institute, to be held on September 26 and 27 in Minneapolis (brochure here). The first will include the TTAB's Chief Judge J. David Sams and Judge Gerard F. Rogers, with Stephen R. Baird of Winthrop & Weinstine, P.A., serving as moderator. The topic: "Trademark Trial and Appeal Board Year in Review." [What else?]. The second panel will include notable IP bloggers Marty Schwimmer of The Trademark Blog and Eric Goldman of the Technology & Marketing Law Blog, with Mr. Baird again serving as moderator. The topic: "IP Blogs, Websites, and Technology: Three Tech-Savvy IP Experts Share Their Secrets of Success." [Disclaimer: I had nothing to do with selecting that title].


Gold Street, South Bostonclick on photo for larger view
A New Gripe Site Decision: Speaking of Eric Goldman, he reports here on the latest "gripe site" decision, Lamparello v. Falwell, No. 04-2011 (4th Cir. August 24, 2005). The district court had enjoined Christopher Lamparello's from maintaining a gripe website critical of Reverend Jerry Falwell, at www.fallwell.com [note spelling]. The appellate court reversed the district court's ruling and entered judgment for Lamparello. Significantly, the higher court applied a standard multi-factor analysis analysis in finding no likelihood of confusion, and it rejected the the "initial interest confusion" doctrine. It also rejected the Reverend's ACPA claim because Reverend Falwell could not demonstrate that Lamparello had a bad faith intent to profit from using the challenged domain name. This decision, along with the 9th Circuit's decision in Bosley Medical Inst., Inc. v. Kremer, No. 04-55962 (9th Cir. April 4, 2005), represents the second major victory this year for gripe site proprietors.

Text and photos Copyright John L. Welch 2005

TTAB Finds "TRAFFIC LAW CENTER" Registrable under Section 2(f), but with Disclaimer

The Board gave Applicant Robin Sullivan the green light to register the mark TRAFFIC LAW CENTER for "legal services." It reversed the PTO's Section 2(e)(1) mere descriptiveness refusal, finding that the mark has acquired secondary meaning. The Board did, however, require disclaimer of the generic term "traffic law." In re Sullivan, Serial No. 76202254 (August 18, 2005) [not citable].

St. Louis, Missouri
Applicant Sullivan sought registration under Section 2(f), thereby conceding that his mark is merely descriptive. He proved use of the mark since 1989, providing services to more than 110,400 clients (there are a lot of bad drivers in Missouri), and garnering revenues of more than $20 million in the 1990-2002 period (he could quadruple that in Boston alone). He spent more than $3 million in advertising during roughly the same period.

The Examining Attorney argued that, because Sullivan uses other designations in conjunction with TRAFFIC LAW CENTER -- e.g., TLC, the design of a stop sign, and the phrase TRAFFIC LAW CENTER OF SULLIVAN & ASSOCIATES -- his evidence did not show secondary meaning for the precise mark in question.

The Board, however, noted that Sullivan prominently displays the designation TRAFFIC LAW CENTER at his various locations. The appearance of the stop sign "does not detract from the source-indicating impact of the prominently-displayed wording TRAFFIC LAW CENTER." Moreover, Sullivan's alphabetical telephone book listings appear as TRAFFIC LAW CENTER, not TLC. Affidavits from three media sales managers in the St. Louis area confirmed that Applicant's services are rendered under the TRAFFIC LAW CENTER mark and are "heavily advertised."

The Board found that Sullivan's evidence, "especially his sales figures under the mark, the number of clients ..., and applicant's advertisements which prominently feature the mark," sufficed to show that TRAFFIC LAW CENTER has acquired secondary meaning.

Robin Sullivan, Esq.
The Board pooh-poohed the PTO's claim that the mark is "highly descriptive" and therefore must meet a heightened 2(f) standard of proof. The Examining Attorney relied on the fact that "several other lawyers or law firms around the country ... use TRAFFIC LAW CENTER in rendering their services." But the Board found that each of those uses was "in a proprietary manner, i.e., as a trade name or service mark, not use in a descriptive manner."

Finally, the Board ruled that, based on Applicant's own usage in his appeal briefs and in his license agreement, the term "Traffic Law" is generic for Sullivan's services. It allowed Sullivan thirty days to submit a disclaimer, failing which his mark will not be registered.

TTABlog comment: The Board may have been a bit precipitous in pooh-poohing the PTO's evidence of third-party use. The Examining Attorney also relied on such usage to show that Sullivan was not the exclusive user of the subject mark, surely a prerequisite to secondary meaning. The Board never mentioned the third-party evidence in this light. Sullivan contended that those uses were remote from his, but the Examining Attorney pointed out that Sullivan was seeking a nationwide registration, not a geographically-restricted one.

Text Copyright John L. Welch 2005.

TTAB Finds "LOT29" Confusingly Similar to "LOT 53" for Clothing

Because LOT29 is a lot like LOT 53, the Board affirmed the PTO's Section 2(d) refusal to register LOT29 for jeans, shorts and other clothing items, finding the mark likely to cause confusion with LOT 53, registered for the same and other items. In re Wicked Fashions, Inc., Serial No. 78145261 (August 12, 2005) [not citable].

Since the goods are identical in part, the degree of similarity between the marks necessary to support a finding of likely confusion decreases. The key issue, then, was whether the marks, when compared in their entireties, are similar in appearance, sound, connotation, and commercial impression.

As to appearance, the Board found that the points of similarity outweigh the points of dissimilarity. Likewise the marks are similar in sound: the word “lot” followed by numerical portions having three syllables. Wicked Fashions contended that “some may view LOT29 as an alphaneumeric string" spoken as "EL-OH-TEE-TWENTY-NINE." The Board noted once again that there is no correct pronunciation of a trademark "because it is impossible to predict how the public will pronounce a mark. However, the Board found it unlikely that purchasers would pronounce the mark as suggested by Applicant:

"'Lot' is an English language word. When a series of letters spells out an English word, consumers will likely read the word, rather than sound out each letter in the word, even if the letters are followed by a numeral."

The connotations of the marks are "highly similar." The word "lot" is defined as "miscellaneous articles sold as a unit." Thus, "[b]oth marks convey to consumers that the goods belong to or come from a numbered 'lot.'"


With regard to commercial impression, the Board provided no separate discussion, instead concluding that in view of the similarities in appearance, sound, and connotation, the marks are similar in overall commercial impression.

Wicked argued that the word "lot" is "suggestive of clothing," that the numerical portions of the marks would be the dominant portions, and that the marks are readily distinguishable. [After all, 29 does not equal 53]. The Board, however, did not believe that consumers would ascribe any particular significance to "lot" or "even to the mark taken as a whole." Moreover, "the first part of a mark is more likely to be impressed upon the mind of a purchaser and remembered." Thus the Board did not agree that the numerical portions dominate the marks.

TTABlog comment: Note how the Board glossed over "commercial impression" as a factor when comparing the marks. I don't understand why "commercial impression" should be a separate factor anyway. It seems to me that the test should be whether the marks are similar in overall commercial impression, taking into account their appearance, sound, and meaning.

This issue of whether "commercial impression" is a separate factor or the overall test came up in the CAFC's VEUVE CLICQUOT decision earlier this year. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689 (Fed. Cir. 2005). There, the CAFC noted that the Board had made a "minor misstatement" regarding the test for similarity "in an otherwise proper analysis," because the Board treated "commercial impression" as the ultimate conclusion, rather than as a separate factor to be considered with appearance, sound, and meaning. But the appellate court found that misstatement not to be reversible error, noting that its own precedent "counsels that the phrase 'commercial impression' is occasionally used as a proxy for the ultimate conclusion of similarity of dissimilarity of marks resulting from a comparison of their sound, appearance and meaning."

So the bottom line is that it doesn't seem to make a lot of difference anyway.

Text Copyright John L. Welch 2005

Citable TTAB Decision Has Blue Man Group Seeing Red

Fame is an elusive butterfly that often leaves the pursuer blue in the face and empty-handed. So the Blue Man Group discovered in the TTAB's seventh citable decision of the year. In a 37-page opinion, the Board dismissed the group's opposition to registration of the mark BLUEMAN for tobacco and cigarettes, finding the mark not likely to cause confusion with the BLUE MAN GROUP mark, registered for musical and theatrical performances, musical recordings, magnets, postcards, posters, hats, T-shirts, and sweatshirts. The Board also rejected Opposer's dilution claim because the group failed to prove its mark famous for dilution purposes. Blue Man Productions, Inc. v. Tarmann, 75 USPQ2d 1811 (TTAB 2005).


Applicant Erich Tarmann successfully employed the old "rope-a-dope" strategy: he did not submit testimony or any other evidence, nor did he file a brief. The Blue Man Group's case, however, lacked any wallop: the group did not submit narrative testimony, relying instead on a batch of “printed publications” and recorded broadcasts. It claimed its mark to be famous, but it failed to back up that assertion with any sales or advertising figures. The Board found Opposer'’s evidence inadequate to support the fame claim:

"In view of the extreme deference that is accorded to a famous mark in terms of the wide latitude of protection that it receives, and the dominant role that fame plays in the likelihood of confusion analysis, we think that it is the duty of a plaintiff asserting that its mark is famous to clearly prove it. Although opposer has shown that its mark has achieved some recognition for musical/comedy/theatrical performance services, the evidence of record is insufficient to support a finding that the mark is famous."

The Board instead concluded that BLUE MAN GROUP "has achieved a degree of recognition as a mark for entertainment services, such that the mark would be viewed as a strong and distinctive mark, and not be considered only as highly suggestive of performance services rendered by a group of men who are colored blue."

Turning to its du Pont analysis, the Board found that, even if Opposer's mark were famous, "the differences in the goods, as well as the different commercial impressions engendered by the marks, are significant countervailing factors." Opposer meekly argued that cigarettes and its goods and services are complementary, amusingly asserting that the group "features cigarette lighters as the focus of a segment in its current production." In any case, it failed to submit any evidence regarding this cigarette-lighter segment. The Board likewise brushed aside the group's assertion that it has "an unusual 'empire' or 'franchise' of products and services with which [opposer] is associated," pointing out that Opposer failed to show that it has "done any licensing at all." The Board therefore concluded that, even if Opposer's mark were famous, it still failed to show "any relatedness as to origin of cigarettes or tobacco and opposer's performing services or its other goods."

Applicant's specimen of use
As to the marks, the Board noted that they are "very similar" in appearance and pronunciation. However, those similarities are outweighed by the differences in connotation: in Opposer's mark the term "blue man" refers to the performers, whose heads and hands are bright blue; Applicant's mark "has no such connotation for cigarettes or tobacco."

Opposer did not discuss any other du Pont factor, so the Board merely mentioned a few: there is no evidence of third-party use, a factor favoring Opposer; there is no evidence of actual confusion, a neutral factor on this record; and the class of consumers is the same, a factor favoring Opposer.

Considering all the factors in light of the record, the Board concluded that Opposer failed to establish a likelihood of confusion.

The Blue Man Group's dilution claim suffered a quick knock-out. Because much of the Opposer's evidence was dated after Applicant's filing date, it could not be given consideration. Moreover, since Opposer failed to prove the mark famous for Section 2(d) purposes, it could not possibly meet (with what evidence remained) the "stricter standard" required under the dilution statute.

Thus rather than "float like a butterfly, sting like a bee," the Blue Man Group presented a case that went over like the proverbial lead balloon.

TTABlog comment: This opposer got what many parties get from the TTAB when they make a half-baked effort to prove their cases. A stinging defeat.

Text Copyright John L. Welch 2005.

Finding Bibs and Footwear Related, TTAB Gives "BABY'S FIRST" Applicant a Section 2(d) Spanking

Like a resolute parent reining in a ranting toddler, the Board turned a deaf ear to Elegant Headwear's appeal from a Section 2(d) refusal to register the mark BABY'S FIRST for "baby bibs not made of paper" [BABY's disclaimed]. The Board found the mark likely to cause confusion with the identical mark registered for "infant's footwear" [also with BABY's disclaimed]. In re Elegant Headwear Co., Serial No. 76536426 (August 10, 2005) [not citable].

Applicant's specimen of use(Click on drawing for larger view)
Of course, because the marks are identical, the goods need not be as closely related to support a finding of likely confusion. Still, the Board had to strain to find the necessary relationship here.

The Examining Attorney submitted website pages displaying "babies shoes and bibs sold on the same page" [There is no indication, however, that these items came from the same manufacturer or were offered under the same mark], and three third-party registrations providing "some suggestion that entities have registered a common mark for baby bibs and infants' footwear." [Mucky Duck to the rescue, again].

Evidently recognizing the weakness of that evidence, the Board triumphantly seized upon Applicant' own specimen of use [shown above]:

"More importantly, we observe that applicant's specimen of record for its baby bibs contains the wording 'Headwrap and Ballet Slipper Set' and 'SIZE: 0-3 Months.' Ballet slippers are a type of footwear and, thus, applicant's own specimen indicates that it is also the source of infants' footwear."

Noting that the cited websites at least show that these goods travel in the same channels of trade, and pointing out that these are relatively inexpensive items, the Board concluded that confusion is likely.

The TTABib
TTABlog comment: Did the PTO meet its burden in this case? If bibs and footwear really are "related" for purposes of a Section 2(d) analysis, couldn't something more convincing be found on the Internet? Is there not one company offering both products under the same mark?

"Baby's First" is not the most distinctive phrase in the world, and it may not warrant the broadest scope of protection. Surely, Applicant could have done a better job in pointing that out.

Text Copyright John L. Welch 2005.

TTAB Affirms Refusal to Register Title of Single Book

The TTAB didn't need to write a book in order to explain its affirmance of the PTO's refusal to register the alleged mark LEE CANTER'S RESPONSIBLE BEHAVIOR CURRICULUM GUIDE for "educational publications, namely, printed guides in the field of classroom management." In fewer than 5 pages, the Board agreed with PTO Examining Attorney Linda A. Powell that the phrase is the title of a single creative work and therefore does not function as a mark. In re Canter & Assoc., Inc., Serial No. 76396925 (August 10, 2005) [not citable].


Applicant Canter & Associates "did not contend that [the phrase] is anything other than the title of a single work," but it argued that "there is no per se prohibition against trademarks for books." If the title of a single video game or a single board game can be a trademark, Applicant reasoned, why not a book title if it indeed identifies the source of the goods?

Unfortunately for Applicant, there is indeed a per se rule. The law regarding the title of a single book was made clear as recently as Herbko Int'l Inc. v. Kappa Books, Inc., 64 USPQ2d 1375, 1378 (Fed. Cir. 2002): "the publication of a single book cannot create, as a matter of law, an association between the book's title (the alleged mark) and the source of the book (the publisher)."

Therefore the Board not surprisingly affirmed the refusal to register under Sections 1, 2, and 45 of the Trademark Act.

Text Copyright John L. Welch 2005

Yankees Win! Bronx Bombers Best "BABY BOMBERS" in TTAB Battle

The New York Yankees and their minor league affiliate, the Staten Island Yankees, teamed up for an easy victory in their Section 2(d) opposition to registration for the mark BABY BOMBERS for "clothing and athletic wear, namely, shirts, shorts, pants and hats." The Board found the mark confusingly similar to the identical mark BABY BOMBERS used by and associated with opposers for baseball entertainment services. New York Yankees Partnership v. Hart, Opposition No. 91156780 (August 10, 2005) [not citable].


The major league Yankees (sometimes referred to as the "Bronx Bombers") submitted evidence showing use of the term "Baby Bombers" to refer to the Staten Island minor league team, and evidence showing that the press has used the term "Baby Bombers" to refer to both the minor league team and the big league club. The Board found that Opposers' services include entertainment services "in the nature of baseball games," and that Opposers have used the name of the minor league team (i.e., STATEN ISLAND YANKEES) on clothing items. The Board therefore concluded that Applicant's clothing items and Opposers' services are related: "consumers are likely to assume that there is some association between the source of these goods and services."


Applicant Leon P. Hart displayed no offensive punch. He feebly argued that "Baby Bombers" is "descriptive of a minor league or rookie team having potential for explosive play, such as slugging or home run hitting." The Board disagreed. First, the mark does not immediately describe a quality or characteristic of Opposers' services. Second, the evidence showed that the term "has been overwhelmingly used to refer to either opposers' Staten Island Yankees or New York Yankee teams or players." Indeed, the Board held the term "Baby Boomers" to be inherently distinctive.

Thus the Board handed George Steinbrenner another victory, undoubtedly to the extreme annoyance of Red Sox fans everywhere.


TTABlog trivia quiz: Name the two New York Yankee pitchers who swapped wives and families in the 1970's. Answer here.

TTABlog disclaimer: I am neither a Yankee fan nor a Red Sox fan. I'm a Chicago native and a Pale Hose fan.

Text Copyright John L. Welch 2005

TTABlog: More August Reading

The TTAB isn't cranking out much in the way of interesting decisions these days, as evidenced by recent TTABlog postings. So we'll obviously need some more reading material to get through the rest of the month.

Rock Harbor. Orleans, MA.
First, here's a nice article on the lack of "popularity" of the Madrid Protocol for U.S. trademark owners. Lisa Shuchman explores why, "[d]espite the initial hype, U.S. companies have not been using the Madrid Protocol system for registering trademarks." "Missing the Mark," IP Law & Business, July 2005.

Second, also worth perusing is a recent and rare federal court decision involving fraud in the prosecution of a trademark application. In an unfortunately murky opinion, the district court in Maryland ruled that a company failed to satisfy its duty to the PTO to make a full disclosure of all relevant facts when it obtained a registration for the mark shown below for various sauces. Daesang Corp. v. Rhee Bros., Inc., Civil No. AMD 03-551 (D.Md. May 13, 2005).

"Soon Chang Chap Sal and Gochujang"
In particular, in 1998, Defendant Rhee Bros., Inc., obtained U.S. Registration No. 2,140,224 for that Korean character mark shown above for "sauces, excluding cranberry and apple sauce, spice, rice and hot bean paste used as condiment" (class 30). The characters transliterate to "Soon Chang Chap Sal and Gochujang," meaning "Soon Chang Sweet Rice Hot Bean Paste." [Rhee disclaimed "Sweet Rice" and "Hot Bean Paste."] However, Rhee knew that "Soon Chang" was a province in South Korea famous for high quality gochujang, but it never revealed to the PTO the geographical significance of that term. [In fact, Rhee's product did not come from that province.] The court concluded that "this material omission, in combination with all the evidence in the record, points to Rhee Bros.' fraudulent intent in concealing this highly relevant information from the PTO."

gochujang
Third, Eric Goldman, at his Technology & Marketing Law Blog, discusses the recent district court opinion in the GEICO v. Google key word case. Government Employees Ins. Co. v. Google, Inc., No. 1:04cv507 (E.D. Va. Aug. 8, 2005). This is the written decision promised by Judge Brinkema when she issued her oral ruling last December. I will not attempt to improve upon Prof. Goldman's analysis, found here.

Text and fish shack photograph Copyright John L. Welch 2005

TTAB Says Get Lost to "GET IN. GET OUT. GET GOING."

From the get-go, you got the message that this appeal was going nowhere fast. The Board affirmed a Section 2(d) refusal to register the mark GET IN. GET OUT. GET GOING. for "retail convenience store services featuring convenience store items and fuel," finding it likely to cause confusion with the mark GET IN GET IT GET GOING, registered by Plaid Pantries, Inc. of Beaverton, Oregon, for identical services. In re Phoenix Intangibles Holding Co., Serial No. 76572153 (August 1, 2005) [not citable].

Not only were the involved services legally identical, but the Board found the marks to be "extremely similar in sound and appearance, and possibly even identical in meaning, when considered as a whole." It also found that "the commercial impression of the marks is the same."

Applicant argued that the registered mark was entitled to "very narrow and limited" protection in light of existing third-party registrations for GET-EM-N-GO; GET ON. GET OUT.; GET IN. GET OUT. GET ON WITH YOUR LIFE.; GET & ZIP; GET ON. GET IN. AND WIN!; and GET IN. GET OUT. GET AHEAD. The Board, however, found these registrations of little relevance since they either concerned services unrelated to convenience store services, or involved marks that were considerably different. Moreover, third-party registrations are not evidence of actual use of the marks shown therein, or that consumers are familiar with the marks.

Finally, Applicant lamely urged that its mark "will almost always appear" with the mark GETGO FROM GIANT EAGLE. Gettoutahere, the TTAB replied.

From the TTAB's viewpoint, it doesn't get any easier than this.


Text Copyright John L. Welch 2005

"HALF MOON BAY" Primarily Geographically Descriptive For Wine, TTAB Rules

The Board applied its standard Section 2(e)(2) analysis in finding the mark HALF MOON BAY to be primarily geographically descriptive of "wines." It therefore affirmed a refusal to register that word mark HALF MOON BAY, as well as a refusal to register HALF MOON BAY WINERY in the design form shown below, absent a disclaimer of HALF MOON BAY. In re Cotchett, Serial Nos. 78208878 and 78208591 (August 5, 2005) [not citable].

Dictionary and gazetteer references showed that the primary significance of HALF MOON BAY is that of a known geographical location. Half Moon Bay, California, a city of "significant size" (population nearly 9,000) is a "known geographical location" that is "neither obscure nor remote."

Applicant Cotchett stated that his winery is located in Half Moon Bay, California, but the Board declined to rely on the presumption of a goods/place association that applies when the goods in fact come from the place named. "Half Moon Bay, California is the locus of activities, agricultural and manufacturing, which are entirely compatible with the production of wine." Thus the Board concluded that wine would be associated with HALF MOON BAY.

Half Moon Bay State Beach
The Board pointed out that this is not a case where "a strong association of the place named with an industry or institution, overrides the geographical significance when the mark is applied to certain goods or services. *** Simply put, HALF MOON BAY is not Hollywood, Cooperstown or West Point."

Applicant argued that there are other places known as HALF MOON BAY (in Australia, New Zealand, St. Kitts, and Antigua) and therefore that the term is not primarily geographically descriptive of the California location. However, its "evidence" consisted only of web addresses, which the Board found to be wholly inadequate as proof.

"The identification of web addresses alone is insufficient to make content provided on those web sites of record. The content of web sites changes constantly, in many instances minute by minute. Web addresses also change constantly. Indeed entire web sites can disappear without notice, and likewise web addresses can be rendered inactive without notice. Consequently the provision of a mere web address in an attempt to make the content of the associated site of record does not afford any of the certainty or permanence required to establish a record. In re Planalytics Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004)."

In any case, "the existence of these other apparently obscure places outside the United States ... would be insufficient to refute the conclusion that the primary geographic significance of HALF MOON BAY is the place where applicant is located."


Text Copyright John L. Welch 2005.

The TTABlog Mid-August Reading List

While you're lazing under an umbrella 'neath the oppressive August sun, you'll need some reading material. Here are a few items to consider.


The INTA Members-Only site offers for downloading an article by Jerome Gilson and Anne Gilson LaLonde, on registration and protection of non-traditional marks. Gilson and LaLonde, "Cinnamon Buns, Marching Ducks and Cherry-Scented Racecar Exhaust: Protecting Nontraditional Trademarks," 95 Trademark Reporter 773 (July-August 2005). Noting the Supreme Court's assertion in the landmark Qualitex case that a trademark may be "almost anything at all that is capable of carrying meaning," the authors discuss many of the unorthodox possibilities available.

Qualitex green-gold press pad
The Practicing Law Institute serves up Dickerson M. Downing's take on the Supreme Court's KP Permanent decision. Downing, "KP Permanent Make-Up And Fair Use Of Trademarks, PLI Advanced Seminar On Trademark Law (2005). Downing briefly summarizes recent fair use cases and breaks down the Supreme Court decision.

Several recent appellate-level trademark decisions are worthy of perusal:

McBee v. Delica Co., Appeal No. 04-2733 (1st Cir. August 2, 2005). Cecil McBee, a renowned jazz musician, sought injunctive relief and damages with regard to use of his name in connection with a line of adolescent clothing sold by a Japanese retailer at shops throughout Japan and promoted on a Japanese-language website accessible in this country. The 1st Circuit ruled that the Lanham Act does not reach defendant's activities in Japan because McBee failed to prove that they have a "substantial effect" on United States Commerce, viewed in light of the purposes of the Lanham Act. Absent such a substantial effect, the district court lacked subject matter jurisdiction over the Lanham Act claim.

Cecil McBee
1-800 Contacts, Inc. v. WhenU.com, Inc., Appeal No. 04-0426 (2nd Cir. June 27, 2005). Defendant's "SaveNow" software, part of a bundle downloaded by computer users, delivered "contextually-relevant" pop-up ads to its users, in separate windows labelled with the WhenU mark, when the user accessed the 1-800-contacts.com website. In reversing the district court's issuance of a preliminary injunction, the appellate court ruled that, under the Lanham Act, WhenU did not "use" 1-800's trademarks in connection with its pop-up ads. The 1-800-contacts trademark did not appear in the pop-up ads, although the 1-800-contacts.com domain name does appear in WhenU's internal directory.

Brentford Mfg., Inc. v. Smith System Mfg. Corp., Appeal No. 03-3932 (August 8, 2005). The 7th Circuit affirmed the district court's ruling that the product configuration of Brentford's computer tables having a sleeve and V-shaped brace on each leg, was not protectable under Lanham Section 43(a) because Brentford failed to establish secondary meaning. Brentford proved sales of more than 200,000 units over a seven-year period, but it provided no evidence that the leg design was recognized by consumers as a source indicator.


Frosty Treats, Inc. v. Sony Computer Entertainment America, Inc., Appeal No. 04-2502 (8th Cir. July 25, 2005). The 8th Circuit affirmed the lower court's entry of summary judgment in favor of Sony on Frosty's claims of federal and state trademark infringement, dilution, and unfair competition. Frosty unsuccessfully claimed that Sony's depiction of an ice cream truck and a clown character in its Twisted Metal video game series violated Frosty's rights in the FROSTY TREATS mark and clown graphic used on its ice cream trucks.

"typical Frosty Treats van"
Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., Appeal No. 03-16218 (9th Cir. August 9, 2005). The appellate court reversed the lower court's ruling on summary judgment that the term "yellow cab" is generic, and if not, lacks secondary meaning. Applying its "who-are-you/what-are-you" test, the 9th Circuit found that a genuine issue of material fact exists as to genericness, and it also found a genuine issue as to whether the term, if not generic, has acquired secondary meaning.

Text and umbrella photograph Copyright 2005 John L. Welch.

TTAB Finds "LAWASH" Generic For Flat Bread, Cancels Registration

After this TTAB battle between two Michigan-based bakers, you might say that Respondent's registration was "toast." The Board granted Petitioner's motion for summary judgment and cancelled a registration for the mark LAWASH for "flat bread for consumption by the general public" on the ground of genericness. Paramount Baking Co. v. American Bakery Prods. Inc., Cancellation No. 92043525 (August 2, 2005) [not citable].


Petitioner Paramount asserted that "lawash" is the phonetic equivalent of "lavash" and that both terms are generic for flat bread. It relied on Internet search engine results for "lavash" and "lawash;" on a definition (from Webster's Third New International Dictionary) of "lavash" as a "large thin crisp unleavened wafer with a rough surface from air bubbles;" on an expert report stating that "lawash" and "lavash" are phonetic equivalents, the "w" and "v" being pronounced the same in Armenian; and on Applicant's website showing "mixed forms of use" (i.e. generic use and trademark use) of its alleged mark LAWASH.

Registrant American admitted that "lavash" is a "terminology used for a type of Armenian flat bread," but it contended that its proofs demonstrated that LAWASH is used and recognized as a trademark.


The Board, however, ruled that the evidence, without genuine dispute, showed that "the relevant public would view the term 'lavash' as generic for Armenian bread." Even without the expert testimony regarding pronunciation of the words, "the record shows that 'lawash' would also be perceived by the relevant public as the generic name for a particular type of flat bread." It noted that Registrant itself uses the term "lawash" "as a noun to identify a type of bread, and modified by a flavor." (E.g., "Sun-Dried Tomato Lawash" shown above).

In sum, the Board concluded that "'lawash' is an alternative spelling of 'lavash' and ... is equally generic for the goods."

TTABlog quiz: What two cities or towns in the United States have the largest Armenian communities? Hint: they are not in Michigan; one is on the left coast, one on the right. Answer here.

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

TTAB Sustains 2(d) Opposition to "STAR FLY" for Non-Intimate Footwear

You just new from the start of this decision that Albert Trostel and Mucky Duck were going to land hard on Applicant BEE FLY SARL, and that's just what happened. Third-party registrations led the Board to sustain a Section 2(d) refusal to register the mark STAR FLY for "non-intimate footwear, namely, shoes, sport shoes, sandals, boots, ankle boots, moccasins, clogs, loafers, plain pumps and shoes with wedge outsoles; and non-intimate clothing, namely, t-shirts." The Board found the mark likely to cause confusion with the mark STARFLY registered for "intimate apparel, namely, nightshirts, nightcaps, underwear, socks, robes, slippers, boxer shorts, nightcaps, fleece loungers, bras." In re BEE FLY SARL, Serial No. 76365771 (July 25, 2005) [not citable].

STARFLY® intimate apparel
Examining Attorney Giancarlo Castro pointed out that the marks are nearly identical and, as to the goods, he submitted six third-party registrations, each covering a number of the clothing and footwear items identified in both the application and the cited registration.

Applicant BEE FLY argued that its goods are non-intimate products, while the goods of the cited registration are intimate apparel (no kidding?); that the trade channels for the respective goods would therefore differ (says who?); that the registered mark is not famous (huh?); and that there is an absence of actual confusion evidence (so what?).

The Board observed that, under In re Albert Trostel & Sons. Co., 29 USPQ2d 1783 (TTAB 1993) and In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988), third-party registrations have "some probative value to the extent that they may serve to suggest that [the] goods ... are of a type which may emanate from a single source." Moreover, the Board noted that BEE FLY's t-shirts are "closely related to registrant's nightshirts and may be interchangeable in use; and registrant's identification of goods includes footwear items, i.e., slippers." It therefore concluded that confusion is likely.

As to BEE FLY's argument regarding trade channels, the Board asserted that the broad wording of the involved application and the cited registration require it to presume that the goods "are sold through the same channels of trade to the same classes of customers." Applicant's lack-of-fame and lack-of-actual-confusion arguments were deemed irrelevant, the latter particularly so because the application in question was based on intent-to-use, with no evidence of actual use.

ditto
TTABlog comment: The Albert Trostel/Mucky Duck line of cases recognizes that third-party registrations "are not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them." Nonetheless, the Board accords third-party registrations "some probative value" in showing that goods are related for purposes of supporting a Section 2(d) likelihood of confusion refusal. I suspect that this doctrine was created because Examining Attorneys did not have the ability to gather evidence of actual use of third-party registered marks, and so the TTAB accepted the registrations alone. In this Internet age, however, isn't it now a lot easier for an Examining Attorney to find actual use of a third-party mark? Shouldn't he or she be required to search the Internet to see if a third-party mark is indeed in use? In short, is the Albert Trostel/Mucky Duck doctrine necessary or appropriate any more?

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

TTABlog Reminder: Madrid Oppositions Require Electronic Filing

In September 2003, in light of United States accession to the Madrid Protocol, the PTO amended the Trademark Rules of Practice in a number of respects. Many of the changes affected TTAB practice and procedure, as discussed in an article that Ann Lamport Hammitte and I co-authored, entitled "TTAB Practice and the Madrid Rule Changes."

One significant change was the requirement that notices of opposition directed at Section 66(a) applications (Madrid requests for extension) be filed electronically via ESTTA. [See Rule 2.102(b)(2)]. Likewise, requests for extension of time to oppose a Section 66(a) application must be filed electronically. [See Rule 2.102(a)(2)]


Earlier this year, the Board drew attention to these electronic-filing requirements in its citable decision in In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB 2005). [Discussed here at the TTABlog]. Sara Lee Corporation failed to comply with Rule 2.102(a)(2) when it filed by mail an extension request regarding a Section 66(a) application owned by the German company, Börlind, maker of ANNEMARIE BÖRLIND brand cosmetics. The Board denied the request for extension of time, and it took the opportunity to explain the importance of the electronic filing requirement for Madrid oppositions:

"Because of the strict time frame in which the USPTO must notify the IB [WIPO's International Bureau] of the filing of an opposition, it would be virtually impossible to assure potential opposers that their rights would be preserved if the Board accepted paper filing of either extensions of time to oppose or notices of opposition against Section 66(a) applications."

Apparently the Board's message has not gotten across. On three occasions in the past three months, the Board has dismissed Section 66(a) oppositions that were filed on paper: Oppositions Nos. 91165062, 91165377, and 91165624. In each case, the Board order terminating the opposition contained the following explanation (in more or less the same verbiage):

"The opposed application was filed based on Trademark Act Sec. 66(a). Trademark Rule 2.101(b)(2) provides that '[a]n opposition to an application based on section 66(a) of the Act must be filed through ESTTA.'"

Of course, these three terminations were not "on the merits," and so each of these potential opposers will have the opportunity to challenge, via a petition for cancellation, any registration that issues on the application it sought to oppose.

Reportedly, 21 oppositions have been filed against Section 66(a) applications to date. Thus 1 in 7 of those oppositions were filed in violation of the Trademark Rules of Practice because they were not filed electronically. That's a remarkably poor showing by the trademark bar, don't you think?

TTABlog comment: In another of the pending Section 66(a) oppositions (No. 91164850), an answer was filed on behalf of the applicant (a Turkish company) by Erdal Handanoglu of Simaj Patent Limited Sirketi, located in Ankara, Turkey. The Opposer has notified the Board that Mr. Handanoglu "does not appear to meet the requirements in 37 C.F.R. Sec. 10.14 of individuals entitled to practice before the Patent and Trademark Office." Opposer asks that the Board require Applicant to "submit evidence showing on what basis its counsel is authorized to practice before the Board, or alternatively, that Applicant retain substitute counsel in the instant proceeding."

Apparently some Madrid applicants believe that, because they can file a Section 66(a) application without employing an American attorney, they can also participate in opposition proceedings involving such an application without representation by an American attorney. The Board should soon be setting this Turkish applicant straight on that notion.

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

"STRIPE WRITER" Not Merely Descriptive of Pens with Striped Ink, Says TTAB

Reversing the PTO's Section 2(e)(1) refusal, the TTAB found the mark STRIPE WRITER to be not merely descriptive of "pens, namely, coloring pens, writing pens, drawing pens and felt tip markers." Although Applicant's pens "will feature striped ink," the Board opined that the pens "would not be considered 'stripe writers' except, perhaps, through the exercise of a multi-stage reasoning process or the utilization of imagination, thought or perception." In re JPI Colorworkshop, Inc., Serial No. 78107577 (July 26, 2005).

Stripe Writer?
The Examining Attorney relied on dictionary definitions of "stripe" and "writer," on third-party registrations for pens in which "writer" was disclaimed, and on Applicant's statement that its pens "will feature striped ink." She contended that STRIPE WRITER "will immediately inform prospective consumers that the goods on which this mark is used are either writing instruments that produce stripes or are intended for use by writers who wish to write using stripes."

Applicant argued that consumers would not use the expression "write in stripes" because they "draw stripes," not write them, nor would they think "writer" means "pen."

The Board was persuaded that STRIPE WRITER is suggestive rather than merely descriptive.

"in common parlance [WRITER] generally refers to a person who writes, especially as an occupation, rather than to a thing or instrument for writing. Similarly, ... pens and markers are typically used to communicate, by writing or drawing, rather than to produce stripes per se."

Finally, the Board noted that any doubt as to registrability must be resolved in Applicant's favor.

striped toothpaste?
TTABlog comment:It seems to me that little thought or imagination is required to recognize that a pen with striped ink would write in stripes, and that the term STRIPE WRITER describes that capability. In the abstract, the word "writer" may typically mean a person, but when considered in the context of Applicant's goods (as the law requires), it seems clearly to refer to the pen. I disagree with the Board on this one.

As a side note, I have recently noticed that PTO Examining Attorneys, when looking for dictionary definitions, seem often to turn to editions of The American Heritage Dictionary of the English Language. [See recent TTABlog postings here, here, and here]. Perhaps this particular dictionary is "standard issue" at the PTO?


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

TTAB Condemns "THIS MOLD HOUSE" Despite Poorly Constructed 2(d) Opposition

Opposer This Old House constructed a skeletal but successful Section 2(d) opposition to registration of the mark THIS MOLD HOUSE for "educational services, namely, conducting classes in the field of mold remediation training." This Old House Ventures, Inc. v. Restoration Services, Inc., Opposition No. 91152820 (July 25, 2005) [not citable].


Opposer's house of cards almost collapsed due to lack of any evidence in the record: in its Notice of Opposition, Opposer pleaded ownership of sixteen valid and existing registrations for the mark THIS OLD HOUSE in block letter and design form. However, it neglected to submit status and title copies with its Notice of Opposition or via Notice of Reliance, and it did not introduce the registrations via live testimony. [See Rule 2.122(d)]. Indeed, Opposer submitted no other evidence at all. Applicant, appearing pro se, did nothing in the case other than submit a "Notice of Response" that did not directly address each of Opposer's allegations, but which the Board treated as an Answer. Thus the record before the Board consisted only of the pleadings and Applicant's file history.

The Board was not pleased with this state of affairs: "The type of legal representation of opposer in this case is something that we neither commend nor wish to encourage." Nonetheless, the Board saved Opposer's case from collapse by concluding that Applicant had admitted Opposer's ownership of the pleaded registrations by failing to deny same and by referring to each of the registrations in its answer. The Board noted that Applicant "has had fair notice of the case it had to meet," and therefore it considered the registrations to be of record. From that point on, Opposer was home free.

air handling unit
The Board summarized the scope of Opposer's relevant registrations as covering "educational products in the nature of videos, computer programs, CD-ROMS, books and magazines, and educational services in the nature of television programs and Internet websites, all pertaining to home renovation, improvement and design." Noting that both parties "provide educational services pertaining to work that is performed on a home," it concluded that Applicant's services "are closely related to, if not encompassed by the services identified in opposer's registrations."

As to the marks, the Board found the phrase THIS OLD HOUSE to be predominant in Opposer's marks, and noted that it contains two of the same words as, rhymes with, and has the same cadence as the applied-for mark. The Board concluded that the marks are "sufficiently similar that, if used in connection with closely related goods or services, confusion as to source is likely."

Consequently, the Board ruled that, in light of the "substantial similarity in commercial impression" between the marks, their contemporaneous use on closely related goods is likely to cause source confusion.

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

TTAB No Fan of "COUNTRY MUSIC CAFE" -- Finds it Merely Descriptive

TTAB 101 teaches us that determining whether a mark is merely descriptive under Section 2(e)(1) is not a "guessing game." In other words, the fact that one cannot guess what the goods are from the mark alone does not mean the mark in question isn't descriptive. The mark must be evaluated in the context of the applied-for goods or services. [See recent TTABlog discussion here]. But what if you can guess? What services would you guess are offered under the mark COUNTRY MUSIC CAFE? Right! The Board didn't apply this "reverse-guessing game" approach, but it did find the mark merely descriptive of "nightclub and restaurant services" in In re Country Music Café, Inc., Serial No. 75909681 (July 28, 2005) [not citable].

country music café?
Examiner Mary Rossman soundly supported her refusal to register with dictionary definitions of "country music" and "café," and with excerpts from NEXIS and Internet articles that use the phrases "music café" and "country music café" descriptively. The Applicant acknowledged that its restaurant concept "is designed to provide customers with an opportunity to dine in [an] environment that enables them to experience the look, sound, feel and excitement of the Country M[usic] segment of the entertainment industry."

The Board found that "a 'country music café' immediately describes a coffeehouse, restaurant or bar featuring popular music based on the folk style of the southern rural United States or on the music of cowboys in the American West." It also found that Applicant "offers country music as a feature or characteristic of its services."

Thus it concluded that:

"COUNTRY MUSIC CAFE immediately describes, without conjecture or speculation, a significant characteristic or feature of applicant's services, namely, that country music is a theme of applicant's café."

Applicant argued, with absolutely no success, that its mark "does not convey ... immediate knowledge of Applicant's services to a potential consumer" because "nothing about the mark immediately indicates exactly what services the Applicant provides." The weakness of this argument was reflected in Applicant's long-winded but lame explanation that:

"Applicant's mark could refer to country music related food or favorite foods of country musicians. It could be a facility for live country music, classic country music recorded decades ago, modern country music recorded this year, or even bluegrass country music. Moreover, it could be that country music was not played at all and the only relation to country music is memorabilia on the walls. In fact, the service provided could be a combination of any or more of the above."

The Board tersely noted that "Applicant's arguments are not well taken," and it proceeded to affirm the refusal to register.

Birthplace of Woody GuthrieOkemah, Oklahoma
TTABlog comment: Actually, I think the "guessing game" approach should be a test for genericness: if you can guess the goods or services from the "mark" alone, it's generic. For example, what's a SCREENWIPE? A wipe for screens. [found to be generic in In re Gould.] Under my test, COUNTRY MUSIC CAFE would be generic.

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

TTABlog Flotsam and Jetsam -- Issue No. 6

Eddie Cochrane was right: there ain't no cure for the Summertime Blues! The recent heat wave hit Boston like a cream pie, so I retreated to Cape Cod for a few days. That gave me a chance to empty out my "things-to-blog" folder.


Reading Material: A recent surfin' safari across the Internet yielded some interesting reading material. First, an article by Chad J. Doellinger of the Pattishall firm in Chicago, entitled "Recent Developments in Trademark Law: Confusion, Free Speech, and the Question of Use," 4 J. Marshall Rev. Intell. Prop. L. 387 (2005). Mr. Doellinger asserts that, in 2004, "trademark rights continue to be refined (narrowed?) and reconnected to well-established doctrines. *** but with a new emphasis on free speech and free expression." However, the issue of trademark use "has brought uncertainty and instability back to trademark law for the first time since the early days of the internet."

Second, Glenn Gundersen provides his entertaining annual analysis of last year's trademark application filings at the PTO in 2005 Dechert LLP Annual Report on Trends in Trademarks. For example, he points out that poker-related filings rose dramatically in 2004 -- a rise that, as a parent of a college student, I find not so surprising.

Finding Older TTAB Decisions: The USPTO makes available at its website, in pdf form, copies of all final decisions of the TTAB issued since 1997. However, finding a particular decision can be a bit of a fishing expedition. TTABVUE will yield recent decisions. But for older ones, the angler must retreat to the TTAB website -- armed with the date of the decision or the relevant serial number or proceeding number -- and proceed through the "TTAB Summaries" or "TTAB Final Decisions" links.

Much more user-friendly is the Oblon, Spivak firm's online database/searching tool called "TTAB Explorer," where pdf versions of final TTAB decisions may be found for the period January 1998 to date -- currently a total of 4,042 decisions. The database is fully word-searchable.

Recently, Franklin Pierce Law Center, at its IP Mall, made available here a number of TTAB decisions for the period 1984 to 1996, in html form. However, the database is not complete by any means: e.g., for each of the years 1984 and 1985 there is only a single decision. [I've also found at least one link that leads to the wrong case.] Let's hope that the school continues with and completes this project soon.


Boston Patent Law Association Seminar: Yours truly will be one of three speakers at the August 17th seminar sponsored by the Corporate Practice Committee of the BPLA, entitled "Key IP Decisions of the Past Year and Their Implications for In-House Counsel." I will focus on the trademark area, while Tom Sullivan of Lowrie, Lando & Anastasi LLP will cover patents, and Cynthia D. Vreeland of Wilmer, Cutler, Pickering, Hale & Dorr will focus on trade secrets and ip litigation. Registration form here.

"Leo Stoller" in Wikipedia: The celebrity of Leo Stoller continues to grow. An article in the July 4th issue of the New York Times planted the seed. Then a "Leo Stoller" entry appeared in Wikipedia. That entry now includes a link to the Chilling Effects website, which provides annotated versions of two Stoller STEALTH cease-and-desist letters. I'm waiting for "Stoller" the musical to hit Broadway, featuring his own band, AIRFRAME®.

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

TTAB Overturns Disclaimer Requirement, Finds "VIRTUAL MODEL" For Simulation Software Has Secondary Meaning

My Virtual Model Inc. established secondary meaning for the term VIRTUAL MODEL, and thereby overcame the PTO's refusal to register the mark shown immediately below for specialized computer simulation software used in the retail sale of clothing. The Examining Attorney had refused registration under Section 6(a) because Applicant failed to disclaim VIRTUAL MODEL. In re My Virtual Model Inc., Serial No. 76372314 (July 21, 2005) [not citable].


The Board observed that, by amending the application to seek registration under Section 2(f), Applicant "has in effect conceded that the term 'Virtual Model' is merely descriptive of its goods." Applicant, however, took exception to the Examining Attorney's assertion that the phrase is "highly descriptive." But the Board reviewed Applicant's specimen of record and concluded that "[u]sers of applicant's website will readily understand that use of this [software] permits them to build a 'virtual model' to represent themselves." Thus it found that the term "is much closer to the 'highly descriptive' end of the continuum than to the 'merely suggestive' side."


Turning to the issue of acquired distinctiveness, the Board noted that "[l]ogically, applicant's burden of demonstrating that its mark has acquired distinctiveness increases as the level of descriptiveness increases." Applicant met its heightened burden by submitting a "variety of types of circumstantial evidence," including a Declaration verifying substantially exclusive and continuous use of the term "virtual model" in a number of different composite marks since 1997, and proof of promotional expenditures of more than five million dollars, of more than six million registered users of Applicant's software for "online garment and weight loss product retailing applications," and of unsolicited publicity regarding its online software. The Board also noted that Applicant continues to be the only user of the phrase "virtual model" in connection with such software.

The Board therefore reversed the PTO's requirement of a disclaimer of VIRTUAL MODEL.

JLW?
TTABlog comment: I tried out Applicant's software. See the remarkable result above.

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

"TWIN CHAMBER" Merely Descriptive of Vacuum Cleaners, TTAB Rules

When the dust settled, The Hoover Company had failed to sweep away the PTO's Section 2(e)(1) refusal to register TWIN CHAMBER for vacuum cleaners. The Board affirmed the PTO's determination that the mark is merely descriptive of the goods. In re The Hoover Co., Serial No. 78177402 (July 21, 2005) [not citable].


Hoover vacuously argued that the word "chamber" does not describe its product because a chamber is a closed space, and its product is not closed. But Hoover's own website described the product thusly: "Heavy dirt entering the vacuum is drawn into an empty chamber and kept there by a permanent pre-filter between the two chambers. *** The pre-filter allows only fine particles to pass into the second chamber, where they are stopped by a HEPA filter."

Hoover next pointed to the Examining Attorney's definition of "twin," asserting that its enclosures cannot be considered "twin" chambers because they are not "identical or similar:" one contains a HEPA filter, which takes up most of its space, and so the two chambers are not alike in appearance or function. The Board was not sucked in by Hoover's argument:

"We think this is a narrow reading of 'twin.' The shape and overall appearance of the two sides or chambers of Applicant's vacuum cleaner ... are basically the same. The fact that the interiors of the chambers have different contents does not eliminate this overall similarity."

Thus the Board concluded that consumers will immediately understand TWIN CHAMBERS to mean that Hoover's vacuum cleaners "have a container [sic] with two sections that are similar in overall size and appearance." Therefore, the mark is merely descriptive.


TTABlog comment: Before appealing from a mere descriptiveness refusal, an applicant would be wise to check on how the subject mark is used at its own website. It's surprising how often the PTO is able to point to an applicant's own website (or other promotional material) to support a Section 2(e)(1) refusal. Rather than spending money on a futile appeal, an applicant might better invest in a website "audit" to make sure that its marks are being used properly.

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