"ISHINE" and "ICE SHINE" Sound Confusingly Similar, TTAB Says (Citably)

In its fourth citable decision of 2006, the TTAB sustained a Section 2(d) opposition to registration of the mark ISHINE in the stylized form shown below, finding it likely to cause confusion with the registered mark ICE SHINE, both for floor finishing preparations. The Board ruled that the similarity of the marks in terms of sound outweighed any differences in appearance and meaning. Centraz Indus., Inc. v. Spartan Chem. Co., 77 USPQ2d 1698 (TTAB 2006).


The Board began its du Pont analysis by noting that the goods are legally identical, a fact that "weighs heavily in opposer's favor." Because there are no limitations in the parties' identifications of goods, the Board presumed that the goods will be sold in all normal channels of trade for such goods, including grocery stores, drug stores, and warehouse merchandisers, and will be purchased by ordinary consumers. Again, these factors favored Opposer.

The first du Pont factor, the similarity of the marks, was the crux of the controversy. The Board first observed (once again) that, when the involved goods are identical, the degree of similarity necessary to support a finding of likelihood of confusion declines.

Although the stylization in Applicant's mark gives it a "different look" from Opposer's word mark, prospective purchasers would still "perceive the essence of applicant's mark as 'iSHINE.'" As to connotation, the Board was "unsure as to the meaning of 'i' in applicant's mark," but it found that both marks suggest that "the use of the product will result in a shiny floor."


To the Board, that "[w]hat stands out in the comparison between the marks" is the similarity in sound.

"There is no correct pronunciation of a trademark, and it obviously is not possible for a trademark owner to control how purchasers will vocalize its mark. *** [W]e find quite reasonable opposer's assessment that purchaser may roll the 's' sound from the pronunciation of 'ice' into the 'sh' sound beginning the second syllable 'shine.' When opposer's mark is spoken as such, the two marks at issue herein sound remarkably similar. Even if opposer's mark is pronounced correctly, with a first syllable 'ice,' the marks ICE SHINE and ISHINE sound very much alike. Inasmuch as the goods may be ordered by phone or recommended by word of mouth, the similarity in sound is an important factor in comparing the marks, especially where, as here, identical products are involved."

The Board concluded that the similarity in sound outweighs any differences in appearance and connotation, and that the marks "engender similar overall commercial impressions, both conveying ... the image of a shiny floor as a result of using the product." Therefore, the first du Pont factor weighed in favor of Opposer.

Thus with all the relevant du Pont factors pointing in Opposer's direction, the Board sustained the opposition.

Text Copyright John L. Welch 2006.

In a Citable Decision, TTAB Reverses Genericness Refusal of AOL's "INSTANT MESSENGER"

More than seven years after filing its applications, AOL has overcome the PTO's refusals to register the marks INSTANT MESSENGER and AOL INSTANT MESSENGER for electronic messaging services. The Examining Attorney had deemed the term INSTANT MESSENGER generic, but the Board (in its third citable decision of 2006) reversed that ruling and also found that INSTANT MESSENGER has acquired secondary meaning under Section 2(f). In re America Online, Inc., 77 USPQ2d 1618 (TTAB 2006).


The Examining Attorney argued that the words "instant messenger" has become "the means by which consumers refer to real-time Internet communications services." She submitted "[numerous] references in a wide variety of publications over a number of years" showing such use of that term. That evidence established a prima facie case of genericness.

However, AOL successfully rebutted the PTO's case. It submitted a "snapshot of NEXIS printouts" for the period 15-30 June 2004, as to which the Board concluded that "the majority of the articles refer to applicant."

"Moreover, applicant has shown that it has engaged in substantial marketing of its services under this mark. Just one mailing of its advertisement involved 60 million copies. In effect, the one mailing would have been distributed to a significant percentage of the total population of America. Furthermore, applicant has 80 million users of its identified services. Its services deliver more than one billion messages every day."

The Board found AOL's evidence "impressive," because it "shows not only a significant amount of proper trademark use but also trademark recognition by customers, publishers, and third parties." The Board concluded that the record lacked "clear evidence" that the relevant public primarily uses or understands INSTANT MESSENGER to refer to the genus of the services.

Turning to the Section 2(e)(1) and 2(f) issues, the Board found the term "instant messenger" to be merely descriptive of AOL's services because prospective purchasers or users would immediately understand that the services "involve the sending, storing, and displaying of messages sent by instant messaging services." It therefore affirmed the PTO's 2(e)(1) refusal.

The Examining Attorney did not "seriously question" AOL's Section 2(f) claim; instead she simply maintained that "a generic term can never acquire distinctiveness." [TTABlog comment: shouldn't she have said that the term, if not generic, is so descriptive that no amount of evidence would suffice to prove secondary meaning?] AOL, however, met its 2(f) burden of proof via the evidence discussed above. Therefore the Board reversed the PTO's rejection of AOL's 2(f) claim.

TTABlog note: Last year, in an uncitable decision, Network Associates overcame a prima facie case of genericness and establish secondary meaning in its mark VIRUSSCAN for computer utility software [discussed here].

Text Copyright John L. Welch 2006.

TTABlog Says: It's Time to Tackle the "Trademark Trolls"

Patent lawyers and patent law reformers are upset at what they call "patent trolls" -- individuals or companies that take improper advantage of the patent system. A patent troll is someone who obtains a patent for the purpose of suing or threatening to sue others -- and not for purposes of commercializing the patented invention -- in order to extract money from the defendant/victim either via a license agreement or litigation settlement.


But what about the trademark system? It has its own "trademark trolls" who take improper advantage of the system by filing groundless requests for extension of time to oppose (now facilitated by ESTTA), or by filing opposition or cancellation proceedings, or by suing or threatening to sue legitimate applicants and owners. A patent troll at least has to get its hands on an issued patent; a trademark troll need only claim common law rights in a supposed "mark" in order to make its threats.

Isn't it time for trademark practitioners to demand that the USPTO and the TTAB crack down on these practices? I suggest that your complaints be sent to the USPTO, the TTAB, and/or the Trademark Public Advisory Committee (TPAC). [The members of TPAC are listed at page 3 of its 2005 Annual Report.]

Text Copyright John L. Welch 2006.

TTAB Finds "MERCHANDISER" Descriptive of a Newspaper, Affirms Disclaimer Requirement

In a decision that will likely not make the front pages, the Board affirmed a PTO requirement that Applicant disclaim the word MERCHANDISER in the mark shown below for "newspapers primarily featuring classified advertisements and news articles" (NEWSPAPERS disclaimed). In re Advertising Marketing Services, Inc., Serial No. 76554285 (January 12, 2006) [not citable].


Examining Attorney Michael Webster argued that "Applicant's newspaper is a marketing newspaper containing ads and articles from MERCHANDISERS advertising their goods or services. The entire subject of the newspaper is the MERCHANDISERS who advertise in the paper."

Applicant countered by asserting that "MERCHANDISER is an example of personification; or the attribution of personal qualities to an inanimate object. A prospective purchaser upon seeing the term in connection with a newspaper containing an amalgamation of classified advertisements and news stories would have to use imagination and a multi-step reasoning process to discern what MERCHANDISER means. Consequently, the term is suggestive and not descriptive."

Applicant submitted more than 100 declarations from persons who received or advertised in the newspaper, each stating that the declarant was "familiar with the term MERCHANDISER ... defined as a 'businessperson engaged in retail trade,'" and was "not aware of any definition of the term MERCHANDISER that means 'a newspaper primarily featuring classified advertisements and news articles.'"

The Board, however, was not buying what Applicant was selling. It noted that Applicant's magazine "clearly contains advertisements from merchandisers."

"If a newspaper featured advertisers from plumbers, the word 'plumbers' would be descriptive. Applicant's term 'merchandisers' [sic], which covers a broader class of businesspeople, is similarly descriptive."

The Examining Attorney submitted three third-party registrations under Section 2(f) or on the Supplemental Register for marks including the term "Merchandiser" for publications: ARMY/NAVY STORE & OUTDOOR MERCHANDISER, AUTOMATIC MERCHANDISER, and RETAIL MERCHANDISER. Those registrations provided "some support" for the PTO's descriptiveness argument.

The Board concluded that:

"The term 'Merchandisers' describes applicant's advertisers, i.e., businesspeople engaged in retail trade. It also describes a feature of applicant's newspapers to the extent that it describes the subject matter of applicant's magazines inasmuch as applicant's magazines consist primarily of advertisements of merchandisers."

"When we view applicant's mark as a whole, the term MERCHANDISER NEWSPAPERS in the mark merely describes that applicant's newspapers contain advertisements of local merchants or merchandisers. As a result the term MERCHANDISER is merely descriptive...."

The Board allowed Applicant thirty days within which to submit an appropriate disclaimer, in which case the refusal to register will be reversed.

TTABlog comment: I think this was a close call, and the benefit of the doubt should have gone to Applicant. If the word had been the plural, "Merchandisers," then I can see it referring to the advertisers, but the singular makes me stop and think.

Text Copyright John L. Welch 2006.

TTAB Unconvincingly Finds "GOSMILE PM" and "P.M." Confusingly Similar for Toothpaste

In a decision that may stick in your teeth like an errant poppy seed, the Board affirmed a Section 2(d) refusal of the mark GOSMILE PM for toothpaste, finding the mark likely to cause confusion with the registered mark P.M. for "toothpaste and gel." In re GoSMILE, Inc., Serial No. 76518244 (January 20, 2006) [not citable]. The Board's reasoning, however, was less than convincing.

Applicant GoSMILE did not contest the issue of the relatedness of the goods, but instead argued that the first du Pont factor, the dissimilarity of the marks, was dispositive. It contended that the dominant feature of its mark is GOSMILE (a registered mark in itself), that the PM portion of its mark was disclaimed as required by the Examining Attorney because of its descriptiveness, and that the first portion of a mark is often "that which catches the consumer's eye."

The Board noted once again that, when the goods are identical, the "degree of similarity between the marks necessary to support the conclusion of likely confusion declines." The Examining Attorney maintained that "the addition of the applicant's house mark to two otherwise identical marks will not obviate confusion." [TTABlog comment: the Board inexplicably ignored the TTAB's citable decision in Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005), in which the addition of the house mark NORTON McNAUGHTON to the registered mark ESSENTIALS for clothing resulted in a registrable mark. I am informed that the Knight Textile case was brought to the Board's attention at oral argument.]

Applicant argued that the term "P.M." is weak; indeed, the Examining Attorney had required a disclaimer of PM in Applicant's mark, deeming it "merely descriptive because it identifies the period of use of the toothpaste." But the Board was not satisfied, pointing out that the PTO had not offered any evidence to support the disclaimer requirement, nor did Applicant offer evidence "indicating that PM is merely descriptive for toothpaste or tooth gel." [TTABlog comment: maybe it was so obvious that neither the PTO nor the applicant thought proof was needed.]

Furthermore, the Board cited In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985) for the proposition that the disclaimer of a word "cannot affect the scope of protection to which another's mark is entitled." [TTABlog comment: In National Data, however, the disclaimer was voluntary and was done "as a tactical strategy, believing it would assist in avoiding a holding of likelihood of confusion with the cited mark."]


As to whether the addition of GOSMILE to PM is sufficient to distinguish the marks, the Board summarily asserted [without evidentiary support] that "GOSMILE and PM are not combined in a manner which in any way alters the impression of PM alone." It then concluded [again without evidence] that:

"Contrary to applicant's argument, consumers are just as likely and perhaps even more likely to view GOSMILE PM as identifying another product from the owner of the P.M. mark as they are to view it as a new product from the owner of the GOSMILE mark."

The Board therefore affirmed the Section 2(d) refusal.

TTABlog final comment: Once again, I am left to wonder why there isn't a 14th du Pont factor: common sense.

TTABlog update: Applicant GoSMILE sought review of this decisiohn by way of civil action (here), and then reached an agreement with the PTO (here) remanding the application to the PTO for further prosecution -- all for the purpose of permitting GoSMILE to submit additional evidence regarding the descriptiveness issue.

Text Copyright John L. Welch 2006.

"PURPOSE" and "DUAL-PURPOSE MASSAGE CREME" Confusingly Similar, Says TTAB

In a decision that may make the TTABlog's "Ten Worst" list for 2006, the Board sustained an opposition to registration of the mark DUAL-PURPOSE MASSAGE CREME for "massage creme," finding the mark likely to cause confusion with the registered mark PURPOSE for moisturizers. Johnson & Johnson v. Natural Thoughts, Inc., Opposition No. 91122373 (January 10, 2006) [not citable].


The Board began by noting that MASSAGE CREME is a generic term for Opposer's goods (although the Examining Attorney did not require a disclaimer). It found the involved goods to be related, based in part on Applicant's own advertising indicating that moisturizing is one purpose of its creme. Because the identification of goods in the application has no limitation on channels of trade, the Board assumed (as it must) that the goods are sold in all normal channels (and not just the specific channels urged by Applicant). Moreover, J&J submitted evidence that moisturizers and massage creams are sold in some of the same retail outlets (both brick-and-mortar and virtual). The Board also assumed that, since massage creams are found in general retail stores, Applicant's goods may be purchased by ordinary consumers, not just by professional massage therapists (as argued by Applicant).


Turning to the marks, the Board found PURPOSE to be not a particularly strong mark. Evidence of third-party use of the word "purpose" as part of their product brand names "suggests that the public distinguishes between various marks containing this word by looking to other distinctive parts of those marks."

Because MASSAGE CREME is generic and "has no source-indicating value," the Board gave "greater weight to the DUAL-PURPOSE portion of applicant's mark" and concluded that the marks "are similar in commercial impression, and this factor favors opposer."

"... there are obvious visual and phonetic similarities. With respect to the connotations of the marks, there are certain differences, in that DUAL PURPOSE can be viewed as having a meaning of two aims or functions, while the word PURPOSE per se has meanings in addition to goals or aims, e.g., 'determination,' 'resolution.' Overall, however, we do not find these differences, and especially the addition of the word DUAL, which if not descriptive is, at the very least, highly suggestive, to be sufficient to distinguish applicant's mark from the mark PURPOSE."

Applicant's contention regarding lack of actual confusion during the 18 years of contemporaneous use of the subject marks served no purpose. "[T]his is likely due to the limited trade channels in which applicant's goods are actually sold, and the specialized group of customers to which it actually markets its goods." The application at issue is not so limited.

Finally, the Board noted that "any doubt on the issue of likelihood of confusion must be resolved in favor of the prior user and registrant."

TTABlog comment: Is the American consumer so dumb that she or he would find these two marks confusingly similar? It seems to me that the Board's analysis of these marks is seriously flawed. The marks must be compared in their entireties: the public doesn't know which words have been (or should have been) disclaimed in the PTO, nor will it reason that the word DUAL is suggestive or descriptive and therefore ignore it. The Board found that the mark PURPOSE is not particularly strong in light of third-party uses, and that the public has been able to distinguish between other marks containing the word "purpose." [In those cases, the public purportedly would look to other "distinctive" portions of the marks.]

Here, the word PURPOSE by itself does not, in my opinion, create the same commercial impression as DUAL PURPOSE MASSAGE CREME. The former is a vague, non-descriptive term thought up by some advertising agency; the latter is a down-to earth "trademark." Maybe the applied-for mark as a whole is descriptive, but it certainly is distinctive from PURPOSE.

TTABlog note: The Board sustained Applicant's objection to the propriety of J&J's rebuttal testimony regarding "whether personal care products that include massage products, and skin care products, are sold under the same brand." The Board found that the testimony should properly have been part of J&J's case-in-chief.

Text Copyright John L. Welch 2006.

TTAB Finds "BOSS AUDIO" and "AUDIO BSS" Logos Confusingly Similar in a Citable Decision

In its second citable decision of 2006, the Board sustained a Section 2(d) opposition to registration of the mark AUDIO BSS USA & design (shown immediately below) for car amplifiers, speakers, and stereos (AUDIO and USA disclaimed), finding it likely to cause confusion with the mark BOSS AUDIO SYSTEMS & design (shown further below), registered for automobile audio components, including amplifiers and speakers (AUDIO SYSTEMS disclaimed). Opposer's survey evidence corroborated the Board's du Pont analysis. Ava Enterprises, Inc. v. Audio Boss USA, Inc., 77 USPQ2d 1783 (TTAB 2006).

The Board observed that because the involved goods are identical in part, "the degree of similarity required to support a conclusion of likely confusion declines." It noted that the goods would be sold in the same channels of trade to the same consumers, who would "not necessarily be expected to exercise a high degree of care in purchasing these products."

The Board ruled that BOSS is the dominant portion of the registered mark and that, in light of Applicant's disclaimers, the letters BSS constitute the dominant portion of Applicant's mark. It recognized that there are some differences in the marks because BOSS and BSS do not sound alike, and because the connotations are dissimilar: the registered mark suggests products that are "top-of-the-line," whereas Applicant's mark has no meaning.

However, the Board found the marks "highly similar" in appearance and commercial impression: both marks include the word AUDIO, the dominant portions differ by only a single letter, and the marks are in "virtually the same distinctive font." The Board also noted (in a good example of litotes) that the circular design in Applicant's mark "is not unlike the letter 'O'."

"In order for a likelihood of confusion to exist, two marks need not be similar in sound, appearance, connotation and commercial impression. Rather, similarity in either [sic] respect alone may be sufficient to support a finding of likelihood of confusion."

Finally, based on Opposer's annual sales of $50 million and annual advertising expenditures of $1 million, the Board found the registered mark to be a strong mark in its field (albeit not famous).


The Board then reviewed Opposer's survey results: 57% of respondents exposed to the marks "thought they come from the same company or that the companies that make the brands are connected or associated."

Finally, the Board stopped short of finding a bad faith intent on the part of Applicant, but it noted that "applicant's adoption of a mark which includes a unique font essentially identical to that used by opposer certainly raises an eyebrow."

Considering the relevant du Pont factors, "including the identity of the goods, the trade channels and purchasers, the lack of sophistication of the purchasers, and the marks' similarity in appearance and commercial impressions," the Board concluded that confusion is likely. The survey results "corroborate that conclusion."

Text Copyright John L. Welch 2006.

TTABlog Update on Leo Stoller and Companies

Requests for Extension of Time to Oppose: Leo Stoller's recent burst of activity at the TTAB has brought him to the attention of many unsuspecting trademark practitioners. In the last two months or so, Stoller's companies have filed approximately 444 requests for extension of time to oppose, aimed at a vast array of marks. One by-product of this aggressive foray has been a noticeable and welcome increase in traffic at the TTABlog, as applicants and their counsel surf the Internet to find out more about Stoller and his companies. The TTABlog first noted the Stoller TTAB activity last month and discussed it here and here.


A review of those extension requests should perhaps begin with a recitation of a few more statistics. Most of the requests have been filed in the name of Sentra Industries, Inc.: by my count, 339 extension requests since Dec. 10, 2005. [A search of the TEAS database fails to reveal any trademark registrations owned by that company. Stoller does, however, offer to license hundreds of purported marks at his rentamark website. See in particular his "e-marks" webpages].

In November and December, Stoller also filed extension requests in the name of Central Mfg. Co., Central Mfg. Inc., or Central Mfg. Co. (Inc.): 70 requests since November 1, 2005.

And finally, the entity called Stealth Industries, Inc. filed 35 extension requests since December 2, 2005.

The details may be found, of course, at the TTABVUE database by entering the words Sentra, Stealth, and Central Mfg. in the "party" box, or the word Stoller in the "correspondent" box. Among the Applicants whom Stoller has targeted are Whoopi Goldberg (MAKIN' WHOOPI), Jimmy Buffett (ONE PARTICULAR LAGER), and Donald Trump (10 marks, 9 of which comprise or include the word TRUMP). Major corporations in his sights include Nike, Comcast, DaimlerChrysler, Hershey, IBM, Hyundai, Hitachi, Konica Minolta, Michelin, Sun Microsystems, Johnson & Johnson, BP, the BBC, DreamWorks, Nasdaq, Target, Cheeseborough-Pond's, Wal-Mart, and Conagra. Also joining in the fun and games are the Dallas Cowboys, FIFA, and the Australian Football League.

If Mr. Stoller proceeds to file all of these oppositions, the filing fees alone will amount to more than $120,000, even assuming that each application is opposed in a single class. Beginning around February 1, we will begin to see whether Mr. Stoller puts his money where his mouse is.

Stoller Bankruptcy Filing: Lance Johnson of the Washington, D.C. firm of Roylance, Abrams, Berdo & Goodman, L.L.P., reports that in December 2005 Mr. Stoller filed for bankruptcy protection in the federal court in Chicago. (here, with links to the court filings here). The first creditor's meeting is scheduled for January 24, 2006. Lance has been litigating the Central v. Pure Fishing case in the federal court in Chicago (discussed here and here).

Hepa Appeal Back on Track: On January 5th, the TTABlog reported the dismissal of Central Mfg. Co.'s appeal in Central Mfg. Co. v. Hepa Corp., Opposition No. 91152243 (July 12, 2005) [not citable]. (blogged here) The CAFC has recently recalled the mandate in that case and has re-instituted the appeal. Apparently Appellant Central has cleared up a problem regarding admission of its counsel to appear before the appellate court.

Other Developments: Target Brands, Inc. has commenced a cancellation proceeding (No. 92045336) against Central Mfg. Co., seeking to cancel one of Stoller's STEALTH registrations for the mark shown below on the left. The petition for cancellation was filed about one month after Central filed a request for extension of time to oppose Target's application to register the mark shown on the right.


The California law firm of Gordon & Rees LLP recently filed a declaratory judgment complaint against Stoller after receiving a letter challenging its use of the mark LEGAL FIRE POWER for legal services. Stoller claims rights in the mark FIRE POWER, and obviously he is involved in many legal matters.

Just imagine what would happen if each of the applicants involved in those 400-plus extension requests were to bring a declaratory judgment action in the federal court! Unlike in TTAB proceedings, where an officer may appear on behalf of a corporation (Rule 10.14(e)), in a federal action a corporation must be represented by an attorney. Mr. Stoller would have to hire counsel in each case to represent his company. [And, of course, courts have the power to award monetary relief, issue injunctions, etc., while the TTAB has only limited jurisdiction.]

Call for Information: If you have any information regarding Mr. Stoller and his activities that you would like to share with TTABlog readers, please send it along.

Text Copyright John L. Welch 2006

Proposed TTAB Rules Require Initial Disclosure, Discovery Conference

On January 17, 2006, the USPTO issued a Notice of Proposed Rulemaking that would effect major changes in TTAB procedure, and particularly in TTAB discovery practice. The PTO expects the proposed rules to increase "the efficiency of the processes for commencing inter partes cases" and "the efficiency by which discovery and pre-trial information is exchanged."


The PTO's Notice provides the following summary:

The United States Patent and Trademark Office (Office) proposes to amend its rules to require plaintiffs in Trademark Trial and Appeal Board (Board) inter partes proceedings to serve on defendants their complaints or claims; to utilize in Board inter partes proceedings a modified form of the disclosure practices included in the Federal Rules of Civil Procedure; and to delete the option of making submissions to the Board in CD-ROM form. In addition, certain amendments clarify rules, conform the rules to current practice, and correct typographical errors or deviations from standard terminology.

The new rules make sweeping changes in TTAB discovery practice. For example, they require the parties to engage in a discovery conference prior to the opening of the discovery period, and to provide "initial disclosure." The Board's standard protective order will apply in all cases. Disclosure of expert witnesses will take place in the middle of the 180-day discovery period. And certain pre-trial disclosure will occur 30-days before the opening of the testimony periods.

Comments on the proposed rule changes are due by March 20, 2006.

TTABlog note: With regard to the "initial disclosure," the proposed rules themselves do not set out exactly what must be disclosed. Instead, Rule 2.120(a)(1) refers to the provisions of the Federal Rules of Civil Procedure relating to automatic disclosure, and states that those provisions are applicable "in modified form, as noted in these rules and further explained in documents posted on the Web site of the Office." In the "Background" portion of the the Notice (page 2501), the PTO states that "parties will generally be found to have met their initial obligations if the provide information" about various listed items, which information the Board apparently feels comprises the "core information" that should be provided without the need for "traditional discovery."
.

In a Citable Decision, TTAB Cancels Three "TUNDRA" Registrations on the Ground of Fraud

Canadian clothing maker Standard Knitting was run over by a Toyota Tundra in its attempt to block the Japanese car maker's registration of the mark TUNDRA for "automobiles and structural parts thereof." The Board, in its first citable decision of 2006, cancelled the three registrations relied on by Standard, finding that Standard's false statements to the PTO regarding use of its marks on certain clothing items constituted fraud. The Board also dismissed Standard's common law-based likelihood of confusion claims in view of the vast differences between the goods of the parties. Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006).


Fraud: Not since Medinol Ltd. v. Neuro Vasx Inc. in 2003 has the Board rendered a citable decision on the issue of fraud. However, in a number of non-citable decisions it has made it clear that false statements to the USPTO are not excusable and indeed render an application void ab initio and a registration invalid in its entirety. Perhaps the Board felt it was again time to send its message in citable form.

Opposer Standard's three registrations for the marks TUNDRA and TUNDRA SPORTS listed various men's, ladies' and children's clothing items. Discovery revealed that, when Standard filed its two underlying use-based applications and when it filed its Statement of Use in the third application, it had not used the marks on "at a minimum, most, if not all, of the items of children's clothing identified in each of the three registrations." Under applicable precedent, that clearly constituted fraud.

Standard claimed that the false statements were the result of honest mistake rather than fraudulent intent, that it did not understand the term "use in commerce" and thought it meant "made or sold," and that it "had a reasonable belief, after making inquiries, that the marks were being used with the listed goods." The Board was unmoved:

"Mr. Groumoutis's asserted mistake, assuming it truly was a mistake, was not a reasonable one. The language in the application that the mark 'is now in use in commerce' is clear and its meaning is unambiguous. It was not reasonable for Mr. Groumoutis to believe that if the items of clothing were ever made or sold, even if the last sale took place 20 years ago, it would support a claim that the mark 'is' in use on the goods."

Moreover, the Board ruled, Opposer's claim of innocence was not credible. Even if Mr. Groumoutis believed that "use" meant "made," he could not have believed that the marks were used in the United States because Opposer's clothing items were not made in the United States. "This is not a situation where opposer misunderstood the significance of the statement it signed. Rather, opposer disregarded the significance."

The Statement of Use was signed by a person who had "no idea which, if any, of the listed items were being sold in the United States," thus evidencing a "reckless disregard for the truth."

The Board noted that "proof of specific intent to commit fraud is not required, rather, fraud occurs when an applicant or registrant makes a false material representation that the applicant or registrant knew or should have known was false. General Car and Truck Leasing Systems, Inc. v. General Rent-A-Car, Inc., 17 USPQ 1398, 1400 (S. D. Fla. 1990)." Getting to the nub of the matter, the Board declared:

"It is important to note that the United States Patent and Trademark Office relies on the thoroughness, accuracy and honesty of each applicant. In general, the Office does not inquire as to the use of the mark on each good listed in a single class and only requires specimens of use as to one of the listed goods, relying on applicant's declaration with regard to use on the other listed goods. TEMP Sections 806.01(a) and 904.01(a) (4th ed. 2005). Allowing registrants to be careless in their statements of use would result in registrations improperly accorded legal presumptions in connection with goods on which the mark is not used."

The Board therefore ordered that the three registrations be cancelled in their entireties. [In the alternative, the Board ruled that, should its fraud ruling be overturned on appeal, the registrations will be restricted to delete from the registration the "offending" goods.]

Likelihood of Confusion: Because the fraud ruling affected only the registrations, Standard was entitled to proceed on its common law rights vis-a-vis its Section 2(d) claims. The Board rejected Standard's contention that its marks are strong and instead found them suggestive of clothing products.

As to the goods, the Board found "no persuasive evidence that ... purchasers would expect these vastly different goods to emanate from the same source." Standard submitted a number of third-party registrations for marks registered for both clothing and automobiles, but the Board gave the registrations little weight:

"Third-party registrations are not proof of sales of the products shown therein; nor are they evidence that the marks shown therein are in use or that the public is familiar with them, or even aware of them. See AMF Inc. v. American Leisure Prods., Inc., 177 USPQ 268 (CCPA 1973)."

Furthermore, the Board noted, the goods of the parties are sold in completely different marketing channels. Standard contended that the channels overlap because "both parties market their products over the Internet." It proffered printouts from eBay showing that clothing and vehicles may be found at that website; the Board observed, however, that entering the word "tundra" into the eBay search engine yields "a randomly ordered listing of hundreds of 'tundra' goods, including cars and car parts, clothing, duck decoys, cereal bowls and underwater photo equipment" This is "clearly not proof that all these goods move in the same channels of trade or that they would be perceived as emanating from a common source."

Finally, the Board pointed out that Toyota's automobiles are expensive and would be purchased only after careful consideration, thus reducing the likelihood of confusion.

The Board therefore dismissed the opposition.

TTABlog comment: The fraud ruling in this case was fairly straightforward and inevitable under the facts at hand. The Section 2(d) discussion is noteworthy because of the Board's downplaying of the significance of the third-party registration evidence. Of course, Examining Attorneys cite third-party registrations all the time under Albert Trostel/Mucky Duck to establish the relatedness of goods and/or services. This decision may be of some help in reining in an overly-aggressive Examining Attorney who runs amok with Mucky Duck.

Text Copyright John L. Welch 2005.

TTAB Finds "KEEP RUNNING" and "KEEP WALKING" Confusingly Similar for Footwear

Asics Corporation failed to get any traction in its attempt to reverse the PTO's Section 2(d) refusal of the mark KEEP RUNNING for "athletic shoes." The Board found the mark likely to cause confusion with the mark KEEP WALKING, registered in word and design form for various clothing items, including shoes and sneakers. In re Asics Corp., Serial No. 76190823 (January 4, 2006) [not citable].

Faced with the fact that the goods identified in the application and one of the registrations overlap, and that athletic shoes are closely related to other clothing items in the registrations, Asics argued that there are "substantial differences between the types of goods identified in the application and cited registrations as well as differences in the trade channels for the goods." It asserted that registrant is a "world famous supplier of whiskey under the brand name JOHNNIE WALKER," that the goods of the registrations are sold in promotion of the whiskey, and that consumers would recognize that these goods are "collateral to registrant's primary goods." Moreover, these collateral products "would likely be provided exclusively through trade channels where whiskey is sold or promoted," whereas Asics is a "world famous manufacturer" of footwear and its goods are sold where athletic shoes are sold.

Unfortunately for Asics, its arguments were irrelevant because likelihood of confusion is determined in view of the identification of goods set forth in the application and registrations, "rather than on the basis of what the record may reveal as to the nature of the goods, or the actual channels of trade or purchasers for the goods." See, e.g., Octocom Systems, Inc. v. Houston Computer Services Inc., 16 USPQ2d 1783 (Fed. Cir. 1991). Registrant's clothing items are not limited to a "promotional function for its alcoholic beverages," nor are there any limitations on the channels of trade.


Asics' argument regarding the cost of its shoes and the sophistication of purchasers was unsupported by any evidence. The Board observed that Asics' shoes could be purchased by ordinary consumers, and there was no evidence that such consumers would exercise anything other than ordinary care.

Turning to the marks, Asics contended that they "connote drastically different ideas:" the mark KEEP WALKING is used as a marketing theme to promote Registrant's whiskey, whereas "applicant's mark has the connotation of physical exercise." The Board, however, was not impressed; it found that the "overall similarities in the marks strongly outweigh their differences."

"Further, the marks convey substantially similar meanings and overall commercial impressions. As the examining attorney points out based on dictionary definitions of the two terms, running is simply a faster version of walking. Thus the two slogans convey a very similar message or instruction in relation to athletic shoes and exercise wear such as jogging suits."

Finally, the Board observed that Asics contentions regarding the "asserted fame or recognition of ASICS or JOHNNIE WALKER marks" are irrelevant, since ASICS is not part of Applicant's mark and JOHNNIE WALKER is not part of the registered marks. "[T]he commercial impression of a mark is not determined by extrinsic evidence as to its affiliation with a particular entity."

In light of the similarity of the marks and the relatedness or identity of the goods, the Board affirmed the Section 2(d) refusal to register.

Text Copyright John L. Welch 2006.

Recommended Reading: Best Practices for Registering Product Configuration Trade Dress

In "Trade Dress 101: Best Practices for the Registration of Product Configuration Trade Dress with the USPTO," 95 Trademark Reporter 1374 (November-December 2005), authors Karen Feisthamel, Amy Kelly, and Johanna Sistek provide helpful advice on how to register product configuration trade dress.

Wal-Mart Stores, Inc. v. Samara Bros., Inc.,529 U.S. 205, 54 USPQ2d 1065, 1069 (2000)
The authors first discuss the two main "hurdles" to registration of product configuration trade dress -- functionality (TrafFix) and distinctiveness (Wal-Mart) -- and review the current PTO examination approach to these issues. Moving from theory to practice, they then peruse the file histories of a number of successful applications for registration in order to determine what Section 2(f) evidence (if any) was required by the Examining Attorney to support registration. Finally, they offer tips for conducting a clearance search vis-a-vis a product configuration mark.

The authors suggest that counsel contemplating the filing of such a product configuration application first review the applicant's patent portfolio and advertising materials to determine whether the product configuration trade dress "was previously covered by a utility patent" and whether the applicant has promoted the utilitarian advantages of the configuration. They suggest that, as a result, counsel may recommend that applicant "modify its advertising to promote the produce configuration trade dress as a source identifier (i.e. 'look-for' advertising) rather than as a source of a utilitarian advantage." (p. 1390). [TTABlog comment: if the boastful advertising has already run, modification is surely too late; and there's not much to be done about the patents.]

Trademark practitioners are not often called upon to register product configuration trade dress. This article provides a welcome refresher course on product configuration law and practice.

TrafFix Devices Inc. v. Marketing Displays Inc.,532 U.S. 23, 58 USPQ2d 1001, 1006 (2001)
TTABlog note: For a discussion of the TTAB's approach to trade dress issues since Wal-Mart and TrafFix, I immodestly suggest my own article entitled "Trade Dress and the TTAB: If Functionality Don't Get You, Nondistinctiveness Will," 18 Allen's Trademark Digest 5 (November 2004). [An updated but condensed version appears as Section II.C. of my article, "The TTAB in 2004: What Was Hot, What Was Not," 19 Allen's Trademark Digest 1 (July 2005).] In the earlier version, I observed:

"Trademark practitioners, given the opportunity, would advise trade dress clients to avoid "touting" advertising and instead to make use of 'look for' advertising that emphasizes that the design in question is a trademark. Unfortunately, owners of purported trade dress tend to seek the advice of their trademark lawyers only after the success of the product has been established in the marketplace, and by then the 'damage' has often been done, for example, in the form of boastful advertising." 18 Allen's Trademark Digest 5, page 20.

BTW: Neither the TTAB nor the CAFC has issued a precedential decision in the trade dress area since 2004.

TTABlog Thank You: to The Trademark Reporter for granting permission to the TTABlog to provide a link to the Feisthamel et al. article. The article is Copyright © 2005 the International Trademark Association and is reprinted with the permission of The Trademark Reporter®, 95 TMR 1374 (November-December 2005).

Text Copyright John L. Welch 2006.

The Ten Worst TTAB Decisions of 2005?

Babe Ruth failed to hit safely 65% of the time. Michael Jordan missed about half his shots. So is it any wonder that, out of the 500 or so final decisions issued by the TTAB in 2005, there were a few clunkers? I list below what I believe to be the Board's ten worst decisions of 2005. Obviously, these are subjective judgments, and some may disagree with one or more of my selections. My response: they're wrong.

The Big Dig
1. PEI Licensing, Inc. v. Ellis, Opposition No. 91151870 (February 24, 2005) [not citable]. This pro se applicant met the fate of so many pro se parties at the TTAB -- he lost. The Board found the mark ELLIS BLACK for clothing likely to cause confusion with the registered PERRY ELLIS mark. Ruling that "many" consumers would perceive "ELLIS" as a surname [I wonder what this Georgia state legislator thinks about that?], the Board then declared that a "majority" of consumers would believe ELLIS BLACK brand clothing is a line of PERRY ELLIS clothing designed for blacks. [What a great marketing idea that would be! Not!]. (TTABlog discussion here).

2. In re Guber, Serial No. 76469243 (April 22, 2005) [not citable] and In re Guber, Serial No. 76469246 (June 1, 2005) [not citable]. The very same Board panel that in April found the mark CONTACT YOGA to be merely descriptive of publications on the subject of meditation and exercise, in June found the identical mark to be not merely descriptive of "personal exercise mats, exercise blocks and exercise straps" (YOGA disclaimed in both). In each case the same Examining Attorney relied on the same evidence regarding the descriptiveness of the phrase, but the Board inexplicably flip-flopped on the significance of that evidence. and then applied the wrong test. Frankly, the Board got it right the first time. (TTABlogged here and here).

3. Vignette Corp. v. Marino, 77 USPQ2d 1408 (TTAB 2005). In this (unfortunately) citable decision, the Board seemed to condone discovery gamesmanship when it denied Opposer's summary judgment motion on the ground that Applicant's declaration submitted in opposition to that motion raised a genuine issue of material fact, even though Applicant had failed to provide the same information in response to earlier discovery requests. The Board did not demand a "substantial justification" for his withholding of the information, nor a showing that no harm was done, as required by Rule 37(c)(1). (TTABlogged here).


4. In re Ocusoft, Inc., Serial No. 76378707 (June 10, 2005) [not citable]. In a decision that left me rubbing my eyes, the Board found the mark NIGHT & DAY not merely descriptive of opthalmic lubricants because the mark supposedly has a "double connotation or significance in that it evokes the "famous" Cole Porter song 'Night and Day,'" or alternatively evokes the phrase "I've been working night and day." As to the former connotation, where was the proof that this song is famous now? As to the latter, the usage in that phrase actually supports the descriptiveness refusal. (TTABlog discussion here).

5. Wyeth v. Graham, Opposition No. 91124967 (October 24, 2005) [not citable]. This is the kind of decision we sometimes get when one party fails to put in any evidence or make the least effort. In finding confusion likely, the Board provided a wholly unconvincing analysis of the similarities between the marks ADVIL for analgesics and ADVALIFE for vitamins, minerals, and nutritional supplements. The fame of the ADVIL mark and the Board's extreme concern with confusion between health care products sealed Applicant's fate. (TTABlog discussion here).

6. In re Isabella Fiore, LLC, 75 USPQ2d 1564 (TTAB 2005). In this citable but questionable decision, the Board applied the doctrine of foreign equivalents in reversing a Section 2(e)(4) refusal of the mark FIORE for sports bags and purses. Despite the PTO's strong evidence, the Board concluded that FIORE, an Italian word meaning "flower," is "the type of term that potential customers would stop and translate," and therefore FIORE is not "primarily merely a surname." Completely lacking in the opinion is any consideration or analysis of the purpose of Section 2(e)(4) and the propriety of applying the doctrine of foreign equivalents in that context. (TTABlog discussion here).

7. In re Reebok Int'l Ltd., Serial No. 78271326 (October 26, 2005) [not citable]. In another dubious decision regarding Section 2(e)(4), the Board reversed a surname refusal of the mark J.W. FOSTER for footwear, headwear, and clothing. Once again failing to consider the purpose behind Section 2(e)(4), the panel majority employed specious logic in reasoning that the addition of initials to the word FOSTER -- which is not primarily a surname because it has other meanings -- cannot yield a mark that is primarily merely a surname. The dissent had the better argument. (TTABlogged here).


8. In re Fits Corporation KK, Serial No. 76501790 (August 24, 2005) [not citable]. In finding LOVE PASSPORT and PASSPORT confusingly similar for perfume, the Board rejected Applicant's sensible argument regarding the differing connotations of the marks, and instead embraced the PTO's position, offering a stale and unconvincing analysis regarding the significance of "love" in this context, concluding that "the additional word 'LOVE' merely identifies more specifically the goal or destination of the passport." (TTABlog discussion here).

9. Allied Domecq Spirits & Wine USA, Inc. v. Richards, Opposition No. 91116378 (January 25, 2005) [not citable]. In sustaining this Section 2(d) opposition to the mark MALIBU ROCKS for "white chocolate covered walnuts and pecans" (MALIBU disclaimed), the Board applied a formulaic du Pont approach in finding a likelihood of confusion with Opposer's mark MALIBU for "liqueur." The Board rejected Applicant's plausible argument that its mark would bring to mind "pebbles strewn on the beaches of Malibu," and it curiously found the products to be related because they "could be served during the course of a single meal." (TTABlogged here).

10. In re Savisa (Pty) Ltd., Serial No. 78154196 (February 24, 2005) [not citable]. The Board blindly applied the doctrine of foreign equivalents in finding the marks SUNRISE and SUNOP (Afrikaans for sunrise) confusingly similar for wine. It found that Afrikaans is not an obscure language and it pointed to the diversity of the U.S. population and the "innumerable" foreign languages used in the American marketplace. However, it ignored the CAFC's Palm Bay decision, which held that the doctrine of foreign equivalents should be applied only when the "ordinary American purchaser would 'stop and translate [the word] into its English equivalent.'" (TTABlogged here).

Text and photographs Copyright John L. Welch 2006.

TTAB Finds "DIABETES RISK TEST" Generic for ... Guess What?

There was no sugar coating on the Board's affirmance of a genericness refusal of the phrase DIABETES RISK TEST for "educational services, namely, providing the public with a questionnaire developed to assess an individual's risk factors for developing diabetes." The Board went on to hold, in the alternative, that the phrase (if not generic) lacked secondary meaning under Section 2(f). In re American Diabetes Association, Inc., Serial No. 76149772 (January 6, 2006) [not citable].


Examining Attorney Robert L. Lorenzo relied on dictionary definitions of the component words, and on NEXIS articles show pertinent use of the terms "risk test(s)" and (most importantly) "diabetes risk test(s)."

Applicant contended that the "media uses" of "diabetes risk tests" were "so indeterminate as to be insufficient proof of generic use." It claimed use of the phrase for nearly two decades, with "substantially no use of DIABETES RISK TEST by others."

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 ruled (with little discussion) that the genus of the services "is accurately reflected by the recitation of services in the involved application." The next question was whether the relevant public understands the term primarily to refer to that genus.

Applicant's specimens of use included a webpage setting forth the "seven-question questionnaire" comprising the "Diabetes Risk Test." Although many of the NEXIS references referred to Applicant's test, the evidence led the Board to conclude that "diabetes risk test" is "used in a generic manner in the medical field to name a specific type of test, that is, a test to determine if one is at risk for developing diabetes." Furthermore, "it is clear that ordinary consumers would understand the designation primarily to refer to a specific type of risk test."

The Board noted that Applicant sought to register a service mark, not a trademark, but it pointed to the legal principle that "a term which is generic for a particular class of goods is also deemed generic for the services of selling those goods." [See, e.g., In re Candy Bouquet Int'l, Inc., 73 USPQ2d 1883 (TTAB 2004)]. The same principle applies even though Applicant distributes the test free of charge, rather than selling it.

The Board therefore concluded that DIABETES RISK TEST is generic for the identified services.

For purposes of completeness, the Board also considered Applicant's Section 2(f) claim of acquired distinctiveness (assuming the phrase is not generic). The applicable standard "is extremely difficult to meet since, if DIABETES RISK TEST is not generic for applicant's services, it must be highly descriptive of them."

Applicant's CEO declared that the phrase has been in use since 1988, that some 27 million tests have been distributed, and that its DIABETES RISK TEST website was visited 57,000 times in the last half of 2001. The Board noted that this evidence indicates that the test "has been popular among health-conscious Americans," but it pointed out that these numbers were not put in context in relation to other risk tests distributed in the medical field and other websites offering risk tests. "Standing alone," these numbers "appear to be less than impressive in the enormous medical field." Most significantly, "this evidence does not show that the relevant consumers of applicant's educational services (namely, ordinary consumers) have come to view the designation DIABETES RISK TEST as applicant's source-identifying mark."

In short, "much more evidence (especially in the form of direct evidence from the relevant public) than what applicant has submitted would be necessary to show that the mark has become distinctive of applicant's services."

TTABlog genericness test: I am a series of questions designed to assess your risk of developing diabetes. What would you call me?
Uhhhh, a diabetes risk test?

TTABlog note: In no way do I mean to make light of the seriousness of this terrible disease. I recommend the series of article on diabetes, published by the New York Times this week. Link here (you may need to be a subscriber).

Text Copyright John L. Welch 2006

What is the TTAB Affirmance Rate for Ex Parte Refusals? The TTABlog Reports

A painstaking review of the TTAB's decisions for the past year has yielded the following approximate statistics regarding the Board's affirmance rate for ex parte refusals.

Kenmore Square, BostonClick on photo for larger picture
By my reckoning, in 2005 the TTAB issued final decisions in 341 ex parte appeals: 174 involving Section 2(d) refusals, 94 Section 2(e)(1) mere descriptiveness refusals, 27 genericness refusals, and 10 Section 2(e)(4) surname refusals. The remainder were scattered among other Section 2 (e) cases, functionality refusals, failures to function as a mark, rejected specimens, etc. The results:

• Section 2(d) likelihood of confusion ---80% affirmed


• Section 2(e)(1) mere descriptiveness ---86%


• Genericness ---61%


• Section 2(e)(4) surname --- 60%

These figures may be somewhat surprising: one might expect the Section 2(d) rate of affirmance to be higher than the 2(e)(1) rate because in 2(d) cases, the Board will lean toward protection of the registered mark against the newcomer, while in mere descriptiveness cases the Applicant gets the benefit of the doubt. On the other hand, there is usually more room for argument in likelihood of confusion cases under the various du Pont factors. In genericness cases, the PTO must provide clear evidence to support a refusal, and hence the affirmance rate is likely to be lower. As to surname cases, the number of decisions is probably too small to allow one to draw a meaningful conclusion.


Other TTAB 2005 facts and trivia:

• Total number of final decisions: approximately 500


• Longest decision: 74 pages (CAREFIRST)


• Shortest decision: 3 pages (ALL AMERICAN WOMAN, MEDIATION WORKS) [Tie]


• Longest applied-for mark: 182 words (THE LEGEND OF THE DUCKS ...)


• Dissenting opinions: 2 (WIFE BEATER and J.W. FOSTER)


• New Judges: 3 (Kuhlke, Walsh, and Zervas)


• Retiring Judge: 1 (Chapman)

Text and photograph Copyright John L. Welch 2006.

TTAB Again Reverses 2(d) Refusal Based on Unimpressive Third-Party Registration Evidence

For the second time in two weeks, Judge Seeherman took a dim view of the PTO's third-party registration evidence and penned a TTAB reversal of a Section 2(d) refusal. On December 23rd it was the Gravity Systems case, blogged here. This time the Board reversed a refusal of the mark WATERSTONE for hedge fund management services, finding it not likely to cause confusion with the mark WATERSTONE BENEFIT ADMINISTRATORS & design, registered for "administration of self-insured employee benefit plans" ("BENEFIT ADMINISTRATORS" disclaimed). In re Waterstone Capital Management, L.P., Serial No. 78223503 (December 30, 2005) [not citable].


Not surprisingly, the Board saw the word WATERSTONE as the dominant part of the registered mark, and it found the marks to be similar in "appearance, pronunciation, connotation and commercial impression."

The Examining Attorney contended that the involved services "are of a kind that may emanate from a single source." Applicant asserted that its hedge fund management services and Registrant's benefit plan administration services are "distinct and highly specialized" and that "the same consumers would not be exposed to both [marks] under circumstances likely to lead to source confusion."

The PTO submitted 21 third-party registrations, relying as usual on In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993), for the proposition that such registrations "which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or services are of a type that may emanate from a single source."

The Board, however, noted that only one of the registrations "may be said to list the specific services identified in the application or the cited registration, and even in this registration the services are not exactly the same." The other 20 registrations did not specifically include hedge fund services.

The Examining Attorney contended that since the recitations of services in the third-party registrations are broad, they are presumed to encompass all services of the type described, including hedge fund management services. The Board pointed out that this is "an overstatement of the probative value of third-party registrations."

When considering the applied for mark and the registered mark, the Board must look to the goods and services as identified in the involved application and registration, and must assume that (absent express limitations) the registration encompasses "all goods [and services] of the nature and type described, [and] that the identified goods [and services] move in all channels of trade that would be normal for such goods [and services]." Not so for third-party registrations:

"when third-party registrations are being submitted for the purposes of showing that goods or services are related, the same presumptions of Section 7(b) of the Trademark Act do not apply. *** third-party registrations are not evidence that the marks shown therein are in use, or that consumers are familiar with them. They simply 'serve to suggest that the listed goods and/or services are of a type which may emanate from a single source.'"

Here, the 20 third-party registrations did not show that the involved services are related. Moreover, the one registration of pertinence "does not appear to cover 'administration of self-insured employee benefit plans.'"

"Rather, it appears to us ... that hedge funds are a specialized investment tool and that even companies which offer a variety of investments and financial services do not normally offer hedge fund management services."

The Board therefore found that "the factor of the similarity of the services" favored Applicant.

Next, the Board observed that "people who invest in hedge funds are relatively wealthy" and experienced in investing.

"As far as we can tell, the only people who are likely to be purchasers of both applicant's and the registrant's services would be a high level executives or owners of a company who would be choosing an entity to administer the self-insured employee benefits plans for that company, and who would have the means to be candidates to invest in a hedge fund."

Because the number of persons in this category is "relatively limited, the Board found that "the factor of the potential for confusion, i.e., that it is de minimis, favors applicant."

Finally, the sophistication of the purchasers and the care they would exercise (given the sums of money involved), was another factor that favored applicant.

Therefore, the Section 2(d) refusal was reversed.

Text Copyright John L. Welch 2006.

TTAB Says "VAULTZ" for Purses Not Primarily Merely a Surname

The rarity of the surname "Vaultz" and its suggestiveness for "purses" led the TTAB to conclude that the mark VAULTZ is not primarily merely a surname. In re IdeaStream Computer Products LLC, Serial No. 76543788 (December 27, 2005) [not citable].

VAULTZ CD wallet
The Examining Attorney found, at best, 60 listings of "Vaultz" as a surname, many for individuals from the New Orleans area. Some of the PTO's evidence was well out-of-date, while some came from "websites such as those hosting message boards or family reunions," which websites are likely to have limited public exposure. In sum, "it is clear that VAULTZ is a rare surname."

As to the meaning of the term, the Board agreed with Applicant IdeaStream that VAULTZ is suggestive in relation to the goods because VAULTZ is the phonetic equivalent of "vaults" and implies that "the purses sold under the mark will be solidly constructed and contain certain features that will protect their contents."

Finally, the Board rejected the Examining Attorney's assertion that VAULTZ has the look and feel of a surname, noting that there is "no evidence properly of record to support this contention." The Board oddly observed:

"because VAULTZ is the phonetic equivalent of a suggestive term, it would not be perceived as a surname, and thus would not have the look and feel or sound of a surname. Instead, VAULTZ has the look and feel of a misspelling of the non-surname word "vaults."

The Board therefore reversed the Section 2(e)(4) refusal to register.

TTABlog comment: On the look-and-feel issue, the Examining Attorney might have pointed to the former basketball player with the New York Nets (in the old American Basketball Association), Billy Paultz. Vaultz? Paultz? Same difference.

Billy Paultz

Text Copyright John L. Welch 2006.

Leo Stoller files 75 Extension Requests at the TTAB in First 5 Days of 2006

Leo Stoller has started off the new year in high gear. In the first five days of 2006, his company, Sentra Industries, Inc., filed 75 Requests for Extension of Time to oppose a wide range of marks. Sentra is identified as a Delaware corporation with a Chicago post office address.


For example, Sentra requested an extension of time to oppose Application Serial No. 76976704 for the mark MUNDIAL 2006 for various goods and services in classes 9, 16, and 41, filed by Federation Internationale de Football Association (FIFA), the organizer of soccer's World Cup. The Request for Extension of Time was filed electronically and signed by Mr. Stoller as President/CEO. The ESTTA form includes a space for stating the "good cause" that justifies granting the extension of time; Mr. Stoller took advantage of that opportunity to include the following unconventional statement:

"Please e-mail idms4@hotmail.com and/or call 773-589-0340 WORLD CUP TRADEMARK Licensing to resolve this controversy and/or file an express abandonment! See our website www.rentamark.com"

The other requests appear to contain similar statements.

A search of the USPTO database failed to reveal any registrations in the name of Sentra Industries, Inc. Apparently Mr. Stoller will be claiming common law rights.

The TTABlog reported here last week that Stoller had filed more than 200 extension requests in November and December 2005. In 2006, Stoller is thus far averaging 15 per day; if he can keep up that pace he will file more than 5,000 during the year.

Text Copyright John L. Welch 2006.

TTAB Citable Decisions for 2005 Total 18

A flurry of citable decisions in the last few months of 2005 brought the final total of TTAB citable decisions for the year to 18. The 2004 tally of 13 pales in comparison.

Kenmore Square, Boston

The issue that caught the particular attention of the Board in 2005 was the genericness of Internet domain names. In three cases it deemed a domain name to be generic: BLINDSANDDRAPERY.COM, SPORTSBETTING.COM, and LAWYERS.COM. Perhaps this TTAB focus was a response to the CAFC’s rulings on the same or related issues in its STEELBUILDING.COM (In re Steelbuilding.com, 75 USPQ2d 1420 (Fed. Cir. 2005)), and PATENTS.COM (In re Oppedahl & Larson LLP, 71 USPQ2d 1370 (Fed. Cir. 2004)) decisions. In the three TTAB decisions, the Board distinguished one or both of the CAFC cases, noting that in Steelbuilding the word “steelbuilding” is a double entendre, and in Oppedahl that only in exceptional cases will a top-level domain name (TLD) have trademark significance.

Decisions of particular note include three Section 2(d) cases: Knight Textile, in which third-party registration evidence led the Board to dismiss an opposition involving the addition of Applicant’s house mark NAUGHTON McNAUGHTON to the Opposer’s registered mark ESSENTIALS; Blue Man Productions, wherein the Board set a high standard for proof of fame in a Section 2(d) context; and Carefirst of Maryland, in which the Board found the marks CAREFIRST and FIRSTCAROLINACARE not to be “identical or very or substantially similar,” as required for a dilution claim.

Two other decisions, however, were of questionable merit: Isabella Fiore, in which the Board applied the doctrine of foreign equivalents in a Section 2(e)(4) context without any analysis of the purpose of the surname refusal; and Vignette, wherein the Board seemed to encourage discovery gamesmanship by allowing a party to delay the revelation of information until disclosure was convenient.

Set out below is a list of the citable decisions, arranged by category and accompanied by a comment or two regarding each. Of course, these brief summaries are no substitute for the full reading that each decision deserves.


Section 2(c) - Individual's Consent to Register:

• Krause v. Krause Publications, Inc., 76 USPQ2d 1904 (TTAB 2005). In a rare Section 2(c) decision, the Board granted a petition for cancellation of a registration as to 3 of 4 classes, finding that Petitioner would be connected with some of the goods and services in those 3 classes by persons with interest in the field of coin collecting and antique autos, but denying cancellation as to the fourth class because the general public would not connect Petitioner with certain class 41 entertainment services. The Board also found that Petitioner, although he participated in the founding and financing of Respondent, had not consented to registration of his surname. (TTABlogged here).

Section 2(d) - Likelihood of Confusion:

• Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005). Third-party registration evidence played a crucial role in the Board’s dismissal of this Section 2(d) opposition to registration of the mark NORTON MCNAUGHTON ESSENTIALS for women’s clothing. In light of the appearance of the word ESSENTIALS in 23 third-party registrations in the clothing field, the Board concluded that "applicant’s addition of its house mark [to Opposer's ESSENTIALS mark] ... suffices to distinguish the two marks." (TTABlog discussion here).


• DC Comics v. Pan American Grain Mfg. Co., 77 USPQ2d 1220 (TTAB 2005). Applicant's bad faith in choosing its mark was an important factor in the Board's decision sustaining this opposition to registration of KRIPTONITA for "prepared alcoholic fruit cocktail." The Board found the mark likely to cause confusion with the mark KRYPTONITE, used as a merchandising mark for a variety of goods, including several food items. (TTABlogged here).


• Blue Man Productions, Inc. v. Tarmann, 75 USPQ2d 1811 (TTAB 2005). The Board found Opposer’s evidence inadequate to support its fame claim, ruling that "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, ... it is the duty of a plaintiff asserting that its mark is famous to clearly prove it." As to Opposer’s dilution claim, the Board held that, since Opposer failed to prove the mark famous for Section 2(d) purposes, it could not possibly meet the “stricter standard" for dilution. (TTABlogged here).


• Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492 (TTAB 2005). The Board chastised counsel for their disruptive and contentious behavior and then dismissed these oppositions based on Section 2(d) and dilution allegations. A thorough du Pont analysis led the Board to conclude that, in light of significant third-party use of "care" and "first" and the caution with which the services would be purchased, confusion is not likely between CAREFIRST and FIRSTCAROLINACARE for health care services. In dismissing the dilution claim, the Board found the marks not "identical or very or substantially similar," as required. (TTABlog discussion here). [This case is now on appeal to the CAFC].
  

Section 2(e)(1) Mere Descriptiveness:

• In re The Place, Inc., 76 USPQ2d 1467 (TTAB 2005). Finding the mark THE GREATEST BAR to be merely descriptive of restaurant and bar services, the Board rejected Applicant's double entendre argument because the second meaning of a mark must be apparent from the mark itself, without reference to the applicant's trade dress, advertising materials, or other matter. (TTABlog discussion here).

Memorial Drive, Cambridge
Section 2(e)(4) Primarily Merely a Surname:

• In re Isabella Fiore, LLC, 75 USPQ2d 1564 (TTAB 2005). In this questionable decision, the Board applied the doctrine of foreign equivalents in reversing a Section 2(e)(4) refusal of the mark FIORE for sports bags, purses, and other goods in class 18. Despite the PTO's strong evidence, the Board concluded that FIORE, an Italian word meaning "flower," is "the type of term that potential customers would stop and translate," and therefore FIORE is not "primarily merely a surname." Completely lacking in the opinion is any consideration or analysis of the purpose of Section 2(e)(4), or the propriety of applying the doctrine of foreign equivalents in that context. (TTABlog discussion here).

Genericness:

• In re Eddie Z's Blinds and Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005). The Board ruled that BLINDSANDRAPERY.COM is generic for various services relating to the distribution and sale of blinds and drapery, including retail sales via the Internet. The Board took the opportunity to comment on the CAFC's Oppedahl decision by noting that, although it is possible that a TLD may have trademark significance, that will be the case only in "exceptional circumstances." (TTABlog discussion here).


• In re KRB Seed Co., LLC, 76 USPQ2d 1156 (TTAB 2005). In what cannot really be dubbed a "seminal" case, the TTAB again laid down the lawn [another pun!] by reiterating that "varietal names are generic designations and cannot be registered as trademarks." Consequently it affirmed a refusal to register the term varietal name REBEL as a trademark for "grass seed." (TTABlog discussion here). [Now on appeal to the CAFC].


• In re DNI Holdings Ltd., 77 USPQ2d 1435 (TTAB 2005). The Board found SPORTSBETTING.COM to be generic for various Internet gaming services (which services excluded "actual money wagers"). It wrestled with how to define the genus of the services, but concluded that the term is generic regardless of whether actual betting is included in the genus. (TTABlogged here).


• In re Reed Elsevier Properties Inc., 77 USPQ2d 1649 (TTAB 2005). The Board 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." Applicant argued that its deletion of the word "lawyers" from its original recitation of services "limited its covered services," but the Board found the genus to include the provision of "information about lawyers and information from lawyers." (TTABlog discussion here).
  

Author's Name as a Trademark:

• In re First Draft, Inc., 76 USPQ2d 1183 (TTAB 2005). The Board ruled that an author'’s name or pseudonym is registrable for a series of books under appropriate circumstances -- when through use the name has come to represent an assurance of quality, or when promotion of the name has led to its recognition as a mark -- but it agreed with the PTO that, based on the skimpy record evidence, FERN MICHAELS does not function as a trademark for Applicant'’s novels. (TTABlogged here)

Brighton, MA
Use in commerce:

• First Niagara Ins. Brokers Inc. v. First Niagara Financial Group, Inc., 77 USPQ2d 1334 (TTAB 2005). The Board dismissed a Section 2(d) opposition because the Canadian Opposer failed to establish "use of its pleaded marks on insurance brokerage services regulable by Congress." Finding Opposer's activities in the U.S. to be "minimal and incidental," the Board ruled that Opposer "cannot establish priority and cannot prevail on its claim of likelihood of confusion." (TTABlogged here).

Discovery Issues:

• Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 74 USPQ2d 1672 (TTAB 2005). The Board exercised its power to control discovery under FRCP Rule 26 in granting a protective order prohibiting three depositions and limiting three others as to duration and scope, and also by ordering Applicant to request certain documents from its survey expert and produce them, or file a declaration explaining why it could not. (TTABlog discussion here).


• Vignette Corp. v. Marino, 77 USPQ2d 1408 (TTAB 2005). In a decision that seems to encourage discovery gamesmanship, the Board denied Opposer's summary judgment motion on the ground that Applicant's declaration submitted in opposition to the motion raised a genuine issue of material fact, even though Applicant had failed to provide the same information in response to earlier discovery requests. The Board did not require Applicant to provide "substantial justification" for his withholding or show that no harm was done, as required by FRCP 37(c)(1). (TTABlogged here).

Procedural Issues:

• PPG Indus., Inc. v. Guardian Indus. Corp., 73 USPQ2d 1926 (TTAB 2005). The Board accepted an unsigned Notice of Opposition attached to an ESTTA filing that included an electronic signature, ruling that the electronic signature on the ESTTA form "pertains to any attachments." (TTABlog discussion here).


• In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB 2005). In a decision that merely reiterates what Trademark Rule 2.102(a)(2) says, the Board issued a "wake-up" call to the TTAB bar, highlighting the Madrid Protocol-related rule change that requires an opposition against a Section 66(a) application to be filed electronically, not on paper. (TTABlogged here).


• Turbo Sportswear, Inc. v. Marmot Mountain Ltd., 77 USPQ2d 1152 (TTAB 2005). Although the case was already in Opposer's testimony period, the Board granted an Applicant's motion to add counterclaims seeking cancellation of five asserted registrations, on the ground of fraud. The Board found the motion timely because it was based on evidence of non-use of the pleaded marks that was not previously available to Applicant. (TTABlogged here).

Text and Photographs Copyright John L. Welch 2005-2006.