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.