Citable No. 10: TTAB Says No to "BULLSHIT" in 2(a) "Scandalous" Affirmance

Finding that Applicant Red Bull failed to overcome the PTO's prima facie showing that the term "bullshit" is "offensive to the conscience of a substantial composite of the general public" and therefore scandalous, the Board affirmed a Section 2(a) refusal to register BULLSHIT as a trademark for alcoholic and non-alcoholic beverages, and as a service mark for hotel, restaurant, bar, and various other services. In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006).


Evidentiary rulings: The PTO relied on dictionary definitions indicating the word "bullshit" to be vulgar, and on the TTAB's decision in In re Tinseltown, 212 USPQ 863 (TTAB 1981), in which the Board found the mark BULLSHIT to be scandalous for handbags and personal accessories. Applicant objected to the dictionary definitions as untimely because they were first offered with the PTO's brief, but the Board pointed to its "long history of taking judicial notice of definitions excerpted from print dictionaries and submitted after appeal."

Several of the PTO's definitions, however, were obtained via the Internet, but the Board overruled Red Bull's objection because the source of the definitions "are reliable, widely-available print publications." The Board also found a definition from the Encarta Dictionary to be acceptable because that dictionary, although not a printed publication, "is a widely-known reference that is readily available in specifically denoted editions via the Internet and CD-Rom." As such, it is the "electronic equivalent of a print publication and applicant may readily verify the excerpt."

Finally the Board refused to take judicial notice as to one PTO definition excerpted from www.wordsmyth.net because the source was not identified on the excerpt submitted by the PTO, and thus its reliability could not be verified.

Applicant Red Bull submitted a definition of "bullshit" from WordNet 1.6, which is available only online. ["a ludicrously false statement"]. The Board curiously found this evidence acceptable because it was submitted "prior to appeal." In addition, "to supplement and clarify" the evidence submitted by Red Bull, the Board also took judicial notice of the definitions of "bullshit" from the current edition (2.0) of WordNet.

Section 2(a): In addition to its dictionary definition, Red Bull submitted an essay entitled "On Bullshit" by Princeton Philosophy Professor Harry Frankfurt, as well as evidence regarding the Showtime cable network television show, "Penn & Teller: Bullshit!" It argued that the Tinseltown decision is out-of-date, that "'bullshit' is generally not viewed as a 'curse' of scandalous proportion," and that the word is "not generally used as a term of scatalogical import and significance."

Finally, Red Bull contended that its mark "is an obvious play on the expression BULLS HIT, where a 'Hit' is a drink or, in some parlance, an inhale or ingestion of some substance - in this case one or more 'Red Bulls.'" The TTAB found that argument to be total b.s.

The Board noted that there was no dispute about the definition of the term "bullshit" as "ludicrously false statements, lies, exaggerations, boasts, nonsense, foolish deceitful language." Moreover, it found that the submitted dictionary definitions "support the conclusion that the term 'bullshit' is as vulgar today as it was at the time of the Tinseltown decision."


As to the Princeton essay, the Board observed that it was written, at least in part, "tongue-in-cheek." Furthermore, "the article itself acknowledges that the term is considered a profanity." As to the Penn & Teller evidence, the Showtime website refers to the program as "taboo," and most of the articles about the show essentially characterize the title of the show as a profanity. The Board noted that Red Bull provided no evidence of "the extent of exposure of the American public to either the Penn and Teller program or the Professor Franklin essay."

Finally the Board distinguished the BIG PECKER BRAND case, In re Hershey, 6 USPQ2d 1470 (TTAB 1988), relied on by Red Bull, on the ground that "the primary meanings of 'pecker' to the general public are innocuous, rather than vulgar."

The Board concluded that Red Bull failed to overcome the PTO's prima facie case.

TTABlog comment: I don't understand why an Internet-only dictionary definition is acceptable if submitted prior to appeal, but not acceptable if submitted with the brief on appeal. Isn't it just as unreliable either way? Shouldn't the determinative factor be the reliability of the reference work? If the online dictionary also appears in print form, that lends some permanence (and therefore reliability) to its definitions. But an online-only dictionary (think Wikipedia) can be changed at a moment's notice.

Text Copyright John L. Welch 2006.

CAFC Ruling Deals Another Blow to Enforcement of Design Patents

Trade dress protection for product shapes became a bit more important last week, after the CAFC issued its ruling in a design patent case called Lawman Armor Corp. v. Winner Int'l LLC, 77 USPQ2d 2017 (Fed. Cir. 2006). The court made life much more difficult for the design patent plaintiff by holding that, in applying the "point of novelty" test for design patent infringement, a patentee cannot combine a series of points of novelty into a further point of novelty.

U.S. Design Patent D-357,621SLIDING HOOK PORTION OF A VEHICLESTEERING WHEEL LOCK ASSEMBLY
There are two distinct tests for design patent infringement, both of which must be satisfied by the patentee: the "ordinary observer" test and the "point of novelty" test.

"The 'ordinary observer' test requires comparison of the two designs from the viewpoint of the ordinary observer to 'determine whether the patented design as a whole is substantially the same as the accused design.' [citations omitted] Under the 'point of novelty' test, a court must determine whether 'the accused device ... appropriate[s] the novelty in the patented device which distinguishes it from the prior art.'"

The Lawman decision concerned the second test. Plaintiff-patentee Lawman listed eight points of novelty for its steering wheel lock design, but it did not challenge the district court's ruling that these eight points were shown in prior art patents. Instead, Lawman argued that the combination of these eight non-novel points in a single design was itself a ninth point of novelty. The Board rejected that approach:

"This argument is inconsistent with, and would seriously undermine, the rationale of the 'points of novelty' test. *** If the combination of old elements shown in the prior art is itself sufficient to constitute a 'point of novelty' of a new design, it would be a rare design that would not have a point of novelty. The practical effect of Lawman's theory would be virtually to eliminate the signficance of the 'points of novelty' test in determining infringement of design patents, and to provide patent protection for designs that in fact involve no significant changes from the prior art."

The CAFC therefore affirmed the district court's summary judgment of non-infringement.

The decision is very puzzling, since there is no inherent reason why the overall design of a product could not itself be novel and nonobvious, even though each element of the design might be found in some piece of prior art. For example, suppose one built a car with pieces from eight different vehicles. Couldn't the overall design be inventive, even though the individual parts were not?

Moreover, if there is no novelty in the Lawman design, shouldn't the patent have been declared invalid? Why even get to the infringement issue?

Late in December 2004, the TTABlog commented here on an article by Perry J. Saidman and Allison Singh in which the authors lamented the demise of the Supreme Court's "ordinary observer" test (Gorham Co. v. White, 81 U.S. (14 Wall.) 511 (1871)) in design patent infringement cases. The requirement of a Markman hearing in design patent cases, they argued, was a fundamental error that has "mortally wounded" the Gorham test.

The Lawman decision is another body blow to the design patent plaintiff. As stated above, to prove infringement, the patentee must pass both the "ordinary observer" test and the "point of novelty" test. The Markman hearing requirement made the first test much more difficult. The Lawman decision has done the same to the "points of novelty" test.

TTABlog postscript: The Lawman decision also directly contradicts the CAFC's rulings in Avia Group Int'l, Inc. v. L.A. Gear California, Inc., 7 USPQ2d 1548 (Fed. Cir. 1988) and L.A. Gear Inc. v. Thom McAn Shoe Co., 25 USPQ2d 1913 (Fed. Cir. 1993).

Text Copyright John L. Welch 2006.

Merchant & Gould To Hold "Power Breakfast" on Proposed TTAB Rule Changes

Denizens of the Twin Cities (no, not Champaign-Urbana. Minneapolis-St. Paul!) should note that Merchant & Gould will be hosting a "Power Breakfast" presentation on the proposed TTAB rule changes. Date: March 7, 2006. Time: 9-10 A.M. You may sign up here.

The Merchant & Gould announcement states:

The Trademark Office has proposed significant procedural changes to contested proceedings. The proposed changes, which move TTAB practice even closer to Federal Rules practice, include:

* Party service of Notices of Opposition, Petitions for Cancellation

* Detailed Mandatory Initial Disclosures (with expected disclosure of information on origin of mark, dates of use, actual confusion evidence, third party use, non-trademark use of mark, classes of customers, channels of trade, current and past use of mark, surveys, other disputes related to mark)

* Expert disclosures, including identification and summary of subjects on which witness will testify

* Mandatory party discovery conference

* TTAB protective order form as the default order (in force absent party stipulation)

The TTAB is taking comments on the proposed rules until March 20, 2006. Learn how the proposed rules could greatly change TTAB practice and discuss possible comments.

Comments may be e-mailed to AB56Comments@uspto.gov. So far, no comments have been posted at the USPTO website comment page, here.

TTAB Says No-No: "YAYA" 2(d) Opposer Failed to Make Prima Facie Case

Robert J. Thate's Section 2(d) opposition to registration of the marks YAYA and YAYA.COM for computer game software and related Internet services spun briefly, wobbled, and then fell over hopelessly on its side. Thate claimed that the opposed marks would be likely to cause confusion with his YAYA & Design mark (shown below), registered for "toys, namely, spinning tops." Thate v. YaYa, LLC, Oppositions Nos. 91152180 et al. (February 6, 2006) [not citable].

The record in this consolidated proceeding was threadbare: the pleadings, the files of the opposed applications, and a status-and-title copy of Thate's registration. Only Thate, appearing pro se, filed a brief.


The Board found the marks to be similar in sound, appearance, connotation, and commercial impression. The stylization in Thate's mark was seen as "relatively minimal," and the ".COM" portion of Applicant's mark as "hardly sufficient to distinguish the mark from Opposer's mark."


As to the goods and services, because Thate introduced no evidence other than his registration, the similarity therof is determined "solely upon a consideration of the identifications of goods and services in the respective registration and applications." Thate argued in his brief that computer games and spinning tops are both "entertainment products," that both are likely to be marketed on the Internet, and that a large segment of potential customers "will lack the sophistication necessary to discern the differences between the goods and services offered by both parties." Unfortunately for Opposer Thate, his arguments were unsupported by any proof.

"[T]here is no evidence in the record to establish a relatedness between opposer's spinning tops and applicant's computer games offered on the Internet and applicant's Internet services related thereto. Any relationship between the specific goods and services involved herein on which to base a finding of likelihood of confusion is not apparent from the face of the involved registration and applications."

The Board therefore found that Opposer Thate had failed to make out a prima facie case, and it dismissed the oppositions.

Text Copyright John L. Welch 2006.

TTAB Finds "OXYGROW" and "AUXIGRO" Confusingly Similar for Fertilizer

Relying on Petitioner Emerald Bioagriculture's linguistics expert, the Board found the marks OXYGROW and AUXIGRO to be virtually identical in pronunciation and, when used for overlapping goods (chemical compositions for enhancing plant growth), confusingly similar. The Board therefore granted Emerald's Section 2(d) petition for cancellation of the OXYGROW registration. Emerald Bioagriculture Corp. v. Biosafe Systems, LLC, Cancellation No. 92042503 (February 9, 2006) [not citable].

Because each party in this cancellation proceeding owned a registration for its respective mark, the Board first observed that Petitioner Emerald must establish priority of use; in other words, the registrations of the parties offset each other. However, each party may rely on its registration for the limited purpose of proving that its mark was in use as of the application filing date. Brewski Beer Co. v. Brewski Bros., Inc., 47 USPQ2d 1281 (TTAB 1998).

Here, Emerald's registration was based on an application filed on March 27, 1997. Respondent Biosafe Systems testified that it first use its mark "somewhere around 2001." Therefore, Emerald had priority.

The critical issue in the Board's du Pont analysis was the first factor: the similarity of the marks. Emerald's expert testified that

"in normal speech most speakers of North American English would pronounce these two words as homophones, that is, identically or with only slight and largely imperceptible difference in the initial vowels, and ... most hearers would perceive no difference between the two words without visual clues."

The Board agreed that the marks "would be pronounced by many, if not most, prospective purchasers virtually identically."

As to appearance, the Board found certain similarities: each mark contains seven letters, ends with a "gro[w]", and has an "X" in the middle. However, it not surprisingly agreed that "the overall spelling of the words is different."

As to meaning, the Board noted that neither mark is a common English word, but "[a]s pronounced, their meanings would be indistinguishable." With regard to commercial impression, "it is likely that they would suggest 'oxygen' and 'growing' in the context of fertilizer."

The Board concluded that, "[o]verall, the marks are similar because their pronunciations are virtually identical and their meanings and commercial impressions would be somewhat similar."


Turning to the goods, the Board found them to be "at least in part, virtually identical." Because there are no limitations in the identifications of goods, the Board assumed that the goods travel in all normal channels of trade, to an overlapping class of customers. Nothing in the identifications of goods indicated that the purchasers would necessarily be sophisticated.

As to the "decisive" issue -- the similarity of the marks -- the Board once again pointed out that, because the goods involved are in part virtually identical, the degree of similarity between the marks necessary to support a finding of likely confusion is decreased. The Board ruled that "[t]he marks here are phonetically identically [sic]."

"While fertilizer is not necessarily always purchased by verbally ordering the product, these products would be discussed among farmers, gardeners, and others. Radio and television could be used to promote these products as well as to report news about the products. The pronunciation of the marks would be virtually identically [sic (again)] and confusion under these circumstances would be likely."

The Board therefore granted the petition for cancellation.

TTABlog comment: I guess I'm in the minority, because I would pronounce the prefix "oxy" like the word "Bob" (i.e., with a soft "ahhh" sound), but the prefix "auxi" like the word "talk" or "hawk" (with an "aw" sound). But then, I grew up on the South Side of Chicago, the heartland of correct pronunciation. Bostonians, however, pronounce "Bob" as "bawb," so they might pronounce OXYGROW and AUXIGRO in the same way. So maybe these marks are confusingly similar in Boston, but not elsewhere?

Do regional dialects play any part in the Board's 2(d) analysis? What if the marks in question are pronounced alike only in one region of the country? In less than half the country? By only a certain ethnic group?

And how does this decision fit with the Board's oft-stated principle that there is no correct pronunciation of a trademark? (See, for example, the ISHINE case discussed here and the AMAVIO case discussed here).

Text Copyright John L. Welch 2006.

Leo Stoller TTAB Extension Requests Top 550 in Last Three Months

After several quiet weeks, frequent TTAB litigant Leo Stoller is at it again. In the past week (February 12 through 16), Stoller filed, in the name of Sentra Industries, Inc., 115 requests for extension of time to oppose. That brings his total in the last three months (since November 20, 2005) to more than 550. They say that records are made to be broken, but this one may last quite a while (we hope). And he's probably not done yet!


New members of the "Friends of Leo" club include Hilton Hospitality, the Spanish Broadcasting System, L'Oreal, West Publishing Corp., Nationwide Insurance Co., Faberge, Ernst & Young, Mitsubishi, and the National Geographic Society. Among the marks being targeted are LEO for snack foods, HARRY BEAVER'S for restaurant services, GHETTO USA for clothing, CHUG-IT for beverages, and a Tiger Woods' signature mark (see below) for clothing and golf items.

Tiger Woods signature
Of course, when Stoller files these requests for extension (which are promptly, and apparently automatically, approved by the TTAB), he does not reveal any details as to what relevant trademark rights he claims to own. He does, however, typically provide contact information for his supposed licensing program: for example, with regard to the Tiger Woods signature mark, Stoller states:

"Please contact idms4@hotmail.com 773-589-0340 TIGER BRAND CONSUMER GOODS TRADEMARK LICENSING to resolve this trademark controversy and/or merely file an Express Abandonment. See Rentamark.com the largest internet trademark licensing firm and trademark enforecement [sic] firm."

Stoller lists hundreds of supposed marks at his rentamark.com website (see the "e-marks" page), but I don't see any TIGER mark.

To review Stoller's filings, surf to the TTABVUE database and insert "Stoller" in the "Correspondent" box. For prior TTABlog discussions of Stoller's extension request filings, start here and follow the various links to prior postings.

Text Copyright John L. Welch 2006.

TTAB Sustains "TUMS" Section 2(d) Opposition to "MR. TUMEE"

Here's a recipe for success in a Section 2(d) opposition: start with a very strong or famous mark, mix in identical goods, add one or two similarities extracted from the involved marks, and there you have it. [Sound familiar? See the Starbucks case blogged yesterday.] That concoction caused some heartburn for Applicant Moba, Inc. in its attempt to register the mark MR. TUMEE for vitamins and nutritional supplements. The Board found the mark likely to cause confusion with the mark TUMS, registered for antacids and calcium supplements. SmithKline Beecham Corp. v. Moba, Inc., Opposition No. 91155236 (February 8, 2006) [not citable].


The Board noted that Applicant Moba's nutritional supplements include calcium supplements, and thus to that extent the parties' goods are identical. Moreover, both parties sell other vitamin products, and therefore "applicant's vitamin and other nutritional products would also be related to opposer's calcium supplements." Given the lack of any limitation in Moba's and Tums' identification of goods, the Board assumed that they travel in identical channels of trade to an overlapping group of potential purchasers. [In fact, although Moba's products are actually marketed primarily for children while Tums' products are marketed primarily for adults, children and adults "can use" both products.]

Turning to the marks, the Board incisively observed that they contain the same three letters (TUM), but are otherwise different "because applicant adds the title 'Mr.' and the diminutive '-ee.'" However,

"They look somewhat similar since they feature 'TUM' as a prominent part of both marks. Their meanings would have a similar suggestive meaning referring to the stomach. Their commercial impressions would have some similarity especially since purchasers would likely believe that opposer's TUMS and TUMS FOR THE TUMMY calcium supplements and antacids are now available for children. *** Taken together, we conclude that opposer's marks TUMS and TUMS FOR THE TUMMY and applicant's mark MR. TUMEE are slightly more similar than they are different."

The Board resolved "the fame factor" in favor of Opposer, based on unrebutted testimony that awareness studies show 80% unaided awareness of the TUMS mark, on testimony that TUMS is "in more households" than any other over-the-counter product other than Tylenol, and on proof of sales of more than $200 million and advertising expenditures in the $40-50 million range in 2002.


The Board "readily" admitted that the likelihood of confusion is "a close question." Although there are differences in the marks, they have "enough similarities to conclude that the marks are not dissimilar." Moreover,

"The goods are in part identical, opposer is considering expanding the breath [sic] of its TUMS product line, opposer's mark has achieved significant public recognition and renown, purchasers may be impulse purchasers, and the goods are sold at least in overlapping channels of trade and to the identical purchasers."

Resolving all doubts in favor of the prior registrant, as it must, the Board sustained the opposition.

Text Copyright John L. Welch 2006.

California Man Opposes "DYKES ON BIKES" Service Mark Application

Michael J. McDermott of Dublin, California has filed an opposition to the application of the San Francisco Women's Motorcycle Contingent to register the mark DYKES ON BIKES for "Education and Entertainment Services in the nature of organizing, conducting, and promoting parade contingents, community festivals, events, street fairs, forums, seminars, parties and rallies to support, organize and motivate women motorcyclists everywhere to do the same, thereby fostering pride in a wide variety of sexual orientations and identities, namely lesbian, bisexual and transgender." (Opposition No. 91169211, filed on February 15, 2006).


In a long and rambling opposition document, McDermott, appearing pro se, alleges that the word "dyke" fosters hatred of males and that issuance of a registration for the DYKES ON BIKES mark would amount to an endorsement of this hatred by the USPTO.

The DYKES ON BIKES application was previously discussed here and here at the TTABlog.

Trademark Blog discussion here.

Text Copyright John L. Welch 2006.

TTAB Citable No. 9: "LESSBUCKS COFFEE" Confusingly Similar to Famous "STARBUCKS" Mark

In its ninth citable decision of 2006, the TTAB rejected Marshall S. Ruben's ITU application to register LESSBUCKS COFFEE for coffee and retail store services ("COFFEE" disclaimed). The Board sustained a Section 2(d) opposition brought by Starbucks Coffee Company, finding STARBUCKS to be "truly a famous mark" and according it a "broad scope of protection" under the fifth du Pont factor. Starbucks' survey evidence removed any doubt about the similarity of the marks. Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741 (TTAB 2006).


Starbucks introduced staggering evidence of the fame of its mark, including: $10 billion in sales and $150 million in marketing expenditures during 2001-2004; 5,000 company-owned and licensed stores throughout the country; 11 million consumer transactions per week; and 350,000 hits per week at its website. As of 2004, nearly half of all American consumers had visited a Starbucks' location. "In fact, opposers have shown that industry, business, brand leaders, and the general public have recognized STARBUCKS as one of the most famous brands in the world."

Of course, the "fame factor" plays a dominant role in the du Pont analysis. "[T]he Federal Circuit has stated repeatedly that there is no excuse for even approaching the well-known trademark of a competitor insasmuch as '[a] strong mark ... casts a long shadow which competitors must avoid.'" (citing Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 22 USPQ2d 1454, 1456 (Fed. Cir. 1992)).

The Board next found that the involved goods and services are identical (in part), and that Ruben's identified goods and services are presumed to travel through the same channels of trade to the same classes of customers as those of Starbucks.

Ruben feebly argued that Starbucks' customers are careful, sophisticated purchasers, but Starbucks contended that its products are relatively inexpensive and may be purchased by ordinary consumers at retail stores, grocery stores, and warehouse club stores. The Board noted that Ruben did not provide any evidence that "coffee lovers are sophisticated in terms of a likelihood of confusion analysis." Instead, the Board found that consumers "devote limited attention to such goods and services, and thus are more susceptible to confusion."

Turning to the marks, the Board noted again that when marks appear on virtually identical goods and services, the degree of similarity between the marks necessary to support a likelihood of confusion declines. Here, "both marks -- STARBUCKS COFFEE and LESSBUCKS COFFEE -- consist of two words having similar cadence. Both STARBUCKS and LESSBUCKS contain nine letters, two syllables, and end in the identical term, BUCKS." Moreover, as to STARBUCKS COFFEE and LESSBUCKS COFFEE, Applicant Ruben admitted that "visually, when typed the same, they look like similar letters."

The Board then turned to Starbucks' survey evidence, concluding that is was "reliable and therefore of probative value." Despite Ruben's objections, the Board found the format of the survey (which paralleled the Ever-Ready survey), to be appropriate.

"Turning to the results of the survey, almost half of the ordinary consumer participants who encountered the term LESSBUCKS COFFEE believed that the products offered under the LESSBUCKS designation were in some way connected with STARBUCKS. When the interviewer asked what made them believe that there was a connection or association between LESSBUCKS COFFEE and STARBUCKS, substantially all of the respondents referred to the similarity of the marks."

The Board noted that the marks have different meanings, but it concluded that, in their entireties, they "are sufficiently similar as to appearance, sound and overall commercial impression, such that this du Pont factor weighs strongly in opposers' favor."

Finally, the Board addressed Ruben's "parody" argument. Ruben, believing that Starbucks charges too much, argued that his mark "will be perceived as a play on the word STARBUCKS that simply suggests applicant's products cost 'less' than those of Starbucks or other competitors." Thus customers are not likely to be confused because the joke will be obvious and the fame of the STARBUCKS mark diminishes any likelihood of confusion. The Board was not amused. First, it pointed out Ruben's inconsistency when he testified that he did not choose the LESSBUCKS mark to play off the STARBUCKS mark, while also maintaining that his mark is a parody of STARBUCKS. Second, the Board observed that, under the case law, "joking uses of trademarks are deserving of less protection when the object of the joke is the mark of a directly competing product." And thirdly, the results of the survey provide evidence that the supposed "parody" does not diminish the likelihood of confusion.

Weighing all the pertinent du Pont factors, the Board found confusion likely.

The Board declined to reach the merits of Starbucks' dilution claim, and it likewise declined to consider Opposer's claim that Ruben lacked a bona fide intention to use his mark in commerce.

TTABlog comment: Wow! That survey evidence was a killer. Without that, the Board would have faced a real interesting decision.

As to Starbuck's dilution claim, one wonders how that would have fared. Are the marks "identical or very or substantially similar," as required by Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1178 (TTAB 2001)?

Text Copyright John L. Welch 2006.

"COLD DOG" Mark Gets Cold Shoulder in TTAB 2(d) Appeal

Applicant Stephen Wild barked up the wrong tree when he tried to overturn the PTO's Section 2(d) refusal to register his mark COLD DOG for bulk ice cream. The Board found the mark confusingly similar to the registered mark COOL DOG for frozen confections and for dessert food products for sale to food services and retail companies (including ice cream). In re Wild, Serial No. 76580478 (January 31, 2006) [not citable].


Applicant Wild lamely argued that the marks are dissimilar in appearance and pronunciation and have different connotations, since "cool" in Registrant Cool Dog Inc.'s mark "has the apt and more appropriate meaning of 'socially adept.'" The Board was not moved:

"both applicant's and registrant's goods include ice cream and other frozen confections so the definitions referring to low temperatures are likely to be the ones that prospective purchasers associate with the marks."

In addition, the Board found that, although the marks "do not sound very similar," the appearances of the marks are "somewhat similar" and the commercial impressions of the marks are "very similar." In sum, the only difference between the marks is "the emphasis on the greater degree of coldness in applicant's mark (cold v. cool)."

"Prospective purchasers encountering these marks would understand that the marks are a play on the term "Hot Dog.' To the extent that prospective purchasers would notice the difference between 'cold' and 'cool,' they are likely to believe that they are slightly different versions of ice cream products from the same source."

As to the goods, there was little to argue about, since they are in part identical: "Dessert food products for sale to food services and retail companies, namely, ice cream would include bulk ice cream."

Finally, Applicant Wild contended that purchasers of its goods would be sophisticated, but the Board found that this factor does not eliminate the likelihood of confusion: "Institutional buyers are not infallible or necessarily able to distinguish very similar marks used on identical goods."

The Board therefore affirmed the refusal to register.

Text Copyright John L. Welch 2006.

"GENTLE LIPS" and "GENTLE GEL" Confusingly Similar for Lip Balm, Says TTAB, Unconvincingly

In a decision as irritating as a chapped lip, the Board affirmed a Section 2(d) refusal to register the mark GENTLE LIPS for "non-medicated lip balm" ("LIPS" disclaimed), finding the mark likely to cause confusion with the registered mark GENTLE GEL for "non-medicated lip and gum gel" ("GEL" disclaimed). In re Oralabs, Inc., Serial No. 76569020 (January 31, 2006) [not citable].

Applicant Oralabs got nowhere with its argument that the involved goods are dissimilar. It first pointed to Registrant's website, which indicates that Registrant's product is "a gel used by dentists to desensitize the affected area of a patient's mouth after dental surgery." Thus, Oralabs asserted, Registrant's gel "in fact, has nothing to do with lips." Oralabs the pointed to Registrant's original identification of goods, which read: "non-medicated gel for use by dental professionals in combination with a dental electro-surgical product." Moreover, Oralabs asserted that, unlike its product, Registrant's gel would not be sold to the public in retail stores and would not be an impulse purchase.

The Board once again noted that its likelihood of confusion determination must be made in light of the goods as identified in the involved application and registration, regardless of the actual nature of the goods or their channels of trade. Thus Oralabs' attempt to introduce such limitations was pointless.

The Board then found the involved products to be "very closely related, if not virtually identical": both are lip care products with soothing and healing properties. Internet and third-party registration evidence confirmed that lip balm and lip gel are products that may emanate from the same source.

Turning to the marks, Oralabs contended that they differ in appearance, sound, and connotation (i.e., the applied-for mark suggests that "gentle lips" may be achieved by use of Applicant's product, whereas the cited mark suggest that the product itself is gentle). The Board, however, found the opposite.

"The shared term, GENTLE, is visually and aurally the most significant portion of both marks. It is the first word in each mark and, moreover, it is the only nondescriptive portion of the marks. *** The identical first word GENTLE is followed in both marks by short, one-syllable words, LIPS and GEL, having only one letter difference in length. As a result, the two marks as a whole have a visually similar structure and a similar sound and cadence."

Noting that marks are not to be compared side-by-side and that the recall of purchasers is "often hazy and imperfect," the Board concluded that "it is the overall 'gentleness' concept and impression that purchasers are likely to remember when seeing these marks at separate times on virtually identical goods, not the slight difference in meaning."

Lip service?
Finally, Oralabs submitted Internet and third-party registration evidence in arguing that the term GENTLE is a weak formative in the cosmetics field and is used by "many others" to describe their products. The Board agreed that GENTLE is suggestive of Registrant's lip gel, but it found the evidence insufficient to show that the public would be so familiar with marks containing the word GENTLE as to "rely on other portions of the marks to distinguish them."

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

TTABlog comment: The Board's comparison of the marks was less than convincing. Who cares if the second word in both marks is a short, one-syllable word? Aren't the overall appearance and sound more important? GENTLE LIPS and GENTLE GEL don't look or sound similar to me. And isn't the word GENTLE highly suggestive, not just suggestive, and therefore a very weak formative? Frankly, I don't think consumers are as dumb as the TTAB makes them out to be.

In any event, an Applicant in Oralabs' position might that a look at Section 18 of the Trademark Act, which permits partial cancellation of a registration if the identification of goods is overly broad. See, for example, the TTABlog discussion of the Gospel Music Association case (here).

Text and Lip photo Copyright John L. Welch 2006.

"CHICKS RULE" Double Entendre Argument Lays Egg at TTAB

Applicant David & Goliath hatched an unsuccessful plot to overcome the PTO's Section 2(d) refusal to register the mark CHICKS RULE for various clothing items, including pajamas. The Board sided with the PTO, finding the mark confusingly similar to the mark GIRLS RULE, registered for clothing items, including pajamas. In re David & Goliath, Inc., Serial No. 78356644 (January 30, 2006) [not citable].

With the goods legally identical and with no limitations on the channels of trade or the classes or purchasers, the Board's du Pont analysis was easily unscrambled: it boiled down to a comparison of the marks. As usual, the Board pointed out that when identical goods are involved, the degree of similarity necessary to support a likelihood of confusion decreases.

The Board found the marks "highly similar," observing that they "both consist of two-word phrases that have the same connotation in each mark." Applicant pointed to a dictionary definition of the word "chick" in asserting that "the meaning of a newly hatched chicken creates a double entendre, distinguishing it from the mark in the cited registration." The Board, however, noted that Applicant's own dictionary reference alternatively defined "chick" as "slang a young woman."

"[V]iewed in the context of applicant's clothing, the slang meaning, young girl, would be apparent to the consumer. We fail to see how CHICKS used in connection with the identified goods (e.g., panties, pajamas, and thongs) would bring to mind newly hatched chickens."

Applicant next asserted that the word RULE is a weak formative because it is "laudatory, descriptive, and unprotectable": it "merely indicates that females, and in particular females wearing the clothing on which the mark appears, are superior in some sense to others." Consequently, according to Applicant, the differences in sound and appearance sufficiently distinguish the marks.

Not so, the Board responded: "Far from being laudatory, GIRLS RULE and CHICKS RULE consist of a colloquial phrase that, while it may be laudatory of females, is not laudatory of clothing." The Board concluded that, although the word CHICKS and GIRLS are different, "the marks in their entireties have some similarities in appearance and pronunciation in terms of their overall formation. Therefore, we do not believe that this difference in the two words creates marks with an overall different commercial impression."

TTABlog comment: The GIRLS RULE registration is owned by Lloyd E. Cotsen, former Chairman and CEO of Neutrogena Corporation. A passionate collector of Japanese bamboo baskets, Cotsen donated his collection to the Museum of International Folk Art in Santa Fe, New Mexico. He is also a benefactor of the Cotsen Children's Library at Princeton University, and of the Cotsen Institute of Archaeology at UCLA.

Lloyd E. Cotsen
Text Copyright John L. Welch 2006.

TTAB Suspends "THE LAST BEST PLACE" Oppositions

The Board has suspended until October 1, 2006, two oppositions involving the mark THE LAST BEST PLACE. (Oppositions Nos. 91166060 and 91167193). The Montana State Department of Commerce filed the oppositions against The Last Best Beef, LLC, claiming that the mark is primarily geographically descriptive under Section 2(e)(1).


Opposer claims that, following the use of the phrase as the title of an anthology about the State, THE LAST BEST PLACE has become synonymous with the State of Montana and has been used "innumerable times" by Opposer, by other state agencies, and by the public to describe and promote the State.

Answering the oppositions, Applicant denied the salient allegations and included the following rather strange affirmative defense: "Opposer is barred from maintaining this opposition under the doctrine of acquiescence, as Opposer has failed to take action against third party registrations comprised in dominant part of 'Montana' (i.e., the State's name) and 'Big Sky' (i.e., the State's nickname).

The Board suspended the proceedings on January 6, 2006, "[c]onsistent with the Department of Commerce and Related Agencies Appropriations Act, 2006, Pub. L. No. 109-108, Sec. 206, 119 Stat. 2290, 2314." Section 206 reads as follows:

"Notwithstanding any other provision of this Act, no funds appropriated under this Act shall be used to register, issue, transfer, or enforce any trademark of the phrase 'Last Best Place.'"

Also on January 6, 2006, the USPTO cancelled two registrations that issued to The Last Best Beef LLC on November 22, 2005 (the day the Appropriations Act was signed into law), purportedly in accordance with the Act. And four other applications owned by the Applicant have been suspended under the same authority.

Text Copyright John L. Welch 2006.

TTAB Citable No. 8: Laches Grounds "GOLD SEAL" 2(d) Cancellation Petition

The Board denied a Section 2(d) petition for cancellation on the ground of laches, based on Petitioner Teledyne Technologies, Inc.'s 44-month delay in seeking cancellation of a registration for the mark GOLD SEAL for aircraft engines. Teledyne proved likelihood of confusion with its identical mark previously used for "airplane parts, namely ignition harnesses," but its unexplained delay coupled with the resulting prejudice to Registrant Western Skyways, Inc. proved fatal to its cause. Teledyne Technologies, Inc. v. Western Skyways, Inc., 78 USPQ2d 1203 (TTAB 2006). In its decision, the Board clarified the following point: in the absence of a petitioner's actual knowledge prior to the close of the opposition period, the cancellation laches period does not begin to run until the date the registration issues.



Petitioner Teledyne had trouble at take-off when it failed to introduce its GOLD SEAL trademark registration into evidence. It attached a photocopy of the registration to its petition for cancellation, but it failed to submit a status-and-title copy or to provide appropriate live testimony. However, Teledyne did establish prior common law rights in the mark.

As to likelihood of confusion, the identity of the marks, the relatedness of the goods, the similarity or identity of trade channels, and the overlap in classes of purchaser all pointed in favor of Petitioner. However, the Board noted that the purchasers of the involved goods are likely to be sophisticated, a factor favoring Registrant. And it found that the absence of actual confusion during ten years of concurrent use of the parties' marks also favored Registrant.

Turning to the laches issue, the Board pointed out that the subject registration was issued on March 2, 1999, thereby putting Petitioner Teledyne on constructive notice of Western's claim of ownership. [See TTABlog note below]. The petition for cancellation was filed on October 18, 2002. Teledyne was "conspicuously silent" regarding its reasons for the 44-month delay. Instead it took "the tack that laches does not apply due to the inevitability of confusion."

The Board found that Teledyne's inaction constituted "unreasonable delay," and the question then became whether Western was prejudiced by the delay. Western asserted "economic prejudice based on its development of valuable business and good will around its GOLD SEAL mark during the time petitioner raised no objection."

"economic prejudice to the defendant may ensue whether or not the plaintiff overtly lulled the defendant into believing that the plaintiff would not act, or whether or not the defendant believed that the plaintiff would have grounds for action. *** Economic prejudice arises from investment in and development of the trademark, and the continued commercial use and economic promotion of a mark over a prolonged period adds weight to the evidence of prejudice."

Western invested in and promoted its GOLD SEAL brand during the period of delay (although it did not provide "precise" sales and advertising figures for that period). "The record demonstrates economic prejudice to respondent if its registration were to be cancelled at this point in time." Therefore, the Board ruled that Western had established its laches defense.

Turning to Petitioner's "inevitable confusion" argument, the Board again ruled in Western's favor: although the marks are identical, the goods are not "the same or substantially the same," as required. Moreover, the sophistication of purchasers and the absence of actual confusion weighed against a finding of inevitable confusion.

Consequently, the Board dismissed the petition.

TTABlog note: The Board pointed out that mere publication of Western's application for opposition does not provide constructive notice of its claim. The Board also noted that "It would appear that petitioner's actual knowledge of respondent's business activities under the mark GOLD SEAL occurred after the registration of the mark in issue." Would prior actual knowledge have made any difference? Yes.

"Our decision is intended to clarify this point. That is, in the absence of actual knowledge prior to the close of the opposition period, the date of registration is the operative date for calculating laches" (footnote 10). If a party has actual knowledge prior to the close of the opposition period, then the laches period begins to run on the publication date.

Compare this decision with the Board's citable decision in Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301 (TTAB 2004) [Despite Petitioner's "substantial" and "unexplained" delay of more than seven years before filing petition for cancellation, Respondent failed to prove that material prejudice that would support a laches defense].

TTABlog Update: The CAFC affirmed this decision on December 6, 2006 (blogged here).

Copyright John L. Welch 2006.

Citable No. 7: Canadian Bests Dane in Use-less TTAB Priority Duel

Two non-US non-users of the mark JACK & JONES for clothing squared off in a summary judgment priority contest before the TTAB, with the Canadian applicant besting the Danish opposer. Aktieselskabet af 21. November 2001 v. Fame Jeans, Inc., Opposition No. 91163436 (January 30, 2006).


Applicant Fame Jeans, Inc. filed the opposed ITU application on January 9, 2004. It has not used the JACK & JONES mark in the United States. Opposer filed a Section 44(e) application on December 6, 2004, based upon its ownership of a 1990 Danish registration. Opposer admitted that it has never used the mark in the United States.

Opposer argued that it has rights superior to Applicant's because Opposer is not required to make use of its mark in the United States as a condition of registration; thus its mark is currently eligible for registration while Applicant's is not. Furthermore, Opposer contended that its priority should be recognized "in the interest of justice" because Opposer first registered the mark in Denmark in 1990, has made extensive sales of clothing under the mark, intends to use the mark in the United States, and is indeed ready to do so.

The Board was unmoved by Opposer's arguments. Applicant Fame Jeans is entitled to rely on its fling date as its constructive first use date for purposes of this priority contest. Opposer's earliest date for purposes of priority is its US filing date; its foreign use of the mark is irrelevant. [The Board noted that Opposer did not claim that its mark is "famous under Paris Convention Art. 6bis(1)"].

Opposer failed to cite any authority for the proposition that its Section 44(e) application gives it priority vis-a-vis an earlier filed ITU application, nor for the proposition that its foreign use of the JACK & JONES mark "should be recognized in the interests of justice."

The Board therefore granted Applicant's summary judgment motion.

TTABlog comment: Trademark Rule 2.129 (d) provides: "When a party to an inter partes proceeding before the Trademark Trial and Appeal Board cannot prevail without establishing constructive use pursuant to Section 7(c) of the Act in an application under Section 1(b) of the Act, the Trademark Trial and Appeal Board will enter a judgment in favor of that party, subject to the party's establishment of constructive use."

Was the Board correct in dismissing this case? Or should it have held judgment in abeyance pending Applicant's proof of use of its mark? After all, Applicant's purported constructive use date comes to life only after the mark is registered. Maybe the Board should have dismissed without prejudice and then ordered the PTO to suspend the Dane's application pending registration of the Canadian's application. Would the Board's dismissal ruling then have res judicata effect? Please discuss among yourselves.

TTABlog Postcript: Be sure to check out Opposer's website. Very cool!

Text Copyright John L. Welch 2006.

Sophistication of Purchasers Key to TTAB Reversal of "ME-KEY" 2(d) Refusal

The differences in the goods and the sophistication of purchasers led the Board to reverse a Section 2(d) refusal of the mark ME-KEY for "physical access monitoring devices, namely biometric identification processors." The PTO maintained that the mark was likely to cause confusion with the mark MECARD, registered for encoded smart cards in the field of access control. In re Radian, Inc., Serial No. 76467020 (January 24, 2006) [not citable].


The Board first found that the marks, although having obvious differences in appearance, sound, and commercial impression, are similar in connotation: each suggests a device containing personal information about the owner. The Board concluded that the marks are "somewhat similar," and thus the first du Pont factor favored the PTO's position.

With regard to the goods, Applicant argued that Registrant's goods involve data encoded for reading by a digital data processor, whereas its goods involve processors of raw biometric information, "such as optical scanners for iris recognition, voice analyzers for voice recognition, blood pressure monitors for phsyiological monitoring, etc."

Recognize this?
The Board observed that "while these goods may well be marketed as alternative ways of restricting access, registrant's and applicant's goods are quite different in the way they operate."

The Board agreed with Applicant's argument [despite the lack of evidence regarding the cost of the goods] that "the purchasers of these respective products are likely to be highly sophisticated in security, facilities management and information technology."

"By definition, registrant's and applicant's products will never be impulse purchases, but rather will be subject to sophisticated sales efforts, possible face-to-face meetings and careful customer decision making."

The Board therefore concluded that confusion is unlikely, and it reversed the 2(d) refusal.

TTABlog comment: The sophisticated purchaser argument is seldom successful. Often the proponent fails to provide any supporting evidence, and many times the Board simply pooh-poohs the argument by pointing out that even sophisticated purchasers are not immune to confusion when identical or nearly identical marks are involved. Here, despite the apparent lack of evidence, the Board accepted the sophisticated purchaser argument. I get the feeling that, because the marks were "somewhat similar" and the goods somewhat related, the Board needed something to get it over the hump in order to reverse the refusal. I think it should have found the marks more dissimilar than similar.

Text Copyright John L. Welch 2006.

"FREEDOM FRIES" Not Merely Descriptive of French Fries, Says TTAB (Citably)

Because of a lack of "significant evidence" of descriptiveness, the Trademark Trial and Appeal Board, in its sixth citable decision of 2006, reversed a Section 2(e)(1) refusal to register the mark FREEDOM FRIES for "frozen French fried potatoes" (FRIES disclaimed). In re Grand Forest Holdings Inc., 78 USPQ2d 1152 (TTAB 2006).

The Examining Attorney contended that, after the French criticized the invasion of Iraq by the United States in 2003, "restaurants around the United States, as well as restaurants and snack bars of the United States House of Representatives at the order of several members of the House, substituted the designation 'freedom fries' for French fries as a symbolic gesture of displeasure with the government of France." Because of the resulting publicity, "the purchasing public would recognize the designation FREEDOM FRIES as an alternate, albeit new, descriptive name for French fried potatoes."

Applicant argued that the PTO's evidence showed no such thing: "The pertinent articles of record were all written during a two month time-span, two years ago, at the start of the war and even these articles evidence the unwillingness of the consuming public to adopt the terminology." [Emphasis in original].

The Board reviewed the Examining Attorney's "numerous references," finding the most illuminating one to be an entry in Wikipedia. [TTABlog comment: since Wikipedia is an on-line encyclopedia that may be edited by anyone, how can the Board cite it as a reliable reference?] Applicant pointed to several restaurant menus (e.g., those of McDonald's, Burger King, and Wendy's) on which the name of French fries has not been changed. [TTABlog note: In Boston, however, "New York Strip Steak" has been replaced by "Beantown Beefsteak"].

The Board concluded that it could not agree with the PTO that the evidence of the "renaming of French fries has been considerable" or that there is a "current trend of renaming French fries as 'freedom fries.'"

"While undoubtedly there was a movement underway at one point to change the name of French fries, we have little evidence that would let us conclude that the effort has met with much success. A few press releases, news stories, and a handful of examples of restaurant menu changes are simply not sufficient evidence to support a refusal to register the term as merely descriptive."

Finally, the Board noted that it resolved its doubts in applicant's favor.

TTABlog comment: Sacré bleu! Everyone knows that "freedom fries" are French fries, don't they? Ten years from now (assuming the U.S. is out of Iraq by then) the term may not have that meaning, but it surely does today. While it may be true that restaurants still use the term "French fries" on their menus, that doesn't mean that "freedom fries" isn't recognized by the public as meaning "French fries."

Okay, I understand that the Board is saying that the PTO's proofs weren't good enough here, but it still annoys me that this supposed mark is going to be registered.

One more TTABlog comment: Late in 2004, the Board found the mark NOT MADE IN FRANCE to be merely descriptive of clothing not made in France. (TTABlogged here). Are the two decisions consistent? Unrelated? Does anyone care?

Text Copyright John L. Welch 2006

"WILD GEESE" Runs Afowl of Famous "WILD TURKEY" Mark in TTAB 2(d) Opposition

Applicant Stichting Lodestar was a dead duck when Austin, Nichols opposed its application to register WILD GEESE for beer and alcoholic beverages, including whiskey. The Board found the mark likely to cause confusion with Opposer's mark WILD TURKEY registered (in word and design form) for various alcoholic beverages (including whiskey). Austin, Nichols & Co. v. Stichting Lodestar, Opposition No. 91155165 (January 17, 2006) [not citable].


After disposing of several evidentiary and procedural issues, the Board turned to its du Pont analysis, and specifically to the fifth factor: the fame of Opposer's mark. Based on Opposer's extensive sales, advertising, and media coverage, sixty years of use of the mark, and wide distribution of collateral merchandise, the Board deemed WILD TURKEY to be a famous mark entitled to a broad scope of protection.

Turning to the second, third, and fourth du Pont factors, the Board found Applicant's beer and other alcoholic products to be related or identical to Opposer's goods. Given the absence of any restrictions on channels of trade, the Board presumed that the goods travel in the same trade channels to the same classes of purchasers (and the record showed that the goods do in fact travel in the same channels). As to the sophistication of customers, the Board concluded that the parties' goods would be purchased by ordinary consumers without a great deal of care. [TTABlog note: after consumption of the goods, the purchasers would care even less].


Finally, as to the first du Pont factor, the Board found that, given the broad scope of protection to be accorded Opposer's mark, the similarities in the marks outweigh their differences. "[D]espite the difference[s] ... the commercial impression and general connotation of wild game birds, creates a confusingly similar mark."

Applicant argued that the term WILD is weak in view of "numerous third-party registrations and uses of the word WILD in connection with various alcoholic and non-alcoholic beverages." It also contended that TURKEY should be accorded narrow protection in view of the "numerous registrations and uses of bird names" in connection with the involved goods. However, the Board found that those third-party uses and registrations (for, e.g., DR. WILD, WILD RIVER, THE WILD BUNCH, WILD THING) did not show that the term WILD has some "ordinary significance" in the field of beverages. The third-party registrations and uses of bird names "have even less probative value," because "they present a variety of names, do not point to ordinary usage of a particular term, and do not show that the words in issue here, TURKEY and GEESE, are so widely used that consumers are able 'to discern between several competing products having similar, but not identical, product names and bird images.'"

Noting that any doubt on the 2(d) issue must be resolved in favor of the prior registrant, the Board sustained the opposition.

Text Copyright John L. Welch 2006.

TTAB Shocker: "SUPER" Not Merely Descriptive of Vehicle Lights

In a confounding, perplexing, and downright flummoxing decision, the Board reversed a Section 2(e)(1) refusal to register the mark SUPER, finding it not merely descriptive of vehicle lights. In re Truck-Lite Co., Serial No. 76532510 (January 26, 2006) [not citable].


The Examining Attorney relied on a dictionary definition, on disclaimers in third-party registrations, and on third-party Supplemental Registrations, in maintaining that SUPER "merely describes that applicant's vehicle lighting products 'are of a higher quality or are superior to similar products on the market.'"

Applicant Truck-Lite argued that the mark is suggestive and not merely descriptive because it does not immediately convey any particular idea about or reveal any characteristic of the goods, because the term is "not normally associated with lighting products for vehicles," and because others in the field have neither used the term nor need to use it.

After reviewing the cases cited by the PTO and by applicant, "as well as other Board decisions," the Board distilled the following: "in general, if the word 'super' in a mark is combined with the generic name of the goods, or if the goods come in various grades or sizes, then the mark is merely descriptive rather than suggestive." Here, the Board acutely pointed out, SUPER is not combined with the generic name of the goods, nor is there evidence that lighting products come in various sizes or grades, nor evidence that "super" has been used as a "descriptive designator" in the field.

The Board then found SUPER to be "suggestive and not merely descriptive," observing that "[t]here is a certain ambiguity about the mark." "Some thought or imagination would be required on the part of prospective purchasers in order to perceive any significance of the mark as it relates to applicant's goods."

As to the third-party registrations cited by the PTO, the Board "readily" conceded that "they tend to show that in the past the Trademark Examining Operation has viewed the term 'super' to be merely descriptive for certain goods and services. However, we note that none of the third-party registrations cover goods of the type involved in this appeal."

The Board therefore reversed the refusal.

TTABlog comment: Why is the word SUPER when joined with a generic term deemed to be descriptive, but not descriptive when the generic term is missing? So this means that had applicant sought to register SUPER LIGHT, the word SUPER would be descriptive. But how is the mark SUPER any less descriptive than SUPER LIGHT? To a customer who picks up a package containing a light, don't the marks SUPER and SUPER LIGHT convey exactly the same laudatory meaning? How can one be descriptive and the other not?

What is particularly irksome about this decision is the failure of the Board to consider the laudatory nature of the term. It's as if the "laudatory" case law didn't even exist. Instead, the Board looked for a mechanical rule to apply to the case, not bothering to make a considered analysis.

Thank goodness the decision is not citable.

TTABlog note: The year 2006 is starting off with a bang! Already we have five citable decisions from the Board, and in the SUPER decision we have our second strong candidate for this year's "Ten Worst" list.

Text Copyright John L. Welch 2006.

In Citable No. 5, TTAB Grants Summary Judgment in 2(d) "WIRETRACKS" Cancellation

In its fifth citable decision of 2006, the Board granted, on summary judgment, a petition for cancellation of a registration for the mark WIRETRACKS for "plastic conduit for use in electrical installations and electrical use." The Board found the mark confusingly similar to the mark WIRE TRAK previously used (in word and design form) by Petitioner for electrical conduits. Fram Track Indus., Inc. v. WireTracks, LLC, 77 USPQ2d 2000 (TTAB 2006).


The key issue was priority of use. Petitioner Fram Trak asserted that it first sold its goods in packaging bearing the WIRE TRAK mark in 2002. Respondent WireTracks admitted (by failing to respond to admission requests) that it did not sell its goods until April 7, 2003, and further admitted that it had no documents establishing use of its mark prior to March 2003.

According to the Board, Petitioner established that there "is no genuine issue of fact regarding its priority of use." Its CEO, Albert Santelli, Sr., stated in his declaration that Petitioner first used the WIRE TRAK mark on July 3, 2002. Although the mark did not appear on Petitioner's invoice for that first sale, the CEO averred that the goods "have been packaged in polyethylene bags bearing the WIRE TRAK mark since 2002." The Board found that declaration "internally consistent," "not characterized by uncertainty," "credible," and "persuasive." Moreover, Respondent "has not challenged the veracity or the basis for the testimony of Mr. Santelli."


Respondent lamely argued that it has priority because its mark "was the first to make an impact on the public perception," and that Petitioner's mark "has little or no recognition in the relevant market." However, Respondent did not claim any use of its mark (whether trademark use or use analogous to trademark use) earlier than Petitioner's first use date, and therefore this argument was completely off track.

The Board also found that the marks are substantially similar in sound, appearance, and commercial impression, and the goods overlapping. It therefore granted Petitioner Fram Trak's motion for summary judgment.

Text Copyright John L. Welch 2006.