"Meet The Bloggers" Event Set for Tuesday Night at INTA Toronto

Mark your calendars! The second annual "Meet the Bloggers" event is set for Tuesday night, May 9th, from 9:30 to midnight at the BeerBistro in Toronto. Marty Schwimmer and I invite any and all to attend. We hope to provide an oasis of sanity, a place for conversation, a quiet alternative to the larger, crowded, often deafening parties offered by others. We expect to be joined by fellow blogger Jeremy Phillips of IPKat and possibly others to be named later.

BEERBISTRO18 King Street East (at Yonge Street)Toronto, Ontario M5C 1C4
The BeerBistro is located just a few blocks north and east of the INTA headquarters hotel. [Here is a map of the area.] It boasts "one of Toronto's most extensive beer lists and one of the city's finest bars."

Marty Schwimmer, as you all know, is the grandfather of trademark blogging. His Trademark Blog sets the standard that we mere mortal bloggers try to meet. Marty also birthed the Shape Blog, to which I am a regular contributor.

Jeremy Phillips and Ilanah Simon founded the must-read IPKat blog in 2003, providing insight and wry commentary regarding "copyright, patent, trademark, and privacy/confidentiality issues from a mainly UK and European perspective.

For a brief peek at the 2005 version of the "Meet the Bloggers" event, surf to this webpage.

TTABlog update: Boris Umansky of the IP Legal Lounge blog reports that he will be in attendance. Boris reviews "state and federal court decisions within the Seventh Circuit pertaining to trademarks, copyrights, trade secrets, unfair competition, Internet law, and related areas."
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Sidestepping American Fertility, TTAB Affirms Genericness Refusal of "WELDING, CUTTING, TOOLS & ACCESSORIES"

Judge Bucher has again planted a seed of doubt regarding the CAFC's seminal ruling in In re American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999). He recently plowed this same furrow in the FRESH ORGANICS case, TTABlogged here. Now he has authored the Board's opinion in In re Welding, Cutting, Tools & Accessories, LLC, Serial No. 78212695 (April 20, 2006) [not citable], affirming a genericness refusal of the term WELDING, CUTTING, TOOLS & ACCESSORIES for "Retail stores, on-line retail stores and mail order catalog services in the field of welding equipment."


Examining Attorney Angela M. Micheli maintained that a single third-party webpage and a letter and catalogue produced by Applicant, "when combined with the plain meaning of the proposed mark," established the genericness of the phrase. Applicant WCTA argued that the PTO had failed to prove genericness by the required "clear evidence."

The Board found that Applicant indeed sells welding equipment, cutting equipment, tools for welding and cutting, and accessories for welding and cutting. It agreed with the Examining Attorney, citing In re Gould Paper Corp., 5 USPQ2d 1110 (Fed. Cir. 1987) [SCREENWIPE], in ruling that the subject phrase is:

"merely a combination of generic terms that has no separate or distinct commercial impression apart from what one who understands the individual meanings of the terms would expect the terms to signify."

Hold it right there! What about American Fertility, which requires that, for a phrase as opposed to a compound word, more than mere dictionary definitions are required to prove genericness? Where's the proof that Applicant's phrase as a whole is used as a generic designation? Not to worry. The Board pointed to the "only third party website having this exact combination of terms that the Trademark Examining Attorney found ... the now-inactive single website of Auto Body Bargains."


Understandably, Applicant WCTA asserted that this single, now defunct webpage failed to meet the "clear evidence" standard for proof of genericness of a phrase. (It also, rather feebly, pointed to the differing punctuation in its phrase from that used in the webpage.) The Board was unmoved:

"We cannot so easily disregard a substantially-exact formulation used by a one-time competitor. We find a continuing interest in securing for all competitors the unencumbered right to use generic terms for goods and services."

Despite the teaching of American Fertility, the Board, or at least this panel, was determined to hold Applicant's phrase to be generic. It explained that it refused to "countenance the following scenario:"

• Any manufacturer or merchant could select four, non-distinctive words from its industry, and combine these words into a word string, possibly sprinkling in appropriate commas, slashes, ampersands, etc.
• Each individual word is by definition generic, answering the question "what-are-you?"
• It is most unlikely that anyone else in the field will be using that exact permutation of items in a single four-word string.
• Hence, neither a Trademark Examining Attorney nor any competitor will be able to locate that exact phraseology when doing a database search, or may find only applicant's precise usages.
• For example, one could posit a hypothetical stationery store named "Binders, pencils, paper and school supplies."
• If this exact combination is not found anywhere on the Internet when conducting a search on Google, or using any other search engine, any tribunal must then take the position that this four-word string is capable of acquiring distinctiveness as a source indicator in this field.

The Board therefore affirmed the refusal to register.

TTABlog comment: Bravo, Judge Bucher! The American Fertility test doesn't work. Until the CAFC gets a chance to re-think Marvin Ginn and its progeny, the TTAB should follow Judge Bucher's lead and apply some common sense in these "phrase" genericness cases.

Copyright John L. Welch 2006.

Citable No. 24: TTAB Dismisses 2(d) Cancellation Re "SUZLON & Design" for Wind Turbines

In its 24th citable decision of 2006, the TTAB denied a Petition for Cancellation of a registration for the mark SUZLON & Design (shown below, left) for wind turbines and their components. The Board ruled that Registrant Suzlon's mark was not confusingly similar to the logo of Petitioner NRECA (shown below, right), registered for lapel pins and for periodicals, educational workshops, and association services in the field of rural electrification. National Rural Electric Cooperative Assn. v. Suzlon Wind Energy Corp., 78 USPQ2d 1881 (TTAB 2006).


Considering the relevant duPont factors, the Board first found the similarity between the marks to be "not great." Although the marks are alike to the extent that they both contain dark, circular designs and "share several lines,' the inclusion of the word SUZLON in Registrant's design is an "important difference." "[T]his word is a prominent part of respondent's mark as it could be pronounced and it would be used to verbally describe the source of wind turbines and their components."

As to the goods and services, the Board found them "neither identical nor closely related." "Merely because parties operate in the same broad industry does not, by itself, establish that their goods and services are related." The Board did note, however, one example of potential overlap: "members or potential members of petitioner's association and suppliers of wind turbines." Petitioner produced an example: the Kotzebue Electric Association (KEA) of Kotzebue, Alaska, which is a member of NRECA, a user of NRECA's services, and a potential purchaser of respondent's wind turbines."

"As the provider of electric power to Kotzebue, KEA presumably purchases numerous goods and services. However, we simply do not have evidence to conclude that KEA and other cooperatives would assume that all goods and services are associated with petitioner simply because such goods and services are all involved with producing electricity."

The Board concluded that NRECA's association services and its workshop services in the field of rural electrification "are at best only tenuously related to wind turbines and component parts." As to lapel pins and publications, NRECA failed to establish "any relationship between these goods and wind turbines."


The purchase of wind turbines, the decision to join NRECA, and the decision to utilize NRECA's services "would involve sophisticated purchasers who are not making ordinary or impulse purchases. Indeed these purchases are likely to be made after careful consideration." This factor therefore favored Registrant.

Petitioner NRECA alleged actual confusion, pointing to an e-mail received from an attorney for one of its member Co-ops:

"I happened to notice an ad today for Suzlon Energy, a wind energy company, which has as its logo a green ball with three jagged lines running through it. At first, I thought it was an NRECA ad. I just wondered if anyone had looked into this for possible trademark infringement. You can see the logo by going to Suzlon's website at www.suzlon.com."

The Board, however, was "not persuaded that this single instance of alleged confusion is significant."

"Mr. Fuglesten's e-mail seems to indicate that he mistakenly believed that the mark was petitioner's without considering the goods and services. Indeed, when the ad was viewed in its entirety, Mr. Fuglesten arrived at the conclusion that the marks on the goods and services did originate from different sources. Therefore, we find this equivocal e-mail does not require us to conclude that there is a likelihood of confusion."

As to the strength of Petitioner's mark, NRECA provided some evidence of extensive use of the mark, leading the Board to find that the mark is "not famous," but "not weak."

Balancing all the relevant duPont factors, and noting that a registration is entitled to a presumption of validity, the Board ruled that NRECA had failed to meet its burden of proof regarding likelihood of confusion.

Copyright John L. Welch 2006.

On Summary Judgment, TTAB Cancels "THE GOLD STANDARD" Registration Due To Abandonment

Registrant Nature's Way failed to overcome Petitioner's prima facie case of abandonment based on three years of nonuse, and so the Board issued a summary judgment cancelling a 1988 registration for the mark THE GOLD STANDARD for "vitamins and nutritional dietary supplements." Smart Choice Food Sales, Ltd. v. Nature's Way Prods., Inc., Cancellation No. 92044270 (March 29, 2006) [not citable].


Petitioner Smart Choice claimed that Nature's Way "failed to produce a single piece of evidence that the registered mark THE GOLD STANDARD was ever used in commerce." Smart Choice submitted a declaration of its President, who conducted an investigation and found no uses of the subject mark. When he called Registrant to inquire about THE GOLD STANDARD products, he was told that "no such name existed."

Nature's Way argued that the four documents it produced in discovery created a factual question that precluded summary judgment, and that use of the subject mark in 2004 and 2005 "affirmatively evidence intent to utilize the mark." In support, it provided a declaration from its counsel, asserting that the documents established use of the mark "as a secondary mark in connection with goods."

From 2005 magazine advertisement

The Board found "no genuine issue of material fact that respondent ceased using THE GOLD STANDARD sometime after 1994 for a period of no less than three consecutive years." [See Section 45: "Nonuse for three consecutive years shall be prima facie evidence of abandonment."] Registrant's discovery responses were sufficient to establish Petitioner's prima facie case.

"Irrespective of events in 2005 when, evidently, respondent may have made some use of the mark, we find that, by that time, respondent had abandoned its right to THE GOLD STANDARD mark through nonuse. *** [T]he only documentation provided by respondent showing possible use ... for a date prior to 2005 is a label with a 1994 copyright notice. The total lack of corroborating evidence of sales and use of such goods under the mark clearly establishes a prima facie case of abandonment ...." (slip op., pp. 5-6).

Furthermore, the 2005 uses of the mark, "if they were used in connection with the goods at all, represent a new and separate use of the mark" that cannot cure the prior abandonment.

Because Petitioner established a prima facie case of abandonment under Section 45, it was up to Nature's Way to rebut that presumption by producing evidence that it intended to resume use of the mark.

The Board concluded that Nature's Way had failed to produce sufficient evidence to raise a genuine issue of material fact as to its intent to resume use. It produced "no documentary evidence showing specific actions taken to plan for resumption of use but has only offered unsupported statements [of counsel] in its responsive brief regarding its continued intent."

Finally, the Board noted that Petitioner Smart Choice had not established its standing, and so Petitioner was allowed thirty days "to submit a showing that there is no genuine issue of fact as to its standing." Smart Choice did just that by providing a copy of an office action in which its own application for the mark GOLD STANDARD was refused registration under Section 2(d) in light of the subject registration. As a result, on April 17, 2006, judgment was entered in favor of Petitioner.

Copyright John L. Welch 2006.

PTO Sued Over "THE LAST BEST PLACE" Cancellations and Suspensions

Last Best Beef, LLC has at last taken its beef over the mark THE LAST BEST PLACE to perhaps the best place it could find: the federal courts. LBB has filed a civil action, captioned The Last Best Beef, LLC v. Jon W. Dudas and Lynne G. Beresford, against the Director of the USPTO and the Commissioner for Trademarks, charging that its constitutional rights were violated when the PTO cancelled two registrations and suspended four applications and two opposition proceedings under the purported authority of the 2006 Department of Commerce Appropriations Act.


The complaint was originally filed in the U.S. District Court for the District of Columbia, but on April 10, 2006, the action was transferred to the Eastern District of Virginia (Alexandria Division), where it now resides as Civil Action No. 1:06-cv-00399-GBL-BRP. Presumably, the USPTO will have sixty days from that date to answer the complaint. (See Rule 12(a)(3)(A), Fed. R. Civ. P.).

The State of Montana claims that the slogan THE LAST BEST PLACE has become synonymous with the State. U.S. Senator Conrad Burns of the Big Sky State managed to include a provision in the 2006 Department of Commerce appropriations bill that prohibits the use of any department funds to "register, issue, transfer or enforce any trademark of the phrase 'Last Best Place.'" Section 206, Department of Commerce and Related Agencies Appropriations Act, 2006, Pub. L. No. 109-108, 119 Stat. 2290, 22314.

President Bush signed the Act into law on November 22, 2005. Coincidentally, on that very same day the USPTO issued two registrations to The Last Best Beef, LLC. for the mark THE LAST BEST PLACE: namely, Reg. No. 3,018,188 for travel information services, and Reg. No. 3,018,189 for lodging and restaurant services. As of that date, two other applications for THE LAST BEST PLACE had been opposed by the Montana State Department of Commerce, and four applications remained pending, but with Notices of Allowance.

On January 3, 2006, the PTO cancelled the Notice of Allowances issued in the four pending application. On January 5th, the PTO cancelled the two registrations, "consistent with" Section 206 of the Appropriations Act. (see letter). On January 18th it suspended all further action regarding those four applications, as well as regarding the two cancelled registrations. And as previously reported here at the TTABlog, on January 6 the Board suspended the two pending oppositions until October 1, 2006 (the first day of the government's next fiscal year).

In its complaint, LBB alleges that the PTO's actions in cancelling the two registrations and four Notices of Allowance were illegal because the Lanham Act does not provide for such actions; LBB also contends that Section 206 is unconstitutional in that it violates the Fifth and Fourteenth Amendments.

Plaintiff LLB recognizes that Section 206 expires at the end of the federal fiscal year (September 30, 2006), but it asserts that "the damage is likely to continue as Section 206 can be extended by Congress upon the expiration of the 2006 Act.


TTABlog comment: From the PTO's point of view, under Section 206 it is prohibited from expending any funds in connection with LBB's applications and registrations, and so it apparently concluded that it must suspend all action with respect thereto. As to the two registrations that issued on November 22, 2005, the PTO perhaps believed that its expenditures in connection with issuing those two registrations (some of which expenditures presumably occurred during the 2006 fiscal year) were violative of the Act and therefore the issuance of those registrations had to be reversed (i.e., the two Registrations cancelled).

From LBB's point of view, it surely must be allowed to challenge the legality of Section 206 now, rather than have to wait until the end of this fiscal year to find out whether that provision is renewed. In any case, LBB is arguably even now being deprived of its right to registration of the subject mark.

Copyright John L. Welch 2006.

Leo Stoller Extension Requests Halted on April 13th

A check of the TTABVUE database indicates that the Board last granted a Leo Stoller request-for-extension-of-time-to-oppose on April 13, 2006. By that date, Stoller had obtained some 1,450 extensions of time since January 1st (and about 1,750 since November 1, 2005). [Almost none have resulted in oppositions. See TTABlog posting here].

Leo Stoller
Can it be that Mr. Stoller has decided to take a rest? Did he break his keyboard? Or has the TTAB decided to stop accepting his extension requests? Maybe the PTO is investigating the matter?

I've asked Mr. Stoller for an explanation, but he has yet to respond. Nor has he mentioned anything at his rentamark.com blog.

Stay tuned.
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TTAB Dismisses 2(d) Opposition: "UNCLE DUTCH" Not Confusingly Similar to "VON DUTCH"

Applicant Richard M. Betts, nephew of the late Kenneth Howard, who was also known as "Von Dutch," survived a Section 2(d) challenge to his application to register the mark UNCLE DUTCH for jewelry. Opposer Von Dutch Originals, LLC relied on three registrations for the mark VON DUTCH (in block-letter and stylized form) for clothing, stationery, and eyewear, but its evidentiary offerings fell short of proving likelihood of confusion. Von Dutch Originals, LLC v. Betts, Opposition No. 91159477 (April 6, 2006) [not citable].


Opposer managed to get its three registrations into evidence, but it failed to prove its allegation of common law use of the VON DUTCH mark on jewelry. Opposer offered two declarations in its case-in-chief, but Applicant Betts successfully objected to their admissibility because there had been no stipulation to the submission of testimony by way of declaration. (See Rule 2.123(b)). The Board also rejected, sua sponte, Opposer's attempt to introduce its sales catalogue into evidence because the catalogue was not a "printed publication" under Rule 2.122(e) and therefore could not be introduced via a mere notice of reliance.

Turning to the substantive issues, the Board noted Applicant's claim that he adopted the UNCLE DUTCH mark because his uncle was a "big influence on him." Betts "clearly knew that his uncle's business alias was 'Von Dutch," although it was not clear how much Betts knew about Opposer's VON DUTCH trademark registrations.

The Board then rolled through the duPont factors. As to the marks, the Board found that the "prominent first words in these marks create critical differences." As to sound, "the difference is sharply accentuated." As to sight, "the first word at once distinguishes the marks." Moreover, the Board agreed with Applicant that "UNCLE DUTCH sound like an informal name for a family member while VON DUTCH sounds like a Germanic surname." Therefore, the commercial impression created by the marks "would be one of contrast rather than of similarity." In sum, the Board found the marks so different that "even if the goods ... were more closely related," Von Dutch still would not win.

As to the strength of the VON DUTCH mark, Opposer claimed that the mark is "well known" by reason of media coverage and substantial sales," but no such evidence was properly made of record. Indeed, the Board found "no evidence suggesting either that registrant's mark is a weak mark as applied to registrant's goods, or contrariwise, that it is especially strong." Thus this factor was neutral.

With regard to the goods, Von Dutch "submitted no evidence in this record to demonstrate the relationship of jewelry to clothing, stationery or eyewear." [Opposer filed an application to register VON DUTCH for jewelry, which matured into a registration in January 2006, but the documents were never made of record.] Thus this factor favored Applicant Betts.

Von Dutch
Finally, the Board looked to the 13th duPont factor, which focuses on "any other established fact probative of the effect of use." Opposer argued that Betts was "clearly trying to trade off the good will associated with the VON DUTCH mark and that he filed the involved application in bad faith." Opposer pointed out that Betts sells jewelry that incorporates his uncle's distinctive "flying eye" design, that he makes many reference to the work and legacy of Von Dutch, that the motifs on Bett's goods explicity draw on his uncle's "style and history," that at times the UNCLE DUTCH mark is presented in a font that mimics the VON DUTCH font, and that Betts filed and then abandoned an application for the mark UNCLE VON DUTCH. The Board was slightly moved, but not much:

"While our decision here should not be read as approving of Mr. Betts' business practices, our determination focuses only on the registrability of the mark UNCLE DUTCH for jewelry in light of claims of likelihood of confusion with three of opposer's federal registrations. Another tribunal - having broader jurisdiction over acts of unfair competition and faced with a different record - might well hold differently based upon some of applicant's specific actions enumerated above." (slip op., pp. 16-17).

However, the Board was unable to find that Betts' adoption of the UNCLE DUTCH mark was in bad faith, or that he intentionally sought to trade on Von Dutch's good will. Betts' behavior "has not been shown to be sufficiently egregious to swing the balance under the duPont factors in opposer's favor."

The Board therefore dismissed the opposition.

TTABlog note: Von Dutch doesn't sound like a Germanic surname to me. Instead it reminds me of St. Louis Cardinal phenom Von McDaniel, who in 1957 pitched a two-hitter in his major league debut, and followed up with a one-hitter in his second start. By the next year he had hurt his arm, and his career was over.


Text Copyright John L. Welch 2006.

TTABlog Cited in Columbia Law Review Note on Self-Disparaging Trademarks

The TTABlog has been cited in a Note in the March 2006 issue of the Columbia Law Review. Todd Anten, Self-Disparaging Trademarks and Social Change: Factoring the Reappropriation of Slurs into Section 2(a) of the Lanham Act, 106 Col. L. Rev. 388 (2006). [See page 389, fn. 7]. Set out below is the Abstract for the Note.

Section 2(a) of the Lanham Act bars the United States Patent and Trademark Office (PTO) from registering trademarks that "may disparage" a group of people. What happens, however, when an applicant seeking to register a trademark containing a slur is also a member of that disparaged group? Many applicants have applied to register such "self-disparaging" trademarks featuring arguably reappropriated slurs, from lesbians seeking to register DYKES ON BIKES, to an African American seeking to register NIGGA, to a Jew seeking to register THE BIG HEEB BREWING COMPANY. Under the current regime, applicants for these self-disparaging marks are treated identically to any other applicant. However, such an approach commits two serious errors: (1) It overlooks the important role that the reappropriation of slurs plays in disarming historically hateful speech and fostering a healthy self-identity; and (2) it ignores the fact that a self-disparaging mark's mere existence automatically raises evidentiary doubts about whether that mark is truly disparaging to the referenced group. This Note argues that the PTO's current approach to gauging whether a mark is disparaging does not adequately consider the special circumstances of self-disparaging marks, and proposes that examining attorneys should no longer be permitted to deny an application to register a trademark solely because the mark is self-disparaging.

Marty Schwimmer's Trademark Blog is cited in footnotes 42 and 256.
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TTAB Reverses 2(d) Refusal of "PLAYER PRIVILEGES" for Casino Services.

So far this year, the Board has affirmed about 90% of the PTO's Section 2(d) refusals on appeal, but here's one that didn't pass muster. The Board reversed a refusal of PLAYER PRIVILEGES for "casino services featuring awards for casino patrons," finding the mark not likely to cause confusion with the identical mark registered for "arranging and planning travel tour packages." In re Lac Du Flambeau Band of Lake Superior Chippewa Indians, Serial No. 76546220 (April 6, 2006)[not citable].


The Examining Attorney argued that "casinos are commonly found in hotels, and that it 'must be assumed that [registrant's services] could include an awards program for frequent casino patronage as well as a host of other possible discount coupons or bonus programs." The Applicant Indians, who run the Lake of the Torches Resort Casino in Lac Du Flambeau, Wisconsin, took issue with the Examining Attorney's logic.


The TTAB sided with the tribe. Observing that the "critical issue in the case is the relatedness of the services," the Board found the PTO's proofs inadequate. The evidence showed that casinos are associated with hotels, that rooms at hotels with casinos can be booked online, and that at one website one may "book your own casino vacation" at various casinos. However, the Board noted that Registrant' services comprise arranging travel tours, and it pointed out that tour packages can be arranged for almost any activity. "It is assumed that companies arrange and plan tours to historical sites, sporting events, cultural activities, and other entertainment activities."

"The simple fact that tours can be arranged to an activity does not establish that services such as casinos, golf, wedding-related services, soccer events, marathons, and museums are related to tour planning services. If that were the case, virtually every activity would be related to tour planning services and there is no evidence that consumers make this broad association." (slip op., p. 6).

The Examining Attorney wandered way off the reservation in arguing that "registrant's services could include providing a casino service such as an awards program for frequent play." The Board found that to be mere speculation. Based on the evidence of record, the Board "could not conclude that there is any significant relation between the services here."

Finally, the Board noted that PLAYER PRIVILEGES is "not an arbitrary or unique term; rather it is a suggestive one and, as such, is afforded a more limited scope of protection."

Therefore, the Board found that confusion would not be likely, and it reversed the refusal to register.

Text Copyright John L. Welch 2006.

Citable No. 23: TTAB Affirms "Failure to Function" Refusal of "SPECTRUM" for Dimmable Pushbuttons

In its 23rd citable decision of 2006, the Board affirmed a refusal to register (under Sections 1, 2, and 45) the mark SPECTRUM (in the stylized form shown below) for dimmable illuminated pushbutton switches, because the mark as displayed on Applicant's specimens of use failed to function as a trademark. In re Aerospace Optics, Inc., 78 USPQ2d 1861 (TTAB 2006).

(lined for eight different colors)
The Board pointed out that the "critical inquiry is whether the asserted mark would be perceived as a source indicator. *** To be a mark, the term must be used in a manner calculated to project to purchasers or potential purchasers a single source or [sic] origin for the goods."

Examining Attorney Henry Zak argued that Applicant's mark, as used on its specimens (shown below) performs "only an informational function - to identify favorable features of the switches, rather than a particular source of origin."

(click on photo for larger picture)
Applicant contended that a mark may serve both to convey information and to identify source. Moreover, it asserted that its use of the TM symbol adjacent the mark (on the inner flap of one specimen, shown immediately below) was "dispositive of the question."


The Board agreed with the Examining Attorney, finding that "the manner in which the applied for mark is used on the specimens of use is not indicative of trademark use."

"[T]he applied-for mark merely informs the potential purchaser of an aspect of the goods, namely, the multiple color feature. The coloring and font are not sufficient to imbue this term, as used, with source-identifying significance or to set it apart from the other informational wording. *** Moreover, as noted by the examining attorney, the colors in the mark merely manifest and emphasize the information the word conveys." (slip op., pp. 7-8).

Furthermore, the use of the TM symbol on the inner flap location of one specimen "does not change the commercial impression of the applied-for mark." Even if the applied-for mark "may be registrable if it were used in a different context," as used here it "would not be perceived as a trademark, and the addition of the trademark symbol is not sufficient to transform the non-trademark use into trademark use." As the Board pointed out, "[e]ven an inherently distinctive designation is not a trademark if not used in a trademark manner."

(click on photo for larger picture)
The Board therefore affirmed the refusal to register.

TTABlog note: For a similar ruling involving a webpage specimen, see the Board's uncitable decision in In re TeleVentions, LLC, TTABlogged here.

Text Copyright John L. Welch 2006.

Background Reading for Your Comments on the Proposed TTAB Rules

Now that the PTO has extended until May 4, 2006, the comment period on the proposed TTAB Rule Changes, we all have plenty of time to file our comments. You may want to peruse certain comments that have already been filed, including those of INTA, AIPLA, and ABA-IP. Those and others are collected at the TTAB-Rules blog. Also of relevance to your mission are two articles from The Trademark Reporter discussing delay at the TTAB and offering suggestions for improving the situation. [These articles are made available with permission of the TMR].


John M. Murphy, in his article in the July-August 2004 issue of The Trademark Reporter, reviewed the TTAB's Section 2(d) inter partes cases decided in the year 2003, some 67 in all, and concluded that Board proceedings take too long and are unnecessarily complicated. That article, entitled "Playing the Numbers: A Quantitative Look At Section 2(d) Cases Before The Trademark Trial and Appeal Board," 94 Trademark Reporter 800 (July-August 2004), was discussed here at the TTABlog in November 2004, where I reported:

"Murphy lays the blame for these problems on the lack of supervision of proceedings by the Board and on the extensive discovery permitted. He thinks that, in light of the simplicity of the issues in many cases, more proceedings should be decided on summary judgment. Murphy also urges that discovery be curtailed -- through mandatory disclosures coupled with limits on the number of depositions and interrogatories -- and he recommends closer case management by the Board to reduce delay, nuisance and expense.'"

In the summer of 2005, Anthony Fletcher provided a "qualitative look" at TTAB delay, and offered some suggestions for improvement. Anthony Fletcher, "TTAB Delay: A 'Qualitative' View," 95 Trademark Reporter 583 (May-June 2005).

Based on his many years of experience in litigation before the courts and the TTAB, Mr. Fletcher identified and addressed four causes of delay at the TTAB:

1. parties stipulating to seemingly endless extensions and suspensions;
2. the TTAB's opting-out of several federal rules for case management;
3. a culture to which case management is alien; and
   
4. seemingly endless delays in the decisional process.

In a nutshell, Mr. Fletcher suggested, inter alia, limiting the number of extensions and suspension in most cases, adopting and adapting several of the "unutilized" Federal Rules to provide more case management by the Board, mandating that the parties provide automatic disclosure on certain subjects, developing a "case management culture" at the Board, and streamlining the decisional process. His article, and that of Mr. Murphy, provide important insight into the issues the the Board attempts to address in its proposed Rule changes.

Like those two authors, I also suggested (in my November 2004 posting) that more active case management by the TTAB was needed. I'm sure that most attorneys who have been involved in Board inter partes proceedings would make the same recommendation.

TTABlog Thank You: Again, I thank The Trademark Reporter for granting permission to provide links to the Murphy and Fletcher articles. The Murphy article is Copyright © 2004 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 94 TMR 800 (July-August 2004). The Fletcher article is Copyright © 2005 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 95 TMR 583 (May-June 2005).

Text Copyright John L. Welch 2005-6.

Will the TTAB Make All Decisions Citable?

It is reported that last Wednesday, the Supreme Court adopted a rule change that will allow lawyers to cite "unpublished" opinions in federal court cases beginning in 2007. The new rule will take effect unless Congress countermands it before Dec. 1, 2006. [Law.com story here]. How will this ruling affect the TTAB, if at all?


At the Midwest IP Institute last fall, Chief Judge Sams briefly addressed this issue in response to an attendee's question. As I recall, Judge Sams said that such a ruling by the Court would not affect the TTAB directly because the Board is not an Article 3 court. However, he also said that such a ruling would be taken into consideration by the Board.

You may have noted that this year the Board has already issued 22 citable decisions (compared with 18 for all of last year, 7 of which came in November and December). The Board has obviously decided to increase the number of citables, and at this rate we may see 80 or more in 2006. But I doubt the Board will make all of its decisions citable. [Professor Thomas G. Field, Jr., of the Franklin Pierce Law Center has questioned whether the TTAB can and should deem decisions uncitable, in his article found here).] I believe the Board views many of the 600 or so cases in which it issues final decisions each year, as being too mundane to merit the citability tag; they simply add nothing of value to the Board's jurisprudence.

From a practical point of view, I suspect the Board feels that most of its decisions are so fact-based that they provide no useful precedent for other cases. When the Board encounters a particularly novel and interesting set of facts and/or when a new issue of law is decided, it will deem the decision citable. It follows the philosophy that it laid out in 1992:

Decisions are not published because, in virtually all cases, they do not add significantly to the body of existing law and/or they are not of widespread legal interest. By deciding that a decision will not be recommended for publication, the Board has in effect declared that the decision has no value as legal precedent. General Mills, Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1275 (TTAB 1992).

When the Board decided in General Mills to no longer allow citation of "unpublished" decisions, one principal reason was that such decisions were not readily available to everyone. Currently, however, under the Freedom of Information Act the Board makes available all of its final decisions in ".pdf" form at the TTAB website. Does this online availability eliminate the Board's concern? I think so.

My own view is not greatly dissimilar from what I believe to be the Board's current view. Many cases handled by the Board -- and particularly many ex parte appeals -- are straightforward and ordinary, and seem to me to have little or no precedential value. I like the Board's decision to greatly increase the number of citable decisions, but I don't think it's necessary or desirable that all decisions be citable.

Headed for extinction?
TTABlog note: I use the term "citable" rather than "published" in referring to precedential Board decisions. Use of the term "published" is confusing because the United States Patent Quarterly, for example, publishes not only the "citable" decision of the TTAB, but also an occasional uncitable decision. Thus "published" does not necessarily mean precedential.

Text Copyright John L. Welch 2006

Leo Stoller Joins the Blogosphere!

Frequent TTAB litigant Leo Stoller has launched a blog called Rentamark.com, where he responds to his critics and explains his unique view of trademark law. I'm looking forward to seeing the "comments" that Leo receives.

"No One Likes The Landlord"
TTABlog request: Leo, please respond to my TTABlog posting of April 3, 2006 (here) regarding your alleged trademark rights.
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Citable No. 22: TTAB Affirms Refusal of "SEPTEMBER 11, 2001" as Deceptively Misdescriptive

At 5:37 P.M. EDT on September 11, 2001, Moti Shniberg of Rosh Ha'ayin, Israel, filed an ITU application to register the mark SEPTEMBER 11, 2001 for books and entertainment services. The Board, in its 22nd citable decision of 2006, has affirmed a Section 2(e)(1) refusal to register on the ground that the mark is deceptively misdescriptive. In re Shniberg, 79 USPQ2d 1309 (TTAB 2006).

Moti Shniberg
In response to the Examining Attorney's request for information, pro se Applicant Shniberg stated that "None of applicant's books [is] on the subject of the events of September 11, 2001," and that "None of applicant's entertainment services will in any way cover the events of September 11, 2001." The Examining Attorney then withdrew the PTO's mere descriptiveness refusal but maintained the "deceptively misdescriptive" refusal.

The Board set forth the two-pronged test for determining whether a mark is deceptively misdescriptive: (1) whether the mark misdescribes the goods or services to which it applies; and (2) whether consumers are likely to believe the misdescription."

The PTO's proofs, including database and search engine results, established that "the date of September 11, 2001 has acquired special significance in America," and that the term SEPTEMBER 11, 2001 is "[c]ommonly used as a direct reference to the terrorist attacks on that date."

"The evidence shows that many publications and other media concerning the events of September 11 have used the date in the title of the books, articles, shows, and similar goods and services. From this information, we conclude that the term 'September 11, 2001' merely describes the subject matter of books and entertainment services concerning the events of September 11th."

The Board then found that when SEPTEMBER 11, 2001 "is used to identify [Applicant's] goods and services and the subject matter ... is not concerned with the events of September 11, 2001, the mark is misdescriptive." Thus the first prong of the test was met.

As to the second prong, the Board ruled that, in view of the numerous books, articles, and shows about the events of September 11, consumers are likely to believe the misdescription. "While the nature of the misdescription would become known after consumers studied applicant's books and entertainment services, that does not prevent the mark from being deceptively misdescriptive."

Applicant Shniberg made the cockamamy argument that his mark cannot be both descriptive and misdescriptive, pointing to Aristotle's principle of non-contradiction. The Board pointed out, however, that the PTO never said that: it refused registration on alternative grounds, and when "convinced that applicant's goods and services would not relate to the events of September 11," the Examining Attorney withdrew the mere descriptiveness refusal.

The Board therefore affirmed the refusal to register.

Text Copyright John L. Welch 2006.

TTAB Affirms Three Deceptiveness Refusals of "SWISSGOLD" for Watches and Parts

Applicant Eastern Watch Company hit the trifecta with its application to register the mark SWISSGOLD for watches and clocks. The Board affirmed two Section 2(a) deceptiveness refusals (one for the SWISS part and one for the GOLD part), and one Section 2(e)(3) primarily geographically deceptively misdescriptive refusal. In re Eastern Watch Co., Serial No. 78402643 (March 27, 2006) [not citable].


Examining Attorney John T. Lincoski not surprisingly established that SWISS refers to Switzerland, one of the world's "leading manufacturers" of high quality watches and clocks, including gold ones. He also ably established that GOLD "refers to a precious metal," and that gold is often used in making high quality watches.

Applicant Eastern Watch conceded that its watches and clocks are not made in Switzerland; in fact, it emphasized that its goods are made in China. It lamely argued that its mark "suggests that the goods sold under the mark are of a high quality but does not infer that the gold in the goods come from Switzerland or that the watches sold under the mark are made in Switzerland."

The Board agreed with the PTO. The SWISS portion of the mark misdescribes all of Eastern's goods. Prospective purchasers are "certainly likely to believe" that the proposed mark actually describes the goods. Given the highly quality of Swiss watches and clocks, purchasers would be materially influenced into purchasing watches and clocks bearing the SWISSGOLD mark.


As to the GOLD portion of Eastern's mark, the Board's ruling was a little more complicated. Eastern's identification of goods included some products wholly or partially made of gold, as well as the following products: "watch movements, parts for watches, alarm clocks, wall clocks, [and] clocks not comprised wholly or partially of gold."

The Board first noted that the record lacked evidence that "prospective purchasers are likely to believe that the misdescription actually describes" these non-gold goods. Most of the PTO's evidence concerned watches being made from gold, not clocks and watch parts. Not to worry!

"However, applicant's goods include 'parts for watches.' It has been clearly established that watches are sometimes made from gold. It follows, based on this evidence that watches are made of gold, that parts of watches, particularly external replacement parts, may similarly be made of gold. Therefore, inasmuch as applicant's parts are not made from gold, the term 'gold' would deceive potential purchasers who were seeking gold replacement parts for their watches." (slip op., pp. 10-11).

The Board noted that it would not necessarily be apparent from inspection of the goods that these parts are not made of gold. Furthermore, because of the desirability of watch parts made of gold, "the GOLD element of the proposed mark would also be material to purchasing decisions of prospective customers."

The Board therefore wound up affirming all three refusals to register.

TTABlog note: Compare this decision with the Board's ruling last March in In re Glaze (TTABlogged here), reversing a Section 2(e)(3) refusal of SWISSCELL for batteries for lighting.

For an interesting comment on "geographical" marks, surf to Rebecca Tushnet's 43(b) blog, here.

Text Copyright John L. Welch 2006.

"PATENTS.COM" Generic for IP Website, Says TTAB

In a grueling 49-page decision, the Board affirmed the PTO's refusal to register (on the grounds of genericness and, alternatively, mere descriptiveness) the term PATENTS.COM for "on-line information services in the field of intellectual property law provided via [an] interconnected computer network linked by common protocols." In re Oppedahl & Larson, Serial No. 75051843 (March 31, 2006) [not citable].

Carl Oppedahl
In applying the CAFC's basic Marvin Ginn genericness test, the Board first determined the genus of Applicant's services. The Board found the genus, "in light of the actual use being made of the term 'PATENTS.COM' by applicant, as principally encompassing the inextricably intertwined element of providing legal information about patents, as well as other kinds of intellectual property, through a website." (slip op., pp. 11-12).

Turning to the second prong of the test, the Board considered whether the relevant public for applicant's recited services uses the term PATENTS.COM primarily to refer to "a category or class (i.e., a genus) of providing information about patents, as well as other kinds of intellectual property, through a website." Applicant O&L argued that the PTO presented "no evidence that it is 'ordinary grammatical construction' to use 'patents.com' as a generic term" for its services. The Examining Attorney argued that this case is congruent with the BONDS.COM and CONTAINER.COM cases.

The Board began its analysis by noting that if PATENTS.COM is considered to be a compound word, the Gould approach would apply, whereas if a phrase, American Fertility would govern. The Gould test would permit a finding of genericness based on dictionary definitions of the constituent words alone. [See the TTABlog discussion of the recent FRESH ORGANICS case, here]. The Board concluded that PATENTS.COM should be treated as a compound word:

"Treating a combination such as 'PATENTS.COM' as a compound term rather than as if it were a phrase 'PATENTS COM' is preferable since, due (presumably) to the technical requirements of Internet domain name addresses, in our experience there can be no space separating any of the individual terms which comprise an Internet address." (slip op., pp. 21-22)

In other words, if one applied the American Fertility test, which requires proof of actual use of the phrase in question, the test would never be satisfied in these types of cases because one would not find generic words like "drugstore" or "bank" used in the form "drugstore com" or "bank com." [i.e., without the dot].

Applying Gould, the Board found "clear evidence" that PATENTS.COM is understood by the relevant public to be generic: it understands "patents" to be generic for certain intellectual property grants, and ".com" to be generic for a top-level domain identifier of a commercial entity.

"In view thereof, joining the terms 'patents' and '.com' to form the designation 'PATENTS.COM' results in a compound term which, to the relevant public for applicant's services of providing legal information about patents, as well as other kinds of intellectual property, through a website, primarily signifies a commercial website which provides legal information about patents." (slip op., pp. 25-26)

Moreover, the joining of these individual terms into the compound term PATENTS.COM "lends no additional meaning to such term as a whole."

Turning to the Section 2(e)(1) issue, Applicant O&L contended that "for technical reasons, any internet domain name is inherently distinctive and thus cannot be merely descriptive." The CAFC, however, disposed of that argument in In re Oppedahl & Larson LLP, 71 USPQ2d 1370 (Fed. Cir. 2004):

"The simple fact that domain names can only be owned by one entity does not of itself make them distinctive or source identifying. Telephone numbers and street addresses are also unique, but they do not by themselves convey to the public the source of specific goods or services." 71 USPQ2d 1374.

Based on dictionary definitions and other evidence, the Board ruled that PATENTS.COM is merely descriptive of O&L's services: "[C]ombining the terms 'PATENTS' and 'COM' into the compound term 'PATENTS.COM' results in a designation which would only signify a commercial website which provides legal information about patents." (slip op., p. 35).

The combination PATENTS.COM does not create a connotation different from that of the two terms. "[A]s was found in [by the CAFC] in Oppedahl, considering the term 'PATENTS.COM' 'as a whole only strengthens the descriptiveness finding.'" 71 USPQ2d 1374. This is not one of those "rare instances" when the addition of a TLD indicator to a merely descriptive term creates a distinctive mark.


As to O&L's claim of acquired distinctiveness, the Board found that Applicant's evidence "falls far short of its burden of demonstrating acquired distinctiveness" of the highly descriptive term PATENTS.COM. Given that "the greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning," O&L's claim of five years of substantially exclusive and continuous use "is plainly insufficient."

Applicant's evidence regarding the number of hits at its website and the number of third-party websites that link to O&L's website is "at best an indication of the popularity" of the website, particularly in light of O&L's lack of evidence showing that PATENTS.COM is used "in the manner of a service mark." The sole evidence of use as a service mark was the specimen shown above, but "there is absolutely no evidence as to how long the term 'PATENTS.COM' has been so used nor is there any evidence that applicant has advertised or otherwise promoted its services."

The Board therefore rejected the Section 2(f) claim, and affirmed the refusals to register.

TTABlog note: The fancy but ultimately futile footwork of O&L in submitting the above-depicted specimen of use into the record was TTABlogged here.

Text Copyright John L. Welch 2006

USPTO Seeks Nominations to Public Advisory Committees

The USPTO has set a May 8th deadline for submission of nominations to its public advisory committees (PPAC and TPAC). Here is the announcement from the USPTO website.

The United States Patent and Trademark Office is seeking qualified individuals to serve on its public advisory committees. Nominations are being requested for three members to each of the committees. Members are appointed by the Secretary of Commerce and serve for three years. Persons wishing to submit nominations should send the nominee's resume to the Chief of Staff, Office of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, Post Office Box 1450, Alexandria, Virginia 22313-1450.

Electronic submissions for the patent advisory committee should be sent to PPACnominations@uspto.gov and to TPACnominatons@uspto.gov for the trademark advisory committee. Nominations must be postmarked or electronically transmitted on or before May 8, 2006.

For more information about the advisory committees and the duties and responsibilities of members see Public Advisory Committees.

Federal Register notice here.
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In a Non-Precedential Ruling, CAFC Affirms TTAB's Uncitable "TORRE MUGA" Decision

In a non-precedential opinion, Miguel Torres, S.A. v. Bodegas Muga, S.A., Appeal No. 05-1520 (April 10, 2006), the CAFC affirmed the TTAB's uncitable decision in Opposition No. 91112586 [TTABlogged here]. The court ruled that substantial evidence supported the Board's duPont factual findings, and it upheld the Board's legal conclusion that the mark TORRE MUGA & tower design (below left) is not confusingly similar to the word marks MIGUEL TORRES and LAS TORRES, and the TORRES & tower design mark (below right), all for wines.


The Board had found that the second, third, and fourth duPont factors (the similarity of the goods, the similarity of the trade channels, and the conditions of sale and buyer unsophistication) favored Opposer, while the first, fifth, sixth, seventh, and eighth du Pont factors favored Applicant Muga.

As to the first factor, the court observed that the word "torre" (singular) does not connote the surname Torres, but simply the word "tower." "This distinction, along with the fact that Muga does not use the word 'torre' alone, but uses it in conjunction with 'Muga,' is sufficient to support the Board's finding that the marks were somewhat dissimilar in their appearance, sound, connotation and commercial impression."

As to the fifth factor, the Board agreed with the TTAB's assessment that Opposer's marks had "acquired some recognition," but were not famous. As the Board found, Opposer's showing of "critical acclaim and favorable references in newspapers ... fell far short of the showing usually required to prove that a mark has acquired fame and the broad protection that accompanies it."


The Board also properly assessed the sixth duPont factor, said the court: "While Muga provided minimal context for some of its examples, the sheer number and geographical distribution of Muga's examples of third-party use give the evidence some probative value ...."

Finally, as the seventh and eighth factors, the court noted that Opposer "does not dispute that it produced no evidence of actual confusion, and the Board reasonably inferred that the lack of evidence, under the circumstances, favored Muga."

The court affirmed the Board's decision because:

"The factors favoring Muga are sufficient, when balanced against the factors favoring Torres, to support the conclusion that Muga's mark is unlikely to cause confusion as to the source of the goods to which it is affixed."

Text Copyright John L. Welch 2006

Citable No. 21: TTAB Rejects Website Specimen for Genitope's "Fingerprint Man" Mark

In yet another citable decision, the Board affirmed a refusal, pursuant to Rules 2.56 and 2.88, of the "fingerprint man" design mark shown below, for "biopharmaceutical preparations used to treat cancer in humans, namely, individualized cancer treatments prepared specifically for each individual patient from whom tumor tissue has been received." It ruled that the website specimen submitted by Applicant Genitope Corporation is not a "display associated with the goods" and therefore is not acceptable to show use of the mark. In re Genitope Corp., 78 USPQ2d 1819 (TTAB 2006).


Rule 2.56(b)(1) provides: "A trademark specimen is a label, tag, or container for the goods, or a display associated with the goods. The office may accept another document related to the goods or the sale of the goods when it is not possible to place the mark on the goods or packaging for the goods." Applicant asserted that its Internet webpage (shown below, in part) constituted a display associated with the goods, relying on In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004).

Genitope's specimen of use
The last paragraph of the specimen webpage states: "For more information on personalized immunotherapy and our product, please see the Patient Backgrounder in the Patient Resources section of our website." The underlined phrases are links to other pages on Genitope's website.

The Board distinguished the Genitope situation from that in Dell because Genitope's webpage "does not provide a means of ordering the product."

"On the contrary, the webpage says that the study is closed to patient registration. Certainly there is nothing in the specimen which shows that one can 'click' on a link to order applicant's product, nor does it explain how to order it." *** At most, applicant's web page indicating how one can obtain 'more information on personalized immunotherapy and our product' may be seen as promotional material, but advertising is not acceptable to show trademark use on goods." (slip op., p. 7)

Genitope explained that its goods are "individualized cancer treatments" that "are not amenable to the type of point-of-sale displays that allow direct ordering of the goods by the general public." The Board, however, agreed with Examining Attorney Jill I. Prater that:

"there does not appear to be any reason that applicant could not place its mark on the labels of its biopharmaceutical preparations, especially since the individualized treatment would most likely include a label showing the name of the person for which the pharmaceutical has been prepared." (slip. op., p. 8 n. 5)

The Board therefore affirmed the refusal to register.

TTABlog note: For two other uncitable decisions distinguishing Dell and rejecting specimens of use, see the SHOW NAV and the ALL-IN-ONE ATM cases, blogged here and here.

Text Copyright John L. Welch 2006

Leo Stoller Opposes "GOOGLE" Application on Multiple Grounds

Leo Stoller, through his company, Central Mfg. Co. (Inc.), has filed an opposition to Google Inc.'s application to register the mark GOOGLE for "toys and sporting equipment, namely plastic exercise balls." (Opposition No. 91170256). In its Notice of Opposition, Central alleges a gaggle of grounds for opposition, including likelihood of confusion, mere descriptiveness, genericness, and fraud. It also alleges that the GOOGLE mark "was not applied for according to its correct type," that Applicant mutilated its mark during the 2006 Winter Olympics (e.g., see below), and that Google was not the owner of the mark when the application was filed.


Central asserts that it "offers its GOOGLE mark to license on a wide variety of collateral merchandise" and engages in "an aggressive licensing program of the mark GOOGLE." Attached to Central's Notice of Opposition are copies of Mr. Stoller's correspondence with Google Inc. and its counsel, setting forth their diametrically opposing views of the matter.

Although Google Inc.'s application includes goods and services in 11 classes, Central's opposition is directed only to the class 28 goods.

TTABlog comment: How in the world is the word "google" generic for plastic exercise balls? BTW: I put the words "google exercise balls" into my favorite search engine and found this:

Google Headquarters

Text Copyright John L. Welch 2006.

TTAB Citable No. 20: Divided Panel Affirms 2(a) Deceptiveness Refusal of "CAFETERIA" for Non-Cafeterias

What does it mean when a 2-1 Board decision is deemed citable? Is that a slap in the face to the dissenting judge? Does it weaken the decision's precedential punch? Whatever. In the Board's 20th citable decision of the year, the panel majority affirmed a Section 2(a) refusal to register the mark CAFETERIA (in the form shown below) on the Supplemental Register, finding the mark to be deceptive for "restaurants providing full service to sit-down patrons, excluding cafeteria-style restaurants." In re Alp of South Beach, Inc., 79 USPQ2d 1009 (TTAB 2006).


The Board applied the CAFC's test for Section 2(a) deceptiveness found in In re Budge Mfg. Co., 8 USPQ2d 1259, 1260 (Fed. Cir. 1988):

1. Is the term misdescriptive of the character, quality, function, composition or use of the goods (or services)?
2. If so, are prospective purchasers likely to believe that the misdescription actually describes the goods (or services)?
3. If so, is the misdescription likely to affect the decision to purchase?

The panel majority answered all three questions in the affirmative.

As to point 1, the applicant admitted that its restaurant does not meet the dictionary definition of "cafeteria" because it is neither self-service nor a cafeteria.

As to point 2, Applicant argued that "the determining factor is the probably reaction of reasonably prudent members of the public," and that prospective patrons would be aware from media coverage of the nature of applicant's restaurant "well before the targeted individuals ever entered into the premises." It also pointed to cases in which a consumer is able to discover that a mark is obviously misdescriptive by looking at the involved goods. The panel majority was not impressed:

"Applicant has cited no cases saying that the owner of a service mark can advertise or display false information prominently about its services to prospective consumers, and then escape a finding of deceptiveness because the sale may ultimately not be consummated when the customer discovers the misrepresentation just in time to avoid the transaction." (slip op., pp. 10-11).

The majority also noted Applicant's acknowledgement that a few prospective customers appeared to have "misimpressions about the nature of applicant's services." The Board found this "similar to likelihood of confusion cases, where evidence of some actual confusion can serve as a powerful demonstration that many more people are likely to be confused."


As to the third Budge prong, the majority concluded that "there are features of a cafeteria that some prospective patrons will prefer to those of a table-service restaurant. Thus, whether or not restaurant services have significant attributes of a cafeteria may be material to the decision to patronize a particular establishment." Applicant argued that "patrons who realize their mistake are able to walk away from the reservation desk before purchasing meals requiring full table service." The panel majority, however, agreed with Examining Attorney Jennifer D. Chicoski that "the critical point for gauging whether or not potential patrons believe the misdescription inherent in applicant's service mark is earlier than applicant has argued."

"we find that the existence of pre-sale deception does not depend upon whether or not a sale is completed as a result of the deception. The mere fact that one may have decided to go to applicant's restaurant in order to patronize a true cafeteria, based solely upon applicant's choice of a deceptively misdescriptive name for a restaurant, is sufficient to meet the test of the final prong of the Budge test for deceptiveness." (slip op., pp. 19-20).

The Board therefore affirmed the Section 2(a) refusal to register.


In a 20-page dissent, Administrative Trademark Judge Rogers expressed his doubts "about the misdescription created by applicant's mark," about whether reasonable consumers would be deceived, and about whether "any misunderstanding that may be created in the minds of a very few consumers would be more than fleeting."

Text Copyright John L. Welch 2006.

TTAB Denies Motion to Revoke Stoller Extension of Time

The Board has denied an applicant's Motion to Revoke a 90-day extension of time to oppose granted to Leo Stoller on February 14, 2006. Applicant American Republic Brands, LLC seeks to register the mark SWISH for oral care preparations and medicated oral care products (Application Serial No. 76628334). The mark was published for opposition on January 17, 2006. Sentra Industries, Inc. then requested and obtained a 90-day extension of time to oppose.


On or about March 6, 2006, American Republic filed its Motion to Revoke Grant of Extension of Time. It contended that "Sentra did not have good cause to file the Extension Request or to seek an extension of time to file an opposition because it has no grounds to file an opposition." American pointed out that Leo Stoller, through Sentra and Central Mfg. Co. (the "Stoller Affiliates"), "has filed approximately 400-500 Requests for Extension of Time to File Oppositions since January 1, 2006." American's search of the PTO records revealed that Sentra owns no pending applications or registrations.

"A reasonable inference can be drawn from the volume of Extension Requests filed by the Stoller Affiliates coupled with the fact that Sentra owns no pending federal trademark applications or federal trademark registrations is that Mr. Stoller has absolutely no basis for filing the Extension Request and that he is perverting and abusing the administrative process of the USPTO by delaying registration of the Mark with the hope that Applicant will pay to have Sentra abandon its Extension Request rather than wait ninety or one hundred eighty days to complete registration."

American Republic also pointed to the Chicago federal court's decision in Central Mfg. Co. v. Pure Fishing, Inc., 2005 WL 3090988 (N.D. Ill.), in which the court "took extensive judicial notice of Mr. Stoller's pattern of abuse of the judicial and administrative process."

On March 17, 2006, the Board (through a Legal Assistant) issued a terse "order," reiterating the grant of Sentra's request for extension of time to May 17, 2006 and denying the Motion, stating the following:

"The Board will grant any opposer's request for good cause when the opposer states, 'Potential opposer needs additional time to investigate this claim.' Applicant's request for Motion to Revoke Grant of Extension of Time is hereby denied."

TTABlog comment: Apparently, Mr. Stoller is doing a lot of investigating these days. His total of extension requests since November 1, 2005 is now approaching 1,500.

My suggestion: Allow one 30-day extension for free. After that, any unconsented extension request would cost $100, creditable against the opposition filing fee if an opposition is filed. (My friend Ann would call this the "Stoller surcharge.")

Text Copyright John L. Welch 2006.

Citable No. 19: TTAB Rejects Fraud Claims, Grants 2(d) Cancellation Counterclaim

In its 19th citable decision of 2006, the Board cleaned the clock of Petitioner Maids to Order of Ohio, Inc., rejecting its fraud claim and granting Registrant's 2(d) counterclaim for cancellation. Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., 78 USPQ2d 1899 (TTAB 2006).


Petitioner MTO-Ohio contended that Respondent had committed fraud on the PTO when it falsely claimed use of its mark MAID TO ORDER in interstate commerce. Respondent, on the other hand, asserted that its President always believed that the Chicago-based company was using its mark in interstate commerce.

The Board noted that it need not decide whether Respondent's activities constituted use in interstate commerce, but only whether Respondent's President:

"at the time of filing the application, the Section 8 declaration, and the application for renewal, knowingly made a false representation with respect to use of the mark in interstate commerce. If she had a reasonable or legitimate basis for the representations, then [Respondent] has not committed fraud." (slip op., pp. 17-18)

Reviewing the evidence, the Board concluded that Petitioner Ohio failed to meet its "heavy burden" to prove fraud. Respondent's President testified that her company sent employees to work in homes in Wisconsin on two occasions, that her employees cleaned corporate apartment owned or leased by corporations outside of Illinois; that she sent invoices for these services to the companies' out-of-state addresses; and that Respondent sent postcards and business cards to out-of-state companies. Finally, Respondent produced a list of clients that she believed were in interstate commerce; the list included names, addresses (outside of Illinois), and the years in which services were provided at the corporate apartments.

"It was not unreasonable for Ms. Kern, as a layperson, to believe that the above activities constituted use of the MAID TO ORDER mark in interstate commerce. *** This belief is sufficient to negate an inference of fraud upon the USPTO in obtaining and maintaining the registration." (slip op., pp. 20-22)

Respondent brought its own fraud claim, but that too was a dud. It maintained that when Petitioner Ohio filed the application that resulted in its registration of the MAIDS TO ORDER mark, it knew of Respondent's use and registration and failed to disclose it to the PTO. But Professor McCarthy has observed that the application oath "is phrased in terms of a subjective belief, such that it is difficult, if not impossible, to prove objective falsity and fraud so long as the affiant or declarant has an honestly held, good faith belief." Here, Petitioner Ohio's President did not believe that Respondent had prior rights in the MAID TO ORDER mark. The Board therefore concluded that Respondent had failed to prove fraud.


Finally, turning to the Section 2(d) counterclaim, the Board found that Respondent had priority by reason of its use since 1971 [priority may be based on intrastate use], whereas Petitioner commenced use in 1987. The marks at issue "project essentially the same commercial impression." The services -- Respondent's "cleaning of domestic and business premises" versus Petitioner's "maid services" and franchising of same -- are identical or related. Consequently, the Board found confusion likely, and ordered cancellation of Petitioner Ohio's registration.

TTABlog note: Keep moving! Nothing to see here! Unlike misstatements of fact that sometimes lead to a fraud finding, the statements here involved a mixture of law and fact: was a mark used in interstate commerce, and does an applicant have exclusive rights in a mark? In such situations, a person's statement can be wrong without being false and fraudulent.

Compare this case with the Board's decision in January 2006 in Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006). [TTABlogged here]. There the Board found Opposer's statement regarding use in commerce both wrong and fraudulent:

"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." (slip op., p. 25)

Text Copyright John L. Welch 2006.

"Meet the Bloggers" in Toronto - Mark Your Calendar

The Trademark Blog and the TTABlog are pleased to announce their second annual "Meet the Bloggers" event. It will be held in Toronto on Tuesday night, May 9th, from 10pm onward. Coincidentally, that's during the INTA annual meeting in Toronto. We are looking for a venue near "The Docks," the site of the "TNT"party, whatever that is. Our event will be much quieter (we think), and conducive to conversation. Any suggestions for a venue would be most welcome.

Welch, Schwimmer preside over 2005 event Click on photo from larger picture

Divided TTAB Panel Reverses Genericness Refusal of "DIGITAL INSTRUMENTS"

Finding the PTO's evidence insufficient, a divided Board panel reversed a genericness refusal of the mark DIGITAL INSTRUMENTS for "scientific and technological research for others and development of products for others, namely, atomic force microscopes and scanning tunneling microscopes, in the field of metrology." It affirmed a Section (2)(e)(1) mere descriptiveness refusal, but upheld Applicant's Section 2(f) claim. In re Veeco Instruments, Inc., Serial No. 76383240 (March 22, 2006) [not citable].


For some reason, the Board considered the Section 2(e)(1) issue first. Applicant Veeco argued that the terms "digital" and "instruments" are so vague and variously defined that the mark does not immediately convey the nature of its services. The Board, however, pointed out for the umpteenth time that marks must be considered not in the abstract, but in the context of the applicant's services. Dictionary definitions and Applicant's own promotional material (indicating that its products are highly sophisticated "instruments" that utilize "digital" technology) convinced the Board that DIGITAL INSTRUMENTS, when used with Applicant's services, would immediately describe a significant feature or function thereof.

Next, the Board considered the issue of genericness. As to the genus of the services, the Examining Attorney referred to "the field of metrological measurement," but the majority found that proposal "so overly broad as to be meaningless as a genus for applicant's services." Instead, it found that the genus "is more appropriately narrowed to those services pertaining to research and development of atomic force microscopes and scanning tunneling microscopes."

"An example, by analogy, would be if we had to determine whether a mark pertaining to tractor-trailer trucks is generic. A genus of vehicles would be over-broad because it would encompass all vehicles from tractor-trailer trucks to motor scooters; and evidence that the term is generic for motor scooters or a part for scooters would be irrelevant unless we had specific evidence also pertaining to the use of the term in connection with tractor-trailer trucks or parts therefore. Thus, the correct genus in our example would be much narrower - tractor-trailer trucks rather than vehicles." [TTABlog note: this makes no sense to me. A term could be generic for motor scooters without having to be generic for tractor-trailers, but another term could be generic for both.]

With that narrow genus in mind, the majority found "insufficient evidence from which to determine whether relevant purchasers would view the composite mark 'digital instruments' as the name of the class of services to which applicant's services belong, or that it would similarly name the class of goods which are the subject of applicant's services."

Finally, turning to the Section 2(f) issue, the majority noted that the Examining Attorney made "no comment at all" on the sufficiency of Veeco's evidence of acquired distinctiveness, but did say that she "does not challenge that the applicant has indeed used its mark extensively." The majority concluded that the PTO had accepted the 2(f) claim. In any case, the majority found Applicant's evidence sufficient: 15 years of use, awards for research, numerous patents, and "substantial" sales and advertising figures.


In dissent, Administrative Judge Bucher disagreed with the majority definition of the genus of the services at issue:

"Applicant's industry uses a variety of ever-broadening terms for applicant's field of endeavor, from scanning probe microscopy to advanced electronic microscopy or nanoscale metrology. Judging by the evidence of record, 'digital instruments,' while definitely much broader that any one of these terms, is still an overarching category of goods that would include applicant's goods and services."

As to the issue of how the term DIGITAL INSTRUMENTS is understood by the relevant public, Judge Bucher cited In re Gould Paper Corp., 5 USPQ2d 1110 (Fed. Cir. 1987), for the proposition that the term at issue is "merely a combination of generic terms that has no separate or distinct commercial impression apart from what one who understands the individual meaning would expect." However, unlike his decision in the recent FRESH ORGANICS case [TTABlogged here], Judge Bucher acknowledged that, under In re American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999), "the Trademark Examining Attorney must meet the rather heavy burden placed on the [USPTO] to demonstrate genericness through additional evidence of generic uses of the term."

Noting the "dearth of third party uses in the field," Judge Bucher "would contend" that even broad uses of "digital instruments" - whether signifying the form of the readouts, the computer hardware, or the precision of the measurement - are generic uses. He concluded that DIGITAL INSTRUMENTS "is one of those generic terms that any manufacturer (e.g., including applicant's competitors), any merchant or any user of these scanning probing microscopes should be permitted to use to refer to this item, irrespective of its source."

Judge Bucher agreed that DIGITAL INSTRUMENTS is at least merely descriptive, but he disagreed with the conclusion that Veeco had established secondary meaning. Because the mark is highly descriptive, the applicable 2(f) standard is "extremely difficult to meet," and Judge Bucher found Applicant's gross sales figures "most inadequate to support registrability."

TTABlog comment: This decision illustrates two troubling aspects of the Board's genericness jurisprudence. First, the definition of the genus is crucial in these cases, yet there seems to be little guidance as to how one goes about determining the genus.

Second , the majority's ruling exposes once again the impracticality of the CAFC's two-headed genericness test. If "digital instruments" isn't generic for digital instruments, what is it? In light of the CAFC's American Fertility test, maybe what is needed is a revival of the category of "marks" that, although not meeting the CAFC test, are nonetheless unregistrable: i.e., marks that are so highly descriptive they can never be trademarks. However, see Section 1209.01(c)(ii) of the TMEP, which instructs Examining Attorneys not to state that a mark is "so highly descriptive that it is incapable of acting as a trademark," but rather to stick with the language of genericness.

This is not the first time that Judge Bucher has indicated his dislike with the result of applying the CAFC test. In the FRESH ORGANICS case, he simply ignored American Fertility in reaching his genericness conclusion based on dictionary definitions alone. In 2004, he applied American Fertility, but with obvious reluctance, in reversing a genericness refusal of DIAMOND WHETSTONE for whetstones. In re Diamond Machining Technology, Inc., Serial No. 76345334 (May 4, 2004) [not citable]. There, as in the FRESH ORGANICS case, the Board found a "mixed bag" of evidence, but it concluded that:

"Under our case law, we must resolve these doubts [about genericness] in favor of applicant. Accordingly, on the issue of genericness, we have no choice but to reverse the refusal to register made by the Examining Attorney."

Text Copyright John L. Welch 2006