CAFC Affirms TTAB Rejection of Res Judicata Claim in "THINKSHARP" Opposition

In a precedential opinion, the CAFC affirmed the TTAB's decision (TTABlogged here) dismissing a Section 2(d)/dilution opposition brought by Sharp against the mark THINKSHARP for educational software and services. Sharp appealed only the portion of the Board's ruling that involved the issue of res judicata. Sharp Kabushiki Kaisha v. ThinkSharp, Inc., 79 USPQ2d 1376 (Fed. Cir. 2006).

ThinkSharp had filed two applications, one for the word mark THINKSHARP and one for a word-and-design version shown above. Sharp opposed both, but ThinkSharp chose to defend only the word mark. In the other opposition, it did not file an answer, leading the Board to issue a default judgment.

Sharp asserted (somewhat belatedly) that the default judgment as to the word-and-design mark "operated as res judicata to preclude ThinkSharp from contesting" the other opposition. The Board disagreed.

The CAFC noted that "issue preclusion" could not apply, because no particular issues were decided in the word-and-design opposition. As to "claim preclusion," the court found it "highly relevant" that the default judgment was entered without consideration of the merits. Quoting precedent, the Board observed:

"Precedent cautions that res judicata is not readily extended to claims that were not before the court, and precedent weighs heavily against denying litigants a day in court unless there is a clear and persuasive basis for that denial. *** Restraint is particularly warranted when the prior action was dismissed on procedural grounds." [citations omitted].

The Board concluded that applying claim preclusion here would not further the purpose of res judicata, which is to protect a party from having to relitigate the same issue against the same party in a separate action. Here, "not only are the marks not identical, but the issues of dilution and likelihood of confusion were not litigated in the defaulted opposition."

"Precedent and sound administrative policy support the Board's reasoning that a trademark owner is entitled to choose which opposition to defend, when the proceedings are not an attempt to evade the effect of a previous adverse judgment on the merits."

Text Copyright John L. Welch 2006.

TTAB Affirms Another 2(d) Refusal: Appellants Batting .088 in 2006

In the first 20 weeks of 2006, the TTAB has affirmed 62 out of 68 Section 2(d) likelihood of confusion refusals. That's a 91% affirmance rate, which means that Appellants are batting .088 in 2(d) appeals this year -- well below the legendary Mendoza line. Hunter Fan Company was added to the roster of failed applicants when the Board affirmed a 2(d) refusal to register WEST INDIES COLLECTION for "ceiling fans, electric light fixtures and portable lamps," finding the mark likely to cause confusion with the registered mark AMERICAN SIGNATURE WEST INDIES COLLECTION for furniture [AMERICAN and WEST INDIES COLLECTION disclaimed]. In re Hunter Fan Co., Serial No. 78196829 (May 15, 2006) [not citable].

AMERICAN SIGNATURE WEST INDIES COLLECTION
Examining Attorney Karen K. Bush relied on twenty database "hits" revealing retailers that sell furniture, ceiling fans, and lamps, and on third-party registrations for marks that cover the goods of both parties. She argued that the involved goods are complementary in that "an interior designer or home owner, for example, may coordinate ceiling fans, electric light fixtures, and/or portable lamps with a home's furniture." [I guess she hasn't seen the TTABlog House]. The Board agreed that the goods are related.

Hunter contended that the purchasers of the goods are sophisticated, but the Board wasn't buying. Because there are no limitations in the identifications of goods, it must be presumed that the goods move in all channels of trade to all classes of purchasers that would be normal for such goods.

As to the marks, Hunter asserted that the inclusion of the house mark AMERICAN SIGNATURE in the registered mark creates a commercial impression that is sufficiently distinct from Applicant's mark. Again, the Board disagreed.

"[E]ach of the marks, due to the shared phrase WEST INDIES COLLECTION, connotes a similar theme of a collection of West Indies-style items. The additional words AMERICAN SIGNATURE in the registered mark do not change that meaning. *** Even assuming that the phrase WEST INDIES COLLECTION is suggestive or geographically descriptive or geographically misdescriptive, the respective marks have essentially the same connotation, and when used on related goods, the marks are likely to cause confusion among purchasers."

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


TTABlog comment: In light of the disclaimers of AMERICAN and WEST INDIES COLLECTION, isn't the dominant part of Registrant's mark the word SIGNATURE? Of course, even with the disclaimers, the registered mark must be considered as a whole, but are these two marks confusingly similar? Do they really convey the same commercial impression? I don't think so.

See these two cases cited at Section 12.07.01(b)(iii) of the TMEP: In re Shawnee Milling Co., 225 USPQ 747 (TTAB 1985) (GOLDEN CRUST for flour held not likely to be confused with ADOLPH'S GOLD'N CRUST and design (with "GOLD'N CRUST" disclaimed) for coating and seasoning for food items); In re S.D. Fabrics, Inc., 223 USPQ 54 (TTAB 1984) (DESIGNERS/FABRIC (stylized) for retail fabric store services held not likely to be confused with DAN RIVER DESIGNER FABRICS and design for textile fabrics).

Text Copyright John L. Welch 2006.

The TTABlog Presents: The Leo Stoller Collection

The recently-posted "TTABlog Fraud Collection" was such a hit that I thought I'd try that approach again. Besides, the Board's recent decisions have been rather uninteresting and unblogworthy.

[TTABlog note: for an update on Leo Stoller's activities through 2007, see Section VII of this article, and also find later TTABlog postings by inserting the word "STOLLER" in the search box to the right].

I noticed that, in the past week, Leo Stoller filed about three dozen requests for extension of time to oppose, including 26 on May 24th along. Apparently he has taken a break from verbally pummeling Google and its attorneys at his rentamark blog. It was rumored at INTA Toronto that the USPTO sent a letter to Mr. Stoller in mid-April regarding his many extension requests, resulting in a prompt and drastic slowdown in Stoller's filings. Reportedly, Stoller has responded to the PTO letter, and a decision or order from the PTO is forthcoming. Perhaps Mr. Stoller will explain all this at his blog. Perhaps not.

Leo Stoller
Meanwhile, here's a handy compilation of TTABlog postings regarding Leo Stoller and his trademark-related activities.

TTAB cases:

• Leo Stoller Opposes "GOOGLE" Application on Multiple Grounds
• TTAB Denies Motion to Revoke Stoller Extension of Time
• "HYPNOSTEALTH" Applicant Moves to Dismiss Leo Stoller Opposition for Lack of Standing
• Surprise! Central Mfg. Co. Sanctioned for Non-Compliance with TTAB Discovery Order
• Leo Stoller Mowed Down by TTAB in "STEALTH" Opposition Dismissal
  
• TTABlog Adds Two More Leo Stoller Sanction Rulings to List
  
• TTABlog Provides List of Leo Stoller TTAB Sanction Rulings
  
• Leo Stoller At Forefront Of TTAB Drive For Increased Electronic Filing
• TTAB Panel Requires Electronic Filing While Dismissing Stoller "DARKSTAR" Opposition
  
• TTAB Denies Leo Stoller Summary Judgment Motion In "GROUND ZERO STEALTH" Opposition
• Leo Stoller Faces Formidable Foe in TTAB "STEALTH" Bowl Battle
• Leo Stoller Claims TTAB Constitutional Violations After Dismissal Of Opposition

Federal District Court cases:

• "Gross Misconduct" of Leo Stoller and his Counsel Leads to Dismissal of Chicago Lawsuit
  
• George Brett Hits Grand Slam in Leo Stoller "STEALTH" Lawsuit
  
• Columbia Pictures Takes On Leo Stoller In "STEALTH" Movie DJ Action
• Defendants In Chicago Lawsuit Charge Leo Stoller With TTAB Abuses As Part Of "Extortionate Protection Scheme"

CAFC cases:

• Leo Stoller Loses CAFC Appeal From TTAB Dismissal Sanction
• CAFC Affirms TTAB in Two Nonprecedential Decisions
• Another CAFC Defeat For Frequent TTAB Litigant Leo Stoller

Miscellany:

• Leo Stoller Extension Requests Halted on April 13th
• Leo Stoller Joins the Blogosphere!
• TTABlog Reply to Leo Stoller Statement of March 27th
• Leo Stoller Responds to March 27th TTABlog Report
• TTABlog Report: Leo Stoller Marches On
• Leo Stoller Submits Comments on Proposed TTAB Rule Changes
• Leo Stoller TTAB Extension Requests Top 550 in Last Three Months
• TTABlog Update on Leo Stoller and Companies
• Leo Stoller files 75 Extension Requests at the TTAB in First 5 Days of 2006
• TTABlog Report: Leo Stoller's Year 2005 in Review
• Leo Stoller and the "MERCHANT OF VENICE"?
• Leo Stoller Article In NY Times Provides Boost For TTABlog

Text Copyright John L. Welch 2005.

TTAB Finds "MAPCAD" and "CADMAP" Not Confusingly Similar, but Affirms Indefiniteness Refusal

Purchaser sophistication and the differences in the marks led the Board to reverse a Section 2(d) refusal of the mark MAPCAD for "computer software for professionals in the field of civil engineering excluding software used in drafting and mapping in the field of photogrammetry." The Board found Applicant Mapcad, Inc.'s mark not likely to cause confusion with the registered mark CADMAP for "computer software for use in the field of drafting, map drawing and photogrammetry." In re Mapcad, Inc., Serial No. 78312371 (May 11, 2006) [not citable].

MAPCAD specimen of use
The Board first affirmed the PTO's refusal to register based upon the indefiniteness of Applicant's identification of goods. For computer software, TMEP Section 1402.03(b) states that "[t]ypically, indicating only the intended users, field, or industry will not be deemed sufficiently definite to identify the nature of a computer program." The Board noted that "[t]he field of civil engineering is broad and ... use of software in one area of civil engineering would not necessarily mean that there was confusion with a similar trademark used on different software used in other fields of civil engineering."

Turning to the Section 2(d) issue, the Board pointed out that the marks are composed of two terms that are "admittedly generic or common" and that are not particularly strong when used in association with the identified goods. The terms are used in reverse order, "which changes their commercial impression, appearance, and sound." The Board concluded that "while the marks are similar, there are also significant differences."


CADMAP screenshot
As to the goods, the Board found "at least some overlap inasmuch as registrant's goods could similarly include mapping and drafting software for civil engineering professionals not in the field of photogrammetry." Applicant's declaration evidence that Registrant's MAPCAD software is in fact used strictly for photogrammetry was irrelevant, since Registrant's identification of goods is not so limited.

Turning to the "final significant factor," the sophistication of purchasers and the conditions of sale, the Board found, with the help of declarations from 16 professionals that "purchasers of these overlapping products ... would be sophisticated purchasers who would carefully consider software used in their professions[,] especially software related to obtaining precise measurements.

Considering all the evidence, the Board found that confusion is not likely. However, as indicated, it upheld the refusal to register based on indefiniteness.

Text Copyright John L. Welch 2006.

TTAB Reverses Disclaimer Requirement of "TELECHAT" for Dating Services

The PTO dialed a wrong number in requiring Applicant TelechaT Network, Inc. to disclaim the word TELECHAT in its mark shown below [NETWORK disclaimed] for "telephone and on-line dating service allowing participants to select, obtain and provide information and communicate with potential companions." In re TelechaT Network, Inc. , Serial No. 76535248 (May 11, 2006) [not citable].


The Examining Attorney relied on dictionary definitions of "tele" and "chat," and on several database and Internet printouts that included the term "telechat." The rest of the PTO's evidence comprised newswire reports and Internet and database articles from Canada, Israel, and Australia. The Board found the foreign evidence unhelpful, distinguishing this situation from that of In re Remacle, 66 USPQ2d 1222 (TTAB 2002) [evidence from English language website in Great Britain held admissible where professionals in the field would likely monitor foreign websites]:

"In this case, we do not think that potential users of applicant's telephone and online dating services are as likely to refer to foreign publications and newswire services and, therefore, the significance of the term in Israel, Australia, and even Canada, is less significant [sic] in helping us arrive at a conclusion as to the descriptiveness of the term in the United States."

In light of the evidence, the Board expressed doubt as to the descriptiveness of the term TELECHAT, and it resolved that doubt (as it must) in Applicant's favor. It observed that, although the telephone has been around for more than 100 years and although the Internet is no longer a novelty, there was little evidence that consumers would understand that the PTO's suggested meaning (to communicate with potential companions) is the one that would "immediately come to mind when these consumers encounter the term."

"While consumers may understand that the term can mean using the telephone to converse in an easy, familiar manner with potential companions, it is not at all clear that consumers will draw this conclusion. *** When the terms are combined, they create a term that appears nebulous and non-specific."

The Board therefore reversed the disclaimer requirement.



TTABlog comment: I am a bit uneasy with this one. It seems to me that the Board considered the mark in the abstract and not in relation to Applicant's services. If someone offered me TELECHAT brand "telephone dating services" that allow me to "communicate with potential companions," I think I would know exactly what TELECHAT means: I would be able to communicate with potential companions by telephone. That doesn't seem very nebulous to me. The fact that Applicant may be one of the few, or even the only, entity using the term is irrelevant. See, e.g., In re Zanova, Inc., 59 USPQ2d 1300 (TTAB 2001).

Text Copyright John L. Welch 2006.

TTAB Twin Killing: Surname Refusals of "LAURENTI" and "BREIL" Upheld

The TTAB turned a 2(e)(4) double play on May 11, 2006, finding the marks LAURENTI and BREIL to be primarily merely surnames for food items and horological instruments, respectively. In re Phoenix Intangibles Holding Co., Serial Nos. 76562080 and 76587659 [not citable], and In re Binda Int'l S.A., Serial No. 78313893 [not citable].


Judge Bucher penned both opinions; not surprisingly, the legal discussion in the two decisions is the same. The Board relied on its standard four-factor Benthin analysis: rareness, connection, meaning, and "look and feel." In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995).

As to LAURENTI, the PTO presented "hundreds of LAURENTI surname references from the USFIND database and from genealogical websites." Applicant Phoenix Intangibles argued that LAURENTI ranks 62,511th in popularity in the U.S., but the Board was unimpressed: "this ranking means only that many persons in the U.S. have surnames even more rare than 'Laurenti.'" In any case, it deemed LAURENTI to be a rare surname.

The Board found "no clear evidence" that someone named LAURENTI is associated with the applicant, and it noted that Applicant failed to provide any recognized meaning for the term. Finally, LAURENTI has the "look and feel" of a surname because it "looks like an Italian surname" and has a "similar structure and pronunciation to related surnames like Laurent, DeLaurentis and Laurante."

Consequently, the Board upheld the refusal to register LAURENTI.

a guy named Laurenti
As to BREIL, the PTO relied on 40 white page listings and 15 NEXIS hits, leading Applicant Binda to argue that BREIL is a "very rare surname" because "out of a population of about 296,217,713 in the United States this is .00001687%." Again, the Board rejected this statistical approach: "If one were to take a statistical measurement of this database for common names like 'Smith' or 'Jones,' each would constitute a relatively small fraction of the total database content."

As to the connection factor, again there was "no clear evidence" that anyone with the surname BREIL is associated with Binda. Applicant conceded that BREIL has no recognized meaning. And as to "look and feel," the Board observed that BREIL "has a similar structure and pronunciation to related Germanic surnames such as BRULE, BRIEL, and BREILING."

The Board concluded that BREIL is primarily merely a surname, albeit a rare one.

Text Copyright John L. Welch 2006.

Massachusetts Federal Court Deems "WOOLFELT" Generic for Wool Felt

With the Board's decisional outflow reduced to a mere trickle these past few weeks, I decided to report on a D. Mass. case that just appeared in the USPQ2d. Judge Michael Ponsor (who sits in Springfield) ruled on summary judgment that the term WOOLFELT is generic for wool felt. National Nonwovens Inc. v. Consumer Products Enterprises Inc., 78 USPQ2d 1526 (D. Mass 2005).


Plaintiff National Nonwovens brought suit claiming, inter alia, that Consumer Products Enterprises (CPE) was infringing its registered WOOLFELT trademark. CPE successfully moved for summary judgment on all counts; in particular it challenged Nonwoven's alleged mark on the ground of genericness. The court found that:

"overwhelming evidence of use by Plaintiff and retaliers, in books and magazines, in government documents, and from the internet, shows that 'wool felt' is, and has long been, a common name for the product Plaintiff and Defendant sell. Based on this evidence, no reasonable factfinder could conclude that the term 'wool felt' is anything other than a generic term for the parties' merchandise."

The court noted that Nonwovens' use of the term in compound form rather than as "wool felt" does not avoid genericness, nor its presentation as WOOLFELT or WoolFelt change the outcome.

Nonwovens contended that survey evidence is required to assess the usage of the term "wool felt," but the court felt otherwise: "Survey evidence is appropriate in cases where the question is whether a coined product name has become generic." Here, however, neither party claimed that Plaintiff invented the term "wool felt" or that the term has become "genericized." Therefore, the "primary significance test" of Section 1064(3) of the Lanham Act is inapposite and survey evidence is unnecessary.

The court also tossed out Nonwovens' copyright infringement claims, its unfair competition claims, and its trade dress infringement claims. But Plaintiff did manage to avoid an award of attorney's fees, the court noting as to the trademark infringement claim that "Nonwovens' ownership of two registered trademarks suggests that, at a minimum, Plaintiff had a colorable claim for a trademark violation."


TTABlog note: A hat tip to Pamela Chestek, whose membership on the successful defense team is unacknowledged in the USPQ2d report.

Text Copyright John L. Welch 2006.

Citable No. 28: TTAB Reverses Disclaimer Requirement and Clarifies Unitary Disclaimer Rule

There's nothing that gets the juices flowing like a new disclaimer decision, right? Well, hold onto your hat because that's just what the Board delivered in its 28th citable decision of 2006. The Board reversed a PTO requirement that Applicant Grass GmbH disclaim the phrase "SNAP ON 3000" in its mark SNAP ON 3000 AIRMATIC for furniture hardware and fittings. Instead the Board blessed Applicant's proposed disclaimer of "SNAP ON" and "3000" separately, rather than as a unitary phrase. In re Grass GmbH, 79 USPQ2d 1600 (TTAB 2006).


Applicant Grass stated that "snap on" signifies that some of its goods "are affixed by snapping them on," and that "3000" is a model number. The Examining Attorney demanded that Applicant disclaim "SNAP ON 3000" "as a unitary expression, rather than as separately disclaimed terms."

The Board noted that its precedents require that unitary expressions "be disclaimed as a composite." Thus the Board's decision "hinges" [the Board's pun, not mine] on whether "SNAP ON 3000" forms "a grammatically or otherwise unitary expression." TMEP Sec. 1213.08(b)(4th ed. 2005).

Applicant argued that "there is no grammatical connection or other nexus between "SNAP ON" and "3000" except their contiguity in the mark." It asserted that "the model number '3000' is arbitrary and therefore very different from the wording 'snap on,' which has a recognized meaning in the industry." Moreover, its proposed separate disclaimer "will allow competitors to use each of those terms individually, but ... competitors have no need to use the composite SNAP ON 3000," a combination that it coined.

The Board ruled that "SNAP ON 3000" is not a unitary expression that must be disclaimed in its entirety. It is composed of "two separable elements" that are "descriptive in different ways for different reasons." Unlike the terms GLASS TECHNOLOGY, MEDICAL DISPOSABLES, CERTIFIED HEARING AID AUDIOLOGIST, and THE RED CUP in previous cases, "[t]here is no grammatical or other inherent connection between the two terms."


Although TMEP Sec. 1213.08(b) states that "disclaimer of individual words separately will usually be appropriate only when the words being disclaimed are separated by registrable wording," the Board pointed out that this is a "guideline," not a "dispositive rule of law or the end of the inquiry."

"The issue is whether the components form a grammatically or otherwise unitary expression, not whether they are contiguous. In cases such as this, although the components in question are contiguous in the mark, they are not a unitary expression because each component retains its separate descriptive significance; the components do not merge to form a composite which has a single, unitary significance."

The Board therefore reversed the PTO's disclaimer requirement and deemed Applicant's proposed disclaimer acceptable.

Text Copyright John L. Welch 2006.

TTABlog Comment: Why File a Section 15 Declaration?

While at INTA in Toronto, I attended the session on U.S and Canadian oppositions. As usual, I couldn't resist putting in my two cents during the question period. One issue that came up concerned incontestability and its role in TTAB proceedings. I opined that incontestability is relevant only in civil actions, not in Board proceedings. Section 14 of the Lanham Act provides a "statute of limitations" that precludes challenges to a registration on the Principal Register after its fifth anniversary, except on certain grounds, regardless of whether a Section 15 declaration has been filed. (See TBMP Section 307.02(b) and cases cited therein). So why file?


The recent 1st Circuit decision in Borinquen Biscuit Corp. v. M.V. Trading Corp., 78 USPQ2d 1454 (1st Cir. 2006), illustrates the importance of the Section 15 filing. The appellate court affirmed the grant of a preliminary injunction in a case involving galletas (cookies, more or less) sold in Puerto Rico under the federally-registered trademark RICA.

The federal registration for RICA gave the mark a presumption of distinctiveness, but Plaintiff Borinquen had not bothered to file the Section 15 declaration that would have made its right to use incontestable. Therefore, as Judge Selya explained, rather than being conclusive, the presumption of distinctiveness was rebuttable:

"When, as in this case, the PTO registers a mark without first requiring the applicant to prove secondary meaning, the holder of the mark is entitled "to a presumption that its mark is inherently distinctive, as opposed to merely descriptive.' ***

"The effect of that presumption depends on whether the registered mark has attained incontestable status. If the registered mark has become incontestable through the owner's compliance with the applicable statutory formalities, the presumption is conclusive. 15 U.S.C. Sec. 1115(b). If, however, the registered mark remains contestable, the putative infringer may defend a suit on the ground that the mark does not merit protection because it is not inherently distinctive ... but, rather, is merely descriptive of the product."

For a contestable mark, registration shifts the burden of proof from the plaintiff to the defendant, "who must introduce sufficient evidence to rebut the presumption of the plaintiff's right to exclusive use" through proof that the mark is merely descriptive. If the defendant succeeds, the plaintiff "must take an alternative route and assume the devoir of persuasion on the issue of whether its mark has acquired secondary meaning."

Defendant M.V. Trading failed to overcome the presumption of distinctiveness. But had Plaintiff Borinquen filed its Section 15 declaration seasonably, the issue of distinctiveness could not have been raised.

TTABlog note: Although the ground of likelihood of confusion is unavailable as a basis for cancelling a registration after its fifth anniversary, partial cancellation under Section 18 is permitted for purposes of restricting the goods or services in order to avoid a likelihood of confusion. See TBMP Sec. 307.02(a).

Text Copyright John L. Welch 2006.

The TTABlog Fraud Collection: Is There a Fraud in Your Future?

Ok, so it's a collection not exactly worthy of a Time-Life infomercial, but I thought it would be useful to gather the Board's fraud decisions during the past 18 months (i.e., since the birth of the TTABlog). In the seven final decisions summarized below, the Board found fraud in three cases (one citable), declined to find fraud in two others (one citable), granted a motion to add fraud counterclaims based on evidence uncovered during an opposer's testimony period (citable), and distinguished between a fraud claim and one for nonuse (citable).


In my December 2004 article entitled "The Board's-Eye View: Six Potential Pitfalls in Trademark Prosecution," I reviewed six then-recent fraud decisions and came to the following conclusion:

"these six TTAB decisions underscore a fundamental principle: when an applicant makes a verified or sworn statement regarding use of its mark, that statement had better be completely true. False statements will not be readily excused. Lack of legal advice, misunderstanding of the statutory requirements, language difficulties, and/or clever wordplay will not provide a defense to a charge of fraud. Nor will the (wholly expected) assertion of lack of fraudulent intent."

That analysis continues to hold true. If I had a client with a potentially troublesome application or registration, I would bite the bullet and file a new application right away. I don't think the Board's recent fraud rulings give any reason for optimism that a problematical application (or registration), even if amended immediately, could survive a subsequent fraud challenge.


Fraud Claims Sustained:

Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006). In this citable decision, the Board cancelled three registrations of Opposer Standard Knitting, finding that false statements made to the PTO regarding use of the marks on certain clothing items constituted fraud. The registrations listed various items of men'’s, ladies'’ and children'’s clothing, but discovery revealed that, when Standard filed its two underlying use-based applications and when it filed its Statement of Use in the third application, it had not used the marks on "“at a minimum, most, if not all, of the items of children'’s clothing identified in each of the three registrations."” Standard claimed that the false statements were the result of honest mistake and misunderstanding rather than fraudulent intent. The Board ruled, however, that "[i] 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." (TTABlogged here).

Physicians Formula Cosmetics, Inc. v. Cosmed, Inc., Cancellation No. 92040782 (March 11, 2005) [not citable]. The Board invalidated Physicians' registration on the ground of fraud in the filing of a Statement of Use. In its SOU, Registrant "“affirmed to the PTO that [it] had used the involved mark on all of the listed goods. . . ."” During discovery, however, Cosmed'’s counsel stipulated that Cosmed had never used the PHYSICIANS COMPLEX mark on several of the cosmetics products listed in its registration. Cosmed'’s president testified that his brother, as Treasurer, signed the Statement of Use: "“It was that we intended to use it."” Petitioner amended its Section 2(d) petition for cancellation to add a claim of fraud, and then succeeded on its partial summary judgment motion on that added ground. The Board found that Petitioner had carried its burden to prove its allegation of fraud "'‘to the hilt'’ with clear and convincing evidence."” "“Specifically, the stipulation regarding respondent'’s non-use of certain goods [sic] identified in the registration, combined with the above-quoted testimony of respondent'’s president, establish that when respondent signed the statement of use, respondent knew, or should have known, that the averment regarding use of the mark on all of the goods identified therein was false."” (TTABlogged here).

J.E.M. Int'l, Inc. v. Happy Rompers Creation Corp., 74 USPQ2d 1526 (TTAB 2005) [not citable]. The Board granted Petitioner'’s summary judgment motion cancelling a registration for the mark IT'’S A GIRL THING on the ground of fraud. The registration listed some 150 clothing items, and in its Statement of Use, Happy Rompers claimed use on all the goods. However, after the petition for cancellation was filed and discovery commenced, Happy Rompers changed its tune: it moved to amend the registration to delete more than 100 items. In light of the Board'’s ruling, however, that motion became moot. J.E.M. moved for summary judgment on the ground of fraud, relying on Happy Rompers'’ discovery responses showing that Rompers was not using, and had never used, its mark in connection with the subsequently-disavowed clothing items. Happy Rompers, not surprisingly, declared that it did not intend to defraud the PTO. The Board, however, agreed with J.E.M. that Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003) is applicable here: "“Respondent'’s knowledge that its mark was not in use on about 100 of the approximately 150 identified items -- or ‘its reckless disregard for the truth -- is all that is required to establish intent to commit fraud in the procurement of a registration."” (TTABlogged here).


Fraud Claim(s) Dismissed:

Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., 78 USPQ2d 1899 (TTAB 2006). In this citable decision, the Board rejected Petitioner's fraud claim and granted Respondent'’s 2(d) counterclaim for cancellation. Petitioner contended that Respondent had committed fraud on the PTO by falsely claiming use of its mark MAID TO ORDER in interstate commerce. But the Board concluded that Petitioner failed to meet its "“heavy burden" to prove fraud: "“It was not unreasonable for Ms. Kern, as a layperson, to believe that [Respondent'’s] 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."” [In other words, the question of whether the mark was used in interstate commerce leaves room for error; the question of whether a mark has been used at all, however, is black-and-white.] 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. (TTABlogged here).

Hasbro, Inc. v. Goldman, Opposition No. 91156238 (August 29, 2005) [not citable]. The Board granted Applicant Goldman'’s counterclaim for cancellation on the ground of abandonment and dismissed this Section 2(d) opposition to registration of the mark COTTON CANDY CLOUD CASTLE for dolls, dollhouses, and other toys. Goldman claimed that Hasbro committed fraud when it filed its combined Section 8 and 15 declaration for its COTTON CANDY registration in September of 1989, first because it averred that the mark had been in use for five consecutive years. However, the person who signed the combined declaration did not testify, and there was testimony that COTTON CANDY was used in the late 1980s as a "cutie mark" on another toy pony known primarily by another name. Therefore the Board found the evidence too ambiguous to permit a finding of fraud. Goldman also claimed fraud because the combined declaration stated that the mark was in current use, but the specimen did not show "current" use. The Board, however (apparently unwilling to saddle Hasbro with a fraud charge), pointed out that the acceptability of a specimen is not a separate ground for cancellation, and it declined to find fraud on that basis. (TTABlogged here).



Fraud Claim Added:

Turbo Sportswear, Inc. v. Marmot Mountain Ltd., 77 USPQ2d 1152 (TTAB 2005). In this citable decision , the Board granted Marmot's motion to add counterclaims seeking cancellation of five asserted registrations on the ground of fraud. Although the case was already in Opposer Turbo'’s testimony period, the Board found the motion timely because it was based on evidence that was not previously available. Marmot asserted that it learned during the testimony deposition of Opposer'’s vice-president that Turbo'’s mark was never used on various goods included in the five registrations. Turbo Opposer contended that the motion was untimely because Applicant "“was aware of what goods the marks were being used on when it received opposer'’s responses to its interrogatories in 2003."” The Board determined that the motion was brought promptly after the grounds therefor were learned, and it concluded that the interrogatory answers "“dealt only with whether the marks were in use on the goods at the time the responses were provided."” The Board issued an Order re-opening discovery and re-setting trial dates. (TTABlogged here).


Fraud/Nonuse Distinguished:

Grand Canyon West Ranch, LLC v. Hualapai Tribe, 78 USPQ2d 1696 (TTAB 2006). In this citable decision, the Board granted in part Opposer Grand Canyon's motion for summary judgment on the ground of nonuse of the Tribe'’s mark for some of its services. Because Opposer did not allege fraud, however, the Board did not reach the issue of whether Applicant'’s inclusion of the "“extra services" in its use-based application constituted fraud (which would render the entire application void ab initio). Grand Canyon moved for summary judgment on its nonuse claim, asserting that the application as a whole must fail. The Board, however, disagreed: "“The case law is clear that holding an application to be void is an appropriate remedy when the pleaded ground either is fraud, or that the applicant has not used the applied-for mark on any of the goods or services identified in the application prior to the filing of the application."” Here, Grand Canyon did not plead fraud as a ground for opposition. The Board held that "“as long as the mark was used on some of the identified goods or services as of the filing of the application, the application is not void in its entirety."” The Board then found appropriate Applicant'’s proposed amendment to delete the "“extra"” services. (TTABlogged here).

Text and Photographs Copyright John L. Welch 2005-6.

TTAB Affirms Disclaimer Requirement of "One Minute" for Bug Remover

The Board affirmed the PTO's requirement that Applicant Bar's Products, Inc. disclaim the words ONE MINUTE in its logo mark shown immediately below [BUG REMOVER disclaimed] for "cleaning compounds for removing insects from motor vehicles." In re Bar's Prods., Inc., Serial No. 76415261 (May 4, 2006) [not citable].


Examining Attorney Verna Beth Ririe contended that "one minute" is merely descriptive of Applicant's product because, as demonstrated by various newspaper articles, quick removal of bugs from motor vehicles is a desirable characteristic. She argued:

"The wording 'ONE MINUTE' ... describes a bug remover composition that, unlike some compositions which users must let sit on a vehicle for several minutes before wiping off, will be effective in 'ONE MINUTE.' The term 'ONE MINUTE' tells users they need not wait more that 'one minute' before they wipe the bug remover off the vehicle."

Applicant, on the other hand, asserted that "one minute" is understood to mean "right away," not "to describe the period of time technically comprising sixty seconds." Applicant called it "absurd" to believe that the PTO makes a determination "as to whether or not the time period contained within a mark actually prescribes the amount of time required to effectuate each product or service."

The Board agreed with the PTO that the term "one minute" should be taken literally, especially in light of the numeral "1" that is surrounded by the wording.

Applicant pointed to "countless other registrations which incorporate the common element 'ONE MINUTE' without disclaimer," but the Board observed once again that each case must be decided on its own merits. However, it proceeded to review the specific registrations cited by the PTO (which included a disclaimer) and the Applicant (without disclaimer).

As to the former, it found it likely that a closet makeover kit [30 MINUTE CLOSET MAKEOVER] could reasonably be installed in thirty minutes, that one-quarter of an hour proper time to prepare the meals in THE 15-MINUTE CHEF, and ten minutes should be is the enough time to get a prescription filled [10 MINUTE PRESCRIPTIONS].

As to Applicant's cited registrations -- involving the term ONE MINUTE for meditating, or reading the Bible, or losing weight, or making a million dollars -- the mark owners would "legitimately anticipate" that consumers would not take the term literally, but rather would understand it to mean that the activity "can be done more quickly than one might expect," and not that the activity can be completed in one minute.

Based on the record evidence, the Board found it "realistic to believe that 'one minute' is all the time one needs to leave this liquid product to do its work." It therefore affirmed the disclaimer requirement. In accordance with Rule 2.142(g), however, Applicant was allowed thirty days to submit the required disclaimer.

Text Copyright John L. Welch 2006.

TTAB Reverses 2(e)(1) Mere Descriptiveness Refusal of "PATCH BOOSTER" for Heart Devices

The Board reversed a Section 2(e)(1) refusal of the mark PATCH BOOSTER, finding it not merely descriptive of permanent and temporary heart assist devices, percutaneous access devices consisting of a disk implanted beneath the skin, implanted pumps, and external drive units therefor. In re L.Vad Technology, Inc., Serial No. 78285714 (April 28, 2006) [not citable].


The Examining Attorney advanced three different arguments in support of her assertion that PATCH is merely descriptive of the goods, but all were in vein. [TTABlog pun!]. First, she argued that Applicant's goods act like a "patch" because they mend and strengthen the ability of the heart to function; she pointed to Applicant's statement that its goods "in a sense act as a patch in that they help to keep the patient's heart working." Not a bad argument, right? Wrong. The Board agreed with Applicant L.Vad that "its goods can be deemed to be a patch only figuratively, not literally."

Second, the PTO relied on dictionary definitions and NEXIS excerpts that used the word "patch" in the context of covering a hole in the heart and mending damaged tissue. The Board, however, found that these references do not support a finding that "patch" is merely descriptive because they do not involve tissue patches of the type mentioned in these articles.

Thirdly, the PTO argued that "patch" may be a "drug-impregnated material" worn on the skin, and thus the word describes the "percutaneous access devices" of the application. The Board was not persuaded. Applicant's disk is beneath the skin, not adhered to the skin. "There is no evidence that medication delivery devices implanted beneath the skin are called 'patches.'"

In sum, the Board found that the word PATCH is "at most suggestive of the goods."

As to the word BOOSTER, the Examining Attorney relied on dictionary evidence indicating that "booster" means "something which improves or increases," and she contended that Applicant's goods "are used to boost the ability of the heart to work." The Board found the significance of the word "booster" to be "too vague and generalized to be deemed merely descriptive." Again, the Board found this term to be merely suggestive.

As to the combination PATCH BOOSTER, that too is suggestive, not merely descriptive:

"'Patch booster' would seem to have two possible grammatically correct constructions, neither of which appears to make sense as applied to applicant's identified goods. Whether the composite is viewed to mean 'a patch which boosts,' or is viewed to mean 'a booster for a patch,' the construction is awkward and does not directly describe applicant's goods, which do not involve a 'patch' as that term is defined in the record (i.e., a heart tissue patch or a medication skin patch)."

The Board acknowledged four published instances of use of the term "patch booster," but found that evidence unpersuasive. "These are isolated instances of use spread over thirty-five years" and the paucity of this evidence "weighs against a finding of mere descriptiveness." Moreover, this evidence has "little or no probative value" as to how the term would be perceived today.

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


In a brief concurring opinion, Judge Bucher noted that "those knowledgeable about the goods will understand the etymology of each individual word." However, "even if the word PATCH conveys information about the nature of the implanted balloon pump portion of the device, and even if the word BOOSTER conveys information about the function of the entire device," when these two arguably descriptive words are combined, the composite "appears to be nothing more than suggestive" of the goods.

Text Copyright John L. Welch 2006.

"WORLD GYM" Flexes Its Muscles in TTAB 2(d) Opposition Victory

World Gym International pinned Applicant Eunice U.S.A. to the mat in a Section 2(d) opposition involving Applicant's mark shown immediately below [THE WORLD IS OUR GYM disclaimed] for various clothing items, including shirts, shorts, pants, and jackets. World Gym Int'l, Inc. v. Eunice U.S.A., Inc., Opposition No. 91124916 (May 2, 2006) [not citable].

World Gym relied on several registrations, including one for the mark shown immediately below [GYM disclaimed] for "shirts, shorts, pants, sweat suits, jackets, hats, gloves."


The Board first dealt with a procedural issue. The parties had stipulated under Rule 2.123(b) that testimony could be submitted by declaration, but Opposer objected to the declaration of Applicant's attorney. The Board observed that an attorney "generally may not appear as a witness on behalf of a party he is representing," and it gave the declaration and accompanying exhibits "no weight."

World Gym claimed that its WORLD GYM marks are famous, but its proofs fell short: it failed to provide actual sales figures, advertising expenditures, or evidence of the extent of its advertising. Quoting Blue Man Prods. Inc. v. Tarmann, 75 USPQ2d 1811, 1819 (TTAB 2005), the Board pointed out that:

"In view of the extreme deference that is accorded to a famous mark in terms of the wide latitude or protection it receives, and the dominant role fame plays in the likelihood of confusion analysis, we think that it is the duty of a plaintiff asserting that its mark is famous to clearly prove it."

The Board concluded that WORLD GYM was not shown to be a famous mark. However, Opposer's evidence of "public exposure to the WORLD GYM marks in connection with the gym and fitness centers and the clothing, coupled with the lack of evidence of third-party use of the terms WORLD or WORLD GYM," led the Board to find that WORLD GYM is a "strong mark with some renown."

As the goods, some are identical clothing items, others related. In light of the lack of any limitations in the identifications of goods, the channels of trade must be presumed to "overlap." Applicant meekly argued that it "has never marketed or sold athletic, exercise, or fitness apparel," and "has never marketed or sold its apparel to sporting goods stores, gyms, fitness centers, or other physical exercise oriented customers or markets." The Board, however, noted for the millionth time that it cannot read limitations into the goods as identified in the involved application and registrations.


As to the marks, the Board recognized "certain differences," but it found that the slogan THE WORLD IS OUR GYM is "visually much more prominent" than the rest of Applicant's mark. Similarly, the words WORLD GYM dominate Opposer's mark "inasmuch as it is by the words that consumers will call for the goods." The respective dominant elements THE WORLD IS OUR GYM and WORLD GYM "are entitled to the most weight" in the duPont analysis. Those elements, the Board found, are similar in connotation and commercial impression, and therefore the subject marks, when used on identical or closely related clothing items, "indicate goods emanating from a single source."

Balancing the duPont factors, the Board concluded that the evidence "supports a finding of likelihood of confusion."

The Board declined to consider Opposer's other registrations, and likewise declined to consider World Gym's dilution claim.

TTABlog comment: The dilution claim would likely have failed because the marks at issue are neither identical nor substantially similar. (See my dilution article here, page 12).

Text Copyright John L. Welch 2006.

Citable No. 27: Domestic Assignee of Section 44 Applications Allowed to Amend Basis for Registration

In its 27th citable decision of 2006, the Board gave Applicant Joker, Inc. 30 days to amend two applications to change the filing basis because the original section 44 basis became invalid when the applications were assigned to Joker, a Texas corporation. Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783 (TTAB 2006).

Applicant's PINGU & Design mark
The Board noted that, because Section 44(e) of the Trademark Act represents an exception to the requirement that applicants must make use of a mark in commerce prior to US registration, "the requirements imposed on Section 44 applicants are strictly construed." A Section 44 applicant must be a person whose country of origin is a party to a convention or treaty to which the US is also a party. "Country of origin" means the country in which applicant has a "bona fide and effective commercial or industrial establishment," or if none, the country of domicile, or the country of which applicant is a national.

Opposer's PING mark
Applicant Joker contended that it has qualifying "countries of origin" that entitled it to rely on its predecessors' Section 44 claims. The Board disagreed. Joker's status as a trademark holding company and wholly-owned subsidiary of a UK company was not sufficient, nor was the fact that its officers and principals operate outside the US and that it may sell products abroad through related companies or licensees. Joker is "purely and simply a domestic corporation and, thus, does not qualify as a 'person' entitled to claim the benefits of Section 44(e)." The Board therefore agreed with Opposer Karsten that Joker cannot rely on the Section 44 basis asserted by its foreign assignor.

The next question was whether the assignment rendered the applications invalid. The Board noted that the Trademark Law Treaty Implementation Act of 1998 (TLTIA) permits an applicant to amend or substitute bases both before and after publication of a mark for opposition. In Leeds Technologies Ltd. v. Topaz Communications Ltd., 65 USPQ2d 1303 (TTAB 2002), the Board confirmed that "such an amendment or substitution of application basis was acceptable for applications that are the subject of an opposition proceeding, noting that such amendments to add a post-publication Section 1(b) basis are permissible if there is a continuing valid basis for registration."

Therefore, the Board ruled that the subject applications are not void due to the assignment to the Texas corporation and that the corporation may file an amendment (within 30 days) to substitute an acceptable basis for registration in each application.

Text Copyright John L. Welch 2006.

TTABlog Posts Two "MEET THE BLOGGERS" Photos

Ok, it's a weak headline, but it's the best I could come up with this morning. A large TTABlog thank you to all who attended. I especially appreciated the kind words regarding we bloggers and our efforts.

The BeerBistro did indeed turn out to be an excellent venue, and attendance was impressive and gratifying. Based upon my observations, and applying the duPont factors, I found that the attendees had a very good time (see below). I know I did.


Discussions are underway for version three of "Meet the Bloggers," at next year's INTA meeting in the Windy City. We expect to extend a personal invitation to a particularly controversial Chicagoan -- yes, Ozzie Guillen!

Two bloggers(Can you name them?)

"Meet the Bloggers" Caps Off Tuesday Night at INTA 2006

INTA 2006 will reach a climax of excitement tonight at the BeerBistro, site of the second annual "Meet the Bloggers." All are invited. The BeerBistro is located at 18 King Street East, near the corner of Yonge Street. [See prior posting here.]

Beer Bistromap here
Yesterday evening I found myself visiting the Hockey Hall of Fame. I'm not a big fan of halls of fame, having been to baseball's and basketball's. Nor am I a fan of hockey. Hence, not even the "wall of pucks" moved me. Anyway, here is a trivia question: where is the bowling hall of fame?

Proof of Attendance

Thousands Descend on Toronto for INTA 2006

Toronto is swarming with trademark people, many complaining about how cold it is. I say, toughen up, for Pete's sake. Patent lawyers don't complain like that! I arrived at noon on Sunday, and had to wait more than 4 hours for my room to be ready. And then this is my view -- I kid you not!


In past years, I would be worn out from three or four days of smiling, so I've decided to wear a scowl for at least the first day. The ineptitude of Air Canada and the Fairmont Royal York Hotel have made that pretty easy.

So far, the few blocks I've seen of Toronto remind me of Atlanta, and that's not good. Maybe tomorrow I'll have a chance to walk around and see a bit more. Or I may take a ride in one of these Hippos, which seem to offer a bland version of the Boston Duck Tour® brand amphibious vehicles sightseeing tour.


In Boston, passengers quack like a duck. In Toronto, I guess they snort in unison?
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Current Roster of TTAB Administrative Trademark Judges

Presented below is the current roster of TTAB Administrative Judges, beginning with Chief Judge Sams and then proceeding alphabetically from B to Z. The very recent appointment of Peter W. Cataldo brings the total to 15. I'm not sure whether any of the judges will attend our INTA "Meet the Bloggers" event on Tuesday night (details here), but one former judge has promised to make an appearance.


Sams, J. David, Chief Judge: Appointed to TTAB in 1981; Appointed Chief Judge, 1986; Prior Professional Experience: Trademark Examining Attorney; Petitions and Special Projects Attorney, Office of the Assistant Commissioner for Trademarks; Education: B.A., Davidson College; J.D., Vanderbilt University.

Bucher, David E., Judge: Appointed to TTAB in 1998; Prior Professional Experience: Trademark Examining Attorney, 1981-84; Senior Examining Attorney, 1984-85; Legislative Assistant, Office of U.S. Senator Paul Simon, 1985-86; Director, Trademark Examining Organization, 1987-96; Deputy Assistant Commissioner for Trademarks, 1996-98; Education: B.A., Eastern Mennonite University (1974); J.D., George Washington University (1979).

Cataldo, Peter W., Judge: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Canisius College; J.D., Albany Law School.

Drost, Albin F., Judge: Appointed to TTAB in 2001; Prior Professional Experience: Attorney in Judge Advocate General'’s Corps, 1979-1982; Trademark Examining Attorney 1983-1986; Associate Solicitor, Deputy Solicitor, Acting Solicitor in Office of Solicitor, 1986-January 2001; Education: B.A., College of the Holy Cross; J.D., Dickinson School of Law of the Pennsylvania State University.

Grendel, Charles M., Judge: Appointed to TTAB in 1999; Prior Professional Experience: Private Practitioner in Oregon, 1987-90; Trademark Examining Attorney, 1990-94; TTAB Attorney-Advisor, 1994-99; Education: B.A., Stanford University; J.D., University of Oregon School of Law.

Hairston, Paula T., Judge: Appointed to TTAB in 1994; Prior Professional Experience: Interlocutory Attorney; Assistant to the Assistant Commissioner for Trademarks; Petitions and Special Projects Attorney; Education: B.A., University of North Carolina at Greensboro; J.D., Catholic University of America.

Hohein, G. Douglas, Judge: Appointed to TTAB in 1990; Prior Professional Experience: Trademark Examining Attorney, 1977-81; TTAB Interlocutory Attorney, 1981-90; Education: B.A. with highest distinction, University of Virginia; J.D., University of Virginia.

Holtzman, Terry E., Judge: Appointed to TTAB in 1999; Prior Professional Experience: Trademark Examining Attorney, 1983-90; TTAB Interlocutory Attorney, 1990-99; Education: B.A. with honors, American University; J.D., George Mason University.

Kuhlke, Karen, Judge: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Steptoe & Johnson, Washington, D.C.; Education: B.A., University of Kansas; M.A., Columbia University; J.D., Georgetown University.

Quinn, T. Jeffrey, Judge: Appointed to TTAB in 1988; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Tulane University; J.D., Tulane University School of Law.

Rogers, Gerard F., Judge: Appointed to TTAB in 1999; Prior Professional Experience: Trademark Examining Attorney, 1987-90; Assistant to the Assistant Commissioner for Trademarks, 1990-92; TTAB Staff Attorney, 1992-99; Education: J.D., magna cum laude, New England School of Law (1987).

Seeherman, Ellen J., Judge: Appointed to TTAB in 1987; Prior Professional Experience: Associate, Fross, Zelnick, Lehrman & Zissu (New York, NY), 1975-81; Trademark Examining Attorney, 1982; Staff Assistant, Special Assistant to the Assistant Commissioner for Trademarks, 1982-1987; Education: A.B., Brandeis University (1972); J.D., New York University School of Law (1975).

Walsh, James, Judge: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; USPTO Administrator for Trademark Policy and Procedure; TMEP Editor; Arnold & Porter, Washington, D.C.; Education: B.A., College of the Holy Cross; J.D., Georgetown University.

Walters, Carlisle, Judge: Appointed to TTAB in 1996; Prior Professional Experience: Office of Legislative and International Affairs, Trademark Counsel; Administrator for Trademark Legal Policy for Assistant Commissioner for Trademarks; TMEP Editor; Of Counsel, Finnegan, Henderson, Farabow, Garret and Dunner; Education: B.A., Clark University; J.D., New England School of Law.

Zervas, Albert, Judge: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Kaye Scholer, New York; Marks & Murase, Washington, D.C.; Education: B.A. and J.D., University of Virginia.
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Citable No. 26: TTAB Reverses Failure-to-Function Refusal of "INFOMINDER" Service Mark

In its 26th citable decision of 2006, the TTAB reversed the PTO's refusal to register (under Sections 1, 2, and 45 of the Trademark Act) the mark INFOMINDER for "reminder services in the area of upcoming important dates and events; personal scheduling services provided via the Internet." The Board reviewed Applicant's specimen, website, and brochure, concluding that the PTO was wrong in contending that the mark "does not function as a service mark to indicate the source of the services." In re Ancor Holdings, LLC, 79 USPQ2d 1218 (TTAB 2006).


Applicant's specimen of use
(click on illustration for larger view)
The Examining Attorney maintained that the "specimen of use shows use of the mark for goods, not services." He focused on the words "tool" in Applicant's specimen and the words "product" and "suite" in the website and brochure, in contending that "the perception of the mark on the specimen is for software that is used in the performance of the services, but not as a source indicator for the services themselves."

Applicant Ancor asserted that it provides an on-line, web-based service, and "does not provide, download, or sell any type of software."

The Board noted that it must base its "determination of public perception of applicant's mark on the manner of use of INFOMINDER in the advertising which has been submitted as a specimen."

"Further, we must make that determination within the current commercial context, and, in doing so, we may consider any other evidence of record 'bearing on the question of what impact applicant's use is likely to have on purchasers and potential purchasers.'"

As to the word "tool," the Board asserted that the Examining Attorney was reading that term too narrowly. "A more appropriate definition of 'tool' used in the context of applicant's services is, 'Something regarded as necessary to the carrying out of one's occupation or profession.'" Thus, applicant's customers "presumably would be seeking a business tool for scheduling purposes."

In view of the "ambiguity" of the word "tool" and the "blurring between services and products that has occurred with the development and growth of web-based products and services," the Board deemed it "important" to review all of the information in the record in order to understand how the mark will be perceived by customers.


In that light, the Board concluded that INFOMINDER does indeed function as a service mark. Applicant's specimen "in today's commercial context, sufficiently creates in the minds of purchasers an association between the mark and applicant's identified reminder and scheduling services."

The Board therefore tossed out the refusal to register.

Text Copyright John L. Welch 2006.

Citable No. 25: TTAB Attempts to Clarify Doctrine of Foreign Equivalents in Affirming 2(d) Refusal of "MARCHE NOIR"

In its 25th citable decision of 2006, the Board provided some clarification regarding the doctrine of foreign equivalents in its affirmance of a Section 2(d) refusal to register the mark MARCHE NOIR for jewelry. The PTO had deemed the mark confusingly similar to the registered marks BLACK MARKET MINERALS for "retail jewelry and mineral store services" (MINERALS disclaimed) and BLACK MARKET for women's clothing. The Board affirmed the former refusal but reversed the latter. In re Thomas, Serial No. 78334625 (April 24, 2006).


With regard to the BLACK MARKET MINERALS registration, the Board found Applicant's goods and the Registrant's retail services to be "competitive, inherently related goods and services." Applicant Thomas tried to distinguish its goods by pointing out that its jewelry is of the "Goth" style, whereas Registrant sells components for making jewelry, but the Board once again pointed out that it must look to the goods and services as identified, rather than to the actual usage of the marks. There are no such limitations on use in the application or the cited registration.

Turning to the marks, the Board noted that MARCH NOIR is a French term that Applicant translated into English as "Black Market." The doctrine of foreign equivalents requires that "foreign words from common languages" be translated into English in order to determine the similarity in connotation to English words. "The doctrine is applied when it is likely that 'the ordinary American purchaser would 'stop and translate [the term] into its English equivalent.'" See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689 (Fed. Cir. 2005).

Applicant Thomas argued that, according to the 1990 census, only 0.6% of the population speaks French "well" or "very well," and therefore it is "unlikely that the 'average American buyer' will translate the mark MARCHE NOIR as required by Palm Bay because the evidence shows that the average American buyer does not speak French." The Board disagreed.

"The 'ordinary American purchaser' in this context refers to the ordinary American purchaser who is knowledgeable in the foreign language. See Trademarks and Unfair Competition, supra at 23:26 (4th ed.) ('The test is whether, to those American buyers familiar with the foreign language, the word would denote its English equivalent.") *** We recognize that the doctrine is not an absolute rule, but applicant's interpretation would write the doctrine out of existence."

Relying on dictionary translations and Applicant's own translation, the Board found that MARCHE NOIR "is the exact French equivalent of the English idiom BLACK MARKET." "[W]ithout question, that is how it would be recognized and understood by the French-speaking public." Furthermore, unlike CORDON BLEU, which has been "adopted into the English language," here "the mark would be translated by those who are familiar with the French language."

"when we consider the similarity in connotation of the marks, together with the relative strength of the mark, the close relationship of the goods and services and the inexpensive nature of their purchase, these factors combine to outweigh the dissimilarities in the marks."

Applicant's ownership of a now-cancelled registration for MARCH NOIR for jewelry was of no help, nor was his assertion of a lack of actual confusion. As to the registration, the Board is not bound by previous decisions of Examining Attorneys. As to actual confusion, Applicant provided no evidence of the extent of use of the two marks, and so his assertion of long, contemporaneous use "is of little probative value."

As to the BLACK MARKET registration for women's clothing, the Examining Attorney relied on several third-party registrations in contending that jewelry and clothing are "highly related goods." The Board was not buying. "We cannot conclude on the basis of the evidence of record that jewelry and clothing are so closely related that, notwithstanding the differences in the marks, purchasers would naturally expect these goods to emanate from the same source." The Board therefore could not find a likelihood of confusion between these marks.

Madame Clicquot
TTABlog comment: Last year in Palm Bay, the CAFC said that the doctrine of equivalents should be applied "only when it is likely that the ordinary American purchaser would 'stop and translate [the word] into its English equivalent.'" (citing In re Pan Texas Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)). The court agreed with the TTAB that "it is improbable that the average American purchaser would stop and translate "VEUVE" into "widow." The Board had found that "an appreciable number of purchasers are unlikely to be aware that VEUVE means 'widow' and are unlikely to translate the marks into English."

Is the Board's ruling here at odds with Palm Bay when it says that the "ordinary American purchaser" means someone knowledgeable in French? The CAFC and the TTAB seemed to say that the average American purchaser would be unlikely to translate VEUVE into "widow" because he or she is unlikely to be aware of the French word. In other words, the average American purchaser does not know French.

There's something askew here, and the Board's failure to acknowledge this discrepancy is troublesome. Will the CAFC have to straighten this out?

Text Copyright 2006 John L. Welch

TTAB Okays "SWISSAIRE" Drawing But Affirms 2(e)(2) Refusal

The Board affirmed a Section 2(e)(2) refusal of the mark SWISSAIRE, finding it primarily geographically descriptive of "air filters for industrial installations," but it reversed the PTO's refusal to register under Section 2.51(a)(1), finding that the mark in the application drawing did not materially differ from the mark on the specimen of use. In re Flanders Corp., Serial No. 76475934 (April 20, 2006) [not citable].


As to the 2(e)(2) issue, Applicant Flanders Corporation did not contest that its goods come from Switzerland, and it understandably conceded that "Swiss" connotes Switzerland. Nor was there any argument that Switzerland is remote or obscure. Therefore, the Board found that "Swiss" is geographically descriptive of the subject goods.

The Board then considered whether the addition of the term "Aire" to "Swiss" results in a mark that is primarily geographically descriptive. "Aire" is a misspelling of "air," a "highly descriptive" term for air filters. In fact the word "Aire" has been disclaimed in a number of registrations, which "show that the term 'Aire" and "Air' would be perceived similarly." The Board observed that the addition of highly descriptive matter to a geographic term "does not detract from the mark's primary significance as being geographically descriptive."

Turning to the next question, the Board contemplated whether the mark in the application drawing, SWISSAIRE, is a "substantially exact representation" of the mark shown on the specimen of use, as required by Rule 2.51(a). Applicant's specimen and literature displayed two representations of the mark:

(illustration from the opinion)
The Examining Attorney and the Applicant agreed that "the mark on the specimen is shown with the words 'Swiss' and 'Aire' connected by a '+' design." Examining Attorney Vivian Micznik First maintained that the "+"' design in the specimen "is identical to the '+' sign on the Swiss flag," and that this design element is "inextricably bound to the literal portion of the mark because it is physically joined with the words in the mark, and it also enforces the meaning of the word SWISS in the mark." Applicant argued that it was just a plus sign. The Board agreed with the PTO that the design is "similar to the cross design in the Swiss flag."


The Board then tackled the question of whether the term SWISSAIRE creates a separate commercial impression, a question that is "assuredly a subjective one." Particularly pertinent was the Board's ruling in favor of the applicant in In re Lear Siegler, Inc., 190 USPQ 317 (TTAB 1976), in which the HY- and LINE portions of the mark HY-LINE were separated on the specimen of use by an "X" representing crossed drill bits.

"When we consider the mark in this case in light of the relevant case law, we conclude that the mark in the drawing is a substantially exact representation of the mark shown on the specimen. The 'plus' sign, if it is considered as the examining attorney argues a part of the Swiss flag, does not add anything additional to the mark inasmuch as the term 'Swiss' is clearly already part of the mark." (slip op., p. 15).

The Board therefore reversed the PTO's refusal to register on the ground that the mark in the drawing is "materially different from the mark in the specimen," but it affirmed the Section 2(e)(2) refusal.

Text Copyright John L. Welch 2006.

TTABlog Flotsam and Jetsam - Issue No. 10

Tomorrow, U.S. Coach Bruce Arena names the 23-man USA roster for the 2006 World Cup. I'm trying to put together an office pool for the World Cup, but it's very difficult because of the way group play and the brackets work. It's not at all simple like the NCAA bracketing. [If anyone has a suggestion, please let me know]. There's a very handy Excel spreadsheet available here for downloading, that keeps track of the World Cup groups and the brackets.

But enough with the frivolity! On to serious issues!

USA v. HollandCMGI (now Gillette) StadiumMay 19, 2002
New TTAB Judge: Interlocutory Attorney Peter W. Cataldo has just been appointed Administrative Trademark Judge, bringing the total number of TTAB Judges to 15. Judge Cataldo served as a Trademark Examining Attorney before becoming a TTAB Interlocutory Attorney. He holds a B.A. from Canisius College, and a J.D. from Albany Law School.

Peter W. Cataldo
I.P. Protection of Fashion: The Design Piracy Prohibition Act, H.R. 5055, introduced on March 30, 2006, would provide copyright-like protection to fashion designs (similar to the type of protection accorded vessel hull designs under the Vessel Hull Design Protection Act).

According to its sponsor, the Design Piracy Act would protect fashion designers "by amending the Copyright Act to also include protections for fashion designs. Because the production life cycle for fashion designs is very short, this legislation similarly provides a tailored period of protection that suits the industry - three years. This legislation further establishes damages for infringing a fashion design at the greater of $250,000 or $5 per copy."


Under the proposed law, a "fashion design" is defined as "the appearance as a whole of an article of apparel, including its ornamentation." The term "apparel" means: (a) an article of clothing, including undergarments, outerwear, gloves, footwear, and headgear; (b) handbags, purses, and tote bags; (c) belts; and (d) eyeglass frames. To be eligible for registration, the design owner must apply for registration within 3 months of the date on which the design is first made public.

For a discussion of the current state of the law vis-a-vis IP protection of fashion, see Raustiala, Kal and Sprigman, Chris, "The Piracy Paradox: Innovation and Intellectual Property in Fashion Design" (January 2006), UCLA School of Law Research Paper No. 06-04. (Available for download here.)


DYKES ON BIKES Opposition: Applicant San Francisco Women's Motorcycle Contingent has filed a motion to dismiss the opposition of Michael J. McDermott to its application to register the mark DYKES ON BIKES for "Education and Entertainment Services" for women motorcyclists. (Opposition No. 91169211, filed on February 15, 2006). [See TTABlog postings here, here, and here.] Applicant SFWMC asserts that McDermott is a mere "intermeddler" who lacks standing to oppose and who fails to identify any specific ground for opposition. Instead, "McDermott's objections are all patently irrelevant to the Board's duties and instead relate solely to his subjective political agenda."


TTABlog comment: On the standing issue, the CAFC set a rather low threshold in Ritchie v. Simpson, 50 USPQ2d 1023 (Fed. Cir. 1999). It ruled that Opposer Ritchie had standing to oppose certain trademark applications filed by O.J. Simpson for the marks O.J. SIMPSON, O.J., and THE JUICE, based on Ritchie's allegation that registration of the marks "that allegedly are synonymous with wife-beater and wife-murderer" would disparage Ritchie's"alleged belief in a loving and nurturing relationship between husband and wife." As to McDermott's failure to plead a proper ground for opposition, SFWMC seems to have a good point.


1st Circuit Trademark Decision: The trademark of the opinions authored by 1st Circuit Judge Bruce M. Selya is his habit of employing rather obscure words in an otherwise clear writing style. The recent opinion in Borinquen Biscuit Corp. v. M.V. Trading Corp., 78 USPQ2d 1454 (1st Cir. 2006) is no exception. [try these: "anent," "cynosure," "protean," "withal," "devoir," "get the grease from the goose," "supererogatory"]. In its 21-page decision, the appellate court affirmed the grant of a preliminary injunction in a case involving galletas (cookies, more or less) sold in Puerto Rico under the federally-registered trademark RICA.

The federal registration of the RICA mark gave it a presumption of distinctiveness, but interestingly Plaintiff Borinquen had not bothered to file the requisite Section 15 declaration to make its 1969 registration incontestable. Therefore, as Judge Selya explained, rather than being conclusive, the presumption of distinctiveness was rebuttable. Defendant M.V. Trading, however, failed to overcome the presumption.

Text and USA/Holland photograph Copyright John L. Welch 2002, 2006.