Friday, June 30, 2006

TTABlog Quarterly Index: April - June 2006

Boy, was that a long quarter or what? Lots of citable cases, however, with the Board's total for the year reaching 34. Leo Stoller started the quarter like a lion but left like a lamb. We're still awaiting the Board's order regarding Stoller's infamous extension-request campaign. The Board's "show cause" letter sent in mid-April seems to have brought the program to a halt -- at least for now. And what ever happened to the Board's proposed rule changes? Let's hope the TTAB goes back to the drawing board with that proposal.


Section 2(a) - deceptiveness:

Section 2(a) - disparagement:

Section 2(d) - likelihood of confusion:



Section 2(e)(1) - merely descriptive:

Section 2(e)(1) - deceptively misdescriptive:

Section 2(e)(2) - primarily geographically descriptive:

Section 2(e)(3) - primarily geographically deceptively misdescriptive:

Section 2(e)(4) - primarily merely a surname:

Abandonment:

Disclaimer practice:



Filing basis:


Fraud:

Functionality:

Genericness:

Res Judicata:

Use in Commerce/Drawing/Specimen of Use:

Proposed TTAB Rule Changes:

CAFC Decisions:

Leo Stoller:



Recommended Reading:

Other:

Text and photographs ©John L. Welch 2005-2006.

posted by John L. Welch @ 6/30/2006   0 comments

TTAB Reverses 2(d) Refusal of "T1" For Flashlights, Finding Lighting Fixtures Not Related

Finding no evidence that flashlights, on the one hand, and fluorescent lamps and electric light fixtures, on the other, are associated with a common source, the Board reversed a Section 2(d) refusal to register the mark T1 for "flashlights, namely hand held portable flashlights having light emitting diode lighting elements." The PTO had deemed the mark confusingly similar to the mark T-1, registered for "electric fluorescent lamps, electric light fixtures and retrofit kits composed of electric fluorescent lamps. In re Emissive Energy Corp., Serial No. 78358172 (June 15, 2006) [not citable].

Applicant's T1 Brand flashlight

The Examining Attorney took the position that the marks are "virtually identical," and that "both parties offer lighting related goods." Applicant Emissive maintained that, based on Registrant's website, the cited mark T-1 is merely a model or grade designation and therefore "does not serve to distinguish the goods of the Registrant."

Registrant's T-1 Brand lighting fixture

The Board understandably agreed that the marks are virtually identical,but Emissive's attack on the cited registration not only lacked sufficient evidentiary support but was also out-of-bounds: "an impermissible collateral attack on the validity of the cited registration."

As to the relatedness of the goods, the Board noted that there is no per se rule that all lighting products are related. Moreover, the involved goods "do not appear to be complementary items that are used or purchased together."

"Indeed, we have no evidence in this case that flashlights and fluorescent lamps and electric light fixtures are associated with a common source. We also have no evidence that prospective purchasers are likely to encounter these items in such a manner that they would assume that there is a relationship between their sources. The simple fact that both applicant's and registrant's goods are used to provide light is not enough, by itself, to show that the goods are related."

The Board therefore reversed the refusal to register.

TTABlog comment: This same applicant recently escaped from a 2(d) refusal of the mark T2 for flashlights, in a decision TTABlogged here. The same Board panel found flashlights and electric lighting fixtures to be related, based on a different Examining Attorney's submission of third-party registration evidence. However, the marks T2 and SLIQUE T2 were deemed sufficiently different to avoid a likelihood of confusion.

The record there, as here, did not include any evidence of use of the designations T-1, T-2, T-3, etc. in the lighting field to designate the size of light bulbs. Several TTABlog readers (one of whom majored in theatrical lighting) have written to inform me that this "T" sizing system is in common use. One wonders what size bulbs are used in the T1 brand flashlight and the T-1 brand lighting fixtures?

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 6/30/2006   0 comments

Thursday, June 29, 2006

Sarcasm Fails to Sway TTAB: Refusals of "ALLERGY WIPES" for Eyelid Wipes Affirmed

Perhaps sarcasm is not the best approach to take in a TTAB appeal. Applicant Roberta C. Freiberg presumably learned that lesson when the Board affirmed a Section 2(e)(1) refusal of her mark ALLERGY WIPES, finding it merely descriptive of "disposable eyelid wipes" [WIPES disclaimed]. In re Freiberg, Serial No. 76388348 (June 16, 2006) [not citable].

unrelated eyelid cleansing wipes

In addition to the 2(e)(1) ground, Examining Attorney Kelley L. Wells also refused registration because Freiberg's identification of goods was indefinite: disposable eyelid wipes could fall in any of three classes, depending on their composition. That got Freiberg started:

"These are facially antithetical positions; if the Examiner cannot understand from the description what the goods are, how can the Examiner be so cocksure of how the mark describes the goods."

Freiberg saw herself as the victim of a conniving Examining Attorney who had essentially set a prosecutorial trap:

"In an intent-to-use application, an examiner lacks specimens in which an applicant might be caught explaining how a mark relates to the goods. . . . However, if an applicant can't be relied on to scuttle his own application with specimens, an examiner has another tool that may be applied toward that same end. An indefiniteness objection and requirement for the applicant to describe the goods and their uses in great detail might maneuver the applicant into ponying up evidence of descriptiveness for the examiner."

Freiberg was caught between Iraq and a hard place:

"Thus the only response to the final refusal that Applicant could rely on as acceptable was an amendment to describe the goods in a way the Examiner had determined was merely described by the mark. The clarification requirement appears to have been a gambit to nail down a descriptiveness refusal."

The Board, however, saw no such "gambit," nor any ulterior motive in the PTO's stance: "we would have no difficulty in affirming the descriptiveness refusal with or without the amended identification."

Moreover, the identification requirement was "entirely reasonable," since wipes impregnated with non-medicated chemicals fall in class 3, and with medication in class 5. Plain wipes would be classified as paper products in class 16. Indeed, the Examining Attorney properly followed the guidelines set forth in TMEP Section 1402.03.

As to the descriptiveness refusal, Freiberg "scrupulously" avoided stating exactly what her goods are, but she did not deny that her wipes could be used in connection with allergies. Freiberg did, however, take another swipe at the Examining Attorney's reasoning:

"All the examiner proffers is the opinion that even the dullest consumer would, without using their imagination or taxing their brains in any way, 'immediately understand that eyelid wipes bearing the mark ALLERGY WIPES were used to treat or ease allergies.' While this does [] quite clearly suggest the Examiner's view of how the undersigned's [i.e., Applicant's Attorney's] brain stacks up against the dullest consumers' brain, it doesn't constitute evidence."

The Board again sided with the PTO: the term ALLERGY WIPES "immediately conveys the purpose or function of Applicant's goods, i.e., that the wipes are for use in connection with allergies." That is true regardless of whether Applicant's wipes fall in class 3, 5, or 16.

Finally, Freiberg argued that the PTO has issued "numerous principal registrations for block-letter marks including wipe formatives used in connection with wipe goods, where the marks are far more descriptive than the Examiner's conjecture regarding Applicant's goods." According to Freiberg, "[s]tare decisis, equal protection, and due process" require the PTO to treat Freiberg consistently, or "overturn the law as it was applied in the precedents."

However, Freiberg provided the Board with minimal information regarding these prior registrations, and so they were of "limited probative value." The two registrations that the Examining Attorney investigated turned out to be on the Supplemental Register, while other registered marks listed by Freiberg were "obviously distinguishable." In any event, as the Board has stated time and time again, "each case is unique and must be decided on its own merits."

In sum, Applicant Freiberg's attempt to wipe away the PTO's refusal to register may have raised a few eyelids, but it was ultimately futile.

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 6/29/2006   0 comments

Wednesday, June 28, 2006

TTAB Reverses Refusal to Register "MILK QUALITY TEAM" on Supplemental Register

It would be pretty hard to root against a mark like MILK QUALITY TEAM. What will the PTO reject next? MOM? APPLE PIE? Fortunately, with Independence Day just around the corner, the TTAB stood up for what's right about America when it reversed the PTO's refusal to register, on the Supplemental Register, the mark MILK QUALITY TEAM for diary equipment maintenance services and various other services related to dairy hygiene. In re West Agro, Inc., Serial No. 76405802 (June 14, 2006) [not citable].


The PTO refused registration absent a disclaimer of the term QUALITY TEAM, claiming that term to be generic. The Office relied on NEXIS and Internet excerpts to show "common usage of the word 'quality team' as the name of a category of services, quality team services." The Board, however, was not moooooved.

"While the evidence of record shows that 'quality teams' are used in many businesses and industries as part of a business model, the evidence falls far short in establishing that QUALITY TEAM refers to any genus of services in applicant's identification."

The PTO's argument that potential customers "would immediately know that the services are performed by quality teams" would be proper if mere descriptiveness were the issue, but here the issue is genericness.

Applicant's specimen of use

Moreover, it was not clear to the Board that consumers would view the term QUALITY TEAM in Applicant's mark "as referring to a quality team as that term has been used in the various articles that are of record."

"Instead, consumers are likely to view the word QUALITY as referring to MILK, and to understand the mark as indicating a team that helps to improve or maintain the quality of milk, rather that as the business concept of a 'quality team.'"

Applicant's promotional piece lent support to this interpretation: "We passionately assist our customers and the dairy industry as an enthusiastic and willing partner, sharing the same milk quality and udder health goals of the dairies we serve." [emphasis supplied by Board].

Concluding that the PTO's evidence of genericness was udderly insufficient, the Board reversed the refusal to register.

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 6/28/2006   0 comments

Tuesday, June 27, 2006

TTAB Finds "SOY2O" and "FRUIT2O" Not Confusingly Similar for Flavored Water

For a refreshing change, third-party registrations helped a trademark applicant overcome a Section 2(d) refusal to register. The Board reversed the PTO's refusal of the mark SOY2O for "flavored drinking waters; [and] non-alcoholic tea-based beverages containing soy isoflavones," finding the mark not likely to cause confusion with the two registered marks shown immediately below for non-alcoholic beverages, including "fruit flavored drinking water," and fruit flavored frozen confections, respectively. In re LBI Brands, Inc., Serial No. 78295721 (June 16, 2006) [not citable].


As to the goods, the Board agreed with the PTO that Applicant's flavored drinking waters are identical to, or otherwise related to, Registrant's goods identified in its FRUIT2O registration. However, as to the FRUIT2O ICE registration, the PTO's single third-party registration covering Applicant's goods and frozen confections was insufficient to show that these products are related.


As to the marks at issue, the Board agreed with Applicant LBI Brands that they convey very different commercial impressions. The Board deemed the PTO's approach -- that the marks are similar because they each comprise the name of the ingredient and the term "20" -- too "formulaic."

"The different words FRUIT and SOY give the marks a different appearance and pronunciation. Further, the marks have different connotations. Applicant's mark SOY2O suggests a beverage which contains soy. Registrant's mark FRUIT2O suggests a fruit flavored beverage and Registrant's mark FRUIT2OICE suggests a fruit flavored confection."

The Board also agreed with Applicant's contention that the term "2O" is a weak formative for beverages, as evidenced by eight third-party registrations for "2O"-containing marks for beverages:

"Although third-party registrations are not evidence of use of the marks therein, they are probative to the extent that they may show the meaning of a mark or a portion of a mark in the same way that dictionaries can. Mead Johnson & Co. v. Eckes, 195 USPQ 187 (TTAB 1977)."

In this case, according to the Board, these registrations indicate "that the term '2O' was chosen by the trademark owners as a shorthand reference to 'H2O' to convey that their beverages consist of or contain water." The Board therefore sided with LBI, ruling that registrant's marks "are not entitled to a broad scope of protection."

In sum, the Board found that, in view of the differences in the marks (and as to the frozen confections, the differences in the goods), there is no likelihood of confusion.


Text Copyright John L. Welch 2006.

posted by John L. Welch @ 6/27/2006   0 comments

Monday, June 26, 2006

TTAB Affirms Mere Descriptiveness Refusals of "THIRTYS" and "TREINTAS" for Wheel Rims

The TTAB shot down Jesse James in his attempts to register the marks THIRTYS and TREINTAS for "automobile parts, namely, car wheel rims." The Board affirmed the PTO's 2(e)(1) refusals, finding the marks to be merely descriptive. In re James, Serial Nos. 76561134 and 76562049 (June 8, 2006) [not citable].


As to THIRTYS, Examining Attorney Jennifer Chicoski maintained that the mark refers to the diameter size of the rims in inches. Newspaper and Internet articles refer to 20s, 22s, 24s, and 26s as wheel sizes, and also to the term "30" and "30-inch" in relation to rims. And a "vignette" from an electronic bulletin board used the term "30's" to refer to huge wheel rims. Other evidence showed that rims are often referred to "by the number that describes their diameter in plural form."

Applicant James argued that the term THIRTYS is a "whimisical" spelling for tire rims having a diameter of thirty inches or greater, but the Board failed to see the whimsy. "It is no more whimsical than the earlier large size rims that were referred to simply as 'twentys,' '20's,' 'twenty-fours,' or '24s.' Moreover, the slight misspelling of the word "thirties" does not change its meaning.

The Board had no doubt that THIRTYS is merely descriptive of the identified goods.

Turning to the mark TREINTAS, Examining Attorney Toni Y. Hickey argued that "treintas" is the Spanish foreign equivalent of the word "thirties" and is therefore merely descriptive of the rim size of Applicant's goods.

Applicant, although agreeing that "treinta" means "thirty," disputed whether "treintas" means "thirties," and he further pointed to the lack of evidence that any entity has ever used the term TREINTAS for car tire rims.

The Board again found that "thirties" is descriptive of a feature of the goods (their size). The focus then became the translation of the word "treintas:" i.e., is it the foreign equivalent of the word "thirties?" The PTO submitted the declaration of Steven M. Spar, a Technical Translator at the USPTO, confirming that "the word treintas can be translated as 'thirties,'" and it also proffered some Internet evidence that "treintas" is the Spanish equivalent of "thirties."

The Board then ruled that Spanish speakers in this country would stop and translate "treintas" when used on car rims -- just as the term MARCHE NOIR in In re Thomas, Serial No. 78334625 (TTABlogged here) would be translated into "black market" by those familiar with the French language. [See TMEP Section 1207.01(b)(vi): the doctrine of foreign equivalents "should be applied only when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689 (Fed. Cir. 2005)."]

Applicant again contended without success that its mark is a whimsical, alternative spelling of "thirties.' As to Applicant's argument that no other entity uses the term, the Board once again pointed out that even if Applicant were the first and only user of the mark TREINTAS for its goods, that would not change the mark's mere descriptiveness. "This would be particularly true in this case where the development of thirty-inch rims for cars is apparently a rather new development and there would have been little opportunity for others to use the term previously."

The Board therefore affirmed the refusal of TREINTAS under Section 2(e)(1).

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 6/26/2006   0 comments

Friday, June 23, 2006

Citable No. 34: TTAB Affirms Refusal of Flavor as a Mark for Pills on Grounds of Functionality and Failure To Function

In a case of first impression, the Board affirmed the PTO's refusal to register "an orange flavor" as a trademark for "pharmaceuticals for human use, namely, antidepressants in quick-dissolving tablets and pills," finding the alleged mark to be de jure functional and incapable of functioning as a trademark for the goods. In re Organon N.V., 79 USPQ2d 1639 (TTAB 2006).

an orange

Examining Attorney Tracy L. Fletcher relied on numerous website and NEXIS excerpts in contending that the flavor orange "is a standard feature of orally administered pharmaceutical products and simply would not be perceived as an indicator of source." Moreover, she argued, "orange is a preferred flavor:" Applicant Organon's own website touts the advantages of the orange flavor. The Examining Attorney concluded that the orange flavor "gives an orally administered pharmaceutical product a substantial competitive advantage."

Organon maintained that its orange flavor, like the color of a pill, has no impact on the cost, quality, functionality, or effectiveness of its product. Moreover, Applicant could have selected alternative flavors such as cherry or grape.

The Board first noted that the Trademark Act sets forth a broad definition of "trademark" as "any word, name, symbol, or device, or any combination thereof" that serves as a source indicator. It does not exclude nontraditional marks. The Board pointed out, however, that although the legislative history indicates that the statutory wording was kept broad in order not to preclude protection for "color, shape, smell, sound, or configuration," no mention was made of "taste" or "flavor."

Functionality: After reviewing the pertinent Supreme Court precedents, the Board applied the CAFC's four-factor Morton-Norwich analysis. Here, the second factor was "particularly significant" -- Organon's touting of the utilitarian benefits of the orange flavor. Its website states that "poor patient compliance in taking prescribed medicine is a major obstacle to the successful treatment of depression."

"Applicant touts, no fewer than four times on its website, that its antidepressant tablet has 'a pleasant (orange) taste' and that 'the pleasant orange taste' is an 'important advantage over conventional antidepressant tablets.' Applicant's tablets and pills are designed to dissolve on a patient's tongue; consequently, there is a practical need for the medicine to have an appealing taste."

The Board reasoned that, "because the orange flavor of applicant's medication leads to patient compliance, the orange flavor indirectly increases the efficacy of the medication."

As to the third Morton-Norwich factor, "the mere fact that other designs are available does not necessarily mean that applicant's design is not functional." The question is whether those alternative flavors would perform equally well. The Board pointed out again that Organon "essentially promotes its orange flavor as better than others." Although the Board could not "definitively say that orange is the most popular flavor, it certainly would appear on the short list of most popular flavors." Therefore, the Board could not find "that there are true alternatives, or a least a significant number of acceptable alternatives."

As to the first and fourth factors, the Board found them to be neutral. The orange flavor is not the subject of a utility patent. And nothing in the record indicates that addition of the flavor results in a comparatively simple or cheap method of manufacture.

Finally, the Board relied on Brunswick Corp. v. British Seagull Ltd., 32 USPQ2d 1120 (Fed. Cir. 1994) in concluding that registration by Organon would hinder competition by placing competitors at a substantial competitive disadvantage.

"Just as in the case of Brunswick wherein the color black did not make the outboard engines work better, applicant's orange flavor does not make the medicine instrinsically any more effective in treating depression. Rather, like the advantages of color compatability and reduction in apparent engine size afforded by the color black, applicant' orange flavor makes its antidepressant tablets and pills more palatable for patients, resulting in increased patient compliance, and thereby supplying applicant with a competitive advantage."

The Board also found applicable a 1924 Supreme Court decision involving competing pharmaceutical manufacturers who were using chocolate to color and flavor liquid quinine preparations. William R. Warner & Co. v. Eli Lilly & Co., 256 U.S. 526 (1924). There, the Court refused to find that Lilly had exclusive rights in the brown color of the preparation, and (although it did not use the term "functional) "essentially concluded that chocolate was functional."

In sum, the Board ruled that "flavor performs a utilitarian function that cannot be monopolized without hindering competition in the pharmaceutical trade."

Failure to Function as a Mark: The record was devoid of evidence indicating that an orange flavor would be perceived as a trademark for Organon's goods, but the record did show that orange flavor is used in many medicines. The Board therefore found that "consumers would not view the orange flavor of an antidepressant tablet or pill as a trademark; rather, they would consider it only as just another feature of the medication, making it palatable."

Leaving the door open for possible registration of a flavor as a trademark in some situations, the Board observed that "any registration of a flavor requires a substantial showing of acquired distinctiveness." Organon understandably did not introduce any such evidence in connection with the subject intent-to-use application.

But if the door was left open, it may not be open very far or for very long. The Board recognized various "practical considerations" involved in registration of a flavor: for example, examination of flavor marks by the PTO would be "very problematic." Moreover, the Board wondered how as a practical matter taste would function as a trademark, since consumers would not be exposed to the mark (i.e. could not taste the medication) prior to purchase.

In any event, in the case at hand the Board affirmed the PTO's refusals to register.

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 6/23/2006   1 comments

Thursday, June 22, 2006

Five Bloggers Kick Start ABA IPL Summer Conference

The ABA IPL Summer Conference in Boston got off to a roaring start with the appearance of five prominent IP bloggers at the opening reception last night. Between signing autographs and explaining how they find time to maintain their blogs, the quintet barely had time to wolf down a canape. Can you identify the Fab Five?


Here's a listing of the bloggers in alphabetical order:
Or if you really need help, compare this:

Buchanan, Crouch, Dannenberg, Gesmer, Welch

.

posted by John L. Welch @ 6/22/2006   0 comments

Wednesday, June 21, 2006

Citable No. 33: TTAB Affirms 2(e)(2) Refusal of "BAIKALSKAYA" as Geographically Descriptive of Vodka

In its 33rd citable decision of 2006, the Board affirmed a Section 2(e)(2) refusal to register the mark BAIKALSKAYA for vodka, finding the mark to be primarily geographically descriptive. In re Joint Stock Company "Baik", 80 USPQ2d 1305 (TTAB 2006). The Board's conclusion that Lake Baikal in Russia is neither obscure nor remote was key to the ruling.


Examining Attorney Esther Belenker contended that, when translated into English, BAIKALSKAYA means "from Baikal;" that Baikal is the name of a lake in Russia; that Applicant is located in Irkutsk, a city near the lake; and that Applicant's vodka products are "manufactured and bottled with water piped directly from Lake Baikal." She further contended that Lake Baikal is not an obscure place and that the translation "from Baikal" will be apparent to the 700,000 Russian speakers in the United States.

In support of her contentions, the Examining Attorney submitted dictionary entries for Lake Baikal (the world's largest fresh water lake) and Irkutsk (an industrial center and major stop on the Trans-Siberian Railroad), Lexis/Nexis printouts, excerpts from travel websites, and materials indicating the number of Russian speakers in this country.

Applicant argued that Lake Baikal is remote, that a very small percentage of Americans visit Russia, and that the American public lacks even general geographic knowledge: "Many Americans could not find the Atlantic Ocean on a globe and very few could name the five Great Lakes located in the United States." [TTABlog answer: Lake Michigan, Lake of the Ozarks, Salt Lake, Veronica Lake, and Lake Ness]. In short, "the average American consumer does not speak or understand the meaning of the expression 'BAIKALSKAYA.'" Applicant also pointed out that it owned a now-cancelled (Section 8) registration for the same mark.

The Board applied its standard test for geographical descriptiveness: (1) is the term the name of a place known generally to the public?; and (2) would the public make a goods/place association, i.e., would it believe that the goods originate in that place? When the goods do, in fact, emanate from the place named, a goods/place association is presumed.

Based on the record evidence, including numerous newspaper articles from across the United States that refer to the lake in connection with "subjects ranging from tourism to ecology to oil production," the Board concluded that BAIKAL is not a remote or obscure place. [TTABlog comment: the lake may not be obscure, but it seems pretty remote to me.] Although the Board is concerned with the perception of vodka consumers rather than the public as a whole, even the public at large "is exposed to references to Lake Baikal and certainly the Russian-speaking public is even more likely to be aware of the geographic significance of the mark." Furthermore, the adjectival form BAIKALSKAYA "retains its geographic significance."

Applicant did not dispute the PTO's contention that Applicant makes vodka from the waters of Lake Baikal, or that it produces various vodkas from a location near the lake. Moreover, Applicant reportedly plans to make its BAIKALSKAYA vodka from the waters of Lake Baikal. Irkutsk is "one of the main export regions of Russian vodka, and Applicant is one of the largest producers in the region."

Trans-Siberian Railroad

Applicant's ownership of a now-cancelled registration was of no help. First, a cancelled registration is not entitled to any of the statutory presumptions of Section 7(b) of the Trademark Act. Second, prior decisions by examining attorneys are not binding on the TTAB.

The Board therefore concluded that BAIKALSKAYA is primarily geographically descriptive of Applicant's vodka.

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 6/21/2006   0 comments

Tuesday, June 20, 2006

Citable No. 32: TTAB Affirms PTO Rejection of Brochure as Specimen of Trademark Use

In its 32nd citable decision of 2006, the Board affirmed a refusal to register the mark ALPHA-DISC & design for blank and pre-recorded optical discs, compact discs, and CD-ROMS, and for computer software for applying copyright protection thereto, on the ground that Applicant Settec's specimen of use (a promotional brochure) was not acceptable. In re Settec, Inc., 80 USPQ2d 1185 (TTAB 2006).

Settec provides optical digital media protection to creators of educational and game software, music, film, and video. The technology includes encryption software and a digital signature embedded within the physical layers of the discs. Settec's specimen of use (shown below) comprised a brochure directed to audio CD copy protection.


The subject mark appeared only on the back cover of the specimen brochure, and not on the goods or on packaging for the goods. Applicant Settec contended that the brochure fell within the exception language of Section 45 and Rule 2.56 as a document "associated with the goods or their sale," because it was undesirable to place the mark (its copy protection indicator) on the goods:

"placing the trademark on the final product available to the ultimate end-user consumers defeats the entire purpose of the Applicant's goods, thus rendering such placement inherently 'impracticable.' Such end-user consumers would thereby be armed with an additional piece of the encryption puzzle required to circumvent the copy protection of the relevant media."

The Board, however, distinguished this case from those cited by Settec, which cases involved "natural gas, grain that is sold in bulk, or chemicals that are transported only in tanker cars." See TMEP Section 904.04.

Because Settec does not sell its finished goods to retail customers, the "content provider is the relevant consumer of the Applicant's goods." In that light, the Board concluded that

"it is not 'impracticable' for applicant to use this mark with its targeted consumers. For example, in dealing with content providers and their manufacturers, applicant could use this mark within its software products, on tangible media products, on packaging for such tangible media products, or on inserts included with software sent to publishers or discs sent to pressing houses, or even in the form of a catalogue."

Or, the Board continued, Settec could display its mark in connection with the downloading of its software or the distribution of CD-ROMS containing same. Or it could display the logo on computer images created by the software, or on its website where licensed users may access the software. Or it could use the mark on inserts accompanying the blank CD-ROMs when shipped, or on shipping labels therefor.

Hence, the Board concluded that it was not impracticable for Settec to use the mark in the traditional and acceptable way -- i.e., on labels, tags, packaging, or displays associated with the goods.

TTABlog comment: For another recent decision in which the TTAB affirmed the PTO's rejection of a specimen of use despite the applicant's claim that it could not put its mark on displays or labels, see the citable Genitope case, TTABlogged here.

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 6/20/2006   0 comments

Monday, June 19, 2006

Citable No. 31: TTAB Sustains Opposition to Two Product Design Marks as Functional and Non-Distinctive, but Dismisses Fraud Claims

In its first product design trade dress decision since 2004, the Board sustained an opposition to registration of two product designs (shown below) for plugs for closing 55-gallon steel drums, finding the designs to be de jure functional, and, if not functional, lacking in secondary meaning. The Board , however, rejected Opposer American Flange's fraud claim that was predicated on allegedly false statements made by Applicant Rieke to the PTO during prosecution of the subject applications. American Flange & Mfg. Co. v. Rieke Corp., 80 USPQ2d 1397 (TTAB 2006). [Decision subsequently withdrawn: American Flange & Manufacturing Co., Inc. v. Rieke Corporation, 90 USPQ2d 1127 (TTAB 2009).]

First, the Board concluded from the application language that Rieke's designs comprise a substantially hexagonal base and a butterfly-shaped grip. The threaded portion shown in dashed lines is not part of the first design, nor is the circular flange that receives the threads part of the second design. To seal a drum, the flange remains secured in place in the top of the drum while the plug is screwed into the flange by applying torque to the butterfly grip. Opposer American Flange markets a plug that provides two loops (rather than a butterfly grip) to allow turning of the plug.

The two major hurdles to registration of a product design are functionality and distinctiveness. I so wrote in 2004 in a paper entitled "Trade Dress and the TTAB: If Functionality Don't Get You, Nondistinctiveness Will," which may serve as a useful backdrop to this discussion. Applicant Rieke tripped over both hurdles and lost this TTABattle between "the two leading U.S. producers of drum closures."

Functionality: The Board spent nearly half of its 61-page decision on the issue of functionality. It applied the CCPA's time-honored Morton-Norwich four-factor test, first noting that Opposer must make a prima facie showing of functionality, at which point the ultimate burden shifts to the Applicant to show nonfunctionality. See Valu Engineering Inc. v. Rexnord Corp., 61 USPQ2d 1422, 1429 (Fed. Cir. 2002).

The Board analyzed separately the two components of Rieke's design: the hexagonal base and the butterfly-shaped grip. It concluded that the hexagonal base is functional in light of a utility patent "disclosing the utilitarian advantages of the design" and Rieke's advertising "touting the advantages and the limited availability of functionally equivalent designs." The fact that there are "no significant alternative functionally equivalent designs" was a factor "strongly" favoring Opposer. Although the hexagonal design is more costly to manufacture than other designs, "the increased cost appears to be quite minimal." Balancing the factors, the Board found this portion of the designs to be functional.

As to the butterfly-shaped grip, however, the Board sided with Applicant Rieke, finding that there are "numerous alternative designs which would work equally well." The patent evidence did not support Opposer's position, nor was there any significant evidence of boastful advertising. And there was no evidence that the butterfly grip is either cheaper or more efficient to manufacture. Thus American Flange failed to make a prima facie case of functionality.

Having found one feature of Rieke's design to be functional, the Board concluded that the design as a whole cannot be registered.


Secondary Meaning: Assuming arguendo that Rieke's design is not de jure functional, the Board considered Applicant's Section 2(f) claims. Again, the Board observed that Opposer has the initial burden to establish a prima facie case of nondistinctiveness, and then the burden of persuasion shifts to Applicant.

Applicant Rieke relied on its evidence of "sales volume, advertising expenditures, long use, declarations indicating recognition of the mark, and a survey." American Flange contended that Rieke's use has not been exclusive, that its "canned" declarations are of little value, and that its survey actually supports a finding of nondistinctiveness.

The Board pointed out that, although Rieke's sales and advertising figures appear to be significant, sales alone are of little probative value in this type of case, and Rieke did not make clear whether its advertising was directed to the specific product and marks at issue. Nor did Rieke show that it had promoted its marks -- in fact, the only relevant advertising evidence of record touts the functional advantages of the hexagonal base.

Although Rieke alleged use of its marks since 1940, it claimed substantially exclusive use for only the past ten years. However, in trade dress cases, an applicant faces a "heavy burden," and the mere statement of at least five years of use is not generally accepted by the USPTO. In addition, the record indicated that others have used the marks for significant periods, including one company for 20 years.

The declaration evidence was somewhat ambiguous as to whether the declarants "truly viewed either the hexagonal base or the butterfly grip as a source indicator," and thus was of "limited probative value."

As to the survey, the Board found it seriously defective. Moreover, "the reported results which are most defensible, in fact, show that applicant's mark has not acquired distinctiveness."

"To show acquired distinctiveness, it is not sufficient to show that the applicant is the party 'most commonly associated with' the product design. Rather, the applicant must show that the product design identifies a single source, that is, that the public has come to expect that every plug having the appearance of applicant's plug to be from applicant, even though it does not bear the RIEKE mark."

To the question of "how many different companies make" products having the subject design, only 19% thought only one company did so. That is "far short of the level necessary to show applicant's mark has acquired distinctiveness, even if the result was otherwise reliable." Even that 19% figure would have to be reduced by the number of respondents who did not identify Rieke as the sole maker, and also further reduced for "noise." Likewise, responses to the question of whom respondents "most associate" with the plug were useless because the question did not address acquired distinctiveness.

Therefore, the Board found the survey to be "not probative of acquired distinctiveness." In fact, the results "indicate the absence of acquired distinctiveness, if they indicate anything at all."

Considering all the evidence, the Board ruled that Rieke had failed to establish secondary meaning by a preponderance of the evidence.


Fraud: Finally, the Board addressed Opposer American Flange's fraud claim. Flange asserted that Rieke had "presented evidence selectively in an effort to mislead the Trademark Office," including the failure to provide certain government specifications and the misleading presentation of customer declarations.

The Board, however, noted that Flange failed, in its Notice of Opposition, to specify what statements were fraudulent. Therefore, the Board dismissed the fraud claims "for failure to allege fraud with sufficient particularity."

Nonetheless, the Board took time to review the fraud issue in some detail. If first noted that in their briefs the parties referred to "inequitable conduct" rather than fraud. "This suggests that both parties may be equating fraud in the procurement of a trademark registration with a breach of duty to disclose in patent matters. The two are very different in concept and application."

"In the patent context the applicant or its attorney has 'an almost fiduciary-like duty of full disclosure.' The concept of 'fraud' in the trademark registration context is more akin to fraud in other fields of law."

To be fraudulent, the statement in question: (1) must be false; (2) must be made with knowledge that it is false; and (3) must be material to the examining attorney's decision to approve the application." "The standard of proof is the rigorous clear-and-convincing-evidence standard and it is strictly applied." It is sometimes said the fraud must be proven "to the hilt."

"In similar cases where the Board has found fraud it is generally crystal clear that the statement in question is false. Usually the applicant or registrant effectively admits that the statement is false, or the record otherwise clearly established that the relevant statement is false."

Here, the Board found ambiguity, not the necessary clarity. It was not clear that the government specifications were called for by the PTO or were even relevant, and the consumer declarations were presented in good faith. Thus the Board found the evidence insufficient to show that Rieke had the requisite fraudulent intent.

TTABlog comment: It goes without saying that this case requires a thorough reading. [Perhaps the sound of a steel drum band playing in the background would put the reader in the right frame of mind.]

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 6/19/2006   0 comments

Friday, June 16, 2006

TTAB Affirms 2(d) Refusal of "IN THE PINK," Finding Handbags and Clothing Store Services Related

The PTO's third-party registration evidence proved fatal to Applicant Gordon C. Russell's attempt to register the mark IN THE PINK for retail store services featuring various clothing items. The Board affirmed a Section 2(d) refusal, finding the mark likely to cause confusion with the identical mark registered for handbags. In re Russell, Serial No. 78170148 (May 30, 2006) [not citable].

Specimen for cited mark

Examining Attorney April Rademacher submitted several use-based third-party registrations for marks covering both handbags and retail clothing store services, along with screenshots from on-line retail websites offering clothing and handbags.

Applicant argued that "in today's marketplace, the reality is virtually any two goods and/or services may originate from the same source." The Board noted that, in fact, third-party registrations submitted by applicant covered handbags and a wide range of products and services, "some of which, admittedly, are not commercially related to handbags," and it agreed with Applicant that "the mere fact that any two goods and/or services are listed in a registration does not necessarily mean that they are related." However, here there is a "relatedness between handbags and clothing, as well as between handbags and retail clothing store services, that may not exist with some of the other items covered in these registrations." The Board therefore ruled that "there is a viable relationship between retail clothing store services and handbags."

Applicant's specimen

As to the mark IN THE PINK, Applicant contended that the phrase is a "popular and widely used figure of speech," but the Board pointed out that the phrase is nonetheless arbitrary for the involved goods and services. Finally, Applicant submitted six third-party registrations of IN THE PINK for various goods and services, but the Board found that evidence of little probative value: first, the registrations are not evidence of use of the mark or of the public's familiarity therewith; and second, the registrations cover goods or services not even remotely related to handbags or retail clothing store services.

The Board therefore concluded that confusion is likely, and it affirmed the refusal to register.

TTABlog comment: This case illustrates once again the different treatment accorded third-party registrations when submitted by the PTO and when submitted by an Applicant. In the context of proving the relatedness of goods/services, the Examining Attorney need not establish that the marks of the proffered third-party registrations are in use or that the public is familiar with them. When an applicant submits third-party registrations to prove that confusion is not likely, however, the evidence is dismissed unless proof of use and familiarity is submitted. Is it surprising, then, that 80% or more of 2(d) refusals are affirmed on appeal?

In this Internet age, shouldn't the PTO be required to show that the marks of the cited registrations are in use? Does the argument that the PTO has limited resources for investigation hold water any more, when searches can be conducted on the Internet at minimal cost?

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 6/16/2006   0 comments

Thursday, June 15, 2006

More TTABlog Recommended Reading: Minsker's Tips for TTAB Appeals

In a PLI "All-Star Briefing" paper available here (scroll down to part 2), Helen Hill Minsker of Banner & Witcoff offers useful advice and practical tips for PTO applicants contemplating an appeal from a final refusal.

Minsker

Noting that ex parte appellant's lose about 75% of the time, she asks whether there may be an acceptable alternative to appeal, like amending to the Supplemental Register, or making a 2(f) claim, or re-applying to register the mark in a stylized or design form. Minsker offers useful advice on getting appropriate evidence into the record before appeal, on whether and when to file a request for reconsideration, and on how to prosecute the appeal.

This is definitely a "checklist" worth adding to your TTAB folder (alongside your printouts of all those TTABlog postings).
.

posted by John L. Welch @ 6/15/2006   0 comments

Wednesday, June 14, 2006

Meet the TTABlogger at ABA 2006 Summer IPL Conference June 21 in Boston

If you are attending the ABA Summer IPL Conference this month in Boston, you will have the opportunity to meet four leading IP bloggers -- plus the TTABlogger. I shall be shuffling over to the Marriott Copley Plaza to appear at the "Bloggers' Corner" during the opening "get acquainted" reception on Wednesday, June 21st, from 6:00 to 7:00 P.M. I hope to see you there.


The other four blogs on display, and their respective blogmeisters, will be:

For a brief description of all five bloggers, read this flier. For a glimpse of what these bloggers look like, see below:

Buchanan, Crouch, Dannenberg, Gesmer, Welch


TTABlog postscript: Stephen Albainy-Jenei, co-host of the Patent Baristas blog, promises to stop by for a cup of java.
.

posted by John L. Welch @ 6/14/2006   0 comments

Tuesday, June 13, 2006

TTABlog Recommended Reading: a New TMR Article on Fraud

And now, a timely companion piece to the TTABlog Fraud Collection: Karen P. Severson's "Filer Beware: Medinol Standard Set Forth by the United States Patent and Trademark Office," 96 Trademark Reporter 758 (May-June 2006).

Medinol stent

Ms. Severson sets forth at length the factual background underlying the Board's seminal decision in Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003), points out the serious consequences that flow from a finding of fraud, and understandably urges PTO filers to tell the truth. Her analysis covers the January 2006 Standard Knitting decision [TTABlogged here], while the TTABlog Fraud Collection describes three more recent rulings, in one of which (the MAID TO ORDER case) each party's fraud claim was dismissed.

TTABlog note: The May-June 2006 TMR also includes my friend Pamela S. Chestek's useful article entitled "Who Owns the Mark? A Single Framework for Resolving Trademark Disputes."

TTABlog Thank You: Again, a thank you to The Trademark Reporter for granting permission to provide a link to the Severson article. The article is Copyright © 2006 the International Trademark Association and is reprinted with permission from The Trademark Reporter®, 96 TMR 758 (May-June 2006).

posted by John L. Welch @ 6/13/2006   0 comments

Monday, June 12, 2006

Yankees Win Again! CAFC Affirms TTAB "BABY BOMBERS" Decision

In a brief, non-precedential opinion, the CAFC affirmed the TTAB's uncitable August 10, 2005 ruling (TTABlogged here), sustaining an opposition to registration of the mark BABY BOMBERS for clothing and athletic wear. The Board had found the mark confusingly similar to the identical mark BABY BOMBERS used by and associated with The New York Yankees and their minor league affiliate, the Staten Island Yankees, for baseball entertainment services. Hart v New York Yankees Partnership, Appeal No. 06-1050 (June 9, 2006).


The CAFC wasted little time in explaining its decision. It ruled that substantial evidence supported the Board's factual findings that the Yankees had priority of use and that BABY BOMBERS is distinctive rather than merely descriptive.

The court likewise held that the Board's factual findings regarding the pertinent dePont factors were supported by substantial evidence, and that the Board did not err in its legal conclusion of no likelihood of confusion.


Thus in less than four pages the CAFC affirmed the TTAB decision.

Text Copyright John L. Welch 2006

posted by John L. Welch @ 6/12/2006   0 comments

Friday, June 09, 2006

World Cup 2006 Begins; TTAB Reverses 2(d) Refusal of "T2" for Flashlights

I thought I might attract some foreign surfers with the first part of this headline. I'm planning to take the afternoon off to watch the opening matches of the World Cup. I'm not too sanguine about the USA's chances of advancing beyond the group stage. Lackluster performances in three May friendlies (against minnows Morocco, Venezuela, and Latvia) make me wonder how the Yanks can get by either the Czech Republic or Italy. But we shall see. The defense is looking good, but where will the offense come from?


But sometimes the unexpected happens, like the TTAB overturning two Section 2(d) refusals and granting a request for reconsideration in the same week. The third goooooaaaal! in that jurisprudential hat trick was tallied in In re Emissive Energy Corp., Serial No. 78440691 (May 24, 2006) [not citable], wherein the Board found the mark T2 for flashlights not confusingly similar to the registered mark SLIQUE T2 for electric lighting fixtures.

The Examining Attorney relied on third-party registrations to demonstrate that the goods are related -- i.e., he submitted numerous registrations showing that the same mark has been registered by a common entity for flashlights and electric lighting fixtures (including one owned by Applicant). See Albert Trostel and Mucky Duck in that regard.

T2 brand flashlight

The pivotal issue, then, was the similarity of the marks. The Board found that SLIQUE is a "significant feature of registrant's mark," and that, when the two marks are compared, "the addition of the word SLIQUE at the beginning of registrant's mark changes the appearance, sound, meaning, and commercial impression of the marks."

Moreover, the Board noted that "there is evidence that at least with respect to lighting fixtures, the term [T2] is highly suggestive." The Board based this finding on the following usage made by registrant in its product literature: "1 or 2 FM11/H or FM13/H T2 subminiature fluorescents." According to the Board, this evidence "suggests that the term may have some suggestive meaning in the trade." [TTABlog comment: I fail to see it]. According to the Board, this evidence "also indicates that SLIQUE would be the dominant part of the registrant's mark."

SLIQUE T2 brand lighting fixture

Because the goods, albeit related, are not identical and have "significant differences," and because the applied-for mark lacks the "significant term" SLIQUE, the Board concluded that confusion is not likely, and flagged the PTO offside.

TTABlog comment: I don't know why the Board didn't just say that the marks are sufficiently different to avoid confusion. The discussion about the weakness of T2 was a bit dim (i.e., unenlightened).

TTABlog postscript: A reader reports that T2 is a an industry-standard term for a fluorescent light bulb of a certain (miniatures) size (see. e.g., here). Apparently that information never made it into the PTO record, but it may help explain why the panel found "T2" to be suggestive of electric lighting fixtures.

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 6/09/2006   1 comments

Thursday, June 08, 2006

CAFC Affirms TTAB Dismissal of "M2 COMMUNICATIONS" 2(d) Opposition

In a precedential ruling, the CAFC affirmed the TTAB's July 21, 2005 decision (here) dismissing a Section 2(d) opposition to registration of the mark M2 COMMUNICATIONS for "Interactive multimedia CD-ROMS containing educational information in the fields of pharmaceutical and medical product information, therapies, and strategies, and medical, pharmaceutical, and healthcare issues" [COMMUNICATIONS disclaimed]. (emphasis added by CAFC). M2 Software, Inc. v. M2 Communications, Inc., 78 USPQ2d 1944 (Fed. Cir. 2006) [precedential].


The Board found the mark not likely to cause confusion with the mark M2 SOFTWARE, registered for the following goods:

computer software featuring business management applications for the film and music industries; and interactive multimedia applications for entertainment, education and information, in the nature of artists' performances and biographical information from the film and music industries; and instructions and information for playing musical instruments. (emphasis added by CAFC).

The court noted that"paramount to this case is the industry-specific focus of the parties' claimed goods." The Board found the marks to be "very similar," but because of the unrelated nature of the goods and the lack of proof that the purchasers or channels of trade overlap, it dismissed the opposition.

Appellant/Opposer M2 Software challenged the Board's findings as to five duPont factors: the similarity of the goods, the channels of trade and purchasers, the similarity of the marks, the strength of the M2 SOFTWARE mark, and Applicant's intent.

The Board placed the greatest weight on its findings regarding the differences in the goods and in the channels of trade and purchasers. Because of the "dominant role that these factors play in this case," the CAFC found no error in the Board's weighting of the evidence.

As to the goods, Appellant/Opposer's feebly urged that the language "interactive multimedia applications for entertainment, education and information" appearing in its identification of goods covers interactive multimedia in any field. The court disagreed: "Such a reading would require us to improperly ignore scope limiting language within the clause it cites, i.e., language plainly limiting its registration to goods in the music and entertainment fields."

M2 Software, Inc.

Moreover, the fact that the goods of both Opposer and Applicant take the form of interactive multimedia CD-ROMS is not a sufficient basis for finding the goods related: "it would be inappropriate to presume relatedness on the mere basis of goods being delivered in the same media format, especially where, as here, the goods described in both the application and registration are defined narrowly, along industry lines."

Finally, the court noted that M2 Software did not introduce any evidence that it actually sells goods or services beyond the music and entertainment fields, and so it had no common law rights that extend beyond the scope of its registration.

As to channels of trade and purchasers, neither party submitted evidence of "inherent overlap" between their respective fields. The fact that each operates a website "is insufficient to overcome the vast weight of evidence establishing that no overlap exists."

The du Pont factors that favored Opposer -- the similarity of the marks and the fanciful nature of the M2 SOFTWARE mark -- were outweighed by the unrelated nature of the goods and the different channels of trade and purchasers.

Accordingly, the CAFC affirmed the Board's ruling.

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 6/08/2006   0 comments

Wednesday, June 07, 2006

PLI Outline on TTAB Practice (2006?)

The Practicing Law Institute (PLI) has made available a chapter from its Course Handbook, "Navigating Trademark Practice Before the PTO 2006: From Filing Through the TTAB Hearing." The chapter, apparently prepared by former TTAB Administrative Trademark Judge Rany Simms, is aptly entitled "Trademark Trial and Appeal Board Practice."


One has to wonder just when this outline was prepared. Its list of sixteen TTAB judges is woefully out of date. It includes at least five judges who have left the Board (Simms, Cissel, Hanak, Chapman, and Wendel) and one who changed his name (Bottorff to Grendel). Four current judges are omitted (Cataldo, Kuhlke, Walsh, and Zervas). [For an up-to-date listing of TTAB judges, see the TTABlog posting here.]

The most recent case cited in the outline is dated 2001. No mention is made of the rule changes that accompanied accession to the Madrid Protocol, and no mention of the currently-proposed TTAB rule changes.

On the other hand, the outline does include a number of worthwhile practical tips. For those alone, it is worth reading. Too bad it isn't more up-to-date.

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 6/07/2006   0 comments

Tuesday, June 06, 2006

From the TTABlog Songbook: "T-T-A-B"

The hits just keep on coming at the TTABlog! Last year, it was "The TTAB Blues," which dealt a serious, but merely temporary blow to the credibility of this blog. But things are slow again at the TTAB these days, so why not release the blog's newest hit: "T-T-A-B." [Sung to the tune of the Village People's "Y-M-C-A"? (What, you expect me to write music too?)].


T-T-A-B

Losers, there's no need to feel down, I said
Losers, pick your chin from the ground,
get a lawyer who can turn it around,
Take your case up on appeal, and

Owners, you can protect your marks
By opposing. Make your bite match your bark.
You can cancel, should the worse come to worst
Yes the good guys finish first ...

At the T-T-A-B
You gotta go to the T-T-A-B.
When your trademark's at stake
For your own goodness sake
At the Board you will get a fair shake.

You've got to go to the T-T-A-B
I said to go to the T-T-A-B
Don't just fall on your sword,
Bring your case to the Board,
Where you're sure to get your just reward ....

At the T-T-A-B
You gotta go to the T-T-A-B.
etc.



Text and lyrics Copyright John L. Welch 2006.

posted by John L. Welch @ 6/06/2006   2 comments

Monday, June 05, 2006

Citable No 30: At PTO's Request, TTAB Reconsiders and Partially Reverses "SQUAW" Disparagement Ruling

In the 30th citable TTAB decision of 2006, the PTO succeeded in obtaining reconsideration and partial reversal of the Board's decision of September 26, 2005, in which the Board had reversed Section 2(a) disparagement refusals of the marks SQUAW and SQUAW ONE for clothing, ski equipment, and retail store services. (TTABlogged here). In re Squaw Valley Devpt. Co., 80 USPQ2d 1264 (TTAB 2006) (on reconsideration).


The Board's earlier ruling was predicated in large part on the PTO's failure to establish that a "substantial composite of Native Americans finds applicant's use of SQUAW in its marks on applicant's goods and services to be disparaging." [emphasis in original].

On reconsideration, the Board again applied the two-part test of Harjo v. Pro-Football, Inc., 50 USPQ2d 1705 (TTAB 1999) [reversed on other grounds] ["Harjo I"] for determining whether matter may be disparaging under Section 2(a):
  1. what is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services;

  2. if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.
Examining Attorney Michael Baird, in the reconsideration request, maintained that the Board had (1) misapplied the second part of the Harjo I test (as to clothing and retail services) by requiring evidence that the goods and services be considered in finding a term to be disparaging; (2) incorrectly applied an inter partes standard of evidence in this ex parte appeal; and (3) as to the class 28 goods, incorrectly analyzed the evidence relating to the likely meaning of the term SQUAW under the first part of the Harjo I test.

As to point 1, the Board reviewed the Harjo decisions, and concluded that it had not erred in its original ruling: "the second part of the test for disparagement requires consideration of whether the term would be considered disparaging as the term is used in connection with the identified goods or services."

As to point 2, for which the PTO's arguments were limited to class 25 and 35, the Board agreed that, in light of applicable CAFC precedent (which recognize the limited resources of examining attorneys) it had applied the wrong standard of proof:

"even though there was no direct evidence that a substantial composite of Native Americans find applicant's use of SQUAW in its marks on the identified goods and services to be disparaging, we did not consider whether the examining attorney met the Office's burden under the second prong of the Harjo I test by extrapolating from the evidence of record that a substantial composite of Native Americans find applicant's use of SQUAW in its marks on the identified goods and services to be disparaging."

The Board then reviewed the PTO's evidence in order to correctly apply the second prong of the test. It found the evidence "sufficient to establish prima facie that applicant's marks disparage a substantial composite of Native Americans when used in the context of applicant's goods and services." Applicant's evidence failed to overcome the PTO's case, since it failed to submit "any evidence which suggests that Native Americans do not view 'squaw' as a [disparaging] term for its Class 25 and 26 goods and services."

Finally, as to point 3, the Board reiterated its finding under the first prong of the Harjo I test that, when used in connection with ski equipment, the primary meaning of SQUAW is the SQUAW VALLEY ski resort. Thus as to these goods, Applicant successfully rebutted the PTO's prima facie case that SQUAW is disparaging.

TTABlog comment: I'm not squawking about this one. It is, however, the first decision I can recall wherein the PTO sought reconsideration of an unfavorable TTAB ruling. I wonder why it doesn't happen more often?

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 6/05/2006   0 comments

Friday, June 02, 2006

Citable No. 29: TTAB Reverses "BOX SOLUTIONS" 2(d) Refusal, but Affirms Disclaimer Requirement of "SOLUTIONS"

Applicant Box Solutions Corp. won a split decision in its appeal from the PTO's refusal to register the mark BOX SOLUTIONS & Design (below left) for "computer hardware, namely, communication servers." The Board reversed the 2(d) refusal, finding Applicant's mark not likely to cause confusion with the registered mark BOX & Design (below right) for "computers and computer peripherals;" but the Board affirmed the PTO's requirement of a disclaimer of the word SOLUTIONS. In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB 2006).


The Board first considered the disclaimer issue. Examining Attorney Nicholas K.D. Altree relied on "a sampling" of 106 third-party registrations in which SOLUTIONS is disclaimed when used for computer goods. Applicant argued that SOLUTIONS "is not directly indicative of the particular qualifying properties of the product." The Board took judicial notice of a dictionary definition of SOLUTIONS -- "An application of computers and software to a particular problem" -- which confirmed its conclusion that SOLUTIONS is descriptive of Applicant's goods and must be disclaimed.

Turning to the 2(d) issue, the Board noted that the identification of goods in the cited registration is not limited, and therefore its "computers" must be considered to encompass Applicant's communications servers. Likewise, the Board presumed an overlap in trade channels and normal classes of purchasers.

However, the Board also found that applicant's communications servers are normally marketed to "persons with a high degree of knowledge and familiarity concerning the goods," and thus the "common purchasers for applicant's and registrant's goods must be considered sophisticated."

As to the marks, Applicant relied on "several" third-party registrations in asserting that the term BOX for computer goods is "very weak." The Board went along: "we find the evidence persuasive to show that BOX is a weak term in the computer industry in that it signifies a computer or computer related device." The Board also took judicial notice of two computer dictionary entries defining "box" as slang for a computer or for hardware.

"These definitions confirm that the term BOX is, at a minimum, highly suggestive of computers and we accord this term a very narrow scope of protection. Therefore, we cannot say, due to its highly suggestive nature, that BOX dominates over the prominent design in registrant's mark. Registrant's stylistic design of what appears to be a monitor with an antenna-like check mark, stands in stark contrast to applicant's highly stylized mark which consists of the phrase BOX SOLUTIONS with the word BOX depicted with white slash marks cutting through it. Thus the marks have substantially different appearances and commercial impressions."

The Board found the differences in the marks to outweigh the similarities: "[s]ophisticated purchasers ... would readily understand the meaning of BOX for computers and would not assume that the goods came from a common source simply on the basis of the word BOX appearing in both marks."

The Board therefore reversed the 2(d) refusal, but allowed applicant thirty days to submit the required disclaimer.

TTABlog comment: Sorry, but I don't buy the Board's 2(d) reasoning. The case was a much closer call than the Board made it out to be. The evidence that BOX is a weak mark was pretty feeble, and given that the word "BOX" is the part of the registered mark that would be spoken, it seems to me that BOX is the dominant portion of that mark. As to Applicant's mark, with SOLUTIONS (which appears in much smaller letters) disclaimed, BOX is surely the dominant portion. Since, as the Board recognizes, marks are not to be compared in a side-by-side fashion, are the design elements really that important here? Moreover, assuming arguendo that the word BOX is a weak formative, the Board has often said the even weak marks are entitled to protection. And the Board also has often said that even sophisticated purchasers are not necessarily sophisticated vis-a-vis trademarks. In my book, BOX and BOX SOLUTIONS are confusingly similar, the differing designs notwithstanding.

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 6/02/2006   0 comments