TTAB Opens Its Hearings to the Public

In the July 26, 2006 Official Gazette, the TTAB announced that, effective August 1st, the Board will permit the public to attend its hearings, under certain conditions and subject to certain procedures. (Notice here).

Public Attendance At Board Hearings
Due to an increasing interest of the public to attend the hearings conducted at the Board of Patent Appeals and Interferences (BPAI) and the Trademark Trial and Appeal Board (TTAB), the following procedures will become effective August 1, 2006, in order to accommodate this objective.

Notification of Hearings:

Hearings open to the public will be posted in advance on the respective websites of the BPAI and the TTAB. The website address of the BPAI is http://www.uspto.gov/web/offices/dcom/bpai/index.html. The website address of the TTAB is http://www.uspto.gov/web/offices/dcom/ttab/index.html. The posting will contain the time, date, hearing room, and proceeding number set for a particular hearing session. Due to last minute cancellations or no shows, there is no guaranty that a hearing on a particular proceeding will occur, although it may be posted.

Hearing Room Admittance:

The BPAI and the TTAB share four hearing rooms, which are located on the 9th floor of the Madison East Building. The Hearing Rooms are designated as "A" through "D". A given number of spaces in each hearing room are reserved for party representatives. The remaining spaces in each hearing room may be made available to the public. The maximum number of publicly available spaces in each hearing room is as follows:

Hearing Room A: 55 spaces
Hearing Room B: 10 spaces
Hearing Room C: 10 spaces
Hearing Room D: 5 spaces

The BPAI and TTAB reserve the right to limit the number of attendees even further.

Thirty minutes before the scheduled start of the hearing session, members of the public should arrive at the lobby level, Madison East Guard Desk and request a hearing badge for hearings in a specific hearing room, e.g., A, B, C, or D. Attendees will need to surrender a picture ID in exchange for a hearing badge. The Guard Desk will only issue a given number of hearing badges for each hearing room on a first come, first served basis. No advance requests for attendance by the public will be permitted. Fifteen minutes before the start of a hearing session a hearing usher will escort the public attendees with badges to the hearing rooms. Upon exiting the building, hearing badges are turned in at the Guard Desk in exchange for the attendee's picture ID.

Hearing Room Protocol/Decorum:

. No food or drink is permitted in the public gallery of the hearing room.

. Proper decorum is required with respect to both behavior and dress for that of a courtroom.

. When a hearing is in session, no one should be heard except for counsel making argument or a judge.

. No personal recording devices of any kind (audio or visual) will be permitted in the hearing room.

. All cell phones or pagers must be turned off.

. Owners of computers brought to the hearing room must acquire an equipment pass from the hearing usher for the computer. Upon exiting the building at the Guard's Desk, the equipment pass is surrendered so as to permit removal of the computer from the building.

. Once granted entry to the hearing session, public attendees are required to stay for the entire hearing session even though there may be more than one proceeding scheduled during the hearing session.

. Improper hearing room behavior may result in removal from the hearing room or other sanctions.


June 27, 2006
MICHAEL R. FLEMING
Chief Administrative Patent Judge
J. DAVID SAMS
Chief Administrative Trademark Judge

TTABlog comments: A special TTABlog hat tip to loyal reader Keith D. for bringing this to my attention. However, I find rather dubious his suggestion that the ban on bringing food and drink into the hearing room may mean that the TTAB (like his beloved Chicago Cubs and other sports teams) wants to keep the concession revenues for itself.

In any case, I can't resist pointing out that this announcement is rather oddly worded. E.g., in the first sentence, what "objective?" And this: "Upon exiting the building, hearing badges ...." The badges will be exiting the building?
.

CAFC Raises Issue of Jurisdiction Over Stoller's Appeal from TTAB Sanction Order

On Wednesday, July 26, the CAFC issued an Order in connection with Leo Stoller's Motion to Stay the TTAB's July 14th Sanction Order. In re Leo Stoller, Appeal No. 2006-1534. Judge Arthur J. Gajarsa directed the PTO and Stoller "to respond whether this court has jurisdiction to review the order. Specifically, there may be concerns whether the order is interlocutory or whether this court or a district court has jurisdiction. See 28 U.S.C. Section 1295(a)(4)(b); 15 U.S.C. 1071." The PTO must respond within 14 days (i.e., by August 9, 2006), and Stoller then will have 10 days to reply.


TTABlog comment: The TTABlog gives kudos to Leo Stoller for providing a never-ending flow of bloggable material. Leo, I couldn't have done it without you!

Text Copyright John L. Welch 2006.

TTAB Sinks "COLGATE SAILING SCHOOL," Affirms Section 2(e)(4) Surname Refusal

Let me say this right up front: I know nothing about sailing, other than what I gleaned from reading Patrick O'Brian's "Jack Aubrey" novels. So don't expect any sailing puns in this posting. The bottom line is this: the Board affirmed a Section 2(e)(4) refusal of the mark COLGATE SAILING SCHOOL for "conducting of classes and furnishing classroom and on-water instruction in sailing" ["SAILING SCHOOL" disclaimed]. In re Offshore Sailing School Ltd., Serial No. 76604329 (July 13, 2006) [not citable].


It was anything but smooth sailing for Applicant Offshore Sailing School. 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).

Examining Attorney Douglas M. Lee relied on evidence from the USFIND database, on website evidence showing the distribution of the surname COLGATE among the population of each of the fifty states, and on websites showing that "sailing school" is generic for the subject services.

Applicant conceded that COLGATE is the surname of its chairman, Steve Colgate, but it urged the Board to follow In re Hutchinson Technology, Inc., 7 USPQ2d 1490 (Fed. Cir. 1988), in which the CAFC panel majority found that HUTCHINSON TECHNOLOGY was not primarily merely a surname.

Steve ColgateApplicant's Chairman
The Board found that the PTO had established a prima facie case, consisting of several hundred COLGATE surname references from the USFIND database. Although COLGATE is a "relatively rare surname" within the U.S., the remaining Benthin factors supported the refusal: COLGATE is the surname of someone associated with Applicant; Applicant failed to demonstrate that COLGATE has a non-surname meaning; and COLGATE has the "look and feel" of a surname because "it has the unmistakable structure of an English habitational name."

As to Applicant's Hutchinson Technology argument, both Applicant and the PTO pointed to TMEP Section 1211.01(b)(vi), which states that if the matter added to the surname is generic, then Hutchinson does not apply. The Examining Attorney proved via website evidence that SAILING SCHOOL is generic for "an institute for instruction in the field of sailing."

Therefore, the Board affirmed the Section 2(e)(4) refusal.

Text Copyright John L. Welch 2006

Google Fires Back: Bases Dismissal Motions on TTAB Stoller Sanction Order

The shock waves from the Board's July 14th Order sanctioning Leo Stoller are reverberating throughout TTAB-land. (See TTABlog here). Just put the word "Stoller" in the "Correspondent" box at TTABVUE, and you may peruse the hundreds of Stoller extension requests that have been denied or vacated. Likewise, oppositions that sprung from these Stoller extensions of time are being dismissed, pursuant to the Board order. [For example, see Opposition No. 91170951, entitled Central Mfg., Inc. d/b/a Central Mfg. Co v. Two Guys Publications, Inc., dismissed on July 24, 2006 (Order here).]


Google, Inc. has taken a proactive approach. Rather than wait for the Board to dismiss Stoller's Opposition No. 91170256, Google filed its own motion for dismissal on July 24th. (see motion paper here). As reported at the TTABlog here , Stoller, through a company dubbed Central Mfg. Co. (Inc.), filed a half-baked opposition to Google's application to register the mark GOOGLE for "toys and sporting equipment, namely plastic exercise balls." Google's application was published for opposition on November 1, 2005. On November 27th Stoller obtained a 90-day extension of time to oppose, and he filed the notice of opposition on March 1, 2006. By the time Google filed its motion to dismiss based upon the Board's sanction order, 40 pleadings and other papers had been filed by the parties in that proceeding. [That proliferation of paperwork is surely a Stoller trademark!]

But Google didn't stop there. On July 24th it also moved to dismiss Stoller's quixotic petition to cancel the GOOGLE service mark registration. Since the filing of the petition on May 1, 2006, some 26 pleadings and other filings have been generated, the latest being Google's "Motion to Dismiss Based Upon Preclusive Effect Of The Board's July 14, 2006 Sanctions Order."

Google argues that the cancellation proceeding should be dismissed "under the doctrine of collateral estoppel (or issue preclusion)," based upon the Board's finding that the claims of Stoller and his companies to "proprietary rights in the marks that they asserted in connection with [the 1800] extension requests were 'baseless' and unsupported by any evidence."

"One of Stoller's extensions of time that was the subject of the Board's Sanctions Order was to oppose an application for registration filed by Registrant for the GOOGLE mark. Petitioner subsequently filed a Notice of Opposition against that application. As Petitioner itself has claimed, Petitioner relies in this proceeding on the same alleged common law rights to 'Google' that it asserts in the Opposition proceeding. The Board's finding that Petitioner has no colorable claim for a belief of damage and has no basis for claiming any proprietary rights accordingly apply to -- and defeat -- Petitioner's alleged standing here as well. This proceeding should be dismissed as a result."

The res judicata effect of the Board's July 14, 2006 Order is fertile ground for further discussion. Google, Inc., as explained above, is in a particularly good position to seek to extend the effect of the Order beyond the realm of the "Stoller 1800."

TTABlog comment: Why do these developments remind me of the Wayne Rooney red card episode in the England v. Portugal World Cup quarter-final? Stoller was red-carded? Stoller is being kicked while he's down? Rooney looks like a young Stoller? All of the above?


Text Copyright John L. Welch 2006.

TTAB Finds "WEARABLE LIP" and "WEARABLE TREATMENT" for Lipstick Not Confusingly Similar

In large part because the cited Supplemental Registration merited a limited scope of protection, the Board reversed a Section 2(d) refusal of the mark WEARABLE LIP for lipsticks and non-medicated lip balm ["WEARABLE" disclaimed], finding the mark not likely to cause confusion with the registered mark WEARABLE TREATMENT for lipstick, non-medicated lip balm, and other cosmetics ["TREATMENT" disclaimed]. In re Bare Escentuals, Inc., Serial No. 76527476 (July 7, 2006) [not citable].


The Board observed that the goods of the parties are in part identical, are deemed to travel in the same channels of trade, and are purchased by the general public, using only ordinary care. However, "the strength of the cited registration, or rather the lack of strength," played a "significant role" in the likelihood of confusion analysis.

"The registration of WEARABLE TREATMENT on the Supplemental Register, rather than on the Principal Register, indicates that it is a merely descriptive term, and therefore is entitled to a limited scope of protection."

Moreover, "the level of descriptiveness of a cited mark may influence the conclusion that confusion is likely or unlikely." When a Supplemental Registration is involved, "likelihood of confusion has normally been found only where the marks and goods are substantially similar."

Examining Attorney Lesley LaMothe argued that the terms LIP and TREATMENT do not distinguish the marks because those words are either highly suggestive or merely descriptive. Applicant Bare Escentuals noted that Registrant disclaimed "TREATMENT" while it disclaimed "WEARABLE," and therefore its mark is dominated by "LIP" while the cited mark is dominated by "WEARABLE." Thus the marks create different commercial impressions.

The Board disagreed. Although disclaimed matter may be given less weight when marks are compared, "in this case consumers are likely to view the marks as a whole and, despite the disclaimers, give equal weight to the various elements." The Board therefore also disagreed with the PTO that the common word "WEARABLE" causes the marks to be similar in appearance, pronunciation, and connotation.

"When the word WEARABLE is combined with LIP, the word WEARABLE conveys this meaning referring to the color of the lipstick, and the resulting mark WEARABLE LIP suggest that the lipstick will look good on the wearer, or will go with outfits of different colors. On the other hand, when WEARABLE is used in the mark WEARABLE TREATMENT, it conveys the idea that the treatment is something that can be worn, and the mark as a whole describes a product that has a therapeutic effect when worn."

Thus, the Board opined, not only does the word WEARABLE have a different meaning in each mark, but the marks as a whole convey different connotations and commercial impressions.


The Board concluded that the differences in the marks, in light of the limited protection accorded the cited mark, made confusion unlikely.

TTABlog comment: My lips got tired when I read this opinion.

Text Copyright John L. Welch 2006.

"A GAMES" and "X GAMES" Not Confusingly Similar, Says TTAB

In the latest round of the "T GAMES" ("T" for trademark), Applicant Kurt Luttermoser survived Opposer ESPN's challenge to his registration of the mark A GAMES ["GAMES" disclaimed] for entertainment services in the nature of various live, aggressive sporting events. ESPN claimed likelihood of confusion with, suggestion of a false connection with, and dilution of, its mark X GAMES, registered and used for its own sports competitions. ESPN, Inc. v. Luttermoser, Opposition No. 91158096 (July 7, 2006) [not citable].


The Board first noted that the respective services of the parties are legally identical and would be offered through the same trade channels.

As to the purported fame of ESPN's mark, the Board was not convinced. Although ESPN has used its X GAMES mark for ten years, it failed to provide proper evidence regarding the income it earned or the attendance at and viewership of its X GAMES. Moreover, its advertising figures of "several million annually" are not at the level "normally found in connection with famous marks." Nor was there evidence of "public acclaim or of awards given to X GAMES broadcasts." The Board concluded that, although the evidence established that X GAMES is "well known in the action sports field, it fails to establish that the mark is a famous mark that should be accorded a wide scope of protection." Thus the Board considered this fifth duPont factor to be "neutral."

From there, it was all downhill for ESPN. The Board turned to the "key" factor in this case: the dissimilarity of the marks. ESPN relied "heavily" on the testimony of a Duke University professor, who asserted that there "is a high degree of similarity in several dimensions between the two words or these two marks." He noted that the marks "have identical phonemes at the end and virtually identical phonemes at the beginning," and he claimed that because of the shared use of the term "games," the marks are identical in meaning. The Board, however, found the professor's testimony of "no probative value," citing Quaker Oats Co. v. St. Joe Processing Co., 109 USPQ 390, 391 (CCPA 1956):

"[expert] testimony amounts to nothing more than an expression of opinion by the witness, which obviously is not binding upon either the tribunals of the Patent Office or the courts. (citations omitted). If such testimony were adopted without considering other aspects of the case, the effect would be to substitute the opinion of the witnesses for the ultimate decision to be reached by the Court and therefore would be improper."

The Board noted that the first part of the marks, which is the part "most likely to be impressed upon the mind of a purchaser and remembered," are different. As to meaning, "X" is likely to be viewed as suggesting "extreme." "A," on the other hand, "is likely to suggest 'adrenalin(e)' if used with 'Adrenalin Games Festival' or perhaps 'alternative,' 'action,' 'amateur,' and 'athlete.'" Moreover, the word "games" is, at a minimum, descriptive of these services.

The Board concluded that the dissimilarity of the marks "outweighs all other relevant duPont factors."

As to ESPN's Section 2(a) false connection claim and its dilution claim, those two were quickly eliminated from the competition. ESPN failed to prove that A GAMES is the same as or a close approximation of X GAMES, as required for a Section 2(a) violation. The dilution claim crashed out because ESPN obviously failed to prove that the marks are identical or substantially similar.

Text Copyright John L. Welch 2006.

Finding Wine and Restaurant Services Related, TTAB Affirms 2(d) Refusal of "SEVEN SISTERS NAKED EYE"

In view of the strong and arbitrary nature of the cited, registered mark SEVEN SISTERS & Design (shown immediately below) for restaurant services, and the commercial relationship between restaurant services and wine, the TTAB affirmed a Section 2(d) refusal of the mark SEVEN SISTERS NAKED EYE for wine. In re Hutchinson, Serial No. 7854227 (July 7, 2006) [not citable].


Examining Attorney David Yontef relied heavily on In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001). There, in discussing the relationship between wine and restaurant services, the Board stated that there must be "'something more' than the fact that registrant uses the mark on a food or beverage item (wine) and applicant uses the mark in connection with restaurant services." It found that "something more" in "the nature of the commercial relationship between wine and restaurant services and in the arbitrary, strong nature of the registrant's mark." The Board found those same elements present here.

Third-party registrations showed that several entities have registered a single mark for both wine and restaurant services. NEXIS articles referred to "a practice in the restaurant industry to offer private-label wines."


The Board noted that Registrant's mark is entitled to a "broader scope of protection" because SEVEN SISTERS is an "arbitrary term for restaurant services, and there is no evidence of third party use. Applicant Hutchinson argued that "Seven Sisters" is not arbitrary, but rather is a reference to the Pleiades of Greek mythology and also a term used to identify a group of women's colleges. The Board responded with this fundamental point:

"Applicant has apparently confused 'arbitrary' with 'invented.' It is not required that a term have no meaning whatsoever in order to be considered a strong mark; an arbitrary mark, that is, one having no meaning with respect to the relevant good or services, is also strong."

Hutchinson pointed out that in Opus One, the registrant's wine was offered in applicant's restaurant, but the Board observed that although such a situation might increase the chances for confusion, "the relatedness of wine and restaurant services is not dependent on such evidence."

Turning to the marks, the Board concluded that "because of the manner [in which] the words are combined, the words NAKED EYE convey a separate thought from SEVEN SISTERS;" consumers "are likely to regard the SEVEN SISTERS portion of the mark in the manner of a house mark, with NAKED EYE being seen in the nature of a product mark." Therefore, consumers are likely to assume that Applicant's wine emanates from, or is sponsored by or affiliated with, the SEVEN SISTERS restaurant.

Consequently, the Board found confusion likely and it affirmed the Section 2(d) refusal.

Text Copyright John L. Welch 2006.

TTAB Grounds Seagull Design Mark: Confusingly Similar to "SEAGULL" Word Mark

Applicant Abercrombie & Fitch never got off the ground in its attempt to escape a Section 2(d) refusal of the design mark shown immediately below (lined for the colors gray and yellow) for various clothing items "sold exclusively in Hollister Co. stores, catalogs, and online web-site," and for retail clothing store services. The Board found the mark confusingly similar to the word mark SEAGULL registered for clothing items and mail order catalog services in the field of clothing. In re Abercrombie & Fitch Trading Co., Serial No. 76516814 (June 28, 2006) [not citable].

The Board observed that, despite the limitations regarding Applicant A&F's channels of trade, the goods of Applicant and Registrant are legally identical or closely related and the services "clearly" commercially related, "since to ordinary consumers, the respective services are simply alternative means of shopping for clothing and related accessories."

The focus, then, was on the marks: is A&F's design mark "in essence a legal equivalent of registrant's 'SEAGULL' mark" -- bearing in mind that the degree of similarity necessary to support a likelihood of confusion is diminished when the goods and/or services are virtually identical? As stated in TMEP Section 1207.01(c)(i), "Under the doctrine of legal equivalents, a pictorial representation and its literal equivalent may be found to be confusingly similar."

Applicant A&F argued that consumers would not equate its design mark with the word "SEAGULL," but rather would "mentally translate the logo into the house mark" HOLLISTER CO. According to Applicant, "[c]onsumers do not view the Lacoste alligator design and say, 'I am buying an alligator shirt' -- rather, they know they are purchasing an IZOD shirt." Moreover, A&F pointed out, Applicant's goods may be purchased only through HOLLISTER CO. venues, and therefore "consumers will first make a conscious decision to purchase from Applicant's stores, web site or catalog when purchasing goods bearing the subject mark."

The Board, however, agreed with the PTO that the doctrine of legal equivalents should be applied. It took judicial notice of an encyclopedia entry for "gull," which included the illustration immediately below:


Moreover, Applicant described its mark as a "Seagull Design," and the mark is colored in the same way as a seagull. The PTO asserted that "[t]he mark consists solely of an accurate depiction of a seagull in flight" and that the average purchaser would recognize the mark as the equivalent of the word "seagull." The Board noted that Applicant's venues "look like a surfer's shack," and concluded that in this context of an "ocean-side or beach themed environment, consumers would readily recognize the design as equivalent to the word "seagull."

The Board therefore affirmed the refusal to register.

TTABlog comment: The Board gave no explanation as to why the limitations in Applicant's channels of trade were unimportant. In the ORION case last year, TTABlogged here, the Board rejected L.L. Bean's argument that confusion was unlikely because its fishing rods and reels were sold only through its own stores, catalogue, and website.

As to A&F's alligator/IZOD argument, the Board curiously asserted (apparently invoking judicial notice) that "it is common knowledge that shirts bearing such a design are typically referred to and known as 'alligator' shirts. In the same manner, purchasers of applicant's goods would be inclined to refer to its various items of apparel as 'seagull' shirts, etc." Shouldn't the Board have required some evidence that IZOD shirts are referred to as "alligator" shirts?

Reader Comment: Eagle-eyed reader Thomas M. sent me the following observation, which gave me a chuckle:

It's worth noting that the Applicant actually got the alligator, Izod, Lacoste example wrong in such a way that hurts their argument, had it been discovered.

The Applicant states, "[c]onsumers do not view the Lacoste alligator design and say, 'I am buying an alligator shirt' -- rather, they know they are purchasing an IZOD shirt."

I cite the GQ Style guy on this matter (here).

Today, the alligator shirt is made by Lacoste, not Izod. As of 1993, consumers might see the alligator and 'know' (in the words of the Applicant) that they are purchasing an Izod shirt, but they would be wrong. They are actually purchasing a Lacoste shirt.

If anything, they could have used the much simpler example that when consumers see three stripes on a shoe, they don't think of "three stripes," they think of Adidas. It's still a loser of an argument, but at least it's a sartorially proper loser.

Text Copyright 2006. John L. Welch.

New from the TTABlog Songbook: "STEALTH"

After I posted my "T-T-A-B" song lyrics, someone suggested that I write a song about Leo Stoller, frequent provider of TTABlog content. But I was having trouble coming up with a tune that I could highjack, mainly because the phrase "Leo Stoller" is not very mellisonant. I decided instead to focus on the word STEALTH, and that's when the Paul McCartney/Wings song "Jet" popped into my head. Now you've really got to concentrate on the melody, and you've got to hear those power chords in your head. So here goes:


STEALTH

STEALTH!
STEALTH!
STEALTH! When I hear you I think of a wedge-winged aircraft.
Or maybe some grizzly guy skulking about in the dark.
Oh, STEALTH! I never even
contemplated
that you were a mark.

STEALTH! Woo-ooo-ooo Woo-ooo-ooo Woo-ooo-ooo
STEALTH! Woo-ooo-ooo Woo-ooo-ooo Woo-ooo-ooo

STEALTH! I had never encountered this Leo Stoller.
He claims he's the owner of every word within sight.
But STEALTH! I thought you had to
use a trademark
to own any rights.

STEALTH! Woo-ooo-ooo Woo-ooo-ooo Woo-ooo-ooo
STEALTH! Woo-ooo-ooo Woo-ooo-ooo Woo-ooo-ooo

Rent-a-mark, no thanks I'’ve got my own.
Rent-a-mark, no thanks I'’ll use my own,
Rent-a-mark.... Take-a-hike.

STEALTH!

STEALTH! I thought you had to
use a trademark
to own any rights.

STEALTH! Woo-ooo-ooo Woo-ooo-ooo Woo-ooo-ooo
STEALTH! Woo-ooo-ooo Woo-ooo-ooo Woo-ooo-ooo

Rent-a-mark, no thanks I'’ve got my own.
Rent-a-mark, no thanks I'’ll use my own,
Rent-a-mark.... Take-a-hike.

STEALTH! You can fool a few people with b.s. and bluster.
But most of us know that it's best just to pay you no mind.
And STEALTH! Looks like the golden
days are over
for lying in STEALTH.

STEALTH! Woo-ooo-ooo Woo-ooo-ooo Woo-ooo-ooo
STEALTH! Woo-ooo-ooo Woo-ooo-ooo Woo-ooo-ooo

Oh STEALTH! Looks like the golden
days are over
for lying in STEALTH.

STEALTH!

What's next for the songbook? I'm open to suggestions.
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TTAB Sanctions Leo Stoller: Vacates All Extensions Granted Since November 2005

In an Order issued on July 14, 2006 and signed by Chief Judge J. David Sams, the TTAB has sanctioned Leo Stoller for his "misuse of the TTAB's procedures" by filing more than 1,800 requests for extension of time to oppose since November 2005. The Board, in its 15-page letter addressed to Stoller, found that the filings were made "for improper purposes, namely, to harass the applicants to pay you to avoid litigation or to license one of the marks in which you assert a baseless claim of rights."

Leo Stoller
The Board consequently vacated "[t]he approval of each request for extension of time to oppose that you have filed since November 2005." Moreover, any notice of opposition filed by Stoller against any of the involved marks "shall be dismissed."

In addition, for the next two years, Stoller is banned from filing, on his own behalf or as an officer, director, or partner of any entity that he controls, any request for extension of time to oppose. This ban applies regardless of whether Stoller is represented by an attorney.

After that two-year period, Stoller is PERMANENTLY barred from such filings, but an attorney may file a request on his behalf.

In response to the Board's show cause order issued on April 26, 2006, Stoller argued that he had met the standard for filing extension requests because his requests "are not based upon the potential opposer being damaged by a registration, but are based upon the potential opposer merely having a opportunity to investigate the facts ...." The Board observed, however, that Stoller had failed to provide "information regarding any specific steps you have taken with regard to any application for which you have obtained an extension of time to conduct such an investigation."

The Board based its sanction Order on Rule 10.18, which provides that a party (whether or not an attorney), by filing a paper with the Board, represents that "[t]he paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of prosecution before the Office," and that "[t]he claims and other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law." Rule 10.18(b).

The Board particularly noted Stoller's claim that he owns several thousand trademarks, listed at his "rentamark" website.

"... the exhibits from your website do not demonstrate your offering for sale any goods or services, other than the 'rental' of the marks themselves, nor do the website exhibits demonstrate the use of any of the asserted terms as trademarks. These excerpts from your website, rather than evidencing support of any purported claim for damage, reinforce the conclusion that you are holding up thousands of applications in an attempt to coerce applicants to license, i.e., 'rent,' trademarks to which you have not demonstrated any proprietary right."

The Board also took umbrage at Stoller's intimation, in the letters that he sent to applicants, that the individual's consent to a further extension is presumed unless the individual objected. The Board found this approach to be "indicative" of Stoller's motivation in filing the many extension requests.

"your contact letters, providing misinformation as to the requirements for the final extension request permitted under Trademark Rule 2.102(c)(3), support the finding that the extension requests at issue here were filed for improper purposes, specifically '... to obtain additional time to harass applicant, to obtain unwarranted extensions of the opposition period, and to waste resources of applicant and the Board.'" [quoting Central Mfg., Inc. v. Third Millennium Technology, Inc., 61 USPQ2d 1210, 1216 (TTAB 2001)].

Finally, the Board indicated that "the question of broader sanctions will be revisited if you commit further improprieties in proceedings before the TTAB."
.
TTABlog Update: At his blog this morning, Leo Stoller posted the following statement, which I quote verbatim:

WASHINGTON--THE TRADEMARK TRIAL AND APPEAL BOARD HAS ENTERED AN ORDER sanctioning Leo Stoller. "You have been granted 90-day extensions of time to oppose more than 1800 applications. The effect has been to delay by at least three months the issuance of trademark registrations for each of those applications..." As a sanction the Board has entered a two-year prohibition on filing extensions requests and require attorney representation for any future extensions requests..." Immediately upon receipt of the sanction order Stoller filed an Appeal with the Federal Circuit and an emergency motion to stay the entry of any sanctions pending the resolution of the Federal Circuit Appeal. The essence of the Board sanction is based solely upon the fact that Stoller filed "1800" extensions. There is no Board rule that limits the amount of extensions a party not violate an file. The Board did and cannot point to any Rule that Stoller violated.

Stoller is absolutely confident of receiving a fully and fair hearing before the Federal Circuit and that after such hearing Stoller will be vindicated, because Stoller did not violate any Board Rule. In fact the Board order represents a clear violation of Stoller due process and equal protection rights under the 5th and 14th Amendments of the US Constitution.

This is not the first time that the US Government has falsely accused a citizen and it will not be the last. Fortunately the US Constitution provides equal protection under the law and is the citizen's best shield for such unconstitutional attack on a citizen rights.

Maybe in the future the Board will come up with an acceptable number of extensions that it will permit a party to file and state in law what is an excessive number. Presently no such rule exists. Consequently, the sanctioning of a party for the mere filing of some arbitrary number of extensions is clearly arbitary and unconstitutional. Stoller is confident that the Federal Circuit will not let the said unconstitutional sanctions against Stoller stand.

.

"GOSMILE PM" Civil Action Yields Second Bite of USPTO Apple

There has been a rather startling development in the GOSMILE PM case. As you will recall, the Board affirmed a Section 2(d) refusal to register that mark for toothpaste, finding it likely to cause confusion with the registered mark P.M. for "toothpaste and gel." In re GoSMILE, Inc., Serial No. 76518244 (January 20, 2006) [not citable]. [The TTABlog found the Board's reasoning "less than convincing" and explained why here.]


GoSMILE argued that the term "P.M." is weak; indeed, the Examining Attorney had required a disclaimer of PM in GoSMILE's mark, deeming it "merely descriptive because it identifies the period of use of the toothpaste." But somewhat strangely, the Board was not satisfied, pointing out that the PTO had not offered any evidence to support the disclaimer requirement, nor had Applicant offered evidence "indicating that PM is merely descriptive for toothpaste or tooth gel."

As reported here at the TTABlog, GoSMILE chose to seek review by way of a civil action in the U.S. District Court for the Eastern District of Virginia, pursuant to 15 U.S.C. Section 1071(b). In its Complaint, captioned GoSMILE, Inc. v. Dudas, Civil Action No. 1:06 CV 291-GBL/TRJ (E.D.Va. filed March 17, 2006), GoSMILE asserted that the TTAB disregarded its evidence (submitted with its appellate brief) of the weakness of the term "PM" based on third-party use, and failed to follow applicable Board precedent, including Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005) (TTABlogged here).

By choosing the district court route rather than appealing to the CAFC, GoSMILE would have the opportunity to submit additional evidence on the likelihood of confusion issue, and particularly on the Knight Textile issue of the weakness of the cited mark P.M.

In a noteworthy development, the USPTO and GoSMILE have agreed to, and the district court has entered, an Order dismissing the civil action without prejudice and remanding the matter to the PTO for further proceedings, subject to the following conditions:

1. Plaintiff will be entitled to present evidence not previously submitted during prosecution of the subject application.
   
   
2. The parties agree that "a purpose of this stipulated dismissal is to reopen prosecution" of the application "to have the USPTO consider additional evidence regarding the registrability of the 'GOSMILE PM' mark." "Should Plaintiff ultimately receive an unfavorable decision from the USPTO upon reopening prosecution of the '244 application, plaintiff retains all possible remedy options, including filing a district court action under 15 U.S.C. Section 1071(b)."
   
   
3. The dismissal "will not operate as res judicata or collateral estoppel in any proceeding on the issues of protectability and/or registrability of the 'GOSMILE PM' mark, as long as GoSmile presents evidence not previously submitted to the USPTO during prosecution of the '244 application."

The Order was agreed to by H. Jay Spiegel, Esq., counsel for GoSMILE, and by Assistant U.S. Attorney Dennis C. Barghaan, Jr., representing the USPTO.

H. Jay Spiegel, Esq.
TTABlog comment: Congratulations to Jay Spiegel! His decision to seek review via civil action rather than appeal has resulted in a re-opening of prosecution of the GOSMILE PM application and avoidance of the cost of a district court trial and further appeal. We'll keep our eye(s) on this one.

Practitioners should take note of this approach to securing review of a Board decision, provided they have additional evidence that was not submitted during prosecution and not considered by the Board. One may speculate that here, the U.S. Attorney's Office was not particularly interested in expending its resources on the trial of an administrative trademark case. The GOSMILE matter may not be unique in that regard.

Text Copyright John L. Welch 2006.

PTO Seeks Comments on Proposed Removal of Design Mark Paper Records

In a Notice published in the Federal Register on June 23, 2006, the PTO has requested comments on a "modified plan to remove the paper search collection of marks that include design elements from the USPTO's Trademark Search Facility and replace them with electronic documents." Comments must be received by August 22, 2006 to ensure consideration.


According to the Notice, the Office believes that removal of this paper collection "will not negatively impact the public." The existing paper records will remain available in microform. In addition, the USPTO is developing "a new design code field to be added to TESS and X-Search (the database available on the USPTO premises), that will mirror the existing codes in the paper search files."


Glenn A. Gundersen, trademark search guru and author of the INTA classic, Trademark Searching, responded as follows to my request for his comments:

"the change is unlikely to have an impact on trademark practitioners, because the vast majority of firms and companies who need a design search for a significant mark don't search designs on their own, but rely on the major search firms, not the PTO. Some practitioners (myself included) conduct their own searching but rely on commercial databases such as Thomson and Corsearch (rather than TESS) because those companies look at new design marks and add additional codes that the PTO may have missed. In addition, they have design code categories that the PTO doesn't even have, so the commercial resources are much more reliable than the PTO resources, whether online or paper, in finding designs that are similar to a design you are searching."

This latest proposal seems unlikely to be a lightning rod for comments, in contrast to the PTO/Board's proposal to amend the TTAB Rules.
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Citable No. 37: TTAB Finds "3-O'S" Merely Descriptive of Car Wheel Rims

Good grief! Another car wheel rim case? We just had two last month (TTABlogged here). Hey, wait a minute! It's the same Board panel and the same attorney for Applicant! In fact, the Applicant this time is the assignee of Jesse James, who lost the other two cases. Why the heck is this decision deemed citable, when the other two were not? I have no idea. In any case the Board here affirmed a Section 2(e)(1) refusal of the mark 3-O'S [that's the letter O, not the number zero], finding it merely descriptive of car wheel rims. In re Vanilla Gorilla, L.P., 80 USPQ2d 1637 (TTAB 2006).


The Examining Attorney contended that, when viewed in the context of Applicant's goods, the mark will be understood to refer to the diameter of the rims in inches. Applicant Vanilla Gorilla lamely asserted that the term 3-O'S "carries the additional suggestive connotation of three circles, or three 'O's, which can refer to dragsters or funny cars with three wheels."

The TTAB sided with the PTO. The record evidence led the Board to conclude that car wheel rims "are available in a variety of sizes and it is apparent that the size of the rims has been getting larger." "The terms '30's,' 'thirty,' and 'thirties' all describe car wheel rims that are 30 inches in diameter." The fact that Applicant's mark consists of the number 3, a hyphen, the letter O, an apostrophe, and the letter S made no difference.

"the term, '3-O'S,' when it is used on car wheels, would likely be pronounced as "three ohs" and signify the number 30s. While in the abstract, the term may have several meanings, when one is a prospective purchaser of car wheel rims, the term '3-O'S' would immediately describe a characteristic or feature of the goods, i.e., that they are 30 inches in diameter."

The Board noted that "the addition of punctuation marks to a descriptive term would not ordinarily change the term into a non-descriptive one." Likewise, slight variations in spelling do not change the meaning of the term.

The Board simply had no doubt that prospective purchasers would "immediately understand that the term is merely descriptive of these goods."

TTABlog comment: How about XXX's? Would the doctrine of foreign equivalents require translation from the Latin? Since these wheel rims are "obscenely large," would XXX be descriptive of that obscenity? Is there a law school paper in here somewhere?

Text Copyright John L. Welch 2006.

Citable No. 36: TTAB Deems Earplug Configuration Functional Based on Expired Patent

Applicant's expired utility patent provided strong evidence of the functionality of the configuration shown immediately below, which Howard Leight sought to register as a trademark for "earplugs for noise protection formed of slow recovery resilient foam material." According to the application, "[t]he mark consists of a bullet-shaped earplug with a vertical axis, a rounded bottom, and a radially outwardly flared top." The Board affirmed refusals to register on the grounds of functionality (Section 2(e)(5)) and, alternatively, lack of distinctiveness. In re Howard Leight Indus., LLC, 80 USPQ2d 1507 (TTAB 2006).


The Board applied the CAFC's Morton-Norwich factors, with an eye on the Supreme Court's TrafFix functionality test. The first factor, the existence of a utility patent disclosing the utilitarian advantages of the design, was dispositive.

The Board ruled that the entirety of the patent, its specification and claims, are relevant to the functionality analysis. Here, Applicant's expired utility patent, entitled "Slow Recovery Earplug with Largely Impenetrable Surface," specifically disclosed and claimed "the functional advantages of the shape of the earplug." The cylindrical shape "allows the body of the earplug to directly contact the surface of the human ear canal, which likewise is cylindrical in shape." The flanged or flared rear end of the earplug "reduces the possibility of deep insertion into the ear, and it reduces the difficulty of removing the earplug."

"These features are more that merely de facto functional; rather, the patent shows that the earplug is in this shape because it works better in this shape. Both the disclosures and the claims of the patent reveal that the shape of the earplug is not a mere arbitrary, ornamental or incidental flourish, but rather serves an essential function in the use of the earplug, and affects the quality of the earplug."

Thus the first Morton-Norwich factor "weighs heavily in favor of a finding of functionality."


The second and fourth factors were neutral, since there was no evidence that Applicant touts the utilitarian advantages of the design in its advertising, nor was there evidence that the design results in a comparatively simple or cheap method of manufacture.

The third factor, the availability of alternative designs, was unimportant because the expired patent alone was a sufficient basis for finding functionality. Consequently, there was "no need to consider the availability of alternative designs, because the feature cannot be given trade dress protection merely because there are alternative designs available." Valu Engineering Inc. v. Rexnord Corp., 61 USPQ2d 1422, 1426 (Fed. Cir. 2002).

Moreover, the Board observed that even if it considered the alternative designs made of record (see photo below), that evidence was insufficient to overcome the patent evidence, "giving due weight to the patent as required by TrafFix." In any case, the alternative designs show that "Applicant's earplug shape clearly is one of but few possible alternative designs" that provide the features and functions of the subject design.


The Board concluded that the evidence "establishes, prima facie, that applicant's design is functional, and that applicant has failed to rebut that presumption."

Next, assuming arguendo that the design is not functional, the Board considered Applicant's Section 2(f) acquired distinctiveness argument. Applicant claimed fifteen years' of use, more than one billion earplugs sold, and advertising expenditures of $1.5 million over the past three years. Not sufficient, said the Board. Fifteen years of exclusive use is not, by itself, enough. Moreover, Applicant's sales figure were not placed in context as to the size of the market, and in any case this evidence does not show that customers recognize the shape as a trademark. As to Applicant's advertising, nothing directs the purchaser to "look for" the shape of the earplugs as a source indicator.

In sum, Applicant failed to establish that its design, even if it were not functional, had acquired distinctiveness.


TTABlog comment: Judge Grendel's opinions are typically well-researched and well-written. His discussion of the interplay of the Morton-Norwich factors and the TrafFix test is particularly noteworthy.

Text Copyright John L. Welch 2006.

Citable No. 35: TTAB Issues Rare Concurrent Use Ruling Re "THE COPY CLUB"

It may not be as shocking as the Zinedine Zidane head butt in the World Cup final, but it is quite a surprise to find the TTAB issuing a ruling in a current use proceeding -- and a citable ruling at that! In CDS, Inc. v. I.C.E.D. Management, Inc., 80 USPQ2d 1572 (TTAB 2006), the Board held that Applicant CDS is entitled to a concurrent use registration for the mark THE COPY CLUB for various document copying, publishing, and management services "for the State of Kansas and that portion of the state of Missouri located within 50 miles of Lenexa, Kansas." In turn, I.C.E.D.'s registration for the mark COPY CLUB for similar and overlapping services was "restricted" to the entire United States except for the area of CDS's registration.


CDS claimed first use dates of April 29, 1993, and sought registration for seven states: Utah, New Jersey, New York, Connecticut, Pennsylvania, Kansas, and Missouri. I.C.E.D. was named as the excepted user in CDS's application. I.C.E.D.'s registration issued on an application filed on July 18, 1994. CDS filed an opposition to that application in 1996, and in 1997 CDS filed its own application, which it promptly amended to a concurrent use application.

In 1998, the Board granted I.C.E.D.'s motion for summary judgment (presumably based on its prior use) and dismissed the opposition. I.C.E.D.'s registration issued in 2001 and in 2002 this concurrent use proceeding was instituted. It was CDS's burden "to prove its rights as a lawful concurrent user and that concurrent use of the parties' marks is not likely to cause confusion."

I.C.E.D.'s filing date of July 18, 1994 "is key because ... that date establishes 'jurisdiction' for applicant to obtain a concurrent use registration, i.e., CDS must show that it began using its mark prior to the filing date of ICED's application."

In his trademark fashion, Judge Hohein set out the factual record and the arguments of the parties in some detail. The Board found that I.C.E.D. was the first user "because it began using its COPY CLUB mark for document preparation and handling services in 1992." CDS was formed in February 1993 and began using its mark one month later. A seven-state review of the evidence (with much quoted testimony) led the Board to conclude that CDS began using its mark in the Kansas City area in 1993, prior to I.C.E.D.'s filing date. I.C.E.D., on the other hand, "has not used its COPY CLUB mark in any of the seven states" that CDS sought. Therefore CDS met the "jurisdictional requirement" or "condition precedent" of its lawful use in commerce outside of I.C.E.D.'s trading area.

The Board noted that there had been some overlap between the parties (in Texas and California), but that CDS stopped its usage in those two states once it learned that I.C.E.D. had prevailed on summary judgment in the opposition. This previous but terminated use "does not preclude a determination that there is no likelihood of confusion" (even though the termination of use occurred after the filing date of I.C.E.D's application).

Next, the Board set out to determine the territory appropriate for each party, noting that the senior user is entitled to a nationwide registration, including areas of its use and non-use, subject only to the excepted areas where the junior user can prove prior use. "The junior user is, in effect, frozen in its area of prior use." However, the Board noted, junior's area of "prior use" includes not only areas of actual use:

"The CCPA has held that: 'actual use in a territory was not necessary to establish rights in that territory, and that the inquiry should focus on the party's (1) previous business activity; (2) previous expansion or lack thereof; (3) dominance of contiguous areas; (4) presently-planned expansion; and, where applicable (5) possible market penetration by means of products brought in from other areas.' Weiner King, Inc. v. The Weiner King Corp., 204 USPQ 820, 830 (CCPA 1980)."

The Board found that CDS's use in Utah, New Jersey, New York, Connecticut, and Pennsylvania was "de minimis and nebulous," amounting mostly to discussions rather than rendering of services. The evidence of CDS's activities in those states was simply too indefinite to establish priority.

However, CDS did show use of its mark in Kansas, and under the Weiner King analysis it was entitled to the entire state. The testimony that a large percentage of CDS's business in Kansas City comes from Missouri led the Board to award CDS the portion of Missouri that lies within 50 miles of Lenexa, Kansas.


The Board then turned to the issue of whether there would still be a likelihood of confusion despite the geographical restrictions imposed. I.C.E.D. argued that there would still be confusion because both parties advertise on the Internet, but the Board flatly rejected that argument: "We do not believe that the creation of the Internet has rendered the concurrent use provision of the Trademark Act moot." "[T]he presence of advertising on the Internet does not automatically preclude concurrent use registration." Noting that CDS includes a disclaimer on its website stating that it does business under its mark only in the seven identified states, the Board ruled that the specific record evidence "does not require us to find that there is a likelihood of confusion."

For the foregoing reasons, the Board ruled that CDS is entitled to a concurrent use registration restricted to Kansas and a neighboring portion of Missouri.

TTABlog comment: As to the effect of the Internet on concurrent use proceedings, the Board answered the question raised last year in the HUBCAP HEAVEN case, TTABlogged here.

Text Copyright John L. Welch 2006.

TTABlog Recommended Reading: Murphy on The Significance of Intent in 2(d) Proceedings

The latest issue of the AIPLA Quarterly Journal includes a thought-provoking article by John M. Murphy, Esq., entitled "The (Unfortunate) Significance of Intent in TTAB Proceedings Under Section 2(d) of the Lanham Act," 34 AIPLA Quarterly Journal 177 (Spring 2006). Mr. Murphy, who practices with the Mexico City firm of Arochi, Marroquin & Lindner, S.C., also authored one of the TTABlog's favorite articles, "Playing the Numbers: A Quantitative Look at Section 2(d) Cases Before the Trademark Trial and Appeal Board," 94 Trademark Reporter 800 (July-August 2004) (TTABlogged here and here).


In his latest article, Mr. Murphy opines that one reason for TTAB delay in Section 2(d) inter partes cases is the Board's unwarranted concern with the defendant's intent in adopting the allegedly confusing mark. Although the Lanham Act does not require consideration of intent in determining likelihood of confusion, "the Board and its reviewing courts have routinely considered a defendant's intent in making this determination."

"In truth, a defendant's reasons for adopting its mark have little to do with the likelihood that the mark's use will result in confusion. Moreover, a defendant's motives are often elusive and can only be determined through extensive discovery, if at all. In addition, disputes regarding intent often stand in the way of summary judgment. A reduced focus on intent would have little effect on the ultimate outcome of proceedings and might pay significant dividends in judicial efficiency."

Mr. Murphy's review of TTAB precedent revealed only four citable cases in the past 75 years in which intent has been mentioned as a significant factor in the outcome. (The most recent, the KRIPTONITA case, was TTABlogged here and here). In each case, plaintiff did not offer affirmative evidence of the defendant's intent, and in each there was objective evidence to support a likelihood of confusion. "The reference to intent appears, in each of these opinions, to have been more of a rhetorical flourish than anything else."

Murphy urges that practitioners and the Board spend less time on intent and more on objective facts regarding the marketplace. In particular, as to summary judgment he suggests that the Board end its practice of "routinely" denying summary judgment whenever an issue of intent is raised, since direct evidence of intent is seldom found and since intent is "rarely dispositive of section 2(d) proceedings."

Mr. Murphy, thank you for another fine article, and thank you for allowing the TTABlog to make your article available here.
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INTA Writes to PTO: Wikipedia And Similar Websites Should Not Be Citable

In a letter dated June 23, 2006 to Commissioner Lynne Beresford, the International Trademark Association (INTA) has recommended that the PTO revise its policy regarding the citability of Internet evidence. (letter here). In particular, INTA requests that the PTO "establish an unambiguous policy that would prohibit the use and citation of Wikipedia and similar sites by Examining Attorneys."


INTA notes that "anyone can alter the content of Wikipedia at any time, casting doubt on the validity of the information contained therein." Indeed, disclaimers at the Wikipedia website (here and here) "clearly bring into question the trustworthiness of its information." The Wikipedia content "appears to be electronic-only with no original or corresponding hard copy print version that would aid in corroboration of source, and no formal peer review of the submitted information takes place."

The INTA letter points out that the Court of Federal Claims (in a non-trademark case) recently sharply criticized Wikipedia as a source of evidence, finding that is was not "remotely" reliable in light of its "pervasive ... and disturbing series of disclaimers." Campbell v. Secretary of Health and Human Services, 69 Fed. Cl. 775, 781 (Ct. Cl. 2006).

The letter concludes that:

"Uncorroborated information obtained from Wikipedia.com and similar collaborative sites that allow anyone freely to edit their content should not be permitted in the record or to form the basis, either in whole or in part, of a refusal to register."

INTA urges that "a new policy must be put in place, one that builds on the Office's existing policy concerning use of Internet evidence by Examining Attorneys, TMEP Section 710.01(b), but goes further by specifically addressing the use of downloaded evidence from sites that, by their own admission, contain unreliable information."


TTABlog comment: Note that my immediately previous posting (here) addresses the reliability of the Acronym Finder website.
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Acronym Finder Responds to TTABlog Comments re Reliability

On more than one occasion [e.g., here and here], I have questioned the reliability of the website called "Acronym Finder" -- in particular, its value as an authority on or reference for the meaning of acronyms. Acronym Finder appeared to me to suffer from the same flaw as Wikipedia: its content is uncorroborated and may be created or altered by its users.


Moreover, the Acronym Finder's "Terms of Use" include the following, somewhat troublesome disclaimer:

"We've done our best to ensure the accuracy of the Acronym Finder database, however, we do not take responsibility for the accuracy of any of the information in the acronym database. Capitalization is NOT necessarily correct. Use information from this site at your own risk." (Emphasis in original)

Mike Molloy, owner, developer, and editor of the Acronym Finder, has sent me the following missive, explaining why he believes my comments are inaccurate and why the Acronym Finder is trustworthy.

Dear John:

I recently came across your blog and some comments about Acronym Finder.

I would like to challenge a couple of things you said about the reliability of Acronym Finder. I've been the owner, developer, and editor of the for-profit Acronym Finder since 1997.

In your TTABlog Comment, you said:

"I continue to wonder why the USPTO and the TTAB place any reliance at all on the acronymfinder database. Its entries are created by the users themselves (like Wikipedia)."

It is true that some Acronym Finder users suggest new acronym and abbreviation definitions, but it is inaccurate to say that our entries are "created by the users themselves" or that we are "like Wikipedia".

We have editorial standards for what we publish. Every suggested definition is reviewed by a human editor (employed by Acronym Finder; no volunteers) and is multi-source verified and edited before publication. If a definition appears in our database, it is because we have found it to be in common use by more than one source, or, the term comes from a subject matter expert. We do not accept "made-up" definitions. More of our guidelines are here: http://www.acronymfinder.com/guidelines.htm.

In other words, our users do NOT create our content. We only document (after careful review, verification and editing) what we find to be already in use. This is no different from what the lexicographers at Merriam-Webster do -- they observe new words/definitions for things in our evolving language, and then add it to their dictionary when they find the term to be common or mainstream enough.

You also made a reference to some of the slang terms in our database. It's true that you will find "IDU" to mean "I don't understand", but that's because we have documented the fact that people do indeed use IDU to abbreviate this phrase. Inclusion of slang in our database does not detract from its reliability and is no different than a mainstream dictionary including slang/vulgar words used in our language.

Acronym Finder is the most comprehensive respected acronym and abbreviation website by any measure, and it's because we pay attention to accuracy and quality in our content.

Please note that I am not advocating that USPTO and/or TTAB should necessarily rely on Acronym Finder -- I am only pointing out what appears to be a misconception on your part about Acronym Finder's reliability and the standards we use to publish content.

Thanks for listening,

Mike Molloy
Acronym Finder: http://www.AcronymFinder.com/
Acronym Blog: http://4acronyms.com/cs/blogs/acroblog/

If anyone has any further comments regarding the Acronym Finder and its reliability, please send them to me and I will be happy to publish them. I thank Mike Molloy for taking the time to respond to my postings.

TTABlog comment: In my view, the TTAB's policy regarding online reference works is a bit of a mess. For example, if an Examining Attorney relies on an online dictionary in refusing registration, the Board will accept that online evidence. But if the Examining Attorney waits until the briefing stage, then the Board will not take judicial notice of the online definition. Why? Because the online dictionary is not considered reliable unless it also appears in print form. See In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). But why is the online dictionary any more reliable if an Examining Attorney cites it during prosecution? Isn't it just as unreliable then?

And what about online references like Wikipedia, that allow users to change the content? Surely those reference should not be acceptable.

Calling the Board. Calling the Trademark Trial and Appeal Board! Please pick up the white courtesy phone!
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TTABlogger Co-Hosts July 13th INTA Roundtable on Fair Use

My colleague, Michael Boudett, and I will host this month's INTA Roundtable on Thursday, July 13th, from 12:00 to 2:00 pm, at the offices of Foley Hoag LLP in Boston. The topic: "Fair or Foul: Navigating the Waters of Fair Use." You may register and find the complete "Discussion Outline" here.


In brief, the outline of the Discussion Outline is as follows:

• I. Traditional or Classic Fair Use.
  
  
• II. Nominative Fair Use: 9th Circuit versus 7th Circuit versus 3rd Circuit.
  
  
• III. Is the 7th Circuit's modified use of the 9th Circuit's nominative Fair Use test preferable?

Mike Boudett will lead the discussion regarding fair use. I will head the discussion of the World Cup, and will explain why I chose Italy in our office pool.
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PTO Finally Refuses "THE TTABLOG" as Merely Descriptive; 2(f) Evidence Sought from Readers

On June 13, 2006, the USPTO issued a final refusal of the mark THE TTABLOG under Section 2(e)(1), maintaining that the mark is merely descriptive of "An online blog featuring commentary and information in the field of trademarks; an online blog featuring commentary and information regarding decisions of the Trademark Trial and Appeal and the courts relating to trademark law." (Application Serial No. 78669946).


For some reason, the PTO Examining Attorney was not impressed by my cogent, incisive, and downright pithy argument that a consumer/reader would not immediately grasp the meaning of the mark THE TTABLOG, but rather would have to excercise some thought and perception before recognizing the derivation of the mark

"Applicant does not dispute that the word “blog” and the acronym “TTAB” are descriptive of the identified services. However, Applicant submits that the telescoped combination of those two words in the term “TTABLOG” is sufficiently strange and unusual that it would cause a person to pause and to exercise some thought and perception in order to recognize the derivation of the term. What causes this hesitation is the fact that the acronym “TTAB” is pronounced by stating the individual letters T-T-A-B. Pronunciation of the word “blog,” however, does not being with the “bee” sound, but with a “soft” sound “buh.” Thus many people are unsure of how to pronounce the term TTABLOG -- and in fact, so is the undersigned, its creator. In presentations for the Boston Bar Association and the Midwest IP Institute, I have suggested jokingly that the pronunciation be something like this: “T-T-A-Bee-Bee-Buh-Buh-Blog.” Several people have approached me and asked me how to pronounce the term., and I tell them the same thing. The point is that the unusual spelling and pronunciation of the term causes persons to hesitate before pronouncing the mark, and it is this odd spelling that gives the mark its inherent distinctiveness -- both visually and aurally."

Not to put too fine a point on it, but I think that overcoming the mere descriptiveness refusl would be an uphill battle. But, by gum, I definitely believe that the mark has acquired distinctiveness!

If you agree and are willing to say so, please send me an e-mail (jwelch@foleyhoag.com) or a letter identifying yourself and stating your experience/employment, and setting forth your view on the issue of whether THE TTABLOG functions as an indicator of source for the recited services. I intend to submit your message in my response/request for reconsideration.

Thank you, and good night.

Flag Football on the Fourth: Another Look at the TTAB's Old Glory Condom Decision

On June 27, 2006, the United States Senate fell one vote short of approving a constitutional amendment that would ban desecration of the U. S. Flag. (S.J. Res. 12). The current political climate led me to wonder, just as it did one year ago, what would happen if the TTAB (and perhaps the CAFC) were today presented with the Old Glory Condom case? In re Old Glory Condom Corp., 26 USPQ2d 1216 (TTAB 1993).


As you may recall, in Old Glory, the Board reversed a Section 2(a) refusal to register the mark OLD GLORY CONDOM CORP & design, shown above, for "prophylactics (condoms)." The Board noted that "the design feature of applicant's mark consists of a pictorial representation of a condom decorated with stars and stripes in a manner to suggest the American flag." The drawing was lined for the colors red and blue.

The Board further noted that the flag design is not applied to the Applicant's condoms themselves. The back of Applicant's packaging stated its "Old Glory Pledge":

We believe it is patriotic to protect and save lives. We offer only the highest quality condoms. Join us in promoting safer sex. Help eliminate AIDS. A portion of Old Glory profits will be donated to AIDS related services.

The Examining Attorney contended that the mark comprises "immoral or scandalous" matter under Section 2(a), and in particular that the use of the American flag as part of applicant's mark for condoms was scandalous because it was likely to offend "a substantial composite of the general public:" that "a majority of the American public would be offended by the use of American flag imagery to promote products associated with sexual activity" and that "the flag is a sacrosanct symbol whose association with condoms would necessarily give offense."

Applicant, however, emphasized "that its mark is expressly designed not to offend but to redefine patriotism to include the fight against sexually-transmitted diseases, including AIDS."

The Board was not impressed by the PTO's flimsy evidentiary support: "The examining attorney's objection to applicant's mark seems to be directed to the mark's linking of flag imagery and a pictorial representation of a condom, each of which, in itself, she apparently finds unobjectionable. Precisely why this combination of images is scandalous the examining attorney fails to articulate. "

"Her position is supported mainly by an expression of opinion that a substantial composite of the public would be offended by applicant's mark, which opinion is, in turn, supported by her opinion that the American flag is a 'sacrosanct' symbol. To bolster the latter opinion, she alluded to an unsuccessful proposed amendment to the U. S. Constitution to prohibit flag burning and to a comment by Chief Justice Rehnquist in his dissent in Texas v. Johnson, 491 U.S. 397, 428 (1989) that many Americans have an 'almost mystical reverence' for the American flag."

The Board found Applicant's proofs to be more persuasive. Observing that "whether applicant's mark would be likely to offend must be judged not in isolation but in the entire context of the mark's use," the Board ruled against the PTO:

"Here, applicant markets its condoms in packaging which emphasizes applicant's commitment to the sale of high quality condoms as a means of promoting safer sex and eliminating AIDS and its belief that the use of condoms is a patriotic act. Although we know that not everyone would share applicant's view that the use of condoms is a patriotic act, the seriousness of purpose surrounding the use of applicant's mark -- a seriousness of purpose made manifest to purchasers on the packaging for applicant's goods -- is a factor to be taken into account in assessing whether the mark is offensive or shocking. When we consider that factor, along with the others we have discussed, we find that applicant's mark can in no way be considered 'scandalous' under Section 2(a)."

The Board's reversal of the PTO's Section 2(a) refusal met with swift criticism from then Congressman James Traficant (D-Ohio), who railed against the TTAB decision:

OLD GLORY CONDOMS ALLOWED TO UNFURL (House of Representatives. March 09, 1993) [Page: H1061]

(Mr. TRAFICANT asked and was given permission to address the House for 1 minute.)

Mr. TRAFICANT. Madam Speaker, the Old Glory Condom Corp. appealed a prior decision that banned their red, white, and blue condoms. Now, Old Glory contended that the use of their red, white, and blue condoms was in fact a patriotic act. And, guess what? The U.S. Trademark Office of Appeals agreed with that.

Here is what the panel said. The name Old Glory and its logo of a flag shaped like an unfurled condom is neither scandalous nor offensive nor unconstitutional.

No wonder the American people are losing confidence in our Government. What is next, the Congressional Medal for Benedict Arnold? When our Government starts treating the flag like an Old Glory condom, something should be done.

TTABlog comment: What would happen today if the PTO Examining Attorney were able to provid better proof of the public's perception of the OLD GLORY CONDOM mark? The issue, of course, is whether a substantial composite of the general public [not necessarily a majority] are offended by use of the term in connection with the identified goods. See, e.g., In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006) [BULLSHIT scandalous for alcoholic and non-alcoholic beverages, and as a service mark for hotel, restaurant, bar, and various other services]. TTABlogged here.

Text Copyright John L. Welch 2005-6. All Rights Reserved.