TTAB Affirms Refusal of "BLACK EXPO" (Stylized) for Lack of Distinctiveness

Finding that the mark BLACK EXPO in the stylized form below ("BLACK EXPO" disclaimed) lacks sufficient distinctiveness, inherent or acquired, to merit registration on the Principal Register, the Board affirmed a refusal to register the mark for "organizing exhibitions for promoting minority owned businesses." In other words, the Board found that the mark was not sufficiently stylized to merit registration, and it ruled that Applicant'’s Section 2(f) evidence was inadequate to establish acquired distinctiveness. In re Thomas-McCants Media, Inc., Serial No. 76462525 (July 14, 2006) [not citable].


Applicant Thomas-McCants conceded that the term BLACK EXPO is at least merely descriptive for its services (and the PTO'’s evidence established that the mark is "highly descriptive"), but it contended that the mark "as a whole is in a sufficiently stylized form to permit registration," and further that the mark has acquired secondary meaning.


The Board noted that a distinctive display of words is registrable "“in the same way as any distinctive picture."” Here, however, the words BLACK EXPO are displayed in plain block lettering, the only stylization consisting of "“the curls at two of the opposing ends and vague curve of the '‘X,'’ the slight increase in size of the letters of BLACK from left to right, and the very slight '‘fuzziness'’ of the '‘O'’ in EXPO."” The Board found that, "“[c]onsidered together, these minor design elements do not render the mark distinctive."”

As to the Section 2(f) claim, in light of the "“very highly descriptive nature"” of the mark, Applicant'’s scanty evidence (a single website page, but no proof of revenues, extent of advertising, or consumer recognition) was insufficient, despite the fact that Applicant had used the mark in commerce for more than five years.

TTABlog comment: I think that the "X" is rather distinctive and should have been enough to push the mark over the registration line.

Text Copyright John L. Welch 2006.

TTABlog Recommended Reading: Baird on 2005 CAFC Trademark Decisions

Steve Baird of Minneapolis-based Winthrop & Weinstine has published an article reviewing the CAFC's trademark decisions for the year 2005, in which he skillfully summarizes and comments on the court's dozen rulings. Stephen R. Baird, "2005 Trademark Decisions of the Federal Circuit," 55 Am. U. Law Rev. 1263 (May 2006).


Mr. Baird, a former clerk to Senior Judge Wilson Cowen of the CAFC, observes:

"The Federal Circuit was not as prolific in 2005 as compared to past years in issuing trademark opinions. The court chose to issue precedential trademark decisions in only six cases. Only one of the cases -- the SKF USA decision concerning gray mark goods -- was identified by the court as involving an issue of first impression, namely whether the differences between domestic goods and gray market goods must be physically manifested in the product or packaging in order to qualify as 'materially different' and thus infringing. While none of the 2005 Federal Circuit trademark cases can fairly be described as groundbreaking, they do advance the court's growing and important body of trademark law."

Nine of the CAFC's 12 decisions concerned the TTAB and five of the nine were deemed precedential. The court affirmed six TTAB rulings, affirmed two in part, and vacated one, as listed below (linked to the corresponding TTABlog posting).

Affirmed:

• In re Stereotaxis Inc. [precedential]
• Stoller v. Northern Telepresence Corp.
• In re Rath [precedential]
• In re Precision Cuts, Inc.
• Stoller v. Hyperstealth Biotechnology Corp.
• In re Innovation Development Group

Affirmed in part:

• In re Steelbuilding.com [precedential]
• Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772 [precedential]

Vacated:

• Mayer/Berkshire Corp. v. Berkshire Fashions Inc. [precedential]

Steve will be a speaker at the upcoming 2006 Midwest IP Institute in Minneapolis (September 25 and 26), where he, along with Commissioner of Trademarks Lynne G. Beresford, will discuss "The Year in Trademark Law." (download brochure here).


Text Copyright John L. Welch 2006.

PTO Announces New Procedures for Submitting Amendments/Corrections to Trademark Applications After Publication

On August 28th, the PTO announced new procedures for amending or correcting trademark applications after publication. (here).

Procedures for Submitting Amendments/Corrections to Trademark Applications After Publication
August 28, 2006
To improve the tracking and disposition of amendments and requests for corrections to trademark applications submitted after publication, the Office is providing the following recommended procedures. Once an application has been “approved for publication” by the examining attorney, all amendments and requests for corrections are processed as amendments/corrections after publication. You can determine the status of your application and whether or not it has been “approved for publication” or “published for Opposition” by entering the serial number in the Trademark Applications and Registrations Retrieval (TARR) database at http://tarr.uspto.gov/.

Applicants are strongly encouraged to review the information concerning their application in the TARR database and as published in the Official Gazette at http://www.uspto.gov/web/trademarks/tmog/. Upon review of the information concerning your application, any requests for an amendment/correction should be faxed to Post Publication Amendments/Corrections at 571-270-9007 to ensure that they become part of the record for the relevant application. Requests to correct minor typographical errors entered by the USPTO, inquiries regarding the procedure for submitting a post-publication amendment, or questions regarding the status of a post-publication amendment can be e-mailed to TM Post Pub Query@uspto.gov.

All post-publications amendments/corrections should be submitted no later than 6 weeks after the publication date to insure that the amendment/correction can be considered prior to the issuance of the notice of allowance or registration certificate. The TM Photocomp mailbox is no longer available for submission of amendments or requests for corrections after publication. The procedure has been changed to ensure that the requested amendment is matched with the proper application, uploaded into the database, and reviewed in a timely manner.

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PTO Seeks Dismissal of Stoller Sanction Appeal for Lack of Jurisdiction

The PTO has filed its Response to the CAFC's July 26th Order concerning the issue of its jurisdiction over Leo Stoller's appeal from the PTO/TTAB Sanction Order of July 14. [See prior TTABlog posting here, and related postings]. In its 16-page filing, the PTO asserts that the court does not have jurisdiction and therefore should dismiss the appeal.


The PTO's position is as follows:

"The Director's decision that Stoller has improperly appealed is an order "sanctioning" Stoller for his abusive conduct before the USPTO. Since it is not a TTAB decision reaching the merits, nor is it a Director's decision related to 15 U.S.C. Sections 1058 or 1059, this Court does not have jurisdiction. If anywhere, jurisdiction lies in the district court under the Administrative Procedure Act ('APA'). See 5 U.S.C. Sections 701 et seq.. Therefore, this Court should dismiss Stoller's appeal with prejudice."

Text Copyright John L. Welch 2006.

Utility Patent Leads to TTAB Affirmance of Functionality Refusal for Pet Toy Configuration

A utility patent once again provided strong evidence of the functionality of a product design, as the Board affirmed a Section 2(e)(5) refusal to register the product configuration shown below for "pet toys," finding the design to be de jure functional. According to the application, "the Mark consists of a three-dimensional configuration of a pet toy comprising at least one rope operatively associated with a rubberized plasticized center." In re The Kong Company, LLC, Serial No 78259826 (August 2, 2006) [not citable].


The Board first noted that the "functionality doctrine guards against the 'misuse' or 'over-extension' of trademark protection for product designs." Applying the CAFC's Morton-Norwich analysis, the Board considered (1) whether a utility patent discloses the utilitarian advantages of the design; (2) whether advertising materials tout the design's utilitarian advantages; (3) the availability of functionally-equivalent alternatives; and (4) whether the design results in a comparatively simple or cheap method of manufacture. In re Morton-Norwich Prods., Inc., 213 USPQ 9, 15-16 (CCPA 1982).

As to factor (1), the Board found that Applicant Kong's existing utility patent entitled "Therapeutic Pet Toy" constitutes "strong evidence" that the design is functional. The patent discloses a dental hygiene pet toy having a deformable elastomeric body and at least one grove forming a lip that will scrape plaque and other debris from a tooth and ginviva.

Drawings from Applicant's patent
Applicant Kong argued that the patent disclosed and claimed only "an individual feature" of its product, and it emphasized that the patent does not refer to any rope element. Moreover, Kong pointed out, the description in its trademark application did not refer to the functional features claimed in the patent.

Examining Attorney Michael Webster, noting the product description at Kong's own website, asserted that the grooves in the toy are "essential to the purpose of the pet dental toy and affect the cost and quality of the goods. The teeth cleaning function of the goods is the central advance of the overall product configuration."

The Board agreed with the PTO: the "rubberized plastic center" is the dominant element in applicant's mark; the grooves are the dominant feature of the center; and the body and the shape and positioning of the grooves, as depicted in the trademark drawing, are key elements of the patent. The fact that the description of the mark does not refer to the grooves or the shape of the body of the toy "in no way detracts from their importance in the mark as shown in the trademark drawing."

"In this case the grooved 'rubberized plasticized center' is the proverbial elephant in the middle of the living room. The grooved body itself is conspicuous, though applicant does not mention it. If applicant had truly intended to exclude the grooves or any other element of the mark, it could have done so by showing the grooves or other elements in broken line in its drawing."

The Board observed that the few arbitrary and nonfunctional features pointed out by Applicant are insufficient to render the overall design nonfunctional. "... the right to copy better working designs would, in due course, be stripped of all meaning if overall functional designs were accorded trademark protection because they included a few arbitrary and nonfunctional features."


Although the Board thought the patent evidence alone to be sufficient to establish functionality, it went on to consider the other three Morton-Norwich factors.

As to boastful advertising, the Board noted that Applicant's own website categorizes the product as "DENTAL KONG" and "extols the dental-hygiene utilitarian advantages of the product." Thus this factor also supported a finding of functionality.

As to alternative designs, Applicant claimed that there were many alternatives available, but the Board failed to find "a single example of a product which is functionally equivalent to applicant's product from the standpoint of dental hygiene." Applicant's evidence did show, however, that rope elements are "extremely common in pet toys," which reinforced the Board's conclusion that the grooved body is the dominant element in Applicant's mark.

Finally, the Board found that, even if Applicant's product is more expensive to manufacture than alternatives, "the functional advantages of Applicant's product in the area of dental health may very well outweigh any increase in cost." Therefore, the Board deemed this factor to be neutral.

Consequently, based on factors 1, 2, and 3, the Board affirmed the Section 2(e)(5) refusal to register.

Text Copyright John L. Welch 2006

Commissioner of Patents Reportedly Bars Reliance on Wikipedia by Patent Examiners

In an August 25th posting, the Wall Street Journal Law Blog reports (here) that the USPTO has instructed its Examiners not to rely on Wikipedia as an accepted source of information. Commissioner of Patents John Doll is quoted as saying, "The problem with Wikipedia is that it's constantly changing."

Commissioner for Trademarks Lynne G. Beresford recently refused to ban reliance on Wikipedia and other collaborative websites by Trademark Examining Attorneys. (see TTABlog posting here).

TTABlog comment: I think Mr. Doll got this one right.

Text Copyright John L. Welch 2006.

PTO Strategic Plan Calls for 60-80 Precedential TTAB Decisions Per Year and Citability of Non-Precedentials

The PTO's draft five-year strategic plan (for the years 2007-2012), released on August 24, 2006, calls for an "enhanced level of TTAB precedential decisions (60-80 per year.)." (Plan found here; PTO press release here). [So far the Board is on course to meet that goal in 2006, having issued some 40 citable decisions to date]. The plan also proposes that citation of non-precedential decisions in briefs be permitted no later than FY 2007, "with use of those citations to identify needs for precedential decisions beginning in FY 2008" [page 32].


The draft plan also calls for the implementation of "TTAB Case Resolution" to effect a reduction in the number of appeals filed with the TTAB and a reduction in the overall pendency of opposition and cancellation proceedings [page 24]. In particular, it looks to reduce the average pendency of contested trademark oppositions by at least two months by FY 2008, with continued reductions in average pendency in subsequent years.

A public hearing on the plan will be held on September 26, 2006, at PTO Headquarters.

TTABlog comments: The distinction drawn by the PTO between "precedential" decisions and "citable" decisions deserves some thought. If a decision is not "precedential," its value as a citable case is certainly limited. In other words, what's the point here?

As to the implementation of "TTAB Case Resolution," if this means mediation, then the past history of the TTAB's efforts to establish such a program leaves one in doubt that this goal will be achieved.

Text Copyright John L. Welch 2006.

TTAB Reverses Disclaimer Requirement of "COMMERCE" in "COMMERCE BANK" Mark

The Board reversed a PTO requirement that Applicant Commerce Bancorp disclaim the word COMMERCE in the mark COMMERCE BANK & Design for banking services ["BANK" disclaimed]. In re Commerce Bancorp, Inc., Serial No. 76129795 (July 10, 2006) [not citable].


The PTO relied on dictionary definitions, on third-party registrations, and on NEXIS excerpts purportedly showing common descriptive use of the term COMMERCE BANK.

Applicant got off on the wrong foot by filing a 26-page brief that the Board refused to consider, since it violated Rule 2.142(b) [25-page limit]. In its reply brief, Applicant argued that the PTO's definition of "commerce" is "pertinent in the fields of international trade and import/export businesses, [but] is in no way primary, key, significant, or central when properly viewed in the context of a retail bank...."

Applicant also challenged the PTO's reliance on definitions of "commercial" and "commercial bank:"

"unlike the use of 'commercial bank' in a bank's name, which indicates that the bank receives deposits and makes loans, the use of 'commerce' in a bank's name does not, without 'additional leaps and thoughts,' indicate that the bank makes loans."

The Board agreed with Applicant. Even accepting the PTO's contention that "business" is a synonym for "commerce," the term "business" is a broad one and does not immediately describe any particular characteristic, feature, or function of Applicant's services. As to the word "commercial," that term has a specific meaning in the banking field and "the consuming public would not likely made an immediate association between 'commerce' and banking services, even if 'commercial' is a form of the word 'commerce.'"


As to the NEXIS excerpts, use of "Commerce Bank" in the names of various banks does not establish that the phrase is descriptive (although it may show that the phrase is a weak source-identifier). And as to the two third-party registrations cited by the PTO (one with COMMERCE BANK disclaimed and the other under Section 2(f)), Applicant countered with two principal registrations in which the phrase was not disclaimed. The Board noted once again that it is not bound by such prior determinations made by the PTO, and that in any case, the four registrations show at most that there may be "conflicting practices with respect to this term within the Office."

Text Copyright John L. Welch 2006.

IP Orgs Pow-Wow with PTO Re Proposed TTAB Rule Changes

Representatives of the USPTO, the ABA, INTA, IPO, and AIPLA met on July 25, 2006 to discuss the proposed TTAB Rule Changes. According to the five-page Summary Report (found at the TTAB-Rules blog), "the Organizations provided consensus viewpoints regarding five of the proposed changes to the Rules in descending order of importance (i.e., "1" being the greatest source of concern and "5" being the least): (1) Scope of the Mandatory Initial Disclosures; (2) Reduction in the number of Interrogatories; (3) Serving Notice of Board Proceedings; (4) Protective Order; and (5) Expert Disclosures."


To summarize the Summary Report:

• As to initial mandatory disclosures, the Organizations suggested more modest disclosures of the type described in Rules 26(a)(1)(A) & (B), Fed. R. Civ. P. The broad disclosure categories proposed by the PTO are likely to increase motion practice regarding the adequacy and scope of parties' compliance, stalling the progress of proceedings.


• The PTO was asked to reconsider the proposed reduction in the number of interrogatories from 75 to 25, since the current system seems to be working well. A "drastic reduction" to 25 interrogatories would encourage more motions for leave to serve additional interrogatories and more discovery depositions, resulting in the expense of greater resources in a proceeding.


• As to serving notice of Board proceedings, the Organizations do not object to direct service on the party in the position of defendant, but they are concerned about the Board'’s proposed steps required of a plaintiff who suspects that the correspondence address of record no longer is accurate or who finds that the service copy of the notice of opposition or the petition for cancellation is returned as undeliverable.


• As to the automatic imposition of the Board's Standard Protective Order, the Organizations expressed their concern that the proposed Rule changes would undermine the protection accorded trade secrets and confidential information in Board proceedings. Because the nature of confidential information differs from case-to-case, a "one-size-fits-all" approach to protecting such information is not appropriate.


• Finally, regarding expert disclosure, the Organizations urged the Board to either track FRCP 26 (which allows a court to set a deadline for expert disclosures at a time before trial, but not necessarily during the discovery period, as the PTO proposes), or provide more flexibility, perhaps even setting a period for expert disclosures and discovery after fact discovery has closed and before the plaintiff's testimony period opens.

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TTAB Finds "SURE CODE" for Printers and "SUREPRINT" for Printer Software Confusingly Similar

I'm not so sure about this one. The Board affirmed a Section 2(d) refusal to register the mark SURE CODE for "printers, namely high resolution printers" ["CODE" disclaimed], finding the mark likely to cause confusion with the mark SUREPRINT, registered for "computer programs to control printers." In re Graphic Controls LLC, Serial No. 78289575 (July 19, 2006) [not citable].

SURE CODE 5000
As to the relatedness of the goods, the PTO as usual relied on third-party registrations, and the Board, also recognizing that computer programs may be used to control high resolution printers, found the goods to be "closely related."

As to the marks, the Board observed that "code" is merely descriptive for printers, and it deemed "print" to be "at least very descriptive" of printer computer programs. Thus, it concluded, the term "sure" would dominate the marks. Moreover, "the meanings and commercial impressions are not dissimilar," as the Board explained:

"While applicant argues that 'SURE CODE connotes a product that is sure to code correctly while SUREPRINT connotes a product that is sure to print,' it is also true that the term SURE CODE used on printers would likewise suggest that the printer code results in a printer that is sure to print."

The Board concluded that the differences in the marks are eclipsed by the similarities.

Applicant contended that the term SURE is relatively weak, citing four registrations: for SURE MARK for high resolution printing ink, SURELOAD for point-of-sale printers and software therefor, SURE SECURE for printer ribbons, and SURE-PAK for printers for printing labels for food products. The Board, however, rejected that argument, noting that "[a]s to strength of a mark ... registration evidence may not be given any weight."

Finally, the Board noted that it resolved any doubts in favor of the registrant and against the newcomer.

TTABlog comment: Third-party registrations may be used to show that a particular term is weak and entitled to a narrow scope of protection. See, e.g., American Hospital Supply Corp. v. Air Products and Chemicals, Inc., 194 USPQ 340 (TTAB 1997). Applicant's counsel argued that "sure" is a laudatory term in the printing field and therefore merits only a narrow scope of protection, but the Board apparently ignored that argument as it brushed aside the third-party registrations.

Viewing the marks SURE CODE and SUREPRINT in their entireties, and taking into account the differences in goods, I would have reached a different conclusion as to the likelihood of confusion.

Text Copyright John L. Welch 2006.

TTAB Reverses Phantom Mark Refusals but Affirms Non-Distinctiveness of Wiper Blade Stripes

Applicant Trico won the phantom mark battle but lost the war in its attempt to register the marks shown below for windshield wiper blades. The Board found the marks to be merely ornamental and lacking in secondary meaning. In re Trico Products Corp., Serial Nos. 76393303 and 76394328 (July 20, 2006) [not citable].

Although it is difficult to tell the difference from the drawings, the upper mark "consists of a contrasting color used on a stripe on the wiping element" of the wiper blade, while the lower mark features "a stripe running longitudinally on the sidewall of the blade."

Considering first the "contrasting color" case, the wiping element is a dark color and the stripe a light color. Examining Attorney Raul Cordova held that the mark was not inherently distinctive, and the Board agreed. [It therefore found it unnecessary to address Applicant's question as to whether a "contrasting color" mark (as opposed to a single color) can ever be inherently distinctive].

"... the contrasting color refers to that part of applicant's wiper blade that is different from the rest of the blade inasmuch as it reflect the Teflon stripe that is contained in applicant's blade. *** The design is a slight variation from the traditional design of a wiper blade. *** Consumers would understand the commercial impression of applicant's wiper design stripe as simply indicating the presence of a Teflon substance rather than a trademark."

As to the phantom mark issue, the Board followed In re Data Packaging Corp., 172 USPQ 396 (CCPA 1972), which held to be registrable an annular band on a computer tape reel in a color contrasting with the reel flange:

"... there is no reason why an applicant should not be able to obtain a single registration of a design mark covering all the different colors in which it may appear, that is to say, not limited to a particular color." 172 USPQ at 397.

The Board noted that the more recent phantom mark ruling in In re International Flavors and Fragrances Inc., 51 USPQ2d 1513 (Fed. Cir. 1999), "[a]s a panel decision, did not and could not overrule Data Packaging." Moreover, in International Flavors -- which involved the word marks LIVING XXXX FLAVORS and LIVING XXXX FLAVOR, where XXXX represented "a specific herb, fruit, plant or vegetable -- "the public was left to guess as to what the limits of the mark were." Not so in Data Packaging and not so here.

Finally, as to acquired distinctiveness, Trico's evidence fell short. In its supposed "look for" advertising, references to the stripe were "buried in substantial text" and appeared to highlight the presence of Teflon rather than indicate the stripe as a source-identifier. Evidence of advertising expenditures was not helpful because the advertising did not promote the stripe as a trademark. And the sales volume evidence did not, by itself, show recognition of the stripe as a trademark as opposed to recognition of the alleged technical improvements in the wiper blades.


Turning to the other mark, involving a stripe on the blade sidewall, the Board again rejected the PTO's phantom mark argument. It also found the mark to be merely ornamental and not inherently distinctive: it is "simply a minor refinement of the common blade design" and it "reflects the presence of a new material (TEFLON coating) on the wiper blade." It would be viewed "as the addition of new material to the blade and not a trademark for applicant's goods." As to acquired distinctiveness, Trico's evidence was virtually the same as, if not identical to, its evidence regarding the other mark, and the Board's conclusion was the same.

Therefore, the Board affirmed the refusals to register on the ground that the marks are not inherently distinctive and lack secondary meaning.

TTABlog comment: For more discussion of phantom marks, see the TTABlog posting here.

Text Copyright John L. Welch 2006.

Boy Scouts Sue Leo Stoller for Declaratory Judgment re "NORTHERN STAR COUNCIL" Mark

The Northern Star Council of the Boy Scouts of America have sued Leo Stoller and his companies in the U.S. District Court for the District of Minnesota, seeking a declaratory judgment that the mark NORTHERN STAR COUNCIL does not infringe upon or dilute, and is not a counterfeit of, any mark, and specifically Stoller's alleged mark DARK STAR. Northern Star Council, Boy Scouts of America v. Central Mfg., Inc., et al., Civil Action No. 0:06-cv-03059-ADM-AJB (filed July 20, 2006). [Complaint here].


The complaint alleges that on May 19, 2006, Stoller, as President of Central Mfg. Co., obtained a 90-day extension of time to oppose Plaintiff's NORTHERN STAR COUNCIL application. On or about May 22, Stoller sent a cease and desist letter "alleging and accusing the Northern Star Council of infringing multiple alleged 'DARK STAR' marks." The letter charged the Council with trademark infringement, dilution, and unfair competition, and demanded that the Council discontinue use of the accused mark and account for its "sales made to date." Stoller also threatened to file an opposition and/or commence litigation if the Council did not comply with his demands.


Text Copyright John L. Welch 2006.

TTABlogger Asks PTO to Reconsider Mere Descriptiveness Refusal of "THE TTABLOG"

In a Request for Reconsideration filed on August 18, 2006, yours truly has requested reconsideration and withdrawal of the PTO's Section 2(e)(1) final refusal to register the mark THE TTABLOG for "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." (File wrapper documents may be found at the TDR database under Application Serial No. 78669946). The PTO's refusal to register was discussed here at the TTABlog.

The TTABlogger and "Bloggsie"
Taking direct issue with the Examining Attorney's reasoning and conclusion, Applicant asserted:

"The proper inquiry is not whether the meaning of the mark is evident upon consideration of the goods or services, but whether the mark has some characteristic that would cause the consumer to recognize it not as just a descriptive term, but also as a trademark. In the case of the double entendre marks, the consumer recognizes the clever use of a phrase that has a well-known second meaning. With regard to the subject mark, the consumer recognizes the odd, tongue-twisting fusion of the words TTAB and blog. Even though the consumer in these instances understands the meaning of the terms as applied to the goods or services in question, he or she also recognizes that the mark has a unique and memorable aspect that gives the term its source-identifying power."

Applicant argued in the alternative that the mark THE TTABLOG has acquired distinctiveness under Section 2(f), citing, inter alia, pertinent portions of 27 communications (attached to the Request for Reconsideration) from trademark practitioners across the country, attesting to the distinctiveness of the mark. In that regard, the TTABlogger wishes to thank the following 27 individuals for taking the time to provide their support for registration of this mark:

• Michael Heilbronner, attorney, IdeaLegal, P.C., Portland, Oregon.
• Mike Oliver, attorney, Bowie & Jensen, P.C., Towson, Maryland.
• Assoc. Professor Rebecca Tushnet, Georgetown University Law Center.
• Douglas W. Lytle, attorney, Duckor Spradling Metzger & Wynne, San Diego, California.
• Orrin A. Falby, trademark paralegal, Siemens Corp., Iselin, New Jersey.
• Dennis Griggs, attorney, Griggs Bergen LLP, Dallas, Texas.
• Anthony J. Tambourino, attorney, York, Pennsylvania.
• Leo Stoller, rentamark.com, Chicago, Illinois.
• Aaron Silverstein, attorney, Saunders & Silverstein LLP, Newburyport, Massachusetts.
• Christopher Shiplett, law student, George Mason University.
• Herbert J. Singer, attorney, Silverman, Cass & Singer, Ltd., Chicago, Illinois.
• Christopher Turk, attorney, The H.D. Lee Company, Inc., Wilmington, Delaware.
• Derek A. Newman, attorney, Newman & Newman, Seattle, Washington.
• Venkat Balasubramani, attorney, Seattle, Washington.
• Ryan W. Corrigan, attorney, Dowling Aaron & Keeler, Inc., Fresno, California.
• Keith Danish, attorney, New York, New York.
• H. Jay Spiegel, attorney, Mount Vernon, Virginia.
• Peter Michaud, attorney, Thompson, Bull, Furey, Bass & MacColl, Portland, Maine.
• J. Scott Gerien, attorney, Dickensen Peatman & Fogarty, Napa, California.
• Mark J. Plotkin, attorney, Waller Lansden Dortch and Davis LLP, Nashville, Tennessee.
• Marsha K. Hoover, attorney, Davis McGrath LLC, Chicago, Illinois.
• Brett Tolpin, attorney, Welsh & Katz, Ltd., Chicago, Illinois.
• Ronald D. Coleman, attorney, Bragar, Wexler & Eagel, PC, New York, New York.
• Mark Leonard, attorney, Davis & Leonard, LLP, Sacramento, California.
• Nancy Dwyer Chapman, attorney, Lackenbach Siegel LLP, Scarsdale, New York.
• Lance Johnson, attorney, Roylance, Abrams, Berdo & Goodman, LLP, Washington, D.C.
• Dave Purdue, attorney, Toledo, Ohio.

Applicant also made it clear that, regardless of whether the Examining Attorney accepts the Section 2(f) evidence, if the Examining Attorney decides not to withdraw the refusal under Section 2(e)(1), Applicant intends to appeal that refusal. See Trademark Trial and Appeal Board Manual of Procedure (TBMP), Section 1215. In other words, Applicant is not willing to accept a registration under Section 2(f) unless, upon appeal, the TTAB holds that the subject mark is merely descriptive.

TTABlog admission: Actually the dog is not "Bloggsie." It's my brother's dog, "Tanner." I don't have a dog, but if I did, I think I'd call it .... "Fido," or "Rover," or "Rex." Anything but "Bloggsie."

Text Copyright John L. Welch 2006.

Citable No. 41: TTAB Finds Drawing of Product Not Functional for Design Services

In an exhausting 56-page decision, the Board sustained an opposition to registration of the depiction shown immediately below as a service mark for the "manufacture of marine heat exchangers to the order of others," finding that the mark lacked acquired distinctiveness under Section 2(f). However, considering an issue of first impression -- whether a two-dimensional drawing may be de jure functional for services -- it rejected Opposer's claim that the alleged mark is functional. Duramax Marine, LLC v. R.W. Fernstrum & Co., 80 USPQ2d 1780 (TTAB 2006).


The Board's decision focused on four principal issues: whether Opposer Duramax had standing to oppose and whether it was estopped from opposing in light of a prior litigation settlement agreement, whether the subject mark is functional for Applicant's services, and if not, whether the mark has acquired distinctiveness (Applicant sought registration under Section 2(f)).

As to standing, Applicant Fernstrum asserted that the litigation settlement agreement restricted Opposer to the manufacture and marketing of keel coolers of a type different from that which Applicant makes. Therefore, Applicant argued, Opposer could not be damaged by the registration of this particular design. The Board disagreed.

"Even assuming that opposer is, by the settlement agreement, barred from manufacturing a keel cooler in the form represented by the depiction, the exclusive registration of assertedly descriptive matter by a competitor might provide that competitor with an advantage, for example, in marketing its products."

In addition, the settlement agreement contemplated a "possible future right of opposer to manufacture and sell keel coolers" without the restriction; if that right did not arise until more than five years after Applicant's mark were registered, Opposer would be barred (under Section 15 of the Act) from challenging the mark as descriptive. "Opposer's prospective interest in one day using the proposed mark, is a sufficient pleading of standing."

As to Applicant's estoppel argument, the Board, after an extensive analysis of the settlement agreement, concluded that Opposer was not estopped from challenging the subject application.

Turning to the functionality issue, the Board agreed with Applicant that "there is a significant difference between an application to register trade dress in the nature of product design as a mark for the product itself ... and an application to register a two-dimensional drawing that may look very much like such a product, but is used on labels, catalogs, brochures, and in various other ways as a mark for services. The inquiry regarding functionality may need to be decidedly different in the latter set of circumstances and this opposition is therefore a case of first impression for the Board." (pp. 40-41).

The Board recognized some compelling arguments against registration of a design that appeared in a now-expired patent:

"... the case at hand presents, more than the cases involving restaurant or retail kiosk trade dress, a much closer question regarding whether any manufacturer of the formerly patented item should be free to utilize, in advertising its goods for sale, a realistic depiction of the item." (p. 43)

However, Opposer failed to persuade the Board that an extension of existing law to cover the circumstance of this case was warranted. The Board explained:

"... we must balance against opposer's argument for the extension of existing case law on functionality what is shown by the record to be long use of the keel cooler depiction by applicant in a manner of a logo. Further, opposer has not discussed whether, when custom manufacturing services are involved, we should still apply the TrafFix test for functionality (a three-dimensional product design is functional if it is 'essential to the use or purpose of the product or if it affects the cost or quality of the product') to the product that results from purchasing the services, or whether the test should be adapted and focus on whether use of the two-dimensional design to be registered is essential to anyone who would provide the same service, or would, if unavailable, affect the cost or quality of the service." (p. 43)

The Board declined to sustain the functionality claim, but it added that "our decision does not foreclose the extension of TrafFix to service marks if circumstances in a future case warrant such an extension."


Finally, regarding acquired distinctiveness, the Board noted that Applicant has the "ultimate burden of persuasion" and that, although the standard is a preponderance of evidence, the standard becomes more difficult to meet as the mark's descriptiveness increases. The Board observed that there was little evidence of "look for" advertising or actual promotion of applicant's logo, nor was the logo displayed consistently in promotional materials. The extent of distribution of the promotional items was uncertain, and the promotional expenditures were not" particularly substantial." In short, weighing all the record evidence and noting that the depiction proposed for registration is "highly descriptive," the Board did not find sufficient evidence to support the claim of acquired distinctiveness.

TTABlog comments: I did not find the Board's discussion of the "issue of first impression" very enlightening. The fact that Opposer did not discuss what test should be applied does not, it seems to me, excuse the Board's failure to do so.

The Board's finding that Duramax had standing to oppose and was not estopped from opposing, despite the terms of the settlement agreement, deserves some serious attention -- particularly the next time that one negotiates a settlement agreement.

Text Copyright John L. Welch 2006.

TTABlog Mid-August Leo Stoller Update: Hot Times in Leo-Land

I was in Chicago for part of my vacation this month, but I won't bore you with all my vacation photos. I did, however, have an opportunity to drive out to the leafy suburb of Oak Park, where I took a picture of Leo Stoller's Rentamark headquarters. At least this is the building at the address he used in his many TTAB extension requests.


7115 W. North Avenue, #272Oak Park, Illinois 60302
(Click on photo for larger picture)

It was hot in Chicago, but one church marquee put it all in perspective: "If you think this is hot, try Hell!" Things have been heating up for Leo Stoller, too, as discussed below.

CAFC Appeal from TTAB Sanction Order: Stoller's appeal from the PTO's July 14th Sanction Order (TTABlogged here) is still in limbo, while the court considers the issue of jurisdiction. On July 26th, the PTO turned down Stoller's request that it "suspend the imposition of any sanctions" pending a decision on his appeal to the CAFC. (PTO Order here). On that same day, the CAFC issued its Order raising the question of jurisdiction. See TTABlog posting here.

On August 2, the Director of the PTO requested that the CAFC revise its July 26th Order (motion here) to require Stoller to "go first" in explaining why the court has jurisdiction. On August 8th the CAFC declined to do so (Order here). However, the CAFC did extend the time for the PTO's response to August 23, 2006. Stoller's reply will be due ten days later.

In Stoller's "Response" to the PTO's motion for revision, he contends that he was improperly sanctioned for "filing an 'excessive amount' of extensions to oppose," even though there is no limit in the Rules as to the number of extension requests that may be filed. Therefore, he asserts, the Board's Sanction Order is "arbitrary and unconstitutional," and violates his rights to due process and equal protection.

"The standard for filing an extension to oppose is to investigate facts prior to filing a notice of opposition. Leo Stoller holds common law rights and/or has a federal trademark registration which is, in the opinion of Leo Stoller, likely to be confused with each and every mark that Leo Stoller filed an extension to oppose. Leo Stoller has met this standard." [TTABlog query: where in the record is the proof supporting Stoller's assertions regarding trademark ownership?].

Stoller claims that the sanctions "will lead to the total destruction of Leo Stoller's 34 year old trademark licensing business."

Last week, Stoller filed two Notices of Appeal (here and here), directed to 26 opposition proceedings dismissed by the Board pursuant to its July 14 Sanction Order. He seeks to consolidate those appeals with his own pending CAFC appeal (Appeal No. 2006-1534). [TTABlog query: At the CAFC, a corporate entity must be represented by counsel. Since Stoller is not an attorney, how can he represent his various corporate entities in their appeals from the TTAB dismissals?].

Everett McKinley Dirksen Federal Courthouse(Click on photo for larger picture)
Central Mfg. Co. v. Pure Fishing: You may recall that last November, the federal court in Chicago entered a default judgment on Pure Fishing's counterclaims in the Central Mfg. Co. v. Pure Fishing lawsuit. (TTABlogged here). That action was stayed when Stoller filed for bankruptcy in December 2005. [Pertinent documents may be found here]. However, on August 14th, the bankruptcy judge issued an Order modifying and vacating the stay so that Pure Fishing may "liquidate to judgment any claims against the Debtor and take all actions in connection therewith." Pure Fishing's counterclaims may be found here.


Google v. Stoller: On August 18th, Google Inc. turned up the heat on Mr. Stoller by filing a motion (here) with the Chicago bankruptcy court, seeking clearance to commence its own lawsuit against Stoller and his variously-named companies. The motion papers include a proposed 25-page Complaint (here) that sets forth claims for violation of the RICO Act (18 U.S.C. Sections 1962(c) and 1964(c)), the Lanham Act (Section 43(a)), and the law of unfair competition, all arising out of defendants' "scheme of falsely claiming trademark rights for the purpose of harassing and attempting to extort money out of legitimate commercial actors."

Chicago's Leo High School(No, not that Leo. Pope Leo I.)(Click on photo for larger picture)
Text and photographs Copyright John L. Welch 2006.

Citable No. 40: TTAB Finds "BALASHI" Not Primarily Geographically Descriptive of Beer

In its 40th citable decision of 2006, the Board reversed Section 2(e)(2) refusals to register the marks BALASHI BEER ["BEER" disclaimed] and BALASHI, finding the marks to be not primarily geographically descriptive of beer. In re Brouwerij Nacional Balashi NV, 80 USPQ2d 1820 (TTAB 2006).


The key issue was whether the place named "Balashi" is so obscure or remote that the ordinary American purchaser would fail to recognize the term as indicating the geographical source of the goods. The PTO argued that BALASHI is an area of Aruba that has "historical significance because of its importance in the gold industry," and currently is "home to the world's second largest desalination plant." Therefore, the Examining Attorney asserted, the term BALASHI "identifies a significant geographic location in Aruba." Moreover, she contended that Aruba is an important travel destination for American tourists, that Balashi is often mentioned in travel information about Aruba, and that Americans would know that Balashi is the source of the name for BALASHI beer.

Applicant urged that the geographical significance of BALASHI is minor, obscure, or remote: it is a small and commercially insignificant neighborhood in the district of Santa Cruz with no boundaries and no official status, no hotels, government offices, post offices, churches or schools, and only a single restaurant. Applicant submitted 14 maps which fail to show "Balashi" as a geographic place.

The Board found Applicant's evidence persuasive. Even though Applicant's beer comes from Balashi, a goods/place association cannot be presumed because Balashi is so remote and obscure. Therefore the PTO was required to present "evidence sufficient to establish that American consumers of beer would in fact make such an association." The PTO failed to do so.

As Judge Hohein summarized:

"... the average American beer consumer, after perhaps quaffing a few 'brews' while spending some time lying around on, or at least contemplating a vacation to, the white sand beaches of Aruba that serve as the island's principal tourist destinations, might have occasion to research and/or check out whatever other attractions, including gold mine ruins, a large desalination plant and applicant's brewery, would be of interest as a side trip to the locale of Balashi. The geographical significance, however, of the term 'Balashi' would not be apparent without, at a minimum, consulting sources of tourism information."

Therefore, the Board reversed the refusals to register.

Text Copyright John L. Welch 2006.

PTO Responds to INTA's Wikipedia Letter: No Blanket Prohibition on Collaborative Websites

On July 10, 2006, the TTABlog reported (here) on INTA's letter of June 23, 2006 to Commissioner for Trademarks Lynne G. Beresford, recommending that the PTO revise its policy regarding the citability of Internet evidence. (letter here). In particular, INTA requested that the PTO "establish an unambiguous policy that would prohibit the use and citation of Wikipedia and similar sites by Examining Attorneys." On August 7th, Commissioner Beresford responded (letter here).


The Commissioner states that the PTO will not prohibit the use and citation by examining attorneys of "websites that feature content submitted by members of the public rather than professionals with expertise in particular subject areas." Instead, it will be up to the TTAB to determine "what weight, if any, to bestow upon all of the evidence of record from whatever source it has been acquired." Commissioner Beresford remains "confident that the ultimate determination of registrability remains dependent upon the assessment of the nature and character of the totality of the evidence by the administrative trademark judges."

However, the Commissioner indicates that examining attorneys will receive training regarding the probative value of collaborative websites:

"The USPTO's Office of Trademark Quality Review and Training will give examining attorneys guidance and instruction about the probative value of collaborative websites with permissive edits. Such evidence must be considered in light of the nature of the mark, the identified goods and services, the existence of corroborating sources or the lack thereof."

TTABlog comment: I still think the PTO should just tell its Examining Attorneys not to rely on collaborative websites like Wikipedia. As the Commissioner's letter indicates, the Examining Attorneys will be told to consider whether there are other sources (presumably not other collaborative websites) that provide corroboration for this "suspect" evidence. But if corroboration is required, why even look at the collaborative website in the first place? In short, Commissioner, just say "no."

Text Copyright John L. Welch 2006.

TTAB Finds "DOE IN ESTRUS" Generic for ... Guess What?

Well, that was kind of a trick question because DOE IN ESTRUS is a generic adjective and not a generic noun. It's like ATTIC for automatic sprinklers. Hence, the Board found DOE IN ESTRUS to be generic for "buck lures and doe scents used in hunting," and it affirmed a refusal to register on the Supplemental Register. In re Wildlife Research Center, Inc., Serial No. 78444661 (July 20, 2006) [not citable].


The first three pages of the decision read very much like the NUTRITION BULLETIN decision TTABlogged yesterday. That's not surprising, since both decisions were penned by Judge Grendel.

Examining Attorney Martha L. Fromm submitted numerous NEXIS excerpts establishing that "doe estrus" is a type of buck lure and doe scent used by deer hunters. Internet web page printouts showed generic use of "doe in estrus" to refer to a type of lure or scent. And at several of the Internet pages, Applicant Wildlife shot itself in the hoof (so to speak) by using the term "doe in estrus" generically in connection with its products.

Wildlife retorted feebly, arguing that the PTO examples demonstrated use of the term as an adjective modifying a noun, such as "scent" or "product" or "lure." Therefore, Applicant reasoned, the term "cannot possibly be the name of the product."


The Board, however, concluded that the evidence "clearly establishes that 'doe in estrus' would be recognized by the purchasing public as referring to a type or category of buck lure and doe scent, and that it is therefore generic for applicant's goods." As to Wildlife's adjective argument, the Board was not impressed:

"As noted by Professor McCarthy, '[a] rule of thumb sometimes forwarded as distinguishing a generic name from a descriptive term is that generic names are nouns and descriptive terms are adjectives. However, this 'part of speech' test does not accurately describe the case law results'. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition Sec. 12:10 (4th ed. updated June 2006). See, e.g., In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718 (CCPA 1970)(CUSTOMIZED generic for gasoline); In re Helena Rubenstein, Inc., 410 F.2d 438, 161 USPQ 606 (CCPA 1969)(PASTEURIZED generic for face cream); and In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998)(ATTIC generic for automatic sprinklers for fire protection)."

The Board therefore affirmed the refusal to register.

Text Copyright John L. Welch 2006.

TTAB Citable No. 39: "NUTRITION BULLETIN" Generic for ... Guess What?

In its 39th citable decision of 2006, the TTAB affirmed a refusal to register NUTRITION BULLETIN on the Supplemental Register, for "providing information in the field of health and diet via a web site on the Internet," finding the term to be generic and therefore incapable of functioning as a service mark for the recited services. In re Rodale Inc., 80 USPQ2d 1696 (TTAB 2006).


Examining Attorney Mrs. A.D. Saunders relied on a page from Applicant Rodale's menshealth.com website, dictionary definitions of "nutrition" and "bulletin," NEXIS excerpts showing use of "nutrition bulletin," and Internet web pages showing use of "nutrition bulletin."

Applicant Rodale pointed out that it already owns Supplemental Registrations for WEIGHT-LOSS BULLETIN, SEX BULLETIN, and MUSCLE BULLETIN for magazine features and sections, for WEIGHT LOSS BULLETIN for electronic newsletters, and for MUSCLE BULLETIN for providing information in the field of fitness, exercise, and lifestyle. Most particularly, it noted its Supplemental Registration for NUTRITION BULLETIN for "magazine column and sections in the fields of health, fitness, diet, exercise, and lifestyle."

The Board first found (once again, without explanation) that the genus of services at issue is "commensurate with applicant's recitation of services." Turning to the relevant public's understanding of the term, the Board found that the submitted definitions of "nutrition" and "bulletin" directly apply to those services, but noting the following wrinkle as to the word "bulletin:"

"Although the dictionary definition does not specifically mention the Internet as a medium through which 'bulletins' may be disseminated, we see no reason to exclude it as such a medium; indeed the evidence of record ... shows that the Internet in fact is such a medium through which bulletins are disseminated."

Applying the CAFC's American Fertility test for the genericness of phrases, the Board recognized that a finding of genericness requires a showing that the subject phrase "as a whole" is generic (and not just the constituent words). It found that the PTO's evidence sufficed to establish that "NUTRITION BULLETIN, as a whole, is and would be understood by purchasers to refer to the genus of services at issue here."

Although the Board admitted that is was "troubled" by Rodale's previously-acquired Supplemental Registrations, it was nonetheless convinced by the "clear evidence of genericness" present in this case.

"Although consistency in examination is a goal of the Office, the decisions of previous Trademark Examining Attorneys are not binding on us, and we must decide each case based on the evidence presented in the record before us. In re Nett Designs Inc. 57 USPQ2d 164 (Fed. Cir. 2001)."

The Board therefore affirmed the refusal to register.

Text Copyright John L. Welch 2006.

TTABlog on Vacation: Back Next Week.

TTAB Citable No. 38: Board Affirms 2(a) Refusal of "MOHAWK" for Cigarettes

In its 38th citable decision of 2006, the Board affirmed a Section 2(a) refusal of the mark MOHAWK for cigarettes, finding that it falsely suggests a connection with the federally-recognized St. Regis Band of Mohawk Indians of New York. In re White, 80 USPQ2d 1654 (TTAB 2006).

The court applied its standard Section 2(a) test, requiring that the PTO prove: (1) that the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution; (2) the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution; (3) the person or institution named by the mark is not connected with the activities performed by applicant under the mark; and (4) the fame or reputation of the person or institution is such that, when the mark is used with the applicant's goods or services, a connection with the person or institution would be presumed.

Applicant Julie White argued that the word "Mohawk" is not a close approximation of the name of the St. Regis Band of Mohawk Indians, and that it does not refer uniquely or unmistakably to that Band (citing GOOGLE references to Mohawk Mountain, Mohawk College, Mohawk State Forest, and the like). She also claimed to be a Native American and a member of the St. Regis Band of Mohawk Indians of New York, and also an employee of a company that manufactures and sells cigarettes under a license granted by the St. Regis Band.

The Board found that dictionary definitions submitted by Examining Attorney M. Catherine Faint sufficiently established that MOHAWK is the same as or a close approximation of the St. Regis Band of Mohawk Indians of New York. "An applicant cannot take a significant element of the name of another and avoid a refusal by leaving one or more elements behind, provided that that which has been taken still would be unmistakably associated with the other person." In re White, 73 USPQ2d 1713, 1719 (TTAB 2004). [Same Applicant's mark APACHE for cigarettes deemed unregistrable under Section 2(a)].

As to other uses of the term MOHAWK, the Board observed that these uses (including place names and a U.S. Army aircraft) "appear to be named after the Mohawk tribe," and therefore these uses "do not detract from the association of the name 'Mohawk' with the Mohawk tribe." Third-party applications and registrations for marks containing the word MOHAWK were of "limited probative value" because they do not evidence that the marks are in use and that the public is familiar with them.

As to Applicant White's connection with the Mohawk tribe, the question was this:

"whether a commercial connection has been established between applicant and the Mohawk tribe in light of the facts that applicant is a member of the tribe, the tribe has issued a license and d/b/a certificate to applicant's employer, Native American Trading Associates, in connection with manufacturing tobacco products, and applicant has licensed use of her rights in the MOHAWK mark to Native American Trading Associates."

The Board ruled that "a specific commercial connection between applicant and the Mohawk tribe has not been proven." The license and the d/b/a certificate are not evidence "that the tribe endorses or is a sponsor of the cigarettes applicant intends to sell."

"... we note that the license is general in nature, and simply states that Native American Trading Associates has agreed to the rules and regulations regarding the manufacturing of tobacco products on the Mohawk tribe's reservation. The d/b/a certificate also is general in nature, and states that Native American Trading Associates has requested and been approved to operate a tobacco manufacturing business on the reservation. Neither of these documents, however, is a specific endorsement or sponsorship of Native American Trading Associates' activities, and in turn, the cigarettes applicant intends to sell. Thus, we find that these documents do not evidence a specific commercial connection between applicant and the Mohawk tribe."

Nor could the board imply a "specific commercial connection" because "there is no evidence of a long-standing mutual relationship between Native American Trading Associates and the tribe."

Finally, the Board found the evidence "more than sufficient to establish that the Mohawk tribe is well-known among residents in the [New York and Canada] region and visitors to the area. Moreover, "purchasers of cigarettes would be aware of Native American manufacturing and marketing of Native American brand cigarettes, and, given the fame of the name of the Mohawk tribe, would think uniquely of the Mohawk tribe when they see MOHAWK as a mark used on or in connection with cigarettes."

Therefore, the Board affirmed the refusal to register under Section 2(a).

Text Copyright John L. Welch 2006.

TTAB Reverses 2(d) Refusal of "ORPHAN & Design," Emasculates Cited "ORPHAN MEDICAL" Registrations

According the registered mark ORPHAN MEDICAL virtually no scope of protection, the Board reversed a Section 2(d) refusal of the mark ORPHAN & Design (shown immediately below) ["ORPHAN" disclaimed] for "pharmaceuticals for the treatment of rare diseases" (class 5) and for research and development of drugs (class 42), finding it not likely to cause confusion with the marks ORPHAN MEDICAL for mail order services for prescription drugs, and the mark ORPHAN MEDICAL & Design for "research and development of prescription and over the counter drugs for others" ["MEDICAL" disclaimed in both registrations, owned by the same entity.] In re Orphan Pharmaceuticals, U.S.A., Inc., Serial No. 76207867 (July 14, 2006) [not citable].

The Board first found that ORPHAN is a "clear 'term of art'" in the pharmaceutical industry [an "orphan drug" is one that treats a rare disease affecting fewer than 200,000 Americans], and it therefore ruled that ORPHAN MEDICAL & Design is a weak mark entitled only to a narrow scope of protection. The Board then concluded that "the marks are more dissimilar than similar." Moreover, the "sophisticated and knowledgeable purchasers are not likely to be confused as to the source of the respective Class 42 services [research and development] rendered by applicant and registrant." As to Applicant's goods, they would be marketed in different trade channels and to different classes of purchasers than Registrant's services (i.e., ordinary consumers and doctors versus pharmaceutical companies).


Turning to the ORPHAN MEDICAL registration, although Applicant's goods would be marketed to the same classes of purchasers as Registrant's mail order services, "the scope of protection to be afforded to the cited registered ORPHAN MEDICAL mark is simply too narrow to warrant a finding of likelihood of confusion with applicant's dissimilar ORPHAN and globe design mark." As to Applicant's services (research and development), they would be offered in different trade channels to different purchasers than Registrant's mail order services.

Thus by affording the cited registrations virtually no scope of protection, the TTAB was able to reverse this refusal to register.


TTABlog comment: How did the ORPHAN MEDICAL registrations get through in the first place? The Board, by eviscerating the registrations and allowing the ORPHAN & Design mark to register (with "ORPHAN" disclaimed), may have solved that problem. But isn't the Board's approach akin to an attack on a registered mark, which is supposed to take place only in the context of a cancellation proceeding?

Will the owner of the registrations bring an opposition? It appears that Orphan Medical, Inc. has merged into Jazz Pharmaceuticals, Inc., so maybe not.

Text Copyright John L. Welch 2006.

TTAB Finds Website Specimen Acceptable for "ENKLAVVOICE" Service Mark

In a dubious decision, the Board reversed the PTO's refusal to register the mark ENKLAVVOICE for the service of "providing a website which permits users to create, populate, authorize and manage databases of sales data and information," finding Applicant's specimen of use (a page from its website) to be acceptable. In re PrintCo., Inc., Serial No. 78155673 (July 14, 2006) [not citable]. [Website page here; excerpt set out immediately below].

The Examining Attorney maintained that the specimen displays the mark "in a list of features of 'an enterprise content management and cross-media publishing system' dubbed 'enklavTDW;'" that each of the "enklav"-prefixed terms merely identifies a feature of the system; that it is unclear whether Applicant is offering a product or a service; and that potential customers would have to contact Applicant or download a brochure in order to understand the service being offered.

Applicant, on the other hand, contended that the specimens "clearly indicate that a potential customer can contact applicant for a demonstration of the services;" that the specimen is an Internet advertisement; and that the specimen indicates that the services are available through a hosted, secure Internet portal. [Note: the decision sometimes refers to specimens (plural) and sometimes to specimen (singular), though there seems to be only one].

The Board stated the issue to be "whether the specimen of record creates a direct association between Applicant's ENKLAVVOICE mark and the services specified in the application."

"... Trademark Rule 2.56(b)(2) provides that '[a] service mark specimen must show the mark as actually used in the sale or advertising of the services.' When appropriate, the Board has been fairly flexible in accepting service mark specimens. See In re Ralph Mantia, Inc., 54 USPQ2d 1284 (TTAB 2000); and In re Metriplex Inc., 23 USPQ2d 1315 (TTAB 1992)."

The Board found that Applicant's specimens "are 'advertisements' because they show the requisite direct association between the mark and the activities described thereafter."

"A customer or potential customer viewing applicant's specimen would readily perceive the ENKLAVVOICE mark as identifying the source of applicant's website that allows users to engage the advertising and marketing services described therein. As a result, applicant's specimen creates a direct association between the ENKLAVVOICE mark and applicant's recited services."

Contrary to the PTO's contention, the Board concluded that the website "does not merely describe features of a larger system, but rather describes, inter alia, the recited services available by means of its website under the applied for mark."


TTABlog comment: I find this particular decision as unsatisfactory as In re Dell, and for the same reason: I am a believer in requiring trademarks and service marks to STAND OUT. [See the TTABlog discussion here.] This mark does not.

Text Copyright John L. Welch 2006.

TTAB Says B-GON to "EASYGONE" for Insecticides, Sustains 2(d) Opposition

The Board applied a dose of APPLICATION-B-GON in sustaining an opposition to registration of the mark EASYGONE for "herbicides and insecticides for agricultural and domestic use," finding the mark likely to cause confusion with the marks WEED-B-GON and BUG-B-GON, registered for products for controlling pests inside the home and outdoors. OMS Investments, Inc. v. Central Garden & Pet Co., Opposition No. 91156249 (July 10, 2006) [not citable].


Opposer claimed to own a family of "B-GON" marks, including WEED-B-GON, BUG-B-GON, BRUSH-B-GON, GRASS-B-GON, and ANT-B-GON, but the Board found Opposer's proofs inadequate. "[T]he record does not show that the B-GON marks were used and promoted together in such a manner as to create among purchasers an association of common ownership based upon the family characteristic, i.e., B-GON." It is not enough simply to use a series of similar marks.

Looking at Opposer's marks individually, the Board found "some evidence of fame" of the WEED-B-GON mark: use of the mark since the early 1990s and "sales and advertising figures comparable to sales and advertising figures in other cases where fame has been found." As for BUG-B-GON, Opposer proved use since 1983, but sales revenues did not match those for the WEED-B-GON product. They were sufficient, however, to establish that BUG-B-GON is a strong mark. As to the remaining marks, the record failed to show that they are famous "or even well-known."

Running through the other du Pont factors, the Board found the goods to be identical in part, and the channels of trade and the classes of purchasers to be the same. The record was devoid of evidence regarding the care with which the subject products are purchased, and so the Board considered this factor to be neutral.


As to the marks, the Board agreed with Opposer that they have "a similar cadence and do rhyme with one another." Furthermore, they are similar in connotation and commercial impression "in that they suggest that the lawn or garden problem facing the purchaser will terminate through the use of the parties' goods." In sum, "the overall similarities in sound, meaning and commercial impression" outweigh the differences in the marks.

In an effort to undermine the strength of Opposer's marks, Applicant submitted several third-party registrations for marks that include the formatives "BE GONE or B-GONE," but the Board found them of no probative value. For one thing, they concerned goods or services unrelated to Applicant's goods.

The lack of actual confusion, even though the goods of the parties have been sold in the same stores, was likewise not probative because "the record does not reflect how long both parties' goods have been sold concurrently at [the stores] and the extent of sale of EASYGONE goods."

Applicant offered the results of a mall intercept survey, but the Board deemed the survey "flawed in that the stimulus used is one not suited for Board proceedings where the issue is the registrability of the mark depicted in the drawing."

"Specifically, applicants showed respondents containers containing a variety of wording, shapes, colors and trade dress. Applicant's marks and Opposer's marks were not displayed prominently, other marks were on the containers, and the marks at issue here were subordinated to other house marks and source indicators, which undoubtedly influenced the responses."

Finally, Opposer's claim that applicant, as a former distributor of the B-GON products, had a "bad intent" when it chose the EASYGONE mark, but the Board was unpersuaded. Applicant retained naming companies, commissioned a T&T search that was reviewed by its attorneys, and hired a research firm to determine the impression the mark would have on potential customers.

Balancing all the factors, the Board found a likelihood of confusion between Applicant's mark EASYGONE and Opposer's WEED-B-GON and BUG-B-GON marks, particularly because of the strength of those two marks of Opposer. However, regarding the remaining three marks, "which have not been widely advertised and whose underlying goods have not had the commercial success applicant's' other marks have had," the Board found that Opposer had failed to establish a likelihood of confusion.

TTABlog Comment: The Board's treatment of the "family-of-marks" doctrine has been consistently irksome. (See TTABlog comment here). In this one, however, the Board seemingly made the right call. At a minimum, the marks in the supposed "family" should appear in the same advertisements, or perhaps be displayed side-by-side in retail stores. Opposer's testimony here was really feeble and failed to established even the slightest family tie.

Text Copyright John L. Welch 2006.

TTAB Posts Hearing Schedule for August

Well, actually I found the schedule at the website for the Board of Patent Appeals and Interferences (link here). The TTAB hearing schedule is in Excel format, which I always find rather user unfriendly. I hope the TTAB adopts a different format when it gets around to posting the schedule at its own website. [TTABlog update: a link to the same schedule now appears at the TTAB website.]


Anyhow, five TTAB hearings are scheduled for August:

August 9, 2006, 10AM: In re Boyd Gaming Corp., Serial No. 76591313. [2(d) refusal involving restaurant services and barbecue sauce, and the mark SMOKEY JOE'S].

August 17, 2006, 2PM: Vertex Pharmaceuticals, Inc. v. Nutrex Research, Inc., Opposition No. 91159280. [2(d) opposition: VERTEX for pharmaceuticals versus VITRIX for dietary supplements].

August 22, 2006, 2PM: L.& J.G. Stickley, Inc. v. Cosser, Cancellation No. 92040202. [A battle over ownership of the mark THE CRAFTSMAN ALS IK KAN & Design for furniture].

August 23, 2006, 2PM: Kohler Co. v. Baldwin Hardware Corp., Cancellation No. 92041434. [2(d) proceeding involving the mark DEVONSHIRE for plumbing and bath products and for metal door hardware].

August 24, 2006, 2PM: In re Aladdin's Eatery, Inc., Serial No. 76022292. [2(d) refusal of ALADDIN'S EATERY & Design for Middle Eastern restaurant services, in view of registrations for ALADDIN for hotel and restaurant services].

Of course, briefs and other papers may be found at TTABVUE.

TTAB Rejects Identification of Goods That Includes Another's Registered Trademark

The TTAB confirmed that an Applicant cannot include in its identification of goods a third-party's registered trademark. Applicant Great American's i.d. of goods for the mark MASTER CELL PROTECTOR included the registered trademark BIOFACTORS: "dietary supplement, namely, high potency anti-oxidant formula with collagen and elastin biofactors." The Board also affirmed a Section 2(b) refusal to register, finding the mark confusingly similar to the mark CELL PROTECTOR, registered for "food supplements in tablet, capsule, powder and liquid form." In re Great American Prods., Inc., Serial No. 76605638 (July 13, 2006) [not citable].


Great American argued that its identification of goods is acceptable because "there is no evidence that the public knows [BIOFACTORS] is a registered trademark," and because Applicant has "combined the meanings of "bio" and "factors" to make a generic term." The Board observed that Applicant's assertion that it "created" the word shows that BIOFACTORS is not a generic term. Furthermore, as a registered mark, BIOFACTORS is entitled to "all the presumptions provided by Section 7(b) of the Trademark Act," and cannot be attacked in this fashion: "... as long as BIOFACTORS is registered, applicant may not use it as a generic term in its identification. See Section 1402.09 of the Trademark Manual of Examining Procedure (4th ed., rev. April 2005)."

1402.09 Use of Marks Inappropriate in Identifications

If a trademark or a service mark that is registered to an entity other than the applicant is used in the identification of goods or services, the examining attorney should require that it be deleted and that generic wording be substituted. It is inappropriate to use a registered mark to identify a kind of product or a service, because such a mark indicates origin in only one party and cannot be used to define goods that originate in a party other than the registrant. Camloc Fastener Corp. v. Grant, 119 USPQ 264 (TTAB 1958). In place of the mark, a generic term must be used.

As to the Section 2(d) refusal to register, Great American argued that a dietary supplement is not a food supplement. The Board, however, found them to be "so closely related that they are virtually identical, and certainly extremely closely related." "Both products have the same purpose -- to supplement deficiencies in the diet," and the channels of trade are the same. Moreover, third-party registrations confirmed that these products may emanate from a single source and be sold under a single mark.


Turning to the marks, the board noted once again that when the involved goods are virtually identical, "the degree of similarity necessary to support a conclusion of likely confusion declines." In any case, here the marks are "virtually the same" and the addition of the word MASTER "does not serve to distinguish the marks."

Finally, Applicant seemed to assert that consumers of these products are careful in their purchasing. However, the Board observed that these products are rather inexpensive and may be recommended by word-of-mouth: "In such circumstances a consumer, who has been told of a food supplement called CELL PROTECTOR, and later sees MASTER CELL PROTECTOR dietary supplement on a store shelf, may believe that this is the product that had been recommended to him." "Under actual marketing conditions, consumers do not necessarily have the luxury of making side-by-side comparisons between marks, and must rely upon their imperfect recollections."

Consequently, the Board affirmed the Section 2(d) refusal.

TTABlog comment: On a regular basis, I check the PTO database for applications that include a certain client's famous trademark in their identifications of goods. It's easy to do with TESS. Let's say the mark is XYZ owned by ABC Corporation. Using the "Structured Form Search," I put "XYZ" in the first box, select ALL for the second box, select the connector "NOT," put "ABC" in the third box, and select "Owner Name" for the fourth box. When the results page appears, type "and live" in the "Refine Search" box at the top, hit return, and you then will get a list of applications and registrations owned by others, that include the mark XYZ in their identification of goods (or in their "descriptions of the mark," or as part of the marks themselves). [E.g., try IPOD-ALL-NOT-APPLE-Owner Name].

When an offending application appears, we call the Examining Attorney (as soon as one is assigned), point to TMEP Section 1402.09, and ask that the PTO require appropriate amendment. That has worked every time.

As to registrations that have already issued, we have been able persuade the few registrants to amend the registrations to substitute a generic term in place of the trademark.

Text Copyright John L. Welch 2006.