Friday, September 29, 2006

TTABlog Quarterly Index: July - September 2006

Well, that was a pretty interesting quarter, don't you think? Our favorite content-provider, Leo Stoller, received a big fat sanction from the TTAB, the Board issued 11 citable decisions, the Trademark Dilution Revision Act made it through Congress, and the PTO strategic plan came out, calling for 60-80 precedential decisions per year. Next quarter will bring the second anniversary of the TTABlog (November 9th), possibly the TTAB Rule changes in final form, the signing of the new dilution bill, and undoubtedly several Leo Stoller-related developments. I can hardly wait.

Two-foot pizza

Section 2(a) - false connection

Section 2(a) - immoral or scandalous

Section 2(d) - likelihood of confusion

Section 2(e)(1) - mere descriptiveness:

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


Bloggsie

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

Section 2(e)(5) - functionality:

Fraud:

Genericness:

Concurrent Use:

Phantom Mark:

Procedural Issues:

Prosecution Issues:

Drawings/Specimens of Use:

Proposed TTAB Rule Changes:

Deanna

CAFC decisions:

Leo Stoller:

Recommended Reading:

Other:

Text and photographs ©John L. Welch 2006.

posted by John L. Welch @ 9/29/2006   0 comments

Thursday, September 28, 2006

Double Meaning of "CINCH" for Snowboard Bindings Leads to TTAB Reversal of 2(e)(1) Refusal

Applicant K-2 Corporation overcame a mere descriptiveness refusal of the mark CINCH for snowboard bindings by arguing that the word has another connotation: easy to use. The Board therefore reversed the PTO's Section 2(e)(1) refusal. In re K-2 Corp., Serial Number 78364151 (September 7, 2006) [not citable].

The PTO made out a prima facie case of mere descriptiveness by submitting dictionary definitions of "cinch" as "a tight grip," and Internet pages that refer to "cinching" in order to tighten bindings. In addition, a depiction of K-2's product showed a binding with two straps that may be tightened. Thus "cinch" describes a feature of K-2's goods: "that tightening is required of the binding straps."

However, the evidence also showed that there are "multiple definitions" of "cinch," one of which is "something easily done." One website emphasized "the speed with which one may get into and out of applicant's snowboard binding." And so "easy to use" is a "connotation that consumers would likely attribute to applicant's mark."

The Board observed that there was no evidence beyond the dictionary definitions "to support any suggestion that this 'easy to use' connotation is merely descriptive." Nor did the PTO so contend.

"Inasmuch as both the 'tightening' and 'easy to use' connotations are connotations that purchasers may attribute to the mark, and because the record does not suggest that the 'easy to use' connotation immediately describes a feature, function, characteristic or purpose of applicant's goods, we have doubts as to whether applicant's mark is merely descriptive."

The Board resolved its doubts, as it must, in Applicant's favor, and reversed the refusal.

TTABlog comment: I agree that "cinch" has a double meaning (though there seemed to be no evidence that Applicant made use of that double meaning in its advertising). However, the second meaning that the Board accords to "cinch" -- easy to open -- seems rather descriptive when you put it that way. Better to say the second meaning is "it's a cinch to open," which sounds a little less descriptive and more imaginative. Or maybe I'm picking at nits.

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 9/28/2006   0 comments

Wednesday, September 27, 2006

Citable No. 45: TTAB Reverses 2(d) Refusal of Product Configuration Mark

The Board's 45th citable decision of 2006 involves a relatively rare Section 2(d) refusal of a product configuration mark. Applicant Homeland Vinyl sought to register on the Supplemental Register the product design shown immediately below as a trademark for "non-metal fence rails." The PTO refused registration on the ground of likelihood of confusion with another product design mark (shown next below) for the same goods. The Board reversed the refusal. In re Homeland Vinyl Prods. Inc., 81 USPQ2d 1378 (TTAB 2006).

Applicant's mark

Applicant's mark consists of "the configuration of a fence rail." The cited mark comprises not the entire fence rail, but "a configuration of the bottom portion of a fence rail bearing the exterior rounded shoulders and the recessed edges." Both fence rails include a longitudinal, recessed channel used to hold vertical bars, panels, or pickets. Each could be used as a top or a bottom rail, depending on the orientation.

The cited mark

Because the goods are identical, the Board assumed that they travel in the same channels of trade to the same classes of customers. Because fence rails "are not impulse purchases," the Board expected that purchasers would exercise "a relatively high degree of care in their purchasing decisions."

Turning to the marks, the Examining Attorney contended that, although registrant's mark was limited to a particular feature of the rail, consumers will view the goods in their entirety and will not be aware that registrant claims only a specific feature as a source indicator -- likening the situation to a word mark that contains disclaimed matter. He further maintained that, even focusing on the corresponding portions of the rails, the contours are "quite similar."

Applicant, of course, argued that the cited mark is limited to the rounded shoulders and recessed edges near the channel opening, whereas its own mark has a "linear diagonal line" and does not include a curved shoulder, nor any recesses. It also asserted that the fence rail field is crowded with designs, and that the cited design is therefore entitled to a narrow scope of protection.


The Board wisely observed that the marks are "not capable of being spoken" and therefore must be compared visually. But, the Board asked, "what is the 'entirety' of registrant's mark?" It rejected the Examining Attorney's disclaimer analogy, noting that for a word mark "such matter actually forms a part of the mark." The broken line portion of the cited mark, however, is not part of the mark -- indeed, it is expressly excluded from the mark. The Board therefore considered "only the flourish as registrant's mark, as it is shown in the registration, and [not] the overall product shape on which the mark might be used."

Under that approach, the Board found that "the visual differences in the marks are more significant than the similarities:"

"The overall impression of registrant's mark is soft, curved and rounded, and the overall impression of applicant's flourish is severe, angular and linear. Based on the total effect of the respective marks, rather than their individual features, we find that the difference in the marks are sufficient to distinguish them."

Finally, the Board noted that the registered mark is entitled to a narrow scope of protection in light of various design and utility patents in evidence that suggest that such ornamental designs on fence rails are "nor particularly unique or unusual," and therefore that purchasers "would be accustomed to making distinctions based on more subtle differences in the marks."

In light of this narrow scope of protection, the relative sophistication of purchasers, and the differences in the marks, the Board reversed the refusal to register.

TTABlog comment: I think the Board should have left out the part about the weakness of the registered mark. There was no evidence that the patented designs were on the market, and therefore no evidence that purchasers were "accustomed" to making distinctions based on more subtle differences. Clearly the marks were dissimilar, and there was no real need to add this point about the patent evidence.

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 9/27/2006   0 comments

Tuesday, September 26, 2006

Trademark Dilution Revision Act of 2006 Goes to President for Signature

Yesterday, the U.S. House of Representatives agreed to the Senate Amendment to H.R. 683, and the Trademark Dilution Revision Act of 2006 will now proceed to the President for signature. The approved Senate version may be found here.


Among other changes to current law, the Act establishes a "likelihood of dilution" standard for a dilution claim, and provides for relief from both dilution by blurring and dilution by tarnishment.

The TTAB has never decided which standard -- actual dilution or likelihood of dilution -- applies when a challenged and allegedly diluting mark has already been put into use. [In intent-to-use cases, it applied a likelihood of dilution standard. See "The TTAB in 2004: What Was Hot, What Was Not," at Section IIA.] The new Act resolves that issue by specifically providing that a likelihood of dilution standard applies in TTAB proceedings.

Text Copyright John L. Welch 2006

posted by John L. Welch @ 9/26/2006   0 comments

Third Annual BPLA "Trademark Year in Review" is One Month Away

Mark your calendars! One month from today, the Trademarks and Unfair Competition Committee of the Boston Patent Law Association (BPLA) will present its third annual review of trademark law, entitled "Trademark Year in Review: 2006." The seminar will be held on Thursday, October 26th, from 7:30 AM to 10:45 AM at the Langham Hotel in Boston's Post Office Square. (download brochure here).


Co-chairs Cynthia Johnson Walden and John L. Welch (a/k/a the TTABlogger) have put together a stellar lineup of trademark law experts, led by former TTAB Administrative Trademark Judge Beth Chapman:
  • John DuPré of Hamilton, Brook, Smith & Reynolds, PC, will review noteworthy 2006 federal trademark cases outside the First Circuit.

  • Larry Robins of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, will survey recent trademark decisions from the First Circuit, including its district courts.

  • Beth Chapman of Oblon, Spivak, McClelland, Maier & Neustadt PC will review the year's important TTAB developments, both decisional and procedural.

  • Julia Huston of Bromberg & Sunstein LLP will discuss new federal and state legislation and will provide her comments on the proposed TTAB Rule changes.

Langham Hotel

Registration and continental breakfast will begin at 7:30 AM, with the first presentation commencing at 8:00 AM.
.

posted by John L. Welch @ 9/26/2006   0 comments

Monday, September 25, 2006

TTAB Sustains 2(d) "HALTIX & Design" Opposition, But Puts the Brakes on Fraud Claim

Pro se Applicant Adam Zikry lost a 2(d) opposition to registration of his mark HALTIX & Design (shown immediately below) for automotive brake pads, but the Board did give him a "brake" on the fraud issue. The Board found the mark likely to cause confusion with the registered marks HALDEX and HALDEX EB+ for automatic brake adjusting equipment, vehicle brake parts, and other brake-related goods. Haldex Brake Corp. v. Zikry, Opposition No. 91160715 (September 5, 2006) [not citable].


Applicant Zikry did not submit evidence or file a brief. Opposer Haldex relied on it registrations and on Zikry's discovery deposition testimony and his responses to interrogatories.

Starting with the HALDEX registration, the Board found the marks HALTIX & Design and HALDEX to be "somewhat alike in overall appearance with no discernible difference in connotation." Also, they are "nearly identical in sound and commercial impression." Therefore, the first du Pont factor favored Opposer.

As to the goods, the Board read Applicant's identification of goods to include sales to original equipment manufacturers of automobiles (despite the indication at his website that he sold to the aftermarket), but not to include brake parts for use on large land vehicles. The goods in the HALDEX registration related to air braking systems, which are used on large trucks and buses. The Board was not sure that the involved goods move in the same channels of trade, but it nonetheless found an overlap in customers:

"The population most susceptible to confusion would be fleet owners and mechanics for commercial buses, trucks and trailers, who might well also service their own personal automobiles. Hence, all of Haldex Brake's customers are prospective consumers of applicant's goods."


Turning to the HALDEX EB+ registration, its "brake disks, brake shoes, brake cylinders, friction pads" were not limited as to type of vehicle, and they presumably could be "substantially identical to applicant's named goods and might move in the same, or very similar, channels of trade, where they would be available to all potential customers.

The marks HALTIX & Design and HALDEX EB+, according to the Board, convey a similar commercial impression and, when compared in their entireties, are confusingly similar.

The Board therefore sustained the opposition on the Section 2(d) ground.

With regard to Opposers' fraud claim -- based on the false statement in Zikry's application that he had used his mark in commerce -- the Board showed some leniency toward this Applicant. It recognized that Zikry "has tried repeatedly to break into the U.S. market," but substantially all the goods he has sold to date have been shipped directly from China to his cousins' business in Cairo, Egypt.

"... while it appears as if this pro se applicant has not been met with a great deal of success in marketing his brake pads in the USA, given his active attempts to create a market here, including his supplying prototypes to parts retailers in locations such as Tampa, Florida, and Washington, DC, his ongoing presence on the Internet, and his meaningful volume of sales in international commerce, we find that applicant may well have been unaware of the technical requirements for an allegation of 'use in commerce' under the Lanham Act, and that accordingly, opposers have failed to meet their burden of proving by clear and convincing evidence that applicant has made a false representation of a material fact with knowledge of the falsity of the statement."

TTABlog comment: For a refresher course on fraud, see the TTAB Fraud Collection. This case seems most like the citable Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., 78 USPQ2d 1899 (TTAB 2006), in which the Board rejected Petitioner's fraud claim. Petitioner contended that Respondent had committed fraud by falsely claiming use of its mark MAID TO ORDER in interstate commerce. But the Board concluded that Petitioner failed to meet its "“heavy burden" to prove fraud: "“It was not unreasonable for Ms. Kern, as a layperson, to believe that [Respondent'’s] activities constituted use of the MAID TO ORDER mark in interstate commerce. *** This belief is sufficient to negate an inference of fraud upon the USPTO in obtaining and maintaining the registration."” [In other words, the question of whether the mark was used in interstate commerce leaves room for error; the question of whether a mark has been used at all, however, is black-and-white.]

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 9/25/2006   0 comments

Friday, September 22, 2006

Third Circuit Affirms Collateral Estoppel Dismissal Based On TTAB 2(d) Ruling

The U.S. Court of Appeals for the Third Circuit recently affirmed the dismissal of a trademark infringement action, ruling that the district court correctly applied collateral estoppel (issue preclusion) regarding the TTAB's decision on the issue of likelihood of confusion. Jean Alexander Cosmetics, Inc. v. L'Oreal USA, Inc., Appeal No. 05-4321 (3rd Cir. August 14, 2006). The TTAB's conclusion was one of two independently sufficient grounds on which the Board decided the case (the other being priority of use), and the appellate court held that it was proper to apply issue preclusion based upon an independently sufficient alternative finding.

Jean Alexander, owner of the registered EQ SYSTEMS logo mark shown above for hair care preparations, was the prevailing party in the TTAB cancellation proceeding (decision here). L'Oreal's predecessor-in-interest, Cosmair, had petitioned to cancel the registration based on alleged prior use of the mark SHADES EQ & design for hair care products. In order to prevail, however, Cosmair had to prove priority of use, and it could do so only by tacking together the uses of two different marks (shown below, the earlier mark being on the left).


The Board ruled that the differences between the two Cosmair marks were too substantial to allow tacking, and therefore that Cosmair had failed to prove priority. Alternatively, however, the Board found that even if Cosmair did have priority, there was no likelihood of confusion between the SHADES EQ mark(s) and the EQ SYSTEM mark.

Jean Alexander then filed a trademark infringement complaint against L'Oreal, alleging trademark infringement, and specifically averring likelihood of confusion. The district court dismissed the complaint, holding that collateral estoppel prevented Jean Alexander from re-litigating the issue of likelihood of confusion.

Before the court of appeals, Jean Alexander argued that "it would be unfair to apply issue preclusion here because [it] was the prevailing party in the cancellation proceedings and was therefore unable to appeal the TTAB's favorable finding on likelihood of confusion." The court disagreed, noting that under various precedents Jean Alexander could have appealed the Board's likelihood of confusion finding, even as the prevailing party.

TTABlog comment: An issue that usually arises in these TTAB/court collateral estoppel cases is whether the issue of likelihood of confusion as considered by the Board is really the same as that considered by the court. See, for example, last year's Mayer/Berkshire case, in which the CAFC found that the questions of likelihood of confusion before the TTAB and the court "presented sufficiently different issues and transactional facts to bar the application of preclusion." (TTABlogged here). That distinction did not seem to arise in this case.

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 9/22/2006   0 comments

Thursday, September 21, 2006

TTAB Finds "GRAVEL SHOOTER" Merely Descriptive of Aggregate-Dispensing Conveyors

Having watched former-Celtic Antoine Walker play basketball, I know what it means to "shoot a brick." But "gravel shooter" is a new one on me. Novelty of a term, however, does not avoid mere descriptiveness, as Applicant learned in In re Gravel Conveyors, Inc., Serial No. 78363393 (August 14, 2006) [not citable]. The Board affirmed a Section 2(e)(1) refusal of the mark GRAVEL SHOOTER for "mobile hydraulic conveyors for dispensing aggregate and particulate materials at a job site."


Examining Attorney Shaunia P. Wallace Carlyle maintained that "gravel" is one of the materials "thrown from applicant's goods," and that dictionary definitions support the conclusion that the term "shoot" may be used to describe "how this aggregate is discharged."

Applicant Gravity Conveyors, Inc. countered by urging that "while one may shoot a gun, the concept of a conveyor 'shooting' gravel is incongruous." It contended that the proper term is "throw," not "shoot."

The Examining Attorney shot back by arguing that the gravel is "thrown in a long arc" ... "similar to how a basketball is 'shot' by a player into a basket." [Or, in Antoine's case, not into a basket].


The Board agreed with the PTO: "If applicant's conveyors for dispensing aggregate and particulate materials can throw gravel, given [the PTO's] dictionary entries, these conveyors can 'shoot' as well." The fact that Applicant may be the first and only user of the term "Gravel Shooter" in connection with mobile conveyors for throwing gravel does not overcome the 2(e)(1) refusal.

Therefore, the Board affirmed the refusal.

TTABlog dissent: One throws a baseball, but shoots a basketball. One throws a football, but shoots a hockey puck. What's the difference? For basketball and hockey, there is a fixed target or goal in which one is trying to deposit an object. In baseball and football there is no fixed target.

As to the gravel game, there is no fixed target or goal, and so one throws gravel. One does not shoot gravel. GRAVEL SHOOTER is therefore an incongruous combination that should be registrable.

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 9/21/2006   0 comments

Wednesday, September 20, 2006

No Joy in Mudville: TTAB Affirms "GOLDEN GLOVE" 2(d) Refusal

PTO Examining Attorney Katherine Stoides hurled a shutout in a one-sided TTAB affair that saw the Board affirm a Section 2(d) refusal to register the mark GOLDEN GLOVE for "baseball gloves for Little League baseball players." The Board not surprisingly found the mark likely to cause confusion with the registered mark GOLD GLOVE for "baseball gloves and mitts." Just for good measure, the Board also affirmed a requirement that Applicant disclaim the word GLOVE. In re Millersport, Inc., Serial No. 76590093 (August 28, 2006) [not citable].


Applicant contended that a disclaimer was not necessary because GOLDEN GLOVE is a "unitary two-word sequence" of an adjective and a noun, and because use of "glove" in the singular is and "incongruity" for goods consisting of gloves (plural). The Board disagreed: it saw nothing incongruous about the combination, and found no reason to consider the terms GOLDEN and GLOVE inseparable. [TTABLog query: Should Applicant have argued that "Golden Glove" evokes the amateur boxing competition and therefore would be perceived as a unitary term? Or is that mixing apples with oranges?]

Turning to the 2(d) refusal, the Board readily found the marks to be substantially similar. As to the goods, Applicant hopelessly argued that the goods are different because Registrant Rawlings' gloves are sold to adults, whereas Applicant's gloves are sold to Little Leaguers. Of course, that Board shot down that argument, pointing out for the millionth time that its 2(d) determination is based on the goods as identified in the Registration rather than "what the evidence shows the goods or services actually are." Here, Registrant's goods are not limited to "adult" gloves.

Without working up a sweat, the Board affirmed the refusal to register and the disclaimer requirement.

TTABlog comment: One wonders whether this Applicant really thought it had a snowball's chance in Tampa Bay of overturning this refusal. Applicant's initial brief barely reached four pages, and its reply comprised two pages. I suppose the appeal didn't cost much, but even so, was it worth it?

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 9/20/2006   0 comments

Tuesday, September 19, 2006

TTAB Waters Down Registered "PERFECT CUP" Mark, Reverses 2(d) Refusal

The fact that the term "Perfect Cup" is a commonly-used phrase for coffee led the Board to reverse a Section 2(d) refusal to register the mark THE ART OF THE PERFECT CUP for electric coffee makers, coffee, tea, and chocolate. It found the mark not likely to cause confusion with the registered mark PERFECT CUP for ground coffee, instant cappuccino, and cocoa mix. In re Kraft Foods Schweiz Holding AG, Serial No. 78288562 (September 6, 2006) [not citable].


Applicant Kraft Foods Schweiz did not dispute that the goods are in part identical and otherwise related. But it did contend that the differences in the marks were sufficient to distinguish them and avoid confusion.

Applicant submitted a "substantial amount of evidence showing that 'perfect cup' is a commonly used phrase to refer to good-tasting coffee," including a listing of titles of various website articles, along with the title of one book (shown below).


The Board concluded that PERFECT CUP is a "well-recognized term that indicates that coffee tastes good." The Board observed that it could not treat the cited mark as laudatorily descriptive, "since the registration is entitled to the presumptions of Section 7(b) of the Trademark Act." However, "we can say that it is a highly suggestive term, and therefore that the registration is entitled to only a very limited scope of protection."

Turning to a comparison of the marks, the Board noted that, in view of the highly suggestive nature of "perfect cup," "consumers are not likely to believe that the marks identify a single source for the goods simply because they both contain this term." The Board agreed with Applicant that "the additional wording in its mark is sufficient to distinguish its mark from the cited mark."

Therefore, the Board reversed the refusal to register.

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 9/19/2006   0 comments

Monday, September 18, 2006

Finding "BAG" Merely Descriptive of Cloth Plant Holders, TTAB Affirms Disclaimer Requirement

In one of the shorter decisions of 2006, the Board affirmed a requirement that Applicant disclaim the word BAG in its mark GARDEN BAG for "flower and plant holders made of cloth." In re Belle Garden LLC, Serial No. 78411088 (August 28, 2006) [not citable].


Applicant Belle Garden argued that its products are "planters," not "bags." The Board explored the record to see "if applicant's plant holder made of cloth looks like a bag, functions as a bag, and is referred to as a bag by applicant."

The Board first noted that Applicant, at its website [see above], "has pluralized its mark in a way that [ac]centuates the highly descriptive nature" of the term "bags." Moreover, in its specimen of use Applicant employed the word "bag" twice to describe its planter. [see below].


That was enough for the Board. As Judge Bucher incisively reasoned:

"So, just as it has often been said that, if it walks like a duck and quacks like a duck, it is a duck -- it is likewise the case with applicant's planter that inasmuch as it looks like a bag and is referred to even by applicant as a bag, consumers would immediately perceive the product as a bag."

Accordingly, the Board affirmed the disclaimer requirement. However, pursuant to Rule 2.142(g), Applicant was allowed thirty days to submit a disclaimer of BAG, upon which submission the mark would be passed to publication.

TTABlog comment: I get hung up on this question: shouldn't the PTO have refused registration of GARDEN BAG on mere descriptiveness grounds?

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 9/18/2006   0 comments

Friday, September 15, 2006

Citable No. 44: TTAB Dismisses "DYKES ON BIKES" Opposition for Lack of Standing

In its 44th citable decision of 2006, the Board dismissed the opposition of Michael J. McDermott to registration of the mark DYKES ON BIKES for education and entertainment services for women motorcyclists, ruling that McDermott lacked the requisite standing to bring the opposition. McDermott v. San Francisco Women's Motorcycle Contingent, 81 USPQ2d 1212 (TTAB 2006).


McDermott contended that he set forth proper claims under Section 2(a), namely that DYKE is disparaging to men and is scandalous or immoral. As to standing, Opposer maintained that he satisfied the broad standard of Ritchie v. Simpson, 50 USPQ2d 1023 (Fed. Cir. 1999).

The Board, however, disagreed. It observed that, based on opposer's responsive brief, McDermott "intended to assert in his pleading both that applicant's mark is disparaging and that it is comprised of scandalous and immoral matter under Section 2(a)." However, "the Board cannot discern any properly pleaded claim" in his notice of opposition.

Nevertheless, since opposer sought to challenge the subject mark under Section 2(a), the Board proceeded to analyze the standing issue in light of the seminal Ritchie case.

According to Ritchie, an opposer must satisfy two judicially-created requirements in order to have standing to oppose: (1) he must have a "real interest" in the proceedings; and (2) he must have a "reasonable basis for his belief of damage."

The Ritchie court interpreted the "real interest" requirement to mean that opposer must plead "a direct and personal stake in the outcome of the opposition." The Board found that McDermott met that first standing requirement.

However, McDermott failed to meet the second requirement because he did not allege sufficient facts which, if proven, would show that he has a "reasonable" basis for his belief of damage. An opposer may meet that requirement in one of two ways. First, he may show that he "possesses a trait or characteristic that is 'clearly and directly implicated by the proposed trademark.'" McDermott, however, failed to allege that he possesses such a trait or characteristic -- "that is, that he is a 'lesbian' or 'dyke.'" Instead, McDermott pleaded that he is a male, and therefore his claim that the mark is offensive is on its face only subjective to him.

Alternatively, an opposer may demonstrate "reasonableness" by demonstrating that others share the same belief of harm from the proposed trademark. McDermott again failed to pass the test: 'he failed to allege any facts that others (i.e. men) share his belief of damage." Although McDermott alleged that he is personally offended by the "illegal behavior" and "illegal acts" purportedly committed by Applicants and by the USPTO's supposed endorsement of Applicant's activities by approving the mark for publication," he made no "objective allegations" regarding the reasonableness of his belief of damage.

McDermott's allegations regarding Applicant's conduct directed at men during its parades were not within the Board's jurisdiction. And his allegations that the USPTO, in approving the mark for publication, gave its stamp of approval to applicant's services was flatly wrong. See In re Old Glory Condom Corp., 26 USPQ2d 1216 (TTAB 1993) [note 3].

Therefore, because Opposer McDermott failed to plead a proper Section 2(a) claim and because he failed to establish the requisite standing to oppose, the Board dismissed the opposition.

TTABlog note: See other pertinent TTABlog postings here, here, here and here.]

You will recall that in Ritchie, the CAFC ruled that Ritchie had standing to oppose certain trademark applications filed by O.J. Simpson for the marks O.J. SIMPSON, O.J., and THE JUICE, based on Ritchie's allegation that registration of the marks "that allegedly are synonymous with wife-beater and wife-murderer" would disparage Ritchie's "alleged belief in a loving and nurturing relationship between husband and wife."

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 9/15/2006   0 comments

Thursday, September 14, 2006

Customer Sophistication Leads to TTAB Reversal of 2(d) "NEXGEN" Refusal

The sophistication of the customers for Applicant's services -- namely, the purchasing, train transportation and delivery, storage, and processing of coal -- was the decisive factor in the Board's reversal of a Section 2(d) refusal of the mark NEXGEN in block-letter and design form. The Board found the mark not likely to cause confusion with the registered marks NEXGEN for the generation and transmission of electricity, and NEXGEN FUELING for gas and liquefied gas services ["FUELING" disclaimed]. In re NexGen Resources Corp., Serial Nos. 76334331 and 76334334 (August 10, 2006) [not citable].


Applicant NexGen Resources got off to a wobbly start when it argued that there could be no likelihood of confusion because it already owns a "family" of NEXGEN registered marks for assorted mining services and equipment. However, it failed to show any promotion of the marks in such a way as to create a family of marks, and in any case, even if it did establish such a family, that would not "aid or otherwise entitle applicant to the registrations which it seeks." The Board must consider the likelihood of confusion between the applied-for marks and the cited marks, regardless of what other registrations Applicant owns.

Applicant got back on track, however, with three detailed declarations that convinced the Board that "the respective services typically will not be encountered by the same classes of purchasers under circumstances conducive to a likelihood of confusion." The services at issue "are specifically different and are often purchased exclusively by sophisticated and highly discriminating consumers."


Moreover, there was nothing in the record showing that "particular individuals who would be responsible for purchasing applicant's coal procurement services for power plants and other large, specialized industrial entities would also be the same group of buyers who would select and purchase services involving the generation, transmission, distribution and supply of electricity for those firms."

Consequently, the Board reversed the refusals to register.

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 9/14/2006   0 comments

Wednesday, September 13, 2006

TTAB Reverses Two Mutilation Refusals, Finding Marks Match Specimens

The issue of "mutilation" may arise when the mark as depicted in a trademark specimen does not match the mark depicted in the application drawing. The drawing must be a "substantially exact representation" of the mark as used. Rule 2.51(b). When "essential and integral subject matter" is missing from the drawing, the mark may not be registered. TMEP Section 807.12(d). Two applicants recently overcame "mutilation" refusals by convincing the Board that the mark shown on the application drawing made a "separate and distinct commercial impression" apart from the other material appearing on the specimen of use.


In In re Jordan Outdoor Enterprises, Ltd., Serial No. 78298898 (August 9, 2006) [not citable], the Applicant sought to register the phrase REALTREE HARDWOODS GREEN HD for "cotton, wool, or synthetic fabrics having camouflage patterns." The specimen of use (shown above) displayed those terms, along with the terms BILL JORDAN'S and HIGH DEFINITION in a much smaller font.

The Board noted that, as Professor McCarthy put it, the issue "all boils down to a judgment as to whether that designation for which registration is sought comprises a separate and distinct 'trademark' in and of itself." It viewed BILL JORDAN'S and HIGH DEFINITION as "visually insignificant parts of the composite mark such that their removal does not disturb any aspect of the mark's visual continuity."

The Board was not persuaded that the appearance of the wording HD "in a different design carrier" from REALTREE HARDWOODS GREEN destroys the continuity of the mark. The yellow triangle overlaps the black and red oval, and the HD "is on the same plane, and immediately follows, the wording HARDWOODS GREEN. "As such, the two carriers are united so that the mark REALTREE HARDWOODS GREEN HD, appears in the specimen in a manner that agrees with the mark as depicted in the drawing."

In In re ITT Industries, Inc., Serial No. 78456701 (August 17, 2006) [not citable], the Applicant sought to register the logo mark shown immediately below for certain computer software.


The Examining Attorney contended that the mark on the specimen of use (shown immediately below) is "clearly unitary" and "materially differs from the drawing mark." Missing from the drawing are the words ITT Industries, AES Division, SEMI-AUTONOMOUS, and CONTROL SYSTEM that appear in the shaded border that surrounds a "topographical map design."


The Board found the map design to resemble "random lines" that did not create much of a visual impression. The names ITT Industries and AES Division are equivalent to house marks or trade names, the omission of which would not normally result in mutilation of a mark. Moreover, these terms are in smaller type against a less distinctive background, and are visually much less significant. The words SEMI-AUTONOMOUS CONTROL SYSTEM are likewise in much smaller type, are much less visible, and are easily overlooked. Furthermore, they provide information about the nature of the goods.

Distinguishing the cases cited by the PTO, the Board found that there was no interrelationship between the omitted elements and the mark that Applicant sought to register. "The arrow and the term K-PATH are in darker print and more noticeable than the omitted elements and, therefore, they do stand out from the other material on the specimen."

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 9/13/2006   0 comments

Tuesday, September 12, 2006

Finding PTO's Proofs Inadequate, TTAB Reverses Surname Refusal of "SIKORSKY"

The PTO never got off the ground with its Section 2(e)(4) refusal to register the mark SIKORSKY for sports knives, videogames, jewelry, umbrellas, and other ancillary goods. The Board reversed the refusal, ruling that the PTO failed to establish a prima facie case. In re Sikorsky Aircraft Corp., Serial No. 78221800 (August 25, 2006)[not citable].


The Examining Attorney argued that SIKORSKY is primarily merely a surname, albeit a rare one. She asserted that SIKORSKY is the surname of Igor Sikorsky, Applicant's founder; that the term has no meaning in ordinary language; and that by its nature, the term has only surname significance.

However, the PTO produced evidence of “only one individual in the entire United States with the surname ‘Sikorsky.’” That individual, now deceased, was indeed the founder of Applicant Sikorsky Aircraft Corporation in 1923. But there was no evidence that Igor Sikorsky “is well known or that his name has had wide exposure to the purchasing public."

Although Igor Sikorsky is the name of someone associated with Applicant -- a factor that would normally weigh in favor of the PTO's position -- the Board questioned “whether this reflects current use as a surname by anyone in the United States or current perception of the term as a surname."

Moreover, the Examining Attorney failed to introduce evidence -- such as the absence of the term “Sikorsky” from dictionaries -- that the term has no meaning other than as a surname.

Sikorsky Bridge
Milford/Stratford, Connecticut


Finally, although the PTO asserted that "Sikorsky" has the structure and pronunciation of a surname, that assertion was based on the unproven claim that Sikorsky has no other meaning. Otherwise, there was no evidence or explanation to support the PTO's "conclusory contention" that Sikorsky has the look and sound of a surname.

The Examining Attorney also argued that Applicant's ownership of a Section 2(f) registration for SIKORSKY for aircraft "amounts to a concession as to the present application … that the term is primarily merely a surname.” However, the PTO provided no authority to support that contention.

TTABlog comment:I think this decision may just land on this year's "ten worst" list. The Board's reasoning regarding the "look and sound" of the word "Sikorsky" was particularly dubious. There was indeed evidence that "Sikorsky" has the look and sound of a surname: the fact that it was the surname of Applicant's founder. Moreover, common sense indicates that Sikorsky has the look and sound of a surname. Isn't that worth something?

The Board refused to consider the evidence submitted by Applicant that showed 113 telephone listings in the United States for people with the surname Sikorsky, because that evidence was not part of the PTO's case. But why shouldn't the Board consider that evidence? It was part of the record. Not only does it show that "Sikorsky" is not so rare a surname, but it also bolsters the argument that "Sikorsky" has the look and feel of a surname.

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 9/12/2006   0 comments

Monday, September 11, 2006

Leo Stoller Files Response to CAFC Order Re Jurisdiction Over Sanctions Appeal

Leo Stoller has filed his Response (here) to the CAFC's July 26th Order concerning the issue of the court's jurisdiction over Stoller's appeal from the July 14th PTO Sanctions Order. (See prior TTABlog postings here and here). Stoller asserts that the CAFC has jurisdiction over the appeal under the "collateral order" doctrine.

Leo Stoller

In his background discussion, Stoller notes that the PTO's Sanctions Order does not bar him or his companies from instituting proceedings before the TTAB, but he claims that the Order "will put Stoller and his website out of business." He asserts that, without the benefit of extension requests, he will be unable to conduct and manage all of his litigation. As a result, "rights claimed by various Stoller entities in a long list of marks will be deemed lost or abandoned due to inability to defend those rights before the Board."

As to the issue of jurisdiction, Stoller argues that the "collateral order" doctrine allows appellate review of an otherwise interlocutory ruling under certain circumstances. [That doctrine represents an exception to the normal rule that only final judgments are appealable; generally, it allows review of an issue that is separate and independent from the remainder of the case and is too important to be denied review pending disposition of the entire case]. Stoller maintains that the Board's Sanctions Order is "comprehensive and all-encompassing," and is "an extreme and unjustified reaction by the Board to Stoller's admittedly numerous extension requests." Consequently, he urges the CAFC to accept jurisdiction under the "collateral order" doctrine.

TTABlog questions: Why should the "collateral order" doctrine apply to the PTO Sanctions Order, which in and of itself was a final ruling? With regard to the two dozen or so oppositions that were dismissed as a result of the vacation of the extension requests granted to Stoller, aren't those dismissals final rulings ripe for review by the CAFC? However, aren't those dismissals and the issuance of the Sanctions Order so intimately related that they should all be considered at the same time in a single appeal? Or should the appeals from the opposition dismissals be stayed pending the appeal of the Sanctions Order? That, however, begs the real question: what judicial body should hear the appeal of the Sanctions Order?

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 9/11/2006   0 comments

Friday, September 08, 2006

"MISS NUDE CENTERFOLD SEARCH" Barely Overcomes 2(e)(1) Refusal

Finding that some thought or imagination would be required in order to discern the meaning of the mark MISS NUDE CENTERFOLD SEARCH, the TTAB reversed a Section 2(e)(1) refusal to register the mark for adult videotapes, CD-ROMs, DVDs, and entertainment services. In re JMH Productions, Inc., Serial No. 76608812 (August 25, 2006) [not citable].


The Examining Attorney relied on dictionary definitions of the constituent words and on various articles and Internet excerpts in arguing that the information conveyed by the mark ("i.e., a hunt for a woman or women to pose naked for centerfold pictures") is the "exact subject matter" of Applicant's products and services.

Applicant JMH Productions made of record 28 registration for marks that include the wording "MISS (or MS.) NUDE" combined with other words -- generally geographic or place names. (E.g., MISS NUDE KENTUCKY). Thus, Applicant argued, the PTO's position here is clearly inconsistent with prior and present practice of the Office.

As to the third-party registrations, the Examining Attorney followed the usual TTAB line: that third-party registrations are not conclusive on the question of mere descriptiveness and that each case must be decided on its own merits. This Board panel, however, asserted that third-party registrations, while not establishing binding precedent, "may in general be given some weight to show the meaning of a mark in the same way that dictionary definitions would be so used." [TTABlog note: third-party registrations are typically used to show that a particular term has a descriptive or suggestive meaning, not the opposite].

Here, the Board agreed with the PTO that the phrase NUDE CENTERFOLD SEARCH is merely descriptive of Applicant's goods and services, but the word MISS was a different story:

"we disagree with the Examining Attorney that the relevant consuming public would immediately regard such term as signifying only its literal meaning of a young unmarried woman, notwithstanding the bare fact [TTABlog note: pun in original] that in today's popular culture, it is common knowledge that nude centerfold models, especially those whose natural or enhanced talent and ability have garnered them public recognition as a 'Miss Of The Month' or other perhaps coveted title, are overwhelmingly young unmarried women."

Instead, the word MISS would be viewed as a "courtesy title or form of polite address for a young woman selected as the winner .... but it does not merely describe such designations or categories with any degree of particularity nor constitute its own subject matter."

According to the Board, "consumers would need to employ just enough of a multi-stage reasoning process, or utilize at least a minimum amount of imagination or thought, in order to determine the particular subject matter of applicant's goods or services." Therefore, the mark is merely suggestive, not descriptive.

Finally, the Board noted that the third-party registrations "serve at the very least to raise some doubt" about the descriptiveness of the mark, and that such doubt must be resolved in Applicant's favor.

TTABlog comment: The Board is just kidding here, right? I grasped immediately the meaning of the mark as applied to Applicant's goods and services. In fact a fairly detailed picture instantaneously formed in my mind's eye.

As to those third-party registrations, I think there is a difference between a mark like MISS NUDE IDAHO, say, and MISS NUDE CENTERFOLD SEARCH. As to the former, one definitely hesitates when thinking about a naked female shaped like the potato state. However, no such hesitation occurs with regard to the latter mark. The meaning is as plain as the nose on her face.

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 9/08/2006   0 comments

Thursday, September 07, 2006

TTAB Affirms 2(e)(4) Refusal of "BRANIFF" as Primarily Merely a Surname for Air Transport

Finding that BRANIFF, once the name of the nation's fifth largest airline, has no consumer recognition other than as a surname, the Board affirmed a Section 2(e)(4) refusal to register that mark for "transportation of persons, property and mail by air." In re 200 Kelsey Associates, LLC, Serial No. 78499928 (August 10, 2006) [not citable].


Examining Attorney Sara N. Thomas submitted 296 hits from the USFIND database, for individuals scattered around the country, and an excerpt from the "namestatistics" database revealed 1250 Braniffs in the United States. The Board therefore found that the surname BRANIFF is "somewhat rare," but it quickly noted that even a somewhat rare surname may still fall within Section 2(e)(4).

There was no evidence that anyone connected with Applicant is named Braniff, so that factor was neutral.

As to any other recognized meaning of Braniff, the Examining Attorney provided "negative" dictionary evidence: i.e., an excerpt from the Merriam-Webster Online Dictionary that did not list the word "Braniff." Applicant submitted Internet webpages regarding past use of the term BRANIFF for the airline that shut down in 1982, and it argued that BRANIFF likely still has meaning and significance to consumers as an airline. However, the Board noted the lack of evidence that the term BRANIFF now has any recognition other than as a surname.

Finally, the Board concluded that BRANIFF has the "look and feel" of a surname. Although recognizing that this is a subjective determination, the Board pointed to the fact that BRANIFF, as the Examining Attorney asserted, is "not a term that is composed of other terms or portions of terms, such as common prefixes and suffixes that convey a particular meaning."

And so the Board affirmed the surname refusal.

TTABlog comment: This particular applicant has filed dozens of applications to register once well-known trademarks: e.g., CHLORODENT, SKY CHIEF, and MUM. Recently it lost (on summary judgment) an opposition to its application to register the mark CHEMICAL BANK for banking services. Chemical Finance Corp. v. 200 Kelsey Associates, LLC, Opposition No. 91163169 (March 6, 2006) [not citable].

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 9/07/2006   0 comments

Wednesday, September 06, 2006

Citable No. 43: TTAB Interlocutory Ruling on Protective Order and Expert Witness Issues

Interlocutory rulings of the TTAB are difficult to find and are rarely deemed citable. However, the Board's 43rd citable decision of the year is a citable interlocutory decision, involving protective order and expert witness issues. Georgia-Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950 (TTAB 2006).

Applicant's mark

Modification of the Standard Protective Order: Opposers Georgia-Pacific and Fort James sought modification of the Board's standard protective order to permit access by certain of their in-house counsel to information designated "trade secret/commercially sensitive" by Applicant Solo Cup. Under the terms of the protective order, only outside counsel may have access to that category of information.

Interlocutory Attorney Frances S. Wolfson followed the CAFC's analysis in U.S. Steel Corp. v. United States, 730 F.2d 1465 (Fed. Cir. 1984), which considers whether a particular in-house counsel is "involved in its employer-litigant's 'competitive decisionmaking.'" She wrote:

"In U.S. Steel Corp., the court defined 'competitive decisionmaking' as 'shorthand for a counsel's activities, association, and relationship with a client that are such as to involve counsel's advice and participation in any or all of the client's decisions (pricing, product design, etc.) made in light of similar or corresponding information about a competitor.'"

Here, the record provided "little insight" as to the role, if any, that Georgia-Pacific's in-house counsel play in competitive decisionmaking activities. Opposers provided assurances that trade secret/commercially sensitive information would be safeguarded and segregated from their business representatives. But the Board was "unable to conclude that opposers' in-house counsel are not involved in the competitive decisionmaking process at their employers." Accordingly, it denied the motion.

Access to Expert Witness Report and Discovery Testimony: Opposers sought an order re-designating as non-confidential the expert report and discovery deposition transcript of Applicant's expert, Dr. Singh. Those documents were designated confidential or highly confidential, and as a consequence Opposers' in-house technical experts were restricted from reviewing them.

Without describing the information contained in the documents, the Board decided that some portions were over-designated (e.g., portions dealing with his credentials, his involvement as an expert in other matters, and how he came to be a witness in this proceeding). However, other portions remained as designated.

The Board recognized that this ruling left Opposers with "a difficult choice: either retain an outside expert at this time, not knowing whether applicant intends to use any of the Singh report or take Dr. Singh's testimony to introduce the report during its case in chief, or wait until applicant's testimony period closes to see if testimony is taken from Dr. Singh in regard to his report. In the latter case, opposers will have little time to retain an outside expert to assist it with its rebuttal testimony."

Taking pity on Opposers, the Board ruled that if applicant decides to introduce any portion of Dr. Singh's report or to take his testimonial deposition, Opposers' in-house expert should have access to the report and the discovery deposition. Therefore, "to allow opposers a fair opportunity to prepare for cross-examination and rebuttal," the Board made the following order:

"applicant shall provide advance notice to opposer (no later than two weeks before the opening of applicant's testimony period) of any plans to take Dr. Singh's testimonial deposition to introduce the Singh report into evidence during applicant's testimony period. ** If ... such notice is provided, then upon notice, opposers' in-house technical experts may access the Singh report and Dr. Singh's discovery deposition transcript, to help prepare counsel for cross-examination of Dr. Singh."

The Board went on to order that, two weeks prior to the opening of Opposers' rebuttal testimony period, Opposers must disclose the identify of any expert they intend to call, and applicant shall have an opportunity to take discovery of that expert.

TTABlog comment: Under the proposed TTAB Rule changes, the Board's standard protective order would be imposed at the commencement of each proceeding. Disclosure of experts would be required midway through the discovery period. [Currently there is no provision for mandatory disclosure of expert witnesses]. The several IP organizations that recently met with the PTO regarding the proposed Rule changes (TTABlogged here) recommended that the Board adopt a more flexible approach, "perhaps even setting a period for expert disclosures and discovery -- after fact discovery has closed and before the plaintiff's testimony period opens."

Text Copyrigth John L. Welch 2006.

posted by John L. Welch @ 9/06/2006   0 comments

Tuesday, September 05, 2006

Citable No. 42: TTAB Sustains India Tea Board's Section 2(d) Opposition Re "DARJEELING" Certification Marks

In its 42nd citable decision of 2006, the Board sustained a Section 2(d) opposition to registration of the mark DARJEELING NOUVEAU for tea ["DARJEELING" disclaimed], finding the mark likely to cause confusion with the registered certification marks DARJEELING and DARJEELING & Design (shown below). The Board dismissed Applicant's counterclaim to cancel the DARJEELING word mark registration on the Section 14(5)(A) ground that Opposer "does not control, or is not able legitimately to exercise control over, the use of the mark." Tea Board of India v. The Republic of Tea, Inc., 80 USPQ2d 1881 (TTAB 2006).

Opposer is a non-trading, non-profit body established by the Government of India under the India Tea Act of 1953 for the purpose of controlling the India tea industry. Darjeeling is a district located in the state of West Bengal, India, where tea has been grown and produced in 87 "tea gardens" for 150 years. Applicant Republic of Tea is a California-based purveyor of teas, and is a licensee of the Tea Board and a "certified user" of the logo mark, which it uses to represent that its product consists of 100% Darjeeling tea.

The logo registration states, "The certification mark, as used by persons authorized by certifier, certifies that a blend of tea contains at least sixty percent (60%) tea originating in the Darjeeling region of India, and that the blend meets other specifications established by the certifier." The word mark registration similarly states that the tea contains "at least 100%" [sic!] tea from the Darjeeling region.

Genericness: In its 61-page opinion, the Board first considered Applicant's counterclaim to cancel the DARJEELING word mark registration. Applicant contended that the mark "has lost its significance as an indication of geographic source and among the consuming public has become a generic term denoting a certain type of tea." In support, Applicant pointed to Opposer's alleged failure to police its marks, years of uncontrolled use, deficiencies in the Board's regulations, and the "lack of widespread use of the logo mark by third parties." It also submitted dictionary definitions, survey results, and evidence of third-party usage.

The Board observed that "[a] certification mark used to certify regional origin as well as qualities and characteristics associated with the origin will not be deemed to have become a generic term as applied to particular goods unless it has lost its significance as an indication of regional origin for those goods."


The Board found no information of record regarding "the nature or extent of the past misuse of DARJEELING." In fact, the India Tea Board took steps to maintain control and it did not tolerate misuse. The TTAB found nothing wrong with the regulations, and a thorough review of Applicant's proof of misuse found its charge unsupportable. Moreover,

"even assuming applicant had produced evidence of misuse, that is, use indicating a different geographic source for the tea or use in connection with nongenuine tea, we will not infer that the mark has become generic unless it is also shown by applicant that the misuse is so widespread and of such duration that it has caused DARJEELING to lose all significance as a mark."

The Board deemed Applicant's survey "of little probative value" because it was "not even designed to show that the term is generic." Likewise, Applicant's dictionary definitions proved nothing, and indeed the evidence of media usage (submitted by Opposer) showed recognition of DARJEELING only as a term indicating tea from that region.

The Board therefore found "insufficient probative evidence in the record to establish that the DARJEELING word mark is generic," and it dismissed the cancellation counterclaim.

Likelihood of confusion: Applicant argued that there could not be confusion as to origin because its goods consist entirely of Darjeeling tea, and it offered to amend its identification of goods to state "tea entirely from the Darjeeling region." The Board, however, found that the genuineness of the goods, rather than mitigating the likelihood of confusion, enhanced the likelihood that consumers will believe Applicant to be associated with Opposer.

Turning to the marks, the Board noted that although a term that describes the geographic origin of a product is inherently weak and protectable only with secondary meaning, Section 2(e)(2) provides a specific exception for marks used to certify indications of regional origin under Section 4. "Thus, the presumption that a geographic term is inherently weak does not attach to geographic terms that are used to certify regional origin." The Board therefore considered DARJEELING to be inherently distinctive and entitled to the "greater protection" afforded such marks.

Moreover, in light of the use of the mark in the United States for more than 50 years, the Board found DARJEELING to be a "strong mark as an indicator of source for tea" and entitled to a broad scope of protection. As to the logo mark, however, the evidence of use was scanty, and the Board found the mark entitled to "at least a normal scope of protection."


Although the Board rejected Opposer's contention that NOUVEAU is descriptive of tea, it nonetheless found that, in view of the strength of Opposer's DARJEELING mark, the addition of that word is not sufficient to distinguish the marks as a whole: "Purchasers will simply assume DARJEELING NOUVEAU identifies a particular variety of tea from Darjeeling, and not a different product or a different source for tea." As to Opposer's logo mark, the word DARJEELING is the dominant element and neither the design portion, nor the addition of NOUVEAU to DARJEELING in Applicant's mark, "affects the commercial impression created by the strong and distinctive word DARJEELING."

Finally, the Board refused to find that Applicant, although a licensee of Opposer's composite mark, adopted its mark in bad faith: "it appears to have been applicant's belief, however misguided, that opposer did not have any ownership rights to DARJEELING alone, and therefore no goodwill in the mark."

The Board consequently sustained Opposer's Section 2(d) claim (while declining to reach Opposer's dilution claim).

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 9/05/2006   0 comments

Friday, September 01, 2006

TTAB Affirms Refusal of "DE PUTA MADRE" for Clothing as Immoral or Scandalous

If you are under 18 years of age, please click here. If you are 18 or older, you may read on. Finding the mark DE PUTA MADRE to be immoral or scandalous, the TTAB affirmed a Section 2(a) refusal to register that mark for various clothing items. In re Mexico 69 SRL, Serial No. 78361172 (August 7, 2006) [not citable].


Applicant stated that the English translation of its mark is "Whore Mother's," but Examining Attorney Nelson Snyder contended that the mark is a "vulgar, slang expression equivalent to 'FUCKING GREAT' in English." He relied on a declaration from the USPTO Technical Translator, with accompanying definitions of "de puta madre;" on definitions of "fucking," "whore," "motherfucker," and "son of a bitch;" and on website and Nexis excerpts.

Applicant, in turn, relied on Internet printouts, dictionary definitions, a Wikipedia entry, third-party registrations, and an expert's declaration, in arguing that the mark translated "colloquially in English to the complimentary and clearly inoffensive terms 'very well,' 'well done,' and/or 'great.'"

The Board stated the question to be "whether the evidence of record is sufficient to show that a substantial composite of the general public finds use of the term DE PUTA MADRE in connection with applicant's clothing 'scandalous' within the meaning of Section 2(a)." It noted that a "substantial portion" of the general public speaks Spanish, and that all of the Spanish dictionary definitions of record indicated that DE PUTA MADRE is "rude," "offensive," or "vulgar."

Applicant failed to rebut the PTO's prima facie case. Its expert's statements that DE PUTA MADRE is not considered offensive by the Spanish-speaking community and that the phrase would never be translated as "Fucking Great" were unsupported by documentary evidence and were "in fact, contradicted by the Spanish dictionary entries." Applicant's other evidence not only did not support its claim, in some instances it supported the PTO's position.

Finally, the fact that DE PUTA MADRE has a "positive meaning" does not detract from its vulgarity. "A vulgar term may be used with a positive or negative meaning but that does not remove it from offensive speech." Or to put it to you another way, "... 'really great' and 'fucking great' both have the same positive meaning but one expresses that meaning in an inoffensive manner and the other expresses it in a vulgar manner."

The Board did not doubt that the PTO had established DE PUTA MADRE to be scandalous or immoral.

Text Copyright John L. Welch 2006.

posted by John L. Welch @ 9/01/2006   1 comments