TTABlogger On The Move: Bound For Cambridge, MA

I am delighted to announce that, as of November 1, 2006, I will serve as Of Counsel to Lowrie, Lando & Anastasi, LLP, in Cambridge, MA. The Lowrie, Lando firm is the fastest growing intellectual property firm in New England, because of both the quality of its work and the way it treats its people. I look forward to joining many long-time friends, including my occasional co-author, Ann Lamport Hammitte.


If there is a brief hiatus in TTABlog postings, you may assume that I'm just busy unpacking.
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TTAB Finds "GOYA" and "GAYO MOUNTAIN COFFEE" Confusingly Similar for Coffee

In this Section 2(d) cancellation proceeding, Respondent Holland Coffee had a mountain to climb: the goods are legally identical and Petitioner Goya's mark was deemed "strong and distinctive." It boiled down to a question of the similarity of the marks, and Holland lost. The Board cancelled its registration for the mark GAYO MOUNTAIN COFFEE for "coffee beans" ["COFFEE" disclaimed], finding it likely to cause confusion with the previously-used and registered mark GOYA for various food products, including coffee. Goya Foods, Inc. v. Holland Coffee, Inc., Cancellation No. 92030908 (September 12, 2006) [not citable].


The Board began by noting that coffee beans and coffee are relatively inexpensive items that are purchased by consumers exercising at most ordinary care. It observed that, when the marks at issue are applied to legally identical goods, the degree of similarity between the marks that is necessary to support a likelihood-of-confusion finding diminishes.

As to the marks, because COFFEE is a generic term for Respondent's goods, and MOUNTAIN describes or suggest that the coffee is grown in mountainous regions, the word GAYO is the dominant element of Respondent's mark. The Board therefore found, bearing in mind the "fallibility of human memory," that the marks are "similar," After all, the average purchaser, according to Board precedent, "normally retains a general rather than a specific impression of trademarks."

Moreover, Petitioner Goya Foods established that it has sold food and beverage products under the GOYA mark for more than 65 years, with significant annual sales and advertising expenditures. [It claimed to be "the number-one rated Hispanic company in the United States." ] The record was "devoid of any third-party uses or registrations of GOYA or similar marks." [Note, however, that Registrant Holland did not submit testimony or offer any evidence]. And so the Board found GOYA to be "strong and distinctive."

The Board therefore concluded that confusion is likely, and it sustained the petition for cancellation.


Petitioner Goya also asserted that the GAYO MOUNTAIN COFFEE mark is primarily geographically descriptive, and that the mark (registered under Section 2(f)) lacks acquired distinctiveness. However, Petitioner's only evidence on these points consisted of excerpts from printed publications. Because Petitioner relied on the excerpts to prove the truth of the matter asserted therein [that GAYO MOUNTAIN is a geographic location where coffee beans are grown], that evidence constituted inadmissible hearsay.

The Board noted that, since the challenged registration issued under Section 2(f), Goya was not required to "advance evidence of geographical descriptivess." However, Goya had the burden of establishing a prima facie case that the 2(f) requirement had not been met, and this Goya failed to do.

TTABlog comment: I think the differences between the marks make this a closer case than the TTAB let on. But between a senior registrant who puts in a full case and a junior registrant who does very little, the Board is far more likely to rule for the former.

Text Copyright John L. Welch 2006.

"DR. BRANDT" Primarily Merely a Surname for Skin Care Products, Says TTAB

Would you associate the mark DR. BRANDT for skin care products and publications, with the late German Chancellor, Willy Brandt? I wouldn't, and neither would the Board. It affirmed a Section 2(e)(4) refusal to register, finding the mark to be primarily merely a surname. In re Cosmetic Dermatology, Inc., Serial No. 76606583 (September 27, 2006) [not citable].


Instead of the usual telephone database statistics, the PTO's evidence consisted of listings of various Internet search results, which revealed thousands of hits for "Brandt." However, the Board gave little weight to that evidence because it was "troubled by the description of the searched databases." The information was largely historical rather than current, and was not necessarily limited to the United States. The Examining Attorney did provide GOOGLE search results indicating that "at least six people have the surname 'Brandt.'" In addition, there were more than 9,000 hits for "Mr. Brandt." But, according to the Board, the evidence was "too cryptic to conclude that 'Brandt' is anything other than a rare surname."

Applicant submitted the consent of Dr. Fredric S. Brandt, and the fact that someone associated with Applicant has the involved surname was a factor supporting the PTO's position.

Applicant argued that the term BRANDT has other recognized meanings, and it pointed to a small town called Brandt, South Dakota, and a bird known as "Brandt's cormorant." More significantly, it included a dictionary entry that defined "Brandt" as Willy Brandt (1913-1992), "German political leader. He served as chancellor of West Germany (1969-1974) and won the 1971 Nobel Peace Prize for his efforts to reduce tension between the East and the West."

The Board found the town and bird evidence "insignificant," and as to Chancellor Brandt, it ruled that the evidence "does not show that the term 'Brandt' would be almost exclusively associated with Willy Brandt." But the existence of several dictionary definitions of "Brandt" as referring to the Chancellor led the Board to conclude that this factor "slightly favors applicant."


As to the final factor, the Board not surprisingly found that BRANDT has the "look and feel" of a surname. Nothing in the record suggested that it didn't. And the presence of "DR." in the mark does not significantly change the surname meaning of the mark.

The Board therefore concluded that DR. BRANDT is primarily merely a surname when used in connection with the involved goods.

TTABlog comment: Compare In re Pyro-Spectaculars, Inc., 63 USPQ2d 2022 (TTAB 2002), in which the Board reversed a Section 2(e)(4) refusal of the mark SOUSA for fireworks because the primary significance of the mark was not as a surname, but as a reference to John Philip Sousa, the March King. In the instant case, even though Willy Brandt may still be somewhat "renowned," there is no particular connection between him and skin care products like that between Sousa and fireworks.

Text Copyright John L. Welch 2006.

TTAB Rules "CHISHOLM" Primarily Merely a Surname for Smokeless Tobacco

What do you think of when you hear the brand name CHISHOLM for smokeless tobacco? I think of the Chisholm Trail, with cowboys snorting and chewing -- not the late Shirley Chisholm. The Board thinks otherwise. It affirmed a Section 2(e)(4) refusal to register the mark CHISHOLM for smokeless tobacco, finding the mark to be primarily merely a surname. In re Xcaliber Int'l Ltd., Serial No. 78360389 (September 15, 2006) [not citable].


Examining Attorney John S. Yard relied mainly on 6,132 listings from the USFIND database. Applicant supplied information on two small towns named Chisholm, one in Maine and one in Minnesota, and submitted Internet web pages discussing the Chisholm Trail (a route used for cattle drives from Texas to Kansas during that late 1800s).

The Board rejected Applicant's contention that CHISHOLM is a rare surname, "even if it is not as common as, say, Smith or Jones or Brown." Moreover, "the renown of Shirley Chisholm as the 'first black woman elected to the House of Representatives' and a 14-year member of Congress, indicates that consumers would be more likely than not to perceive CHISHOLM as a surname."

Shirley Chisholm
Applicant contended that the primary significance of CHISHOLM is the name of the trail, but the Board would not be driven in that direction. It agreed with the PTO that "the question before us is not the significance of Chisholm Trail but of CHISHOLM alone." In any case, the Board asserted, "even among consumers with a keen sense of history, who may think of the Chisholm Trail when confronted with the term CHISHOLM alone, these history buffs are also likely to know that the trail was named after an individual." [TTABlog comment: news to me!].

Thus the Board concluded that CHISHOLM alone has no non-surname significance.


Finally, the Board found that CHISHOLM has the look and sound of a surname: "CHISHOLM does not have the look or sound of an initialism or acronym; nor does it appear to be cobbled together from terms or parts of terms with separate meanings."

The Board therefore affirmed the Section 2(e)(4) refusal to register.

TTABlog dissent: I almost spit out my chaw of smokeless tobacco when I read this decision. I think the Board erred in failing to consider the goods involved. The question is not whether consumers perceive CHISHOLM as a surname in the abstract, but whether they so perceive CHISHOLM when used as a mark for smokeless tobacco. To me, a tobacco branded CHISHOLM evokes the old Chisholm Trail. And no, I didn't know that the trail was named after an individual named Chisholm.

Furthermore, the statement that the renown of Shirley Chisholm "makes it more likely than not" that CHISHOLM would be a surname is simply unsupported. With all due respect, where's the proof that Shirley Chisholm, who has been out of the limelight for 30 years, is still a person of such renown?

Text Copyright John L. Welch 2006.

"CERTIFIED THERAPEUTIC RECREATION SPECIALIST" Not Generic, Says TTAB

In a 37-page decision that had this reader longing for recreation and/or therapy, the Board reversed a genericness refusal of the certification mark CERTIFIED THERAPEUTIC RECREATION SPECIALIST for "recreational therapy and recreational therapy counseling." The Board also found that the mark had acquired distinctiveness under Section 2(f). In re National Council for Therapeutic Recreation Certification, Inc., Serial No. 75701344 (September 15, 2006) [not citable].


As usual, the Board found the genus of services to be adequately described by the recitation set forth in the application. It rejected the Examining Attorney's attempt to define the genus narrowly, and Applicant NCTRC's attempt to define it broadly. As to the relevant public, the Board found it to comprise "persons in the recreational therapy field," including therapists who are candidates for Applicant's certification, therapists certified by Applicant, and persons needing/receiving therapy.

With regard to the appropriate test for genericness, the Board understandably agreed with Applicant that CERTIFIED THERAPEUTIC RECREATION SPECIALIST is a phrase, not a compound word, and that the CAFC's American Fertility test applies. Thus, "evidence that 'certified' and 'therapeutic recreation specialist,' considered individually, are generic is not sufficient to prove that the phrase CERTIFIED THERAPEUTIC RECREATION SPECIALIST is generic."

Although the Examining Attorney provided "significant evidence" to support the genericness refusal -- much of it consisting of "NEXIS article excerpts showing uses of 'certified therapeutic recreation specialist' in all lower case letters in the manner of a generic term" -- the Board found that, based on the entire record, the PTO had failed to establish by the requisite "clear evidence" that the applied-for mark is generic for the recited services.

In other words, Applicant successfully countered the PTO's evidence. It established that "the vast majority of the persons named in these articles in fact have been certified by applicant and thus are entitled to use the designation CERTIFIED THERAPEUTIC RECREATION SPECIALIST in rendering their services." Applicant also submitted Internet search results revealing "over 600 uses of 'certified therapeutic recreation specialist' in all or initial upper case letters in the manner of a mark." And "several state codes and regulations recognize CERTIFIED THERAPEUTIC RECREATION SPECIALIST as applicant's certification."

Thus, the PTO's evidence of genericness was "offset" by Applicant's evidence and, because of this "mixed" record, the PTO fell short of the "clear evidence" standard.


The Board next reviewed NCTRC's evidence of acquired distinctiveness. It noted that Applicant claimed continuous use of the subject mark for over 20 years, and that NCTRC "is the national certifying organization in the recreational therapy field." There was no evidence of use of the phrase by other certifying organizations. NCTRC engaged in "significant marketing activities" and its revenues of more than $7 million were "impressive" considering its specialized field. Moreover, Applicant submitted numerous declarations from persons in the field and persons receiving therapy. Although many were "similar in content," the Board ruled that they nonetheless have probative value.

Viewing this evidence in its entirety, the Board concluded that the mark had acquired distinctiveness under Section 2(f).

Text Copyright John L. Welch 2006.

TTAB Finds "THE PRODUCT DEVELOPMENT COMPANY" Generic for Services But Not for Software

Applying the CAFC's American Fertility test for genericness, the Board found the term THE PRODUCT DEVELOPMENT COMPANY to be generic for product development services, but not for computer software. In re Parametric Technology Corp., Serial No. 78040702 (September 12, 2006) [not citable].

The Examining Attorney refused registration on the Supplemental Register, relying on a dictionary definition of "product development" and on GOOGLE search results and NEXIS excerpts showing use of that term. Some of the PTO's materials showed use of the phrase "product development software." Applicant's own website also used the terms "product development" ["We eat, drink and sleep product development."] and "product development software" ["PTC product development software takes good to best"].

Because the Board understandably considered THE PRODUCT SOFTWARE COMPANY to be a phrase rather than a compound word, dictionary definitions alone could not support the genericness refusal. Under American Fertility, the PTO "must produce evidence of the meaning the relevant purchasing public accords" to the mark "as a whole." As to Applicant's product development software, the evidence fell short:

"While the record is clear, indeed, applicant has conceded, that it sells product development software, it is not applying to register either that phrase or THE PRODUCE DEVELOPMENT SOFTWARE COMPANY. Thus, the record does not show that the relevant public would view THE PRODUCT DEVELOPMENT COMPANY as the name of a class of products known as product development software."

However, as to product development services, the record was sufficient "to establish that the relevant public would find THE PRODUCT DEVELOPMENT COMPANY a generic term indicating a company that provides product development services." The term THE "is of no consequence," and the term COMPANY, "although not defined in the record, is merely a generic term for a business entity."

"Indeed, applicant acknowledges that there are product development businesses providing product development services and A PRODUCT DEVELOPMENT COMPANY would be a generic name for any such business. Applicant's use of THE instead of A cannot render the composite non-generic."

Consequently the Board affirmed the Section 23 refusal for the class 42 services, but reversed the refusal as to the class 9 software.

Text Copyright John L. Welch 2006.

TTAB Squashes "NEW YORK CURRANTS," Finding It Primarily Geographically Descriptive

In 2003, when the State of New York partially lifted its ban on the growing of currants (discussed here), New York farmer Greg Quinn was a leader in the campaign to allow black currant production. Mr. Quinn was not so successful, however, in his attempt to register the mark NEW YORK CURRANTS for currants and currant-based products. The Board affirmed the PTO's Section 2(e)(2) refusal to register, finding the mark to be primarily geographically descriptive of the goods. In re Quinn, Serial No. 78271634 (September 13, 2006) [not citable].


A mark is primarily geographically descriptive under Section 2(e)(2) if its "primary significance ... is that of the name of a place generally known to the public," and if the public would make a goods/place association -- i.e., if the public would believe that the goods come from that place. Moreover, a goods/place association is presumed when the goods do in fact emanate from the place named by the mark.

Here, Applicant Quinn represented to the PTO that his business is based in New York State and that "some portion" of the goods will originate in New York. Moreover, Quinn understandably did not dispute that New York is a "geographic place generally known to the public." That was pretty much the end of the story.

Quinn did argue, however, that NEW YORK CURRANTS is not primarily geographically descriptive because it serves as a "double entendre:"

"CURRANTS, when preceded by 'New York,' 'instantly brings to mind the hipness and electricity of New York City, [and] the word CURRANT is transformed in the consumer's mind into the word CURRENT, meaning both "most recent" and "a flow of electric current."'" [TTABlog admission: there are more internal quotation marks here than I can confidently handle.]

The Board was not persuaded:

"It strains credulity, however, to contend that the connotation of NEW YORK in a mark in which NEW YORK is followed by the name of a fruit, used on containers holding the fruit, or on beverages made from the fruit, is 'Manhattan' rather than the State of New York, and that the name of the fruit is transformed into another word meaning 'both "most recent" and "a flow of electric charge."'"

The Board therefore affirmed the refusal to register.

TTABlog note: For more background information on currants, see Barney and Hummer, "History of Currant, Gooseberry, and Jostaberry Cultivation." (here)

TTABlog puns: A hat tip to Applicant Quinn for "raisin" the double entendre argument. In light of "currant" events, we can all use a bit of amusement. And I'll bet there are no "sour grapes" on Quinn's part due to the Board's rejection of his plainly "fruitless" contention.

Text Copyright John L. Welch 2006.

Don't Forget! BPLA Trademark Year in Review is Next Thursday

The excitement is mounting. Next Thurdsay morning, October 26th, 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 run 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.

See you there.
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CAFC Affirms TTAB Ruling that Plant Varietal Names are Generic and Unregistrable

In a precedential ruling that I suppose may be described as "seminal," the CAFC affirmed the TTAB's decision that found the term REBEL to be generic for a variety of grass seed. In re Pennington Seed, Inc., 80 USPQ2d 1758 (Fed. Cir. 2006). [Board decision TTABlogged here].


Applicant had designated the term REBEL as a varietal name for a grass seed that was the subject of a plant variety protection ("PVP") certificate issued in 1981. When Applicant applied to register REBEL as a trademark for grass seed in 2001, the PTO refused registration on the ground that REBEL was the varietal name for a type of grass seed, and thus that the name was the seed's generic designation. The Board affirmed, finding valid the PTO's long-standing precedent and policy of treating varietal names as generic.

The Board relied on Dixie Rose Nursery v. Coe, 131 F.2d 446 (D.C. Cir. 1942), as establishing that varietal names are not subject to trademark protection. There, the term TEXAS CENTENNIAL was found to be unregistrable as a trademark "because it was the varietal name for a particular rose." The CAFC found Dixie Rose to be "instructive," and likewise subsequent Board decisions that "have consistently followed and applied the holding of Dixie Rose, refusing trademark registration for varietal names of plants on the ground that such names designate a particular variety of plant, rather than indicate the source of the product." Substantial evidence supported the Examining Attorney's finding that REBEL is a varietal name and is thus generic.

The court noted that Applicant was not precluded from acquiring trademark protection for a particular variety of grass seed.

"However, having designated the term "Rebel" as the varietal name, and having failed to associate any additional word with the Rebel grass seed that would indicate the seed's source, Applicant here is prohibited from acquiring trademark protection for the generic and only name of that variety of grass seed."

And so the CAFC affirmed the Board's decision.

TTABlog comment: Ho-hum. I'd rather cut the grass than read any more of these seed decisions.

Text Copyright John L. Welch 2006.

Zone of Natural Expansion for "WAVE" Marks Brings Victory in "WAVETRACE" 2(d) Opposition

Opposer Bose Corporation nearly went under in its Section 2(d) opposition to registration of the mark WAVETRACE for "audio encoding and decoding circuit boards and software for converting audio content to and from digital audio files." However, the Board threw Bose a life preserver, dubiously finding a likelihood of confusion with Bose's registered marks WAVE, ACOUSTIC WAVE, and WAVE/PC for radios, audio tape players, compact disc players, loudspeaker systems, and sound systems coupling a radio to a computer. Bose Corp. v. ONG Corp., Opposition No. 91162058 (September 29, 2006).


Bose started with a belly-flop, pleading six registrations but failing to get them all into evidence: it attached photocopies of the registrations to its notice of opposition, but they were not status-and-title copies; its witness was asked to read the registration, number, mark, and goods from the registrations, but was not asked to testify regarding ownership or current status.

Fortunately for Bose, however, Applicant ONG Corp. stated in its brief that Bose "is the owner of the registered trademarks WAVE, ACOUTIC [sic-should be ACOUSTIC] WAVE, and WAVE/PC." The Board took that as an admission that four of the six pleaded registrations "exist and are owned by opposer." It noted its "predisposition" to be liberal regarding finding such admissions "where the plaintiff has not properly entered its pleaded registrations into the record."

As to priority of use, again Bose floundered about. Bose's witness was not asked directly when each of the pleaded marks was first used, nor did the exhibits introduced by testimony reveal those dates. Nonetheless, Applicant introduced Bose's interrogatory responses, which included dates of first use for the WAVE and ACOUSTIC WAVE marks. Bose's testimony and exhibits established "the history of opposer's business" and its development of various products sold under the WAVE marks. Those products were introduced well before Applicant's I-T-U filing date. Therefore, Bose established priority of use.


Turning to the issue of likelihood of confusion, the Board found the fame of Bose's WAVE and ACOUSTIC WAVE marks to be "critical in this case," noting that famous marks enjoy a "wide latitude" of protection. It concluded that WAVE is "most likely to be seen by consumers as the dominant element in applicant's mark, simply because it is the first word in the compound WAVETRACE."

As to the goods, the Board veered off into troubled waters. It recognized that Opposer's and Applicant's goods are not competitive, but Bose's witness testified that "[t]here is a decoding circuit board inside the Wave Music System." Also, "the Wave/PC software has basically a MPE encoder." Although the Board noted that "there is nothing in the record to indicate that opposer markets these components to makers of finished audio products," it leaped to the conclusion that the goods are related:

"Because opposer utilizes in its finished products elements that are similar in function to the product of applicant, it would be within opposer's zone of natural expansion to consider marketing such elements to other producers of finished products."

Therefore the Board sustained the opposition.

TTABlog comment: Well, we have another candidate for the 10 Worst list. The Board's "zone of natural expansion" conclusion appears to be wholly without any factual support. Where's the proof that any makers of consumer audio products also sell encoder boards under the same mark?

Moreover, in the case cited by the Board to support its zone of expansion argument, Mason Engineering & Designing Corp. v. Mateson Chemical Corp., 225 USPQ 956, 962 (TTAB 1985), the Board ruled that Applicant Mateson had failed to establish a natural zone of expansion. The Board stated that, among the factors to be considered on that issue are whether the channels of trade and classes of customers for the two areas of business are the same, and whether other companies have expanded from one area to the other. Here, the channels of trade and classes of customers appear to be quite different, and there was no proof that other companies have expanded from one area to the other. Thus it would seem that here, as in Mason, the evidence "falls far short of the type of evidentiary showing which would be necessary ... under the doctrine of natural expansion."

Obviously, the Board wanted to give a wide scope of protection to the famous WAVE mark. But didn't the Board go overboard here?

Text Copyright John L. Welch 2006.

PTO Denies Reconsideration Request Re "THE TTABLOG." Appeal Filed

First, the good news. The PTO accepted the TTABlogger's Section 2(f) evidentiary showing that the mark THE TTABLOG has acquired distinctiveness. [A tip of the TTABlog fedora to all my friends who provided e-mails and letters in support of the 2(f) claim. (list here)]. The bad news is that the Examining Attorney denied reconsideration of the claim of inherent distinctiveness. An appeal from the final refusal was then filed on October 14th.


The Examining Attorney, plainly misunderstanding Applicant's forceful yet subtle argument, maintained that the mark THE TTABLOG is not a double entendre and does not fall within the double meaning cases:

"In applicant'’s request for reconsideration, applicant refers the examining attorney to several '“double entendre'” cases. Resp. at 2. However, applicant'’s reliance on the cited cases is misplaced given that the proposed mark, TTABLOG, does not have another meaning. Thus, the proposed mark is not a double entendre. Because applicant'’s proposed mark is merely descriptive of the identified services, refusal is maintained under Trademark Act Section 2(e)(1). 15 U.S.C. §1052(e)(1)."

However, Applicant made no such argument. Instead, Applicant referred to the double entendre cases as support for a broader proposition:

"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 of that gives the term its source-identifying power."

In other words, a double entendre may be deemed not merely descriptive despite the fact that, when the mark is considered with regard to the goods or services in question, the descriptive nature of the mark is immediately apparent. For example the meaning of SUGAR & SPICE for bakery goods is manifest, yet that mark falls in the favored "double entendre" category.

I argue that the double entendre mark is held to be inherently distinctive not because its descriptive meaning isn't apparent, but because it provides a noticeable and memorable "hook." So does THE TTABLOG. That's what makes them trademarks from the get-go.

I look forward to "hearing" what the Board has to say about this.

Text Copyright John L. Welch 2006.

TTAB Finds "GOLD ACCOUNT" and "CITIZENS CIRCLE GOLD ACCOUNT" Not Confusingly Similar

Applicant Citizens Bank successfully invoked Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005), in overcoming a Section 2(d) refusal to register the mark CITIZENS CIRCLE GOLD ACCOUNT [ACCOUNT disclaimed] for banking services. The Examining Attorney had deemed the mark confusingly similar to the registered mark GOLD ACCOUNT for banking services [ACCOUNT disclaimed]. In re Citizens Financial Group, Inc., Serial No. 78451347 (September 26, 2006) [not citable].


In Knight Textile [TTABlogged here], the applicant sought to register the mark NORTON MCNAUGHTON ESSENTIALS for various items of ladies sportswear. Knight Textile opposed, claiming likely confusion with its registered mark ESSENTIALS for women's clothing. The Board dismissed the opposition, finding that the word ESSENTIALS was highly suggestive in the clothing field, and that in the former mark it "contributes relatively less to the commercial impression than does the house mark NORTON MCNAUGHTON." In other words, the addition of the house mark was sufficient to distinguish the marks.

Here, the Board opined that the facts of the case "track the Knight Textile case in nearly every respect" and found that "the evidence applicant has presented here meets and even exceeds the evidentiary showing in Knight Textile." Citizens supplied "more direct evidence," i.e., evidence of actual use of GOLD ACCOUNT by twelve third-party banks. The Board found this website evidence to be "highly probative and strong" regarding the suggestiveness of GOLD ACCOUNT in the banking field.

As in Knight Textile, Applicant provided numerous third-party registrations, and the Board found that they corroborated the suggestive meaning of GOLD ACCOUNT. The Examining Attorney pointed out that many of the registrations did not include the word ACCOUNT, but the Board did not find that to be significant, since both Applicant and the registrant disclaimed ACCOUNT.

Applicant's specimen of use (shown above) showed CITIZENS as a house mark, and Applicant indicated that it uses CIRCLE "to identify its premiere relationship account products." Thus, according to the Board, CITIZENS CIRCLE functions like the house mark NAUGHTON MCNAUGHTON. "[P]urchasers would look to CITIZENS CIRCLE to distinguish applicant's mark from other GOLD and GOLD ACCOUNT marks, including the mark in the cited registration."

The Board therefore reversed the refusal to register.

Text Copyright John L. Welch 2006.

Stoller Bankruptcy Trustee Willing to Dismiss Pending Proceedings

The Chapter 7 Trustee for the estate of Leo Stoller (see TTABlog postings here and here) has sent the following e-mail to me, indicating his willingness to dismiss without prejudice pending proceedings involving the mark STEALTH. He would also consider resolution of proceedings involving other marks asserted by Stoller. The Trustee's message is set forth below.

Dear Mr. Welch:

By Order of the U.S. Bankruptcy Court for the Northern District of Illinois effective September 1, 2006, I have been appointed the chapter 7 trustee in connection with the administration of the estate of Leo Stoller. This authority vests in me the ability to begin, maintain, terminate, or settle any pending proceeding that involves Mr. Stoller or any of his proprietorship entities. By further Order of the Court effective October 5, 2006 that authority has been extended to include actions as sole share holder of all corporate entities owned or controlled by Mr. Stoller. Mr. Stoller has thus been relieved of his ability to act as a representative of his corporations or proprietorships, including the filing of or response to any motions in any pending trademark opposition or cancellation proceedings.

I have reviewed what information has been provided regarding any business activity that would give rise to potential trademark rights, whether registered or at common law. I have also reviewed the district court's Judgment dated October 4, 2006 in connection with Central Mfg. Co. v. Pure Fishing, Inc., No. 05 C 00725 (N.D. Ill.) which cancelled a number of STEALTH-based trademark registrations.

In connection with any trademark opposition or cancellation that was pending on or before September 1, 2006, you may announce in the TTABlog that I would favorably consider any reasonable Agreed Motion to Dismiss Without Prejudice such a proceeding that involved any of the STEALTH trademark rights asserted by Mr. Stoller or one of his corporate entities. I would also agree to consider, on a case-by-case basis, oppositions or cancellation proceedings that involved other trademark rights asserted by Mr. Stoller following a reasonable investigation into the basis for the proceeding.

Richard M. Fogel
(Not individually but as chapter 7 trustee in the estate of Leo Stoller)
Shaw Gussis Fishman Glantz Wolfson & Towbin LLC
321 N. Clark Street, Suite 800
Chicago, IL 60610
Direct dial: (312) 276-1334
Direct fax: (312) 275-0578

TTABlog note: The Order authorizing the Trustee to act on behalf of Stoller's wholly-owned companies may be found here. It would probably be wise to include a copy of that Order as an exhibit to any stipulated dismissal paper.
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TTABlog update: In two STEALTH oppositions, the applicants have already filed papers signed by the Trustee, to effect dismissal of the oppositions without prejudice.

In Central Mfg. Co. v. Pocekovic, Opposition No. 91164582, the parties filed an "Agreed Motion to Dismiss" (here), and the Board accordingly dismissed the proceeding without prejudice (here).

In Central Mfg. Co. v. Premium Prods., Inc., Opposition No. 91159950, the parties filed a "Stipulated Dismissal Without Prejudice" (here). [Under Rule 41(a)(1), FRCP, this stipulated dismissal is effective immediately, even without Board action. I think this is the better of the two approaches]. TTAB dismissal here.

Text Copyright John L. Welch 2006.

Sid Terror Punked by Bobby Steele in "THE UNDEAD" TTAB Priority Clash

In a semi-lively priority battle, the TTAB sustained a Section 2(d) opposition brought by Robert Kaufhold a/k/a Bobby Steele against Robert P. Yeomans a/k/a Sid Terror, regarding the mark THE UNDEAD for "entertainment namely, live performances by a musical band." Kaufhold v. Yeomans, Opposition No. 91160771 (September 26, 2006) [not citable].


The Board had no difficulty in finding likelihood of confusion, since both parties claimed use of the same mark, THE UNDEAD, for identical services (punk rock bands). The question was: who was undead first?

In his application, Yeomans stated a first use date in 1976 for his version of THE UNDEAD, but he failed to submit any evidence whatsoever and so was seemingly stuck with the application filing date (July 30, 2002) as his constructive first use date.

Opposer Kaufhold testified that he chose the name THE UNDEAD for a punk rock band in 1980 and started playing "live" shows under that name in late January 1981 at the A7 club in New York City. The Board concluded that Kaufhold had indeed established a first use date of January 30, 1981.

Normally, the Board would have concluded that Opposer had priority. But the Board hesitated because Opposer's own testimony raised the issue of whether Opposer "has established an earlier prior use date for applicant." [Emphasis in original].

Q. When did you first hear of the applicant?

A. When I first heard of him was when we played with the Dead Kennedys. And after the show --

Q. Let me just clarify that. That was sometime in mid-'81, late '81?

A. Right, that was - yeah, that was mid-'81.

Q. Okay.

A. And after the show, we were hanging our with the Dead Kennedys in the dressing room, and we were kind of like, you know, just having a conversation. And Jello Biafra [lead singer of the Dead Kennedys] just, like - just, like, mentioned that, you know - you know, there's a band - there's a band in San Francisco called The Undead. And did you know that?

I was, like, no. He said, you know, I wouldn't expect you to, you know. And that was about the extend of it, was just, like, you know, there's this other band out there, you know.

Q. So, before Jello Biafra told [you] about him, you hadn't heard of him?

A. No.

The Board incisively ruled that Opposer's own testimony did not allow it "to draw any conclusions that undermine opposer's claim of priority."

Finally, the Board noted that, "from a trademark perspective," the fact that the two bands had played at least one concert together was "certainly perplexing." Blatantly venturing into obiter dictum, the Board asserted that had Applicant raised the issues of consent or acquiescence, the Board would have rejected them for various reasons. But he didn't, so they didn't have to.


Declaring Applicant's THE UNDEAD application dead, the Board sustained the opposition on the ground of likelihood of confusion.

TTABlog comment: I think there might also be a descriptiveness issue here. I mean, if the band is giving "live" musical performance, aren't the performers necessarily "undead?"

Text Copyright John L. Welch 2006.

Two Weeks Away! BPLA "Trademark Year in Review"

Two weeks 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.

Be there, or be square!
.

"HOTELS.COM" Generic for Temporary Lodging Reservation Services, Says TTAB

Finding the term HOTELS.COM to be generic for "providing information for others about temporary lodging" and "making reservations and booking for temporary lodging," the Board affirmed a requirement that Applicant Hotels.com, L.P. disclaim that term in the mark shown immediately below. In re Hotels.com, L.P., Serial No. 76414272 (September 11, 2006) [not citable].


Is it a Unitary Mark? Applicant maintained that its mark is "unitary" because the literal element HOTELS.COM and the bellman design "are contiguous and actually touch one another" and "create a single commercial impression [such that] the proposed mark cannot be divided into separable components." The Examining Attorney argued that the bellman is separated from the words because "the design element is spatially, slightly forward of the word portion, as if the bellman stepped forward from the wording."

The Board saw the question as "whether the combination is unique" and "one that may not be fragmented." Assessing "how the average purchaser would encounter the [proposed] mark," it noted that in a number of Applicant's advertisements there is a clear separation between the word and design elements, and when the word and design elements appear together they are in "quite different colors." And many pages from an Internet search showed the terms "hotel.com" and "hotels.com" without the bellman character at all.

Moreover, the Board found the term HOTELS.COM to be the dominant portion of the composite mark "when viewed from a distance, or when printed in smaller size in an advertisement." As additional evidence, the Board noted that Applicant had pursued separate trademark protection for the term HOTELS.COM and for the bellman design.

Consequently, the Board concluded that the proposed mark is not unitary.


Is HOTEL.COM Generic? The Board found that Applicant's recitation of services provided an "apt specification of the genus," and it deemed the relevant public to be "all customary customers of the services."

Turning to the question of what HOTELS.COM means to the relevant public, Applicant conceded that (despite its deletion of "hotel reservations" from its recitation of services) hotel information and reservation services are still encompassed by the application.

The Board noted the dictionary definitions of "hotel" and ".com," and third-party uses of "hotel.com" and "hotels.com" as part of domain names such as "www.choicehotels.com" and "www.discounthotels.com."

Applicant feebly argued that this case is "akin to the Steelbuilding.com case," in that "the addition of the TLD '.com' to 'hotels' expands the meaning of the word hotels, and does not merely form a compound that conveys the meaning of the separate words." The Board, however, rejected that argument, noting that in Steelbuilding.com the term "steelbuilding" had a dual meaning, whereas that is not the case with the term "hotels.com."

The Board concluded that HOTELS.COM is a generic term, and it therefore affirmed the disclaimer requirement.

However, the Board did offer Applicant a small consolation: based on Applicant's substantial revenues and advertising expenditures, and the number of visitors to the "hotels.com" website, the Board concluded that, if HOTELS.COM is ultimately held not to be generic, then the PTO's rejection of the 2(f) evidence is reversed.

TTABlog note: The Steelbuilding.com case was TTABlogged here. More "akin" to the subject case was last year's LAWYERS.COM case, TTABlogged here, but relegated to a footnote by Judge Rogers.

Text Copyright John L. Welch 2006.

Stoller Wins One: CAFC Reverses TTAB's "STEALTH" Lawn Mower Decision

Not much has been going right for Leo Stoller and his trademark portfolio these days, but last week he managed to convince the CAFC to overturn a TTAB decision, at least "in part." In Stoller v. Sutech U.S.A., Inc., Appeal No. 06-117 (October 5, 2006) [not precedential], the CAFC affirmed in part and vacated in part the Board's decision (TTABlogged here) dismissing Stoller's opposition to registration of the mark STEALTH for lawn mowers. The court remanded the case to the TTAB to reconsider its finding that Stoller failed to establish his standing to oppose.


The court affirmed the Board's conclusion that applicant Sutech was "the proper party to register the mark," and that the mark was not merely descriptive of lawn mowers (despite Stoller's argument that the front of Applicant's lawn mower resembled the military's Stealth bomber). Likewise, it rejected Stoller's assertions premised on Sutech's use of the STEALTH mark prior to its application date, noting that the application was filed on the basis of intent-to-use. And it rejected Stoller's puzzling contention that the STEALTH word mark is unregistrable because it is functional.

However, Stoller's primary basis for opposition was likelihood of confusion. The Board found that Stoller had failed to establish use of his marks or ownership of any validly subsisting registrations. Consequently, it ruled that he had not established the requisite standing or priority of use.

Stoller attached copies of 20 certificates of registration to his notice of opposition, but those copies did not indicate the current status or title of the registrations, as required by rule 2.122 (d). And although Stoller provided some evidence of prior use, the Board found that evidence insufficient.

On appeal, Stoller asserted that Sutech had "stipulated" to the entry of various documents, including "The true and correct copy of the list of attached STEALTH Federal Trademark Registrations which are owned by Leo Stoller and herein relied upon in support of the Opposer's Notice of Opposition." The list included Registration No. 2,024,889 for the mark "The Stealth" for use on lawn sprinklers. The court noted that, "on its face, the notice of reliance appears to indicate that Sutech conceded that Mr. Stoller owns the marks listed in the attachment to the notice of reliance." The Board's opinion did not mention the notice of reliance or the stipulation contained in it. Therefore, the court found itself unable to determine whether the Boards had overlooked this evidence, or had found it insufficient to establish ownership of the registrations.

"We therefore remand for the Board to consider whether Sutech stipulated to Mr. Stoller's rights in the "stealth" marks referred to in his notice of opposition and whether the stipulation was sufficient to satisfy his burden to prove his ownership of registered "stealth" marks. If the board finds that, in light of the evidence of record, the stipulation is sufficient to satisfy Mr. Stoller's burden of proof on standing, the Board should address the merits of Mr. Stoller's likelihood of confusion claim."

TTABlog comment: Note that Registration No. 2,024,989 is one of the registrations that Judge Lindberg ordered to be canceled in the Pure Fishing litigation (blogged here). Therefore, this may indeed prove to be a hollow victory for Mr. Stoller.

Text Copyright John L. Welch 2006.

CAFC Okays TTAB's Exclusion of Two Registrations Improperly Submitted, Affirms Opposition Dismissal

Things turned out not so good for El Encanto, Inc. d/b/a Bueno Foods in its appeal from the TTAB's October 20, 2005 decision dismissing its Section 2(d) opposition. (TTABlogged here). The CAFC, in a nonprecedential disposition, affirmed the dismissal, finding no error in the Board's exclusion of two registrations that were not properly put into evidence. El Encanto, Inc. v. La Tortilla Factory, Inc., Appeal No. 06-1198 (Fed. Cir. October 6, 2006).

El Encanto filed a Section 2(d) opposition to registration of the mark SOY BUENO for tortillas, attempting to rely on two registrations for the mark BUENO, one in standard form and on in the design form shown above. It attached photocopies of the two registrations to its notice of opposition. La Tortilla successfully objected to admission of the photocopies because they did not show the current status and title of the registrations. (See Trademark Rule 2.122(d)). The Board agreed with La Tortilla and, as a result, El Encanto was unable to prove likelihood of confusion regarding these two registrations.

On appeal, El Encanto conceded that it did not introduce its registrations in accordance with the Rule, but it argued that, for various reasons, La Tortilla nonetheless had familiarity with the registrations and had "fair notice" that the registrations were subsisting and owned by El Encanto. Moreover, it asserted that La Tortilla admitted via the pleadings "the registrations referred to in the notice of opposition."

La Tortilla, however, pointed out the statement in its answer to the notice of opposition that it "was without knowledge or information to form a belief as to the truth of the averments ... and based thereon denies each and every such averment" regarding the registrations. The Board sided with La Tortilla, finding its response to be "valid denials of the status and title of the pleaded registrations, putting El Encanto on notice that it would have to prove its case." The fact that La Tortilla submitted El Encanto's interrogatory answers did not satisfy Opposer's burden to establish current status and title. [TTABlog note: Under Rule 2.122(d), El Encanto could have introduced the registrations via testimony, or by including status-and-title copies with a notice of reliance].

The court therefore could not conclude that the Board had abused its discretion. "Board decisions recognize that the Board has the authority to require parties to follow a simple, straightforward, and inexpensive procedure to prove ownership and status of pleaded registrations."


TTABlog comment: Is the "status-and-title" provision of Rule 2.122(d) an anachronism? Why not allow an opposer to attach to the Notice of Opposition current printouts from the PTO databases showing that the registration is still alive and owned by the Opposer? Don't those databases contain the very same information that the PTO relies on when it certifies the status and title of a given registration? It seems to me that the main reason why people don't obtain status-and-title copies is because it's a pain in the neck to get them.

Text Copyright John L. Welch 2006.

President Bush Signs Trademark Dilution Revision Act into Law

On Friday, October 6th, President Bush signed into law the Trademark Dilution Revision Act of 2006. (White House press release here). For a bit more information regarding the Act, see the TTABlog posting here.

Chicago Federal Court Orders Cancellation of 35 Stoller "STEALTH" Registrations

In an October 4th ruling that may be devastating to Leo Stoller's STEALTH trademark operation, Judge George W. Lindberg of the U.S. District Court for the Northern District of Illinois has issued a Final Judgment in the Central Mfg. Co. v. Pure Fishing, Inc. lawsuit in Chicago. [See previous TTABlog postings here, here, and here.]


The court not only entered judgment in favor of the Defendants on their four counterclaims (here), but it deemed the case "exceptional" and awarded attorneys' fees, ordered cancellation of all the STEALTH trademark registrations listed in the Complaint, and declared Central Mfg. Co. and its affiliates to be "vexatious litigants" and barred them from instituting "any lawsuit or trademark opposition" without prior leave of the court. [The court had previously dismissed Central's claims due to the "gross misconduct" of Mr. Stoller and his counsel. (TTABlogged here)]

The list of STEALTH registrations appears at paragraph 17 of the Complaint:

(click on picture for larger image)
You can bet that Mr. Stoller will appeal from this judgment. In the meantime, will the various TTAB proceedings involving one or more of these registrations be suspended? terminated?

But wait a minute! The Chicago bankruptcy court issued an Order on October 5th authorizing the Chapter 7 Trustee to act on behalf of Stoller's wholly-owned companies "in the capacity of sole shareholder of each respective corporation." So perhaps the question now is, will the Trustee appeal?

Text Copyright John L. Welch 2006.

District Court Skewers PTO, Grants Summary Judgment in "THE LAST BEST PLACE" Lawsuit

The U.S. District Court for the Eastern District of Virginia did not mince words in granting summary judgment to Last Best Beef, LLC in its lawsuit against the USPTO. The court ruled that the PTO, in cancelling two registrations owned by Last Best Beef for the mark THE LAST BEST PLACE, and in suspending four applications and two oppositions proceedings, had "improvised a series of actions without any authority to do so," amounting to "an arbitrary abuse of discretion" and a "clear error in judgment." Last Best Beef, LLC v. Dudas, Civil Action No. 1:06-399 (E.D. Va. September 27, 2006).


The April 24, 2006 TTABlog entry (here) set out the background facts regarding this dispute. The PTO acted pursuant to Section 206 of the 2006 Department of Commerce Appropriations Act, which prohibits the use of any Commerce Department funds to "register, issue, transfer or enforce any trademark of the phrase 'Last Best Place.'" That provision was sponsored by Montana Senator Conrad Burns, who publicly asserted that the mark THE LAST BEST PLACE "belongs to the State of Montana."

Last Best Beef contended that the PTO's actions were illegal because the Lanham Act does not provide for such actions, and it further argued that Section 206 violates the Fifth and Fourteenth Amendments. The court found it unnecessary to reach the constitutional issue because it ruled that:

"(1) Congress failed to explicitly suspend provisions of the Lanham Act with respect to the phrase 'Last Best Place,' and (2) the actions taken by the USPTO in response to the enactment of Section 206 demonstrate a 'clear error in judgment' given that Section 206 does not authorize the cancellation, suspension, or 'freezing' of pending trademark applications or Notices of Allowance."

The court concluded that Section 206 "improperly circumvents the Lanham Act and, therefore, is invalid legislation."

"In the absence of manifest congressional intent, the Court is unwilling to infer from a single sentence in an appropriations bill that Congress intended to undermine or bypass well-established provisions of trademark law in order to protect a single phrase from commercial control."

In its 32-page decision, the court discussed the ramifications of allowing such "whimsical exceptions to the Lanham Act like those that riddle the Tax Code:" the practice might potentially destabilize a business's ability to brand its products and services; it could turn the Trademark Act into a statute "full of holes and exceptions;" and it would mean that "a trademark application for a certain phrase would be stranded without any of the procedure and protection afforded by the Lanham Act."

The court noted that the PTO, without "clear guidelines as to how to properly deal with trademark applications" for THE LAST BEST PLACE, "decided to improvise a system of cancellation and suspension that is not provided for in the Lanham Act or the Trademark Manual." This amounted to a "clear error in judgment" under the precedents of the 4th Circuit interpreting the provisions of Administrative Procedure Act that govern judicial review of agency actions.

The court therefore ordered the PTO to reinstate LBB's applications and registrations

TTABlog comment: One might ask, what else could the PTO have done when faced with the directive of Section 206? I think it might have taken the position that it was in fact not directly expending funds on registration of the mark THE LAST BEST PLACE, per se. In other words, there were no specific items in the PTO budget designated for registration of that mark, and so the PTO was already in compliance. The PTO might argue, however, that as a practical matter, it did not have that option.

[A thank you to David M. Monachino, Esq., of the New York office of Seyfarth Shaw LLP, counsel for plaintiff LBB, for providing me with a copy of the opinion upon my request.]

Text Copyright John L. Welch 2006.

CAFC Lacks Jurisdiction, Dismisses Stoller Appeal from PTO Sanctions Order

In an Order issued yesterday, the CAFC dismissed Leo Stoller's appeal from the PTO's July 14th Sanctions Order, concluding that it lacks jurisdiction over an appeal of a sanction decision by the PTO Director. In re Leo Stoller, Appeal No. 2006-1534.

Leo Stoller
The appellate court noted that its jurisdiction to review decisions concerning trademark cases "is prescribed by 28 U.S.C. Section 1295(a)(4)(B)." That statutory provision references Section 21 of the Trademark Act, 15 U.S.C. Section 1071, which provides for appeal to the CAFC in certain situations, including oppositions. However, the PTO's decision "was not issued within a trademark opposition proceeding and does not otherwise fall within the statutory provisions cited above."

The court therefore ruled that it does not have jurisdiction. It agreed with the PTO that Stoller's right to direct review, "if any, would be pursuant to the Administrative Procedure Act (5 U.S.C. Section 701 et seq.)."

TTABlog comment: It appears that, under the APA, the proper route for Mr. Stoller would be a civil action in the U.S. district court for review of the agency decision. See, for example, the lawsuit involving THE LAST BEST PLACE, TTABlogged here.

For other TTABlog postings regarding Stoller's appeal, go here, here, here, and here.

Text Copyright John L. Welch 2006.

Stoller Bankruptcy Judge Issues Findings and Conclusions

On September 26, 2006, Judge Jack B. Schmetterer of the U.S. Bankruptcy Court for the Northern District of Illinois issued his Findings and Conclusions in connection with the court's August 31, 2006 order converting Leo Stoller's bankruptcy proceeding from Chapter 13 to Chapter 7. The conversion order was entered because of Stoller's lack of "business books and records from which his financial condition and income could be ascertained" and his transfer of valuable real estate to a family member shortly before the bankruptcy filing and "without apparent consideration." In re Stoller, Case No. 05 B 64075 (N.D. Ill.).


The court noted that Mr. Stoller has already filed an appeal from the August 31st conversion order, but nonetheless deemed it appropriate under applicable precedent to issue its Findings and Conclusions.

Among the Findings contained in the 30-page document are the following:

• 140. Debtor obtains his income from trafficking in trademarks.


• 141. The income of debtor is based on false assertions of trademark infringement and/or harm due to registration of the challenged party's trademark application.


• 144. Given Debtor's record in his effort to enforce claims for trademark infringement to generate most of his income, his expectations of regular future income are doubtful. ***

Reportedly, the Chapter 7 trustee has filed a complaint in an effort to retrieve ownership of the real estate that Stoller transferred to his daughter.

Text Copyright John L. Welch 2006.

TTAB Sustains "HARRY POTHEAD" Opposition on Confusion and Dilution Grounds

Given the broad protection accorded by the TTAB to famous marks, it is hardly surprising that the Board sustained an opposition to registration of HARRY POTHEAD for entertainment services. On summary judgment, the Board found the mark likely to cause confusion with, and likely to dilute, the mark HARRY POTTER, registered for a wide variety of goods and services, including entertainment services. Warner Bros. Entertainment, Inc. v. Campo, Opposition No. 91156299 (September 13, 2006) [not citable].


Applicants (three individuals appearing pro se) did not respond "substantively" to Opposer's summary judgment motion, but the Board nonetheless chose to consider the motion on its merits.

Likelihood of Confusion: Applicants had conceded that the HARRY POTTER mark is well known and famous, and the Board found that "every du Pont factor" that it considered favored Opposer: the services involved are "virtually identical" and the marks "highly similar in appearance." Moreover, Applicants admitted that they were aware of the HARRY POTTER mark when they adopted their mark.

Dilution: Applicants admitted the elements of dilution: that the HARRY POTTER mark is famous and achieved fame before Applicants made any use of their mark; that their mark will dilute the distinctive quality of Opposer's mark; and that use and registration of their mark will lessen the capacity of Opposer's mark to identify and distinguish its goods and services.

Parody defense: Applicants asserted parody as a defense to both claims. The Board noted that "because we are dealing with opposer's established rights in the trademark HARRY POTTER, any claim applicants may make to the use of their HARRY POTHEAD as a parody will not be considered a 'defense' but rather simply as a factor which is relevant to our analysis of likelihood of confusion." The Board then cited Professor McCarthy for the proposition that appropriation of a mark not to parody the product symbolized by the mark, but as a prominent means to poke fun at something else, is not "parody" of a trademark.

Here, the record revealed that Applicants were not using the HARRY POTHEAD mark "in a manner intended to parody opposer's HARRY POTTER mark. Applicants stated to the PTO that their work "does not parody any material from the Harry Potter movie or book series." Instead, Applicant Campo stated:

"the joke and point of our short [Harry Pothead and the Magical Herb] is that the parents become obsessed and delighted with what is being told to them[.] [T]hey may be oblivious to some of the things that their children are involved in. *** I think one of the ways that we are trying to get humor is by showing that people's obliviousness to what they are involved in could have them involved in something that could be illegal or harmful."

Based on Applicants' statements, the Board could conclude only that Applicants "are using their HARRY POTHEAD mark to poke fun at something else in society, i.e., applicant's perception that parents are oblivious to what their children are involved in." Thus Applicants 'claim of parody was unsupported, and the Board refused to consider this a relevant factor in its analysis of likelihood of confusion and dilution.

The Board therefore granted the motion for summary judgment on these two grounds, and sustained the opposition.

TTABlog comment: This decision reminds me of a soccer match I saw a few years ago, that ended with the score 9-0. It was so one-sided that it was boring to watch.

Text Copyright John L. Welch 2006.

US District Court Dismisses Cancellation Respondent's DJ Action: No Justiciable Controversy

The U.S. District Court for the District of Massachusetts yesterday dismissed a declaratory judgment action brought by a trademark registrant who, facing a cancellation proceeding, sought a declaratory judgment of non-infringement. Commonwealth Business Media, Inc. v. The Massachusetts Institute for a New Commonwealth, Civil Action No. 06-10744-RGS (D. Mass. October 2, 2006). [TTABlog notice: Foley Hoag LLP, including yours truly, represented The Massachusetts Institute for a New Commonwealth (MassINC) in this case].


Defendant MassINC had commenced a cancellation proceeding before the TTAB in light of the PTO's refusal to register the mark COMMONWEALTH for a magazine in the field of politics and public affairs. The PTO maintained that the mark was likely to cause confusion with the registered mark COMMONWEALTH BUSINESS MEDIA, owned by Commonwealth Business Media, Inc. (CBM) for a "house mark" for various magazines.

MassINC wrote to CBM seeking an amicable resolution of the matter, and included a draft Petition for Cancellation. MassINC proposed certain limitation on CBM's use of the word "Commonwealth," but the parties failed to reach agreement.

MassINC then filed its Petition for Cancellation. After further unsuccessful negotiations, CBM brought its declaratory judgment action, seeking a declaration that use of its mark does not infringe MassINC's mark and that CBM is entitled to registration. As usual, the TTAB suspended the cancellation proceeding pending the outcome of the civil action.

MassINC then filed a Rule 12(b)(1) motion to dismiss for lack of subject matter jurisdiction, arguing that it never threatened CBM with an infringement suit and that the dispute between the parties centers only on trademark registration issues.

Judge Richard G. Stearns noted that at oral argument MassINC's counsel "flatly stated that it had no intention of bringing an infringement suit against CBM on the facts presently known to it." The court distinguished the cases relied upon by CBM, finding persuasive MassINC's assertion that "it does not share a customer base with CBM or compete in the same market." Judge Stearns concluded that there did not exist a case or controversy because CBM did not reasonably anticipate having to defend itself against a future infringement claim.

The district court therefore granted the motion to dismiss.

TTABlog note: For a general discussion of declaratory judgment actions in the trademark context, see the recent Trademark Reporter article by D. Peter Harvey and Seth I Appel, "The Declaratory Judgment Response to a Cease and Desist Letter: 'First-to-File' or 'Procedural Fencing'?," 96 TMR 639 (May-June 2006).

[A thank you to The Trademark Reporter for granting permission to provide a link to the Harvey and Appel article. Copyright © 2006 the International Trademark Association, and reprinted with permission from The Trademark Reporter®, 96 TMR 974 (July-August 2008).]

Text Copyright John L. Welch 2006.

TTAB Posts Hearing Schedule for October 2006

If I lived in the DC area, I'd surely trek over to TTAB headquarters to hear at least some of the oral arguments scheduled for this month. The cases on tap are listed below. The hearings are held in the East Wing of the Madison Building. [The schedule, in Excel format, may be found at the TTAB website (in the lower right-hand corner)].


A whopping nine TTAB hearings are scheduled for October:

October 3, 2006, 2PM: In re Apotex Inc., Serial Nos. 76449597 and 78429952 [2(e)(1) mere descriptiveness refusals of IPHARMACIST and I PHARMACIST for various goods and services relating to pharmacies and pharmaceuticals].

October 5, 2006, 10 AM: In re Black & Decker Corp., Serial No. 76570453 [nondistinctiveness of the configuration of a key head, as a mark for metal door hardware and key blanks].

October 10, 2006 2PM: In re Certified Financial Planner Board of Standards, Inc., Serial No. 76592664 [mere descriptiveness and genericness of the certification mark CERTIFIED FINANCIAL PLANNER for financial planning services].

October 11, 2006 10AM: In re Cardinal Financial Corp., Serial No. 75528485 [Section 2(d) refusal of CARDINAL BANK, N.A. & Design for banking services, in view of the registered mark CARDINAL FINANCIAL COMPANY & Design for mortgage banking].

October 18, 2006 2PM: Sara Lee Global Finance, LLC v. Champion Performance Prods., Inc., Opposition 91156552 [Section 2(d) opposition to CHAMPION NUTRITION for dietary and nutritional supplements, based on Opposer's alleged family of CHAMPION marks for athletic-related clothing].

October 19, 2006 10AM: The Mentholatumn Co. v. Skin Prods. Inc., Opposition No. 91160694 [Section 2(d) opposition to registration of the mark OXYCEUTICALS for non-medicated acne treatment, based on Opposer's ownership of the mark OXY and variations thereof for acne medication].

October 25, 2006 2PM: In re Cyberchannel Inc., Serial Nos. 76567272 and 76567273 [Section 2(d) refusals of LEGALEDGE and LEGALEDGE SOFTWARE for case management software, in light of the registered mark GRAYCARY TECHNOLOGY'S LEGAL EDGE for online legal forms and software].

October 26, 2006 10AM: Bioscan, Inc. v. Biolight Patent Holding AB, Cancellation No. 92027044 [A priority battle over the mark BIOLIGHT for a light-generating apparatus used for medical treatment].

October 26 2006, 2PM: In re Sony Electronics Inc., Serial No. 76460006. [2(e)(1) mere descriptiveness refusal of the mark ROUGH CUT for video and data storage systems].

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

TTABlog Looks Ahead: You're On Notice!