Fame of "HOT WHEELS" Fuels TTAB 2(d) Victory Over "HotToyz" Trademark

The Board showed the Black Flag to Stephen Daniel Scott's application to register the mark "HotToyz"(Stylized) for magazines and Internet-based advertising services relating to high-performance vehicles. The du Pont fame factor fueled the Board's finding of likely confusion with Opposer Mattel's HOT WHEELS marks, registered for, inter alia, toy vehicles, automobile races, and Internet informational services. Mattel Inc. v. Scott, Opposition No. 91123052 (November 21, 2006) [not citable].

Mattel erected an impenetrable roadblock consisting of some 20 registrations for its HOT WHEELS mark. The Board found it necessary to focus on only two of them, one for the mark shown immediately below for toy vehicles, and one for the word mark HOT WHEELS for Internet-based entertainment and informational services concerning toy vehicles, professional automobile racing cars, professional automobile races, and standard, custom, and classic autos.


The Board first found that the HOT WHEELS typed mark and flame design are famous, "at a minimum for toy vehicles," based on more than 37 years of use of the mark for toys (more than 2 billion manufactured), substantial sales revenues, extensive advertising, numerous website visitors, 100 licensees for various products, and registrations for the mark for a various types of merchandise. The Board stressed that this fame factor "plays a dominant role" in its du Pont analysis.

Turning to the marks at issue, the Board found the design elements to be "strikingly similar:" as opposer noted, the letters "bend in accord with the flames." Furthermore, the stylized forms of lettering are also "strikingly similar." Both marks begin with the word HOT, the second word in each begins with a capital letter, and each ends in a plural form. The words WHEELS and TOYZ have different meanings, but both marks have the connotation of "hot vehicles." And the word TOYZ "directly applies to opposer, famous for toy vehicles." The Board concluded that, given the fame of Opposer's HOT WHEELS mark, the similarities in the marks outweigh their differences.


As to the goods and services at issue, the Board noted that Mattel, in marketing its goods, produces and displays life-size, fully functional versions of HOT WHEELS vehicles. Moreover, the HOT WHEELS mark is displayed on life-size race cars. And Mattel's website offers information on race cars and classic automobiles. Thus Applicant's magazines and website overlap in subject matter with Opposer's goods and services. The Board therefore found the goods and services of the parties to be related, ruling that in light of the fame of Mattel's marks, "consumers would view the respective goods and services as having common source or sponsorship."

As to channels of trade and potential purchasers, Mattel targets not only children but also adult collectors for its toy vehicles. Moreover, Internet users seeking information on vehicles "could easily encounter both applicant's mark and opposer's mark." And Applicant's magazines will be sold in the same types of stores (grocery stores, convenience stores, and gas stations).

Finally, as to purchaser sophistication, the Board agreed with Applicant that buyers of automobiles would exercise care in their purchasing decisions. "However, given the fame of opposer's marks the relative importance of this factor is minimized."

The Board concluded that confusion is likely, and it therefore sustained the opposition.

TTABlog note: Had Applicant not included the flame design in its mark, this would have been a more interesting case. Although not mentioned explicitly, there was a whiff of bad faith in the air regarding Applicant's mark.

On second thought, I changed my mind. What else would you use with the word "hot?" Ice cubes?

Text Copyright John L. Welch 2006.

Finding Fishing and Climbing Gear Related, TTAB Affirms 2(d) Refusal of "METOLIUS"

Applicant G. Loomis struggled mightily, but it just could not climb the mountain to reversal of the Board's 2(d) refusal to register the mark METOLIUS for fishing gear. The Board, not surprisingly, found the mark likely to cause confusion with the identical mark, registered as a "house mark for a full line of mountain climbing equipment." In re G. Loomis, Inc., Serial No. 78279545 (October 11, 2006) [not citable].

The Metolius River
Applicant argued that "Metolius" is the name of a river in Oregon, and "the irony is rich that a mountain climbing source would be named after a river." It claimed that METOLIUS has distinct and different connotations when used with mountain climbing gear as opposed to fishing gear. The Board did not take the bait: "the connotation and commercial impression would not vary significantly.... In either instance the natural beauty of the location and its general suitability for outdoor recreation would most likely dominate...." Moreover, purchasers unfamiliar with the river would likely perceive METOLIUS as an arbitrary designation without any particular meaning.

As to the goods, Loomis argued that they are "decidedly different," but the Board noted that this "misses the point." The question is not whether the goods may be confused, but whether the sources may be confused.

Applicant then contended that its goods and those of the Registrant are sold through different outlets in the Seattle area. The Board, of course, pointed out that evidence and argument focused on one particular geographic area are of "limited probative value." Moreover, the involved application and registration are not limited to particular channels of trade, and the PTO's evidence showed that both type of goods could be sold through the same trade channels.

As to purchaser sophistication, the Board noted that the involved goods "could vary in price from relatively inexpensive items to more expensive items." However, even assuming that the goods are relatively expensive and would be purchased with a significant degree of care, the Board could not assume that all purchasers are sophisticated. And in any case, "even sophisticated purchasers are not immune from trademark infringement."

Finally, Applicant argued that Registrant does not mark its products with the term METOLIUS, and that its own METOLIUS mark is a "third-tier" trademark, used along with Applicant's G. LOOMIS house mark, and the mark STREAMDANCE for its fishing line. The Board cast those arguments aside, again noting that the application and registration place no limitations on the use of the marks. It noted that such arguments might have value in a civil action but not in a TTAB proceeding.

In conclusion, the Board found confusion likely, and affirmed the refusal to register.

Text © John L. Welch 2006.

"GAMESTUDIO" Not Merely Descriptive of On-Line Game, Says TTAB

Reversing a Section 2(e)(1) refusal, the Board found the mark GAMESTUDIO not merely descriptive of an on-line simulated securities exchange game. In re Hollywood Stock Exchange, LLC, Serial No. 78389911 (November 2, 2006) [not citable].


The Examining Attorney contended that GAMESTUDIO "appears to be commonly used by organizations who specialize in the creation or marketing of on line electronic games." Thus, he argued, GAMESTUDIO is like "men's store" or "dairy."

Applicant HSX maintained that the evidence did not show that "Game Studio" is a common business reference, nor that a company designated as a "game studio" offers on-line access to games. According to Applicant, the mark has "potential suggestive meanings" and is therefore not merely descriptive.

The Board observed that the record evidence suggests that "'game studios' typically develop and license use of game programs, but do not provide games directly to consumers." It was unclear "whether average purchasers of applicant's services would perceive GAMESTUDIO as either a merely descriptive term or as an entity designation as the Examining Attorney argues."

"... the evidence fails to establish that average purchasers of or players of online games would perceive GAMESTUDIO in the same sense as potential clothing purchasers would perceive 'men's store' or potential purchasers of dairy products would perceive 'dairy.'"

Moreover, the example of Applicant's use of the GAMESTUDIO mark (see above) "casts further doubt on the Examining Attorney's argument." As used therein, GAMESTUDIO "does not in any way suggest an entity type." The example also supports Applicant's assertion that its mark "may be perceived as suggesting an association with the film industry, the focus of the three games, or even a virtual place, or 'STUDIO' where these online games may be played."

In sum, the Board agreed with Applicant that "the significance of GAMESTUDIO in this context is ambiguous." Recognizing that this is a case "where some doubt may exist," the Board resolved any doubt in favor of Applicant.

TTABlog comment: If a "film studio" produces films and distributes them to the public, and if a "photography studio" takes photos and distributes (sells) them to customers, why wouldn't a "game studio" create and sell games?

It is well settled law that just because Applicant may be the first user of the mark GAMESTUDIO doesn't mean the mark isn't descriptive. I think other makers of games should be free to use "game studio" without fear of an infringement charge.

Text © John L. Welch 2006.

Weakness of "SMART CHOICE" Formative Leads to TTAB Reversal of 2(d) Refusals

Relying on Knight Textile, the Board reversed two Section 2(d) refusals to register the mark GUNN SMARTCHOICE SERVICE for "vehicle repair services" [SMARTCHOICE SERVICE disclaimed], finding it not likely to cause confusion with the registered marks SMART CHOICE [Supplemental Register] and AMERICA'S SMART CHOICE for the same services. In re Gunn GP LLC, Serial No. 78497204 (October 30, 2006) [not citable].


The reader will recall that in Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005), the Board ruled that the mark NORTON McNAUGHTON was not confusingly similar to the registered mark ESSENTIALS, both for clothing, due to the weakness of the term ESSENTIALS. Here, with regard to the SMART CHOICE registration, the Board found that "SMART CHOICE is obviously and inherently a laudatory and descriptive phrase, as is evidenced by the fact that it is registered on the Supplemental Register." The panel concluded that the points of dissimilarity between the marks outweigh the points of similarity, and that purchasers will be able to distinguish between the respective sources of the services.

As to AMERICA'S SMART CHOICE, despite the fact that the mark is registered on the Principal Register without any disclaimer, the Board found that SMART CHOICE is "inherently quite laudatory and weak as a source indicator." The presence of the house mark GUNN in Applicant's mark and the word AMERICA'S in the cited mark "suffice to enable purchasers to distinguish between the sources of the services rendered under the marks." (again citing Knight Textile.)

The Board accordingly reversed the refusals to register.

TTABlog comment: In the Knight Textile case, 23 registrations in the clothing field (owned by 21 different owners) for marks that include the word ESSENTIALS corroborated the dictionary definition of that word, and led the Board to conclude that ESSENTIALS is a "highly suggestive term as applied to clothing," and that purchasers "are able to distinguish among various ESSENTIALS marks by looking to other elements of the marks."

Here, there was no indication in the Board's opinion that the phrase SMART CHOICE is included in more than the two registrations cited, and there is no reference to any dictionary definitions of the term. In other words, the proofs were rather skimpy in this case.

As to Applicant's disclaimer of SMARTCHOICE, the Board noted that this disclaimer was made voluntarily and not at the insistence of the PTO. Had the Examining Attorney required the disclaimer, might that have bolstered the argument regarding the weakness of the SMART CHOICE formative? On that point see the GOSMILE PM case, TTABlogged here, in which the Board gave no weight to the fact that the PTO had required a disclaimer of PM because the Examining Attorney had not cited any evidence to support the disclaimer requirement.

Text and photograph © John L. Welch 2006.

Black Dog Tavern Triumphs in TTAB 2(d) Opposition Dogfight

One might say that Applicant Elizabeth A. Frechette barked up the wrong tree in her attempt to register the two dog design marks shown immediately below, for paper articles, glassware, clothing, and retail gift store services. The Board found these two marks likely to cause confusion with Opposer's dog design mark, shown further below, registered and used for various goods and services. The Black Dog Tavern Co. v. Frechette, Oppositions Nos. 91150887 and 91151592 (November 14, 2006) [not citable].

Applicant's marks
Opposer Black Dog Tavern established priority by submitting status-and-title copies of nine registrations for its dog design mark for clothing, mugs, glassware, playing cards, and various other goods, and for restaurant and bakery shop services. It also proved prior use of the mark for its catalog/calendar, for posters, and for retail general store services.

Opposer's mark
Applying the ever-popular du Pont factors, the Board found that the first factor, the similarities between the goods and services of the parties, "weighs heavily in opposer's favor." The Board noted that Applicant's identification of goods is unrestricted, and therefore that her goods are deemed to be sold in all normal channels of trade to all appropriate purchasers. The goods covered by Opposer's registrations, in turn, are "deemed to be marketed in the same channels of trade and to the same classes purchasers, i.e., to the general public."

With regard to Opposer's paper goods and retail store services, its rights were based on common law use, and therefore were limited to its actual channels of trade. However, Opposer offers those goods and services through catalogs and in its general stores in Massachusetts and Rhode Island. The Board noted that this is the same geographic area in which Applicant sells her goods. [TTABlog note: Why Applicant Frechette's actual trade area makes any difference is a puzzle, since Applicant was seeking nationwide registrations]. The same customers, i.e., the general public, may encounter both parties' goods and services. The Board therefore found that the third and fourth du Pont factors weighed in favor of Opposer.

The Black Dog TavernMartha's Vineyard, MA
Opposer BDT established that its dog design mark is "strong" by submitting numerous advertisements and articles from sources such as The New York Times, The Washington Post, and The Wall Street Journal. It proved sales of more that $100 million and advertising expenditures of more than $5 million since 1987, and its President testified that Opposer has challenged other infringing marks. In fact, Applicant Frechette stated that Opposer's mark is "very famous."

Finally, the Board found that, although there are specific, slight differences, the marks are similar in appearance and commercial impression: "a standing black dog that is, or is close in appearance to, a Labrador retriever."

The Board concluded that confusion is likely, and it therefore sustained the oppositions.

TTABlog comment: Two procedural points are worth noting. The Board sustained Opposer's hearsay objection to the admissibility of various advertisements and newspaper article proffered by Applicant, to the extent offered to prove the truth of the matters asserted therein. And the Board affirmed Opposer's objection to Applicant's "customer survey" because it "was not conducted in accordance with accepted survey methods."

Finally, for purposes of full disclosure, please be aware that I, the TTABlogger, provided some assistance to Opposer The Black Dog Tavern Company, Inc. in this matter.

Text © John L. Welch 2006.

TTAB Snuffs Out "CAZADORES" 2(d) and Descriptiveness Opposition for Failure to State Proper Claims

Opposer Altadis U.S.A. Inc. watched its opposition to registration of the mark CAZADORES for lighters, matches, and ashtrays go up in smoke because it failed to state proper claims of mere descriptiveness and likelihood of confusion. To add insult to injury, the Board went on to rule that, even if Opposer had stated proper claims, it still would have lost because of inadequate proofs. Altadis U.S.A. Inc. v. Bacardi & Co. Ltd., Opposition No. 91161729 (November 7, 2006) [not citable].


Altadis asserted that CAZADORES (which translates as "light infantry") is used by cigar makers as a size designation, that Applicant Bacardi's goods travel in the same channels of trade as cigars, and that Bacardi's use of CAZADORES would likely cause confusion and would interfere with Opposer's right to use the term as a size designation for cigars.

However, Altadis failed to plead that CAZADORES is descriptive of Applicant's goods. Moreover, it failed to allege, in the alternative, that it has prior, proprietary rights in the term CAZADORES. "The notice of opposition accordingly fails to state any claim upon which relieve can be granted and, on this basis alone, must be dismissed.

Moreover, the Board went on to observe that even if the pleadings were deemed to be amended to set forth proper claims, "the evidence of record fails to establish opposer's entitlement to relief on either ground by a preponderance of the evidence."

Opposer did submit evidence that CAZADORES is descriptive for a cigar of a certain size and length. However there was "no evidence of record as to whether the term 'CAZADORES' has any descriptive significance with respect to smokers' articles such as lighters, matches and ashtrays." [emphasis in original]. Opposer's alleged fear of potential harassment by applicant "is misplaced," since the respective goods of the parties "are plainly not the same products."

"Allowance of the registration which applicant seeks thus would not empower applicant to harass opposer and others who utilize the term 'CAZADORES' descriptively as a size designation for cigars."

Turning to the (hypothetical) claim of priority and likelihood of confusion, Opposer Altidis offered no admissible proof of priority. It submitted excerpts from its own website that were not properly authenticated, and in any case they were dated after Applicant's filing date. Moreover, Opposer failed to prove any proprietary rights in CAZADORES, instead maintaining that it is a size designation for cigars.

The Board therefore dismissed the opposition.

TTABlog comment: Ouch!

Text Copyright John L. Welch 2006.

Citable No. 48: "RAD RIGS" and "RAD RODS" Confusingly Similar for Toy Vehicles, Says TTAB

In its 48th citable decision of 2006, the Board granted a petition for cancellation of a registration for the mark RAD RODS (Stylized) for "mechanical action toy vehicles" [RODS disclaimed], finding the mark likely to cause confusion with the registered mark RAD RIGS [RIGS disclaimed] for "toy vehicles and accessories therefor." Mattel, Inc. v. Funline Merchandise Co., 81 USPQ2d 1372 (TTAB 2006).

Petitioner Mattel established priority by proving use of its RAD RIGS mark since 1997, a date prior to Respondent Funline's first use date (1999). The Board noted that Mattel is not currently marketing RAD RIGS brand toys, but, according to Mattel, "these kinds of products generally stay on store shelves for about two years after the end of production." Moreover, "[t]here is also a secondary market for RAD RIGS products consisting of collector and hobby stores and websites where the products are currently sold."


The Board found the involved goods, trade channels, and classes of customers to be legally indistinguishable. As to the marks, the Board deemed the terms RODS and RIGS to be descriptive, and it found the term RAD to be dominant in both marks. Consequently, the Board concluded that the marks are "very similar" in appearance, sound, connotation, and commercial impression.

Finally, Respondent's submission of two third-party registrations for toy vehicles, one for RAD RODS and the other for RAD RIGS, did not alter the Board's thinking. Both registrations are now cancelled, and in any case, even though the two registrations co-existed on the register (from 1990 to 1992), "the determination of registrability of those particular marks by the trademark examining attorneys cannot control our decision in the case now before us."

The Board therefore granted the petition.

TTABlog comment: Why, you may ask, was this decision deemed citable? I think because its a "vehicle" for the Board to make its point about the two co-existing third-party registrations. The fact that Mattel is not currently marketing the goods was interesting, but was not further discussed by the Board.

Text Copyright John L. Welch 2006.

PTO Issues Notice Re TARR Publication Date Errors

On November 15, 2006, the USPTO issued the following Notice regarding certain errors in the TARR publication dates for 970 applications published for opposition on October 24, 2006.

Files on Tarr with Erroneous Publication Date Promptly Corrected
For a short period of time, there were approximately 970 applications that showed two Official Gazette publication dates on the Trademark Applications and Registrations Retrieval database (TARR). In one field, TARR erroneously listed the publication date as October 31, 2006, while in another field, TARR listed the publication date as October 24, 2006. The actual publication date for all of these applications was October 24, 2006.

Upon discovery of the conflicting entries in TARR, the Office promptly corrected the inaccuracies. At present, TARR indicates the correct publication date, as well as the appropriate status, for all of the applications.. Notices of opposition, or extensions of time to oppose, for these applications must be received within thirty days after the publication date of October 24, 2006.

Recommended Reading: The Protection of Sound Marks

Kevin K. McCormick provides a useful overview of various systems for the registration of sound marks, in his recent Trademark Reporter article entitled "'Ding' You Are Now Free to Register That Sound," 96 TMR 1101 (September-October 2006). (download here). He notes that a sound marks "transcend languages" and thus would seem to be desirable and attractive as global source indicators. Yet "recognizing sounds as trademarks has really only occurred in recent years, and as a result, only a small number of sounds have been registered as trademarks."


McCormick's article "offers a description of the basic legal frameworks for trademark protection of sounds as reflected through the treatment of sounds in the United States, the European Union, and several exemplary nations." He notes that the United States "has been the most liberal nation in regards to recognizing the registration of sounds."

For American trademark owners, the path to international registration of a sound mark is very complicated. Use of the Madrid Protocol is particularly problematic because of the differing requirements for sound mark applications in various national laws.

"The odds are simply against a U.S.-based sound mark application seeking international registration in numerous countries via the Madrid Protocol. The more likely result would be filing several applications: a CTM application for protection in any EU member state, an international application in descriptive representation states, and national applications in all other states that recognize sounds."

In sum, Mr. McCormick's article is a good starting point for one who contemplates protection of a sound mark.

TTABlog comment: My favorite sound mark is one that I registered for Boston Duck Tours for its sightseeing tour services: "The mark comprises the sound of a human voice making quacking noises like a duck." The mark was deemed, after some brilliant argument, to be inherently distinctive. (U.S. Reg. No. 2,308,503).

How about this for a sound trademark: the "signature call" of sportscaster Andres Cantor: GOOOOOOOOOOOOOOOOOOOLLLLLLLLL!


TTABlog Hat Tip: A thank you to The Trademark Reporter for granting permission to provide a link to this article. Copyright © 2006 the International Trademark Association, and reprinted with permission from The Trademark Reporter®, 96 TMR 1101 (September-October 2006).

Text Copyright John L. Welch 2006.

TTAB Affirms 2(d) Refusal of "VOODOO TIKI" for Tequila

Applicant John Taddeo could have used a bit of magic in his attempt to register the mark VOODOO TIKI for tequila. The Board affirmed a Section 2(d) refusal, finding the mark likely to cause confusion with two previously registered marks: DIXIE CRIMSON VOODOO ALE for beer [CRIMSON and ALE disclaimed], and REDRUM VOODOO SPICED RUM for "distilled spirits, flavored rum" [SPICED RUM disclaimed]. In re Taddeo, Serial No. 76508763 (October 19, 2006) [not citable].


Starting with the second du Pont factor, the similarity of the goods, the Board found Applicant's tequila to be related to the beer of the first registration, and to be encompassed within the "distilled spirits" of the second registration. Moreover, third-party registrations suggested that beer and rum are related, and Internet evidence indicated that beer and tequila are "complementary goods which can be used together as ingredients in mixed drinks."

As to the third du Pont factor, the similarity of trade channels, the Board not surprisingly found that the involved goods "are or could be marketed in the same trade channels and to the same classes of purchasers."

Under the fourth du Pont factor, the involved products are ordinary consumer goods that are purchased by ordinary consumers without any special care or sophistication.


As to the sixth du Pont factor, the Board ruled that 15 third-party registrations for marks including the word VOODOO were not probative of the strength or weakness of VOODOO as a mark for alcoholic beverage because they concerned goods and services far afield. Internet evidence describing numerous mixed drinks with VOODOO in their names did not prove trademark use of the names. In sum, the Board "certainly cannot conclude that the use of VOODOO in marks for alcoholic beverages is so widespread that purchasers have become conditioned to distinguish such marks by looking at their other elements."

Finally, the Board turned to the first du Pont factor, the similarity of the marks. It concluded that VOODOO is "the dominant feature in the commercial impression created by each of the cited registered marks." Applicant Taddeo acknowledged that DIXIE refers to the southern states, CRIMSON ALE describes the color and nature of the goods, REDRUM describes the color of the goods, and SPICED RUM describes the flavor and nature of the goods. But the Board observed that VOODOO "is an arbitrary term, or at most a slightly suggestive term."

Taddeo argued that VOODOO is a "highly suggestive term" because it connotes "black magic, conjuring and witchcraft," and that "when this term is used in connection with alcoholic beverages, it is used to suggest magical properties or effects." The Board was not swayed: "beer and rum (and tequila) cannot readily be said to have 'magical properties or effects" except in the most fanciful sense." The connotation suggested by Applicant "is so tenuous as applied to alcoholic beverages that the term cannot be considered ... only slightly and whimsically suggestive of such goods."


Comparing the marks, the Board found that "the basic similarity in the respective marks' overall commercial impressions which results from the presence of the term VOODOO in each mark outweighs these points of dissimilarity in the marks."

Applicant Taddeo argued that the two cited marks "are more similar to each other than either is to applicant's mark VOODOO TIKI, and that if the two cited marks can coexist on the register, applicant's mark likewise should be registered." The Board, however, pointed out once again that "each case must be decided on its own merits and on the basis of its own record.... *** More specifically, we are not bound by the decision of the examining attorney who approved registration of the REDRUM VOODOO SPICED RUM mark notwithstanding the preexistence of the DIXIE CRIMSON VOODOO ALE registration."

To the extent that the Board had any doubts about the likelihood of confusion, it resolved those doubts (as it must in a Section 2(d) case) against Applicant.

TTABlog comment: This is another Board decision that (like some VOODOO drinks) is a bit hard to swallow. I just don't think the marks, when viewed as a whole, are confusingly similar. After all, consumers don't know what portions of marks have been disclaimed. They just look at the marks in their entirety, and the marks seem quite different to me.

Anyway, this case reminds me of the time I was watching a movie about zombies, and I turned to my friend and said, "I Haiti this kind of movie, but I'll watch if voodoo."

Text Copyright John L. Welch 2006.

Opposer's Failure to Introduce Evidence Leads to TTAB Dismissal of "PEACH BUNS" Opposition

In a three-page decision that was as brief as Applicant's bikinis, the Board dismissed a Section 2(d) opposition to registration of the mark PEACH BUNS for swimwear and other apparel. Opposer claimed use and registration of the mark BUNS for "underwear pants for men and women," but he failed to introduce any evidence that supported his claim. Burkard v. Ga. Peach Buns, Inc., Opposition No. 91161120 (November 1, 2006) [not citable].


Opposer relied on his registration for the mark BUNS and on portions of Applicant Ga. Peach Buns' discovery responses. Both parties submitted briefs and Applicant submitted the testimony of its founder and President.

Unfortunately for Opposer, however, his registration was cancelled under Section 8 on October 26, 2006. He did not offer any testimony, and nothing in Applicant's testimony or discovery responses supported Opposer's claim. Ergo, the Board dismissed the opposition.

TTABlog comment: The TTAB issued its decision less than one week after Opposer Burkard's registration was cancelled. Apparently the Board was "tipped off" by a letter from Applicant's President, dated October 10, 2006, and pointing out, inter alia, that Opposer had failed to file a timely response to a March 27, 2006 Office Action concerning a Section 8 declaration due for the 30th-year renewal of the pleaded registration.

Text Copyright John L. Welch 2006.

TTAB Reverses Genericness Refusal of "AVENA" for ... Guess What?

Well, maybe that's not a fair question, but whoever said life was fair? The answer is hair care products. The Board reversed a genericness refusal of the mark AVENA for various hair care products, finding that the PTO failed to make the "strong showing" required to establish genericness. In re Interfashion U.S.A., Inc., Serial No. 76573122 (October 18, 2006) [not citable].


Applicant Interfashion acknowledged that its products contain, as one of many ingredients, extracts of oats, and it conceded that "Avena" is the generic Latin name for "oat." The Board observed that "the foreign equivalent of a generic English word is no more registrable than the English word itself."

The Board found the genus of goods to be hair care preparations, and the relevant public to be the public at large (since most everyone buys hair care products). The question then became "whether 'Oat(s)/Avena' is used or understood by the relevant public to refer to the genus of goods."

The Examining Attorney submitted five Internet excerpts: two showing use of the term "Avena" descriptively for beauty products other than hair care preparations; one referring to "Oat extract," but again not for hair care preparations; and two that were arguably generic uses of "Oat" ("Oat Straw Hair Rinse" and "Oat Straw Tincture Bones, Hair, Teeth & Fingernail Formula").

The Board recognized (in view of the Examining Attorney's citations) that "marks which describe a principal or key ingredient of goods or which describe the most important or central ingredient of goods ... have been held unregistrable." Here, however, on this "limited record" it had a doubt whether AVENA is generic for hair care preparations.

"... we are not convinced from the evidence of record that prospective purchasers would understand AVENA to refer to a principal or key ingredient of applicant's hair care preparations."

The Board resolved its doubt in favor of applicant, "thereby allowing any third party who believes it will be damaged to file a petition to cancel."

TTABlog comments: The Board's observation that third parties are free to petition for cancellation brings to mind two points: first, since Applicant was seeking a Supplemental Registration, third parties will not have an opportunity to oppose, but must await registration before objecting. Second, the Board's mention of the cancellation possibility suggests that this case was either a close call, or the Board thinks that the PTO could have done a better job developing the record.

More substantively, what about the application of the doctrine of foreign equivalents to a Latin word? TMEP Section 1207.01(b)(vi) says that a word from a "dead" language may be translated if "to those American buyers familiar with the language, the word would denote its English equivalent."

"Example: Latin is generally considered a dead language. However, if there is evidence that a Latin term is still in use by the relevant purchasing public (e.g., if the term appears in current dictionaries or news articles), then a Latin term is not considered dead. The same analysis should be applied to other uncommon languages."

Here, the Board glossed over the question of whether purchasers of Applicant's hair care preparations would understand "Avena" to mean "oat." [For what it's worth, I can attest that I did not realize "Avena" means "oat," and I had four years of high school Latin and many years of buying hair care products]. The CAFC's recent VEUVE CLICQUOT case (TTABlogged here) held that the doctrine of foreign equivalents applies only when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent. In this case, where's the proof that the purchasing public would understand AVENA to mean "oat?" I doubt that the average American purchaser could even get through "amo, amas, amat," let alone understand an uncommon word like "avena."

Text Copyright John L. Welch 2006.

Recommended Reading: Prof. Barton Beebe on the Trademark Dilution Revision Act

A TTABlog hat tip to Professor Eric Goldman and his Technology & Marketing Law Blog for providing this link to a thought-provoking article by Professor Barton Beebe, entitled "A Defense of the New Federal Trademark Antidilution Law," 16 Fordham Intell. Prop. Media & Ent. L.J. 1143 (2006). Professor Beebe is an Assistant Professor of Law at Benjamin N. Cardozo School of Law, Yeshiva University, in New York City.


Professor Beebe argues that the TDRA "represents a sensible and progressive reform of American federal antidilution protection." Read properly, the TDRA "significantly limits both the subject matter and scope" of Section 43(c).

In his view, much confusion over dilution law stems from the attempt to tie antidilution statutes to Frank Schechter's original dilution concept. Schecter's radical proposal was aimed at protecting a mark's "uniqueness" and "selling power," whereas antidilution statutes are more narrowly focused. Dilution law continues to perplex the courts because antidilution plaintiffs press for broad Schecter-type coverage, relying merely on the similarity of the marks, while the statutes require proof of blurring in the marketplace.

Professor Beebe discusses the origins of the TDRA and provides insightful comments on the its most important provisions, including its adoption of a likelihood of dilution standard, recognition that marks with acquired distinctiveness qualify, rejection of "niche fame," reconfiguration of the "fame" factors, express inclusion of dilution by tarnishment, provision of a list of blurring factors, and expansion of the exclusions for conduct that is not actionable as dilution.

The Professor's conclusion aptly reflects the thrust of his article:

"Schecter's original theory of trademark dilution and antidilution protection was indeed 'radical.' Fortunately, the TDRA does not implement anything like his original theory. Indeed, much confusion could be avoided in the case law and commentary by steering clear of the muddled term 'dilution' altogether. What the Act provides is two very specific forms of trademark protection: anti-blurring protection and anti-tarnishment protection. Plaintiffs will nevertheless urge courts to interpret the Act as an implementation of Schechter's original theory and to find the term 'dilution' a receptacle for all imaginable harms to their marks. Courts must resist this compulsion and they have no better basis for doing so than the specific language of the Act itself."

TTABlog note: Eric Goldman's blog is the best source of information regarding recent developments in "key word" and other Internet-related cases.

Text Copyright John L. Welch 2006.

TTAB Finds "PERMANENT BALLOON PUMP" Generic for ... Guess What?

Answer: "medical and surgical procedure products, namely, permanent implantable, left ventricular assist devices and permanent intra-aortic balloon pumps and parts therefor, namely a blood pump, skin connector and drive unit." Internet evidence and Applicant's own patent led the Board to conclude that the phrase PERMANENT BALLOOON PUMP is generic for Applicant's goods. In re L.Vad Technology, Inc., Serial No. 76291030 (September 14, 2006) [not citable].


The Board not surprisingly found PERMANENT BALLOON PUMP to be a phrase rather than a compound word, and therefore it applied the CAFC's American Fertility test, which requires proof that the relevant public views the phrase "as a whole" to be generic. Dictionary definitions of the individual words cannot alone support the genericness refusal.

"The evidence establishes that the constituent term 'balloon pump' is the name of a class of goods, and that 'permanent balloon pump' is a subset or new entry in that class of goods."

The Board found particularly significant the statement in Applicant's patent that the goods are "described as a permanent balloon pump," and its inclusion of the phrase "permanent intra-aortic balloon pumps" in the identification of goods.

"... the fact that the mark does not include the term 'intra-aortic' is of little significance in view of the other evidence of record. Nor do we find that the term 'permanent' serves a source identifying function merely because it describes a subset of the 'balloon pump' class of goods."

Applicant argued that the uses shown by the Examining Attorney were all in connection with Applicant's goods, but the Board did not miss a beat: "The fact that applicant may be the first or only entity to successfully produce and use a 'permanent balloon pump' does not confer trademark status on an otherwise generic term."

The Board therefore affirmed the refusal to register.

TTABlog comment: Hold on just a second. I agree that PERMANENT BALLOON PUMP should be generic, but did the evidence satisfy the American Fertility test? The Internet evidence did indeed seem to refer to Applicant's product, and the number of items was apparently rather small.

The statement in Applicant's patent was less than convincing evidence: "A dynamic aortic patch ... is sometimes referred to as a mechanical auxiliary ventricle (MAV) or described as a permanent balloon pump." Sounds to me like the generic terms are "dynamic aortic patch" and "mechanical auxiliary ventricle." Perhaps the phrase at issue is merely descriptive, and not the generic name of the product?

Was there enough evidence to establish that the relevant public recognizes the phrase as a generic term? You be the judge.

Text Copyright John L. Welch.

Citable No. 47: TTAB Sets Aside Cancellation Default Judgment for Lack of Service on Respondent

In the 47th citable decision of 2006, the Board swept aside a default judgment entered in a cancellation proceeding because the Respondent was never served with notice of the proceeding. Smart Inventions, Inc. v. TMB Products, LLC, 81 USPQ2d 1383 (TTAB 2006).

SMART BROOM (R)
The challenged registration, for the mark SMART BROOM for brooms, issued to Yellowtop North America, Inc. Three years later, in May 2004, the assignment of the mark (and of the application from which the registration issued) to Respondent TMB was recorded in the USPTO. The cancellation proceeding was instituted in September 2004 naming Yellowtop as the Respondent, and the Board sent notice of the proceeding to Yellowtop. When Yellowtop did not file an answer, a notice of default was issued and subsequently a default judgment was sent to Yellowtop.

Note that, because the notice of proceeding was not returned to the TTAB undelivered, the Board did not publish notification of the proceeding in the Official Gazette. Instead it went directly to the default judgment.

Trademark Rule 2.113(c) requires that the Board forward a copy of the cancellation petition to the respondent. "The respondent shall be the party shown by the records of the Office to be the current owner of the registration(s) sought to be cancelled ...." Here, the Board failed to serve the owner of record, TMB. Therefore, the Board wisely concluded, TMB "was not afforded reasonable notice of the proceeding and an opportunity to respond."

The Board noted that if a judgment is void, "it must be set aside without regard to any potential hardship to the petitioner and there is no time limit on an attack to [sic] a judgment that is void." Thus Petitioner's argument that the Board must apply the balancing test of FRCP 60(b)(4) was misplaced.

TTABlog comment: Note that Petitioner named Yellowtop and not the assignee TMB as the respondent in the petition for cancellation. Nonetheless, under the Rule, the TTAB was obligated to forward the petition to the record owner. This it failed to do.

Why does this decision merit the "citable" designation when it seems to be a fairly straightforward application of the Rules? Perhaps because the Board wanted to make the point that FRCP 60(b)(4) is irrelevant here because the default judgment was void, as they say, ab initio.

Text Copyright John L. Welch 2006.

Three New Judges Appointed to TTAB as TTABlog Celebrates 2nd Anniversary

I knew this would be a big day for TTABlog fans (both of them), but I didn't expect this much excitement! Three new Administrative Trademark Judges have been appointed to the TTAB, bringing the total to 18. (The other 15 TTAB judges are listed here).

Mark A. Bergsman

• Marc A. Bergsman comes to the TTAB from the Washington, D.C. office of Dickinson Wright PLLC, where he has been engaged in the private practice of law for the past twelve years. Prior to his work in private practice, Mr. Bergsman worked at the USPTO as a trademark examining attorney, trademark managing attorney, and, for five years, as an interlocutory attorney at the TTAB. He received his undergraduate degree from Miami University of Ohio and his law degree from the Cleveland Marshall College of Law, Cleveland State University.


• David Mermelstein has served with the TTAB for six years as an interlocutory attorney and, since 2005, as TTAB’s Supervisory Interlocutory Attorney. Before coming to the TTAB, he worked for several years as a trademark examining attorney. He received his undergraduate degree from New College, Hofstra University and his law degree from American University.


• Jyll Taylor has served with distinction for nearly ten years as a TTAB interlocutory attorney. Prior to her work with the TTAB, she worked for a number of years as a trademark examining attorney. She earned her undergraduate degree from the University of North Carolina at Chapel Hill and received her law degree from Howard University School of Law.

Citable No. 46: TTAB Reverses Mutilation Refusal (Again)

In its 46th citable decision of 2006, the TTAB may be sending a message to the PTO: ease off on the mutilation refusals! The Board reversed a refusal to register the mark WSI in the design form shown immediately below, finding that the mark on the application drawing was not a mutilation of the mark as depicted on the specimen of use (shown further below). In re 1175856 Ontario Ltd., 81 USPQ2d 1446 (TTAB 2006).

(mark shown on drawing)
The sole issue before the Board was this: whether the mark, as it appears in the application drawing is a substantially exact reproduction of the mark as used on the specimens. See Trademark Rule 2.51(a), 37 C.F.R. Section 2.51(a). Of course, the focus of the case was on the omission of the curved design element that appears in the specimen.

(mark on specimen of use)
The Board observed that "an applicant may seek to register any portion of a composite mark if that portion creates a separate and distinct commercial impression." If the portion chosen does not create a separate and distinct commercial impression, "the result is an impermissible mutilation of the mark as used."

"the issue of mutilation '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.' In making these determinations, we are mindful of the fact that in an application under Section 1 of the Trademark Act, the applicant has some latitude in selecting the mark it wants to register. TMEP Section 807.12(d)(4th ed. April 2005)."

The Board agreed with Applicant that "the lettering and globe design shown in the drawing create a separate commercial impression apart from the curve design."

"Here, the lettering WSI and the globe design, serving as part of the letter I, join to convey to the consumer the brand name of applicant's services and act together as an indication of source separate from the curve design."

The Board therefore reversed the refusal to register.

TTABlog comment: We just saw two mutilation refusals reversed in August (TTABlogged here), but those two decisions were not citable. The Board turned up the heat on the PTO just a bit by making this one citable.

Text Copyright John L. Welch 2006.

TTAB Finds "PHYSICIAN ENDORSED" Merely Descriptive of Sunglasses, Hats, and Caps

Applicant's goods may have been PHYSICIAN ENDORSED, but its mark was not TTAB-endorsed. The Board affirmed a Section 2(e)(1) refusal to register the mark PHYSICIAN ENDORSED, finding it merely descriptive of sunglasses, hats, and caps. In re Physician Endorsed, LLC, Serial Nos. 78975107 and 78976952 (November 2, 2006) [not citable].


Applicant Physician Endorsed, LLC argued that the mark "is only suggestive, and that Examining Attorney William Breckenfeld "has engaged in 'mental leaps' and 'syllogistic approximations' in finding the mark to be merely descriptive." But the Examining Attorney pointed out that in fact Applicant's products are "approved or endorsed by a medical advisory board comprising physicians." Applicant, in turn, asserted that its goods are accessories that "serve the "primary purpose of being fashionable" and the fact that the goods are recommended by doctors "is secondary in nature and is not necessarily a significant aspect of [the] goods."

Moreover, according to Applicant, the consumer will have to make a "mental leap" in order to discern what exactly is being endorsed by the physician: "The mental leap requires consumers to begin at the mark, PHYSICIAN ENDORSED; look to Applicant's sunglasses and hats; and then determine the reason that the goods are endorsed by physicians."

The Board, however, found that "physician endorsement of the goods is a significant characteristic or feature of the goods." Applicant's website and catalogue stress that its products are endorsed by its medical advisory board, and "come stamped with a seal of approval" from that board. Therefore, the mark PHYSICIAN ENDORSED immediately describes a significant feature of the goods.


Finally, Applicant pointed to third-party Principal Registrations for DOCTOR ENDORSED, CHEF APPROVED, WEATHERMAN APPROVED, and PHYSICIAN DEVELOPED. PEOPLE APPROVED. But the Board once again observed that, while uniform treatment under the Trademark Act is a goal, the TTAB's task is to decide the case based on the record before it.

Text Copyright John L. Welch 2006.

TTABlog Adds Second Google Search Box, Suggested by DDIP Blogger

The flow of TTAB decisions has again been reduced to a trickle. This happens every October, because the judges hurry to churn out opinions before the close of the PTO fiscal year at the end of September. That rush to judgment may explain some of the wacky September rulings, like that in the CHISHOLM smokeless tobacco case (blogged here). In any event, as a result, the first few weeks of October are rather barren from a blogger's perspective.

Mark Reichel
So I'm reduced to writing about the addition of a second Google search box on the TTABlog, in the right-hand column, just below the "Last Ten Posts" list. Go ahead, try it! It works!

A hat tip to Mark Reichel of Ice Miller LLP in Indianapolis for suggesting that I add the new search box. Mark has a blog called "Daily Dose of IP" or DDIP, focusing mostly on patents but with an occasional trademark tidbit, and lots of good links to cases and other stuff. I recommend that you check it out.
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TTABlog Special Report: "The TTAB and Foreign Website Evidence: Quo Vadis?"

The TTAB and Foreign Website Evidence: Quo Vadis?

John L. Welch
Ann Lamport Hammitte
Lando & Anastasi, LLP

With personal computers spreading like a virus, Americans have ever-increasing accessibility to foreign websites. It is inevitable that the Trademark Trial and Appeal Board should be confronted with the issue of how to treat evidence gleaned from foreign sources. PTO Examining Attorneys (like most Americans) make use of the Internet as a source of information, and they occasionally rely on a foreign website to support a refusal to register. Foreign websites may have some relevance to the issue of the meaning of a particular term, but when, and how much? This article will review the rather scanty TTAB case law on the issue – only three citable decisions of relevance – and will pose a few questions regarding the direction the TTAB seems to be taking.

In the distant past – i.e., before the dawn of Internet civilization – the Board considered articles in foreign publications to be of limited evidentiary value because they were unlikely to have "any material impact on the perceptions of the relevant public in this country." See, e.g., In re Men’s International Professional Tennis Council, 1 USPQ2d 1917, 1918 (TTAB 1986) ["it is fair to presume that the Manchester Guardian Weekly has little circulation here, [and thus we cannot] infer that these foreign uses have had any material impact on the perceptions of the relevant public in this country"].

With the arrival of the Internet, one no longer need trek to an international newsstand to access the Manchester Guardian Weekly and other foreign materials; they are often only a mouse-click or two away. But the ready accessibility of foreign websites does not necessarily make them probative of the meaning of a term to the relevant American public.

Recognizing that limited accessibility was no longer a viable justification for excluding foreign materials available on the Internet, the TTAB in In re Remacle, 66 USPQ2d 1222 (TTAB 2002), a citable decision, ruled that foreign website evidence may have probative value in some situations. Applicant Jose Remacle sought to register the mark BIO-CD for "compact discs that are used to test biological matter" and for medical research and diagnostic services, but he was met with a descriptiveness refusal under Section 2(e)(1). The Examining Attorney relied on excerpts from several Internet websites and on articles retrieved from the LEXIS/NEXIS database, in arguing that "cd" is an acronym for "compact disc," that "bio" is an abbreviation for "biological," and thus that BIO-CD describes the intended goods and services. Applicant Remacle challenged several of the Internet excerpts as having little relevance because the websites were of foreign origin. But the Board found the foreign evidence acceptable, distinguishing the Tennis Council decision:

"… there are factors in particular situations where inferences regarding accessibility and familiarity with foreign publications may be made. For example, it is reasonable to assume that professionals in medicine, engineering, computers, telecommunications and many other fields are likely to utilize all available resources, regardless of country of origin or medium. Further, the Internet is a resource that is widely available to these same professionals and to the general public in the United States. Particularly in the case before us, involving sophisticated medical technology, it is reasonable to consider a relevant article from an Internet web site, in English, about medical research in another country, Great Britain in this case, because that research is likely to be of interest worldwide regardless of its country of origin." Id. at 1224 n. 5.

This recognition of the availability of information from the Internet provided the underpinning for the Board’s citable decision in In re Cell Therapeutics, Inc., 67 USPQ2d 1795 (TTAB 2003), involving wire service stories. There, the Board affirmed refusals to register, on the ground of genericness, of CELL THERAPEUTICS, INC. ("INC." disclaimed) for certain bio-chemical signaling pathway modulators and for related laboratory research and development services. The PTO relied on many NEXIS items from wire services (a few from foreign sources), and Applicant argued that in the past the TTAB had accorded such wire service stories limited probative value. The Board, however, distinguished earlier decisions concerning newswire stories by pointing out that here the relevant public comprises highly sophisticated medical doctors and researchers who have access to news wire stores. Moreover, the widespread use of personal computers makes it more likely that news wire stories will reach the general public, and therefore such stories have decidedly more probative value today. [The Board neither cited Remacle nor discussed the probative value of the foreign excerpts].

"This Board would be blind if it did not recognize that during the past fifteen years, there has been a dramatic change in the way Americans receive their news. In the 1980’s personal computers were in their infancy as was the transmission of new stores via the Internet. Put it quite simply, we believe that communications have changed dramatically during the past fifteen years such that by now it is by no means uncommon for even ordinary consumers (much less sophisticated doctors and researchers) to receive news not only via tangible newspapers and magazines, but also electronically through personal computers. Thus, it is much more likely that newswire stories will reach the public because they can be picked up and 'broadcast' on the Internet." Id. at 1798.

The Remacle decision (perhaps with some support from Cell Therapeutics) at least unlocked the door to the acceptance of foreign website evidence: the TTAB indicated that it will give such evidence probative weight if the website is in English, has relevance to the technical subject at hand, and involves users who are "sophisticated," like medical doctors and researchers.

Of course, sophisticated technical people are not the only ones who turn to the Internet for information. Even unsophisticated non-technical consumers encounter foreign websites during their Internet safaris. A recent, citable TTAB decision indicates that non-technical foreign website evidence may have probative weight. In In re King Koil Licensing Co., 79 USPQ2d 1048 (TTAB 2006), the TTAB affirmed a Section 2(e)(1) refusal of THE BREATHABLE MATTRESS (“MATTRESS” disclaimed), finding the mark merely descriptive of beds and mattresses. Citing Remacle, the Board noted that "under appropriate circumstances, web pages posted abroad may be considered probative evidence on how a term will be perceived," even when a consumer product is involved.

"We ... disagree with applicant’s essential contention that a general consumer in the United States would not turn to foreign web sites when researching products they may be planning to purchase. Such consumers may visit foreign web sites for informational purposes, even if they are more likely to focus on internet retailers that can easily ship items or make items available for pick up in a store in a location convenient to the purchaser. That would appear especially likely in a case such as this, where the item in question, a mattress, is large and potentially more expensive to ship than a smaller item."

While the Board refused to "discount entirely" the impact of the foreign website evidence, it did find the websites to be of "much more limited probative value than in the Remacle case." But at least it was willing to give the non-technical foreign website evidence some weight, and it hinted that even more weight might be accorded when the items can be readily shipped or made conveniently available by the Internet retailer, because then a consumer is more likely to visit a foreign website for informational purposes.

But should the likelihood of a website visit be the only criterion for assessing the probative value of the evidence from a foreign website? And even if consumers may visit foreign websites for information about ordinary consumer products, where’s the proof that any appreciable number do so?

If the question at issue is the meaning of a given term, doesn’t the fact the website is of foreign origin make it particularly important to assess the relevance of that website? In "sophisticated" technical fields like science and medicine, "consumers" around the world share a common "scientific" language and vocabulary. But in non-technical fields, this same "universal language" concept arguably does not apply. When it comes to mattresses or diapers or toothpaste, does this same shared language even exist? A website based in, say, Norway may offer information in English, but should its usage of the English language be accorded the same probative weight as a scientific or medical website? Or what about a British website that refers to "nappies" rather than diapers? Should that website be accorded probative value vis-à-vis the use of American English?

As to non-technical products, an important factor would seem to be whether the website is one to which U.S. consumers might reasonably turn for the goods (or services) in question. For example, a consumer looking for information on kitchen knives might look to a British website, or to a French website for information on lace. But for mattresses or diapers, toothpaste or shoes, why should a foreign website be accorded any weight? Why would an American consumer even visit a foreign website for such products?

In sum, the TTAB is just beginning to shape its jurisprudence regarding the admissibility of foreign website evidence. While it may be on the right path with regard to technical websites visited by sophisticated consumers, the way is much less clear when it comes to non-technical website information. Unless the Board has reason to believe that a particular website in a particular country would have some attraction and reliability for the consumer of a given product or service, we suggest that the Board should decline to accord the evidence any probative weight.

Copyright John L. Welch and Ann Lamport Hammitte 2006.

TTAB Posts November Hearing Schedule

You might want to shuffle on over to TTAB headquarters to hear one or more 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 may be found at the TTAB website (lower right-hand corner)].


A total of seven TTAB hearings are scheduled for November:

November 2, 2006, 10 AM: Yves St. Laurent Fashion B.V. v. Goldfinger Hawaii, Inc., Opposition No. 91118017 [Section 2(d) opposition to SL for jewelry, based on Opposer's YSL mark for clothing and jewelry].

November 2, 2006, 2 PM: In re International Foodstuffs Co., Serial No. 78215275 [Section 2(d) refusal of ENERGIZER for animal and pet food, excluding dairy feed in pellet form, in light of the registered mark ENERGIZER 20 for dairy feed in pellet form]. [TTABlog note: I am informed that Applicant's attorney will appear via videconference from California].

November 7, 2006 2 PM: 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].

November 14, 2006 10 AM: In re Cooper, Serial No. 78462908 [Section 2(e)(1) mere descriptiveness refusal of ERSOP for "administration of retirement benefit rollover plans"].

November 14, 2006 2 PM: In re PE Corp., Serial No. 78097617 [Section 2(d) refusals of DIAGNOSTIC CONSTELLATION for diagnostic preparations and clinical medical reagents, in light of the mark CONSTELLATION registered for catheters and automatic liquid handlers].

November 15, 2006 2 PM: In re Tommy Bahama Group, Inc., Serial No. 78482456 [Section 2(e)(4) surname refusal of CAMPOLO for men's shirts].

November 29, 2006 10 AM: In re Pirnie, Serial No. 76555048 [Section 2(e)(2) refusal of CONFERENCE AMERICA as primarily geographically descriptive for various telecommunications services].

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