The TTABlog<sup>®</sup>: December 2006

TTABlog Quarterly Index: October - December 2006

Well, that was a pretty dull quarter, wasn't it? Okay, the new dilution act was signed and three new TTAB judges were appointed, but other than that? Things should pick up early in the new year, when the TTAB announces its Rule changes. The proposed Rules were roundly criticized, so it will be interesting to see what the final Rules look like and how the trademark bar responds. On a personal note, I will co-host the INTA Roundable in January at Lowrie, Lando in Cambridge, will discuss the new TTAB Rules at a Boston Bar Association luncheon in February, and will be speaking at the John Marshall Law School Intellectual Property Law Conference in Chicago in late February.

Section 2(d): likelihood of confusion:

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

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

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

Section 2(e)(3) - primarily geographically deceptively misdescriptive:

Citable No. 53: TTAB Deals "VEGAS" Playing Card Applicant Winning Hand in 2(a), 2(e)(2), and 2(e)(3) Opposition

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

Genericness:

Specimens of Use/Mutilation:

Procedural Issues:

CAFC decisions:

Leo Stoller:

Recommended Reading:

Other:

Text and photographs ©John L. Welch 2006.

TTAB Affirms Mere Descriptiveness Refusal of "FABLESS SOFTWARE COMPANY"

The TTAB had the last ho-ho-ho when it affirmed the PTO's Section 2(e)(1) refusal to register Mistletoe Technologies' mark FABLESS SOFTWARE COMPANY. The Board found the mark merely descriptive of "computer software for use in operating and maintaining computer systems" and "computer software development , and computer software design." In re Mistletoe Technologies, Inc., Serial No. 76547170 (December 14, 2006) [not citable].

Examining Attorney Eli J. Hellman relied on websites and online dictionaries in maintaining that "fabless" refers to an entity that designs semiconductor chips but does not necessarily own or operate its own fabrication foundry. Applicant agreed that "fabless" is a descriptor for a class of semiconductor firms, but contended that its own goods and services are not "fabricationless."

The Board pointed out that, although Applicant itself may not be fabless, "there is no denying that fabless semiconductor firms comprise a significant, and apparently, growing portion of applicant's market."

"A term may be found to be merely descriptive if it names a user of the relevant goods and/or services. *** It is clear that fabless producers would generally use the software of applicant (or from applicant's competitors) in designing and developing their computer chips."

The record showed that the "fabless model" is increasingly taking hold and "is certain to shape the future of the semiconductor industry." Thus, "fabless" is a major characteristic of the semiconductor industry.

The word "software" is "highly descriptive, if not generic" for Mistletoe's goods and services. And the combined term "would be perceived as merely descriptive by those in the semiconductor industry when used in connection with software for designing and developing computer chips."

"These sophisticated customers would know immediately that the combined term, 'fabless software,' has a singular reference to a suite of software intended solely for their industry."

Finally, the addition of the word "company" does not detract from the mark's descriptiveness. The Board has repeatedly held that "a mark which names the type of commercial establishment from which particular goods come is merely descriptive of those goods."

The Board therefore affirmed the refusal to register.

Text Copyright John L. Welch 2006.

USPTO Issues Annual Report for FY 2006

The USPTO has issued its "Performance and Accountability Report" for Fiscal Year 2006. (download here). Director John W. Dudas calls FY 2006 "a record-breaking year for the USPTO, in terms of quality, production, electronic filing, teleworking, electronic processing, and hiring." But what about the TTAB, specifically? Here's what the report has to say:

The TTAB fell just shy of meeting its pendency goal for FY 2006. The goal was to issue final decisions and decisions on trial motions, on average, within ten weeks of the time they were submitted for decision. During FY 2006, the TTAB issued decisions, on average, in 10.9 weeks, although, for the last half of the fiscal year, the TTAB was nearly at goal, issuing decisions, on average, in 10.3 weeks. In FY 2006, the TTAB added an additional option to its suite of electronic filing forms. Now, parties may file confidential documents using the TTAB's electronic filing system, with assurance that these documents will remain accessible only to the TTAB and not to the public at large. For FY 2006, 91 percent of extensions of time to oppose were received and processed electronically, as were 70 percent of notices of opposition and 68 percent of petitions to cancel. During FY 2006, the TTAB launched a pilot program to permit one of its administrative trademark judges to work full-time from an alternate duty station in Dallas, Texas. The TTAB held several electronic oral hearings in the electronic courtroom it shares with the BPAI. The electronic courtroom permits parties to appear before the TTAB and BPAI from remote videoconferencing locations. To provide more legal guidance to the trademark bar and trademark examining attorneys, in FY 2006 the TTAB issued 55 of its decisions as citable precedents, a substantial increase over the number of citable decisions issued in recent years.

Citable No. 54: "ESERVER" Generic for Computer Network Products, Says TTAB

In its 54th citable decision of 2006 (tripling last year's output of citable decisions), the Board affirmed a genericness refusal of ESERVER for "computer network access products, namely, computer hardware and operating software therefor that allow connectivity to and the administration of public and proprietary computer networks and the processing of information contained thereon. " In re International Business Machines Corp., 81 USPQ2d 1677 (TTAB 2006).

Applicant IBM maintained that the PTO failed to meet its burden to show that ESERVER is generic by clear evidence of generic use. The Board, however, ruled that Examining Attorney Tarah Hardy Ludlow established a prima facie case of genericness by submitted evidence that was "significant in quantity." It included "strong evidence from a variety of sorurces" that an "eserver" is a category or sub-genus of a server: i.e., a server with Internet applications.

"Although some of the examining attorney's evidence shows trademark use by applicant and possibly by third parties, and some of her evidence may actually be discussing applicant's ESERVER product, on the totality of the evidence ... we find that she has established prima facie that members of the relevant public primarily use or understand "eserver" to be a reference to this sub-genus of goods."

Applicant IBM's challenge to the PTO's evidence was "not persuasive." Furthermore, IBM's evidence of acquired distinctiveness did not overcome the PTO's prima facie case. [Of course, such evidence cannot convert a generic term into a registrable mark, but the Board considered the evidence in connection with the issue of whether the term was generic in the first place].

"Evidence of generic use and proper trademark use by applicant does not necessarily create a mixed record that would overcome an examining attorney's evidence of genericness. It would be fairly easy for a well-heeled applicant to ensure that its web site and promotional materials, and even articles in the press regarding its products, properly use the applicant's mark. However, in this case, the significant evidence of generic use is not offset by applicant's evidence that shows proper trademark use by applicant and articles regarding applicant's servers."

The Board therefore affirmed the refusal.

TTABlog note: Compare this decision with the recent, citable descision regarding the mark CERTIFIED THERAPEUTIC RECREATION SPECIALIST (TTABlogged here). There, the PTO's evidence of genericness was "offset" by Applicant's evidence of proper usage and, because of this "mixed" record, the PTO fell short of the "clear evidence" standard.

Text Copyright John L. Welch 2006.

Citable No. 53: TTAB Deals "VEGAS" Playing Card Applicant Winning Hand in 2(a), 2(e)(2), and 2(e)(3) Opposition

In its 53rd citable decision of 2006, the Board dismissed an opposition to registration of the mark VEGAS for playing cards, ruling that Opposer United States Playing Card Company had failed to prove its claims that the mark is deceptive (Section 2(a)), primarily geographically descriptive (2(e)(2)), or primarily geographically deceptively misdescriptive (2(e)(3)). United States Playing Card Co. v. Harbro, LLC, 81 USPQ2d 1537 (TTAB 2006).

The Board quickly disposed of the Section 2(e)(2) descriptiveness claim because Opposer did not try to prove that Applicant's playing cards are made or sold in Las Vegas. In fact, Applicant's cards are made in China, and Applicant is located in Michigan.

As to the Section 2(a) deceptiveness claim, the CAFC held in In re California Innovations Inc., 66 USPQ2d 1853 (Fed. Cir. 2003), that the test for determining whether a mark is geographically deceptive under Section 2(a) is the same as the test under Section 2(e)(3), and that the deceptiveness of a geographical term should be considered under Section 2(e)(3). This test focuses on the deception of, or fraud on, the consumer; an opposer must prove that the goods-place association made by the consumer is material to the decision to purchase the goods.

Here, the Board found that VEGAS is an abbreviation for LAS VEGAS, a generally known geographic location. Opposer "submitted evidence sufficient to prove that Las Vegas is well-known for, inter alia, casinos and gambling." Because of this association and the association of gambling with playing cards, "consumers may associate playing cards with Las Vegas." Consequently, the Board concluded that there is a goods-place association between playing cards and Las Vegas.

Opposer, however, failed to satisfy the third prong of the test: a showing "that the misleading goods-place association is a material factor in the customer's decision to purchase applicant's playing cards." Opposer argued that it met this requirement by proving "that there is a market for canceled casino cards from Las Vegas casinos." Moreover, Opposer asserted, materiality may be inferred because there is a "heightened" goods-place association here.

The Board was not persuaded. "Although the evidence demonstrates that consumers are interested in obtaining cards that were used in casinos, the evidence does not establish that they are interested in purchasing playing cards that were manufactured or used in Las Vegas."

The Board declined to draw an inference of materiality. The evidence showed that consumers purchase canceled casino cards because they were used in casinos, not because they were made or used in Las Vegas.

"We disagree with opposer's conclusion that 'the goods-place association between Las Vegas and playing cards is so strong that the Board may presume that the geographical connection between the place and the goods led to the consumer's decision to purchase the goods.' *** This is simply attorney argument without support in the record."

The Board therefore dismissed the opposition

Text Copyright John L. Welch 2006.

Citable No. 52: TTAB Finds "OUTDOOR PRODUCTS" Generic for ... Guess What?

Despite Applicant Outdoor Recreation Group's ownership of two Section 2(f) registrations for the mark OUTDOOR PRODUCTS in logo form (shown immediately below), the Board affirmed a refusal to register the term OUTDOOR PRODUCTS for backpacks and clothing ["PRODUCTS" disclaimed in all three] because it found the term to be generic for the goods, or in the alternative, merely descriptive. In re The Outdoor Recreation Group, 81 USPQ2d 1392 (TTAB 2006).

Applicant argued that the PTO's refusal amounted to an "impermissible attack" on its incontestable registration for the mark shown on the left for overlapping goods. [As to the mark on the right, the registration covers the identical goods as the subject application.] Applicant further asserted that the PTO's refusal is inconsistent with the Office's treatment of the two prior marks. And in any case, according to Applicant, the PTO's evidence was insufficient to establish genericness. As to the 2(e)(1) refusal, Applicant claimed that its use of the mark for more than 30 years provides "clear evidence of acquired distinctiveness."

The Board ruled, not surprisingly, that OUTDOOR PRODUCTS is "somewhat more analogous to the phrase considered by the court in American Fertility than the compound word considered in Gould. Therefore, dictionary definitions alone cannot support a genericness refusal. In any case, the articles and advertisements submitted by Examining Attorney Martha L. Fromm established that "outdoor products" is the name of a class of goods.

Moreover, the Board ruled, the PTO's refusal does not constitute a collateral attack on Applicant's prior incontestable registration. First, genericness is alway an available ground for cancellation of an incontestable registration. Second, the mark and the goods of the registration differ from that of the subject application. Ownership of an incontestable registration "does not give the applicant a right to register the same or similar mark for different goods or services, even if they are closely related to the goods or services set forth in the incontestable registration."

Likewise, as to the argument regarding inconsistent treatment, the Board noted once again that "each application for registration of a mark for particular goods or services must be separately evaluated." As to the first registration, the marks and good differ. As to the second, although the goods are the same, the marks differ.

The Board concluded that the Applicant had failed to rebut the PTO's "strong showing" of genericness.

For the sake of completeness, the Board also considered the alternative mere descriptiveness refusal under Section 2(e)(1) and the PTO's rejection of Applicant's Section 2(f) evidence. Although Applicant used the subject phrase since 1974, it failed to submit any additional evidence of acquired distinctiveness. The record was devoid of "direct evidence that the relevant purchasers of applicant's goods view OUTDOOR PRODUCTS as a distinctive source indicator therefor." Give the "highly descriptive nature" of OUTDOOR PRODUCTS, the Board "would need to see a great deal more evidence (especially in the form of direct evidence from customers)."

The Board therefore affirmed the Section 2(e)(1) refusal.

TTABlog note: For a discussion of the Board's two-headed genericness test, which treats compound words and phrases differently, see the TTABlog posting here.

Text Copyright John L. Welch 2006.

TTAB Deems "SMART SENSOR" Merely Descriptive of Interactive Toys

Apparently recognizing that American consumers are not as dumb as they look, the Board affirmed a Section 2(e)(1) refusal of the mark SMART SENSOR, finding it merely descriptive of “interactive electric action toys.” In re Fong, Serial No. 78504723.

U.S. Patent No. 6,309,275"Interactive Talking Dolls"Peter Sui Lun Fong, co-inventor
Applicant Peter Sui Lun Fong argued that "smart" and "sensor" have multiple meanings, and therefore that the mark SMART SENSOR “does not communicate, without further analysis, a clear understanding of applicant’s goods.” Consequently, according to Mr. Fong, the mark is at most suggestive.

Examining Attorney David Collier asserted that “due to the prevalence of computer technology in daily life, consumers are accustomed to encountering technology-based terms and understanding the meaning thereof.” He submitted definitions of the component terms, Internet web pages and GOOGLE search results, and registrations owned by Applicant Fong and others in which “smart” and “sensor” are disclaimed.

The Board found Fong wrong, pointing out that it must consider the definitions “within the context of the goods for which registration is sought.” It ruled that the mark “merely describes the characteristic of interactive electronic action toys, namely that the toy features highly automated electronic controls that imitate human intelligence by receiving and responding to a signal or stimulus, i.e., a ‘smart sensor.’”

Consequently, the Board affirmed the refusal to register.

Text Copyright John L. Welch 2006.

TTAB Remands "COCAINE" Energy Drink Application to Examining Attorney

On December 6, 2006, the TTAB granted the request of Examining Attorney Michael Engel for remand of James T. Kirby's application for registration of the mark COCAINE for "carbonated and non-carbonated soft drinks and energy drinks." See Trademark Rule 2.130. The Board simultaneously suspended the pending opposition brought by Americans for Drug Free Youth, Inc. and Progressive Intellectual Property Law Association. (Opposition No. 91173295). (Order here).

The Examining Attorney stated that further review of the file necessitated the remand in order that the PTO could request further information and could assert refusals under Sections 2(a) and 2(e)(1). As to the former refusal, the PTO now finds the mark immoral or scandalous. As to the latter, depending on whether the subject drinks contains cocaine, the mark is either merely descriptive or deceptively misdescriptive. In that regard, the PTO requires additional information regarding the ingredients of the drinks.

The PTO's action was apparently precipitated in part by the opposition brought by five Cleveland State University law students, which raised the "immoral and scandalous" ground as well as the deceptive misdescriptiveness issue.

TTABlog comment: Note that the Section 2(e)(1) refusal(s) may be overcome by a showing of acquired distinctiveness under Section 2(f). Not so, however, as to the Section 2(a) refusal.

Text Copyright John L. Welch 2006.

"THE HOME DIGITAL JUKEBOX" Merely Descriptive, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register THE HOME DIGITAL JUKEBOX [DIGITAL JUKEBOX disclaimed], finding it to be merely descriptive of a “digital music audio recording and playback system consisting of a recorder/playback unit, speakers and remote control.” In re Gibson Guitar Corp., Serial No. 76610100 (October 23, 2006) [not citable].

Applicant Gibson contended that its mark is “comprised of four words which have never been combined in exactly this way before.” It argued that the phrase is incongruous and therefore inherently distinctive because ‘jukeboxes are traditionally found in smoky bars and other commercial establishments, not homes.” The Board refused to dance to that tune. “[E]ven if Applicant were the first or only user of the four-word composite THE HOME DIGITAL JUKEBOX, that fact would not negate the mere descriptiveness of the mark." Moreover, even if “traditional” jukeboxes (playing vinyl records or compact discs) are found in commercial establishments, the PTO’s NEXIS and Internet evidence clearly established that digital jukeboxes are for home use as well. Thus, the Board found nothing incongruous about combining THE HOME and DIGITAL JUKEBOX.

"DIGITAL JUKEBOX is a generic name for the goods, and THE HOME merely describes where that digital jukebox may be created and/or used. The composite mark is as merely descriptive as its components are separately."

Finding Applicant's arguments to the contrary to be "wholly unpersuasive," the Board affirmed the refusal to register.

Text Copyright John L. Welch 2006.

Finding Spa Services and Beauty Products Related, TTAB Affirms 2(d) Refusal of "LOVEJOY"

Third-party registration evidence once again proved fatal to an applicant seeking to overcome a Section 2(d) refusal. In In re Taylor Tate, Inc., Serial No. 78463524 (December 1, 2006) [not citable], the Board found Applicant's spa services to be related to hair and skin care products, and it consequently affirmed a Section 2(d) refusal of the mark shown immediately below [DAY SPA & SHOP disclaimed] in light of the registered mark LOVJOI.

Examining Attorney Ingrid C. Eulin argued that Applicant's services and Registrant's goods are "complementary and registrant's goods could be sold along with or as part of applicant's services." Third-party registrations demonstrated that "entities have registered a single mark for both spa services and hair and/or skin care products." Applicant did not dispute the Examining Attorney's contention, and so the Board, citing In re Albert Trostel & Sons. Co., 29 USPQ2d 1783 (TTAB 1993), found the goods and services related.

As to the marks, the Board agreed with the PTO that the word LOVEJOY is dominant in Applicant's mark, and is similar in sound and appearance to LOVJOI. Applicant lamely contended that "'LOV' does not sound like 'LOVE' as the 'O' in 'LOVE' is pronounced as 'luv' (having a short 'U' sound) and the 'O' in 'LOV' has a short 'O' vowel sound ... and 'JOY' does not sound like 'JOI.'" The Board was not in love with that argument, and its response gave little joy to Applicant.

"While it is possible that LOVJOI could be pronounced differently from LOVEJOY, there is no correct pronunciation of a non-standard term."

Moreover, the Examining Attorney submitted several newspaper excerpts in which "love" is written as "lov," indicating that "consumers are accustomed to pronouncing 'lov' as 'love.'" [E.g., "As a Bears fan for life, I want Lovie Smith to go 12-4, not 4-12. Love to luv ya, Lov."]

Chicago Bears coach Lovie Smith
Finally, the Board concluded that the marks are "very similar in appearance," and as to connotation, "at a minimum, when pronounced both evoke the words LOVE and JOY." The overall commercial impression of the marks is similar, the descriptive wording and design element in Applicant's mark being insufficient to distinguish the marks.

The Board therefore affirmed the refusal to register.

TTABlog note: In Boston and environs, the term "spa services" has an entirely different meaning.

Barca's SpaWatertown, MA(Click on photo for larger picture)
Text and "Barca's Spa" Photograph Copyright John L. Welch 2006.

TTAB Affirms Service Mark Refusal: Specimen Failed to Show Service Mark Use.

The Board affirmed a refusal of the mark WIRELESS MEDICAL TECHNOLOGY under Sections 1, 2, 3, and 45 of the Lanham Act because the specimen did not show the mark "used to identify and to distinguish" Applicant's electromagnetic energy treatment services. In re Diapulse Corp. of America, Serial No. 76592393 (December 6, 2006) [not citable].

The specimen submitted by Applicant Diapulse comprised a four-page brochure for its "DIAPULSE Wound Treatment System." The subject mark was displayed on the last page of the brochure in the manner shown below:

Portion of Specimen of Use
The issue was the acceptability of the brochure as evidence of service mark use. Examining Attorney Elizabeth M. Winter did not challenge Applicant's statement that it renders electromagnetic energy treatment services, that such services are "registrable services," or that a mark may function as both a trademark and a service mark.

"The problem that the Examining Attorney has with the brochure specimen is that it makes absolutely no reference to the applicant's services. It is the Examining Attorney's position that a service mark specimen must make some reference to the services, otherwise there will be no association between the mark sought to be registered and the services specified in the application."

The Board observed that here the specimen makes "absolutely no reference, not even an indirect reference" to the recited service. Nor was there any evidence that the mark is used in connection with advertising the services, nor that it is used in the rendering of the services.

"The crux of our analysis is that a purchaser or prospective purchaser of applicant's services (either electromagnetic energy treatment services or the rental of applicant's product) would view the mark in the brochure as referring to applicant's product, the Diapulse® electromagnetic medical treatment system. We have no basis upon which to conclude that purchasers would regard the mark as anything other than a trademark."

The Board therefore affirmed the refusal.

TTABlog note: The reader will recall that a specimen that shows the mark used in the course of performing services is generally acceptable. See, e.g., In re Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984) (photograph of costume worn by performer during performance of entertainment services held to be an acceptable specimen). Also see TMEP Section 1301.04(b) and the TTABlog posting here.

Text Copyright John L. Welch 2006.

Google Introduces New Patent Search Engine

The patent attorney in me cannot help noting the new GOOGLE search engine for patents. I've already used it to good effect in connection with a golf putter patent application that I'm reviewing.

Google has indexed more than 7 million issued patents. A full text search can be conducted at the Google Patent Search homepage (here). An Advanced Patent Search page (here) allows one to search by specific criteria, like patent number, inventor, and filing date.

You can read more about it here at Dennis Crouch's Patently-O blog.
.

Stoller Trustee Consents to Dismissal of "GOOGLE" Cancellation, With Prejudice

TTAB decisions are trickling out at a pathetic pace. What's a TTABLogger to do? If that wasn't annoying enough, the Board apparently has ceased issuing a weekly chart of its final decisions. Instead it is offering a new search engine (here) that one may peruse for the latest rulings: it's called the "USPTO eFOIA page." [This is not a particularly user-friendly search engine; in fact, it's a bit of a pain in the neck. E.g., why isn't the default "TTAB Decision" rather than "Cancellation?"] In any case, with so few Board decisions being issued these days (as a search of the USPTO eFOIA page will show), we might as well check up on Leo Stoller and his activities.

You may recall that a Stoller company called Central Mfg Co. (Inc.) filed a "quixotic" petition for cancellation of Registration No. 2,806,075 for the mark GOOGLE for search engine services. (See TTABlog posting here). A check on the status of that proceeding reveals that the Trustee of Stoller's bankruptcy estate recently stipulated to a dismissal with prejudice in a filing dated December 8th. (here).

"With the consent of Registrant/Respondent, Petitioner, by and through Richard M. Fogel, not individually but as Chapter 7 Trustee duly authorized by Order of the United States Bankruptcy Court of the Northern District of Illinois to act on behalf of Petitioner herein ... hereby withdraws and dismisses with prejudice the Petition for Cancellation in this proceeding. All pending motions are hereby withdrawn and deemed moot."

The dismissal was signed by Trustee Fogel and by Google, Inc.'s counsel. Under Rule 41(a)(1), Fed. R. Civ. P., that stipulated dismissal should automatically terminate the case without the need for further Board action.

So much for Mr. Stoller's challenge to the GOOGLE registration.

Text Copyright John L. Welch 2006.

TTAB Affirms 2(e)(4) Surname Refusals of "ABANTE" and "RUXTON PHARMACEUTICALS"

If you expect to overcome a Section 2(e)(4) surname refusal, you'd better come up with better arguments than the two applicants below: for example, a solid, non-surname meaning might do the trick, or maybe a showing that the surname is exceedingly rare, or maybe that the mark doesn't have the "look and feel" of a surname. Most of the time, though, the refusal is affirmed, and that's just what happened here.

In In re Ruxton Pharmaceuticals, Inc., Serial No. 78496761 (October 31, 2006) [not citable], the Board affirmed a surname refusal of the mark RUXTON PHARMACEUTICALS for pharmaceuticals. Examining Attorney Marcie R. Frum Milone provided a USFIND database listing of 115 entries for individuals with the surname RUXTON, various website pages and articles using RUXTON as a surname, and “negative” dictionary evidence indicating that RUXTON lacks any non-surname significance. She also contended that RUXTON has the “look and feel” of a surname.

Applicant argued that RUXTON is a very rare surname that has other meanings (a town and creek in Colorado, and a city in Maryland), and it pointed out that no one in the corporation “possesses the name ‘Ruxton.’”

The Board agreed that RUXTON is “not a common surname” and is “somewhat rare.” However, the database listing showed use of the surname across the country, and therefore the Board found that the mark's surname significance “would be recognized by prospective purchasers.” The geographical uses of RUXTON were insignificant, and did not detract from its primary meaning as a surname. Finally the Board found that the term has the look and feel of a surname. And the addition of the generic term PHARMACEUTICALS could not overcome the surname significance.

In In re Lockton Companies, Inc., Serial No. 78461678 (November 13, 2006) [not citable], the Board affirmed a surname refusal of ABANTE for human resources and employee benefits consulting. Examining Attorney Robert J. Lavache submitted NEXIS search results revealing 355 residential listings for individuals with the surname ABANTE, along with 8 articles and several dozen website hits. Negative dictionary evidence showed "no entries for the word 'abante.'"

Applicant Lockton argued that ABANTE is an '"extremely rare" surname (and that only 82 of the PTO's listings were not duplicates), that it has other meanings because it is the Latin root word for "advance" or "advantage," that no one associated with Applicant has the surname ABANTE, and that ABANTE does not have the look and feel of a surname.

The Board agreed that ABANTE is a rare surname, but pointed out that even a rare surname is unregistable (absent secondary meaning) if its primary significance is that of a surname. The PTO's evidence sufficed to establish a prima facie case in that regard.

The fact that no one in Applicant's organization has the surname ABANTE does not favor Applicant, but is merely neutral. As to the supposed other meanings of ABANTE, the Board doubted that the purchasing public would be aware of its significance as a Latin term. In fact, the Board noted, Applicant considered it necessary to provide the meaning of the Latin term ABANTE at its home page. In short, the Board found that ABANTE has no other recognized meaning other than as a surname.

Finally, as to look and feel, the Board noted that ABANTE is like various surnames having the "-ante" suffix: Amante, Asante, Assante, Adante, and Arante. It therefore found (in admittedly a subjective determination) that ABANTE has the look and feel of a surname.

Applicant noted that its mark was originally refused registration under Section 2(d) in light of two registered ABANTE marks, and it therefore argued that the PTO has in the past "appropriately given the mark ABANTE trademark significance." But the Board once again pointed out that it is not bound by these prior determinations of registrability, and that each case must be decided on its own set of facts.

TTAB Comment: A search for the word "surname" in the TTABlog Search box yields the following marks refused registration on Section 2(e)(4) grounds: DR. BRANDT, CHISHOLM, BRANIFF, COLGATE SAILING SCHOOL, LAURENTI, BREIL, GIGER MD, MEARS, PICCIOTTI, EBNER, MARAJ, ULVANG, and FRANKE.

Refusals were reversed by the Board for SIKORSKI, VAULTZ, J.W. FOSTER, FIORE, LATAS, and MOSCONI. Can you guess why these marks got off the hook?

Text Copyright John L. Welch 2006.

"PROGRAMMED PROTEIN" Merely Descriptive of DNA Research Services, Says TTAB

Affirming a Section 2(e)(1) refusal to register, the Board found the mark PROGRAMMED PROTEIN to be merely descriptive of "medical research services relating to DNA and gene synthesis." In re Centocor, Serial No. 78448489 (November 29, 2006) [not citable].

Examining Attorney Evelyn Bradley relied on a dictionary definition of "programmed" and on Internet excerpts and NEXIS articles using the phrase "programmed protein" or the individual words in various medical contexts. Moreover, Applicant Centocor's business plan stated that its services will involve the design and development of protein pharmaceuticals and that the proteins are produced "by programming the sequence into the synthetic DNA and expressing it in the host cells." The Board therefore concluded that "protein" is descriptive of Applicant's services "inasmuch as it is the resulting product of the services." "Programmed" is likewise descriptive "inasmuch as it is the means by which the services create the product."

Centocor argued that its mark "refers to the use of a computer for the design of the proteins, and hence the use of the term PROGRAMMED." The Board, however, pointed to the PTO's dictionary evidence to find that the term PROGRAMMED "has a meaning in the genetic field that directly describes what applicant does: to code in an organism's program; to provide with a biological program."

Centocor further contended that "the simple term PROGRAMMED PROTEIN does not aptly describe these complicated and sophisticated medical research services." Moreover, it urged that no one else uses the term PROGRAMMED PROTEIN.

As to the latter point, the Board reiterated that even if Applicant were the first and only user of the term, that does not mean that the term is not merely descriptive. As to the former, the problem with Applicant's argument is that the mark must be considered in the context of Applicant's services, not in the abstract.

The Board opined that the average consumer of Applicant's research services "would certainly know and be familiar with the terms programmed and protein as used in the field of DNA and gene synthesis." It concluded that "PROGRAMMED PROTEIN immediately describes, without need for conjecture or speculation, a significant feature or function of applicant's services, namely the provision of programmed proteins."

Therefore, the Board affirmed the Section 2(e)(1) refusal.

TTABlog note: Certain of the PTO's website evidence came from foreign sources, but the Board rejected Centocor's argument that this evidence was therefore irrelevant, noting the "highly technical nature of the services and the sophistication of the prospective customers for the services," and citing In re Remacle. For a discussion of Remacle and the probative value of foreign website evidence, see Welch and Lamport Hammitte, "The TTAB and Foreign Website Evidence: Quo Vadis?," 20 Allen's Trademark Digest No. 6 (December 2006).

Centocor also contended that "cached pages" are not "competent evidence of the current use of the terms under consideration." The Board disagreed, observing that cached pages "do provide evidence of use of a term just as an excerpt from an earlier magazine publication or old newspaper article would."

Text Copyright John L. Welch 2006.

CAFC Affirms TTAB "GOLD SEAL" Laches Decision

In a nonprecedential ruling, Teledyne Technologies, Inc. v. Western Skyways, Inc., Appeals Nos. 2006-1366 and 2006-1367 (December 6, 2006), the CAFC affirmed the TTAB's denial of Teledyne's petition for cancellation of a registration for the mark GOLD SEAL for aircraft engines. The TTAB had applied the doctrine of laches, based on Teledyne's 44-month delay in seeking cancellation. [TTAB decision here; TTABlogged here].

The appellate court noted that "whether likelihood of confusion exists is a question of law based on underlying factual determinations." It ruled that the Board's factual findings were supported by substantial evidence, and that a likelihood of confusion was established, "especially since any doubt is resolved in favor of the prior user."

As to laches, "this is an equitable defense and the Board's ruling is reversible only for abuse of discretion." Teledyne argued that the TTAB "abused its discretion in applying laches because Western Skyways adopted GOLD SEAL in bad faith." And it asserted that the Board erred in failing to find "inevitable confusion."

The court was not moved. It saw no error in the Board's rejection of the "inevitable confusion" argument, and the record was devoid of evidence that Western Skyways acted in bad faith. Therefore, the Board "did not abuse its discretion or otherwise err in applying laches."

Text Copyright John L. Welch 2006.

PTO Plans Modifications to Design Search Codes

On December 6, 2006, the USPTO issued a Notice regarding its plan to add some 80 new design search codes to the Trademark Design Search Code Manual. Those of you who memorized the prior design coding will be most affected by these changes.

MODIFICATIONS TO DESIGN SEARCH CODES
On or about January 7, 2006 [sic!], the USPTO is planning to add approximately 80 new design search codes to the Trademark Design Search Code Manual. Many of the larger existing design code sections will be modified to create smaller sections. For example, 01.01.02 will be changed by removing any live documents that have a design with multiple stars with four points and putting these documents into a new code (01.01.12). This will leave all the single stars with four points in 01.01.02. It will also leave all inactive registrations in 01.01.02 whether they have one or more stars with four points. The new design codes will be applied to all new incoming trademark applications and to currently active (live) trademark applications and registrations in USPTO's automated trademark systems. They will not be applied to inactive (dead) registrations.

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Citable No. 51: TTAB Upholds 2(d) Refusal of "PSYCHO" for Clothing, But Overturns Mutilation Refusal

In its 51st citable decision of 2006, the Board not surprisingly affirmed a Section 2(d) refusal to register the mark PSYCHO for clothing, in light of the registered mark PSYCHO for clothing. However, as to the PTO's mutilation refusal, the Board said "nuts." In re Big Pig, Inc., 81 USPQ2d 1436 (TTAB 2006).

Applicant's specimen of use
Likelihood of confusion: Applicant Big Pig, Inc. trotted out what may be the losingest TTAB argument: it attempted to limit the goods of its application and the cited registration by referring to the actual channels of trade and manner of use of the marks. [See Welch, "The Top Ten Losing TTAB Arguments"]. Big Pig asserted that its goods are sold only at its barbecue restaurants, and that Registrant's items are sold at skateboarding and sporting goods stores. The Board, of course, stated for the umpteenth time that the issue of likelihood of confusion must be determined in light of the goods as identified, "regardless of what the record may reveal as to the particular nature of the goods, their actual trade channels or the purchasers to which they are in fact directed and sold."

As to the marks, Big Pig imaginatively argued that the meaning of PSYCHO differs dramatically in the two marks, because its mark "connotes a sauce so spicy and delicious that it makes the diner crazy," whereas Registrant's mark relates to the extreme sport of skateboarding and "creates the implication that the sports (sic) are so intense, so thrilling, and by inference so dangerous, that one would be crazy to try them." Again, the Board refused to look beyond the marks as set forth in the application and registration. In other words, the fact that on its specimen of use Big Pig's mark is displayed along with the words "Bubbalou's Bodacious Bar-B-Que" and design elements featuring a pig and fire, is irrelevant.

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

Mutilation: The Examining Attorney contended that, as a result of "the spatial proximity" of the word PSYCHO to the other elements on the specimen, they "could be perceived by the consumer as unitary in scope." The Board embraced Big Pig's position, finding that the word PSYCHO creates a separate and distinct commercial impression apart from the other words and the design elements.

"... as is noted by applicant, the word PSYCHO is displayed in a different color, type style, and size such that it stands out from the remaining words and design element. The word PSYCHO has, in this display, the look of graffiti painted over a logo. It does not appear to be part of the logo."

As it stated in its most recent mutilation reversal (TTABlogged here), "the Board is 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 wishes to register." In re 1175856 Ontario Ltd., Serial No. 78442207 (October 26, 2006).

The Board therefore reversed the mutilation refusal.

Text Copyright John L. Welch 2006.

Citable No. 50: "GENUINE RIDE SKIN CARE" & Design Not Confusingly Similar to "GENUINE SKIN," Says TTAB

The Board dismissed a Section 2(d) opposition to registration of the mark GENUINE RIDE SKIN CARE & Design (shown immediately below) for skin care products, finding it not confusingly similar to the marks GENUINE SKIN, GENUINE BODY, GENUINE SPA, and GENUINE FACE for skin soaps and lotions. Truescents LLC v. Ride Skin Care, L.L.C., 81 USPQ2d 1334 (TTAB 2006).

The Board first disposed of two preliminary issues: Opposer Truescents' claim of ownership of a family of GENUINE marks, and Applicant Ride's purported "fair use" defense. As to the former, the Board once again rejected the family-of-marks claim because Truescents "failed to present any evidence showing that it has advertised and promoted its asserted GENUINE marks together as a family...." As to Applicant's fair use claim, the Board pointed out that, although a fair use defense may be available in a civil action, "it has no applicability in inter partes proceedings before the Board, which deal with the issue of registrability." Moreover, even if the defense were available, Applicant Ride could not rely on it because it was "not using the words GENUINE SKIN merely in a non-trademark, descriptive manner, but instead has included those words as part of the mark it seeks to register."

Turning to application of the du Pont factors, the Board began with Opposer's mark GENUINE SKIN, "because that is the mark upon which opposer has based essentially all of its likelihood of confusion arguments and because that is the mark ... which on its face arguably resembles applicant's mark most closely."

As to the goods, the Board found them legally identical or otherwise closely related. Ride argued that its products are marketed to purchasers in the "motorcycle market" rather than in the mass market retail channels in which Opposer's products appear. Of course, that argument had no traction, since neither Applicant's nor Opposer's identification of goods is limited as to trade channels or purchasers.

The key issue, then, was the similarity of the marks. The Board found the word RIDE to be the dominant feature in Applicant's mark; the words GENUINE SKIN CARE "contribute relatively less to the source-indicating significance of the mark." As to Opposer's mark, the dominant feature is GENUINE, since SKIN "is generic or descriptive and essentially without source-identifying significance." GENUINE is "inherently a weak, laudatory term which is entitled only to the narrowest scope of protection." Forty-six third-party registrations submitted by Applicant, in which the word GENUINE is disclaimed, corroborated "the essentially laudatory meaning and significance of GENUINE." The Board found that the marks look different, sound dissimilar, have different connotations, and create different commercial impressions, leading to the conclusion that the marks are "dissimilar rather than similar."

"... any similarity between the marks which results from the presence of that laudatory and weak word in both marks is greatly outweighed by the obvious dissimilarities between the marks, most importantly the presence of the arbitrary word RIDE in applicant's mark and the absence of that word in opposer's mark."

In short, the Board found the dissimilarity between the marks to be dispositive.

As to Opposer's other three marks -- GENUINE BODY, GENUINE SPA, and GENUINE FACE -- each of these marks is "even less similar to applicant's mark than is the GENUINE SKIN mark." Again, "the dissimilarity of the marks is dispositive in each case."

The Board therefore dismissed the opposition.

Text Copyright John L. Welch 2006.

Citable No. 49: TTAB Upholds Disclaimer Requirement of "ROUGE" in "GALA ROUGE" for Wine

In its 49th citable decision of the year, the Board affirmed a PTO requirement that Applicant Brown-Forman disclaim the word ROUGE in its mark GALA ROUGE for wine. In re Brown-Forman Corp., 81 USPQ2d 1284 (TTAB 2006).

Applicant did not dispute that the word "ROUGE," by itself, would be understood as French for "red," and that it is therefore merely descriptive of Applicant's wines. The real dispute was whether GALA ROUGE is a unitary mark, in which case ROUGE need not be disclaimed.

"Stated differently, would ROUGE be perceived by purchasers merely as a descriptor of a characteristic of applicant's wine, i.e., its color or type, or would purchasers perceive ROUGE in applicant's mark as a modifier of the word GALA, creating the unitary expression GALA ROUGE which would be understood as 'red party' or 'red celebration'?"

Applicant likened its mark to the terms BATON ROUGE and MOULIN ROUGE, and relied as well on registrations (sans disclaimers of "rouge") for the following marks for wine: LE MULET ROUGE ("the red mule"), POINT ROUGE ("red dot"), TERRE ROUGE ("red earth"), CORDON ROUGE, BLANC DES COLINES ROUGE ("white wine from the red hills"), MONT ROUGE COLLECTION, LA FLEUR ROUGE ("the red flower"), and PRINCE ROUGE ("red prince"). The Board, however, was not moved.

With regard to MOULIN ROUGE, the Board refused to take judicial notice as to the familiarity of U.S. purchasers with that term. In contrast, the Board noted that standard reference works named BATON ROUGE as the capital of Louisiana. But BATON ROUGE is distinguishable from GALA ROUGE because the former has a "pre-existing, well-recognized unitary significance (as the name of a city)." GALA ROUGE does not.

As to the previously registered marks, "the word ROUGE in such expressions clearly refers to and modifies the preceding noun, not the wine itself, because those nouns denote things that are or could be colored 'red.'"

"A 'gala,' by contrast, is not a thing which would or could normally be described as being 'red.' 'Red gala' has no obvious, immediate and inherent unitary significance which would cause purchasers to view ROUGE as modifying GALA, rather than as describing the wine." *** The mere grammatical coherence of 'red gala' does not suffice to make GALA ROUGE a unitary expression in the eyes of purchasers."

The Board noted Applicant's marketing efforts ("Don't forget to serve your favorite Gala Rouge wine. Then party red!") but pointed out that the marketing motif "is not part of the mark sought to be registered, and it could be changed or abandoned at any time, leaving simply the words of the mark, GALA ROUGE."

In sum, the Board found that GALA ROUGE for wine is not a unitary mark, and therefore that the requirement for a disclaimer of ROUGE was appropriate.

Text Copyright John L. Welch 2006.

TTAB Posts December Hearing Schedule

The TTAB cases on tap for December 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)].

Eight TTAB hearings are scheduled for December:

December 5, 2006, 10 AM: In re Invista North America S.A.R.L., Serial No. 78598843 [Section 2(d) refusal of XTRA LIFE LYCRA for fabric for the manufacture of clothing, in light of the registered mark XTRALIFE for fabrics for napery].

December 5, 2006, 2 PM: In re Cosmetic Essence, Inc., Serial No. 78285127 [Section 2(d) refusal of SIMPLYME SPA for personal care products and room fragrances, in view of the mark SIMPLY SPA, registered for personal care products and candles].

December 6, 2006 11 AM: In re Smith, Serial No. 78316052 [2(d) refusal of LINGUALINX for foreign language translation and interpretation services, deemed confusingly similar to the registered mark LANGUAGE LINK for "translation of and interpreting foreign languages."]

December 6, 2006 2 PM: Coding Technologies GmbH v. American Audio Components, Inc., Opposition No. 91156766 [Opposition to registration of the term AAC for audio products and component parts, on the grounds of mere descriptiveness, deceptive misdescriptiveness, and genericness].

December 7, 2006 10 AM: In re The Enterpreneur Channel, Inc., Serial No. 78273535 [Section 2(e)(1) mere descriptiveness refusal of THE ENTREPRENEUR CHANNEL for television shows].

December 7, 2006 2 PM: Evolutions Healthcare Systems Inc. v. Evolution Benefits Inc., Opposition No. 91158602 [Opposition to registration of EVOLUTION BENEFITS for goods and services relating to employee benefits, based on the marks EVOLUTIONS HEALTHCARE SYSTEMS and EVOLUTIONS for healthcare plans and medical cost-containment services].

December 14, 2006 2 PM: In re Tyco Plastics Services AG, Serial No. 78431431 [Section 2(d) refusal of PARTYPAL for a "disposable plastic plate containing a beverage holder" in view of the registered marks MERRY PALS, SPORTS PALS, and ZOO PALS for disposable dinnerware].

December 21, 2006 2 PM: In re Cooper, Serial No. 78462908 [Section 2(e)(1) mere descriptiveness refusal of ERSOP for "administration of retirement benefit rollover plans"].

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

TTAB Denies Stoller Motion to Block Trustee's Stipulated Dismissal of STEALTH Opposition

The TTABlog reported on October 16th (link) that the Chapter 7 Trustee for the bankruptcy estate of Leo Stoller was agreeable to dismissal without prejudice of pending proceedings involving the mark STEALTH.

Accordingly, an Agreed Motion to Dismiss was filed in Central Mfg. Co. v. Pocekovic, Opposition No. 91164582, signed on behalf of Opposer by Richard E. Fogel as the Trustee of the Stoller estate. The Board promptly dismissed the proceeding without prejudice (here).

Stoller then sought reconsideration of the dismissal, claiming that he had filed a notice of appeal from the bankruptcy court's order converting his Chapter 13 bankruptcy to Chapter 7, and therefore that the Trustee lacked authority to enter into an agreement of dismissal. However, as pointed out by Applicant Pocekovic (and his counsel, the estimable Lance Johnson), Stoller had in fact failed to timely or properly appeal from any of the bankruptcy court's orders.

The Board, in a November 29, 2006 ruling (link), agreed with Applicant Pocekovic, finding that "Mr. Stoller is without authority to file papers in this proceeding, that the authority to act in the matter remains vested with the trustee and the proceeding remains dismissed and terminated."

TTABlog comment: Let's all hum a few bars of that instant classic, "Stealth."

Text Copyright John L. Welch 2006.

The TTABlog®

Friday, December 29, 2006

TTABlog Quarterly Index: October - December 2006

Thursday, December 28, 2006

TTAB Affirms Mere Descriptiveness Refusal of "FABLESS SOFTWARE COMPANY"

Wednesday, December 27, 2006

USPTO Issues Annual Report for FY 2006

Tuesday, December 26, 2006

Citable No. 54: "ESERVER" Generic for Computer Network Products, Says TTAB

Friday, December 22, 2006

Citable No. 53: TTAB Deals "VEGAS" Playing Card Applicant Winning Hand in 2(a), 2(e)(2), and 2(e)(3) Opposition

Thursday, December 21, 2006

Citable No. 52: TTAB Finds "OUTDOOR PRODUCTS" Generic for ... Guess What?

Wednesday, December 20, 2006

TTAB Deems "SMART SENSOR" Merely Descriptive of Interactive Toys

Tuesday, December 19, 2006

TTAB Remands "COCAINE" Energy Drink Application to Examining Attorney

"THE HOME DIGITAL JUKEBOX" Merely Descriptive, Says TTAB

Monday, December 18, 2006

Finding Spa Services and Beauty Products Related, TTAB Affirms 2(d) Refusal of "LOVEJOY"

Friday, December 15, 2006

TTAB Affirms Service Mark Refusal: Specimen Failed to Show Service Mark Use.

Thursday, December 14, 2006

Google Introduces New Patent Search Engine

Stoller Trustee Consents to Dismissal of "GOOGLE" Cancellation, With Prejudice

Wednesday, December 13, 2006

TTAB Affirms 2(e)(4) Surname Refusals of "ABANTE" and "RUXTON PHARMACEUTICALS"

Tuesday, December 12, 2006

"PROGRAMMED PROTEIN" Merely Descriptive of DNA Research Services, Says TTAB

Monday, December 11, 2006

More Recommended Reading: Prof. Beebe's Empirical Study of the Multifactor Likelihood of Confusion Test(s)

Friday, December 08, 2006

CAFC Affirms TTAB "GOLD SEAL" Laches Decision

PTO Plans Modifications to Design Search Codes

Thursday, December 07, 2006

Citable No. 51: TTAB Upholds 2(d) Refusal of "PSYCHO" for Clothing, But Overturns Mutilation Refusal

Wednesday, December 06, 2006

Citable No. 50: "GENUINE RIDE SKIN CARE" & Design Not Confusingly Similar to "GENUINE SKIN," Says TTAB

Tuesday, December 05, 2006

Citable No. 49: TTAB Upholds Disclaimer Requirement of "ROUGE" in "GALA ROUGE" for Wine

Monday, December 04, 2006

TTAB Posts December Hearing Schedule

Friday, December 01, 2006

TTAB Denies Stoller Motion to Block Trustee's Stipulated Dismissal of STEALTH Opposition

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