The TTABlog®: March 2006

Friday, March 31, 2006

TTABlog Quarterly Index: January - March 2006

It's been quite a quarter! Eighteen citable decisions (as of March 24th), equalling the total for all of last year. Proposed TTAB Rule changes and lots of comments thereon. The continuing Leo Stoller saga. The launching of the new Shape Blog. Can the next quarter even come close in bloggable excitement? Maybe. Let's see, there's the INTA annual meeting in Toronto, the second annual "Meet the Bloggers" event, the World Cup, more scintillating TTAB decisions, perhaps a few more Stoller extension requests, the continuing battle over the TTAB Rule changes, .... Somehow, I think the TTABlog will not be scrounging around for content.

click on photos for larger picture

Section 2(a) - immoral or scandalous:

Citable No. 10: TTAB Says No to "BULLSHIT" in 2(a) "Scandalous" Affirmance

Section 2(d) - likelihood of confusion:

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

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

Fraud:

Genericness:

Not a Trademark/Mutilation:

Distinguishing Dell, TTAB Finds Webpage Specimen Unacceptable for DVR

Trade Dress/Product Configuration:

CAFC Affirms TTAB's Slokevage Product Design Trade Dress Ruling

Use in Commerce/Specimen of Use:

Distinguishing Dell, TTAB Finds Webpage Specimen Unacceptable for DVR

Practice and Procedure:

Proposed TTAB Rule Changes:

CAFC Decisions:

Leo Stoller:

Other:

Text and Photographs © John L. Welch 2005-2006.

Thursday, March 30, 2006

Shape Blog Follows Lawman Design Patent Case

In case you didn't notice, the Shape Blog has been following the progress of the CAFC's recent decision in Lawman Armor Corp. v. Winner Int'l LLC, 77 USPQ2d 2017 (Fed. Cir. 2006). The CAFC ruled that, for infringement purposes, a combination of points of novelty in a design cannot itself be a point of novelty. Therefore a design patent whose individual elements are found in the prior art cannot be infringed, regardless of the inventiveness of the overall combination. [Prior TTABlog discussion here].

U.S. Design Patent D-357,621SLIDING HOOK PORTION OF A VEHICLESTEERING WHEEL LOCK ASSEMBLY
Plaintiff-Appellant Lawman Armor has filed a "Combined Petition For Panel Rehearing And For Rehearing En Banc." The Industrial Design Society of America (IDSA) and Nike, Inc. have each filed an amicus brief. AIPLA is expected to file an amicus brief soon. All of these documents may be downloaded at the Shape Blog, or at Dennis Crouch's excellent Patently-O patent law blog.
.

PTO Reopens Comment Period Re Proposed TTAB Rule Changes

In a Notice published in the Federal Register on March 27th, the PTO announced that it has reopened the comment period for the proposed TTAB Rule changes. The comment period will now run until May 4, 2006 (an additional 45 days from the original March 20th closing date). The PTO has, however, declined to schedule a public hearing.

"A number of comments made in response to [the January 17, 2006] notice suggested that an extension of the comment period would be helpful; and some of these recommended a public hearing. In addition, the Trademark Public Advisory Committee has recommended to the USPTO an extension and a hearing. The USPTO has decided to reopen the comment period (announcement of an extension not being possible before the scheduled close of the comment period on March 20, 2006). The USPTO has also decided, however, that written comments are preferred over oral comments and therefore will not schedule a public hearing."

The proposed Rule changes may be found here. Various comments already submitted may be dowloaded from previous TTABlog postings, or from the TTAB-Rules blog.
.

Wednesday, March 29, 2006

TTAB Applies Wrong Test in Affirming "FRESH ORGANICS" Genericness Refusal

Ignoring the CAFC's American Fertility test applicable to phrases, the Board affirmed a genericness refusal of the term FRESH ORGANICS for fresh fruits and vegetables, unprocessed cereals, and the like, and for retail health food store services. The Board erroneously applied the "compound word" test of In re Gould, which permits a finding of genericness based on dictionary definitions alone. In re Nutraceutical Corp., Serial No. 78975072 (March 13, 2006) [not citable].

Fresh%20Organics%202.jpg

The Examining Attorney submitted dictionary definitions of "fresh" and "organic," evidence of prior PTO disclaimer practice for the two words, and NEXIS and Internet excerpts showing various uses of "fresh organic" and "fresh organics." Applicant Nutraceutical Corporation argued that this "limited" evidence was insufficient to sustain the PTO's "heavy burden of proving that consumers use and understand the term 'Fresh Organics' as a generic name for fresh fruits and vegetables rather that as a merely descriptive adjective for such goods."

The Board noted that the NEXIS and Internet excerpts were a "mixed bag": some of the evidence "does not point unquestionably toward genericness," while several of the examples "appear to be references to applicant."

Nutraceutical argued that evidence drawn from foreign websites was of no probative value. The Board noted, however, that in some instances, foreign web pages "may be considered probative evidence on how a term will be perceived." Applicant contended that here there is no evidence that American consumers "regularly consult foreign websites in making their grocery purchasing decisions." The Board, however, observed that "average consumers in the United States may well link to foreign websites for informational purposes when researching products they intend to purchase," citing In re King Koil Licensing Co., Serial No. 76565486 (March 2, 2006). [TTablogged here].

"However, while we do not discount entirely the impact of the foreign websites in this case, we find them of much more limited probative value than was true in the Remacle case because the foreign websites excerpted herein are primarily articles of local interest about the availability of fresh, organic food items rather than informational resources for the general consumer researching organic food."

Turning to the key question of how the relevant public would perceive the term FRESH ORGANICS, the Board observed that "Applicant has done no more than combine terms that are individually generic in relation to its goods and services. Thus the composite is likewise generic. See In re Gould Paper Corp., 5 USPQ2d 1110 (Fed Cir. 1987)."

"Based on these dictionary definitions and our common parlance of the English language, we find that the relevant purchasing public would readily understand that 'Fresh Organics' indicates that a variety of fresh, unprocessed and/or raw food items have been grown organically. Thus, we conclude that the term is incapable of functioning as a trademark or service mark in connection with fresh, organic foods."

As to the services, the Board pointed out that "where a term is deemed to be generic for a class of products, it is equally generic when used in connection with the services of a retailer as such." In re Eddie Z's Blinds and Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005)

The Board therefore affirmed the refusal to register.

TTABlog comment: In considering the genericness of a phrase, the TTAB is supposed to follow In re American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999), which requires (1) evidence of the genus of goods or services at issue and (2) proof that the general public understands the phrase as a whole to refer to the genus. 51 USPQ2d at 1836. In American Fertility, the TTAB had affirmed a refusal to register AMERICAN SOCIETY FOR REPRODUCTIVE MEDICINE on the Supplemental Register, absent a disclaimer of SOCIETY FOR REPRODUCTIVE MEDICINE. The CAFC reversed because the PTO failed to provide any evidence of the public's understanding of the phrase SOCIETY FOR PRODUCTIVE MEDICINE as a whole.

Here, the Board ignored American Fertility completely. Instead it applied the evidentiary approach of In re Gould, relying on dictionary definitions of the constituent words to establish genericness. Although American Fertility blessed the approach of Gould, it expressly limited Gould [which involved the term SCREENWIPE] to "compound terms formed by the union of words." Under Gould, according to American Fertility:

"if the compound word would have no different meaning from its constituent words, and dictionaries, or other evidentiary sources, establish the meaning of those words to be generic, then the compound word too has been proved generic. No additional proof of the compound word is required." Id. at 1836.

For phrases, however, American Fertility held that there must be proof that the general public understands the phrase as a whole to refer to the genus. That's why it reversed the TTAB's ruling that SOCIETY FOR REPRODUCTIVE MEDICINE was generic.

As to the PTO's evidence of use of the phrase FRESH ORGANICS, the Board called it a "mixed bag." Is a "mixed bag" of evidence enough to meet the PTO's burden of proving genericness by "clear evidence?" Judge Bucher, who wrote the opinion in this case, didn't think so when the Board (reluctantly) reversed a genericness refusal of the mark DIAMOND WHETSTONE for whetstones, in In re Diamond Machining Technology, Inc., Serial No. 76345334 (May 4, 2004) [not citable]. There, the Board also found a "mixed bag" of evidence, but concluded that:

"Under our case law, we must resolve these doubts [about genericness] in favor of applicant. Accordingly, on the issue of genericness, we have no choice but to reverse the refusal to register made by the Examining Attorney."

The CAFC's two-faced approach to genericness found -- one test for compound words, another for phrases -- can lead to some strange results. I wrote about the problem in Part II.B. of my article, "The TTAB in 2004 - What Was Hot, What Was Not."

Text Copyright John L. Welch 2006.

Tuesday, March 28, 2006

TTAB Says "BYK-RAK" Generic for Bus Bike Racks

Applicant Midwest Bus Corporation's "creative misspelling" argument ran into a major roadblock in the person of Examining Attorney Allison P. Schrody, who refused registration of the term BYK-RAK for ""a rack for a bus transporting bicycles." The Board affirmed, finding the term to be generic and therefore ineligible for the Supplemental Register. In re Midwest Bus Corp., Serial No. 76393583 (March 17, 2006) [not citable].

Applicant argued that the term "bike rack" is not generic but merely descriptive, and that BYK-RAK is "more than a mere misspelling, but a creative and distinguishing makeup of words that create a distinctive commercial impression." Examining Attorney Schrody contended the opposite. The Board agreed with her.

The Board began its analysis by noting that the relevant public for the subject goods would be a "more limited group than all ordinary consumers" -- namely, buyers for transit systems. The category of goods involved in this case is "bike racks," or "a bike rack that is attached to a bus."

The Examining Attorney submitted dictionary definitions of "bike" and "rack," and various NEXIS and Internet excerpts showing use of the composite term "bike rack" for a rack attached to the front of a bus for transporting bikes.

As to the understanding of the relevant public, the Board found that the PTO's evidence "demonstrates that members of the relevant public understands [sic] the term 'bike rack' to refer to a holder for a bicycle, whether attached to the ground, a building, or a vehicle, such as a bus." Citing McCarthy on Trademarks and Unfair Competition, the Board observed:

"In an oft-quoted analogy, a mark answers the question of 'Who are you?' or 'Where do you come from?' The name of the product answers the question of 'What are you?' If the question 'What are you' were to be put with respect to a rack for bicycles mounted on the front of a city bus, 'bike rack,' spelled correctly, clearly answers the query most succinctly."

As to Applicant's argument that the misspelling BYK-RAK creates a distinctive commercial impression, the Board, quoting extensively from the Examining Attorney's brief, concluded that "the question of whether the spelling or pronunciation of BYK-RAK is obvious must always be considered in relation to applicant's goods, bike racks for buses." Applicant's misspelling is not particularly creative, since "'bike rack' is the only plausible pronunciation of applicant's proposed mark." Finally, a hyphen is often used to link words that modify one another and is therefore not distinguishing.

Moreover, the Examining Attorney pointed out "how closely the alleged mark in the instant case tracks past cases of misspelled terms refused registration": C-THRU for transparent rulers, MINERAL-LYX for mineral licks for feeding livestock, and ICE PAK for ice packs. She also distinguished cases in which the alleged mark was presented in a distinctive appearance or design [e.g., the word BALSAM presented in a "stylized font featuring 'curlicues' on nearly every letter," allowed registration on the Supplemental Register for hair care products, but with the word BALSAM disclaimed].

The Board therefore, not surprisingly, affirmed the refusal to register.

Text Copyright John L. Welch 2006.

Monday, March 27, 2006

Leo Stoller Responds to March 27th TTABlog Report

Leo Stoller has sent a response to today's TTABlog posting entitled "TTABlog Report: Leo Stoller Marches On" (here). In his response, set forth below, he addresses the item relating to his filing of hundreds of request for extension of time to oppose. Here is Mr. Stoller's response [verbatim]:

The question before the trademark community is whether Leo Stoller's filing of 750 Extensions to Oppose represents a bellwether for a major paradyne shift, of asserting rights in trademarks, or is merely an obstructionist activity that should be condemned.

How is it possible for a single entity to assert rights in 750 marks or 7000 marks?

Trademark attorneys from time immortal has been raised to believe that companies normally can acquire rights in one mark and/or a small family of marks depending on the specific goods and services offered by that entity. Leo Stoller argues that with the advent of the internet that the normal and customary ownership-of-a-few-trademarks-paradyne has now shifted. Leo Stoller argues that with the advent of the internet it, allows an entity such as rentamark.com to legitimately claim rights in an infinite number of trademarks based upon exclusive use and licensing to third parties via the net. There is no limit to a legitimate web site holder's ability to from forming links to an infinite number of marketers of goods and services which can be offered to the public under an infinite number of trademarks on the internet, as long as there is a provision for quality control is maintained of these goods and services licensed, and sold.

Thus where once is may have been normal for a party to examine the weekly TRADEMARK OFFICIAL GAZETTE for confusingly similar applications that publish, in today's internet-global-trademark-licensing-environment an examination of the GAZETTE reveals 100's and 1000's of confusingly similar marks, which entitle the potential opposer, to file numerous extensions of time to oppose.

The questions was raised as to whether Leo Stoller has filed many oppositions since November of 05. Leo Stoller would argue that he has probably file more notices of opposition than any other single entity against such parties as TARGET, GOOGLE etc. In addition, Leo Stoller argues that the current system of permitting potential opposers to file 90 day extensions works perfectly well.

First of all since the TTAB has gone on line the man hours to prosecute a request for an extension has been automated by having auto responders sent it from the TTAB to the email address of the parties, once the extension of time has been filed. Secondly, the extension of time permits the parties to work out a amicable resolution to the registerability prior to the filing of any oppositions.

The framers of the TTAB rules that designed the request for an extension of time were right on target. The extension period is a safety valve for the TTAB and elevates the need for the unnecessary filing of oppositions by giving the parties time to address the registerability issues and settle the controversy out side of the Board decision making process. The reason why Leo Stoller does not file more oppositions is that the parties which are the subject of the request for an Extension of Time, are notified of the potential conflict. The vast majority of potential oppositions, settle the controversies, rather than burden the Board with another opposition.

TTABlog note: Although Mr. Stoller states that he has filed "many" oppositions since November 2005, by my count he has commenced 8 oppositions in the five-month period from November 1, 2005 to March 30, 2006: 5 involving the mark STEALTH, and one each involving the marks HAVOC, AIRFRAME, and FIRE POWER. Mr. Stoller has, as of March 30, passed the 1,250 mark for extension requests since November 1, 2005.
.

TTABlog Report: Leo Stoller Marches On

As we ponder whether Barry Bonds' assault on Hank Aaron's home run record will provide a shot in the arm to baseball, let's not forget the record-setter in our own little world of trademark law. Who holds the record for most requests for extension of time filed in a three-month period? Come on! Take a wild guess! [Here's a hint: he lives in Chicagoland and he's a Cubs fan].

Chicago Federal Court Declines to Restrain Stoller's Filings: On December 15, 2005, after reviewing Leo Stoller's "filing history" as well as Judge Coar's Memorandum Opinion in the George Brett case (see below), the Executive Committee of the U.S. District Court for the Northern District of Illinois issued a Citation directing Leo Stoller to inform the court "of any claim by him why the Executive Committee should not impose reasonable and necessary restraints upon Mr. Stoller's ability to file civil suits in this District."

Mr. Stoller filed his Response on or about February 27, 2006, in which his counsel stated that he "acknowledges that he should have heeded the court's admonishments and has retained counsel with a more conservative and reasoned approach to protecting rights." His counsel urged that "any restraint would be directed to keeping Stoller on a proper course rather than one intended to bar the door."

On March 20, 2006, the Executive Committee issued a terse letter stating that "After discussion, the Committee will take no further action in this matter."

Stoller Requests for Extension Top 750 in 2006: Meanwhile, back at the Board, Leo Stoller's requests for extension of time to oppose have now topped 750 for the year 2006 (through March 24, 2006). That's an average of about 60 per week. Since his filing juggernaut got rolling in mid-November 2005, Stoller has obtained more than 1,000 extensions of time, each of 90 days. [For what it's worth, that's more than 90,000 days worth of extensions, amounting to nearly 250 years!] So far, however, it does not appear that any of them have led to the actual filing of an opposition.

Court Denies Stoller's Motion for Reconsideration of Brett Decision: The newly-launched IP Legal Lounge blog reports here on the District Court's March 15th Memorandum Opinion and Order denying Leo Stoller's motion for reconsideration of its decision in Central Mfg Co. v. Brett, Civil Action No. 04-C-3049 (N.D. Ill. Sept. 30, 2005). The original decision, granting summary judgment to the defendants and awarding attorney fees, was discussed here at the TTABlog.

Boris Umansky
At the aforementioned IP Legal Lounge, Chicago attorney and former Trademark Examining Attorney Boris Umansky focuses on state and federal court decisions within the Seventh Circuit pertaining to trademarks, copyrights, trade secrets, unfair competition, Internet law, and related areas.

Text Copyright John L. Welch 2006.

Friday, March 24, 2006

TTAB Finds "IMMUNO-RX" and "IMMUNEX" Confusingly Similar for Pharma/Nutra-ceuticals

Another pro se applicant swallowed the bitter pill of defeat in a Section 2(d) opposition. This time it was Applied Medical Research, Inc., whose attempt to register the mark IMMUNO-RX for vaccines and probiotic bacteria was blocked by Immunex Corporation and its registered mark IMMUNEX for pharmaceuticals. Immunex Corp. v. Applied Medical Research, Inc., Opposition No. 91153080 (March 3, 2006) [not citable].

Applied Medical did not submit testimony or any evidence, and its brief was stricken as untimely. That, not surpisingly, was a prescription for disaster at the TTAB.

The Board first found the goods to be related. Applicant stated in its discovery responses that its probiotic bacteria are "intended to be sold in the medium of a dietary supplement." The Board observed that such products may be sold over-the-counter and thus be encountered by ordinary consumers. Opposer's "pharmaceuticals for the treatment of autoimmune diseases, healing wounds, and cancer" would ultimately be used by ordinary consumers as well. Moreover, because the goods are broadly identified, they could include goods "that address conditions that may affect the same individuals."

As to channels of trade, neither the application nor the registration have any restrictions, and therefore the Board must assume that "at the very least, ... the pharmaceuticals for the treatment of healing wounds would be sold over-the-counter," and thus in the same channels of trade as would "applicant's over-the-counter, nutraceutical/dietary supplement products, especially in drug stores." Wound care products and dietary supplements "are rather inexpensive items, and due to their nature, they are not necessarily going to be purchased using a great degree of deliberation or care."

The Board found the marks, despite some differences, to be "similar in their entireties as to appearance, sound, connotation and commercial impression."

Throughout the proceeding, Applied Medical contended that Opposer had abandoned its rights to the IMMUNEX mark. [The record showed that Immunex Corporation was bought by Amgen in July 2002, but remains a wholly-owned subsidiary of Amgen and owns the rights in the IMMUNEX mark and registration. Its principal product is ENBREL, an injectable rheumatoid arthritis treatment.] However, Applied Medical did not seek cancellation of the registration, and so the Board was required to accord the registration all the presumptions of a duly registered mark.

In any case, the Board noted that the mark was not abandoned: Immunex continues to be responsible for manufacturing ENBREL and owns the trademark rights in the mark IMMUNEX. However, the record did not include any copies of labels "showing how prominently the word IMMUNEX appears on the ENBREL label," and media references since 2002 refer only to "Immunex Corporation" in connection with the Amgen purchase -- never to IMMUNEX as a product mark.

Nonetheless, Opposer argued that IMMUNEX achieved "widespread recognition and fame in the field of pharmaceuticals and biotechnology." Not so, said the Board. It was not clear how evidence of research, development, and marketing of products, especially ENBREL, supported a claim of widespread recognition for the IMMUNEX mark. "Since Amgen's acquisition of Immunex Corporation in 2002, it is unclear that even the financial world continues to place significance on the name IMMUNEX." Therefore, the Board ruled that Opposer had failed to establish that its mark has achieved widespread recognition.

Finally, the Board noted that any doubts on the 2(d) issue are to be resolved in favor of the prior registrant. Moreover, when pharmaceutical preparations are involved, "there is even stronger reason for resolving doubt in this manner."

The Board concluded that confusion is likely, though it specifically pointed out that it gave "no weight to opposer's arguments regarding the alleged fame of the IMMUNEX mark."

Opposer Immunex had also pressed a dilution claim, but the Board dispensed quickly with that assertion. Since Opposer had not established fame for Section 2(d) purposes, it perforce did not meet the "stricter standard required to prove fame in order to obtain protection under the dilution statute."

Text Copyright John L. Welch 2006.

Thursday, March 23, 2006

"GOSMILE PM" Applicant Seeks District Court Review of TTAB 2(d) Affirmance

GoSMILE, Inc. has filed a civil action in the United States District Court for the Eastern District of Virginia, pursuant to 15 U.S.C. Section 1071(b), seeking review of the TTAB's decision in In re GoSMILE, Inc., Serial No. 76518244 (January 20, 2006) [not citable]. As discussed here at the TTABlog, the Board, in a less than convincing ruling, affirmed a Section 2(d) refusal to register the mark GOSMILE PM for toothpaste, finding the mark likely to cause confusion with the registered mark P.M. for "toothpaste and gel."

In the Complaint, captioned GoSMILE, Inc. v. Dudas, Civil Action No. 1:06 CV 291-GBL/TRJ (E.D.Va. filed March 17, 2006), GoSMILE asserts that the Board disregarded its evidence of the weakness of the term "PM" based on third-party use, and failed to follow applicable Board precedent, including Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005) (blogged here).

By choosing the district court route rather than appealing to the Federal Circuit, GoSMILE will have the opportunity to submit additional evidence on the likelihood of confusion issue, and particularly on the Knight Textile issue of the weakness of the cited mark. See McCarthy on Trademarks and Unfair Competition, Section 21:21.

Text Copyright John L. Welch 2006.

Wednesday, March 22, 2006

ABA-IPL and Others Submit Comments on Proposed TTAB Rule Changes

The American Bar Association Section of Intellectual Property Law (ABA-IPL) has submitted comments on the proposed TTAB Rule changes. In its letter (here), it requests that the PTO extend the comment period for sixty days in order to allow the Section to more fully analyze and comment on the changes. The Section indicates its belief that the proposed mandatory disclosure provisions will discourage, rather than encourage, early settlement, and will lead to more highly-contested discovery motion practice.

Among other comments collected at the TTAB-Rules blog are those submitted by:

Fross, Zelnick (here).
Ostrolenk, Faber (here)
Jane Shay Wald (here)
Dickinson Wright (here)
Arent Fox (here)

CAFC Affirms TTAB's Slokevage Product Design Trade Dress Ruling

In a precedential opinion, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision in In re Slokevage, Serial No. 75602873 (November 10, 2004) [not citable], reconsideration denied, February 4, 2005. [TTABlogged here and here]. The Court concluded that substantial evidence supported the Board's finding that Slokevage's trade dress was product design and thus could not be inherently distinctive, and that her trade dress was not unitary and therefore the PTO's requirement of a disclaimer of the "cut-out areas" was proper. In re Slokevage, 78 USPQ2d 1395 (Fed. Cir. 2006).

Joanne Slokevage sought to register, for "pants, overalls, shorts, culottes, dresses, skirts," a "configuration" consisting of a label with the words "FLASH DARE!" and cut-out areas on each side of the label. The cut-out areas are located in the rear of the garment and each comprises a hole and a flap with a closure device.

The Board found that the cut-out areas (the holes and flaps) constituted product design. Relying on Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065, 1069 (2000), it ruled that Slokevage's trade dress could not be registered absent proof of secondary meaning.

On appeal, Slokevage contended that whether trade dress is product design or not is a "legal" issue. The court, in a question of first impression, ruled that "the determination whether trade dress is product design is a factual finding." Likewise, "the inquiry into whether a mark is unitary is a factual determination." Consequently, the court reviewed the Board's rulings on these two issues to see if they were supported by substantial evidence.

Slokevage argued that her trade dress is not product design and thus it can be inherently distinctive. She (cheekily?) attempted to distinguish Wal-Mart by pointing out that the trade dress in Wal-Mart implicated the overall appearance of the product whereas her trade dress involves only a component of a product design. Moreover, her mark is located on the rear of the garment, where trademarks are often found.

The CAFC, however, agreed with the Board: "while Slokevage urges that product design trade dress must implicate the entire product, we do not find support for that proposition. Just as the product design in Wal-Mart consisted of certain design features featured on clothing, Slokevage's trade design similarly consists of design features, holes, and flaps, featured in clothing, revealing the similarity between the two types of design."

The court found the reasoning in Wal-Mart to be instructive here:

"unlike a trademark whose 'predominant function' remains source identification, product design often serves other functions, such as rendering the 'product itself more useful or more appealing.' Wal-Mart, 529 U.S. at 212, 213. The design at issue here can serve such utilitarian and aesthetic functions. For example, consumers may purchase Slokevage's clothing for the utilitarian purpose of wearing a garment or because they find the appearance of the garment particularly desirable. Consistent with the Supreme Court's analysis in Wal-Mart, in such cases when the purchase implicates a utilitarian or aesthetic purpose, rather than a source-identifying function, it is appropriate to require proof of distinctiveness."

Moreover, even if this were a close case, Wal-Mart requires that in close cases the trade dress be classified as product design.

As to the disclaimer issue, the court noted that for a unitary mark, a disclaimer of a portion of the mark is not appropriate. Here, however, the court agreed with the Board that the mark is not unitary. "The display of the elements in the drawing of the trade dress, the applicant's earlier registration of the words 'FLASH DARE!,' and the applicant's design patent on the cut-out area are evidence that Slokevage's trade dress is not unitary."

Because it found that substantial evidence supported the TTAB's rulings, the CAFC affirmed.

TTABlog comment: Not much of a surprise here. The CAFC was not about to let this applicant cut a hole in the fabric of Wal-Mart. So I guess Ms. Slokevage will just have to grin and bare it.

Text Copyright John L. Welch 2006.

Tuesday, March 21, 2006

INTA and Oblon, Spivak Submit Comments on Proposed TTAB Rule Changes

INTA has filed its comments on the proposed TTAB Rule Changes. Its letter (here) states: "INTA appreciates the USPTO's efforts to update TTAB rules in order to expedite procedures, ensure parties' full and fair exchange of information, and promote settlement of disputes. However, many of the proposed changes present a significant departure from established TTAB practice. Therefore, INTA believes that the interests of both the USPTO and trademark owners would be better served if certain aspects of the proposal were given additional review and consideration prior to final implemetation."

The Oblon, Spivak law firm has posted its own comments here at its TTAB-Rules blog. It concludes that:

"The likely effects of the proposed amendments are far broader and more significant than anticipated by the PTO. While it is our understanding that the PTO has considered the proposed amendments for more than a year, practitioners, professional organizations, and businesses have been provided with only two months to consider and comment upon the proposed amendments. Although numerous organizations will be commenting on the proposed amendments in a timely manner, there are many who have not had the time or resources to consider and comment. While we have reviewed the proposed amendments, more time to reflect upon and examine their likely consequences will be very well spent.

"Finally, we request that the period for comment be extended by 60 days and that a public hearing be held before any of the proposed rules is adopted."

In Citable No. 18, TTAB Draws Distinction between Fraud and Nonuse

With the April INTA Roundtable focusing on fraud, and with a Trademark Reporter article on fraud reportedly on the way, what better time to contemplate a new TTAB non-fraud ruling? In yet another citable decision, the Board granted in part an opposer's motion for summary judgment on the ground of nonuse of the subject mark for some of applicant's services. Because the opposer did not allege fraud, however, the Board did not reach the issue of whether applicant's inclusion of the "extra services" in its use-based application constituted fraud (which would have rendered the entire application void ab initio). Grand Canyon West Ranch, LLC v. Hualapai Tribe, 78 USPQ2d 1696 (TTAB 2006).

The Hualapai Tribe filed a Section 1(a) application to register the mark GRAND CANYON WEST for "airport services; air transportation services; arranging for recreational travel tours and providing related transportation of passengers by air, boat, raft, rail, tram, bus, motorized on-road and off-road vehicles, non-motorized vehicles featuring bicycles, and domestic animals." Opposer Grand Canyon West Ranch claimed, inter alia, that Applicant had not used the mark on all of these services as of the application filing date.

When the Tribe moved to amend its recitation of services to delete "rail, tram, non-motorized vehicles featuring bicycles, and domestic animals," Opposer moved for summary judgment on its nonuse claim, asserting that the application as a whole must fail.

The Board, however, disagreed: "The case law is clear that holding an application to be void is an appropriate remedy when the pleaded ground either is fraud, or that the applicant has not used the applied-for mark on any of the goods or services identified in the application prior to the filing of the application." Here, Opposer did not plead fraud as a ground for opposition.

The Board held that "as long as the mark was used on some of the identified goods or services as of the filing of the application, the application is not void in its entirety."

The Board distinguished between fraud and nonuse by pointing out that in the latter, "a defendant's intent is not an element of a claim that a mark was not used on certain of the identified goods or services, nor is an enhanced standard of proof required."

"Therefore, in the absence of a fraud claim, an applicant who bases its application on Section 1(a) (use in commerce) but who did not use the mark on some or all of the goods or services identified in the application may 'cure' this problem by amending its basis to Section 1(b) (intent to use)."

In view of the "nature of opposer's allegations," the Board found applicant's proposed amendment appropriate. It therefore granted the motion to amend, and it partially granted Opposer's summary judgment to a that same extent.

In a footnote, the Board noted that the deletion of these services:

"does not preclude opposer from moving to amend its notice of opposition to assert a ground of fraud, ... assuming, of course, that opposer has a good faith belief that such a ground is warranted. Medinol v. Neuro Vasx, supra, at 1208 ('deletion of the goods upon which the mark has not yet been used does not remedy an alleged fraud upon the Office.')." [TTABlog question: would such a motion to amend be timely or too late? See Turbo Sportswear, Inc. v. Marmot Mountain Ltd., 77 USPQ2d 1152 (TTAB 2005), blogged here.]

The Board re-set testimony dates so that the case may proceed on the remaining issue of mere descriptiveness.

TTABlog comment: So what does this case mean, if anything, for the Board's current "fraud" jurisprudence? If an applicant deletes from its use-based application "extra" goods or services after an opposition has been filed but before a claim of fraud is made, will a fraud ruling be avoided? The Board said no in Tequila Cazedores, S.A. de C.V. v. Tequila Centinela, S.A. de C.V., Opposition No. 91125436 (February 24, 2004) [not citable]. What if an applicant filed such an amendment before the opposition was filed? Would that eliminate the fraud possibility? I wouldn't count on it.

In Tequila Cazedores, the Board acknowledged that there may be "circumstances where a mistake as to use is made that do not constitute fraud (for example, an applicant believes its use is sufficient to support a use-based application when it is not)." But the Board stressed that "[a]t the time an applicant files an application under Section 1(a), the applicant must know if it is using the mark on the goods." If it isn't, the applicant better have a darned good explanation.

In my December 2004 article entitled "The Board's-Eye View: Six Potential Pitfalls in Trademark Prosecution," I reviewed six recent fraud decisions and came to the following conclusion:

"these six TTAB decisions underscore a fundamental principle: when an applicant makes a verified or sworn statement regarding use of its mark, that statement had better be completely true. False statements will not be readily excused. Lack of legal advice, misunderstanding of the statutory requirements, language difficulties, and/or clever wordplay will not provide a defense to a charge of fraud. Nor will the (wholly expected) assertion of lack of fraudulent intent."

If I had a client with a potentially troublesome application, I would bite the bullet and file a new application right away. I don't think the Board's recent fraud rulings, nor the non-fraud ruling discussed in this posting, give any reason for optimism that the application, even if amended immediately, could survive a subsequent fraud challenge.

Text Copyright John L. Welch 2006.

Monday, March 20, 2006

TTAB Affirms 2(d) Refusal of "TOP DOG & Design" for Food Concession Services

Applicant Volume Services found itself the bottom dog in its appeal from the PTO's Section 2(d) refusal to register the mark TOP DOG & design for food kiosk and concession services. The Board affirmed, finding the mark likely to cause confusion with the registered mark TOP DOG FAST FOODS (Stylized) for restaurant services. In re Volume Services America, Inc., Serial No. 78313276 (March 8, 2006) [not citable].

Volume argued that the inclusion of its house mark "Centerplate" (below the words "TOP DOG") removed any likelihood of confusion, that the services of the parties are rendered in different geographical markets, and that the cited mark is weak due to the "encroachment" of similar marks on the Register.

Examining Attorney Richard F. White maintained that the dominant term in both marks is TOP DOG, that Volume's addition of its house mark only increases the likelihood of confusion, that many fast-food and casual restaurants establish food stands and kiosks, that the alleged limited geographical scope of registrant's services is irrelevant, that the cited mark has not been shown to be weak, and that in any case even weak marks are entitled to protection.

The Board agreed with the PTO that the phrase TOP DOG dominates both marks. The phrase "A Centerplate Brand" appears in such small lettering that many consumers may overlook it. In any case, "the Centerplate tagline, if seen, increases the likelihood of confusion," and particularly of reverse confusion in this case [since "registrant's size does appear to pale in comparison with applicant"].

As to the services, third-party registration evidence showed that food stands, kiosks, and restaurants are commonly marketed under the same service mark [e.g., BIG BOY and WAFFLE WORLD]. Moreover, Internet evidence established that national restaurant chains like KFC, Pizza Hut, Domino's Pizza, and Taco Bell often have kiosks and stands within large recreational venues such as sports stadia. The Board therefore concluded that the involved services are "closely related."

Although registrant may offer its restaurant services only in two small communities in North Carolina, there is no such limitation in its registration. Furthermore, "one of applicant's roving vendor stands could be located right next door to one of registrant's restaurants." The Board pointed out that, in any case, the limited geographical scope of registrant's use is irrelevant because Section 7(b) of the Trademark Act accords registrant a presumption of an exclusive right to nationwide use of its mark.

The Board did not relish Volume's contention that the cited mark is entitled to a narrow scope of protection because of the existence of third-party registrations for marks containing the term "top dog," supposedly indicating that the PTO has "ostensibly acquiesced in the co-existence of a number of quite similar registrations." Once again the Board pointed out that previous decisions of other Examining Attorneys in approving other marks are not binding on the USPTO or on the Board. And, as the Examining Attorney asserted, even weak marks are entitled to protection.

The Board therefore ruled that Volume's mark failed to pass mustard.

Text Copyright John L. Welch 2006.

Friday, March 17, 2006

AIPLA Submits Comments on Proposed TTAB Rule Changes

The American Intellectual Property Law Association (AIPLA) has submitted extensive comments on the proposed TTAB Rule Changes. Its thirteen-page letter (here) asserts, inter alia, that mandatory disclosure will be onerous and costly, will discourage early settlement, will increase discovery motion practice, and will decrease the efficiency of discover and trial. AIPLA requests that the PTO hold a public hearing "to give users the opportunity to fully explain the ramifications of these proposed changes."

The comment period on the proposed rules is set to expire on March 20, 2006, although the PTO is reportedly considering a number of requests that the comment period be extended and that a public hearing be held.
.

"SATURDAY MORNING T.V." Merely Descriptive of TV Programs, Says TTAB in Citable No. 17

Turn off the bubble machine! Another citable mere descriptiveness decision has been launched by the TTAB, the fifth Section 2(e)(1) ruling in the last seven citables. In this, the 17th citable decision of 2006, the Board affirmed a refusal to register SATURDAY MORNING T.V. for "entertainment in the nature of on-going television programs in the field of comedy." In re Classic Media, Inc., 78 USPQ2d 1699 (TTAB 2006).

Examining Attorney Charles L. Jenkins, Jr., maintained that the mark "has a specific meaning in television parlance" and merely describes entertainment services "in the nature of television programs that were once shown on Saturday mornings." He relied on numerous NEXIS excerpts and on a dictionary listing of "TV" as an abbreviation for "television."

Applicant Classic Media declared that its services:

"are intended to appeal to the older viewer and evoke the memory of a time during the 1950's and 1960's when extensive children's programming appeared exclusively on Saturday mornings. The mark will not be used to describe goods that are aired on television on Saturday mornings. Instead, the mark suggests the nostalgic nature of the programming offered in the intended product."

The Board observed again that the determination of mere descriptiveness must be made not in the abstract, but in the context of the involved goods and services. It noted that Classic Media "intends to use the mark for a compilation of classic programs that appeared on Saturday morning television, specifically mentioning 'Mr. Magoo,' 'Casper & Friends,' 'The Lone Ranger,' 'Lassie,' 'Sgt. Preston of the Yukon,' and 'Shari Lewis & Friends.'" The NEXIS evidence "shows use of 'Saturday morning T.V.' (or television) to describe this particular type or genre of television programming."

The mark would also be descriptive, according to the Board, of "contemporary television programming," in that "it describes a recognized type of television program, namely, television programs shown on Saturday mornings."

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

Text Copyright John L. Welch 2006.

Thursday, March 16, 2006

TTAB Citable No. 16: "SMARTSFP" Merely Descriptive of Optical Transceivers

The TTAB has cranked out yet another citable mere descriptiveness decision. In its 16th citable of 2006, the Board affirmed a Section 2(e)(1) refusal to register the mark SMARTSFP, finding it merely descriptive of "optical transceivers." In re Finisar Corp., Serial No. 76300876 (March 6, 2006).

Examining Attorney Attiya Malik relied on an excerpt from acronymfinder.com and on third-party website evidence to show that SFP is an abbreviation for "small form-factor pluggable," a specification "for a new generation of optical modular transceivers." As to the word "smart," dictionary definitions, website excerpts, and Applicant's product literature demonstrated that it means that the products are "highly automated."

Applicant Finisar Corporation contended that the "average consumer" would not recognize the abbreviation SFP, but the Board noted that it must look to the ordinary or average prospective customer for Applicant's goods: "The average consumer of an optical transceiver would certainly know and be familiar with the various features available, including soldered-in versus SFP."

Finisar also contended that the word "smart" is "too broad to be descriptive" and includes "many categories of goods." The Board, however, noted that it must consider the term within the context of Applicant's goods.

"Applicant's optical transceivers are highly automated devices that imitate human intelligence by self monitoring and reporting operational and diagnostic information as shown by applicant's product literature."

Although "smart" may be used in connection with a wide array of goods, "its use in these various contexts has a consistent specific meaning; it tells the consumer that the product is highly automated and capable of computing information."

The Board found no merit in Finisar's argument that the composite mark SMARTSFP creates a "suggestive unique commercial impression." Rather, the meaning of each term "will be readily apparent and this straightforward combination does not present any incongruity."

The Board therefore affirmed the refusal to register.

TTABlog comment: I continue to wonder why the USPTO and the TTAB place any reliance at all on the acronymfinder database. Its entries are created by the users themselves (like Wikipedia). The website provides the following warning:

Disclaimer. We've done our best to ensure the accuracy of the Acronym Finder database, however, we do not take responsibility for the accuracy of any of the information in the acronym database. Capitalization is NOT necessarily correct. Use information from this site at your own risk.

In Part 6 of my article entitled "Six Potential Pitfalls in Trademark Prosecution," I discussed this very issue. My view of the matter remains the same.

Text Copyright John L. Welch 2006.

Wednesday, March 15, 2006

More Comments Submitted on Proposed TTAB Rule Changes

Merchant & Gould has today submitted comments to the USPTO regarding the proposed TTAB Rule Changes. Its letter summarizes the concerns raised at the firm's "Webinar" held this morning. The firm has joined the chorus requesting that the TTAB hold a hearing and permit testimony on the proposal. The Merchant & Gould comments are found here.

In addition, Jack Clifford, trademark owner and trademark lawyer, has submitted comments, and he has provided me with a copy of same for the benefit of TTABlog readers. Mr. Clifford's letter is found here.

Comments must be submitted by March 20, 2006. The TTAB-Rules blog reports that the Board is contemplating extending the time for comment and holding a public hearing.
.

TTABlog Flotsam and Jetsam: Issue No. 9

The Board's flow of decisions dropped to a mere trickle in the last few weeks, and so, while awaiting further fireworks over the proposed TTAB Rule Changes, we might as well empty out the "things-to-blog" folder.

Toronto
"Meet The Bloggers" 2006: Preliminary planning has begun for the second annual "Meet the Bloggers" event -- i.e., Marty Schwimmer and I have tentatively agreed on Sunday night after the INTA reception. Now we just have to find a venue in Toronto, appoint a decorations committee, and send out the invitations. Any suggestions regarding possible locations would be greatly appreciated.

Douglas W. Lytle article: Loyal TTABlog reader Doug Lytle, of the San Diego law firm of Duckor Spradling Metzger & Wynne, has made available his recent article entitled "A 'TIP' for Responding to Trademark Infringement," published in the December 2005 issue of The Intellectual Property Strategist. Doug advises that advanced planning will help lay the groundwork for an effective response to an infringement of your client's trademark.

Doug Lytle
Trademark Use article: Professor Margreth Barrett of the University of California Hastings College of Law discusses the role of the "trademark use" requirement in Internet-related infringement cases, in "Internet Trademark Suits and the Demise of 'Trademark Use'," 39 U. C. Davis L. Rev. 371 (2006).

Beth Chapman: Former TTAB Judge Beth Chapman has joined the Alexandria, Virginia firm of Oblon, Spivak, McClelland, Maier & Neustadt P.C., as "Of Counsel." She recently posted her "Discussion Points for TTAB Proposed Rules" at the Oblon Spivak TTAB-Rules blog.

Beth Chapman
Trademark Dilution Revision Act passed by Senate: The Trademark Dilution Revision Act of 2006 (H.R. 683) was passed by the Senate on March 8, 2006, as reported here. The bill stands in this form after an "Engrossed Amendment as Agreed to by Senate." Concerns raised by a number of organizations, including the American Library Association, Electronic Frontier Foundation, Public Citizen, Public Knowledge, and Society of Children's Book Writers and Illustrators (here), moved the Senate to restore the exception for "non-commercial use" of a mark that had been missing from the original House version. [March 8, 2006 Congressional Record entry here.]

The legislation would provide a likelihood of dilution standard, set forth definitions of "famous mark," "blurring," and "tarnishment," and clarify that a mark need not be inherently distinctive to qualify for protection, that tarnishment is actionable, and that fame only in a "niche market" is not covered.

The bill now proceeds to a conference committee of Senators and Representatives to work out differences betweeen the House and Senate versions.

Text Copyright John L. Welch 2006.

Tuesday, March 14, 2006

TTAB Citable No. 15: "FM4910" Merely Descriptive of Flame Retardant Plastic

If you thought FM4910 was some sort of pirate, off-shore radio station, think again! FM4910 is a fire testing protocol developed in response to the semiconductor industry's demand for less flammable plastics. The Board, in its 15th citable decision of 2006, found the mark FM4910 merely descriptive of Applicant Westlake Plastics' "flame retardant fluoropolymer plastic material for the semiconductor industry sold in sheets, rods, and other preformed shapes." In re Westlake Plastics Co., 79 USPQ2d 1151 (TTAB 2006).

Examining Attorney Carol Spils relied on Nexis excerpts and third-party websites in contending that "FM4910 designates a widely known standard for measuring the clean room flammability of plastic materials, and that the term merely describes a feature or characteristic of applicant's plastic materials, namely that the materials 'meet or are represented to meet the FM4910 flammability test protocol.'"

Applicant Westlake Plastics argued that FM4910 "is not even suggestive of the goods, let alone descriptive:" it is a "third-party" protocol used in the insurance industry that does not describe a characteristic or feature of the goods. According to Westlake, "speed, indeed blinding, lightning-like speed, is an integral, essential component of the descriptiveness test," and here a multi-step reasoning process would be required to make an association between FM4910 and its products.

Not so fast! said the Board. It agreed with the PTO that FM4910 immediately describes a key characteristic or feature of Westlake's plastics materials, namely that the materials meet a prescribed standard of fire safety. There was no dispute that FM4910 refers to a fire safety protocol developed by a third party insurance company, FM Global, for semiconductor fabrication plants. The evidence showed that plastics manufacturers and suppliers tout their compliance with the FM4910 standard. And Westlake explained at oral hearing that its goods are used to produce trays or carriers used by semiconductor fabricators.

Charred, but didn't ignite
The Board concluded that, although the FM4910 protocol "may have been developed by an insurance company, it is clearly a term that is recognized and used outside the insurance industry, contrary to applicant's contention."

"... prospective purchasers of applicant's plastic materials for use in manufacturing clean room equipment would, without any guesswork or the exercise of any imagination, immediately recognize FM4910 as signifying an approved class of plastic materials, and they will rely on that representation in making their purchasing decisions."

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

Text Copyright John L. Welch 2006.

Monday, March 13, 2006

"THE BREATHABLE MATTRESS" Merely Descriptive of Mattresses, Says TTAB, Citably

In its 14th citable decision of 2006, the TTAB affirmed a Section 2(e)(1) refusal of the mark THE BREATHABLE MATTRESS (MATTRESS disclaimed), finding the mark merely descriptive of beds and mattresses. The Board gave some, but limited, probative value to the PTO's evidence from foreign websites in light of the nature of the goods involved. In re King Koil Licensing Co., 79 USPQ2d 1048 (TTAB 2006).

Examining Attorney Theodore McBride relied on a dictionary definition of "breathable," on certain Internet webpages, and on a list of Internet search results for "breathable mattress." Applicant King Koil argued mainly that much of the PTO's Internet evidence was not competent because it "relates to entities that appear, based on the content of the web pages or their internet addresses, to be located outside the United States."

The Board noted that "under appropriate circumstances, web pages posted abroad may be considered probative evidence on how a term will be perceived," citing In re Remacle, 66 USPQ2d 1222 (TTAB 2002) [evidence from English language website in Great Britain held admissible where professionals in the field would likely monitor foreign websites]. Here, however, the foreign website evidence is of "much more limited probative value."

"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."

The Board also gave little weight to the PTO's list of Internet search results because they did not show the "context within which a term is used on the web page that could be accessed by the link." [Again citing Remacle].

Turning to the 2(e)(1) analysis, the Board pointed to the evidence regarding three United States-based websites, at which the term "breathable mattress" appears. Thus, the Board noted, "even under applicant's view of this case [i.e., giving no weight to the foreign websites], there is evidence supporting the refusal to register."

"... we find that the term is used by purveyors of mattresses or related bedding products precisely because it is likely to be perceived by consumers as indicating that these products are breathable and therefore desirable."

The Board therefore affirmed the refusal to register.

TTABlog comment: So apparently in cases involving consumer products, the probative value to be accorded foreign website evidence is inversely proportional to the bulkiness of the product involved. I guess this gives new meaning to the term "weight of the evidence."

Text Copyright John L. Welch 2006.

Friday, March 10, 2006

Merchant & Gould Offers "Proposed Changes to TTAB Rules Webinar Presentation"

The Merchant & Gould law firm is offering a free webinar on March 15th on the proposed TTAB Rule Changes. See the announcement below. If you would like to "attend," you must respond to the invitation found here by March 14th. [I'm told that the term "webinar" means that those who sign up will participate in a conference telephone call while a PowerPoint presentation is broadcast on the Internet.]

The Merchant & Gould Trademark Group presents:

TITLE: Proposed Changes to TTAB Practice Webinar

DATE: Wednesday, March 15, 2006

TIME: 9:00-10:00 a.m. CST

The Trademark Office has proposed significant procedural changes to contested proceedings. The proposed changes, which move TTAB practice even closer to Federal Rules practice, include:

* Party service of Notices of Opposition, Petitions for Cancellation

* Detailed Mandatory Initial Disclosures (with expected disclosure of information on origin of mark, dates of use, actual confusion evidence, third party use, non-trademark use of mark, classes of customers, channels of trade, current and past use of mark, surveys, other disputes related to mark)

* Expert disclosures, including identification and summary of subjects on which witness will testify

* Mandatory party discovery conference

* TTAB protective order form as the default order (in force absent party stipulation)

The TTAB is taking comments on the proposed rules until March 20, 2006. Learn how the proposed rules could greatly change TTAB practice and discuss possible comments.

Leo Stoller Submits Comments on Proposed TTAB Rule Changes

Frequent TTAB litigant Leo Stoller has submitted to the USPTO his comments on the proposed TTAB Rule Changes. Mr. Stoller believes that "the proposed rule changes will make the litigation process so complicated and costly for a small entity that the TTAB will in effect bar the courtroom door to a substantial number of small entities."

Mr. Stoller's comments are set forth in full:

The United States Patent and Trademark Office proposed Rules changes 37 CFR Part 2 RIN 0651-AB56 represents a clear violation of the Regulatory Flexibility Act, 5 U.S.C. 601, et seq., because the new rules would have a significant economic impact on a substantial number of small entities within the meaning of the Regulatory Flexibility Act.

The Department of Commerce Patent and Trademark Office (PTO) said Rules changes are in violation of Section 5 U.S.C. 604(3),(4) and (5) of the Act.

Under Section 611 Judicial review(a)(1) a small entity that is adversely affected or aggrieved by final agency action is entitled to judicial review of agency compliance with the requirements of sections 601, 604, 605(b), 608(b) and 610 in accordance with chapter 7. Agency compliance with sections 607 and 609(a) judicially reviewable in connection with judicial review of section 604. Leo Stoller and/or the entities that he represents before the Board will seek such judicial review if these said rules changes are enacted into the official Rules of the Trademark Trial and Appeal Board (TTAB).

The Rules Changes suggested will have a significant economic impact on Leo Stoller and on a significant number of small entities that practice before the TTAB. In fact these said rules changes will make it almost impossible for a small entity, a pro se litigant to represent itself before the Board forcing a significant number of small entities to not be able to afford to prosecute inter party proceedings before the Board. Leo Stoller is well qualified to make such a statement being one of the most prolific trademark litigators, who has practiced for over 25 years before the TTAB representing small entities.

Since Congress established the TTAB, the TTAB has had the responsibility of serving parties with the initial complaints. The TTAB proposes to amend its rules to require plaintiffs in inter party proceedings to serve on defendants their complaints. This shifting of service responsibility creates a significant economic impact on a substantial number of small entities.

This unlawful shifting of the service responsibility is also clear violation of the Paper Reduction Act. A small business entity should not be burdened with the responsibility of service of process on a defendant in an inter party proceeding. Shifting this responsibility to the small entity not only creates a significant economic impact on the small entities, it also acts as an unconstitutional bar to the small business access to the TRADEMARK TRIAL AND APPEAL BOARD in violation of the small entity's 5th and 14th Amendments, rights of due process and equal protection, in effect slamming the door of justice in the face of a significant amount of small entities who are not familiar with all of the necessary requirements of fulfilling their obligations, namely the additional time to locate and effect proper service, which is not even defined by the rules. The TTAB must not shift the service responsibility to the small entity and/or there must be an exception created which would excuse the small entity from the service of process obligation.

Secondly, the proposed modifications of the disclosure practices impose a significant impact on a significant number of small entities within the meaning of the Regulatory Flexibility Act. This proposal can be nothing more than an unconstitutional device by which the TTAB will drive the small entities from being able to practice before the board, pro se. The changes to the rules proposed by the TTAB should be entitled THE FULL EMPLOYMENT ACT FOR TRADEMARK ATTORNEYS, for trademark attorneys will be the only ones who will be able to follow the new disclosure and TTAB discovery practices.

The TTAB would be well advised to leave well enough alone. Leo Stoller has spoken directly to Chief Judge and has expressed his complete dissatisfaction with all of the unnecessary, complex rule changes. Leo Stoller attended the PTO Conference held at NORTHWESTERN UNIVERSITY LAW SCHOOL and expressed his complete dissatisfaction with the proposed rules changes to the PTO Chief Counsel and the Commissioner of Patents at the hearings all to no avail.

Leo Stoller goes on record now stating that the proposed rules changes make the litigation process so complicated and costly for a small entity that the TTAB will in effect bar the court room door to a substantial number of small entities within the meaning of the Regulatory Flexibility Act, the Act that was amended by the Business Regulatory Enforcement Fairness Act of 1996.

If any of these new unconstitutional rules changes are put in effect by the TTAB, Judicial review under section 611 of the act will be sought.

The only rule change that Leo Stoller would endorse, would be for the TTAB to again allow Plaintiff's to serve upon the Board, along with a complaint, their discovery, which the Board would serve upon the defendants. At one time, the TTAB served upon the Defendants, the Plaintiff's complaint and discovery. That caused more cases to settle more quickly than any of the suggested rules changes.

The sad fact that the TTAB must realize that none of the suggested rules changes will accomplish any of the intended improvements that the TTAB wishes. The TTAB should be will advised to leave well enough alone and not attempt to fix a program that is not broken. The only thing that the TTAB will accomplish by attempting to put forth these said rules changes will be to violate the Regulatory Flexibility Act. If in fact the TTAB is intent on these Rules changes, there should be an exception for the small entities within the meaning of the Regulatory Flexibility Act. In other words none of the new rules should apply to a small business that is pro se before the Board.

The said rules changes by the TTAB trump the constitution and slams the court room door on the small entities in violation of the Regulatory Flexibility Act, and should be shelved.

Most Cordially,

Leo Stoller
rentamark.com
773-589-0340
P.O. Box 35189
Chicago, Illinois 60707-0189

TTABlog note: Several readers have noted the language in Mr. Stoller's comments that refer to his "practicing" before the Board and "representing" small entities, and they have asked me whether Mr. Stoller is a lawyer. As far as I know, he is not. I understand that he has a bachelor's degree in Theatre from Mayville State University in Mayville, North Dakota.

Generally, only an attorney may represent a party before the TTAB. But see Trademark Rule 10.14(e), which states that "Any individual may appear in a trademark or other non-patent case in his or her own behalf. Any individual may appear in a trademark case for (1) a firm of which he or she is a member or (2) a corporation or association of which he or she is an officer and which he or she is authorized to represent, if such firm, corporation, or association is a party to a trademark proceeding pending before the Office."
.

Citable No. 13: TTAB Affirms Surname Refusal of "GIGER MD" for Exercise Machines

I'm beginning to feel like Lucille Ball in the chocolate factory. The citable decisions are rolling out of the TTAB kitchen with increasing rapidity. In its 13th citable decision of 2006, the Board affirmed a Section 2(e)(4) refusal to register GIGER MD for therapeutic exercise machines. In re Giger, 78 USPQ2d 1405 (TTAB 2006).

Examining Attorney A.D. Saunders issued the PTO refusal, relying on 545 entries for the surname "Giger" in the USFIND database, "negative" dictionary evidence, LEXIS/NEXIS printouts that "show several individuals throughout the United States who have the surname 'Giger,' and a printout from Ancestry.com indicating 15,177 matches for that surname in its database.

Joint Applicants Adrian and Thomas Giger argued that the Examining Attorney improperly included evidence with the PTO's denial of their request for reconsideration, but the Board disagreed, citing TBMP Section 1207.04.

The Board applied its standard Section 2(e)(4) test set forth in In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000). It first noted that 545 entries in the USFIND database "is not substantial evidence that the term 'Giger' is a common surname," and it then distinguished In re Gregory, 70 USPQ2d 1792 (TTAB 2004) [The surname "Rogan," which appeared in 1,087 phone listings, was not a rare surname because of the press attention paid to James Rogan, former California congressman and PTO Director]. The Board concluded that "Giger" is "not a common surname" and thus "it would be somewhat rare." However, the Board noted, such a surname may still run afoul of Section 2(e)(4).

Turning to the other factors, the Board pointed out that not only is the name "Giger" the surname of the applicants, but "applicant's surname is featured in Applicants' promotional material." Moreover, there is no evidence that "Giger" has any other meaning in English or any other language. Finally, the Board concluded that "Giger" has the "look and feel" of a surname. Those three factors weighed against the Applicants.

The Board therefore ruled that the Applicants had failed to overcome the PTO's prima facie case that GIGER is primarily merely a surname.

Moreover, the addition of MD to the surname GIGER does not change the significance of the mark:

"There would be nothing incongruous with using a surname with the abbreviation MD for medical and therapeutic equipment. It is certainly not a nebulous term that detracts from the surname significance."

Considering the primary significance of the mark when used with Applicants' goods, the Board concluded that the term is primarily merely a surname.

TTABlog comment: Of course "Giger" has the look-and-feel of a surname. It's just like "Geiger," as in Gary Geiger, former Red Sox outfielder and inventor of a device for keeping track of how many pitches a pitcher has thrown in a game (the "Geiger Counter").

Text Copyright John L. Welch.

Thursday, March 09, 2006

Distinguishing Dell, TTAB Finds Webpage Specimen Unacceptable for DVR

Ruling that Applicant's webpage specimen did not show actual trademark use, the Board affirmed a refusal to register the mark SHOW NAV for "digital video recorder featuring viewer selection option of recorded program segments." In re TeleVentions, LLC, Serial No. 78309794 (February 14, 2006) [not citable].

SHOW NAV specimen of useClick on picture for larger image
Applicant TeleVentions contended that In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004) is "directly applicable," and that its specimen (shown above) constitutes a display associated with the goods. [At the bottom of the SHOW NAV specimen, the following statement appears under the heading "Total Control": Show Nav: Power jump forward and back to show segments to get right to the parts you want to see."]

Examining Attorney Michael P. Keating argued that Dell is distinguishable on its facts and that "the proposed mark describes a feature of the REPLAY TV product rather than functioning as a trademark for the identified goods." He pointed out that the term SHOW NAV is "buried in the text describing the features of the REPLAY TV product," that the specimen does not include a photograph of the goods, and the website does not allow one to purchase the SHOW NAV feature, but only the DVRs themselves.

The Board agreed that Dell is directly applicable but factually distinguishable. [The Dell specimen is shown immediately below.] There, the applicant sought to register the mark QUIETCASE for "computer hardware; internal cases for computer hardware being parts of computer work stations." The specimen webpage described and offered a particular computer workstation, and referred to the QUIETCASE internal case. According to the Board, Dell "established that a website page such as applicant submitted herein may constitute a display associated with the goods." The Examining Attorney did not argue otherwise, but rather maintained that SHOW NAV "will not be perceived as a trademark for the identified goods."

Dell QUIETCASE specimenClick on picture for larger image
Recognizing that TeleVentions' specimen is "very similar" to the Dell specimen, the Board pointed out that here "the problem arises not from the lack of a picture of the product or from the size or location of the term SHOW NAV on the specimen. Instead ... SHOW NAV identifies a navigational feature of the product rather than functioning as a mark identifying the digital video recorders recited in the application."

The Board therefore affirmed the refusal under Sections 1, 2, and 45 of the Trademark Act.

TTABlog comment: I agree that SHOW NAV does not function as a trademark, but I disagree that the size and location of the term on the specimen is not a "problem." I have the same problem with the Dell decision. As I stated in a prior posting (here), I don't think the Dell webpage is a proper specimen of use. The phrase "QuietCase(TM) acoustic environment" is buried in one of several bullet points on the webpage and hardly leaps off the page and grabs the reader. [And what is an "acoustic environment," anyway?] I have no problem with a website page being a proper trademark specimens for goods, provided the mark in question is displayed like and has the impact of a trademark. QUIETCASE does not. Nor does SHOW NAV.

Text Copyright John L. Welch 2006.

Wednesday, March 08, 2006

TTABlog Hears Growing Groundswell of Non-Support for Proposed TTAB Rule Changes

The TTABlog has heard rumblings of discontent over the TTAB's proposed rule changes. We can expect the major IP organizations to weigh in on the issue soon, and it may not be pretty.

Former TTAB Judge David Kera offers his Comments at the new TTAB-Rules blog created by the Oblon, Spivak firm in Alexandria, Virginia. Practitioners may post their own comments at the Oblon, Spivak blog, whose purpose is described in the firm's announcement:

Dear Colleagues:

Welcome to the Oblon, Spivak TTAB-Rules Blog.

We have created this blog to serve as a resource for practitioners who practice before the Trademark Trial and Appeal Board. The rules package published on January 17, 2006 is quite extensive, some 12 pages in length, and comments to the proposed rules must be filed with the USPTO by March 20, 2006.

The proposed rules are likely to have a serious and negative impact on the ability of trademark owners to solve trademark issues before the Board in a cost-effective manner. We are concerned that the new rules will encourage more trademark owners to resort to the federal courts, as the procedures at the Board will become far more cumbersome, with increased costs to the parties.

We believe that further time is needed to carefully evaluate the impact of the new rules, and former TTAB Judge David Kera appeared before the Trademark Public Advisory Committee (TPAC) earlier this week and encouraged the PTO to extend the public comment period, and to hold hearings on the proposed rules. The PTO has not yet decided whether to extend the deadline, or whether to hold public hearings, and we encourage you to request that the Board do so.

Comments can be submitted by e-mail to AB56Comments@uspto.gov or by mail to the address listed in the Federal Register notice.

It is our hope that this blog can serve as a mechanism for the exchange of views on the proposed rules. Please share with other readers your views and/or post your submission to the PTO. You may wish to subscribe to this blog via an RSS reader to keep current on postings to the blog. Please feel free to e-mail us at: ttab-rules@oblon.com

Sincerely,

Oblon, Spivak
1-703-413-3000

I hope Leo Stoller takes some time out from his filing of extension requests to give us his views. [He's filed 72 in the last three days, so maybe not].

Text Copyright John L. Welch 2006.

Tuesday, March 07, 2006

New "Shape Blog" Focuses on IP Protection of Product Design

Filling one of the last remaining voids in the IP blogworld, the bloggers at ReThink (IP), the TTABlog, and the Trademark Blog have launched a joint venture called the "Shape Blog."

Marty Schwimmer of the Trademark Blog, a founding father of the Shape Blog, describes the new blog as follows:

The Shape Blog has two subjects.

The first subject is an 'inter-disciplinary' analysis of the protection of design and three-dimensional objects. Practitioners experienced in trademark, trade dress, copyright and patent law will provide news and commentary on the legal treatment of design and any object that incorporates design.

The second subject will be 'personal fabrication.' The creation of Shape Blog was inspired by the book 'Fab' by Professor Neal Gershenfeld To over-simplify:-just as the dropping prices and widespread dissemination of computing power led to the personal computing revolution, dropping prices and dissemination of CAD/CAM techniques will lead to a personal fabrication revolution, where the average home will have the ability to 'fabricate' exact replicas of three-dimensional objects (replacement parts, artworks, furniture) according to software instructions, perhaps downloaded from the Internet.

We will therefore be tracking not only advances in IP protection but advances in the technologies that may lead to a personal fabrication industry (such as desktop prototyping).

In short, we will be discussing the opportunities and dangers that arise for design when you can email an Eames Chair.

I look forward to contributing to the Shape Blog. Readers are encouraged to send comments and suggestions.

"GREEN by Missako" for Clothing Confusingly Similar to "GREEN" for Footwear, Says TTAB

Color Missako Franchising blue after its attempt to register the mark shown below for various clothing items was thwarted by two existing registrations for the mark GREEN for footwear (owned by the same entity). [The words "by Missako" appear in very small lettering below the word "GREEN." "GREEN" is disclaimed.] The Board found Missako's mark likely to cause confusion with the registered marks, and it therefore affirmed the PTO's Section 2(d) refusal to register. In re Missako Franchising, S.A., Serial No. 78254972 (February 21, 2006) [not citable].

Examining Attorney Leonard Tachner maintained that the applied-for mark is dominated by the word GREEN, and that third-party registration evidence demonstrated that clothing and footwear are related goods.

Missako argued that the term "green" is in common use in the clothing field and therefore is an insufficient basis for a likelihood of confusion finding, that the design portion of its mark dominates the word GREEN, and that the presence of BY MISSAKO makes confusion even less likely. Missako submitted 71 third-party registrations for marks that include the word GREEN for clothing or footwear.

The Board agreed with the Examining Attorney. Noting that there is no per se rule in cases involving clothing and footwear, it pointed to prior TTAB decisions finding likelihood of confusion in such cases, and to the PTO's third-party evidence, in finding the goods related.

As to the marks, the Board found them sufficiently similar that confusion would be likely. Although the design portion of Missako's mark plays a "prominent role in the commercial impression engendered" by the mark, the word GREEN is the dominant element of the mark and therefore is accorded greater weight in the likelihood of confusion analysis.

"Although applicant is correct in pointing out that the Federal Circuit has cautioned that there is no general rule as to whether words or a design dominate in a particular mark, it is highly unlikely that consumers will call applicant's goods by "the sun burst design" or "the daisy flower design"; rather, given the easily pronounced and one-syllable word "Green," it is far more likely that this term will be used by customers in buying applicant's clothing."

Missako asserted that its mark "creates the impression of a child's garden, a sense reinforced by the child-like lettering design of the word 'green.'" The Board noted that the record contained no evidence to support this argument. To the extent that "GREEN" may suggest the outdoors or a clean environment, the same suggestion may be conveyed by Registrant's mark.

In sum, the Board concluded that "the marks, when considered in their entireties, create similar commercial impressions, and the differences between the marks are insufficient to distinguish them when used in connection with related goods."

Missako's argument, based on third-party registrations (including the following marks: GREEN BRAND, GREEN LABEL, GREEN GEAR, and THE GREEN COLLECTION), that "the term 'green' is exceedingly weak as applied to items of wearing apparel including footwear" went nowhere. The Board noted that there are no other registrations of GREEN per se, and further that this third-party evidence is of extremely limited value because it does not establish that the marks are in use or that the public is familiar with them.

Finally, the presence of the phrase BY MISSAKO in Applicant's mark is insufficient to distinguish the marks, particularly in light of the "very small" size of those words relative to the rest of the mark. "Further, it is more likely that consumers will refer to the goods as GREEN, as opposed to the entire phrase GREEN BY MISSAKO."

Noting that any doubt about likelihood of confusion must be resolved in favor of the prior registrant, the Board affirmed the Section 2(d) refusal.

TTABlog comment: Had Applicant's mark been the word mark GREEN BY MISSAKO in standard characters, the outcome might have been different. But it is a bit annoying that the word GREEN is registered for clothing and footwear. How did that happen?

One is reminded of In re Rizzo, Serial No. 75461632 (February 20, 2004) [not citable], in which the Board affirmed a refusal to register the alleged mark SEPIA on the Supplemental Register because the term was incapable of functioning as a trademark. “Simply put, while ‘sepia’ is not a generic term, in the sense that it is not the name of any particular cosmetic product . . . it is used to identify a color of the goods, irrespective of their source, and hence must remain in the public domain, so that any seller or manufacturer of cosmetics retains the ability to tell prospective purchasers that its goods are available in the color sepia.” The same reasoning would seem to apply to the word "green" vis-a-vis footwear.

Text Copyright John L. Welch 2006.

Monday, March 06, 2006

Citable No. 12: TTAB Throws Wet 2(e)(1) Blanket on "PARTY AT A DISCOUNT!" Application

In its 12th citable decision of 2006, the Board played the role of party pooper by affirming the PTO's Section 2(e)(1) refusal to register the mark PARTY AT A DISCOUNT! The Board found the mark to be merely descriptive of Applicant Promo Ink's services, identified as "preparation and dissemination for others of advertising and promotional matter via global computer communications networks in the field of shopping for goods and services." In re Promo Ink, 78 USPQ2d 1301 (TTAB 2006).

Every year or so, the Board deems citable a decision confirming the PTO's right to demand relevant information from an applicant under Rule 2.61. [See Section I.C. of my article, "The TTAB in 2004: What Was Hot, What Was Not."] Here, the situation was a little different: Examining Attorney Yong Oh (Richard) Kim relied upon Internet printouts that he obtained from Promo Ink's website. (see example above). Promo Ink objected, arguing that its application was based on intent-to-use, that specimens of use were not required, and that it was therefore improper for the Examining Attorney to introduce this evidence. Not surprisingly, the Board quickly dismissed that assertion:

"... the fact that applicant has filed an intent-to-use application does not limit the attorney's evidentiary options, nor does it shield an applicant from producing evidence that it may have in its possession."

The Board noted that had the Examining Attorney requested this same material under Rule 2.61(b), Promo Ink would have had to produce it. Contrary to Promo Ink's lame argument, the PTO was not "producing a specimen for applicant" nor was it "requiring applicant's intent-to-use application to meet the requirements of a use-based application." The Examining Attorney was instead "using the printouts as evidence that the mark is merely descriptive of applicant's services."

As to the "central" issue in the case, mere descriptiveness vel non, the Examining Attorney also submitted dictionary definitions of "party" and "discount." According to the Board, the Internet evidence "shows that there are services that involve disseminating promotional information that features discount coupons for parties."

The Board found that a "significant feature" of Promo Ink's services involved discounts for parties. For example, the website printouts refer to "Top Values" for parties in New York City, including "John's of 12th Street - $50 Gift Certificate with party."

Concluding that potential customers would immediately understand that the phrase PARTY AT A DISCOUNT! "exactly describes the services, i.e., that the services involve parties at a discount," the Board ruled that Applicant's mark is merely descriptive.

Text Copyright John L. Welch 2006.

Saturday, March 04, 2006

USPTO Issues Another Notice Regarding Its Failure to Notify WIPO in 42 More Section 66(a) Applications

On February 28, 2006, the USPTO again issued a Notice Regarding Certain Requests for Extension of Protection Under Trademark Act § 66(a) regarding its failure to provide timely notice to the International Bureau (IB) at WIPO under Section 68(c)(1)(C) of the Trademark Act. The PTO issued a nearly identical notice on November 7, 2005, reported here at the TTABlog. This February 28 Notice, however, adds the statement that "The USPTO has corrected the condition that resulted in a failure to send the notices. To ensure that this problem will not happen again, until further notice the USPTO will send both an electronic and a paper notice of possible opposition to the International Bureau."

Pursuant to Trademark Act § 68(c)(1), 15 U.S.C. § 1141h(c)(1), the USPTO must, within 18 months of the date a request for extension of protection is transmitted to the USPTO, send to the International Bureau of the World Intellectual Property Organization notice of: (A) a refusal of registration based on examination of the request; (B) an opposition to registration; or (C) the possibility that an opposition may be filed after the conclusion of the 18-month period. If a notice under either subsection (B) or (C) is not sent within the 18-month period, the Trademark Trial and Appeal Board may not entertain an opposition to registration, and "the Director shall issue a certificate of extension of protection pursuant to the request." Trademark Act § 68(c)(4), 15 U.S.C. § 1141h(d)(4).

The notice required under § 68(c)(1)(C), 15 U.S.C. § 1141h(c)(1)(C), was inadvertently not sent with respect to a number of requests for extension of protection, which are listed below by serial number. Because in each case more than 18 months has passed since transmission of the request for extension of protection to the USPTO, no opposition or extension of time to oppose may be considered, and if filed, will be dismissed. The USPTO will promptly issue a certificate of protection with respect to the listed requests.

Affected parties are not precluded from filing a petition for cancellation of the certificate of protection, if otherwise appropriate.

The USPTO has corrected the condition that resulted in a failure to send the notices. To ensure that this problem will not happen again, until further notice the USPTO will send both an electronic and a paper notice of possible opposition to the International Bureau.

79001941 79002208 79002588 79003583

79002197 79002440 79002603 79002517

79002656 79002452 79002612 79002470

79002472 79002466 79002614 79003124

79002492 79002468 79002621 79000129

79002577 79002478 79002630 79001952

79002591 79002481 79002631 79002788

79002620 79002503 79003120 79003475

79002622 79002515 79003458 79002125

79002632 79002556 79003459

79003571 79002566 79003573

TTABlog note: For additional discussion of this problem, see the TTABlog posting of October 25, 2005 (here).

Text Copyright John L. Welch 2005-6.

Friday, March 03, 2006

"SPYRO" (the Dragon) Blocked by Broad "Computer Software" Registration in TTAB 2(d) Affirmance

The Board refused to read limitations into a cited registration for the mark SPYRO for "computer software," and it therefore affirmed the PTO's Section 2(d) refusal to register SPYRO for Applicant Universal Interactive's computer game software. Universal's argument that the registered mark is actually used only in the field of "producing ethylene ... in the engineering and petrochemical industries" was of no avail. In re Universal Interactive, Inc., Serial No. 78377319 (February 15, 2006) [not citable].

Examining Attorney Patty Evanko relied on a registration for the SPYRO mark for "computer software, namely, programs recorded on magnetic media, and user manuals sold therewith." The Board's du Pont analysis was straightforward: the marks are identical and the goods of the cited registration encompass Universal's computer game software.

The Board based its ruling on its prior decision in In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992), involving the same issue: "the likelihood of confusion between broadly defined computer goods in a registration and the same goods that are limited by subject matter in an application."

Of course, the Board gave its standard response to Universal's argument that registrant's goods are limited to the field of ethylene production: the Board will not read limitations into the identification of goods of a cited registration. "Quite simply, an applicant cannot produce the registrant's literature and thereby limit the scope of [registrant's] identification of goods."

The Examining Attorney noted that the cited registration issued in 1986, prior to the Linkvest case. "Therefore, the fact that examining attorneys today would require a more specific identification of goods does not effect (sic) the identification of goods that was approved twenty years ago."

The Board again pointed out that an applicant faced with a broad cited registration is not without remedies:

"Applicant may, of course, seek a consent from the owner of the cited registration, or applicant may seek a restriction under Section 18 of the Trademark Act, 15 U.S.C. Sec. 1068. This remedy is available for those who believe that a restriction in the cited registration(s) may serve to avoid a likelihood of confusion. See Eurostar Inc. v. 'Eurostar' Reitmoden GmbH Co. KG, 34 USPQ2d 1266 (TTAB 1994)." [quoting In re N.A.D., Inc., 57 USPQ2d 1872 (TTAB 2000).]

Universal trotted out two more useless arguments: first, it asserted that there has been no likelihood of confusion even though "both marks have been used in the marketplace for years." The Board, however, pointed out that likelihood of confusion is the test, not actual confusion, and it further observed that in this ex parte case, the views of the registrant on this issue are not available. Second, Universal claimed that it was entitled to the benefit of the doubt on the Section 2(d) issue, but the Board pointed out that the case law dictates just the opposite.

The Board therefore affirmed the refusal to register.

Thursday, March 02, 2006

Ill Wind Blows for "ERGONOMIC" Ceiling Fan Applicant: TTAB Citably Affirms Mere Descriptiveness Refusal

What happened to Hunter Fan Company reminds me of the old joke about the lady who backed into a window fan: dis-as-ter. (Actually, the old joke had her backing into an airplane propeller, but I've taken blogging license here). In the TTAB's 11th citable decision of 2006, the Board affirmed a Section 2(e)(1) refusal of the mark ERGONOMIC, finding it merely descriptive of "ceiling fans." In re Hunter Fan Co., 78 USPQ2d 1474 (TTAB 2006).

Examining Attorney Tonja M. Gaskins contended that the mark is "merely descriptive of a significant feature of the goods, specifically that the goods feature an 'ergonomic design.'" She submitted printouts from third-party websites at which the term "ergonomic" was used to describe a third party's or applicant's fans.

Hunter Fan argued that dictionary definitions of the word ERGONOMIC "support a finding that the term, while possibly descriptive for goods such as computer keyboards, is not descriptive of devices, including ceiling fans, that do not directly interact with a human user in a manner that reduces operator fatigue or discomfort."

The Board, however, found that the dictionary definitions supported the PTO's position, particularly the definition of ergonomics as "The engineering science concerned with the physical and psychological relationship between machines and the people who use them." The Board saw "no difference in the level of interaction between the user of on and off switches and gauges, and the user of a ceiling fan. A ceiling fan is a device that people interact with by turning it on and off. Moreover, as shown by the definitions, people 'interact' with devices in a physical and psychological manner." It noted Hunter's own use of the term ERGONOMIC "as merely one other descriptor in a laundry list of descriptors ... as evidenced by the specimen of use [pictured above] in the application."

The Board concluded that ERGONOMIC "immediately describes, without need for conjecture or speculation, a significant feature or function of applicant's goods, namely ceiling fans that are designed to operate and 'interact efficiently and safely' with the user and in a fashion that addresses the physical and psychological relationship between the goods and the user." It therefore affirmed the refusal to register.

TTABlog comment: When I first contemplated the mark ERGONOMIC used with a ceiling fan, I had to stop and think of whether there was some connection. I suspect others would do the same, because "ergonomic" to most people means (roughly) "comfortable" and "conducive to good posture." Fans cannot be described as either (as the lady in the joke found out). In my humble opinion, the mark ERGONOMIC would not, to most people, immediately describe the goods, but instead would require some thought to extract any meaning. To me, that means the mark is suggestive, not descriptive. The website evidence and Hunter's packaging, however, sort of blew away that argument.

Text Copyright John L. Welch 2006.

Wednesday, March 01, 2006

The Top Ten TTAB Decisions of 2005^®

Just in time for this year's list (see below), the USPTO last week issued a Supplemental Registration for the mark THE TOP TEN TTAB DECISIONS OF 20** for "Printed publications, namely, articles reviewing and commenting upon the decisions of the Trademark Trial and Appeal Board of the US Patent and Trademark Office."(Registration No. 3,061,302). The application was hung up in prosecution while the PTO contemplated whether the mark was unregistrable as a "phantom mark."

The Examining Attorney asserted that "'Phantom marks,' or marks that include an element that is subject to change, are unregistrable because they include more than a single mark," citing In re International Flavors & Fragrances, Inc., 51 USPQ2d 1513 (Fed. Cir. 1999) ["LIVING XXXX FLAVORS"] and Cineplex Odeon Corp. v. Fred Wehrenberg Circuit of Theatres Inc., 56 USPQ2d 1538 (TTAB 2000) ["---SHOW"; the broken lines "indicate a telephone prefix that will vary."]

In response, however, yours truly argued that the Examining Attorney had applied the "phantom mark" principle much too broadly because not all marks containing elements that are "subject to change" are ineligible for registration. The CAFC made that clear in In re Dial-A-Mattress Operating Corp., 57 USPQ2d 1807 (Fed. Cir. 2001), when it stepped back from its rigid one-mark-per-application stance of International Flavors. It ruled that Dial-A-Mattress could establish secondary meaning in connection with its application for the mark 1-888-M-A-T-R-E-S-S, based upon the acquired distinctiveness of its legally equivalent mark (212) M-A-T-T-R-E-S (shown above). [in each case "The drawing is lined to indicate that the area code will change."] The court recognized that the "212" mark is a "phantom mark" but it rejected the PTO's argument that the mark was therefore unregistrable and entitled to little weight, stating:

"Although the registration of the '(212) M-A-T-T-R-E-S' mark is a 'phantom' mark, the use of which we have questioned, see In re Int'l Flavors & Fragrances, Inc., 51 USPQ2d 1516-17 (Fed. Cir. 1999), it is apparent in the present case that the missing information in the mark is an area code, the possibilities of which are limited by the offerings of the telephone companies." 57 USPQ2d at 1813.

Just as the possibilities with regard to an area code are limited, so are the possibilities regarding the "year element" in the "Top Ten" mark. In fact, in the latter the number of possible year elements is limited to 100, whereas in the case of area codes there are perhaps as many as 999 possibilities.

Thus, I argued, because the CAFC has indicated that the inclusion of a phantom element in a mark is not fatal to registrability, and because the possibilities for the "Top Ten" mark are fewer than for the area code mark, the phantom mark refusal should be withdrawn.

Nearly two years later, the PTO responded by withdrawing the phantom mark refusal, but maintained its Section 2(e)(1) mere descriptiveness refusal -- which is why the registration issued on the Supplemental Register.

All of that leads to this year's list. The cases chosen for inclusion here are not necessarily the Board's "best" decisions for the year. [In fact, two on this list also made my "Ten Worst" list.] These are simply the decisions that I think are the most interesting or important from a practical standpoint. Seven of the ten are citable. The three uncitable cases are so identified. The ten cases are not presented in any particular order.

Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005). Everyone knows that the addition of your house mark to someone else's registered mark is not enough to avoid a Section 2(d) problem, right? Wrong. Here, third-party registration evidence played a crucial role in the Board's dismissal of this Section 2(d) opposition to registration of the mark NORTON MCNAUGHTON ESSENTIALS for women's clothing. In light of the appearance of the word ESSENTIALS in 23 third-party registrations in the clothing field, the Board concluded that "applicant's addition of its house mark [to Opposer's ESSENTIALS mark] ... suffices to distinguish the two marks." (TTABlog discussion here).

Blue Man Productions, Inc. v. Tarmann, 75 USPQ2d 1811 (TTAB 2005). The Board accords very broad protection to "famous" marks under Section 2(d), so it was good to see the Board raise the bar for proof of fame in this context. Here, the Board found Blue Man's evidence inadequate to support its fame claim, ruling that "in view of the extreme deference that is accorded to a famous mark in terms of the wide latitude of protection that it receives, and the dominant role that fame plays in the likelihood of confusion analysis, ... it is the duty of a plaintiff asserting that its mark is famous to clearly prove it." As to Opposer's dilution claim, the Board held that, since Opposer failed to prove the mark famous for Section 2(d) purposes, it could not possibly meet the "stricter standard" for dilution. (TTABlogged here).

Stoller v. Northern Telepresence Corp., Opposition No. 91162195 (February 11, 2005) [not citable]. The TTAB is moving inexorably toward mandatory electronic filing, and in this opposition it took another step in the ESTTA direction by ordering that the parties file all papers electronically. The Board exercised its "inherent authority to manage the cases on its docket" in order to "simplify matters" and "avoid unnecessary effort by the parties and undue delay." It ruled that it would "consider only those papers filed herein via the ESTTA system." The genesis of that ruling, and the basis for dismissal, was frequent TTAB litigant Leo Stoller's three bumbling and unsuccessful attempts to file by mail a request for an extension of time to oppose. (TTABlogged here.)

In re Isabella Fiore, LLC, 75 USPQ2d 1564 (TTAB 2005). In this questionable decision, the Board applied the doctrine of foreign equivalents in reversing a Section 2(e)(4) refusal of the mark FIORE for sports bags, purses, and other goods in class 18. Despite the PTO's strong evidence, the Board concluded that FIORE, an Italian word meaning "flower," is "the type of term that potential customers would stop and translate," and therefore that FIORE is not "primarily merely a surname." Completely lacking in the opinion is any consideration or analysis of the purpose of Section 2(e)(4), or the propriety of applying the doctrine of foreign equivalents in that context. (TTABlog discussion here).

In re Reed Elsevier Properties Inc., 77 USPQ2d 1649 (TTAB 2005). The Board affirmed a genericness refusal of the term LAWYERS.COM for "providing an online interactive database featuring information exchange in the fields of law, legal news and legal services." Applicant argued that its deletion of the word "lawyers" from its original recitation of services "limited its covered services," but the Board found the genus to include the provision of "information about lawyers and information from lawyers." The Board distinguished the CAFC's rulings in the STEELBUILDING.COM (In re Steelbuilding.com, 75 USPQ2d 1420 (Fed. Cir. 2005)), and PATENTS.COM (In re Oppedahl & Larson LLP, 71 USPQ2d 1370 (Fed. Cir. 2004)) cases, noting that in Steelbuilding the word "steelbuilding" is a double entendre, and in Oppedahl that only in exceptional cases will a top-level domain name (TLD) have trademark significance. (TTABlog discussion here).

First Niagara Ins. Brokers Inc. v. First Niagara Financial Group, Inc., 77 USPQ2d 1334 (TTAB 2005). The Board dismissed a Section 2(d) opposition because the Canadian Opposer failed to establish "use of its pleaded marks on insurance brokerage services regulable by Congress." Distinguishing this case factually from International Bancorp L.L.C. v. Societe de Bains de Met et du Cercie des Etrangers Monaco, 66 USPQ2d 1705 (4th Cir. 2003), the Board found Opposer's activities in the U.S. to be "minimal and incidental," and it ruled that Opposer "cannot establish priority and cannot prevail on its claim of likelihood of confusion." (TTABlogged here). [Update: this decision was reversed by the CAFC on January 9, 2007, and the case was remanded to the TTAB for further proceedings (here).]

In re Advanced Lighting Technologies, Inc., Serial No. 76422584 (April 21, 2005) [not citable]. Oral argument persuaded the Board to change its mind and rule that the mark E-LAMP is not merely descriptive of metal halide lighting systems and components. In its original decision the Board affirmed the PTO's mere descriptiveness refusal, but that decision was vacated in order to give Applicant the oral hearing it had requested. "During the oral hearing, applicant's counsel made a particularly cogent argument that while the prefatory letter 'E' is readily seen as connoting 'electronic' in the context of the Internet, it is not perceived this way as used in connection with electronic devices." The Board was therefore "not persuaded that the letter 'E' is a readily recognized shorthand for 'electronic' apart from functions involving the Internet or computers." (TTABlog discussion here.)

Vignette Corp. v. Marino, 77 USPQ2d 1408 (TTAB 2005). In a decision that seems to encourage discovery gamesmanship, the Board denied Opposer's summary judgment motion on the ground that Applicant's declaration submitted in opposition to the motion raised a genuine issue of material fact, even though Applicant had failed to provide the same information in response to earlier discovery requests. The Board did not require Applicant to provide "substantial justification" for his withholding or show that no harm was done, as required by FRCP 37(c)(1). (TTABlogged here).

Turbo Sportswear, Inc. v. Marmot Mountain Ltd., 77 USPQ2d 1152 (TTAB 2005). The Board continued to display its concern with the issue of fraud, here allowing the Applicant to introduce fraud counterclaims even though the case was already in Opposer's testimony period. The Board granted Applicant's motion to amend its answer to add the counterclaims seeking cancellation of five asserted registrations, finding the motion timely because it was based on evidence of non-use of the pleaded marks that was not previously available to Applicant. (TTABlogged here).

Hubcap Heaven, LLC v. Hubcap Heaven, Inc., Concurrent Use No. 94001147 (January 28, 2005) [not citable]. Concurrent use decision are as rare as a White Sox fan in Boston, but this otherwise mundane decision was noteworthy because of the Board's rhetorical question regarding the continued viability of the concurrent use registration in view of growing use of the Internet. The Board noted that there is "little judicial precedent or guidance" as to the impact of Internet websites on trademark infringement suits or concurrent use proceedings. However, it declined to create an absolute rule barring geographically restricted registration when one or more of the parties does business via the Internet, instead falling back on the old rubric that "the Board must look at the facts of each case." (TTABlog discussion here.)

Text Copyright John L. Welch 2005-2006.
"THE TOP TEN TTAB DECISIONS OF 20**" is a registered trademark of John L. Welch.

79001941	79002208	79002588	79003583
79002197	79002440	79002603	79002517
79002656	79002452	79002612	79002470
79002472	79002466	79002614	79003124
79002492	79002468	79002621	79000129
79002577	79002478	79002630	79001952
79002591	79002481	79002631	79002788
79002620	79002503	79003120	79003475
79002622	79002515	79003458	79002125
79002632	79002556	79003459
79003571	79002566	79003573

The TTABlog®