Precedential No. 14: Strength of "PROQUEST" Mark Leads to Conquest of "INQUEST" in 2(d) Opposition

The Trademark Trial and Appeal Board sustained an opposition to registration of the mark INQUEST for computer research software, finding the mark likely to cause confusion with the renowned mark PROQUEST, registered and used for information retrieval systems and computer assisted research services. ProQuest Information and Learning Co. v. Island, 83 USPQ2d 1351 (TTAB 2007) [precedential].


Based on thousands of pages of exhibits, the Board agreed that Opposer is "a global leader in providing electronic and digital solutions and educational resources to institutions and individuals." Applicant Jacques R. Island's identification of goods "represents a large slice of the goods actually offered by Opposer," as well as of the goods identified in Opposer's registrations. Therefore, this du Pont factor "clearly favors the position of opposer herein."

As to channels of trade, both parties target the same customers: libraries, academic institutions, corporations, and government agencies. Although the purchasers of the parties' goods and services are discriminating, end users are "not likely to exercise more than ordinary care when confronted with the parties respective marks and products." Thus these two factors pointed in ProQuest's direction.

As to the strength of Opposer's mark, the Board noted that more than ten million college and university students currently have access to opposer's PROQUEST online service [TTABlog query: how many of them actually use the service?], as do more that 35,000 K-12 schools (with more than 70% penetration into middle schools and high schools). By 2004, the daily usage of the PROQUEST online service had increased to more than 2,500,000 page views per day. Since 1990, Opposer's revenues were in the hundreds of millions of dollars and it spent more that $40 million in advertising.

The Board found "widespread recognition and renown" for the PROQUEST mark. However, the Board was not convinced "that this mark is famous to members of the general public at large." [TTABlog comment: why the Board bothered to make this observation is not clear, since the CAFC ruled in Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689 (Fed. Cir. 2005), that fame for Section 2(d) purposes is to be measured with regard to "the class of customers and potential customers of a product or service, and not the general public."] Instead, the Board "would characterize this renown as niche market fame." [TTABlog comment: Why the Board would want to introduce the concept of "niche market fame" into the 2(d) arena is also not clear, particularly in a case where both parties occupy the same "niche" anyway.].

The Board noted that, since fame is considered a "dominant" factor in the du Pont analysis, "this critical factor weighs strongly in favor of finding a likelihood of confusion here."


With Applicant reeling from the findings made thus far, the Board turned to the similarities in the marks, ominously noting that when marks are applied to virtually identical goods and services, the degree of similarity required for a finding of likelihood of confusion is lessened.

The Board ruled that "Quest" is not descriptive, but at most suggestive of Opposer's goods and services. It agreed with Opposer that "Quest" is the dominant portion of each mark, and it found "a similarity in commercial impression despite the obvious dissimilarity in appearance, pronunciation and connotation of the respective prefixes." [TTABlog query: What about the marks as a whole?] Moreover, Applicant Island's mark, shown in standard character format in his intent-to-use application, could be displayed in a manner similar to Opposer's common law mark shown above, with the "Q" in larger size and different font than the other letters. Thus the issue of similarity of the marks favored Opposer.

Weighing all the factors, the Board found confusion likely, and it sustained the opposition.

Opposer also pleaded dilution, but the Board found it unnecessary to reach that claim. [TTABlog note: Although if the Board's ruling on likelihood of confusion were to be reversed, it might then have to decide the dilution claim. Perhaps it would have been better, in the interest of judicial economy, for the Board to decide the dilution claim as well, so that both issues could be appealed at once rather than handled separately].

TTABlog final comment: Despite the obvious differences in the marks and the plainly different meanings of INQUEST and PROQUEST, there was no way in heck that this ITU applicant was going to win this opposition.

Text Copyright John L. Welch 2007.

"KRAUSE" Application Void for Non-Use, But Opposer's Fraud Claim Fails

The Board sustained an opposition to registration of the mark KRAUSE for "museum services" on the ground that Applicant Chet Krause had never used the mark for those services. However, it rejected Opposer's fraud claim because Opposer failed to prove the requisite element of intent regarding Mr. Krause's false statements as to use. Krause Publications, Inc. v. Krause, Opposition No. 91160072 (February 15, 2007) [not precedential], affirmed without opinion, Appeal No. 07-1364 (CAFC December 7, 2007).

Chet
Chester Krause filed the subject application in 2003, claiming use of the mark KRAUSE for museum services since 1959. Opposer KPI alleged likelihood of confusion in view of its registration for the mark KRAUSE PUBLICATIONS for award competitions in the field of cutlery, as well as its prior use of that mark for publications relating to automobile restoration and collection.

Nonuse: The evidence showed that Mr. Krause is a collector of automobiles, coins, and stamps. He purchased the first vehicle for his collection in 1959 (a Model-T truck) and subsequently added many vehicles. He never advertised his collection and never made it available to the public, but he would show it upon request to those interested. Not until 1998 did Krause erect a sign to identify the location of the collection. He never referred to his collection as a "museum."


With regard to stamps and coins, they were maintained in a vault and shown to the public on request, but were not advertised. In fact, fearing theft, Krause "made extra efforts to project the image that we didn't own large collections of coins or stamps."

The Board adopted the definition of "museum" found in the Merriam-Webster Online Dictionary: "an institution devoted to the procurement, care, study, and display of objects of lasting interest or value." Considering Krause's activities as a whole, the Board concluded that Krause was not offering "museum services" when he filed the subject application. Consequently, the application was deemed void ab initio, and the opposition was sustained on the ground of nonuse.

Fraud: Opposer KPI claimed the Krause committed fraud by falsely stating the he used the mark KRAUSE in interstate commerce for museum services, and in claiming first use dates in 1959. The Board noted that fraud must be proven with "clear and convincing evidence," and that "fraud will not lie if it can be proven that the statement, though false, was made with a reasonable and honest belief that it was true."

As to the first use dates, the Board pointed out that, if a mark was in use at the time an application is filed, "a claim of first use, even if false, is not fraud." Thus, the Board reasoned, Opposer's fraud claim based on the dates of first use is legally insufficient because "fraud cannot lie based on claimed dates of first use." [TTABlog comment: This seems to be a nonsequitur, since Krause's mark was not in use for museum services as of his filing date. Apparently, "use" here means any use at all, not just use for museum services.]

As to Krause's false statements in his application and his 2(f) declaration regarding use of the mark for museum services, the Board looked to Krause's intent: "an intent to deceive must be 'willful.'"

"If it can be shown that the statement was a 'false misrepresentation' occasioned by an 'honest' misunderstanding, inadvertence, negligent omission or the like rather than one made with a willful intent to deceive, fraud will not be found. Fraud, moreover, will not lie if it can be proven that the statement, though false, was made with a reasonable and honest belief that it was true...."

Here, there was "no proof in the record that applicant did not personally believe that he was not [sic!] providing museum services when he filed his application or when he signed his declaration under Section 2.41(b)." "Because opposer [sic!] had a good faith belief that his activities constituted the rendering of museum services, the element of intent that is necessary to prove fraud is missing." [In this regard, the Board cited last year's Maids to Order decision, in which Respondent's president reasonably and in good faith averred that her company's mark was in use in interstate commerce, the Board finding it unnecessary to decide whether the mark had been in use only in intrastate commerce.]

Therefore, the Board dismissed Opposer's fraud claims.

TTABlog comment: Compare the willingness of the Board to look carefully at Chet Krause's intent, with the Board's approach in the recent Hurley decision. There, the Board found fraud because Applicants had not used their mark at all for some of the services recited in their application. In such a case of total nonuse the Board will not look at the innocence or subjective intent of the party. Here, Krause had (arguably) used his mark for his collection, and believed he had the right to label his services with the tag "museum services," just as Ms. Kern in Maids to Order believed that her mark had been used in interstate commerce.

That being said, I do think the Board was rather lenient with regard to Mr. Krause.

Text Copyright John L. Welch 2007.

Precedential No. 13: Peruvian Owner of "PARDO'S CHICKEN" Invokes Pan American Convention to Establish Priority in 2(d) Opposition

The TTAB granted Applicant's motion for summary judgment in this Section 2(d) opposition, ruling that Applicant, the junior user of the mark PARDO'S CHICKEN & Design in the U.S., had established priority under Article 7 of the Pan American Convention. Diaz v. Servicios De Franquicia Pardo's S.A.C., 83 USPQ2d 1320 (TTAB 2007) [precedential].


Opposer Mario Diaz claimed use of the mark PARDO'S CHICKEN for restaurant services from a date prior to Applicant's U.S. filing date in November 2002. Applicant asserted that as the owner of the mark in Peru, it is entitled to priority as a matter of law under Article 7 of the Pan American Convention.

Although Applicant did not seek to amend its Answer to assert specifically a defense of priority under the Pan American Convention, the parties treated the issue on the merits in their briefs and Opposer did not object to Applicant's motion. Moreover, Applicant "alluded" to the Convention in one of its affirmative defenses. The Board therefore deemed that affirmative defense to have been amended to assert priority under the Convention.

In British-American Tobacco Co. v. Phillip Morris Inc., 55 USPQ 1585 (TTAB 2000), the Board ruled that the Pan American Convention "has the same force as a federal statute and provides remedies independent of the Lanham Act." The Board also concluded that it had jurisdiction to consider a claim (for cancellation) brought under Article 8 of the Convention.

Here, Applicant invoked Article 7 of the Convention to claim priority. That section provides that any owner of a mark protected by the domestic law of a contracting state may challenge or oppose anyone who is using that mark or applying to register it in another contracting state, and in such challenge or opposition said owner is entitled to "the preferential right to use such mark ... or priority to register ..." upon compliance with the requirements of the domestic legislation in both states.

"Thus, the issue before us is whether applicant is entitled to assert priority under Article 7 in this forum."

The Board's starting point was "to discern the intent of the Pan American Convention," which it found to be the creation of "a uniform system for the protection of foreign trademarks."

Next, it analyzed the text of Article 7, and found that it "clearly confers to eligible trademark owners a 'preferential' or prior right where the requirements of the article have been satisfied."

The Board then held that it has the authority (i.e., subject matter jurisdiction) to entertain Applicant's priority claim under Article 7.


Turning to the issue of whether Applicant was entitled to summary judgment, the Board found no genuine dispute that (1) Applicant is "the owner of a PARDO'S CHICKEN mark protected in Peru;" (2) that Applicant "may have known that opposer is using or seeking to register an interfering mark in the United States;" that Opposer Diaz had knowledge of Applicant's use of the mark in Peru; and (4) that Applicant has complied with the requirements of Peru and the United States by filing for protection of its mark under Section 44 of the Lanham Act.

As to the third point, the evidence showed that Applicant Diaz is a Peruvian citizen born in Peru, who lived in Peru prior to moving to the United States, and who has travelled to Peru in the past ten years. He lived in Peru at an address less than 20 blocks from one of Applicant's restaurants. And prior to opening his restaurant in Florida, Diaz erected a sign bearing the words PARDO'S CHICKEN in the same stylization and color as that used by Applicant in Peru. The Board therefore concluded that there was no genuine issue of material fact regarding Diaz's knowledge of Applicant's use of the PARDO'S CHICKEN mark in Peru prior to his first use in the U.S.

Opposer Diaz asserted that a genuine issue of material fact existed regarding Applicant's bona fide intent to use its mark in the United States, one of the requirements of Section 44. However, the affidavits of Applicant demonstrated that it has undertaken exploratory efforts to expand to the United States, has advertised its restaurants in newspapers with a U.S. distribution, and has formed a corporation in Florida. The Board therefore found no genuine issue of material fact regarding Applicant's intent to use its mark.

In view of its decision in favor of Applicant on the issue of priority, the Board concluded that Opposer could not prevail on its Section 2(d) claim, and it therefore dismissed the opposition.

TTABlog note: Applicant has opened a restaurant in New York City, at 92 Seventh Avenue in the West Villge.


Text Copyright John L. Welch 2007.

Seattle Trademark Lawyer Reports on TTAB Oral Argument in "SPAM ARREST" Cancellation Proceeding

Michael Atkins provides a detailed report here at his Seattle Trademark Lawyer blog, on the oral argument held Friday, February 23rd in the Hormel Foods Corp. v. Spam Arrest LLC cancellation proceeding (No. 9202134).

PTO Proposes Shortened Time Period for Filing Reconsideration Requests

In a Notice published on February 14, 2007, the USPTO proposes to amend Rule 2.64 of the Trademark Rules "to require a request for reconsideration of an examining attorney's final refusal or requirement to be filed through the Trademark Electronic Application System (TEAS) within three months of the mailing date of the final action." [Hold it! See update here. Negative comments have led the PTO to reconsider this proposed change.]


The PTO states that this new rule "may eliminate the need for some appeals or petitions, and reduces the need for remands and transfers of applications on appeal."

The revised sections of Rule 2.64 would read as follows:

2.64 Final Action

(b)(1) During the three-month period after issuance of a final action, the applicant may request that the examining attorney reconsider the final action. The request must be filed through TEAS. The filing of a request for reconsideration will not extend the time for filing an appeal or petitioning the Director.
(2) During the six-month period after issuance of a final action, the applicant may submit amendments. Any such amendments will be examined, and will be entered if they comply with the rules of practice in trademark cases and the Act of 1946. The filing of such an amendment will not extend the time for filing an appeal or petitioning the Director.
(c)(1) If an applicant in an application under Section 1(b) of the Act files an amendment to allege use under Section 2.76 during the six-month period after issuance of a final action, the examiner shall examine the amendment. The filing of such an amendment will not extend the time for filing an appeal or petitioning the Director.

Written comments on the proposed rule change must be received by the USPTO by April 16, 2007.

TTABlog comment: This proposed change would give the practitioner another date to docket, and would require him or her to assess the chances of appellate success (and essentially prepare the appellate brief) a bit earlier. It would save the TTAB some time and effort to the extent that the request for reconsideration is granted and the underlying refusal withdrawn, and it would then save that applicant the $100 appeal fee. Otherwise, the impact of the change would appear to be minimal.

Text Copyright John L. Welch 2007.

Precedential No. 12: Kellogg Fails to Rebut 2(f) Claim in "CINNAMON TOAST CRUNCH" Opposition

On remand from the U.S. District Court for the Eastern District of Michigan, the Board dismissed Kellogg's opposition to registration of the mark CINNAMON TOAST CRUNCH for a "cereal derived ready-to-eat food bar." Kellogg failed to rebut General Mills' prima facie case of acquired distinctiveness based on transfer of the acquired distinctiveness of the identical mark for breakfast cereal. Kellogg Co. v. General Mills, Inc., 82 USPQ2d 1766 (TTAB 2007) (on remand) [precedential].


The Board originally dismissed this opposition in 2004 due to Kellogg's failure to establish standing. (TTAB decision here). The federal district court, however, concluded that standing had been established, and so it remanded the case to the TTAB.

The subject application, based on intent-to-use, included a claim of acquired distinctiveness under Section 2(f) as to the phrase CINNAMON TOAST. The 2(f) claim was based on General Mills' ownership of two incontestable registrations for CINNAMON TOAST CRUNCH for breakfast serial, on 16 years of use of the mark with cereal, and on the advertising and sales figures for its cereal.

Kellogg maintained that the mark is merely descriptive in light of its and the industry's "long established prior use of the words 'cinnamon,' 'toast,' 'cinnamon toast,' 'crunch,' or 'crunchy.'" It contended that Applicant's 2(f) claim was inadequate as a matter of law because Applicant did not present evidence that cereal and food bars are related, and because Applicant's existing registrations disclaim the term CINNAMON TOAST.

General Mills argued that the relationship between cereal and cereal-based food bars is "self evident," that the disclaimers made ten years ago are no longer relevant, and that it established acquired distinctiveness for CINNAMON TOAST based on its sales and advertising figures.

The Board observed that a party opposing a 2(f) application bears "the initial burden of challenging or rebutting the applicant's evidence of distinctiveness made of record during prosecution which led to publication of the proposed mark." Yamaha Int'l Corp. v. Hoshina Gakki Co., 6 USPQ2d 1001, 1005 (Fed. Cir. 1988).

The Board agreed with General Mills that the relationship between cereal and cereal bars is "self evident" and that no extrinsic evidence is required to prove same. Opposer's mere argument to the contrary was not sufficient to meet its initial burden.

As to the disclaimers, the Board found that "the substantial length of use and registration of the marks for breakfast cereal, and the substantial sales and advertising over the past five years alone ... are sufficient, in the absence of countervailing evidence, to establish that applicant's mark as a whole, including the disclaimed phrase CINNAMON TOAST, has acquired distinctiveness in connection with breakfast cereal."

Moreover, the Board found that this acquired distinctiveness is transferred to the cereal-based food bars of the subject application.

Thus Kellogg's arguments failed to satisfy its initial burden of challenging or rebutting General Mills' 2(f) showing made during prosecution and accepted by the Examining Attorney, and therefore the opposition was dismissed.

TTABlog note: Another example of the transfer of acquired distinctiveness to an I-T-U application is found in In re Dial-A-Mattress Operating Corp., 57 USPQ2d 1807 (Fed. Cir. 2001). [the court found a "close relationship" between "retail outlet services and retail store services in the field of mattresses," on the one hand, and "telephone shop-at-home retail services in the field of mattresses," on the other].

Text Copyright John L. Welch 2007.

TTAB Grapples with "MONSTER" Marks in Massive Consolidated 2(d) Proceeding

The Board valiantly sorted through three oppositions and one petition for cancellation concerning the likelihood of confusion between various MONSTER marks for video game cartridges, game software, gym bags, networking cables, power cells, clothing, and other ancillary products. Rather than try to lay out all the marks, goods, and issues involved, the TTABlog will hit some of the high points. Monster Cable Prods. and Monster Cable Int'l, Ltd. v. Tecmo, Ltd. and Tecmo Kabushiki Kaisha, Oppositions Nos. 91154125, 91154136, 91158681; Cancellation No. 92041582 (February 2, 2007) [not precedential].


Preliminary Rulings: Before reaching the merits, the Board made several noteworthy preliminary rulings. It sustained an objection to one testimony deposition taken by telephone because Applicants failed to provide copies of the exhibits as promised, and refused to postpone the deposition until the exhibits arrived. It declined to allow Opposers to amend their petition for cancellation to add an issue (whether the challenged registration was void ab initio for lack of use) that was not tried, either expressly or impliedly. Likewise, the Board refused to allow Applicant to assert the affirmative defense of laches when Applicants neither pleaded that issue nor sought leave to amend the pleadings to conform to the evidence.

Finally, the Board (as usual) rejected Opposers' claim to ownership of a family of MONSTER marks. Mere ownership of a number of registrations for purported "family" members is not sufficient. "[T]he common element must be so extensively advertised that the public recognizes the 'family surname' as a trademark." Here, Opposers' evidence fell short.

Priority: Opposers pleaded 25 registrations in the oppositions and 22 in the cancellation, but they did not submit status and title copies of their registrations with their pleadings or via notice or reliance, nor did any witness testify to the current status or validity of the registrations. Therefore, Opposers had to rely on their common law use of the marks to establish priority.

Applicants relied on their application filing dates for their marks MONSTER RANCHER and MONSTER RANCHER ADVANCE. Opposers failed to prove priority for the word mark MONSTER by itself, but did manage to prove priority for MONSTER COMPUTER, MONSTER MULTIMEDIA, MONSTER NETWORKING, MONSTER INTERNET, MONSTER POWER, MONSTER SPORT, MONSTER GEAR, MONSTER GAME, MONSTER ATTITUDE, MONSTER BATTERY, MONSTER USB, and MONSTER LINKS, for various goods (mostly cables).

Likelihood of Confusion: In a nutshell, the Board found "no basis to infer that consumers would expect any relationship as to source between opposers' highly specialized cables and connectors and other computer and gaming accessories and applicants' computer games and software."

However, the parties' clothing products and gym bags were identical, and opposers' carrying cases for game consoles were similar to Applicant's school bags and the like. As to Applicant's goods in classes 16, 24, and 28, Opposers offered no proof of relatedness.

As to the marks, the word MONSTER has a different meaning in Applicants' mark for video game cartridges and Opposers' marks. In the former, it refers to "imaginary and horrifying animals," whereas in the latter MONSTER connotes "big, gigantic." However, as to Applicant's goods that are not closely related to video game cartridges, the Board considered the visual and phonetic similarities of the marks to outweigh any differences in connotation and commercial impression.

The Board concluded that Applicants' marks MONSTER RANCHER for video game software and MONSTER RANCHER ADVANCE for game software for amusement machines are not confusingly similar to Opposers' marks. However, the MONSTER RANCHER mark for goods in classes 9, 18, 24, 25, and 28 is likely to cause confusion with Opposers' marks MONSTER GAME for carrying cases for game consoles, MONSTER ATTITUDE, MONSTER SPORT, and MONSTER GEAR for clothing, and MONSTER GEAR for gym bags.

The Board therefore dismissed the petition for cancellation, dismissed one opposition, and sustained in part and dismissed in part the other two oppositions.

TTABlog comment: I commend Judge Bergsman for patiently sorting through all of these facts and setting them out in a comprehensible fashion.

Text Copyright John L. Welch 2007.

"SHAREMUSIC" Not Merely Descriptive of Audio Equipment, Says TTAB

The Board reversed a Section 2(e)(1) refusal to register the mark SHAREMUSIC, finding the mark not merely descriptive of "audio equipment, namely, modules and connectors for interfacing home audio systems to portable audio players and recorders; speakers, volume controls, speaker switches, audio source switches, amplifiers and tuners." In re Dana Innovations, Serial No. 78576297 (February 6, 2007) [not precedential].


The Examining Attorney contended that the mark describes the purpose of the goods: viz., to share digital music between users. He relied on various Internet website articles referring to music sharing in various context: e.g., by using infrared headphones with the music player connected to an infrared transmitter.

Applicant argued that the mark is at most suggestive:

"There is no evidence or allegation that Applicant's goods function to communicate music ... to anyone other that the user of Applicant's goods. While Applicant's goods may allow multiple users to, for example, hear music broadcast by an FM station, or recorded in a music file, there is no showing that the experience is commonly referred to as 'sharing' the broadcast or music file."

The Board sided with Applicant, noting that the PTO's articles did not pertain to Applicant's type of audio equipment. It found that purchasers would have to use "some degree of thought or imagination to understand that the equipment allows persons to 'share music' in the sense that the equipment allows multiple persons to listen to music from an Mp3 player such as an Apple iPod."

The Board therefore reversed the refusal to register.

TTABlog comment: Perhaps the Examining Attorney was thinking of "file sharing" over the Internet. Applicant's product, however, seems to be analogous to an ordinary radio by which listeners may "share music" by sitting in front of it.

Applicant's website, however, does state that its product "makes it possible to easily share music and photos through any home stereo or entertainment system." Had this website been in evidence, would the result have been different?

Text Copyright John L. Welch 2006.

Applicant Hits Appellate Jackpot: Convinces TTAB that an Arcade Game is a Slot Machine

Applicant Eolith's appellate gamble paid off when the Board reversed the PTO's refusal to register EL DORADO for "computer electronic games; automatic slot machines." The Examining Attorney maintained that the specimen of use (immediately below) did not show use of the mark in connection with the identified goods, but the Board sided with Applicant. In re Eolith Co., Serial No. 78139104 (February 9, 2007) [not precedential].


There was no debate that Applicant's product was not an "electronic computer game." The Board noted that "its operation by gamers appears to be primarily mechanical." [The user controls a crane built into the machine to rake coin-like medals off the center pile. If the user rakes off enough medals, a prize is awarded.]

The Examining Attorney maintained that the specimen of use showed an arcade game, properly classified in Class 28. She argued that if Applicant's game was accepted as a slot machine in class 9 because it is operated via a coin slot, then coin-operated washing machines (class 7) and coin-operated vibrating beds (class 20) would also be in class 9.

Dictionary definitions of "slot machine" were in disagreement. The PTO's definitions restricted "slot machines," other than "one-armed" bandits, to "vending machines" that are coin operated. Applicant's definitions and two judicially-noticed definitions defined "slot machines" more broadly, so as to encompass all machines operated by dropping a coin into a slot.

The Board noted that Eolith's machine is not a "vending machine," but instead is a game. However, the majority of the definitions "do not restrict 'slot machines' to only 'vending machines,' and the machine pictured in the specimen fits the broad definition of a slot machine."

The Board therefore concluded that the specimen "is sufficient evidence of use of the mark for the identified goods, i.e., 'automatic slot machines.'"

TTABlog comment: It appears that, in the application as filed, Applicant included "automatic slot machines" in its class 28 goods, claiming intent to use for those goods. It also identified amusement apparatus in claim 9, based on actual use. The specimen of use submitted with the application applied to the class 9 goods. When Applicant received a Section 2(d) refusal for its Class 28 goods, it deleted that class, and changed its Class 9 identification to that discussed above. In other words, it moved "automatic slot machines" from class 28 to class 9, and then relied on the original class 9 specimen to show use on "slot machines." Is there any wonder the Examining Attorney put up a fight?

In my view, if the EL DORADO game is a slot machine, some poor old lady is going to be very disappointed when her bag of quarters yields nothing more than a stuffed teddy bear or a stale SNICKERS.

Text Copyright John L. Welch 2007.

Precedential No. 11: TTAB Finds "ARDENBEAUTY" for Cosmetics Confusingly Similar to "ARDEN B" for Clothing

In its eleventh precedential decision of 2007, the Board sustained a Section 2(d) opposition to registration of the mark ARDENBEAUTY for fragrance products, cosmetics, and skin and hair care products, finding the mark likely to cause confusion with Opposer Wet Seal's mark ARDEN B, used for women's clothing, footwear, and jewelry, and for retail apparel store services. The Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629 (TTAB 2007) [precedential].


Evidentiary Matters: Before getting to the merits, the Board ruled on several evidentiary matters. It struck certain rebuttal evidence as untimely, and refused to consider a number of documents improperly submitted with Opposer's notice of reliance. And it ruled that the unpleaded issue of Applicant FD's bona fide intent to use its mark was tried by the parties with Applicant's implied consent, and therefore would be considered.

Priority: Opposer Wet Seal established first use dates of 1997 for its ARDEN B mark for clothing and accessories, and 1999 for clothing store services. Applicant FD claimed priority based on its long use and registration of its "famous" ELIZABETH ARDEN and/or ARDEN marks for various beauty products and services. FD also introduced nearly 200 third-party registrations in which BEAUTY is disclaimed, arguing that ARDEN is thus the dominant portion of the ARDENBEAUTY mark.

The Board, however, observed that "the standard for tacking is very strict and tacking in general is permitted only in 'rare instances.'" The marks must be "legal equivalents ... they must be indistinguishable from one another or create the same, continuing commercial impression such that the consumer would consider both the same mark." That is not the case here. As the Board noted, the fact that two marks are confusingly similar for purposes of a Section 2(d) analysis does not mean they are legal equivalents for tacking purposes. Consequently, Applicant failed to establish use of ARDENBEAUTY prior to its filing date in 2002, and the priority arrow pointed to Opposer.

Likelihood of Confusion: Turning to likelihood of confusion, the Board noted that Wet Seal may be contractually precluded from using the ARDEN B mark on cosmetics. Nonetheless, the issue of likelihood of confusion between the parties' goods remains.

Wet Seal failed in its attempt to prove its mark famous due to insufficient evidence. However, because there was no evidence that ARDEN is commonly used in the clothing field, the mark was entitled to at least the "normal scope of protection."

Comparing ARDENBEAUTY with the ARDEN B mark in the stylized form shown below, the Board found that the "similarities ... outweigh their differences." "[P]urchasers may view ARDEN B as simply an abbreviated version of the full term ARDENBEAUTY or may assume that [they] are slight variations of the same mark."


The Board next found the goods and services of the parties to be related, noting Opposer's evidence that contemporary clothing store chains (like ANTHROPOLOGIE and BANANA REPUBLIC) sell clothing, fragrances, and beauty care products. Moreover, clothing and fragrances are "closely related, complementary products."

The purchasers for the involved products and services overlap, and the goods are relatively inexpensive. The parties' goods "may be subject to impulse purchase and frequent replacement," and in such cases "purchasers are held to a lesser standard of purchasing care and, thus, are more likely to be confused as to the source of the goods."


As to channels of trade, the Board noted that Wet Seal's goods are sold exclusively in ARDEN B stores, and those stores sell almost exclusively ARDEN B brand clothing. Applicant FD therefore contended that, since Wet Seal is prohibited by the parties' agreement from selling cosmetics under the ARDEN B mark, the parties' products will in fact never be sold together. The Board found FD's statement to be "true, but not compelling."

"First, purchasers are not going to be aware that opposer is prohibited from selling cosmetic products under the ARDEN B mark. Further, where products are closely related, merely because the products in fact would not be sold together would not necessarily prevent consumers, when encountering the products in different outlets, from believing the products come from the same source."

Finally, the Board turned to the seldom-mentioned tenth du Pont factor, "the market interface between applicant and the owner of a prior mark," which includes consideration of "(b) agreement provisions designed to preclude confusion, i.e., limitations on continued use by each party." FD argued that its agreement with Wet Seal "negates any potential likelihood of confusion," but the Board disagreed.

"... the agreement contains no provisions regarding opposer's rights in the term ARDEN alone or apart from ELIZABETH ARDEN in connection with fragrances and cosmetics; and nothing precludes opposer from using the mark ARDEN B, at least in its present form, or from asserting its rights in this mark for clothing and clothing stores against applicant."

In sum, the Board found confusion likely and sustained the opposition on the Section 2(d) ground.

Lack of Bona Fide Intent to Use: The Board found Wet Seal's evidence insufficient to establish that FD lacked a bona fide intent to use its mark on all the identified goods.

"... opposer did not ask questions which fully explored applicant's actual intent. Merely because applicant may not have taken steps to actually launch or introduce a particular product does not mean that applicant otherwise had no intention to develop or market that product."

Other testimony was "ambiguous" and "unclear," and the Board therefore dismissed the opposition on this particular ground.

Text Copyright John L. Welch 2007.

Precedential No. 10: TTAB Sustains Opposition of "MISS UNIVERSE" to "MR. GAY UNIVERSE"

In the Board's 10th citable decision of 2007, the fame of the MISS UNIVERSE mark catapulted Opposer to success in its opposition to registration of MR. GAY UNIVERSE for "entertainment services in the nature of conducting gay beauty pageant" [sic]. The Board found the latter mark likely to cause confusion with the registered mark MISS UNIVERSE for entertainment services, namely, presentations of pageants and contests. Miss Universe L.P. v. Community Marketing, Inc., 82 USPQ2d 1562 (TTAB 2007) [precedential].

Miss Universe 1952
The Board began its likelihood of confusion analysis with the fifth du Pont factor, the strength of Opposer's mark. Opposer established that it has used the MISS UNIVERSE mark continuously since around 1950; that the television broadcast of the annual event is "quite successful, by any measure;" that some 12 million households viewed the pageant in 2003, that the chosen MISS UNIVERSE tours the world for one year and, along with the pageant, receives "a significant amount of media coverage;" and that its website received "nearly a billion" hits in 2004. [Nearly as many as the TTABlog - ed.] Moreover, one of Applicant's principals admitted that Opposer's contest is "[t]he most renowned." The Board therefore found that the MISS UNIVERSE mark is famous for purposes of the fifth du Pont factor, pointing out that "[s]uch fame must be accorded dominant weight in our likelihood of confusion analysis."

From there, it was all downhill for Applicant. The Board found the respective services of the parties to be "similar rather than dissimilar" for purposes of the second du Pont factor.

"Both parties are conducting or intend to conduct beauty pageants. This basic similarity between the services outweighs any dissimilarity that might be presumed from the fact that the public may be able to distinguish between the two pageants themselves due to their different contestant pools."

Next, the Board found the trade channels to be "similar rather than dissimilar," noting that Applicant intends to seek the same type of corporate sponsorships as Opposer, and intends that its pageant "eventually will be watched by the public at large, including straight as well as gay viewers." Moreover, consumers for the parties' services "will not exercise great care in determining whether applicant's pageant is affiliated with or related to opposer's pageant."


As to the marks, the word UNIVERSE is dominant in both, while MR. GAY and MISS are highly suggestive. The presence of the word UNIVERSE in both marks "clearly outweighs the differences between the marks which result from the additional words."

Finally, as to the sixth du Pont factor, "use of similar marks on similar goods [or services]," the record suggested that only one other UNIVERSE mark is in existence: MR. UNIVERSE, used in the sport of body building. That usage is "not particularly probative" because those body building services are not similar to the services involved here. Therefore, the Board deemed this factor to be "neutral" at best.

Considering all the relevant du Pont factors, the Board found confusion likely and sustained the opposition.

Text Copyright John L. Welch 2007.

Precedential No. 9: TTAB Says "Hail, No" to "CAESAR!CAESAR!" for Salad Dressings

The Board wasted little time in finding the word CAESAR to be merely descriptive of salad dressings. But what about CAESAR!CAESAR!? After all, PIZZA!PIZZA! is registered!!!! Not so fast!, said the Board. Not ... so ... fast! In re Litehouse, Inc., 82 USPQ2d 1471 (TTAB 2007) [precedential].

Applicant's Caesar dressing
Flinging aside the two PIZZA! registrations, the Board affirmed the PTO's 2(e)(1) refusal to register CAESAR!CAESAR!, finding it merely descriptive of salad dressings. The Board noted the settled law that "a mark's mere repetition of a merely descriptive word does not negate the mere descriptiveness of the mark as a whole." Likewise, the precedents are legion that the addition of exclamation point or points does not negate mere descriptiveness.

But what about the PIZZA!PIZZA! registrations, one for "restaurant services" and one for "pizza for consumption on or off the premises"? Isn't that mark just like CAESAR!CAESAR!?

So what? said the Board. Under In re Nett Designs, Inc., 57 USPQ2d 1564, 1566 (Fed. Cir. 2001), it must assess each mark "on the record of public perception submitted with the application." Prior third-party registrations have "little persuasive value." Uniform treatment is a goal, but the TTAB has to base its determination on the evidentiary record of the case at hand.


Applicant Litehouse tried one last toss of the legal salad: it urged that, by refusing registration of CAESAR!CAESAR! after allowing registration of two PIZZA!PIZZA! marks, the PTO had violated Applicant's constitutional rights under the equal protection component of the Due Process Clause of the Fifth Amendment. The Board disagreed, quoting In re Boulevard Entertainment, Inc., 67 USPQ2d 1475, 1480 (Fed. Cir. 2003):

"Even if the PTO had previously allowed a mark similar to Boulevard's marks to be registered, that would not give Boulevard an equal protection right to have its mark registered unless the agency acted pursuant to some impermissible or arbitrary standard. *** The fact that, whether because of administrative error or otherwise, some marks have been registered even though they may be in violation of the governing statutory standard does not mean that the agency must forgo applying that standard in all other cases."

And so, the Board constitutionally affirmed the Section 2(e)(1) refusal to register.

Text Copyright John L. Welch 2007.

Dentist Drills Holes in PTO's 2(d) Refusal of "SMILEWATER" for Dental Mineral Water

Dean C. Vafiadis, D.D.S., was surely smiling when the Board reversed a Section 2(d) refusal to register his mark SMILEWATER for "mineral water distributed in the dental field." The Board found the mark not confusingly similar to the registered mark SMILE & Design (shown below) for "soda water." In re Vafiadis, Serial No. 78509712 (January 24, 2006) [not precedential].


The PTO relied on third-party registration evidence in arguing that the Doctor's mineral water is related to soda water. The Board, however, found those registrations of "little probative value," because the subject application is limited to mineral water distributed in the dental field.

"'Distributed in the dental field' implies not only a restriction in trade channels but also a restriction as to the purpose and function of the goods, at a minimum, to the extent that they are sold in the dental field. None of the third-party registrations includes 'mineral water distributed in the dental field.'"

As to channels of trade, "'the dental field' cannot be considered to be part of the 'normal' channels of trade for soda water." The normal channels for soda water would include grocery stores and convenience stores, "but not a dentist's office." Moreover, even if Applicant's goods were to be sold next to other dental products in the supermarket, that would not suffice to establish that the goods are related to soda water. See Federated Foods, Inc. v. Fort Howard Paper Co., 192 USPQ 24, 29 (CCPA 1976) [the fact that two products are sold in the same large store does not mean they are related for Section 2(d) purposes.]

Dean C. Vafiadis, D.D.S.
Turning to the marks, the Examining Attorney maintained that SMILE is the dominant portion of both marks, whereas the Doctor asserted that his mark is a "clever new word combination" and that the registered mark's smiley face design readily distinguished the marks. The Board sided with the Doctor, ruling that the first du Pont did not weigh in favor of a finding of likely confusion.

"In view of the visually prominent design element in registrant's mark and the difference in connotation and overall commercial impression of the literal portions of the marks in the context of applicant's goods, we find that, despite both marks including the word SMILE, the differences are sufficient to distinguish applicant's mark from registrant's mark."

The Board therefore extracted the refusal to register from the PTO's jaw.

Text Copyright John L. Welch 2007.

TTABlog On Tour: John Marshall IP Law Conference - February 23rd

Hello, Chicagoland! The TTABlogger will be returning home to Chicago on Friday, February 23rd, as a speaker at the 51st Annual Intellectual Property Law Conference sponsored by the Center for Intellectual Property Law of John Marshall Law School. [Program here]. Believe me, it's a long way from now-defunct St. Leo's grade school at 77th and Emerald, to the John Marshall IP Conference.


In any case, I will be discussing "The Top Ten TTAB Decisions of 2006," a few of the Board's "worst" decisions of the year, and several other recent TTAB developments (citability of decisions) and non-developments (proposed TTAB rule changes).

Hope to see you there.

CAFC Affirms TTAB's Res Judicata Ruling re Functionality of Bose Speaker Design

Bose Corporation lost again at the CAFC in its attempt to register as a trademark the configuration shown below for "speaker systems." The appellate court affirmed the TTAB's July 2005 ruling that Bose's application was barred by res judicata in light of Bose's earlier failed attempt to register the same mark for the same goods. In re Bose Corp., 81 USPQ2d 1748 (Fed. Cir. 2007) [precedential]. [The TTAB's decision was discussed here at the TTABlog].


Bose contended that "three facts and circumstances have changed and were not considered in the prior proceeding such that application of res judicata in this appeal" would be inappropriate:

1. In its earlier decision (in 1985) finding the design to be functional and unregistrable, the CAFC did not explicitly consider the 'curved front edge' of the design in its analysis.


2. The Supreme Court's intervening decision in TrafFix changed the law and "sets forth additional requirements in a functionality analysis."


3. The Board disregarded additional evidence submitted by Bose, such as the "absence of promotional material that 'touts' the utilitarian aspects of the mark."

The CAFC, however, did not agree. First, the court noted that in its prior ruling, it acknowledged that the Bose design included a "bowed front edge." The "curved" edge that Bose now refers to is that same edge that the court considered.

As to the second point, TrafFix does not affect the prior functionality analysis and, in fact, "provides further support for finding Bose's design functional." Under TrafFix, Bose's expired utility patent provides "strong evidence" of functionality.

Thirdly, while Bose's promotional materials do not tout the advantages of the curved front edge, it is the overall design that is at issue here, and the promotional materials "do clearly promote the functional reason for the overall design."

Three strikes and Bose was out. The CAFC affirmed the Board's application of res judicata.


Text Copyright John L. Welch 2007.

"IPHARMACIST" Not Merely Descriptive of PDA Software, Says TTAB

The Board reversed two Section 2(e)(1) refusals to register the mark IPHARMACIST, finding it not merely descriptive of training videos concerning use of personal digital assistants preprogrammed with pharmacy-related information, custom design of software for such PDAs, and printed materials containing such information. In re Apotex Technologies, Inc., Serial Nos. 76449597 and 78429952 (January 29, 2007) [not precedential].


The Examining Attorney argued that "I" stands for "Internet," and that Applicant's own website describes Apotex's goods as being for use by pharmacists who utilize the Internet as a feature of the goods. Apotex maintained that "I" has other meanings, including "interactive" and "information," the "Internet pharmacist" has a common, ordinary meaning (a person who dispenses drugs via the Internet), and that "Internet pharmacists" are not the targeted users of the goods.

The Board found the PTO's evidence insufficient. First, it agreed with Apotex that, as a general rule, an abbreviation or initial cannot be considered descriptive unless it has become "so generally understood as representing descriptive words as to be accepted as substantially synonymous therewith." The PTO failed to show that the suggested meaning of "I" as "Internet" is "the one that would immediately come to mind when [relevant] consumers encounter the involved mark."

In any case, the evidence did not support the contention that the term "Internet" merely describes a significant feature of the goods and services. The fact that the PDAs may be hot-synched with data files on the disk drive of one's PC, and that participating pharmacists may ask for support over the web, does not mean that the word Internet is descriptive.


And, as Apotex contended, the term "Internet Pharmacist" is "just too nebulous in meaning and non-specific in nature for consumers to immediately associate it with a quality or characteristic of the involved products or services."

In sum, the Board could not conclude "that the term IPHARMACIST possesses a merely descriptive significance in connection with the identified goods and services."

Text Copyright John L. Welch 2007.

Precedential No. 8: TTAB Finds "YBOR GOLD" Primarily Geographically Deceptively Misdescriptive of Cigars

In its eighth precedential decision of 2007, the Board affirmed a Section 2(e)(3) refusal to register the mark YBOR GOLD for "cigars, pipe tobacco and roll-your-own tobacco," finding the mark to be primarily geographically deceptively misdescriptive. In re South Park Cigar, Inc., 82 USPQ2d 1507 (TTAB 2007).


In a well-reasoned and careful opinion, the Board began by pointing out that, under the CAFC's California Innovations decision, the proper basis for refusal of a geographically deceptive mark is not Section 2(a) but Section 2(e)(3). To maintain such a refusal, the PTO must show that (1) the primary significance of the mark is a generally known geographical location; (2) consumers are likely to believe that the goods originate from the place identified when in fact they do not; and (3) the misrepresentation would be a material factor in the consumer's decision to purchase the goods.

As to the first element of the test, the PTO's evidence showed that Ybor City is the name of a "generally known geographic place," namely, a neighborhood or area in Tampa, Florida. It is neither obscure nor remote, "especially to the relevant purchasing public, i.e., cigar aficionados." Moreover, the primarily significance of the mark YBOR GOLD is Ybor City. The record contained numerous examples of "Ybor" alone being used as a shorthand reference for Ybor City. The addition of the word GOLD, which is highly suggestive and laudatory, does not detract from the geographical significance of the mark.

As to the second element, although Applicant's address was in Cincinnati, it stated that "is relocating its office to Tampa where Applicant's goods will originate from" [Applicant's emphasis], and later it asserted that it "has relocated in Tampa." Examining Attorney Daniel Brody pointed out that relocation to Tampa does not necessarily mean relocation to Ybor City, as opposed to some other part of Tampa. The Board agreed with the PTO, ruling that "the record does not support a finding that applicant's goods will come from Ybor City." The question then was whether there exists a goods/place association between cigars and Ybor City. The Board said yes. Travel guides and websites referred to Ybor City's history as a cigar center where one may buy hand-rolled cigars." The evidence sufficed to establish the required "reasonable predicate" for concluding that consumers are likely to make an association between cigars and Ybor City: i.e., "that they are likely to regard Ybor City as a 'known source' for cigars."


Finally, as to the third element, the Board observed that under the case law materiality may be established by showing that the place named in the mark is "famous as a source of the goods at issue," that the goods are a "principal product" of the place, that the place is "noted for" or "renowned for" such goods, or that the goods are the "traditional" products of the place named. The Board found all of those formulations applicable here. Ybor City was once "the cigar capital of the world," and "Cigar City USA," where 140 cigar factories produced 250 million cigars per year. This cigar-dominated history is a "crucial element of its tourism marketing." The Board therefore found that purchasers are likely to mistakenly assume that cigars sold under the YBOR GOLD mark "are associated with or have some connection with Ybor City," and that "such assumption would be material to the decision to purchase the goods."

In conclusion, the Board found the mark to be primarily geographically deceptively misdescriptive, and it affirmed the refusal to register.

Text Copyright John L. Welch 2007.

Precedential No. 7: "BARBARA'S" Bests "BARB'S BUNS BAKERY, INC." in TTAB 2(d) Bake-Off

In its 7th precedential decision of 2007, the Board sustained an opposition to registration of the mark BARB'S BUNS BAKERY, INC. for printed recipes sold as a component of food packaging, recipe books, and newsletters ["BUNS BAKERY, INC." disclaimed]. The Board found the mark likely to cause confusion with the marks BARBARA'S and BARBARA'S BAKERY previously used and/or registered for bakery goods, newsletters, printed recipes, and recipes sold as a component of food packaging. The Board also sustained Opposer's claim that Applicant Barbara Landesman was not using her mark on any of the identified goods as of the filing date of the subject application. Barbara's Bakery, Inc. v. Landesman, 82 USPQ2d 1283 (TTAB 2007).

Opposer's registered mark
Likelihood of confusion: Kneading its way through the du Pont factors, the Board observed that Applicant's goods are legally identical to Opposer's printed goods, and therefore the second factor, the similarity of the goods, weighed in favor of Opposer. Likewise, the third factor, the similarity in trade channels, favored Opposer.

As to the fifth factor, Opposer's evidence that its products are sold in 20,000 stores, including "almost every single natural food stores in the country," its sales of more than $2 billion over the past ten years, advertising expenditures of $1 million per year, and its ranking as "one of the largest brands across all health food categories," convinced the Board that BARBARA'S and BARBARA'S BAKERY "have achieved a degree of renown, at least in the natural foods marketplace." Thus "opposer's mark [sic] is a strong mark."


Finally, turning to the first du Pont factor, the Board found that the dominant feature in Applicant's mark is BARB'S, and the dominant feature in Opposer's mark(s) is BARBARA'S. Although Applicant claimed that "Barb's Buns" was a playful reference to her posterior, the Board was not attracted by that notion: "any double entendre significance of BARB'S BUNS is outweighed by the plain meaning of the words in the mark." In sum, the Board found that the similarities in the marks outweighed the differences.

Weighing the du Pont factors, the Board found confusion likely.

Non-use: The Board noted that, in a Section 1(a) application registration is allowed only as to the goods upon which the mark was in use as of the application filing date. [Opposer did not plead a fraud claim]. Applicant's discovery responses confirmed that she had not used her mark on "printed recipes sold as a component of food packaging," that as to "recipe books" in Class 16, her delivery of a "virtual cookbook" via e-mail did not qualify as use, and that any use on newsletters was discontinued more than six years prior to the filing date. Therefore the Board sustained the opposition on the ground of non-use.

Unclean hands defense: The Board considered the unpleaded affirmative defense of unclean hands, allegedly arising out of Opposer's use of the ® symbol adjacent the mark shown below, when in fact that mark was not registered.

The Board accepted Opposer's explanation for the error as "plausible and credible." According to Opposer, its ownership of the mark BARBARA's in the special form shown near the top of this posting led it to believe that it could use the symbol adjacent the word BARBARA'S whenever it appeared. Opposer's officer averred that she was not aware that the PTO had required Opposer to remove the symbol from an application drawing for the registered mark, and she asserted that affirmative steps were being taken to eliminate misuse of the symbol. The Board therefore ruled that Applicant had failed to proved that the misuse "was undertaken with fraudulent intent or that it constitutes unclean hands."

Text Copyright John L. Welch 2007.

TTAB Posts Hearing Schedule for February 2007

The TTAB hearings scheduled for February are listed below. Wine, rum, mustard, spam, and fraud are among the topics to be discussed. Eight of the hearings will be held in the East Wing of the Madison Building. The ninth, the SPAM ARREST case, will be held on February 23rd at the PLI Seminar in New York City. [The hearing schedule (which does not include the SPAM ARREST case) may be found at the TTAB website (lower right-hand corner)].


The nine hearings scheduled for the month are:

February 6, 2007 - 2 PM: In re Marisol, LLC, Serial No. 76600374 [Section 2(d) refusal of DON THE BEACHCOMBER for rum, in view of the registered mark BEACHCOMBER for flavored rum.]

February 7, 2007 - 2 PM: Tri-Star Marketing, LLC v. Nino Franco Spumanti S.R.L., Cancellation No. 92043953 [Petition to cancel a registration for RUSTICO for wines and sparkling wines, on the ground of fraud, alleging that Respondent "has only ever used the mark on sparkling wines in the United States."]

February 13, 2007 - 10 AM: Christian Broadcasting Network, Inc. v. ABS-CBN Int'l, Cancellation No. 92044366 [Petition to cancel a registration for ABS-CBN for telephone calling card services and television broadcasting services, in view of the registered marks CBN, CBN WORLDREACH, and CBN NEWS for television broadcasting and for Christian evangelical ministerial services].


February 14, 2007 - 2 PM: In re Masonite Int'l Corp., Serial No. 78389392 [Section 2(d) refusal of CAVALIER for non-metal doors made from wood composite and solid wood components, in view of the identical mark registered for non-metal railings, guardrails, handrails, and banisters for use in and/or on buildings].

February 15, 2007 - 10 AM: In re Joyce Media, Inc. , Serial No. 76455256 [Appeal from refusal based upon Applicant's failure to comply with a disclaimer requirement as to the word "LEGAL" in the mark LEGAL DESK for "providing advisory notices to others of governmentally required legal notices taken in newspapers, magazines, other printed publications and via the global computer network."]

February 15, 2007 - 2 PM: Airflite, Inc. v. Aycock Engineering, Inc., Cancellation No. 92032520 [Petition to cancel a registration for AIRFLITE for "arranging for individual reservations for flights on airplanes," on the grounds of likelihood of confusion, lack of use prior to the filing of Respondent's application, lack of lawful use, fraud, and abandonment.]


February 20, 2007 - 2 PM: In re Video Messenger.com Corp., Serial No. 76611883 [Section 2(e)(1) mere descriptiveness refusal of VIDEO MESSENGER for "computer hardware and software sold as a unit for generating video images, namely, computer hardware and software that enables users to place text messages over video images."]

February 23, 2007 - 2:30 PM [PLI Institute, New York City]: Hormel Foods Corp. v. Spam Arrest LLC, Cancellation No. 92042134 [Petition for cancellation of registration for SPAM ARREST for "computer software, namely, software designed to eliminate unsolicited commercial electronic mail," on the grounds of likelihood of confusion with and dilution of the mark SPAM, registered and used for various products, including canned meat.]


February 27, 2007 - 10 AM: In re Beaverton Foods, Inc., Serial No. 76624790 [Whether Applicant may overcome a Section 2(a) geographical deceptiveness refusal of the mark NAPA VALLEY MUSTARD CO. for mustard, by establishing acquired distinctiveness under Section 2(f) before the enactment of NAFTA.]


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

Text Copyright John L. Welch 2007.m

The Ten Worst TTAB Decisions of 2006? [Part 2 of 2]

I had a bad dream last night: one of the TTAB Judges had compiled a list of the Ten Worst TTABlog Postings of 2006. I guess I'm feeling a bit uneasy about my TTAB "worst" list, but it's all in good fun -- isn't it? Remember, it takes a skilled carpenter to build a barn, but any jackass can knock it down. With that thought in mind, I present the second batch of "worst" decisions of 2006.


Bose Corp. v. ONG Corp., Opposition No. 91162058 (September 29, 2006). The Board dubiously found a likelihood of confusion between Applicant ONG’s mark WAVETRACE for "audio encoding and decoding circuit boards and software for converting audio content to and from digital audio files," and Bose's registered marks WAVE, ACOUSTIC WAVE, and WAVE/PC for radios, audio tape players, compact disc players, loudspeaker systems, and sound systems coupling a radio to a computer. The Board recognized that the parties' goods are not competitive, but it was captivated by Bose's testimony that "[t]here is a decoding circuit board inside the Wave Music System." Also, "the Wave/PC software has basically a MPE encoder." The Board noted that "there is nothing in the record to indicate that opposer markets these components to makers of finished audio products," but it failed to apply properly the Board's own precedent regarding a party's "zone of natural expansion" and instead leaped to the conclusion that the goods are related: "Because opposer utilizes in its finished products elements that are similar in function to the product of applicant, it would be within opposer's zone of natural expansion to consider marketing such elements to other producers of finished products." (TTABlogged here).

In re Sikorsky Aircraft Corp., Serial No. 78221800 (August 25, 2006). In this questionable decision, the Board reversed a poorly-supported Section 2(e)(4) refusal to register the mark SIKORSKY for sports knives, videogames, jewelry, umbrellas, and other ancillary goods, ruling that the PTO failed to establish a prima facie case. The PTO lamely produced evidence of "only one individual in the entire United States with the surname 'Sikorsky.'" That individual, now deceased, was the founder of Applicant in 1923, Igor Sikorsky, but there was no evidence that he "is well known or that his name has had wide exposure to the purchasing public." Although SIKORSKY was thus the name of someone associated with Applicant -- a factor that would normally weigh in favor of the PTO's position -- the Board questioned "whether this reflects current use as a surname by anyone in the United States or current perception of the term as a surname." Moreover, the Examining Attorney dropped the ball by failing to introduce evidence -- such as the absence of the term "Sikorsky" from dictionaries -- that the term has no meaning other than as a surname. Finally, according to the Board, there was no evidence or explanation to support the PTO’s "conclusory contention" that Sikorsky has the look and sound of a surname [despite the fact that Igor Sikorsky had that surname - ed.]. (TTABlogged here).

In re Truck-Lite Co., Serial No. 76532510 (January 26, 2006). The Board surprisingly reversed a Section 2(e)(1) refusal to register the mark SUPER, finding it not merely descriptive of vehicle lights. The Examining Attorney relied on a dictionary definition, on disclaimers in third-party registrations, and on third-party Supplemental Registrations in maintaining that SUPER “merely describes that applicant's vehicle lighting products 'are of a higher quality or are superior to similar products on the market.'" Applicant argued that the mark is suggestive and not merely descriptive because it does not immediately convey any particular idea about or reveal any characteristic of the goods, because the term is "not normally associated with lighting products for vehicles," and because others in the field have neither used the term nor need to use it. After reviewing the cases cited by the PTO and by applicant, "as well as other Board decisions,” the Board distilled the following strange rule: "in general, if the word 'super' in a mark is combined with the generic name of the goods, or if the goods come in various grades or sizes, then the mark is merely descriptive rather than suggestive." The Board found SUPER to be "suggestive and not merely descriptive," observing that "[t]here is a certain ambiguity about the mark." [So, had Applicant attempted to register SUPER LIGHT, then SUPER would have been descriptive, but without the word LIGHT, it's not? Huh? - ed.] (TTABlogged here).

In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB 2006) [precedential]. The TTAB ignored many of its standard doctrines in reversing a Section 2(d) refusal to register the mark BOX SOLUTIONS & Design (below left) for "computer hardware, namely, communication servers;" the Board found the mark not likely to cause confusion with the registered mark BOX & Design (below right) for "computers and computer peripherals."


It concluded that BOX "is a weak term in the computer industry in that it signifies a computer or computer related device." Ruling that the marks in their entireties "have substantially different appearances and commercial impressions," the Board found confusion not likely. However, the evidence that BOX is a weak mark was feeble, and given that the word “BOX” is the part of the registered mark that would be spoken, BOX should have been considered the dominant portion of that mark. As to Applicant’s mark, with word SOLUTIONS (which appears in much smaller letters) disclaimed, BOX is surely the dominant portion. If, as the Board frequently states, marks are not to be compared in a side-by-side fashion, are the design elements really that important here? Moreover, assuming arguendo that the word BOX is a weak formative, the Board has often said the even weak marks are entitled to protection. And the Board also has often said that even sophisticated purchasers are not necessarily immune to confusion when similar marks are involved. This observer would have found BOX and BOX SOLUTIONS to be confusingly similar, the differing designs notwithstanding. (TTABlogged here).

In re Freiberg, Serial No. 76388348 (June 16, 2006). Here, it was Applicant's decision to employ sarcasm, rather than the Board's ruling, that merited inclusion in this list. Freiberg's caustic arguments failed to overturn the Board’s Section 2(e)(1) and indefiniteness refusals of her mark ALLERGY WIPES for "eyelid wipes." Freiberg came out swinging from the opening bell: "These are facially antithetical positions; if the Examiner cannot understand from the description what the goods are, how can the Examiner be so cocksure of how the mark describes the goods." Freiberg saw herself as the victim of a conniving Examining Attorney who had essentially set a prosecutorial trap: "In an intent-to-use application, an examiner lacks specimens in which an applicant might be caught explaining how a mark relates to the goods. . . . However, if an applicant can’t be relied on to scuttle his own application with specimens, an examiner has another tool that may be applied toward that same end. An indefiniteness objection and requirement for the applicant to describe the goods and their uses in great detail might maneuver the applicant into ponying up evidence of descriptiveness for the examiner." In Freiberg's view, she was caught between Iraq and a hard place: "Thus the only response to the final refusal that Applicant could rely on as acceptable was an amendment to describe the goods in a way the Examiner had determined was merely described by the mark. The clarification requirement appears to have been a gambit to nail down a descriptiveness refusal." The Board, however, saw no such "gambit," nor any ulterior motive in the PTO’s stance: "we would have no difficulty in affirming the descriptiveness refusal with or without the amended identification." In short, Freiberg's aggressive attempt to wipe away the PTO's refusal to register may have raised a few eyelids, but she managed to prove only that sarcasm is an ineffective tool in a TTAB appeal. (TTABlogged here).

Text Copyright John L. Welch 2007.