Credit Card Background Design Not a Mark, Says TTAB

Affirming a PTO refusal to register, the Board found that the tortoise shell background design of Banana Republic's credit card does not function as a trademark. Rather it is "simply a decorative design [and] will not be perceived as mark." In re Banana Republic (Apparel), LLC, Serial No. 78485048 (May 29, 2007) [not precedential].


Applicant Banana sought to register "a credit card face with a translucent background consisting of the mottled colors orange, black and brown that represent a tortoise shell pattern" for credit cards, credit card services, and administration of loyalty programs.

Examining Attorney Leigh A. Lowry maintained that the supposed mark is a non-distinctive background design that does not function as a mark. She relied on web page printouts from other credit card companies allowing customers to select different background designs for their cards.

Banana argued that its proposed mark is not merely ornamental, but primarily functions as a source indicator. It claimed that it has drawn attention to the tortoise shell design in direct mailings, coupons, and store event invitations.

The Board perceptively observed that [w]hether a design is merely ornamental or functions as a trademark is a matter of public perception." It first agreed with the Examining Attorney that Banana's design is not inherently distinctive under the test [for product packaging] set forth in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 196 USPQ 289, 291 (CCPA 1977). A number of credit card issuers offer a selection of background designs for their cards, including "geometric shapes such as angles, curves, and swirls."

"... because the use of background designs on credit cards appears to be widespread, and because the tortoise shell design is clearly decorative in nature, the public will perceive the tortoise shell design as a version or a refinement of a commonly used form of decoration for credit cards, not as a trademark."

Moreover, the Board found no evidence that Applicant "ever promoted or drew attention to the tortoise shell design so as to encourage consumers to view it as a trademark."


Banana contended that its design is different because Banana's customers do not have a choice of background decorations: i.e., "its unique, mandatory, tortoise shell design identifies a single source." But the Board found that Banana's use of a background design "is not unique or unusual, but is simply a refinement of an already existing practice."

The Board noted that this case is somewhat unique because the ornamentation is being used in connection with services instead of goods, and services cannot be "ornamented." However, the credit card is the "physical embodiment of the services," and the design on the card will not be perceived as a mark for the services.

In sum, the Board ruled that the tortoise shell design is not inherently distinctive and does not serve as a mark because:

"(i) it is not unique or unusual in the field; (ii) it is a mere refinement of the common practice of using background designs on credit cards; and, (ii) it does not create a commercial impression distinct from the written matter that appears on the card."

And so the Board affirmed the refusal to register pursuant to Sections 1, 2, 3, and 45 of the Lanham Act.

Text Copyright John L. Welch 2007.

Attempt to Limit Goods in Cited Registration Goes Nowhere; "GO-FOR" Applicant Loses TTAB 2(d) Appeal

Numero uno on my top ten list of losing TTAB arguments is the attempt by an Applicant to limit the identification of goods or the recitation of services in a cited application. Sales U.S.A., LLC got nowhere with that argument in its effort to overturn a Section 2(d) refusal of the mark "GO-FOR" for "low speed vehicles, namely carts, marketed to the marine industry." The Board found the mark likely to cause confusion with the mark GO-4, registered for "motorized three-wheeled land vehicles." In re Sales U.S.A., LLC, Serial No. 78475939 (May 15, 2007) [not precedential].

Registrant's GO-4 vehicle
Examining Attorney Rebecca L. Gilbert maintained that the marks are pronounced the same way, and that the dominance of the word GO results in similar commercial impressions. Applicant pointed to the visual differences. The Board went with the PTO, finding the marks to be phonetically identical and noting that the numeral "4" is sometimes used as a shorthand for the word "for." Consequently, it deemed the marks "confusingly similar."

As to the goods, although the trade channels for Applicant's carts are limited to the marine industry, the registration is not limited. Applicant argued that, while its vehicles are identified as low-speed, registrant's are able to move at speeds of up to 40 MPH. The Board dryly noted, however, that "[o]n the face of the cited registration, the top land speed of registrant's motorized, three-wheeled vehicles is not stated."

"[O]ne could certainly envision a 'low-speed, motorized, three-wheeled land vehicle marketed to the marine industry' that would fit both registrant's and applicant's respective identification of goods."

Applicant next asserted that Registrant's goods are targeted to "security personnel or police officers" and not the marine industry. But the Board pointed out that the registration contains no limitations as to the target audience. Registrant's goods may be sold in all normal channels of trade to all the usual purchasers for the type of goods identified. Thus, "they might be sold to the marine industry as well."

And so this Applicant's decision to GO-FOR it turned out to be a no-go.

Text Copyright John L. Welch 2007.

"YSL" and "SL" Logos for Jewelry Confusingly Similar, TTAB Rules

Finding that "even careful purchasers are likely to be confused," the Board affirmed a Section 2(d) refusal to register the mark SL & design (below left) for "men's and women's fine jewelry," finding it confusingly similar to the marks YSL in the design form shown below right, registered and used for, inter alia, jewelry, clocks, and watches by Yves Saint Laurent, the French designer and fashion house. Yves Saint Laurent Fashion B.V. v. Goldfinger Hawaii, Inc., Opposition No. 91118017 (May 15, 2007) [not precedential].


The Board first noted that the parties' goods are in part legally identical, and thus, because there are no restrictions in the application and registration, the goods must be deemed to travel in the same channels of trade to the same customers.

Although some of Applicant's jewelry is sold for as little as $20 and may be purchased without great care, even those who purchase more expensive or very expensive items of jewelry (and hence may be considered "discriminating") are not immune to source confusion "when the identical goods are sold under similar marks."


The record evidence established that Opposer has used its YSL mark for more than 40 years, with substantial sales and advertising expenditures, extensive media recognition and coverage, and significant exposure to the public. As a result, the Board found the YSL mark to be "strong and famous in the fashion field and entitled to a broad scope of protection."

Comparing Applicant's SL logo to Opposer's YSL design, the Board noted that the marks are "easily recognizable as the letters YSL and SL," and are capable of being spoken. When spoken, they are similar in sound.

Moreover, "[t]he visual similarity of the marks is striking." The letters are in the same size and proportion, and are arranged in an essentially identical vertical interlocking form.

Each mark is a combination of arbitrary letters without any inherent meaning, which makes them more difficult to remember than a word or phrase, and more likely to be confused. Moreover, purchasers may be aware that the letters YSL are the initials of Yves Saint Laurent, and SL would have "a similar meaning, if not the same." Applicant's SL mark may be perceived as a version of Opposer's stylized YSL mark, possibly identifying a particular line of Opposer's jewelry.

Applicant argued that SL stands for its president and owner, Steven Lee, but the Board noted the lack of evidence that consumers would be aware of Mr. Lee or otherwise associate the mark SL with his name.

Consequently, the Board sustained the opposition.

Text Copyright John L. Welch 2007.

Divided CAFC Panel Affirms TTAB: "ASPIRINA" Merely Descriptive of Analgesics

In a precedential ruling, a divided panel of the US Court of Appeals for the Federal Circuit upheld the TTAB's December 1, 2005 decision [TTABlogged here], affirming a mere descriptiveness refusal of the mark ASPIRINA for analgesics. The panel majority found that, despite recognized conflicts in the evidentiary record, the Board's decision was supported by substantial evidence. In re Bayer Aktiengesellschaft, 82 USPQ2d 1828 (Fed. Cir. 2007) [precedential].


The Examining Attorney relied on numerous NEXIS excerpts and two dictionary definitions in which ASPIRINA was defined as aspirin. Bayer submitted its own dictionary evidence referring to ASPIRINA as a trademark, attacked the PTO evidence, and pointed to its numerous foreign trademark registrations for ASPIRINA [which the CAFC panel majority found to be irrelevant]. The Board concluded that consumers will view ASPIRINA as a mere variation or misspelling of the generic term "aspirin" that immediately conveys the impression that Bayer's goods are aspirin-based.

The CAFC found that, as the TTAB observed, there was conflicting evidence as to the mere descriptiveness of ASPIRINA as a variation or misspelling of aspirin. However, the court's standard of review is not de novo, but rather "the deferential substantial evidence standard."

"Where two different conclusions may be warranted based on the evidence of record, the Board's decision to favor one conclusion over the other is the type of decision that must be sustained by substantial evidence."

The CAFC therefore affirmed the Board's decision.

In dissent, Judge Newman asserted that "the evidence and the great weight of usage show ASPIRINA as a trademark." She viewed ASPIRINA as a well-known mark which Americans may know from foreign markets, a factor that should not be ignored in assessing registrability in the United States.

"To deny the statutory federal registration, there must be clear and convincing evidence of the invalidity of that property right and a sound public interest served by its forfeiture."

According to Judge Newman, the panel majority's ruling means that, because aspirin is generic, so is ASPIRINA. But the genericness issue was not before the Board, and Bayer did not have a hearing on that issue, in violation of its due process right.

TTABlog comment: With regard to the TTAB's decision, I asked whether, in view of the conflicting evidence, Bayer should have gotten the benefit of the doubt. The same question comes to mind after reading the CAFC's decision.

Okay, so now what happens when Bayer seeks registration under Section 2(f)? How much evidence will be required? Just how descriptive is ASPIRINA? I have a feeling that this mark will be registered under Section 2(f).

Text Copyright John L. Welch 2007.

TTAB Sustains Opposition to I-T-U Application Due to Lack of Bona Fide Intent

In a rare ruling on "intent to use," the Board sustained an opposition to registration of the mark IDEAS INSIDE for on-line ordering and distribution services for a host of goods (including more that 200 items of clothing, from "anoraks" to "wrestling uniforms"), search engine services, and digital transmission services. Applicant Steven Emeny, appearing pro se, failed to produce any objective evidence of an intent to use the mark, and therefore failed to overcome Opposer Intel Corp.'s prima facie case. Intel Corp. v. Emeny, Opposition No. 91123312 (May 15, 2007) [not precedential].


Intel had opposed on Section 2(d) and dilution grounds, based on its ownership of the INTEL INSIDE mark. After discovery, it added an allegation that Applicant lacked a bona fide intention to use the mark IDEAS INSIDE at the time of his I-T-U filing. Just before final briefs, at Intel's initiative, the Board dismissed the 2(d) and dilution claims, with prejudice. Thus the sole remaining "issue" was Applicant's intent.

The Board ruled that Intel's "earlier allegation of likelihood of confusion is accepted as a proper allegation of opposer's standing with respect to" the issue of Applicant's bona fides. [See TTABlog comment below].

Opposer had the burden to prove, by a preponderance of the evidence, that Emeny lacked the requisite bona fide intention to use his mark in connection with the recited services. Once Opposer established a prima facie case, the burden shifted to Emeny to come forward with evidence in refutation. The burden of persuasion, however, remained with Opposer.

The term " bona fide" is not defined within the Trademark Act, but the legislative history of the Trademark Law Revision Act of 1988 "reveals that Congress intended the test of 'bona fide' to be shown by 'objective' evidence of 'circumstances' showing 'good faith.'"

The Board agreed with Intel that "applicant's showing should be 'objective' in the sense that it is evidence in the form of real life facts measured by the actions of the applicant, not by the applicant's later arguments about his subjective state of mind."

Where, as here, an Applicant has no documentation to show his plans to use the mark, "such an absence of clear, objective evidence is sufficient for an opposer to prove that applicant lacked the requisite bona fide intention," unless the Applicant can come forward with an explanation as to why no such documents exist. See Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993).

The Board found that the circumstances of this case support the conclusion that Emeny lacked the requisite bona fide intent. The instant application (like eight other applications filed by Emeny and later abandoned) includes "an unreasonably broad listing of goods and services." Yet there was no evidence of any business plans, nor any evidence of a single business contact with any potential partner who would supply the goods that Applicant would sell. Indeed, on cross-examination, Emeny admitted that he wanted to "make sure that nobody else [can] take advantage of those marks." This "defensive motivation" is the type of potential abuse that concerned Congress.

Emeny wholly failed to rebut Intel's prima facie case. In response to discovery requests, Emeny did not divulge any business or marketing plans, or any relevant discussions. He admitted that he conducted no specific planning and never promoted or sold any goods under the mark. In short, he provided no evidence of a bona fide intent to use the mark. Under Commodore, the "failure to produce any objective evidence of an intent to use is sufficient basis for ruling in Intel's favor."

Therefore, the Board sustained the opposition.

TTABlog comment: A very interesting ruling, and perhaps the first in which the Board has found no bona fide intent to use.

But I'm troubled by the standing issue. Once Intel's Section 2(d) and dilution claims were jettisoned, what standing was left? At that point, did Intel step into the role of a "mere interloper?" Since it was no longer alleging likelihood of confusion or dilution (and indeed those claims had been dismissed with prejudice), how did it still have standing to complain? The cases cited by the Board do not address that point; they merely say that a party that claims likelihood of confusion has standing to raise the bona fide intent issue, but they do not say that its standing remains if and when the 2(d) claim is dropped.

I can understand why Intel dropped the dilution claim: the marks at issue are not substantially identical. But why did Intel drop the Section 2(d) claim? Was it afraid that the Board would rule on both the intent issue and the likelihood of confusion claim, and that it would lose on the latter?

Text Copyright John L. Welch 2007.

Precedential No. 35: GULP! 7-11 Loses 2(d)/Dilution Opposition to "GULPY" for Animal Water Dishes

In its first significant precedential dilution ruling in four years, the Board dismissed an opposition to registration of the mark GULPY for "portable animal water dishes and animal water containers sold empty," finding it not likely to cause confusion with 7-11's GULP marks, and not likely to dilute 7-11's famous mark BIG GULP, for fountain drinks. A crucial factor in both rulings was the Board's finding that the mark GULPY and GULP create different commercial impressions. 7-Eleven, Inc. v. Wechsler, Opposition No. 91117739 (May 15, 2007) [precedential].


Likelihood of Confusion: The Board first found that 7-11 owns a family of GULP marks (including BIG GULP, SUPER BIG GULP, X-TREME GULP, and OBSCENELY HUMONGOUS GULP [I made up the last one - ed.]) for fountain drinks. However, the Board concluded that the GULPY mark is sufficiently different from 7-11's GULP family surname that "consumers are not likely to perceive GULPY as a member of opposer's 'Gulp' family of marks." [Gulpy Gulp? - ed.]

"Opposer's family surname, the word 'Gulp,' is a common word meaning 'to swallow hastily, greedily, or in large amounts' or 'the amount swallowed at one time.'" *** The word 'Gulpy' is not constructed in the same manner as opposer's 'Gulp' marks, and when applied to a portable animal water dish, it engenders a different commercial impression (e.g., a puppy drinking water from a bowl or a pet's name)."

Noting that 7-11 has never sold pet food or pet accessories under any of the GULP trademarks, the Board opined, "it cannot be said that recognition of the 'Gulp' surname carries over to portable pet water dishes."

Turning next to 7-11's individual marks, the evidence established that the mark BIG GULP has a "very high degree of public recognition," but not so as to the other GULP marks. But the dissimilarity of the marks and the goods were factors that favored Applicant, and they overcame the Section 2(d) fame of the BIG GULP mark, leading the Board to conclude that confusion is not likely.


Dilution: Turning to Section 43(c) as amended on October 6, 2006 by the Trademark Dilution Revision Act, the Board first noted that the requirements for proving fame for dilution are more stringent than the requirements for proving "fame" under Section 2(d). Nonetheless, it found that BIG GULP is a famous mark for dilution purposes. 7-11 established that the BIG GULP mark received extensive media attention and enjoyed a 73% unaided awareness among all consumers. This evidence was "similar to the quantum and quality of evidence introduced in Nasdaq Stock Market Inc. v. Antartica S.r.l.., 69 USPQ2d 1718 (TTAB 2003)." Moreover, the evidence establishing fame pre-dated the filing date of Applicant's I-T-U application, as required by Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001).

Focusing on the issue of blurring, the Board noted that it may consider all relevant facts, with the Lanham Act providing guidance as to certain factors that may be considered: including (i) the similarity of the marks; (ii) the degree of inherent distinctiveness of the famous mark; (iii) the extent of exclusive use of the famous mark; (iv) the degree of recognition; (v) the intent of the alleged diluter; and (vi) any actual association between the marks.

For purpose of dilution, the marks at issue must be not just confusingly similar, but "identical or very substantially similar." Here, as noted, the marks GULPY and BIG GULPY engender different commercial impressions, and thus the Board did not "see the marks as being essentially the same." This factor "heavily favors applicant."

Moreover, because BIG GULP is suggestive for fountain soft drinks, the second dilution factor favored applicant. 7-11 has made substantially exclusive use of the BIG GULP mark, and so the third factor favored Opposer.

As to the fourth factor, although BIG GULP is famous, "there is insufficient evidence to demonstrate that BIG GULP has acquired an extraordinary degree of recognition relative to other famous marks." The Board considered that factor to be neutral.

There was no evidence that Applicant intended to create an association with the BIG GULP trademark, and so the fifth factor favored Applicant.

And finally, there was no proof of any actual association between the GULPY mark and the BIG GULP mark, and so the sixth factor favored Applicant.

Balancing all the factors, the Board found that those favoring Applicant "far outweigh" those favoring Opposer 7-11, and therefore it concluded that 7-11 had failed to prove its dilution claim.

TTABlog note: The Toro and NASDAQ decisions are discussed in some detail in my 2004 article entitled "Dilution at the TTAB: What to Prove and How to Prove It." Much of that article remains relevant, despite passage of the TDRA in 2006.

Text Copyright John L. Welch 2007.

"H2OPTIX" and "H2OVERX" Confusingly Similar for Sunglasses, Says TTAB

The Board affirmed a Section 2(d) refusal to register the mark H2OVERX for sunglasses and related goods, finding the mark likely to cause confusion with the mark H2OPTIX, registered for identical or related goods. In re Dioptics Medical Prods., Inc., Serial No. 78453049 (May 4, 2007) [not precedential].


Applicant Dioptics started off behind the proverbial 8-ball, because when identical goods are involved, a lesser degree of similarity in the marks is required to support a determination of likely confusion. The Board applied its usual formula to the consideration of the marks: both marks begin with H2O and end with X, both share "the same meaning in that H2O in both marks connotes water and suggests some relevance to water to the goods, i.e., that they are used in or near water." Both mark also telescope the O in H2O with terms that being with O, OPTIX and OVERX.

The Board noted that the term OPTIX, a slight misspelling of OPTIC, is somewhat suggestive, but it found that the similarities in the marks overshadow any differences.

Applicant argued that the marks differ in sound, since one has five syllables and the other four. The Board, however, dragged out the old saw that "[t]here is no correct pronunciation of a mark and applicant's mark also could be pronounced in four syllables." Applicant also contended that the registered mark is weak, but the Board saw no evidence of third-party use or registration of the mark H2O "for these or any types of goods." While H2OPTIX may be somewhat suggestive, the Board noted that these goods may be bought without a great deal of care, and so the scope of protection afforded the mark H2OPTIX "certainly encompasses these circumstances."

The Board therefore affirmed the refusal.

TTABlog comment: Frankly, I don't think the marks are close enough for confusion to be likely. The Board's assertion regarding "no correct pronunciation" is particularly bogus. Why wouldn't the ordinary consumer pronounce one mark as H-TWO-OPTICS and the other as H-TWO-OVER-X? And why would any ordinary consumer pronounce H-TWO-OVER-X in four syllables?

Also, where's the proof that sunglasses are purchased without a great deal of care? When I see people buying, they seem to spend an inordinate amount of time in the process. Can the Board just assume, via some sort of judicial notice, that sunglasses are not carefully purchased?

Text Copyright John L. Welch 2007.

Congratulations to the Trademark Blog!

The Trademark Blog is five years old today. Congratulations to Marty Schwimmer, the dean of trademark bloggers, and one of the best trademark lawyers on the planet.


Marty got me started on blogging. After fending off several dozen of my questions and suggestions, he finally said, "Why don't you get your own blog?" The rest, as they say, is history.
.

Shootout at the CA1 Corral: "M4" Found Generic for a Certain Carbine Rifle

The U.S. Court of Appeals for the First Circuit affirmed a grant of summary judgment to Bushmaster Firearms, Inc., ruling that the designation M4 is generic for a certain carbine rifle. The court rejected Appellant Colt's argument that ownership of a federal registration for the mark M4 for rifles precluded summary judgment, i.e., created a per se issue of fact sufficient to defeat summary judgment. Instead, the court affirmed the granting of Bushmaster's counterclaim to cancel the M4 registration. Colt Defense LLC v. Bushmaster Firearms, Inc., Appeal No. 06-1696 (May 18, 2007).

M4 rifle
In 1994, the U.S. Military designated a new compact version of the M16 carbine as the M4, derived from a prototype built by Colt under contract. The M4 was the military's "latest in a series of carbine designations beginning with M1 in 1940."

In 1997, in settlement of a dispute, the military recognized Colt's right to the proprietary information incorporated in the M4 design and in the settlement agreement defined "M4 carbine" to mean "the compact carbine designed by Colt, 5.56mm, having a 14.5" barrel ...." Colt was designated as the military's sole supplier of M4s until 2011.

Bushmaster began using the designation M4 for carbines in 1991, and other manufacturers also use M4 in their advertising.

The court recognized that registration of M4 on the Principal Register "establishes a rebuttable presumption that the term is not generic." This presumption may be overcome by a preponderance of the evidence. And, of course, evidence of genericness may come from "any competent source."

The evidence of genericness included "several examples of media publications" using M4 in a "generic fashion," use of the term M4 in advertising by several competitors, and e-mails from a variety of purchasers of carbines using the term M4 to describe "the type of gun they hope to purchase." Finally, there was evidence, "albeit limited," that Colt itself has used the term generically.

"In sum, Bushmaster presented sufficient evidence to rebut the presumption that Colt's mark is not generic. Moreover, this evidence if undisputed, would entitle Bushmaster to summary judgment on Colt's infringement claim and its cancellation counterclaim."

Colt, however, contended that the evidence was "misinterpreted and overvalued." The court disagreed regarding interpretation, and denied that any evidence was overvalued.


Colt asserted that, even after Bushmaster put forth evidence to rebut the presumption of validity established by the registration, "the registration continues to serve as strong evidence that the trademark is generic in the eyes of the relevant public." That shot missed the target:

"Colt's argument overstates the significance of a registered mark. As stated above, a registered mark serves to establish a rebuttable presumption that the mark is subject to trademark protection. Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 117-18 (1st Cir. 2006). However, once this presumption has been overcome, the party holding the certificate of registration may not avoid summary judgment simply by pointing to the certificate as evidence."

The appellate court disagreed with the district court in ruling that the military's understanding of the term M4 is relevant, even though the military could buy the rifle only from Colt. But the exclusive supplier agreement evidences merely a "business relationship of a limited duration between Colt and the military; it is not evidence of the military's general understanding of the meaning of M4 outside of the contractual relationship." The military may contract with another producer in 2011. If the agreement "supported a non-generic finding and the military does change suppliers in 2011, it could lead to the absurd result of the military being prevented from identifying the weapon by use of the very classification system that it originally [] devised."

Similarly non-probative was a settlement agreement between Colt and another manufacturer, wherein the latter agreed that "Colt's M4 trademark is a valid and enforceable trademark that should not be cancelled on the grounds of genericness." Such a private agreement "has little, if anything, to do with the general understanding of M4 to the relevant public."

In sum, Bushmaster presented evidence that relevant consumers associate M4 with the military designation for a carbine that has certain characteristics. Colt presented "no more than a scintilla of evidence" showing that M4 is a source identifier for Colt's product. That mere scintilla is not enough to avoid summary judgment, and so the appellate court affirmed the judgment.

TTABlog comment: It seemingly didn't take much to blow away the registration's presumption of validity. Bushmaster's evidence of genericness hardly seemed overwhelming. Should the standard of proof for genericness be more than a preponderance of the evidence when the mark is registered?

Text Copyright John L. Welch 2007.

Addition of "THE" to "LID" Does Not Avoid Mere Descriptiveness for Cargo Trailer Covers, Says TTAB

The Board re-affirmed that the addition of the definite article "the" to a descriptive word does not convert the latter into a registrable trademark. [What about the rock group "The The," you might ask? Well, the second "the" is not descriptive, so the question is not on point - ed.] Anyway, the Board affirmed a Section 2(e)(1) refusal to register the mark THE LID, finding it merely descriptive of "mechanically-operated unfitted flexible covers and tarping systems, namely, flip tarp systems, primarily comprised of flexible covers, tarpaulins and drive mechanisms for cargo and refuse trailers and semi-trailers." In re Aero Industries, Inc., Serial No. 78374039 (May 9, 2007) [not precedential].


Examining Attorney Allison P. Schrody contended that THE LID "merely describes the primary use or function of the goods, i.e., that they are hinged lids for truck trailers." She relied on a dictionary definition of "lid," website evidence of use of "lid" in connection with truck covers, and Applicant's own specimen of use, which features a photo of the product and the phrase "Put a lid on it!"

Applicant Aero argued that THE LID is not descriptive because "lid" is not typically used in the industry [doesn't matter, still descriptive - ed.]; that the word is incongruous for its goods [what the ....? - ed.]; and that the article "the" adds a unique character to the mark [strike three - ed.].

The Board agreed with the Examining Attorney that THE LID directly conveys to potential consumers the nature of the product. It noted that Aero itself describes its product as a "lid," and that the third-party materials relating to pickup trucks demonstrate the "broad use of the term 'lid' and a common understanding of that word when it is used to describe various covers." And, of course, the fact that Applicant "may be the first and possibly the only user of this designation does not alter the significance of THE LID and bestow upon applicant any proprietary rights."

Finally, as to the addition of the "the," the Board "has repeatedly rejected arguments that the use of the definite article 'the' as a prefix in a mark is sufficient to convert a descriptive term into a suggestive term."

"The reasoning behind these cases provides that the registration of THE LID would deprive others from referring to their products by the designation "the lid" to indicate that their covers are trailer lids."

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


Text Copyright John L. Welch 2007.

Finding "KEWPIE" a Strong Mark for Dolls, TTAB Sustains 2(d) Opposition to "ROSE O'NEILL KEWPIE" for Kitchenware

In case you didn't know, the original "Kewpie" characters were created by Rose O'Neill and first published in 1909. They were a marketing phenomenon in the early part of the twentieth century, and nearly one hundred years later, the rights in the "Kewpie" name are still worth fighting over. In Rita Abraham and Jesco Imports, Inc. v. David O'Neill, Opposition No. 92225853 (April 23, 2007) [not precedential], the Board sustained a Section 2(d) opposition to registration of the mark ROSE O'NEILL KEWPIE (Stylized) for "household or kitchen utensils and containers, namely, cookie jars, plates, bowls, cups and glasses" [KEWPIE disclaimed], finding it likely to cause confusion with the mark KEWPIE previously used and registered for dolls, nursery furniture, jewelry, sleepwear, and other products.


Opposer Rita Abraham is the owner of the two pleaded registrations and Jesco is her exclusive licensee. Applicant is the great nephew of Rose O'Neill and is the personal representative of her estate. Disputes over intellectual property rights in these designs and in the KEWPIE mark have simmered for decades between the relatives of Rose O'Neill and the assignee of those rights, Joseph Kallus, and his heirs and assigns.

The Board began by considering Applicant's affirmative defenses that KEWPIE is generic for dolls and that Opposers are not the rightful successors to the KEWPIE marks.

Genericness: Applicant relied on a single dictionary definition ("easily offset" by Opposers' submission of other dictionary entries referring to "Kewpie" as a trademark for dolls.) and a single generic usage by a federal appeals court judge in a wholly unrelated case. He submitted no consumer testimony and no consumer surveys. Against Opposers' evidence of use, recognition, and registration of the KEWPIE mark, Applicant's evidence was de minimis and failed to meet his burden to prove genericness by "clear evidence."

The Board noted that "there are prospective customers of dolls who want to purchase a KEWPIE doll of the sort marketed by opposers and having historical origins with the artistry of Rose O'Neill." However, genericness may not be based upon claims of "purchaser motivation."

"[T]hat purchasers call for a particular product by the name given it by its producer or source does not negate its function as a mark. Such a given name is a proper name, like the name of an individual, not a generic name, so long as the public uses it to identify a product of a single source. It is the normal way the public uses a mark which is applied by a manufacturer or a merchant to a particular product, and, as indicated, trademark concepts do not require the condemnation of normal commercial language." Quoting In re DC Comics, Inc., 215 USPQ 394, 404-405 (CCPA 1982).

Ownership: The Board agreed with Opposers that a 1947 agreement broadly granted intellectual property rights and resulted in an "outright transfer of the trademark rights of Rose O'Neill's Estate to Joseph Kallus [father of Opposer Rita Abraham]."


Likelihood of Confusion: Opposers' registrations and the long and continuous use of the KEWPIE mark established their priority.

As to the marks, the Board agreed with Opposer that the dominant portion of Applicant's mark is the word KEWPIE. The "Rose O'Neill" portion is "so heavily stylized as to compromise somewhat its legibility." Moreover, the "inherent strength and renown" of the mark KEWPIE contributes to this dominance. And the marks convey the same connotations and commercial impressions.

In light of sales of four million dollars by two of Jesco's licensees during the 1990's, promotion and advertising of Opposers' products in catalogues and at toy and gift shows, promotion on television and in national magazines, and advertising by mass marketing chains, "KEWPIE dolls have clearly achieved some degree of renown in the relevant markets." The Board found it to be a "strong mark indeed." Applicant's asserted that "Kewpie" is weak because of third-party usage on a wide variety of products, but the record included only a single, subsisting third-party registration (KEWPIE for various food products). However, that registration is based on a single Japanese registration under Section 44(e) and there was "no probative evidence of third-party usage in this country that would result in our restricting the scope of protection to be afforded to opposers' claimed registrations."


With regard to the goods, Applicant acknowledged that a "range of KEWPIE products will be purchased by collectors." "For collectors, whether the product involves a doll, or collateral products containing images of a doll face reminiscent of the child-like figure first created by Rose O'Neill, both will be seen as related because of the subject matter." The specific goods are related in "cumulative ways," and therefore this du Pont factor favored Opposers.

As to trade channels and conditions of sale, the Board noted Opposers' testimony that the goods would be purchased by the same customers in the same stores. And there was no showing that the consumers of these items would be sophisticated or that the goods are so expensive that purchasers would exercise an inordinate degree of care.

Based upon the similarity of the marks, the strength of the KEWPIE mark in the toy and gift field, the relatedness of the goods, and the overlap in customers, the Board found that confusion is likely and it sustained the opposition.

TTABlog question: In footnote 15, the Board declined to comment on "those contexts in which applicant is entitled to use the KEWPIE trademark as part of a valid historical reference in a manner that is not likely to confuse prospective customers." Given the fact that the design patents and presumably the copyrights in the original ROSE O'NEILL designs have now expired, may someone legally sell replica dolls that look like the originals, and identify them as "based on the original Kewpie doll designs of Rose O'Neill"?

Could Opposers' claim trademark rights in the shape/configuration of the dolls, despite the expiration of the design patents and copyrights? I.e., is there now a "right to copy" those designs, and an accompanying fair use right to identify them as copies of the originals?

Text Copyright John L. Welch 2007.

TTABlogger Hits the Road: Tonight at the CIPLA

I hope to see you tonight at the Connecticut Intellectual Property Law Association (CIPLA) meeting, where I will give a presentation on recent TTAB developments, alternatively entitled "The TTAB in 2006: the Good, the Bad, and the Ugly" or "TTAB Update: Rules, Rulings, and Ruminations." [Take your pick.] The dinner meeting will be held at the Graduate Club in New Haven, from 6:00 PM to 9:00 PM.


As an aside, I can't resist commenting on the fact that the CIPLA has wisely included the term "intellectual property" in its name. In Boston, the Boston Patent Law Association (BPLA) refuses to change its name to BIPLA, despite the fact that many, if not most, of its members practice more than patent law (myself included). I've been thinking of forming a "Boston Trademark Law Association," but since I'm the co-chair of the BPLA's Trademark and Unfair Competition committee, that just wouldn't be right.
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TTAB Panel Majority Reverses Mere Descriptiveness Refusal of "WELDKIT" for Auto Suspension Systems

In the second divided panel decision this week (actually, the second of the year), the Board reversed a Section 2(e)(1) refusal of the mark WELDKIT, finding it not merely descriptive of "suspension systems for automobiles." Judge Bucher dissented. In re Weldkit, Inc., Serial No. 78521325 (May 10, 2007) [not precedential].

some sort of welding kit
The Examining Attorney, relying on dictionary definitions and several websites, asserted that the mark "immediately and logically conveys that applicant provides suspension systems for automobiles that include a kit for welding."

Applicant argued that the term is too broad to describe the goods with any immediacy or particularity, and further claimed that its goods do not require welding. As to the websites cited by the PTO, it pointed out that three have nothing to do with automobile suspension systems, and others either do not use the phrase "weld kit" or are unclear in meaning. (As Judge Bucher scoffingly noted, Applicant also maintained that some might take the word "kit" to refer to "kitten.")

The panel majority found the PTO's evidence insufficient to establish mere descriptiveness. "In sum, the sparse record does not establish that 'weld kit' is in common use for automobile suspension systems such that we could conclude that WELDKIT is merely descriptive."

Judge Bucher agreed that the evidence was "scant," but he noted that two websites showed that "these aftermarket components may require welding." He opined that the term "weld kit" would "immediately convey information about the nature of these suspension components." If indeed Applicant's goods are not welded on, then, according to Judge Bucher, "the mark should be refused under Section 2(e)(1) of the Act as being deceptively misdescriptive."

TTABlog comment: I agree with Judge Bucher. The majority seemed to be applying a genericness-like test, which would require proof that the term WELDKIT (or "weld kit") is actually in use by third parties for the identified goods. For purposes of mere descriptiveness, however, it does not matter that Applicant may be the first and only user of the mark. See, e.g., In re Zanova, Inc., 59 USPQ2d 1300 (TTAB 2001). It seems to me that the dictionary definitions coupled with common sense should have sufficed.

Text Copyright John L. Welch 2007.

Precedential No. 34: Section 2(d) Opposer Fails to Prove Priority as TTAB Rejects Analogous Use Argument

Here at the TTABlog, we give priority to precedential decisions, and here's one that's a precedential decision about priority! [LOL! - ed.] The Board granted summary judgment to Applicant New Sensor Corporation in this Section 2(d) consolidated opposition because Opposer Westrex Corporation failed to prove the requisite priority. Westrex Corp. v. New Sensor Corp., 83 USPQ2d 1215 (TTAB 2007) [precedential].


Applicant sought to register the marks GOLD LION and GENALEX GOLD LION for "electron tubes, also known as vacuum tubes," but Opposer Westrex claimed prior use of the mark GOLD LION for the same goods.

In order to prevail, Westrex had to beat Applicant's filing dates of November 9, 2004 for GENALEX GOLD LION, and June 28, 2005 for GOLD LION. Westrex did not make its first sale of products bearing the GOLD LION mark until January 3, 2007, and therefore it attempted to prove priority under two alternative theories: (1) analogous trademark use since 1995; and (2) ownership via a 2005 assignment of the mark GOLD LION from a third party.

As to the analogous use argument, Westrex proved $50,000-60,000 in advertising/promotional expenditures since 1995, receipt of a handful of e-mails inquiring as to the release of the GOLD LION product, and receipt of a single order (subsequently cancelled). The Board found these efforts insufficient because they "do not constitute clear, widespread, and repetitive activities sufficient to have established prior analogous trademark use on the part of opposer." Westrex failed to create a genuine issue of material fact "that more than a negligible segment of the marketplace was impacted by its online pre-sale activities." The eleven year delay between the start of its pre-sale activities and its first sale "is not 'commercially reasonable' and indicates that opposer's activities were far too sporadic to rise to the level of analogous use."

The Board pointed to the intent-to-use provisions of the Lanham Act, noting that the purpose of the Trademark Revision Act of 1988 was to eliminate "token use." Opposer Westrex acted "at its peril" when it failed to take advantage of those I-T-U provisions.


Turning to Westrex's claim to ownership based on a third-party assignment, the Board again found the evidence inadequate. Two sales transactions to the same purchaser failed to support a finding of prior and continuous use by the third party, and in turn Westrex cannot rely on that same minimal use to establish priority here.

In sum, the Board found no genuine issue of material fact regarding the issue of priority, and it dismissed the oppositions.

Text Copyright John L. Welch 2007.

Divided TTAB Panel Finds "EZ BED" for Air Beds Confusingly Similar to "EASYBED" for Retail Services

A divided Board panel (quite a rarity) affirmed a Section 2(d) refusal of the mark EZ BED for "air mattresses for use when camping; air beds" [BED disclaimed], finding it likely to cause confusion with the registered mark EASYBED for telephone shopping and retail store service in the field of mattresses, beds, and bedding. In re Team Worldwide Corp., Serial No. 76430485 (March 15, 2007) [not precedential].


The Board found the marks to be "very similar" in overall appearance, identical in sound, and the same in meaning. Although Registrant uses its mark as part of a telephone number, the Board found that to be irrelevant, since the EASYBED mark is registered in standard character form.

As to the goods and services, the evidence showed that air beds and traditional mattresses may be found on the same websites and sold under the same mark. Applicant TWW Corp. argued that its product is a "unique, portable, electrically blown up mattress used for travel and/or camping purposes" and is a relatively inexpensive item sold primarily at sporting goods stores and camping retailers. However, Examining Attorney Tracy Cross pointed out that Registrant’s identification of goods encompasses all types of mattresses, including Applicant’s "air beds," and is unlimited as to channels of trade.

The panel majority (Judges Kuhlke and Grendel) therefore found confusion likely.

Judge Seeherman dissented, contending that the mark EASYBED is "obviously highly suggestive" of Registrant’s services and therefore is entitled to a more limited scope of protection. Moreover, consumers will recognize a "distinctly different connotation" for the marks: easy to inflate versus easy to purchase.

As to the trade channels, consumers would not encounter Applicant’s products at Registrant’s stores because "a registrant cannot deliberately cause confusion by its own actions." [In a footnote, the majority refused to consider this "implied limitation" because in cases involving good and services, "an overlap in trade channels is found given that the type of goods in the identification would be sold in the type of store in the identification."]

Therefore, Judge Seeherman would reverse the refusal.

TTABlog comment: Even if Judge Seeherman's "implied limitation" were accepted, it would not preclude confusion, since a purchaser might still believe there is a source connection between an EZ BED purchased at one location or on-line, and a retail store called EASYBED, selling other beds products.

Text Copyright John L. Welch 2007.

TTAB Finds "NAIL CARE" Generic for Nutritional Supplements

In a ruling that was more of a "slam dunk" than a "nail-biter," the Board affirmed a genericness refusal of the designation NAIL CARE for nutritional supplements. Applicant Ayurvedic Concepts, which does business as Himalaya USA, failed to overcome the prima facie case established by PTO Examining Attorney Jason F. Turner. In re Ayurvedic Concepts, Ltd., Serial No. 78154263 (April 18, 2007) [not precedential].


The Examining Attorney relied on dictionary definitions for the word individually as well as in combination. The Board agreed that "nail care" refers to the proper maintenance/good health of fingernails and/or toenails. With a nod to American Fertility, it viewed this dictionary evidence "as being corroborative of genericness - not in itself conclusive of genericness."

Thousands of search engine hits for "nail care" showed that the phrase is "clearly a term of art in the field of skin care and beauty care." Moreover, Internet web pages used "nail care" as a specific category of skin beauty care or nutritional supplements. Applicant's own website stated that "NailCare is a unique herbal supplement that helps maintain healthy nail structure." [Emphasis supplied by the Examining Attorney].

The Board found the genus of goods to be "nail care supplements." [I think. It's not entirely clear to me what the Board found. - ed..] Turning to the question of whether the public understands "nail care" to refer to that genus, the Board answered in the affirmative. Likening the case to In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) [ATTIC generic because it refers to a narrow category of sprinklers for fire protection of attics], it opined:

"If a prospective purchaser - a member of the general purchasing public - were seeking to buy a nutritional supplement for strengthening her nails, it would be reasonable for her to refer to such a product as a 'nail care' supplement."

Thus the PTO made out a prima facie case of genericness. Applicant was unable to rebut it. It introduced "no evidence that contradicts the conclusion that 'nail care' is a generic descriptor of the nature of applicant's goods."

The Board was left with no doubt that NAIL CARE is generic for the identified goods.

Text Copyright John L. Welch 2007.

Finding Family of "SEXY" Marks, TTAB Sustains 2(d) Opposition to "SO SEXY" for Hair Care Products

Opposer Sexy Hair Concepts convinced the Board that it (Opposer, not the Board) owns a family of "SEXY" marks for various hair care products, leading to victory in its opposition to registration of the mark SO SEXY for essentially identical hair care products. Crucial to the decision was the Board's conclusion that the word "sexy" is neither descriptive nor laudatory for these products. Sexy Hair Concepts, LLC v. Victoria's Secret Stores Brand Management, Inc., Opposition No. 91125739 (April 20, 2007) [not precedential].


The Board took judicial notice of dictionary definitions of "sexy" as "sexually suggestive or stimulating: erotic" and as "generally attractive or interesting: appealing." However, the record did not establish "a direct connection between the term 'sexy' and any specific quality, characteristic, function, ingredient, attribute or feature of the identified hair care products or of hair after the use of the products." [TTABlog comment: I may not be able to describe "sexy" hair precisely, but I know it when I see it.]

The Board next looked at the family-of-marks issue, and found that the evidence "clearly established that opposer promotes a group of marks for which the common characteristic is the term 'sexy.'"

"Except for the mark SEXY HAIR, opposer's family of marks is characterized by the term SEXY preceded by a word that suggests an intended result of the product and followed by a generic noun in the hair care field (e.g., SEXY HAIR, BIG SEXY HAIR, STRAIGHT SEXY HAIR, HEALTHY SEXY HAIR, HOT SEXY HAIR, WILD SEXY HAIR, HOT SEXY HIGHLIGHTS)."

The marks are shown together on television, at trade shows, and in promotional brochures. The SEXY element is emphasized by the use of different fonts and colors for the SEXY or SEXY HAIR portion of the marks. Several periodicals referred to various brands as the SEXY HAIR or SEXY HAIR CONCEPTS "collection" or "line" of products.

The existence of a few third-party registrations for marks containing the term "sexy" for hair care products does not "defeat or limit opposer's family of marks characterized by the term SEXY preceded by a word that suggest an intended result of the product and followed by a generic noun in the hair care field."

"Thus, opposer's family of marks is entitled to the scope of protection normally accorded a family of mark for whom the common element is a suggestive, rather than an arbitrary, term, i.e., a more limited scope of protection than for an arbitrary mark."

Turning to an assessment of Applicant's mark, the Board observed that SO SEXY may be "described as the term SEXY preceded by a word that suggests an intended result of the product, i.e., that the user's hair will be 'so,' or 'very' SEXY."

"This is the same pattern as used in opposer's family of marks. Although all but one of opposer's marks include the term HAIR following sexy, neither party disagrees that 'hair' is a generic term in connection with the identified hair care products. Thus even though applicant's mark does not include the term HAIR, it is the only possible object of the phrase SO SEXY."

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

TTABlog comment: I think the Board may have gone off the track in failing to recognize the laudatory nature of the word "sexy." Moreover, its comparison of the mark SO SEXY with Opposer's family of marks was a bit strained, don't you think? I just do not find SO SEXY to be similar enough to be likely to confuse.

Text Copyright John L. Welch 2007.

TTAB Turns Deaf Ear to Bose Corp.'s Petition for Cancellation of "ELECTRONIC LIFESTYLES" Registrations

Although the TTAB found similarities in the marks and overlapping channels of trade, and despite the strength of Bose Corporation's registered mark LIFESTYLES for audio speakers and music systems, the differences in the involved goods and services led the Board to dismiss a petition for cancellation aimed at four registrations for the mark ELECTRONIC LIFESTYLES -- for publications, consulting services, educational services, and trade show services, all relating to electronics. Applicant CEDIA hit a grand slam by winning on four issues: abandonment, fraud, likelihood of confusion, and laches. Bose Corp. v. Custom Electronic Design & Installation Ass'n, Cancellation No. 92042327 (April 30, 2007) [not precedential].


Abandonment: Bose's abandonment claim was predicated on certain discovery responses of CEDIA, but the Board was unimpressed. It noted that "Petitioner mistakenly characterizes a response to an interrogatory as an admission," and it found CEDIA's document production adequate to show continuous use of the mark ELECTRONIC LIFESTYLES for all of the goods and services in the registrations.

Fraud: Bose's fraud claim likewise fell flat. Bose asserted, based on one interrogatory response, that CEDIA committed fraud when it filed its applications and one one of its Declarations of Use. The Board, however, found Bose's evidence "nowhere near sufficient to prove fraud." "Fraud must be proven to the hilt and reliance on this single interrogatory response, in particular given the objections and no follow up inquiry or motion to compel, is quite misplaced."


Likelihood of Confusion: Bose's Section 2(d) claims applied to only three of CEDIA's registrations, since the registration for publications was already five-years old. In a nutshell, the Board found that "petitioner's loudspeakers and music systems and respondent's trade show, educational, and technical advice services are too dissimilar for source confusion to result." Noting the sophistication of the consumers involved and the lack of actual confusion over eight years of contemporaneous use, it found Bose's "likelihood of confusion theory to be speculative and that the extent of potential confusion is de minimis at best."

Laches: For the sake of completeness, the Board considered CEDIA's affirmative defense of laches (applicable only to Bose's Section 2(d) claims). It calculated the length of the delay as approximately four years (from the date of the three service mark registrations to the filing of the petition for cancellation in 2003). Bose was "completely silent" as to the reasons for the delay, and therefore the Board found the delay to be "undue." Next, it ruled that CEDIA had been prejudiced by the delay because it "invested in and promoted its ELECTRONIC LIFESTYLES brand." Accordingly, laches was established. And in view of its finding of no likelihood of confusion, the Board unsurprisingly concluded that confusion was not "inevitable" and therefore that CEDIA's laches defense was valid.

Finally, the Board addressed CEDIA's affirmative defense that it is at least entitled to registration with the additional restriction that its goods and services "relate to or are in connection with" trade association activities for business specializing in designing and installing custom electronic systems. The Board stated in footnote 11: "If on appeal, the Board's decision is reversed as to the unrestricted identifications but affirmed as to the restricted identification, on remand the Board will amend the registrations to include the pleaded restriction."

Text Copyright John L. Welch 2007.

"Foreign Equivalents" Article from The Trademark Reporter

Elizabeth J. Rest provides her analysis of the doctrine of foreign equivalents in "Lost in Translation: A Critical Examination of Conflicting Decisions Applying the Doctrine of Foreign Equivalents," 96 Trademark Reporter 1211 (November-December 2006).

The Widow Clicquot
Ms. Rest asserts that "many cases ... have reached incorrect decisions" not as the result of "sloppiness by the courts, or of the courts abusing their discretion," but rather because of the "lack of well-reasoned precedent set by the U.S. legislature or the U.S. Supreme Court." [TTABlog comment: I didn't know the "U.S. legislature" set "precedent."] She proposes "more clearly defined principles" that may be relied upon when assessing a foreign-word mark.

For purposes of the TTAB, the guiding precedent is Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689 (Fed. Cir. 2005). There, the CAFC ruled that "it is improbable that the average American purchaser would translate VEUVE into the English word "widow." The Board subsequently attempted to clarify its view of the doctrine in In re Thomas, Serial No. 78334625 (April 24, 2006), holding that MARCHE NOIR would be translated into English by American consumers familiar with the French language. [TTABlog posting here]. In my reading of these two cases, there remains a lack of clarity regarding the application of the doctrine, particularly regarding how to define the "average American purchaser."

TTABlog notes: Turning back to the article, I must say that I was a bit shaken at the outset by the author's assertion on the first page that the CAFC stated in Palm Bay that the TTAB is "inconsistent in its application of the doctrine of foreign equivalents." That may be true, but it is not what the CAFC said. It said that the Board had been inconsistent in that very case, not in general. See TTABlog posting here.]

Finally, a thank you to The Trademark Reporter for granting permission to provide a link to this article, which is Copyright © 2006 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 96 TMR 1211 (November-December 2006).
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TTAB Reverses Surname Refusal of "FRESCH" for Frozen Pizza

The PTO took the wrong tack in its refusal to register the mark FRESCH for frozen pizza and appetizers. Rather than base the refusal on mere descriptiveness ("fresh"), the Examining Attorney maintained that "Fresch" is primarily merely a surname under Section 2(e)(4). The Board disagreed. In re Schwan's IP LLC, Serial No. 78527306 (April 25, 2007) [not precedential].


Judge Bergsman, in his trademark style, went through the evidence in some detail, and found the record "devoid of any probative evidence regarding any meaning for FRESCH."

The PTO submitted a printout from the LEXIS/NEXIS database showing 131 residential listings of "Fresch" as a surname, and excerpts from 104 "representative" stories in which the word appeared as a surname. With her brief, the Examining Attorney provided several pages from online German-English dictionaries, but the Board found this evidence objectionable both because of untimeliness and because online dictionary evidence is not admissible unless accompanied by some proof that the source is "readily verifiable, reliable, and available in print publications."

Applicant Schwan's asserted that, inter alia, Fresch is a location in Austria, Fresch Hazel is a place in Belgium, the word "fresch" means "fresh" in Mennonite Low German, and "fresch" may be a Latin word. Various foreign website pages submitted by Schwan's were of little evidentiary worth because they were in German, or referred to a restaurant outside the USA, or were not likely accessed by American internet users, or were simply incomprehensible.

Turning to the Section 2(e)(4) analysis, the Board found that FRESCH is not a common surname. The record lacked evidence that anyone associated with Applicant Schwan's is named "Fresch" (a neutral factor). And as mentioned, there was no probative evidence that "fresch" has any meaning [the geographical references being too obscure and the Mennonite dictionary entry being of little value in light of the "handful of persons in the United States who speak Plautdietsch"].

As to the subjective factor of "look and feel," the Board noted that there was no evidence that "___sch" is a common or recognized structure or format for a surname. [TTABlog comment: BUSCH beer?]. Instead, the Board observed that FRESCH is "the phonetic equivalent of the descriptive word "Fresh," and that has a profound effect on the way consumers will perceive the word FRESCH."

"Because 'Fresch' does not have the appearance of a surname, and because the word 'fresh' describes a desirable quality of food or ingredients in food, consumers would be more likely to recognize 'Fresch,' when used in connection with the food items listed in applicant's identification of goods, as a stylization or variation of the word 'fresh,' rather than as a surname."

The Board therefore reversed the surname refusal.


TTABlog comment: While the Board may have reached the right result here, where was the evidence to support its finding that consumers would be more likely to recognize "Fresch" as a variation of "fresh"? We may think that to be the case, but wasn't it up to Applicant to prove it? Didn't the PTO make out a prima facie case under 2(e)(4) that shifted the burden to the Applicant?

Text Copyright John L. Welch 2007.

Four More Bloggers at "MEET THE BLOGGERS III"

A TTABlog thank you to fellow trademark bloggers and "MTB III" attendees Michael Atkins, R. David Donoghue, Jeremy Phillips, and Boris Umansky (in alphabetical order by surname). You may check out their respective blogs at the links below:

Schwimmer, Welch, and Atkins

• Seattle Trademark Lawyer (Michael Atkins)


• Chicago IP Litigation Blog (R. David Donoghue)


• IPKat (Jeremy Phillips)


• IP Legal Lounge (Boris Umansky)

TTAB Posts May 2007 Hearing Schedule

The seven TTAB hearings scheduled for May are listed below. As usual, Section 2(d) issues predominate. The hearings will be (or have been) held in the East Wing of the Madison Building. [The hearing schedule may be found at the TTAB website (lower right-hand corner)].


May 1, 2007 - 10 AM: In re Johnson & Johnson, Serial No. 78518703 [Section 2(e)(1) mere descriptiveness refusal of POWDER-GEL for "vaginal skin preparations, namely, skin protectant creams"].

May 3, 2007 - 10 AM: Decra Roofing Systems, Inc. v. Sisson, Cancellation No. 92043095 [Petition for cancellation of a registration for the mark DecraStone (Stylized) for "concrete masonry units used for construction of walls" under Section 2(d), in view of the registered mark DECRA for various roofing construction materials].


May 8, 2007 - 10 AM: In re Focus Magazin Verlag GmbH, Serial Nos. 79010009 and 79008210 [Section 2(d) refusals of FOCUS and FOCUS MONEY for publishing services, television broadcasting services, and magazines, periodicals, newspapers, and pamphlets in the field of financial and economic information, in view of the registered marks FINANCIAL FOCUS for financial newsletters and advice columns and FOCUS for a periodical concerning political and economic issues].


May 16, 2007 - 11 AM: In re Aspen Insurance Holdings Ltd., Serial No. 78185508 [Section 2(d) refusal of ASPEN SPECIALTY for underwriting special risk insurance for businesses, in light of the registered mark ASPENCROSS for insurance brokerage and related financial services].

May 22, 2007 - 10 AM: In re MasterGrip, Inc., Serial No. 76579302 [Section 2(d) refusal of THE GREAT ESCAPE for golf clubs, based upon the registered mark ESCAPE for golf clubs].

May 22, 2007 - 2 PM: The Children's Inn v. Bhandari, Opposition No. 91120549 [Opposition on Section 2(d) and dilution grounds, to registration of the mark KIDS INN for hotel, motel, and restaurant services, in light of Opposer's CHILDREN'S INN mark and name for lodging services for children and their families who are patients at NIH].

The Children's Inn at NIH
May 24, 2007 - 2 PM: In re Loggerhead Tools LLC, Serial Nos. 78533029 and 78533032 [Section 2(d) refusal of BIONIC TOOLS for various hand tools, in view of the registered mark BIONIC for power drill bits].

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

Text Copyright John L. Welch 2007.m

The TTABlogger Meets Sammy Davis, Jr.

I bumped into Sammy Davis, Jr. at the House of Blues on Tuesday night, and he was kind enough to say that he keeps an eye on the TTABlog.

Two Views of INTA Chicago 2007

Thank you for the kind words from many readers who said hello to me at INTA. It is extremely gratifying to know that people not only read the blog, but enjoy it. Hope to see you in Berlin next year at "Meet the Bloggers IV."

View from my room at the Hotel Monaco

View from my favorite hot dog place (on Wabash)
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