Saturday, June 30, 2007

TTABlog Quarterly Index: April - June 2007

Tip from the TTABlogger: never move. After a week of packing and (partial) unpacking, finding my lost keyboard, and fiddling unsuccessfully with my wireless network, I'm glad to see this quarter draw to a close. [Meanwhile, please note that e-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update.]

Millenium Park, Chicago

Section 2(d) - Likelihood of Confusion:

Section 2(e)(1) - Mere Descriptiveness:

Section 2(e)(4) - Primarily Merely a Surname:

Section 2(f) - Acquired Distinctiveness:

Bona fide Intent:

Dilution:

Fraud/Nonuse:

Genericness:

Mere Ornamentation/Not a Trademark

Ownership:

Specimen of Use/Mutilation:

the El, Chicago

Procedural Matters:

CAFC Decisions:

Recommended Reading:

Leo Stoller:

Meet The Bloggers III:

Other:

Text and photographs Copyright John L. Welch 2007.

posted by John L. Welch @ 6/30/2007   0 comments

Friday, June 29, 2007

No Joy in Leoville: PTO Cancels 34 "STEALTH" Registrations

The USPTO has now implemented the Order of the U.S. District Court for the Northern District of Illinois, cancelling 34 registrations for the mark STEALTH and variations thereof, owned by Leo Stoller's company, Central Mfg. Co.

Leo Stoller

For a partial history of the Pure Fishing lawsuit that led to these cancellations, follow the blogging trail from here. Stoller appealed from the federal court's October 4, 2006 Order requiring cancellation of the registrations, but he failed to timely file his brief, leading to dismissal of the appeal for want of prosecution on February 12, 2007. The Court of Appeals issued its Mandate on March 8, 2007.

Stoller petitioner for a writ of certiorari from the U.S. Supreme Court, but his petition was denied in early June.


TTABlog comment: As previously mentioned, the cancellation of these registrations does not, of course, prevent Stoller and his companies from claiming common law rights in the STEALTH mark, but common law rights require proof of use. Gone are the presumptions that accompany the registrations, and proof of rights in the STEALTH mark will require Mr. Stoller and his company to provide real evidence. That should make things interesting.

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 6/29/2007   0 comments

Tuesday, June 26, 2007

TTABlog on Vacation This Week.

Returning Monday, July 2, if not sooner.
.

posted by John L. Welch @ 6/26/2007   0 comments

Monday, June 25, 2007

CAFC Finds "CHI" Marks Confusingly Similar for Electric Massagers, Reverses TTAB

In a precedential ruling, the U.S. Court of Appeals for the Federal Circuit reversed a TTAB determination regarding likelihood of confusion. China Healthways Institute, Inc. v. Wang, 83 USPQ2d 1123 (Fed. Cir. 2007) [precedential]. The Board had found the mark CHI PLUS in the stylized form shown immediately below, not confusingly similar to the mark CHI & Design, shown next below, both for electrical massagers. (TTAB decision here).


The Board ruled that "the word 'chi' has a well-known meaning among those knowledgeable about Eastern medical treatments" ... and the "chi" portion of the marks is "at least very highly suggestive, if not descriptive." Therefore, it found that "the marks are distinguished by their respective additional matter," and it concluded that their overall commercial impressions are not similar."


The CAFC first noted that the determination of likely confusion is a question of law based on underlying facts. Therefore, it gives plenary review to the TTAB's legal conclusions, and reviews the Board's findings of fact under the substantial evidence standard.

The CAFC asserted that "the Board concentrated its analysis on the difference between the stylized letter 'I' in Chi Institute's mark, and the word 'PLUS' in Wang's mark, and held that the marks are 'distinguished by their respective additional matter." That, the CAFC concluded, was error, because "the marks must be compared in their entirety." [TTABlog comment: which the Board did.]

"TheBoard erred in declining to give any significant weight to the similarities of the marks, particularly in light of the identity of the goods, the identity of the intended consumers, and the identity of the channels of trade. *** It is incorrect to compare marks by eliminating portions thereof and simply comparing the residue."

The CAFC pointed out that "chi" may have a meaning in Chinese traditional medicine, but it "does not mean an electric therapeutic massager." It found the word CHI to be the major component of both marks, and discounted the meaning of the word "Plus."

The CAFC also pointed out that actual confusion evidence should have been considered "to the extent that it was properly proffered." [TTABlog comment: ignoring the issue of whether it was properly proffered.] And it criticized the Board for giving little weight to Opposer's sales evidence. [TTABlog comment: which was not all that substantial].

The CAFC concluded that, viewing the marks in their entirety, confusion is likely.


TTABlog comment: If the similarity of the marks is a factual question, wasn't there substantial evidence to support the Board's finding that the mark were not similar in overall commercial impression? The Board did view the marks in their entireties, but the CAFC disagreed with the TTAB's finding in that regard, and took the opposite view. So what does that tell us about CAFC review of TTAB likelihood of confusion decisions?

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 6/25/2007   0 comments

Friday, June 22, 2007

TTAB Finds Water and Soy Shake Mix Related, Sustains 2(d) Opposition to "REVIVAL WATER"

I needed to be revived after reading the TTAB's decision in Tabor v. LaBarba, Opposition No. 91166743 (June 14, 2007) [not precedential]. The Board sustained an opposition to registration of the mark REVIVAL WATER for bottled water, spring water, and the like, finding the mark likely to cause confusion with the mark REVIVAL, previously used for a "soy shake mix." The products are related, ruled the Board, because Opposer's soy mix product "is to be blended with water."


The Board had little difficulty in finding the marks to be "nearly identical," since the word WATER is generic for Applicant's goods. Both parties asserted that REVIVAL refers to good health or feeling renewed or restored, and both market their products to Christian groups, thus giving the marks a religious connotation as well. Third-party registrations for REVIVE, BODY REVIVE, and RINASCENTE for various beverages were found to be of "very limited probative value." [TTABlog comment: don't these registration confirm that REVIVAL is suggestive of healthful properties of the goods, and therefore not the strongest mark?].

Turning to the products, the Board found that the goods of Opposer's registrations -- "soybean-derived dietary supplement" and "soy protein for use as a food additive in cereals, breads, muffins and meat" -- were just too different from Applicant's bottled water to support Opposer's 2(d) claim.

However, Opposer established common law rights in the REVIVAL mark for "soy shake mix." He testified that the first use of the mark was on "soy-derived nutritional supplements," and more specifically on a "soy shake mix," and he averred that the instructions on the package stated that the product is to be "blended with water." That was enough for the Board to find Applicant's water to be complementary to Opposer's shake mix.

Noting that the goods are relatively inexpensive and that both are marketed to Christian consumers, the Board concluded that confusion is likely and it sustained the opposition.

TTABlog comment: Well, here's a good candidate for this year's "Ten Worst" list. I think the Board went astray on three points: first, in finding, based solely on Opposer's testimony and apparently without documentary corroboration, that Opposer had established prior use on shake mixes blended with water.

Second, in holding that two products are complementary because one might be mixed with the other. Are sugar and coffee related products? How about tea and honey? Tea bags and water? Water and coffee? Water and detergent?

Finally, the Board failed to recognize the suggestiveness of the word REVIVAL for health-related products. Instead is seemed to bend over backward in order to find in favor of Opposer.

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 6/22/2007   0 comments

Thursday, June 21, 2007

"EQUITY RESIDENCE CLUB" Merely Descriptive of Real Estate Development Services, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register the mark EQUITY RESIDENCE CLUB, finding it merely descriptive of "real estate development services." Applicant DCP feebly argued that the mark does not "immediately convey knowledge of its services" and lamely urged that other terms are available to competitors to describe their services. In re Destination Club Partners, LLC, Serial No. 78524615 (June 15, 2007) [not precedential].


Examining Attorney John Hwang maintained that the term EQUITY RESIDENCE CLUB "merely describes a characteristic" or "intended purpose" of Applicant's services in that Applicant provides "residence club services" involving the "sharing of residences with other members of the club or program" under which certain "time share" or "equity club" real estate properties are developed or sold. He relied on dictionary definitions of the constituent words, as well as various Internet excerpts showing that EQUITY RESIDENCE CLUB is commonly used and understood to mean "a type of real estate time share arrangement."

Applicant contended that its mark was "at least suggestive, since an additional mental step is required to attach significance between the words comprising it and the service of real estate development." Moreover, competitors and the public "do not have reason to use the term EQUITY RESIDENCE CLUB to describe ... competing services" inasmuch as they "are free to use the terms 'fractional real estate interests,' 'shared ownership,' and/or 'time shares' to describe ... [such] services."

The Board did not share Applicant's view. It found nothing "incongruous, ambiguous, or even suggestive" about the mark, nor "anything that would require the exercise of imagination, cogitation or mental processing, or necessitate the gathering of further information," in order to grasp the merely descriptive significance of the term to customers.

The fact that other terms are available to competitors does not mean that EQUITY RESIDENCE CLUB is not descriptive. And it does not matter whether Applicant was the first and/or only user of the term.

The Board therefore affirmed the refusal to register.

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 6/21/2007   0 comments

Wednesday, June 20, 2007

Precedential No. 43: TTAB Cancels Registration on the Ground of Non-ownership

The Board cancelled a registration for the mark GREAT SEATS INC. in the logo form shown below, for ticket agency services, because the application that matured into the registration was not filed by the owner of the mark, as required by Section 1(a) of the Trademark Act. Danny Matta, the founder of Respondent Great Seats, Inc., filed the application in the name of one company (formed in 1997), but a second company (formed in 1990) was actually using the mark. Despite Matta's ownership of both companies, Respondent was unable to convince the Board that the two companies were the same enterprise or were "related companies" under Section 5 of the Act. Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235 (TTAB 2007) [precedential].


Mr. Matta maintained that he always had only one ticket brokerage firm, although it went through several name changes. He claimed to be unaware of the formation of the 1997 corporation. However, he signed the application for registration on April 21, 1997, in the name of the 1997 corporation, claiming a first use date of March 1, 1997, a date prior to the formation of the 1997 corporation on March 12. Further complicating the situation, the two companies swapped names in July 1997.

Under Section 1(a), only the owner of the mark may file an application to register. Otherwise, the application is void ab initio. Here, the Board ruled, the owner of the mark was the actual user of the mark, the 1990 corporation.

Respondent contended that the two corporations "were merely earlier and later manifestations of the same single continuing commercial enterprise," and that Matta's signing of the application was a curable defect. Not so, said the Board. This is not a case involving the misidentification of a single, ongoing enterprise, but a case where two separate enterprises were in existence at the same time. The application was filed by the wrong entity.

As to Respondent's "related company" argument, this would require that use of the mark by the 1990 company be controlled by the 1997 company (at least from the latter's formation) as to the nature and quality of the services. There was no evidence of such control. Although Mr. Matta was the controlling shareholder of both companies and they shared common premises, there was no evidence that he exercised control over the 1990 corporation in his capacity as officer of the 1997 corporation.

"On this record, any such control by Mr. Matta over the [1990] corporation was exercised by Mr. Matta either in his individual capacity as principal executive officer of the [1990] corporation itself, or in his individual capacity as owner of both corporations."

Consequently, the Board found that the two companies were not related for purposes of Section 5.

In sum, the Board deemed the application void ab initio and it granted the petition for cancellation.

TTABlog comment: Why does the phase "form over substance" keep popping into my head?

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 6/20/2007   0 comments

Tuesday, June 19, 2007

TTAB Finds "THE MADELEINE COOKIE COMPANY" Generic, Ineligible for Supplemental Register

Ignoring the CAFC tests for genericness, the Board affirmed a refusal to register THE MADELEINE COOKIE COMPANY on the Supplemental Register, finding the mark to be generic for "bakery goods, namely, madeleines." In re Donsuemor, Inc., Serial No. 78393418 (June 7, 2007) [not precedential].


There was no real dispute that MADELEINE COOKIE is generic for Applicant's goods. The question was whether the additional words THE and COMPANY affect the generic meaning of MADELEINE COOKIE so that the entire phrase is not generic.

The Board reviewed several of its relevant precedents, focusing particularly on In re Paint Products Co., 8 USPQ2d 1863 (TTAB 1988). There, the Board rejected an attempt to register, under Section 2(f), the designation "PAINT PRODUCTS CO." for paints, deeming the phrase incapable of distinguishing the goods.

Here, the Board observed that "cookie company" is a phrase commonly used to refer to a company that makes cookies, and concluded that, as in the PAINT PRODUCTS CO. case, "the phrase should remain available to applicant's competitors."

"... as the Supreme Court has held, one cannot obtain the right to the use of the name of an article simply by including the word 'company' with that name. Finally, the inclusion of the word THE ... does not add any source-identifying significance."

The Board noted that the Examining Attorney and the Applicant disagreed as to whether the genericness issue should be analyzed according to In re American Fertility Society or In re Gould. The Board, however, was uninterested in that debate:

"... the real question here is whether the addition of the words THE and COMPANY, which have no source-identifying significance, to clearly generic terms, results in a term that has the capability of distinguishing applicant's goods from those of others."

Therefore, the Board affirmed the refusal to register on the Supplemental Register.

TTABlog comment: Undoubtedly, Applicant Donsuemor, Inc. wanted the Board to follow American Fertility, which held that, for a phrase, proof of genericness requires a showing that the phrase as a whole is used as a generic designation for the goods. Dictionary definitions of the constituent words are not sufficient. Under Gould, however, a compound word may be shown to be generic by submitting evidence that the constituent words are each generic.

I think the Board ignored this dispute over the proper test because THE MADELEINE COOKIE COMPANY is clearly a phrase, not a compound word, and in light of the absence of proof that the phrase as a whole is used as a generic term, American Fertility would have required reversal. See, for example, the Board's reluctant reversal in In re American Food Co., Serial Number 76101362 (September 29, 2004) [not citable] [Applying American Fertility in finding THE BEEF JERKY OUTLET not generic for retail stores featuring meat products]. [TTABlogged here].

I do think the Board reached the right result here. But those darn CAFC cases almost got in the way.

I would not be surprised to see an appeal of this one.

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 6/19/2007   0 comments

Monday, June 18, 2007

Recommended Reading: Horlander, "The U.S. Constitutional Limits of Product Configuration Trade Dress Rights"

The latest issue of The Trademark Reporter includes Karl Horlander's solid article, "The U.S. Constitutional Limits of Product Configuration Trade Dress Rights,"97 TMR 752 (May-June 2007). Horlander is a proponent of a federal "right to copy" that would preclude a design patent owner from claiming product configuration trade dress protection beyond the design patent term.


Horlander summarizes the history and policies behind the Patent Clause of the U.S. Constitution and the recognition of the public's right to copy an invention claimed in an expired patent. He examines the relevant Supreme Court jurisprudence, and dissects the lower court rulings that have "eroded the public's constitutional right to possess and to copy slavishly the inventions of expired patents." Horlander then proposes a bright-line rule that requires an inventor to elect between product configuration trade dress and design patent protection.

For further discussion of the design patent/product configuration trade dress interface, see Clifford W. Browning, "TrafFix Revisited: Exposing the Design Flaw in the Functionality Doctrine," 94 Trademark Reporter 1059 (September-October 2004). [TTABlogged 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 the permission of The Trademark Reporter®, 97 TMR 752 (May-June 2007)..

posted by John L. Welch @ 6/18/2007   0 comments

Friday, June 15, 2007

TTAB Decides "FIRST NIAGARA" Oppositions After CAFC Reversal on Issue of Use

Readers will recall that early this year, the CAFC reversed the TTAB's decision in First Niagara Ins. Brokers Inc. v. First Niagara Financial Group, Inc., 77 USPQ2d 1334 (TTAB 2005). [TTABlogged here]. The Board had dismissed six Section 2(d) oppositions because Opposer failed to establish "use of its pleaded marks on insurance brokerage services regulable by Congress" (and therefore could not establish priority). The CAFC held that the Board had applied too stringent a test because Section 2(d) uses the terminology "previously used in the United States by another." It does not state that the use must be "in commerce lawfully regulable by Congress." Opposer "unquestionably" met the more lenient test. First Niagara Ins. Brokers, Inc. v. First Niagara Financial Group, Inc., 81 USPQ2d 1375 (Fed. Cir. 2007). [blogged here].


The Board has now considered the Section 2(d) issues on remand from the CAFC, and has sustained three of the oppositions in part and dismissed the other three (decision here).

Reviewing the three marks relied upon by Opposer [FIRST NIAGARA, FIRST NIAGARA INSURANCE BROKERS, INC., and the logo mark shown above] and the six FIRST NIAGARA marks of Applicant [FIRST NIAGARA, FIRST NIAGARA FINANCIAL GROUP, FIRST NIAGARA ONLINE, FIRST NIAGARA BANK'S CUSTOMER CONNECTION LINE, FIRST NIAGARA E-CD, and FIRST NIAGARA in the design form shown below], the Board found that the dominant portion of all the marks is the term FIRST NIAGARA, that the overall impressions of the marks are substantially similar, and that the additional wording and/or design elements in the marks "does not mitigate this similarity." The Board concluded that this factor weighed "strongly in opposer's favor."


As to the services, the record showed that both parties render identical insurance brokerage, agency, administration, and consultation services. It was then unnecessary for the Board to consider any other class 36 services in the three applications that include insurance services, and this factor favored Opposer as to the class 36 services in these three applications.

Certain leasing services included in these three applications (classes 35, 37, and 39) were not offered by Opposer, nor was there any evidence of a relationship between insurance services and leasing services. This factor favored Applicant as to these classes.

Turning to the remaining three applications, all were directed to banking services only. Opposer contended that banking services are related to insurance services but the Board found insufficient evidence in the record to establish a connection. The Board noted that the fact that Applicant itself offered both banking and insurance services does not require, without more evidence, a finding that these services are related.

Opposer pointed to evidence of actual confusion: 2600 misdirected e-mails intended for Applicant. Applicant argued that the misdirected e-mails resulted from the similarities in the parties' e-mail addresses (firstniagara.com versus first-niagara.com) and not from confusion as to source. In light of the fact that both parties are small local businesses, the Board found this number of incidents to be "significant." But all the e-mails were addressed to specific individuals and none were from "individuals or businesses in search of insurance policies." No policies were written as a result of the e-mails; in fact, Opposer is not licensed to render insurance services in New York. Thus "the opportunity for more than even initial interest confusion is extremely limited." Therefore the Board found this evidence to be of "limited probative value."

The Board also found no intent on the part of Applicant to trade on the good will of Opposer, and concluded that the services involved would be purchased with some degree of care.

Balancing the du Pont factors, the TTAB ruled that the marks used with insurance services are likely to cause confusion, but not the others. Therefore, it sustained three oppositions in part (as to the class 36 services) and dismissed as to the three banking services applications.

TTABlog follow-up: On September 9, 2008, the CAFC affirmed the TTAB's decision, without opinion (here).

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 6/15/2007   0 comments

Thursday, June 14, 2007

Precedential No. 42: TTAB Lets Respondent off the Hook, Accepts Late-Served Admission Responses

Exercising its discretion under Rule 36(b), Fed. R. Civ. P., the Board granted Respondent Scripps Networks' motion to withdraw its effective admissions and to accept its late-served responses. As a result, Petitioners' motions for summary judgment and for leave to add a claim of fraud, based on the effective admissions, were eviscerated. Giersch v. Scripps Networks, Inc., 85 USPQ2d 1306 (TTAB 2007) [precedential].


The parties had agreed to two extensions of time for Respondent Scripps' responses to Petitioners' requests for admissions. Scripps then mistakenly assumed that Petitioners would agree to a third extension when counsel for Petitioners returned from an overseas business trip. Wrong. The requested admissions were thus deemed admitted.

Scripps moved to re-open its time for response or alternatively to withdraw its admissions and submit amended responses. Petitioners moved for summary judgment and for leave to add a claim of fraud, predicated on the admissions resulting from the failure to respond.

Scripps had two possible avenues of relief: move to re-open its time to respond based on excusable neglect under FRCP 6(b)(2), or withdraw and amend its admissions under FRCP 36(b). Scripps tried both.

As to the motion to re-open under Rule 6(b)(2), the Board ruled that Scripps had failed to show excusable neglect. Rather than assume it would get another extension, and knowing that Petitioner's counsel was unavailable, Scripps should have filed a formal motion to extend.

Turning to Rule 36(b), the Board may permit withdrawal or amendment of admissions when "the presentation of the merits of the action will be subserved thereby and the party who obtained the admission fails to satisfy the court that withdrawal or amendment will prejudice that party in maintaining the action or defense on the merits." Withdrawal is at the Board's discretion.

With regard to the first prong, the Board found that without withdrawal of the admissions, "respondent would be held to have admitted critical elements of petitioner's asserted claims." Respondent's proposed responses include denials of many of the previously-admitted facts, "thereby demonstrating that the supposedly admitted materials are actually disputed."

Therefore this prong was satisfied. [TTABlog query: can a prong be satisfied?]

As to prong 2, the Board ruled that Petitioners would not be prejudiced by allowing withdrawal of the effective admissions and acceptance of the later-served responses. Petitioners' motions were filed before the close of discovery. Thus any potential prejudice "can be mitigated by extending the discovery period as necessary to permit petitioners to take any additional follow-up discovery based on respondent's admission."

Petitioners pointed to "no particular prejudice in the form of special difficulties it could potentially face caused by the need to obtain evidence." The fact that Petitioners relied on the admissions in preparing their motions for summary judgment "does not rise to the level of 'prejudice' as contemplated under Rule 36(b)." And so prong two was met. [TTABlog query: can a prong be met?]

The Board accepted the late-served admission responses, and consequently denied Petitioners' summary judgment motion and its leave to add a fraud claim (both based on the now-withdrawn effective admissions).

TTABlog comment: I guess the lesson here is, if you are not going to respond to admission requests on time, make sure you fail to respond to all of them, or at least the important ones. And then seek to amend before the close of discovery.

Seriously, though, I think the Board should have expressly included in its Rule 36(b) analysis, a discussion of Respondent's excuse for not timely responding. Before the Board exercises its discretion to allow late responses, it should at least ask for some explanation as to why the responses were not made on time. The Board discusses Respondent's excuse with regard to Rule 6(b)(2), but not with regard to Rule 36(b) (although it does say that it has taken into account "all the circumstances presented here").

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 6/14/2007   0 comments

Wednesday, June 13, 2007

Precedential No. 41: Service Mark Application with False Use Claim is Void ab initio

In its third precedential fraud ruling of 2007, the TTAB granted summary judgment, sustaining an opposition to registration of the mark show immediately below, for "retail store services featuring bath products, gift products, [and] candy products," on the ground of fraud. Distinguishing this case from Maids to Order, the Board found that Applicant Sumatra Kendrick falsely claimed use of the mark for her services when she had never offered such services. Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032 (TTAB 2007) [precedential].


Opposer Sinclair Oil amended its Section 2(d) opposition to add claims of fraud and nonuse. Applicant Kendrick then successfully moved to amend her application filing basis to Section 1(b) intent-to-use. However, "amending the filing basis does not protect the application from a fraud claim. See Grand Canyon West Ranch v. Haulapai Tribe, 78 USPQ2d 1696 (TTAB 2006)." [TTABlogged here].

In her interrogatory responses, Kendrick stated that she intended to do business under that name, but she had no documentation regarding use in commerce, had no income, and had done no marketing. She did give away "about 25 product samples" in a "one time creation," some five years before her filing date.


The Board ruled that Sinclair had made "a prima facie showing that there are no genuine issues of material fact remaining for trial with regard to that [fraud] claim, which showing applicant has failed to rebut."

"... applicant filed an application based on use in commerce and signed a declaration attesting to the truth of all the statements in the application when she knew or should have known that she had not used the mark in connection with the recited services.... There is no question that applicant's misrepresentation resulted in the involved application being approved for publication as a use-based application."

Although Kendrick attempted to retract her interrogatory responses in her summary judgment response, she "provided no details that are sufficient to raise a genuine issue of material fact with regard to the fraud claim."

"Even if applicant honestly believed that her activities in connection with her involved mark warranted filing the involved application based on use in commerce under Trademark Section 1(a), there is no genuine issue that, under the circumstances, it was not reasonable for applicant to believe that her activities in 1996 constituted current use or use in commerce for the identified services at the time she signed her application [in 2001]."

The Board distinguished Maids to Order of Ohio Inc. v Maid-to-Order Inc., 78 USPQ2d 1899 (TTAB 2006) [TTABlogged here], in which it found that "the defendant's limited use of its mark across state lines in connection with its recited services provided its president with a reasonable basis for her belief that the mark was being used in interstate commerce." The instant case, however, does not present a question regarding interstate use, but rather whether there was any use in connection with the recited services. Kendrick pointed to no such use.

"... applicant's activities related to the formation of her business without subsequent rendering of her retail store services do not provide a basis for a claim of use of her mark in commerce for such services. *** Further, applicant's one-time use of the mark on products does not provide a basis for asserting service mark use. See TMEP 1301.01(a) (4th ed. 2005)."

Therefore, the Board ruled that the application was void ab initio, and it granted summary judgment in Sinclair's favor.

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 6/13/2007   0 comments

Tuesday, June 12, 2007

Precedential No. 40: Petition to Cancel Registration on Ground that Portion of Mark is Generic is Time-Barred by Section 14(3)

In a case of first impression, the TTAB ruled that a registration that is more than five years old may not be cancelled on the ground that a portion of the registered mark is generic. Section 14 of the Trademark Act provides for cancellation of such a registration when the registered mark is, as a whole, generic. It does not provide for cancellation in the circumstances presented here. Finanz St. Honore, B.V. v. Johnson & Johnson, 85 USPQ2d 1478 (TTAB 2007) [precedential].


Johnson & Johnson, by way of counterclaim, sought to cancel two registrations for the mark LOVE'S BABY SOFT for cologne, body wash, and other such products. As one of the grounds for cancellation, J&J contended that BABY SOFT is generic for Opposer/Respondent's goods and that the two challenged registrations "issued improperly without disclaimers of the term 'baby soft.'"

Opposer/Respondent Finanz moved to strike this ground on the basis that such a claim is time-barred by Section 14 because the two registrations were more than five years old.

Section 14(3), the Board observed, provides that after a registration's five-year anniversary, it may be cancelled only on certain specified grounds. More specifically, Section 14(3) says that a registration may be cancelled "if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered." Also, "[i]f the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed."

Section 14 does not provide for cancellation of a registration if a portion of the mark is generic, rather than the whole mark. Consequently, the Board granted the motion to strike.

TTABlog comment: I cannot fathom how the phrase BABY SOFT could be generic for cologne, body wash, body powder, deodorant, etc. Descriptive maybe, but generic? Gimme a break!

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 6/12/2007   0 comments

Monday, June 11, 2007

TTAB Cancels "PERFECT VODKA" Registration: Sale of a Single Bottle Was Not Sufficient Technical Trademark Use to Support Registration

The TTAB cancelled a registration for the mark VODKA PERFECT for vodka on the ground that, at the time Respondent filed its Amendment to Allege Use, it had sold only a single bottle of vodka and therefore did not have the requisite "technical trademark use" to support a registration. Connors v. Perfect Partners, Inc., Cancellation No. 92043707 (June 1, 2007) [not precedential].


In November 2000, Respondent filed an Amendment to Allege Use in its I-T-U application. The record evidence showed, however, that Respondent's assignor had sold only a single bottle of vodka prior to that filing. There were no further sales of vodka under the mark until 2005.

In addition to the single sale, Respondent relied on various activities during the 2000-2004 time period and after the single sale: it entered into an agreement with a distillery in July 2000 [note: before that A-A-U was filed], inked various agreements for marketing, supplying, and distributing (2001-2004), used the mark in presentations to distributors and potential investors (2004), and developed marketing materials and a website (2004).

The Board found that the single sale of vodka "clearly is not sufficient technical trademark use to support a registration." Moreover, Respondent's subsequent actions "do not serve to bolster that sale in such a manner to constitute use to support a registration."

The "sporadic" activities undertaken in 2000-2004 "are more in the nature of evidence to support analogous use in a priority battle," but such evidence is irrelevant here. Use analogous to trademark use "is not sufficient to establish use as a basis for an application to register."

"Respondent's 'use' simply does not rise to the level of a 'bona fide use of a mark in the ordinary course of trade.' 15 U.S.C. 1051(a). The sale of a single bottle to one retailer certainly alone does not constitute 'use,' and respondent's subsequent sporadic activities and eventual sales more that five years later do not imbue this 'sale' with the technical trademark use necessary to support registration."

The Board therefore granted the petition for cancellation.

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 6/11/2007   0 comments

Friday, June 08, 2007

Finding Wine-Imbibing Consumers More Susceptible to Confusion, TTAB Deems "SAURUS" and "LAURUS" Confusingly Similar

"In vino veritas," it has been said. How about "in vino conturbo"? The Board thought so in its decision sustaining an opposition to registration of the mark SAURUS for wine, distilled spirits, and other alcoholic beverages. It found that mark likely to cause confusion with the registered mark LAURUS for wine. Gabriel Meffre v. Maria y Adelina S.A., Opposition No. 91164878 (June 1, 2007) [not precedential).


Applicant submitted no evidence and did not file a brief, so one could say that it had little to "wine" about. The goods overlapped and the channels of trade were presumed to be the same.

As to the conditions of sale, Opposer made the "interesting argument that imbibing customers may have even less ability than the general consuming public at large to make distinctions between or among such similar marks." According to Opposer, "the conditions under which sales are made are in fact ripe to create consumer confusion given the strong similarity between the marks." The Board agreed.

Turning to the marks, the Board observed once again that when marks would appear on virtually identical goods, the degree of similarity necessary to support a likelihood of confusion is decreased." It agreed with Opposer that "there is a great similarity in sound." "The fact that the leading letter will inevitably result in a perceptible aural difference is simply not enough for us to find that the marks are sufficiently dissimilar in sound to overcome a likelihood of confusion."

As to meaning, Opposer contended that LAURUS has no meaning in relation to the goods. In its answer, Applicant asserted that LAURUS means "triumph" in Latin and in English refers to a plant, whereas SAURUS come from the Latin and "refers to animals of the family of dinosaur." However, Applicant presented no supporting evidence and so the Board found that, as to connotation and commercial impression, both marks are arbitrary terms as applied to wine and other alcoholic beverages.
The Board therefore concluded that, despite the difference in the leading letters, the two marks are "highly similar" in appearance, sound, connotation, and commercial impression.

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

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 6/08/2007   0 comments

Thursday, June 07, 2007

Precedential No. 39: Proof of Acquired Distinctiveness Falls Short for "ALPINE SPRING WATER"

The TTAB upheld the PTO's requirement that Applicant Crystal Geyser disclaim the phrase ALPINE SPRING WATER in its applied-for mark CRYSTAL GEYSER ALPINE SPRING WATER for bottled spring water. Applicant sought registration under Section 2(f), but in light of the highly descriptive nature of the phrase, the Board found Applicant's evidence insufficient to establish acquired distinctiveness. In re Crystal Geyser Water Co., 85 USPQ2d 1374 (TTAB 2007) [precedential].


The Board observed that, as a mark's descriptiveness increases, so does the amount of evidence needed to satisfy Section 2(f). "A successful advertising campaign is not in itself necessarily enough to prove secondary meaning."

In maintaining that the phrase is highly descriptive, Examining Attorney Elizabeth A. Hughitt relied on a dictionary definition of "alpine" as meaning "of or relating to high mountains," and pointed to Applicant's website, which referred to the source of its water as "an alpine spring." Various website printouts and LEXIS/NEXIS excerpts showed that third-parties use "alpine spring" and "alpine spring water" to describe a type of bottled water. Moreover, she asserted, Applicant's advertising and promotional materials "consistently reinforce the highly descriptive significance of the phrase at issue." And she showed that others in the industry display their house marks "in close proximity to the name of the goods."

To prove acquired distinctiveness, Applicant Geyser stressed its sale of more than 7 billion bottles of water bearing the phrase “alpine spring water" since 1990, display of the phrase on delivery trucks and in extensive advertising, and promotion of its product as the "official water" of various entertainment and tourist venues.

The Board concluded that, in view of the highly descriptive nature of the phrase ALPINE SPRING WATER, Geyser had failed to prove acquired distinctiveness.

"Thus, despite the broad advertising campaign for CRYSTAL GEYSER ALPINE SPRING WATER and the impressive sales figures, we do not find that ALPINE SPRING WATER has come to signify the commercial source of the product, but rather continues merely to inform the consumers about the nature of the product, particularly in an industry where consumers are accustomed to seeing the brand name and the designation of the type of bottled water in close proximity to each other ….”

The Board distinguished the level of proof in this case from that in In re America Online, Inc., 77 USPQ2d 1618 (TTAB 2006) [TTABlogged here]. There, the Board found that the mark INSTANT MESSENGER had acquired distinctiveness in view of AOL's showing that 80 million users sent one billion messages each day using its service, its evidence that many corporations were licensed to use the mark, and its submission of affidavits from customers attesting to the mark's source-identifying significance.

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 6/07/2007   0 comments

Wednesday, June 06, 2007

Precedential No. 38: TTAB Dismisses Cancellation Petitioner's Inadequately Pleaded Section 14(3) "Misrepresentation of Source" Claim

Petitioner Otto International, Inc. was called out on strikes in its attempt to cancel a registration for the mark OTTO KERN for bags and clothing. Otto failed on all three pleaded grounds: likelihood of confusion, abandonment, and a rare "misrepresentation of source" claim under Section 14(3) of the Trademark Act. The Board therefore dismissed the petition to cancel. Otto Int'l, Inc. v. Otto Kern GmbH, 83 USPQ2d 1861 (TTAB 2007) [precedential].


Section 2(d): Petitioner's likelihood of confusion claim contained a fatal flaw: the OTTO KERN registration was more than five years old, and therefore this claim was barred under Section 14(3).

Abandonment: Petitioner alleged that Respondent "has abandoned use of Registration No. 2432890" for bags and clothing. However, it "provided no facts to support its conclusory allegations," made no claim that respondent failed to use its mark for a period greater than three years, and failed to aver that Respondent discontinued use with an intent not to resume use. Thus the abandonment claim was legally insufficient.


Misrepresentation of Source: Finally, Petitioner alleged that Respondent "is using its mark so as to misrepresent that petitioner is the source of respondent's goods." Under Section 14(3), a claim that the registered mark is being used by the registrant so as to misrepresent the source of the goods is not barred after five years.

However, such a claim must be supported by "allegations of blatant misuse of the mark ... in a manner calculated to trade on the goodwill and reputation of the petitioner." A petitioner must do more than "make a bald allegation in the language of the statute, as this does not give fair notice of the basis of petitioner's claim."

Reviewing Petitioner's pleading, the Board found that Petitioner failed to allege "facts reflecting respondent's deliberate misrepresentation of the source of its products, 'blatant misuse' of the mark, or conduct amounting to the deliberate passing-off of respondent's goods." There was "no mention of specific acts or conduct by respondent aimed at deceiving the public ...."

"In interpreting Trademark Act Section 14, because Congress barred a likelihood of confusion claim after five years, we cannot conclude that the same facts recast as a misrepresentation of source claim would constitute a cognizable ground for relief. If it were otherwise, Congress’ exclusion of claims under Trademark Act Section 2(d) after five years would be rendered meaningless."

The Board therefore dismissed this claim as well.

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 6/06/2007   0 comments

Tuesday, June 05, 2007

Precedential No. 37: Cancellation Respondent's Laches Claim Survives Section 8 Cancellation of its Registration

In a rare precedential interlocutory ruling, the Board held that a cancellation Respondent may pursue a laches defense even though its challenged registration has been cancelled due to the inadvertent failure to file a Section 8 declaration. The Board, however, denied Respondent's summary judgment motion grounded on laches because there exist genuine issues of material fact regarding when Petitioner had actual notice of respondent's use or registration of its mark, and whether any economic prejudice resulted from the delay. Fishking Processors, Inc. v. Fisher King Seafood Ltd., 83 USPQ2d 1762 (TTAB 2007) [precedential].


Petitioner sought to cancel, on Section 2(d) grounds, Respondent's registration for the mark FISHER KING SEAFOODS for "fresh and frozen seafood," based on alleged prior use of FISHKING and FISHKING PROCESSORS INC. for fresh and frozen fish. Respondent raised the affirmative defense of laches and moved for summary judgment on that issue.

While the cancellation proceeding was pending, the subject registration was cancelled because Respondent failed to file the requisite Section 8 declaration of use. Pursuant to Trademark Rule 2.134, the Board gave Respondent time to show cause why judgment should not be entered against it. Respondent responded that the failure was inadvertent. The Board then gave Petitioner the option of continuing with this proceeding or having it dismissed as moot. Petitioner decided to proceed in order to have the priority and likelihood of confusion issues decided sooner than later. [Respondent had already filed a new application and Petitioner had opposed it].

Petitioner argued that, in view of the cancellation of the FISHER KING SEAFOODS registration under Section 8, the basis for the laches defense "no longer exists because there is no registration upon which to base a claim of laches." I.e., Petitioner's constructive knowledge of the registration had been eliminated, since the registration is now cancelled.

Respondent countered by arguing that, regardless of cancellation of the subject registration, Petitioner had "actual knowledge of respondent and sat on its rights."

The Board sided with Respondent, ruling that Respondent may attempt to prove laches even though the subject registration has been cancelled. "The expiration of the registration does not extinguish either actual notice or constructive notice during the term of the registration."

Turning to the merits of the summary judgment motion, the Board found that conflicting statements made by the parties created a genuine issue of material fact regarding when Petitioner had actual knowledge of Respondent's use or registration.

Moreover, although Respondent submitted evidence of increased sales, it "has not demonstrated that any economic prejudice resulted from petitioner's delay." [TTABlog note: Respondent's president did testify, however, that "the company has grown exponentially since its incorporation in 1996" and that "the damage to our reputation and our recognition if we were to have to rebuild a brand under a new trademark if inestimable."]

And the Board found a genuine factual issue regarding when Petitioner knew or should have known about respondent's registration. [TTABlog question: Wasn't Petitioner on constructive notice as of the issue date of the registration?]

"Thus we cannot say that Respondent has met the requirement of showing that there is no genuine issue that petitioner's delay was unreasonable or inexcusable and that it was prejudiced by petitioner's inaction ...."

The parties also filed cross-motions for summary judgment (for the second time) on the Section 2(d) issue, but again genuine issues of material fact precluded the grant of summary judgment. The Board went on to tell the parties that further summary judgment motions may not be filed without leave.

TTABlog comment: The Board stated that Respondent must show economic prejudice resulting from the delay, but is the Board saying that the delay must somehow cause the economic harm? Isn't it enough that some change of economic position occurred during the delay period?

In the recent precedential decision in Teledyne Technologies, Inc. v. Western Skyways, Inc., 78 USPQ2d 1203 (TTAB 2006), affirmed, Appeal Nos. 2006-1366 and 2006-1367 (Fed. Cir. 2006) [TTABlogged here and here], a three-and-one-half year delay was sufficient for laches when "respondent has asserted economic prejudice based on its development of a valuable business and good will around its GOLD SEAL mark during the time petitioner raised no objection." Such recognizable damage may ensue "whether or not the plaintiff overtly lulled the defendant into believing that plaintiff would not act, or whether or not the defendant believed that the plaintiff would have grounds for action."

Isn't Respondent arguing the same thing here? I.e., that it developed its business during the delay period? Why was the change in economic position in Teledyne sufficient for a finding of laches, but not sufficient here? And why wasn't the Teledyne decision even cited in this case?

There's something fishy here!

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 6/05/2007   0 comments

Monday, June 04, 2007

TTAB Posts June 2007 Hearing Schedule

The seven TTAB hearings scheduled for the month of June are listed below. The hearings will be held in the East Wing of the Madison Building. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)].


June 12, 2007 - 2 PM: Omega S.A. v. Platts, Opposition No. 91158655 [In this 2(d) priority contest, Opposer claims prior rights in the mark BROAD ARROW for watches, vis-a-vis Applicant's rights in the mark BROADARROW for watches].

broad arrow

June 14, 2007 - 11 AM: In re Madson Prods., LLC, Serial No. 78565462 [Section 2(e)(1) mere descriptivenss refusal of YAK SAK for "fluid-tight plastic or paper utility bags used for motion sickness and disposal of unpleasant matter"].

June 14, 2007 - 2 PM: In re Vanity Fair, Inc., Serial No. 78515219 [Section 2(a) and 2(3)(3) refusals of FRENCH & FLIRTY for "lingerie, sleepwear, and hosiery" on the grounds that the mark is geographically deceptive and primarily geographically deceptively misdescriptive].

June 19, 2007 - 10 AM: In re MediaNews Group Interactive, Inc., Serial No. 78433038 [Section 2(e)(1) mere descriptiveness refusal of the mark BAY HOMESITE for on-line services in the field of real estate and for providing a website for where users may buy and sell goods; Section 2(d) refusal in view of the registered mark HOMESITE for on-line real estate advertising services].

June 19 2007- 2 PM: In re West-Com Nurse Call Systems, Inc. Serial No. 78438594 [Refusal to register the design mark shown below for an electronic nurse call system, on the ground that the mark is merely decorative or informational and fails to function as a trademark].


June 26, 2007 - 10 AM: In re Sungard Reference Data Solutions Inc., Serial No. 78212906 [Section 2(d) refusal of REFERENCEPOINT for computer software for use by energy providers, and by commodities, futures, stock, and bond traders, in light of the registered mark REFERENCE POINT for providing financial information in the field of mortgage loan and mortgage and debt related securities].

June 27, 2007 - 10 AM: In re Conference America, Inc., Serial No. 76618253 [Section 2(d) refusal of FIVE STAR CONFERENCING for telecommunications services, in light of the registered mark FIVE STAR WIRELESS for cellular telephone communication services].

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

Text Copyright John L. Welch 2007.m

posted by John L. Welch @ 6/04/2007   0 comments

Friday, June 01, 2007

Precedential No. 36: TTAB Finds Paper Towel Designs Confusingly Similar, Sustains 2(d) Opposition

In a less than absorbing decision, the Board sustained an opposition to registration of the design mark shown immediately below, for paper towels and like paper products, finding it likely to cause confusion with the two registered marks shown next below for paper towels. Fort James Operating Co. v. Royal Paper Converting ,Inc., 83 USPQ2d 124 (TTAB 2007) [precedential].

Applicant's mark

Opposer's registered marks

Applicant conceded that the goods are identical in part and are sold in the same channels of trade. Because the goods are identical, the Board must presume that they are sold to the same classes of purchasers. And it observed that these purchasers would not exercise a great deal of care.

Opposer claimed that its marks are famous, and its sales revenues and advertising expenditures for paper towels were "extremely impressive." In addition, Opposer widely advertised and promoted its goods. However, Opposer's towels are sold under the marks BRAWNY, MARDI GRAS, GREEN FOREST, and SO DRI, which marks overshadow the design marks in Opposer's marketing materials. "This is not a case where consumers are presented through advertising and other promotional material with repeated references to opposer's design marks independent of opposer's other marks." Consequently, the Board was unable to find that Opposer's design marks "have achieved the renown associated with fame."


Turning to the marks, the Board cited the boilerplate proposition that when marks appear on virtually identical or closely related goods, the degree of similarity of the marks necessary to support a likelihood of confusion finding is decreased. Considering the overall commercial impression of the marks, the Board found the designs at issue to be "highly similar."

"... both parties' marks are embossed on paper towel sheets. The marks consist of circular-shaped designs that are repeated in an evenly-spaced pattern on the paper towel sheets. Moreover, the smaller interlocking designs in the parties' marks are identical/similar in shape."

Next, the Board wiped away Applicant's evidence of third-party use purporting to show similar marks in use on similar goods, because Applicant did not show the extent of use of those third-party embossed designs. In any case, "none is similar to the designs at issue."

Although there was no evidence of actual confusion, the Board pointed out that such evidence is "extremely difficult to acquire" and anyway is not needed to prove a likelihood of confusion.

The Board then disposed of two more feeble arguments made by opposer: (1) that because the registered designs are used with BRAWNY and other marks, confusion is eliminated; and (2) Opposer had ample opportunity to conduct a survey but failed to do so. The Board pointed out that (1) "a product label can bear more than one trademark without diminishing the identifying function of each portion," and (2) surveys are not required in Board proceedings.

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

TTABlog comment: If I may make a personal observation, I am a frequent spiller of beverages and therefore a frequent user of paper towels. I never once noticed the pattern embossed on any paper towel I ever used. Last night, I looked at the paper towels in my kitchen and noticed that they have a diamond quilted pattern. Can you identify the brand? See the picture here:


Text Copyright John L. Welch 2007.

posted by John L. Welch @ 6/01/2007   0 comments