No Second Bite of Pineapple: TTAB Denies Request for Reconsideration of "KAMEHAMA" 2(d) Decision

The Board refused to reconsider its March 9, 2007 decision (here) upholding a Section 2(d) refusal to register two KAMEHAMEHA SCHOOLS design marks (one variation shown immediately below) for clothing items. The Board found the marks to be confusingly similar to the registered mark KAMEHAMEHA for overlapping clothing items. In re Trustees of the Estate of Bernice Pauahi Bishop, Serial Nos. 76596501 and 76596503 (July 12, 2007) [not precedential].


The Board agreed with the PTO that the dominant portion of each of Applicant's marks is the term KAMEHAMEHA. It noted that words such as "school" and "alumni" commonly appear on clothing bearing school names, and thus consumers will consider such terms as merely informational and "will accord them lesser significance than KAMEHAMEHA as a source indicator."

Moreover, the Board found the term KAMEHAMEHA "to dominate over the design," since the word portion of a mark is normally accorded greater weight. The design portion, featuring a representation of King Kamehameha, "reinforces KAMEHAMEHA as the dominant term in the mark."

Kamehameha I
In requesting reconsideration, Applicant pointed to a recent Ninth Circuit decision that discusses the "historical and contemporary importance of Kamehameha Schools," and it contended that "those familiar with Hawaii will readily identify applicant's marks with the institution."

The Board considered this to be an attempt to offer new factual evidence, which is improper on a request for reconsideration. In any case, to the extent Applicant was asserting that, in light of the renown of the Kamehameha schools, consumers will believe registrant's goods to emanate from applicant, that was of no help. Such reverse confusion is also prohibited by Section 2(d).


And even if Applicant's argument is that confusion is not likely because it is so well known, that is not a basis to deny registration: "[t]rademark rights are neither acquired nor lost on the basis of comparative popularity."

The Board therefore denied the request for reconsideration.

TTABlog comment: I think the Board got this one wrong. The Kamehameha schools would obviously be seen as the source of the clothing bearing the applied-for marks. But is clothing bearing the mark KAMEHAMEHA, on the other hand, likely to be seen as emanating from the same source? Given the notoriety of King Kamehameha as an historical figure, why would the ordinary consumer believe that the schools are the likely source of that clothing? Although the schools might sometimes be referred to by the single term "Kamehameha" in certain contexts, does that mean consumers will likely be confused when they see the brand name KAMEHAMEHA on clothing? Will they automatically think of the schools? Or just of the historical figure? Where's the proof of consumer perception?

Text Copyright John L. Welch 2007.

Finding Lawyer's Office Relocation an Insufficient Excuse for Lack of Testimony, TTAB Dismisses Cancellation Petition

The Board dismissed P22 Type Foundry's petition for cancellation of three registrations for various typeface font trademarks owned by Berthold Types Ltd., because Petitioner took no testimony and offered no evidence. Petitioner contended that its failure resulted from the relocation of its attorney's office, but the Board, while sympathetic, found that excuse inadequate to satisfy the "good and sufficient cause" requirement of Rule 2.132(a). P22 Type Foundry, Inc. v. Berthold Types Ltd., Cancellation No. 9204530 (July 18, 2007) [not precedential].


Petitioner's counsel stated that the relocation of his office required about 35 days, during which he "experienced construction delays, computer crashes, and technical mishaps with firewalls, data wiring, servers, and computer and telephone systems." One consequence was the corruption of data files, including those relating to his docketing software. Petitioner argued that the failure to act was "outside its reasonable control and, thus, due to excusable neglect."

Rule 2.132(a) provides that when a plaintiff fails to take testimony during its allotted time, judgment may be entered against it "in the absence of a showing of good and sufficient cause." The "good and sufficient cause" standard is equivalent to the "excusable neglect" standard of FRCP 6(b)(2). The Board, in Pumpkin Ltd. v. The Seeds Corp., 43 USPQ2d 1582 (TTAB 1997), adopted the Supreme Court's four-factor test regarding excusable neglect, as set out in Pioneer Invest. Servs. Co. v. Brunswick Assoc. Ltd., 507 U.S. 280 (1993). Several courts have stated that the third factor -- the reason for the delay, including whether it was within the reasonable control of movant -- is the most important factor.


As to the relocation of counsel's office, the Board perceptively noted that the disruption occurred between the end of May and the beginning of July 2006, but the discovery period had yet to close, and Petitioner's testimony period ended five months later. Petitioner offered no explanation of its efforts to back up his files or to ascertain the status of the proceeding.

"... insufficient evidence has been provided for the Board to conclude that the file for this case was permanently lost from the systems of petitioner's attorney and that steps were] taken to back up and retrieve the records without success during and after the move."

The Board therefore denied Petitioner's request to reopen the discovery and testimony periods, and dismissed the petition with prejudice.

TTABlog note: The Board pointed out that "a plaintiff's failure to take testimony in Board proceedings is analogous to not showing up in court on the day of trial." Good luck to the attorney who tries to get out of that one.

Text Copyright John L. Welch 2007.

Revised TTAB Rules to be Published Next Week

Fasten your seatbelts! The TTAB is about to issue its revised rules. A reliable source tells me that the new rules package will be published in next week's Federal Register. Reportedly, some changes will be effective as of September 1st and others as of November 1st.


In case you've forgotten what this is all about, see the TTABlog postings here and here. Or peruse Section III of my article, "The TTAB in 2006: The Good, the Bad, and the Ugly."
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The Trademark Blog Reports on Suit to Oust PTO Deputy Director Peterlin

Marty Schwimmer reports at The Trademark Blog on a recently-filed federal lawsuit seeking to oust Margaret J.A. Peterlin from her position as Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO. The suit, brought by four patent lawyers and/or inventors, charges that Ms. Peterlin's qualifications and experience do not satisfy the statutory requirement set forth in 35 U.S.C. Section 3(b)(1) that the Deputy Director have "a professional background and experience in patent or trademark law." The complaint was filed on Monday, July 23, in the United States District Court for the District of Columbia.


More commentary by Marty Schwimmer at The Trademark Blog, by Ron Coleman at his Likelihood of Confusion blog, and by Mark Randazza at The Legal Satyricon.
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CAFC Affirms TTAB Decision Upholding PTO Requirement for More Particularized Identification of "Chronographs"

In an enervating precedential ruling, the U.S. Court of Appeal for the Federal Circuit has affirmed the TTAB's decision of November 4, 2005 (here), upholding the PTO's refusal to register the mark AQUA TERRA for, inter alia, "chronographs" in class 14, unless Omega amended its application to limit "chronographs" to "chronographs for use as watches." In re Omega SA, 83 USPQ2d 1541 (Fed. Cir. 2007).


The Examining Attorney maintained that the term "chronographs" is ambiguous because it may refer not only to watches in class 14, but also to time recording instruments in class 9. Applicant Omega argued that it already owns several registration in class 14 for "watches and chronographs," and it expressed a concern that the requirement of a restriction of the instant application might affect its existing registrations.

The Board agreed with the PTO, ruling that it was within the PTO's discretion to require that goods be identified with particularity. "[T]he requirement herein imposed is not so extreme or unreasonable as to warrant judicial intervention into the internal procedures and requirements of PTO trademark examination."

As to Omega's concern regarding its other registrations, the court confirmed "the general rule that the definition of goods in one registration does not taint the definition of similar goods in any other registration." Moreover, "the PTO has assured the court that the imposition of this requirement will not effect [sic!] existing registrations."

And so, the court affirmed the TTAB's decision.

Text Copyright John L. Welch 2007.

"ROMANTIC ROAD" 2(e)(2) Cancellation Proceeding Hits Dead End: Summary Judgment to Registrant

In a dubious decision granting Respondent's motion for summary judgment, the Board dismissed a petition for cancellation of a registration for the mark ROMANTIC ROAD for tourism promotion services in class 35, finding the mark not to be primarily geographically descriptive under Section 2(e)(2). Petitioner Robert A. Scheder, who operates the website www.romanticroad.com, claimed that the phrase "Romantic Road" describes a particular region in Southern Germany (see map), but the Board found that Scheder failed to overcome Registrant's prima facie case that ROMANTIC ROAD functions primarily as a mark. Scheder v. Touristik Arbeitsgemeinschaft Romantische Strabe GbR, Cancellation No. 92045257 (June 19, 2007) [not precedential].


Registrant's evidence established that the term ROMANTIC ROAD was coined in 1950 by a group of tourist boards in Germany, who formed a joint venture to offer travel services and promote tourism in the American-occupied portion of Southern Germany. Since then, additional cities have jointed the venture, and the term has been promoted extensively, including via a recently-added website. Registrant did not dispute that ROMANTIC ROAD "has come to identify a specific geographic region, and that its goods originate from there." It argued, however, that the primary significance of ROMANTIC ROAD is as a mark.

Petitioner Scheder offered maps, road signs, websites, internet search results and documents, all "purporting to show that ROMANTIC ROAD identifies a physical location."

The Board found that ROMANTIC ROAD, in use for 50 years, "has become a known travel destination. Thus, Registrant has set out a prima facie case that ROMANTIC ROAD functions primarily as a mark."

"... the undisputed fact that the mark ROMANTIC ROAD is well known, and that people may be familiar with the tourism area comprising the ROMANTIC ROAD, establishes that it functions primarily as a mark, because it is through Registrant's efforts that the name given by Registrant and its predecessors to the region has come to recognized as a source of tourism-related services, albeit in a particular location."

Finding no genuine issue of material fact, the Board granted Registrant's summary judgment motion.


TTABlog comment: How does one say "baloney" in German? I think, at a minimum, there was a genuine and crucial issue of fact as to how the public primarily perceives the term ROMANTIC ROAD. Registrant put in evidence of creation and use, but so what? Where is the evidence of the public's perception of the mark? Didn't Petitioner at least counterbalance Registrant's evidence by showing uses of ROMANTIC ROAD that did not refer to Registrant's tourism services?

I believe that, when Americans hear the term ROMANTIC ROAD, they think either of their local "lover's lane" or they think of the tourist area in Southern Germany. Does anyone believe that they think of tourism services?

Text Copyright John L. Welch 2007.

Prof. McCarthy Calls Second Circuit's "BUKHARA" Decision a "Great Embarrassment"

The Seattle Trademark Lawyer blog notes a new article in Inside Lawyer, concerning the Second Circuit's decision in the BUKHARA restaurant case. The court concluded that the Lanham Act cannot be read to afford protection to a foreign mark under the "famous marks" doctrine. ITC Limited v. Punchgini, Inc., Case No. 05-0933 (March 28, 2007). [TTABlogged here].

BUKHARA: New Delhi, India
Professor McCarthy calls the decision a "great embarrassment" for the United States. He is concerned that, by not living up to its treaty obligations, the United States is open to criticism as it attempts to persuade other countries to respect intellectual property rights. According to McCarthy, the court chose a narrow reading of the statute, but he believes there is a way to incorporate the doctrine into federal law [although the article does not reveal what that way is].

Ron Coleman, at his Likelihood of Confusion blog, disagrees with "The Great One."

Text Copyright John L. Welch 2007.

TTAB Dismisses "EVOLUTION BENEFITS" 2(d) Opposition: Relevant Purchasers Are Sophisticated and Not Likely to be Confused

The Board dismissed an opposition to registration of the mark EVOLUTION BENEFITS & Design (shown immediately below) for printed matter, financial services, and computer services all relating to the field of voluntary employee savings and defined contribution plans, finding the mark not likely to cause confusion with the previously-used marks EVOLUTIONS HEALTHCARE SYSTEMS and EVOLUTIONS for prepaid healthcare plans in the nature of preferred provider organizations (PPOs). The Board noted that Opposer did not argue that the actual purchasers of the involved services would be confused. Instead Opposer focused its attention on healthcare providers and insured employees, but the Board concluded that those were not the relevant purchasers. Evolutions Healthcare Systems, Inc. v. Evolution Benefits, Inc., Opposition No. 91158602 (July 12, 2007) [not precedential].


Three principal issues were at the heart of the Board's decision: (1) applicability of the doctrine of natural expansion to Opposer Evolutions Healthcare's services; (2) determination of the relevant purchasers; and (3) Opposer's claim of actual confusion.

The Board's rulings on these three issues stemmed from its determination as to the nature and relationship of the parties' respective services. Applicant Evolution Benefits markets payment technology services to the same purchasers to whom opposer markets its PPO network organization services, i.e., to large self-insured, employers, insurance carriers, third-party administrators of employee healthcare benefits plans, and brokers and consultants in the employee benefits industry. Both parties strive to persuade these distributors to include their respective services in the employee benefits package that the distributors are organizing and marketing to the insured employee's employer.

As to the doctrine of natural expansion, the Board ruled that "[t]he evidence of record simply does not support a finding that PPO network organizers, per se, are expanding into the employee benefits accounts and related payment technology market, or that the actual purchasers of the parties' respective goods and/or services would expect such an expansion by a opposer or by any other PPO network organizer."

With regard to the relevant purchasers, the Board found that such purchasers "do not include health-care providers and insured employees who are the downstream end users of the parties' respective services. There is no evidence in the record which would support a finding that these persons influence or are in a position to influence the purchasing decisions made by the actual purchasers of the respective services, i.e., large self-insured employers, insurance carriers, and third-party administrators."

The Board distinguished Beacon Mutual Ins. Co. v. OneBeacon Insurance Group, 71 USPQ2d 1641 (1st Cir. 2004) [link here] because that "was an infringement case in which the plaintiff and the defendant were directly competing workers' compensation insurers. The court's decision held only that overwhelming evidence of actual confusion among providers and insured employees was relevant evidence which sufficed to preclude entry of summary judgment for defendant on the likelihood of confusion issue." Here, the parties are not direct competitors and there was "absolutely no evidence of actual confusion among providers and insured employees." Furthermore, to the extent that Beacon Mutual "suggests that downstream end users are relevant," it is "contrary to the principle laid down by the Federal Circuit, our primary reviewing court, in Electronic Design & Sales, Inc. [21 USPQ2d 1388 (Fed. Cir. 1992)]."


Finally, as to actual confusion, Opposer offered four incidents involving trade show conversations, an allegedly misdirected phone call, and a partly misaddressed letter. However, those incidents did not involve individuals who were customers of either party, and the Board found the evidence to be "too vague, ambiguous, and de minimis to constitute persuasive evidence of actual confusion."

The Board concluded that, on balance, that there is no likelihood of confusion.

"Although the marks are similar and the parties' purchasers are the same, these facts (as well as opposer's unconvincing evidence purported to establish the existence of actual confusion) are outweighed, in our likelihood of confusion analysis, by the basic dissimilarity of the parties' services, and by the sophistication of the relevant purchasers and the care with which the purchasing decision is made."

Text Copyright John L. Welch 2007.

TTAB Affirms Mutilation Refusal of "VIVE LA VIDA LOW CARB"

Desperate to get away from the mine run of TTAB 2(d) decisions, the TTABlog today features a rather colorless mutilation refusal affirmed by the Board. Applicant Ramon Jaquez failed in his attempt to register the mark VIVE LA VIDA LOW CARB for bottled drinking water because his specimen of use was not a "substantially exact representation of the mark as intended to be used." (See Rule 2.51(b)). In re Jaquez, Serial No. 76597151 (July 11, 2007) [not precedential].


When Applicant Jaquez filed his Statement of Use, Examining Attorney John Dwyer concluded that the specimen did not support the mark shown in the application drawing. He advised Jaquez that this problem could not be cured by amendment of the drawing because that would be an improper material alteration of the mark. The only solution was for Jacquez to submit a substitute specimen. Applicant appealed instead.

The problem, of course, is that "Vive La Vida" appears on the same line as and adjacent to the phrase "is Live The life." [The odd capitalization is in the original - ed.]. The words "Low Carb" appear below that verbiage. The Examining Attorney maintained that consumers would not view VIVE LA VIDA LOW CARB as a separate mark, but would see it only as part of the phrase VIVE LA VIDA IS LIVE THE LIFE. LOW CARB. Thus, he held, the mark appearing on the specimen does not match the drawing.

Applicant Jaquez lamely argued that Spanish speakers would recognize the phrase IS LIVE THE LIFE as "merely informational," and that the consuming public in general would view that wording as an English translation of VIVE LA VIDA and not part of the mark.

Reviewing a few precedents, the Board stated the question to be whether "the element sought to be registered creates a commercial impression separate and distinct from the other elements of the mark." It sided with the PTO, concluding, not surprisingly, that consumers would not view VIVE LA VIDE LOW CARB as a separate element.

As to Applicant's translation/informational argument, the Board said "no way."

"The mere fact that one portion of the mark as it appears on the specimens may translate another portion does not result in the translation creating a separate commercial impression, especially when all of the wording in the mark is displayed as a single expression on two lines in similar size and font."

The Board therefore affirmed the refusal.

TTABlog comment: An appeal like this one makes it understandable why the Board affirms more than 80 percent of the PTO's refusals to register.

Text John L. Welch 2007.

Finding Faucets and Cocks Related, TTAB Affirms 2(d) Refusal of "HANCOCK"

In one of a series of rather boring Section 2(d) decisions issued in recent weeks, the Trademark Trial and Appeal Board affirmed a Section 2(d) refusal to register the mark HANCOCK for "plumbing products, namely faucets," not surprisingly finding the mark likely to cause confusion with the identical mark registered for "valves, strainers, and cocks." The real question here is why the Applicant bothered to appeal. In re Masco Corp. of Indiana, Serial No. 78607509 (July 12, 2007) [not precedential].

cock valve
Applicant Masco argued that Registrant's products are "heavy-duty" industrial valves, whereas its goods are consumer faucets. The channels of trade are therefore remote from each other, Masco contended, and the goods "have no relationship whatsoever."

There was one big problem with that argument: as Examining Attorney Susan Kastriner Lawrence pointed out, neither the application nor the cited registration contained any limitations on the nature of the goods or the channels of trade. [TTABlog note: the attempt to limit the identification of goods in an involved application or registration may be the number one losing argument at the TTAB, at least according to my article entitled The Top Ten Losing TTAB Arguments, Section 1].

The Examining Attorney submitted Internet material from five companies offering a variety of plumbing products, including faucets, strainers, valves, and cocks. Furthermore, 22 third-party registrations confirmed the relatedness of the involved goods.

faucet
Once again, the Board cited Octocom Systems Inc. v. Houston Computer Services, Inc., 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) for the proposition that the issue of likelihood of confusion must be decided on the basis of the goods as identified in the involved application and registration, "and not in light of what such goods are asserted to actually be."

The Board concluded that the goods of the parties, "as broadly identified in the respective application and cited registration ... clearly are commercially related plumbing products which would be marketed to the same classes of purchasers and would share identical channels of trade."

Therefore the Board found confusion likely and affirmed the 2(d) refusal.

Text Copyright John L. Welch 2007.

Ron Coleman on "The Defenestration of Bayport"

At his always entertaining Likelihood of Confusion blog, Ron Coleman, one of the "Meet the Bloggers" triumvirate, presents his unique perspective on the decision TTABlogged here yesterday, in a posting entitled "The Defenestration of Bayport." Not only is Coleman good looking, but the man can write!

TTAB Dismisses "PERMA-SHIELD" 2(d) Cancellation Petition: Goods Too Different and Confusion Claim Too Tenuous

The Board dismissed a Section 2(d) petition for cancellation of a registration for the mark PERMA-SHIELD for "coatings sold as a component part of power saw blades," finding the mark not likely to cause confusion with several PERMA SHIELD and PERMA-SHIELD marks registered by the Andersen Corporation for a variety of window and door products. The Board saw Petitioner's likelihood of confusion claim "as amounting to only a speculative, theoretical possibility," and too tenuous to justify cancellation of the registration. Andersen Corp. v. Freud TMM, Inc., Cancellation No. 92042430 (June 28, 2007) [not precedential].


The "crux" of the matter was the relatedness of the goods. The marks were identical or virtually identical, a factor weighing "heavily "in Andersen's favor. Andersen claimed that its PERMA-SHIELD mark is famous, relying in part on a twenty-year old TTAB decision deeming PERMA-SHIELD a "strong trademark which is entitled to a relatively broad scope of protection." Andersen, however, failed to provide sales figures or evidence of brand awareness, and the old Board decision was given no weight. The Board slammed the door on the fame claim, finding the proofs inadequate, but it did find PERMA-SHIELD to be a "relatively well-known mark."


As to the goods, Andersen contended that they travel in the same channels of trade, are purchased by the same consumers, and "function as protective coverings for construction supplies." [I.e., Andersen's PERMA-SHIELD mark "has been used in connection with different types of protective cladding, including vinyl, aluminum and liquid spray-on finishes." Respondent Freud's coating is an aluminum alloy applied to saw blades.] The Board found the broad contention regarding function to be "off base": "given the distinct and substantial differences between the goods, this common aspect of the goods hardly rises to the level of causing a purchaser to assume that the goods originate from a common source."

Moreover, nothing in the record suggested that the supposedly common practice of brand extension and licensing in the construction industry "would involve a mark used for windows and cladding being extended to coatings for saw blades."

Although the registrations contain no limitations as to channels of trade, the parties' goods would be offered in different sections of retail stores. Except for one instance, the goods are advertised in different trade and consumer publications to different classes of purchasers. And though Freud's saw blades are priced in the $9-60 range, Andersen's doors and windows sell for around $1000 and would be purchased with some care. "In any event, whether homebuilders or building contractors or woodworking enthusiasts, these prospective purchasers would tend to be more discriminating in their buying decisions than everyday, do-it-yourselfers."

Andersen posited two situations in which a consumer might purchase both products: first; a small contractor who buys both products, cuts a hole in a wall with a saw, and inserts a window, while being exposed to both marks; second, a building contractor who sees both products displayed in a small, lumberyard showroom. The Board, however, found Andersen's claim of likely confusion to amount to "only a speculative, theoretical possibility."

"We are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal." [quoting Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388, 1391 (Fed. Cir. 1992).]

Finding the connection between petitioner's goods and respondent's goods to be "so tenuous that the public would not view the goods as having a common source, even when sold under identical marks," the Board dismissed the petition for cancellation.

Text Copyright John L. Welch 2007.

TTAB Again Finds Water and Soy-Based Products Related, Sustains 2(d) Opposition

In its June 14, 2007 REVIVAL WATER decision, the TTAB found bottled water and soy shake mix to be related, a ruling that the TTABlog questioned here. Well, the Board has done it again, finding spring water and "soy based beverages not being milk substitutes" to be related for Section 2(d) purposes. The Board therefore affirmed a refusal to register Applicant's two marks shown immediately below, finding the marks to be confusingly similar to the stylized SOLÉ mark shown next below, registered for spring water. In re Sigma Alimentos, S.A. de C.V., Serial Nos. 78572313 and 78572318 (July 3, 2007) [not precedential].


This time, the Board relied on six third-party registrations each showing a mark registered for both water and soy-based beverages. As usual, there was no proof of the extent of use of the marks nor of the public's knowledge thereof, but PTO Examining Attorneys are not expected to provide such proof [although one may wonder why, in this Internet age, they should not be required at a minimum to investigate whether the marks are actually still in use.]


The Board also relied, rather desperately, on a "study reported in several online locations showing that healthy beverages include lots of water and several servings of nonfat, fortified soy beverages." [TTABlog query: healthy diets may also include spinach and cereal. Does that make those items related to water?]

Finally, the Board feebly noted several advertisements and online ordering forms from supermarkets "showing all kinds of non-alcoholic beverages listed together, e.g., alphabetically by type." From this, according to the Board, "it is clear that [the involved goods] do move through the same general channels of trade, and may well be seen as alternatives during the same shopping trip when the average consumer may be looking for healthy, bottled beverages." [TTABlog question: so are tomato juice and V-8 also related to bottled water?]

Finding the goods related and Applicant's marks substantially the same as the cited mark, the Board affirmed the refusal.


TTABlog comment: Third-party registration evidence often raises the hackles of trademark practitioners. It just seems unfair that registrations alone, without proof of the extent of use of the marks and the public's familiarity therewith, should suffice to prove goods or services to be related.

Anyway, I decided to take a closer look at two of the six registrations cited by the Examining Attorney.

The Board noted that Registration No. 2540776 lists both "mineral water" and "soy bean juice" in class 32. However, the full class 32 listing for that registration is: BEER, NONALCOHOLIC MALT BEVERAGE, MINERAL WATER, AERATED WATER, SODA WATER, TEA WATER, FRUIT JUICE, VEGETABLE JUICE, COCONUT JUICE, GRAPEFRUIT JUICE, SYRUPS FOR FRUIT JUICES AND SOFT DRINKS, SOY BEAN JUICE.

Registration No. 2724628 was cited as listing soy bean based beverages in class 29 and drinking water in class 32. Its full class 32 listing is: SOFT DRINKS, PAPAYA FRUIT JUICE DRINK, PEACH JUICE DRINK, SOFT DRINK WITH GRASS JELLY ADDITIVES, WAX GOURD DRINK, FILTERED WATER, TEA WITH CREAM, PASSION FRUIT JUICE DRINK, ALMOND-BASED JUICE, MANGO JUICE DRINK, KIWI JUICE DRINK, FRUIT AND VEGETABLE JUICE DRINK, GUAVA JUICE DRINK, KUMQUAT LEMON JUICE DRINK, DRINKING WATER WITH HERBAL FLAVORING, ORANGE JUICE, BASIL SEED-BASED JUICE, CARROT JUICE DRINK, BANANA JUICE DRINK, PRUNE JUICE DRINK, LYCHEE JUICE DRINK, COCONUT JUICE DRINK, CARAMOLA JUICE DRINK, GRAPE JUICE, GRAPE FRUIT DRINK, LEMON C DRINK, SPORT DRINK, MIXED FRUITS JUICE DRINK, VITAMIN JUICE DRINK, PINEAPPLE JUICE DRINK, LOTUS ROOT JUICE DRINK, VEGETABLE JUICE DRINK, FRUITS VINEGAR DRINK, TOMATO JUICE DRINK, GINGER DRINK, MINERAL WATER, ASPARAGUS DRINK, APPLE JUICE.

I'm beginning to believe that all beverages are related, from spring water to asparagus drink. That's the magic of third-party registration evidence. Its the "Wizard of Oz" approach: don't you dare look behind that curtain!

Text Copyright John L. Welch 2007.

Boston Duck Tours Wins Injunction Against Competitor's Use of "DUCK TOURS"

In a Memorandum and Order issued today, the U.S. District Court for the District of Massachusetts has preliminarily enjoined Super Duck Tours, LLC, from using the term "DUCK TOURS" or a cartoon duck as a trademark or service mark in connection with sightseeing tour services in the Boston area. Boston Duck Tours, LP v. Super Duck Tours, LLC, Civil Action No. 07-11222-NMG (D. Mass. July 13, 2007). [TTABlog Update: REVERSED ON APPEAL (here), 87 USPQ2d 1385 (First. Cir. 2008)].


Plaintiff Boston Duck Tours identified "at least 30 instances of actual confusion involving customers who believed that the two companies were one and the same. *** [t]he litany of complaints alleged in the plaintiff's affidavits indicates that it is the confusing similarity of the parties' trademarks that is the problem here."


Defendant Super Duck Tours contended that "duck tours" is a generic term identifying a particular kind of amphibious sightseeing tour, but the court disagreed.

"Unlike the examples of 'wool felt,' and 'crab house' identified by the defendant, 'duck tours' does not clearly refer to a broad, general category of services. Rather, the word 'duck' is a play on the World War II amphibious vehicles, DUKWs, which were the distinctive predecessors of the vehicles used by the plaintiff, Boston Duck Tours. The tour itself does not involve ducks, as creatures, in any way. Contrary to what the name 'duck tours' may imply, the tour does not involve either duck watching or duck hunting."

The court declined to decide whether "duck tours" is descriptive, suggestive, or arbitrary, concluding that in any event the term "has acquired secondary meaning in the Boston area during the past 13 years."

Text Copyright John L. Welch 2007.

CAFC Affirms TTAB Dismissal of "DYKES ON BYKES" Opposition for Lack of Standing

In a non-precedential opinion (here), the U.S. Court of Appeals for the Federal Circuit has affirmed the TTAB's decision (here) dismissing for lack of standing, the opposition of Michael J. McDermott to registration of the mark DYKES ON BIKES for education and entertainment services for women motorcyclists. The appellate court agreed that McDermott had sufficiently pleaded a real interest in the proceeding, but had failed to establish any reasonable basis for believing that he would be damaged by the registration. McDermott v. San Francisco Women's Motorcycle Contingent, Appeal No. 07-1101 (July 11, 2007) [not precedential].


McDermott made two claims under Section 2(a): that the mark was disparaging because it included the term "dykes," and that it was scandalous and immoral because the full mark is associated with a pattern of illegal activity by the applicant.

The court pointed out that there are two ways to establish the reasonableness of belief of damage. First, by showing that opposer "possesses a trait or characteristic that is clearly and directly implicated by the proposed mark." Because McDermott is a man, he was not so "implicated" by the mark. The second way is to allege that "others share the same belief of harm from the proposed trademark." Surveys, petitions, or affidavits from public interest groups would support the allegation. McDermott, however, made no such allegations in his opposition papers and cited no supporting evidence regarding such a shared belief.

Therefore the CAFC affirmed the TTAB's dismissal of the opposition.

TTABlog note: For further discussion of the application and the TTAB decision, see the TTABlog postings here, here, and here.

Text Copyrigh John L. Welch 2007.

TTAB Finds "UNDERDOG" Design Marks Too Dissimilar, Dismisses 2(d) Opposition

Well, here's one that the underdog was bound to win. Applicant Jean-Claude Lewis, appearing pro se [at the TTAB, that indeed is an underdog], fended off an opposition to his application to register the mark BENEATH THE UNDERDOG.COM & Design for clothing. Opposer Classic Media, Inc. claimed likely confusion with its UNDERDOG marks used for more than 40 years for a television cartoon character and for various goods, including clothing. However, Classic Media's bark proved to be worse than its bite. Classic Media, Inc. v. Lewis, Opposition No. 91159034 (July 6, 2007) [not precedential].


Applicant Lewis admitted that Opposer is the owner of "a muttly-looking-hound-dog superhero named Underdog," and that Opposer's often employed "drawings of Underdog flying." Applicant also did not deny Opposer's ownership of its six pleaded registrations, but denied the allegations regarding the "long merchandising history" of the Underdog character, including use of the mark on clothing.

Opposer failed to make properly of record five of its six registrations (it submitted only plain copies), but it did manage to make of record its registration for the design shown immediately above, for "toys." Nor did Opposer offer proof of any common law rights prior to Applicant's filing date.

Thus the issue of likelihood of confusion hinged primarily on the sole pleaded registration. The Board, however, found that Opposer's design "looks nothing like the dog design in applicant's mark, much less such mark when considered as a whole, including the wording 'BENEATH THE UNDERDOG.COM.'"


Moreover, even if the marks were considered to be similar, and given Applicant's admission that Opposer had used the Underdog design mark for an entertainment property, "there is no proof on this record that consumers would view applicant's goods as collateral products emanating from or sponsored by opposer's television entertainment property."

Accordingly, the Board dismissed the opposition.

Text Copyright John L. Welch 2007.

July INTA Roundtable Focuses on Advanced TTAB Practice & Procedure

This month's INTA roundtable topic is "Advanced TTAB Practice & Procedure." Details here. Suggested Resources include Marty Schwimmer's The Trademark Blog and the TTABlog.


TTABlog comment: I guess INTA couldn't find a TTAB-capable Boston lawyer to run the Beantown roundtable, so they had to import one from Washington, D.C.
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Stoller Strikes Out: 7th Circuit Affirms Brett Brothers Non-Infringement Ruling

Observing that "were there a Hall of Fame for hyperactive trademark litigators, Stoller would be in it," the U.S. Court of Appeals for the Seventh Circuit affirmed the lower court's ruling in the Brett Brothers infringement litigation. As discussed here at the TTABlog, U.S. District Judge David H. Coar had granted Brett's motion for summary judgment of noninfringement, cancelled Stoller's U.S. Registration No. 2,892,249 for the mark STEALTH for "baseball, softball, t-ball bats," and awarded attorneys' fees to the defendants. Central Mfg., Inc. v. Brett, Appeal No. 06-2083 (7th Cir. July 9, 2007). [mp3 of oral argument here].


The appellate court decision begins with a fond re-telling of the famous George Brett "pine tar" incident (see video below), in which Brett and the Kansas City Royals ultimately triumphed on appeal to the league commissioner. The court noted that the instant case "presents another (albeit a less compelling) appeal of a dispute involving George Brett and a baseball bat."

The court also provides a not so fond review of Leo Stoller's litigation history, pointing out that trademark litigation "one might say is the essential part of his business strategy."

"In fact, Stoller's cases have generally proven so frivolous and wasteful of court resources that since this appeal was filed the Northern District of Illinois has enjoined him or any of his companies from filing any new action in the district's courts without first obtaining the court's permission." (TTABlogged here).

The appellate court reviewed the record and found "absolutely nothing ... upon which any reasonable person could conclude that Central and its predecessors actually sold 'Stealth' baseballs prior to Brett Brothers first use of the mark in 1999."

Judge Coar was correct in ordering cancellation of the STEALTH registration for baseball bats. As to the award of attorneys fees, Judge Coar again was right on:

"[Central] filed an infringement lawsuit without evidence of any sales of baseballs or baseball bats to support its claim to rights in the 'Stealth' mark for such products. It ignored requests to produce documents to support its claim, forcing the defendants' lawyers to go to court to compel action. Stoller offered confused, misleading deposition testimony, with unfulfilled promises of cooperation. And the documents he eventually produced made a mockery of the entire proceeding. We have no trouble in upholding the award of fees and costs."

TTABlog comment: Well, I guess you could say that Leo is in a slump. He's gone 0 for 2007. Next stop, the Supreme Court!

TTABlog Update: Eric Goldman at his Technology & Marketing Law Blog notes here that the "pine tar" video is no longer available. Apparently, Major League Baseball made a copyright claim. Professor Goldman wonders whether, by including a citation to the YouTube video in its opinion, the Seventh Circuit may have committed contributory copyright infringement.

Marty Schwimmer, at The Trademark Blog, raises the key question here: how could pine tar on the barrel of the bat increase Brett's ability to hit a home run?

Text Copyright John L. Welch 2007.

Nebraska Firm Bests Oklahoma Firm in 2(d) Fracas over "FS" Logos for Legal Services

Omaha-based Fraser Stryker Meusey Olson Boyer & Block, P.C. came out on top in its Section 2(d) opposition to registration of the FS logo shown immediately below on the left, owned by the Oklahoma City law firm of Fellers, Snider, Blankenship, Bailey & Tippens, P.C. The Board found Applicant's mark likely to cause confusion with Opposer's previously used FS mark shown on the right, both for legal services. Fraser Stryker Meusey Olson Boyer & Block, P.C. v. Fellers, Snider, Blankenship, Bailey & Tippens, P.C., Opposition No. 91166088 (June 25, 2007) [not precedential].


Opposer Fraser Stryker Meusey Olson Boyer & Block, P.C. established prior use as of 1990, rendering its services in Colorado, Iowa, and Nebraska. Applicant Fellers, Snider, Blankenship, Bailey & Tippens, P.C. argued that "the practice of law in the United States is jurisdictional by nature and governed by jurisdictional licensing requirements," thereby preventing competition in the legal marketplace and hence precluding confusion. The Board was not moved.

"Because applicant is seeking a geographically unrestricted registration, we are required to evaluate the du Pont likelihood of confusion factors in terms of nationwide markets. This requirement is not eliminated by the fact that lawyers are licensed by state bar associations."

The Board noted that "the fact that the parties may not currently be in actual competition at this time is not relevant to our analysis."

photo from Opposer's website
Applicant Fellers, Snider, Blankenship, Bailey & Tippens, P.C. also contended that the marks look different and that the addition of the name "Fellers, Snider, Blankenship, Bailey & Tippens, P.C." further distinguishes the mark by specifying the source of Applicant's services. Again, the Board was not impressed:

"The problem with applicant's argument is that the issue in a likelihood of confusion case is not whether people will confuse the marks but whether the marks will confuse people."

In a side-by-side comparison of the marks, Applicant Fellers, Snider, Blankenship, Bailey & Tippens, P.C. would be correct. But otherwise, "applicant's names may increase the likelihood of confusion when opposer's mark is encountered separately because clients or potential clients may mistakenly associate opposer's FS logo with applicant or assume that the legal services have a common source."

photo from Applicant's website
As we know, when the services are identical, the similarity between marks that is necessary to establish a likelihood of confusion is decreased. Here, the Board concluded, the similarities outweigh the differences and confusion is likely.

Text Copyright John L. Welch 2007.

Patently-O Launches Patent Law Jobs Website

Fellow blogger Dennis Crouch and his Patently-O blog have launched a new website called Patent Law Jobs by Patently-O. Can a TTABlog Trademark Jobs website be far behind?

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Opposer Fails to Introduce Evidence of Priority, So TTAB Tosses Out Opposition

Opposer Peace Mountain's Section 2(d) opposition to registration of the mark QUENCH HOLLYWOOD MIRACLE DIET WATER went right down the drain when Opposer failed to submit any evidence prior to the close of its testimony period. Applicant Sunset Health admitted in its answer that Opposer owns various federal trademark registrations for the marks DIET WATER and MIRACLE JUICE, but it denied the allegation that "[s]ince prior to November 2003, Opposer has had valid and enforceable rights in and to its DIET WATER mark." Opposer therefore failed to establish priority of use, and so the Board dismissed the proceeding. Peace Mountain Natural Beverages Corp. v. Sunset Health Prods., Inc., Opposition No. 91167165 (June 25, 2007) [not precedential].


Neither party took testimony or filed a notice of reliance. Opposer attached various exhibits to its brief at final hearing, including a DIET WATER label and a photocopy of its DIET WATER registration, but that evidence was improperly submitted because "[a] brief may not be used as a vehicle for the introduction of evidence." See, inter alia, TBMP Section 801.01 (2d ed. rev. 2004). See also Rule 2.122(d)(2) regarding the proper submission of a registration owned by a party.

Opposer offered no testimony or other evidence during its testimony period, and there was no evidence which was properly of record on behalf of Opposer, other than Applicant's admission regarding Opposer's ownership of the registrations (as well as an admission that Applicant is "currently selling" its products).


Applicant specifically denied that "[s]ince prior to November 2003, Opposer has had valid and enforceable rights in and to its DIET WATER mark." That denial "encompasses whether such registration is subsisting in addition to any common law rights which opposer may possess in the mark."

"Therefore, in order for priority not to be in issue with respect to its claim of priority of use and likelihood of confusion, it was incumbent upon opposer to prove that the current status of its pleaded registration for the mark 'DIET WATER' is that such registration is subsisting and not merely, as applicant has admitted, that such registration is currently owned by opposer."

Because Opposer bore the burden of proof and failed to establish priority, the Board dismissed the opposition.

Text Copyright John L. Welch 2007.

Precedential No. 45: TTAB Finds "DR. AIR" Confusingly Similar to "DR. SCHOLL'S" and "AIR-PILLO" in Combination

The TTAB sustained a Section 2(d) opposition to registration of the mark DR. AIR for footwear and insoles, finding the mark likely to cause confusion with the previously used and registered marks DR. SCHOLL'S and AIR-PILLO, considered together, for footwear and various related products. The Board ruled that, in view of the "widespread conjoint use" of Opposer's two marks, the number of units sold, extensive advertising, and the resultant fame of the DR. SCHOLL'S mark and the renown of the AIR-PILLO mark, the purchasing public associates the two marks together and "might well believe that applicant's insole is but another type of insole of opposer." [TTABlog comment: I doubt it.] Schering-Plough Healthcare Prods., Inc. v. Huang, 84 USPQ2d 1323 (TTAB 2007) [precedential].


Because the involved goods are identical, the Board presumed that they are marketed in all normal channels of trade to the usual classes of purchasers. Those purchasers would include ordinary consumers who would exercise ordinary care in their purchasing decisions.

As to the marks, the Board noted that when the goods at issue are identical, a lesser degree of similarity is required between the marks to support a finding of likely confusion.

It first reviewed Opposer's evidence of fame, noting that fame plays a "dominant role" in the likelihood of confusion analysis. Applicant did not deny that the DR. SCHOLL'S mark is famous: sales have totaled more than a billion dollars, and Opposer spent hundreds of millions advertising the brand, yielding a "high degree of brand awareness."

Sales of products displaying both marks exceeded ten million units, "constituting a significant portion of opposer's sales." Although the evidence fell short of establishing fame of the AIR-PILLO mark, it did show that the mark "has achieved some renown."

Turning to a comparison of the marks, the Board observed that this case "involves a twist" on the usual Section 2(d) analysis because it "presents the question of whether applicant's mark is confusingly similar to two of opposer's marks when the two marks are considered together."

To permit consideration of two marks together, two elements must be satisfied: the marks must have been used together, and the public must associate the marks together as source indicators for the product involved. Opposer passed the test. The DR. SCHOLL'S and AIR-PILLO marks are used together in close proximity (see illustration above) and, "given the widespread conjoint use over many years, the quantity of units sold, and the extensive advertising," it is reasonable to conclude that the marks are associated together in the minds of the purchasing public.

The Board then found that the similarities between Applicant's mark and the conjointly-used marks of Opposer outweigh the differences, and that consumers "might well believe that applicant's insole is but another type of insole of opposer."

Applicant Ing-Jing Huang feebly asserted that there are "other marks" that combine use of the terms "DR." and "AIR," but he failed to provide any evidence of same. He pointed to the lack of survey evidence supporting Opposer's claim, but the Board noted that survey evidence is not required ; moreover, in light of the high cost of surveys and the limited jurisdictional nature of TTAB proceedings, the Board will not draw a negative inference from a party's failure to provide survey evidence. Finally, Huang's reference to the lack of actual confusion evidence was completely lame, since his application is based on intent-to-use and thus there has been no opportunity for confusion.

The Board therefore found confusion likely and sustained the opposition.

Text Copyright John L. Welch 2007.

Precedential No. 44: TTAB Says Wikipedia Evidence is Admissible, but Should Be Corroborated

The TTAB has adopted the same stance as the Trademark side of the USPTO on the admissibility of Wikipedia evidence: admissible, but its weight may vary depending on the existence, or lack, of corroborating sources. [Trademark Commissioner Beresford's statement here]. That evidentiary ruling had little impact, however, on the Board's affirmance of the PTO's Section 2(e)(1) mere descriptiveness refusals of the marks ipPCS and ipPIPE for telecommunications services featuring a device that allows Internet transmission of images and video. In re IP Carrier Consulting Group, 84 USPQ2d 1028 (TTAB 2007) [precedential].


The brouhaha arose when Applicant submitted the Wikipedia entry for "Internet Service Provider" in an attempt to show that the most common abbreviation for "Internet Provider" is "ISP." The Board then launched into its discussion of Wikipedia evidence.

"There are inherent problems regarding the reliability of Wikipedia entries because Wikipedia is a collaborative website that permits anyone to edit the entries. *** As a result, entries, especially newer entries and recent edits, may contain significant misinformation, false or debatable information, 'unencyclopedic' content, unexpected oversights and omissions, vandalism, or unchecked information that requires removal. At any given time an article may be in the middle of an edit or controversial rewrite."

On the other hand, the Board noted, Internet evidence is "generally admissible and may be considered for purposes of evaluating a trademark."

The Board concluded that it will consider Wikipedia evidence "so long as the non-offering party has an opportunity to rebut that evidence by submitting other evidence that may call into question the accuracy of the particular Wikipedia information."

"As recommended by the editors of Wikipedia, the information in a particular article should be corroborated. The better practice with respect to Wikipedia evidence is to corroborate the information with other reliable sources, including Wikipedia's sources."

Here, there was corroborating evidence for the Wikipedia entry in the form of an American Heritage Dictionary listing for "Internet Service Provider."

The Board nonetheless found that "IP" is readily understood to mean "Internet Provider" and/or "Internet Protocol," and it found the two marks at issue to be merely descriptive of Applicant's services.

TTABlog comment: As I have said before, I think the better practice is to exclude Wikipedia evidence. [In short, I agree with INTA's position, found here]. If corroboration is required, why not discard the Wikipedia evidence entirely and rely on the corroborating evidence?

What happens when the corroborating evidence is other Internet evidence? Does such a house of cards provide any real support?

Text Copyright John L. Welch 2007.

AIPLA Finds TTAB Fraud Standard Too Harsh

The American Intellectual Property Law Association (AIPLA) has adopted a series of resolutions stating its view as to what standard the TTAB should apply in determining the issue of fraud. (link here). The resolutions, set forth below, "essentially state that mistakes do not amount to fraud."

RESOLVED, that the American Intellectual Property Law Association (AIPLA) believes, in principle, that misstatements in the identification of goods and/or services in filings before the U.S. Patent and Trademark Office occasioned by an honest mistake, carelessness, inadvertence, oversight, language difficulties, misunderstanding of the law, or the like, and not made with an intent to deceive, should not constitute fraud.

RESOLVED, that the American Intellectual property Law Association (AIPLA) favors, in principle, that a trademark application or registration that contains a misstatement in the identification of goods and/or services occasioned by an honest mistake, carelessness, inadvertence, oversight, language difficulties, misunderstanding of the law, or the like, and not made with an intent to deceive, should be permitted to be amended or restricted under Section 18 [of the Lanham Act], 15 U.S.C. § 1068 to amend or delete the excess goods and/or services, and should not result in the entire application being voided or the registration cancelled.

RESOLVED, that the American Intellectual Property Law Association (AIPLA) believes, in principle, that where a trademark applicant or registrant erroneously states in filings before the U.S. Patent and Trademark Office that it is using the mark in commerce on or in connection with particular goods and/or services, such misstatement alone should not be deemed “material” for purposes of analyzing whether the applicant/registrant committed fraud on the Office if (1) the party was in fact using the mark in commerce on or in connection with other similar or related goods or services identified in the application or registration as of the filing dates for an application under [Lanham Act] Section 1(a), an affidavit under [Lanham Act] Section 8, a renewal under [Lanham Act] Section 9, a Statement of Use, or an Amendment to Allege Use; and, (2) the applicant/registrant would have been entitled to a registration covering those other goods or services.

TTABlog comment: Well, that's nice. But there are "mistakes" and then there are MISTAKES. Every applicant and registrant will assert that its error was innocent, that it had no evil intent, and that the error resulted from misunderstanding of the law, oversight, or "carelessness." Under the AIPLA's proposal, why bother to have a verification at all? I'm in favor of erring on the side of truth and carefulness in filing documents with the PTO, not nonchalance and carelessness.

I, for one, think that the term "fraud" is inappropriate in many of these cases because it does carry a connotation of an "intent to deceive." Perhaps the term "false oath" would suffice. But I still think there should be consequences for making a false oath, absent unusual circumstances.

Text Copyright John L. Welch 2007.

TTAB Posts July Hearing Schedule

The six TTAB hearings scheduled for the month of July 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)].


July 10, 2007 - 2 PM: In re Spirits International, N.V., Serial No. 74382759 [Section 2(e)(3) refusal of MOSKOVSKAYA for vodka, on the ground that the mark is primarily geographically deceptively misdescriptive].


July 12, 2007 - 2 PM: In re Bridger Management LLC, Serial No. 78516349 [Section 2(d) refusal of BRIDGER CAPITAL for hedge fund services, on the ground of likelihood of confusion with the registered mark BRIDGER COMMERCIAL FUNDING for commercial lending services].

July 18, 2007 - 10 AM: Mattel, Inc. v. Briden, Opposition No. 91160087 [Section 2(d) opposition to registration of the mark SOCK-UM for a "game where a labeled mat is placed on the ground or floor, participants position themselves on the mat and volley a sock back and forth from one half of the mat to the other half of the mat," in light of the registered mark ROCK'EM SOCK'EM for computer games and video games].


July 19, 2007 - 10 AM: In re Harajuku Lovers, LLC, Serial No. 78544289 [Appeal from a requirement that Applicant disclaim HARAJUKU in the mark HARAJUKU LOVERS for jewelry, on the ground that HARAJUKU is primarly geographically descriptive under Section 2(e)(2)].

July 24 2007- 10 AM: Small Business Network, Inc. v. American Express Co., Cancellation No. 92043745 [Petition for cancellation of the mark OPEN: THE SMALL BUSINESS NETWORK for administration of a discount program, on the ground of likelihood of confusion with the mark SMALL BUSINESS NETWORK for "membership club services, namely providing members with discounts, incentives, and special promotional offers"].

July 26, 2007 - 2 PM: In re WebKare.com, L.L.C., Serial No. 78411248 [Section 2(d) refusal of ESTAFFTRAK for computer software for tracking data in the fields of staff management and human resources, in view of the registered mark STAFFTRACK for consulting services utilizing computer software in the field of staff management or human resources].

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

Text Copyright John L. Welch 2007.