Friday, September 28, 2007

TTABlog Quarterly Index: July - September 2007

It was a hot summer in Boston, but sunshine brings good photographs, sometimes. It also brought the new TTAB Rules package in August and practitioners are now chewing over the new rules, wondering just how much more difficult life will be for those who till the soil before our favorite tribunal. The Board cranked out just over a dozen precedential decisions this quarter: in two of the more interesting rulings, it gave a lukewarm welcome to Wikipedia evidence, but the back of its hand to the Wayback Machine. And Leo Stoller saw his trademark portfolio pass into the hands of the Society for the Prevention of Trademark Abuse, or SPTA, seemingly closing a troublesome chapter in Board history.

Boston's South End

Section 2(a) - Immoral or Scandalous:

Section 2(d) - Likelihood of Confusion:

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

Section 2(e)(2) - Primarily Geographically Descriptive:

Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive:

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


The First Church of Christ, Scientist

Dilution:

Fraud:

Functionality:

Genericness:

Goods in Trade:

Identification of Goods:

Laches/Estoppel/Acquiescence:

Procedural Matters:

Specimen of Use/Mutilation

My office view

TTAB Rule Changes:

CAFC Decisions:

Leo Stoller:

Recommended Reading:

Other:

Text and photographs Copyright John L. Welch 2007.

posted by John L. Welch @ 9/28/2007   0 comments

Thursday, September 27, 2007

TTAB Finds "PARIS BAGUETTE" Geographically Deceptively Misdescriptive of Bread

Applying its standard Section 2(e)(3) test, the Board affirmed a refusal to register the mark PARIS BAGUETTE & Design (shown below) [BAGUETTE disclaimed], finding the mark to be primarily geographically deceptively misdescriptive of bread. In re Paris Croissant Co., Serial No. 78598734 (September 10, 2007) [not precedential].


Applicant Paris Croissant Co., Ltd., a Korean corporation, sought to register its mark for "sandwiches; toast; biscuits; ice cream; bean jam buns; bread; green tea; coffee; coffee-based beverages." Examining Attorney Henry S. Zak and the Board, however, focused on the bread.

The Board found the elements of a Section 2(e)(3) refusal satisfied: (1) the primary significance of the mark is a generally known geographic location; (2) the consuming public is likely to believe that the goods originate from the place identified, when in fact the goods do not; and (3) the misrepresentation would be a material factor in the consumer's purchasing decision.

The presence of the word BAGUETTE and the design element did not alter the primary geographic significance of the mark, since PARIS and its geographic connotation dominate the mark. Applicant argued that the word PARIS would be seen as evoking the "ambiance" or "feel" of Paris, but the Board was unmoved.

As to the second element, Applicant admitted that its goods do not come from Paris, and so the question became whether consumers would believe that Paris is the origin of Applicant's bread. The Board found that the required goods-place association was proven. The evidence "clearly established that consumers would identify Paris as a known source" for bread. Applicant offered two crumby arguments: that French bread is sold worldwide, not just in Paris; and that Americans would not be deceived into thinking that the bread actually originated in Paris.

As to the first point, the Board noted that nothing in the law of Section 2(e)(3) requires that the place named be the only or exclusive source of the goods at issue. As to the second, bread freshly made in Paris is in fact sold in the USA. Moreover, consumers might believe that the bread was made in this country according to recipes used by Parisian bakers.

Turning to the third element, the record established that Applicant's misrepresentation would be material to the consumer's decision to purchase. An inference of materiality may be raised when "the place in question is famous as a source of the goods at issue." Here, the evidence showed that Paris is famous for its bread. "Indeed, bread, especially the baguette, has been regarded as a symbol of Paris."

Finding all three elements of Section 2(e)(3) satisfied, the Board affirmed the refusal to register. Because the refusal was proper as to at least one of the products in Applicant's identification of goods, the refusal was effective as to all the goods.


Text Copyright John L. Welch 2007.

posted by John L. Welch @ 9/27/2007   0 comments

Wednesday, September 26, 2007

Two Significant TTAB Rule Changes Already in Effect

Most of the recent TTAB Rule Changes become effective on November 1, 2007 (see TTAB chart here), but two significant changes are already in place: the Board's Standard Protective Order has been made applicable in all pending cases (except those with a different protective order already in place) (Rule 2.116(g)); and for proceedings commenced on or after August 31st, a pleaded registration may now be placed in evidence by submitting copies of the USPTO electronic database records (TARR and assignment) attached to the party's initial pleading, without the need for furnishing a certified, "status-and-title" copy (Rule 2.122(d)(1)).


In its comments on the new rules, the Board noted that its interlocutory attorneys "have routinely applied the standard order when parties are unable to agree on terms for a protective order and progress in discovery is being thwarted." Universal applicability of the standard order "should reduce some existing motion practice relating to discovery." In any event, the parties "are free to negotiate supplementary terms or substitute an alternative order to which they may agree." The Board believes that in "the vast majority of cases" in which the standard order was imposed, "the parties have complied with it without further modification."

As to submission of registrations into evidence, the Board amended the rule "to conform to existing practice." Existing practice, however, seems to be the Board's "gotcha" rule, as recently exemplified by the ruling in Omega SA v. Oldenberg, Opposition No. 91164080 (July 16, 2007) [not precedential]. (TTABlogged here). Why doesn't the Board just take judicial notice of the information on the PTO's own databases, rather than require the party to submit printouts thereof?

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 9/26/2007   0 comments

Tuesday, September 25, 2007

The TTAB Comes to Boston: Friday, October 26, 2007

The Trademark Trial and Appeal Board will conduct two hearings in Boston, one inter partes and one ex parte, on October 26, 2007, as part of a program jointly sponsored by the Boston Patent Law Association and the Suffolk University Law School IP Concentration. The two hearings will be preceded and followed by commentary and discussion from a panel of distinguished lawyers, as well as yours truly, on various TTAB topics. The program will run from 1:00 PM to 5:00 PM, with a reception afterward. Further details may be found here.


SPEAKERS AND PANELISTS

Professor Andrew Beckerman-Rodau, Suffolk University Law School.
Andrew Beckerman-Rodau teaches Property Law, Patent Law and IP law. He is a patent attorney and Co-director of the IP Law Concentration at Suffolk Law School.

Pamela Chestek, Progress Software Corporation.
Pamela Chestek is Senior Counsel for Intellectual Property, responsible for all patent, trademark and copyright matters. She is also an adjunct professor at Western New England College School of Law, teaching trademark and unfair competition, and has authored scholarly articles on trademark law.

Julia Huston, Bromberg & Sunstein LLP.
Julia Huston is a partner and the co-chair of her firm's Trademark and Copyright Practice Groups. She focuses on intellectual property cases, including the litigation of trademark claims in federal courts and the TTAB, and is a frequent author and speaker on intellectual property topics.

Mark D. Robins, Nixon Peabody LLP.
Mark Robins is a partner focusing on intellectual property litigation, including trademark matters before the TTAB and the courts. He has published extensively and spoken frequently on trademark and other intellectual property subjects and is co-chair of the BPLA Trademarks and Unfair Competition Committee.

Professor Jessica Silbey - Suffolk University Law School.
Jessica Silbey teaches Constitutional Law and IP Law. She was formerly a litigator at Foley Hoag LLP in Boston and clerked for both the U.S. District Court and the 1st Circuit in Boston.

John L. Welch, Lowrie, Lando & Anastasi, LLP
John L. Welch is Of Counsel to the firm, and practices intellectual property law in all its forms. He is co-chair of the BPLA Trademarks and Unfair Competition Committee, is a frequent author and lecturer on TTAB topics, and is the founder and publisher of The TTABlog.
.

posted by John L. Welch @ 9/25/2007   0 comments

Monday, September 24, 2007

Teleconference on TTAB Rule Changes: October 11th

Yours truly will participate as a panelist, along with Steve Baird and Beth Chapman, in a "Live 90-Minute Telephone Conference with Interactive Q&A" on the TTAB Rule Changes. October 11, 2007, at 1 PM. For details, follow this link.


The other two panelists:

Stephen R. Baird, Shareholder, Winthrop & Weinstine, Minneapolis. He heads the firm's Intellectual Property and Trademark and Brand Management Practice Groups and handles trademark litigation matters in proceedings in federal court and before the TTAB.

Beth A. Chapman, Special Counsel, Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va. She is a member of the firm's Trademark & Copyright Department. Prior to joining the firm, she served as a U.S. Patent & Trademark Office Trademark Trial & Appeal Board (TTAB) Judge (1998-2006). Before her judicial appointment, she served as an Interlocutory Attorney at the TTAB, handling motions in inter partes cases.
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posted by John L. Welch @ 9/24/2007   0 comments

Friday, September 21, 2007

Federal Court Reverses TTAB's "NIKEPAL" Decision on "NIKE" Dilution Claim

The Seattle Trademark Lawyer blog reports (here) that the U.S. District Court for the Eastern District of California has reversed the TTAB's April 2005 decision (TTABlogged here) dismissing Nike, Inc.'s opposition to registration of the mark NIKEPAL for various products and services for laboratories. New survey evidence submitted by Nike convinced the court that "there is a likelihood that NIKE will suffer dilution if Nikepal is allowed to continue its use of NIKEPAL." The court therefore issued a permanent injuntion on Nike's federal and state dilution claims. Nike, Inc. v. Nikepal Int'l, Inc., 84 USPQ2d 1820 (E.D. Cal. 2007).

Fluid Pump

The Board had "no hesitation" in finding that the NIKE mark meets the "truly famous" standard of Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1178 (TTAB 2001). However, it also found that the marks NIKE and NIKEPAL are not substantially similar, as required for dilution purposes. Id. at 1183. The addition of the term PAL "results in a mark which has a sufficiently different overall commercial impression." Consequently, the Board found that "there is no dilution."

Nike sought review in the federal district court pursuant to Section 1071(b) of the Trademark Act. By choosing that route, rather than an appeal to the Federal Circuit, Nike was allowed to present additional evidence. It did so in the form of a survey, the results of which convinced the court to make a "contrary finding on the similarity of the parties' marks."

"Mr. Johnson's survey [showed] that the vast majority of the survey respondents, representing a significant segment of Nikepal's target customer group, associate Nike and/or its products and services when they encounter NIKEPAL, thus perceiving the two marks as essentially the same."

While giving deference to the TTAB's fact-finding, "the evidence presented by Nike compels reversal of the TTAB's decision dismissing Nike's opposition to the registration of Nikepal's mark."

Shoe

TTABlog comment: As a result of this decision, we may see more survey evidence in TTAB dilution cases. If the marks in question are not virtually identical on their faces, the way to prove substantial similarity is to provide evidence of assocation. A survey may be expensive, but hey!, owners of famous marks probably can afford it.

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 9/21/2007   0 comments

Thursday, September 20, 2007

Omission of Marks in August 28th Printed TM Official Gazette Does Not Affect Opposition Period

I refuse to blog another non-precedential Section 2(d) decision, so while I wait for the TTAB to produce something interesting, I thought I'd pass along this September 17th announcement from the USPTO.


OMISSION OF MARKS IN AUGUST 28, 2007, GOVERNMENT PRINTING
OFFICE PRINTED EDITION OF THE TRADEMARK OFFICIAL GAZETTE

Due to an error by the Government Printing Office (GPO), GPO’s August 28, 2007 printed version of the Trademark Official Gazette (TMOG) published incorrectly. In particular, Book 2 of GPO’s printed August 28, 2007 TMOG omitted the content intended for publication in that volume, and instead mistakenly contained the content designated to print in Book 2 of the following week’s edition.

All of the content mistakenly omitted from GPO’s printed TMOG was timely and properly included in the USPTO’s electronic TMOG dated August 28, 2007. While the USPTO regrets the inconvenience to GPO’s customers as a result of the GPO printing error, the USPTO’s electronic TMOG is the official version. See 68 FR 37803 (June 25, 2003). The five most recent electronic editions of the TMOG are always easily accessible on the USPTO website at http://www.uspto.gov/web/trademarks/tmog/.

Because the marks in question correctly appeared in the official version of the August 28, 2007 TMOG, the opposition period for these marks remains unchanged, regardless of their omission from GPO’s printed TMOG.

posted by John L. Welch @ 9/20/2007   0 comments

Wednesday, September 19, 2007

Marc Randazza on the TTAB's "YOU CUM LIKE A GIRL" 2(a) Affirmance

I asked Marc J. Randazza, trademark lawyer and professor, expert on First Amendment law, and publisher of The Legal Satyricon blog, to review and comment on the Board's recent decision in In re Cathy Lynn Carlson, Serial No. 78682282 (August 28, 2006) [not precedential]. His thoughts follow:


In the latest in a growing line of rejections of allegedly “immoral and scandalous” trademarks, the TTAB affirmed the PTO's refusal to register a clothing designer’s mark YOU CUM LIKE A GIRL for "clothing, namely, t-shirts, tank tops, lingerie, jackets, hats, pants, scarves, shoes and socks."

The Examining Attorney attached excerpts from pornographic websites where “cum” was used to refer to semen. Additionally, with the assistance of a dictionary, he concluded that the word “cum” is a “vulgar slang term meaning ‘semen ejaculated during orgasm,’” and therefore maintained that registration of the mark was prohibited under Section 2(a) of the Trademark Act.

On appeal, the Applicant was apparently inspired by the DYKES ON BIKES case, in which the PTO determined that the relevant community would not consider “dykes” to be disparaging. (See TTABlog postings here and here). Accordingly, she argued that the context in which she used the term was neither scandalous nor immoral because she used it as a term of female empowerment. She further contended that since the government should not be in the business of legislating morality, it should not be permitted to make the decision that “cum” is truly immoral or scandalous: that decision could be made by the public, through the opposition process.

The TTAB dismissed these arguments. Because the dictionary relied upon by the Examining Attorney described the word “cum” as “vulgar when used in connection with semen,” and because there was no evidence that the word was used anywhere but in connection with pornography, the PTO had met its burden of proving that YOU CUM LIKE A GIRL “comprises scandalous matter from the standpoint of a substantial (although not necessarily a majority) composite of the general public.”

The Applicant also made the logical, but never successful, argument that there were many other “equally scandalous marks” that the Office had permitted to proceed to publication. In determining that this argument was “unavailing,” the Board noted that each application must be decided on its own merits and that prior registrations bind neither the Board nor other Examining Attorneys. The Board noted that that even if it were persuaded by prior registrations, the Applicant had not properly made them of record.

Commentary:

In Cohen v. California, 403 U.S. 25 (1971) Justice Harlan wrote:

[W]hile the particular four-letter word being litigated here is perhaps more distasteful than most others of its genre, it is nevertheless often true that one man’s vulgarity is another man’s lyric. Id. at 23.

This principle of governmental content neutrality appears to be out of fashion at the TTAB.

As a matter of biology, this case begins an illogical thread. The statement that “cum” only refers to male semen in the pornographic context is unsupported, to put it politely.

To further the illogical decision, the Board seems to have lowered the applicable standard for rejection under Section 2(a) by holding: “[t]o prove that the designation YOU CUM LIKE A GIRL is scandalous or immoral, the [USPTO] must demonstrate that, in essence, the mark is vulgar.”

Under Section 2(a), to be considered “scandalous,” a mark must be “shocking to the sense of truth, decency or propriety; disgraceful; offensive; disreputable; … giving offense to the conscience or moral feelings; … [or] calling out for condemnation.” See In re Mavety Media Group Ltd., 33 F.3d 1367, 1371 (Fed. Cir. 1994). Scandalousness is determined from the standpoint of “not necessarily a majority, but a substantial composite of the general public, … and in the context of contemporary attitudes.” Id.

In the instant case, the Board relied on In re Boulevard Entertainment Inc., 334 F.3d 1336 (Fed. Cir. 2003), for the proposition that an examining attorney can point to a dictionary, and if a word in the mark is described by that dictionary as “vulgar,” then the examiner has met his burden. This ignores the actual holding in Boulevard, which explains that dictionary evidence is valid only when “the mark has only one pertinent meaning.” Id. at 1331. That seminal case also requires that the PTO must consider the mark in the context of “contemporary attitudes.” Here, the Board did no such thing.

As a general principle, Section 2(a) may pass constitutional muster, but if Applicant Carlson appeals, this TTAB’s decision should not. (Of course, given the thin evidentiary record, if the Applicant appeals, one would hope that she would seek review in a district court and not in the Federal Circuit).

Trademarks are First Amendment-protected commercial speech. See, e.g., Bad Frog Brewery, Inc. v. New York States Liquor Authority, 134 F.3d 87 (2d Cir. 1998). Accordingly, the government may not impose content-based penalties absent a proper showing that the penalty will further a substantial interest, and that the interest will be served by the restriction. The Federal Circuit has recognized that non-registration is a government-imposed penalty. In re California Innovations, Inc., 329 F.3d 1334, 1340 (Fed. Cir. 2003) (describing non-registration as the “penalty of non-registrability” and a “harsh consequence”).

In the case at bar, the USPTO imposed this penalty solely on the basis of the content of the Applicant's mark. No governmental interest was articulated, let alone a substantial one. This is clearly unconstitutional behavior.

In Bad Frog, the Second Circuit held that since trademarks are commercial speech, prohibition on use of so-called “offensive” trademarks did not advance the stated governmental purpose of protecting children from vulgarity. Even if it had, this likely would not have been a proper purpose. See, e.g., ACLU v. Gonzalez, 2007 U.S. Dist. LEXIS 20008 (E.D. Pa. 2007) (“[W]e do the minors of this country harm if First Amendment protections, which they will with age inherit fully, are chipped away in the name of their protection.”).

To justify state-sponsored censorship, the government must demonstrate that the harms it seeks to address are real and that its restriction will in fact alleviate them to a material degree.” Edenfield v. Fane, 507 U.S. 761, 770-71 (1993). In addition, such a restriction “may not be sustained if it provides only ineffective or remote support for the government's purpose.” Greater New Orleans Broad. Ass’n. v. United States, 527 U.S. 173, 188 (1999). These mandates are “critical,” for otherwise “[the government] could with ease restrict commercial speech in the service of other objectives that could not themselves justify a burden on commercial expression.” Rubin v. Coors Brewing Co., 514 U.S. 476, 487 (1995)

In the case of so-called immoral and scandalous trademarks, what is the governmental purpose in prohibiting their registration? Even if such a prohibition could be upheld, what governmental purpose was served by prohibiting registration of this particular mark?

The TTAB has, yet again, issued an opinion that is more "calling out for condemnation" than any reference to the results of sexual gratification. As argued by the Applicant, allowing the mark to be published for opposition would not have been the end of the road. The TTAB should have allowed the mark to proceed to publication, and thus allowed any member of this undefined "composite of the public" that found it offensive to oppose the mark’s registration. If such a standard is good enough for Buddhists, then why not for prudes? See In re Hines, 32 U.S.P.Q.2d 1376 (TTAB 1994) (publishing the mark “BUDDHA BEACHWEAR” for opposition, allowing members of the Buddhist religion to oppose the mark on the grounds that it was “imperative that the board be careful to avoid interposing its own judgment for that of Buddhists.”)

Falling victim to this puritanical and unconstitutional decision, the Applicant is now relegated to the “cheap seats” in the trademark stadium – mere common law trademark rights. Unless she successfully appeals, she will suffer a significant legal penalty solely because the mark contains the word “cum.”

It shouldn't take a cum laude law degree to figure that out.

Marc J. Randazza
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posted by John L. Welch @ 9/19/2007   0 comments

Tuesday, September 18, 2007

"JUMBOZ" Generic for Sunflower Seeds, Says TTAB

The Board affirmed a refusal to register the term JUMBOZ on the Supplemental Register, finding it to be generic for "processed sunflower seeds." In re Dakota Natural Foods, Inc., Serial No. 78326818 (August 28, 2007) [not precedential].


The Board first determined that "the genus of services [sic!] is commensurate with applicant's identification of goods in the application, i.e., 'processed sunflower seeds.'"

It next observed that "a mere misspelling of a generic term does not negate its genericness." [E.g., ICE PAK for ice packs; MINERAL-LYX for mineral licks]. JUMBOZ is the legal equivalent of "Jumbos," and Applicant Dakota Natural Foods did not disagree.

The Examining Attorney supplied dictionary definitions of "jumbo," while Applicant argued that sunflower seeds are "inherently small," and thus cannot be "jumbo." The Board, however, noted that "the comparison to be made is between relative sizes of sunflower seeds, not between sunflower seeds in general and inherently large items such as jumbo jets."

The Board found that Applicant's seeds fit the definitions of "jumbo," i.e., they are "unusually large" and each is "a very large specimen of its kind." Applicant's own packaging states: "When size matters! JUMBOZ BIG Salted Sunflower Seeds." That is "strong evidence" of genericness. Moreover, numerous website pages showed that "jumbo" is a particular type or size of sunflower seed.

Contrary to Applicant's argument, adjectives as well as nouns may be generic: e.g., SUDSY generic for ammonia; ATTIC for sprinklers; CHOCOLATE FUDGE for diet soda; LITE for beer.

In sum, the Board found JUMBOZ to be a term "used to refer to extra-large or jumbo sunflower seeds." It is therefore incapable of distinguishing Applicant's goods, and ineligible for the Supplemental Register.


Text Copyright John L. Welch 2007.

posted by John L. Welch @ 9/18/2007   0 comments

Monday, September 17, 2007

Precedential No. 58: TTAB Affirms Disclaimer Requirement of "TOGGS" and 2(d) Refusal of "ZOGGS TOGGS" over "TOG & Design" for Swimsuits

Those precedential decisions just keep on rolling in. In the latest, the Board affirmed a disclaimer requirement of TOGGS in the mark ZOGGS TOGGS for swimsuits and t-shirts, and a Section 2(d) refusal of the mark on the ground of likely confusion with the registered mark ZOG & Design (shown below) for overlapping goods. Applicant unsuccessfully argued that ZOGGS TOGGS is a unitary mark for which a disclaimer is not required, and that its ownership of a now-cancelled registration of ZOGGS for the same goods should be dispositive. In re Ginc UK Limited, 90 USPQ2d 1472 (TTAB 2007) [precedential].


Disclaimer: Dictionary definitions and third-party disclaimers of "togs" convinced the Board that the term is merely descriptive of clothing. Applicant's slight misspelling did not overcome the word's generic meaning. Applicant contended that ZOGGS TOGGS is a unitary mark because of its rhyming pattern, but the Board disagreed: "The two terms are visually similar, but they are not physically joined or otherwise so visually integrated that TOGGS would not be viewed as a separable element."


Likelihood of Confusion: Applicant argued that the marks not only sound different but have different meanings: Zog will be perceived as the name of an Albanian King, Zog I, whereas ZOGG TOGGS has no apparent dictionary meaning.

Zog I of Albania

The Board, however, found ZOG and ZOGGS to be the most significant parts of the respective marks. Moreover, the word ZOG and not the design portion of the registered mark is more likely to impact purchasers and be remembered by them. The marks are also identical in meaning, and the overall commercial impression of the marks is at least similar. As to Zog I, "it is unclear whether most consumers would be familiar with or aware of this historical figure." And the fact that ZOG is "unique and arbitrary, if not coined" increases the likelihood of confusion.

"[P]urchasers are likely to perceive ZOGGS TOGGS as simply a different version of registrant's ZOG and design mark or are likely to assume that the marks identify different clothing lines from the same source."

Finally, Applicant pointed out that it previously owned a now-cancelled registration for ZOGGS TOGGS for the identical goods, and the cited registration for ZOG & Design issued over that now-cancelled registration. So, Applicant argued, the USPTO has already determined that there is no likely confusion between the marks.

Not so fast, said the Board. A cancelled registration is not entitled to any of the statutory presumptions of Section 7(b) of the Trademark Act. Moreover, the Board must decide this case on the record before it, and is not bound by a previous examining attorney's determination.

The Board therefore affirmed both the disclaimer requirement and the Section 2(d) refusal.

TTABlog note: See the Board's non-precedential decision (here) issued on September 29, 2006, in Application S.N. 76571967, involving Applicant's mark TOGGS for similar goods. The Board affirmed a Section 2(d) refusal over the same ZOG & Design registration as involved here.

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 9/17/2007   0 comments

Friday, September 14, 2007

Recommended Reading: "Trademarks and the Internet: the United States' Experience," by Prof. Glynn S. Lunney, Jr.

The latest issue of The Trademark Reporter includes an informative and highly readable article by Professor Glynn S. Lunney, Jr. of Tulane University Law School, entitled "Trademarks and the Internet: the United States' Experience," 97 TMR 931 (July-August 2007). [download here]. Professor Lunney reviews the growth of Internet trademark law "from essentially nothing to a full-fledged regulatory scheme in less than a decade."


Prior to 2000, by the time the ACPA and UDRP arrived, the problems posed by the Internet were "largely resolved by the courts' imaginative rewriting of trademark's general infringement provisions and the doctrine of dilution" The Internet's "frontier days" were over by the turn of the century, as established businesses began to recognize the Internet's commercial potential. Rather than the bad actors of the early days, "Internet defendants now typically had some legitimate, good faith basis for their behavior." The courts have been forced to confront their own decisions from the frontier era. "Having just rewritten the rules to make every decision, black or white, easy in order to control the rampant lawlessness of the Internet's early days, stare decisis made re-writing the rules yet again a somewhat tricky proposition."

The result is, according to Professor Lunney, a muddle. In some cases, courts have resorted to hair-splitting to distinguish cases; in others, they have given an "overly-narrow interpretation to one legal rule in an attempt to counteract an earlier, overly broad interpretation of a different rule."

He believes that courts should re-focus on "what trademark law is supposed to protect," recognizing and balancing the sometimes competing purposes of trademark law to protect the consumer as well as the trademark owner.

Trust me, the article is more entertaining that my brief, cryptic excerpts.

TTABlog note: Another thank you to The Trademark Reporter for granting permission to provide a link to this article, which is Copyright © 2007 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 97 TMR 931 (July-August 2007).
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posted by John L. Welch @ 9/14/2007   0 comments

Thursday, September 13, 2007

Precedential No. 57: TTAB Finds the Color Purple to be Functional for Sandpaper

Applicant 3M failed in its attempt to register a deep shade of purple for "sandpaper, namely, coated abrasives with either paper or cloth backing," the Board finding the alleged mark to be functional, and if not functional, lacking in acquired distinctiveness. Saint-Gobain Corp. v. 3M Company, 90 USPQ2d 1425 (TTAB 2007) [precedential].


Acquired Distinctiveness: The Board chose to consider the acquired distinctiveness issue first because it "presents a better vehicle for setting out the evidence in the case." Since color cannot be an inherently distinctive trademark, 3m sought registration via Section 2(f). 3M bore the burden of proof to establish acquired distinctiveness, a "difficult" burden for a color mark.

3M offered the testimony of four witness and an expert, and provided sales and advertising figures. A basic problem, however, was the inconsistency of the color used on 3M's goods, since it sought to register a specific shade of purple.

Moreover, Opposer Saint-Gobain submitted "significant evidence and arguments" to counter 3M's claim, including proof of third-party use of purple and of color coding systems for abrasive coatings. It also submitted the results of a telephone survey, which the Board found to provide "some support" for Saint-Gobain's position.

In sum, the Board found that 3M's evidence fell short: "despite the volume of evidence, there is little direct evidence of customer recognition, and applicant's circumstantial evidence is simply not very persuasive."

Functionality: Opposer Saint-Gobain claimed functionality because "purple is a by-product of the manufacturing process, and purple is used in color-coding." 3M contended that Saint-Gobain's first argument failed because "there are simply too many variables at play in the manufacturing process." The Board, however, found that "with respect to competitive need ... opposer has set out a prima facie case that coated abrasive manufacturers have to be able to use various shades of purple, including applicant's."

As to color coding, the Board was not convinced that third parties would necessarily have to use purple, but it did find that "[i]n the field of coated abrasives, color serves a myriad of functions, including color coding, and the need to color code lends support for the basic finding that color, including purple, is functional in the field of coated abrasives having paper or cloth backing."

"when color is so subject to variables that applicant itself sells its own 'distinct' shade of purple in a different shade of purple, it would place competitors at a disadvantage if they were forced to vary their production techniques and research to avoid subjecting themselves to claims of infringement by a company that cannot consistently market its product with the same distinctive shade of purple."

The Board further observed that "[a] deep purple color would be one of a small number of dark colors that would help manufacturers dye their products to avoid streaking or other imperfections."

The Board concluded that 3M had not sustained its burden of showing "that there is no competitive need for others to use the color purple and that its deep purple color is not functional."

The Board therefore sustained the opposition.


TTABlog note: This story may be apocryphal, but supposedly the musician sometimes known as Prince, who hails from the St. Paul/Minneapolis area, has a favorite uncle who worked at 3M. Indeed, the uncle worked on this very sandpaper project. This uncle was so beloved by the rock star that Prince wrote a song in his honor: the legendary "Purple Grain."

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 9/13/2007   1 comments

Wednesday, September 12, 2007

Precedential No. 56: TTAB Reverses Surname Refusal of "BAIK" for Vodka

The Board reversed a Section 2(e)(4) refusal to register the mark BAIK for vodka, finding that the PTO Examining Attorney had failed to establish a prima facie case that BAIK is primarily merely a surname. In re Joint-Stock Company "Baik", 84 USPQ2d 1921 (TTAB 2007) [precedential].


Based upon the PTO's evidence, essentially comprising 456 hits from a Verizon database, the Board found BAIK to be an "extremely rare surname," with no evidence that anyone with that surname has achieved any notoriety. Applicant confirmed that no one connected with it has the surname BAIK.

As to other meanings of the term, the PTO pointed to "negative dictionary evidence," while Applicant argued that BAIK "is an arbitrary Russian sounding word mark" that sounds "similar to Baikal, a Russian lake in Siberia" and to "the Baikal mountain range in Siberia." It noted that BAIK is promoted along with the words "VODKA Siberia," and urged that the public sees BAIK as a "fanciful Russian term used in a trademark sense." The Board agreed with Applicant.

Finally, the PTO oddly argued that because the mark "does not have any primary recognition other than as a surname," it therefore has the look and feel of a surname. The Board rejected that contention, instead noting the lack of evidence that BAIK resembles other common surnames in structure and pronunciation. The Examining Attorney pointed to the surname PAIK (800 individuals) and NAIK (900), and BAK (1100), but those surnames are almost as rare as BAIK. The Board was not convined that "the similarity of Baik to other obscure surnames somehow results in Baik having the 'look and feel' of a surname."

The Board therefore reversed the refusal.

In a rare concurring opinion, Judge Seeherman made a significant point regarding the "look and feel" factor. She opined that registration should not be refused just because a mark "is similar in sound or appearance to other surnames."

"The purpose behind prohibiting the registration of marks that are primarily merely surnames is not to protect the public from exposure to surnames, as though there were something offensive in viewing a surname. Rather, the purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses ...."

Therefore, the fact that the public may view a mark as having the "look and feel" of a surname should not be a basis for refusal of rare surnames. "If the surname is extremely rare, it is also extremely unlikely that someone other than the applicant will want to use the surname for the same or related goods or services as that of the applicant."

Whether the surname at issue rhymes with another surname or differs from another surname by a letter or two should not be decisive on the issue of registration. In short, "[i]nterpreting the 'look and feel' factor to refuse registration of marks simply because they are similar to recognized surnames does not serve the intention of the statute."

TTABlog comment: Taking Judge Seeherman's observations regarding the purpose of Section 2(e)(4) one step further, does it make any difference whether someone with the surname BAIK, or any other rare surname, has achieved notoriety? If the question is not whether the public would recognize the word as a surname, but rather whether a lot of people have that surname, it shouldn't make any difference if one person with that surname has achieved some renown. So does the Board's 2004 precedential decision in In re Gregory, 70 USPQ2d 1792 (TTAB 2004) make sense? There the Board deemed the mark ROGAN to be primarily merely a surname, based in large part on the notoriety of former PTO Commissioner James Rogan, and in spite of a mere 1,100 telephone listings for individuals with the surname "Rogan." In other words, who cares if there is (or was) one notorious Rogan? The question should be: how many Rogans are there that might want to use their own surname as a trademark?

TTABlog note: Last year, this same Applicant failed in its attempt to register BAIKALSKAYA for vodka, the Board finding the mark to be primarily geographically descriptive. (TTABlogged here).

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 9/12/2007   0 comments

Tuesday, September 11, 2007

Precedential No. 55: Wine Not? TTAB Gives Registrant a Break, Denies Fraud Claim

In this precedential ruling, the Board dismissed a petition for cancellation, finding that Respondent had not committed fraud in obtaining and maintaining its registration for the mark RUSTICO for "wines and sparkling wines." Although Respondent had used the mark only on sparkling wines and not on any other wines, the Board found its statement of use on "wines and sparkling wines" to be truthful and not fraudulent. Tri-Star Marketing LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912 (TTAB 2007) [precedential].


The Board observed that "[t]he essence of this case is a rule of construction regarding an identification of goods in an application or registration." It noted that a label for Respondent's sparkling wine could serve as a proper specimen for an application covering "sparkling wine" and/or an application covering "wine." Indeed, Respondent could have filed two applications, each supported by the same label from a bottle of sparkling wine.

"As long as the general product terminology encompasses the specific product terminology in an identification of goods, and there is use on the specific product, there can be no fraud; that is, there is nothing fraudulent in providing an identification of goods that includes both a broad product term and a specific product term so long as the applicant/registrant is using it mark on the specific product ...."

Since Respondent could have obtained a registration for "wines," it has not obtained any rights to which it is not entitled.


Unlike Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205, 1209 (TTAB 2003), "this is not a case in which the trademark was used on less than all of the goods." The Board was mindful of the meaning of "and," but nonetheless found that Respondent's statement that it was using its mark on "wines and sparkling wines" was a truthful statement.

Therefore there was no fraud.

Text Copyright John L. Welch.

posted by John L. Welch @ 9/11/2007   0 comments

Monday, September 10, 2007

Precedential No. 54: TTAB Finds "VTUNES.NET" Confusingly Similar to Famous "ITUNES" Mark, Enters Judgment Summarily

The fame of the ITUNES and ITUNES MUSIC STORE marks carried Opposer Apple to an easy victory in its opposition to registration of the mark VTUNES.NET for "digital music video internet downloads for entertainment purposes." The Board found no genuine issue of material fact that would preclude the granting of summary judgment to Apple on its Section 2(d) claim. Apple Computer v. TVNET.net, Inc., Opposition No. 91168875 (August 28, 2007) [precedential].


Applicant conceded that VTUNES is the dominant part of its mark, that "v" stands for "video," that ".net" is a generic TLD, that the parties goods/services are competitive and similar in that they both offer music video downloads, that both parties use the Internet to market their services, and that Opposer's marks are famous.

The core issue, then, was the similarity or dissimilarity of the marks. The Board perceptively noted that the dominant portions, VTUNES and ITUNES, differ by only a single letter, which is "insufficient" to distinguish them. Moreover, despite the addition of ".net" to Applicant's mark, "the similarities between the parties' marks are greater than the differences."

Applicant argued that there was no actual confusion, and that its adopted its mark in good faith, but the Board pointed out that actual confusion is not a prerequisite for finding likelihood of confusion, and good faith does not mean that confusion is less likely.

The Board therefore sustained the opposition.

TTABlog comment: File this, along with Friday's SEATOX case, under "Fame is the Name of the Game."

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 9/10/2007   0 comments

Friday, September 07, 2007

Fame of "BOTOX" Mark Yields 2(d) Opposition Victory over "SEATOX" for Cosmetics

Swept away by the fame of the BOTOX trademark, the Board sustained an opposition to registration of the mark SEATOX for “cosmetic[s].” According to the Board, consumers “may believe … that SEATOX identifies a related product emanating from opposer, perhaps an adjunct or complementary product with a formulation that includes a sea-based ingredient.” Allergan, Inc. v. BioCentric Labs., Inc., Opposition No. 91161603 (August 20, 2007) [not precedential].


Sales of the BOTOX product approached $1.7 billion in the period 1999-2004, and advertising expenditures were in the $10 to 20 million range. Applicant admitted that "[e]verybody has heard of BOTOX." Accordingly, the Board found the mark to be famous for Section 2(d) purposes. And, of course, fame plays a dominant role in the Board's du Pont analysis.

The Board had no difficulty in finding the goods of the parties to be related, even though BOTOX is administered by injection and applicant's product is an over-the-counter cream. Applicant's product admittedly was designed to reduce wrinkles.

The only wrinkle that the Board encountered was the evident dissimilarity of the marks. Not to worry!

"The marks BOTOX and SEATOX are similarly constructed, two-syllable coined terms. The marks are similar in sound and appearance in that both begin with a single syllable and end in a TOX-suffix. *** [A]ny specific differences in meaning, as well as in sound and appearance between the marks BOTOX and SEATOX, are outweighed by the similarities, especially in light of the absence on this record of any instances of third-party use of similar marks."

Considering all the du Pont factors, and resolving all doubt in favor of the registrant, the Board found confusion likely.

TTABlog comment: Not a very convincing decision. The Board essentially gave Opposer exclusive rights in the term "TOX" even though Opposer does not own a registration for "TOX," nor does it have a family of "TOX" marks. Apparently there was no evidence of actual confusion. I think the marks are sufficiently different that confusion is not likely.

The lesson to be learned from this (and so many cases) is that spending time and effort spent to prove the strength of your client's mark may be the best way to improve the chances of success as an opposer.

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 9/07/2007   0 comments

Thursday, September 06, 2007

TTAB Deems "iPOSTAGE" Merely Descriptive of Internet Postage

Affirming a Section 2(e)(1) refusal to register, the Board found the mark iPOSTAGE to be merely descriptive of software and services that allow users to print digital data on tangible media (i.e., postage). In re PSI Systems, Inc., Serial No. 78648563 (August 21, 2007) [not precedential].


Examining Attorney Jennifer H. Dixon submitted an Acronym Finder definition of "i" as shorthand for "Internet," and an Encarta definition of "postage" as "marks showing payment: the stamps, labels, or other marks on an item of mail showing that the charge has been paid." Various Nexis articles and Internet web pages sowed use of the term "Internet postage."

Applicant 's own website pages refer to itself as an "Internet Postage" service the "lets you print postage for all your mail."

The Board was not persuaded by Applicant's argument that "i" and "postage" have multiple meanings, making the combination ambiguous. Descriptiveness, of course, must be determined in relation to the goods and services at issue, not in the abstract.

The Board then found that iPOSTAGE describes a significant characteristic or function of Applicant's goods and services, which are used to create Internet postage.

Finally, Applicant unsuccessfully argued that, because other parties have registered "I" formative marks, the refusal to register its mark violated applicant's constitutional rights under the equal protection component of the Fifth Amendment. The Board cited the CAFC's decision in In re Boulevard Entertainment, Inc., 67 USPQ2d 1475 (Fed. Cir. 2003:

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

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

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 9/06/2007   1 comments

Wednesday, September 05, 2007

Submitting Bogus Specimen of Use is Fraud, Says TTAB, Not Surprisingly

Well, here's a fraud finding that we can all agree with: In obtaining its registration, Respondent submitted a specimen of use that was actually a copy of Petitioner's product packaging. The Board entered judgment summarily against Respondent on the ground of fraud. "By relying on a label obtained from petitioner's videocassette box to support [its] own allegation of use, respondent knowingly made false and material misrepresentation in connection with its application." Warner Bros. Entertainment, Inc. v. The Kaplan Trust, Cancellation No. 92043813 (August 22, 2007) [not precedential].

Respondent's Specimen of Use

Petitioner sought to cancel a registration for the mark THE BOWERY BOYS for production and distribution of motion pictures and television programs, asserting likelihood of confusion and fraud. Petitioner claimed prior use of the identical mark for motion picture and television program distribution and pre-recorded videotapes. The Board had no difficulty in finding a likelihood of confusion.

As to Respondent's specimen of use, the Board found no genuine issue of material fact that "respondent submitted a fabricated specimen in support of its registration, namely a very slightly altered but essentially identical copy of one of petitioner's videocassette labels." The Board concluded that respondent fraudulently obtained its registration.

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 9/05/2007   0 comments

Tuesday, September 04, 2007

Precedential No. 53: TTAB Strikes "Wayback Machine" Evidence, Enters Summary Judgment Okaying Amendment of "AQUA STOP" Registration

The Board granted Respondent Sporto's motion for summary judgment, permitting Sporto to amend its registered mark and finding Petitioner's claims of abandonment, naked licensing, and fraud to be without merit. In preliminary rulings, Respondent also convinced the Board to strike from the record a Google "hit list" search summary retrieved via the "Wayback Machine," and printouts from two online catalogs. Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856 (TTAB 2007) [precedential].

Petitioner Paris Glove sought to cancel a registration for the mark AQUA STOP in the "rectangular" form shown above, for footwear. It contended that the specimen submitted with Respondent's renewal application (i.e., its Section 8 Declaration), did not support the renewal, that Respondent had abandoned the mark in the form registered, had engaged in unclothed (i.e., naked) licensing, and had defrauded the PTO. [See specimen immediately below].


Internet evidence: Respondent moved to strike certain Internet evidence submitted by Petitioner on the ground that it was not introduced by way of affidavit or declaration -- i.e., it was not properly authenticated.

The Board pointed out that Internet materials "may be admissible as evidence in connection with a summary judgment motion, if competent and relevant, provided that they are properly authenticated by and affidavit or declaration pursuant to FRCP 56(e). See TBMP Section 528.04(e)(2d ed. rev. 2004)."

Contrary to Petitioner's assertions, however, "Google hit-lists" are not directly admissible into evidence in an inter partes proceeding. (In any case they have limited probative value). Petitioner argued that concerns about authentication no longer exist in view of the availability of the Internet Archive and its "Wayback Machine" feature. According to Petitioner, the "Wayback Machine" shows "each date on which a website has undergone a significant change."

The Board, however, ratified the holding of Raccioppi v. Apogee, Inc., 47 USPQ2d 1368 (TTAB 1998), which requires that Internet articles submitted with a summary judgment motion be authenticated by declaration. The Board observed that the "Wayback Machine" suffers from a serious evidentiary flaw: even Petitioner noted that the "Wayback Machine" shows "each date on which a website has undergone a significant change." "What may be insignificant to the archivers for the 'Wayback Machine' may have significance from the standpoint of evidentiary value in a trademark proceeding."

Because Petitioner's Google hit-list and its Internet catalogue pages were not properly authenticated, Respondent's motion to strike was granted.

Amended mark: The subject registration was renewed in 2002, and in 2005 Respondent sought to amend the mark to the form shown below, which matched its 2002 specimen of use:


Respondent admitted that it is no longer using its mark in the original, rectangular form, but rather in the semicircular form shown above, and in a linear form shown below on the back of its hangtags.


Petitioner claimed that the change in form of the mark constituted a "material alteration" of the mark, resulting in abandonment of the registered rectangular mark. The Board, however, found the old and new versions to be "substantially the same." There is no material alteration because "the commercial impression of the mark is dependent upon the literal terms AQUA STOP and not on the rectangular, semicircular or linear forms of display." The additional elements on the 2002 specimen "are not integral to the term AQUA STOP such that a new composite AQUA STOP mark results."

Petitioner's fraud claim sunk like a stone. Respondent Sporto submitted a specimen of use showing how the mark was being used in 2002. Its statements were truthful. The PTO accepted the declaration. As to the adequacy of the specimen to demonstrate use of the registered mark, "that does not go to the issue of fraud."

Finally, Petitioner's nude licensing claim also failed miserably. Respondent's goods are manufactured to its specifications by vendors. Although these manufacturers may "drop ship" the products to customers, Respondent does not license its mark to these manufacturers. Therefore there was no illegal licensing.

Despite Petitioner's efforts to create a genuine issue of material fact that would preclude summary judgment, the Board ruled summarily in Respondent's favor.

TTABlog note: Ron Coleman, at his Likelihood of Confusion blog, points out other evidentiary problems with the "Wayback Machine." (here).

Text Copyright John L. Welch 2007.

posted by John L. Welch @ 9/04/2007   0 comments