TTABlogger to Speak at IPO's PTO Day: December 3rd

Yours truly, a/k/a The TTABlogger, will appear at the IPO's PTO Day Conference in Washington, D.C. on Monday, December 3, 2007. My topic: "Recent Decisions Affecting Trademark Practice." I expect to focus on the TTAB (surprised?), but let's not forget the court decisions involving THE LAST BEST PLACE and the Leo Stoller "trademark" portfolio. For more details on the conference, go here, and/or download the brochure here.


TTABlog note: There has been a dearth of decisions generated by the TTAB in recent weeks. I suspect that a lot of the Board's energy has gone into preparation for the arrival of the new Rules on November 1st. But who knows? Maybe a deluge of decisions will arrive tomorrow.
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Sample TTAB Timetable For Inter Partes Proceeding Under the New Rules

Stephen R. Baird of Winthrop & Weinstine in Minneapolis has created a sample timetable for a hypothetical inter partes proceeding under the new TTAB rules, assuming that the notice of opposition is filed and the institution order is issued on November 1st.

SAMPLE DOCKETING DEADLINES FOR HYPOTHETICAL INTER PARTES CASE WITH A NOVEMBER 1, 2007 TTAB INSTITUTION ORDER
Day 0: Board’s Institution Order [November 1, 2007]
Day 40: Defendant’s Answer Due [December 11, 2007]
Day 60: Request Board Participation in Conference [December 31, 2007]
Day 70: Discovery Conference Deadline [January 10, 2008]
Day 70: Discovery to Open [January 10, 2008]
Day 99: Sanctions Motion (re Conference) Deadline [February 8, 2008]
Day 100: Both Parties’ Initial Disclosures Due [February 9, 2008]
Day 220: Expert Disclosures Due [June 8, 2008]
Day 250: Discovery to Close [July 8, 2008]
Day 250: Rebuttal Expert Disclosures Due [July 8, 2008]
Day 250: Motion to Compel Expert Disclosures Due [July 8, 2008]
Day 295: Plaintiff’s Pre-Trial Disclosures Due [August 22, 2008]
Day 309: Motions for SJ or Compel Discovery Due [September 5, 2008]
Day 310: Plaintiff’s Testimony Period to Open [September 6, 2008]
Day 340: Plaintiff’s Testimony Period to Close [October 6, 2008]
Day 355: Defendant’s Pre-Trial Disclosures Due [October 21, 2008]
Day 370: Defendant’s Testimony to Open [November 5, 2008]
Day 400: Defendant’s Testimony Period to Close [December 5, 2008]
Day 415: Plaintiff’s Rebuttal Disclosures Due [December 20, 2008]
Day 430: Plaintiff’s Rebuttal Period to Open [January 4, 2009]
Day 445: Plaintiff’s Rebuttal Period to Close [January 19, 2009]
Day 505: Plaintiff's Trial Brief Due [March 20, 2009]
Day 535: Defendant's Trial Brief Due [April 19, 2009]
Day 550: Plaintiff’s Rebuttal Trial Brief Due [May 4, 2009]
Day 560: Request for Oral Argument Due [May 14, 2009]

Note that this hypothetical calendar does not include any extensions of time or suspensions of the proceeding. With the discovery period now commencing thirty days after the due date for the answer (rather than before the answer), the length of a hypothetical proceeding such as this has been increased by about 50 days.
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Reminder: Teleconference on TTAB Rule Changes: October 30th

Yours truly will participate as a panelist, along with Steve Baird and Beth Chapman, in Strafford Publication's "Live 90-Minute Telephone Conference with Interactive Q&A" on the TTAB Rule Changes. October 30, 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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4th Circuit Reverses "THE LAST BEST PLACE" District Court Decision, Vindicates PTO

The United States Court of Appeals for the Fourth Circuit has reversed a district court decision regarding THE LAST BEST PLACE mark, ruling that Congress had properly acted to prevent registration of the mark and that the PTO had likewise acted properly in cancelling two registrations and suspending four applications and two oppositions proceedings involving the mark. Last Best Beef, LLC v. Dudas, 84 USPQ2d 1699 (4th Cir. 2007). [The district court's decision is available and was discussed here at the TTABlog.]


Section 206 of the Science, State, Justice, Commerce, and Related Agencies Appropriations Act of 2006 prohibited the use of federal funds to "register, issue, transfer, or enforce any trademark in the phrase 'The Last Best Place.'" [That provision was sponsored by Montana Senator Conrad Burns, who publicly asserted that the mark THE LAST BEST PLACE “belongs to the State of Montana.”] The district court deemed Section 206 a legal nullity because "it contradicted but did not constitute an implied repeal or suspension of the Lanham Act." The court further declared that the PTO had committed "clear error" by complying with Section 206.

Last Best Beef was seeking to register THE LAST BEST PLACE for a variety of products and services. President Bush signed Section 206 into law in November 2005 (and it has been extended through a series of continuing resolutions), and when the PTO (somewhat belatedly) learned of the legislation, it took the aforementioned actions.

Last Best Beef filed suit in February 2006 to challenge the legislation and the PTO's actions. The district court granted summary judgment to Last Best Beef, declaring that Section 206 was "invalid legislation" because it "improperly circumvent[ed]" the Lanham Act. In particular, the district court ruled that Section 206 did not explicitly or implicitly suspend provisions of the Lanham Act. It found the conflict between Section 206 and Section 1052 of the Lanham Act to be "insufficient to demonstrate manifest congressional intent to suspend numerous, interdependent provisions of the Lanham Act with respect to one phrase...."

The Court of Appeals found that the question presented involves an "ordinary question of statutory interpretation that requires us to determine whether or not Congress clearly expressed its intention to repeal through an irreconcilable conflict between Section 206 and Section 1052."

"The conclusion that Congress intended to enact a discrete and narrow exception to the Lanham Act is unavoidable. In fashioning Section 206, Congress simply set forth an exception to the Lanham Act's general rule that trademark registration may not be refused on the basis of the nature of the mark. This is something Congress can do." [Examples are the special legislation for "Smokey Bear," Little League," and the "United States Olympic Committee."]

As to the PTO's actions, its authority "need not derive from Section 206." The authority comes from the PTO's inherent discretion to correct its own errors. The PTO erred in issuing the two registration after Section 206 was enacted, and it had the authority to cancel those erroneously-issued registrations. Suspension of the proceedings and the applications was proper because the legislation prohibited the PTO from "using funds to register any trademarks of the phrase." "It hardly makes sense for the USPTO to conduct administrative hearings on Last Best Beef's applications if registration, at the culmination of those proceedings, is prohibited."

The appellate court therefore reversed the district court judgment and remanded the case to the district court for further proceedings consistent with its ruling.

Text Copyright John L. Welch 2007.

Precedential No. 61: TTAB Finds Six-Days Notice of Testimony Deposition to be Reasonable

A hat tip to former TTAB Judge Beth Chapman for calling to my attention the Board's precedential interlocutory ruling in Sunrider Corp. v. Raats, 83 USPQ2d 1648 (TTAB 2007) [precedential]. The Board denied Applicant's motion for involuntary dismissal, ruling that Opposer's testimony deposition was reasonably noticed and admissible, and consequently that Opposer had not failed to introduce evidence during its testimony period.


Applicant Johannes W. Raats attempted to short circuit this opposition by claiming that Opposer's testimony deposition was inadmissible because (1) Opposer did not previously identify its witness; (2) the notice was facially defective because it erroneously referred to a third-party; and (3) the number of days between the notice and the deposition was only three business days (albeit six calendar days).

The Board sided with Opposer Sunrider on all three issues. As to (1), the Board noted that Opposer "was not required to identify its witnesses in advance of trial." [TTABlog note: this will soon change when the new TTAB rules go into effect on November 1st]. As to (2), the inadvertent reference to a third-party in the body of the notice was harmless, since there was "enough other correct information on the face of the notice." As to (3), six days' notice was reasonable; the Board does not count only business days in assessing the reasonableness of a deposition notice.

Therefore, Opposer properly submitted evidence during its testimony period, and Raats's motion for involuntary dismissal was meritless.

The Board noted that this was a "close question" [TTABlog comment: I don't know why.] and that the parties might have resolved the matter amicably. They could have agreed that testimony be taken outside the designated period, or that the deposition be taken by telephone. Moreover, they could have requested a telephone conference with a Board attorney.

The Board then resumed the proceeding and re-set Applicant's testimony period.

Text Copyright John L. Welch 2007.

TTAB Affirms Mere Descriptiveness Refusal of "AUTOSTITCH" for Photography Software and Services

The Board methodically affirmed a Section 2(e)(1) refusal to register the mark AUTOSTITCH, finding it merely descriptive of software for editing and manipulating images and for photographic editing services. The University of British Columbia, as Applicant, argued that the term is incongruous and merely suggestive, since the program does not operate fully automatically and nothing like stitching (i.e., sewing) occurs. But the Board was not moved. In re Univ. of British Columbia, Serial No. 78700787 (October 18, 2007) [not precedential].

Examining Attorney Jason Paul Blair maintained that, because Applicant's software and services involve the joining of multiple photos with a computer, the term AUTOSTITCH is merely descriptive of them. He relied on a dictionary definition of "auto" as meaning "automatic" and on numerous Internet printouts showing that "stitch" means to merge several photographs together to form a large image. The Board agreed that "auto" and "stitch" are descriptive of Applicant's goods and services.

The Board failed to see any incongruity or double entendre in the combined term AUTOSTITCH. The word "stitch" describes the joining of multiple photos, and "auto" describes the fact that certain features of the process are automatic rather than manual.



The University submitted GOOGLE brand printouts in which the references to "Autostitch" in the search results point to Applicant. Not significant, responded the Board. It is black letter law that even if Applicant is the first and/or only user of the term, that does not mean the term is not descriptive of the goods and services.

The Board therefore affirmed the refusal to register.

Text Copyright John L. Welch 2007.

Precedential No. 60: "J. J. YELEY" Not Primarily Merely A Surname, Says TTAB

NASCAR driver J. J. Yeley won the checkered flag at the end of his race to register the mark J. J. YELEY for a potpourri of goods in 12 classes, ranging from metal piggy banks to baby bottles to clothing to vehicle floor mats. The PTO had refused registration under Section 2(e)(4), maintaining that the mark is primarily merely a surname, but the Board threw it in reverse. In re Yeley, 85 USPQ2d 1150 (TTAB 2007) [precedential].


A declaration from Applicant Yeley regarding NASCAR marketing and his popularity convinced the Board that the "primary significance of J. J. YELEY is the race car driver, and this primary significance outweighs the surname significance." [TTABlog note: there didn't seem to be much evidence of surname significance anyway: only 197 phone directory hits for the surname "Yeley."]


The Examining Attorney contended, based on the case law, that the addition of initials to a surname does not detract from the surname significance, and may actually enhance it. The Board, however, noted that this was not a per se rule. The determination under Section 2(e)(4) depends on how the public perceives the term. Here, the board was convinced that "the primary significance of J. J. Yeley is a personal name and the identity of the race car driver."

And so the Board reversed the refusal.

TTABlog comment: I must confess, I never heard of J. J. Yeley. But then, you probably never heard of C. J. Brown.


Text Copyright John L. Welch 2007.

Latest Roster of TTAB Judges

The elevation of former Interlocutory Attorney Thomas W. Wellington to the TTAB brings the Board's membership to 19. Set out below is the current roster of TTAB Administrative Judges, beginning with Chief Judge Sams and then proceeding alphabetically from B to Z.


Sams, J. David, Chief Judge: Appointed to TTAB in 1981; Appointed Chief Judge, 1986; Prior Professional Experience: Trademark Examining Attorney; Petitions and Special Projects Attorney, Office of the Assistant Commissioner for Trademarks; Education: B.A., Davidson College; J.D., Vanderbilt University.

Bergsman, Marc A.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; Trademark Managing Attorney; TTAB Interlocutory Attorney; Dickinson Wright PLLC, Washington, D.C.; Education: B.A., Miami University of Ohio; J.D., Cleveland Marshall College of Law, Cleveland State University.

Bucher, David E.: Appointed to TTAB in 1998; Prior Professional Experience: Trademark Examining Attorney; Senior Examining Attorney; Legislative Assistant, Office of U.S. Senator Paul Simon; Director, Trademark Examining Organization; Deputy Assistant Commissioner for Trademarks; Education: B.A., Eastern Mennonite University; J.D., George Washington University.

Cataldo, Peter W.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Canisius College; J.D., Albany Law School.

Drost, Albin F.: Appointed to TTAB in 2001; Prior Professional Experience: Attorney in Judge Advocate General'’s Corps; Trademark Examining Attorney; Associate Solicitor, Deputy Solicitor, Acting Solicitor in Office of Solicitor; Education: B.A., College of the Holy Cross; J.D., Dickinson School of Law of the Pennsylvania State University.

Grendel, Charles M.: Appointed to TTAB in 1999; Prior Professional Experience: Private Practitice in Oregon; Trademark Examining Attorney; TTAB Attorney-Advisor; Education: B.A., Stanford University; J.D., University of Oregon School of Law.

Hairston, Paula T.: Appointed to TTAB in 1994; Prior Professional Experience: Interlocutory Attorney; Assistant to the Assistant Commissioner for Trademarks; Petitions and Special Projects Attorney; Education: B.A., University of North Carolina at Greensboro; J.D., Catholic University of America.

Hohein, G. Douglas: Appointed to TTAB in 1990; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A. with highest distinction, University of Virginia; J.D., University of Virginia.

Holtzman, Terry E.: Appointed to TTAB in 1999; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A. with honors, American University; J.D., George Mason University.

Kuhlke, Karen: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Steptoe & Johnson, Washington, D.C.; Education: B.A., University of Kansas; M.A., Columbia University; J.D., Georgetown University.

Mermelstein, David: Appointed to TTAB in 2006: Prior Professional Experience: TTAB Interlocutory Attorney; TTAB Supervisory Interlocutory Attorney; Trademark Examining Attorney. Education: B.A., New College, Hofstra University; J.D., American University.

Quinn, T. Jeffrey: Appointed to TTAB in 1988; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Tulane University; J.D., Tulane University School of Law.

Rogers, Gerard F.: Appointed to TTAB in 1999; Prior Professional Experience: Trademark Examining Attorney; Assistant to the Assistant Commissioner for Trademarks; TTAB Staff Attorney; Education: B.A., University of Massachusetts Amherst; J.D., magna cum laude, New England School of Law.

Seeherman, Ellen J.: Appointed to TTAB in 1987; Prior Professional Experience: Associate, Fross, Zelnick, Lehrman & Zissu (New York, NY); Trademark Examining Attorney; Staff Assistant, Special Assistant to the Assistant Commissioner for Trademarks; Education: A.B., Brandeis University; J.D., New York University School of Law.

Taylor, Jyll: Appointed to TTAB in 2006; Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; Education: B.A. University of North Carolina at Chapel Hill; J.D., Howard University School of Law.

Walsh, James: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; USPTO Administrator for Trademark Policy and Procedure; TMEP Editor; Arnold & Porter, Washington, D.C.; Education: B.A., College of the Holy Cross; J.D., Georgetown University.

Walters, Carlisle: Appointed to TTAB in 1996; Prior Professional Experience: Office of Legislative and International Affairs, Trademark Counsel; Administrator for Trademark Legal Policy for Assistant Commissioner for Trademarks; TMEP Editor; Of Counsel, Finnegan, Henderson, Farabow, Garret and Dunner; Education: B.A., Clark University; J.D., New England School of Law.

Wellington, Thomas W.: Appointed to TTAB in 2007; Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; private practice; Education: B.A., University of Maryland at College Park; J.D., American University Washington College of Law.

Zervas, Albert: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Kaye Scholer, New York; Marks & Murase, Washington, D.C.; Education: B.A. and J.D., University of Virginia.
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TTAB Comes to Boston (October 26th): Revised Agenda

Due to circumstances beyond our control, there has been a change in the agenda for the TTAB seminar in Boston on October 26th. The Trademark Trial and Appeal Board will sit for one ex parte hearing: an appeal from a Section 2(d) refusal in In re Fleetwood Enterprises, Inc., Serial No. 78579524 (briefs here). Rather than the planned inter partes argument, Judge Gerard Rogers will explain the new TTAB Rules, for which he served as the chief architect, and he will answer questions regarding same.


This program is jointly sponsored by the Boston Patent Law Association and the Suffolk University Law School IP Concentration. The hearing 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 approximately 1:30 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.

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9th Circuit Rules that Primary Jurisdiction Doctrine Does Not Apply to TTAB Proceedings

The U.S. Court of Appeals for the Ninth Circuit vacated a district court ruling that had dismissed a declaratory judgment trademark infringement action on two grounds: (1) there was no justiciable controversy, and (2) the TTAB had primary jurisdiction. Following the First and Second Circuits, the appellate court held that in these circumstances the primary jurisdiction doctrine does not apply because the TTAB was not "better equipped" to hear the action and because it would be more efficient for the district court to do so. Rhodes v. Avon Prods., Inc., No. 05-56047 (9th Cir. October 15, 2007).


Plaintiffs sought a declaration that several of their trademarks did not infringe upon Avon's registered ANEW marks. In addition to deciding whether there existed a sufficient case or controversy, the court also had to decide whether related, pending TTAB proceedings provided an appropriate basis for the district court to invoke the doctrine of primary jurisdiction in dismissing Plaintiffs' action.

The appellate court held that there did exist a justiciable controversy, and that "although the TTAB provides a forum to address trademark registration issues, the availability of such a forum does not justify the application of the doctrine of primary jurisdiction" as a basis for dismissal of the action.

The district court judge stated that the complaint "should be back where it belongs and be finished there" before the TTAB. The appellate court deemed that to be an invocation of the doctrine of primary jurisdiction.

"The primary jurisdiction doctrine provides: When there is a basis for judicial action, independent of agency proceedings, courts may route the threshold decision as to certain issues to the agency charged with primary responsibility for governmental supervision or control of the particular industry or activity involved."

The First and Second Circuits have decided, under similar circumstances, that the primary jurisdiction doctrine does not apply. The Ninth Circuit agreed.

"Allowing the district court to decline a declaratory judgment action on a primary jurisdiction rationale is sensible only if the agency is better equipped to handle the action. Here, however, Congress has not installed the PTO as the exclusive expert in the field. As noted parties may litigate these issues in a federal court without previously exhausting their claims before the TTAB. *** [W]here, as here, there is a potential infringement lawsuit, federal courts are particularly well-suited to handle the claims so that the parties may quickly obtain a determination of their rights without accruing potential damages."

The court of appeals therefore vacated and remanded, and furthermore granted Plaintiff's request that the case be assigned to a different judge.

Text Copyright John L. Welch 2007.

TTAB Dismisses "VTECH" 2(d) Opposition for Failure to Show Relatedness of Semiconductor Seminars and Electronic Devices

In a proceeding that was not a model of procedural propriety, the Board dismissed a Section 2(d) opposition to registration of the mark VTECH for "conducting seminars in the field of semiconductor manufacturing," finding the mark not likely to cause confusion with the identical mark registered for telecommunications products, computers, electronic learning aids, toys, and games, and previously used for contract manufacturing services. Opposer failed to establish a viable relationship between its goods/services and Applicant's services, leading the Board to conclude that "the likelihood of confusion alleged by opposer is so tenuous and hypothetical that it cannot suffice to preclude registration of applicant's mark." VTech Holdings Ltd. v. Varian Semiconductor Eqpt. Assoc., Inc., Opposition No. 91156936 (September 21, 2007) [not precedential].


Applicant Varian got off on the wrong foot when it failed to object to Opposer's submission of photocopies of its six registrations, rather than status-and-title copies. [TTABlog note: under the rule now in effect, status-and-title copies are not required; printouts from the TARR and assignment databases are sufficient. See Rule 2.122(d)(1)]. Varian did, however, successfully challenge a passel of documents that Opposer improperly attempted to submit by way of Notice of Reliance: including Opposer's own catalogs, its annual reports and newsletters, photographs of awards, and documents produced by Varian during discovery. None of those documents are self-authenticating.

Turning to the merits of the controversy, the Board found that "even under the less rigorous 'viable relationship' standard applied in cases where the parties' marks are identical," Varian's services are "dissimilar and unrelated to" Opposer's goods and services. Opposer feebly argued that its goods and Varian's services "are related because they both involve semiconductors." Not sufficient, said the Board.

Likewise as to Opposer's manufacturing services, which are directed to electronic products, the Board observed that Opposer is not in the semiconductor industry and neither manufactures nor markets semiconductors. Again, the mere fact that Opposer manufactures products that include semiconductors does not establish that its services are related to those of Varian.

Opposer tried a "natural expansion" argument, insisting that purchasers would assume that it had entered into the semiconductor manufacturing seminar business, but that argument also flopped. Opposer failed to present any evidence that any other consumer electronics product manufacturer has expanded into the semiconductor seminar field. [TTABlog note: compare this "natural expansion" ruling to last year's questionable Board decision in Bose Corp. v. ONG Corp., Opposition No. 91162058 (September 29, 2006) [not precedential]. (TTABlogged here).]

The Board also found the relevant purchasers to be sophisticated and knowledgable, and the respective channels of trade and classes of purchasers to be different. Opposer's fame argument failed for lack of supporting evidence, even of Opposer's revenues and promotional expenditures.

In short, the Board dismissed the opposition, pointing out that "[e]ssentially, opposer's argument boils down to the fact that the parties' respective goods and services both involve semiconductors in some manner.

"There is no basis in the record for concluding that semiconductor manufacturers, or anyone else, are likely to mistakenly assume that a source or connection exists between opposer and applicant merely because both parties' goods and/or services might be said to have something to do with a product as ubiquitous as semiconductors."

Text Copyright John L. Welch 2007.

TTAB Reverses Genericness Refusal of "PAYCLERK" for Payroll Services

Although it had "concerns" about the genericness of the mark PAYCLERK for "payroll preparation and payroll tax preparation services for others," the Board found that the PTO had failed to prove its case by clear and convincing evidence. The Board therefore reversed the refusal and ruled that the mark is eligible for registration on the Supplemental Register. In re PayClerk, Inc., Serial No. 76594440 (October 4, 2007) [not precedential].


Faced with a mere descriptiveness refusal, Applicant PayClerk, Inc. amended its application to seek registration on the Supplemental Register. The Examining Attorney countered with a genericness refusal. PayClerk appealed.

The Board not surprisingly found the term PAYCLERK to be "more analogous" to a compound word than a phrase, and therefore applied the test of In re Gould Paper Corp., 5 USPQ2d 1110 (Fed Cir. 1987). Under Gould, dictionary definitions of the constituent words may suffice to show genericness of the compound term, provided that the joining of the two words lends no additional meaning to the term.

The Board looked to dictionary definitions of "pay" and "clerk," concluding that "PAYCLERK may be defined as a person who works in an office keeping records, correspondence and filing relating to giving or receiving payments." Several Internet webpages and NEXIS excerpts showed use of the term "pay clerk" as a job description.

Nonetheless, the Board was "constrained to find that the examining attorney has failed to show that the designation PAYCLERK has acquired no additional meaning to consumers of payroll services than the terms 'PAY' and 'CLERK' have individually."

"While PAYCLERK may be an apt name for a person who works in an office performing various recordkeeping, filing and correspondence tasks that may include payroll services, the evidence does not show that it is used as a generic name for such services."

The Board noted that "on a different and more complete record, such as might be adduced in an opposition proceeding," it might arrive at a different conclusion.

TTABlog comment: The approach of the Board here is akin to that applied to the genericness of phrases: there must be proof that the entire phrase is used in a generic manner, despite the genericness of the individual words, in order for a genericness refusal to stand.

The Board might have said that, although the words "pay" and "clerk" are generic for certain purposes, the word "clerk" is not generic when used in connection with services.

Text Copyright John L. Welch 2007.

Teleconference on TTAB Rule Changes: October 30th

Yours truly will participate as a panelist, along with Steve Baird and Beth Chapman, in Strafford Publication's "Live 90-Minute Telephone Conference with Interactive Q&A" on the TTAB Rule Changes. October 30, 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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TTAB Affirms Mere Descriptiveness Refusal of "E-WEAR" for Audio Devices

The Board affirmed a Section 2(e)(1) refusal to register the mark E-WEAR, finding it merely descriptive of "portable audio products, namely, digital audio players that may be worn on various parts of the user's body, such as the head, wrist, arm, neck or hair." Applicant argued that the mark is not descriptive but rather "playfully suggestive." The Board, however, refused to play along. In re Panasonic Corp. of North America, Serial No. 76002076 (September 11, 2007) [not precedential].


Examining Attorney Tamara G. Frazier maintained that "e" is a well-known abbreviation for "electronic" and that "wear" is descriptive of audio products designed to be worn by the user (as the word is used in Applicant's identification of goods). She asserted that "e-wear" and "wearable electronics" are employed interchangeably within the industry, and she submitted dictionary definitions of "e" and "wear," along with NEXIS and Internet printouts and GOOGLE brand search results.

Applicant Panasonic lamely pointed to other meanings of the letter "e" and also contended that the term "wear" may be descriptive of clothing, but it is only suggestive of non-clothing items. Panasonic also pointed to many articles in printed publications in which E-WEAR is used as a trademark to identify the Panasonic products.

The Board once again pointed out that mere descriptiveness is to be determined not in the abstract, but in the context of the goods at issue. Reviewing the PTO's evidence, as well as Applicant's own advertising, the Board concluded that "wearable electronics" refers to electronic devices that may be worn by the user, and that the term "e-wear" is used as "an interchangeable abbreviated version" of the phrase. Therefore, the mark is merely descriptive of Applicant's goods.

As to the published articles using E-WEAR as a trademark, that evidence may bear on the issue of acquired distinctiveness, but it "is not persuasive in showing that the term is inherently distinctive."

TTABlog note: In a companion application (Serial No. 78464117) for the mark shown below for video devices, Panasonic recently entered a disclaimer of the term E-WEAR. Is the term E-WEAR registrable on the Supplemental Register? Or is it generic? You make the call.


Text Copyright John L. Welch 2007.

Opposer Fails to Prove Water and Wine Related; TTAB Dismisses 2(d) Opposition

The Board dismissed a Section 2(d) opposition to registration of the mark CIELO for "drinking water," finding the mark not likely to cause confusion with the identical mark, registered for "wine." ["Cielo" means sky or heaven]. The mere fact that both products are consumable liquids sold through some of the same retail outlets was insufficient to support the conclusion that the goods are related. Cielo S.p.A v. Austin House of Prayer, Opposition No. 91166590 (September 14, 2007) [not precedential].


Applicant admitted that the marks are identical, that the products are sold through the same retail outlets in some jurisdictions, that consumers who purchase bottled water may also purchase wine, and that bottled water and wine may be served together.

Applicant feebly argued that the additional Italian wording on Opposer's label will suggest the Italian pronunciation of CIELO to consumers, while the references to Austin, Texas on Applicant's label will suggest the Spanish pronunciation. The Board found that argument, even if true, to be legally insignificant. There is no correct pronunciation of a trademark, and the Board found it likely that consumers "will use either the Spanish or Italian pronunciation ... in equal measure." In sum, the identity of the marks weighed "heavily" in Opposer's favor.


As to the goods, however, Applicant's prayer was answered. The Board agreed with Applicant that there is no per se rule that alcoholic and non-alcoholic beverages are related. Applicant's admissions, however, warranted a finding that the trade channels for wine and water are at least overlapping, and this factor also weighed in Applicant's favor.

Nonetheless, the Board found "little evidence" from which to reach a conclusion as to whether the goods are related.

"There is no evidence that, in the marketplace, wine and drinking water ever emanate from the same source, or that they are marketed under the same marks, or that the circumstances surrounding the sales of wine and drinking water are such that consumers would believe that they come from the same source."

Although water and wine may be consumed at the same meal, there was no evidence that the products are complementary. Nor was there evidence that the products are sold in proximity to each other in retail stores.

In short, "the factual circumstances surrounding the marketing and sale of the respective products are insufficiently developed." Therefore, the Board ruled against Opposer.

Text Copyright John L. Welch 2007.

"THE TRADEMARK GROUP" Generic for Trademark Services, Says TTAB

The Board closed the barn door on Marnie Wright Barnhorst in her attempt to register the phrase THE TRADEMARK GROUP for "intellectual property consultation in the field of trademarks; legal services in the field of trademark law." The Board found the phrase to be generic or, alternatively, merely descriptive and lacking in acquired distinctiveness. In re Barnhorst, Serial No. 78480554 (October 2, 2007) [not precedential].


Examining Attorney Carrie Achen submitted dictionary definitions of "trademark" and "group," and third-party website and Lexis/Nexis evidence showing use of the phrases "the trademark group" and "trademark group" to identify trademark consultation and legal services. She maintained that this evidence demonstrated that "prospective consumers would immediately understand the wording in the mark describes that applicant offers trademark legal services provided by a group of attorneys."

Applicant Barnhorst submitted a number of declarations, twelve of which were from foreign agents and had "no probative value" on the issue of the perception of U.S. consumers. The remaining six were from local businessmen and lawyers, asserting "their personal view of the phrase THE TRADEMARK LAWYER and their opinion as to its relevance to the trade." She also submitted promotional material and offered evidence that revenues have amounted to more than $11 million over the 1997-2006 time period, while advertising expenditures exceeded $100,000. She also pointed to a now-expired Supplemental Registration as evidence of the phrase's capability to be a distinctive trademark.

The Board found "clear evidence" that the phrase is generic, noting that "[h]ere, we have evidence of use of the phrase THE TRADEMARK GROUP by entities that provide the same or very similar services as applicant's consultation and legal services in the field of trademarks." Even if, as Applicant asserted, she were the first user of the phrase, that "does not justify registration if the only significance conveyed by the term is merely descriptive." [TTABlog comment: or generic?]

Turning to the alternative ground for refusal, Applicant conceded that the mark is merely descriptive by applying for registration under Section 2(f). The Board noted that the more descriptive a mark, the higher the standard of proof required under Section 2(f). Here, given the highly descriptive nature of the phrase, Applicant's proof of acquired distinctiveness was "insufficient."

In sum, the Board affirmed both the genericness refusal and, in light of Applicant's failure to prove acquired distinctiveness, the alternative mere descriptiveness refusal.

TTAB comment: In every law firm in the country that has even a part-time trademark person, doesn't the firm trumpet the capabilities of its "trademark group"?

BTW: what is that little symbol at the upper right corner of Applicant's logo? I don't think it's the ® symbol.

Text Copyright John L. Welch 2007.

Precedential No. 59: Declaration Must be Signed by Declarant

In a precedential ruling that slipped through the PTO cracks (it didn't appear in the TTABVUE database) the Board affirmed a refusal to register the mark EPIL HOSE for pantyhose because Applicant's Statement of Use was deficient. The SOU included a declaration of Applicant's President that was signed by Applicant's attorney, not by the declarant. In re Dermahose Inc., 82 USPQ2d 1793 (TTAB 2007) [precedential].


The declaration began with the following language:

"Paul Zaidman declares: That he is president of the applicant of the above-captioned application and has authorized MYRON AMER, as attorney, to execute this declaration on his behalf; ...."

The declaration then went on to state the date of first use, and was signed as follows:


Examining Attorney Cynthia Sloan found the declaration unacceptable because attorney Amer "attempts to sign a declaration for which he makes no statement." The declaration states "Paul Zaidman declares," and so it must be signed by him.

Applicant maintained that the statement authorizing Mr. Amer to execute the declaration was an implied power of attorney, and in any case the application's power of attorney is an authorization to sign the declaration. Not so, said the Board. The rules "do not provide authority for attorneys to sign another person's declaration." Both Zaidman and Amer had the authority to sign the statement of use (Rule 2.33(a)(1) and (3)), but Amer may not sign Zaidman's declaration.

"Applicant modified the Rule 2.20 statement to indicate that the undersigned is not declaring or subjecting himself to anything. Therefore, it does not meet the requirement for a Rule 2.20 declaration or any other form of oath or declaration and applicant has not complied with the requirements for submitting a statement of use under Rule 2.88 and as a result there is a material inconsistency in the declaration. TMEP 804.04"

Because the declaration was deficient, the Board affirmed the examining attorney's refusal to register.

TTABlog note: The Board wondered in a footnote "why applicant did not provide a substitute declaration to satisfy the examining attorney's requirement and, thereby, avoid this appeal."

Text Copyright John L. Welch 2007

TMEP 5th Edition Now Available

Reader Michael H. has pointed out that the 5th Edition of the Trademark Manual of Examining Procedure is now available at the USPTO website (here).

TTAB Affirms Refusal to Register Toilet Symbol for Nurse-Call Device: Fails to Function as a Trademark

The Board affirmed a refusal to register the design shown immediately below under Sections 1, 2 and 45 of the Trademark Act, on the ground that the proposed Toilet Symbol fails to function as a trademark for "electronic apparatus used in nurse call systems, namely, an electronic device for automatically sending communication transmissions between patients and predetermined and/or specified health care or hospital personnel for use by patients requiring bed pan or other nursing services." The Board agreed with the PTO that the design is merely a pictorial representation of an important feature or function of the goods and would not be recognized by consumers as a mark. In re West-Com Nurse Call Systems, Inc., Serial No. 78438594 (September 13, 2007) [not precedential].


The purported mark appears on a button at the bottom of the device, "pillow speakers," shown below.


Applicant West-Com contended that the design appears as a source indicator in print advertising, on DVDs, and on website pages. The design is there seen by Applicant's customers, who are not patients but rather hospital and nursing home administrators. According to Applicant, the design enables administrators "to pick out and distinguish it from the trademarks of others." West-Com submitted evidence that the design has been used for more than ten years and that the product has generated more than $12 million in revenues. Twenty-eight essentially identical statements from West-Com dealers stated that the design "indicates products produced by" Applicant.

The Board, however, agreed with Examining Attorney Michael Tanner that the design fails to function as a mark, but instead is "an informational icon representing the purpose or function of the button on which it appears." It would not be perceived by consumers as a source indicator.

The Examining Attorney made of record numerous architectural floor plans "in which symbolic designs very similar to applicant's toilet caricature design are used to represent a toilet or commode," to show that the public is accustomed to seeing such designs to designate a toilet.

Although Applicant's design may be unique "in the sense that it is a 'one and only,' the record demonstrates that it is not unique in the sense that is has an 'original, distinctive, and peculiar appearance' which conveys only a trademark significance." The Board was persuaded by the Examining Attorney's argument that:

"Given the industry-wide use of small, highly intuitive decorative icons in this field, consumers would be hard-pressed to realize that the pictorial icon on any particular button of a nurse paging system represents the underlying manufacturer. In this case, the relevant practices of the trade compel a finding that the applicant's 'artistic work' is just that, a decorative picture that consumers and users would immediately recognize as a call button for bathroom assistance, [and] not an indicator of source for the communication device."

The additional evidence submitted by Applicant was not persuasive that the design would nevertheless be recognized as a mark. The fact that West-Com's customers are not patients but administrators is irrelevant; they would view the design no differently. Nothing in Applicant's advertising shows use of the design in the manner of a mark. Finally, the 28 dealer statements were unverified, self-serving, and insufficiently convincing to overcome the PTO's evidence, particularly in light of the lack of materials showing promotion of the design as a mark.

The Board therefore affirmed the refusal to register.

Text Copyright John L. Welch 2007.

TTABlog Remembers: "The Curse of the Billy Goat"

The quick and humiliating demise of the Chicago Cubs in the NLCS proves once again the viability of the "Curse of the Billy Goat," and brings to mind fond memories of our visit to the Billy Goat Tavern last May (TTABlogged here). Go Sox! (White Sox, that is).

Coleman, Schwimmer, Welch.

Reminder: The TTAB Comes to Boston on 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. Registration form (pdf) 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.

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Randazza Returns: His Thoughts on the TTAB's "CUMBRELLA" Section 2(a) Reversal

Responding to popular demand, I called on Marc J. Randazza for his comments on the Board's recent decision overturning a Section 2(a) refusal of the mark CUMBRELLA for condoms. Marc is a trademark lawyer and professor, expert on First Amendment law, and publisher of The Legal Satyricon blog. His thoughts follow:


by Marc J. Randazza:
Case Summary:

At first glance the TTAB appears to have developed a bit of multiple personality disorder with respect to whether “cum” is immoral or scandalous under Section 2(a). Just a few weeks ago, the TTAB determined that YOU CUM LIKE A GIRL was immoral and scandalous. See In re Carlson, Serial No. 78682282 (August 28, 2007) [not precedential] (TTABlogged here). In a seeming about face, a mere three weeks later, the same TTAB panel overturned the Examining Attorney’s 2(a) refusal to register CUMBRELLA. In re Gray, Serial No. 78622783 (September 17, 2007) [not precedential].

Applicant William R. Gray filed an Intent to Use (ITU) application for CUMBRELLA for, cleverly enough, condoms. The Examining Attorney, citing a dictionary that referred to "cum" as a vulgar term for "semen ejaculated during orgasm," rejected the mark under 15 U.S.C. §1052(a); TMEP §1203.01, or more informally "Section 2(a)," concluding:

"The applicant’s proposed mark CUMBRELLA is immoral and scandalous because it refers to the act of ejaculating semen during orgasm. In the context of the applicant’s goods, such a reference is certainly obvious and offensive to a substantial composite of the general public who are likely to view the mark as potential consumers. Registration must therefore be refused pursuant to Section 2(a) of the Trademark Act."

In his initial rejection of the mark, the Examiner recited the same old paragraph that appears to be cut and pasted into each and every 2(a) rejection, stating that the 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," in the context of the marketplace as applied to goods or services applied in the application. (Citations omitted).

In supporting his determination that CUMBRELLA fits this seemingly narrow standard, the Examining Attorney provided pages from an online dictionary that describe the word "cum" as "semen ejaculated during orgasm."

"The applicant’s proposed mark CUMBRELLA is immoral and scandalous because it refers to the act of ejaculating semen during orgasm. In the contact of the applicant's goods, such a reference is certainly obvious and offensive to a substantial composite of the general public who are likely to view the mark as potential consumers. Registration must therefore be refused pursuant to Section 2(a) of the Trademark Act."

The Examining Attorney, in an all-too-common display of limited and position-serving research, pointed to his dictionary reference describing "cum" as vulgar slang for "semen ejaculated during orgasm." (Note: apparently the American Heritage Dictionary is not familiar with the concept of the female orgasm). The Examining Attorney also provided multiple mainstream media sources demonstrating that the term "cum" means ejaculate or to ejaculate.

The Examining Attorney, in support of his determination that "cum" is considered to be immoral or scandalous by a substantial composite of the American public, also provided reams of adult-entertainment material. The purpose was to demonstrate that the term "cum" is used prevalently in the pornography industry.

Applicant Gray argued that "cum" is not immoral or scandalous, and he provided a number of mainstream media usages of the term and competing dictionary references that did not deem "cum" to be vulgar. He also profferred evidence of alternative definitions of the term "cum" that are equally applicable. For example, the Applicant noted that "cum" is used as a preposition meaning "with" and when used in combination with the term "umbrella," CUMBRELLA means "with protection" – a reasonable double entendre to use when describing a condom.

The TTAB recognized that one dictionary did refer to "cum" as "vulgar slang." However, the Board reviewed a collection of representative articles provided by the PTO to support its view that "cum" means "to ejaculate. " These articles all came from mainstream media sources - thus the Board determined that although the Examining Attorney may have defined the term correctly, its regular use in the mainstream media to describe an orgasm demonstrated that it was a generally-accepted term - not one that would shock or scandalize a substantial composite of the general public.

Applicant Gray also argued that the Examining Attorney's reliance upon sexually graphic photographs and websites displaying the fruits of male orgasms as evidence that the term "cum" can only mean ejaculated semen, was illogical. As a matter of fact, the Applicant argued, "[the] Applicant's products prevent the activity displayed in the photographs." The TTAB found this argument persuasive. While it was true that "cum" could be found on many adult-themed websites, the TTAB was not persuaded that this made the term automatically "immoral or scandalous."

"This fact alone is not sufficient to prove that the word ‘cum’ is vulgar. To find otherwise would be to hold that any term or thing used in association with pornography is vulgar (e.g. the words 'sperm' or 'ejaculate'). While the Examining Attorney has shown that the term ‘cum’ has been used in connection with sexually graphic activities, he has not established that the term itself is vulgar or offensive…[t]he evidentiary record regarding whether the term 'cum' is vulgar is far from compelling and ambiguous at best. Under similar circumstances, the federal circuit has advised the board to adopt the practice of resolving doubt in Section 2(a) cases in favor of the Applicant and passing the mark to publication."

And so, the Board reversed the refusal.

Commentary:

As noted in the introduction to this article, the TTAB appears to be suffering from multiple personality disorder. However, if one examines this case side-by-side with the YOU CUM LIKE A GIRL decision, they are at least somewhat reconcilable. In YOU CUM LIKE A GIRL, the Applicant offered very little competing evidence to refute the Examining Attorney’s determination that "cum" is immoral or scandalous. Although the TTAB could very easily have allowed that mark to pass to publication, it was apparently not prepared to do so. In the CUMBRELLA case, the TTAB would have been unable to sustain the refusal without doing some serious logical backflips. ere, Applicant Gray did a much better job of packing the evidentiary record with examples of the non-vulgar use of the term "cum." Conversely, the Examining Attorney provided evidence that ultimately helped to prove the Applicant’s point.

These two cases, reviewed in tandem, suggest that the TTAB is not likely to make it easy for "borderline" marks to proceed to publication, but the Board is prepared to correct the PTO when the 2(a) rejection appears to be based in little more than ideological zealotry.

I have some criticisms and some praise for the TTAB in this decision. My criticism is limited, therefore I will begin with it. The Examining corps and the TTAB seem to be fixated on reading Section 2(a) in a manner that is inconsistent with the actual statutory language. The TTAB supported the PTO’s stance that all an Examiner needs to prove to establish a prima facie case is that the proposed mark contains “vulgarity” and thus it is per se immoral or scandalous. I sincerely hope that later Board panels reverse this trend, or that an Applicant asks a District Court or the Federal Circuit to rein in this expansion of Section 2(a).

In the praise department, even though the TTAB applied this incorrectly low standard, the Board reaffirmed the fact that the mark must be considered in the context of the relevant marketplace for the goods and services noted in the application. Although the TTAB did not specifically rely upon this requirement, it did mention it. "In determining whether a particular designation is scandalous or immoral, we must consider the mark in the context with applicant's description of goods." (citing In re Mavety Media Group, Ltd., 33 F.3d 1367, 1371 (Fed Cir. 1994)).

Since the mark is to be applied to condoms, one can only stare in bewilderment at the Examining Attorney's determination that the condom-purchasing public would find reference to orgasms or "cum" to be immoral or scandalous.

As additional item worthy of praise, the TTAB should be congratulated for noting that although the term "cum" may be a sexual term, and although it may be associated with pornography, this is not sufficient grounds for deeming the mark itself is to be immoral or scandalous. Often, I have seen litigants and Examining Attorneys alike make this same mistake – reviewing the underlying goods or services, applying their personal morals to them, and then determining that the mark is scandalous. In this case, the TTAB got it right in holding that, in reviewing a refusal under Section 2(a), it is only the actual mark that is relevant, not the goods, nor even other goods that bear the term.

TTAB Affirms Descriptiveness Refusal of "METABOLIC BALANCE" in Six Classes

The TTAB deep-sixed a Section 66(a) request for extension of protection seeking registration of the mark METABOLIC BALANCE. The Board found the mark merely descriptive of health and nutrition-related goods and service in six classes, and affirmed the PTO's Section 2(e)(1) refusal. In re Metabolic Balance GmbH, Serial No. 79009729 (September 10, 2007) [not precedential].


Examining Attorney Mary Rossman maintained that METABOLIC BALANCE describes the subject matter of Applicant's prerecorded media and the purposes and uses of the programs, informational materials, blood analyzing instruments and services. She relied on dictionary definitions, third-party websites, NEXIS articles, third-party registrations containing disclaimers of the word METABOLIC, a now-cancelled registration in which the term "metabolic balance" is used in the identification of goods, and excerpts from Applicant's own English-language website.

In an attempt to counter-balance that mound of evidence, Applicant asserted that "metabolic balance" usually refers to a condition of the human body, and that it would take "imagination or multistage reasoning to associate the attributes of a healthy body to the particular goods and services in the identification."

Applicant acknowledged, however, that its goods and services "are intended to promote a healthy body through healthy and balanced nutrition." The Board concluded that the mark METABOLIC BALANCE "immediately and directly conveys to prospective consumers that a major characteristic of the goods and services is to create and/or maintain metabolic balance."

Applicant took issue with various portions of the PTO's evidence, but to no avail. It argued that the Office failed to show that the word "metabolic balance" are in use by others as a descriptive name for the goods and services, but the Board pointed out that a term is still descriptive even if the Applicant is the only one using it for the particular goods and services. In other words, just because an Applicant is the first or only one to use a term as a mark does not mean that the term is not descriptive.

The Board therefore affirmed the refusal to register.

TTABlog questions: Should one who seeks registration via a Section 66(a) request for extension of protection be called a "requestor" or an "applicant"? Answer: Applicant.

Is this mark eligible for the Supplemental Register? No. See Section 68(a)(4). It's the Principal Register or nothing for REPs.

Text Copyright John L. Welch 2007.

TTAB Reverses Descriptiveness Refusal of "YAK SAK" for Barf Bags: Double Entendre Argument Prevails

A gutsy double entendre argument saved the day for Applicant Madson Products, LLC, bringing a reversal of the PTO's Section 2(e)(1) mere descriptiveness refusal of the mark YAK SAK for "fluid-tight paper or plastic utility bags used for motion sickness and disposal of unpleasant matter." In re Madson Products, LLC, Serial No. 78565462 (September 13, 2007) [not precedential].

yak
The Examining Attorney relied on dictionary definitions of "yak" and "yack" as slang terms meaning "to vomit," maintaining that YAK SAK "immediately tells prospective purchasers that the goods are a sack that holds yack." The mark's novel spelling "does not diminish the descriptive nature of the mark."

The Applicant threw out various arguments, the best being that YAK SAK is a double entendre. It urged that "yak" is not a misspelling but rather refers to the so-named pack animal, "suggesting that the product is tough, rugged and durable ... in essence, strong like a yak" or like the sacks used on yaks. [TTABlog comment: Calling Dr. Seuss! Please pick up the white courtesy phone!] According to Applicant, the consuming public would be equally likely to perceive this meaning as the "barf bag" meaning that the PTO claimed.

The Board agreed with the PTO that, when considered with the identified goods, YAK SAK "merely describes a sack or bag that is used to hold vomit." However, the Board agreed with the Applicant that the mark "is likely to be understood as a double entendre in connection with the identified goods." Only one of the two likely meanings of the mark is merely descriptive, and therefore the mark is at most suggestive.

TTABlog note: Because this was an ITU application without specimens of use, there was no evidence that the Applicant played up the double entendre meaning of its mark. Why, then, did the Board assume that consumers would "get" the double entendre? If Applicant's product is a paper bag, why would that bring to mind, in and of itself, the wooly Tibetan bovine? Wouldn't the mark YAK SAK more likely bring to mind the similarly alliterative, descriptive term "barf bag"?

Text Copyright John L. Welch 2007.

TTAB Posts October 2007 Hearing Schedule

The TTAB has scheduled six hearings for the month of October, as 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)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.


October 9, 2007 - 10 AM: In re Healthcare Distribution Mgmt. Assn., Serial No. 91125615 [Section 2(e)(1) mere descriptiveness refusal of HEALTHCARE DISTRIBUTORS INTERNATIONAL for publications and services in the field of healthcare product distribution; rejection of Section 2(f) claim of acquired distinctiveness based upon ownership of a registration for HEALTHCARE DISTRIBUTION MANAGEMENT ASSOCIATION].

October 11, 2007 - 2 PM: In re Chase, Serial No. 78551005 [Section 2(d) refusal of HOMESITE MORTAGE for mortgage lending services, in view of the registered marks HOMESITE, HOMESITE INSURANCE, HOMESITE HOME INSURANCE, HOMESITE INDEMNITY, and HOMESITE RENTERS EXPRESS for insurance services in the field of property, casualty, homeowners, and renters insurance].

October 16, 2007 - 11 AM: Ritz-Carlton Hotel Co. v. Wilcox, Opposition No. 91161969 [Opposition to registration of the mark RITZ for art gallery services on the ground of likelihood of confusion with, dilution of, and Section 2(a) false connection with Opposer's RITZ marks for a broad array of goods and services].

October 18, 2007 - 2 PM: In re Hotels.com, L. P., Serial No. 78277681 [genericness refusal of HOTELS.COM for "providing information for others about temporary lodging; travel agency services ..."; rejection of alternative Section 2(f) claim of acquired distinctiveness (if the term is not generic)]. [TTABlog note: see In re Hotels.com, L.P., Serial No. 76414272 (September 11, 2006) [not citable], blogged here].

October 23, 2007 - 2 PM: Pramil, S.R.L. v. Farah, Cancellation No. 92032341 [Section 2(d) Petition for cancellation of a registration for the mark OMIC PLUS for cosmetics and skin care products based upon Petitioner's alleged prior use of the mark OMIC for cosmetics and skin care products].

October 24, 2007 - 2 PM: Bose Corp. v. GoldWave, Inc., Opposition No. 91165449 [Section 2(d) opposition to the mark GOLDWAVE for computer software for audio editing, based upon the registered marks WAVE and ACOUSTIC WAVE for radios, audio systems, and other audio devices].

Text Copyright John L. Welch 2007.