TTABlog Special Report: TTAB 2007 Update

My colleague, Ann Lamport Hammitte, and I have written a new article entitled "TTAB 2007 Update: Rules, Rulings, and Repercussions." A pdf of the article is downloadable here. I will be delivering this paper on Monday at the IPO's PTO Day Conference in Washington, D.C.


Claes Oldenburg and Coosje van Bruggen
Typewriter Eraser, Scale X, 1999
National Gallery of Art, Washington, D.C.
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"PECORA NERA" and "BLACK SHEEP" Confusingly Similar for Clothing, Says TTAB

Applying the doctrine of foreign equivalents, the Board affirmed a Section 2(d) refusal to register the mark PECORA NERA for various clothing items. It found the mark likely to cause confusion with the registered mark BLACK SHEEP for some of the same clothing items. In re Ing. Loro Piana & C.S.p.A., Serial No. 79014582 (November 7, 2007) [not precedential].


Applicant included in its application a translation of the Italian words "pecora nera" as "black sheep." The Board ruled that the doctrine of foreign equivalents applies because Italian is "a common, major language in the world, and is spoken by many people in the United States," and the ordinary American purchaser who is knowledgeable in Italian would translate the mark to the English term "black sheep."

Applicant, however, contended that the term "black sheep" has a figurative meaning in English while the term "pecora nera" has no figurative meaning in Italian. The Board found two problems with that argument: first, there was no evidence that "pecora nera" lacks an idiomatic meaning in Italian; and second, English/Italian dictionary definitions (of which the Board took judicial notice) "shows that 'pecora nera' in Italian and 'black sheep' in English have the same literal and idiomatic meanings."

The Board concluded that "[w]hile the marks differ in sound and appearance, the identity in connotation (both literal and figurative) is sufficient to support a finding of likelihood of confusion, especially as used in connection with identical clothing items."

TTABlog comment: The Board cited In re Thomas, 79 USPQ2d 1021 (TTAB 2006) for the proposition that the "ordinary American purchaser" in this context is the ordinary American purchaser who is knowledgeable in the foreign language. Yet in the Palm Bay case, the CAFC said that the ordinary American purchaser would not translate the French word "veuve" into the English word "widow." As I asked in the TTABlog posting regarding In re Thomas (here), how are these two cases to be reconciled? French is surely a "common, major language in the world, and is spoken by many people in the United States." So if the "average American purchaser" who knows Italian would translate "pecora nera" into English, why wouldn't the average American purchaser who knows French translate "veuve" into widow? Or to put it another way, if not the latter, why the former?

Text Copyright John L. Welch 2007.

TTAB Dismisses "SPAM ARREST" Cancellation Petition

Readers may recall that the final hearing in the SPAM ARREST cancellation proceeding was held in New York City in February 2007 at PLI's annual conference on TTAB practice. The Seattle Trademark Lawyer blog reported on the oral argument (here), and yesterday reported on the outcome (here ). In a 63-page decision, the TTAB dismissed Hormel's petition for cancellation of a registration for the mark SPAM ARREST for "computer software, namely software designed to eliminate unsolicited commercial electronic mail," finding that Hormel had failed to prove its pleaded grounds of likelihood of confusion and dilution vis-à-vis its famous mark SPAM. Hormel Foods Corp. v. Spam Arrest, LLC, Cancellation No. 92042134 (November 21, 2007) [not precedential].


Likelihood of Confusion: Respondent Spam Arrest conceded the fame of the SPAM mark for purposes of Section 2(d), and also conceded that Hormel owns a family of SPAM marks. It was also undisputed, however, that "spam" is a generic term for unsolicited commercial e-mail. "This dichotomy between the fame of petitioner's trademark and the generic meaning of the same term" was crucial to the Board's 2(d) determination.

"because the word 'spam' in respondent's mark will be viewed as having its generic meaning of unsolicited commercial electronic mail, the marks as a whole are different in connotation and commercial impression."

Although the Board gave "great weight" to the fame of the SPAM mark, "that fame does not extend to computer software."

"Simply put, the scope of protection of petitioner's mark, while extremely broad, does not extend to prevent the use of SPAM ARREST for spam filtering software, since consumers will understand SPAM as used in respondent's mark in its generic sense rather than as referring to petitioner's mark(s)."

Dilution: The Board found that Hormel had proven its mark SPAM to be famous for canned meat, for purposes of its dilution claim. However, Hormel failed to prove that its mark is "distinctive" -- i.e., "that the mark has become the principal meaning of the word."

"The evidence shows that 'spam,' in addition to being petitioner's trademark, has a well-recognized meaning as a generic term for unsolicited commercial e-mail .... Thus it does not have the requisite degree of distinctiveness to support a finding of dilution, at least vis-à-vis respondent's use of the term as part of the mark SPAM ARREST for computer software designed to eliminate unsolicited commercial email."

The Board also found that Hormel failed to prove that the involved marks are "essentially the same," as required by Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001), since the marks differ in connotation and commercial impression.

In assessing Hormel's dilution by blurring claim, the Board considered the results of a mall intercept survey. It found the survey report's calculation that "for 44.7% of survey respondents SPAM ARREST brought to mind petitioner or its meat products is not as impressive as it would appear from the conclusion of the report." The number of respondents was "quite small" and the results of a mall survey are not "projectible" because a mall survey "does not use a random sample of the population whose views are sought." It was not clear that the participants constituted the relevant group of purchasers, and the questions asked were questionable. These and other concerns led the Board to conclude that the survey was of "little probative value." Hence, the expert testimony based on those survey results was likewise of little value.

Hormel's dilution by tarnishment claim was given short shrift, being based on a few Internet postings dissing Respondent's software.

In a concurring opinion, Judge Rogers delivered a few more swift kicks to Hormel's survey evidence.

And so, Hormel's petition for cancellation was scraped off the Board's plate and deposited in the trash can.

TTABlog comment: I suspect that few people were expecting a different result. One has to wonder why the decision was not deemed precedential, since the famous-yet-generic dichotomy seems to be an issue of first impression with the Board. My guess is that, with the detailed commentary on Petitioner's survey, the Board did not want to elevate those comments to binding status.

One point that caught my skeptical eye was the Board's treatment of the issue of whether , under the pre-2006 anti-dilution act, actual or likely dilution is the TTAB test when the challenged mark is already in use, The Board had never answered that question, but in footnote 31, it quickly brushed off Respondent's attempt to raise that issue. Rather than discuss the matter, the Board baldly states that "the standard applicable in TTAB proceedings both prior to and after the amendment of the Act was and is likelihood of dilution, whether or not the mark is in use." Oh well, it wouldn't have affected the outcome here anyway.

Text Copyright John L. Welch 2007.

TTAB Finds "QUESTIONARY" and "PICTIONARY" Confusingly Similar for Board Games

In a less than convincing decision, the Board sustained a Section 2(d) opposition to registration of the mark QUESTIONARY THE GAME OF SMART QUESTIONS in the form shown immediately below, for "board games" [GAME disclaimed], finding the mark likely to cause confusion with the registered mark PICTIONARY for "equipment sold as a unit for playing a board game." Pictionary Inc. v. Spark Games LLC, Opposition No. 91167236 (November 16, 2007) [not precedential]. [Reconsideration denied (here)].


The Board began by rejecting as inadequately supported Opposer's claim that the mark PICTIONARY has become famous. The panel did, however, find that PICTIONARY is a strong mark in the field of board games, "which accords it a commensurate higher level of protection."

As to the goods, the Board found them to be legally identical, and presumed (as it must) that they travel in the same channels of trade to the same classes of customers.

As to the marks, the Board first noted that when goods are identical, "the degree of similarity [between the marks] necessary to support a conclusion of likely confusion declines."

Applicant argued that QUESTIONARY is a real word, whereas PICTIONARY is "a made up word." It urged that the only point of similarity between the marks is the "generic" and weak suffix "TIONARY."


The Board, however, found that the points of similarity outweighed the dissimilarities. Concluding that QUESTIONARY is the dominant element in Applicant's mark, the Board found that "the identical sound and appearance of the suffix presents a similarity sufficient to create a likelihood of confusion."

"both marks evoke the word 'dictionary' and, consequently, the use of words in these games of inquiry. Taking into consideration the strength of opposer's mark, we conclude that the parties marks are substantially similar."

The existence of three third-party registrations (CONSTRUCTIONARY, DICKTIONARY, and EMOTIONARY) for board games was noted by the Board, but was insufficient to convince the Board that consumers would disregard the suffix and rely on the prefix to distinguish the marks.

To the extent that the Board had any doubt about the likelihood of confusion, it resolved that doubt, as required, in favor of the prior registrant.

TTABlog comment: Opposer did not register the phantom mark "*TIONARY," where the asterisk may be replaced by any prefix. It registered (and used) the mark PICTIONARY. In my mind, QUESTIONARY and PICTIONARY are clearly distinguishable. The fact that both evoke the word dictionary is a big "so what?" as far as I'm concerned. CONSTRUCTIONARY, DICKTIONARY, and EMOTIONARY were all registered over the PICTIONARY registration. Why should QUESTIONARY not get the same favorable treatment?

Text Copyright John L. Welch 2007.

Bose Wins 2(d) "WAVE" Opposition Despite Losing One Registration to Applicant's Fraud Claim

Frequent TTAB litigant Bose Corporation lost the fraud battle but won the war in its Section 2(d) opposition to registration of the mark HEXAWAVE for various electronic devices, including amplifiers and tuners. The Board sustained Applicant Hexawave's fraud claim as to one of Bose's pleaded registrations, but denied Bose's own feeble fraud claim. The Board then went on to find the HEXAWAVE mark likely to cause confusion with Bose's famous WAVE and ACOUSTIC WAVE marks for radios, loudspeakers, and music systems that include amplifiers and tuners. Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (TTAB 2007) [not precedential].


Fraud: The claim of fraud against Bose centered on the renewal in 2001 of its registration for the mark WAVE for "radios, clock radios, audio tape recorders and players, portable radio and cassette recorder combinations, compact stereo systems and portable compact disc players." Bose acknowledged that it stopped manufacturing and selling audio tape recorders and players in 1996-97. Nonetheless, Bose did not delete those goods from the registration when it filed for renewal. It contended that the renewal was proper since it "continued to use its mark on the goods because owners of audio tape recorders and players continue to send their previously purchased goods to opposer for repair services and upon completion of the repair services opposer 'transports' them back to the owner." Bose also acknowledged that it did not re-label or make any alteration to the products, apart from the technical repair.

The Board noted that Bose offered no case support for its theory that "transporting" a product back to its owner after repair constitutes use of a trademark on the product as contemplated by Section 45 of the Trademark Act.

The Board pointed out that a sale of goods is not necessary to establish trademark use; shipment of samples and prototypes may suffice. However, the entity causing the shipment must be the owner of the goods at the time of transportation. Here, "the scenario presented by opposer does not constitute use sufficient to maintain a registration for goods."

The question then became "whether it was reasonable for opposer to believe that it did." The Board found that it was not, because Bose "could not point to case law that supports" its interpretation of the statute.

"[W]e do not find it reasonable to believe that an application of a mark at some point in the past to goods which have been sold, still serves to constitute use when those goods, now owned by another, are subsequently shipped again in connection with a repair service."

The Board therefore found that Bose committed fraud in maintaining its registration. [It added that if Bose should prevail on appeal, the registration would in any event require restriction to delete audio tape recorders and players]. The Board noted that Bose was still entitled to rely on its common law rights in the mark of the now-cancelled registration.

Bose's allegation of fraud was based on the claim that Applicant was not using its mark on all the goods listing in its application when Applicant filed a declaration attesting to use of the mark. Bose relied on a single interrogatory answer and a response to one document request. The Board found, however, that Bose's claim was groundless because Applicant did not say that it was not using the mark on the goods. Thus Bose failed to prove its fraud claim by the required clear and convincing evidence. [TTABlog note: another feeble fraud claim made by Bose, based on a single interrogatory response, was rejected earlier this year in Bose Corp. v. Custom Electronic Design & Installation Ass'n, Cancellation No. 92042327 (April 30, 2007) [not precedential], blogged here.]

Likelihood of Confusion: The Board began its Section 2(d) analysis by ruling that Bose's WAVE and ACOUSTIC WAVE marks are famous for radios, loudspeakers, and music systems that include amplifiers and tuners.

As to the goods, Applicant argued that its products are internal electronic components, but the identification of goods in the opposed application was not so limited. The term "amplifier" must be read to include all kinds of amplifiers, and the term "tuner" includes radio tuners. Both amplifiers and tuners are integral parts of opposer's loudspeaker and music systems. Therefore, the Board ruled, Applicant's goods are related to Bose's goods. And it further ruled that the goods of the parties must be assumed to travel in the same channels of trade to the same class of purchasers.

As to the marks, the Board found that the term WAVE "creates a similar commercial impression and evokes a similar connotation, at a minimum, when used in connection with amplifiers." Applicant's argument that the word "wave" is weak and suggestive went nowhere; "any perceived weakness due to suggestiveness is outweighed by the fame of the marks."

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

TTABlog comment: Given Bose's track record, one may expect an appeal in this one. The ruling against Bose on the fraud issue seems particularly precarious. There may have been no case law that supported Bose's position on the use issue, but there didn't seem to be any case law directly against Bose's position either. So didn't the Board go a bit overboard in finding this to be fraud?

Text Copyright John L. Welch 2007.

Distributor, Not Manufacturer, Owns "VISAGRAPH" Mark, Says TTAB

The issue of ownership of a mark, as between the manufacturer and the exclusive distributor of a product, is "a matter of agreement between them, and in the absence of an agreement, there is a legal presumption that the manufacturer is the owner of the mark." But in a recently-decided opposition, the facts clearly established that the distributor is the owner of the mark VISAGRAPH for eye movement recording devices. Compevo AB v. Taylor Associates Communications, Inc., Opposition No. 91161524 (October 24, 2007) [not precedential]. [TTABlog note: Curiously, the Board throughout its opinion refers to the mark as VISIGRAPH rather than the correct VISAGRAPH].


Opposer Compevo AB, a Swedish corporation appearing pro se, challenged Applicant Taylor's right to register the mark, pointing to Compevo's sale of products worldwide under the VISAGRAPH mark beginning in 1995.

The Board, however, sided with Applicant Taylor, finding that:

1. "Applicant had preexisting rights to the VISAGRAPH mark before it contracted with opposer to purchase opposer's eye movement recording device. Thus, applicant had established goodwill in the VISAGRAPH trademark before purchasing products from opposer;
2. Opposer affixed the VISAGRAPH mark to the eye movement recording device at the request of applicant;
3. Opposer sold the VISAGRAPH eye movement recording device in the United States solely to applicant; and
4. Applicant markets the VISAGRAPH eye movement recording device under its own trademark as applicant's VISAGRAPH eye movement recording device. Thus, the relevant consumers associate the VISAGRAPH eye movement recording device with applicant. The statement on the packaging that identify [sic] opposer as the manufacturer and applicant as the distributor does not overcome applicant's marketing efforts to identify applicant as the source of the VISAGRAPH eye movement recording device."

Based on the evidence, the Board was convinced that the parties "were operating with the understanding that applicant was the owner of the VISAGRAPH mark." [TTABlog query: is the understanding of the parties that important? Isn't the understanding of the consuming public the paramount issue?]

The Board therefore dismissed the opposition.

TTABlog note: For a comprehensive discussion of the issue of ownership of a trademark in various scenarios, see Pamela S. Chestek's article, "Who Owns the Mark? A Single Framework for Resolving Trademark Disputes", in the May-June 2006 Trademark Reporter (pdf here).

Another thank you to The Trademark Reporter for granting permission to provide a link to this article, which is Copyright © 2006 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 96 TMR 681 (May-June 2006).

Text Copyright John L. Welch 2007.

"MONSTER" Mistake: 2(d) Opposer Fails to Get Registrations Into Record, Loses on Priority

The recent TTAB Rule changes came a bit too late to save Opposer Monster Cable. The Board dismissed its opposition to registration of the mark MONSTER in the design form shown below, for "multi-purpose steam cleaners for domestic use," because Opposer failed to make properly of record any of its 50 registrations. Monster Cable Prods., Inc. v. Euroflex S.R.L., Opposition No. 91161150 (October 24, 2007) [not precedential].


Rule 2.122(d) was amended, effective August 31, 2007, to allow a party to submit its pleaded registration in the form of photocopies from the PTO TARR and assignment databases, attached to its original pleading. However, that change applied only to proceedings commenced on or after that date. Thus Opposer Monster was subject to the old rule, which required either status-and-title copies or live testimony as to ownership and status of the registrations.

Monster submitted, as exhibits during its testimony period, plain photocopies of its registrations. Unfortunately, its accompanying testimony failed to establish ownership or validity. Monster's witness "was simply asked to identify the mark and indicate as to each whether the mark is still in use."

Although Applicant Euroflex did not attend the deposition, the Board ruled that it did not waive its objection by failing to object at the time of the testimony. In contrast, Applicant did waive its objection to certain website evidence for lack of authentication because, had it objected at the deposition, Opposer could have cured the deficiency. In the latter case, "opposer had a reasonable expectation that the evidence was properly of record." As to the registrations, however, "opposer may not reasonably presume evidence is of record when that evidence is not offered in accordance with the Trademark Rules."

Of course, Monster still could have relied on its common law rights, but the testimony of its witness was limited to the current use of its marks, with no testimony as to when the marks were first used or whether they were used prior to the filing date of the opposed application.

Ruling that Monster had failed to introduce properly any evidence that its marks were used prior to Applicant's filing date, the Board dismissed the opposition for lack of proof of standing.

TTABlog comment: It is simply amazing how often parties fail to follow the Rules in introducing pleaded registrations into evidence. Will the amended Rule 2.122(d) eliminate the problem? All one has to do is attach to the initial pleading a photocopy of the TARR and assignment database printouts for each pleaded registrations. No need to order a status-and-title copy of the registration.

I suggest, however, that the problem will not go away completely. Some parties will undoubtedly submit a photocopy of the registration certificate, rather than the corresponding TARR and assignment database printouts. or the will submit a TESS printout, without the assignment page. As a result, they will find themselves in the same boat as Monster, foundering on the rocks of Rule 2.122(d).

Text Copyright John L. Welch 2007.

"SPRITE QUENCH" Not Confusingly Similar to "QUENCH" for Beverages, Says TTAB

Finding the word "quench" to be a weak formative in view of nine third-party registrations (in addition to the registrations cited by the Examining Attorney), the Board reversed a Section 2(d) refusal to register SPRITE QUENCH for various beverages, finding the mark not likely to cause confusion with the registered marks QUENCH (in various design forms), DIET QUENCH, and QWENCH for soft drinks. In re The Coca-Cola Co., Serial No. 78449413 (October 29, 2006) [not precedential].


In support of its argument that "quench" is a weak term when used in connection with beverages, Applicant submitted dictionary definitions of "quench," nine third-party registration for marks including the word QUENCH for beverages and syrups, a trademark search report listing 54 state registrations for marks incorporating the words "quench" or "quencher" for beverages, and 156 LEXIS/NEXIS articles using the term "quench" as a suggestive or descriptive term for beverages.

The Board found that the marks are "more dissimilar than similar."

"In terms of overall commercial impression, we find that although the word 'quench' is the dominant element in the registrants' marks, in applicant's mark it contributes relatively less to the commercial impression than applicant's arbitrary SPRITE portion of the mark."

The Board noted that usually "when a mark of one party completely encompasses that of another on related or identical goods there will be a likelihood of confusion." However, where the common elements are descriptive or suggestive, there may be no likelihood of confusion. Here, the Board ruled that "consumers will be able to distinguish among the various 'Quench' marks by looking to other elements of the marks.

Text Copyright John L. Welch 2007.

Panoramic Photo Stitched Together with "AUTOSTITCH" Software

While in New Mexico last week, I decided to take three photos to be stitched together with the AUTOSTITCH software program, which was the subject of the case TTABlogged here. The photos were taken in the Pecos National Historical Park, east of Santa Fe. Here's the stitched photo (click on it for a larger image):

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Finding Cheese and Olives Related, TTAB Affirms 2(d) Refusal of "NAPOLEON BRIE"

The mark NAPOLEON BRIE for cheese [BRIE disclaimed] met its Waterloo not in Iowa or Illinois, but at the TTAB. The Board, relying primarily on third-party registration evidence to show the relatedness of the goods, affirmed a Section 2(d) refusal in view of the registered mark NAPOLEON for "edible oils, namely, salad oil, olive oil processed vegetables, namely, cocktail onions, baby corn, stir-fry vegetables, hearts of palm, artichokes; processed seafood, namely, anchovies, oysters, mussels and sardines; and processed olives, vinegar, capers and pasta." In re Cheezwhse.com, Inc., Serial Nos. 78711311 and 78730624 (October 29, 2007) [not precedential].


Applicant Cheezwhse.com sought to register the mark NAPOLEON BRIE in both standard character form and in the design form shown immediately above. Examining Attorney Tasneem Hussain argued that the word NAPOLEON dominates all of the marks since the word "BRIE" is disclaimed, and that the depiction of Napoleon on a horse reinforces that dominance. As to the goods, the Examining Attorney submitted ten third-party registrations "for marks for goods that include cheese and many or all of the registrant’s identified goods," as well as two websites that provide recipes using cheese and one or more of Registrant's goods, and a third website offering "gift tins, with the featured tin including 'brie cheese' and 'gourmet olives.'"

Applicant feebly argued that purchasers of brie are "sophisticated" [although it failed to prove such sophistication, and furthermore ignored that its application is not limited to brie], that the goods would not be sold in proximity even if sold in the same store, and that the word BRIE distinguishes the marks.

The Board agreed with the Examining Attorney, finding the word marks to be substantially similar, and the word mark NAPOLEON and the applied-for design mark to be "more similar than dissimilar." As to the goods, the third-party registrations "have some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988)."

"Additionally, the recipes in evidence show that several of the goods in the cited registrations are ingredients which can be used together with cheese in cooking; and the website offering gift tins shows that brie cheese and olives are sold together and we assume they may be served together."

Finally, the Board found that the involved goods are likely to be purchased in the same retail outlets "by purchasers encompassing all levels of sophistication."

Weighing all the relevant du Pont factors, the Board found confusion likely, and therefore affirmed the refusal to register.

TTABlog comment: Ok, I have many times railed against the use of third-party registration evidence to prove relatedness of goods. Couldn't the Examining Attorney have found a few websites showing the relevant goods actually being offered under the same mark? And what's the value of recipes? Eggs and peanut butter may be used in the same recipe (for peanut butter cookies?), so does that make them related for Section 2(d) purposes? And so what if cheese and olives are found in the same "gift tin?" The Board even noted that it was unclear that the cheese and the olives in the tin bore the same mark. No wonder Napoleon is depicted rearing up on his high horse. I don't blame him.

Query: what if the design mark had depicted Napoleon Dynamite instead of Napoleon Bonaparte?

Text Copyright John L. Welch 2007.

New York Fails to Prove Standing and Priority, TTAB Dismisses "I ♥ NY" Opposition to "I ♥ SB"

It's déjà vu all over again. In another Section 2(d) confrontation involving the familiar I ♥ NY logo, the State of New York again failed to make its evidence properly of record, and it therefore lost its opposition to registration of the mark I ♥ SB (in the form shown below) for the service of "promoting Santa Barbara, California as a place to live and visit and the economic development thereof." Without its evidence, New York did not establish standing and priority as to its registered I ♥ NY mark for travel and tourism promotion. New York State Dept. of Economic Development v. I Love Santa Barbara, Inc., Opposition No. 91165648 (October 31, 2007) [not precedential].


New York suffered a similar fate earlier this year in an unsuccessful opposition to registration of I ♥ NC for clothing. [TTABlogged here]. In fact, the evidentiary problems that it encountered in that case "are virtually identical" to the ones encountered here.

New York submitted "soft" copies of its pleaded registrations, rather than the required status-and-title copies. [As of August 31, 2007, ordinary photocopies from the PTO database are sufficient under Rule 2.122(d), but that new rule applies only to proceedings commenced on or after that date]. Therefore, the Board ruled that the registrations were not of record. The Board's ruling on that issue seems particularly harsh since the Applicant, in its answer to the Notice of Opposition, stated that it "does not deny" that Opposer "obtained" its pleaded registrations, and that opposer's registrations are prima facie evidence of the validity of the registered marks and of opposer's exclusive right to use them. According to the Board, those statements by Applicant "did not relieve opposer of its burden of proof relative to standing."


Opposer did not take testimony, but instead tried to submit its evidence by way of Notice of Reliance. Bad idea. Website printouts, declarations, photo prints of purported licensed products, copies of license agreements, a storyboard for a television commercial, a listing of advertising expenditures, copies of licensee catalogues, applicant's responses to Opposer's document requests -- all were inadmissible by way of Notice of Reliance. Opposer managed to get an excerpt from a book, a newspaper article, and Applicant's interrogatory responses into the record, but that scanty evidence was not sufficient to prove standing or priority on the part of Opposer.

Strangely, Opposer was on notice of the deficiencies in its evidence when the Board denied its summary judgment motion, stating that "opposer did not submit sufficient evidence of its ownership of its pleaded registrations." Nonetheless, Opposer made no change in course.

Text Copyright John L. Welch 2007.

Proposed PTO Rule Change Would Require Description of All Non-Standard Character Marks

In a Notice published in the October 25 Federal Register, the USPTO is proposing to amend the Trademark Rules to require a description of the mark in all applications seeking registration of a mark that is not in standard characters form.


Under current practice, a description of the mark "may be included in the application and must be included if required by the trademark examining attorney." Rule 2.37.

"Because the USPTO has concluded that the description contributes to the accuracy of design coding and pseudo-mark determinations that are made before the application reaches the examining attorney, and ultimately to more complete searches, the USPTO proposes a rule change to facilitate initial design coding and to make available a description of the mark in all files where it is likely to be useful."

Comments on this proposed change must be received by the PTO by December 24, 2007 to receive consideration.
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TTAB Says Amendment of Mark from "BARMACHÉ" to "BARMARCHÉ" is Material Alteration

What a difference an "R" makes! Applicant Spring Cafe Realty LLC left out an "R" and consequently cannot use the "®." It misspelled its mark on its drawing page as "BARMACHÉ" rather than the correct "BARMARCHÉ." Its specimen of use displayed the mark correctly. When it attempted to correct the drawing via preliminary amendment, the PTO refused, maintaining that the correction would materially alter the applied-for mark in violation of Rule 2.72. The Board agreed with the PTO and affirmed the refusal. In re Spring Café Realty LLC, Serial No. 78536106 (October 29, 2007) [not precedential].


Rule 2.52 states that the "drawing depicts the mark sought to be registered." Under Rule 2.72, an applicant may amend the drawing only if the specimen originally filed supports the proposed amendment and the amendment does not materially alter the mark.

According to the Board's decision in In re Who? Vision Systems, Inc., 57 USPQ2d 1211, 1217-18 (TTAB 2000), "the modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark." [emphasis in original]. In Who? Vision the Board affirmed a refusal to permit amendment of the mark TACILESENSE to TACTILESENSE.

Here, the original specimens supported the proposed amendment but "the mark in the proposed amendment is a material alteration of the mark depicted in the drawing."

"Changing BARMACHÉ to BARMARCHÉ changes the commercial impression and meaning of the mark. *** The inclusion of MARCHÉ in BARMARCHÉ suggests that applicant's establishment in which it provides its restaurant and catering services has a market component. Thus, even though BARMACHÉ and BARMARCHÉ both have BAR as their initial components, we find that the commercial impression of BARMACHÉ is not essentially the same as the commercial impression of BARMARCHÉ."

The Board noted that it made no difference that Applicant sought amendment before the PTO had examined the mark. Examining Attorney Erin M. Falk correctly rejected the amendment to the mark, and she properly required that Applicant submit new specimens that agreed with the drawing.

The Board therefore affirmed the refusal to register.

TTABlog comment: Compare the Board's ruling in this case with its more lenient treatment of a post-registration amendment of the AQUA STOP mark, in a recent precedential decision here.

Text Copyright John L. Welch 2007.

Precedential No. 63: "Park Trailers" Sufficiently Definite for Identification of Goods

The Board reversed a refusal to register the mark CHATEAU RESORT for "park trailers," ruling that the the term "park trailers" is sufficiently definite to satisfy Lanham Act Section 1(b)(2). In re Thor Tech, Inc., 85 USPQ2d 1474 (TTAB 2007) [precedential].


Section 1(b)(2) requires that an application "include specification ... of the goods." Applicant Thor Tech filed two applications identifying its goods as "park trailers." In each case, an office action required amendment of the identification, contending that "park trailers" was overly broad. Applicant responded similarly in each case. One Examining Attorney accepted the original identification, and that application issued to registration [for the mark CITATION RESORT, specimen of use shown above)]. The other Examining Attorney (here) continued the requirement.

Thor Tech submitted excerpts from third-party publications, an industry association webpage, and copies of state laws, in showing that "'park trailers' is a term of art readily understood by the consuming public to indicate a type of recreational vehicle." Applicant also submitted copies of four trademark registrations that include the term "park trailers" in their identifications of goods.

The Examining Attorney argued that park trailers "may be used as travel trailers or as mobile homes" and that because travel trailers fall in class 12 and mobile homes in class 19, the term "park trailers" is "insufficient to allow proper classification."

The Board referred to TMEP Section 1402.1(a) in pointing out that the USPTO has discretion regarding the degree of particularity needed in order to clearly identify the goods in an application. That discretion is exercised within certain parameters: the identification will be acceptable if it (1) describes the goods "so that an English speaker could understand what the goods ... are, even if the grammar or phrasing is not optimal," (2) meets the standards (not necessarily the language) of the Acceptable Identification of Goods and Services Manual, (3) is not a class heading, and (4) is in the correct class.

The Board sided with Thor Tech, concluding that Applicant's evidence showed "park trailer" to be known in the field and to consumers as a designation for a type of recreational vehicle. A "mobile home," on the other hand, is defined as a large trailer that can be installed on a relatively permanent site and that is used as a residence. The definition does not refer to a mobile home as a "vehicle," whereas park trailers are always referred to as recreational vehicles; moreover, they are not considered to be primary residences. Consequently, the Board ruled that the term "park trailers" is sufficiently definite for application purposes.

Finally, the Board distinguished this case from the recent OMEGA decision (TTABlogged here), in which the term "chronographs," as conceded by that applicant, encompassed goods in two classes.

The Board therefore reversed the refusal to register.

Text Copyright John L. Welch 2007.

Return of the "Leo Stoller" Blog

Leo Stoller's blog has returned after a brief interruption. His new blog, still elegantly and imaginatively called "Leo Stoller," may be found here. I guess I'll have to work on a follow-up to "Where Has Leo Stoller Gone?"

Precedential No. 62: TTAB Affirms Surname Refusal of "VOSE & SONS" for Pianos

In what we will count as the 62nd precedential decision of 2007, the Board has re-designated as "precedential" its decision in In re Piano Factory Group, Inc., 85 USPQ2d (TTAB 2006) [precedential], wherein the mark VOSE & SONS was deemed to be primarily merely a surname under Section 2(e)(4).


Examining Attorney Esther A. Belenker established a prima facie case under Section 2(e)(4) with the following evidence: a PhoneDisk database search showing 838 separate residential listing for individuals with the surname VOSE; 93 LEXIS/NEXIS stories about people named VOSE; and Internet search results showing thousands of hits for the name VOSE. The Board agreed with the PTO that the addition of the words "& SONS" does not detract from the surname significance of VOSE, but in fact strengthens it.

Applicant advanced two principal arguments: (1) that James Whiting Vose is an historical figure in the field of piano-making and, like the name SOUSA, the term VOSE would be seen as a reference to that person and not primarily as a surname; and (2) the fact that VOSE & SONS was at one time registered for pianos on the Principal Register demonstrates the registrability of the mark.

As to the historical figure argument, the Board found "no evidence that the name VOSE is, in fact, the name of any widely-known historical figure."

"Decisions concerning historical names generally draw a line between names which are so widely recognized that they are almost exclusively associated with a specific historical figure and are thus not considered primarily a surname *** [e.g., DAVINCI] and names which are only semi-historical in character and thus can be perceived as primarily merely a surname *** [e.g., ROTHSCHILD and McKINLEY]."

As to the prior registration of VOSE & SONS (owned by a different entity), the Board pointed out that this "does not justify registration in light of the substantial evidence herein as to the primary significance of the term 'VOSE' as a surname."

The Board therefore affirmed the refusal to register.

TTABlog comment: As to the historical figure issue, should the Board have focused on whether Mr. Vose is well-known vis-a-vis pianos, rather than well-known generally? See, e.g., the Board's 2004 decision in favor of registrability of MOSCONI for billiard equipment (TTABlogged here), and this year's refusal of WATSON for laboratory software (here).

Text Copyright John L. Welch 2007.

Where Has Leo Stoller Gone?

Just when I thought I could take a day off from the blog, a big story hits: Leo Stoller's blog is gone! Disappeared! Kaput! That's too bad, because it was a quasi-reliable source of amusement. Anyway, this development got me thinking about a new song for the TTABlog Songbook. It's called "Where Has Leo Stoller Gone?" and it's sung to the tune of "Where Have All The Flowers Gone?"

Where Has Leo Stoller Gone?
Where has Leo Stoller gone?
Erstwhile blogger.
Where has Leo Stoller gone?
Sans portfolio.
Where has Leo Stoller gone?
Gone to rent some marks? Oh no!
When will he ever learn?
When will he ever learn?

Where have Leo's trademarks gone?
TERMINATOR?
Where have Leo's trademarks gone?
AIRFRAME and STEALTH?
Where have Leo's trademarks gone?
To Lance Johnson, every one.
When will he ever learn?
When will he ever learn?

Where have Lance's trademarks gone?
He's our hero!
Where have Lance's trademarks gone?
SPTA
Where have Lance's trademarks gone?
Up for grabs now, every one.
When will we ever learn?
When will we ever learn?

TTABlog Celebrates Third Anniversary

I am celebrating the third anniversary of the TTABlog by not blogging. I'm in Albuquerque anyway, so that's another reason.


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TTABlog Report: Leo Stoller 2007 Update

On this, the last day of the TTABlog's third year of operation, what better way to close out the blogging year than to provide an update on the activities of Mr. Leo Stoller, erstwhile TTAB litigant and self-proclaimed trademark expert? The U.S. Court of Appeals for the Seventh Circuit recently proclaimed that "were there a Hall of Fame for hyperactive trademark litigators, Stoller would be in it." Listed below are this year's Stoller-related TTABlog postings, in chronological order. As I previously observed, it looks like the golden days are over for lying in Stealth.

Leo Stoller

• Google Sues Leo Stoller's Companies for RICO violations
• Chicago Judge Enters Permanent Injunction in Google RICO Action Against Stoller Companies
• USPTO Receives Court Order to Cancel 34 "STEALTH" Registrations Owned by Stoller's Company
  
• Chicago Federal Court Issues Order Restraining Leo Stoller's Filing of New Lawsuits
• No Joy in Leoville: PTO Cancels 34 "STEALTH" Registrations
• Stoller Strikes Out: 7th Circuit Affirms Brett Brothers Non-Infringement Ruling
• Court Approves Sale of Leo Stoller Trademark Assets to the Society for the Prevention of Trademark Abuse, LLC
  
• Letter from SPTA Provides More Detail re Leo Stoller Asset Sale
• Sale of Stoller Trademark Assets to SPTA is Completed

George Brett
Text Copyright John L. Welch 2007.

TTAB Finds "THE CHIPPER TRAVEL SERIES" and "CHIPPER CHAT" Confusingly Similar for Children's Recordings and Board Games

Chipper the worldly traveling squirrel ran into a serious roadblock at the PTO. The Board affirmed a refusal to register the mark THE CHIPPER TRAVEL SERIES for recordings featuring stories for children and for children's books ["TRAVEL SERIES" disclaimed], finding the mark likely to cause confusion with the registered mark CHIPPER CHAT for "teaching and motivational aids in the nature of a game that consists of magnetic chips, magnetic wand, and game boards for use by the general public, public and private teachers, [and] health professionals or therapists." In re Rach, Serial No. 78811345 (October 17, 2007) [not precedential].


Applicant Stephanie Rach conceded that board games and books, CD's, and DVD's are related goods. Therefore, the Board focused on the marks.

Applicant argued that the mark CHIPPER CHAT suggests a board game played with chips and involving chatting or talking. On the other hand, she contended, her mark suggests a group of recordings featuring "the travels of someone named 'CHIPPER,' in this case a squirrel." Ergo, the marks are not confusingly similar, she urged.

Examining Attorney Mark Rademacher, however, maintained that in both marks the word "chipper" primarily suggests cheerfulness or liveliness. The fact that CHIPPER may be the name of a squirrel does not alter that meaning. "Squirrels are generally thought of as having these traits."


The Board found the issue to be a "close one," but it noted that it would be improper to limit or restrict the goods in the opposed application to goods "which have as their central character or subject matter a globe-trotting squirrel named 'Chipper.' Rather, such goods must at the very least be regarded as including books and recordings on a wide variety of travel topics." Similarly, the registered goods must be considered as "encompassing, inter alia, a game which involves travel-related themes."

Website evidence showed "the same character name mark [being] used in connection with games for children as well as children's books (including sound books), videos and DVD's." Thus even consumers familiar with the squirrel character might assume that registrant's motivational games marketed under the CHIPPER CHAT brand name feature that same character and hence emanate from the same source.

Resolving any doubt in favor of the registrant, the Board affirmed the Section 2(d) refusal.

TTABlog comment: Did the the Board give too little weight to the double meaning of "chipper" in registrant's goods -- i.e., it does refer to the use of "chips" in playing the game. Isn't this a case where the applied-for mark should be passed to publication so that the registrant, if concerned, may oppose? Or would that be an abdication by the Board of its responsibility?

Text Copyright John L. Welch 2007.

TTAB Says "CLASSIC COLLECTION" Not Merely Descriptive of Cigars

Punningly perceiving the term "classic collection" as "mere puffery," the Board reversed refusals to register the marks CLASSIC COLLECTION and MONTECRISTO CLASSIC COLLECTION for "cigars, little cigars, roll-your-own tobacco, pipe tobacco and smokeless tobacco" in International Class 34. In re Cuban Cigar Brands, N.V., Serial Nos. 7855795 and 78554967 (October 19, 2007) [not precedential].


The Examining Attorney relied on dictionary definitions and NEXIS excerpts in arguing that "classic" means "of a well-known type" and "collection" means "grouped together." Applicant asserted that the words do not describe its goods with any particularity, and that the phrase is "so broad and amorphous" that it cannot be deemed descriptive.

The Board agreed with Applicant, finding "classic collection," when applied to Applicant's goods, to be "suggestive and more in the nature of mere puffery as opposed to being merely descriptive."

"the words 'classic' and/or 'collection' do not appear to have any particular meaning in the trade for tobacco products. Our view remains that neither the individual words 'classic' and 'collection,' nor the combination 'classic collection' impart information about applicant’s tobacco products with any degree of particularity."

Resolving any doubt in Applicant's favor, the Board reversed the refusal to register CLASSIC COLLECTION, and overruled the PTO's requirement that Applicant disclaim that phrase in the other mark.

Text Copyright John L. Welch 2007.

TTAB Begins Issuing "Institution Orders" Under New Rules

The TTAB has issued its first "Institution Orders" under the new TTAB Rules, which went into effect yesterday, November 1st. A sample Institution Order may be found here, from Opposition No. 91180507, which was filed on November 1st.


The Order is four pages in length, and sets out not only the dates for opening and closing of discovery and the dates for the testimony periods, but also the (new) discovery conference deadline date, and the (new) due dates for initial disclosures, expert disclosures, and pre-trial disclosures.


The Institution Order includes two paragraphs regarding the discovery conference, pointing out the subjects to be discussed and reminding the parties that Board participation may be requested.

The Notice of Opposition in Opposition No. 91180507, includes a certificate of service by first-class mail upon the Applicant itself at the address listed in the TARR database. Applicant did not have an attorney listed.

Text Copyright John L. Welch 2007.

TTAB Posts November 2007 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled five hearings for the month of November, 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.


November 6, 2007 - 2 PM: In re Rally Mfg., Inc., Serial No. 78576416 [Section 2(d) refusal to register DURA GUARD for "floor mats for land vehicles" on the ground of likely confusion with the mark DURAGUARD, registered for "semi-fitted and fitted covers for vehicles"].

November 15, 2007 - 10 AM: Univ. of Southern California v. Univ. of South Carolina, Opposition No. 91125615 [Section 2(d) opposition to registration of a stylized SC mark for clothing, based upon Opposer's prior use and registration of the mark SC for clothing and other goods].


November 15, 2007 - 2 PM: Bass Pro Trademarks, L.L.C. v. Sportsman's Warehouse, Inc., Cancellation No. 92045000 [Petition for cancellation of a registration for the mark shown immediately below for "Retail stores featuring hunting supplies, fishing supplies, camping supplies, reloading supplies, outerwear clothing and footwear" on the ground of likelihood of confusion with Petitioner's mark (shown second below) for "retail stores featuring clothing, fishing supplies and sporting goods," and on the ground of fraud. Respondent asserts the affirmative defense of laches.]



November 20, 2007 - 10 AM: In re Honda Motor Co., Ltd., Serial No. 78514746 [Section 2(d) refusal to register the mark RL for "automobiles and structural parts thereof" in view of the mark RL-CLASS registered for and RL-CLASS for "automobiles and their structural parts"].

November 29, 2007 - 10 AM: Prairie Island Indian Community v. Mirage Resorts, Inc., Opposition No. 91115866, Cancellations Nos. 92028126 et al. [Section 2(d) opposition and cancellations regarding the mark TREASURE ISLAND and variations thereof for casino services, hotel services, clothing, and other goods, based upon Petitioner's alleged prior use of the mark TREASURE ISLAND for casino services].

Text Copyright John L. Welch 2007.