The TTABlog<sup>®</sup>: December 2007

TTABlog Quarterly Index: October - December 2007

This past quarter saw many of the TTAB Rule changes go into effect, although reportedly the first discovery conference with Board participation will not occur until January 2008. The flow of decisions from the TTAB seemed to slow in the fourth quarter, perhaps because the Board was focusing on getting ready for implementation of the new Rules package. As of this writing, the tally for precedential decisions is at 65, which exceeds the last calendar year but is perhaps fewer than expected. Accompanying the listing are photos from my November trip to New Mexico, where we were treated to warm weather and lots of sunshine.

the Rio Grande(click on photo for larger picture)
Section 2(a) - Deceptiveness:

TTAB Affirms Refusal of "ECODOWN" for Pillows Under 2(a), 2(d), and 2(e)(1)

Section 2(a) - Immoral or Scandalous:

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

Section 2(d) - Likelihood of Confusion:

Section 2(e)(1) - Deceptive Misdescriptivess:

TTAB Affirms Refusal of "ECODOWN" for Pillows Under 2(a), 2(d), and 2(e)(1)

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

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

Precedential No. 66: TTAB Finds "YOSEMITE BEER" Geographically Descriptive, Affirms 2(e)(2) Refusal

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

TTAB Affirms 2(e)(3) Refusal of "FRENCH & FLIRTY" as Primarily Geographically Deceptively Misdescriptive of Lingerie

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

Section 2(f) - Acquired Distinctiveness:

Declaration/Oath:

Precedential No. 59: Declaration Must be Signed by Declarant

Dilution:

TTAB Dismisses "SPAM ARREST" Cancellation Petition

Failure to Function

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

Cane Cholla Cactus(click on photo for larger picture)
Fraud:

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

Genericness:

Identification of Goods:

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

Ownership of Mark:

Procedural Matters:

Specimen of Use/Mutilation:

near Madrid(click on photo for larger picture)
Leo Stoller:

Recommended Reading:

Other:

Text and photographs Copyright John L. Welch 2007.

TTAB Affirms 2(e)(3) Refusal of "FRENCH & FLIRTY" as Primarily Geographically Deceptively Misdescriptive of Lingerie

Rejecting Applicant's flimsy assertions that "French" means "sexy" and that purchasers buy lingerie based on "look and feel" rather than geographic origin, the Board found the mark FRENCH & FLIRTY to be primarily geographically deceptively misdescriptive for lingerie. It therefore affirmed the PTO's Section 2(e)(3) refusal to register. In re Vanity Fair, Inc., Serial No. 78515219 (December 17, 2007) [not precedential].

A proper Section 2(e)(3) requires proof of three elements: (1) the primary significance of the mark is a generally known geographic location; (2) the consuming public is likely to believe that the goods originate in that location (i.e., a goods-place association exists), when in fact the goods do not, and (3) the misrepresentation would be material to the consumer's decision to purchase the goods. In re California Innovations, Inc., 66 USPQ2d 1853, 1858 (Fed Cir. 2003).

As to the first factor, the Board found that "the most commonly understood connotation of the word 'French' is geographic." Applicant Vanity Fair argued that "French" is here used euphemistically to mean "sexy," and it submitted a Wikipedia definition that defines the word "french" as "stinky, over-stated or rated, as well as those things that are illegal, immoral or just generally undesirable." The Wikipedia entry also noted that this meaning is primarily used by "native speakers in the UK and surprisingly often in the U.S. as well." [TTABlog comment: more about this Wikipedia entry below].

The Board, however, agreed with Examining Attorney Richard A. Straser that "the overall commercial impression created by the mark FRENCH & FLIRTY is more along the lines of 'French origin and playful.'" The PTO's evidence showed that the word "French" is used in a geographic manner in connection with lingerie. And the addition of the word "flirty" does not "detract from or obviate the overall geographic connotation created by the word 'French."

As to the second factor, the evidence established that "consumers would identify France as a known source" for lingerie. Moreover, Applicant did not deny that its goods do not come from France.

Vanity Fair argued that "the look and feel of the lingerie" is the important factor in the purchasing decision, and that "the idea that a purchaser will buy applicant's lingerie because the goods are thought to originate in France is not believable." The Board, however, observed that lingerie is "specifically touted as being from France or as 'French lingerie.'" Thus France is a known source of lingerie, and a good-place association exists.

Finally, as to the third element of Section 2(e)(3), the Board pointed to the evidence that France is touted as a source of lingerie and that French lingerie is carried in "luxury" or "boutique"' retail establishments, and thus is presumably thought to be of a higher quality and more desirable. Therefore, the geographic origin of the goods is indeed material to the purchasing decision.

TTABlog comment: Applicant submitted its Wikipedia definition of "French" with its request for reconsideration, and the Examining Attorney thus had an opportunity to "rebut or question the accuracy of the entry." Consequently, under In re IP Carrier Consulting Group, 84 USPQ2d 1028 (TTAB 2007) [TTABlogged here], the Board gave consideration to the definition, but with "the recognition of the limitations inherent with Wikipedia (e.g., that anyone can edit it and submit intentionally false or erroneous information)."

The definition of "French" submitted by Applicant seems to be a good example of why the Board has its approach to Wikipedia evidence completely backward. What is the PTO Examining Attorney supposed to do to rebut or question the accuracy of that entry? How many dictionary entries with merely geographic definitions for "French" will suffice? Why should the Board presume that the Wikipedia entry is correct? Shouldn't the presumption be that Wikipedia evidence is not trustworthy unless corroborated? And if corroborated, why not just rely on the corroborating evidence, and forget the Wikipedia evidence?

Text Copyright John L. Welch 2007.

Reversing Disclaimer Requirements, TTAB Finds "STEELBUILDING.COM" Has Acquired Distinctiveness for On-Line Building Sales

The Board reversed a refusal to register the marks STEELBUILDING.COM & Design (shown immediately below) and STEELBUILDING.COM THE FUTURE OF METAL BUILDINGS [METAL BUILDINGS disclaimed] for "computerized on-line retail services in the field of pre-engineered steel buildings and roofing systems." The PTO had required disclaimers of the term STEELBUILDING.COM, but the Board found that Applicant had established acquired distinctiveness for that term under Section 2(f). In re Steelbuilding.com, Inc., Serial Nos. 76280389 and 76280390 (December 12, 2007) [not precedential].

Readers will recall that in 2005, the CAFC held that STEELBUILDING.COM was not generic but rather merely descriptive for virtually identical services, and further that Applicant had failed to establish acquired distinctiveness. (TTABlogged here).

In the instant cases, the only issue was whether STEELBUILDING.COM has acquired distinctiveness. The CAFC had found the term to be "highly descriptive" and therefore Applicant "had the burden to show a concomitantly high level of secondary meaning." Because Applicant here submitted "substantial new evidence," the Board took "a new look at this issue."

The Board was persuaded that STEELBUILDING.COM has acquired distinctiveness. Applicant has now been using the term for more than five years; it sales have grown from $11 million in 2002 to more than $21 million in 2005; advertising expenditures rose form $673,000 to nearly $1 million; visitor traffic to the steelbuilding.com website is greater than that of any competitor; Applicant has advertised or been featured in trade magazines; declarations and e-mails showed that competitors and consumers recognize STEELBUILDING.COM as a reference to Applicant; it has 50,000 to 100,000 visitors per month at its website; and it displays its mark prominently at its website and in its advertising, appending the "TM" symbol to the mark.

The PTO's evidence that the term "steelbuilding.com" is used with other words in some third-party website names [e.g., www.united steelbuilding.com and www.metal-buildings.best-steel-building.com] does not refute Applicant's 2(f) claim. "The fact that the term may be used descriptively in these web addresses does not necessarily prohibit applicant's descriptive term from acquiring distinctiveness."

And so the Board reversed the disclaimer requirement in light of Applicant's 2(f) showing.

TTABlog comment: Here's a question for you: what benefit, above and beyond ownership of the domain name, does the service mark registration provide? No one else may use the domain name anyway, as long as you own it. And if ownership of the domain name ceases, what good is the service mark registration?

BTW: I still think that, if lawyers.com is generic, so is steelbuilding.com. But that's water under the dam.

Text Copyright John L. Welch 2007.

Foreign Manufacturer, Not US Distributor, Owns "NITRO" Marks for Helmets, Says TTAB

In a battle over the marks NITRO and NITRO RACING for motorcycle helmets and protective clothing, the Board ruled in favor of Opposer/Petitioner Lloyd Lifestyle in finding that Applicant/Registrant Soaring Helmet was not the owner of the marks at the time it applied for registration. Consequently, the Board sustained Lloyd's opposition and granted its petition for cancellation. Lloyd Lifestyle Ltd. v. Soaring Helmet Corp., Opposition No. 91164265 and Cancellation No. 92045075 (December 11, 2007) [not precedential].

Plaintiffs and Defendant were using the same Chinese factory to make their respective helmets, which led to the original contacts between the parties. Plaintiffs claimed that it developed the NITRO products for sale in Europe and, when Defendant expressed an interested in selling the products in the USA, Plaintiffs agreed that they could sell NITRO brand products made by approved manufacturers. Plaintiffs also claimed that it directed Defendants to register the mark in the USA on Plaintiffs' behalf. Defendant asserted that Plaintiffs expressed no interest in the USA, and that Defendant, by using and registering the marks in the USA, became the owner.

Because there was no written agreement between the parties, the Board had to decide which version of the story was supported by the evidence. It found Plaintiff's account to be "more reliable and more credible" and Defendant's testimony to be "argumentative, internally contradictory and otherwise less than clear."

"In this case a preponderance of the evidence of the conduct of the parties establishes that plaintiffs and defendant agreed that Soaring Helmet would act as distributor for the Lloyd Group for the purpose of sales of products bearing the NITRO marks in the United States."

Plaintiffs "not only developed the NITRO marks but plaintiffs developed products based on those NITRO marks and undertook use of the marks on those products." The Board noted that Lloyd was not the actual manufacturer of the goods, but it saw no reason why Lloyd should not be given the same treatment under the law as a foreign manufacturer who makes products in its own factory. Under U.S. law, the foreign manufacturer rather than the U.S. distributor is presumed to be the owner of the mark in dispute. "Indeed the absence of a clear agreement in these situations is the rule not the exception and the reason for the existence of the legal presumption."

"In sum, we conclude that plaintiffs have shown by a preponderance of the evidence: (1) that plaintiffs acted independently and in good faith to develop the NITRO marks and products; (2) that MHR manufactured the NITRO products for plaintiffs; (3) that plaintiffs acted as foreign manufacturer and defendant as U.S. distributor for the sale of the NITRO products in the United States; (4) that plaintiffs are the owners of the NITRO marks in the United States, and (5) that the applications defendant filed for registration of the NITRO marks in the United States at issue in these proceedings were not filed by the owner of the marks, and therefore, were void as filed."

TTABlog note: For a recent TTAB decision in which the US distributor and not the foreign manufacturer was found to be the owner of the mark in dispute, go here.

Text Copyright John L. Welch 2007.

New York Court of Appeals Says Yes and No to "Famous Marks" Doctrine

In its March 28, 2007 decision, the United States Court of Appeals for the Second Circuit held that the Lanham Act cannot be read to include a "famous marks" exception. (TTABlogged here). The court certified to the New York State Court of Appeals the question of whether New York common law recognizes the doctrine. The New York court has now ruled that "New York recognizes common law unfair competition claims, but not the 'famous' or 'well-known' marks doctrine." ITC Ltd. v. Punchgini, Inc.,___ N.E.2d ___, 2007 WL 4334177 (N.Y.) (New York Court of Appeals Dec. 13, 2002).

BUKHARA GRILL: New York City
The federal court was unable to find authoritative law on the issue of whether New York's common law recognizes the famous marks doctrine. Consequently, the court certified two questions to the New York Court of Appeals: (1) Does New York Recognize the Famous Marks Doctrine? and (2) How Famous Must a Mark Be to Come Within the Famous Marks Doctrine?

The New York court's answer to the first question was rather self-contradictory: "while we answer 'Yes' to the first certified question, we are not thereby recognizing the famous or well-known marks doctrine, or any other new theory of liability under the New York law of unfair competition." It was simply reaffirming that:

"when a business, through renown in New York, possesses goodwill constituting property or a commercial advantage in this State, that goodwill is protected from misappropriation under New York unfair competition law. This is so whether the business is domestic or foreign."

As to the second question, the court set the bar very high for the plaintiff:

"ITC would have to show first, as an independent prerequisite, that defendants appropriated (i.e., deliberately copied), ITC's Bukhara mark or dress for their New York restaurants. If they successfully make this showing, defendants would then have to establish that the relevant consumer market for New York's Bukhara restaurant primarily associates the Bukhara mark or dress with those Bukhara restaurants owned and operated by ITC."

Now that the New York Court of Appeals has provided its answers to the certified questions, the case will return to the Second Circuit, who will presumably apply the New York court's stringent standard of proof. Note that the federal district court found that "even if it were to assume the applicability of the famous marks doctrine, ITC had failed to adduce sufficient evidence to permit a reasonable jury to conclude that the name or trade dress of its foreign restaurants had attained the requisite level of United States recognition to trigger the doctrine." In short, things are not looking good for plaintiff ITC.

TTABlog comment: The bottom line seems to be that New York will protect a famous foreign mark, but not under the rubric "famous mark doctrine" and only in the rarest cases.

For further commentary, see Professor Tushnet's 43(b) blog (here).

Text Copyright John L. Welch 2007.

TTAB Dismisses 2(d) "INSPIRATION" Opposition: Marks Dissimilar, Goods/Services Unrelated

It took a mere six pages for the Board to render its decision in Inspiration Software, Inc. v. Correales, Opposition No. 91164064 (December 12, 1007) [not precedential]. It found Applicant's mark PARENTS INSPIRATION INSTITUTE for educational services in the field of parenting [PARENTS and INSTITUTE disclaimed] not likely to cause confusion with Opposer's registered mark INSPIRATION for "computer programs in the field of idea development through visual diagramming, outlining and text creation" and "computer education training."

The Board first found the services of the parties to be "far removed" from each other, noting that "[t]he only thing these respective services have in common is that they both involve educational services. That general point of similarity is not enough to support a finding that the parties' specific services are related."

Applicant's services are "even farther afield" from Opposer's computer programs, which "obviously have a highly specific focus and subject matter which are wholly unrelated to applicant's classes and seminars in the field of parenting skills."

Therefore, the second du Pont factor weighed in favor of Applicant.

As to the marks, the Board found them dissimilar in connotation and overall commercial impression. In Applicant's mark, the word INSPIRATION is sandwiched between PARENTS and INSTITUTE, creating a "quite specific connotation and commercial impression which are wholly missing from opposer's mark." Moreover, INSPIRATION is "highly suggestive as applied to opposer's 'idea development' computer programs," thus narrowing the protection to which Opposer is entitled. Viewing the marks in their entireties, the Board found them dissimilar rather than similar, and so the first du Pont factor favored Applicant.

Considering all of the record evidence (consisting solely of Opposer's registrations), the Board found confusion unlikely.

TTABlog note: Earlier this year, this same Opposer lost another opposition on summary judgment, the Board ruling on summary judgment that the differences in the marks precluded a likelihood of confusion. (TTABlogged here).

Text Copyright John L. Welch 2007.

"B.V.D." and "DVD EMPIRE" Confusingly Similar for Clothing? No Way!

Way! The Board sustained a Section 2(d) opposition to registration of the mark DVD EMPIRE for shirts, finding it likely to cause confusion with the marks B.V.D. and BVD, registered for underwear, t-shirts, shirts, and shorts. B.V.D. Licensing Corp. v. Right Ascension, Inc., Opposition No. 91169355 (December 14, 2007) [not precedential].

DVD EMPIRE specimen
Neither party took testimony in this hardly-fought opposition. In fact, Applicant submitted no evidence at all and did not file a brief.

The Board began with the fame factor, because that factor plays "a dominant role" in the du Pont analysis. The evidence showed that Opposer has widely advertised its mark for decades, and has benefited from endorsements by such celebrities as Chubby Checker, Wilt Chamberlain, and Milton Berle. BVD was ranked as the 35th most well-known menswear brand in 2006. The mark is listed in several dictionaries.

The Board found the mark to be famous for, at a minimum, men's underwear. Indeed, the Board and the CAFC have previously found Opposer's marks to be famous.

As to the goods, Applicant's shirts are identical to the shirts listed in at least one of Opposer's registrations. The channels of trade and class of purchasers are presumably the same, and these are goods that would not be purchased without a great deal of care.

Turning to the marks, the Board once again noted that when the involved goods are identical, a lesser degree of similarity in the marks is required to support a finding of likely confusion. Taking into account the fame of Opposer's mark, the Board found that "the points of similarity outweigh the dissimilarities."

"We first observe that the term DVD is the dominant element in applicant's mark. It is the first word in the mark and, as opposer notes, EMPIRE has a certain laudatory quality to it inasmuch as it connotes a degree of supremacy, rendering it less influential as the source identifier in applicant's mark."

Moreover, "B" and "D" are visually similar and are somewhat phonetically similar. And Applicant's mark could be displayed in the manner in which Opposer's mark is displayed. [TTABlog aside: that's if you hide the word EMPIRE]. Both BVD and DVD are arbitrary with regard to shirts. And a one-letter difference is not sufficient to distinguish between two other otherwise identical letter combinations.

Therefore the Board found that confusion is likely, and it sustained the opposition.

TTABlog comment: This is the kind of decision we get when the Board is determined to decide in favor of the party that did all the work, or at least the party that did some work. How, pray tell, can the Board simply ignore the word EMPIRE in Applicant's mark? How can it ignore that fact that DVD means one thing, whether on as shirt label or elsewhere: the ubiquitous digital video disk?

I did, however, get something useful from reading this decision: a reminder that it's time to start compiling my "ten worst" list for 2007.

Text Copyright John L. Welch 2007.

Precedential No. 66: TTAB Finds "YOSEMITE BEER" Geographically Descriptive, Affirms 2(e)(2) Refusal

Merced, California is 80 miles from Yosemite National Park, but that was not far enough for Applicant Spirits of New Merced to avoid the Board's ruling that the mark YOSEMITE BEER is primarily geographically descriptive for alcoholic beer [BEER disclaimed]. The Board therefore affirmed the PTO's refusal to register under Section 2(e)(2). In re Spirits of New Merced, LLC, 85USPQ2d 1614 (TTAB 2007) [precedential].

For a mark to be deemed primarily geographically descriptive, the PTO must show that (1) the mark's primary significance is a generally known geographic location, and (2) the public would likely believe that the goods originate from that location. When the goods do indeed come from the location named, then a goods/place association may be presumed.

Applicant's beer is produced and sold in its brewpub in Merced. Examining Attorney Lydia M. Belzer maintained that "Yosemite" is a generally known place, that Applicant's beer originates "in the Yosemite region," and that there is a goods/place association in view of Merced's proximity to the national park.

As to the first prong of the test, there was no real dispute that Yosemite National Park is the name of a well-known location. Moreover, the evidence showed that "Yosemite" is a "well recognized and frequently used shorthand reference" to the park. The Board found "no genuine issue that the primary significance of 'Yosemite' is a geographic place which is not obscure or remote but rather is generally known to the public."

Applicant Spirits feebly argued that the word "Yosemite" has another meaning: it means "those who kill" or "the killers" in the Native American Miwok tribal language. The Board was unpersuaded, noting that even if the general public were aware of this meaning, "it would not detract from the primary meaning of 'Yosemite' as denoting a well-known geographic region."

Applicant also pointed to various third-party registrations for marks including the word "Yosemite," and particularly to two now-cancelled registrations for YOSEMITE BEER and YOSEMITE BREWING COMPANY, both for beer, owned by a company that was only 40 miles from the park. So what? said the Board. The TTAB is not bound by a previous examining attorney's determination. As to the remaining registrations, they too were tossed aside by the Board, because each case must be decided on the particular record involved.

Turning to the goods/place association, the question was whether Applicant's beer originates in the geographic location known as Yosemite. Applicant shot itself in the foot by asserting during prosecution that Merced, "where the beer is brewed, is physically and historically linked to and associated with the nearby Yosemite National Park." Applicant supplied promotional material for the city of Merced, which touted Merced as the "Gateway to Yosemite."

"It appears from the maps and other information of record that the area surrounding Merced and the park is largely rural, and that Highway 140, which leads out of Merced, is one of the few roadways providing direct access to the park, and possibly the only access at certain times of the year. As stated in Merced's Chamber of Commerce brochure, it is 'the only highway not closed by most winter snowstorms.'"

Applicant, of course, argued that its beer is not brewed in the park but rather in Merced, and it pointed out that the city does not use water that comes from the park. Nonetheless, the Board observed that "Yosemite has a significant relationship to the source of applicant's goods," and "Applicant is obviously using the term YOSEMITE ... not in any arbitrary sense as applicant claims, but rather to reflect its association with the geographic place." The Board consequently found that "the goods come from Yosemite ... or at a minimum that the goods originate in an area which applicant admits and the evidence shows is located near Yosemite."

Since the goods originate "at or near the place named," the Board may presume an association of the beer with the park. Nothing more need be shown by the Examining Attorney to establish the goods/place association.

Applicant attacked that presumption by arguing that no commercial activity takes place in Yosemite National Park, and therefore that there can be no reasonable or likely goods/place association. Unfortunately for Applicant, it was wrong on the facts. The Examining Attorney pointed out that there indeed is commercial activity within the park, including lodging, food, and beverages. "The facts that there are restaurants serving beverages in Yosemite and that applicant is located in or nearby the Yosemite region and promotes an association with Yosemite, establish a goods/place association of beer with Yosemite. Consumers would likely believe that applicant's beer had its origin or was in some way connected to Yosemite."

Concluding that "'Yosemite' is a term that applicant's competitors in Merced are entitled to use to describe the geographic origin of their beer," the Board affirmed the Section 2(e)(2) refusal to register.

Text Copyright John L. Welch 2007.

USPTO Issues Annual Report for Fiscal 2007

In case you missed it, on November 15, 2007, the USPTO issued its Performance and Accountability Report for Fiscal Year 2007 (downloadable here). The Report states that "Our Trademark organization continued to demonstrate excellence today and outstanding planning for tomorrow. For the second year in a row, Trademarks met or exceeded all of its performance goals." At the recent PTO Day conference, Commissioner for Trademarks Lynne G. Beresford provided attendees with the impressive statistics regarding the PTO's Trademark Operations (TTABlogged here).

The PTO Report highlights the following:

USPTO's trademark examining attorneys examined a record 323,527 applications.
Quality was 97.4 percent.
The quality results exceeded fiscal year 2007 targets.
The average time from filing an initial trademark application to a preliminary decision from an examining attorney (first action) was below 3 months.
Slightly more than 95 percent of initial trademark applications were filed electronically in 2007, including international filings.

With regard to our favorite tribunal, the Report states:

The USPTO successfully defended the Trademark Trial and Appeal Board's (TTAB) decision in In re Elsevier, denying registration of the mark "LAWYERS.COM" for an online legal information service. The Federal Circuit determined that the mark was generic for legal information services. [TTABlogged here].

Furthering the Agency's leadership in IP law, both the BPAI [Board of Patent Appeals and Interferences] and the TTAB increased their issuance of precedential decisions, with the TTAB issuing over 60 such decisions, and the BPAI issuing landmark decisions providing early guidance on applying KSR. In addition, this past year, both boards issued or proposed new rules designed to streamline case resolution and improve the efficiency of the decision-making process.

TTAB Affirms Refusal to Allow Amendment of "SILENT FIREMAN" to "YOUR SILENT FIREMAN"

The Board affirmed the PTO's refusal to register the mark SILENT FIREMAN for flame retardant goods and fire prevention inspection services, because the mark in the drawing (i.e., the word mark SILENT FIREMAN) is not an exact representation of the mark in the specimens of use. Furthermore, an amendment of the drawing to YOUR SILENT FIREMAN (to comport with the specimens) would be impermissible because it would constitute a material alteration of the original mark. In re No-Burn Investments, L.L.C., Serial No. 76629397 (November 30, 2007) [not precedential].

The Board quickly disposed of the first issue: whether the mark that appears on the application drawing (SILENT FIREMAN) is a substantially exact representation of the mark shown in the specimens (Rule 2.51(a)). There was no dispute that all the specimens display the mark as YOUR SILENT FIREMAN (see above).

As to the proposed amendment of the mark from SILENT FIREMAN to YOUR SILENT FIREMAN, "[t]he 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." The Board found that, by changing from SILENT FIREMAN to YOUR SILENT FIREMAN, "the meaning and commercial impression of the mark is changed."

"Specifically, the addition of the term YOUR injects a possessive component and creates the impression, albeit figuratively, that the purchaser will have his/her own fireman protecting them."

Applicant No-Burn submitted two useless declarations in support of registration: neither person claimed any expertise in trademarks or in the consumer perception of trademarks. Both erroneously referred to the term "your" as being "generic." And Applicant's assertion that addition of the word YOUR would not necessitate a subsequent search was not only rejected by the Board, but the Board found that a new search would indeed be necessary -- a factor further in favor of the PTO's position.

Therefore, the Board ruled that PTO Examining Attorney Odessa Bibbins properly refused registration on the ground that the mark in the drawing did not agree with the mark displayed on the specimens, that the PTO properly refused to accept the proposed amendment to the drawing, and that the PTO properly required Applicant to submit a new specimen that comported with the mark on the drawing.

Text Copyright John L. Welch 2007.

TTAB Affirms Refusal of "ECODOWN" for Pillows Under 2(a), 2(d), and 2(e)(1)

In this PTO pillow fight, Applicant Fisi Fibre Sintetiche S.p.A. was clobbered by three refusals to register, all of which the TTAB affirmed. The Board agreed with the PTO that the mark ECODOWN for pillows is deceptive under Section 2(a), deceptively misdescriptive under 2(e)(1), and confusingly similar to the mark shown immediately below, for down comforters, under Section 2(d). In re Fisi Fibre Sintetiche S.p.A., Serial No. 76583503 (November 27, 2007) [not precedential].

Likelihood of Confusion: The Board found ECODOWN to be the dominant element in the registered mark (the term HYPO-ALLERGENIC had been disclaimed). The image of a bird "reinforces the DOWN portion of the word ECODOWN." Indeed, Applicant admitted that the marks are "similar." The Board found that the marks have "a very similar commercial impression" and therefore this duPont factor weighed in favor of likelihood of confusion.

As to the goods, Examining Attorney Midge F. Butler submitted several use-based third-party registrations covering pillows and comforters. The Board found this evidence sufficient to support a finding that the involved goods are related. Because there were no restriction on channels of trade in the application or registration, the Board "must presume that the goods will be offered in some of the same channels of trade and will be used by some of the same purchasers." [TTABlog comment: that seems like a leap in logic to me. The Board must presume that each of the goods travel in its normal channels of trade for those goods. I don't believe that the Board must assume that the travel in some of the same channels, or that they will be used by some of the same purchasers.] In any case, there was evidence of website pages offering both pillows and comforters.

As to conditions of sale, the Board concluded that these items "would not be purchased with a great deal of care or require purchaser sophistication."

Weighing these factors, the Board found confusion likely and it sustained the 2(d) refusal.

Deceptive Misdescriptiveness: Section 2(e)(1) deceptive misdescriptiveness requires (1) that the mark misdescribe the goods, and (2) that purchasers are likely to believe the misrepresentation. Applicant conceded that the goods do not contain down, but argued that ECODOWN is a "fanciful word without any meaning." "At most, the mark [is] suggestive to the consumer that the goods are soft, yet ecological products."

The Board pointed out, however, that the meaning of DOWN must be determined in relation to the goods at issue. "Taken in the context of these goods, the relevant meaning would be 'fine soft fluffy feathers.'"

"We do not believe that the prefix ECO detracts from this meaning or serves to indicate that the goods do not include down. While the prefix ECO may suggest an ecological product, that does not exclude the use of down."

Several website printouts convinced the Board that "it is quite common for pillows to contain down and consumers would certainly believe pillows contained down feathers." Thus consumers would believe the misrepresentation.

Deceptiveness: For Section 2(a) deceptiveness, the PTO must also show that the misdescription is likely to affect the purchasing decision. Printouts submitted by the Examining Attorney showed that down is a desirable material for comforters and pillows. That was sufficient to establish that "the qualities of down pillows and pillow forms would be attractive to prospective purchasers and would materially affect the purchasing decision."

In sum, Applicant went down with little comfort from the Board.

Text Copyright John L. Welch 2007.

TTAB Affirms 2(e)(4) Surname Refusal of "MARRIOTT" for Charitable Services; Judge Seeherman Concurs

In this rather mundane Section 2(e)(4) case, Judge Seeherman took the opportunity to expand on the thought-provoking comments made in her recent concurring opinion in In re Joint Stock Company "Baik", Serial No. 78521961 (TTABlogged here) regarding the Board's surname test. Here, she concurred in the Board's ruling that MARRIOTT is primarily merely a surname for various charitable services and charitable fund-raising services. In re Marriott Int'l, Inc., Serial Nos. 78489804 and 78489829 (November 23, 2007) [not precedential].

Applicant maintained that MARRIOTT is an extremely rare surname: only about .002% of the U.S. population has that surname. The Board noted, however, that "given the large number of different surnames in the United States, even the most common surnames would represent but small fractions of the total population." More significant to the Board was the telephone directory evidence showing that "in excess of 2000 people in the United Stats have the surname 'Marriott.'" Therefore, it concluded that MARRIOTT is not a rare surname.

Moreover, the fact that the founder of Applicant and the current Chairman and CEO have the name "Marriott" reinforces the surname significance, as does the wide exposure of the "Marriott" name by reason of the activities of the Marriott family.

The Examining Attorney submitted negative dictionary evidence showing that "Marriott" has no non-surname meaning.

As to the so-called "look and feel" factor, the Board agreed with the Examining Attorney that MARRIOTT has the "look and sound" of a surname, "especially since the record shows that there are numerous individual with the surname 'Marriott,' that such term has no meaning or connotation other than its surname significance; and that nothing in the record indicates that MARRIOTT would be perceived as an initialism or acronym, or a coined term."

Applicant pointed to 14 registrations it owns for marks consisting of or containing the term MARRIOTT, all without a 2(f) claim. The PTO, however, submitted five of Applicant's five registrations that did issue under 2(f). The Board, however, noted that its task was to determine the issue based on the record before it, regardless of these prior registrations.

The TTAB therefore affirmed the refusal.

Judge Seeherman's concurrence emphasized again that the rarity of the surname is the critical factor in the 2(e)(4) analysis:

"... if the Examining Attorney cannot show that a reasonable number of people have a particular surname, in my view the Office cannot meet its burden of prima facie showing that a mark is primarily merely a surname.

"It is only after the Office has met the burden of showing that a mark is not an extremely rare surname that the other factors should come into play. In effect, I suggest that even if all of the other factors that we use to determine surname significance were to favor the Examining Attorney's position, if the surname is so rare that essentially no one will be affected by the registration, the mark should be registrable. The remaining factors are used in determining whether, even though the Office has shown that the mark is primarily merely a surname, or whether it would have another, non-surname significance to consumers."

Evidence as to "look and feel" is relevant to show that "a term does not have the look and feel of a surname and therefore would not be perceived as a surname."

"Accordingly, evidence on this factor would be part of the applicant’s evidence rebutting the prima facie case made by the Office showing that a significant number of people have a surname, to demonstrate that the term is not primarily merely a surname because it will not be perceived primarily merely as a surname."

TTABlog comments: As previously discussed, if the Board were to consider the rareness of the surname to be the critical factor, as Judge Seeherman urges, the Board would seemingly have to set some benchmark or minimum number regarding the frequency of a surname that would constitute a prima facie showing under 2(e)(4). It seems unlikely that the the Board will want to do that.

And what should the numerical threshold be? Should it be lower when ordinary goods or services or involved, like clothing or restaurant services, because it is more likely that a person with the same surname would want to the surname as a mark for those goods or services? Should the threshold be higher when obscure goods or services are involved, because few people would want to use their own surname as a mark for those goods or services?

The look-and-feel factor, the question of whether anyone associated with applicant has the surname, and the notoriety of persons with that surname, currently provide the Board with additional considerations that allow the Board to find that a mark is "primarily merely a surname," so that the Board does not have to set any numerical threshold. But do those additional considerations make sense in light of the purposes of Section 2(e)(4)? It doesn't seem so, at least not with regard to the PTO's establishing its prima facie case that the mark is a not so rare as to fall outside the scope of 2(e)(4).

Text Copyright John L. Welch 2007.

Precedential No. 65: Parties Stipulate to Record, TTAB Finds "ULTIMATE POLO" Lacking in Acquired Distinctiveness for Shirts

The parties to this opposition stipulated to the entire record, including various documents and 13 paragraphs of facts, reserving the right to object on the basis of relevance, materiality, and weight. The Board sustained Target's 2(e)(1) opposition, finding the mark ULTIMATE POLO for sun-protective shirts lacking in acquired distinctiveness. Target Brands, Inc. v. Hughes, 85 USPQ2d 1676 (TTAB 2007) [precedential].

Applicant sought registration under Section 2(f), claiming acquired distinctiveness based on its use of the ULTIMATE POLO mark since 1992 and its "substantial" sales and advertising figures.

Opposer Target Brands, Inc. is the owner of all intellectual properly rights of Target Corporation. Since 2005, the latter has marketed and sold polo shirts described as "ultimate polo." Numerous third parties have also used "ultimate polo" and "ultimate" as descriptive terms in connection with polo and other types of shirts.

The Board first found that Opposer has standing to oppose because it is in privity with Target Corporation and "is charged with managing and protecting Target's rights, including in the case of a merely descriptive designation the right to the unfettered use of the language in describing the polo shirts which Target markets as 'ultimate polo' in competition with Applicant." [TTABlog query: is this an intellectual property right?]

"Because opposer is obligated to protect Target's right and ability to compete with applicant, any harm resulting to Target from registration of ULTIMATE POLO would harm opposer. Therefore, opposer has standing to demonstrate that applicant is not entitled to registration because Target is entitled to use 'ultimate polo' descriptively in the sale of polo shirts."

Because Applicant sought registration under Section 2(f), mere descriptiveness was conceded and the issue became whether the mark ULTIMATE POLO had acquired distinctiveness. The Board said "no" for two reasons: (1) the mark is "highly descriptive" and "more evidence than applicant has submitted, especially in the form of direct evidence from customers, would be necessary to show that the designation has become distinctive of applicant's goods"; and (2) Applicant's use of the mark has not been substantially exclusive, in light of the Target and third-party uses.

The Board therefore sustained the opposition.

TTABlog note: I am informed that the Board deemed this decision "precedential" at least in part because the parties reached a stipulation as to the entire record. The Board felt that this is an approach that parties should consider and discuss when, under the amended rules, they have their discovery conference. That may, however, be too early for the parties to actually agree on the specific evidence, but at least the parties might agree to explore the idea of a stipulated record.

Text Copyright John L. Welch 2007.

Precedential No. 64: TTAB Finds Opposer's 2(d) and Lack of Bona Fide Intent Claims to be Adequately Pled

In a rare precedential interlocutory ruling, the Board denied a Rule 12(b)(6) motion to dismiss Opposer Fair Indigo's amended notice of opposition, finding that Opposer had adequately pleaded a likelihood of confusion claim and a claim that Applicant had no bona fide intent to use the applied-for mark when it filed its ITU application for STYLE CONSCIENCE for jewelry. Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536 (TTAB 2007) [precedential].

Likelihood of confusion: Opposer alleged likely confusion based on "both actual use starting September 18, 2006, and analogous use starting January 2006" for the mark STYLE WITH A CONSCIENCE for jewelry. Because the opposed application had a filing date of February 24, 2006, only the "analogous use" by Opposer would provide it with priority.

The Board found that Opposer had sufficiently pleaded its claim. Applicant contended that Opposer must allege the elements required to prove analogous use, and specifically that the use be "sufficiently clear, widespread, and repetitive" and make a "substantial impact on the purchasing public." The Board, however, observed that Applicant was confusing the requirement for pleading with the requirements for proof at trial. Opposer had satisfied the notice pleading requirement with regard to a Section 2(d) claim.

Applicant also argued that, in any case, Opposer cannot rely on analogous use to prove priority when an ITU application is involved because that would contravene the legislative intent of Section 1(b): i.e., the "policy of constructive use to encourage prompt registration of marks." The Board disagreed. The intent to use system was created to "obviate the need for 'token' use." However, use analogous to trademark use is different from "token" use. The Board therefore ruled that "a party may establish priority by use analogous to trademark use regardless of how the adverse party seeks to establish priority."

Lack of bona fide intent: As to Opposer's allegations that Applicant lacked a bona fide intent to use its mark, Applicant submitted a copy of a design patent application as evidence of its bona fide intent. Again, Applicant was off base. The Board pointed out that Opposer is required only to state a valid claim, which it did. "Applicant's arguments and evidence are of no import in considering opposer's [pleading], but are more appropriate on summary judgment or for submission as evidence during its testimony period and for argument as part of its trial brief."

The Board therefore rejected Applicant's motion to dismiss and resumed the proceeding.

Text Copyright John L. Welch 2007.

TTAB Posts December 2007 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled six hearings for the month of December, 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.

December 5, 2007 - 2 PM: Mentholatum Co. v. TherOx, Inc., Opposition No. 91160810 [Section 2(d) opposition to registration of the mark OXIUM for "Oxygenated skin care preparations, namely, creams, masks, gels and lotions for the face, hands, feet and body, not including acne preparations," on the ground of likely confusion with various registered marks comprising or containing the term OXY for acne medication, skin care preparations, skin wash, and skin cleanser.]

December 11, 2007 - 11 AM: In re K&B Underwriters, LLC, Serial No. 78528124 [Section 2(d) refusal to register the mark K&B UNDERWRITERS for "Insurance brokerage services, namely providing business to business insurance brokerage services" in view of the registered marks KB HOME and KB HOME MORTGAGE for mortgage lending services.]

December 18, 2007 - 11 AM: In re Right-On Co., Ltd., Serial No. 79015094 [refusal to register (on the Principal Register) the "side-by-side pockets" stitching design shown immediately below as a trademark for clothing on the ground that the design is merely decorative or ornamental and is not inherently distinctive.]

December 18, 2007 - 11 AM: In re Right-On Co., Ltd., Serial No. 79014936 [same as prior case].

December 18, 2007 - 11 AM: In re Right-On Co. Ltd., Serial No. 79014939 [same as prior case].

December 19, 2007 - 2 PM: Acorn Alegria Winery v. Sweely Holdings, LLC, Opposition No. 91168790 [Section 2(d) opposition to registration of ACORN HILL ESTATE, ACORN HILL VINEYARDS, and ACORN HILL WINERY for wine and potable spirits, in view of the registered mark ACORN for wine.]

Text Copyright John L. Welch 2007.

Commissioner Beresford Reviews Pending PTO Rulemaking Matters

At IPO's PTO Day Seminar held yesterday in Washington, D.C., Commissioner for Trademarks Lynne G. Beresford related the following impressive statistics regarding the PTO's Trademark Operations: In FY 2007, nearly 300,000 applications were filed, for a total of nearly 400,000 classes. That is an increase of 11.2% over the prior year. More than 95% of applications are now filed electronically. The average pendency before a first office action is 2.9 months. The quality rate (i.e., the error-free rate) for first office actions was 95.9% and for final actions 97.4%.

The Commissioner also reported on the status of several current and future rulemaking and legislative matters:

Requests for Reconsideration: In February 2007, the PTO proposed to reduce the time period for filing a request for reconsideration of a PTO final refusal from 6 months to 3 months, and to require that the request be filed electronically. (See TTABlog posting here). The comments received by the PTO were "very negative," particularly regarding the 3-month deadline. Consequently, the PTO will be issuing a new notice of proposed rulemaking, in which the request for reconsideration may be filed electronically or on paper, but with the paper filing requiring payment of a fee. The 6-month deadline will remain unchanged.

Description of the Mark: The comment period expires on December 24th for the proposed rule that would require the applicant to describe its mark in all applications other than those for standard character marks. (See TTABlog posting here). This proposed change was mainly intended to help the PTO coders to assign an appropriate design code or codes to the mark.

Registration Certificates: The PTO is planning to propose the automatic printing of registration certificates. Applicants/Registrants will be able to request a printed certificate, but probably for a fee. Concomitantly, the application filing fee may be lowered, in light of the reduced cost to the PTO resulting from not having to print the certificate. Commissioner Beresford said that the Trademark Public Advisory Committee reacted with "horrified silence" to the proposal to eliminate printed certificates.

Letters of Protest: A lowering of the standard for acceptance of letters of protest prior to publication is in the works. The PTO will go back to the old standard: if the letter makes a prima facie case and if the subject matter is appropriate (e.g., mere descriptiveness or genericness), the evidence (but not the letter) will be forwarded to the Examining Attorney. This will replace the "clear error" standard and the companion requirement that the Examining Attorney enter the refusal if the letter of protest is accepted. The higher standard will remain in effect for post-publication letters of protest. (See 2005 TTABlog posting here, and see TMEP Section 1715 (here)).

Madrid Protocol Corrections: The PTO is working on legislation to correct Section 71 of the Trademark Act, which deals with the filing deadlines for Section 8 declarations and renewals for extensions of protection granted under the Madrid Protocol. Section 71 still conforms to the old statutory provisions and not the statute as amended in 1999 by the Trademark Law Treaty Implementation Act.

Text Copyright John L. Welch 2007.

The TTABlog®

Monday, December 31, 2007

TTABlog Quarterly Index: October - December 2007

Friday, December 28, 2007

TTAB Affirms 2(e)(3) Refusal of "FRENCH & FLIRTY" as Primarily Geographically Deceptively Misdescriptive of Lingerie

Thursday, December 27, 2007

Reversing Disclaimer Requirements, TTAB Finds "STEELBUILDING.COM" Has Acquired Distinctiveness for On-Line Building Sales

Wednesday, December 26, 2007

Foreign Manufacturer, Not US Distributor, Owns "NITRO" Marks for Helmets, Says TTAB

Monday, December 24, 2007

New York Court of Appeals Says Yes and No to "Famous Marks" Doctrine

Friday, December 21, 2007

TTAB Dismisses 2(d) "INSPIRATION" Opposition: Marks Dissimilar, Goods/Services Unrelated

Thursday, December 20, 2007

Recommended Reading: "An Introduction to the New Trademark Trial and Appeal Board Rules"

Wednesday, December 19, 2007

"B.V.D." and "DVD EMPIRE" Confusingly Similar for Clothing? No Way!

Tuesday, December 18, 2007

Precedential No. 66: TTAB Finds "YOSEMITE BEER" Geographically Descriptive, Affirms 2(e)(2) Refusal

Monday, December 17, 2007

Recommended Reading: Scot Duvall on the The Trademark Dilution Revision Act of 2006

Friday, December 14, 2007

USPTO Issues Annual Report for Fiscal 2007

Thursday, December 13, 2007

TTAB Affirms Refusal to Allow Amendment of "SILENT FIREMAN" to "YOUR SILENT FIREMAN"

Wednesday, December 12, 2007

Recommended Reading: Ted Davis on "Trade Dress Protection for Product Designs"

Tuesday, December 11, 2007

TTAB Affirms Refusal of "ECODOWN" for Pillows Under 2(a), 2(d), and 2(e)(1)

Monday, December 10, 2007

TTAB Affirms 2(e)(4) Surname Refusal of "MARRIOTT" for Charitable Services; Judge Seeherman Concurs

Friday, December 07, 2007

Precedential No. 65: Parties Stipulate to Record, TTAB Finds "ULTIMATE POLO" Lacking in Acquired Distinctiveness for Shirts

Thursday, December 06, 2007

Precedential No. 64: TTAB Finds Opposer's 2(d) and Lack of Bona Fide Intent Claims to be Adequately Pled

Wednesday, December 05, 2007

TTAB Posts December 2007 Hearing Schedule

Tuesday, December 04, 2007

Commissioner Beresford Reviews Pending PTO Rulemaking Matters

Monday, December 03, 2007

On the Road at IPO's PTO Day

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