Precedential No. 6: TTAB Finds Fraud, Grants Summary Judgment in "THE SIGN" Opposition

In its sixth precedential decision of 2007, the TTAB threw out another application on the ground of fraud because the Applicants falsely claimed use of their mark in connection with all the services recited in the application. Hurley Int'l LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007).


Paul and Joanne Volta, who perform as the Tasmanian musical duo "The Sign" (not to be confused with the Swedish group, Ace of Base, and their hit song, "The Sign") filed a use-based application to register the mark shown above for various entertainment services. The application stated that "Applicant is using the mark in commerce on or in connection with the ... identified goods/services." A signed declaration accompanied the application, attesting to the truth of the statements made therein.


Twice the Applicants amended the recitation of services, and twice they submitted substitute specimens accompanied by a signed declaration stating that "the substitute specimen(s) was in use in commerce as of the filing date of the application."

Opposer Hurley filed its opposition in October 2003, and then moved for summary judgment on the ground of fraud in July 2004. However, because fraud was not properly pled in the opposition, the Board denied the motion in August 2005.

In October 2005, Hurley came back with a new summary judgment motion coupled with a motion for leave to amend its notice of opposition to add a fraud claim. Applicants filed a motion for leave to amend their application.

Motion to Amend Opposition: As usual, the Board noted that leave to amend pleadings "must be freely given when justice so requires." Noting that the motion to amend was filed before the start of trial and that Applicants demonstrated no prejudice if amendment were allowed, the Board granted the motion.

Motion for Summary Judgment: Applicants admitted in their discovery responses that they had not used their mark in connection with some of the recited services. Opposer argued that this case is analogous to Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003) [fraud found where registrant had not used the mark on one of two goods identified], and that Applicants committed fraud on the USPTO. Opposer pointed out that Applicants reside in Australia, an English-speaking country, and that Joanne Volta apparently holds an Australian law degree. Given the "wealth of information" provided at the USPTO's website, Opposer argued, Applicants had no excuse for their false assertion.

Applicants, of course, pleaded innocence. They claimed that they misunderstood the requirements of Section 1(a), did not understand the legal meaning of "use in commerce," and "honestly believed that their ownership of the same mark in Australia and their use in commerce of such mark in Australia justified their Section 1(a) filing in the U.S." They pointed to their website, which they referred to as a "global domain." And they contended that this case is distinguishable from Medinol because they have yet to obtain a registration. Finally, they noted that Applicant Paul Volta "suffered a major coronary infarct" in November 2003, which distracted Applicants, and further that they have been "defending themselves and have no legal representation as such."

The Board was totally unsympathetic to the Applicants' plight, and it agreed with Opposer that "this case is similar to the Medinol case." The Board observed that here, as there, the application would have been refused but for "applicants' misrepresentation regarding their use of the mark on all the recited services in the application." And it is irrelevant that a registration has not yet issued.

"Applicants have provided no compelling argument why the law allows for cancellation of a registration after it is obtained through fraud, but does not allow for the prevention of a registration when fraud is revealed and the issuance of a registration is imminent."

[Significantly, the Board noted that "a misstatement in an application as to the goods or services on which a mark has been used does not rise to the level of fraud where an applicant amends the application prior to publication."]

The fact that Applicants allegedly misunderstood "a clear and unambiguous requirement for an application based on use, were not represented by legal counsel, and were suffering health problems" did not change the Board's mind. "[P]roof of specific intent is not required."

Applicants were "under an obligation to investigate thoroughly the validity of such a belief before signing their application under certain penalties." Moreover, their "asserted misunderstanding regarding the meaning of 'use in commerce' was not reasonable."

"At the time they filed their application, they knew they were seeking a registration for their mark in the United States. It was unreasonable for them to believe, however 'honest' such a belief, that the term 'use in commerce' on a trademark application in the United States meant anything other than use of the mark in commerce in or with the United States, or even that use in commerce in Australia was the legal equivalent of use in commerce in the United States."

Applicants also committed fraud by submitting a supposed specimen of use that they knew had not been used in U.S. commerce. In fact, Applicants admitted in discovery that "the Kaos Cafe, the location indicated in the advertisement flyer submitted as a substitute specimen, is located in Australia."

Bogus Specimen of Use
The Board therefore deemed the application void ab initio and entered summary judgment in Opposer's favor.

Applicant's Motion to Amend Application: Applicants sought to amend their filing basis to Section 44(e). However, the Board observed that "the proposed amendment does not serve to cure a fraud that was committed." Therefore, it deemed this motion "moot." [The Board noted, however, that its decision here does not preclude Applicants from filing a new Section 44(e) application].

TTABlog comment: Well, at least the Board is making its position on fraud very clear. False statements of fact regarding use of a mark are fatal to an application, unless corrected prior to publication of the application for opposition. After publication, fuggedaboudit. Whether the applicant is foreign or pro se (or both), it doesn't matter. The application is doomed.

Are there still some gray areas? Yes. For example: last year's Maids to Order case (TTABlogged here), where the question was whether, under the particular facts, Respondent's mark had been used in interstate commerce or just intrastate commerce. But in the instant case, the question wasn't even close.

Practitioners would be wise to review their pending applications to make sure that all allegations of use are correct. There is still time to correct erroneous claims prior to publication of the application, and thereby avoid fraud. Perhaps receipt of an Approval for Publication should be a trigger for a review of the application's use allegations.

For a discussion of other recent TTAB fraud cases, see the TTABlog Fraud Collection (here). Also see last year's Trademark Reporter article by Karen P. Severson, entitled "Filer Beware: Medinol Standard Set Forth by the United States Patent and Trademark Office," 96 Trademark Reporter 758 (May-June 2006).

Text Copyright John L. Welch 2007

"QUAKER COFFEE" Fights Its Way to TTAB 2(d) Reversal

Quaker Coffee Company battled its way to a reversal of the PTO's Section 2(d) refusal to register the mark QUAKER COFFEE for coffee shop services ["COFFEE" disclaimed]. The Board found the mark not likely to cause confusion with the registered marks QUAKER STEAK & LUBE and QUAKER STEAK & WINGS for restaurant services. In re Quaker Coffee Co., Serial No. 78465668 (January 16, 2007) [not precedential].


The Examining Attorney contended that QUAKER is the dominant word in each mark, that the word QUAKER is an arbitrary term and has not been registered by any others for restaurant services, and that the involved services are very closely related.

Applicant emphasized that Registrant's marks are used in conjunction with an "automotive-themed restaurant as a nostalgic take-off on QUAKER STATE motor oil and gas stations." Applicant also complained that the PTO had ignored its consumer declarations and its marketing expert.

The Board agreed with the PTO that coffee shops and restaurants are related. It found Applicant's consumer declarations -- "form statements, undoubtedly prepared by counsel" -- to be of no probative value. And the opinions of Applicant's marketing expert "on the ultimate question of law in this case has been given no weight."

Having lost these early rounds, Applicant fought back doggedly, repeatedly stressing "the unique way in which the Quaker Steak & Lube chain of restaurants markets itself:" the restaurants have a "motor vehicle" theme, and are designed to look like gas stations, and in fact, some of the restaurants occupy abandoned QUAKER STATE gas stations. Applicant also submitted several registrations for the mark QUAKER STATE for lubricating oils and service stations (the latter now expired).


The Board noted, however, that there are no limitations regarding channels of trade in either the application or the cited registrations. The Examining Attorney made the point that the issue of likelihood of confusion must be decided based upon the services as recited, not on the basis of extrinsic evidence. Therefore, the Board found that this factor favors a finding of likelihood of confusion.

Finally, turning to the marks at issue, the crucial issue became the connotation of the marks in question. The Examining Attorney argued that the word QUAKER dominates the marks and has the same connotation: coffee or steak provided by a Quaker, i.e., a member of the Society of Friends. Applicant contended, however, that the connotations are quite different because "registrant with its choice of QUAKER STEAK in both its marks is quite intentionally creating a play on words with the mark for oil and lube, QUAKER STATE."

The Board agreed with Applicant: "it is unmistakable that to the average consumer, the overall commercial impression of registrant's marks will be of QUAKER STEAK as a play on QUAKER STATE." The Board observed that this is one of those areas of trademark law where contextual, secondary considerations change the results of the registrability decision." For example, "an identical term may take on very different meanings as applied to related goods, overcoming a likelihood of confusion." [E.g., PLAYERS for men's underwear and men's shoes]. Another example is a "newly-coined combination of descriptive components" creating "a readily-understood alternative meaning." [i.e., a double entendre like SUGAR & SPICE for bakery products].

Similarly, "consumers who become acquainted with registrant's services would readily make an association between its QUAKER STEAK marks and QUAKER STATE oils and lubes."

Therefore, notwithstanding the phonetic and visual similarities in the marks and the close relationship of the services, the Board found the differences in connotation sufficient to distinguish the marks and avoid a likelihood of confusion.

TTABlog comment: I like the result in this case, but I'm not convinced that the record contains sufficient evidentiary support for the Board's finding regarding connotation. Shouldn't there be some proof that QUAKER STATE is a well-known motor oil? In Pennsylvania I'm sure it is, but I wonder how well known it is in, say, Oregon, and whether Oregonians would catch the connection between Registrant's marks and QUAKER STATE motor oil. Oregonians might just think that "steak and lube" is some strange dish dreamed up by the Quakers, to eat with their coffee.

Text Copyright John L. Welch 2007.

Out on a Limb? TTAB Says "GREEN BRANCH" Not Merely Descriptive of Banking Services

What comes to mind when you hear the phrase "GREEN BRANCH" in connection with banking services? A tree limb? An environmentally-friendly bank building? A cash-only bank? In any case, the Board found the mark GREEN BRANCH not to be merely descriptive of banking, financial, investment, and insurance services, and therefore it reversed the PTO's Section 2(e)(1) refusal to register. In re PNC Bank, N.A., Serial No. 78492942 (January 16, 2007) [not precedential].


The Examining Attorney contended that the mark describes financial and banking service offered in branches that have environmentally-friendly features. She pointed to Applicant's own press release "referencing 'green branch' in connection with environmentally friendly buildings," to dictionary definitions of "green," and to a newspaper article using the terms "green branch," "green offices," and "green bank branches" in referring to Applicant PNC.

PNC argued that the term GREEN BRANCH has a wide range of "potential meanings" and that its identified services "do not imply or suggest environmental protection."

The Board recognized that "the line between descriptive and suggestive marks in not clear," and that this determination may "require the drawing of fine lines similar to making distinctions among shades of gray." Of course, doubts are to be resolved in Applicant's favor.

The Board came down on PNC's side, deeming the mark suggestive rather than merely descriptive:

"Applicant's mark GREEN BRANCH does not evoke an immediate association with financial and banking services because such services are not generally associated with environmentally friendly or ecologically efficient characteristics. The rendering of such services in environmentally friendly or ecologically efficient facilities does not affect the basic principles of the financial and banking business. In so far as the record in this case shows, the placement of applicant's financial and banking services in the environmentally friendly buildings, rather than traditional buildings, serves no particular purpose in the performance of those activities."

The Board ruled that "some level of thought is necessary to make a connection between the mark and the services," and the connection between the mark GREEN BRANCH and banking services "is too indirect or remote to find the mark merely descriptive."

So the Board reversed the refusal.

TTABlog comment: Perhaps I am not the most objective observer, having just bought a Toyota Prius and thus being particularly sensitive to environmental issues at the moment. But it seems to me that use of the term GREEN BRANCH for banking facilities is meant to be descriptive of the bank's services, so that the bank can attract customers like me. The fact that the "basic principles of the financial and banking businesses" are not affected by the type of facility is hardly the point. Shouldn't every bank be able to use this term when it provides environmentally-friendly facilities?

I question whether customers really think of verdant foliage when encountering the phrase GREEN BRANCH used by a bank to promote its services. Maybe I'm the one out on the limb, but a little birdie tells me that the seeds of an opposition or two have been planted here.

Text Copyright John L. Welch 2007.

The Top Ten TTAB Decisions of 2006® [Part 2 of 2]

The second quintet of TTAB decisions (well, four decisions and an Order) rounds out my list of "The Top Ten TTAB Decisions of 2006^®." The first five were posted here yesterday. In the second batch, frequent TTAB litigant Leo Stoller makes another appearance, thanks to his aborted extension request campaign that led to a TTAB Sanction Order. Mutilation, genericness, concurrent use, and disparagement join him on the list.


In re Nutraceutical Corp., Serial No. 78975072 (March 13, 2006) [not precedential]. Some TTAB Judges are apparently not happy with the CAFC's current test(s) for genericness, Judge Bucher principal among them. Here, the Board panel ignored the CAFC’s American Fertility test applicable to phrases, in affirming a genericness refusal of the term FRESH ORGANICS for fresh fruits and vegetables, unprocessed cereals, and the like, and for retail health food store services. Instead, the Board chose to apply the "compound word" test of In re Gould, which permits a finding of genericness based on dictionary definitions alone. The Board noted that the NEXIS and Internet excerpts were a "mixed bag": some of the evidence "does not point unquestionably toward genericness," while several of the examples "appear to be references to applicant." Nonetheless, the Board observed that "Applicant has done no more that combine terms that are individually generic in relation to its goods and services. Thus the composite is likewise generic." "Based on these dictionary definitions and our common parlance of the English language, we find that the relevant purchasing public would readily understand that 'Fresh Organics' indicates that a variety of fresh, unprocessed and/or raw food items have been grown organically." (TTABlogged here). See also, the WELDING, CUTTING, TOOLS & ACCESSORIES case (TTABlogged here), and Judge Bucher's dissent in the DIGITAL INSTRUMENTS decision (TTABlogged here).

In re 1175856 Ontario Ltd., 81 USPQ2d 1446 (TTAB 2006) [precedential]. I have it on good authority that the Board is not happy with the PTO's approach to mutilation refusals. Here, the Board reversed a refusal to register the mark WSI and Design (below left), finding that the mark on the application drawing was not a mutilation of the mark as depicted in the specimen of use (right). The sole issue was whether the mark, as it appears on the drawing, is a substantially exact reproduction of the mark as used on the specimens. See Trademark Rule 2.51(a), 37 C.F.R. Section 2.51(a). Of course, the focus of the case was on the omission of the curved design element that appears in the specimen.


The Board was "mindful of the fact that in an application under Section 1 of the Trademark Act, the applicant has some latitude in selecting the mark it wants to register. TMEP Section 807.12(d)(4th ed. April 2005)." The Board agreed with Applicant that "the lettering and globe design shown in the drawing create a separate commercial impression apart from the curve design." "Here, the lettering WSI and the globe design, serving as part of the letter I, join to convey to the consumer the brand name of applicant’s services and act together as an indication of source separate from the curve design." (TTABlogged here).

CDS, Inc. v. I.C.E.D. Management, Inc., 80 USPQ2d 1572 (TTAB 2006) [precedential]. Concurrent use decisions are as rare as a traffic cop in Boston, but the Board provided an important one (decision, not cop) in 2006. It held that Applicant CDS is entitled to a concurrent use registration for the mark THE COPY CLUB for various document copying, publishing, and management services "for the State of Kansas and that portion of the state of Missouri located within 50 miles of Lenexa, Kansas." In turn, I.C.E.D.’s registration for the mark COPY CLUB for similar and overlapping services was "restricted" to the entire United States except for the area of CDS’s registration. Applicant sought registration for seven states: Utah, New Jersey, New York, Connecticut, Pennsylvania, Kansas, and Missouri. The Board applied the Weiner King test in finding that CDS’s use in Utah, New Jersey, New York, Connecticut, and Pennsylvania was "de minimis and nebulous." However, CDS did show use of its mark in Kansas and was entitled to the entire state; in addition, because a large percentage of CDS’s business in Kansas City comes from Missouri, the Board awarded CDS a portion of Missouri. I.C.E.D. argued that there would still be confusion because both parties advertise on the Internet, but the Board flatly rejected that argument: "We do not believe that the creation of the Internet has rendered the concurrent use provision of the Trademark Act moot." (TTABlogged here).


TTAB Issues Sanction Order to Leo Stoller (July 14, 2006). The Board sanctioned frequent TTAB litigant Leo Stoller for his "misuse of the TTAB’s procedures" by filing more than 1,800 requests for extension of time to oppose since November 2005. The Board found that the filings were made "for improper purposes, namely, to harass the applicants to pay you to avoid litigation or to license one of the marks in which you assert a baseless claim of rights." The Board consequently vacated "[t]he approval of each request for extension of time to oppose that you have filed since November 2005." Moreover, any notice of opposition filed by Stoller against any of the involved marks "shall be dismissed." In addition, for the next two years, Stoller was banned from filing, on his own behalf or as an officer, director, or partner of any entity that he controls, any request for extension of time to oppose. This ban applies regardless of whether Stoller is represented by an attorney. After that two-year period, Stoller is PERMANENTLY barred from such filings, but an attorney may file a request on his behalf. The Board concluded that Stoller was "holding up thousands of trademark applications in an attempt to coerce applicants to license, i.e., 'rent,' trademarks to which you have not demonstrated any proprietary right," and that "the extension requests here at issue were filed for improper purposes, specifically 'to obtain additional time to harass applicant, to obtain unwarranted extensions of the opposition period, and to waste resources of applicant and the Board." (TTABlogged here).

STEALTH
In re Squaw Valley Devpt. Co., 80 USPQ2d 1264 (TTAB 2006) (on reconsideration) [precedential]. The PTO succeeded in obtaining partial reversal of the TTAB's decision overturning Section 2(a) disparagement refusals of the marks SQUAW and SQUAW ONE for clothing, ski equipment, and retail store services. The Board again applied the test of Harjo v. Pro-Football, Inc., 50 USPQ2d 1705 (TTAB 1999) [reversed on other grounds] ["Harjo I"], but concluded that it had imposed the wrong standard of proof; it now found the PTO's evidence "sufficient to establish prima facie that applicant's marks disparage a substantial composite of Native Americans when used in the context of applicant’s goods and services." Applicant failed to overcome the PTO's case since it did not submit "any evidence which suggests that Native Americans do not view ‘squaw’ as a [disparaging] term for its Class 25 and 35 goods and services." However, the Board maintained its finding that, when used in connection with ski equipment, the primary meaning of SQUAW is the SQUAW VALLEY ski resort. Thus as to those goods, Applicant successfully rebutted the PTO's prima facie case that SQUAW is disparaging. (TTABlogged here).

"The Top Ten TTAB Decisions of 20**" is a Registered Trademark of John L. Welch. Text Copyright John L. Welch 2007.

The Top Ten TTAB Decisions of 2006® [Part 1 of 2]

The TTAB issued something in the neighborhood of 500 final decisions in 2006, 57 of which were deemed citable [i.e., precedential]. Once again yours truly has dared to chose the ten decisions that arguably are the year's most important and/or interesting. This year's list includes eight precedential decisions, one not precedential, and one "decision" in the form of a PTO sanction ruling. The order of appearance does not necessarily reflect the relative importance of each decision. [This posting is in two parts, the first five decisions being listed below].


Please note the recent TTAB Notice regarding citation of its decisions, both precedential and nonprecedential. (See TTABlog comment here). The decisions below labeled as "precedential" were marked "citable" by the TTAB when they were issued. The non-citable decision, under the new Board policy, may be cited for whatever value it may have, but it is not binding precedent.

In re Organon N.V., 79 USPQ2d 1639 (TTAB 2006) [precedential]. In this case of first impression, the Board affirmed the PTO’s refusal to register "an orange flavor" as a trademark for "pharmaceuticals for human use, namely, antidepressants in quick-dissolving tablets and pills," finding the alleged mark to be de jure functional and incapable of functioning as a trademark for the goods. The Examining Attorney contended that the flavor orange "is a standard feature of orally administered pharmaceutical products and simply would not be perceived as an indicator of source." Moreover, she argued, "orange is a preferred flavor" and “gives an orally administered pharmaceutical product a substantial competitive advantage.” The Board applied the CCPA's four-factor Morton-Norwich test and found the second factor to be "particularly significant": Organon's touting of the utilitarian benefits of the orange flavor. The Board was unable to find "that there are true alternatives, or a least a significant number of acceptable alternatives." It also concluded that "consumers would not view the orange flavor of an antidepressant tablet or pill as a trademark; rather, they would consider it only as just another feature of the medication, making it palatable." (TTABlogged here).

Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006) [precedential]. In its first citable fraud decision in three years, the Board cancelled three registrations relied on by Opposer Standard Knitting, finding that false statements made to the PTO regarding use of Opposer's marks on certain clothing items constituted fraud. The registrations listed various men’s, ladies' and children's clothing items, but discovery revealed that, when Opposer filed its two underlying use-based applications and when it filed its Statement of Use in the third application, it had not used the marks on "at a minimum, most, if not all, of the items of children’s clothing identified in each of the three registrations." Under applicable precedent, that clearly constituted fraud. Standard claimed that the false statements were the result of honest mistake and misunderstanding rather than fraudulent intent, but the Board ruled that Standard's claim of innocence was not credible. The Board nonetheless considered Standard's likelihood of confusion claims based on its common law rights, but, in view of the vast differences between the goods of the parties (clothing versus automobiles), ruled in favor of Toyota. (TTABlogged here).

In re The Black & Decker Corp., 81 USPQ2d 1841 (TTAB 2006) [precedential]. Rarely does an applicant for a product configuration mark clear the distinctiveness hurdle, but Black & Decker managed to convince the Board to reverse the PTO's refusal to register the configuration of a key head as a trademark for metal door hardware and key blanks. The sole issue before the Board was whether the configuration has acquired distinctiveness.


B&D established acquired distinctiveness, despite the lack of "look for" advertising evidence, by proving more that $20 million in advertising expenditures and more that $500 million in revenues during the 2000-2004 period. Its marketing manager averred that the Baldwin Key Head Design is an arbitrary design, that "it is an industry practice to use different and identifiable key head designs for locksets and keys," that the design has been featured in promotions (including sales person lapel pins), and that since 2001 Baldwin has used an octagonal logo for all its advertising and promotional materials. In addition, Applicant submitted ten form customer declarations attesting to the distinctiveness of the design, five third-party registrations for marks consisting of other key head designs for door hardware, and photos of ten key heads from other manufacturers of locksets. The Board acknowledged that it has, at times, been critical of an applicant's 2(f) claim when "look for" evidence was not provided. Here, however, the Board found the evidence regarding industry practice to be particularly significant. (TTABlogged here).

In re King Koil Licensing Co., 79 USPQ2d 1048 (TTAB 2006) [precedential]. In affirming a Section 2(e)(1) mere descriptiveness refusal of THE BREATHABLE MATTRESS (MATTRESS disclaimed) for beds and mattresses, the Board gave some (albeit limited) probative weight to the PTO's evidence from foreign websites, even though the websites did not deal with scientific or technical subject matter. Citing In re Remacle, 66 USPQ2d 1222 (TTAB 2002) (which concerned sophisticated medical technology), the Board observed that "under appropriate circumstances, web pages posted abroad may be considered probative evidence on how a term will be perceived." "[C]onsumers may visit foreign web sites for informational purposes, even if they are more likely to focus on internet retailers that can easily ship items or make items available for pick up in a store in a location convenient to the purchaser. That would appear especially likely in a case such as this, where the item in question, a mattress, is large and potentially more expensive to ship than a smaller item." (For a discussion of foreign website evidence, see Welch and Lamport Hammitte, "The TTAB and Foreign Website Evidence: Quo Vadis?," 20 Allen’s Trademark Digest 7 (December 2006)). (TTABlogged here).

Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., 78 USPQ2d 1899 (TTAB 2006) [precedential]. This decision reminds us that not every false statement made by an applicant is fraudulent. Petitioner contended that Respondent had committed fraud on the PTO by falsely claiming use of its mark MAID TO ORDER in interstate commerce. But the Board concluded that Petitioner failed to meet its "heavy burden" to prove fraud: "It was not unreasonable for Ms. Kern [Respondent's president], as a layperson, to believe that [Respondent's] activities constituted use of the MAID TO ORDER mark in interstate commerce. *** This belief is sufficient to negate an inference of fraud upon the USPTO in obtaining and maintaining the registration." The question at hand -- whether the mark had been used in interstate commerce, or only intrastate, was a mixed question of law and fact, one much different from the black-and-white question of whether the mark has been used at all in connection with a particular product. (TTABlogged here).

[Part 2 of this two-part posting will appear tomorrow.]

"The Top Ten TTAB Decisions of 20**" is a Registered Trademark of John L. Welch. Text Copyright John L. Welch 2007.

Google Sues Leo Stoller's Companies for RICO violations

On January 19, 2007, Google, Inc. commenced a civil action in the U.S. District Court for the Northern District of Illinois against several of Leo Stoller's companies, seeking injunctive relief, damages, attorney's fees, and costs, arising out of the "fraudulent scheme" of Defendants and "their alleged principal, Leo Stoller." According to the Complaint, the scheme involves "falsely claiming trademark rights for the purpose of harassing and attempting to extort money out of legitimate commercial actors, both large and small." (Complaint here).

Leo Stoller
The Complaint alleges that, as part of the scheme, Defendants targeted Plaintiff Google in "one of the some 1800 request for extension of time filed by Defendants with the TTAB since November 2005." The details of the ensuing interaction between Google and Defendants are set forth in paragraphs 33-44 of the Complaint.

The 25-page Complaint, accompanied by nearly 200 pages of exhibits, charges the Defendants with violation of the Racketeer Influenced and Corrupt Organizations Act (RICO), 18 U.S. C. Sec. 1961 et. seq., of Section 43(a) of the Lanham Act, and of the law of unfair competition.

TTABlog Update: Leo Stoller responds here (link) that he "looks forward to defending this frivolous action being brought by Google Inc."

Text Copyright John L. Welch 2007.

Precedential No. 5: TTAB Reverses 2(d) Refusal Due to Weakness of Marks and Differences in Goods

The Board's fifth precedential decision of 2007 is like déjà vu all over again. Just as in yesterday's 7-Eleven posting, the Board threw out a Section 2(d) claim in light of the weakness of the marks and the differences in the goods. This time, however, it was the PTO's claim of likely confusion that was jettisoned. The Board found Applicant's mark PATCH & GO for "Portland cement based patch for use in patching, repairing or smoothing wall and floor surfaces," not confusingly similar to the registered mark PATCH N' GO for "chemical filler preparations for use in the cosmetic repair of polyolefin surfaces." In re The W.W. Henry Co., L.P., 82 USPQ2d 1213 (TTAB 2007).


First noting the "virtual identity" of the marks, the Board deemed it likely that "if such marks were used in connection with related goods, confusion would result."
Turning to the goods, the PTO contended that "they are related because they are all used to repair surfaces." It pointed out the absence of any restrictions in the application and registration, and argued that the parties' respective goods "may be used to repair surfaces inside or outside a home" and would be offered to do-it-yourselfers, handymen, and contractors. And the Examining Attorney submitted five third-party registrations purportedly showing that the involved goods may emanate from a single source under a single mark.

Applicant Henry asserted that the goods are not related because "they are used to repair different types of surfaces and travel in different channels of trade to different classes of purchasers." Henry submitted Internet printouts from Registrant's home page showing that Registrant's product is used by plastic product manufacturers for cosmetic repair of poorly molded plastic parts. Henry maintained that its product is not for use by plastic manufacturers.


The Board observed that, in demonstrating that goods are related, it is not enough for the PTO to find a particular term that may broadly define the goods. An examination of the specific items in the identifications is required. Applicant Henry's extrinsic evidence showed that Registrant's products are used by plastic manufacturers. Extrinsic evidence may be considered by the Board when it is "somewhat uncertain as to what the goods in the registration are."

The Board concluded that the respective goods of the parties would be offered in different channels of trade to different classes of purchasers. "As such, it is unlikely that there would be any opportunity for confusion to occur."

As to the PTO's third-party registrations, only two were based on use and none of them cover preparations for the repair of polyolefin surfaces.

Finally, the Board noted that the marks, although very similar, are highly suggestive and are not entitled to a broad scope of protection. "Purchasers are simply unlikely to assume that all surface repair preparations offered under these highly suggestive marks emanate from the same source."

The Board therefore reversed the Section 2(d) refusal.

Text Copyright John L. Welch 2007.

TTAB Issues Notice Re Citation of Its Decisions, Both Precedential and Non-Precedential

Today's Official Gazette contains a significant Notice from the TTAB regarding citation of its decisions. Just as we suspected (see TTABlog Note here and posting here), the Board is making all of its decisions citable, but only decisions marked "precedential" will have binding effect on the Board. Non-precedential decisions may be cited for whatever persuasive value they may have. The Notice is forth in full below:

United States Patent and Trademark Office
OG Notices: 23 January 2007
Citation of Opinions to the
Trademark Trial and Appeal Board
It has been the policy of the Trademark Trial and Appeal Board (TTAB) that TTAB opinions not designated as precedential should not be cited to the TTAB and, if cited, are disregarded. E.g., General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1275 n.9 (TTAB 1992). The TTAB is changing its policy with respect to the citation of opinions not designated as precedential. Accordingly, the Board will henceforth permit citation to any TTAB disposition as follows:

. The TTAB will continue its current practice of designating all final decisions as either precedential or not precedential. Unless specifically designated as precedential, an order on a motion should be considered not precedential.

. The TTAB will continue its practice of considering precedential decisions as binding upon the TTAB.

. A decision designated as not precedential is not binding upon the TTAB but may be cited for whatever persuasive value it might have.

. Citation to all TTAB decisions should be to the United States Patent Quarterly, if the decision appears therein; otherwise, to a USPTO public electronic database. If a non-precedential decision does not appear in the United States Patent Quarterly or the USPTO's public electronic databases, the citing party should append a copy of the decision to the motion or brief in which the decision is cited.

. Decisions of other tribunals may be cited to the extent allowed and for the purposes permitted by the tribunal that issued the decision.

The TTAB will continue to post all its final decisions at:
http://des.uspto.gov/Foia/TTABReadingRoom.jsp. The files of TTAB proceedings are available at: http://ttabvue.uspto.gov/ttabvue/.

In due course, the TTAB will make revisions to the Trademark Trial and Appeal Board Manual of Procedure (TBMP) consistent with this notice.

December 27, 2006

J. DAVID SAMS
Chief Administrative Trademark Judge

TTABlog comment: A hat tip to MH who, after bringing this to my attention, asks the very pertinent question: is this notice retroactive? I.e., are pre-2007 cases that were deemed not citable, now citable "for what they're worth"? or are they still not citable at all?

Update: MH posed the question to Chief Judge Sams, who confirmed that decisions previously deemed not citable may now be cited for whatever persuasive value they may have.
.

7-Eleven Craps Out in TTAB 2(d) Opposition to "CLASSIC SELECTIONS" for Frozen Entrees

Opposer 7-Eleven threw snake eyes in this roll of the TTAB dice, losing its opposition to registration of the mark CLASSIC SELECTIONS for "frozen entrees consisting primarily of meat, fish, poultry or vegetables." The Board found the mark not likely to cause confusion with Opposer's registered logo mark shown immediately below (QUALITY disclaimed) for drinking water. The relative weakness of the marks and the differences in the parties' goods led the Board to dismiss the opposition. 7-Eleven, Inc. v. HEB Grocery Co., LP, 83 USPQ2d 1715 (TTAB 2007) [not precedential].


The board found that the "dominant and distinguishing portion" of Opposer's mark is the phrase CLASSIC SELECTION. The disclaimed word "QUALITY," which appears in smaller type, is less significant when the mark is considered as a whole. And despite Applicant HEB's dicey assertion that its mark has a different meaning than the words CLASSIC SELECTIONS in opposer's mark, the Board found the connotations to be identical.

As to the strength of the registered mark, HEB urged that the phrase CLASSIC SELECTION is weak (i.e., watered down?) and should be accorded very narrow protection. It pointed to third-party uses and registrations of the terms CLASSIC, CLASSICS, SELECT, SELECTS, and SELECTIONS, for a variety of food items. The Board took judicial notice of dictionary definitions of CLASSIC and SELECTION in concluding that "CLASSIC SELECTION" is not a "strong, arbitrary mark, but rather is clearly in the category of laudatory/suggestive." Nonetheless, noting Opposers's substantial sales under its mark during a 12-year period, and the lack of evidence of third-party use of the phrase CLASSIC SELECTION, the Board found that "the differences in the parties' marks are not sufficient to avoid a likelihood of confusion, when used on sufficiently related goods." However, it would not accord Opposers's mark "the broad scope of protection that would be given to a stronger, more arbitrary mark."


Turning to the issue of the relatedness of the goods, the Board observed that the goods are "obviously different in character" and that "[t]he differences in the goods are also reflected in how they are managed in the retail food industry, specifically, they are separated into different categories of goods and handled by different personnel in view of the different functionality of the goods and consumer's shopping habits."

7-Eleven argued that the goods are related "in that they are complementary, because they can be consumed together and are both in the category of 'convenience products.'" It pointed to third-party uses of and registrations for frozen food and drinking water under the same mark, and contended that "this relationship is further strengthened by the close proximity of the parties' goods in stores and grocery store advertisements." Finally, Opposer argued that frozen food entrees are within its natural zone of expansion.

The Board, however, found Opposer's approach to be "too broad:" "[w]hile drinking water may be consumed at the same time a heated frozen food entree is eaten, it is not used in combination with the entree in the same way bread and cheese are used together to complement each other."

As to the third-party uses and registrations, the Board noted that they cover "a broad array of goods, many of which are wholly unrelated, and, therefore, no conclusion can be drawn as to the realtionship between the goods in issue in this case." It agreed with Applicant HEB Grocery that:

"'[b]ecause nearly every type of product sold in modern grocery stores has a store brand alternative available for purchase' giving such evidence probative value would in effect create a 'per se rule that all goods available in modern supermarkets are related.'"

The Board pointed out that the subject application and registration are not limited to "store brand" products, but are more in the nature of a "national brands." As to Opposer's three examples of national brands, "two do not show use on frozen entrées (Dannon for drinking water and yogurt, and ODWALLA for drinking water and snack bars) and the third, NESTLE, is of little probative value in as much as, while NESTLE is used as the primary mark on the drinking water, the use of NESTLE on the frozen entrees is secondary, appearing on the side of the packaging with the primary mark STAUFFER'S displayed prominently on the front. Opposer's own witness testified that he was "not aware of any national brand used on both frozen entrees and bottled water."

As to channels of trade, although the record showed that frozen foods and drinking water are sometimes sold in close proximity, the same could be said of "charcoal and anti-freeze" in many convenience stores. Other testimony indicated that drinking water and frozen foods are positioned separately in grocery stores. The Board concluded that "the marketing conditions do not compel a finding of likelihood of confusion, given the inherent differences between these goods."

Finally, with regard to the zone-of-expansion argument, the Board cited Mason Engineering and Design Corp. v. Mateson Chemical Corp., 225 USPQ 956 (TTAB 1985), in ruling that 7-Eleven's expansion of another mark from ready-to-eat taquitos to frozen taquitos, or its use of the QUALITY CLASSIC SELECTION mark on other items, "does not support a finding that frozen food entrees would be perceived by consumers as falling within the natural zone of expansion of drinking water."

Considering all of the relevant du Pont factors, the board concluded that confusion is not likely, and it dismissed the opposition.

Text Copyright John L. Welch 2007.

Precedential No. 4: Petitioner's Prior Use Analogous to Trademark Use Leads to TTAB Cancellation of "THE CRAFTSMAN ALS IK KAN" Registrations

In its fourth precedential decision of 2007, the Board granted a petition for cancellation of two registrations for the mark shown immediately below, one for furniture polish and the other for furniture, on the ground of likelihood of confusion. The Board ruled that Petitioner Stickley had prior rights in the term ALS IK KAN for those same goods, based on its use "analogous to trademark use." L. & J.G. Stickley, Inc. v. Cosser, 81 USPQ2d 1956 (TTAB 2007).

The history of this dispute begins with one Gustav Stickley, who designed and sold "Mission furniture" in the early 1900's. He registered the marks CRAFTSMAN and the ALS IK KAN mark (with compass design) at that time, but the registrations expired long ago, and the marks fell out of use for decades. [The Finnish or Flemish words "ALS IK KAN" mean "If I can, all I can."] In 1977, Petitioner Stickley (founded by Gustav Stickley's brothers) published a catalog in which the phrase "Als ik Kan:" the pride of craftsmanship" appears at the top of one page and is said to be a trademark.


Respondent Cosser began using his mark on furniture polish in 1978. As to furniture, Cosser could rely only on his filing date of June 1997.

The "first key issue" in the case was priority. Petitioner argued that its prior use of the marks (on the 1977 catalog page identifying ALS IK KAN as a trademark, and in showroom displays) constituted "analogous trademark use sufficient to warrant cancellation of Registrant's registrations." The Board agreed:

"we find that petitioner has established by a preponderance of the evidence that it made use analogous to trademark use of the phrase ALS IK KAN and the woodworker's compass in association with its furniture and furniture polish and that this use was established at least by the end of 1977 when its 1977 catalog was issued."

Cosser contended that Petitioner Stickley had abandoned its marks: in fact, Stickley's witness, when asked if it was Petitioner's "intention to put the compass with Als ik kan on furniture?" answered "no." However, the Board noted that Petitioner's priority is based not on "petitioner's use of the mark ... but rather as a result of petitioner's use analogous to trademark use or trade name type use. We cannot say that there has been any abandonment of this type of use."

Having decided the priority issue in favor of Stickley, the Board then took its hammer to Registrant's furniture registration, concluding that Cosser had not used his mark on furniture prior to his filing date of June 11, 1997. Therefore, the Board ordered the registration cancelled. [The Board noted that the misstatement regarding use in Cosser's trademark application was not fraud, because Cosser was making and selling furniture and using his mark in association with related services. His error appeared to be the result of "unfamiliarity with the intricacies of trademark law regarding the differences between a service mark for custom furniture making services and a trademark for furniture."]


Turning to the likelihood of confusion issue, the Board wasted little time in ruling in Stickley's favor. Focusing on the expression ALS IK KAN, the Board decided that that phrase "would likely have more trademark significance than the term THE CRAFTSMAN," the latter term being "highly suggestive of furniture and furniture polish made by craftsmen." Therefore it concluded that the marks are "very similar." Moreover, Stickley used the woodworker's compass design before Cosser, and that feature would thus increase the likelihood of confusion. With the goods at least overlapping, the Board concluded that confusion is likely.

The Board consequently granted the petition for cancellation of Cosser's registrations.

TTABlog comments: Perhaps this decision should be known as the "mission" case, because the Board seemed to be on a mission to craft a ruling in favor of Stickley. [The fact that Petitioner is the direct descendant of Gustav Stickley, the originator of the marks at issue, may have influenced the Board's approach]. The evidence of prior "analogous trademark use" by Stickley was rather minimal: use of the marks on a catalog page and in a showroom display hardly seem sufficient to create a public awareness of the "marks." It also seems that the presumption of validity that Cosser should have enjoyed as a result of his registrations was largely ignored.

On a different note, the decision does contain a useful, albeit brief, discussion of fraud, and particularly the fact that not all false statements made by an applicant are fraudulent. It's one thing for an applicant to aver that it has used its mark on goods or services when it has not in fact used the mark at all. It's quite another when the statement made is not purely factual, but involves a mixed question of fact and law. In the latter case, there is room for error. Compare last year's Standard Knitting case (blogged here) with the Maids to Order case (blogged here).

Text Copyright John L. Welch 2007.

Precedential No. 3: TTAB Finds “THEATL” Merely Descriptive of Publications About Atlanta

The third precedential TTAB decision of 2007 found the Board affirming a Section 2(e)(1) mere descriptiveness refusal of the mark THEATL for magazines, a weekly newspaper, and a section of a newspaper -- all concerning Atlanta, Georgia. In re Cox Enterprises, Inc., 82 USPQ2d 1040 (TTAB 2007).


Examining Attorney Jean H. Im contended that THEATL “is the equivalent of THE ATL, a recognized nickname for the city of Atlanta.” Applicant Cox argued that there is no evidence that “the unitary mark THEATL has such a meaning.” Moreover, Applicant asserted that THEATL, “as a whole, does not make the same commercial impression as The ATL as two separate words and will not necessarily be understood by consumers as two separate words.” It is just as likely, according to Cox, that consumers will perceive THEATL as a unitary, nonsensical word sounding like Seattle or Beetle. In any case, only after a “two-step leap in imagination can consumers draw out a descriptive element from the mark.”

The Board observed that “at least one class of relevant purchasers” for Cox’s publications comprises residents of and visitors to Atlanta. The website evidence submitted by the Examining Attorney showed that THE ATL would be recognized by these purchasers as a nickname for Atlanta. There was no evidence that THE ATL has another meaning. Furthermore, the Board found, THE ATL describes a significant feature or characteristic of Cox’s publications.

Cox’s mark THEATL, according to the Board, “is simply a compressed version of the descriptive term THE ATL,” and is “equivalent in sound meaning and impression to THE ATL and is equally descriptive of applicant’s goods.”

“the term THEATL, appearing on a publication that features news and information about Atlanta, would logically and rationally be perceived and vocalized as the familiar nickname for Atlanta rather than a nonsensical term.”

Moreover, Applicant’s mark is presented in typed or standard form, and is not limited in style. For example, Cox could depict the mark as “theATL.”

In sum, the Board affirmed the refusal to register.

Text Copyright John L. Welch 2007.

Precedential No. 2: Finding Door Hardware and Toilets Related, TTAB cancels “DEVONSHIRE” Registration

In its second precedential decision of 2007, the Board granted a petition for cancellation of a registration for the mark DEVONSHIRE for “metal door hardware, namely, locks, latches and knobs," finding the mark likely to cause confusion with the identical mark previously used in connection with toilets and lavatories. Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100 (TTAB 2007).


The Board first resolved several evidentiary disputes regarding admissibility of documents by way of notice of reliance, the business records exception to the hearsay rule, and the alleged failure to produce information and documents during discovery

Petitioner Kohler established priority of use via the detailed testimony of a single, very knowledgeable witness – its Director of Sanitary Marketing. Kohler proved use of the DEVONSHIRE mark as of late 1996; Respondent’s relied on the filing date of the application that issued as the challenged registration – December 11, 1997. The Board noted that “[o]ral testimony, even of a single witness, if ‘sufficiently probative,’ may be sufficient to prove priority.” Petitioner’s testimony carried with it “conviction of its accuracy and applicability,” and was buttressed by documentary evidence.

Turning to the issue of likelihood of confusion, the fact that the marks are identical heavily favored Kohler: when identical marks are involved the degree of similarity in the parties’ goods necessary to support a likelihood of confusion finding is diminished. Moreover, the Board found DEVONSHIRE to be a strong mark. With two strikes against it, Respondent Baldwin was clearly in deep trouble.


Baldwin argued that its mark is used only for expensive exterior door handle sets purchased only with “great care.” Unfortunately, the identification of goods in Baldwin’s registration contained no such restrictions. Thus the Board was required to assume that Baldwin’s goods included door hardware of all types, including “hardware for shower doors, bathroom doors, and bathroom cabinet doors.” Moreover, the Board found that the parties’ goods “may be viewed as complementary in that they may be used together; that is to say, some consumers, when buying a line of products for their bathroom, want their toilet, sink shower door, bathroom door and cabinet fixtures to all match or at least be coordinated.” Third-party registration evidence suggested that “toilets and sinks on the one hand, and door hardware on the other, are goods of a type that emanate from the same source.”

As to trade channels, the normal channels for the parties’ goods include home centers such as Home Depot. In fact, “the record established that the parties’ goods are sold in the exact same chain of stores, namely, Home Depot.” Although Kohler argued that the goods are sold in different departments, its identification of goods is broad enough to encompass bathroom hardware, which would likely be sold in the same department as toilets and lavatories. In addition, the parties’ goods have been shown at the same trade shows and in the same publications.

Baldwin attempted to establish widespread third-party use of DEVONSHIRE, but its unspecific evidence merited little weight. Baldwin also pointed to the lack of evidence of actual confusion despite six years of contemporaneous use of the parties’ marks. The Board was not swayed. It agreed with Kohler that the absence of actual confusion may reflect the fact that Baldwin has not actually used the mark on bathroom hardware, but only on expensive, external door hardware. Thus the Board concluded that there has been no meaningful opportunity for confusion to occur.

Balancing the relevant du Pont, the Board found that confusion is likely, and it granted the petition for cancellation.

TTABlog note: This decision bears the legend "THIS OPINION IS A PRECEDENT OF THE TTAB." Compare that to the first "citable" decision of 2007 (blogged here), which bore the legend "THIS DISPOSITION IS CITABLE AS PRECEDENT OF THE T.T.A.B." What's the difference? My guess is that the Board is anticipating the day when all of its decisions will be "citable," but not all will be precedential. So it's discontinuing use of the phrase "citable as precedent" lest one become confused. I guess it's time for me to switch from "citable" to "precedential" too.

BTW, one might ask, what's the point of a decision being citable if it's not precedential?

Text Copyright John L. Welch 2007.

TTAB Affirms Refusals to Register the Reversing Motion of a Watchcase

In a time-consuming decision (nearly a year to decide and a day to read), the Board affirmed refusals to register two product design marks (shown below) for watches, on two grounds: (1) Applicant failed to provide an acceptable description of the marks; and (2) the configurations are functional under Section 2(e)(5). In re Richemont Int'l, S.A., Serial Nos. 76413051 and 76413157 (June 22, 2006) [not citable].


In a nutshell, Applicant Richemont was attempting to register "the configuration of a watch as it makes [a] pivoting motion," so that the face of the watch may be placed directly against the wrist, making the back of the watch visible. However, neither Applicant's drawings nor its description of the marks gave "adequate notice of the nature of" applicant's marks: namely, that Applicant claimed as features of the marks the particular movements that are involved in reversing the watchcase. Therefore, the Board affirmed the requirement of an acceptable description of the mark, under Rule 2.37.


In considering the functionality issue, the Board applied the Morton-Norwich factors (In re Morton-Norwich Prods., Inc., 213 USPQ 9, 15-16 (CCPA 1982)) to the feature that Applicant sought to register: "the reversing nature of the watchcase." Faced with a 1933 utility patent that issued to the designer of Applicant's Reverso watch, Applicant conceded that "in, say, 1933, its design was functional," but contended that "intervening changes in watch technology have rendered the design of no significant utilitarian advantage." In particular, the use of "scratch resistant, virtually unbreakable, sapphire glass in the crystals of high quality watches," made the reversible movement no longer needed to protect the watch face.

However, Examining Attorney Nicholas K.D. Altree submitted website and newspaper evidence indicating that "the reversing ability of applicant's watch still protects the watch and thereby retains its utilitarian value."

The Board noted that Applicant did not limit its configuration mark to watches with sapphire glass crystals. Moreover, Applicant "still touts in some of its advertising the protection provided by the reversing nature of the configuration." Given the "heavy burden" on Applicant to rebut the evidence of the utility patent, the Board could not find that the reversing nature of the watch is now non-functional.

Furthermore, the Board could not determine from the record whether sapphire glass crystals would add more to the manufacture of watches than it would cost to incorporate the reversing motion.

In any case, the Board found that the reversing nature of Applicant's watch provides another significant competitive advantage other than protecting the watch face: reversibility allows one to change the appearance of the watch. For example, the watch could have two faces, or it may be reversed to look like a bracelet. Applicant's advertising brochure, as well as third-party articles, stressed that advantage.


As to the availability of alternative designs, Applicant provided only two other reversable watches. Moreover, its own literature refers to the superiority of its design. Thus the three possible watch designs are not "equal alternatives."

Finally, as to cost, the Board could not determine whether the asserted feature is a "result of a cheaper or simpler method of manufacturing the product," and it therefore treated this factor as neutral.

The Board concluded that "[i]f applicant were to obtain exclusive rights to this two-watches-in-one configuration, competitors would be at a significant, non-reputation related disadvantage. It therefore affirmed the refusal under Section 2(e)(5).

Text Copyright John L. Welch 2006.

Citable No. 1: Finding Hotels and Casinos Related, TTAB Grants 2(d) Summary Judgment in "CABANA BAR" Case

The first citable TTAB decision of 2007 arose out of a lackluster likelihood of confusion brouhaha. The Board granted Opposer's summary judgment motion, sustaining an opposition to the marks CABANA BAR and CABANA BAR & CASINO (in block-letter and design form) for casino services and for restaurant, bar and cocktail lounge services [BAR & CASINO disclaimed]. The Board found the marks confusingly similar to Opposer's mark CABANA, used for hotel services. Venture Out Properties LLC v. Wynn Resorts Holdings, LLC, 81 USPQ2d 1887 (TTAB 2007).


As to the marks, the Board understandably ruled that CABANA is the dominant term in each of the involved marks, and that the generic terms CASINO (sic! BAR?) and BAR & CASINO do not "significantly distinguish the marks overall, particularly if the services themselves are related."

Turning to the services, the Board found "no genuine issue that the services are closely related:"

"It is clear that opposer's 'hotel services' are highly similar to the services identified in all four of applicant's subject applications, in that hotel guests often dine in restaurants and drink in bars and lounges during their travels, as well as engage in recreational activities, such as gambling in casinos."

Third-party registrations covering hotel services and casino, bar, and restaurant services (for example, for the marks CAESARS PALACE, TAJ MAHAL, HARD ROCK CASINO, and HARRAHS), supported the Board's conclusion, as did the fact that Applicant itself owns a pending application for another mark for casino services and for resort hotel, restaurant, bar and lounge services. Moreover, the Board noted that in the past it has found hotel and restaurant services to be related.

Opposer's Cabana Hotel - Waikiki
Applicant Wynn argued that the channels of trade are different because its services "are marketed only to guests already staying at its resort hotel, whereas opposer's hotel services are marketed to guests interested in staying at a small, 'gay owned and operated' resort in Hawaii." However, the Board pointed out for the millionth time that the determination of likelihood of confusion must be made on the basis of the services recited in the opposed applications. Given the unrestricted recitation of services in the applications, "there is no basis for the Board to find that a genuine issue of material fact exists as to channels of trade."

The Board therefore found confusion likely and granted summary judgment, sustaining the opposition.

Text Copyright John L. Welch 2007.

TTABlog Report: TTAB Issued 57 Citable Decisions in 2006

Set forth below are links to the TTABlog postings for the 57 citable decisions issued by the TTAB in 2006. [The total for 2006 dwarfs those of the last two years: 18 in 2005 (TTABlogged here) and 13 in 2004 (TTABlogged here and here)]. The decisions are categorized by subject matter. If the reader is looking for a particular decision by name, or wants to conduct a key word search to find cases on a particular issue, the best approach is to use the TTABlog Search box on the right hand side of the blog page (just under my photo).


Section 2(a) - deceptiveness:

• TTAB Citable No. 20: Divided Panel Affirms 2(a) Deceptiveness Refusal of "CAFETERIA" for Non-Cafeterias

Section 2(a) - disparagement:

• Citable No 30: At PTO's Request, TTAB Reconsiders and Partially Reverses "SQUAW" Disparagement Ruling

Section 2(a) - false connection:

• TTAB Citable No. 38: Board Affirms 2(a) Refusal of "MOHAWK" for Cigarettes

Section 2(a) - immoral or scandalous:

• Citable No. 10: TTAB Says No to "BULLSHIT" in 2(a) "Scandalous" Affirmance

Section 2(d) - likelihood of confusion:

• Citable No. 51: TTAB Upholds 2(d) Refusal of "PSYCHO" for Clothing, But Overturns Mutilation Refusal
• Citable No. 50: "GENUINE RIDE SKIN CARE" & Design Not Confusingly Similar to "GENUINE SKIN," Says TTAB
• Citable No. 48: "RAD RIGS" and "RAD RODS" Confusingly Similar for Toy Vehicles, Says TTAB
• Citable No. 45: TTAB Reverses 2(d) Refusal of Product Configuration Mark
• Citable No. 29: TTAB Reverses "BOX SOLUTIONS" 2(d) Refusal, but Affirms Disclaimer Requirement of "SOLUTIONS"
• Citable No. 25: TTAB Attempts to Clarify Doctrine of Foreign Equivalents in Affirming 2(d) Refusal of "MARCHE NOIR"
• Citable No. 24: TTAB Dismisses 2(d) Cancellation Re "SUZLON and Design" for Wind Turbines
• TTAB Citable No. 9: "LESSBUCKS COFFEE" Confusingly Similar to Famous "STARBUCKS" Mark
• In Citable No. 5, TTAB Grants Summary Judgment in 2(d) "WIRETRACKS" Cancellation
• "ISHINE" and "Ice Shine" Sound Confusingly Similar, TTAB Says (Citably)
  
• TTAB Finds "BOSS AUDIO" and "AUDIO BSS" Logos Confusingly Similar in a Citable Decision
• In a Citable Decision, TTAB Cancels Three "TUNDRA" Registrations on the Ground of Fraud

Section 2(e)(1) - mere descriptiveness:

• Citable No. 57: "ARMED ANTIBODIES" Merely Descriptive of Biopharmaceutical Goods and Services, Says TTAB
• Citable No. 49: TTAB Upholds Disclaimer Requirement of "ROUGE" in "GALA ROUGE" for Wine
• Citable No. 37: TTAB Finds "3-O'S" Merely Descriptive of Car Wheel Rims
• "SATURDAY MORNING T.V." Merely Descriptive of TV Programs, Says TTAB in Citable No. 17
• TTAB Citable No. 16: "SMARTSFP" Merely Descriptive of Optical Transceivers
• TTAB Citable No. 15: "FM4910" Merely Descriptive of Flame Retardant Plastic
• "THE BREATHABLE MATTRESS" Merely Descriptive of Mattresses, Says TTAB, Citably
• Citable No. 12: TTAB Throws Wet 2(e)(1) Blanket on "PARTY AT A DISCOUNT!" Application
• Ill Wind Blows for "ERGONOMIC" Ceiling Fan Applicant: TTAB Citably Affirms Mere Descriptiveness Refusal
• "FREEDOM FRIES" Not Merely Descriptive of French Fries, Says TTAB (Citably)

Section 2(e)(1) - deceptively misdescriptive:

• Citable No. 22: TTAB Affirms Refusal of "SEPTEMBER 11, 2001" as Deceptively Misdescriptive

Section 2(e)(2) - primarily geographically descriptive:

• Citable No. 40: TTAB Finds "BALASHI" Not Primarily Geographically Descriptive of Beer
• Citable No. 33: TTAB Affirms 2(e)(2) Refusal of "BAIKALSKAYA" as Geographically Descriptive of Vodka

Section 2(e)(3) - primarily geographically deceptively misdescriptive:

• Citable No. 53: TTAB Deals "VEGAS" Playing Card Applicant Winning Hand in 2(a), 2(e)(2), and 2(e)(3) Opposition

Section 2(e)(4) - primarily merely a surname:

• Citable No. 13: TTAB Affirms Surname Refusal of "GIGER MD" for Exercise Machines

Section 2(e)(5) - functionality:

• Citable No. 41: TTAB Finds Drawing of Product Not Functional for Design Services
• Citable No. 36: TTAB Deems Earplug Configuration Functional Based on Expired Patent
• Citable No. 34: TTAB Affirms Refusal of Flavor as a Mark for Pills on Grounds of Functionality and Failure To Function
• Citable No. 31: TTAB Sustains Opposition to Two Product Design Marks as Functional and Non-Distinctive, but Dismisses Fraud Claims

Fraud:

• Citable No. 31: TTAB Sustains Opposition to Two Product Design Marks as Functional and Non-Distinctive, but Dismisses Fraud Claims
• Citable No. 19: TTAB Rejects Fraud Claims, Grants 2(d) Cancellation Counterclaim
• In Citable No. 18, TTAB Draws Distinction between Fraud and Nonuse
• In a Citable Decision, TTAB Cancels Three "TUNDRA" Registrations on the Ground of Fraud

Genericness:

• Citable No. 54: "ESERVER" Generic for Computer Network Products, Says TTAB
• Citable No. 52: TTAB Finds "OUTDOOR PRODUCTS" Generic for ... Guess What?
• Citable No. 42: TTAB Sustains India Tea Board's Section 2(d) Opposition Re "DARJEELING" Certification Marks
• TTAB Citable No. 39: "NUTRITION BULLETIN" Generic for ... Guess What?
• In a Citable Decision, TTAB Reverses Genericness Refusal of AOL's "INSTANT MESSENGER"

Concurrent Use:

• Citable No. 35: TTAB Issues Rare Concurrent Use Ruling Re "THE COPY CLUB"

Disclaimer practice:

• Citable No. 49: TTAB Upholds Disclaimer Requirement of "ROUGE" in "GALA ROUGE" for Wine
• Citable No. 28: TTAB Reverses Disclaimer Requirement and Clarifies Unitary Disclaimer Rule

Filing basis:

• Citable No. 27: Domestic Assignee of Section 44 Applications Allowed to Amend Basis for Registration

Trade Dress/Product Configuration:

• Citable No. 55: Baldwin Key Head Shape Has Acquired Distinctiveness, Says TTAB
• Citable No. 36: TTAB Deems Earplug Configuration Functional Based on Expired Patent
• Citable No. 31: TTAB Sustains Opposition to Two Product Design Marks as Functional and Non-Distinctive, but Dismisses Fraud Claims

Use in Commerce/Specimen of Use/Mutilation:

• Citable No. 51: TTAB Upholds 2(d) Refusal of "PSYCHO" for Clothing, But Overturns Mutilation Refusal
• Citable No. 46: TTAB Reverses Mutilation Refusal (Again)
• Citable No. 34: TTAB Affirms Refusal of Flavor as a Mark for Pills on Grounds of Functionality and Failure To Function
• Citable No. 32: TTAB Affirms PTO Rejection of Brochure as Specimen of Trademark Use
• Citable No. 26: TTAB Reverses Failure-to-Function Refusal of "INFOMINDER" Service Mark
• Citable No. 23: TTAB Affirms "Failure to Function" Refusal of "SPECTRUM" for Dimmable Pushbuttons
• Citable No. 21: TTAB Rejects Website Specimen for Genitope's "Fingerprint Man" Mark

Procedural Issues:

• Citable No. 56: TTAB Refuses to Review Procedural Propriety of PTO's Belated 2(d) Refusal
• Citable No. 47: TTAB Sets Aside Cancellation Default Judgment for Lack of Service on Respondent
• Citable No. 44: TTAB Dismisses "DYKES ON BIKES" Opposition for Lack of Standing
• Citable No. 43: TTAB Interlocutory Ruling on Protective Order and Expert Witness Issues
• Citable No. 8: Laches Grounds "Gold Seal" 2(d) Cancellation Petition
• Citable No. 7: Canadian Bests Dane in Use-less TTAB Priority Duel

Text and photographs Copyright John L. Welch 2006-7.

CAFC Reverses TTAB's "First Niagara" Ruling re Use Required to Support 2(d) Opposition

In a precedential ruling, First Niagara Ins. Brokers, Inc. v. First Niagara Financial Group, Inc., 81 USPQ2d 1375 (Fed. Cir. 2007), the CAFC reversed the TTAB's decision in the First Niagara case, ruling that the Board had applied too stringent a test in requiring that Opposer First Niagara Insurance Brokers, Inc. ("FN-Canada") prove use of its marks "in commerce." First Niagara Ins. Brokers Inc. v. First Niagara Financial Group, Inc., 77 USPQ2d 1334 (TTAB 2005). [TTABlogged here].


The Board dismissed FN-Canada's Section 2(d) oppositions to registration of the mark FIRST NIAGARA for insurance brokerage services because Opposer failed to establish "use of its pleaded marks on insurance brokerage services regulable by Congress." Consequently, the Board held that FN-Canada "cannot establish priority and cannot prevail on its claim of likelihood of confusion."


The CAFC ruled, however, that the Board had applied the incorrect test. Section 2(d) uses the terminology "previously used in the United States by another." It does not state that the use must be "in commerce lawfully regulable by Congress," as the Board held. The CAFC pointed out that if "use in commerce" were required for a Section 2(d) opposition, then an opposition could not be based solely on intrastate use. That is not the law (as the Board acknowledged in footnote 15 of its decision). In other words:

"... a foreign opposer can present its opposition on the merits by showing only use of its mark in the United States."

Applicant FN-Canada did not argue that the Board had applied the wrong test, and the Board "apparently found" that FN-Canada had "waived the right to argue this case on the correct lesser use requirement." The CAFC, however, chose to consider the issue anyway, believing "it would be imprudent to render a decision predicated upon a hypothetical reading of Section 2(d), i.e., as if it requires 'use in commerce' instead of 'use in the United States.'"

The CAFC concluded that the Board clearly erred in dismissing the oppositions. "The record unquestionably reveals more than ample use of FN-Canada's marks in the United States to satisfy the use requirements of Section 2(d)."

The case was remanded to the TTAB for further proceedings.

TTABlog comment: I'm still thinking about this decision. What bothers me is whether the Canadian Opposer is "using" the service marks in question at all for purposes of the Lanham Act, since Opposer does not render its services in the United States. I find the CAFC's approach a little too glib. Sure, an intrastate user may oppose under Section 2(d), but at least it is "using" its mark in the United States. How is a company that renders its services only in Canada analogous to an intrastate user who uses its mark in this country? Why should a foreign entity be able to oppose a U.S. application if the foreign entity doesn't render its services in the U.S.?

But see Int'l Bancorp LLC v. Societe Des Bains de Mer et du Cercle des Etrangers a Monaco, 329 F3d 359 (4th Cir. 2003). [Divided panel held that a foreign company's use of a mark in advertising in this country was sufficient to establish trademark rights here, even though its casino services were not rendered in the United States.] The Board had distinguished Int'l Bancorp on the ground that FN-Canada's activities in the U.S. were "minimal and incidental" and its advertising was directed to Canadian purchasers.

Text Copyright John L. Welch 2007.

Citable No. 57: "ARMED ANTIBODIES" Merely Descriptive of Biopharmaceutical Goods and Services, Says TTAB

[This citable decision, dated June 23, 2006, is the second of two citable decisions that eluded me last summer. My apologies to TTABlog readers.] In a citable decision, the Board affirmed a Section 2(e)(1) refusal to register the mark ARMED ANTIBODIES, finding it merely descriptive of "biological preparations for use in the manufacture of biopharmaceutical and biotechnology products" (Class 1), of "antibodies and recombinant fragments thereof for medical diagnostic use in the treatment of cancer" (Class 5), and of "research and product development services in connection with the biopharmaceutical and biotechnology industries" (Class 42). In re Viventia Biotech Inc., 80 USPQ2d 1376 (TTAB 2006).


Nearly 5 pages of the Board's 13-page decision comprised a long quotation from the online publication called "Signals," which the Board found to be "particularly instructive about the use of antibodies, and the development of 'armed antibodies,' in the treatment of cancer." Examining Attorney Yong Oh (Richard) Kim also submitted other articles and web pages.

"The evidence ... shows that linking antibodies to such agents as radioisotopes or chemotherapeutic compounds or toxins is referred to as 'arming' them, and that the resulting antibodies are referred to as 'armed antibodies.'"

Applicant Viventia pointed out that, in these articles, the term at issue is used by the authors of the articles, "rather than by the biotech or drug companies whose products are discussed in the articles." Nonetheless, according to the Board, that did not make the articles any less persuasive: "the readers of the articles will understand the meaning of the term, or else the authors would not have used the term." Moreover, the articles cited are found "on the websites of institutions that deal with health care matters." And at least one competitor website used the term in a "descriptive/generic "manner.


The Board concluded that ARMED ANTIBODIES immediately conveys significant information about the goods and services." The Class 1 goods "can encompass preparations that are used to make armed antibodies." As to the class 5 goods, "the very identification shows that they are antibodies." And Applicant's identified services are "broad enough to encompass research and product development services in which armed antibodies are a central characteristic or subject matter."

The Board therefore affirmed the Section 2(e)(1) refusal.

Text Copyright John L. Welch 2007.

Citable No. 56: TTAB Refuses to Review Procedural Propriety of PTO's Belated 2(d) Refusal

[This citable decision, dated June 21, 2006, somehow slipped by me last summer. I think I was on vacation in Chicago at the time. My apologies to TTABlog readers.] In a citable decision, the Board affirmed a Section 2(d) refusal to register the mark JUMP DESIGNS for various furniture items, finding it likely to cause confusion with the registered mark JUMP for furniture and related goods. The Board refused to consider Applicant's argument that the refusal, issued after Applicant had filed its Statement of Use, was improper and untimely; the propriety of the PTO's action involves a procedural issue that should have been taken up on petition to the Director. In re Jump Designs, LLC, 80 USPQ2d 1370 (TTAB 2006).


Applicant Jump Designs contended that the PTO's Section 2(d) refusal was untimely and "procedurally defective" because it was issued after Applicant had filed its statement of use. Jump Designs also argued, unsuccessfully, that the Section 2(d) refusal was groundless.

Examining Attorney Susan Stiglitz asserted that, when the subject application was abandoned and then revived, a second search was conducted. It would have been "clear error," she urged, if the JUMP registration were not cited.

Applicant, in turn, pointed out that the Examining Attorney never indicated that "the failure to issue the refusal would be a 'clear error' or that the refusal was based on use-related issues." It maintained that the PTO should not be allowed "a second bite of the apple."

"Applicant is aware that challenges to the application of the clear error standard must be brought by way of petition to the Director (TMEP Section 1109.08.) Here, however, because there is no assertion in the Office Action that the refusal to register was based on application of the clear error standard, there is no basis to petition the Director."

The Board was not sympathetic: it ruled that Applicant should have petitioned the Director regarding this issue, rather than appeal:

"The fact that there was not a statement in the Office action that the Section 2(d) refusal was made under the 'clear error' standard does not excuse applicant for its failure to follow the proper procedure in seeking review. Given the procedural posture of the application, it should have been obvious to applicant that the examining attorney made the Section 2(d) refusal under the clear error standard. See TMEP Section 1109.08."

Thus the Board's determination on this appeal was limited to "the underlying substantive refusal," and it refused to consider "the merits of applicant's arguement that the refusal is procedurally deficient under the 'clear error' standard."


As to the Section 2(d) refusal, the Board found the goods to be, in part, legally identical, and the marks to be "similar in sound, appearance, meaning and overall commercial impression" (bearing in mind the descriptiveness of the word "designs" in Applicant's mark).

In sum, the Board affirmed the Section 2(d) refusal to register.

Text Copyright John L. Welch 2007.

TTAB Posts January 2007 Hearing Schedule

The TTAB hearings scheduled for January are listed below. Those of you who are planning to build or remodel a house may find several of these oral arguments to be particularly informative. The hearings are held in the East Wing of the Madison Building. [The schedule may be found at the TTAB website (lower right-hand corner)].


Ten TTAB hearings are scheduled for this month:

January 10, 2007 - 2 PM: In re Tyco Plastics Services AG, Serial No. 78431431 [Section 2(d) refusal of PARTYPAL for a "disposable plastic plate containing a beverage holder" in view of the registered marks MERRY PALS, SPORTS PALS, and ZOO PALS for disposable dinnerware].

January 11, 2007 - 10 AM: Champion Performance Products, Inc. v. Sara Lee Global Finance LLC, Cancellation No. 92040440 [Petition to cancel a registration for CHAMPION LYTE for sports drinks, based on likely confusion with CHAMPION NUTRITION and CHAMPION PROFLEX for sports drinks and nutritional supplements].

January 11, 2007 - 2 PM: In re BFS Diversified Products, LLC v. L&P Property Management Co., Opposition No. 91151220 [Likelihood of confusion between Applicant's mark HARTEX for carpet underlay, and Opposer's mark HARTEX for pale crepe rubber and natural latex rubber].

January 16, 2007 - 10 AM: In re Wieland Dental + Technik GmbH, Serial No. 76514103 [Section 2(d) refusal of REFLEX for veneering material for dental use, in view of the identical registered mark for orthodontic appliances].

January 17, 2007 - 10 AM: In re McTech Group, Inc., Serial No. 76598838 [Section 2(d) refusal of ULTRACURE NCF for slab-on grade concrete curing blankets, in light of the registered mark ULTRACURE for "elastomeric waterproofing and anti-fracture membrane"].

January 18, 2007 - 10 AM: Christian Broadcasting Network, Inc. v. ABS-CBN Int'l, Cancellation No. 92044366 [Petition to cancel a registration for ABS-CBN for telephone calling card services and television broadcasting services, in view of the registered marks CBN, CBN WORLDREACH, and CBN NEWS for television broadcasting and for Christian evangelical ministerial services].

January 23, 2007 - 2 PM: Andersen Corp. v. Freud TMM Inc., Cancellation No. 92042430 [Petition to cancel a registration for PERMA-SHIELD for coatings sold as a component part of power saw blades, in view of the registered mark PERMASHIELD and variants for windows, doors, and related hardware].

January 24, 2007 - 2 PM: In re Masonite Int'l Corp., Serial No. 78389392 [Section 2(d) refusal of CAVALIER for non-metal doors made from wood composite and solid wood components, in view of the identical mark registered for non-metal railings, guardrails, handrails, and banisters for use in and/or on buildings].

January 30, 2007- 2 PM: In re Brunswick Commercial and Government Prods., Inc., Serial No. 76328308 [Section 2(d) refusal to register CHALLENGER for utility and industrial boats, in view of the mark CHALLENGER OFFSHORE, registered for boats and for retail and wholesale services featuring boats].

January 31, 2007 - 2 PM: In re Homefirst LLC, Serial No. 78294797 [Section 2(d) refusal of HOMEFIRST CERTIFIED for real estate management of, and construction and development of, residential communities, in view of the mark HOME FIRST AGENCY, INC. and Design for insurance agency services and provision of extended warranty services in the field of manufactured housing].

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

Text Copyright John L. Welch 2007.m

Unsatisfied by Applicant's Half-Baked Arguments, TTAB Affirms 2(d) Refusal of "TIRAMISU BY ISABELLA"

Cappuccino's Cafe not surprisingly found that it was no piece of cake to overcome the PTO's refusal to register TIRAMISU BY ISABELLA for "bakery deserts, namely, tiramisu" [TIRAMISU disclaimed]. The Board affirmed the PTO's finding of likely confusion with the registered mark ISABELLA for bakery products. In re Cappucino's Cafe, Ltd., Serial No. 76586779 (December 12, 2006) [not citable].


The Board readily found the marks to be "highly similar" and the goods "closely related." It then addressed the two awful arguments advanced by Applicant: (1) confusion is not likely because Applicant and Registrant operate in different geographical areas, and (2) Registrant's mark consists of a "personal name," which is not entitled to protection.

According to Applicant, Registrant operates only in Ohio, while Applicant operates solely in Illinois, and "[t]he average purchaser in Ohio would not travel to Illinois just buy (sic) bakery goods specifically Tiramisu and the average purchaser in Illinois would not travel to Ohio for their bakery goods or Tiramisu." The Board, however, noted that an unrestricted registration is entitled to nationwide scope (See 15 U.S.C. Section 1057(c)), and so this geographical distinction is meaningless.

As to the personal name argument, Applicant made the ridiculous claim that "a personal name is not subject to exclusive appropriation as a trademark even though registered as such," citing a 1912 decision. The Board, however, observed that in 1946 the Lanham Act "modernized, and substantially 'rewrote' U.S. Trademark Law," and it "in no way restricts the ability of trademark owners to secure rights in and registration for given names." Moreover, Applicant's argument amounts to an improper attack on the validity of a registration, which is not permitted in an ex parte proceeding.

And so this Applicant got its just desserts.

Text Copyright John L. Welch 2007.

TTAB Waves Good-bye to "COLOR WAVE" in Colorless 2(d) Appeal

Can you guess how this appeal turned out just from the basic facts: Applicant's mark COLOR WAVE for markers [COLOR disclaimed] was refused registration due to confusing similarity with COLORWAVE for art paper? Yep, affirmed: marks virtually identical, and goods related, both inherently and in view of third-party registration evidence. In re Binney & Smith Inc., Serial No. 78472642 (December 18, 2006) [not citable].


Applicant Binney & Smith lamely argued that Registrant's mark is "inherently weak" in light of the descriptive meaning of "color," pointing to its own disclaimer and to a list of third-party registrations. The Board was not impressed. The disclaimer has "no legal effect" on the likelihood of confusion issue. And a mere list of registrations is not sufficient to make the registrations of record (and even if it were, the two marks at issue are still virtually identical, whether or not the registrations showed the word "color" to be a weak formative).

Turning to the goods, B&S feebly asserted that they are "of a different character and nature and are 'appreciably different' products." The Board, however, noted that the goods are "inherently related," and the PTO's third-party registration evidence slammed the lid closed on Applicant's crayon box.

Finally, B&S offered two arguments that are guaranteed losers: that the absence of evidence of the fame of the cited mark and the absence of evidence of actual confusion are factors weighing in its favor. Wrong. As to fame, the Board "would not expect the examining attorney to submit evidence of fame of the cited mark." As to confusion, the subject application is based on intent-to-use, and so "we have no information as to whether a meaningful opportunity for actual confusion has occurred."

The Board therefore unsurprisingly affirmed the Section 2(d) refusal.

Text Copyright John L. Welch 2007.

TTAB Finds "DPOF" Capable of Functioning as a Trademark for Digital Cameras

Did that digital camera you got for Christmas include DPOF? Before you check, you might want to know (or you might not) that the TTAB just reversed a refusal to register the mark DPOF on the Supplemental Register, finding the mark to be capable of functioning as a trademark for digital cameras and related goods. In re Fuji Photo Film Co., Serial No 75580709 (December 19, 2006) [not citable].


Applicant Fuji asserted that it, along with its partners Kodak, Canon, and Matsushita, developed a proprietary technical specification for digital cameras and other digital imaging products; that the DPOF mark identifies "both the technical specification and the goods of Applicant and its licensees which are compliant with the standard;" that more than 140 companies have entered into the DPOF Specification Agreement; and that Applicant controls the "relevant quality associated with the DPOF designation." [TTABlog note: DPOF is an acronym for "digital print order format," the purpose of which is, according to one article, "to allow consumers who aren't interested in working with a PC to easily review images [on the camera's screen], crop and size them, select the ones they want to print and be able to push a button to make the process simple."]

The Examining Attorney argued that DPOF is "an industry standard, and not an indicator of source," that the designation DPOF is applied to goods over which Fuji has no control, other than verifying compliance with its specifications, and that, although DPOF might have been a distinctive mark, Fuji's and its licensees' use of the DPOF acronym "has permanently changed [its] nature and meaning."

The Board noted that Fuji's sole basis for registration is its ownership of a Japanese registration for the mark (Section 44(e)), and therefore Fuji need not prove use of the mark anywhere in the world prior to registration. Thus the Board did not have to consider whether Fuji has made use of the DPOF mark as a trademark.

The Board could not find "on the record of this case" that DPOF is incapable of functioning as a trademark.

"We note that the evidence of record indicates that DPOF serves both as an initialism for a method of transferring digital images known as 'digital print order format' and also as a mark used to identify goods conforming with that standard. Nonetheless, the examining attorney has cited to no authority to support a finding that a term used to denote such a method is incapable of distinguishing applicant's goods from those of others."

The Board therefore reversed the refusal to register.


TTABlog comment: Left for another day is the question of whether the DPOF mark, as currently used, functions as a trademark. Fuji asserted that the DPOF technology is covered by "patent, copyright, trade secret and other protections," so perhaps the addition of a trademark registration is not that important in the grand scheme of things. In other words, even after the patents and copyrights expire (decades from now in the latter case), the trade secrets may still give Fuji and its cohorts perpetual rights in at least some of the technology, with or without a registered trademark.

Text Copyright John L. Welch 2007.

Citable No. 55: Baldwin Key Head Shape Has Acquired Distinctiveness, Says TTAB

In its 55th citable decision of 2006, the Board reversed a refusal to register the configuration of a key head (shown below) as a trademark for metal door hardware and key blanks, finding that the mark has acquired distinctiveness. Applicant overcame its lack of "look for" advertising evidence by proving that key head shapes are viewed as trademarks in its field. In re The Black & Decker Corp., 81 USPQ2d 1841 (TTAB 2006).


The sole issue before the Board was whether the configuration has acquired distinctiveness. Applicant, the assignee of Baldwin Hardware, submitted proof that, during the years 2000 to 2004, it spent more that $20 million on advertising and marketing its products, and generated more that $500 million in revenues. Its marketing manager averred that the Baldwin Key Head Design is an arbitrary design, that "it is an industry practice to use different and identifiable key head designs for locksets and keys," that the design has been featured in promotions (including sales person lapel pins), and that since 2001 Baldwin has used an octagonal logo for all its advertising and promotional materials.

In addition, Applicant submitted ten form customer declarations attesting to the distinctiveness of the design, five third-party registrations for marks consisting of other key head designs for door hardware, and photos of ten key heads from other manufacturers of locksets.

Specimen of Use
The Examining Attorney urged that Applicant's evidence was not enough to open the door to registration, pointing to the lack of "look for" advertising -- i.e., promotion of the design as a trademark. He argued that the sales figures may show the commercial success of the goods, but not that the design is a source indicator. As to the customer declarations, the PTO asserted that eight are from retailers who are biased, leaving a mere two consumer affidavits. The Board noted, however, that the PTO offered no evidence of use of "very similar key head designs by others."


The Board acknowledged that it has, at times, been critical of an applicant's 2(f) claim when "look for" evidence was not provided. Here, however, the Board found the evidence regarding industry practice to be significant.

"the evidence in this case shows that it is common for manufacturers of door hardware to use key head designs as source indicators. This makes it all the more likely that consumers would perceive applicant's applied-for mark as a trademark."

The Board ruled that the absence of "look for" advertising was "not a critical factor in this case." It found the customer declarations to be "clear as to what is understood to represent applicant's applied-for mark," and found no evidence to support the claim of bias.

The Board concluded that Applicant has established a prima facie case of acquired distinctiveness which the PTO had failed to rebut.

TTABlog note: Rarely does an applicant for a product configuration mark clear the distinctiveness hurdle. During the period 2000-2004, only in one of nine such cases did the applicant succeed: In re F. Schumacher & Co., Serial No. 75613624 (April 1, 2004) [not citable] [rounded binding design of wallpaper sample books]. For a discussion of those cases, and of trade dress registration generally, see Welch, "Trade Dress and the TTAB: If Functionality Don't Get You, Nondistinctiveness Will," 18 Allen's Trademark Digest 5 (November 2004).

The Board here noted that "[t]here is no set amount of proof necessary to demonstrate distinctiveness." But it ignored the precedents that hold that, in product configuration cases, the burden of proof is "heavier" because consumers do not associate a product design with a particular producer as readily as they do a trademark or a packaging design. See, e.g., In re Ennco Display Systems, Inc., 56 USPQ2d 1279, 1283 (TTAB 2000).

Text Copyright John L. Welch 2007.