TTABlog Special Report: How to Find the Billy Goat Tavern

Those of you who plan to attend "MEET THE BLOGGERS III" may find the Billy Goat Tavern a bit difficult to locate. The Billy Goat is on a level below 430 N. Michigan Avenue. (Map here). It is not visible from Michigan Avenue. Look for the staircase in front of the Walgreen's (photo below) on the west side of Michigan. Descend that staircase and then turn and walk to your right to find the Billy Goat.

Click on photo for larger picture

Precedential No. 33: "DORSAL NIGHT SPLINT" Generic For Orthopedic Splints Worn at Night, Says TTAB

Applicant Active Ankle was tripped up in its attempt to register DORSAL NIGHT SPLINT on the Supplemental Register. The Board found the phrase to be generic for "orthopedic splints for the foot and ankle." In re Active Ankle Systems, Inc., 83 USPQ2d 1532 (TTAB 2007) [precedential].


In a preliminary skirmish, Examining Attorney Lana H. Pham contended that DORSAL NIGHT SPLINT is a compound word [If you buy that one, I have a bridge in Brooklyn I'd like to sell you - ed.], and therefore that the CAFC's In re Gould analysis should apply. (In re Gould Paper Corp., 5 USPQ2d 1110 (Fed. Cir. 1987)). Applicant correctly contended that the subject phrase is a phrase and therefore that In re American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999), applies. The Board agreed with Applicant that American Fertility controls, but it declined to grant Applicant's request that an augmented panel consider overruling the TTAB's decision in In re Leatherman Tool Group, Inc., 32 USPQ2d 1443 (TTAB 1994); the Examining Attorney's inappropriate reliance on that decision (superseded by the CAFC's American Fertility ruling) does not require the Board to expressly overrule it.

The PTO relied on two NEXIS database excerpts, a handful of Internet pages, and excerpts from Applicant's own website, showing use of the phrase "dorsal night splint." Other Internet evidence established that dorsal splints are used in connection with the foot and that the term "dorsal" is used in connection with the foot and ankle. And Applicant submitted four registrations with "night splint "but not "dorsal night splint" in their identifications of goods.

Everyone agreed that the genus of goods at issue was "orthopedic splints for the foot and ankle to be worn while sleeping." The Board next found that the relevant public includes the general public, not just physicians and podiatrists, since Applicant's splints are available for purchase by the public via the Internet.

Applicant admitted during prosecution that "NIGHT SPLINT" is generic in relation to its goods. The Board also found that the words DORSAL, NIGHT, and SPLINT are each generic as to the goods. It ruled that the two NEXIS excerpts and the eight Internet excerpts were sufficient to show that DORSAL NIGHT SPLINT is generic.

Applicant unsuccessfully argued that some of the excerpts referred to its product, but the Board pointed out that in those excerpts the phrase was still used generically. Moreover, three of Applicant's competitors use the phrase generically.

Pointing to what may have been Applicant's Achilles heel(s), the Board asserted that the phrase is used generically on the specimens of record (see below): "Tips for getting the greatest benefits from your new Dorsal Night Splint." According to the Board, the letters DNS would be seen as indicating the source of Applicant's products. "This is so despite applicant's use of the barely noticeable 'TM' symbol in connection with the second use of DORSAL NIGHT SPLINT." Moreover, the term "A-Force" is prominently displayed on the splints, diminishing any possible source-identifying significance of DORSAL NIGHT SPLINT.


Finally, the Board observed that DORSAL NIGHT SPLINT is generic despite the fact that other terms ["Night Splint," "Plantar Fasciitis Night Splint," "Night Passive Splint," and "Night Foot Splint"] may be used to name the goods. All of the generic names for a product are in the public domain.

TTABlog comment: I don't disagree with the Board's ruling, but I think it went a bit too far in relying on Applicant's specimen of use and its other trademark as further support for its genericness ruling. Applicant did use the phrase "Dorsal Night Splint" in initial caps on its specimen of use. And the fact that the trademark "A-Force" also appears on the product doesn't mean that Applicant can't have two trademarks on the product.

Nonetheless, DORSAL NIGHT SPLINT seems to be generic under what I call the "reverse-Carnac" test (adopted from the legendary Johnny Carson's tv routine, "Carnac the Magnificent"). Imagine Johnny holding an envelope to his head after reading off the following question "What do you call a splint worn at night to provide support to the dorsal region of the foot?" After Ed McMahon repeats the question and Johnny does a double-take, he tears open the envelope to read: DORSAL NIGHT SPLINT.


Text Copyright John L. Welch 2007.

Mark Your Calendar: "MEET THE BLOGGER III"

MEET THE BLOGGERS III, the third annual gathering of trademark lovers, bloggers, and other INTA-viduals, will be held on Monday night, April 30th, from 7:30 PM to 9:30 PM at Chicago's famous "Billy Goat Tavern." Tri-sponsors Marty Schwimmer, Ron Coleman, and John L. Welch will be there to meet and greet you. Expected guests include a former TTAB judge, a famous trademark treatise author, and some of the world's leading trademark practitioners. Potential invitees include Mayor Daley, Ozzie Guillen, Oprah Winfrey, and other notable Chicagoans.


The Billy Goat is located at 430 N. Michigan Avenue (lower level, entrance on Hubbard), just a few blocks from the INTA headquarters hotel. (Map here).

Please stop by and have a beer or other beverage, some polite conversation, and a few laughs. Once again, we promise that all comments made will be off the record. (What happens at INTA stays at INTA).
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Precedential No. 32: "LENS" Generic for Internet Sale of Contact Lenses, Says TTAB

Hardly blinking an eye, the Board affirmed a genericness refusal of the term "LENS" for "retail store services featuring contact eyewear products rendered via a global computer network." For the sake of completeness, the Board also considered and rejected Applicant's claim of acquired distinctiveness. In re Lens.com, Inc., 83 USPQ2d 1444 (TTAB 2007) [precedential].


Applicant Lens.com, Inc. argued that the term LENS is merely suggestive of its services (LOL - ed.), or if descriptive, that the term has acquired secondary meaning. Examining Attorney Kimberly Boulware Perry maintained that LENS is generic because it "identifies the goods featured in the retail services at issue." She relied on dictionary definitions of "lens," "contact lens," and "eyewear," and Internet website pages indicating that the term "lens(es)" is used to refer to contact lenses. The Board understandably agreed that "lens" is used as shorthand for "contact lens."

Turning to the two-part genericness inquiry, the Board first found the genus of services to be "retail Internet store services featuring contact lenses." The second question: does the relevant public understand the term LENS to refer to that category of services?

Citing several precedents, including In re Candy Bouquet Int'l, Inc., 73 USPQ2d 1883 (TTAB 2004) [CANDY BOUQUET generic for retail candy services], the Board again agreed with the Examining Attorney that because LENS is "a name for" contact lenses, and because such lenses comprise the subject matter of Applicant's services, the term LENS is "likewise a generic name for the retail Internet store services themselves."

Applicant pointed to its ownership of a registration for LENS for computer software for the electronic ordering of contact lenses, but the Board stayed focused on the matter at hand. For one thing, that registration was obviously for goods rather than for services, and for another, the Board is not bound by prior actions of an examining attorney on a different application. See In re Nett Designs Inc., 56 USPQ2d 1564, 1566 (Fed. Cir. 2001).


Turning to the issue of acquired distinctiveness (assuming arguendo Applicant's mark to be merely descriptive rather than generic), the Board found Applicant's evidence insufficient. Lens.com pointed to sales of more than $4 million in 2004, a customer list exceeding 130,000 customers, and advertising expenditures exceeding $1.4 million since 1998.

The Board found that this evidence suggests "a degree of business success" and demonstrates the popularity of Applicant's services, but it falls "far short" of establishing that LENS has source-identifying significance. The evidence does not show that the advertising and sales figures relate to the designation LENS rather than, for example, Applicant's name LENS.COM. Moreover, the record is devoid of direct evidence that relevant customers view LENS as a distinctive source indicator for the services. Given the highly descriptive nature of LENS, "a great deal more evidence (especially in form of direct evidence from customers)" would be required.

In sum, Applicant lost.

TTABlog note: I am now keeping a running list of TTAB precedential decisions for 2007 (with links). Look to the column on the right, under the clever heading "Precedential Decisions." You will also find a similar list for each of the last three years.

Text Copyright John L. Welch 2007.

Fame of "GOOGLE" Blows Away "BLOGLE" in TTAB 2(d) Summary Judgment

Despite obvious differences in the marks, the Board granted summary judgment to Google, Inc. in its Section 2(d) opposition to registration of the mark BLOGLE (Stylized) for "computer software for searching, compiling, indexing and organizing information." The Board found that mark confusingly similar to the registered and famous mark GOOGLE for search engine software and services. Google, Inc. v. Pivot Design, Inc., Opposition No. 91171124 (April 20, 2007) [not precedential].


The Board first turned to the "fame" factor, since fame plays a "dominant role" in its du Pont analysis. Opposer Google's proofs were staggering: in 2006, the GOOGLE website received more than 300 million visitors per day and the company's revenues grew from $400 million in 2002 to $7.3 billion in 2006. Surveys showed that GOOGLE and GOOGLE.com were among the top five leading brands worldwide from 2001-2005.

Opposer submitted two online dictionary entries for GOOGLE, which list the term as a "trademark" and a "proprietary name." Moreover, the entry for GOOGLE in the 2006 edition of The American Heritage Dictionary of the English Language reads:

"Google - A trademark used for an Internet search engine. This trademark often occurs in print as a verb, sometimes in lowercase: 'A high school English teacher ... recently Googled a phrase in one student's paper and found it had been taken from a sample essay of an online editing service.'"

There was no genuine issue of material fact regarding the fame of the GOOGLE mark. The Board noted that "[t]he Lanham Act's tolerance for similarity between competing marks varies inversely with the fame of the prior mark." Moreover, when the goods are identical, the degree of similarity between marks necessary to support a finding of likely confusion declines.

Here, Opposer's goods "encompass applicant's goods and opposer's services are closely related to applicant's goods." In fact, Applicant did not dispute this relatedness.

Applicant Pivot's argued that the differences in the marks create a genuine issue of material fact that precluded summary judgment. Not so, said the Board.

It pointed out that each mark contains six letters, the last four being identical. Each mark has two syllables having a similar cadence.

"Importantly, the connotation of applicant's mark includes the word 'blog.' A 'blog' is defined as an abbreviation for 'weblog,' which is further defined as 'a website that displays in chronological order the postings by one or more individuals and usually has links to comments on specific postings.'" [Gee, I never thought of it that way! - ed.]

Thus the impression of applicant's mark is that of a "search engine for blogs." In light of their use on legally-identical goods, the marks have a "similar overall commercial impression."

Furthermore, the manner of use of the two marks adds to the overall similarity of their commercial impressions. Pivot's mark appears in its specimen of use in two colors, orange and blue. [nice! - ed.]


Google's mark, as shown on one of its specimens of use, appears in red, blue, green, and yellow. "The use of colored letters in the parties' marks as well as the similarities in their stylizations enhances the inherently-similar commercial impressions made by the marks."


The Board found "no genuine issue of material fact that the marks are confusingly similar."

Weighing the pertinent factors, and finding no genuine and material factual dispute, the Board granted Google's summary judgment motion.

TTABlog comment: If you had been thinking that use of "google" as a verb might be bad for the GOOGLE trademark, perhaps you should think again!

Text Copyright John L. Welch 2007.

TTAB Again Says Correction of False Statement Before Publication Avoids Fraud

The TTAB has again stated (in dictum in this non-precedential decision) that an (innocent) false statement regarding use of a mark, if corrected before the mark is published for opposition, will not be considered fraud. That didn't help Applicant Michael Rich, who admitted during discovery that he made a mistake when he filed his use-based application for the mark MONORICO & Monkey Design: he should have separated the goods for which the mark was in use (shirts and hats) from the remaining clothing items that "were to be used in commerce." The Board granted summary judgment to the Opposer on the ground of fraud. Kipling Apparel Corp. v. Rich, Opposition No. 91170389 (April 16, 2007) [not precedential].


Applicant Rich urged that he was not represented by counsel, that he filed the application in good faith, and that did not realize his mistake until the notice of opposition was filed. He noted that he owns a registration for the word mark MONORICO for "essentially the same goods," and believed he was entitled to registration "because the word portion of the subject mark is the same as his registered mark and both involve the same goods."

Nothing doing, said the Board. "The fact that applicant misunderstood a clear and unambiguous requirement for a use-based application and was not represented by legal counsel does not shield applicant from our finding that he knew or should have known that the representation of fact in his application was false." Citing Hurley Int'l LLC v. Volta, the Board concluded that "it was not reasonable for applicant to state use dates in a use-based application for goods upon which he had no use." Rich was under an obligation to investigate thoroughly before signing the declaration.

The Board observed, however, that Rich could have avoided fraud by correcting his misstatement before the mark was published, in which case the misstatement would not have been material:

"The subject application, filed under Section 1(a) of the Trademark Act, would have been refused registration but for applicant's misrepresentation regarding his use of the mark. Prior to publication, applicant had an opportunity to remedy the matter because 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. See Universal Overall Co. v. Stonecutter Mills Corp., 154 USPQ 104 (CCPA 1967)."

Rich's remedy is to file a new application "relying on an appropriate and correct basis."

The Board therefore sustained the opposition.


TTABlog comment: Does it make sense for the Board to draw a line at publication? A false statement regarding use, even if innocent, may well affect third parties who search the PTO database. The fact that the statement is corrected prior to publication may mean that the PTO will not "rely" on the false statement in issuing a registration for the identified goods. But third parties may already have relied.

Should the TTAB hold that all false statements regarding use are fraudulent, regardless of when corrected? After all, the law's requirements are "clear and unambiguous." Or should the innocent applicant be let off the hook, regardless of whether at least equally innocent third parties are misled?

Further discussion of these issues may be found in the article that Ann Lamport Hammitte and I recently published, entitled Fraud for Thought: Can Fraud be Avoided by Correcting a False Statement Prior to Publication?. Also see the TTABlog commentary regarding the recent ELLE BELLE decision (here), and regarding the Hurley decision here.

Text Copyright John L. Welch 2007.

Likelihood of Confusion Blog Reports on Hasidic Trademark Dispute

Ron Coleman at the Likelihood of Confusion blog reports here on an "Hasidic trademark fight" between two competing Hasidic groups over registration and use of the term "BOBOV." So far the dispute includes a letter of protest to the PTO, a civil lawsuit, several TTAB oppositions, and a motion to dismiss the oppositions on the ground that the parties are contractually bound to arbitrate the matter in the Beis Din [rabbinical court].


The letter of protest asserts that "'BOBOV', a descriptive, non-distinct term which defines members of the Bobov Hasidic Community, should not and cannot be registered as a trademark by any particular person, institution, group, or sub-group within or without the Bobov community."
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TTABlog on Tour: AIPLA Spring Meeting in Boston

Yours truly, a/k/a the TTABlogger, will be speaking to a Joint Session of the AIPLA Trademark Committees at the AIPLA Spring Meeting in Boston on Wednesday, May 9, 3:40 to 4:40 PM. (Brochure here). The topic: "TTAB Update: Rules, Rulings, and Ruminations."

I expect to take a long look at the TTAB's fraud jurisprudence, check in on the proposed Rules package, and comment on some of the best and worst decisions in the past twelve months or so. Attendees will receive a souvenir TTABlog keytag (whether they want one or not). If you want one and can't make it to Boston, see me here or here, or just send me an e-mail.

TTAB Finds "KING RANCH" and "RANCH KING" Confusingly Similar for Hats

In a questionable decision, the Board granted a Section 2(d) petition for cancellation of a registration for the mark RANCH KING for "headwear," finding the mark likely to cause confusion with the previously-used mark KING RANCH for clothing, including hats. King Ranch IP, LLC v. GWB, Inc., Cancellation No. 92032301 (April 13, 2007) [not precedential].


Petitioner operates the King Ranch in South Texas, an enormous spread of land larger than the State of Rhode Island. The King Ranch has received considerable publicity over the years, and is listed as a National Historic Landmark. Petitioner began selling clothing in 1992, including caps and cowboy hats. The hats and caps are principally advertised locally, and are sold through catalogues, a website, and Petitioner's retail stores on or near the ranch.


As to the issue of priority, because each party owns a registration for its goods, the registrations "cancel each other out" and petitioner must establish priority its use of the mark. See Brewski Beer Co. v. Brewski Brothers, Inc., 47 USPQ2d 1281 (TTAB 1998). Respondent GWB did not submit evidence of use earlier than its application filing date of February 1, 1999; Petitioner's registration issued from an application filed on May 4, 1999. Thus it was incumbent upon Petitioner to prove a date of use prior to February 1, 1999, and it did so.

Turning, then, to the likelihood of confusion analysis, the Board first considered the goods and channels of trade. Not surprisingly, the Board found the goods to be identical. Moreover, the Board noted, Respondent's "headwear" could include relatively inexpensive hats bought without much deliberation. And the Board pointed out again that when the involved goods are identical, the degree of similarity between the marks required to support a finding of likely confusion is decreased.

Because the challenged registration and Petitioner's asserted registration are unrestricted as to trade channels, the Board must assume that the parties' goods travel in all normal channels of trade. [TTABlog question: Is the Board correct in assuming that Petitioner's goods travel in all normal channels of trade? Since Petitioner has to prove earlier use of its mark rather than rely on its registration, should its trade channels be restricted to those it actually uses: namely, its own catalogues, website, and retail stores? Could one then argue that those specific trade channels are not "normal" channels for hats, and specifically that GWB's hats would not be sold in Petitioner's trade channels?]

The crucial issue for the Board, then, was the similarity or dissimilarity of the marks. The Board opined that, although the "inversion" [reversal? - ed.] of the words KING and RANCH changes the meaning and appearance of the mark(s), "the difference is not significant." With regard to connotation and commercial impression, the Board concluded that "the marks are virtually identical."

"We are not persuaded by respondent's argument that potential purchasers will perceive the alleged surname significance of KING in petitioner's mark. We have no evidence either that potential purchasers of headwear will have detailed knowledge of the history of the King Ranch or that they would perceive a reference to Captain Richard King or any of his descendants in the KING RANCH mark when used on hats."

According to the Board, the inversion of the words "does nothing" to alter the connotation of both marks: "KING connotes something regal or superior, something of high quality, and RANCH connotes that the relevant goods are suitable for or otherwise associated with ranches or like places."

Petitioner argued that its mark is famous, but the evidence did not show fame in connection with hats. The Board concluded that "[a]ny renown for the KING RANCH derives "from the notoriety of the ranch generally," and so Petitioner is here entitled to "only a marginally broader scope of protection."

As to the lack of confusion, the Board noted that the channels of trade really do not overlap, and therefore there has been no real opportunity for confusion to occur.

Considering all relevant du Pont factors (including "the strength of petitioner's KING RANCH mark" [sic!]), the Board found confusion likely and granted the petition for cancellation.

Santa Gertrudis
TTABlog comment: Reminiscent of a steer struggling to cross the Santa Gertrudis Creek, this Board panel just managed to reach its destination: a finding of likely confusion. It wasn't pretty. I find the decision a bit troubling, since I don't think consumers are dumb enough to confuse KING RANCH and RANCH KING -- even putting aside the fame of the KING RANCH. To me "ranch king" means the best hat on the ranch. King Ranch means a ranch owned by someone named King, or a ranch named after a king, or maybe Elvis's ranch.

And as to the fame of the King Ranch, the Board couldn't seem to make up its mind. It's famous enough to give the mark KING RANCH some strength, but not famous enough that people could distinguish between the KING RANCH and RANCH KING marks.

Text Copyright John L. Welch 2007.

TTABlogger Hosts INTA Breakfast Table Topic, May 1st

Yours truly, a/k/a the TTABlogger, will host a breakfast Table Topic at INTA 2007, on Tuesday, May 1, 8AM to 10AM. [TT14]. The subject is "Recent U.S. Supreme Court and Appellate Trademark Decisions." [How's that for a narrow topic?].


If any of you, my dear readers, will be attending this Table Topic, please send me an e-mail and let me know if there are any particular decisions that you would like to discuss. I have two in mind so far: the BUKHARA "famous marks" decision from the 2nd Circuit (TTABlogged here), and the Borinquen Biscuit case from the 1st Circuit (here).

Or you can let me have your thoughts when you see me at "MEET THE BLOGGER III" (details here) on Monday night, April 30.

TTAB Sustains 2(d) Opposition, Deems "VOLKSWAGEN" and "Volks-bagen" for Luggage Confusingly Similar

Finding that all of the pertinent du Pont factors either favored Opposer or were neutral, the Board sustained an opposition to registration of the mark "Volks-bagen" for "backpacks, tote bags, and luggage," finding it likely to cause confusion with the mark VOLKSWAGEN registered for a wide variety of goods and services, including suitcases, luggage, book bags, and carry-on bags. Volkswagen AG v. Mentken, Opposition No. 91165323 (April 9, 2007) [not precedential].


Because the goods of the parties were identical or closely related, the key issue was the similarity of the marks. Applicant Robert Mentken argued that "volks" is a commonly-used and suggestive term that is a weak formative, and that the marks as a whole differ in sound, appearance, and connotation. The Board disagreed.

First, it found the marks to be similar in sound and appearance, since the marks differ only in one letter. As to connotation, Applicant argued that consumers would translate the mark VOLKSWAGEN into its literal counterparts, "people" and "car," and would be perceive Applicant's mark as "people's bagen," or, since "bagen" has no meaning in German, as "people's bag." The Board, however, found no evidence to indicate that consumers, even if they had a basic familiarity with or common understanding of German, would so translate the marks.

Instead, purchasers are likely to regard the marks as two foreign terms "which appear to be quite similar in meaning." To the extent that an American consumer would ascribe meaning to the marks, he or she would probably treat "volks" as meaning "folks," and "wagen" as meaning "wagon." The term "bagen" would "be regarded as something like 'bag.'" And, according to the Board,

"[i]nasmuch as a wagon and a bag plainly are both items used by persons or folks for carrying or toting items, the marks 'VOLKSWAGEN' and 'Volks-bagen' could reasonably be surmised as being substantially similar in connotation." [TTABlog comment: now that's a stretch!]

As to Applicant's argument regarding the weakness of the "volks" formative, he failed to show the significance of that term (meaning "products for everyone") in connection with luggage and bags. In any case, even if Opposer's mark were weak, weak marks are entitled to protection against registration of a substantially similar mark for identical or related goods.

Finally, because of the substantial similarities in sound, appearance, and connotation, the two marks are substantially similar in overall commercial impression.

Opposer Volkswagen argued that its mark is famous, but the Board agreed with Applicant on this one: there was no proper evidence in the record to establish that VOLKSWAGEN is a famous mark. Opposer's relied on two prior decisions (one by the Fourth Circuit and one by the National Arbitration Forum) holding VOLKSWAGEN to be a famous mark, but the factual findings in those cases are not evidence in this case, and in any event the rulings were made more than five years prior to the closing date of Opposer's testimony period.

As to the asserted lack of actual confusion, that was not meaningful here because there was no evidence of an an opportunity for confusion to occur.

Weighing all the pertinent du Pont factors, the Board found confusion likely, and it sustained the opposition.

Text Copyright John L. Welch 2007.

Marty Schwimmer and Ron Coleman Sign On as Tri-Sponsors of "MEET THE BLOGGERS III"

Marty Schwimmer of the Trademark Blog and Ron Coleman of the Likelihood of Confusion blog have joined yours truly as co-sponsors of "Meet the Bloggers III," the third annual gathering of trademark bloggers, trademark aficionados, and other INTA-resting INTA-viduals. You can be an INTA-gral part of this INTA-mate non-event by showing up at Chicago's legendary Billy Goat Tavern on Monday night, April 30, between 7:30 and 9:30 PM.


The Billy Goat is located at 430 N. Michigan Avenue (lower level, entrance on Hubbard), just a few blocks from the INTA headquarters hotel. (Map here). It is a bit difficult to find, so you may have to poke around a bit.


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TTAB Applies Res Judicata, Sustains Opposition to Re-filed "CALVO" Application

Applicant Calvo was thwarted in its second attempt to register its CALVO & Design mark (shown immediately below), this time for fish. Its first application (for the mark shown further below) for various food items was opposed by Calavo Growers of California and ended in a default judgment when Calvo failed to answer the notice of opposition. Despite a change in the mark and a severe narrowing of the goods in Calvo's second application, the Board granted summary judgment on the ground of res judicata. Calavo Growers, Inc. v. Luis Calvo Sanz, S.A., Opposition No. 91170990 (April 11, 2007) [not precedential].


Calvo's first application identified the goods as "meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk; edible oils; canned preserved meat and fish." The drawing of its mark (below) was lined for the color blue.


Calvo's second application identified the goods as "fish and canned fish." Thus the mark was slightly different in the second application and the range of goods was greatly reduced.

Under the doctrine of res judicata, or claim preclusion, a final judgment on the merits of a claim precludes relitigation of that same claim between the parties or their privies -- even in a case of default. The three requirements for application of claim preclusion are:

(1) the parties (or their privies) must be identical;
(2) a final judgment on the merits must have been rendered; and
(3) the second claim must be based on the same facts as the first.

Opposer Calavo Growers, Inc. is the successor-in-interest of Calavo Growers of California, the opposer in the first case. Thus the first requirement was met.

The default judgment in the prior proceeding operates as a final judgment on the merits, satisfying the second requirement.

As to the third requirement, there was no dispute that the claims asserted by the opposer in both proceedings (likelihood of confusion, dilution, and surnameness) are identical. Furthermore, the literal elements of the opposed marks are identical; the slight modification in the design "cannot serve to avoid res judicata."

The goods of the second application "are merely a narrowed version" of the goods of the first. "Applicant cannot avoid the estoppel effect of a prior decision by filing a second application that contains a narrower definition of the goods that were 'fully encompassed' in the present application."

The three requirements having been satisfied, the Board granted summary judgment to Opposer.


The Board noted, however, that Calvo could pursue its pleaded counterclaims for genericness and fraud directed at the five registrations pleaded by Opposer.

Text Copyright John L. Welch 2007.

Precedential No. 31: TTAB Finds "RATED R SPORTSWEAR" Confusingly Similar to the Famous "RATED R" Movie Certification Mark

The fame of the RATED R Certification Mark brought victory to the MPAA in its opposition to registration of the mark RATED R SPORTSWEAR for men's and ladies' clothing ("SPORTSWEAR" disclaimed). The Board found the applied-for mark to be confusingly similar to Opposer's registered RATED R mark for "entertainment services rendered through the medium of motion pictures." Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., 83 USPQ2d 1555 (TTAB 2007) [precedential].


The RATED R mark certifies that a particular film, in the opinion of the MPAA's rating board, "is an adult film in some of its aspects and treatment so far as language, violence, nudity and sensuality are concerned, and that because of such elements no one under the age of 17 should be admitted unless accompanied by a parent or guardian."

The record showed that since 1968 Opposer has provided a voluntary rating system for movies, that more than 20,000 films have been rated since 1968 and 61 percent were rated "R," and that the ratings appear on "most movie theater marquees." Furthermore, the record showed that "theatrical motion pictures are promoted using clothing, including tee shirts and caps."

Opposer pleaded three registrations, but the Board found it necessary to focus only on the RATED R mark. It began its du Pont analysis with the fifth factor: the fame of the mark. The Board observed that "[t]he popularity of motion pictures in the United States cannot be overstated." In 2004, 1.5 billion movie tickets and 1.3 billion DVDs were sold in this country. The MPAA's website receives some 150,000 hits per month and its members spent four billion dollars in 2004 to advertise and promote their movies. A survey in 2004 indicated that 95 percent of those surveyed were aware of Opposer's rating system. Applicant conceded that many people "are aware that RATED R applies to motion picture ratings."

Based on this undisputed evidence, the Board found the RATED R mark to be famous for purposes of Section 2(d). "Such fame must be accorded dominant weight in our likelihood of confusion analysis." (TTABlog comment: As Bugs Bunny would say, "That's all folks!")


As to the marks, the Board found them highly similar in appearance, sound, connotation, and overall commercial impression. That factor, too, weighted heavily in Opposer's favor.

As to the goods and services, the Board noted that they need not be "similar or competitive, or even offered through the same channels of trade, to support a holding of likelihood of confusion." The RATED R certification mark is not used by Opposer; persons use the RATED R mark in connection with motion pictures. The question was whether Applicant's clothing is related to the motion pictures provided by those users.

The MPAA submitted third-party registrations covering clothing items and movies. (E.g., THE SHOOTING GALLERY, SEUSS LANDING). In addition, testimony and other evidence suggested that users of the RATED R mark "produce promotional clothing items bearing the same mark as the motion picture." Moreover, when a mark is famous, purchasers may exercise less care when purchasing a product, even when the goods and services are not closely related. Therefore, the Board found that this factor favors Opposer.

As to channels of trade, the Board made the erroneous statement that, because there are no restrictions in the subject application and registrations as to trade channels or classes of purchasers, "we must assume ... that the channels of trade and the purchasers for applicant's goods as well as the services certified by opposer would be the same." [TTABlog note: that is not a correct statement of the law. The Board must assume that the goods and services travel in the respective normal channels for those goods or services, not that they all travel in the same channels. The normal channels for clothing and movies are not the same, but the normal classes of purchasers (the general public) certainly overlap]. The Board found this factor to favor Opposer.

Finally, Applicant asserted that the lack of actual confusion suggest no likelihood of confusion. The Board noted, however, that Applicant has not made use of its mark for most of its goods, and it found that insufficient evidence to establish that there had been an opportunity for confusion to occur. Besides, the test is likely, not actual, confusion.

Balancing all the factors, the Board sustained the opposition on 2(d) grounds.

TTABlog note: The Board once again declined to reach the dilution claim raised by a successful 2(d) Opposer. Here, in light of the differences in channels of trade, this might have been a good case for the Board to consider the alternative ground for relief. The Board's likelihood of confusion finding might be overturned on appeal, so wouldn't it be prudent to decide the dilution claim now?

The Board's use of a handful of third-party registrations to support its finding of relatedness between clothing and movies is a bit unsettling. As one Board panel noted recently (here), this third-party registration approach can lead to ridiculous results. Clothing items can be found to be related to almost any good or service. There was no showing here that Opposer MPAA used its RATED R mark on any ancillary goods. The Board seemed to be overly eager to find a likelihood of confusion here, so as not to have to deal with the dilution claim.

Text Copyright John L. Welch 2007.

TTAB Finds "ALL-AMERICAN" Not Merely Descriptive of Cookies and Crackers, Dismisses Oppositions

The Board dismissed Section 2(e)(1) oppositions to registration of the marks ALL-AMERICAN CRACKERS for crackers ("CRACKERS" disclaimed) and ALL-AMERICAN COOKIES for cookies ("COOKIES" disclaimed). Opposer Keebler claimed that the term ALL-AMERICAN is "laudatory or descriptive" of the goods and that registration of the marks would impede Keebler's right to call its products "All-American." Keebler Co. v. Partners, Oppositions Nos. 91152728 and 91154926 (March 27, 2006) [not precedential].


For a synopsis of the decision, I direct you to the Seattle Trademark Lawyer blog, whose author, Michael Atkins, represented Applicant Partners in the case.

Text Copyright John L. Welch 2007.

"MEET THE BLOGGERS III" Set For Monday Evening, April 30.

MEET THE BLOGGERS III, the third annual gathering of trademark lovers, bloggers, and other INTA-viduals, will be held on Monday night, April 30th, from 7:30 PM to 9:30 PM at Chicago's Famous "Billy Goat Tavern." The Billy Goat is located at 430 N. Michigan Avenue (lower level, entrance on Hubbard), just a few blocks from the INTA headquarters hotel. (Map here).


Please stop by and have a beer or other beverage, some polite conversation, and a few laughs. Once again, we promise that all comments made will be off the record. (What happens at INTA stays at INTA).
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Precedential No. 30: Registrant's Misunderstanding No Excuse, TTAB Finds Fraud and Cancels "ELLE BELLE" Registration for Clothing

Declaring that "an applicant or registrant may not make a statement he/she knew or should have known was false or misleading," the TTAB granted summary judgment on the ground of fraud and cancelled a registration for the mark ELLE BELLE for various clothing items for men, women, and children. Respondent's assertion that its president misunderstood the statements made in its original use-based application were of no avail because he "was obligated to confirm the meaning and accuracy of the statements contained in the application." Hachette Filipacchi Presse v. Elle Belle, LLC, 85 USPQ2d 1090 (TTAB 2007) [precedential].


Respondent Elle Belle admitted in its interrogatory responses that it use of the ELLE BELLE mark has been limited to women's clothing and that it has never used the mark on men's or children's clothing. When Petitioner cried "fraud!", Elle Belle argued that it lacked the requisite intent because its false statement regarding use resulted from a misunderstanding between its president, Parajmit Singh, and its counsel. Mr. Singh, Respondent noted, is an immigrant whose primary language is Punjabi, and not English [Petitioner Hachette pointed out, however, that Mr. Singh is a U.S. citizen who has resided in this country since 1984 and studied English at one point], and he has difficulty comprehending legal documents [TTABlog comment: don't we all?]. Due to his lack of fluency in English, Mr. Singh has difficulty communicating with this attorneys [TTABlog comment: ditto].

The Board found this case "analogous" to the Board's seminal decision in Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003). Here, as there, there was "no question" that Elle Belle's application would have been refused registration but for the misrepresentation. Respondent's argument that a registration would have issued if it had listed only the women's clothing is "irrelevant." Respondent's misstatement "was relied upon by the USPTO in determining respondent's rights to the registration."

That Mr. Singh may have been unaware that the application alleged use on all the goods, and that he may have difficulty with English, do not change the fraud finding. The language of the application is "clear and unambiguous": "The wording 'applicant has adopted and is using the trademark shown' which precedes the listing of goods is simple and straightforward."

As the Board stated in Medinol, proof of specific intent is not required for a finding of fraud: "the appropriate inquiry is ... not into the registrant's subjective intent, but rather into the objective manifestations of that intent."

"Respondent's president's misunderstanding in the case before us does not now shield respondent from our finding that it knew or should have known that a representation of fact in its application was false. Mr. Singh was obligated to confirm the meaning and accuracy of the statements contained in the application before signing the declaration and prior to submission to the USPTO. *** [A]n applicant or registrant may not make a statement he/she knew or should have known was false or misleading."

Respondent and its attorney "shared the duty to ensure the accuracy of the application and the truth of its statements."

"In this instance had respondent's counsel ensured that he understood what his client was telling him and reviewed the application with his client prior to obtaining the necessary signed declaration, the situation herein could have been prevented."

Finally, the Board noted that, after the cancellation petition was filed, Respondent sought to amend the subject registration to limit it to certain items of women's clothing. The PTO's post-registration section (mistakenly) entered the amendment. The Board ruled that the amendment would be given no effect: it does not serve to cure the fraud that was committed on the PTO. [The Board noted that it was not considering the issue of whether an amendment to a registration filed prior to commencement of a cancellation proceeding would cure or remove fraud. The TTABlog finds it hard to fathom how such an amendment could possibly cure a fraud committed in obtaining the registration.]

And so the Board granted Hachette's motion for summary judgment.

TTABlog Note: In our recent article (here), Ann Lamport Hammitte and I pondered whether fraud could be avoided in a pending application if the false statement of use were cured before publication. If the Board really means it when it says "an applicant or registrant may not make a statement he/she knew or should have known was false or misleading," it is difficult to see how any false statement regarding use, made under oath, can be corrected so as to avoid fraud. That's what makes the Board statement in dictum here regarding curing fraud in a registration both puzzling and unhelpful.

Text Copyright John L. Welch 2007.

TTABlog Floating Key Tags Expected to Make Huge Splash at INTA 2007

With the INTA Annual Meeting only a few snow storms away, you will want to latch onto a TTABlog key tag before you head for the Windy City. These new keytags have been tested in Lake Michigan and may just save you the embarrassment of explaining how you lost your hotel key. Don't believe me? Go jump in the Lake! Seriously, though, you can get yours by sending an e-mail to me at jwelch@ll-a.com, with your mailing address and "TTABlog Key Tag" in the subject line (so I can spot your e-mail if it gets caught in the firm's spam filter).


Soon the TTABlog will make an official announcement regarding "MEET THE BLOGGERS III", the third annual non-event organized by Marty Schwimmer (of the Trademark Blog) and yours truly. We will be gathering at a famous site in the Loop on Monday or Tuesday evening, April 30 or May 1, for the usual fun and festivities.
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CAFC Affirms TTAB Decision: "LAWYERS.COM" Refused as Generic

The United Stated Court of Appeals for the Federal Circuit has affirmed the TTAB's December 16, 2005 decision (TTABlogged here) upholding a genericness refusal of LAWYERS.COM for "providing an online interactive database featuring information exchange in the fields of law, legal news and legal services." In re Reed Elsevier Properties, Inc., 82 USPQ2d 1378 (Fed. Cir. 2007) [precedential].

lawyers.com website
The Board found the genus of services to be "a web site with a database of information covering the identified topics of law, legal news and legal services and .... a central and inextricably intertwined element of that genus is information about lawyers and information from lawyers." Appellant Reed argued that the Board improperly considered all of the services offered at the lawyers.com website in defining the genus of services at issue, instead of just focusing on those identified in the application. During prosecution, Reed had deleted the word "lawyers" from its recitation of services, and it contended it was not seeking to register LAWYERS.COM for "selling lawyers or offering services of lawyers," but only for "information exchange concerning legal services." The CAFC, however, observed that "for better or worse, lawyers are necessarily an integral part of the information exchange about legal services."

The CAFC ruled that the Board had appropriately reviewed Reed's website to inform its understanding of "information exchange about legal services." The Board did not incorporate "non-claimed services" in the genus that it defined. Identify and finding lawyers is part of the information exchange, as Reed's own website makes clear. The same is true about information exchange about the law and legal news. "Information exchange about lawyers is not at all discrete from information about the law, legal news, and legal services." As the Board found, they are "inextricably intertwined." Therefore, the Board's genus determination was proper.

In determining what the relevant public would understand LAWYERS.COM to mean, it was proper for the Board to consider eight other websites with "lawyers.com" in their domain names, and to discuss those websites "in order to illuminate what services the relevant public would understand a website operating under Reed's mark to provide." Those websites provided "substantial evidence to support the board's finding."

Text Copyright John L. Welch 2007.

TTAB Affirms 2(d) Refusal, Dubiously Discards "PARTYPAL" for Disposable Plate with Beverage Holder

In an eyebrow-raising decision, the Board affirmed a Section 2(d) refusal to register the mark PARTYPAL for a "disposable plastic plate containing a beverage holder," finding the mark likely to cause confusion with the registered marks ZOO PALS & Design (shown immediately below), SPORTS PALS, and MERRY PALS for disposable dinnerware. In re Tyco Plastics Services AG, Serial No. 78431431 (March 29, 2007) [not precedential].


The Board understandably found the goods to be similar, if not identical. The identifications of goods in the cited registrations were broad enough to encompass Applicant Tyco's goods. Since there were no restrictions in the application or registrations, the Board presumed that the goods travel in the normal channels of trade and to the normal purchasers for such products. Obviously, disposable dinnerware, being disposable, is/are not likely to be purchased with great care, another factor favoring a likelihood of confusion finding.


But what about the marks? Because the goods are closely related or identical, the degree of similarity necessary to support a finding of likely confusion is diminished. The Board noted the differences in appearance and sound, but found that the "distinctive suffix word 'Pal' (or 'Pals') used in connection with disposable plates, conveys the identical meaning and engenders the same commercial impression, namely that the disposable dishes are easy to use because you can throw them away." [TTABlog comment: I have a few pals, but that doesn't mean I readily discard them].

The Board found "persuasive and logical" Examining Attorney Elizabeth J. Winter's argument regarding the commercial impression of the marks, which argument the Board quoted at length:

"The marks suggest both where the goods can be used and that the goods are the consumer's friend or 'pal.' Because each of the marks refers to a different type of 'pal,' each mark implies that [registrant's] disposable dinnerware goods can be used in a particular venue, whether at a play date, at a neighborhood softball game, or at the zoo." [TTABlog question: what particular venue does MERRY refer to?] *** Similarly, applicant's mark ... informs the potential buyer of the type of setting [where] the goods may be used ..."

The Board concluded that the similarities of the marks in connotation and commercial impression outweigh any dissimilarities in sound and appearance, and it therefore affirmed the refusal to register.


TTABlog comment: I agree that in the mark PARTYPAL, the word 'pal' is a reference to a "friend" or "helper," in that Applicant Tyco's party plate helps the partygoer carry food and a drink on a single plate, leaving the other hand free for whatever. With regard to the cited marks, however, it seems to be a quite a stretch to say that "pal" has the same connotation. It's obvious from the design accompanying that ZOO PALS mark that "pals" is a suggestive reference to panda bears and other furry things, not to ease of discardability.

Moreover, the PTO and the Board treated the registered marks as if a "family" of "pal" marks had been established, but there was no indication that the rather strict requirements for a "family of marks" were met: i.e., use and advertising of the "pals" marks together in such a way as to create a recognition by the public of the "family" pattern.

In relation to Tyco's product, PARTYPAL has a distinctive, matter-of-fact meaning and connotation. In registrant's marks, in contrast, the word "pals" provides at most a nebulous, warm, fuzzy feeling. Coupling the difference in connotation with the differences in sound and appearance, the Board should have reversed this refusal and allowed the Tyco mark to be published for opposition.

Text Copyright John L. Welch 2007.

Precedential No. 29: TTAB Finds "ASSOCIATION OF THE UNITED STATES ARMY" Logo Confusingly Similar to "U.S. ARMY" Logo, Sustains 2(d) Refusal

In a thorough, 32-page decision, the Board affirmed a Section 2(d) refusal to register the mark ASSOCIATION OF THE UNITED STATES ARMY & Design (shown immediately below) for "association services, namely promoting the interests of active members of the United States Army, National Guard, reservists, civilians, retirees, and family members" ["ASSOCIATION" disclaimed; Section 2(f) as to "ASSOCIATION OF THE UNITED STATES ARMY"]. The Board found the mark likely to cause confusion with the U.S. Army marks shown further below, registered for employment placement and career counseling services, and educational software. In re Association of the United States Army, 85 USPQ2d 1264 (TTAB 2007) [precedential].


The Board began its march through the du Pont trenches with a consideration of the first factor: the similarity of the marks. Rejecting Applicant AUSA's contention that the design elements dominate the marks, the Board found that the literal portions of the marks, and particularly the words U.S. ARMY and UNITED STATES ARMY, are the dominant features. Although the marks are "somewhat dissimilar as to appearance and sound," they are similar in connotation. The word "association" gives a "somewhat different connotation to applicant's mark," but that "slight difference" does not overcome the similarities.


AUSA asked the Board to take judicial notice that "the term association generally, and perhaps exclusively, is used to identify a non-governmental organization." This asserted "fact," however, was not a proper subject for judicial notice, and the evidence of record did not support applicant's proposition. Moreover, even if one assumes that associations are always non-governmental, the relevant public would likely believe that Applicant's organization is sponsored or approved by, or otherwise affiliated with, the United States Army.

Finally, the Board found the marks similar in overall commercial impression. Applicant's mark specifically states that it is an association "of" the United States Army, and thus purchasers are likely to assume that there is some connection or approval by the Army.

In sum, the Board found the points of dissimilarity outweighed by the similarities in connotation and overall commercial impression.

Turning to the goods and services, the Board found AUSA's "association services" to be related to employment and career development services. Examining Attorney David A. Hoffman submitted six third-party registrations covering all of those services, and indeed Applicant itself offers employment and career-related services. Likewise, the Board found Applicant's association services to be related to software in the field of "career education." Thus the second du Pont factor also weighed in favor of a finding of likely confusion.

As to trade channels and purchasers, the Board presumed that the services would travel in the normal channels, and that the "various users and beneficiaries of applicant's association services are the same as, or overlap, with the purchasers and users of the goods identified in the cited registrations, including active military members, reservists, civilians and military family members."

As to purchaser sophistication, the Board found that the users and potential users of Applicant's services include civilians and family members who are likely to be confused as to the connection between Applicant and the U.S. Army.

The Board noted one factor that pointed in AUSA's favor: the lack of actual confusion despite co-existence for over fifty years, during which Applicant's headquarters has been located in the Washington, D.C. area. This lack of actual confusion is entitled to "some weight" in the du Pont analysis.

Finally, AUSA contended that the U.S. Army had given "implied consent" to its use of the logo at issue. For example, the Secretary of the Army spoke at AUSA's annual meeting in October 2005. AUSA alleged that the Army had never objected to the subject mark nor to the wording "Association of the United States Army."

The Board was not persuaded. Even assuming that the Army consents to AUSA's use of the logo, "there is nothing in the record from which we might infer that the Unites States Army consents to applicant's registration of the mark.

Considering all the relevant du Pont factors, the Board found the absence of actual confusion outweighed by the other evidence, and it affirmed the refusal to register.

TTABlog Comment: It's time for AUSA to get an express consent from the Army. I wonder why it didn't?

Text Copyright John L. Welch 2007.

TTAB Denies Fraud Claim but Sustains Opposer's Attack on Acquired Distinctiveness of "ALGAE WAFERS" for Fish Food

Thanks goodness! An ex parte decision on a ground other that 2(d)! [Swimming through the du Pont factors can wear a blogger out.] In an interesting, albeit non-precedential, decision, the Board sustained an opposition to registration of ALGAE WAFERS for fish food ("WAFERS" disclaimed), on the ground that Applicant Hikari's mark, registered under Section 2(f), lacked acquired distinctiveness. The Board, however, deep-sixed Opposer's claim that Hikari's 2(f) declarations were fraudulent. Salt Creek, Inc. v. Hikari Sales USA, Inc., Opposition No. 91158777 (March 28, 2007) [not precedential].


Acquired Distinctiveness: Because Hikari sought registration under Section 2(f), lack of inherent distinctiveness of its mark is an established fact. Hikari enjoys a presumption of acquired distinctiveness arising out of the PTO's approval of the mark for publication, and Opposer Salt Creek must make a prima facie case that Hikari did not satisfy Section 2(f). The ultimate burden of persuasion, however, rests on Applicant.

In order to assess Hikari's 2(f) evidence, the Board first had to determine the degree of descriptiveness of the ALGAE WAFERS mark because the more descriptive the mark, the more the evidence required to establish acquired distinctiveness. On this issue, Hikari found itself up "Salt" Creek without a paddle. Algae comprise 3% of Hikari's product, and its own advertising bragged that "this algae wafer will not dissolve or cloud the water." Coupling this evidence with the commonly understood meanings of "algae" and "wafers," the Board found ALGAE WAFERS to be "at least, highly descriptive."

Turning then to Hikari's 2(f) evidence, Salt Creek contended that Hikari's use has not been substantially exclusive. It pointed to its own use of ALGAE WAFERS, as well as use by three other entities. The Board, however, found those uses to be "inconsequential" and that Hikari's use "qualifies as 'substantially exclusive' as required by Section 2(f)." Opposer's own sales were "very modest" and as to the third-party uses, "there is no evidence bearing on the extent of those uses."

Unfortunately for Hikari, even though it used ALGAE WAFERS exclusively or substantially exclusively since 1992, the Board found its evidence insufficient to satisfy Section 2(f). Hikari enjoyed a "modest degree" of sales success, but the record lacked evidence as to market share or sales ranking in the trade. Moreover, the sales figures "show only the popularity of applicant's product, not that the relevant customers ... have come to view the term ALGAE WAFERS as applicant's source-identifying mark."

Hikari's advertising and promotional expenditures were modest, and included other of Applicant's products as well. In any event, there was no proof that these efforts have "borne fruit."

In sum, Hikari's 2(f) evidence fell short. "Given the highly descriptive nature of ALGAE WAFERS for wafers to feed algae eating fish, much more evidence than what applicant has supplied, especially in the form of direct evidence from customers, would be necessary to show that the designation has become distinctive of applicant's goods."


Fraud: Salt Creek claimed that Hikari committed fraud in its 2(f) declarations because it failed to use the standard language set out in TMEP Section 1212.05(d): "[i]n an apparent attempt to confuse and deceive the examining attorney, [applicant] threw in a reference to five years use amongst other almost incomprehensible verbiage, misrepresenting the true nature of its use of the ALGAE WAFERS mark." In addition, according to Opposer, Hikari failed to disclose Opposer's and third-party uses of ALGAE WAFERS, despite its knowledge thereof.

The Board found "no fatal problem" in the language of Hikari's declarations, and "in no way" would it characterize applicant's language as did Opposer. And Hikari "committed no fraud" in not disclosing the other uses. [In fact, it was not even aware of two of the third-party uses.] As Professor McCarthy notes:

"The mere fact that some other uses of the same mark existed does not mean that the declaration was fraudulent because applicant's use was not 'substantially exclusive.' If such uses were either inconsequential or were infringing, there was no fraud." McCarthy on Trademarks and Unfair Competition, Section 15:62 (4th ed. 2007)

The Board therefore threw the fraud claim back into the creek.

Text Copyright John L. Welch 2007.

Chicago Federal Court Issues Order Restraining Leo Stoller's Filing of New Lawsuits

In an Order issued on March 8, 2007 (here), the Executive Committee of the United States District Court for the Northern District of Illinois has enjoined Leo Stoller from "filing any new action or proceeding" with the court "without first obtaining leave."


Noting that Mr. Stoller has filed "at least 49 lawsuits in this Court, individually or through one of his corporations" and that in 2006 and 2007 he has filed "five appeals to the District Court in connection with orders entered by the Bankruptcy Court ... and three appeals to the Seventh Circuit Court of Appeals," the Executive Committee found that "reasonable and necessary constraints must be imposed upon Mr. Stoller's ability to file new civil cases in this District pro se."

Leo Stoller
The Order sets out a procedure by which Stoller must submit any new complaint accompanied by a "Motion Seeking Leave to File Pursuant to Order of Executive Committee." The Motion must include a "sworn statement certifying that the claims raised by or on behalf of Mr. Stoller in the complaint are new claims never before raised in any federal court." The Executive Committee will then examine any complaint submitted to determine whether it should be filed.
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Precedential No. 28: "CLUB PALMS MVP" Confusingly Similar to "MVP" for Casino Services, TTAB Rules

Applicant Fiesta Palms, LLC ran out of luck in its attempt to overturn the Board's Section 2(d) refusal of CLUB PALMS MVP for "casino services" ["CLUB" disclaimed]. The Board found the mark likely to cause confusion with the registered mark MVP for "casino services offered to preferred customers identified by special identification cards." In re Fiesta Palms, LLC, 85 USPQ2d 1360 (TTAB 2007) [precedential].


Rolling through the du Pont factors, the Board considered the services to be "identical inasmuch as they overlap." The Board also must assume that the purchasers and channels of trade are the same. And because the services are legally identical, the degree of similarity between the marks necessary to establish likely confusion is diminished.

The key question, of course, was whether the addition of Applicant's house mark CLUB PALMS to the registered mark MVP is sufficient to avoid a likelihood of confusion. Generally, the addition of a house mark to another's registered mark does not avoid confusion: "purchasers familiar with registrant's mark are likely to assume that the house mark simply identifies what had previously been an anonymous source."

However, in Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005) [TTABlogged here], the Board found that addition of the house mark NORTON MCNAUGHTON to the "highly suggestive" registered mark ESSENTIALS for clothing was sufficient to avoid confusion. In that case, the existence of 23 registrations for marks including the word ESSENTIALS in the clothing field, together with a dictionary definition of ESSENTIALS as "essentials" of one's wardrobe, tipped the scale in that applicant's favor.

Applicant here made similar arguments, pointing to 173 PTO records (123 registrations) using the term "MVP" as all or part of a trademark, and contending that "consumers have been inundated with the various unrelated trademark uses of the term 'MVP;' thus, there is little probability that they will be confused as to the origin of the goods and/or services provided under the numerous 'MVP' marks."

The Board, however, found problems with Applicant's argument. The mere list of registrations submitted by Applicant did not make the registrations of record, and even if properly made of record, registrations do not evidence that the mark MVP is in use. And even if the marks were in use for non-related goods and services, this would not establish that MVP is weak for casino services. [TTABlog note: in Knight Textile, there was no evidence that the registered marks were in use, but there was a dictionary definition of "ESSENTIALS" that referred specifically to clothing, and the registered marks corroborated that meaning.]

Therefore, the Board distinguished this case from Knight Textile, pointing out that Applicant did not establish that MVP is used by others in the casino field or has any specific meaning in that field.


Palms Casino, Las Vegas

TTABlog Comment: The Applicant here might consider seeking review by way of civil action, pursuant to 15 U.S.C. Section 1071(b), whereby it could submit additional evidence of use of MVP by other entities in order to show the laudatory nature and weakness of the term. Readers may recall the GOSMILE PM tootpaste case (TTABlogged here, here, and here), in which the applicant sought review by way of civil action, reached an agreement with the PTO that allowed re-opening of prosecution of its application, submitted addition evidence of the weakness of "PM," and now has overcome the Section 2(d) refusal to register.

Three non-precedential decisions in which the Board has found no likelihood of confusion upon addition of a house mark to a registered mark may be found at the TTABlog postings here [CITIZENS CIRCLE GOLD ACCOUNT], here [GUNN SMARTCHOICE SERVICE], and here [T-MOBILE NEWS EXPRESS].

Text Copyright John L. Welch 2007.

Precedential No. 27: Board Finds Family of "HOG" Marks, Sustains 2(d) Opposition to "DIRT HAWG" and "WATER HAWG" for Wet and Dry Vacuums

The Board's recognition of a "family of marks" is about as rare as a fish in a tree, but in Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482 (TTAB 2007) [precedential], it ruled that Opposer B&D had established a family of "HOG" marks for power-operated outdoor equipment. The Board proceeded to find likely confusion with the applied-for marks DIRT HAWG and WATER HOG for "vacuum cleaners, wet and dry vacuum cleaners, and replacement parts therefor."


The Board first gave B&D a smackdown by denying its motion for leave to amend the notices of opposition to add a claim that Applicant Emerson did not have a bona fide intention to use the applied-for marks at the time of filing. The motion was filed after the close of the testimony period, and the Board found that B&D had unduly delayed in filing its motion.

Turning to the du Pont analysis, the Board rooted its way through the record evidence, beginning with B&D's family-of-marks claim. It noted that B&D advertises "Hog Powered Products" and utilizes store banners with slogans such as GOING HOG WILD, HOG POWER, and HOG POWERED PRODUCTS. The different HOG products -- GRASS HOG, LAWN HOG, HEDGE HOG, EDGE HOG, LEAF HOG -- are placed together in stores, and some of Opposer's advertisements in fact "tell consumers that opposer has a HOG family of marks."

"[O]pposer has created a family of marks consisting of the word HOG, preceded by a word that indicates or suggests the use of the product for which it is used, such that consumers will view the marks following this pattern as having a common origin."

The Board observed that DIRT HAWG and WATER HAWG have "the same pattern as is used by opposer's family of marks. Moreover, the words may be pronounced the same way, and have the same connotation and commercial impression. The spelling difference is not sufficient to distinguish the marks.


Applicant Emerson contended that the goods are specifically different, since B&D does not sell wet/dry vacuums. The Board noted, however, that B&D does sell those products, although not under a HOG mark, and that wet/dry vacuum cleaners "may generally be categorized as lawn and garden products": for example, they "can be used to clean sidewalks, decks and patios." The parties' goods "may be stored in a garage" and may be used "by the same do-it-yourself consumers for maintenance and clean-up." When seeing Emerson's products, consumers are likely to believe "that opposer has expanded its line of HOG products."

As to trade channels, the products may be sold not only in large home centers, but also in smaller hardware stores, including mom-and-pop stores. And even if they are in separate departments in larger stores, "a consumer may encounter both types of products during a visit to a particular store, regardless of their location with the stores." [TTABlog comment: The Board went a little too far with the "large store" store point. Lots of diverse products may be encountered by a consumer in a home center, including products wholly unrelated to wet/dry vacs and leaf blowers: e.g., paint and cleaning supplies.] Thus the channels-of-trade factor favored B&D.

As to purchaser sophistication, the Board found that the purchase of these products "is not likely to engender a great deal of deliberation." The products are relatively inexpensive [TTABlog comment: relative to what? and for whom?]: for example, Applicant's two gallon vacuum sells for about $20, while Opposer's are in the $50 to $250 range.

B&D claimed that its HOG marks are famous, but the Board did not agree. [B&D's sales and advertising figures were submitted as confidential]. At most, they are "strong."

Emerson pointed to various third-party registrations -- BUSH HOG, FLOOR HOG, RAZOR-BACK HOG, HOG WASH, SAND HOG, MUD HOG, GROUND HOG, SKID HAWG -- but the Board found them of no particular significance. They either had a "different pattern" than B&D's HOG marks, or covered vastly different goods, or were too minimal in number to show that HOG is a suggestive term for the goods at issue.

Emerson also pointed to third-party use of HOG marks, but its feeble evidence "does not outweigh the significant amount of sales of opposer's products and the expenditures by opposer in advertising and promoting its HOG family of marks."

The lack of actual confusion was a neutral factor, the Board noting that Emerson's WATER HOG mark has not been put into use, and that DIRT HAWK sales have been very limited.

Finally, the Board noted that Emerson was aware of B&D's prior use of the HOG marks, but it refused to find that Emerson had adopted the HAWG marks in bad faith. The Board found credible Emerson's assertion that it chose the word HAWG because of the association of that word with the University of Arkansas.


Considering all the relevant du Pont factors, the Board found confusion likely and sustained the oppositions.

Text Copyright John L. Welch 2007.

New TTABlog Floating Key Tags Have Arrived!

Just in time for the INTA Annual Meeting, a new batch of TTABlog floating key tags have arrived! In handsome blue, orange, and white, the TTABlog key tag has become a collector's item for trademark lovers generally, and for trademark lawyers in particular. You can get yours by sending an e-mail to me at jwelch@ll-a.com, with your mailing address and "TTABlog Key Tag" in the subject line (so I can spot your e-mail if it gets caught in the firm's spam filter).


Stay tuned for the official announcement of "MEET THE BLOGGERS III", the third annual funfest organized by Marty Schwimmer (of the Trademark Blog) and yours truly. We will be meeting at a renowned downtown Chicago watering hole on Tuesday evening, May 1. [Here's a hint: as a White Sox fan, I'm not thrilled with the venue, but I couldn't find a suitable tavern near 35th & Shields.]
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Precedential No. 26: TTAB Finds Certification Mark Specimens Adequate, but "CRNA" Lacking in Acquired Distinctiveness

This applicant dodged two PTO bullets -- inadequate specimens and genericness -- but failed to convince the Board that the proposed certification mark CRNA has acquired distinctiveness under Section 2(f). [I can't explain exactly why, but I kept dozing off while reading this opinion]. In re The Council on Certification of Nurse Anesthetists, 85 USPQ2d 1403 (TTAB 2007) [precedential].

click on photo for larger picture
The Examining Attorney contended that the use of CRNA on the specimens "conveys only the commercial impression of a title or degree and, thus, does not function as a certification mark." The Board reviewed a passel of prior TTAB decisions concerning certification mark specimens, and concluded that this Applicant passed the test.

Applicant's baseball cap, apron, badge, pin, shoelaces, and other material merely evidenced promotion or use of CRNA "without any indication of what the term is identifying." However, the sample certificate (shown above) and Applicant's brochure and literature do indicate that CRNA serves as a certification mark. In particular, the certificate "indicates that the holder thereof, a CRNA, has satisfied the requirements for certification by applicant," and the designation CRNA "is displayed in [such] a manner that it would be viewed by the ultimate recipients of the services."

Accordingly, the Board reversed the refusal on the ground that CRNA fails to function as a certification mark.

As to genericness, the Board found that the term "certified registered nurse anesthetist" is generic. However, as to the initials CRNA, the PTO failed to show by "clear evidence" that CRNA "has become so generally understood as an initialism for 'certified registered nurse anesthetist' as to be substantially synonymous therewith." Moreover, in two of the definitions cited by the PTO, CRNA "may well be understood as a mark," and there was no third-party use of CRNA. Although the Board had some doubt on the issue, it resolved the doubt (as it must) in Applicant's favor.

Finally, as to Applicant's 2(f) evidence, Applicant claimed that it has used CRNA for nearly fifty years, and has certified some 40,000 nurse anesthetists. The Board, however, noted the lack of "direct evidence regarding how surgical patients, doctors and hospital administrators have come to view the designation CRNA." Noting that CRNA is "highly descriptive," and therefore that the evidentiary burden to show acquired distinctiveness is greater, the Board concluded that Applicant's 2(f) showing was insufficient, and it therefore affirmed the PTO's refusal on the ground of mere descriptiveness.

Text Copyright John L. Welch 2007.

"Famous Marks" Doctrine Not Found in Federal Law, Says 2nd Circuit

In a case involving the mark BUKHARA for restaurant services, the United States Court of Appeals for the Second Circuit has concluded that the Lanham Act cannot be read to include a "famous marks" exception. The Court certified to the New York State Court of Appeals the question of whether New York common law recognizes the doctrine. ITC Limited v. Punchgini, Inc., 482 F.3d 135 (2nd Cir. 2007).

BUKHARA: New Delhi, India
Under the "famous marks" doctrine, a mark is protected in a given nation if it is well known in that nation even though the mark is neither used nor registered there. The appellate court's opinion includes an informative review of the history of the doctrine and the federal case law relating thereto.

The district court had awarded summary judgment to defendants on all counts: trademark infringement and unfair competition under federal and state law, and false advertising under federal law. The Second Circuit affirmed the district court's ruling on all counts except for the state unfair competition law claim.

The trademark infringement claims failed because ITC abandoned its BUKHARA mark in the United States. ITC's federal registration was ordered to be cancelled.

As to the unfair competition claims, the appellate court first looked at the federal claim under Section 43(a) of the Lanham Act. Plaintiff ITC, because its U.S. rights had been abandoned, was left to invoke the "famous marks" doctrine, arguing that the BUKHARA mark was "renowned" in the United States before the Defendants opened their first restaurant.

The appellate court reviewed the "territoriality" principle basic to American trademark law, and the history of the "famous marks" doctrine as an exception to that principle. Included was a review of three TTAB relevant rulings, including the recent First Niagara decision in which the Board "reiterated in dicta that owners of well known foreign marks need not use those marks in the United States to challenge the registration of marks likely to promote confusion on the part of consumers."

The court recognized that TTAB decisions, while not binding, are "to be accorded great weight." However, the court expressed a "significant concern" with the three TTAB rulings: "nowhere in the three cited rulings does the Trademark Board state that its recognition of the famous marks doctrine derives from any provision of the Lanham Act or other federal law." The TTAB's "reliance on state law to recognize the famous marks doctrine falls outside the sphere to which [the court] owe[s] deference."

As the federal courts, the Ninth Circuit is the only federal appeals court to recognize the famous marks doctrine as a matter of federal law, in the Grupo Gigante case. However, that decision "did not reference either the language of the Lanham Act nor Article 6bis of the Paris Convention so support recognition of the famous marks doctrine." District courts have reached varying conclusions about the applicability of the famous marks doctrine to Lanham Act claims.

As to various treaties and implementing legislation, the court was unable to find a "clear congressional intent to incorporate a famous marks exception in federal unfair competition law." "Before we construe the Lanham Act to include such a significant departure from the principle of territoriality, we will wait for Congress to express its intent more clearly."

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

Finally, as to the false advertising claims, the court found that ITC lacked standing because it failed to adduce evidence of "a reasonable basis" for it to think that defendants' actions would damage its interests.

In sum, the appellate court affirmed in part and reversed in part pending the response of the New York Court of Appeals to its Certified Questions.

TTABlog note: There now appears to be a split between the Second and Ninth Circuits on the availability of the "famous marks" doctrine in federal trademark cases. Call for the Court! the Supreme Court! Will the Supreme Court please pick up the white courtesy phone?

Text Copyright John L. Welch 2007.

Precedential No. 25: Is IZZY'S Cancellation Petition Barred By Laches? It Isn't, Says TTAB

Laches or not? That was the question. Jansen Enterprises, owner of several IZZY'S marks for restaurant services, franchising services, and pizza, petitioned to cancel a registration for the mark shown immediately below for "restaurant services featuring bagels as a main entrée." The petition was filed six days before the fifth anniversary of the subject registration, prompting Respondents' claim of laches. Jansen Enterprises, Inc. v. Rind and Stone, 85 USPQ2d 1104 (TTAB 2007) [precedential].


Likelihood of confusion: The Board focused its attention on Petitioner's stylized IZZY'S mark (shown below), the subject of a concurrent use registration for restaurant services (for the area west of the Mississippi River). It found the parties' services to be legally identical, since "restaurant services" encompass restaurants featuring bagels -- a factor weighing "heavily" in Petitioner's favor.


When the involved services are identical, a lesser degree of similarity between the marks is required to support a finding of likely confusion. Notwithstanding the prominence of the design features in Respondent's mark, the Board found that the literal portion is dominant and that, in turn, the literal portion is dominated by IZZY'S. The overall impression created by the parties' respective marks is that "the restaurant is owned by someone named 'IZZY.'" In sum, the Board concluded that the marks are confusingly similar.

As to other du Pont factors, Petitioner claimed fame but its evidence fell short. The Board did, however, find the mark to be "strong." As to the lack of actual confusion, the Board noted that the parties do not operate in the same geographical area, and thus "it may be that the same consumers have not been exposed to both restaurants."

Weighing the relevant du Pont factors, the Board found confusion likely.

Laches: Turning next to the affirmative defense of laches, the Board pointed out that Respondent must prove undue or unreasonable delay by petitioner and prejudice resulting from the delay. Jansen had threatened to cancel the subject registration in 2000, but filed its petition in January 2004. Respondent asserted that during the lull, it had continued to invest in and expand its business, opening a second restaurant in 2003.

Petitioner argued that its delay was not unreasonable because (1) it was busy with other cancellation proceedings, (2) it thought respondent was operating a bagel shop in New York (where Petitioner did not have rights), and (3) only in September 2003 did Respondent add pizza as a menu item.

Petitioner Jansen was on constructive notice of Respondent's service mark as of the date of issuance of the subject registration (February 2, 1999). Thus the length of delay was six days short of five years. The Board found, under the circumstances of this case, that this was "undue delay" and that Respondent was harmed by Petitioner's inaction.

But that was not the end of it. The question then became: was the delay excusable? Petitioner's "other litigation" alibi was "hardly sufficient:" only one legal action preceded the petition and it was concluded two years prior. Moreover, Petitioner never told Respondent that this was the reason for its delay. [Strike one.]

Jansen's assertion that it mistakenly believed Respondent to be located in New York was also meritless. Jansen and its attorney corresponded with Respondent at the latter's California address, and the subject registration states the California address. In any case, the challenged registration is not limited geographically. [Strike two].


However, the Board agreed with Petitioner Jansen that circumstances changed when Respondent began offering pizza in 2003, thereby "encroaching" on Jansen's turf (pizza being the "focal point of Petitioner's restaurant services"). "Because respondent changed the nature of his 'restaurant services featuring bagels as a main entrée' in September 2003, he is not entitled to rely on petitioner's inaction prior to that time." [Home run by Jansen!].

Therefore, the Board concluded that laches does not apply.

Inevitable Confusion: For the sake of completeness, the Board considered the doctrine of inevitable confusion. If confusion is inevitable, the doctrine goes, laches doesn't apply. However, because the marks are "clearly not identical," the Board did not view confusion as inevitable.

For the foregoing reasons, the Board rejected the laches defense and sustained the petition for cancellation.

Text Copyright John L. Welch 2007.

TTAB Dismisses "I ♥ NY" Opposition to "I ♥ NC" Due to New York's Failure to Prove Priority

In a modern day David v. Goliath story, pro se Applicant Michael Nnamdi Stewart bested the Empire State in a Section 2(d) confrontation involving the familiar I ♥ NY logo. The State of New York failed to make its evidence properly of record, and it therefore lost its opposition to registration of the mark I ♥ NC (in the form shown below) for various clothing items [NC disclaimed]. Without its evidence, New York did not establish priority as to its registered I ♥ NY mark for clothing. New York State Dept. of Economic Development v. Stewart, Opposition No. 91162024 (March 13, 2007) [not precedential].


Getting down to the basics, the Board pointed out that there are two prongs to a Section 2(d) claim: priority and likelihood of confusion. The State of New York got stuck on the first prong: because the State "failed to prove that it has made use of any trademarks, it cannot show priority of use."


New York did not submit any testimony, nor did it properly introduce its registrations into the record. It submitted "soft" copies rather than the "status and title" copies, and otherwise failed to satisfy Trademark Rule 2.122(d).

In addition, New York offered a number of exhibits by way of notice of reliance, but many of them were not appropriate for such a notice: unauthenticated printouts of website pages; declarations used on a summary judgment motion; "photoprints" of its licensed products; license agreements; a listing of advertising expenditures; and copies of licensee catalogs. Those documents do not constitute "printed publications" or "official records" that can be made of record by way of notice of reliance. (See Trademark Rule 2.122(e)).


The State did manage to get a few items into evidence via the notice of reliance: pages from a book, a newspaper article, and Applicant's interrogatory responses. However, the book and the newspaper article cannot be used to prove the truth of the statements made therein. And although Applicant Stewart made a number of admissions in his answer and his brief, those admissions were not enough to save New York:

"Even if we cobble together the various admissions made by applicant, they do not create an overall picture showing that opposer has priority of use of the mark I ♥ NY for any goods or services with which applicant's use of this mark for clothing is likely to cause confusion."

The Board therefore dismissed the opposition.

TTABlog Comment: Wow, talk about snatching defeat from the jaws of victory! The State's problems seemed to stem from the assumption that documents and declarations submitted with a summary judgment motion could be similarly submitted at trial without testimony. Not so. See TBMP Section 528.05(a).

Text Copyright John L. Welch 2007.

USPTO Five-Year Strategic Plan Calls for Improvement in TTAB Case Processing

The United States Patent and Trademark Office has issued its 2007-2012 Strategic Plan (pdf here; summary here). In the TTAB realm, it calls for the integration of Trademark and TTAB systems "to provide for a seamless interface for applicants and reliability of operations." The Plan also focuses particularly on the increased pendency of requests for reconsideration that are filed together with notices of appeal, and on "uncontrolled discovery" that is delaying resolution of TTAB proceedings. (page 19).


As to requests for reconsideration, the PTO has already issued a proposed Rule change that would "require a request for reconsideration of an examining attorney's final refusal or requirement to be filed through the Trademark Electronic Application System (TEAS) within three months of the mailing date of the final action." (TTABlogged here).

With regard to TTAB discovery, according to the Strategic Plan, "uncontrolled discovery, along with an excessive number of discovery and trial motions, are increasing the pendency of TTAB opposition proceedings and, ultimately, registration or disposal pendency."

The PTO hopes to "streamline" TTAB case resolution by:

• Promulgating rules requiring parties in opposition and cancellation proceedings to participate in discovery conferences, make initial disclosure of information, and disclose potential witnesses
• Promoting and expanding use of "accelerated case resolution" whereby cases are decided based on summary judgment-type submissions stipulated by the parties. (page 20).
  

Of course, the PTO proposed new discovery rules in January 2006 (TTABlogged here) and has received numerous public comments thereon. When and in what form the new Rules will be issued remains a mystery, but the Strategic Plan leaves little doubt that big changes in discovery practice will occur . As to the "accelerated case resolution" concept, we have yet to see any detailed proposal from the PTO.

The draft Strategic Plan released by the PTO in September 2006 (TTABlogged here), called for an "enhanced level of TTAB precedential decisions (60-80 per year.)." The final Plan takes a more indirect approach to the issue, calling for an initiative to "[m]aximize best practices from ... TTAB decisions by increasing the impact of Board decisions in developing best practices for patent and trademark examination and allowance." (page 25). Thus far in 2007, the Board has issued more than two dozen precedential decisions, and at that pace may issue one hundred or so this year: more than the totals for the last three years combined.

Text Copyright John L. Welch 2007.