Precedential No. 9: TTAB Issues Non-Ultimate Sanctions for Failure To Comply With Board Order Compelling Document Production

In another precedential discovery ruling (the third of 2008), the Board issued sanctions against M.C.I. Foods, Inc. for failure to produce documents as required by the Board's discovery orders, but stopped short of issuing judgment against the offender. M.C.I. Foods, Inc. v. Bunte, 86 USPQ2d 1044 (TTAB 2008) [precedential].


Brady Bunte, the respondent in one cancellation proceeding and petitioner in the other, filed a motion to compel in each case when M.C.I. failed to respond at all to Bunte's interrogatories and document requests. M.C.I. did not contest the motions, and in May 2007 the TTAB ordered M.C.I. to respond, without objection, to the discovery demands within thirty days.

After Bunte's motions were filed, but before the Board's orders were issued, M.C.I. served untimely responses and objections, stating that the documents would be made available in the future. However, documents were not produced, even after the Board issued its orders; nor did M.C.I. provide responses without objection.

The Board noted that, after a motion to compel is granted, "production must be made in the manner requested by the inquiring party, unless otherwise directed by the Board." Here that meant at the offices of Bunte's counsel.

On September 27, 2007, M.C.I. said that it was completing the assembly of documents, and was "executing the protective order that will govern some of the documents produced."

Bunte filed his motions for sanctions on October 19, 2007, pointing out that M.C.I. had yet to produce documents and had served interrogatory responses that included numerous untimely objections.

The Board found that M.C.I. had violated its orders granting Bunte's motions to compel. M.C.I. had "effectively" maintained its objections to various interrogatories and document requests, failed to produce a privilege log, and did not make documents available to Bunte until more than three months after the Board issued its order.

"M.C.I.'s offer to merely make the requested documents available at an unspecified time and place effectively constituted an objection on the merits, which was prohibited by the Board's orders."

The Board declined, however, to enter judgment as a sanction because "this ultimate sanction would go to far." Instead it issued the following lesser sanctions:

"(1) Within TWENTY DAYS of the mailing date of this order, M.C.I. shall: (a) prepare and serve written responses to Bunte’s discovery requests, without objection on the merits; (b) copy all responsive documents at its own expense and deliver them to Bunte; and (c) serve a privilege log.

(2) The Board will accept any documents produced by M.C.I., if filed during trial by Bunte, as authentic and admissible.

(3) M.C.I. is prohibited from relying at trial on any documents requested by Bunte during discovery but not produced by M.C.I. within the time set for complying with the Board orders granting Bunte’s motions to compel.

As a result of this prohibition, M.C.I. may not introduce documents requested by Bunte during discovery as an exhibit to a testimonial deposition or by notice of reliance. By contrast, Bunte may rely on any and all documents produced by M.C.I. M.C.I. is not, however, precluded from relying on documents which were reasonably not part of a document production request by Bunte during discovery."

The Board then re-set discovery and trial dates.

TTABlog comment: I think the Board should have explained why it chose not to enter judgment here. The Board cited Elec. Indus. Ass'n v. Potega, 50 USPQ2d 1775, 1777 (TTAB 1999) without discussion, but that case is wholly distinguishable from this one. For one thing, there the offending party lacked counsel, and for another his offense was "primarily a technical violation" of the Board's order.

On the other hand, I think that having to read the Board's decision here could be considered an additional sanction on all concerned. Seriously though, the part about the "privilege log" particularly caught my eye. My goodness, is TTAB litigation growing to be as complicated and expensive as federal court litigation? I hope not.

Text Copyright John L. Welch. 2008.

TTAB Affirms Refusal of "FRESHHERBS.COM" for Herbs, Finding Mark Merely Descriptive and Specimen Faulty

The Board not surprisingly affirmed two refusals to register the mark FRESHHERBS.COM for "unprocessed culinary herbs," finding the mark to be merely descriptive of the goods and Applicant's specimen of use inadequate. In re Shenandoah Growers, Inc., Serial No. 76620753 (February 14, 2008) [not precedential].


Examining Attorney Alicia P. Collins maintained that the mark "is not prominently placed on the front of the packaging as an indicator of source for the goods (as i sthe Applicant's mark ... KATERI'S). Instead, consumers will view the proposed mark 'FRESHHERBS.COM' as merely the web site address that they may 'visit' in order to get information about using the Applicant's goods."

The Board agreed with the PTO: "The phrase 'For more great Freshherb ideas visit freshherbs.com' appears at the bottom of the front of the packaging insert and at the bottom of the back of the insert, just above the UPC barcode." The impression is that "freshherbs.com" is a web address and not a trademark.


As to the section 2(e)(1) refusal, the PTO relied on dictionary definitions of "fresh" and "herb," and on Internet excerpts showing use of "fresh" in connection with herbs. Applicant's specimen of use refers to "Fresh Basil." This evidence establishes "that 'fresh' as used in conjunction with 'herbs' identifies the condition of applicant's unprocessed culinary herbs."

The TLD ".com" does not serve a trademark function, but merely indicates that "potential customers can transact business with [applicant] via the Internet."

"This is not a case where exceptional circumstances exist so that the addition of the TLD to FRESHHERBS renders the mark suggestive. *** [T]he combination of 'fresh,' 'herbs, and '.com' does not invoke a unique commercial impression. It also is not incongruous or bizarre as applied to the goods."

The Board therefore affirmed the refusals.

Text Copyright John L. Welch 2008.

TTAB Affirms Genericness Refusal of "PEPPERMINT BARK" for Candy

I guess one could say that Williams-Sonoma's bark was worse that its bite. Or something like that. The Board affirmed the PTO's refusal to register the term PEPPERMINT BARK for candy on the ground of genericness. Applicant W-S had disclaimed the word "Peppermint" and had amended its application to seek registration on the Supplemental Register, but all to no avail. In re Williams-Sonoma, Inc., Serial No. 76542867 (February 14, 2008) [not precedential].


Examining Attorney Russ Herman argued that "[P]eppermint bark is a common candy product made from a few standard ingredients that can incorporate a number of slight variations.... [P]eppermint bark is basically a layer of white chocolate (sometimes on top of a layer of milk chocolate) with a sprinkling of crushed peppermint candy." He relied on dictionary definitions of "bark" and "peppermint," several recipes for making "peppermint bark" candy, website evidence discussing "peppermint bark" as a popular candy, and 20 full-text articles referring to peppermint bark candy.

Williams-Sonoma submitted two registrations that it owns, one for the mark PEPPERMINT BARK (Stylized) for candy ("peppermint bark" disclaimed), and one for PEPPERMINT BARK in a design form (shown below) for candy ("peppermint" disclaimed). Applicant asserted that it has been selling its PEPPERMINT BARK candy since 1999, has sold millions of dollars worth of product, and has extensively promoted these products in its holiday catalogs, on its website, and in its stores.

The Board applied its Marvin Ginn genericness test, which requires a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered understood by the relevant public primarily to refer to that genus?

With little explanation, the Board found that the genus of applicant's goods is "not simply candy" but also "a chocolate candy in thin sheets."

As to the public's understanding of the term, the Board noted that Applicant's goods are made with peppermint, and that the term "bark" is a generic term for "candy made in flat sheets and usually consisting of chocolate and nuts." It found "widespread use of the term PEPPERMINT BARK bark to name similar chocolate/peppermint products from other producers, and from individuals or groups with their own recipes for 'peppermint bark.'" It also found "numerous recipes and references to recipes for 'Peppermint Bark.'" Therefore the Board ruled that the PTO had presented the requisite "clear evidence" to make out a prima facie case of genericness.

Turning to Applicant's evidence, its promotional materials and media references were "not very effective" and "seem to reinforce the generic use of the term." The millions of dollars of sales does not establish that the term is not generic, nor does Applicant's use of the term since 1999. And the fact that alternative names may exist for the goods (e.g., Peppermint Brittle) was not helpful since "there is nothing unusual about a product or service having more than one generic name."

As to Applicant's registrations, they provide no support here: The first includes a disclaimer of PEPPERMINT BARK, while the second concerns a design or logo mark comprising the term PEPPERMINT BARK flanked "two dogs with their mouths slightly open." This additional feature creates a different commercial impression than that of the standard character mark.


In sum, Applicant failed to rebut the PTO's prima facie case, and so the refusal to register was affirmed.

TTABlog query: The only question this rather boring case brought to my mind was this: What 1967 hit song by the Strawberry Alarm Clock included the word "peppermint"?

Text Copyright John L. Welch 2008.

TTABlog Practice Pointer: Not Every Final Refusal Merits an Appeal

Of course, not all final refusals to register merit an appeal to the TTAB. This is one of them. The Board affirmed a refusal to register the mark JOURNEY'S EDGE because Applicant Midwest Trading failed to provide an acceptable identification of goods. In re Midwest Trading Group, Inc., Serial No. 76666044 (February 13, 2008) [not precedential].

Midwest Trading sought to register its mark for the following: "Household goods, namely, household utensils, namely, graters and kitchen ladles, containers for kitchen use, namely, pails and metal and plastic pans, small hand-operated apparatus for mincing, grinding and pressing, candle extinguishers, electric hair combs and toothbrushes, dish stands and decanter stands" (Class 21).

When Examining Attorney Christopher M. Ott objected to several terms in the identification of goods, Applicant responded by deleting the original i.d. in its entirety and substituting: "Small hand operated apparatus, namely a crank-powered torch radio and battery operated LED booklight" in Class 8 [sic!]. According to Applicant:

"The amendment is permitted pursuant to 37 C.F.R. § 2.71(a) because it clarifies and limits the hand-operated apparatus. The hand operation of the LED booklight is turning it on to read and off to sleep. The hand operation of the torch radio is the cranking."

The Examining Attorney found this amendment unacceptable because the proffered identification was "entirely outside the scope of the application as filed."

On appeal, Applicant lamely argued that the amendment was proper because the original identification includes the words "small hand-operated apparatus" and its booklight is a hand operated apparatus.

The Board not surprisingly found this construction to be "obviously erroneous," since the term "hand-held apparatus" in the original identification is limited to devices that mince, grind, or press.

"It does not appear - and applicant does not argue - that a 'crank-powered torch radio' or a 'battery-powered LED booklight' can be used for 'mincing, grinding [or] pressing.'"

The addition of these goods to the application "would constitute a broadening, rather than limiting or clarifying amendment, and [is] therefore prohibited under Trademark Rule 2.71(a)."

Consequently, the Board affirmed the refusal based upon Applicant's failure to provide an acceptable identification of goods.

TTABlog note: Not only did this Applicant appeal, but it first tried a request for reconsideration! Now, I'm not one to criticize, but come on!

Text Copyright John L. Welch 2008.

Unfriendly Shores? Recent Developments in U.S. Law May Trouble Foreign Trademark Owners

by John L. Welch and Ann Lamport HammitteLowrie, Lando & Anastasi, LLP

Foreign trademark owners who seek registration in the United States may be troubled by several recent developments in American trademark law. The Trademark Trial and Appeal Board’s current fraud jurisprudence holds an applicant or registrant strictly responsible for false statements made to the United States Patent and Trademark Office (USPTO) regarding use of its mark on the goods and services involved, with very little room for error or innocence. Recent case law on the issue of an applicant’s bona fide intent to use a mark indicates that, if a challenge is raised in an inter partes proceeding before the TTAB, the mark owner will be expected to corroborate its assertion of such intent with documentation. And a recent federal appellate court ruling requires a foreign applicant or registrant to appear in the USA for testimony in an inter partes proceeding involving its mark.


I. Fraud for Thought

The TTAB takes the position that a false statement, made in a use-based application or in a Declaration of Use, with regard to use of the mark on the identified goods or services constitutes fraud on the USPTO and renders the application or registration void ab initio. Proof of deceptive intent is not required because the Board will look not at the subjective intent of the mark owner, but only at the “objective manifestations” of that intent. Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003). The Board reasons that a false statement regarding whether a mark is in use for a particular good or service is unreasonable and inexcusable, and is material to the USPTO’s acceptance of the used-based application for publication or its maintenance of the mark on the Register. In short, had the USPTO known that the approved application or registration included goods or services for which the mark was not actually in use, the PTO would not have published the application or issued or maintained the registration in question.

This strict requirement may prove to be particularly problematical for foreign trademark owners. In most countries of the world, use of a mark is not required for registration, and therefore foreign registrations often list a broad array of goods and services, irrespective of the scope of use of the mark. For a United States owner applying in the USA, however, the registration will be limited to the actual items with which the mark is used. Indeed, in order to obtain a registration a U.S. owner must verify under oath that its mark is in use on all the goods and services in the application.

When applying under Section 44 or Section 66 of the Trademark Act and not claiming actual use, a foreign applicant will not be required to verify that it has actually used its mark on all of its listed goods or services prior to registration (although, as discussed in Part II, it will be required to state that it has a bona fide intent to use the mark). Typically, the identification of goods and services in the U.S. application will mirror the breadth of the owner’s home country registration. Section 8 of the Trademark Act requires that every owner of a U.S. registration file a Declaration of Use between the fifth and sixth anniversaries of the registration (a six-month grace period is available), verifying that the mark is in use for all of the identified goods and services. This is where the potential problem may arise, unless the foreign owner is aware of the TTAB’s strict fraud doctrine. When filing the Declaration of Use under Section 8 or Section 71, the owner must delete every item for which its mark is not in use in U.S. commerce. Failure to do so, and the filing of a Declaration that includes goods or services that should have been deleted, renders the registration vulnerable to a fraud attack that could result in the registration being declared void as to one or more classes of goods or services.

The ground of fraud is raised frequently in TTAB proceedings, and an application owned by a foreign entity that claims use in the United States will surely be scrutinized by any adversary for compliance with US requirements. Thus foreign trademark owners, and their trademark agents and attorneys, must be aware of the recent development of the doctrine of fraud in the USA. The prudent owner, attorney, or agent will make sure that when verification of use of a mark is submitted to the USPTO, an appropriate investigation has been done and the application or registration has been amended as necessary to reflect accurately the actual use of the mark.


II. Is your intention bona fide?

Foreign trademark owners often apply to register their marks under Sections 44(d) and (e) or Section 66 of the Trademark Act, relying upon a home country registration or application via the Paris Convention (or other treaties) or the Madrid Protocol, respectively, and not on actual use in this country. However, under both Sections 44 and 66, a foreign applicant must state that it has a bona fide intention to use its mark in U.S. commerce. See Sections 44(d)(2), 44(e), and 66(a). A recent non-precedential ruling by the Trademark Trial and Appeal Board on the issue of bona fide intent to use a trademark may have important and unexpected ramifications for the foreign applicant under Sections 44 and 66.

In what we believe to be the first ruling in which the Trademark Trial and Appeal Board found a lack of a bona fide intent to use a mark, the Board sustained an opposition to registration of the mark IDEAS INSIDE for on-line ordering and distribution services for a host of goods, search engine services, and digital transmission services. Applicant Steven Emeny, appearing pro se, failed to produce any objective evidence of an intent to use the mark, and his application was therefore rejected. Intel Corp. v. Emeny, Opposition No. 91123312 (May 15, 2007) [not precedential].

Intel had opposed on Section 2(d) and dilution grounds, based on its ownership of the INTEL INSIDE mark. After discovery, it dropped those claims but added an allegation that the opposed application was invalid because Emeny lacked a bona fide intention to use the mark IDEAS INSIDE at the time of filing his intent-to-use application under Section 1(b).

Intel had the burden to prove, by a preponderance of the evidence, that Emeny lacked the requisite bona fide intention to use his mark in connection with the recited services. Once Intel established a prima facie case, the burden shifted to Emeny to come forward with evidence in refutation.

The term “ bona fide” is not defined within the Trademark Act, but the legislative history of the Trademark Law Revision Act of 1988 “reveals that Congress intended the test of ‘bona fide’ to be shown by ‘objective’ evidence of ‘circumstances’ showing ‘good faith.’” The Board agreed with Intel that “applicant’s showing should be ‘objective’ in the sense that it is evidence in the form of real life facts measured by the actions of the applicant, not by the applicant’s later arguments about his subjective state of mind.”

The Board ruled that when an applicant has no documentation to show its plans to use the mark, “such an absence of clear, objective evidence is sufficient for an opposer to prove that applicant lacked the requisite bona fide intention,” unless the applicant can come forward with an explanation as to why no such documents exist. See Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993) [Granting Commodore’s motion to amend its Notice of Opposition, stating: “Although admittedly a close question, we hold that absent other facts which adequately explain or outweigh the failure of an applicant to have any documents supportive of or bearing upon its claimed intent to use its mark in commerce, the absence of any documentary evidence on the part of an applicant regarding such intent is sufficient to prove that the applicant lacks a bona fide intention to use its mark in commerce as required by Section 1(b). An allegation to such effect, therefore, states a claim upon which relief can be granted.”]

The Board found that the circumstances in the Emeny case supported the conclusion that Emeny lacked the requisite bona fide intent. The opposed application (like eight other applications filed by Emeny and later abandoned) included “an unreasonably broad listing of goods and services” (including more that 200 items of clothing, from “anoraks” to “wrestling uniforms”). Yet there was no evidence of any business plans, nor any evidence of a single business contact with any potential partner who would supply the goods that Emeny would sell. Indeed, on cross-examination, Emeny admitted that he wanted to “make sure that nobody else [can] take advantage of those marks.” This “defensive motivation” is the type of potential abuse that concerned Congress.

Emeny wholly failed to rebut Intel’s prima facie case. In response to discovery requests, Emeny did not divulge any business or marketing plans, or any relevant discussions. He admitted that he conducted no specific planning and never promoted or sold any goods under the mark. In short, he provided no evidence of a bona fide intent to use the mark. Following the Board’s position expressed in Commodore, the “failure to produce any objective evidence of an intent to use is sufficient basis for ruling in Intel’s favor.” Therefore, the Board sustained the opposition.

The ruling in Intel v. Emeny should cause every trademark practitioner, when filing a Section 1(b) intent-to-use application, to pause and ask how he or she will substantiate a client’s claim of bona fide intent. Are there documents available? Is there a business plan? Is there a memorandum in the file or a letter from the client setting forth some details about its intentions?

Foreign applicants may be particularly vulnerable to the Emeny ruling, since foreign applications and registrations that form the basis for Section 44 and 66 filings often include long lists of goods and/or services for which the mark in question has never been used anywhere. A foreign owner may thus have a difficult time producing documentation or other evidence that would substantiate its stated bona fide intention to use its mark in this country. How many applications and registrations based on Sections 44 or 66 are vulnerable to attack on the ground of a lack of bona fide intent to use the mark in commerce? Has Emeny opened Pandora’s Box for foreign registrants?


III. Testifying in the USA?

Foreign trademark owners may be particularly surprised by a recent federal appellate court ruling that requires a foreign applicant or registrant to appear in the USA for testimony in an inter partes proceeding involving its mark. In a controversial 2-1 decision, the U.S. Court of Appeals for the Fourth Circuit ordered a Portuguese applicant, Rosenruist-Gestao E Servicos LDA, to produce a witness to testify in the U.S. in an opposition proceeding filed by Virgin Enterprises Ltd. Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., 85 USPQ2d 1385 (4th Cir. 2007).

Rosenruist had conducted no business in the U.S. and had no employees here. It had, however, filed an intent-to-use application in which it designated its Virginia-based attorney as its domestic representative upon whom notice may be served in matters affecting the trademark. Virgin served Rosenruist’s domestic representative with a notice of deposition, in an ultimately successful attempt to require the Portuguese company to produce a witness under Rule 30(b)(6) of the Federal Rules of Civil Procedure [i.e., a witness to speak for the corporation on designated topics of relevance] in Virginia for a deposition concerning its opposed trademark application.

Virgin sought to conduct a deposition of Rosenruist to present testimonial evidence at trial before the TTAB, but Rosenruist refused to appear. The TTAB denied Virgin’s motion to compel appearance, noting that the Board’s Manual of Procedure states that a party residing in a foreign country may be compelled to give testimony only through the procedures provided in The Hague Convention or via letters rogatory to the Portuguese legal authority. See Trademark Trial and Appeal Board Manual of Procedure (TBMP), §703.01(f)(3) (2nd Ed. rev. 2004). Virgin then served Rosenruist’s Virginia attorney with a Rule 30(b)(6) deposition subpoena issued by the U.S. District Court for the Eastern District of Virginia pursuant to 35 U.S.C. §24. Rosenruist moved to quash, arguing that the district court lacked the authority to compel a foreign resident to appear, that Virgin was attempting to circumvent the TTAB’s procedures, and that even if the subpoena were valid, service on counsel was ineffective. Following the court’s denial of Rosenruist’s motion to quash, Rosenruist refused to produce a witness from the company itself.

Virgin unsuccessfully moved to compel, which led to the appellate court decision. The 4th Circuit agreed with Virgin that the term “witness” as used in 35 U.S.C. §24 is not limited to natural persons, and that the USPTO regulations “expressly contemplate use of Rule 30(b)(6) depositions in which the corporation is the ‘person’ named in the subpoena….” Rosenruist could not, therefore, avoid producing a 30(b)(6) witness on the basis that none of its potential designees were “personally ‘residing or being within’ the Eastern District of Virginia.” Moreover, Rosenruist’s contacts with the district were sufficient to subject it to the court’s subpoena power.

As to the TTAB’s Manual of Procedure, the Court concluded that it was not bound by the TBMP, which, in its view, “is simply a manual issued by the TTAB … which expressly acknowledges that it ‘does not modify, amend, or serve as a substitute for any statutes, rules or decisional law and is not binding upon the [TTAB].’”

Judge Wilkinson issued a vigorous and detailed dissent, strongly objecting to creation of a standard that is effectively national in scope, since many foreign owners either have appointed a domestic representative located within the 4th Circuit (Maryland, North Carolina, South Carolina, Virginia, and West Virginia) or have failed to appoint a representative, in which case by statute they have designated as their representative the Commissioner for Patents, who is located in the Eastern District of Virginia. “[F]or any foreign corporation without a pre-existing United States presence, the majority’s decision will be controlling.”

It remains to be seen whether Rosenruist will seek reconsideration by the Court of Appeals, or review by the U.S. Supreme Court. Meanwhile this decision creates a new national standard regarding attendance of foreign applicants or registrants at testimonial depositions in proceedings relating to their marks. Although this case involved a “trial” deposition, its logic would seem to apply to discovery depositions as well [notwithstanding the fact that, for discovery depositions of a foreign party, the TTAB Manual of Procedure provides for deposition on written questions (administered in the foreign country) unless the parties agree or the Board orders an oral deposition].

A foreign trademark owner who has designated a domestic representative in the geographical area encompassed by the 4th Circuit, as well as any owner who has not designated a domestic representative, may want to change its designee to one resident in another area of the United States. [The designee need not be the attorney prosecuting the trademark application]. At least then a foreign owner might avoid the precedential effect of the 4th Circuit’s ruling and might persuade another district court or another U.S. Court of Appeals to rule otherwise. But even so, some foreign owners might find it less expensive to comply with a Rule 30(b)(6) deposition notice by sending a designee to testify in this country rather than go to the considerable expense of mounting a challenge.

U.S. parties to TTAB proceedings, on the other hand, will welcome the opportunity to require foreign parties to appear for testimony in this country. Some feel that the prior practice requiring letters rogatory and the like was overly expensive and burdensome, and gave an unfair advantage to the foreign party. For now, the tables have been turned.


IV. Conclusion

This brief article is by no means intended as an exhaustive review of these three issues. It is intended, however, to alert foreign trademark owners and their attorneys and agents that the American trademark landscape is changing in ways that may significantly affect their trademark position in this country.

Text Copyright John L. Welch and Ann Lamport Hammitte 2008.

Precedential No. 8: Applicant Fails to Prove Acquired Distinctiveness for Sunglass Frame Product Design

The Board affirmed a refusal to register the product configuration mark shown below for "spectacles, sunglasses," finding that Applicant had failed to prove acquired distinctiveness. The alleged mark comprised three "fingers" located near the earpiece hinge and resembles an "asymmetrical fork." In re ic! berlin brillen GmbH, 85 USPQ2d 2021 (TTAB 2008) [precedential].


Applicant sought registration under Section 2(f), apparently recognizing that a product shape cannot be inherently distinctive. It pointed to five years of use, sales of more than 40,000 units, and marketing expenditures of $115,000 in 2006 alone. Applicant submitted photographs of celebrities wearing its eyewear, as well as ten "uniformly worded customer declarations from opticians" claiming that the design serves as a source indicator and that customers as for the eyewear by the earpiece design.

Examining Attorney Amy Guerin pointed to the paucity of evidence that the ultimate purchaser would view the design as a source indicator. She noted the lack of "look for" advertising promoting the design as a trademark.


In response, Applicant asserted (without evidence) that eyewear manufacturers "use the eyepiece to display their trademarks."

The Board was not persuaded that the alleged mark has become distinctive of Applicant's eyewear, the "chief reason" being the lack of evidence of promotion of the mark as a trademark.

"While the earpiece design is visible on the eyewear shown in applicant's print advertisements and Internet web pages, and in the celebrity photographs of record, there is nothing to indicate that the ultimate purchasers would view this particular feature as anything more than a component of the eyeglass/sunglass frame."

The declarations from opticians are entitled to "some weight," but this relates to only an "extremely small number of the purchasing public." Applicant's sales and advertising figures are "not especially impressive." Applicant failed to provide information regarding the size of its sales relative to competitors. Sales of 40,000 units in five years would surely represent a small portion of total eyewear sales. Moreover, any popularity of Applicant's goods may result from features of the eyewear that are particularly desirable (like its "patented hinges").


Although five years' of continuous and substantially exclusive use may serve as prima facie evidence of acquired distinctiveness, the language of Section 2(f) is permissive. Under the facts of this case, the five years of use is "insufficient to establish acquired distinctiveness."

The Board therefore affirmed the refusal to register under Section 1, 2, and 45.

Text Copyright John L. Welch 2008.

Precedential No. 7: TTAB Dismisses 2(d) and Dilution Opposition for Lack of Evidence and Inadequate Pleading

Opposer Demon International had a devil of a time in this Section 2(d)/dilution opposition proceeding. It failed to properly plead the dilution claim and it put in no evidence to establish standing or priority on its likelihood of confusion claim. So it lost. Demon Int'l LC v. Lynch, 86 USPQ2d 1058 (TTAB 2008) [precedential].


Applicant William Lynch sought to register the mark shown above for t-shirts and other clothing items. Opposer claimed likely confusion with its mark DEMON for various clothing items, including t-shirts, which it allegedly used since 1999. It also threw in a dilution claim. In his answer, Lynch stated that he "does not dispute said duration of commerce or items of commerce by Petitioner," but he denied likely confusion.

Opposer's dilution claim was quickly dismissed because it did not include an assertion that Opposer's mark is famous. [Yikes! - ed.]

Opposer failed to put in any evidence to prove its common law rights in the DEMON mark and although a registration issued to Opposer after the opposition was filed, it did not submit the registration into evidence. [Of course, had Opposer pleaded and proved ownership of the registration, that would have removed priority from the case.]

Applicant Lynch's answer that he "did not dispute said duration of commerce or items of commerce" was not a "specific admission" of prior rights, "especially given that applicant has otherwise denied that opposer will be damaged by registration of applicant's mark." Even if this statement were construed as an admission, however, it was not an admission that Opposer was using any particular mark.

The Board ruled that Opposer had failed to prove standing and priority for its 2(d) claim, and so this claim was also dismissed.

TTABlog comment: It seems to me that Applicant Lynch's answer was pretty darn close to an admission that Opposer used its mark on its goods since 1999. But because Opposer failed to put in any evidence, it was not about to get a break from the Board. The lesson here is: treat the Board with respect by putting in a proper case.

Text Copyright John L. Welch 2008.

Finding "MINK" Deceptive and Deceptively Misdescriptive for Clothing, TTAB Affirms 2(a) and 2(e)(1) Refusals

Applicant Rebecca Brough had a TTABrough time in her attempt to register the mark MINK & Design, shown below, for clothing, headgear, and footgear made of non-animal products. The Board found the mark to be deceptive under Section 2(a) and deceptively misdescriptive under 2(e)(1). In re Brough, Serial No. 78680981 (January 30, 2008) [not precedential]


Applicant Brough did not dispute the meaning of "mink" as an animal fur, nor that mink is used in various clothing items. She focused her argument on the way she uses the mark in connection with shoes: she is devoted to "providing cruelty-free fashionable footwear" and "worked to develop a new way of manufacturing shoes with non-animal materials." Her customers "would never imagine that MINK shoes are manufactured using mink-fur."

The publicity she has received emphasizes "the animal-free nature of MINK shoes," and so "the likelihood that a purchaser would be deceived about the materials used in the shoe products' actual construction are practically zero." Applicant is listed on PETA's "Shopping Guide to Compassionate Clothing" and her use of the name MINK is "simply an off-the-wall, out-of-the-box, wildly creative, animal-friendly design."

The Board was unmoved. It must focus on the applied-for mark, and not on Applicant's actual use of the mark. As Examining Attorney Robert Clark noted, Applicant "could use the term MINK in connection with faux fur without any disclaimer or explanation." In short, "applicant's explanations and intentions are not part of the application." Therefore the mark is misdescriptive of the goods.


As to Section 2(a) deceptiveness, the first two factors (misdescriptiveness and believability of the misdescription) were established above. The third requirement is that the misdescription be likely to affect the purchasing decision. The PTO submitted website materials showing that mink is a desirable component material for clothing items. Mink is perceived as "a luxury item that imbues the owner with status" and therefore use of the term would would materially affect the purchasing decision. Ergo, MINK is deceptive in connection with the identified goods.

The TTAB affirmed the two refusals.

Text Copyright John L. Welch 2008.

Precedential No. 6: TTAB Clarifies Doctrine of Equivalents, Affirms 2(e)(3) Refusal of "MOSKOVSKAYA" for Vodka

Finding the mark to be primarily geographically deceptively misdescriptive, the Board affirmed a Section 2(e)(3) refusal to register the mark MOSKOVSKAYA for vodka. The crucial issue involved the doctrine of foreign equivalents, and more specifically, the definition of the "ordinary American purchaser." In re Spirits Int'l N.V., 86 USPQ2d 1078 (TTAB 2008) [precedential], vacated and remanded, Appeal No. 08-1369 (Fed. Cir. April 29, 2009) [precedential]. [TTABlogged here].


Applicant admitted that the goods will not originate in Moscow, and there was no dispute that MOSKOVSKAYA means "of or from Moscow" or that Moscow is known for its production of vodka. Applicant maintained, however, that the primary meaning of MOSKOVSKAYA is not geographic because the average American purchaser would not translate the mark into English.

Examining Attorney Geoffrey Fosdick, on the other hand, contended that "under the doctrine of foreign equivalents, the ordinary American purchaser, which as stated in In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006) refers to the 'ordinary American purchaser who is knowledgeable in the foreign language,' will translate the mark into its English equivalent." Applicant, based on its reading of Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689 (Fed. Cir. 2005), asserted that the PTO had misapplied the doctrine of foreign equivalents because it had misinterpreted the CAFC's ruling in Palm Bay.

"Applicant argues that the Board's decision in Thomas is inconsistent with the holding in Palm Bay 'to the extent that the Board interpreted the Court's reference to the "ordinary American purchaser" to mean "the ordinary American purchaser who is knowledgeable in the foreign language,"' and that the Thomas case along with the authorities cited for this proposition 'are no longer good law.'"

Applicant submitted survey evidence to show that "the meaning of the mark is arbitrary because the term would not be translated into English by consumers, and that its geographic meaning would be lost on the public."

The Board strenuously disagreed with Applicant's interpretation of Palm Bay, asserting that Applicant had taken the CAFC's reference to the "ordinary American purchaser" out of context and that the CAFC in fact "did not address the definition of the 'ordinary American purchaser.'"

"Furthermore, the Court at no point said, or even suggested, that in determining the registrability of a mark in a foreign language, the 'ordinary American purchaser' who speaks or understands the foreign language can, in effect, be ignored. Applicant argues that the Thomas decision 'cannot be squared' with the Court's holding in Palm Bay. The fact is, however, that applicant's position 'cannot be squared' with the underlying principles of the Trademark Act."

According to the Board, Applicant's position would undermine the purpose of 2(e)(3) by permitting registration of foreign terms that have the potential to deceive an appreciable segment of relevant consumers. In addition, such a view would conflict with long established case law.

The Board presumed that "a word in one of the common, modern languages of the world will be spoken or understood by an appreciable number of U.S. consumers for the product or service at issue." Russian is a common, modern language. The question then is, according to Palm Bay, whether those who understand the language "will stop and translate the word into its English equivalent." That, in turn, depends on the fact of the case. "While there are exceptions to the rule, and circumstances where translation is unlikely, none of those circumstances exist here."

"There is nothing in the record to indicate the mark would not be translated because of marketplace circumstances or the commercial setting in which it is used." [TTAB query: are particular marketplace circumstance even relevant in an ex parte appeal?] Nor is there any question of the translated meaning of MOSKOVSKAYA. Therefore, the Board applied the doctrine and found the primary meaning of MOSKOVSKAYA to be geographic. The evidence further showed that Moscow is known for vodka and that purchasers are likely to be deceived into believing that Applicant's vodka comes from Moscow.

Looking at Applicant's survey, the TTAB had a number of problems. The survey expert did not screen for consumers who are knowledgeable in the Russian language, and so there is "no way of knowing whether the views of this significant subset of potential purchasers was properly represented in the survey because Dr. Wind made no effort to include them." Therefore the survey results are not probative.

Moreover, even assuming that the survey universe were proper, the survey was still "not persuasive or probative of any issue in this case." Applicant "did not even test for whether the mark would be translated." And the Board disagreed with the interpretation of the results [that only 2.6 percent of respondents believe that MOSKOVSKAYA vodka is made in Moscow]. In any case, a mall survey is entitled to limited probative weight because "it is not based on a random sample and the results cannot be projected to the entire universe of relevant purchasers." And the survey's question that purportedly tested for materiality was also improperly designed.

The Board concluded that Applicant had failed to overcome the PTO's prima facie showing, and so the refusal was affirmed.

TTABlog comment: I, too, was confused by Palm Bay, as I stated several times. (e.g., here and here). The CAFC's handling of the equivalents issue was more confusing than enlightening.

But if the CAFC meant what the TTAB now says it meant, i.e., that the relevant purchaser is the average American consumer who is knowledgeable in the foreign language, why did the CAFC agree that "VEUVE ROYALE" would not be translated into English? It didn't give any reasons. It didn't say whether the TTAB applied the wrong test or simply got the wrong result.

Moreover, this whole idea of "stop and translate" is troublesome to me. If someone is knowledgeable in the foreign language, would he or she translate the phrase into English at all? Wouldn't he or she just recognize the meaning without making any translation?

Update: On April 8, 2008, this decision was appealed to the CAFC.

Text Copyright John L. Welch 2008

TTAB Dubiously Finds "SOCK-UM" for a Parlor Game Confusingly Similar to "ROCK'EM SOCK'EM ROBOTS" for Action Games

In what it readily acknowledged was a "close case," the Board sustained a Section 2(d) opposition brought by Mattel, Inc. against registration of the mark SOCK-UM for a "game where a labeled mat is placed on the ground or floor, participants position themselves on the mat and volley a sock back and forth from one half of the mat to the other half of the mat." The Board found the applied-for mark confusingly similar to the registered marks ROCK'EM SOCK'EM ROBOTS and ROCK'EM SOCK'EM for, inter alia, action games. Mattel, Inc. v. Briden, Opposition No. 91160087 (January 30, 2008) [not precedential].


The Board first rejected Mattel's assertion that its mark ROCK'EM SOCK'EM ROBOTS is famous. Although the mark has been used for several decades, the record did not include sales and advertising figures for most of the period. Sales in recent years have increased dramatically, but "they are not in the same range for other marks that have been found to be famous." Newspaper and magazine articles have showed that the mark and the game "have recognition for those who played the game in the past." In short, Mattel failed to meet the requirement that fame be clearly proven.

However, the Board did find ROCK'EM SOCK'EM ROBOTS to be a strong mark in view of the length of use and other evidence, and in view of the lack of evidence of similar marks in use by third-parties.

Turning to the goods, the Board found them legally identical since the term "action games" identified in Mattel's registrations would encompass Applicant's game. Because the goods are legally identical, the Board presumed that they travel in the same channels of trade to the same classes of customers.


As to the marks, the Board noted that when the goods are virtually identical, as here, the degree of similarity between the marks necessary to support a conclusion of likely confusion declines. The Board agreed with Mattel that because the word ROBOTS is disclaimed, it "deserves less weight when the marks are compared in their entireties." As to the ROCK'EM portion of Mattel's mark, that too is not that important:

"Although ROCK'EM has a prominent position because it is the first word of the mark, it also has a suggestive connotation similar to SOCK'EM, as it suggests both the shaking motion of a 'sock' and the effect of the striking motion of SOCK'EM, i.e., that one both rocks and socks one's opponent, and that one who is socked is rocked by the socking." [LOL! - ed.]

"Also, because ROCK'EM and SOCK'EM rhyme, the ROCK'EM portion of the mark would be viewed as intrinsically connected to SOCK'EM, and as reinforcing not just the meaning but also the sound and the appearance of SOCK'EM." [HAHAHA! - ed.]

The Board concluded that although there are "clear differences" in the marks, the similarities outweigh the differences, and this du Pont factor favors Mattel "to some extent."

The Board then noted that the goods are inexpensive and are the type that can be purchased on impulse and without great care. The fact that Mattel has used the ROCK'EM SOCK'EM ROBOTS mark on ancillary products like keychains also favors Mattel. [TTABlog query: If the goods are legally identical, who cares about ancillary products?] And the fact that the goods are intended to be sold to the general public means that the number of people "that can potentially be confused is high," and this is a factor favoring Mattel. [TTABlog comment: Huh? I don't get that one. Since when is the number of potential purchasers one of the du Pont factors?]

In one last bit of overreaching, Mattel lamely urged that Applicant adopted her mark with an intent to trade off Mattel's goodwill because she used the same colors (red, yellow, and blue) for her prototype and because her slogan "It'll Knock Your Socks Off" is similar to Mattel's "Knock His Block Off. [LOL - ed.].

Balancing all the relevant factors, and recognizing that any doubt should be resolved in favor of the registrant, the Board sustained the opposition.

TTABlog note: Well, that's what typically happens when a powerhouse registrant goes up against an individual applicant: the registrant dumps in a load of evidence, the Board (as required) semi-robotically marches through the du Pont factors, and the applicant has his or her socks and block knocked off. That's life at the TTAB! But at least we got a few chuckles out of it.

Text Copyright John L. Welch 2008.

TTAB Dismisses Opposition to Bottle Shape Trademark: Opposer Failed to Prove Functionality

Applying the CCPA's Morton-Norwich analysis, the Board dismissed an opposition to registration of the product configuration mark shown below for "plastic water bottle, sold empty," rejecting Opposer's claim that the design is de jure functional. Opposer also pleaded, but failed to pursue, the issue of acquired distinctiveness. Triforest Enterprises, Inc. v. Nalge Nunc Int'l Corp., Opposition No. 91165809 (January 31, 2008) [not precedential].


Opposer argued that "virtually every element of the mark ... has a utilitarian advantage," and that the design is functional "because it consists of a common 'Boston Round' bottle shape to which opposer has simply added a functional tether cap with ring and button."

Applicant Nalge Nunc pointed out that Opposer had ignored the functionality factors set forth in In re Morton-Norwich Prods., Inc., 213 USPQ 9 (CCPA 1982): (1) whether there exists a utility patent directed to the design, (2) whether the applicant touts the utilitarian advantages of the design in advertisements, (3) whether there are alternative and competitive designs, and (4) whether the design is cheaper and simpler to manufacture than alternative and competitive designs.

Applicant maintained that there is no utility patent directed to its design, and it has never applied for one. Moreover, there are no advertising or promotional materials of record that tout the utilitarian advantages of the design. Numerous alternative designs are available to competitors, several of which were identified during the testimony of Opposer's president. In addition, Applicant submitted more than 15 additional, alternative bottles. Finally, Applicant asserted that its bottle is not cheaper or simpler to manufacture than other designs.

Applicant's specimen of use
The Board agreed with Applicant. Several utility patents submitted by Opposer "do not cover or remotely resemble applicant's applied-for mark." The Board found no evidence of touting. As to the third factor, the record was "replete with evidence of alternative designs." And the testimony of Applicant's witnesses convinced the Board that the subject design "is more costly and complex to manufacture than a number of alternative designs."

With respect to Opposer's contention that Applicant's design is functional because it is in the shape of a common "Boston Round bottle, the Board recognized that "applicant did not originate or design the shape of its bottle, but has used a pre-existing bottle shape" that has been used in the scientific field." That, however, does not render the design functional. [TTABlog comment: perhaps Opposer should have pursued the acquired distinctiveness issue.]

The Board therefore dismissed the opposition.

TTABlog note: Curiously, the Board never mentioned the Supreme Court's TrafFix decision and its effect on the Morton-Norwich approach to the consideration of alternative designs. The CAFC's addressed that issue in Valu Engineering Inc. v. Rexnord Corp., 61 USPQ2d 1422, 1426 (Fed. Cir. 2002), but the Board ignored that case as well. It prefers to stick to the good old Morton-Norwich test.

Text Copyright John L. Welch 2008.

TTAB Reverses 2(d) Refusal: "ROYALE" for Camping Trailers Not Confusingly Similar to "ROYAL CARGO" for Cargo Trailers

In late October 2007, the TTAB came to Boston for a conference at Suffolk Law School, where it heard the final arguments in In re Fleetwood Enterprises, Inc., Serial No. 78579524 (February 2, 2008) [not precedential]. After the argument, a straw poll of attendees indicated that they were virtually unanimous in expecting the Applicant to prevail. They were right.

ROYAL CARGO brand trailer
The Board reversed a Section 2(d) refusal of the mark ROYALE for "folding camping trailers," finding it not likely to cause confusion with the registered mark ROYAL CARGO for "[t]railers and transportation equipment, namely, stock trailers, horse trailers, utility trailers, flatdeck trailers, truck decks, enclosed cargo trailers for the transportation of snowmobiles, automobiles and other equipment, and cargo trailers" [CARGO disclaimed].

"[A] combination of factors, taken together" led to the conclusion that confusion was not likely. Although the Board considered the words "ROYALE" and "ROYAL" to have the same meaning, it was a "somewhat suggestive meaning" [suggesting quality] and therefore these words are entitled to "a more limited scope of protection than otherwise might apply." The difference in spelling is of "some importance" in distinguishing the words, and "there is also a subtle difference in connotation and commercial impression between the spellings -- ROYALE suggests something 'continental' or rare." The Board also noted that the word CARGO, although disclaimed, cannot be ignored and "may play a significant role in distinguishing the marks overall." Based on the combination of these differences, the Board concluded that the marks are more dissimilar than similar, particularly when considered along with the other pertinent du Pont factors.

Turning to the goods, Applicant Fleetwood argued that "a camping trailer is not considered transportation equipment in the sense of carrying cargo." The Board agreed that "folding camping trailers" are not encompassed by the identification of goods of the cited registration. Moreover, because of the difference in purpose of the involved goods, the Board refused to presume that the goods travel in the same trade channels.

Finally, the Board agreed with Applicant that the involved goods are not likely to be purchased on impulse, but rather only after some care.

Based on the "cumulative effect of the differences in the marks, differences in the goods and channels of trade for the goods and the conditions of purchase," the Board concluded that confusion is not likely, and it reversed the refusal.

Text Copyright John L. Welch 2007.

Precedential No. 67 (2007): Finding Two-Days' Notice Insufficient, TTAB Strikes Opposer's Testimony and Dismisses Opposition

One just never knows when a precedential interlocutory ruling of the TTAB may explode in the firmament. The Board does not include interlocutory decision in its database of decision (only final decisions), and so once in a while one of these interlocutories suddenly and unexpectedly appears. Case in point: Gaudreau v. American Promotional Events, Inc., 82 USPQ2d 1692 (TTAB 2007) [precedential].


Applicant APE sought to register the mark TNT FIREWORKS, INC. for "distribution services for fireworks," but was opposed by Terry P. Goudreau et al., who claimed prior use of the same mark for fireworks. Two days before their testimony period closed on November 16, 2006, Opposers noticed a testimony deposition for November 16th. When the deposition was taken, APE's attorney appeared (by telephone) under protest and conducted minimal cross-examination.

On November 20th, APE moved to strike the entire testimony deposition under Rule 2.123(e)(3) on the ground that the notice of deposition was both inadequate and unreasonable. The deposition was scheduled for Williston, North Dakota, whereas APE's counsel was located in St. Louis.

Under the circumstances, the Board found the notice unreasonable. There was no compelling reason why Opposer needed to take the deposition on such short notice. The Board distinguished cases in which the Board has considered testimony taken on unreasonable notice when "the deposing party has offered to accommodate its adversary by making the witness available for further questioning at a later date or has agreed to extend its testimony period to allow for further questioning of the witness." Here Opposer Gaudreau stated that he did not want to extend the testimony period. [TTABlog comment: I hesitate to say that that statement blew up in his face!]

The Board therefore struck the testimony from the record. Because Opposers offered no other evidence, it could not sustain its burden of proof, and so the Board entered judgment against Opposers and in favor of APE.

Text Copyright John L. Welch 2008.

Precedential No. 5: TTAB Dismisses Opposition for Opposer's Failure to Serve Prior to Filing

I'll bet the Board was just waiting for this to happen: an opposer failed to follow the new TTAB rules (effective Nov. 1, 2007) that require service of a Notice of Opposition on the applicant prior to filing. See Rules 2.101(a) and 2.101(d)(4). The opposition was dismissed as a nullity. Springfield, Inc. v. XD, 86 USPQ2d 1063 (TTAB 2008) [precedential].


Opposer Springfield filed its opposition on November 7, 2007, the last day of the opposition period, using the Board's ESTTA electronic system. Springfield checked the box on the ESTTA form indicating that it had effected service on Applicant [otherwise it would not have been allowed to file electronically], but in fact it hadn't served.

On November 26th, Springfield filed a motion for leave to file an amended notice of opposition indicating that it served a copy of the notice of opposition on applicant on that same day, November 26th.

No way, said the Board. The Rules require service prior to filing, not a mere "promise to make service at some time in the future." The Notice of Opposition should not have received a filing date and the proceeding should not have been instituted. [How was ESTTA supposed to know that the notice hadn't been served? - ed.].

The Board pointed out in a footnote that Opposer Springfield is not without recourse, since "it may file a petition to cancel if and when the mark in the involved application registers."

TTABlog query: What would have happened if Opposer had managed to serve Applicant prior to the end of the opposition period, but after filing the Notice of Opposition and the proof of service? I suspect the Board would have allowed the amendment.

TTABlog comment: Why did the Board make this change to service by the plaintiff? I think it happened this way: The new rules as originally proposed would have required the opposer/petitioner to investigate and find the defendant, and then serve. Only after a failed investigation could the plaintiff go to the Board and ask for the Board's help with service. When practitioners complained about that proposal, the Board relented by requiring the plaintiff to do nothing more than serve the papers at the respondent's address listed in TARR. But it kept the idea of the plaintiff serving the defendant before filing.

Which leads one to ask: if all the plaintiff has to do is serve at the TARR-listed address (which is what the Board did in the past anyway), why bother to make the rule change?

Text Copyright John L. Welch 2008.

Precedential No. 4: TTAB Affirms Triple Refusal of "NORMANDIE CAMEMBERT" for Cheese

Applicant Cheezhwse.com, which lost the NAPOLEON BRIE case last October (TTABlogged here), racked up another "L" before the TTAB. This time it hit the TTAB trifecta when the Board affirmed three refusals to register the mark NORMANDIE CAMEMBERT for cheese. Can you guess what the three grounds were? In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008) [precedential].

TTABlogger in Normandy (2005)

Well, I doubt you would have guessed the first one: Applicant failed to comply with the PTO's requirement under Rule 2.61(b) for further information as to the geographic origin of the mark. In fact, "applicant failed to even acknowledge the requirement, much less comply with it." [With regard to this totally avoidable refusal, see my article entitled "Six Potential Pitfalls in Trademark Prosecution," and particularly part 5 thereof, entitled, "When the Examining Attorney Says Jump ...."].

In addition to resulting in a refusal under Rule 2.61(b), Applicant's failure to comply with the PTO's demand led, more or less, to the two other refusals . In light of Applicant's failure to respond, the Board proceeded to presume that Applicant's goods "in fact originate or will originate in or from the place named in the mark," and with respect to the alternative Section 2(e)(3) refusal, to alternatively presume that "applicant's goods do not or will not originate in or from the place named in the mark."

With those presumptions in place, the Board then considered the 2(e)(2) and 2(e)(3) refusals. [You may have guessed one of these grounds].

As to 2(e)(2), the Board found the primary significance of NORMANDIE CAMEMBERT to be a generally-known geographic place, i.e., Normandy, France. It noted that "Normandie" is the French spelling of "Normandy," and that camembert is a generic term for a type of cheese. Applicant argued that the primary significance of NORMANDIE, because of the spelling, is the former ocean liner SS NORMANDIE, but that argument sailed nowhere.

The Board next found that a goods/place association exists between the goods and Normandy. If one assumes that Applicant's goods come from Normandy, then a goods/place association may be presumed, but in any event the evidence established that Normandy is famous for cheese, and for camembert in particular.


And so the Board affirmed the Section 2(e)(2) refusal.

Turning to the 2(e)(3) refusal, the Board presumed that Applicant's goods do not originate in Normandy, France. The remaining question was simple: whether the misrepresentation of the origin of the goods by Applicant's mark is or would be material to the purchasing decision. The evidence established that "cheese is a principal product of Normandy and that Normandy is famous for its cheeses, including its Camembert cheese," which was sufficient to satisfy the materiality requirement of Section 2(e)(3).

The Board therefore affirmed all three refusals.

Text Copyright John L. Welch 2008.

Precedential No. 3: NFL Thrown for a Loss as TTAB Denies Request to Extend Discovery

Some people think the NFL is overly aggressive in enforcing its trademark rights. Will its institution of this case bolster that impression? The NFL is opposing (on 2(a), 2(d), and dilution grounds) the mark shown below left, for motorcycle fender side cover panels, based upon the League's ownership of the mark shown on the right, for football services, clothing, and various other goods. As the discovery clock wound down in this proceeding, the NFL sought to extend the discovery period, but the Board denied the motion because the NFL's predicament was its own darn fault. National Football League v. DNH Management, LLC, 85 USPQ2d 1852 (TTAB 2008) [precedential].


Although a party is supposed to show "good cause" for extending the discovery period, the Board is usually liberal in granting an extension "so long as the moving party has not been guilty of negligence or bad faith and the privilege of extensions is not abused." But if you wait too long ....

Having made no effort to take discovery, the NFL waited until the twelve days before the close of the discovery period before filing a motion to extend. The Board acknowledged that this was the first request by the NFL to extend any date, and that there was no evidence of bad faith. Nevertheless, the Board found that the NFL "have not made the minimum showing necessary to establish good cause to support an extension of the discovery period for any length of time."

The NFL claimed that it delayed taking discovery because of settlement negotiations, but it admitted that Applicant never responded to any of its "efforts at communication." In it brief, Applicant stated that it never had any interest in settlement and at no point engaged in or encouraged any discussions.

The Board observed that the NFL should have "reasonably concluded" that it needed to move forward with discovery. "Clearly, the opposers' claimed need for an extension of discovery is the product solely of opposers' unwarranted delay in initiating discovery." Consequently, the Board denied the requested 90-day extension.

The Board also quashed a deposition notice served by the NFL on the last day of discovery, since discovery depositions must be both noticed and taken during the discovery period.

TTABlog comment: What's the lesson here? Losers sit on their hands, winners run to daylight! Or something like that.

Text Copyright John L. Welch 2008.

Precedential No. 2: TTAB Issues Sanctions For Discovery Abuses

Whenever the TTAB issues a precedential decision, I try to discern what point the Board is trying to make. In this, the second precedential decision of 2008, the message I get is this: don't mess with Interlocutory Attorney Andrew Baxley. Opposer HighBeam Marketing learned that lesson the hard way when it failed to comply with a Board order compelling additional discovery responses. Opposer also made the mistake of refusing to allow its expert witness to testify pursuant to a court subpoena unless Applicant put up her fees in advance. HighBeam Marketing, LLC v. Highbeam Research, LLC, 85 USPQ2d 1902 (TTAB 2008) [precedential].


After the Order was issued, Opposer diddled and daddled until Applicant filed a motion for sanctions. With its opposition to the motion, Opposer produced an additional 1000 pages of documents, but that was too late to qualify as compliance with the Board's order. As a result, the Board issued sanctions: Opposer was precluded from using as trial evidence any information and documents relating to actual confusion, relatedness of the parties' services, and overlap of purchasers, that were in Opposer's possession, custody, or control but were not produced prior to the filing of the sanctions motion.

As to the expert witness subpoena, Opposer's counsel refused to allow the witness to testify unless Applicant advanced funds sufficient to cover seven hours of her time along with travel expenses. Neither Opposer nor the witness sought to have the issuing court quash the subpoena.

The Board found that Opposer's counsel "clearly prevented the deposition from proceeding by insisting on resolution of a fee dispute prior to a deposition." [The Board pointed out in footnote 4 that FRCP 26(b)(4)(C) calls for the payment of a reasonable fee, but that rule was not applicable to TTAB proceedings when the subpoena was issued.] The fee dispute "could have been resolved in the district court that issued the subpoena after the taking of the deposition."

The Board found a sanction necessary, and it precluded Opposer from using as trial evidence the survey prepared by the expert, any summary report of the survey results, and any testimony of the witness.

Finally, the Board noted Opposer's lack of cooperation in scheduling the depositions of three of Opposer's employees, and it ordered Opposer to produce those employees for deposition within 30 days.

TTABlog comment: The sanction regarding the expert witness seems a bit harsh. Opposer didn't completely refuse to produce the witness. It just wanted the fees up front. Apparently from what the Board is saying (not too clearly), FRCP 26(b)(4)(C) now does apply in Board proceedings. So why not just give the Opposer a strong warning and give it 30 days to produce the witness, with the fee question to be determined later? Was its position that outrageous?

And by the way, is there any limit to the Board's "inherent authority to sanction"?

Text Copyright John L. Welch 2008.

TTAB Finds "HERBAL REPUBLIC" and "THE REPUBLIC OF TEA" Confusingly Similar for Tea

Some say a trademark registration is like a tea bag: you don't know how strong it is until you put it in hot water. The registration of HERBAL REPUBLIC (in the stylized form shown below) for tea, herbal teas, and other tea-related products proved to be not very strong. In fact the Board cancelled the registration on Section 2(d) grounds in light of the previously-used mark THE REPUBLIC OF TEA for tea. The Republic of Tea, Inc. v. Herbal Republic Inc., Cancellation No. 92043748 (January 16, 2007) [not precedential].


Petitioner Republic of Tea had its own problems in turning up the heat on Applicant. Although it pleaded four registrations, Petitioner failed to put any of them into evidence. It attached evidence to its brief, which evidence the Board found untimely. And the majority of exhibits that it submitted with its testimony deposition were illegible. Nonetheless, Petitioner managed to establish standing and priority via the testimony of its owner as to use of the mark THE REPUBLIC OF TEA in connection with tea and related products. Respondent Herbal Republic did not submit testimony or file a brief.

As to the du Pont analysis, the Board found that each party offers herbal teas and tea-based beverages, and thus the parties goods must be considered legally identical. The Board then noted that when the goods are identical, a lesser degree of similarity between the marks is necessary to establish a likelihood of confusion.


REPUBLIC is "clearly the dominant term in both marks," since TEA is generic and HERBAL is at least merely descriptive. Petitioner's mark "suggests, whimsically, a country of tea." Respondent's mark, in connection with herbal tea, "also suggests, whimsically, an herbal tea country." The connotations of the marks are thus "substantially similar." Therefore the Board found that the "overall commercial impressions of the marks are substantially similar."

Holding that Petitioner had met its burden to overcome the presumption of validity, the Board granted the petition for cancellation.

TTABlog comment: A party that makes no effort cannot expect to fare well at the TeaTeaAB.

Text Copyright John L. Welch 2008.

"AMERICAN MASALA" Geographically Descriptive of Food Products, Says TTAB

The TTAB found unsatisfactory the recipe offered by author and Chef Suvir Saran for registration of the mark AMERICAN MASALA for various food items and for restaurant services [MASALA disclaimed]. The Board affirmed the PTO's Section 2(e)(2) refusal because the mark is primarily geographically descriptive. In re Saran, Serial No. 78713958 (January 18, 2008) [not precedential].


The Board first found that the primary significance of AMERICAN MASALA "is that of a generally known geographic place, i.e., the United States of America." Applicant translated the word MASALA to mean "spice," and the PTO submitted dictionary evidence defining "masala" as a mixture of spices used in Indian cookery. The Board therefore deemed MASALA to be generic for certain of Applicant's goods (spices, spice blends, food flavorings, seasonings, curry powder) and at least merely descriptive of restaurant services, which presumably include restaurants serving Indian dishes featuring masala.

The composite AMERICAN MASALA would be perceived primarily as the place of origin of Applicant's goods: masala in or from America.

Applicant argued that AMERICAN MASALA "creates a popular, separate, non-geographic meaning," because "masala" has meanings other than a mixture of spices: i.e., a connotation of "Indian culture." e.g., the blending of Indian art, entertainment, literature and cuisine. So AMERICAN MASALA primarily denotes "the unique blend of the American and Indian cultures."

The Board, however, found Applicant's evidence to be insufficient to prove that the American public would understand "masala" to refer to Indian culture generally, rather than to "its obvious and primary culinary significance." As applied to Applicant goods, the primary significance of AMERICAN MASALA would be geographic.

Suvir Saran
Since Applicant is located in New York City, which is located in America, and because America is neither remote nor obscure, a goods/place association may be presumed.

Therefore, the Board affirmed the 2(e)(2) refusal.

Text Copyright John L. Welch 2008.

TTAB Posts February 2008 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled six hearings for the month of February, as listed below. The hearings will be held in the East Wing of the Madison Building. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.


February 6, 2008 - 2 PM: American Italian Pasta Co. v. Barilla Alimentare S.p.A., Opposition No. 91161373 [Section 2(d) opposition to registration of the mark BARILLA - AMERICA'S FAVORITE PASTA for pasta, based on Opposer's alleged prior use of the mark AMERICA'S FAVORITE PASTA for pasta].


February 7, 2008 - 11 AM: In re Digital Oilfield, Inc., Serial No. 76127133 [ Genericness refusal of DIGITAL OILFIELD for various software products and computer-related services in the oil and gas industry].

February 7, 2008 - 2 PM: In re Timezone Trademark Mgmt Ltd., Serial No. 78523456 [Section 2(d) refusal of the mark shown immediately below, for retail stores and other services relating to watches and clocks, on the ground of likely confusion with the registered marks TIMEZONE & Design for watches and clocks, and TIMEZONE for advertising agencies and business management services].


February 14, 2008 - 11 AM: In re Right-On Co., Ltd., Serial No. 79011373) [Section 2(d) refusal of the mark HONEYSUCKLE ROSE for various clothing items, in light of the the registered mark HONEYSUCKLE for various clothing items].

February 19, 2008 - 11 AM: Wal-Mart Stores, Inc. v. Loufrani, Oppositions Nos. 91150278 and 91154632 [Oppositions to registration of the SMILEY & Design mark shown below (face design disclaimed) for hundreds of identified goods and services, on the ground of likely confusion with Opposer's previously used design mark, and on the ground of failure to function as a mark].


February 21, 2008 - 2 PM: In re Arizona Lacrosse, LLC, Serial Nos. 78561842 and 78561843 [ Section 2(d) refusal to register the mark STING ARIZONA in standard characters and design form for various clothing items in view of the registered mark STING for various clothing items].

Text Copyright John L. Welch 2008.