Monday, March 31, 2008

TTABlog Quarterly Index: January 2008 - March 2008

For those who haven't noticed, e-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz.


Section 2(a) - Deceptiveness:

Section 2(a) - False Connection:

Section 2(d) - Likelihood of Confusion:

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

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

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

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

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

Section 2(f) - Acquired Distinctiveness:


Disclaimers:

Failure to Function:

Fraud:

Functionality:

Genericness:

Ornamental/Failure to Function:

Ownership of Mark:

Procedural Issues:

Rule 2.61(b) - PTO Demand for Information:

Specimens of Use:

Leo Stoller:

Other:

posted by John L. Welch @ 3/31/2008   0 comments

Friday, March 28, 2008

Precedential No. 15: TTAB Again Affirms Genericness of "HOTELS.COM" for ... Guess What?

It's déjà vu all over again! [Oops, I said that yesterday.] Anyway, the Board again has affirmed a genericness refusal of HOTELS.COM for "providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network." Applicant submitted new survey evidence in an attempt to overcome the prior ruling, but the Board found the survey fatally flawed. In re Hotels.com, L.P., 87 USPQ2d 1100 (TTAB 2008) [precedential].


In a September 2006 decision, the Board affirmed a requirement that this Applicant disclaim the term HOTELS.COM in connection with the word-and-design mark shown above, on the ground that the term is generic. (TTABlogged here). Examining Attorney Tarah Hardy Ludlow argued that because the same phrase or term HOTELS.COM and the same services are involved here, res judicata bars Applicant from re-litigating the issue.

In view of the new survey evidence, however, the Board declined to apply res judicata:

"Under the circumstances, and in an exercise of caution, we find that the survey evidence constitutes a change in facts sufficient to avoid application of the doctrine of res judicata and to justify re-examining applicant's claim that the term HOTELS.COM is not generic."

Applicant's survey was a "national blind telephone survey" using a "Teflon" format. 76% of the respondents answered that HOTELS.COM is a brand name. The Board found, however, that the survey was "so seriously flawed that the results cannot be given any weight."

click on picture to enlarge

First, "there was a critical omission in the screening process" and therefore "the universe for the survey is fatally overbroad." Applicant's expert "should have ascertained through the screening process, rather than assumed, that participants in the survey could distinguish" between a domain name and a brand name, and those who could not should have been eliminated.

Respondents also "should have been presented with sample names that had some relevance to the mark in this case." The sample names had "no connection to the type of mark at issue," except for AMAZON.COM, and that name "is too obvious an example of a '.com' domain name that also functions as a brand name."

Finally, when the various names were listed, there is no indication "of whether or how frequently the HOTELS.Com mark was immediately preceded by the well recognized example of a '.com' brand name, AMAZON.COM."

In light of these deficiencies, the survey was entitled to no probative weight as to the public perception of HOTELS.COM."

The Board reviewed again the evidence that it had considered in the prior decision, and found that Applicant had still failed to raise sufficient doubt to overcome the PTO's case.

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 3/28/2008   4 comments

Thursday, March 27, 2008

He's Back!? Stoller Entity Files Application to Register "STEALTH" in Three Classes

It's déjà vu all over again! An entity called Stoller Pension and Profit Sharing Plan has filed U.S. Trademark Application Serial No. 77424372 to register the mark STEALTH for a long list of goods in classes 12, 25, and 28, claiming first use dates of January 1, 1981. The "specimens of use," purportedly labels attached to the goods and/or packaging, are identical (as shown immediately below):


The TEAS Plus application, filed electronically on March 17, 2008 and executed by C. Stoller, lists an "internal address" of 7115 W. North Avenue #272, Chicago, Illinois 60302. That is the same address as Leo Stoller's Rentamark headquarters, i.e., a UPS Store in suburban Oak Park:


7115 W. North Avenue #272
Oak Park, Illinois 60302
(Click on photo for larger picture)

I seem to recall that, as part of Leo Stoller's bankruptcy proceeding, all of his rights in the mark STEALTH were assigned to the Society for the Prevention of Trademark Abuse (SPTA). See the TTABlog postings here and here. Apparently Mr. Stoller has a different view. [Now there's a shocker!]

In light of past court and TTAB rulings and decisions regarding Stoller, perhaps the USPTO should give this application a particularly careful examination. Under Rule 2.61(b), an Examining Attorney "may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application." It would seem "reasonably necessary" in this case for the PTO to ask for information and exhibits regarding the Applicant's ownership of the mark and its current use of the mark for every single item listed in the application.

Interested third-party's may want to consider the PTO's letter of protest procedure. See TMEP Section 1715. Reportedly, the PTO is working on a lowering of the standard for acceptance of letters of protest prior to publication. The PTO will be going back to the old standard: if the letter makes a prima facie case and if the subject matter is appropriate (e.g., mere descriptiveness or genericness), the evidence (but not the letter) will be forwarded to the Examining Attorney. This will replace the current "clear error" standard and the companion requirement that the Examining Attorney enter the refusal if the letter of protest is accepted. The higher standard will remain in effect for post-publication letters of protest. (See TTABlog postings here and here).

TTABlog postscript: On November 21, 2008, the PTO announced a modification of its letter of protest policy in Examination Guide 4-08, entitled "Letters of Protest in Pending Trademark Applications."

Text and Photograph Copyright John L. Welch 2007-2008.

posted by John L. Welch @ 3/27/2008   0 comments

Wednesday, March 26, 2008

Petition for Certiorari Filed by Portuguese Company Rosenruist re 4th Circuit Subpoena Ruling

Rosenruist-Gestao E Servicos LDA has filed a Petition for Writ of Certiorari (here), seeking Supreme Court review of the 4th Circuit's decision in Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., 85 USPQ2d 1385 (4th Cir. 2007). (TTABlogged here). Set forth below are the Questions Presented in the Petition.

Virgin Gorda

QUESTIONS PRESENTED

35 U.S.C. § 24 permits a district court to assist the United States Patent and Trademark Office (“PTO”) in a contested case by issuing testimonial subpoenas to a witness “residing or being within such district.” The First, Third, and Fifth Circuit Courts have held that the authority granted in Section 24 is ancillary and limited and is to be used to compel discovery allowed by the rules and procedures of the PTO. The Tenth Circuit has disagreed, holding that Section 24 authorizes broad discovery independent of any limitation in the PTO’s procedures.

In the instant appeal a divided Fourth Circuit held, for the first time, that a foreign applicant for a trademark which lacks any nexus to the district other than the filing of a trademark application based upon a future intent to use the mark is a “witness residing or being within” the Eastern District of Virginia and can be compelled by subpoena issued pursuant to Section 24 to transport witnesses from abroad to be deposed in the district. The rules and procedures of the PTO do not permit in-person testimonial depositions of foreign witnesses, but do provide alternate methods for obtaining such testimony.

The questions presented are:

1. Does 35 U.S.C. § 24 authorize a district court to subpoena foreign witnesses with no contact with the United States other than the filing of a trademark application to appear personally for deposition in Virginia when the rules and procedures of the United States Patent and Trademark Office do not authorize such depositions but, instead, permit alternate means for obtaining testimony?

2. Is a foreign company with no employees, locations or other business in the United States a “witness residing or being” within the Eastern District of Virginia under 35 U.S.C. § 24 solely because it filed a trademark application with the United States Patent and Trademark Office?

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 3/26/2008   0 comments

Tuesday, March 25, 2008

TTAB Affirms 2(a) Deceptiveness Refusal of "MINK BIKINI" for Minkless Clothing

Despite Applicant Closet Clothing Co.'s amendment excluding bikini swimwear and clothing made of mink from its application, the Board found the mark MINK BIKINI to be deceptive for various articles of outerwear, and it affirmed that PTO's 2(a) refusal to register the mark on the Supplemental Register. In re Closet Clothing Co. Limited, Serial No. 76623748 (March 5, 2008) [not precedential].

Mink

The Board applied its three-part 2(a) deceptiveness test: (1) is the term misdescriptive of the character, quality, function, composition, or use of the goods?; (2) are prospective purchasers likely to believe that the misdescription actually describes the goods?; and (3) is the misdescription likely to affect the decision to purchase?

The Board found no doubt that MINK BIKINI is misdescriptive of the goods. Moreover, Applicant's exclusion of "biking swimwear, bikini underwear, and all other types of bikini clothing and all clothing make of mink" did not avoid the deceptiveness refusal.

Applicant argued that customers "could not possibly mistake something like silk (which some of its goods are made of) for mink." However, Applicant "has not excluded articles made of other types of fur, or even fake fur, which could be mistaken for mink." Of course, consumers would not likely know that Applicant had excluded mink or bikinis from its trademark registration.

Turning to the second question, the evidence indicated that the customers for Applicant's goods (ordinary items of women's clothing) would believe that MINK BIKINI describes the goods -- i.e., that the goods contain mink. Applicant's arguments regarding the sophistication of its customers was unavailing, since its identification of goods contained no restrictions as to channels of trade or classes of purchasers.

As to the third issue, the Board found that mink is "perceived by prospective purchasers as a luxury and high-quality item that imbues the owner with status and would materially affect the purchasing decision."

Bikini Atoll

Applicant imaginatively but futilely contended that Examining Attorney Ingrid Eulin disregarded "why the mark works." According to Applicant, the misdescriptiveness of the mark comes from the phrase MINK BIKINI, not just the word "mink" in isolation:

"[J]oining the words 'MINK' and "BIKINI' to create a trademark for the relevant goods results in a mark so highly misdescriptive -- in fact, so ironic -- that the prospective purchasers are simply not likely to believe that the mark actually describes the goods or to be influenced by the misdescription."

The Board, however, pointed out that the entire mark need not be deceptive in order to support a 2(a) deceptiveness refusal. Furthermore, the Board did not find any "irony" or incongruity in MINK BIKINI such that purchasers would not believe the misdescription. Bikinis made of mink are available and have been "exposed to the public through celebrities and well-distributed fashion photographs."

The Board concluded that the mark is deceptive, and it affirmed the refusal to register under Section 2(a).

TTABlog comment: Would a customer looking at a jacket bearing the brand name MINK BIKINI think that the fur on the collar of the jacket was mink? I think that's quite possible, and I think the Board got this one right. Why would the jacket purchaser know that bikinis were not sold under the mark, nor were any mink-containing goods.? Why wouldn't the customer think that the MINK BIKINI brand owner also sold mink bikinis and other mink clothing items, and that the fur on the jacket was also mink?

Suppose the mark at issue comprised the words BIKINI MINK accompanied by a design showing a mink (the animal) romping in the Marshall Islands? Would that matter atoll? Perhaps.

Seriously, though, compare this case to the Board's recent MINK decision (blogged here) in which that mark was found to be both deceptive under Section 2(a) and deceptively misdescriptive under Section 2(e)(1). Why did MINK BIKINI face only the 2(a) refusal? The answer lies in the fact that the instant Applicant was seeking a Supplemental Registration, and a mark refused under Section 2(e)(1) is still eligible for registration on the Principal Register under Section 2(f). A deceptive mark is not eligible for registration at all (or atoll).

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 3/25/2008   0 comments

Monday, March 24, 2008

TTAB Grants 2(d) Summary Judgment: "MEIER'S" and "MEYER VINEYARD" for Wine Confusingly Similar

For a plaintiff to win a TTAB summary judgment on the ground of likelihood of confusion, the involved marks have to be nearly identical and the goods virtually the same. That was the case in Meier's Wine Cellars, Inc. v. Meyer Intellectual Properties Ltd., Cancellation No. 92044883 (March 4, 2008) [not precedential]. The Board canceled a Supplemental Registration for the mark MEYER VINEYARD for wine, in view of the previously-used mark MEIER'S for wines, despite Respondent's effort to raise a genuine issue of material fact via survey evidence.


The Board first observed that since the involved marks are surnames, they are not inherently distinctive. It ruled that Petitioner Meier's Wine Cellars established its priority by proving that it had established trademark rights in the surname MEIER'S prior to 2002: i.e., prior to Respondent's filing date for the application to register its surname mark. By amending its application to seek registration on the Supplemental Register, Respondent had acknowledged that its mark was not distinctive as of its filing date in 2002.

As to the issue of likely confusion, Respondent pointed to statements made by the Petitioner to the USPTO in its own application to register the mark MEIER'S, and claimed that these statements constituted admissions against interest. Petitioner had argued unsuccessfully that the subject marks are not confusingly similar. The Board, however, disagreed with Respondent:

Statements made by an applicant in the context of prosecution may be viewed as 'illuminative of shade and tone in the total picture confronting the decision maker.' Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978). Here, the statements by petitioner are in the nature of inconsistent pleadings, with petitioner trying to avoid the need for a cancellation action if it could overcome the Examining Attorney's refusal of registration. They do not raise a genuine [issue] of fact.

Respondent also argued that the marks are "significantly different," relying heavily on the results of a shopping mall intercept survey. The Board, however, found the survey to be "so seriously flawed that it fails to raise a genuine issue" regarding the likelihood of confusion. It declined to discuss all the flaws it found in the survey, but it did discuss a few.


First, "there is a problem with the stimulus, in that the survey respondents were shown respondent's entire wine bottle, including the full label, rather than just the mark." Second, the label included the words "Napa Valley" -- because Petitioner's wine is made in Ohio, "survey respondents may have ruled out petitioner as the source of the wine." Third, the survey failed to account for the highly similar spelling of the two marks. And because the survey did not include a "control feature" and "probing questions" -- e.g., "What makes you think so?" -- the Board could not tell whether interviewees "saw respondent's mark as being separate from petitioner or, instead, as being petitioner's mark."

The Board found no issue of fact as to petitioner's claims of priority and likelihood of confusion, and it entered summary judgment in favor of Petitioner.

TTABlog note: Respondent's survey report may be found as part of paper no. 16 in the TTAB file (here),

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 3/24/2008   0 comments

Friday, March 21, 2008

TTAB Finds Design Marks for Motorcycles Confusingly Similar: What Say You?

Pro Se Applicant Dakota Motorcycles [yes, corporations may appear pro se before the TTAB - ed.] ran smack into a roadblock in its attempt to register the word-and-design mark shown immediately below, for motorcycles. The Board found the mark likely to cause confusion with the design mark shown next below, registered and previously used by Honda for motorcycles. Honda Motor Co., Ltd. v. Dakota Motorcycles USA Inc., Opposition No. 91162109 (March 5, 2008) [not precedential].



Cruising through the du Pont factors, the Board found the goods to be identical (2nd factor). It therefore assumed, in the absence of any restrictions in the involved application and registration, that the goods travel in the same trade channels to the same classes of purchasers (3rd factor).

The 4th factor weighed in Applicant's favor: "motorcycles can be fairly expensive items which are likely to be purchased with a degree of care."

The 6th factor was "neutral": there was no evidence that any third-party uses a similar design mark on similar goods.

As the 5th factor, Honda failed to establish that its mark is famous, but the Board did find the mark to be a strong one in view of Honda's sales figures (37,000 motorcycles sold for $440 million over the 1996-2005 time period), and in view of the lack of evidence of third-party use of similar marks.

Turning finally to the 1st du Pont factor, the similarity of the marks, the Board first observed that side-by-side comparison of the marks is not the proper approach. "The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks." And, of course, when the goods are identical a lesser degree of similarity in the marks is necessary to support a finding of likely confusion.

As to appearance, the Board found a "high degree of similarity between the design elements."

"Both marks depict human figures presented in profile, who wear horned helmets which readily would be perceived as being Viking helmets. Although the respective Viking figures face different ways, and although the Viking in applicant's mark clearly is male while the Viking in opposer’s mark appears to be female, those points of dissimilarity are outweighed, in our analysis, by the fact that both figures essentially would be perceived as being Vikings. ... they both include elements (the hair streaming behind the Viking in opposer's mark, and the horizontal lines in applicant's mark which look like hair streaming from the Viking's beard or from under his helmet) which suggest that the Viking figures are moving forward at a high rate of speed."

Of course, Opposer's mark would be pronounced "Viking Motorcycles," while Honda's mark contains no pronounceable words. However, the connotations of the marks are "quite similar:" each "suggests and connotes a Viking moving forward at high speed (most likely on a motorcycle)." The word VIKING in Applicant's mark reinforces the "'Viking' motif" and increases the similarity between the marks.

Comparing the marks in their entireties, the Board found the similarities sufficient to support a finding of likelihood of confusion.

Weighing all the pertinent factors, the Board concluded that confusion is likely, noting that any doubts that might exist are to be resolved in favor of the prior registrant.

TTABlog comment: If you were representing Applicant, how would you have bolstered its case?

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 3/21/2008   0 comments

Thursday, March 20, 2008

Fame Dominates as TTAB Sustains "PLAYBOY" Opposition to "PLAY BODY" for Clothing

When it comes to a famous mark like PLAYBOY, a newcomer had better not fool around. Canadian Rick Worobec found that out when he lost an opposition to his application to register the mark PLAY BODY for "clothing, namely, under garments, swimwear; footwear, namely shoes." The Board found his mark likely to cause confusion with the PLAYBOY mark, previously used and registered for various clothing items. Playboy Enterprises Int'l, Inc. v. Rick Worobec, Opposition No. 91165814 (March 18, 2008) [not precedential].


Opposer established by a mansion-full of evidence that PLAYBOY is a famous mark for purposes of Section 2(d). And, of course, fame plays a "dominant role" in the duPont analysis. PLAYBOY magazine is the best selling monthly men's magazine in the world and the 14th largest consumer publication in this country. More than 10 million people "read" the magazine each month. Among the well-known people who have posed for PLAYBOY are Monroe, Andersen, Smith, Electra, Crawford, Barrymore, MacPherson, and McCarthy. [TTABlog note: That is not a law firm. Those are the surnames of well-known women; do you know their given names?]

Playboy has a television network, a radio channel, and a retail website that averages 500,000 unique visitors each month. [More than this blog gets in 3 months! - ed.] It has licensed its mark on a wide variety of products , including undergarments, swimwear, and footwear. Retail sales of these goods exceeded $120 million in the year 2006. And the mark receives a whole lot of unsolicited media attention.

Applicant Worobec admitted that the PLAYBOY trademark is widely recognized, but he valiantly denied that the mark is famous. The Board, however, disagreed on the latter point, finding that PLAYBOY is a famous mark entitled to a broad scope of protection.

Worobec's goods are identical in part to those of Playboy's registrations, and so the Board presumed that they travel in the same channels of trade to the same customers.

Turning then to the marks, the Board observed once again that when the goods are (in-part) identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Here, the word "play" forms the first part of each mark, and the first part of a mark is often the part that is "most likely to be impressed upon the mind of a purchaser and remembered." In short, the Board found that, as to the appearance of the marks, "the similarities outweigh the differences." The Board also found that the marks are "more aurally similar than dissimilar."

As to meaning, the marks obviously differ. "However, because of the renown of opposer's PLAYBOY marks, consumers may associate the marks PLAYBOY and PLAY BODY with a single source because of the emphasis opposer places on photographic pictorials of women in its magazines."

"The marks engender a similar commercial impression created, on the one hand, by the above-noted meaning of the word 'playboy' and opposer's renown for featuring naked women in its magazines, and, on the other hand, by applicant's use of the word 'body' in its mark PLAY BODY causing consumers to draw a connection between PLAY BODY and PLAYBOY featuring photographs of women's bodies." [TTABlog comment: that's a bit of a stretch, don't you think?].

Therefore, while the Board recognized differences between the marks, it found that "on balance the similarities outweigh the differences."

Balancing all the duPont factors, the Board found confusion likely.

TTABlog final comments: I think the marks PLAYBOY and PLAY BODY are just too dang similar in spelling: the latter could easily be misread to be the former.

It is interesting to note that the Board didn't really say that the PLAYBOY mark is famous for clothing. It found the mark generally famous, but as to clothing are sales of $120 million enough for a claim of fame? Playboy pleaded a dilution claim, but did not pursue it. Did Playboy nonetheless get dilution-like protection under Section 2(d) based on its over-all fame?

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 3/20/2008   0 comments

Wednesday, March 19, 2008

New PTO Rules Require Applicant to Describe Mark if not in Standard Characters

Effective May 13, 2008, the PTO Rules will require a description of the mark in every application to register a mark not in standard characters. See "Changes in the Requirement for a Description of the Mark in Trademark Applications," Federal Register, Vol. 73, No. 11 (March 14, 2008), Pages 13780-13784 (pdf here).


SUMMARY: The United States Patent and Trademark Office ("USPTO") amends the Rules of Practice in Trademark Cases to require a description of the mark in all applications to register a mark not in standard characters. This requirement will facilitate more accurate and comprehensive design coding and pseudo-mark data determinations, and therefore will promote better searchability of marks within the USPTO trademark database. The USPTO will maintain its practice of printing the description of a mark on the certificate of registration only when the USPTO deems the description necessary to clarify what is claimed in the mark.

Currently, the rules provide that a description "may be included in the application and must be included if required by the trademark examining attorney." Rule 2.37.

Comments submitted with regard to the proposed changes, along with the PTO's responses thereto, are found in the CFR notice above.
.

posted by John L. Welch @ 3/19/2008   0 comments

USPTO Issues Service Mark Registration for "THE TTABLOG"

In case you missed it, on March 18, 2008, the USPTO issued Registration No. 3,398,417 for the mark THE TTABLOG for "An online blog featuring commentary and information in the field of trademarks; an online blog featuring commentary and information regarding decisions of the Trademark Trial and Appeal Board and the courts relating to trademark law."


The registration issued under Section 2(f), after an unsuccessful appeal from the PTO's Section 2(e)(1) mere descriptiveness refusal. The 2(f) claim was supported by e-mail letters from 27 blog readers (listed here). I thank them again for making this registration possible.
.

posted by John L. Welch @ 3/19/2008   0 comments

Tuesday, March 18, 2008

Guest Article: Carrie Webb Olson on Fraud

The Fraud Factor: U.S. Trademark Owners Beware!
by Carrie Webb Olson

By now, most U.S. practitioners have come to either love or loathe the current and evolving state of the law concerning "fraud" in the prosecution and maintenance of federal trademark applications and registrations. Below is a summary of the law and some practice tips for avoiding problems down the road.

What is it?

Fraud occurs when a trademark applicant or registrant makes a false statement regarding a material issue, resulting in the issuance or continuation of a trademark registration before the U.S. Patent and Trademark Office ("PTO"). Fraud exists only when the misstatement involves a “material issue” concerning the application or registration. Misstatements concerning ministerial matters are not subject to a fraud analysis and can be remedied. However, if the registration would not have issued or been maintained but for the misstatement, e.g., relating to use, then fraud has occurred and the registration will be irreparably tainted.

When does it occur?

Fraud occurs at the time of submission of a sworn document to the PTO. Once a fraudulent statement has been made, there is no remedy.

The prevailing and most damaging occurrence of a false statement arises when a trademark owner files a Statement of Use, a Section 8 Affidavit of Use and/or a Section 9 Renewal application. These documents and the statements made therein are tied directly to the identification of goods and/or recitation of services listed in the application or registration. When filing any of these three documents, the applicant/registrant is swearing, under oath, that it is "using" the mark in connection with each and "every item" listed in the application or registration.

What are the consequences?

Any registration that issues or is maintained due to a misstatement is forever marred and vulnerable to challenge by third party. A successful challenge based on fraud results in the cancellation of the entire registration.

The cases recite a litany of failed defenses to fraud claims, including poor health, English as a second language, failure to understand the statements in the Declaration and PTO form and innocent mistake. None of these arguments have been successful in saving a challenged application or registration.

Unlike general law where the intent of the party plays a critical role in a finding of fraud, the current line of cases decided by the Trademark Trial and Appeal Board ("TTAB") results in a finding of fraud where the applicant or registrant “knew or should have known” that the statements were false. The subjective intent of the party is not a factor - it is the objective manifestation of the party’s intent that is determinative in a finding of fraud before the TTAB.

When does it arise?

The TTAB has created a clear rule with a clear remedy. Therefore, asserting fraud in opposition and cancellation proceedings, either as a defense or as a strategy for removing obstacles to registration of a junior mark, can be a very effective tool.

In most cases, a fraud defense will fall on an unwitting plaintiff, who will then have to scramble to either counter the assertion and/or prepare to assert its common law rights in and to a trademark.

Why does it happen?

In most cases, the mistake will be innocent – particularly in the case of the Section 8 Affidavit and the Section 9 Renewal filings. By the time these documents are due to be filed, the registrant has owned the mark for at least five years. During this time, development and commercialization of the brand is well underway. In fact, the mark may have evolved into areas that are different from that which was originally contemplated.

However, unless there are enforcement issues that arise during the first 5 years of the life of a trademark registration, communication between the business professionals and their trademark attorneys may be relatively quiet. When the opportunity to file the Section 8 affidavit comes due, the trademark practitioner is likely to prepare a form from the PTO website, which must be signed and submitted with a specimen.

Complications and/or confusion can arise due to several factors: First, there is a difference between the specimen requirements and the declaration requirements associated with these maintenance documents. The Rules require submission of a single specimen for any one of the items in each Class listed in the registration. However, the signature on the declaration is verifying that the mark is in use in connection with all the items listed in the registration. Second, the PTO electronic forms for signature do not specifically identify each of the items listed in the registration. They simply state that the mark is in use with "all goods and/or services listed in the registration."

If the form is passed along to the client for signature, the client may not immediately recognize the gravity of the statement being made. The business person may simply acknowledge in his or her own mind that the mark is in use and sign the document. Many busy executives will not investigate, but rather, rely on counsel to either advise them of the criticality of the situation and/or present them with accurate documents for signature.

Practice Tips

The Board appears to be honing in on the "should have known" standard to remind us of the seriousness of the papers that we file with the PTO and to maintain the integrity of the process. However, many practitioners believe that the penalty outweighs the crime in these situations. Nonetheless, the issue presents a good opportunity for trademark practitioners to sharpen their practice and increase the level of communication with their clients concerning "use" as a legal term before the PTO, versus "use" as a business term among executives and marketing professionals.

There is no such thing as a "routine filing" when it comes to U.S. trademark practice. Given that the PTO maintenance forms do not specifically identify the goods and/or services listed in the registration, it is a good idea for the trademark practitioner to list these items and to point out the need for the use on all of the items listed in its correspondence to the client concerning the filing.

When maintenance documents come due, the trademark practitioner and the business client should undertake an investigation into the scope of use of the mark before any documents are signed and filed with the PTO. Trademark attorneys should consider reaching out to their clients to start the conversation well before the deadline to file the documents. The TTAB will consider the steps taken by the signatory to confirm the accuracy of the statements to determine whether the applicant/registrant "should have known" about any misstatements.

An ancillary consideration is whether attorneys should sign official PTO documents on behalf of their clients. While certainly permissible according to the Rules, presenting these documents to the client, with careful instructions for review and signature, could create a higher level of attention to the accuracy of the information contained therein. In view of the current climate, such a practice may be prudent.

The issue of fraud has created a buzz in the trademark community over the past few years. While most practitioners have modified their practice to address the issues going forward, there is still the problem of the irreparably tainted registration, which may have been"fraudulently" maintained or renewed prior to widespread attention to this issue.

Therefore, sound practice would entail conducting an audit of any trademark registrations that are key to the company's business and are likely to be enforced against second-comers to the market. A careful review of recitations of services and identifications of goods alongside marketplace specimens in support of each and every item listed in the registration will identify misstatements and potentially vulnerable registrations. Where problems are identified, the registrant should consider filing replacement applications with the PTO.

Prior to commencing any opposition, cancellation or federal trademark infringement action, a trademark owner should confirm that the registration(s) to be asserted are not vulnerable to attack. If problems are identified, a trademark owner may still bring an action; however, the plaintiff should be prepared to litigate its claims based on common law trademark rights. While a common law trademark owner’s burden of proof is higher, and scope of protection can be narrower than that of a federal trademark registrant, there may still be a basis for seeking protection under the law.

In sum, the recent TTAB decisions on fraud serve to remind trademark owners, and their lawyers, that PTO declarations are serious documents, which incorporate a solemn oath attesting to the facts therein. It is clear that there is a duty to investigate the facts prior to signing the documents. Prudent practice and attention to detail will increase the cost of maintaining a trademark portfolio, both inhouse and in private practice. However, alerting trademark owners to the requirements for filing an accurate document and discussing those requirements as they relate to the client’s business can prevent the loss of registration due to a misstatement uncovered at a later date.

© 2008 Carrie Webb Olson. All Rights Reserved.

About the Author: Carrie Webb Olson is an associate with Edwards Angell Palmer & Dodge, LLP, in the firm's Boston office. For more information, including case citations, you may contact Carrie at colson@eapdlaw.com.
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posted by John L. Welch @ 3/18/2008   0 comments

Monday, March 17, 2008

Software is Technology, Says TTAB: About Screen Language Suffices for Specimen of Use

Reversing a PTO refusal to register, the Board deemed the language appearing on an "about screen" as satisfying the specimen requirement for Applicant Mentor Graphics' mark VIRTUALWIRES for "computer hardware and software for electronic design automation." [See specimen below]. In re Mentor Graphics Corporation, Serial No. 78325604 (March 6, 2008) [not precedential].


The PTO first contended that the mark "is being used to to describe a technology" and not to "identify the goods" listed in the application. The Examining Attorney relied on a 1992 definition of "technology" as "the scientific method and material used to achieve a commercial or industrial objective."

The Board, however, found the PTO's definition to be out of date. A 2003 dictionary defines "technology" as "a manner of accomplishing a task esp. using technological processes, methods, or knowledge ...." It therefore disagreed with the PTO and found that "technology" encompasses electronic design automation software.

The PTO also argued that VIRTUALWIRES does not function as a trademark because the term "is embedded in a descriptive phrase ... in small text in the middle of a specimen containing other more prominently placed text and graphic elements." The Board again disagreed. First, the PTO did not refuse registration on mere descriptiveness grounds, and it offered no evidence of descriptiveness. Second, the Board found the mark not merely informational:

"While the sentence in which the mark appears provides information, the information is that the system being used is powered by software technology identified by the mark VIRTUALWIRES. The is evidenced by the nature of the sentence itself; by the representation of the term VIRTUALWIRES in all capital letters followed by the 'TM' symbol in all bolded capital letters; and by the mark's distinctive use to modify the descriptive terminology for the goods, i.e., 'technology.'"

Finally, the Board noted that Applicant referred to the specimen as a "splash screen" in its Statement of Use, when it is actually an "about screen." [A splash screen appears at start-up, while an about screen appears when the computer users requests "help."] That distinction did not change the issues at hand. However, the Board pointed out that "the question of whether a specimen of use consisting of an about screen is acceptable to show use of the subject matter as a mark is not before us."

TTABlog comment: I doubt that the Board would find an "about screen" to be a proper specimen, given the fact that it appears only on the rare occasion (if ever) when one looks under the "help" tab and clicks on "about."

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 3/17/2008   0 comments

Friday, March 14, 2008

TTAB Reverses 2(a) Refusal of "L'OREAL PARIS" for Aloe Vera Drinks: PTO Fails to Show False Connection with French Cosmetics Company

Canadian Robert Victor Marcon, appearing pro se, successfully fended off a Section 2(a) refusal of his application to register the mark L'OREAL PARIS for "aloe vera drinks." The PTO maintained that the mark falsely suggests a connection with the French cosmetics company L'Oreal, S.A., but it failed to meet its burden to prove that the French company "is of sufficient fame or reputation to consumers in the United States" that such a connection would be presumed. In re Marcon, Serial No. 76596736 (March 6, 2008) [not precedential].


In contending that L'Oreal is "world-famous," the PTO relied on a Wikipedia entry, on three websites controlled by the French company, and on excerpts from the NEXIS database. The Wikipedia evidence, however, accompanied the PTO's denial of Applicant's request for reconsideration of the refusal; since Applicant did not have a chance to rebut the Wikipedia evidence, the evidence was accorded no probative value. See In re IP Carrier Consulting Group, 84 USPQ2d 1028 (TTAB 2007).

The websites were of limited value because they were owned by L'Oreal and "it would be an easy matter for the owner of a website to include information suited to its own position, whether or not it was true." [TTABlog comment: even if the websites were owned by another entity, wouldn't the statements regarding L'Oreal's fame be hearsay anyway?]. The LEXIS excerpts were few in number and only indirectly bore on the issue at hand.

Similarly, other evidence regarding L'Oreal, like registrations for the mark L'OREAL and reports of activities in Australia, were of no value in proving fame in the U.S.

Looking at all the evidence, the Board found that the PTO did not establish L'Oreal's fame or reputation and thus had not met its burden of proof. The Board noted the PTO's "limited facilities for acquiring evidence" and suggested that "on a different and more complete record, such as might be adduced in an inter partes proceeding," a different outcome might result.

TTABlog comments: Marcon's corresponding Canadian trademark application for L'OREAL PARIS has been opposed by ... guess who?

Marcon has filed 18 other U.S. applications, for such marks as BAYER, HEINEKEN, BUDWEISER, NESTLE, CHANEL, and SOUTHERN COMFORT. The BAYER (breath fresheners) application is on appeal, while the HEINEKEN (meat juices) application remains pending.

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 3/14/2008   0 comments

Thursday, March 13, 2008

Precedential No. 14: TTAB Affirms Three Refusals: Website Specimens Fail to Show Trademark Use

The Board affirmed the PTO's refusals to register the phrase LEADING EDGE TONERS as a trademark for toner, toner cartridges, ink sticks, and related products, on the ground that Applicant's specimens failed to show trademark use for the identified goods. In re Supply Guys, Inc., Serial Nos. 77027094, 86 USPQ2d 1468 (TTAB 2008) [precedential].


Examining Attorney Mary Boagni contended that in Applicant's original specimens (shown above), comprising a FedEx shipping label, the mark "is merely used as a trade name." The Board agreed. The term LEADING EDGE TONERS appears only in the "Ship From" section of the label, where the name of the entity that shipped the goods normally appears. The term has no distinctive stylization other than the use of upper case letters. Thus these original specimens do not demonstrate trademark use for the involved goods.

Applicant's substitute specimens (shown below) comprised webpage printouts showing several uses of the term LEADING EDGE TONERS.

(click on photo for larger picture)

Starting with Applicant's web address www.leadingedgetoners.com, the Board ruled that this use of the term LEADING EDGE TONERS was not a trademark use for the goods sold on the website, but merely identified the website "where applicant conducts its retail sales services."

Applicant also uses the phrase in the upper left corner, in the bar at the top of the webpage, and in the center of the page. The Board noted that "the term LEADING EDGE TONERS is used in phrases where other trademarks, which appear to be owned by third parties, are used to identify the toners and other goods." [E.g., "Leading Edge Toners Best Prices for Tektronix Toners and Xerox Ink Xerox/Tektronix Phaser 560P"].

"The mere fact that applicant is a retailer selling products of others does not by itself establish that applicant's mark, which may function as a trade name or service mark, necessarily also functions as a trademark for the goods applicant sells."

The Board noted that a retailer who sells goods of others does not necessarily have a trademark for those goods. A product may "contain more than one trademark, including a trademark of the distributor as well as the manufacturer." However, the law distinguishes between trademarks and service marks in part based upon how the marks are used.

Looking at all the uses of LEADING EDGE TONERS at the website, the Board could not conclude "that purchasers would understand that the term LEADING EDGE TONERS is used as a trademark for the goods identified in the three applications. Rather, the uses point to the fact that Leading Edge Toners is a retail/distributor of toner and similar products of others."

Therefore, the Board affirmed the refusals.

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 3/13/2008   1 comments

Wednesday, March 12, 2008

Precedential No. 13: FRAUD! TTAB Cancels Four Registrations on Summary Judgment: Attorney Signed False Statements of Use

In a case "similar to Medinol," the Board granted Petitioner's motion for summary judgment on the ground of fraud as to four registrations owned by Respondent, finding that Respondent had made knowingly false statements in its Statements of Use (signed by its attorney) regarding use of its XEL HERBACEUTICALS marks on some of the goods listed in the registrations. Herbaceuticals, Inc. v. Xel Herbaceuticals, Inc., 86 USPQ2d 1572 (TTAB 2008) [precedential].


Respondent Xel admitted in discovery that it had failed to use its marks on various goods listed in four of its registrations (each registration involving a single class of goods). Xel lamely argued that the appropriate remedy is partial cancellation, not complete cancellation, of those four registrations, but the Board disagreed. "Partial cancellation would merely place Xel in the same position in which it would have been had it filed statements of use which accurately reflected the goods on which the marks were being used."

Xel also urged a laches defense, but the Board pointed out that "[l]aches is unavailable as an affirmative defense against a fraud claim."

The fact that the Statements of Use were signed by Xel's attorney made no difference.

"Even if Xel's attorney was signing the statement of use based on information and belief, he was clearly in a position to know (or to inquire) as to the truth of the statements providing reason to believe. Statements under oath are made with a degree of solemnity requiring thorough investigation prior to signature and submission to the USPTO." (citing Medinol)
***
"Considering that [Xel's attorney] admitted ... that he did not have actual knowledge as to the goods on which the involved marks were being used, he was obligated to inquire. See Patent and Trademark Office Rule 10.18(b)(2). To the extent he did inquire, his inquiries would appear to have been grossly insufficient. See Medinol, 67 USPQ2d at 1209. The specific or actual intent of [the attorney] is not material to the question of fraud. '[P]roof of specific intent to commit fraud is not required, rather, fraud occurs when an applicant or registrant makes a false material representation that the applicant or registrant knew or should have known was false.' General Car and Truck Leasing Systems, Inc. v. General Rent-A-Car Inc., 17 USPQ2d 1398, 1401 (S.D. Fla. 1990)."

The Board also rejected Xel's desperate attempts to divide the statement of use into "sworn" and "unsworn" portions, and to distinguish between the phrases "all goods and services" and "the goods/services."

The Board concluded that, although not all false statements constitute fraud, no conclusion other than fraud was possible here.


In addition, the Board denied Petitioner's summary judgment motion as to two of Xel's registrations because a genuine issue of material fact remained as to whether Respondent's statement in discovery that the pertinent marks were in use on "green tea related goods which have a variety of uses including uses as antihypertension agents ... " constituted use on the "pharmaceuticals" identified in the registrations, and "as to whether Xel's attorney had a reasonable basis for belief that the marks were being used in interstate commerce on such 'pharmaceutical'" when it filed its statement of use.

TTABlog note: In dictum, the Board stated that if fraud is found, "the registration is void in the international class or classes in which fraud based on nonuse has been committed." In other words, fraud may knock out a single class in a multiple-class registration. In the instant case, however, each registration of the six registrations involved a single class of goods.

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 3/12/2008   0 comments

Tuesday, March 11, 2008

Precedential No. 12: TTAB Sustains 2(e)(3) Opposition to "GUANTANAMERA" for Non-Cuban Cigars, Folk Song Notwithstanding

Rejecting Applicant's claim that the primary meaning of GUANTANAMERA to the relevant public is the well-known Spanish folk song, the Board sustained an opposition to registration of that mark for cigars on the ground that it is primarily geographically deceptively misdescriptive under Section 2(e)(3). Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 86 USPQ2d 1473 (TTAB 2008) [precedential].

Opposer's cigars

The Board first found that Opposer, a Cuban company subject to the U.S. embargo on Cuban goods, has standing to bring the opposition. Opposer submitted a letter from the U.S. Treasury Department "confirming that Cuban entities are permitted under Section 515.527 of the Cuban Assets Control Regulations, 31 C.F.R. Part 515, to 'file an opposition to the registration of a new trademark ... where these actions relate to the protection of a trademark in which Cuba ... has an interest.'" Moreover, Opposer had filed its own application to register the same mark for cigars.

Opposer's Section 2(e)(3) claim required proof that (a) the primary significance of GUANTANAMERA is a generally-known geographic location; (b) the consuming public is likely to believe that the place identified by the mark GUANTANAMERA is the origin of the goods bearing the mark (i.e., that a goods-place association exists), when in fact the goods do not come from that place; and (c) the misrepresentation would be a material factor in the consumer's decision to purchase the goods.

As to the first prong of the test, the Board found that the primary meaning of the term “Guantanamera” is “of or from Guantanamo, Cuba” or “a female from Guantanamo”; that cigar consumers in the United States who speak Spanish would know that Guantanamo is a geographic location and would recognize that meaning; and that this would be especially true in the context of Applicant's goods.

As to the second prong, the Board found that consumers are likely to believe that there is a goods-place association between cigars and Guantanamo, Cuba. The evidence indicated that tobacco is grown in the Guantanamo region and that Cuba is renowned for its tobacco and cigars. Applicant itself attempted to "foster an association with Cuba" by falsely stating in its early packaging that its product originated in "Guantanamera, Cuba" and that it contained "Genuine Cuban Tobacco."

As to the third and final prong, because Opposer established "Cuba’s renown and reputation for high-quality cigars," the Board found that "the goods-place association created by applicant’s mark with Cuba is material in a consumer’s decision to purchase applicant's cigars." The Board noted that "Applicant evidently believed that the use of Cuban tobacco is a material factor in the decision to purchase a cigar because it included the false claim 'Genuine Cuban Tobacco' on its product packaging."

In reaching its conclusion, the Board rejected Applicant's argument that "Guantanamera" has a "wide-spectrum of meanings" and appears in a number of colloquial expressions (e.g., Meter una Guantanamera, meaning "Create a big ruckus"). These Cuban expressions, according to the Board, would not be widely know to Spanish-speaking consumers of Applicant's goods.

Applicant also urged that the primary meaning of GUANTANAMERA to the relevant public is the well-known Spanish language folk song of that name. Opposer's own expert stated that "the word 'Guantanamera' is most commonly known to the American public and the Cuban-American community in particular as one of the most famous traditional songs in Cuba, known worldwide, including in the United States." Nonetheless, the Board was not persuaded that, in the context of Applicant's goods, the primary meaning of the mark GUANTANAMERA would be the song. [TTABlog comment: note that the above photograph of Opposer's cigars include a guitar design that presumably is intended to call to mind the folk song].

"[O]ne of the refrains in the song includes the phrase 'guajira guantanamera,' which means 'a country girl from Guantanamo.' *** Thus, even if consumers consider the mark as referring to the song by the same name, such consumers, who know the song and know Spanish, will know the geographical significance of 'Guantanamera" from the song lyrics."

Moreover, because Cuban cigars are highly regarded in this country, U.S consumers of cigars will have a "heightened awareness of terms which have a plausible meaning." With regard to cigars, they will "ascribe the geographic meaning to the mark rather than, as applicant suggests, associate the mark with the title of a Spanish language folk song."

And so the Board sustained the opposition.

The Board dealt with many evidentiary objections in a second and separate ruling (here) issued on the same day as its substantive opinion.

TTABlog further comments: Note that the Board distinguishes between three groups of U.S. consumers: those of Cuban extraction (who would recognize the Cuban idioms); Spanish-speaking consumers (who would understand the lyrics of the song as referring to Guantanamo); and others (who, like me, would think only of the song without realizing that it had anything to do with Guantanamo, Cuba).

A knowledgeable reader suggests that the splitting of the substantive ruling from the ruling on evidentiary matters may be a first for the Board. Moreover, she asks, why is one ruling precedential and the other not? Did the Board just not want to stick the "precedential" label on its rather mundane evidentiary rulings? Will future readers of the "precedential" decision be able to readily find the "non-precedential" ruling?

TTABlog postscript: Applicant has sought review of this decision under Section 1071(b)(1), in a civil action now pending before the U.S. District Court for the District of Columbia. Frank Herrera provides a copy of the complaint at his Cigar Law blog.

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 3/11/2008   1 comments

Monday, March 10, 2008

Precedential No. 11: TTAB Finds "REDUCER" Generic for Flow Meters

The TTAB affirmed a refusal to register the term REDUCER on the Supplemental Register, finding it to be generic for "flow meters used for measuring flow through pipes; vortex flow meters." The Board also affirmed a requirement that Applicant disclaim the word REDUCER in the mark DOUBLE REDUCER for the same goods. In re Rosemount Inc., 86 USPQ2d 1436 (TTAB 2008) [precedential].


The Board first found that the genus of the goods to be defined by Applicant's identification of the goods. Applicant's website states that its flow meters have "the pipe reductions designed right into the flowmeter," and according to the Board, "[t]hus, the genus includes flowmeters that contain pipe reductions or reducers ...."

The next question was whether the relevant public understands the term REDUCER to primarily refer to flow meters that contain reducers. Examining Attorney Michael Litzau relied on dictionary definitions of REDUCER as a "pipefitting that joins two pipes of different diameters" and FLOW METER as an "instrument for monitoring, measuring, or recording the rate of flow, pressure, or discharge of a fluid." He pointed to third-party websites using the term REDUCER in connection with flow meters, and to Applicant's website statement that "by building the reducers into the meter, the Reducer Vortex can measure lower flows than any other vortex meter."

Applicant feebly argued that REDUCER can refer to "any number of things including reduced costs, reduced wastes, reduced maintenance, or reduced errors," and urged that REDUCER "only describes one aspect of the goods out of a multitude of possibilities."

The Board noted that, by seeking registration on the Supplemental Register, Applicant had conceded that REDUCER is at least descriptive of the goods. Therefore, "other meanings for 'REDUCER' and double entendre are inapplicable." Moreover, "the fact that the word reduce may be used in its verb form to indicate a reduction of a multitude of things in other contexts does not detract from the generic usage of the noun 'REDUCER' in the context of the goods at issue.

"The evidence of record established that piping that joins pipes of a different diameter in order to reduce pipe diameters to facilitate flow measurement are called 'REDUCERS' and flow meters are used in combination with 'REDUCERS.' The record also shows that flow meters contain 'REDUCERS' as part of a single product, thus eliminating the need for a separate reducer."

The Board ruled that the PTO had established a prima facie case that REDUCER is generic for Applicant's goods, and that Applicant had not rebutted the PTo's case.

TTABlog comment: I think the Board reached the right result, but one could say that the opinion does not exactly "flow." I'm surprised the Board didn't cite In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998), in which the word ATTIC was held to be generic for sprinklers:

". . . we recognize that applicant's mark does not present the classic case of a generic noun, but rather a generic adjective. In this case, because the term ATTIC directly names the most important or central aspect or purpose of applicant's goods, that is, that the sprinklers are used in attics, this term is generic and should be freely available for use by competitors." 49 USPQ2d at 1199

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 3/10/2008   0 comments

Friday, March 07, 2008

TTAB Reverses Mere Descriptiveness Refusal of "THE UNDERWEAR AFFAIR" for Charitable Fundraising Services

In an appropriately brief opinion, the Board reversed the PTO's Section 2(e)(1) refusal of the mark THE UNDERWEAR AFFAIR, finding it not merely descriptive of “charitable fundraising, namely, organizing athletic events to generate funds for research on, and treatment of, cancers below the waist.” The Board also reversed the PTO's requirement that Applicant disclaim that same phrase in its word-and-design mark shown below. In re CauseForce, Inc., Serial Nos. 78624761 and 78625097 (February 15. 2008) [not precedential].


The Examining Attorney contended that the phrase "immediately describes a feature of the applicant's services, that is, that the services include, or is, an affair in which underwear is featured or worn." He pointed out that "participants in [applicant's] charitable fundraising affair are encouraged to wear underwear as their sole piece of outerwear attire," and that Applicant's website "consistently emphasizes the underwear theme."

Applicant urged, in short, that THE UNDERWEAR AFFAIR is at most suggestive, and that attendees "are encouraged to wear underwear, but not as the term is defined, but in the manner of a costume."


The Board found "a good deal of incongruity between the phrase THE UNDERWEAR AFFAIR and applicant's charitable fundraising services ... inasmuch as people are not accustomed to wearing and/or seeing others in their underwear at charitable fundraising events." In addition, the rhyming of UNDERWEAR and AFFAIR "further highlights the fanciful nature of the the phrase." There was no evidence that others would perceive the phrase as merely describing a feature of Applicant's services.

"As a result of the incongruity, when viewing THE UNDERWEAR AFFAIR in connection with applicant’s services, a certain level of imagination is needed before one construes this phrase as describing a charitable fundraiser where underwear is being worn as a costume by participants."

The Board therefore concluded that the PTO had failed to meet its burden of proof, and so the refusals were reversed.

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 3/07/2008   0 comments

Thursday, March 06, 2008

TTAB Reverses Surname Refusal of "CURLIN" for Medical Devices

Reversing a Section 2(e)(4) refusal, the Board found the mark CURLIN not to be primarily a surname for medical infusion pumps and related computer software. In a concurring opinion, Judge Seeherman expanded on her view of the role of the "look and feel" factor in the Board's surname analysis. In re Curlin Medical Inc., Serial No. 78560314 (February 11, 2008) [not precedential].


The Board applied its standard formula in finding that CURLIN is a rare surname, that no one associated with applicant has the surname CURLIN, that the term is likely to be perceived as a term coined by Applicant as a "corrupted version" of the word "curvilinear" as applied to the subject goods, and that CURLIN does not have the "look and feel" of a surname (despite the Examining Attorney's argument that it has the "lin" ending of other two-syllable surnames (like Coughlin, Conklin, Hamlin, and Timlin)).

Considering all the evidence, the Board concluded that the PTO had failed to make a prima facie case, and even if it had, that Applicant had provided sufficient rebuttal evidence to prevail.

In her concurrence, Judge Seeherman reiterated the point made in her concurring opinion in In re Joint-Stock Co. "Baik", 84 USPQ2d 1921 (TTAB 2007) as to how the "look and feel" factor should be interpreted.

"The Examining Attorney's arguments in the present case ... illustrate the problem with using this factor to show that a term has surname significance. Curlin is very different from Coughlin, Conklin and Hamlin, as different as are the ordinary words 'poplin' and 'gremlin' noted by applicant. We can reach absurd results if we base our analysis on whether certain syllables or letter chains can be found in the applied-for mark and in various surnames."

Interpreting this factor to refuse registration of a mark simply because it is similar to recognized surnames "does not serve the intention of the statute, which is to keep surnames available for use by those with that surname." Here, the rareness of the surname CURLIN is sufficient to lead to the conclusion that it is not primarily merely a surname.

When a surname is extremely rare, "there are very few, if any, people who can possibly be affected by the registration of that surname." Here, the PTO found only 286 records for the surname CURLIN in a national database, a number "so small that the purpose of the statute prohibiting the registration of marks which are primarily merely a surname would not be served by refusing registration in this case."

TTABlog note: For additional discussion of this issue, see Section V of the article "The TTAB in 2007: Rules, Rulings, and Repurcussions," co-authored with Ann Lamport Hammitte.

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 3/06/2008   0 comments