Wednesday, April 30, 2008

Precedential No. 24: TTAB Affirms Genericness Refusal of "BOND-OST" for Cheese

Applicant Noon Hour Food Products, Inc. found itself in an unfortunate position. Its 70-year old registration for the mark BOND-OST for cheese was "inadvertently cancelled" in 2002, and when it applied for a new registration, the PTO refused on the ground of genericness. The TTAB affirmed. In re Noon Hour Food Products, Inc., 88 UPSQ2d 1172 (TTAB 2008) [precedential].

Examining Attorney Myriah A. Habeeb relied on references to the term "Bond-Ost" (as well as "bondost," "Bondost," and "Bond Ost") in books on cheese and ethnic foods, on government and dairy publications, on Internet websites and newspapers and magazine articles, and on use of the term by cheese vendors. For example, the Center for Dairy Research describes "Bondost" as "a Swedish, farm-type, cow's-milk cheese that has been made also in a few factories in the United States, chiefly in Wisconsin."

Applicant, on the other hand, argued that BOND-OST has been its trademark for almost 100 years, that the term "bondost" does not appear in dictionaries, in several cheese guides, nor in Wikipedia. It asserted that most appearances of the term in the record involve initial upper case letters, which illustrate correct usage of its trademark. Moreover, some of the uses cited by the PTO clearly refer to Applicant's product.

The Board, applying the two-part Marvin Ginn test, first found the genus of goods to be aptly described by Applicant's identification of goods: cheese. As to the second part of the test, whether the relevant public understands BOND-OST to refer to the involved genus of goods, the Board found that ordinary consumers of cheese would be the relevant class of customers.

The Board agreed with Applicant that "some of the evidence in the record regarding the version of bondost cheese available in the United States involves references to cheese from applicant." Nonetheless, "the unequivocal trademark usage of Bond-Ost is limited to usage by applicant and perhaps a few of its vendors."

[W]hile the evidence in this record does not all point uniformly in the same direction, the weight of the evidence in this record is consistent with finding that members of the relevant public understand both “bondost” and “Bond-Ost” primarily to refer to Swedish, farm-type, cow’s-milk cheese, or an American version thereof, rather than a particular source of cheese."

The Board concluded that the record evidence "clearly places applicant's mark in the category of a generic term."

"The myriad examples that the Trademark Examining Attorney has placed into the record clearly show that BOND-OST 'tell[s]you what the thing is.'"

For completeness, and assuming arguendo that BOND-OST is not generic, the Board also considered Applicant Noon Hour's Section 2(f) claim. It found that Applicant had failed to make a prima facie case of acquired distinctiveness "in light of the highly descriptive nature of the 'Bond-Ost' designation." Applicant provided no sales or advertising figures, no information regarding market share, and no direct evidence that relevant consumers view the term as a source-identifier.

In sum, the Board affirmed the genericness refusal and, in the alternative, affirmed the refusal on the ground of mere descriptiveness due to the insufficiency of Applicant's 2(f) showing.

Text Copyright John L. Welch 2008.

Tuesday, April 29, 2008

Precedential No. 23: Finding a (2)(a) False Connection, TTAB Cancels "TWIGGY" Registration for Clothing

Finding that, at the time of Respondent's trademark registration in 2000, the mark TWIGGY pointed uniquely to Petitioner Lesley Hornby a/k/a Twiggy, the Board granted her Section 2(a) petition for cancellation of Respondent's registration for the mark TWIGGY for "clothing, namely, children's pants, tops, slacks, skirts, vests, sweaters, shirts and blouses." The Board denied Respondent TJX's laches defense and also dismissed Petitioner's Section 2(d), dilution, and fraud claims. Lesley Hornby a/k/a Lesley Lawson a/k/a Twiggy v. TJX Companies, Inc., 87 USPQ2d 1411 (TTAB 2008) [precedential].


The Board found that Twiggy was not only an international sensation in the 1960s, but that through her various entertainment activities and promotional efforts, she has "built on the extraordinary initial reputation and celebrity" so that she and her name Twiggy "had sufficient fame and reputation in 1999 and 2000" that "purchasers of children's clothing would, upon seeing the mark TWIGGY on such goods, presume an association with her." [TTABlog note: Twiggy tells her story in her testimony, the transcript of which is found here.]

Laches: The Board first considered Respondent's laches defense. It observed that laches is not an available defense to Petitioner's fraud claim, but it is available with regard to the likelihood of confusion and Section 2(a) claims. Moreover, in a ruling of first impression, the Board held that laches is an affirmative defense to a dilution claim. Nonetheless, Respondent TJX failed to provide any evidence that Petitioner's delay in seeking cancellation caused and detriment, and so the Board dismissed this defense for lack of proof.

Likelihood of Confusion and Dilution: These claims were dismissed because Twiggy stopped selling goods in the USA under the mark TWIGGY in about 1970. There was no evidence of her use of the mark TWIGGY for clothing between 1970 and January 29, 1997, the date of filing of the application that issued as the subject registration. Petitioner provided no excuse for this period of nonuse, nor did she provide any evidence of an intent to resume use. Consequently, the Board found that, by 1997, she had abandoned her common law rights in the mark TWIGGY for clothing. Because Twiggy could not prove priority of use, her likelihood of confusion claim failed, and because of the abandonment, she could not prove that her mark was famous at the time of Respondent's filing.

Fraud: Twiggy's fraud claim was based on the argument that Respondent submitted a false declaration when it filed its application because it "was fully aware that Twiggy had and has rights to use the mark TWIGGY," and the it "was fully aware that applying a celebrity's name to clothing may be likely to cause confusion, to cause mistake or to deceive." The Board, however, found no evidence that Respondent knew that confusion would be likely. Indeed, Petitioner had stopped making trademark use of TWIGGY in the USA in 1970.

Moreover, there is no case holding that the language of the declaration in an application "requires an individual to reveal third-party use other than trademark use, such as a person having a particular name." Therefore, even if Respondent knew that the mark TWIGGY would create a false connection, the Board could not find that its declaration was an intentionally false statement.

Finally, in any case, the Examining Attorney was aware that Twiggy was the name of a British actress and personality, and in fact issued a 2(a) refusal on that basis. Thus Respondent's failure to identify Petitioner "can hardly be considered to be material to the Examining Attorney's decision to allow the application."

Respondent's Specimen of Use

Section 2(a): Respondent argued that its mark TWIGGY would not be recognized as Petitioner's name because "petitioner's name or identity is not of sufficient fame or reputation that consumers on seeing it on children's clothing would presume a connection with petitioner." [TTABlog query: why, pray tell, did Respondent choose that mark?].

The Board noted that the question was whether Twiggy had sufficient fame and/or reputation as of July 4, 2000, the day the challenged registration issued. The answer was yes.

"Petitioner is not simply a model who made a name for herself more than 30 years ago and then disappeared from public view. On the contrary, through the years she has continued to play a public role, and has appeared before the public in vehicles which gave her significant national exposure.
"These various entertainment activities, and the promotional efforts surrounding them, have successfully kept her name before the U.S. public, and have built on the extraordinary initial reputation and celebrity that was created in the period from 1967-1970."

The Board took judicial notice of the entry for "Twiggy" in The American Heritage Dictionary of the English Language, published in 2000: "Originally Lesley Hornby. British model who epitomized the ultrathin look popular from 1966 to 1976." And the Board found it significant that in 1999 the Franklin Mint asked Twiggy "to license her name and likeness for a collectible doll," to join a collection that included Jackie Kennedy, Princess Diana, Marilyn Monroe, and Elvis Presley.

In sum, the Board found that "purchasers of children's clothing would, upon seeing the mark TWIGGY on such goods, presume an association with her."

Respondent lamely argued that people who knew of Twiggy in the 1967-1970 time period are too old to buy children's clothing, and there is "no evidence that 'a new generation of adult consumers' would be aware of the model Twiggy." The Board tore that argument to shreds, noting, inter alia, that grandmothers still buy children's clothing, and that "fathers may purchase clothing for their children, and they do not have the biological issues that women do."

Finally, the Board found that the name "Twiggy" is unmistakably associated with Petitioner and points uniquely to her. Respondent offered dictionary definitions of the word "twiggy" as meaning "resembling a twig, as in slenderness or fragility." However, the Board observed, the requirement that the mark point "uniquely" to Petitioner does not mean that the term TWIGGY must be unique. There is nothing in the record to suggest that TWIGGY for clothing would have the proposed dictionary meaning. In fact, the obvious connection between models and clothing further supports the conclusion that the mark TWIGGY for clothing points uniquely to Petitioner.

Considering all the evidence, the Board granted the petition for cancellation on the Section 2(a) ground.

Text Copyright John L. Welch 2008.

Monday, April 28, 2008

Precedential No. 22: Finding Old "LASALLE" Automobile Mark Abandoned, TTAB Dismisses General Motors' Opposition for Lack of Priority

Rejecting the claim of General Motors that it still owns rights in the mark LASALLE, the Board dismissed an opposition to registration of the mark LA SALLE for motor vehicles, including automobiles. Applicant Aristide appeared pro se and neither submitted evidence nor filed a brief, which is usually a formula for disaster at the TTAB. Not so this time. General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179 (TTAB 2008) [precedential].

Under Section 67 of the Trademark Act, Applicant was entitled to rely on the filing date of its foreign priority application as its constructive first use date: December 15, 2003. The first question for the Board, then, was whether General Motors possesses common law trademark rights from a date prior to Applicant's priority date.

General Motors admitted that it has not produced any vehicles under the LASALLE mark since 1940. Moreover, the Board found no evidence "that convinces us that, after a sixty-five year hiatus, [GM] has any serious intent to reintroduce a LASALLE vehicle that was last marketed prior to America’s involvement in World War II."

Furthermore, the Board could not find that the General Motors mark enjoys any residual goodwill. "Opposer’s evidence that there are some car collector clubs that also collect LASALLE vehicles and that other car brands have been reintroduced is not very significant evidence."

Next, the Board looked to General Motors' licensing of its mark beginning in the 1990s to see if Opposer established a "new priority date." General Motors submitted evidence of numerous licenses: agreements with manufacturers of vehicle parts for the restoration of LASALLE vehicles, and licenses for a wide variety of consumer products.

As to the vehicle parts licenses, most of the parts did not bear the LASALLE mark. GM had three licensed products "to which it might have affixed its LASALLE trademark, the monogram running boards, pedals, and custom fitted floor mats." However, it was not clear that these particular goods were actually sold, and if sold, how many were sold. The Board therefore found "no basis to assume that, even if there were actual use, its was more than token use."

As to the consumer product licensing, GM failed to prove that "it has actually used the LASALLE mark on the licensed products." The licenses involved dozens of trademarks, and "it is simply unclear whether or when and on what goods opposer's LASALLE mark has actually been used." Nor was there any evidence of sales volume. Finally, these licenses did not begin until 2001, and some were executed fairly close to Applicant's priority date. Thus there was a question at to whether any marketing of LASALLE licensed products occurred before Applicant's priority date.

Taken as a whole, the evidence showed that GM stopped using the LASALLE mark in 1940. Although it subsequently licensed the mark, along with hundreds of other marks, GM failed to establish that it "actually used the mark on any goods prior to applicant's priority date."

The Board ruled that GM had failed to establish priority of use subsequent to its abandonment of the mark 60 years ago. "[O]pposer's LASALLE mark was abandoned for a period of at least three years after 1940. Opposer has neither shown that it had an intent to resume use nor established a subsequent priority date." Therefore, Applicant prevailed.

TTABlog comment: What would you have done differently had you represented General Motors? Obviously, better proofs would have helped with regard to the licensing issue.

Note that Applicant Aristide & Co. is a French company engaged in the business of "reviving" old trademarks. It states at its website (rough translation):

Reviving marks, a practice that is widespread

Findus, Atari, Pataugas, T-Leclerc, Continental Edison, JL Scherrer, all these brands had disappeared, but not in memory of consumers.

They were ably revived and was imposed with even greater ease they still have a strong awareness and sympathy of the public.

It is the job of ARISTIDE Antiquaire & Co Marques to offer quality brands to companies seeking name.And whatever the sector of activity: food, clothing, recreation or hygiene and cosmetics.

We perhaps in our brand portfolio perfect for your products!

The subject application was filed under Section 66(a) without proof of use in the USA. What issue would you have explored under these circumstances? For a big fat hint, see Section II of this article.

Text Copyright John L. Welch 2008.

Friday, April 25, 2008

PTO Proves Wine and Restaurant Services Related, TTAB Affirms 2(d) Refusal of "BRICKSTONE CELLARS"

The Board affirmed a Section 2(d) refusal to register the mark BRICKSTONE CELLARS for wine, finding the mark confusingly similar to the registered mark BRICKSTONES for restaurant services. The key issue, of course, was the relatedness of the involved goods and services, and the PTO's evidence won over the Board on that point. In re Constellation Wines U.S., Serial No. 78803750 (April 17, 2008) [not precedential].

The Board began its du Pont analysis by finding that "the relevant, dominant portions of the marks are effectively identical in appearance and sound." Consequently, this factor weighs "heavily" in favor of finding confusion likely.

As to the goods and services, the Board observed that, under applicable precedent, "[t]o establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and for restaurant services." Jacobs v. Int’l Multifoods Corp., 212 USPQ 641, 642 (C.C.P.A. 1982). Here, Examining Attorney Priscilla Milton provided that "something more."

"In particular, the examining attorney offered four types of evidence to show the close relationship between registrant’s restaurant services on the one hand, and applicant’s wine on the other: (1) Third-party registrations for both identifications under the same mark; (2) Internet articles about restaurants offering 'private label' wines; (3) Advertisements for customized 'private label' wines; and (4) Direct evidence of restaurants that offer 'private label' wines under the name and mark of the restaurant."

Applicant submitted declarations from five individuals, the "thrust" of which was that "none of the declarants has heard of a restaurant that sells 'private label' wine under its own mark, except that one of the individual declarants apparently has." In any case, the declarations were controverted by the PTO's evidence.

Applicant also pointed to In re Coors Brewing Co., 68 USPQ2d 1059 (Fed. Cir. 2003), involving beer and restaurant services, in which the appellate court reversed a 2(d) refusal to register. However, the Board pointed out that in Coors there were significant design differences between the marks, there was widespread third-party use of the same mark for similar services, and the record lacked evidence of a very clear connection between beer and restaurant services.

Here, the Board found the required “something more” in "the strong, arbitrary nature of registrant’s mark; the high degree of similarity between applicant’s proposed BRICKSTONE CELLARS mark and registrant’s BRICKSTONES mark; and the solid evidence on the record showing the close relatedness of wine to restaurant services, including via 'private label' wines offered by some restaurants under their own marks."

Considering all the evidence, the Board found confusion likely and therefore it affirmed the refusal.

Text Copyright John L. Welch 2008.

Thursday, April 24, 2008

TTAB Finds Toilet Plunger Designs De Jure Functional

Applicant George Tash's utility patents and his boastful advertising led to the Board' s finding that the two product designs shown below are de jure functional and unregistrable as trademarks. In addition, assuming arguendo that the designs are not functional, Tash's evidence of acquired distinctiveness was insufficient to show that the designs have become source-identifying. In re Tash, Serial Nos. 76577156 and 76566157 (April 18, 2008) [not precedential].

Section 2(e)(5) bars trademark registration of functional matter. In determining functionality, the Board applies the four factors set forth in In re Morton-Norwich Prods., Inc., 213 USPQ 9 (CCPA 1982).

Here, each of Applicant's designs falls within the claims of a utility patent owned by Applicant (one of which has expired). Moreover, in each patent Applicant points to the utilitarian benefits of the particular configuration. This evidence "weighs heavily toward finding functionality."

Applicant argued that his ownership of a design patent for one configuration "cancels out the functional effect of his utility patent." Not so, said the Board. "[T]he presence of the utility patent is significantly more weighty in indicating the utilitarian aspects of the configuration."

Under the second Morton-Norwich factor, Applicant's advertising added further weight to the Board's finding of functionality. The advertising touted the utilitarian benefits of the designs in delivering "more plunge power per push" and the "[g]reatest plunging capacity on the market today."

Finally, Applicant argued that each design "consists of an arbitrary combination of functional parts." However, "the evidence shows that the overall design is functional," and the "inclusion of a few arbitrary or otherwise nonfunctional features in the design will not change the result."

Turning to Applicant's 2(f) claim, assuming the designs were not de jure functional, the Board found Applicant's evidence inadequate. Tash's advertising promotes the functional benefits of the product designs, and does not promote the designs as trademarks. Moreover, Applicant failed to provide information regarding the amount or extent of his advertising. The declarations he submitted were of limited probative value because "they are from industry insiders with an apparent interest in applicant's sales," and not from ultimate consumers of the products.

Therefore the Board concluded that Applicant did not establish acquired distinctiveness.

TTABlog comment: In a remarkable display of blogging self-restraint, I did not include a single pun in this posting.

Text Copyright John L. Welch 2008.

Wednesday, April 23, 2008

Precedential No. 21: TTAB Finds "LA PEREGRINA" and "THE PILGRIM" Confusingly Similar for Jewelry Per Doctrine of Foreign Equivalents

In yet another case involving the doctrine of foreign equivalents, the Board affirmed a Section 2(d) refusal to register the mark LA PEREGRINA, finding it likely to cause confusion with the registered mark PILGRIM, both for jewelry. Applicant submitted four declarations from bilingual individuals, who averred that they would not translate LA PEREGRINA into PILGRIM, but the Board was unimpressed. In re La Peregrina Limited, 86 USPQ2d 1645 (TTAB 2008) [precedential].

Applicant stated in its application that the English translation of its mark is THE PILGRIM. Dictionary evidence confirmed that translation. Examining Attorney Evelyn Bradley maintained that the average consumer in this country would be likely to translate the foreign term into its English equivalent.

Applicant argued that the doctrine of foreign equivalents does not apply in this case because an American purchaser is unlikely to translate the Spanish mark, but rather "will simply accept it as it is."

The Board observed that the doctrine of foreign equivalents is applied when the ordinary American purchaser would stop and translate the term into its English equivalent. According to In re Thomas, 79 USPQ2d 1021 (TTAB 2006), the "ordinary American purchaser" refers to a purchaser who is "knowledgeable in English as well as the pertinent foreign language."

Notwithstanding Applicant's arguments that "only" 14-15 million individuals in this country are bilingual in English and Spanish, and that Spanish remains highly localized (primarily Texas and California), the Board concluded that, "by any standard, Spanish is spoken and understood by an appreciable number of U.S. consumers who also speak or understand English."

The Board then found "no compelling evidence in the record to establish that the mark would not be translated because of marketplace circumstances or the commercial setting in which the mark is used. [TTABlog note: Compare In re Tia Maria Inc., 188 USPQ 524 (TTAB 1975), in which the Board found it unlikely that a purchaser would translate TIA MARIA into "Aunt Mary" when dining at the TIA MARIA restaurant "surrounded by Mexican decor and Mexican food."]

Four declarations from bilingual individuals, asserting that they would not translate LA PEREGRINA into its English equivalent, were insufficient to rebut the PTO's evidence. Two declarants stated that LA PEREGRINA referred to a famous and unique pearl found in Panama. [TTABlog note: Just for fun, put "LA PEREGRINA" into the GOOGLE brand search box and see what comes up]. The Board, however, found the evidence "simply insufficient" to support a conclusion that "consumers in this country would be aware of the 'La Peregrina' pearl, and therefore that they would view 'La Peregrina' as a name in its own right." The other two declarants merely said, without explanation, that they would not translate the term.

The Board therefore found confusion likely, and sustained the refusal.

TTABlog comment: The Board's rule does makes some sense. If I were bilingual and I saw a product being sold under an English mark ABC and then saw the same product under the Spanish equivalent XYZ, why wouldn't I think that the same producer was simply translating the mark into the language of the two different markets?

What in my view needs clarification is how one comes to the conclusion that a bilingual consumer will not stop and translate a mark. For example, how about LA PEREGRINA for spanish wine? Does the applicant need survey evidence? Would four individual declarations suffice?

Text Copyright John L. Welch 2008.

Tuesday, April 22, 2008

TTAB Reverses Genericness Refusal of "DIGITAL OILFIELD" for B-to-B E-Commerce Services

Genericness refusals must be supported by clear evidence, and the PTO fell short of that standard in its refusal to register, on the Supplemental Register, the mark DIGITAL OILFIELD for various business-to-business e-commerce computer goods and services. In re Digital Oilfield Inc., Serial No. 76127133 (April 17, 2008) [not precedential].

The PTO relied on a number of NEXIS articles and website printouts using the term "digital oilfield" in arguing that "digital oilfield" refers to "an entire panoply of goods and services" and that the oil industry uses the term "as an umbrella term for all of the electronic or 'digital' goods and services that constitute the business of digital oilfields throughout the world today."

Applicant Digital Oilfield, Inc. contended that none of the PTO materials evidence use of the term in connection with the identified goods and services. It also challenged several of the website references as having little relevance because the websites are from sources outside the USA. And it argued that the "digital oilfield" technologies mentioned in the PTO's materials relate to exploration of gas and oil fields, not business-to-business computer software and services that are used for oil and gas company supplier invoicing and contract management.

The Board applied its standard Marvin Ginn genericness test. It first found (as usual) that the identification of goods and services in the Application is an appropriate specification of the genus of goods and services at issue. Turning to the perception of the term by the relevant public, the Board found the relevant public to be "oil and gas company managers, and procurement and supply chain specialists."

It then dismissed Applicant's objection to the foreign website evidence because, in cases involving technical fields, "developments are likely to be of interest worldwide regardless of their country of origin." See In re Remacle, 66 USPQ2d 1222 (TTAB 2002).

Nonetheless, the Board found that the PTO had not met its "heavy burden." "It agreed with Applicant that the "overwhelming majority of the excerpted materials refer to a 'digital oilfield' as various technologies for use in the oil and gas exploration process, itself (e.g., data collection and analysis computer software)." There was "insufficient evidence that, to the relevant public, the primary significance of DIGITAL OILFIELD ... would be the common name of [Applicant's] goods and services."

The Board therefore reversed the refusal.

TTABlog comment: If oilfields become digital, will we be buying gasoline by the kilobyte rather than the gallon? In one sense, one might say that oil has already become digital, since I feel like the oil companies are giving me the finger every time I fill my gas tank.

Text Copyright John L. Welch 2008.

Saturday, April 19, 2008

Precedential No. 20: TTAB Finds Stitching Design on Jean Pockets Merely Ornamental

The Board affirmed "mere ornamentation" refusals of the three alleged marks shown immediately below (each described as a "stitching design on side-by-side pockets") for jeans and other clothing items, finding that the designs fail to function as trademarks. Applicant relied only on the alleged inherent distinctiveness of the designs, without claiming acquired distinctiveness. In re Right-On Co., Ltd., 87 USPQ2d 1152 (TTAB 2008) [precedential].

Examining Attorney Gina M. Fink maintained that the designs are merely ornamental and not inherently distinctive, and would not be perceived as source indicators. [Because the applications were based on Section 66(a), amendment to the Supplemental Register was not available.] She relied on several articles discussing stitching as a way of decorating clothing, and argued that Applicant's designs "do not incorporate any elements that look any different than any other decorative stitching patterns," and that the color combination of blue and gold is "hardly unique."

Applicant Right-On contended that it is "common practice in the trade to use stylized stitching on hip pockets to distinguish manufacturers." It urged that its stitching design is unique, consisting of "distinctive pocket stitching, which include[] smoothly curved lines of varying thickness and abrupt points ...." Right-On submitted several third party trademark registrations for stitching designs, as well as three of its own registrations, all on the Principal Register without a Section 2(f) showing.

The Board found it clear from the record that stitching designs on pockets is a "common practice in the relevant trade, the jeans market." "The crux of the dispute here is the legal meaning to be attributed to this practice." The PTO contended that this common practice supports the ornamentation refusals, while Applicant argued that it supports a finding that stitching is recognized as a trademark. The Board further observed that a "mere refinement" cannot be inherently distinctive.

"Considering applicant's pocket-stitching designs within these legal parameters, we find that they are not 'unique or unusual' but rather are in the category of a 'common basic shape or design' and are at most 'a mere refinement of a commonly-adopted and well-known form of ornamentation' for jeans. *** [T]he mirror image enhances the ornamental effect."

The Board noted the statement in the TMEP that "[a] small, neat and discrete word or design feature ... may be likely to create the impression of a trademark, whereas the larger rendition of the same matter emblazoned across the front of a garment ... may be likely to perceived merely as a decorative or ornamental feature of the goods." Here, Applicant's design is "rather more" the latter than the former.

The third-party registrations were of little help, since each case must be decided on its own merits. As to Applicant's own prior registrations, the Board noted that Section 66(a) applications may proceed to registration without the submission of a specimen of use, and this may have happened with Applicant's registrations, with the PTO "not being aware of the way the mark would be used or perceived." It is appropriate in such a case for the PTO to issue an ornamental refusal if the proposed mark is decorative or ornamental on its face.

The Board therefore found that the proposed marks constituted mere ornamentation and failed to function as trademarks.

TTABlog comment: Curiously, there was no discussion, or even mention, of the CAFC's decision in In re Slokevage, 78 USPQ2d 1395 (Fed. Cir. 2006) [TTABlogged here], in which a cut-out design on the rear of jeans was found to be product design trade dress that could not be inherently distinctive.


Text Copyright John L. Welch 2008.

Friday, April 18, 2008

CAFC Bars Cancellation Petition as Collateral Attack on Prior Federal Court Judgment

In a precedential ruling, the CAFC affirmed the TTAB's decision granting summary judgment to Nylok Corporation and dismissing Nasalak Coating Corporation's petition for cancellation of a Nylok registration. The Board (here) found that the petition was barred by res judicata (claim preclusion) in light of a federal court default judgment entered against Nasalok in Nylok's trademark infringement action. The CAFC took a slightly different tack, ruling that Nasalok's petition for cancellation "amounted to a collateral attack on the district court's judgment," and therefore that "the rules of defendant preclusion are properly applied to bar Nasalok from asserting that claim." Nasalok Coating Corp. v. Nylok Corp., 86 USPQ2d 1369 (Fed. Cir. 2008) [precedential].

The U.S. District Court for the Northern District of Illinois had entered a default judgment against Nasalok in 2005. The court enjoined Nasalok from selling or importing "any self-locking fastener having a nylon locking element ... having the color blue ...."

Five months later, Nasalok filed a petition for cancellation of one of Nylok's involved registrations, alleging that the registration was invalid on various grounds.

Nylok moved for summary judgment before the Board, leading to the Board's decision that the petition was barred by the doctrine of claim preclusion.

The CAFC observed the Board's ruling presented questions of law, which the appellate court reviews without deference. It pointed out that res judicata involves two related concepts: claim preclusion and issue preclusion. Because the district court's judgment was issued on default, no particular issues were decided, and so issue preclusion does not apply.

The Board erroneously applied the test for claim preclusion that is applicable to a second action by the same plaintiff. Somewhat different rules apply against a defendant in the first action who brings a later action: a defendant is precluded only if (1) the claim or defense it attempts to raise was a compulsory counterclaim that it failed to raise in the first action, or (2) the claim or defense amounts to a collateral attack on the first judgment.

The CAFC concluded, on an issue of first impression, that Defendant's claim for trademark invalidity was not a compulsory counterclaim in the federal action. First, the subject matter of plaintiff's infringement claim and the subject matter of the petition for cancellation do not arise out of the same "transaction or occurrence." See FRCP 13(a)(1)(A).

"In this case, therefore, the 'essential facts' alleged by Nylok in the infringement action - related to Nylok's ownership of the mark and Nasalok's allegedly infringing behaviour - do not form the basis of the cancellation claim now asserted by Nasalok, which is based on attributes of Nylok's mark and on Nylok's actions in obtaining registration of that mark."

The CAFC noted that in the patent context, it has explicitly held that "a determination of patent infringement in an infringement suit, or even an explicit determination of patent invalidity does not preclude the assertion of an invalidity defense in a second action involving different products." Moreover, according to the CAFC, "the policy considerations driving those [patent] decisions are equally applicable here."

"A plaintiff who brings an infringement suit as to one allegedly infringing use of a mark would not be precluded from later bringing a second infringement suit as to another use; similarly a defendant in the first infringement suit should not be precluded from raising invalidity of the mark in the second action simply because it was not raised as a counterclaim in the first action."

"Finally, treating challenges to trademark validity as compulsory counterclaims to infringement actions would violate the well-established policy of freely allowing challenges to the validity of claimed intellectual property protection." See Lear, Inc. v. Adkins, 395 U.S. 653 (1969).

The court then turned to the second basis for applying defendant preclusion, and concluded that the later action essentially amounts to an improper collateral attack on the district court judgment.

"Allowing Nasalok to challenge the validity of the '840 Registration, which grants Nylok rights in the use of 'a patch of the color blue on a selected number of treads of an externally threaded fastener,' would effectively undo the relief granted by the district court in the infringement action."

The district court judgment was based on a determination that Nasalok had infringed "one or more" of seven registered trademarks, and it enjoined Nasalok from using the color blue on "any self-locking fastener." Cancellation of the '840 registration would therefore require modification of the injunction to permit the use of the color blue on "externally threaded fastener[s], with the blue patch extending more that 90 degrees and less than 30 degrees around the circumference of the fasteners ... since the other six trademarks in question would not cover such use."

Therefore, the CAFC affirmed the summary judgment granted by the Board to Nylok.

In a concurring opinion, Judge Pauline Newman would affirm the Board's decision on the original ground stated by the Board: claim preclusion. She found the compulsory counterclaim issue to be irrelevant here because the validity of the mark was before the district court. Neither the parties nor the TTAB raised the issue of defendant preclusion.

Nasolok did not appeal any aspect of the district court's decision. As the TTAB observed, validity was decided and was not appealed. The discussion of compulsory counterclaims is irrelevant because "the validity aspects that might have been contested by counterclaim were presented as a premise of the complaint."

Furthermore, Judge Newman pointed out that patent public policy and trademark public policy are not the same. "To state, even in dictum, that Lear favors a trademark system that facilitates attacks on trademark property ignores the differing public purposes of patents and trademarks, as well as misperceives the policy principles of Lear.

TTABlog comment: I agree with Judge Newman. I think that by defaulting in the district court case, Nasalok should lose all right to challenge the validity of the registrations that were put into issue by the plaintiff.

Note the recent, precedential Board decision in the FORADODGE case (TTABlogged here), granting a summary judgment motion to Opposer based upon a prior district court ruling. It seems like you just can't get a second bite of the apple when you want one.

Text Copyright John L. Welch 2008.

Thursday, April 17, 2008

TTABlogger Receives Refusable Offer From "Patent Trademark Register"

When the registration certificate for THE TTABLOG arrived last month, I expected it to be followed by a shipload of tantalizing offers for framed copies, bronzed copies, t-shirts bearing copies, etc. Here (pdf) is one of the offers that I was able to refuse. We can hope that if a client of yours receive the same offer, it will file it in the appropriate circular file.

front of letter
(click on photo for larger image)

This outfit, which is apparently called ODM srl, of Vienna, Austria, offers for a mere $2,380 to register my "patent" in its "private Database" for one year. Note that there is no "extra charge" nor "value added tax." [Such a deal!] However, there is a caveat:

"Please notice that this private registration hasn't any connection with the publication of official registrations, is not a registration by a government organization, and we haven't any business relation yet."

back of letter
(click on photo for larger image)
The terms and conditions appear on the back; they include:

3. The Directory which are [sic] edited by the WIPO-World Intellectual Proberty [sic] Organization, will be published on Internet and on CD-Rom, which will be updated every 3 months. The insertion fee covers the offered edition for one year including insertion update during this time.

Personally, I think the International Star Registry would be a much better deal. I could register THE TTABLOG and about two dozen other names for the cost of a one-year entry for a single mark in the Patent Trademark Register.

Text Copyright John L. Welch 2008.

Wednesday, April 16, 2008

Guest Comment: Pamela Chestek on the TTAB's Bose v. Hexawave Ruling re "Use in Commerce"

In an April 9, 2008 ruling (here), the Board denied Opposer Bose Corporation's request for reconsideration of the decision of November 6, 2007 in Bose Corp. v. Hexawave, Inc., Opposition No. 91157315 [not precedential]. [TTABlogged here]. In that decision, the Board found that Bose had committed fraud when it renewed one of its trademark registrations because the alleged use of the subject mark consisted of transporting the goods back to their owners after repair. In a comment below (following the TTABlog summary of the case) Pamela S. Chestek provides her thoughts regarding the potentially far-reaching impact of the Board's ruling regarding "use in commerce."

In its request for reconsideration, Bose argued that the Board had erred in holding that a trademark owner must "own" the goods at the time it transports them in commerce with the mark affixed in order to satisfy the "use in commerce" requirement of the Lanham Act. Bose claimed that transporting a repaired product constituted use.

The Board looked again at the "plain language of the statute," and particularly the definition of a trademark, to find that "[t]he goods must belong to the trademark owner and indicate source, not belong to the trademark owner or indicate source."

"Opposer's interpretation would permit a party to exclude others indefinitely from use of a term in connection with goods that they no longer manufacture, sell or keep in inventory. Put simply, this result is not the intention of the Lanham Act."

Bose next argued that it was reasonable to believe that use of the mark in connection with repair service was sufficient use (and therefore that Bose did not commit fraud when it renewed its registration). The Board, however, found Opposer's interpretation of the statute "strained," giving support, along with Bose's conflicting testimony regarding its investigation prior to signing the renewal papers, to applicant's assertion that Bose was "merely engaging in post-hoc rationalization." In short, the Board found no error in its prior ruling that Bose's belief was not reasonable.

And so, the decision of November 6, 2007 stands.
Pamela Chestek comments as follows:

In Bose Corp. v. Hexawave, the TTAB has inadvertently put the validity of hundreds of thousands of trademark registrations in doubt. On the way to deciding that transportation of used goods after repair is not a use in commerce, the TTAB stated without limitation that a use in commerce requires "title and ownership which bestows upon the person possessing such attributes the unhampered right or freedom to dispose of his products." (here, at p. 13). The Board affirmed the same standard in this reconsideration, stating "[t]he goods must belong to the trademark owner" (quoted above). The reality of modern commerce, however, is that a trademark owner may never have legal title to goods on which its mark is used and, if Bose is followed, its registrations will therefore be invalid.

The simplest scenario showing that this rule is unworkable is the licensor/licensee relationship. In its basic form, the trademark owner authorizes another entity to place the mark on goods manufactured by the licensee, in exchange for payment of a royalty for use of the mark. The trademark owner never takes title to the goods and thus, under the standard stated in Bose, it will not have "use in commerce" of its marks. This is contrary to the Lanham Act's ratification under section 5, 15 U.S.C. § 1055, of licensing as a valid use ("Where a registered mark or a mark sought to be registered is or may be used legitimately by related companies, . . . such use shall not affect the validity of such mark or of its registration . . . .").

Consider also a business model where the trademark owner manufactures in a foreign country and transfers title outside of the United States. In this case, the trademark owner will never have had sale or transportation of goods it owns in commerce that can be regulated by Congress, and thus no valid registration. Similarly, even if goods were originally transported or sold in the U.S., a trademark owner may not be able to maintain a registration for new goods still available in stores because it is the retailer who now has "title and ownership."

This standard is also too simplistic for today's modern corporate enterprise. A company selling branded goods may be made up of hundreds or thousands of separate entities in complex organizational structures. It may be that the trademark owning company's only role is trademark management and licensing, not manufacturing, sale or transportation of goods. If "title and ownership" has to be with the named trademark owner, few large corporate enterprises, domestic or foreign, will own valid U.S. trademark registrations.

The TTAB could have decided Bose by differentiating new and used goods, but instead it started down a perilous path for trademark owners by relying on "title and ownership" as the basis for establishing trademark use. As the Bose decision shows, there is currently no clear standard and establishing one would be beneficial. Many factors could be relevant – it may be appropriate to have different standards for first use and continuing use if policy bases are different at those points in time; there may be value in maintaining consistency with the "discontinued use" prong of abandonment doctrine; residual goodwill could be taken into account; product shelf life might be a factor; and there are undoubtedly many more possible considerations. Whatever the ultimate standard, however, "title and ownership" should not be it.

Of course, the opinions above are only my own and not those of my employer.


Pamela S. Chestek is Senior Intellectual Property Counsel at Progress Software Corporation, Bedford, Massachusetts.

Tuesday, April 15, 2008

Precedential No. 19: TTAB Grants Summary Judgment Against Applicant Enjoined From Use and Registration of His Mark

The Board granted summary judgment to Opposer Daimler Chrysler in its Section 2(d) opposition to registration of the mark FORADODGE for various consulting services. Daimler Chrysler argued that it was entitled to judgment under the doctrine of issue preclusion, based upon a federal court judgment in an Anticybersquatting Consumer Protection Act (ACPA) lawsuit against Applicant Keith Maydak. The Board instead based its grant of summary judgment on the ground that Maydak was permanently enjoined by the federal court from using or registering the term FORADODGE as a mark. Daimler Chrysler Corp. v. Maydak, 86 USPQ2d 1945 (TTAB 2008) [precedential].

Dodge Dart

Applicant Maydak appealed the adverse ruling of the United States District Court for the Eastern District of Michigan, arguing, inter alia, that the injunction was overly broad. The U.S. Court of Appeals for the Sixth Circuit, however, affirmed the judgment on all grounds raised. DaimlerChrysler v. Net Inc., 72 USPQ2d 1912 (6th Cir. 2004). The Board noted that, at the time of its decision, the appellate court was aware that Maydak was seeking to register the mark FORADODGE with the USPTO.

This opposition proceeding had been suspended pending the court's ruling.

"Thus, in this case, it is incumbent upon the Board to give deference to the determinations of the court, including the remedy entered therein, and consider the terms of the permanent injunction. As a result, we find that applicant is precluded from registering his mark."

Moreover, because Maydak is permanently enjoined from using the mark FORADODGE, it is "a legal impossibility for applicant to obtain a registration."

Therefore, the Board granted summary judgment to Opposer.

Text Copyright John L. Welch 2008.

Monday, April 14, 2008

"CINQUANTE-CINQ" and "55" Confusingly Similar for Wine, Says TTAB, Equivalently

There was no equivocation in the Board's application of the doctrine of foreign equivalents to find the mark shown immediately below likely to cause confusion with the registered mark CINQUANTE-CINQ, both for wine. Applicant unsuccessfully argued, based on its interpretation of the CAFC's decision in Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689 (Fed. Cir. 2005), that the average American purchaser would not "stop and translate" the French term into its English equivalent, the number "55." In re SAS Lataste, Serial No. 79015771 (March 28, 2008) [not precedential].

Examining Attorney Leigh A. Lowry maintained that the registered mark translates from French to English precisely as "Fifty-Five," and that the dominant portion of Applicant's mark is the numeral "55." Citing In re Thomas, 79 USPQ2d 1021 (TTAB 2006) [TTABlogged here], the Examining Attorney contended that the ordinary purchaser in the USA "who is knowledgeable in the foreign language" will translate the term "cinquante-cinq" into its English equivalent.

Applicant argued that it would be inappropriate to invoke the doctrine of foreign equivalents here, and in any case that the marks, when considered in their entireties, are not confusingly similar.

The Board observed once again that, when identical goods are involved, a lesser degree of similarity between the mark is required to establish a likelihood of confusion. The dictionary evidence, as well as the translation statement printed on the cited registration, established that the only translation of "cinquante-cinq" is the number "fifty-five."

Applicant agreed that, under the doctrine of foreign equivalents, foreign words from common languages are usually translated into English to determine likely confusion. However, "when it is unlikely that the average American consumer will translate the foreign mark and will take it as it is, then the doctrine of foreign equivalents will not be applied." In support, Applicant cited In re Tia Maria Inc., 188 USPQ 524 (TTAB 1975), in which the Board found it unlikely that a purchaser would translate TIA MARIA into "Aunt Mary" when dining at the TIA MARIA restaurant "surrounded by Mexican decor and Mexican food."

The Board, however, found "nothing to indicate that the cited mark will not be translated." [TTABlog comment: what if the term CINQUANTE-CINQ appears on a bottle of French wine? Isn't that like the mark TIA MARIA being used for Mexican restaurant services?]

Applicant pointed to the CAFC's (confusing) discussion of the doctrine of foreign equivalents in Palm Bay, in which the appellate court seemed to say that the average American purchaser would not "stop and translate" the French word "veuve" into the English term "widow." The Board rejected that interpretation of Palm Bay, insisting, as it did in its recent precedential ruling in In re Spirits International N.V., 86 USPQ2d 1078 (TTAB 2008) [TTABlogged here], that the CAFC "did not address the definition of the 'ordinary American purchaser'" but merely identified "contradictory findings by the Board." In short, the Board found the ordinary American purchaser to be a person "knowledgeable in French."

Turning to a comparison of the marks, the Board quickly dismissed Applicant's argument that the PTO had improperly dissected the marks. The Board found, not surprisingly, that the number 55 dominates Applicant's mark. Although there are obvious differences between the marks, they have "quite similar connotations and commercial impressions." Weighing "all the types of similarities and dissimilarities" in the two marks, the Board found this factor to weigh in favor of the PTO's position.

Finally, the Board noted that Applicant is a French company, making it "even more likely" that consumers would assume a common source for the goods at issue. [TTABlog comment: this point seems rather dubious. Suppose the 55 mark is used by a non-French licensee for non-French wine?]

TTABlog further comment: Would a purchaser knowledgeable in French translate into English a French term on a French bottle of wine? I have my doubts. Of course, the cited registration is not limited to French wine, so that is not a proper question here.

I think the Board got this one right. But by the same token, I think its point about Applicant being a French company is wrong, just like it would be wrong to assume that the cited mark is used on French wine.

Text Copyright John L. Welch 2008.

Friday, April 11, 2008

Finding No Cultural Significance for "HONEYSUCKLE ROSE," TTAB Affirms 2(d) Refusal over "HONEYSUCKLE" For Clothing

Rejecting Applicant's contention that its mark HONEYSUCKLE ROSE (slightly stylized) has "cultural significance" that would change its connotation, the Board affirmed a Section 2(d) refusal to register that mark for various clothing items, finding it likely to cause confusion with the mark HONEYSUCKLE & Design (shown below) for clothing. In re Right-On Co., Ltd., Serial No. 79011373 (March 31, 2008) [not precedential].

The Board, not surprisingly, found the word HONEYSUCKLE to be the dominant portion of the registered mark. The primary disagreement between Applicant and Examining Attorney Melissa Valillo concerned the connotation and commercial impression of HONEYSUCKLE ROSE.

The Examining Attorney contended that the two words "identify separate and distinct types of plants." Applicant, however, argued that HONEYSUCKLE ROSE has a "cultural significance as evidenced by the numerous businesses that have appropriated this mark for their business names. Applicant is employing this cultural meaning in its use of the mark HONEYSUCKLE ROSE."

To support its "cultural significance" argument, Applicant offered "extremely limited" evidence: one Wikipedia article for "honeysuckle rose" and a few webpages showing various business names incorporating the term.

lists three separate entries for "honeysuckle rose;" A "jazz standard" from 1928 written by Fats Waller; the 1980 movie starring Willie Nelson; and the name of Willie Nelson's "famous touring bus."

The Board found the song reference to be unpersuasive vis-a-vis its current popularity. The movie entry was "too brief" and does not "reflect on the popularity" of the movie today. And the statement that the tour bus is "famous" is entitled to little weight without more evidence. Moreover, Wikipedia is a "collaborative online encyclopedia and a Wikipedia article at any given time may contain significant misinformation."

Thus the Board was not persuaded that HONEYSUCKLE ROSE has any other meaning. It found that, to the typical consumer, the meaning of the term consists of an arbitrary combination of two plants or flowers. Since the addition of ROSE does not change the connotation of HONEYSUCKLE, the Board found the marks to be similar in overall connotation and commercial impression.

Moreover, the Board ruled that the differences in appearance and sound between the marks are outweighed by the similarities in connotation and commercial impression created by the shared term HONEYSUCKLE.

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

TTABlog comment: Note the rough treatment given Applicant's Wikipedia evidence. Factual statements are one thing (at least they may be corroborated or refuted), but statements of opinion like "jazz standard" and "famous" are out of bounds.

Text Copyright John L. Welch 2008.

Thursday, April 10, 2008

Precedential No. 18: TTAB Dismisses "SPORTSMAN'S WAREHOUSE" Cancellation Petition, Finding No Likelihood of Confusion and No Fraud

In an enervating 49-page decision, the Board tossed overboard a petition for cancellation of a registration for the SPORTSMAN'S WAREHOUSE logo mark [all wording disclaimed] shown immediately below, for retail and wholesale sporting goods store services, finding the mark not likely to cause confusion with Petitioner Bass Pro's registered logo mark BASS PRO SHOPS SPORTSMAN'S WAREHOUSE (shown way below) [SPORTSMAN'S WAREHOUSE disclaimed] for essentially the same retail store services. The Board also threw back into the water Petitioner's claim to common law rights in the word mark SPORTSMAN'S WAREHOUSE, and its claim that Respondent had committed fraud on the PTO. Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844 (TTAB 2008) [precedential].

No Fraud: Taking the last issue first, Bass Pro alleged that Respondent had never used its mark in connection with wholesale stores and therefore committed fraud when it filed its use-based application. However, although it appears that Respondent phased out wholesale services after the registration issued, several of its witnesses testified that Respondent rendered wholesale services prior to the filing of the application and issuance of the registration. That testimony, "while self-serving ... is credible."

The Board noted that Respondent was not obliged to amend its registration at the time it stopped using the mark for wholesale services:

"Further, while respondent could have filed an amendment to its description of services to delete 'wholesale services' under Section 7 of the Trademark Act as soon as it stopped using its mark in connection with such services, it was also reasonable for respondent to do so when it filed its declaration of use under Section 8 ...."

No Likelihood of Confusion: The Board first considered Petitioner's common law rights in the word mark SPORTS WAREHOUSE. The Board agreed with Respondent that SPORTS WAREHOUSE is descriptive for each party's respective services. It further found that the phrase, which Petitioner did not use apart from its logo, had not acquired distinctiveness.

Petitioner claimed that incidents of actual confusion demonstrated the acquired distinctiveness of the term, but the Board found that evidence "inconclusive." Petitioner also pointed to its likelihood of confusion survey results as being probative of acquired distinctiveness, but the Board also found this proof unpersuasive. At the time of the incidents and of the survey, Petitioner's use of the phrase was not exclusive, and so that undercut Bass Pro's argument that the phrase pointed to a single source.

Particularly in view of the lack of evidence that Bass Pro advertised or used the term SPORTSMAN'S WAREHOUSE separate from the term BASS PRO SHOPS or the logo, and the lack of proof showing shows that consumers perceive the phrase as a trademark, the Board concluded that Bass Pro had failed to demonstrate acquired distinctiveness for SPORTSMAN'S WAREHOUSE.

Next the Board considered the mark of Petitioner's pleaded registration. In a cancellation proceeding, petitioner does not necessarily have priority simply because it owns a registration. However, here Respondent's testimony of first use was unconvincing and the Board found that Bass Pro had prior use of its mark.

As to the du Pont analysis, the parties' services are identical and unrestricted as to channels of trade or classes of customers. The Board, however, found the marks dissimilar in connotation and overall commercial impression. Any similarity resulting from the descriptive term SPORTSMAN'S WAREHOUSE was outweighed by the other logo elements in each mark.

Bass Pro's evidence of actual confusion was of little probative value, since it was based on the term SPORTSMAN'S WAREHOUSE and not on the registered marks at issue:

"The fact that there may be evidence of confusion due to the concurrent use of a descriptive term is insufficient to warrant a finding that there is a legally recognizable likelihood of confusion where the marks as a whole are visually and aurally distinguishable."

Petitioner's survey evidence, which was based on the registered marks, was also of little value: the only similarity between the seven marks included in the survey was the term SPORTSMAN'S WAREHOUSE, which "would suggest to some survey respondents that they should find an affiliation between these two marks."

Balancing all the relevant factors, the Board found that Respondent's registered mark is not likely to cause confusion vis-a-vis the registered mark of Petitioner.

Text Copyright John L. Welch 2008.

Wednesday, April 09, 2008

PTO Proposes Rule Changes Regarding Express Mail and Certificate of Mailing Filings

In a Notice published in the Federal Register on February 29, 2008 (here), the PTO proposes to amend the Trademark Rules of Practice to provide that the procedures for filing trademark correspondence by Express Mail or under a certificate of mailing or transmission do not apply to certain specified documents for which an electronic form is available in the Trademark Electronic Application System (‘‘TEAS’’).

Changes in Rules Regarding Filing Trademark Correspondence by Express Mail or Under a Certificate of Mailing or Transmission

SUMMARY: The United States Patent and Trademark Office (‘‘Office’’) proposes to amend the Trademark Rules of Practice to provide that the procedures for filing trademark correspondence by Express Mail or under a certificate of mailing or transmission do not apply to certain specified documents for which an electronic form is available in the Trademark Electronic Application System (‘‘TEAS’’). The purpose of the rule change is to promote electronic filing, increase efficiency, and improve the quality and integrity of critical data in the Office’s automated systems.

Comments on the proposed rules must be received by April 29, 2008 to ensure consideration. Reportedly, the USPTO subcommittee of INTA is preparing comments on the proposal and will ask the PTO to reconsider its position on office action responses and other lengthy documents.

TTABlog comment: A number of practitioners have complained about the proposed rule changes on the INTA list-serv. They point out a number of situations in which the electronic forms don't work, and in which paper filing is necessary.

It seems to me that most practitioners already have an incentive to use the electronic forms: ease of use and immediate acknowledgment of the filing. Are there a substantial number of practitioners who simply refuse to use the electronic forms and must be prodded to do so by this Rule change? Is that number signficant enough to justify the added difficulty and inconvenience that will be visited on those who need to file on paper?

Text Copyright John L. Welch 2008.

Tuesday, April 08, 2008

TTAB Reverses Mere Descriptiveness Refusal of "PETIT-PETITE" for Wine

Finding that the PTO had failed to carry its burden to show the mark PETIT-PETITE to be merely descriptive of wine, the Board reversed a 2(e)(1) refusal. In re Phillips Farms, LLC, Serial No. 78669171 (March 26, 2008) [not precedential].

Syrah grapes

The PTO first squashed Applicant's argument that the case was not ripe for appeal: the subject application was filed under Section (1)(b) and, since a specimen of use had not yet been filed, the PTO incorrectly "conducted a preliminary review and found that the mark PETIT-PETITE is descriptive for wine, all wines, in all market conditions, absent the realities of the mark used in commerce." Applicant cited no authority for that proposition and the Board found none.

The Examining Attorney relied on a translation showing that "petit" is the French word for "petite," and on a handful of Internet references in which the words "petit" or "petite" appear in connection with wine or grapes.

The Board, however, found the PTO's evidence to be insufficient to support the refusal to register. Although excerpts from Internet articles may be competent evidence, "most of the instances in which 'petite' appears are in the context of direct references to 'Petite Sirah' (or 'Petite Syrah') grapes and wine or 'Petit Verdot' grapes." A single Internet article referring to "Petite" grapes is insufficient to establish a prima facie case. Likewise references to "petite" grapes in the Department of Agriculture's GRIN database were of dubious evidentiary weight since it is not clear that ordinary consumers would be aware of, or consult, that database; in any case, the PTO's evidence would still fall short of proving mere distinctiveness.

Observing that any doubt regarding mere descriptiveness must be resolved in favor of the applicant, the Board reversed the refusal.

Text Copyright John L. Welch 2008.

Monday, April 07, 2008

Seventh Circuit Vacates Google's Judgment Against Stoller Companies

The U.S. Court of Appeals for the Seventh Circuit has vacated the March 15, 2007 judgment entered by the Chicago federal district court in Google's RICO lawsuit against Leo Stoller's companies, Central Mfg. Inc. and Stealth Industries, Inc. The appellate court ruled (here) that the lower court had erred in denying Leo Stoller's motion to intervene (TTABlogged here), and it returned the case to the district court for reconsideration of Stoller's motion.

Leo Stoller

The appellate court began by noting that "Leo Stoller is a familiar litigant, to say the least."

"As we have previously remarked, litigation is central to his business strategy: he claims a superior right to countless trademarks and then seeks to thwart genuine users from registering their marks or threatens litigation if he is not paid a 'licensing fee.'"

When Stoller went after Google by claiming prior rights in the GOOGLE mark, Google fought back by bringing a RICO action against the two companies, seeking to stop the harassment. (TTABlogged here). Despite referring to Leo Stoller throughout its complaint, however, Google chose not to include Stoller as a named defendant. Stoller moved to intervene, contending that "as the former sole shareholder of the 'corporate' defendants and the person Google alleged was responsible for their unlawful conduct, he had a substantial interest in the lawsuit."

The appellate court observed that Google "really wanted to stop Stoller" and that Stoller seemed to be the "real defendant" in the case. Moreover, it was not entirely clear whether Google's claim fell within or without Stoller's Chapter 7 bankruptcy estate.

The 7th Circuit therefore vacated the district court judgment and remanded the case to the district court for reconsideration of Stoller's motion to intervene:

"We will leave for the district court to resolve in the first instance whether 'Central Mfg. Inc.' and 'Stealth Industries, Inc.' are entities that are subject to suit, whether and under what circumstances Google’s suit in its present form can proceed without Stoller if they are not, and whether any of the unlawful conduct Google alleges gave rise to a claim that even involves the Chapter 7 estate."

But it was not all milk and honey for Mr. Stoller. The appellate court reminded him of an unpaid fine:

"We remind Stoller, however, that he remains subject to the order we entered pursuant to Support Systems Int'l, Inc. v. Mack, 45 F.3d 185, 186 (7th Cir. 1995), directing that all federal courts in this circuit return unfiled any papers he submits directly or indirectly unless and until he pays a $10,000 fine we imposed against him in August 2007. See Google, Inc. v. Central Manufacturing, Inc., Nos. 07‐1569, 07‐1612 & 07‐1651 (7th Cir. Aug. 23, 2007). At this point Stoller has a motion to intervene, but if on remand this litigation continues and the district court allows Stoller to intervene, he will have to pay the outstanding sanction or, as a practical matter, face certain default."

TTABlog comment: So the Leo Stoller saga continues. As reported here, one of his entities recently filed an trademark application to register the mark STEALTH for a boatload of goods. Now Leo is back in the Chicago federal court. Someday, Mel Brooks will make a movie of this, starring Paul Giamatti as Leo Stoller.

Text Copyright John L. Welch 2008.

Friday, April 04, 2008

"REPTILE SAUSAGE" Merely Descriptive of Food for Reptiles, Says TTAB

I swear I never sausage a decision. The Board affirmed a Section 2(e)(1) refusal to register the mark REPTILE SAUSAGE, finding it merely descriptive of "food for animals, namely, for meat eating reptiles." In re Natural Balance Pet Foods, Inc., Serial Nos. 76612180 and 76612193 (March 17, 2008) [not precedential].

Examining Attorney Robert Clark relied on webpages showing use of the term "sausage" in connection with reptile food, a webpage offering for sale "snake sausage," a page describing "Snake Steak Sausage," and a dictionary definition of sausage. Applicant Natural Balance provided a definition of "reptile."

The Examining Attorney asserted that the mark immediately conveys relevant information about the goods: i.e., they are "sausages" for "reptiles." Applicant responded that the word "sausage" is "fanciful" in relation to the goods.

"By way of example, sausages, in general are not associated with being served to animals. Serving a distinctly human food to an animal is extraordinary. Additionally, the adjective before the word sausage usually denotes the ingredient, maker, or style of the sausage and not the being who consumes the sausage."

Applicant pointed out that no one refers to sausage on a menu or in a store as "human sausage." Its goods "do not have reptiles as an ingredient .., is [sic] not made by reptiles, and is not in a 'reptile-style.'" Ergo, the mark is merely fanciful, urged the Applicant.

The Board found a major problem with Applicant's argument: lack of support in the record. For example, there was no evidence that "human" food (or human-style food) is never given to animals. Moreover, the PTO's evidence shows that one manufacturer makes "sausages" for snakes.

The Board reminded Applicant that descriptiveness of a mark is not determined in the abstract: "We therefore start off knowing that Applicant's goods are food for carnivorous reptiles, and not food for humans." Some items in the animal food industry "are commonly called by a phrase consisting of the name or category of the animal for which the food is intended, followed by a word describing the food itself." E.g., dog biscuits.

The Board noted that the record was unclear as to "whether it is common practice in the relevant industry to call animal food (or reptile food) a 'sausage.'" But under the Board's precedents, even if Applicant were the first and only user of "sausage" in connection with food for reptiles, the term would still be merely descriptive.

Is short, the Board concluded that REPTILE SAUSAGE is merely descriptive of Applicant's goods, and it therefore affirmed the refusal.

TTABlog comment: There's something hard to swallow about this decision. I think the mark does have some incongruity and, like so-called double entendre marks, produces a bit of hesitation before one grasps the meaning of the mark. REPTILE SAUSAGE is such an odd and unusual combination of words that it deserves registration on that basis alone. [I guess I'm still bitter about the TTABLOG case].

Text Copyright John L. Welch 2008.

Thursday, April 03, 2008

Precedential No. 17: Finding the Marks Entirely Different, TTAB Grants Judgment on the Pleadings in 2(d) Opposition

Well here's a seldom-used shortcut to victory: a motion for judgment on the pleadings under FRCP 12(c). Applicant P.A.C. Trading Group sought to register the mark PAC BOOSTER THE PERFECT SOUND for car and home audio and video equipment ["BOOSTER THE PERFECT SOUND" disclaimed]. Ava Enterprises opposed, claiming that Applicant's mark is likely to cause confusion with its registered mark BOSS for automobile audio components. The Board found the first du Pont factor to be dispositive and, despite the overlap in the parties' goods, that a likelihood of confusion cannot exist as a matter of law. Therefore it granted the motion and dismissed the opposition. Ava Enterprises Inc. v. P.A.C. Trading Group, Inc., 86 USPQ2d 1659 (TTAB 2008) [precedential].

In response to Applicant's assertion that the differences in the marks make confusion impossible, Opposer Ava lamely argued that the marks "are confusingly similar in that the term BOOSTER contained in applicant's mark is nearly identical to the term BOSS in opposer's mark."

As required under FRCP 12(c), the Board accepted as true "all well pleaded factual allegations of the non-moving party," while those allegations of the movant that are denied or taken as denied are deemed false. Judgment on the pleadings may be granted only if there is no genuine issue of material fact in dispute.

The Board took judicial notice that the words BOOSTER and BOSS "are completely different in meaning." Moreover, "no matter what meaning, if any, purchasers might ascribe to the word 'boss,' the connotation of opposer's mark cannot be found similar to that of applicant's mark."

"Opposer’s suggestion in its responsive brief that the marks are nonetheless confusingly similar because the terms BOSS and BOOSTER both begin with the letter 'B,' share the same letters 'O' and 'S,' and sound similar is not persuasive inasmuch as it ignores the fact that the words, as well as the marks as a whole, are entirely different."

The Board therefore showed who's boss by pulling the plug on this unsound opposition.

Text Copyright John L. Welch 2008.

Wednesday, April 02, 2008

Precedential No. 16: TTAB Sustains Opposition to ITU Application, Applicant Lacked Bona Fide Intent

The TTABlogger has been suggesting recently that the bona fide intent issue was one to keep an eye on. [See the relevant portions of the articles here (Section VI) and here (Section II).] Well, the issue hit the fan in L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883 (TTAB 2008) [precedential]. Applicant Cary Berman, appearing pro se, lost this opposition not only on the ground of likelihood of confusion, but also on the ground that he lacked a bona fide intent to use the mark ENYCE on custom automobile accessories.

Likelihood of confusion: Opposer is the owner of the registered mark ENYCE for various clothing items and accessories. The Board found it to be a strong mark, but Opposer's evidence fell short of proving the mark to be famous. The real issue was, of course, the relatedness of the goods.

Opposer directs its sales efforts to the urban lifestyle market, of which clothing, jewelry, automobiles, and automotive accessories are an integral part. Much of the jewelry "replicates automotive wheels and rims."

The Board took judicial notice that "the licensing of commercial trademarks on 'collateral products' has become a part of everyday life." Opposer has used its mark on a variety of products (but not autos or accessories), and the record showed that the clothing brand marks EDDIE BAUER and L.L. BEAN have been used on automobiles. The urban lifestyle brands SEAN JOHN and MARK ECKO have been licensed for use with automobile wheels and vehicles, respectively.

The Board therefore found "an association between urban lifestyle clothing and custom automobile accessories." It presumed that the parties' goods would be marketed to "all normal classes of purchasers," which would include ordinary consumers. Many of the goods are relatively inexpensive and would be purchased on impulse; consequently "such goods are held to a lesser standard of purchasing care."

Finally, in light of Applicant's incredible testimony as to his adoption of the ENYCE mark, the Board concluded that he acted in bad faith, with the intention of trading on opposer's mark.

Considering the relevant du Pont factors, the Board found confusion likely and sustained Opposer's Section 2(d) claim.

Lack of Bona Fide Intent: The Board began with a citation to Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993), which held 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 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 the mark in commerce as required by Section 1(b)."

Applicant Berman admitted in discovery that he had no documents evidencing an intent to use his mark on custom automotive accessories. In his discovery deposition testimony, Berman offered "no facts which explain or outweigh the failure ..., when he filed the application, to have documents which support his claimed intent to use ..." His testimony that he intended to use the mark on shift knobs "does not suffice to establish a bona fide intention to use the mark."

"The mere assertion of an intent to use the mark without corroboration of any sort, whether documentary or otherwise, is not likely to provide credible evidence to establish a bona fide intention to use the mark. The context of the other answers given here detracts, rather than contributes, to the credibility of the assertion and thus supports the conclusion that applicant has not established a bona fide intention to use the mark when he filed the application."

And so, the Board concluded that Berman did not have the requisite bona fide intention to use his mark at the time of his ITU application, and it sustained the opposition on this ground.

TTABlog comment: I don't think the Board was very impressed with Mr. Berman, do you? More importantly, though, what does this precedential decision mean for all of us trademark practitioners? Do we always collect documentation before filing an intent to use application? Do we ask whether the client has any? Do we ask ourselves, how we will prove a bona fide intent should that issue arise?

And what about foreign applicants who, in Section 44 and 66 applications, must claim a bona fide intent to use their marks in this country? How are they going to prove their bona fides. [In that regard, see the second article referenced above].

In any case, it appear that the Board has provided TTAB practitioners with a promising avenue of attack on ITU applications that nicely complements the potential line of attack on use-based applications. If challenging an ITU, explore the bona fide intent issue. If challenging a 1(a) application, think fraud.

Text Copyright John L. Welch 2008.