TTAB Reverses 2(d) Refusal: "GRIP-RITE" for Industrial Gloves Not Confusing With "GRIPRITE" for Shoes and Boots

Reversing a Section 2(d) refusal to register, the Board found the mark GRIP-RITE for "protective gloves for industrial use" not likely to cause confusion with the registered mark GRIPRITE for "footwear, namely, shoes and boots." Although "somewhat of a close question," the Board based its ruling on the highly suggestive nature of the marks and the lack of evidence that the goods "are typically sold in the same channels of trade under the same or substantially similar marks." In re Banom, Inc., Serial No. 78869262 (May 19, 2008) [not precedential].


The Examining Attorney relied on third-party registrations and on Internet evidence showing "various brands of protective gloves and other kinds of work gloves being offered by [three] on-line retailer[s] of such products along with different brands of street shoes and/or work boots." The Board was not impressed:

"[N]either the third-party registrations nor the Internet or website excerpts demonstrate that applicant's goods and registrant's goods share a common channel of trade. In particular, the website excerpts are at best analogous to a mass merchandiser, in which different products are sold at retail in different sections of the store."

In short, the PTO's evidence did not pass the stringent test applied by the Board:

"[W]e are constrained, however, to agree with applicant that, on this record, confusion as to origin or affiliation of the respective goods has not been demonstrated to be likely. In particular, we concur with applicant that the respective goods are specifically different and are likely to be sold through different channels of trade. Moreover, as previously discussed, the marks at issue are highly suggestive and, thus, the scope of protection to which such are entitled is much less than would be the case for more distinctive or arbitrary marks. As applicant persuasively argues, its goods simply have not been shown to be 'closely related to the registrant's goods.'"

TTABlog comment: Did the Board properly find itself "constrained" to rule for Applicant? Doesn't the cited registration cover industrial safety shoes and boots, as well as "ordinary" shoes and boots? Did the Board improperly limit the scope of the registration to exclude safety shoes and boots? Obviously, the Board was determined to rule for Applicant. One could say it was "strained" to rule for Applicant, rather than constrained.

Text Copyright John L. Welch 2008.

Could Annual "MEET THE BLOGGERS" Event Lead to World Peace?

Perhaps. Michael Atkins, at his Seattle Trademark Lawyer blog, suggests same. See his report here on "MEET THE BLOGGERS IV."

Supreme Court Says Stoller Abused Its Process

On more than a dozen occasions in the past year, Leo Stoller has unsuccessfully sought Supreme Court review of various unfavorable lower court rulings. In the most recent case, the Supreme Court summarily disposed of his Petition for Writ of Certiorari filed in Stoller v. Attorney Registration and Disciplinary Commission of Illinois (Docket No. 07-10194 May 27, 2008). The Court noted that Stoller "has repeatedly abused this Court's process" and it issued the order set out below.

The motion of petitioner for leave to proceed in forma pauperis is denied, and the petition for a writ of certiorari is dismissed. See Rule 39.8. As the petitioner has repeatedly abused this Court's process, the Clerk is directed not to accept any further petitions in noncriminal matters from petitioner unless the docketing fee required by Rule 38(a) is paid and the petition is submitted in compliance with Rule 33.1. See Martin v. District of Columbia Court of Appeals, 506 U.S. 1 (1992) (per curiam). Justice Stevens dissents. See id., at 4, and cases cited therein.

Rule 38(a) requires payment of a $300 filing fee, and Rule 33.1 sets forth in detail the particular printing and formatting requirements for the petition. The Supreme Court Rules may be found here.

Text Copyright John L. Welch 2008.

Marty Schwimmer's Trademark Blog Turns Six

Marty Schwimmer's Trademark Blog turns six years old this month. Marty is the grandfather of trademark blogging. I'm not sure who the grandmother is.

.

Ten TTABlog Questions About Fraud

While I traveled from Berlin to London yesterday, questions kept popping into my head regarding the Board's "Twenty Questions" fraud decision, TTABlogged yesterday. It seems to me that University Games raises more questions than it answers. Here are ten questions that came to my mind:


1. Shouldn't an applicant who corrects an alleged error in its verified listing of goods or services have the burden to explain how the error occurred and why it should be correctable, rather than presuming the error to be innocent?

2. Is there to be no consequence whatsoever to filing a verified but false declaration as long as it is corrected prior to publication and applicant has an acceptable excuse?

3. Does the fact that third parties, when conducting a trademark search, may be influenced by the erroneous listing of goods or services in a pending use-based application, deserve any consideration on the fraud issue?

4. Should the declaration form be changed to say that the applicant verifies the listing of goods and services, except that applicant retains the right to correct any errors?

5. What evidence would overcome the rebuttable presumption of no bad intent?

6. Would an applicant who does not speak English be more likely to avoid a fraud ruling by proving innocent error than an English-speaking applicant?

7. Why deem precedential a ruling in which only two of the three judges agree on the parameters of the fraud doctrine?

8. Rather than issue broad pronouncements regarding correction of an erroneous declaration, should the panel members, and particularly Judge Walsh, have confined their rulings to the actual facts at hand?

9. If discovery reveals that the original error was not deliberate but was reckless, would that overcome the rebuttable presumption, or would that be fraud?

10. Does it make sense that correction of an error one day before publication eliminates fraud, but if the correction is made two days later, applicant is deemed to have committed fraud?

Text Copyright John L. Welch 2008.

Precedential No. 27: Correction of Error in Goods Prior to Publication Creates Rebuttable Presumption of No Fraud, Says TTAB

In its latest fraud ruling, the TTAB has addressed the vexing issue of whether fraud is avoided if an applicant corrects a false statement as to the goods or services in a use-based application before the application is published. The panel majority ruled that amending an application to correct an erroneous identification of goods, prior to publication, creates a rebuttable presumption that the applicant did not commit fraud on the PTO. The panel also ruled that a genuine issue of material fact existed as to whether the statement of use was false. In a concurring/dissenting opinion, Judge Walsh expressed a much broader view. He would have granted summary judgment sua sponte to University Games because, in his view, timely correction of an error "before registration and before any actual or threatened challenge to the application/registration" [sic] should completely defeat any fraud claim. University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465 (TTAB 2008) [precedential].


Opposer University Games filed an opposition to registration of the mark 20Q for an on-line computer game. Applicant 20Q.net sought summary judgment on its counterclaim, requesting cancellation of the Opposer's asserted Supplemental Registration for the mark TWENTY QUESTIONS for a board game, on the ground that University Games had committed fraud on the PTO when it filed the application

University's original use-based application listed "Board games, t-shirts, and supporting promotional materials including videos and paper products." When the Examining Attorney objected to this identification of goods, in part because they fell in more than one class, University restricted the goods to just board games.

20Q.net seemed to learn through discovery that University had used the TWENTY QUESTION mark only on board games, and not on t-shirts or promotional materials, and it therefore cried "fraud!" University argued that its original identification was not false, because it had distributed t-shirts and promotional materials bearing the mark at trade fairs.

The Board found that genuine issues of material fact existed regarding University 's intent to deceive. "As often stated by the Board, factual questions involving intent and goods faith are particularly unsuited to disposition on summary judgment."

In any case, the Board held that:

"the fact that Opposer amended its identification of goods during ex parte prosecution constitutes [sic] a rebuttable presumption that opposer lacked the willful intent to deceive the Office."

The Board cited its dictum in Hurley Int'l LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007), which in turn cited Universal Overall Co. v. Stonecutter Mills Corp., 154 USPQ 104 (CCPA 1967), for the proposition that a misstatement as to goods and services does not rise to the level of fraud if amended prior to publication.

Here, the Board found a "genuine issue of material fact as to the nature of the use registrant made of its mark on t-shirts and promotional materials prior to filing its application to register." Even assuming such use was insufficient, "applicant has failed to adduce facts .. that rebut the presumption of no intent to commit fraud in view of registrant's amendment of its application during examination ...."

Judge Walsh concurred in part and dissented in part. He would have the Board grant summary judgment to University:

"I would find for opposer because, before registration and before any actual or threatened challenge to the application/registration, opposer amended its application to correct the false statement regarding opposer's goods. *** In my view, such corrective action should preclude a fraud claim: (1) because the action effectively negated the intent to establish fraud, and (2) because the allegedly false statement, once deleted, was not material to the Office's later approval of the application.

This approach is not only consistent with the Board's longstanding policy disfavoring fraud claims, but it provides greater clarity and certainty for applicants and registrants. It would also encourage applicant to correct errors promptly. It provides a bright line and a safe harbor for applicants who are proactive in correcting errors."

Judge Walsh found this approach to be a logical extension of Universal Overall to cover both use-based applications and ITU applications, as long as correction is made prior to registration or any challenge to the pending application.

TTABlog comment: The Universal Overall case is not one in which an applicant listed five goods but had actually used the mark on fewer than five. It was a case in which, at the request of the Examining Attorney and in light of the specimens of use, the applicant amended the goods from clothing to textile fabrics. In other words, the goods had merely been "misstated" or misdescribed.

Thus in neither Universal Overall nor this case did the applicant fail to use the mark at all on some of the listed goods. The Board's use of Universal Overall as a springboard to some broader ruling on whether any erroneous statement in an application may be corrected prior publication to avoid fraud, is a jump in logic that deserves serious scrutiny.

Oh, and by the way, that verification that the applicant must sign when filing a use-based application? Don't worry about it. It's probably not all that important anyway.

Wouldn't it make more sense to require the applicant to come forward with an explanation for the "error" in its verification, rather than presume that the error was innocent? [Here, and in Universal Overall, there was an explanation for the error.] That would at least provide an incentive to the applicant to get it right the first time.

Text Copyright John L. Welch 2008.

Wednesday in Berlin

(click on photo for larger image)

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

Fraud was a major topic of discussion at INTA Berlin after yesterday morning's presentation. Non-US attorneys and agents who may not fully understand the use-based trademark regime that exists in the United States, are trying to come to grips with the problem. And so it seems like a good time to re-post this article. A pdf version may be found here.


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


I. Fraud for Thought

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

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

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

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


II. Is your intention bona fide?

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

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

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

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

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

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

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

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

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

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


III. Testifying in the USA?

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

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

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

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

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

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

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

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

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


IV. Conclusion

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

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

TTABlogger Survives Monday at INTA Berlin

Two highlights from Monday at INTA: TTAB Chief Judge Sams pointed out a new and important, precedential fraud decision (Opposition No. 91168142), which I shall review in a day or two. And the fifth annual "Meet the Bloggers" event came off without a hitch. Congratulations to John Egbert (center below) and Jeremy Craft (right) for appearing at all four "Meet the Bloggers," from San Diego to Toronto to Chicago to Berlin.

.

TTABlogger Arrives at INTA Berlin

Blogging will be light this week. Mostly photos, I suspect. Unless the TTAB comes up with a good one.



Hotel D.O.M.I.C.I.L..

Mueller's Bests Barilla in TTAB 2(d) Food-Fight Over "AMERICA'S FAVORITE PASTA"

The Italian company, Barilla, was foiled in its attempt to register the mark BARILLA - AMERICA'S FAVORITE PASTA for pasta [AMERICA'S FAVORITE PASTA disclaimed]. The Board sustained a Section 2(d) opposition brought by the successor to Mueller's, finding Barilla's mark likely to cause confusion with Opposer's common law mark AMERICA'S FAVORITE PASTA for the same goods. American Italian Pasta Co. v. Barilla Alimentare S.p.A., Opposition No. 91161373 (May 13, 2008) [not precedential].


The simmering battle between Mueller's and Barilla over the mark AMERICA'S FAVORITE PASTA finally came to a boil before the TTAB. Newcomer Barilla had become the highest selling brand of pasta in the United States by the early 2000s, which motivated Barilla to seek registration of the subject mark. But Mueller's opposed, claiming rights to the mark going back to at least 1989.

Opposer admitted that the phrase "America's Favorite Pasta" is not inherently distinctive. Consequently, Opposer's claim of priority "turns upon opposer's demonstrating that this term had acquired distinctiveness prior to June 18, 2002, when applicant filed its intent-to-use application."

Barilla contended that "American's Favorite Pasta" is incapable of acquiring distinctiveness as a trademark, but the Board disagreed. Unlike the phrase BEST BEER IN AMERICA, which was deemed so highly laudatory and descriptive as to be incapable of acquiring distinctiveness, "America's Favorite Pasta" is not a common phrase used descriptively by others. Furthermore, the "word 'Favorite' in the context of this phrase cannot be said to be a clear claim of superiority." In addition, Opposer submitted dozens of third party Supplemental Registrations for marks containing the identical construction "America's Favorite ...."


The "critical and hotly contested" issue before the Board was whether Opposer established acquired distinctiveness prior to Barilla's filing date. Reviewing the "voluminous" evidence, the Board sided with Mueller's, even while recognizing that Opposer had not shown use of "America's Favorite Pasta" as a stand-alone brand.

"For good or ill, at the time applicant filed this application, opposer and its predecessors in interest had spent more than 135 years building the goodwill of a branding image tied to the 'American-ness' of the Mueller's brand of pasta. Evidence of this fact is not tied to extensive media advertising, but is tied first and foremost to the packaging on more than a hundred million pounds of pasta a year, and supported by aggressive coupon campaigns distributing many millions of coupons to markets throughout Muellerland."

Applicant's branding image, on the other hand, "has been linked to the continuing perception that truly authentic pasta is associated with its Italian roots." Since arriving in the USA in 1995, Barilla, "through its pasta promotion and pasta product packaging - adorned in red, white and green, the colors of the Italian flag - has unapologetically embraced its Italian heritage. In fact, applicant has a federal trademark registration for its own long-used tag-line, ITALY's #1 PASTA."


Noting that product differentiation in this fiercely competitive field may turn on subtle nuances, the Board was convinced "that opposer has strengthened an American-themed brand identity that Mueller's owners ha[ve] been building for more than 130 years, and which should not be subject to taking by the new market leader - whose success in this market has been built on a very different brand-identity."

Having found that Opposer has priority, the Board didn't noodle around before reaching the conclusion that confusion between the marks in question is likely. In short, it observed that consumers who see the phrase "Barilla-America's Favorite Pasta" are likely to assume that there is some relationship between Mueller's and Barilla.

The Board therefore sustained the opposition.

Text Copyright John L. Welch 2008.

TTAB Affirms Surname Refusal of "HARRINGTON OAK" for Flooring

Applicant Mannington Mills was floored by the PTO's Section 2(e)(4) refusal of the mark HARRINGTON OAK for "oak floor boards; oak wooden flooring" [OAK disclaimed]. The Board affirmed the refusal, agreeing with Examining Attorney Monique C. Miller that the mark is primarily merely a surname. In re Mannington Mills, Inc., Serial No. 78783771 (April 22, 2008) [not precedential].


The PTO relied upon U.S. Census Bureau data showing that "Harrington" ranks 478th in terms of surname frequency, and that 0.024% of the population has that surname. A white pages website listed more than 300 Harringtons, and the People Finder database contained 30,887 telephone listings for that surname. Seven third-party Harrington registrations reside on the Supplemental Register or under 2(f) on the Principal Register. The PTO also submitted website pages referring to former Detroit Lions quarterback Joey Harrington, professional golfer Padraig Harrington, and actor Pat Harrington.

Applicant submitted various items showing use of "Harrington" as the name of a font, as the name of towns in Delaware, New Jersey, Maine, and Washington, as streets in Teaticket, Massachusetts and in the Bronx, and as a type of jacket. It also provided three third-party registrations in which the word "Harrington" was not disclaimed.

The Board applied its standard surname test found in In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995). Pointing to the statistical proofs, it first found that HARRINGTON is "not a rare surname." In addition to the statistics, it was impressed that celebrities such as Joey Harrington, Padraig Harrington, and Pat Harrington "are subjects of news stores appearing in newspapers throughout the country." [TTABlog comment: what does that have to do with the surname's rareness?]

Next, it noted that there was no evidence that anyone connected with applicant has that surname.

Thirdly, the Board considered other meanings of "Harrington." It observed that the word has no dictionary meaning and it concluded that the primary meaning of HARRINGTON is that of a surname: "There is no persuasive evidence in the record that indicates any significant consumer recognition and association between HARRINGTON and any geographical association, font, or any other item other than a surname."

Finally, as to the fourth plank in the Benthin platform, whether the mark has the "look and feel" of a surname, the Board pointed out that this is a highly subjective factor. It promptly concluded that HARRINGTON "has the clear look and feel of a surname."

The addition of the word "oak" has no trademark significance, "and, in fact, emphasizes that HARRINGTON is a surname by engendering the commercial impression of oak flooring offered by or designed by an individual named Harrington."

Considering all the evidence, the Board laid the wood to Applicant by affirming the 2(e)(4) refusal to register.

TTABlog note: For a criticism of the TTAB's current surname test, see Section V of the article "The TTAB in 2007: Rules, Rulings, and Repercussions", which launches off from Judge Seeherman's concurring opinion in In re Joint-Stock Company "Baik", 84 USPQ2d 1921 (TTAB 2007) [TTABlogged here].

Text Copyright John L. Welch 2008.

TTAB Says "No Way" to "JOSE," Finds it Confusingly Similar to "JOSE CORTEZ" for Tequila

Applicant Tequila Cuervo, owner of the mark JOSE CUERVO, was foiled in its attempt to register the mark JOSE for tequila and non-alcoholic mixes for use with tequila. The Board sustained Opposers' 2(d) opposition, finding the mark likely to cause confusion with the mark JOSE CORTEZ, registered for tequila. Chatam International Incorporated and 750 ML, LLC1 v. Tequila Cuervo La Rojena, S.A. de C.V., Opposition No. 91170109 (April 28, 2008) [not precedential].


The critical issue was, of course, the similarity or dissimilarity of the marks. Applicant argued that Opposers' mark JOSE CORTEZ is a unitary mark and that, because JOSE is a common name, the CORTEZ portion renders the mark readily distinguishable from the mark JOSE. According to Applicant, if JOSE calls to mind another mark, it will be Applicant's JOSE CUERVO mark, which, Applicant contended, is a well-known mark in this country.

Applicant further contended that multiple third-party registrations for marks containing the name JOSE in the alcoholic beverage field establish that consumers will look to the remainder of the marks, rather than the word JOSE, to distinguish the sources of the goods.

The Board found that Applicant's ownership of the JOSE CUERVO mark was of little probative value, and moreover that Applicant did not establish that JOSE CUERVO is a famous mark in connection with tequila. The third-party registrations show only that JOSE is a common term in marks for alcoholic beverages, and that additional matter in the marks serves to distinguish those marks.

"The record contains only two entities, applicant and opposers, owning registered marks for tequila that are names beginning with JOSE: JOSE CUERVO and JOSE CORTEZ, respectively. As such, the mark JOSE is equally likely to be perceived as a shortened reference to Opposers' JOSE CORTEZ tequila as it is to applicant's JOSE CUERVO tequila products."

Finally, the Board distinguished two cases cited by Applicant in which the Board found no likely confusion, one involving CRISTAL and CRYSTAL CREEK for champagne and wine, and the other involving FRIAR JOHN and LONG JOHN for whiskey. As to the first, the marks had "very different connotations," and in the second, the different first words in the marks also gave "very different connotations" to the marks.

"In our case, there is no such distinction in connotation - both marks are names, one is a first name and the other is the same first name with a surname. Applicant's mark has no additional term, such as CUERVO, to distinguish it from opposers' mark."

The Board sustained the opposition.

TTABlog comment: What if Applicant had produced evidence of the fame of its JOSE CUERVO mark, so that most, or even a large majority, of consumers would perceive JOSE as a shortened reference to JOSE CUERVO? Would that change the outcome here? What if survey evidence showed that consumers never heard of JOSE CORTEZ, and that the mark JOSE brought to mind either JOSE CUERVO or was perceived as a totally new brand of tequila?

Text Copyright John L. Welch 2008.

TTAB Summary Judgment: Applicant Admittedly Was Not the Owner of the Mark at Filing

Applicant Tracy Artman filed an application to register the mark TRACY'S TREATS NATURAL PRODUCTS FOR REMARKABLE SKIN for various soaps and related products. Unfortunately, she admitted in her answer to Opposer's amended notice of opposition that Tracy's Treats, Inc. was the owner of the mark. She is the President of Tracy's Treats Inc., but filed the application in her name. Opposer successfully moved for summary judgment on the ground that her application is void ab initio because Tracy Artman was not the owner of the mark when the application was filed. Tracie Martyn, Inc. v. Tracy Artman, Opposition No. 91173009 (May 1, 2008) [not precedential].


The Board observed that when an application is filed in the name of the wrong party, the defect cannot be cured by amendment or assignment. However, if the application is filed by the owner but a mistake is made in the manner in which applicant's name is set forth, that may be corrected.

37 C.F.R.§ 2.71(d) The applicant may amend the application to correct the name of the applicant, if there is a mistake in the manner in which the name of the applicant is set out in the application. The amendment must be supported by an affidavit or declaration under § 2.20, signed by the applicant. However, the application cannot be amended to set forth a different entity as the applicant. An application filed in the name of an entity that did not own the mark as of the filing date of the application is void.

Section 1201.02(c) of the TMEP provides examples of correctable and non-correctable errors in the identification of the applicant. If there is an inconsistency -- i.e., if the application names an individual as the owner in one place, and a corporation in another -- the application may be amended to clarify the inconsistency. However, here the example of non-correctable error applies:

President of Corporation Files as Individual. If the president of a corporation is identified as the owner of the mark when in fact the corporation owns the mark, and there is no inconsistency in the original application as between the owner name and the entity type (such as a reference to a corporation in the entity section of the application), the application is void as filed because the applicant is not the owner of the mark.

Here, there was no inconsistency in the application. There was no reference to the company and no mention that Tracy was an officer of the company. Accordingly, the application is void ab initio, and judgment was entered summarily in favor of Opposer.


However, the Board then noted that Opposer might wind up opposing a new, properly filed, application for the mark at issue. So, in the interest of judicial economy, the Board allowed Opposer thirty days to decide whether it wants to proceed with this opposition and seek a determination on the merits of its Section 2(d) claim, or withdraw that claim as moot.

TTABlog comment: I find it strange that the Board would allow this proceeding to continue when Tracy Artman is the wrong party. She is not the owner of the mark at issue. Is she expected to defend the opposition? Should her company be substituted for her as the defendant? Must the company consent to the substitution?

In support of this procedural ruling, the Board cited a case in which a registration involved in a cancellation proceeding had inadvertently expired, but the petitioner was allowed to proceed with the cancellation anyway. But there, at least the correct entity was already the party defendant and was the owner of the mark in question.

Text Copyright John L. Welch 2008.

Finding PTO Evidence Inadequate, TTAB Reverses 2(a) and 2(d) Refusals of "HEINEKEN" for Meat Juices

Canadian Robert V. Marcon has done it again. In March 2008, the Board reversed a Section 2(a) refusal of his application to register L'OREAL PARIS for aloe vera drinks because the PTO failed to prove that the French company of that name "is of sufficient fame or reputation to consumers in the United States" that a false connection would be presumed." (TTABlogged here). This time he not only knocked out a Section 2(a) refusal of the mark HEINEKEN for "meat juices," again because of the PTO's inadequate proof, but he also overcame a Section 2(d) refusal. In re Robert V. Marcon, Serial No. 78288366 (April 28, 2008) [not precedential].


Section 2(a): The PTO submitted only the following evidence in support of its refusal: (1) two sets of GOOGLE brand search engine "hit list" result pages; and (2) printouts from the Heineken brewery website. Based on this "scant" evidence, the Board was unable to find "that the HEINEKEN name is of sufficient fame that a connection with Heineken brewery will be presumed."

"Hit list" submissions are of little probative value because insufficient text is available "to determine the nature of the information, and, thus its relevance." Without actual printouts of the web pages, the Board cannot examine "the content and context within which the term 'Heineken' is being used."

As to the printouts from the Heineken website, the information contained therein was of "little consequence" to the issue of the fame of the Heineken name. Moreover, there is a "strong likelihood" that Heineken might engage in "puffery" in stating the importance or fame of the Heineken brewery. Therefore the Board gave this evidence "limited weight in view of the source of the information."

In reversing the 2(a) refusal, the Board noted that "a different result might have been possible" had it been "privy to a fuller record."

Likelihood of confusion The Board focused on one of the 10 registrations cited by the Examining Attorney, namely, for HEINEKEN for "beers and malt beverages." It found its analysis "'inhibited' by the lack of any clear definition of applicant's goods, i.e., 'meat juices.'"

The Examining Attorney feebly asserted that third-party registration evidence established that "a single owner provides meats, meat extracts and beer." Also, "restaurants, such as microbreweries of beer and lager also provide meat dishes that may be prepared with beer." Finally, she pointed to Internet excerpts "showing that that beer is used as a marinade to tenderize and season meats."

The Board was not impressed. As to the registrations covering beer and meat products, they are all owned by foreign entities and are based on Section 44(e) with no use in commerce. Therefore, that have no probative value here.

The fact that a restaurant serves beer and meat dishes is "wholly irrelevant to establishing that beer is somehow related to 'meat juices.'" And the Internet evidence at best "established a connection between beer and meat, albeit a tenuous one."

Finding no evidence on which to conclude that "purchasers are likely to assume or expect that beer (and malt beverages) and 'meat juices' originate from a single source," the Board found the second duPont factor to be dispositive, and it reversed the 2(d) refusal.

TTABlog query: What do you think the odds are that this mark will clear the opposition stage?

Text Copyright John L. Welch 2008.

TTAB Overturns PTO Refusal, Finds "LAY'S GET YOUR SMILE ON" to be Unitary Mark

Finding that Frito-Lay's mark LAY'S GET YOUR SMILE ON!, as it appears on the specimen of use (shown immediately below) is a unitary mark, the Board reversed the PTO's refusal to register. The Examining Attorney had maintained that the applied-for mark actually consists of two marks, LAY'S and GET YOUR SMILE ON! In re Frito-Lay North America, Inc., Serial No. 78555200 (May 2, 2008) [not precedential].


In the Final Refusal, the Examining Attorney made the strange argument that the fact that Frito-Lay had registered the mark in the design form shown below (with the same specimen of use) was evidence that "applicant recognizes this application contains two separate marks."

"The question in this case is whether the applied-for mark is a registrable unitary composite mark engendering a unique and distinct commercial impression. *** Applicant cites to cases involving mutilation; however, the issue in this case is the converse of the situation where the applied for mark is missing integral subject matter as show on the specimen...."

The Board observed that this question "is resolved by comparing the specimens to the drawing and our analysis is necessarily subjective."

"On the back of the packaging, the LAY's design appears immediately above the phrase GET YOUR SMILE ON! The phrase is curved up at the ends like a smile and it both follows the contour of the circular LAY's design and it is in close proximity thereto. Therefore, we conclude that the commercial impression fostered by applicant on the specimen of use is that of a single unitary mark."

Therefore, the Board reversed the refusal.


Text Copyright John L. Welch 2008.

Precedential No. 26: Specimens of Use Display Web Address, Not Service Mark Use

Los Angeles lawyer Vicki Roberts lost her case before the TTAB when she appealed the PTO's refusal to register her alleged mark irestmycase (in non-standard character form) for legal services. The Board agreed with Examining Attorney Steven W. Jackson that, as it appears on Applicant's specimens of use, irestmycase fails to function as a service mark under Sections 1, 2, 3, and 45 of the Trademark Act. In re Vicki Roberts, 87 USPQ2d 1474 (TTAB 2008) [precedential].


The Board observed that Applicant's specimens did not show use of irestmycase per se. The originals specimens did not show use of that designation at all, and her substitute specimens showed the designation "imbedded in her Internet website address, www.irestmycase.com." Finding In re Eilberg, 49 USPQ2d 1955 (TTAB 1999), to be controlling, the Board pointed out that:

"In the case before us, irestmycase.com appears along with applicant's other contact information on her letterhead, and is specifically identified as one of her Internet website addresses or 'legal service portals' by means of which 'she can be reached' on her Internet message board. However, in neither [substitute] specimen is irestmycase used at all, or www.irestmycase.com used to indicate the source of applicant's legal services. Rather, such designation as it appears on her substitute specimens simply serves as an address by means of which one may reach applicant's Internet website."

The Board noted that irestmycase could serve as a source identifier, if used in a way that the designation would be perceived as a mark. But Ms. Roberts failed to do that.


And so the Board affirmed the refusal to register.

Text Copyright John L. Welch 2008.

"MEET THE BLOGGERS IV" Set for May 19th in Berlin

Jeremy Phillips of the IPKat blog has taken the laboring oar in planning MEET THE BLOGGERS IV (or if you prefer, "Treffen Sie die Bloggers IV") for the evening of Monday, May 19, from 8:30 to 10:30 at the top of Potsdamer Platz 1, 10785 Berlin. All are welcome!


The first "Meet the Bloggers" was held in San Diego in 2005. Marty Schwimmer and yours truly were the bloggers to be met.

MEET THE BLOGGERS - San Diego 2005(Click on photo from larger picture)
The roster of expected blogger attendees at the Berlin event has grown considerably, both in number and in geographical scope:

• Afro-IP
• Catch Us If You Can !!!
• Class 46
• IMPACT
• IP Finance
• IPEG
• IPJUR
• IPKat
• Lucentinus
• Naked Law
• Petit Musee des Marques
• Rick's IP Blog
• Rychlicki.net
• Seattle Trademark Lawyer
• SOLO IP
• Spicy IP
• Trademark Blog
• Transblawg
• TTABlog

If you are planning to attend, please send an e-mail here to this year's host sponsor, Olswang.

.

Precedential No. 25: TTAB Affirms Refusal of Mark Having a Phantom Element

Finding that Applicant Primo Water's proposed mark [shown immediately below] contains a phantom element ("namely, text and graphic material or a combination thereof that are identical but inverted copies of each other"), the Board affirmed a refusal to register the mark under Section 1(a)(1) and Rule 2.52. In re Primo Water Corp., 87 USPQ2d 1376 (TTAB 2008) [precedential].


Applicant sought to register, for "bottled drinking water," a mark that it described as follows:

The mark consists of the placement and orientation of identical spaced indicia on a water bottle having a handle, namely the placement of indicia on one side of the handle and the placement of identical indicia on the other side of the handle in inverted orientation. The indicia can be text, graphics or a combination of both. The dotted outline of the bottle and the indicia is not a part of the mark but is merely intended to show the placement of the mark. The dotted outline of Applicant’s logo does not constitute a portion of the trademark of this application but instead merely illustrates indicia.

The Board noted that an application "must be limited to only one mark." A mark that contains a changeable or "phantom" element is considered to be more than one mark. The registration of such marks "does not provide proper notice to other trademark users, thus failing to help bring order to the marketplace and defeating one of the vital purposes of federal trademark registration." (quoting In re International Flavors and Fragrances Inc., 51 USPQ2d 1513 (Fed. Cir. 1999)).


Applicant argued that "the relative placement and orientation of identical indicia on a bottle of drinking water -- not the indicia itself -- can constitute a protectable trademark. The Board disagreed: "applicant is, in effect, attempting to obtain exclusive rights to all labels and the like that would be identical inverted versions of each other."

"In fact, because the placement of a label or indicia on opposite sides of a bottle used in a water cooler would be a normal method of identifying the source of the bottled water, it is the indicia itself, and the fact that they are identical but inverted copies of each other, that must be considered a significant part of the mark. In other words, the (varying) indicia must be viewed by consumers before they can perceive the repetition and inversion elements of applicant's mark."

The Board found this case similar to In re Upper Deck Co., 59 USPQ2d 1688 (TTAB 2001), which involved an application to register a hologram device for trading cards, regardless of the size, shape, location, or content of the hologram. The Board found that Upper Deck was attempting to register an idea or concept, rather than a single mark.

Here, the Board observed, Applicant Primo is also attempting to register a concept: "the use of indicia on a water bottle that will be in an upright position on the bottle whether the bottle is sitting on its base, prior to use, or when the bottle is upended and placed in a water cooler."

The Board concluded that, "[b]ecause the text and graphic material or a combination thereof is a changeable element, the application is for more than a single mark, and thus registration is prohibited pursuant to 15 U.S.C. Sec. 1051(a)(1) and Trademark Rule 2.52."

TTABlog comment: Not all changeable elements disqualify a mark from registration. See, e.g., In re Dial-A-Mattress Operating Corp., 57 USPQ2d 1507 (Fed. Cir. 2001) [(xxx)-M-A-T-T-R-E-S registrable where xxx is an area code. Also note that the mark THE TOP TEN TTAB DECISIONS OF 20** was registered by yours truly in 2005, the symbols ** representing "the last two digits of the year being reviewed." The key to these registrations is that the variable element has a limited number of possibilities.

Text Copyright John L. Welch 2008.

DC Circuit Rules TTAB Party May Raise New Issues in 21(b) Civil Action for Review

The U.S. Court of Appeals for the District of Columbia Circuit has reversed in part a district court ruling in a civil action under Lanham Act Section 21(b), seeking review of the TTAB's decision in Aktieselskabet af 21. November 2001 v. Fame Jeans, Inc., Opposition No. 91163436 (January 30, 2006). [TTABlogged here]. The TTAB had dismissed the Danish company's Section 2(d) opposition to registration of the mark JACK & JONES for clothing because the Canadian applicant, Fame Jeans, had priority. Neither company had used the mark in the USA, but the Canadian company had the earlier filing date. In the civil action, Opposer added several new grounds for its opposition, but the district court dismissed the complaint, deciding that the new grounds were waived because Opposer did not present them before the TTAB, and further that the TTAB had correctly ruled on the Section 2(d) claim. The court of appeals reversed, holding in part that the new claims were properly before the district court. Aktieselskabet af 21. November 2001 v. Fame Jeans, Inc., 86 USPQ2d 1527 (D.C. Cir. 2008).


Opposer attempted to add two claims in the district court action: (1) that Fame's application was void ab initio because Fame lacked a bona fide intent to use the mark, and (2) that Fame had misrepresented its intent to the PTO. The D.C. Circuit faced this question: "whether a party may ... introduce new issues not brought before the TTAB." The court joined "several of our fellow circuits in allowing new issues in Section 21(b) actions. See, e.g., Pioneer Healthcare, Inc., 75 F.3d 75, 80 (1st Cir. 1996); CAE, Inc. v. Clean Air Eng'g, Inc., 267 F.3d 660, 674 (7th Cir. 2001)."

The court observed that under Section 21(b) the district court is to decide "as the issues in the proceeding may require." The word "proceeding" refers to the district court action. "Thus, in a Section 21(b) action, a district court should decide on the issues before it, including new issues."

The court then looked at Opposer's 2(d) claim. It agreed with the TTAB that Opposer could not establish any constructive use via Section 44 prior to Fame's Section 1(b)filing date. However, it ruled that Opposer had "adequately pleaded actual use," noting that technical trademark used is not required. Citing the CAFC's Niagara decision, the Board stated that "[a]n opposer may rely on myriad forms of activities besides sales themselves, including, among others, regular business contacts, after-sales services, advertising of various forms, and marketing." The court ruled that Opposer's complaint gave "fair notice of a claim to analogous use."

"Simply put, the allegation of marketing in the United States, together with the inference of public association, is enough to give Fame fair notice of what it must contest. No more is required of a complaint."

As to Opposer's lack of bona fide intent claim, the court again found that Opposer had adequately pleaded the claim. It noted that "an opposer may defeat a trademark application for lack of bona fide intent by proving the applicant did not actually intend to use the mark in commerce or by proving the circumstances at the time of filing did not demonstrate that intent."

Finally, the court affirmed the dismissal of Opposer's common-law fraudulent misrepresentation count on the ground that Opposer "did not claim to have relied on Fame's supposedly false statement." [TTABlog note: the appellate court did not treat this claim as the usual fraud-on-the-PTO claim that we are used to; it cited only one precedent from the local D.C. court, and none of the TTAB fraud precedents].

And so, the district court judgment was reversed in part and affirmed in part.

TTABlog comment: Under Section 21(b), if the defendant resides in a foreign country, the United States District Court for the District of Columbia shall have jurisdiction. Remembering the TTAB's recent LASALLE decision [TTABlogged here], in which the successful applicant was a French trademark company specializing in the "revival" of old trademarks, would you consider bringing a civil action under Section 21(b) in the District of Columbia federal court in order to raise the issue of bona fide intent?

Text Copyright John L. Welch 2008.

TTAB Posts May 2008 Hearing Schedule

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


May 6, 2008 - 10 AM: In re Vector Products, Inc., Serial No. 76570562 [Section 2(e)(1) mere descriptiveness refusal of PROFESSIONAL GRADE for jump start cables, power invertors, flashlights, and spotlights].

May 6, 2008 - 2 PM: Mahir Gida Sanayi Ve Ticaret Anonim Sirketi v. Merter Helva Sanayi Ve Ticaret Anonim Sirketi, Cancellation No. 92044273 [ Priority dispute over the mark KOSKA for various food products].


May 15, 2008 - 11 AM: In re Premier Trust, Inc., Serial No. 76644705 [Section 2(e)(1) mere descriptiveness refusal of PREMIER TRUST for financial and investment services].


May 15, 2008 - 2 PM: In re Allen, Serial No. 78240344 [Section 2(e)(1) mere descriptiveness refusal of LIFETIME WARRANTY for clothing].

May 21, 2008 - 2 PM: In re Hyatt, Serial No. 76611740 [Section 2(d) refusal of IQ LOCK for electric, electronic, and electromechanical locks and lock cylinders and related goods, in view of the registered mark ASSA TWIN IQ, for metal, electric, electronic, and electromechanical locks and related goods].


May 28, 2008 - 2 PM: In-N-Out Burger v. Rarick, Opposition No. 91161044 [Section 2(d) opposition to registration of QUALITY YOU CAN CRUNCH (Stylized) for dried fruit, based upon the registered mark QUALITY YOU CAN TASTE for restaurant services].


Text Copyright John L. Welch 2008.

Have TTAB Judges Been Appointed Unconstitutionally?

In a 2007 article (here) in the Patently-O Patent Law Journal, Professor John F. Duffy of George Washington University Law School observes that that there may be a serious problem with the way administrative judges of the Board of Patent Appeals and Interferences (BPAI) have been appointed since the year 2000. In legislation enacted in 1999, the Director of the USPTO was given the power to appoint BPAI judges. That, according to Professor Duffy, may run afoul of the Appointments Clause of the U.S. Constitution (Art. II, Sec. 2, cl.2).


The Constitution requires that "inferior officers" be appointed by no one lower than "Heads of Departments." According to Duffy, administrative patent judges qualify as "inferior officers," but a number of BPAI judges may have been appointed after 2000 by the Director of the USPTO, who arguably is not the "head" of a department.

The argument that Professor Duffy makes regarding BPAI judges seems to apply to TTAB judges as well. The same legislation (The Intellectual Property and Communications Reform Act of 1999, 113 Stat. 1501 et seq.) that gave the Director of the USPTO the power to appoint BPAI judges also gave him or her the power to appoint TTAB judges. (See Section 4716 and see 15 U.S.C. Sec. 17(b)). Prior to 1999, the Secretary of Commerce had that power.

At his Patently-O blog, Dennis Crouch reported (here) on a recent Petition for Writ of Certiorari filed with the Supreme Court (copy here) by Translogic Technology, Inc., raising a challenge to a BPAI decision on the ground that one of the Administrative Patent Judges was unconstitutionally appointed.

Looking at the roster of TTAB judges (here), it appears that 10 of the 20 judges were appointed after 2000, when the new legislation took effect. Trademark practitioners will surely want to keep an eye on the pending petition for certiorari while pondering its possible impact on our favorite tribunal.

Text Copyright John L. Welch 2008.