Monday, June 30, 2008

TTABlog Quarterly Index: April 2008 - June 2008

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. Note also the new Babelfish translation box that appears in the column on the right (scroll down). You may now translate the postings into any of eight languages.

ICC Berlin

Section 2(a) - False Connection:

Section 2(d) - Likelihood of Confusion:

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

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

Section 2(e)(5) - Functionality:

Abandonment:

Bona Fide Intent:

Failure to Function:

Fraud:


Genericness:

Ownership:

Phantom Mark:

Procedural Issues:

Res Judicata/Collateral Estoppel:

Single Artistic Work:

Specimens of Use/Drawing:

Use in Commerce:

CAFC Decisions:

Leo Stoller:



Other:
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Text and last two photographs copyright John L. Welch 2008.

posted by John L. Welch @ 6/30/2008   0 comments

Friday, June 27, 2008

TTAB Cancels "JONATHAN LOGAN" Clothing Registrations: Trade Name Use is not Trademark Use

Finding no evidence that Respondent used the trademark JONATHAN LOGAN for clothing since 2002, the Board granted a petition for cancellation of two registrations for that mark (one in block letters, the other in the stylized form shown below). Although Respondent One Step submitted documents displaying use of the trade name "Jonathan Logan," the Board found no basis to infer that "clothing sold by the 'Jonathan Logan' company necessarily was branded with the JONATHAN LOGAN trademark." 200 Kelsey Associates, LLC v. Delan Enterprises Inc. and One Step Up, Ltd., Cancellation No. 92044571 (June 11, 2008) [not precedential].


Petitioner 200 Kelsey filed an I-T-U application to register JONATHAN LOGAN for women's clothing, but was refused registration under Section 2(d) in light of the two registrations owned by Respondent Delan. Petitioner then filed a petition for cancellation on the ground of abandonment.

Delan assigned its rights to One Step on April 6, 2006. In response to Petitioner's interrogatories regarding use of the marks from 2000 onward, One Step stated, on behalf of respondents, that "it did not know the extent of the sales revenues and advertising expenditures associated with JONATHAN LOGAN brand clothing."

The Board found that, based upon respondents' interrogatory answers, Petitioner had made a prima facie case that there had been three consecutive years of nonuse prior to the 2006 assignment.

"Because respondents were unaware of the sales or advertising figures prior to the 2006 assignment, petitioner could not introduce into evidence respondents' annual sales and advertising records in connection with the mark. Moreover, there is no explanation why respondents do not have such information."

The next question was whether Respondents "proved that they did not discontinue use of the mark." Respondents introduced a newspaper insert from the spring of 2002 that included an advertisement for a JONATHAN LOGAN suit. Other documents included buyer forms, an invoice, a purchase order, and a computer printout of vendor payment history, all identifying "Jonathan Logan" as the vendor, but none of which showed JONATHAN LOGAN used as a trademark.

"... respondents are asking us to improperly infer that any clothing sold by the 'Jonathan Logan' company featured a label displaying the JONATHAN LOGAN trademark."

The Board found no evidence of use of the JONATHAN LOGAN trademark after April 6, 2002 (the last effective day of the spring 2002 newspaper advertisement). "In other words, there is more than three consecutive years of nonuse."

The Board concluded that Respondents' contention regarding continued use "is based on the false premise that the ... documents displaying use of the 'Jonathan Logan' trade name is analogous to trademark use. As mentioned above, the problem with respondents' position is that there is no testimony or supporting evidence that every item of clothing sold by the 'Jonathan Logan' company featured the JONATHAN LOGAN trademark."

The Board therefore granted the petition for cancellation of both registrations.

TTABlog comment: Presumably, Petitioner's application to register will now move forward to publication. What happens if and when Step Up steps up and opposes on the ground of likelihood of confusion and priority? Will Step Up's "trade name" use provide it with a solid basis for blocking registration by Petitioner?

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 6/27/2008   0 comments

Thursday, June 26, 2008

Precedential No. 33: TTAB Affirms Refusal of "FREEDOM STONE" for Cornerstones as Title of a Single Work

After ruling that an amendment of Applicant's mark from FREEDOMSTONE to FREEDOM STONE was not a material alteration of the mark, the Board affirmed the PTO's refusal to register on that ground that Applicant's mark is the title of a single artistic work, namely, the cornerstone for the Freedom Tower building under construction at the World Trade Center site in New York City. In re Innovative Companies, LLC, 88 USPQ2d 1095 (TTAB 2008) [precedential].


Drawing/Specimen Issue: Applicant originally filed for the mark FREEDOMSTONE as a single word mark. Its specimen of use, however, displayed the mark as two words (see specimen above).

The Board first considered whether the mark in the drawing is a substantially exact reproduction of the mark as used on the goods. Rule 2.51(b). The Board found that it was not. However, Applicant submitted a new drawing depicting the mark as two words, and so the next question was whether, under Rule 2.72(b), the amended drawing "does not materially alter the mark."

The Examining Attorney lamely contended that FREEDOM STONE (two words) was a material alteration because "FREEDOMSTONE may present to purchasers impressions not present in the separate words. For example, the designation FREEDOMSTONE may be viewed as the word combination FREEDOMS TONE, which suggests that there is a sound of freedom related to applicant's goods. Then again, FREEDOMSTONE may be looked at as FREE DOM STONE ('Dom' being the German for dome), which suggests that applicant's goods may be used as part of such structures."

The Board found the PTO's arguments "creative" but far-fetched. It agreed with Applicant that the amended mark would not require a new search, and, referring to several Board precedents, it found that the substitute drawing is not a material alteration of the original mark.


Freedom Tower

Single Work Refusal: Applicant sought to register the mark for "building stones used as landmarks or cornerstones," but the Examining Attorney maintained that FREEDOM STONE "identifies a particular granite stone that will apparently serve as the cornerstone for the Freedom Tower that is to be erected at the World Trade Center site in New York City."

Applicant asserted that it is selling miniature replicas of the "Freedom Stone," but the PTO pointed out that Applicant is not seeking registration for souvenirs. Applicant did not submit any evidence that "it has any intention to produce any other building stones used as landmarks or cornerstones identified with the FREEDOM STONE mark."

The Board observed that it has long been held that the title of a book does not function as a trademark, and the CAFC has ruled that the title of a theatrical production is likewise not a mark. However, a mark that identifies a series of works may be registrable.

"In this case, the evidence of record indicates that there is a total of one 'Freedom Stone' building stone. It is designated as the cornerstone of the Freedom Tower building under construction in New Your City."

The Board therefore affirmed the refusal to register.

TTABlog comment: If Applicant had tried to register FREEDOM STONE for souvenirs, i.e., replicas of the FREEDOM STONE, wouldn't the term be merely descriptive or even generic?

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 6/26/2008   0 comments

Wednesday, June 25, 2008

Precedential No. 32: Double Entendre Argument Remedies "THE FARMACY" 2(e)(1) Refusal, Says TTAB

The Board fell for Applicant Tea and Sympathy's claim that The mark THE FARMACY is a double entendre and therefore is not merely descriptive of "retail store services featuring natural herbs and organic products; and on-line retail store services featuring natural herbs and organic products" (in International Class 35), and "providing integrated health services at retail locations in the nature of dietary and nutritional guidance and providing information about dietary supplements and nutrition" (in International Class 44). And so the Board reversed the PTO's Section 2(e)(1) refusal to register. In re Tea and Sympathy, Inc., 88 USPQ2d 1062 (TTAB 2008) [precedential].


The Examining Attorney argued that the mark describes the place where Applicant's services are dispensed, and the purpose of the services: "applicant sells organic herbs and products in a health and medical environment that is essentially a pharmacy with just a different phonetic spelling."

Applicant contended that the mark is "a whimsical term, as a play on the words 'pharmacy' and 'farm,' meant to connote the idea that applicant 'is selling farm fresh, natural, pure and completely unprocessed products." According to applicant, the consumer must make a "mental leap" in drawing a connection between the mark and the services.

The Board sided with Applicant. "Consumers are not likely to perceive that mark as just a misspelling but rather a play on the natural or farm-fresh characteristics of applicant's herbs and organic products used for medicinal purposes featured in applicant's services." [TTABlog query: where in Applicant's recitation of services does it say "farm-fresh" or "medicinal purposes'?]

According to the Board, Applicant's mark conveys a dual meaning, "that of the natural aspect of the goods sold by applicant and of a pharmacy." The mark is "just clever enough, being an obvious play on 'the pharmacy' and 'farm', so that the meaning or commercial impression of applicant's mark will be more than simply 'the pharmacy.'" Likening this case to one involving the mark "MufFuns" for muffins, the Board reversed the refusal.

TTABlog comment: I find it interesting that the Board never mentioned its precedential ruling in the THE GREATEST BAR case, In re The Place, Inc., 76 USPQ2d 1467 (TTAB 2005) [TTABlogged here], wherein it rejected a double entendre argument because a mark "is deemed to be a double entendre only if both meanings are readily apparent from the mark itself."

Here the double entendre in the mark THE FARMACY is recognizable only if one knows that Applicant's services are offered in a farm setting. Otherwise, THE FARMACY looks like nothing more that a case of poor spelling.

In the "MufFuns" case, the double entendre is evident from the mark itself, since the word "fun" does indeed lend a whimsical aspect to the mark. But the word FARMACY has no such whimsical meaning; only if one knows of the actual farm setting of applicant's services does the second meaning appear. Nowhere in Applicant's class 35 recitation of services is there any mention of a farm, or farm-fresh products, and in the class 44 recitation even the words "natural" and "organic" do not appear. And how do "on-line retail services" have anything to do with a "farm-setting?"

Seems to me that this is virtually the same situation as in THE GREATEST BAR: you don't get the "joke" until you visit the place.

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 6/25/2008   0 comments

Tuesday, June 24, 2008

"WWW.BOTMAG.COM ROBOT" Merely Descriptive of Robot Magazines, Says TTAB

Applicant Maplegate Media lurched into a TTABrick wall in its attempt to register the mark WWW.BOTMAG.COM ROBOT for "journals and magazines for hobbyists of robots, robotics, and computers" [ROBOT disclaimed]. Examining Attorney Hannah M. Fisher maintained that the mark is merely descriptive of the goods, and the Board agreed. In re Maplegate Media Group, Inc., Serial No. 78814834 (June 10, 2008) [not precedential].

(click on photo for larger picture)

The PTO's online dictionary evidence established that "in the context of applicant's goods ... both 'bot' and 'mag' are generally recognized and have meaning. The combination of these two abbreviations, BOTMAG, simply communicates to purchasers that the subject matter of applicant's magazines is robots, or robotics."

Applicant lamely argued that the term "botmag" does not appear in any dictionary, but the Board pointed out once again that "[A] word need not be in common use in an industry to be descriptive, and the mere fact that an applicant is the first to use a descriptive term in connection with its goods, does not imbue the term with source-identifying significance."

Of course, the "www" and ".com" portions of Applicant's mark have no trademark significance, and therefore the Board found that "the Internet address WWW.BOTMAG.COM immediately identifies a feature of applicant's goods."

Turning to the word ROBOT, Applicant's disclaimer constitutes an admission that the term is merely descriptive of the goods. Applicant weakly argued that its mark "is WWW.BOTMAG.COM ROBOT, not BOT MAG nor ROBOT MAGAZINE, and must be analyzed in its entirety. Any descriptive connotation that may be conveyed by each term on its own is obviated by combining the terms in a unitary fashion in the compound term WWW.BOTMAG.COM ROBOT." The Board was unimpressed:

"In applicant's mark, each component retains its merely descriptive significance in relation to the goods and does not create a unique or incongruous meaning. Also, applicant's mark is merely a combination of applicant's internet address, with BOTMAG providing information about applicant's goods, and the term ROBOT, which is at a minimum descriptive of applicant's goods, and, as evidenced by applicant's specimen and the first entry in the Google search results, appears to be the name opposer [sic!] uses for its magazine. We see nothing in applicant's mark – including the combination of BOT and MAG - that makes it a unitary combination of terms, and applicant has not indicated why it is unitary."

The Board concluded that Applicant had failed to overcome the PTO's prima facie case, and so it affirmed the Section 2(e)(1) refusal.

TTABlog comment: If you click on the photo of Applicant's specimen of use (above) to enlarge it, you will see that the phrase "WWW.BOTMAG.COM" appears in the upper left corner in relatively tiny print, above the large word ROBOT. Do you think that this specimen displays trademark use of the applied-for mark WWW.BOT.MAG ROBOT? I don't. But the PTO did not raise that objection.

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 6/24/2008   0 comments

Monday, June 23, 2008

On Summary Judgment, TTAB Finds "BRIDGELOAN.COM" to be Generic for Commercial Lending Services

Granting a motion for summary judgment, the Board not surprisingly found the term BRIDGELOAN.COM to be generic for "financial services, namely commercial lending services," and ordered Respondent's registration cancelled. East West Bank v. BridgeLoan Investors, Inc., Cancellation No. 92047561 (June 13, 2008) [not precedential].


News articles submitted by Petitioner demonstrated that the term "is used in the financial industry and would be perceived by the relevant public, namely potential buyers bridge loans, as a short-term loan." In addition, Petitioner submitted dictionary definitions of "bridge loan" and third-party registrations in which "bridge loan" appears in the recitation of services.

Registrant lamely argued that the term BRIDGELOAN.COM "at most, merely suggests that it is a website and that respondent provides services relating to financial services." It further contended that "there is no clear meaning of BRIDGELOAN.COM that would indicate to a potential consumer the nature of the services with which it is used."

Respondent also pointed to its ownership of a Principal Registration for the mark BRIDGELOAN INVESTORS in which "bridgeloan" is not disclaimed and for which Section 2(f) was not invoked. The Board, however, observed that "addition of the word 'investors' in the mark imbues it with a connotation that, rather than primarily describe the genus of the services, may instead merely name the target audience." In any event, the Board noted, each case must be decided on its own merits.

Citing several of its ".com" precedents, the Board ruled that :

"The separate words 'bridge' and 'loan' when joined to form a compound term, have the same meaning that common usage would ascribe to the two words used separately, and the '.com' portion does not create source-identifying significance when appended to this generic term."

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 6/23/2008   0 comments

Friday, June 20, 2008

Despite Claim that "MERROW" Means "Mermaid," TTAB Affirms 2(e)(4) Surname Refusal

Finding that three of the four surname factors support the PTO's refusal, and the fourth is neutral, the Board affirmed a Section 2(e)(4) refusal to register the mark MERROW for "toys, namely playsets for toy figures and plastic character toys; toy action figures and accessories therefor; stuffed and plush toy animals." In re Lash’s Lessons, LLC, Serial No. 78857737 (May 27, 2008) [not precedential].


Applicant made the not uncommon, but typically unsuccessful, statistical argument that "only 0.0004% and 0.001% of the people in the Lexis/Nexis ('P-Find') and the 'Long Lost People' databases, respectively, have 'merrow' as a surname." The Board agreed that MERROW is a rare surname, but pointed out that this conclusion does not preclude a Section 2(e)(4) refusal. "There is no minimum number of listings to prove that a mark is primarily merely a surname." Moreover, "given the large number of different surnames in the United States, even the most common surnames would represent but small fractions of the total population."

The second factor was neutral: no one connected with Applicant has the surname MERROW.

As to the third factor, Applicant contended that MERROW has a meaning other than as a surname because it means "mermaid." It supplied a definition from the Oxford English Dictionary of "merrow" as "mermaid," as well as an entry from Spirits, Fairies, Gnomes, and Goblins: An Encyclopedia of the Little People (1946), in which "'merrow" is defined, in relevant part, as follows:

"This is the name of the Irish Mer-people, who may also be called the Murdhuacha, Moruadh, Moruach, Muir-Gheilt, Samhghubha, or Suire. The mermaids appear as beautiful young women above the waist with pale skin, dark eyes, and long hair, but as a fish below the waist. Their mermen are ugly, with green skin, teeth and hair, but a sharp red nose and tiny, narrow eyes."

The Board, however, did not "believe that a significant number of people would recognize this non-surname meaning because it is obscure. Applicant’s own evidence shows that this meaning is associated with Irish folklore or mythology." Moreover, "negative" dictionary evidence submitted by Examining Attorney Laurie R. Kaufman showed no such definition for MERROW. In short, "Applicant certainly has not demonstrated that consumers in the United States would recognize that 'merrow' is another name for a mermaid."

Finally, as to the fourth factor, the Board agreed with the PTO that MERROW has the "look and sound" of a surname, "especially since the record shows that there are numerous individuals with the surname 'Merrow;' that such term has no readily recognized meaning other than its surname significance; and that nothing in the record indicates that MERROW would be perceived as an initialism or acronym, or a coined term."

Balancing the factors, the Board affirmed the surname refusal.

TTABlog comment: The "look and sound" factor is a bit of a joke. Here, Applcant suggested that the word MERROW had the "look and sound" of the word "marrow" rather than that of a surname. The Board brushed that argument aside and bootstrapped itself into a finding that MERROW has the look and sound of a surname based on the first and third factors.

As Judge Seeherman has pointed out several times, the "look and sound" factor really has no place in the surname analysis. See, e.g., the TTABlog posting here.

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 6/20/2008   0 comments

Thursday, June 19, 2008

Affirming 2(d) Refusal of "SMOKEYS HOUSE OF BARBEQUE," TTAB Finds Clothing and Sauce Related to Restaurant Services

Applicant Full Service Deli Distributors could not argue its way around the PTO's evidence in support of a 2(d) refusal of SMOKEYS HOUSE OF BARBEQUE for "wearing apparel, namely, shirts, T-shirts, shorts and aprons," "food preparations, namely, salad dressing, barbeque sauce, marinade, ketchup and hot sauce," and "restaurant services" ["BARBEQUE" disclaimed]. The Board found the mark likely to cause confusion with the registered mark shown below, for restaurant services [SMOKEY'S ORIGINAL RIB PIT BAR-B-QUE" disclaimed]. In re Full Service Deli Distributors, Inc., Serial No. 77084059 (June 4, 2008) [not precedential].


Applicant argued that the goods and services are "different," ignoring that the services are in part identical. As to its goods, Applicant lamely contended that "there has been no indication that ... [registrant] is going to expand into [those] different markets." Examining Attorney Stephen Aquila successfully maintained, however, that the goods are closely related to restaurant services. He submitted website evidence that "service marks used in connection with certain barbeque restaurants ... are also used as marks for various collateral products such as t-shirts and/or barbeque sauce."

Therefore, it was "plain" to the Board that "consumers would also consider applicant's items of wearing apparel and various food preparations to be related to or collateral products of registrant's restaurant and catering services if such goods and services were to be marketed under similar marks."

As to the marks, Applicant argued that there are "numerous differences" between the marks that preclude a likelihood of confusion. But the Board agreed with the Examining Attorney that the marks are "sufficiently similar in sound, appearance, connotation and commercial impression as to be likely to cause confusion."

"While applicant is correct that differences are apparent from its meticulous side-by-side comparison of the respective marks, such a comparison is not the proper test to be used in determining the issue of likelihood of confusion inasmuch as it is not the ordinary way that customers will be exposed to the marks."

The proper emphasis, the Board reiterated, is on "the recollection of the average purchaser, who normally retains a general rather than a specific impression of marks."

Reviewing at length the various principles of mark comparison, the Board concurred with the PTO that "when the marks at issue are considered in their entireties, the terms 'SMOKEYS' and its equivalent 'SMOKEY'S' respectively, constitute the dominant portions of applicant's and registrant's marks." Moreover, "it is the literal or word portion of registrant's mark which 'is more likely to be impressed upon a purchaser's memory and to be used in calling for the goods or services.'"

Weighing all the du Pont factors, the Board found confusion likely and it affirmed the refusal to register.

TTABlog comment: I wonder how many barbeque joints in this country are called "Smokey's"? It seems to me that the word has a suggestive, or even highly suggestive, connotation. Is it so a weak a formative that the other differences in the two mark here should be given greater weight?

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 6/19/2008   0 comments

Wednesday, June 18, 2008

Thilo C. Agthe Comments on Proposed New Rule 2.85(f)

Loyal TTABlog reader and reliable "Meet the Blogger" attendee Thilo C. Agthe has taken up my invitation to comment on the recently-proposed PTO rule changes. (See TTABlog posting here.) Thilo is a partner in the New York City firm of Wuersch & Gering LLP. His comment is reproduced below:


Dear John:

Even though my last name begins with "A," I have a comment regarding the second set of proposed rule changes:

Under the heading "Amendments to Classification," the PTO "proposes to redesignate § 2.85(g), which provides that classification schedules shall not limit or extend the applicant’s rights, as § 2.85(f), and amend it to note an exception that in section 66(a) applications, the scope of the identification of goods or services for purposes of permissible amendments is limited by the class, because the classification assigned by the IB cannot be changed. This is consistent with TMEP section 1402.07(a)."

This proposed amendment would have the effect of penalizing the applicant for mistakes in classification made by the IB and, therefore, is unfair to foreign applicants. Because foreign applicants often use and are permitted to use classification headings in their applications, it is not unusual that, upon amendment pursuant to an Office Action, it becomes apparent that the IB has misclassified the goods or services. In situations like this, the applicant is now in a position where he/she may not be able to list core goods in an application, even though he/she may have had no input into the decision the IB made with respect to classification. The proposed amendment may be consistent with TMEP section 1402.07(a), but I would submit that the result is inconsistent with the intent of the Madrid Protocol as well as the implementing legislation.

Rather than limiting the applicant in this manner, the Office should recognize that classification mistakes made by the IB should not be held against the applicant and that amendments should be permitted even if those amendments would not be classified in the same class under normal Office practice. TMEP Section 1402.07(a) should be changed to reflect this (I believe that this part of 1402.07(a) is inconsistent with the Madrid Protocol: "In §66(a) applications, the classification assigned by the IB cannot be changed, so the scope of the identification for purposes of permissible amendments is limited by the class.") I believe that the Office has overstepped its authority by imposing this limitation. As far as I can tell, nothing in the Madrid Protocol or in the implementing legislation authorizes the imposition of this limitation on foreign applicants.

I have run into this problem on a number of occasions and it is extremely frustrating to applicants when this happens. The IB determines the classification and there is nothing the applicant can do. If an applicant is within his/her rights when using very broad descriptions of goods or services, especially where this is permitted in the home country of the applicant, why should the applicant now be penalized in this manner when he/she attempts to extend the international registration to the US? It just doesn't make sense to me.

I am considering submitting a comment to the Office on this point.

Best regards from New York,

Thilo C. Agthe

Thank you, Thilo. I again invite others to send their comments to me.
.

posted by John L. Welch @ 6/18/2008   0 comments

Tuesday, June 17, 2008

TTAB Affirms 2(d) Refusal Despite Sophistication of Customers for Computer Software and Services

Although the relevant consumers of the involved products and services may exercise a high degree of care, the Board nonetheless affirmed a Section 2(d) refusal to register the mark shown below left, for various computer related services, finding it likely to cause confusion with the registered mark shown below right, for computer design and development services and for software. In re Dynamic Edge, Inc., Serial No. 78760920 (June 5, 2008) [not precedential].


Applicant's recitation of services was identical in part to the services in one cited registration, and its services were complementary to the software identified in the other registration. The Board not surprisingly found that the services, being identical, would move in the same channels of trade to the same classes of customers. Likewise, the software and Applicant's services, both directed to the management of websites, have the same channels of trade and classes of consumers.

Turning to the marks, the Board first found that "the average customer would be someone who licenses software for the security, monitoring, and management of websites and computer networks and who would engage a contractor to manage its websites and computer networks." It then observed for the millionth time that, when the involved services are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

The Board concluded that the similarity of the marks in appearance outweighs any differences.

"Both marks consist of the white letters "De" superimposed on a square, black background. The fact that the letters in applicant’s mark appear as De as opposed to the De displayed in registrant’s mark does not diminish the similarity of the commercial impression engendered thereby. Also, applicant’s circuit board design is not sufficient to distinguish the marks because the black background dominates applicant’s mark." [TTABlog comment: It seems to me that the letters dominate, not the black background].

Moreover, "[b]ecause both marks consist of the letters DE, they have the identical sound." Nothing in the record indicated that "DE" has any significance in the field, and therefore the marks are considered to be arbitrary and to have the same "meaning."

Applicant argued that the applicable market "for all three marks" [sic] consists of sophisticated, non-impulse purchasers. The Board, however, found no evidence regarding the "decision process used by these careful and sophisticated purchasers, the role trademarks play in their decision making process, or how observant and discriminating they are in practice." Even sophisticated or knowledgeable people, the Board once again noted, are not immune from source confusion.

Nonetheless, the Board recognized that "licensing software to manage a company's website or computer network and/or engaging a contractor to manage a company's website or computer network are typically not impulse decisions." Therefore, it ruled that the conditions of sale is a factor that weights "slightly against" a likelihood of confusion finding.

Balancing all the factors, the Board concluded that confusion is likely, and it therefore affirmed the refusal.

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 6/17/2008   0 comments

Monday, June 16, 2008

PTO Proposes Potpourri of Trademark Rule Changes

Bill Heinze, at his I/P Updates blog, has spotted two sets of proposed PTO trademark rule changes. I decided that, rather than spend the weekend reading and summarizing the many and varied proposed changes, I would entrust TTABlog readers to do so. [Frankly, I'm too busy watching the Celtics v. Lakers, the Revolution, Euro 2008, and the USA v. Barbados World Cup qualifier, while simultaneously trying to complete my weekend list of household and garden tasks.] Those of you whose last name begins with a letter between A and M are assigned the first set, and those between N and Z the second. I will be happy to publish your comments/summaries.


The first set of proposed changes (pdf here) is entitled "Changes in Requirements for Signature of Documents, Recognition of Representatives, and Establishing and Changing the Correspondence Address in Trademark Cases." The purpose of the proposed changes is "to codify and clarify current practice."

The second set of proposed changes (pdf here) is helpfully entitled "Miscellaneous Changes to Trademark Rules of Practice." The PTO's goal is "to clarify certain requirements for applications, intent to use documents, amendments to classification, requests to divide, and Post Registration practice; to modernize the language of the rules; and to make other miscellaneous changes. For the most part, the proposed rule changes are intended to codify existing practice, as set forth in the Trademark Manual of Examining Procedure ('TMEP')."

Comments on the proposed rules must be submitted by August 11, 2008.

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 6/16/2008   0 comments

Friday, June 13, 2008

TTAB Affirms Genericness Refusal of "BEADCHIP" for .... Guess What?

Finding that the PTO had met its burden to prove genericness by clear evidence, the Board affirmed a refusal to register the term BEADCHIP on the Supplemental Register, for "single or multiple randomly assembled microbead arrays for use in medical research and scientific applications; kits for arrays and assemblies comprising nucleotide probes or proteins attached to microbeads for use in medical research and scientific applications" in International Class 1, and for "single or multiple randomly assembled microbead arrays for use in diagnostic applications; kits for arrays and assemblies comprising nucleotide probes attached to microbeads for use in diagnostic applications" in International Class 5. In re BioArray Solutions Ltd., Serial No. 78908764 (June 4, 2008) [not precedential].


The Board, as usual, deemed the genus of the goods to be defined by Applicant's identification of goods. "More broadly, the genus of applicant's goods may be identified as a particular type of 'microarray technology.'" The question then was how the relevant public understood the term BEADCHIP.

Examining Attorney Barney L. Charlon relied on patents, patent applications, research databases, and publications showing generic use of "beadchip" to identify Applicant's goods. He also cited a definition in the glossary of genomic terms provided by the Cambridge Healthtech Institute.

Applicant BioArray Solutions rather feebly argued that the term beadchip is used as an adjective rather than a noun; that several uses cited by the PTO show "bead chip" with a space, or "bead/chip" with a slash; that one use is by a rival who is attempting to undermine Applicant's rights; that other third parties who use "beadchip" are merely parroting the subversive rival; that the term "beadchip" is used "without context" in the glossary; and that the PTO submissions are duplicative.

However, the Board pointed out that Applicant used the term "beadchip" throughout its own articles in a generic fashion. "Most troubling" was Applicant's use of "beadchip" as a generic term in its own patent application. And, of course, adjectives as well as nouns can be generic. See In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) [ATTIC generic for sprinklers]. In sum, the Board found Applicant's evidence of nongenericness "unconvincing."

Considering all the evidence, the Board could not conclude that this is a "mixed record" as alleged by Applicant. It was convinced by the "clear evidence" of the public's understanding of "beadchip" as generic for the genus of Applicant's goods.

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 6/13/2008   0 comments

Thursday, June 12, 2008

TTAB FInds "LUZ DE ESTRELLA" and "STARLITE WINERY" Confusingly Similar for Wine

Applying the doctrine of foreign equivalents to Applicant's mark LUZ DE ESTRELLA & Design (shown immediately below), the Board found the mark likely to cause confusion with the registered mark STARLITE VINEYARDS ["VINEYARDS" disclaimed], both for wine. The differences in sound and appearance between the marks were outweighed by the "strong similarity in connotations and commercial impressions." In re Armstrong Vineyards & Winery, Serial No. 78849329 (May 30, 2008) [not precedential].


With the goods identical, the degree of similarity necessary to support a likelihood of confusion finding is diminished. Applicant agreed that foreign terms from common languages are usually translated into English, but it argued that the average American consumer would not translate the Spanish wording in its mark. The Board, however, saw nothing in the record to support this argument.

Applicant next asserted that the PTO had misapplied the CAFC's ruling in Palm Bay, but the Board disagreed. As the TTAB ruled in In re Spirits Int'l N.V., 86 USPQ2d 1078 (TTAB 2008) [TTABlogged here], the court in Palm Bay did not address the definition of "ordinary American purchaser." The long-established case law holds that the relevant consumer, for purposes of the doctrine of foreign equivalents, is the ordinary U.S. purchaser who also "speaks or understands" the foreign language. [TTABlog note: the CAFC's ruling in Palm Bay created a certain amount of confusion on this point].

Alternatively, Applicant contended that even if the average American consumer would stop and translate the term "Luz de Estrella," the translation does not match or denote the cited mark STARLITE VINEYARDS -- this despite the fact that Applicant had supplied the translation "Star light." "Starlite," argued Applicant, is a coined term and so the Spanish-speaking consumer wound not understand STARLITE as the equivalent of "Luz de Estrella." The Board, however, found Examining Attorney Brian Neville to be correct in noting that "Starlite" and "Luz de Estrella"/"Star light" have the same literal connotation.

The Board agreed with the "quite rational" position taken by the PTO that more weight is to be accorded to the literal portions of the marks. Moreover,

"'Star Light' and 'Starlite Vineyards' will have exactly the same connotation for registrant's wines and for applicant's wines, as identified. The 'Star Light' connotation of applicant's composite mark is accentuated by the applicant's choice of a 'star' design, and having a bunch of grapes replacing one point of the star suggests a 'vineyard.'"

After weighing "all the types of similarities and dissimilarities of the marks," the Board found that this factor too weighs in favor of the PTO.

The Board therefore affirmed the refusal to register.

TTABlog note: The problem I have with Applicant's argument that a Spanish-speaking consumer would not understand "Starlite" as the equivalent of "Luz de Estrella" is that the relevant person is supposed to be knowledgeable in both English and Spanish, not just Spanish. That person would understand that "Starlite" and "Star light" are equivalent terms, wouldn't she?

PS: The Spirits International decision is now on appeal to the CAFC.

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 6/12/2008   0 comments

Wednesday, June 11, 2008

"SLURP-EZE" for Pet Bowls Confusingly Similar to "SLURPEE" for Frozen Drinks, Says TTAB

The TTAB put the kibosh on Applicant Mark D. Morrison's attempt to register the mark SLURP-EZE for "dog bowls, cat bowls, ferret bowls," finding the mark likely to cause confusion with 7-Eleven's registered SLURPEE and various SLURP marks for frozen confections and soft drinks, plastic beverage containers, clothing, candy, and bubble gum. This was something of a comeback for 7-Eleven, who about one year ago lost an opposition to registration of the mark GULPY for "portable animal water dishes and animal water containers sold empty." (TTABlogged here). 7-Eleven, Inc. v. Morrison , Opposition No. 91154687 (June 2, 2008) [not precedential].


You probably already guessed that the strength of the SLURPEE mark played an important role in the outcome of the case. The Board found that SLURPEE has received "significant public recognition and renown," and is well known. This factor, of course, "weighs heavily in opposer's favor."

The Board was quick to distinguish this case from the GULPY decision. There, the Board found that Opposer's BIG GULP mark "has a very high degree of public recognition and renown," but that the opposed mark GULPY "was not virtually identical to opposer's famous mark." Furthermore, the Board noted, "Gulp is a suggestive designation in the fountain drink field (83 USPQ2d at 1721), while the term SLURPEE is arbitrary or at most only slightly suggestive." [TTABlog comment: the Board is slicing the baloney pretty thin here.]

The Board found "virtually no difference between the marks." It concluded that "the similarities of the marks' sound, appearance, meaning, and commercial impression outweigh any potential differences."


The most difficult issue was, needless to say, the relatedness of the goods. The Board recognized that Opposer has never sold a pet food product under the SLURPEE mark, but it does sell "significant quantities of pet food and cat litter." Opposer offered evidence that "beverage containers for humans and bowls for pets are offered under the same mark or slogan." And it submitted "some registrations" covering pet bowls and mugs, cups, or glasses. Opposer's survey evidence was entitled to "some weight." Although not extensive, this evidence was enough to "suggest that applicant's pet bowls and opposer's soft drinks, beverage containers, and other goods are related in the mind of the consuming public as to the origin of the goods."

The Board also found that "the purchasers would overlap ... inasmuch as pet owners who were interested in a pet bowl would also include individuals who were interested in purchasing opposer's soft drinks, T-shirts, plastic beverage containers, and other promotional items associated with its SLURPEE and SLURP AND GULP drinks." [TTABlog query: With the temperature hovering in the 90s in Boston, I'm thinking that the category of "individuals who were interested in purchasing opposer's soft drinks" includes just about every consumer.]

Resolving any doubt in Opposer's favor, the Board found confusion likely and it sustained the opposition.

TTABlog comment: Why bother with a dilution claim (which requires that the marks at issue be substantially identical) when one can obtain broad protection like this under Section 2(d)?

TTABlog attempted humor: Question: Did you ever see a ferret bowl? Answer: No, but I've played golf with a weasel or two.

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 6/11/2008   0 comments

Tuesday, June 10, 2008

Tip from the TTABlog: Hands Off the Playboy Bunny!

Adam Bennett of Houston, Texas got too close to the Playboy bunny and the TTAB gave him a good smack upside the head. Bennett, appearing pro se, collided with the fame of the Playboy bunny marks and was unable to pull the proverbial rabbit out of the hat with his slightly imaginative but ultimately incredible and futile attempt to explain the origins of his mark: he claimed the design was merely "a hand signal that we do in Houston." Playboy Enterprises International, Inc. v. Bennett, Opposition No. 91173441 (June 4, 2008) [not precedential].


Bennett was trying to register his mark (left, above) for "entertainment services, namely, providing a web site featuring musical performances, musical videos, related film clips, photographs, and other multimedia material." Playboy opposed on Section 2(d) grounds, relying on 16 registrations for rabbit head designs, with and without literal elements.

Applicant Bennett admitted that Playboy has marketed the rabbit head design for more than 50 years on a wide variety of goods and services; that the rabbit head design trademarks are famous; that Playboy owns the mark BUNNY for establishments featuring food, drink, and entertainment; and that Playboy has marketed "the Playboy BUNNY" for a variety of goods and services.

In addition to Bennett's admissions regarding fame, Playboy introduced other evidence, including news articles referring to the rabbit head logo as a famous trademark. Of course, as the Board observed, fame "plays a dominant role" in the du Pont analysis.

The Board next found Applicant's services to be essentially identical to those of Opposer, and it presumed that the services would be marketed in the same channels of trade to the same classes of purchasers.

Comparing the marks, the Board first noted that when the services are identical, a lesser degree of similarity between the marks is required to support a finding of likely confusion. Here, the design elements are similar: a rabbit head with a white circle or oval forming the eye, and a bowtie. Moreover, the words PLAYERSANDBUNNIES "reinforce the conceptual similarity" of the designs.

Playboy called Bennett as an adverse witness, and he came through: he claimed that his design is just "a hand signal that we do in Houston. It's the 'H' symbol. We do this in Houston (demonstrating)." Tellingly, he posted the name "Hughston Hefner" at his MySpace page, while admitting that "Playboy is synonymous with Hugh Hefner."

The Board found Bennett's testimony regarding the adoption of his mark to be "not credible," and it considered his bad faith to be another factor in favor of a finding of likely confusion.

Balancing all the du Pont factors, the Board not surprisingly ruled in favor of Playboy.

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 6/10/2008   0 comments

Monday, June 09, 2008

Precedential No. 31: TTAB Reviews Specimen Brochure, Affirms Failure-to-Function Refusal

Finding that the mark fails to function as a service mark, the Board affirmed a refusal to register LIQUIDADVANTAGE, in standard character form, for "custom manufacturing of pharmaceuticals featuring liquid fill and finish technology." In the specimen of use, the term was used to refer to Applicant DSM's proprietary software but not to the recited services. In re DSM Pharmaceuticals, Inc., 87 USPQ2d 1623 (TTAB 2008) [precedential].


The Board perused the specimen one-page brochure submitted by the Applicant (see page 4 of the decision), and found it wanting:

"As the examining attorney observed, the term LIQUIDADVANTAGE in this specimen clearly refers to a proprietary software by that name. Nowhere does the specimen show a direct association between use of the proposed LIQUIDADVANTAGE mark and 'custom manufacturing of pharmaceuticals featuring liquid fill and finish technology.'"

In reaching a total of eight pages in this rather straightforward ruling, the Board cited and distinguished a number of prior decisions, eventually making this final point:

"As explained by the CCPA in In re Universal Oil Products Co., 177 USPQ at 457, it is insufficient for an applicant to use the desired mark in connection with the advertisement of a process where applicant seeks to register that mark in connection with a service even though, as here, the brochure may also mention the service apart from the mark. In the words of the CCPA: 'Direct association is the minimum it must show.'"

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 6/09/2008   0 comments

Friday, June 06, 2008

Precedential No. 30: TTAB Grants Summary Judgment in Opposition Because Applicant Was Contractually Prohibited From Using Subject Mark

In 1982, Applicant Karl Storz GmbH reached an agreement with Opposer's predecessor specifying how each may use the word "STORZ" in a trademark or service mark sense. In 1989, Opposer's predecessor wrote to Karl Storz, objecting to use of the mark STORZ THE WORLD OF ENDOSCOPY, shown immediately below. Although Karl Storz responded, Opposer B&L did not pursue the objection until 2003, when it began challenging applications for the mark. The Board ruled that the 1982 agreement prohibits use of the subject mark, and it entered judgment summarily in favor of B&L. Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526 (TTAB 2008) [precedential].


Opposer B&L filed for summary judgment on the ground of likelihood of confusion, but the Board sua sponte chose to rule on the contract issue.

The agreement provided that Applicant may use nine particular marks: (1) KARL STORZ GERMANY; (2) STORZ-GERMANY; (3) KARL STORZ; (4) KARL STORZ USA; (5) KARL STORZ ENDOSCOPY-AMERICA; (6) KARL STORZ ENDOSCOPY; (7) STORZ ENDOSKOP; (8) KARL STORZ ENDOSKOP; and(9) KS STORZ. Furthermore, Applicant might supplement these marks with "additional trademark formatives." In short, as Opposer argued, the agreement "does not allow Applicant to use [Applicant's Mark] or any other variation using the word STORZ without the qualifiers Karl, K., Germany or the German word 'Endoskop.'" The idea was that each of the allowed marks would reduce the likelihood of confusion between the US company, Storz Instruments, and the Germany company, by identifying the user of the mark as a German company.

The Board concluded that the applied-for mark was not an approved mark because it did not contain ENDOSKOP, or KARL STORZ, K STORZ, etc. Applicant's mark, containing the word ENDOSCOPY, is not a "supplemented" version of STORZ ENDOSKOP. Use of the English word ENDOSCOPY, "without any indication that the mark is used by the German company, would make the authorization for applicant to use the permitted mark KARL-STORZ ENDOSCOPY superfluous."


Applicant asserted the defense of equitable estoppel, but an opposer's conduct prior to publication of the subject application generally cannot support a finding of estoppel. Moreover, although Opposer here did not pursue its 1989 objection until 2003, "there is no evidence that opposer knew or should have known of applicant's alleged use of Applicant's mark in the U.S." [Emphasis in original].

And so the Board granted summary judgment to Opposer.

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 6/06/2008   0 comments

Thursday, June 05, 2008

Precedential No. 29: TTAB Affirms 2(e)(1) Refusal of Japanese Term Meaning "Walking" for Footwear

During prosecution, Applicant Tokutake shot itself in the footwear when it provided an English translation of its Japanese-language mark shown immediately below: it translated the mark as "walking, a step." Because its identified goods were footwear, Examining Attorney Laura Gorman Kovalsky not surprisingly issued a Section 2(e)(1) mere descriptiveness refusal. The Board affirmed. In re Tokutake Industry Co., Ltd., 87 USPQ2d 1697 (TTAB 2008) [Precedential].


Applicant acknowledged that both the foreign characters and the English lettering "represent the same term." Because the word "walking" is at least merely descriptive of footwear, the Board next considered "whether the doctrine of foreign equivalents applies in this case."

Under that doctrine, foreign words from common languages are translated into English to determine descriptiveness. The doctrine is to be applied, however, only when the ordinary American purchaser would "stop and translate" the foreign term into its English equivalent. The "ordinary American purchaser" refers to one who is knowledgeable in both English and the pertinent foreign language. Here, the Board found that Japanese is a modern language spoken by hundreds of thousands of people in this country; moreover, there was no evidence that the ordinary purchaser would not stop and translate the subject mark.

As to the meaning of the mark, the Examining Attorney provided an entry from www.freedict.com, which translates the Japanese term "ayumi" as "walking." Applicant argued that this website is "imprecise," and that "it is common understanding among the Japanese that the Japanese translation of 'walking' is not 'ayumi.'" Applicant further argued that "ayumi" has multiple meanings, and that the meaning relied upon by the PTO was "taken out of context."

The Board was not impressed, noting that "[a]ttorney argument is no substitute for evidence." There was no proof regarding the "common understanding among the Japanese," nor that the PTO's meaning was taken out of context. Indeed, Applicant itself offered "walking" as the translation of its mark. In short, the Board declared:

"Once an applicant provides a translation of a foreign term that is a generic or descriptive term for the goods in English, it has a more difficult burden to then show that the term is not merely descriptive or generic. An applicant is not likely to succeed in this challenge when it relies primarily on the argument of its counsel."

Applicant's assertion that the term AYUMI has multiple meanings in Japanese was of little import. The Examining Attorney pointed to a number of English terms that have multiple meanings but nevertheless may be "generic for more than one item." Applicant provided "no admissible evidence to explain why Japanese speakers would not translate its mark as originally specified."

Concluding that AYUMI would immediately describe the Applicant's goods, the Board affirmed the Section 2(e)(1) refusal.

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 6/05/2008   0 comments

Wednesday, June 04, 2008

Precedential No. 28: TTAB Finds Drawings OK, But Packing Label Specimen Fails to Show Service Mark Use

Pondering the propriety of Applicant wTe Corporation's drawings and specimens, the Board rendered a split decision in In re wTe Corp., 87 USPQ2d 1536 (TTAB 2008) [precedential]. It found the drawings for the mark SPECTRAMET to be a substantially exact reproductions of the mark as used on the specimens, but it agreed with the PTO that Applicant's service mark specimen did not show use of the mark for the recited services.

Applicant's trademark specimen

The Examining Attorney rather feebly argued in both applications that "the specimen does not match the drawing of the mark" because the drawing shows a typed mark but the "c" has been replaced by an arrow design in the specimens of use. According to the Examining Attorney, the arrow design could be perceived as an "o." Applicant argued that the arrow design "is a subtle modification of the chosen font style."

The Board noted that the determination of whether a drawing is a substantially exact representation of the mark on the specimen is a "assuredly a subjective one." The Board concluded that "most would view the mark as applicant indicates, SPECTRAMET.

"Not only is 'Spectr-' a more common beginning for a word in English ... but also the fourth letter looks more similar to a 'C' than an 'O.'" [TTABlog comment: I think it looks more like a "C" in the specimen above, but more like an "O" in the specimen below.]

Recognizing that the PTO "encourages applicants to submit drawings that depict their marks in standard character form," the Board reversed this refusal to register.

The Board then turned to the issue of whether Applicant's specimen shows actual use of the mark for the recited services, namely, contract processing of metals. The Board noted Applicant's admission that it uses the mark as part of a return address on a "packaging label that is affixed to boxes being mailed to customers."

Applicant's service mark specimen

The law requires that there be "some direct association between the offer of services and the mark sought to be registered." Here the return address on products that Applicant "already made and sold to the customer does not show a connection between the offer of contract processing of metal services and the mark." Therefore, the Board sustained this second refusal.

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 6/04/2008   0 comments

Tuesday, June 03, 2008

TTABlog Practice Pointer: Failure to Answer Admission Requests May Be Harmful to Your Application's Health

Applicant Fine Spirits was surely in poor spirits after its lame attempt to fend off a summary judgment motion in a Section 2(d) opposition brought by Gallo Winery. Gallo asserted that Fine's mark FALCON for distilled spirits was likely to cause confusion with Gallo's registered mark FALCON RIDGE for wine. Thanks in no small part to Fine's failure to respond to Gallo's admission requests, the Board agreed with Gallo. E. & J. Gallo Winery v. Fine Spirits Distribution, LLC, Opposition No. 91175854 (May 22, 2008) [not precedential].


Fine Spirits first moved to suspend proceedings, claiming settlement negotiations. Gallo objected, insisting that there were no on-going negotiations. The Board denied Fine's motion, noting that any suspension "is subject to a request to resume at any time" and that Gallo would likely file such a request.

Next, Fine sought a reopening of the time to respond to Gallo's summary judgment motion, claiming that its failure to respond in timely fashion "was due to an impending death in his family, email transmission problems with opposer’s counsel, and that applicant did not receive opposer’s discovery requests." The Board applied the excusable neglect standard of Pumpkin Ltd. v. The Seeds Corp., 43 USPQ2d 1582 (TTAB 1997), which adopted the Supreme Court's four-factor test regarding excusable neglect as set out in Pioneer Invest. Servs. Co. v. Brunswick Assoc. Ltd., 507 U.S. 280 (1993). The Board noted that "several courts have stated that the third Pioneer factor, namely the reason for the delay and whether it was within the reasonable control of the movant, might be considered the most important factor in a particular case."

Here the Board found that "applicant's failure to respond to the motion for summary judgment was caused by its complete failure to act and to monitor the time periods in this proceeding. Such action was wholly within the reasonable control of applicant."

"While the Board is sympathetic to counsel’s personal circumstances, as opposer points out, perhaps there were other members of counsel’s firm who could have either stepped in or requested an extension of time. Docketing errors and breakdowns do not constitute excusable neglect."

The Board found that, on balance, applicant's failure to timely respond to the summary judgment motion was not caused by factors constituting excusable neglect, and so it denied applicant's request to reopen the time for response to the summary judgment motion.

Turning to the merits of the motion, Gallo asserted that Applicant's failure to answer its requests for admission removed any genuine issue of fact regarding likelihood of confusion. [Fine had not requested withdrawal or amendment of its admissions.] These admissions established that the involved goods are "related and competitive," that the goods are "impulse items, sold to customers at retail," that such consumers "will assume they are related," and that Gallo has priority of use. The Board therefore granted the motion for summary judgment.

TTABlog comment: The word "movant" always reminds me of the song "High Hopes":

Once there was a little old ant.
Thought he'd move a rubber tree plant.
Nothing could make that ant scant.
He kept pushing that plant.

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 6/03/2008   0 comments

Monday, June 02, 2008

TTAB Posts June 2008 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled eight hearings for the month of June, 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.


June 5, 2008 - 2 PM: Anheuser-Busch, Inc. v. Mambo Seafood #1, Inc., Opposition No. 91160250 [Section 2(d) opposition to MAMBO MICHELADA for beer in view of Opposer's family of MICHELOB marks].


June 10, 2008 - 11 AM: American Medical Rehabilitation Provider Assn. v. U.B. Foundation Activities, Inc., Opposition No. 91158512 and Cancellation No. 92043381 [Challenge to registrations for FIM and THE FIM SYSTEM for publications and services in the field of rehabilitation, on the grounds of genericness and mere descriptiveness].

June 10, 2008 - 2 PM: Environmental Dynamics, Inc. v. Stamford Scientific Int'l, Inc., Cancellation No. 92045054 [Petition for Cancellation of a registration for AIRFLEX for "water cleaning equipment, namely diffusing units for aerating sewage and industrial wastewater," on the ground of likelihood of confusion with the mark FLEXAIR for diffusing units, and on the ground of fraud].

June 11, 2008 - 2 PM: In re Amlin plc, Serial No. 79011475 [Section 2(e)(4) surname refusal of AMLIN for insurance services and financial services relating to the insurance industry].


June 12, 2008 - 11 AM: In re Gungner, Serial No. 78093634 [Failure-to-function refusal of MISSING A RIB, XY INSTEAD OF XX for "Books, brochures, facsimile transmission paper, newsletters, pamphlets featuring content regarding scientific creationism and/or biblical inerrancy as interpreted via virtue of methodologies from the topic of computer science"].

June 19, 2008 - 10 AM: Mattel, Inc. v. The Crash Dummies Movie, LLC, Opposition No. 91159002 [Section 2(d) opposition to registration of CRASH DUMMIES for action figures and other toys, in view of Opposer's alleged prior use of CRASH DUMMIES and THE INCREDIBLE CRASH DUMMIES for action figures and playsets].


June 25, 2008 - 2 PM: In re Brunswick Corp., Serial No. 78875524 [Refusal of AQUAPALOOZA for boats and structural parts therefor for failure to submit proper specimen of use].


June 26, 2008 - 2 PM: In re Vast Resources, Inc. dba Topco Sales, Serial No. 78692514 [Section 2(d) refusal of CLIMAX for adult sexual aids in view of the registered mark JELLY CLIMAX MAXIMIZER for vibrators].

Text Copyright John L. Welch 2008.

posted by John L. Welch @ 6/02/2008   0 comments