TTAB Affirms 2(d) Refusal of "CINDERELLA" for Peanut Butter over Disney Registration for Related Goods

This applicant's attempt to register the mark CINDERELLA (shown immediately below) for "peanut butter" had a grim ending. The mark had been in use since 1895, according to Applicant, and was registered until 2001, but unfortunately the registration was allowed to lapsed by Applicant's predecessor. When American Blanching applied for a new registration, the PTO refused on Section 2(d) grounds, finding the mark likely to cause confusion with the registered mark WALT DISNEY'S CINDERELLA & Design (shown further below) for various food products, including candy, chocolate, cookies, pretzels, and bread. The TTAB affirmed. In re American Blanching Co., Serial No. 76443653 (July 10, 2008) [not precedential].


The Board found that the registered mark is dominated by the term CINDERELLA, because it is in larger type than the term WALT DISNEY'S and the pictorial depiction (which itself reinforces the CINDERELLA portion].

"WALT DISNEY'S would be viewed merely as the trade name of the entity that is the source of the goods sold under the mark. The deletion of the additional features to form applicant's mark is simply not enough to sufficiently distinguish applicant's mark from registrant's mark. Generally, likelihood of confusion is not avoided between otherwise confusingly similar marks by adding or deleting a house mark."

As to the goods, the Board found them to be related and complementary. "[I]t is common knowledge that peanut butter spread on bread is often eaten as a snack." [TTABlog query: I like peanut butter on slices of banana. Does that mean that peanut butter and bananas are related goods?] Also, "peanut butter is used in food items in combination with "chocolate, candy, cookies, and pretzels; peanut butter also may be used an ingredient in candy and cookies." [TTABlog query: Sugar and salt are also used in cookies, etc. Are they therefore all related goods?]


American Blanching noted that the Disney had argued, during prosecution of its own application, that "Cinderella" is a "weak indicator of source given its registration by a number of third parties." The Board "considered these remarks," but did not "view them as a substitute for applicant's own obligation to establish the purported weakness of the cited mark."

Finally, Applicant pointed to the lack of actual confusion, but the Board found "no evidence regarding the extent of use of the respective marks, and whether the use has been sufficient for opportunities of actual confusion to occur." The fact that Applicant's predecessor owned a registration for the mark, "while worthy of consideration," is "outweighed by the factors weighing in favor of finding likelihood of confusion."

And so the Board affirmed the refusal.

TTABlog comments: I don't have as much trouble with the Board's ruling regarding the marks as I do regarding the goods. Would consumers really think peanut butter and bread come from the same source? I think the PTO's proof was very slim here.

On the other hand, I suspect that many Americans believe that Walt Disney created Cinderella, and that any product bearing the mark CINDERELLA is somehow connected with Disney. But, of course, that is another fairy tale.

If indeed Applicant has priority of use (the cited registration issued in 2006, alleging a first use date in 2002), is a cancellation petition in the offing?

Text Copyright John L. Welch 2008.

"SEXY 'N SASSY" Confusingly Similar to "SEXY HAIR" for Hair Care Products, Says TTAB, Unconvincingly

In a less than convincing decision, the Board found that a "non-de minimums" [sic!] number of consumers would likely be confused, and so it sustained a Section 2(d) opposition to registration of the the mark SEXY N' SASSY in view of the registered mark SEXY HAIR [HAIR disclaimed], both for for various hair care products. Sexy Hair Concepts, LLC v. Perfect Plus, Inc., Opposition No. 91170863 (July 3, 2008) [not precedential].


Because the goods were in part identical, the Board assumed that the channels of trade and purchasers are also identical. Of course, when the goods are identical, a lesser degree of similarity in the marks is necessary to support a finding of likely confusion.

As to the marks, the Board acutely observed that both marks begin with the same word SEXY, "a factor that supports a conclusion that confusion is likely here." [In other words, the first word in a mark is often the one that will be most remembered]. Moreover, the Board assigned little weight to the disclaimed word "HAIR."

As to the additional term 'N SASSY in Applicant's mark, the Board did not find that its presence results in dissimilar marks.

"Customers familiar with opposer's mark SEXY HAIR for hair care products are likely to assume that applicant's SEXY 'N SASSY mark for the same products are in some way related or associated with opposer. The term ''N SASSY' builds on the SEXY HAIR meaning of opposer's mark and adds an additional element 'Sassy.' Customers are likely to believe that applicant's shampoo is a refinement of opposer's SEXY HAIR shampoo."

In support of that assertion, the Board noted that Opposer uses its SEXY HAIR mark with additional words such as STRAIGHT SEXY HAIR, SHORT SEXY HAIR, BIG SEXY HAIR, CURLY SEXY HAIR, HOT SEXY HAIR, WILD SEXY HAIR, and SILKY SEXY HAIR. According to the Board, this shows that "consumers are accustomed to numerous products with a variation of opposer's SEXY HAIR mark originating from Opposer. [TTABlog comment: I see the pattern here, but I also see that Applicant's mark doesn't include SEXY HAIR.]

The Board took into consideration that fact that the term "Sexy" is "hardly an arbitrary term." [TTABlog comment: another instance of litotes?!]. However, because the mark is registered, the Board must assume it is inherently distinctive. [TTABlog comment: That's not the issue. The issue is the strength of the mark. SEXY HAIR could be distinctive but weak, and not entitled to a broad scope of protection vis-a-vis other marks containing the highly suggestive or laudatory term SEXY.]

The Board next found that the mark SEXY HAIR has achieved some renown, based on various exposures of Opposer's mark on television and in Internet advertising. Sales reached $51 million in 2006 and advertising expenditures exceeded $6.2 million. "While opposer's mark may be highly suggestive, opposer's evidence is not so weak that it is entitled to only a very narrow scope of protection." [TTABlog note: Litotes again?!]

In sum, the Board found the marks "more similar than they are dissimilar," and that favored Opposer. [TTABlog note: Maybe the Board have said "not that dissimilar," to keep the litotes going?]

Resolving any doubtin favor of the prior registrant, as it must, the Board sustained the opposition.

TTABlog final comment: I guess this Opposer owns the word SEXY as a formative for hair care products.[See its prior victory TTABlogged here.] I just don't think SEXY N' SASSY is sufficiently similar to the SEXY HAIR mark or its variations, given the weakness of the word SEXY as a formative, to support a 2(d) finding.

Text Copyright John L. Welch 2008.

TTAB Finds "ZABA'S" for Restaurant Services Confusingly Similar to "ZABAR'S" for Catering and Retail Store Services

In this cross-country service mark battle, the Board sustained a Section 2(d) opposition to registration of the mark ZABA'S, in standard character and design form, for "restaurant services," finding it likely to cause confusion with the previously-used and registered mark ZABAR'S (in various forms) for food catering services, retail store services, and mail order services for gourmet food and related items. Zabar's & Co. v. Zaba's Grill, LLC, Opposition No. 91163191 (July 10, 2008) [not precedential].


Opposer is the owner of the well-known food emporium on Manhattan's Upper West Side. Applicant operates several Mexican restaurants in Las Vegas under the name ZABA'S Mexican Grill. They clashed at the TTAB.

The Board began with Opposer's claim of fame, but was not persuaded that ZABAR'S had achieved that lofty status. Although ZABAR'S is "something of an institution" in New York City, "it is not clear from the record how many people outside of the New York area are familiar with the mark ZABAR'S." Opposer distributes 500,000 catalogs, but "it is not clear to whom these catalogs are sent." Opposer's e-mail and faxed orders suffered from the same problem, and the hits at Opposer's website could have been multiple hits from the same individual, or merely casual hits from individuals "looking for a search term such as 'lox' or some other product available in opposer's store." Moreover, Opposer's advertising expenditures of $500,000 are "very low compared to annual advertising figures for other marks we have found to be famous."

The Board had no doubt that Opposer "has attained a degree of renown as a New York City establishment and among gourmet food enthusiasts," but "such evidence of regional or niche fame falls short of establishing that awareness of opposer's products and services among those segments of the population translates into widespread recognition of the mark."

Nonetheless, the evidence did establish that the mark ZABAR'S "has achieved at least a degree of recognition and strength in the market and that the mark is therefore entitled to a broader scope of protection than might be accorded a less distinctive mark."


As to the marks, the Board found them "highly similar" in appearance. Consumers familiar with the ZABAR'S mark are not likely to notice that the "R" is absent from Applicant's mark. The design element and the stylization of Applicant's mark are of less import because it is the literal portion that is likely to be remembered. Although both parties presented argument regarding the pronunciation of the marks, that issue is irrelevant because "it is well settled that there is no correct pronunciation of a trademark." [TTABlog note: I can attest to that: in Boston, the phrase "a trademark" is pronounced "a trayd-mock," while in Chicago it's "a trade-marrk," or something like that. You get the point.]

Applicant's argument that Opposer's mark is the surname of its founder (Louis Zabar), while its mark is derived from name of the tallest mountain in Mexico, was of no help. There was insufficient evidence that consumers would perceive ZABAR's as a surname [TTABlog query: what else would a consumer think, given the apostrophe "S" at the end?], and it was not clear whether consumers would perceive that ZABA's comes from "Pico de Orizaba."

Finally, Applicant's assertion that the Board must consider the marks in the context in which they are used (a Mexican restaurant versus a New York gourmet market) was legally off track, since there are no such limitations in the opposed applications or in the asserted registrations.

As to the services as recited, the Board found them related. In fact, Applicant's own expert testified that it is not uncommon for restaurants to offer catering services. Moreover, Applicant acknowledged that Opposer has a "small cafe on location in its retail store." Finally, Opposer submitted a number of third-party registrations that included both restaurant services, on the one hand, and catering and food store services, on the other. Opposer's admissions that Applicant runs a Mexican-style restaurant and that Opposer does not sell Mexican food cannot limit the parties' services as identified in their respective applications and registrations.

The parties are presumed to marked their respective services through the normal channels of trade to the general public. Both parties sell inexpensive food items, as to which purchasers will not exercise a great deal of care.

Balancing all the duPont factors, the Board ruled in favor of Opposer.


TTABlog Comment: I lived on West 91st Street for six years back in the '70s. ZABAR's is famous to me. Would I be confused by a Mexican restaurant in Las Vegas called ZABA'S. Of course not. But that's not the question, is it? If someone said to me, "that ZABA's restaurant is awful," I might think to myself, "Boy, I guess ZABAR's has gone downhill in the last three decades." When you're living in TTAB land - not New York, Boston, Chicago, or Las Vegas - that's the point.

Text Copyright John L. Welch 2008.

Appellant Petitions Commissioner for New Hearing, Claims PTO Argument Was Inaudible and Unintelligible

Well here's another document for your form file: a Petition to the Commissioner for a do-over of the oral argument in an ex parte appeal. Counsel for Applicants Diane M. and Richard G. Hyatt appeared on May 21, 2008, for the oral argument in their appeal from a Section 2(d) refusal to register. In re Hyatt, Serial No. 76611740. One week later, counsel filed a Petition to the Commissioner requesting a new hearing, alleging that "[t]he entirety of the oral argument presented by the Examining Attorney was inaudible and unintelligible."


Applicants contend that they were denied their constitutional right to due process. Applicants' counsel, at the end of the PTO's argument, informed the Board that the Examining Attorney's presentation was "inaudible and unintelligible and, in point of fact, could not be heard or understood." The Board did not respond.

"The unexpected failure of the presiding judge to either notice the extremely low volume of the counsel's delivery, or to request the advocate to increase the volume, effectively denies the Appellant such aspects of Appellant's constitutionally guaranteed procedural due process rights as the customary right "to present a rebuttal argument" to the oral argument delivered by the Examiner to the Trademark Trial and Appeal Board ..., thereby effectively negating the constitutionally guaranteed substantive due process right of Appellant granted under 37 C.F.R. Section 2.142(e)(3) and common law."

In their petition, Applicants request that the oral argument be rescheduled, before a different panel of the Board.

TTABlog comment: Now if Applicants' counsel had appeared by way of a video conference, one might understand how a problem like this could arise. But Applicants' counsel appeared in person at the hearing, so what the heck is going on here?

Text Copyright John L. Welch 2008.

Fame Factor Fuels Victory in TTAB 2(d) Opposition Against "ROAD RUNNER" for Batteries

The "significant fame" of the ROAD RUNNER word and character marks carried Opposer Time Warner to victory in its opposition to registration of the word mark ROAD RUNNER for batteries. The Board found Applicant's goods to be "sufficiently related" to Opposer's action figures, accessories therefor, and hand-held video games, for purposes of the second duPont factor. As usual in oppositions involving marks that are famous under Section 2(d), the Board declined to reach Opposer's dilution claim. Time Warner Entertainment Co., L.P. v. Fleet Wholesale Supply Co., Opposition No. 91155422 (July 10, 2008) [not precedential].


After ruling on numerous evidentiary objections, the Board turned to the issue of fame under Section 2(d), keeping in mind that, when found, fame plays a "dominant role" in the duPont analysis. It deemed the mark famous in light of "the length of time in which the ROAD RUNNER mark has been in use, the large number of licensed products and services, the nationwide advertising exposure of the mark, along with the advertising expenditures of opposer’s affiliate’s broadband Internet service."

Turning to the marks, the Board found the most pertinent of Opposer's registrations to be one for the ROAD RUNNER and design mark shown immediately below, for “action figures and accessories therefor” and “a hand held unit for playing a parlour type video game.” The Board found this mark to be "highly similar" to the applied-for mark. This factor, too, weighed heavily in Opposer's favor.


Applicant submitted 30 third-party registrations for marks that consist of or contain the term ROAD RUNNER, and numerous Internet pages that display that term, but the Board was not impressed: the registrations "are not evidence of use" and the web pages are not evidence of actual sales or customer familiarity.

As to Applicant's goods, the Board again focused on Opposer's most pertinent goods: “action figures and accessories therefor” and “hand held unit for playing a parlour type video game.” [TTABlog query: who has a "parlour" any more?] Since neither Opposer's registration nor the opposed application have any limitations as to the specific type of goods, the Board presumed that Opposer's goods include battery-operated items, and that Applicant's goods encompass the type of batteries that may be used in Opposer's goods. In short, the Board found them related for 2(d) purposes. [TTABlog pun: An action figure that uses 2(d) batteries (i.e., two D batteries) is one large action figure!]

"We believe that battery operated action figures, accessories therefor, and hand held video games, on the one hand, and batteries for use therein, on the other hand, are sufficiently related that, given the fame of opposer's mark and the substantial similarity in the marks, purchaser confusion is likely. It is undisputed that batteries are integral to the operation of battery operated action figures, accessories therefor and hand held video games. Thus, these items of opposer and applicant are considered to be complementary goods."

The Board then presumed that the goods travel in the same channels of trade to the same classes of purchasers. [TTABlog query: Why presume this? If the goods were identical, then the presumption would be proper. But when they are not identical, shouldn't there be some proof regarding channels of trade? Or at a very minimum, some discussion? Shouldn't the Board look at the normal channels of trade for batteries, and the normal channels of trade for action figures and video games?]

Finally the Board noted that the goods are general consumer items that would be purchased with ordinary care, and that Opposer's use and licensing of its mark on diverse goods and services makes it more likely that a consumer will believe that batteries bearing the ROAD RUNNER mark are "sponsored or licensed" by Opposer.

The Board therefore ruled that confusion is likely, and it sustained the opposition on that ground, while declining to reach the dilution issue.

TTABlog comment: Once again, a famous mark obtains dilution-like protection under Section 2(d). In light of the many third-party uses and registrations for ROAD RUNNER, and the fact that ROAD RUNNER is a dictionary term and not a coined term, could Opposer possibly have established a dilution claim? Shouldn't those same third-party registrations and uses have put a dent in the scope of protection accorded Opposer's mark?

Text Copyright John L. Welch 2008.

TTAB Holds "NEW MEXICO RAILRUNNER" ITU Application Void Under Section 10 Due To Improper Assignment

Finding that Applicant New Mexico Mid-Region Council of Governments ("MRCOG") had violated Section 10 of the Trademark Act when it assigned its ITU application for the mark NEW MEXICO RAILRUNNER to the New Mexico Department of Transportation ("NMDOT"), the Board granted summary judgment to Opposer Railrunner N.A., Inc. It ruled that MRCOG and NMDOT failed to overcome Opposer's prima facie case that the application was assigned without the transfer of any part of Applicant MRCOG's business. Railrunner N.A., Inc. v. New Mexico Department of Transportation and New Mexico Mid-Region Council of Governments, Opposition No. 91172851 (July 17, 2008) [not precedential].


The Board observed that Section 10 of the Trademark Act in essence provides that, "prior to the filing of an allegation of use, ... an intent-to-use ('ITU') applicant may not transfer its application to another, unless it also transfers with it at least that part of applicant's business to which the mark pertains." And applicant must already be "providing the goods or services recited in the application." [TTABlog query: Is that what the statute means? I doubt it].

In Clorox Co. v. Chem. Bank, 40 USPQ2d 1098 (TTAB 1996), the Board found that, in keeping with the legislative history of the Trademark Law Revision Act of 1988, "any improper transfer results in a void application ...."

MRCOG filed the subject application on February 7, 2005 and assigned it to NMDOT on July 3, 2007. MRCOG had not filed an Amendment to Allege Use prior to the assignment.

The assignment document made no reference to the transfer of any part of MRCOG's business, and the record was devoid of documentary evidence of such a transfer. The only evidence submitted in opposition to the summary judgment motion was an affidavit from MRCOG's Executive Directer asserting that "NMDOT is the successor in business to the operation of the railroad in Region 3 and in Santa Fe county." The Board pointed out that no documentation accompanied the affidavit.

"While we have not previously required any particular formality for such a business transfer, we simply cannot imagine a transfer of a railroad business, with its attendant assets and liabilities - or any part of it - absent written documents."

The Board found the submission of the assignment document by Opposer to be sufficient evidence ("or more accurately, the lack of it") to establish a prima facie case that the mark was transferred contrary to Section 10. Direct evidence, if any, "was surely available to applicant, and opposer cannot prove that evidence it would not have access to in the first place does not exist."

Moreover, Applicant's unsupported claim that NMDOT is a successor to MRCOG's rail business is not sufficient to raise a genuine issue of material fact that would preclude summary judgment. Mere denials of Opposer's allegations do not suffice. Fed. R. Civ. P. 56(e)(2).

The Board therefore granted summary judgment to Opposer on this issue.

Madrid, New Mexico(click on photo for larger, in focus picture)
Text and Madrid photograph Copyright John L. Welch 2008.

TTAB Finds "DIGITALBOOK" Trademark Specimen Unacceptable

Affirming the PTO's refusal to register, the Board found Applicant Sagoma's specimen of use unacceptable for the mark DIGITALBOOK for, inter alia, binders for holding media discs. The specimen (shown below) fails to qualify as a display associated with the goods because it does not contain adequate ordering information. In re Sagoma Plastics, Inc., Serial No. 76576594 (July 11, 2008) [not precedential].

(click for larger picture)
Under Section 45 of the Trademark Act, in pertinent part, a mark is deemed to be in use in commerce on goods when it is placed on the goods or their containers, or on displays associated therewith. "A display used in association with the goods is essentially a point-of-sale display designed to catch the attention of purchasers as an inducement to consummate
a sale."

The TMEP provides that a catalog or similar display may be an acceptable specimen of use if (1) the catalog includes a photograph of the goods; (2) it displays the mark in association with the goods; and (3) it includes the information necessary to order the goods (e.g, an order form, phone number, mailing address, or e-mail address for placing orders). Furthermore, "[t]here must be an offer to accept orders or instructions on how to place an order."

Sagoma's specimen met the first two prongs, and so the question became whether the specimen "includes the information necessary to order applicant's binders and binding systems, thus making it a point-of-sale display." Applicant, of course, argued that the inclusion of its phone number, address, and e-mail address were sufficient.

The Board noted the lack of record evidence as to how Sagoma sells its binder and systems or whether the goods may be purchased by telephone or Internet. The assertions of Sagoma's counsel, the Board observed, are not evidence.

Based on an examination of the specimen, the Board found it to be "more akin to the fact sheet, catalog page, or brochure submitted in In re MediaShare Corp., 43 USPQ2d 1304." Sagoma's specimen contains no information "normally associated with ordering products via telephone of the Internet." For example, there is "no sales form, no pricing information, no offers to accept order, and no special instructions for placing orders ...."

The Board distinguished this case from its precedential decision in In re Valenite Inc., 84 USPQ2d 1346 (TTAB 2007). Valenite's webpage contained links to its Technical Resource Center, "including specification sheets, online calculators, and reference tables, as well as providing appellant's toll-free customer service telephone numbers." A Valenite customer could thereby "select a product and call customer service to confirm the correctness of the selection and place an order."

Sagoma's specimen provides no such information. Consequently, it does not qualify as a display associated with the goods and is not an acceptable specimen of trademark use.

TTABlog note: See the recent, similar TTAB decision in In re U.S. Tsubaki, Inc., TTABlogged here.

Text Copyright John L. Welch 2008.

"CHINATOWN BRASSERIE" Not Primarily Geographically Deceptively Misdescriptive for Restaurant Not in NYC's Chinatown, Says TTAB

Reversing a Section 2(e)(3) refusal to register, the Board found the mark CHINATOWN BRASSERIE & Design [BRASSERIE disclaimed] not primarily geographically deceptively misdescriptive for restaurant services, even though Applicant's restaurant is located one-half mile outside of New York City's Chinatown. The Board ruled that, in a trademark sense, the primary significance of the mark "is not that of a generally known location." In re Lafayette Street Partners, LLC, Serial No. 78678314 (July 9, 2008) [not precedential].


The PTO argued that CHINATOWN is a defined neighborhood in New York City, that Applicant is not located in Chinatown, that Chinatown is known for its restaurants and cuisine, and that the location of a restaurant would be material to a consumer's choice of the restaurant.

Applicant argued that the primary meaning of CHINATOWN is not geographic but rather only suggests a style of Chinese cuisine.

The Board found that Chinatown, "which is only one-half mile from applicant's restaurant, is a continually-expanding neighborhood." More importantly, "Chinese restaurants located in the CHINATOWN in Manhattan, and for that matter in any other CHINATOWN, are not associated with a particular food, like steaks, or a style of quality of cuisine that would distinguish them from Chinese restaurants in places not identified as CHINATOWN."

Moreover, the incongruity of combining CHINATOWN with BRASSERIE "lends further support" to the Board's conclusion that "the primary significance of the mark is not that of a generally known geographic location" for Section 2(e)(3) purposes.



In addition, there is no possible services-place association here. "[W]e fail to see how someone dining in a restaurant ½ mile away would connect the services in applicant's restaurant in a meaningful way with the services offered in CHINATOWN, however that is defined."

"We have no evidence that the CHINATOWN in Lower Manhattan, nor any other one, is associated with a distinct type of style of Chinese cuisine. Neither the quality, nor the authenticity, nor any other feature of the restaurant services offered within the 'borders' of CHINATOWN would necessarily differ in a meaningful way from the same services offered ½ mile away at another restaurant featuring Chinese cuisine. While a tourist may be confused about the location of the restaurant and/or the nuances of the neighborhood borders, this is not relevant to any services-place association delineated in Les Halles."

Finally, since there is no services-place association, there can be no material effect on the purchasing decision.

And so the Board reversed the refusal to register.

TTABlog comment: So there you have it. Some poor sap who thinks he's in Chinatown because he's eating at the CHINATOWN BRASSERIE is actually not in Chinatown at all. Is he being deceived? I think so. Is it a Section 2(e)(3) violation? No, says the Board. And I don't disagree. But what do you say to that poor sap who just wrote a postcard home to his sweetheart in Champaign-Urbana, Illinois, bragging that he ate lunch in Chinatown? Maybe, "Get a map, you hick!"

Text Copyright John L. Welch 2008.

Tenth Circuit Applies MedImmune in Trademark Declaratory Judgment Action

The Filewrapper blog reports here on a recent 10th Circuit ruling that applies the Supreme Court's MedImmune declaratory judgment analysis in a trademark case. The court found that the interactions between the parties, coupled with five TTAB proceedings, were sufficient to satisfy the Article III "case or controversy" jurisdictional requirement. Surefoot LC v. Sure Foot Corp., Appeal No. 06-4294 (July 8, 2008).

The 10th Circuit observed that the Supreme Court in MedImmune, Inc. v. Genentech, Inc., 127 S. Ct 764 (2007), "expressly rejected the 'reasonable apprehension of imminent suit' test on the ground that it imposed an additional hurdle inconsistent with the Court's Article III jurisdprudence." Although MedImmune was a patent case, the court found no reason why "the interpretation of the Declaratory Judgment Act's terms depends on the nature of the intellectual property right at issue, and nothing in MedImmune's analysis suggests one."

In light of MedImmune, the court stated the test to be as follows:

"a declaratory judgment suit must be 'definite and concrete, touching the legal relations of parties having adverse legal interests,' must be “‘real and substantial’ and ‘admit of specific relief through a decree of a conclusive character, as distinguished from an opinion advising what the law would be upon a hypothetical state of facts.’” MedImmune, 127 S. Ct. at 771 (quoting Aetna, 300 U.S. at 240-41). Put differently, 'the question in each case is whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.' Id. (quoting Maryland Cas., 312 U.S. at 273)."

Here, the court found that a justiciable controversy did exist in light of "five separate TTAB oppositions combined with an extensive history of interactions between the parties in which the declaratory defendant expressly and repeatedly suggested historical and existing infringing activity by the declaratory plaintiff."

The court was careful to note that it was not ruling on a situation where "the only indicia of a live infringement controversy is the existence of a single TTAB opposition proceeding, or perhaps a single cease-and-desist letter .... It is only this combination that we pass upon today and which we hold suffices to demonstrate the existence of Article III jurisdiction."

The court then remanded the case to the district court to decide whether it should exercise its discretion to take the declaratory judgment case.

TTABlog comment: Hat tip to Ron Coleman and his Likelihood of Confusion blog for pointing to the Filewrapper blog. Further commentary here at the Las Vegas Trademark Attorney blog.

Text Copyright John L. Welch 2008.

Precedential No. 38: TTAB Dismisses Opposition as Untimely - Electronic Payment Incomplete and Faxed Filing Ineffective

The vibes were not good for Vibe Records, Inc. when its president tried to file an opposition to registration of the mark VIBE REVOLUTIONS for "Providing links to web sites of others featuring retail stores, coupons, online music purchases and magazine subscriptions." Applicant Vibe Media Group, LLC moved to dismiss on the ground that the notice of opposition was not timely filed. The Board agreed and dismissed the opposition as a nullity. Vibe Records, Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280 (TTAB 2008) [precedential].



Opposer obtained an extension of time to March 14, 2007 within which to file its opposition. On March 13th, its president attempted to file a notice of opposition electronically, but payment of the fee was not successfully completed. Therefore Opposer received neither the onscreen "Receipt" nor the e-mail acknowledgment that accompanies a successful filing. The payment was electronically processed by the PTO via a charge to opposer's credit card on March 16, 2007, but that was too late (see Rule 2.101(d)(4)).


Perhaps recognizing the payment problem, Opposer on March 14th attempted to file the notice of opposition via facsimile. (This resulted in the notation "3/14/2007" appearing at the "bottom of the page" [sic] of the notice of opposition, indicating that the fax was received by the PTO on that date.)

However, Rule 2.195(d)(3) states that facsimile transmissions are not permitted and will not be accorded a date of receipt (except for notices of ex parte appeal). Therefore, the facsimile by Opposer "can be given no effect."

The Board therefore dismissed the opposition as a nullity, noting that Opposer's fee will be refunded and that Opposer's remedy in this matter "lies in a petition to cancel."

TTABlog note: Perhaps Opposer should have hired an attorney for the filing, which was attacked by Applicant not only on the ground of timeliness, but also for failing to state a claim.

Text Copyright John L. Welch 2008.

TTABlog Photos for Today

I went to the soccer game at Gillette Stadium last night with my two sons, and we saw the Revolution beat Mexican side Pachuca 1-0 in the Superliga Tournament. That adventure, and the dearth of interesting decisions from the Board, led me to post these two photographs, taken by my son Jack of my son Peter, a few months ago in Paris.

Click on photo for larger picture
Peter is moving to California in a few weeks to attend Berkeley Law School. On balance, it makes me slightly more happy than sad.

Click on photo for larger picture
Photographs Copyright Jack Welch 2008.

Precedential No. 37: Judge Rogers Beams as Section 2(d) Case is Tried Without Discovery

The Board dismissed a Section 2(d) opposition to registration of the mark ONE FAB FIT for women's foundation garments, undergarments, and intimate apparel, finding the mark not likely to cause confusion with the mark ONE TRUE FIT, registered for outwear, including coats shorts, skirts, jeans, and pants. Opposer Lee failed to establish that the goods are related, and the Board found the marks "dissimilar when viewed in their entireties." In a concurring "opinion," Judge Rogers noted that this case was tried without the benefit of discovery (neither party answered the other's requests), suggesting that "rather limited and focused" discovery may be all that is necessary in a Board proceeding. H.D. Lee Co. v. Maidenform, Inc., 87 USPQ2d 1715 (TTAB 2008) [precedential].


The Board first dealt with evidentiary issues, including Applicant Maidenform's objection to all the documents introduced by Opposer Lee on the ground that they were not produced in response to discovery requests. Maidenform noted that Lee did not file a motion to compel. The Board sided with Lee, pointing out that opposer, by not responding, "in no way led applicant to believe that there were no documents responsive to its requests." In short, if Maidenform wanted documents, it should have filed a motion to compel.

Moreover, Maidenform did not respond to Lee's discovery requests, yet it introduced evidence that was "purportedly requested in opposer's discovery." [The TTABlog hesitates to use the phrase "tit for tat" here].

Turning to likelihood of confusion, the Board first considered the similarity and nature of the goods, finding the case "long on argument and short on evidence." Lee submitted eight third-party registrations for clothing products that are identified in both Lee's registration and the opposed application. The Board, however, found this evidence "not particularly compelling" in light of the differences in the clothing products and Opposer's testimony that the parties are not competitors and that the goods are not related. Lee contended that undergarments and outerwear are considered complementary products and my be purchased as part of an ensemble, but the Board declined to take judicial notice of "women's shopping practices."

It found that the parties' goods travel through the same channels of trade and are purchased by the sames classes of consumers, a factor favoring Lee. Because the identified goods include inexpensive items bought by ordinary consumers, the conditions of sale also favor Lee.

As to the strength of Opposer's mark, however, the Board noted that ONE TRUE FIT is a sub-brand that is never used as a stand-alone mark, i.e., never without the LEE trademark. Moreover, ONE TRUE FIT has a suggestive connotation and therefore the mark is not entitled "to the same scope of protection as arbitrary marks." In sum, Lee failed to demonstrate that ONE TRUE FIT is a widely recognized mark entitled to broad protection.

As to the marks, "there is a difference in nuance that creates a different commercial impression," one being formal and the other more "slangy." Coupling this observation with the highly suggestive nature of ONE TRUE FIT, the Board found the marks to be dissimilar.

Balancing all the factors, the Board ruled that the marks not likely to be confused, and it dismissed the opposition.

Judge Gerard F. Rogers
In his concurrence, Judge Rogers took the opportunity to point out that this case proceeded under the old rules, which required "no disclosures." He asserts that:

"The fact that this case was tried and defended without either disclosures or discovery responses places it in stark contrast to the many Board cases in which traditional discovery processes have often unnecessarily complicated proceedings."

He observed that "the absence of discovery responses caused no significant prejudice to either party's ability to marshal support for the claim or defense it had the responsibility to support and prove." [Emphasis in original].

Judge Rogers, chief architect of last year's TTAB rules overhaul, does not contend that "there is no place for discovery in a Board proceeding." But if parties want to avoid "the expenditure of resources that often accompanies entry into a district court," they "must accept that discovery practice in Board proceedings can and should be rather limited and focused."

TTABlog comment: Is Judge Rogers concurrence really an "opinion," or a lecture? I don't see how it has much to do with deciding the case at hand. Wouldn't his comments be more appropriate in an academic article than in a Board decision?

A reader points out that, although Judge Rogers claims that neither party was prejudiced by the lack of discovery, both parties failed to prove their main contentions. Maybe discovery would have helped.

Judge Rogers has, in my opinion, a misguided view that parties (and their counsel) actually want each case to proceed to a prompt Board decision. I think most parties simply want to win the case, and if they can use discovery as a tool to force the other side to capitulate at an early stage, they will do so. They are not that interested in helping the other side via voluntary or informal disclosures; what they are interested in is victory

Text Copyright John L. Welch 2008.

TTABlog Euro 2008 Soccer Pool Winners Announced

The winners of the TTABlog Euro 2008 Soccer Pool accept their prizes at the offices of Lowrie, Lando & Anastasi, LLP. Left to right: James De Vellis (Germany), yours truly, and Lisa Saunders (Spain).


Photograph Copyright Geraldine MacLellan 2008.

TTAB Reverses Mere Descriptiveness Refusal of "SAFETY JOGGER" for Work Shoes

The Board reversed a Section 2(e)(1) refusal to register the mark SAFETY JOGGER, finding it not merely descriptive of "clothing, namely, work shoes and boots, and headwear." In re Cortina N.V., Serial No. 79019306 (July 1, 2008) [not precedential].


The PTO relied on dictionary definitions of the word "safety" and on Internet advertisements referring to various athletic shoes as "joggers." The Examining Attorney maintained that the "logical and apparent meaning" of SAFETY JOGGERS is "“that applicant’s goods involve a sneaker shoe that creates a freedom from injury." [TTABlog comment: Where does it say "sneaker" in the identification of goods?]

Applicant’s website describes its "Safety Jogger"” shoes as "high performance safety shoes," with features such as a "steel toe cap," "antiperforation steel sole," "extreme comfort anatomic insole," and “breathable leather uppers." [TTABlog comment: So what? What does Applicant's website have to do with it? Suppose it described SAFETY JOGGERS as a ham sandwich? Isn't the identification of goods clear enough?]

The Board noted that the PTO's evidence regarding third-party use of the term "jogger" relates to athletic shoes, but that Applicant is not seeking to register its mark for athletic shoes. With regard to footwear, its goods are limited "work shoes and boots."

"There is no evidence in the record that the term 'SAFETY JOGGERS' would convey an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of 'work shoes and boots.' Rather, it requires imagination, thought, and perception to determine how SAFETY JOGGERS relates to 'work shoes and boots.'"

The Board found that Applicant’s mark suggests that it footwear "feature the comfort and agility of athletic shoes."

Finally noting that any doubt regarding the application of 2(e)(1) are to be resolved in favor of the applicant, the Board reversed the refusal.

Text Copyright John L. Welch 2008.

Finding Laches in 62-Month Delay, TTAB Dismisses 2(d) Cancellation Petition

Sustaining Respondent Braided Accents, L.L. C.'s affirmative defense of laches, the Board dismissed a petition for cancellation of the mark BRAIDED ACCENTS & Design ["BRAIDED" and the pictorial representation of a braid disclaimed] for moldings, door frames, window frames, rails and wainscotting. Petitioner Klise Manufacturing claimed likely confusion with its registered and previously-used mark ACCENT for non-metal decorative molding and trim, but the Board found that its delay of 62 months in filing the petition for cancellation had prejudiced Respondent and was unreasonable and unexcused. Klise Manufacturing Co. v. Braided Accents, L.L.C., Cancellation No. 92045607 (July 3, 2008) [not precedential].


Petitioner established standing and priority by reason of its constructive use of the mark ACCENT from June 24, 1977 (the filing date of the application which issued as its pleaded registration). Respondent began use of its mark in 1998.

Likelihood of confusion: The Board found the goods to be in part identical and, in light of the lack of restrictions in either party's registration, it was required to presume that the goods travel in the same normal channels to the usual classes of purchasers for those goods. As to the marks, the word ACCENT is the dominant portion of Respondent's mark, and the Board found the marks in their entireties to be "more similar than dissimilar."

The Board noted the lack of actual confusion during the nine years that the marks have been in concurrent use, and it found some overlap of use "inasmuch as both parties sell their goods to distributors and have advertised their goods nationally, including at trade shows." However, there was no evidence that "the parties share common distributors for their goods or that they advertised in the same publications or attended the same trade shows." And so the lack of actual confusion "weighs only slightly in favor of respondent."

Considering all the du Pont factors, the Board found confusion likely.


Laches: The affirmative defense of laches requires undue or unreasonable delay by petitioner in asserting its rights and prejudice to respondent resulting from the delay. Unless confusion is inevitable, laches bars a petition for cancellation grounded on Section 2(d).

The Board found that Petitioner Klise had actual notice of Respondent's use of its mark as early as 1998 or 1999, both dates preceding the publication date (January 2, 2001) of the application that led to the challenged registration. However, in a cancellation proceeding, "the objection is to the rights which flow from registration of the mark," and so laches begins to run from the publication date of January 2, 2001. The petition for cancellation was filed on March 20, 2006, a delay of approximately five years and two months. [TTABlog note: Respondent's registration issued on March 27, 2001, so the petition for cancellation was filed one week before the 5-year statute of limitations of Section 14 had run].

The Board pointed out that Respondent need not show reliance on the delay: i.e., "petitioner does not have to overtly or covertly lull respondent into believing petitioner would not act."

Here, Respondent Braided Accents "greatly expanded its operations in recent years." Petitioner acknowledged that Respondent had opened a new manufacturing building and showroom. In view thereof, the Board found that the length of delay was "significant and that prejudice would result" if the registration were cancelled.

Petitioner asserted, however, that its delay was justified under the doctrine of "progressive encroachment," i.e., that it decided not to act until Respondent expanded its operation to the point where it encroached on petitioner's business. The Board found that this argument "rings hollow." Petitioner was never put on notice by petitioner "as to any limits to its geographic area of commerce, production capacity, or any possible encroachment upon petitioner's business." Respondent did not change the nature or type of its goods, "but stayed within its rights accorded to it by virtue of the subject registration." Thus, the Board concluded, Petitioner's delay was not justified.

Finally, the Board noted that the defense of laches is inapplicable if confusion is inevitable, i.e., where there is no reasonable doubt that likelihood of confusion exists. In such a case, the injury to respondent caused by the delay is outweighed by "the public's interest in preventing confusion." Here, the Board found that confusion is likely, but it is not inevitable:

"Although the goods are identical in part, the marks are not so similar that we can find confusion to be inevitable. The marks are somewhat suggestive and may be entitled to a narrower scope of protection than purely arbitrary or coined marks. In addition, there has been over nine years of concurrent use of the marks without any reported instances of actual confusion."

And so, the Board dismissed the petition for cancellation.

Text Copyright John L. Welch 2008.

Divided TTAB Panel Reverses Mere Descriptiveness Refusal of "CRAZY GOOD" for Toaster Pastries

It took 32 pages and three opinions for the Board to reverse the PTO's mere descriptiveness refusal of CRAZY GOOD "for toaster pastries, [and] fruit preserve filled pastry product[s]." Judges Hohein and Bucher agreed that the term would be seen as overblown hyperbole and "mere puffery" and not as descriptive of the goods in any particular way. In dissent, Judge Grendel maintained that, even if the term were mere puffery, it is still laudatory and thus merely descriptive of the goods. In re Kellogg North America Co., Serial No. 78724957 (June 30, 2008) [not precedential].


The PTO relied on dictionary definitions of "crazy" and "good," on an Urban Dictionary entry for "crazy good," and on various Internet webpages showing use of the term "crazy good" in connection with food items and in other contexts. Kellogg argued that combining "crazy" with "good" is incongruous and is not "laudatory/descriptive in the way that commonly used terms like 'exquisite,' 'preferred,' 'world class' and 'America's Best' or "America's Favorite' are."

Judge Hohein went through the PTO's evidence piece by piece and discounted it, concluding that the evidence was "insufficient to demonstrate satisfactorily that the mark 'CRAZY GOOD' would immediately convey, without speculation or conjecture, only a merely descriptive, laudatory significance to consumers." Instead, consumers would most likely understand the term "as an exaggeration or extravagant statement of the goodness of applicant's [goods] rather than being taken literally as a term which merely describes goods which are extremely or otherwise exceedingly or superlatively good in some particular way or ways."

At a minimum, Judge Hohein found that a doubt existed as to the mere descriptiveness of CRAZY GOOD, and, of course, that doubt must be resolved in favor of Applicant.

In his concurring opinion, Judge Bucher, too, observed that Applicant gets the benefit of the doubt in a Section 2(e)(1) mere descriptiveness case. He applied four tests that "various tribunals" have employed -- the dictionary test, the imagination test, the competitors' need test, and the competitors' use test -- and found the mark not to be merely descriptive under any of the tests. He "would argue" that the phrase "seems to be mere puffery which would leave customers for the pastries to speculate as to what particular quality, characteristic or function the term refers."

Judge Grendel dissented, finding the PTO's evidence sufficient "to establish that CRAZY GOOD would be perceived by purchasers as nothing but a laudatory and thus merely descriptive phrase." He pointed out that, under Judge Hohein's standard, even the word GOOD by itself could not be considered laudatory because "it is not sufficiently literal or particular as to what it is about the product or service that is 'good.'"

In any event, the panel, by majority vote, reversed the refusal.

TTABlog comment: I agree with Judge Grendel that CRAZY GOOD is laudatory and, were it not such an off-beat term, should be deemed merely descriptive. But I find that the off-beatness of the term makes the consumer recognize that the mark is not just laudatory but is laudatory in a quirky way that makes it distinctive. It's like the term TTABlog, which the Board found to be merely descriptive. TTABlog may immediately convey information about this blog, but I still believe that the quirkiness of the term TTABlog makes it inherently distinctive. Because of TTABlog's telescoped spelling and awkward pronunciation, a reader knows that it's a trademark and not a mere descriptor.

As I unsuccessfully argued, some terms (like SUGAR & SPICE) immediately convey information about the goods, but are still deemed inherently distinctive because they have that requisite quirkiness (i.e, here the double entendre) that make the term more than a descriptor; it's an inherently distinctive trademark. So does CRAZY GOOD. So does TTABlog.

So I would reach the same result as the panel majority, but by a quirky, off-beat path.

Text Copyright John L. Welch 2008.

Precedential No. 36: Finding Specimen Doesn't Match Drawing, TTAB Affirms Refusal of "UPPER 90" for Clothing

In its attempt to register the mark UPPER 90 for various clothing items, Applicant Yale Sportswear Corp. was shown a red card because it violated Trademark Rule 2.51(b), which states that "the drawing of the mark must be a substantially exact representation of the mark as used on ... the goods ...." Yale's specimen of use (the hangtag shown immediately below) includes a degree symbol after "90", a difference that, according to the Board, "substantially changes the overall impression of the mark." In re Yale Sportswear Corp., 88 USPQ2d 1121 (TTAB 2008) [precedential].


Yale provided two declarations, one from its marketing director and the other from a soccer coach and player, asserting that "in the soccer world, the ordinary consumer of the goods in this case, the addition of [the degree symbol] to UPPER 90 would not constitute a material alteration of the mark." They asserted that the term UPPER 90, with or without the degree symbol, would be recognized as referring to "the upper corner zones formed by the crossbar" of the goal.

The Board, however, found the degree difference to be material:

"Without the degree symbol, it is unclear what the '90' in the drawing might refer to. However, when viewed on applicant's specimens of use, the degree symbol in the mark would clearly be perceived as modifying the preceding number, making clear that its meaning is 'ninety degrees,' indicating that it refers to either an angle or a temperature. As such, the mark might possibly suggest to the potential purchaser that applicant's sports clothing is made for playing in especially hot weather, or indeed that the mark refers to an angle, as applicant contends."

The Board concluded that the mark in the specimen has a different connotation, pronunciation, and appearance than the mark in the drawing. Moreover, UPPER 90 "cannot be severed from the degree symbol without altering the meaning, pronunciation, and, to some extent, the appearance of the mark."

Applicant's declarations did not help because the viewpoints expressed therein were "not that of the average consumer." Both declarants are "experienced athletes of goal sports - soccer players in particular - who are familiar with the term UPPER 90 (or UPPER 90°), and would recognize the two to be equivalent." But the Board must consider the goods as identified in the application, where there are no limitations as to classes of customers, channels of trade, or intended uses for the goods. Accordingly, the Board "may not presume that applicant's purchasers are soccer players or athletes."

In short, there was no evidence that "members of the general public are familiar with the term 'Upper 90' or 'Upper 90°,' let alone view them as 'substantially exact.'"

The Board therefore affirmed the refusal.

TTABlog query: Wouldn't people who are unfamiliar with soccer and other goal sports see the two versions of the mark as referring to a temperature in the upper 90s? So even for non-aficionados of soccer, ice hockey, field hockey, lacrosse, polo, and other goal sports, wouldn't the addition of the degree sign make no difference anyway? Isn't the Board being a bit too hypertechnical here? I mean, come on! Give these guys a break!

I wonder if those non-aficianados might view the supposed degree symbol as an R-in-a-circle symbol, but without the "R". Once the mark is registered, the "R" would be inserted. So either version would be read as UPPER 90.

Text Copyright John L. Welch 2008.

Precedential No. 35: Despite Amendment of Application, TTAB Sustains Fraud Claim in "GRAND CANYON WEST" Opposition

The Hualapai Tribe was knocked out in the second round in its attempt to register GRAND CANYON WEST for various sightseeing services. In the first round [TTABlogged here], the Board sustained in part the opposition of Grand Canyon West Ranch on the ground of nonuse of the subject mark for some of Applicant's services, and it granted Applicant's motion to deleted those "unused" services. Opposer then obtained leave to add a fraud claim, and the Board has now sustained the opposition on that ground. Grand Canyon West Ranch, LLC v. Hualapai Tribe, 88 USPQ2d 1501 (TTAB 2008) [precedential].


The first two-thirds of this decision deals with the Board's ruling that the mark GRAND CANYON WEST is merely descriptive and/or primarily geographically descriptive of the Tribe's services. However, although it deemed GRAND CANYON WEST to be "highly descriptive" of Applicant's services, the Board found acquired distinctiveness based upon Applicant's use of the mark for nearly twenty years, its extensive advertising and promotion, the "increasing and now substantial levels of sales," and the level of media coverage. The Board therefore dismissed this claim.

As to the fraud claim, Applicant had identified its services as including transportation by "rail, tram" and "non-motorized vehicles featuring bicycles, and domestic animals." After the opposition was filed, the Tribe moved to amend its application to delete those services. Twenty days later, Opposer moved for summary judgment on the ground that Applicant had not used the mark on all the recited services. Opposer had not pleaded fraud, and it affirmatively stated that it was not seeking summary judgment on the ground of fraud.

Only after the Board's first decision - i.e., after the application was amended - did Opposer move to add a fraud claim. Nonetheless, the Board found fraud, pointing out that Applicant had not sought to amend its application until after it was opposed:

"We also note that it was not until the application was challenged in this opposition proceeding that applicant sought to amend its application to delete those services. See University Games Corp. v. 20Q.net Inc., ___ USPQ2d ___, Oppositions Nos. 91168142 and 91170668 (TTAB, May 2, 2008)," [TTABlogged here].

The Tribe argued that the offending language was added by amendment during prosecution, when Applicant's attorney inadvertently agreed to the identification proposed in an Examiner's amendment. It also argued that the "examiner's amendment is unlike the verified statement of goods in an affidavit of continued use ... or a statement of use."

The Board was not sympathetic:

"The accuracy of the information applicant provided in agreeing to the examiner's amendment was no less critical to the application than the information applicant provided in the application as filed. The integrity of the registration system rests on the accuracy of the information provided in either form. Applicants must ensure that all information they provide is true and accurate whether or not it is verified."

The Board therefore sustained the fraud claim, but noted that its ruling does not affect any common law rights the Hualapai Tribe may have, nor does it prohibit the Tribe from filing a new application to register its mark for the pared-down list of services.

TTABlog comments: Judge Walsh wrote this decision. It is interesting to note that he cites the University Games decision for the proposition that fraud is not cured by an amendment filed after an application has been challenged, suggesting that an amendment made before challenge would cure the fraud problem. That proposition is not found in the majority opinion (Judges Quinn and Grendel) in University Games, but only in his own concurring/dissenting opinion! How is a non-majority opinion precedential? What exactly is the TTAB's law on this point? When, how, and why may a supposed "fraud" be cured?

Moreover, note that the Hualapai Tribe sought to amend its application before any claim of nonuse or fraud was made. It is true that the opposition had already been filed, but the ground for the opposition was descriptiveness. Suppose the Tribe had sought to amend its registration the day before the opposition was filed. Then would it not be fraud, as Judge Walsh posited? Would the Tribe have enjoyed a rebuttable presumption that it had not committed fraud, as the majority held in University Games?

Suppose the Tribe sought amendment before the opposition was filed, but after the potential opposer had obtained an extension of time to oppose? No fraud? Rebuttable presumption?

Not to be lost in the uproar is the Board's ruling that acceptance of an Examiner's amendment of the recitation of services constitutes fraud, even though the newly-accepted listing of services was not verified at the time. Contrast the stringent treatment of the Tribe's acceptance of the Examining Attorney's amendment - based on the TTAB's concern with the "integrity of the registration system" - with the Board's new willingness to afford applicants and registrants the benefit of the doubt when they seek to correct false, verified statements regarding use. One might ask, what is more damaging to the integrity of the registration system: a verification that is false? or a non-verified amendment that is incorrect?

TTABlog addendum: The Las Vegas Trademark Lawyer blog further reports here.

Text Copyright John L. Welch 2008.

Precedential No. 34: TTAB Okays Stipulation Between Red Sox and "RAD SEX" Applicant to Waive Initial Disclosures

Bostonian Harry F. Chaveriat III, is seeking to register the mark RAD SEX for baseball caps, sweatshirts, t-shirts, and track pants. The Boston Red Sox have balked at the idea and have filed an opposition on the grounds of likelihood of confusion, false connection, and disparagement [TTABlog query: dilution?], and on the ground that the mark is immoral or scandalous. Sounds interesting, even to a White Sox fan like me. Unfortunately this decision deals only with a procedural issue: the Board accepted a stipulation of the parties to "waive any requirement to make initial disclosures in this proceeding." Boston Red Sox Baseball Club Limited Partnership v. Chaveriat III, 87 USPQ2d 1767 (TTAB 2008) [precedential].


After the discovery and settlement conference, the parties filed a consented “Notice of Waiver of Initial Disclosures,” agreeing to waive the initial disclosures requirement. The Board anticipated such a possibility in its August 1, 2007 Notice of Final Rulemaking, 72 Fed. Reg. 42242, 42246, although it "strongly prefers the parties to include a description of the parties' alternate plans for discovery, even if such plans merely provide for use of traditional discovery devices."

Nonetheless, the Board approved the waiver, ruling that "in the absence of any statement from the parties other than that they waive their reciprocal obligations to make initial disclosures, the Board will presume the parties plan to utilize traditional discovery devices, as permitted by the Trademark Rules and Federal Rules of Civil Procedure."

TTABlog comment: A bit of a one-side deal, don't you think? Which party has more to disclose, the ITU applicant or the BoSox?

Text Copyright John L. Welch 2008.

TTAB Agrees that "BIOSILK" is Deceptive for Clothing

It took only seven pages for the Board to explain its affirmance of the PTO's Section (a) deceptiveness refusal of BIOSILK for men's and women's clothing. Applicant argued, to no avail, that consumers would not be deceived but would recognize the term as merely an expansion of Applicant's well-known cosmetics mark to a new product line. In re Farouk Systems, Inc., Serial No. 78646723 (June 19, 2008) [not precedential].


The Board observed that a mark is deceptive under Section 2(a) if (1) the term misdescribes the character, quality, function, composition, or use of the goods, (2) prospective purchasers are likely to believe that the misdescription actually describes the goods, and (3) the misdescription is likely to affect the purchasing decision.

Applicant did not clarify whether its goods contain silk (it said it didn't know what the goods will be made of), and so the PTO and the Board presumed that the goods "include items consisting of silk." Examining Attorney Steven Fine argued that the addition of the prefix "bio" to the word "silk" does not "provide a basis for believing that the goods are in fact not made of real silk." The Board agreed:

"The prefix BIO is defined as 'life; living organisms or tissue.' *** The term SILK is defined as 'a lustrous, tough elastic fiber produced by silkworms and used for textiles.' *** Thus, the examining attorney argues that 'one would expect a prefix connoting life and living things to be used in association with natural fibers rather than synthetic one.'"

The Board found that BIOSILK would connote the natural fiber silk and therefore would misdescribe clothing not made of silk.

Regarding Applicant's argument regarding the renown of the BIOSILK mark for its cosmetic products, the Board pointed out that many customers would not know that name or would not think to associate the source of the clothing with the source of the cosmetics.

As to the second prong of the deceptiveness test, because silk is a common material for clothing, "consumers would certainly believe that applicant's clothing is made of silk.'

Finally, with regard to materiality, the PTO website evidence showed that silk is a desirable material for clothing and the misdescription would therefore affect the purchasing decision.

And so, Board concluded that BIOSILK is deceptive in connection with clothing, and if affirmed the refusal.

Text Copyright John L. Welch 2008.

TTAB Affirms Rejection of Catalog Page as Trademark Specimen of Use

Distinguishing In re Valenite Inc., 84 USPQ2d 1346 (TTAB 2007), the Board found Applicant U.S. Tsubaki, Inc.'s specimen of use unacceptable, and so affirmed a refusal to register the mark TSUBAKI: THE CHOICE FOR CHAIN for machines and various machine parts. In re U.S. Tsubaki, Inc., Serial No. 78698066 (June 17, 2008) [not precedential].

(Click on photo for larger image)
Applicant Tsubaki submitted an excerpt from a catalog as its specimen of use (see above). Examining Attorney Anthony M. Rinker maintained that the specimen did not qualify as a display associated with the goods. (See Lanham Act Section 45 (definition of "use in commerce") and Rule 2.56(b)(1)).

The Board observed that a display used in association with the goods "is essentially a point-of-sale display designed to catch the attention of purchasers as an inducement to consummate a sale." TMEP Section 904.04(h) states that a catalog may be an acceptable specimen of use if (1) it includes a photo or picture of the goods; (2) the mark is displayed near the depiction of the goods; and (3) it includes information necessary to order the goods (e.g., an order form or a phone number, mailing address, or e-mail address for placing orders).

"However, the mere inclusion of a phone number, Internet address and/or mailing address on an advertisement is not in itself sufficient to meet the criteria for a display associated with the goods. There must be an offer to accept orders or instruction on how to place an order." Id.

Here, the crucial issue was whether the specimen "includes the information necessary to order applicant's chain." Tsubaki contended that, as in Valenite [TTABlogged here], an order form would not be appropriate in light of "the multitude of different types of chains and the need for customization to suit particular applications" which may necessitate "some technical consultation."


The Board was not impressed. First, there was no record evidence as to how applicant and its competitors sell chain, or "whether customers, in fact, 'know that orders are placed over the phone.'" In Valenite, the appellant submitted a declaration verifying that its customers regularly order products by telephoning the customer service department.

Second, here Applicant's specimen does not contain the information necessary to order chains. In Valenite, the webpage specimen contained links to appellant's "Technical Resource Center," which included specification sheets, online calculators, and reference tables, and which provided toll-free customer service telephone numbers. Thus the Valenite website provided "sufficient information that the customer can select a product and call customer service to confirm the correctness of the selection and place an order." Valenite at 1349-1350.

The Board found that Tsubaki's catalog page is more like a fact sheet, catalog page, or brochure. It does not contain "any information normally associated with ordering products by the telephone or the Internet." At best, the specimen provides a telephone number and a web address, but even the website "does not provide a means for ordering applicant's chain online (or by telephone)."

The Board therefore found that Tsubaki's specimen is not a display associated with the goods, and the refusal was affirmed.

Text Copyright John L. Welch 2008.

TTAB Posts July 2008 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled eleven (11) hearings for the month of July, 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.


July 9, 2008 - 10 AM: In re MC MC S.R.L., Serial No. 79022561 [Section 2(a) false connection refusal of MARIA CALLAS for precious metals and jewelry].

Maria Callas
July 9, 2008 - 2 PM: In re The Great Books Foundation, Serial No. 78775079 [Section 2(e)(1) mere descriptiveness refusal of SHARED INQUIRY for educational services].

July 10, 2008 - 10 AM: In re CHA Direct, Inc., Serial No. 78664613 [Section 2(d) refusal to register the mark TRES JOLIE for women's apparel on the ground of likely confusion with the registered marks TRES JOLI and TRES JOLIE for eyeglasses, sunglasses, and eyeglass frames].


July 15, 2008 - 10 AM: Kohler Co. v. Kohler Homes, Opposition Nos. 91152287 and 91152290 [Section 2(d) and dilution oppositions to KOHLER HOMES for "custom construction of homes" and KOHLER ASSOCIATES ARCHITECTS for "architectural design," in view of the mark KOHLER, used and registered for various kitchen and bath products].

July 15, 2008 - 2 PM: In re TreeRadar, Inc., Serial No. 78714647 [Section 2(e)(1) mere descriptiveness refusal of TREERADAR for radar imaging systems and services for analyzing tree and root health].


July 22, 2008 - 10 AM: In re True Value Co., Serial Nos. 78841539; 78840980; 78843119; 78843127; 78841512; 78841557; and 78840966 [Section 2(e)(1) mere descriptiveness refusals to register MASTER PLUMBER, MASTER ELECTRICIAN, and MASTER MECHANIC for various plumbing products, electrical products, and power tools and accessories, respectively].

July 22, 2008 - 2 PM: In re Bearington Collection, Inc., Serial No. 78843023 [Section 2(d) refusal of CUDDLE ME SLEEPERS for "toy blankets consisting of an animal head rattle affixed to a small blanket," in view of the registered mark CUDDLE ME for comforters].


July 23, 2008 - 10 AM: In re RIC Investments, LLC, Serial No. 78651809 [Section 2(d) refusal of the mark SOOTHIE for baby bottles, baby bottle nipples, teething rings, and baby bottle brushes, in view of the registered mark SOOTHIES for glycerin pad to ease nipple pain during breast feeding.]


July 23, 2008 - 11 AM: In re Catapult Integrated Services Inc., Serial No. 78736592 [Section 2(d) refusal of CATAPULT for advertising, marketing, and promotion services, in view of the registered mark CATAPULT DIRECT MARKETING for direct marketing services].

July 24, 2008 - 10 AM: In re SteamFast Europe Ltd., Serial No. 76636092 [Section 2(e)(1) mere descriptiveness refusal of ZIP AND STEAM for "cooking containers, namely, plastic cooking bags and pouches"].

July 29, 2008 - 2 PM: World Triathlon Corp. v. Traditional Medicinals, Inc., Opposition No. 91110391 [Section 2(d) an dilution opposition to IRONWOMAN for herbal teas and diet supplements, in light of the registered marks IRONMAN, IRONWOMAN, and other IRON-formative marks].


Text Copyright John L. Welch 2008.