TTAB Posts September 2008 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled four (4) hearings for the month of September, 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.


September 18, 2008 - 10:30 AM: In re Vector Products, Inc., Serial No. 76645692 [Section 2(e)(1) mere descriptiveness refusal of TRAVEL COOLER AND WARMER in the form shown below for "portable electric cooler and warmer for use with foods, cans and drink." ]


September 23, 2008 - 11 AM: In re LG Electronics, Inc., Serial No. 78737356 [Section 2(d) refusal to register the mark BLURADIANCE for "domestic cooking oven ranges; electric cooking ranges; microwave ovens," in view of the registered mark RADIANCE for gas stoves.]

September 30, 2008 - 10 AM: Stuart Spector Designs, Ltd., et al. v. Fender Musical Instruments Corp., Consolidated Oppositions No. 91161403, etc. [Sixteen consolidated oppositions to registration of the three product configuration marks shown below, for guitars, on the grounds of mere descriptiveness and genericness.]


September 30, 2008 - 2 PM: In re Dial-A-Mattress Operating Corp., Serial No. 787966821 [genericness refusal of MATTRESS.COM for "online retail store services in the field of mattresses, beds, and bedding."]

Text Copyright John L. Welch 2008.

TTAB Affirms 2(d) Refusal of "PROTIVA" for Smart Cards over "PROTEVA" for Computers

Because "computers" is "an extremely broad term encompassing a wide range of devices which could be sold to a wide range of potential purchasers," the Board sustained a Section 2(d) opposition to registration of the mark PROTIVA for "multi-factor authentication apparatus for logical access consisting primarily of encoded smart cards, digitally encoded tokens, and authentication software." Despite the sophistication of Applicant's purchasers, the Board found Applicant's mark likely to cause confusion with the registered mark PROTEVA for "electrical and scientific apparatus, specifically computers." In re AXALTO S.A., Serial No. 78724979 (August 14, 2008) [not precedential].


The Board, not surprisingly, found the marks "highly similar." As to the goods, Applicant argued that its products are "marketed toward and purchased by highly sophisticated customers," whereas registrants computers "are marketed towards the general public." Examining Attorney Ahsen Kahn, however, provided "substantial evidence in support of the position that the respective goods are overlapping and closely related." The Board particularly focused on a dictionary definition of "computer" in rejecting Applicant's argument:

"The Merriam-Webster’s Collegiate Dictionary (11th ed. 2003) defines 'computer,' in relevant part, as 'a programmable usu. electronic device that can store, retrieve and process data.' There is nothing in this definition, nor in the identification of goods, which would limit the sales of 'computers' to the general public. In fact, 'computer,' as defined here, and as generally understood, is an extremely broad term encompassing a wide range of devices which could be sold to a wide range of potential purchasers."

The PTO evidence demonstrated that "smart cards" fall within the definition of "computer"; that smart cards and other authentication apparatus may be incorporated into a computer; and that these goods are also used with and complementary to computers. Third-party registration evidence also showed that these goods "are of a type which may emanate from the same source." Therefore, the Board concluded that the involved goods are "closely related, if not identical."

PROTEVA computer
Applied argued "most strenuously" that the sophistication of its purchasers would make confusion unlikely. The Board assumed that these purchasers would have "significant relevant technical expertise," but found that this, when considered in view of the highly similar marks and closely related goods, "would not diminish the likelihood of confusion."

Taking into account all the evidence and arguments bearing on the duPont factors, the Board found confusion likely and it affirmed the refusal to register.

TTABlog comment: What is an applicant to do when faced with a broad registration like this one? One approach for the applicant may be a Section 18 petition for partial cancellation. (See, for example, the TTABlog posting here.) Suppose the cited registration were narrowed to cover only personal computers sold to the general public? Would that have cleared the way for Applicant's registration? Would third-party registration evidence still pose a major problem?

TTABlog query: A reader points out that the word "computers" is included in the PTO's Acceptable Identification of Goods and Services Manual, found here. What effect would the inclusion of "computers" in the ID Manual have on a Section 18 proceeding? Suppose the cited registration covering "computers" issued under Section 44 or 66, without use in the United States? How could that registration be restricted under Section 18?

Text Copyright John L. Welch 2008.

Finding "BELL'S & Design" and "OLA BELL'S" Confusingly Similar for Stuffing, TTAB Affirms 2(d) Refusal

The near identity of the involved goods was the critical factor in the Board's affirmance of a Section 2(d) refusal to register the mark OLA BELL'S for "croutons, stuffing consisting of bread; shred which is a form of bread stuffing; dried bread, batters; spices, namely blends for croutons and stuffing." The Board agreed with PTO Examining Attorney Colleen Dombrow that the mark is likely to cause confusion with the registered mark BELL'S & Design (shown immediately below) for "dry ready-mixed stuffing for poultry; a mix containing bread crumbs, flour and seasoning for making a meatloaf, chicken flavor stuffing mix." In re QC Properties Company, LLC, Serial No. 7702036 (August 5, 2008) [not precedential].

The Board first found the goods of the parties, although not described identically, to be "highly related, if not identical." Applicant made the half-baked argument that the goods are not related "because croutons and stuffing are not products consumers would believed emanate from the same source," but the Board in essence told Applicant to stuff it. Third-party registrations and website evidence demonstrated that croutons and stuffing are sold under the same mark. And the identifications of goods overlap anyway vis-a-vis stuffing.


Of course, with the goods being at least highly related, the Board presumed that they travel in the same normal channels of trade to the same usual classes of customers.

Turning then to the key issue, the similarity of the marks, the Board observed yet again that, when the involved goods are highly related, the degree of similarity between the marks necessary to support a finding of likely confusion is decreased.

Applicant argued that the marks have different meanings and commercial impressions. For example, it pointed out that OLA BELL is a woman's name (and specifically the name of the mother of Applicant's principal), whereas the cited mark "engenders the impression of the hollow, cusp shaped, metal instrument by virtue of the design of the bells ...." That did not ring true with the Board: "Even assuming that applicant's argument is correct, the bell design does not create a significant difference between the marks because the bell reinforces the word portion (BELL'S) of registrant's." [TTABlog note: But Applicant did have a point there regarding the different commercial impressions]. However, given the highly related nature of the goods, and noting that a side-by-side comparison is not the proper approach, the Board found the marks to be more similar than dissimilar.

Finally, Applicant submitted 10 third-party registrations and a "hit list" from a search from the PTO database for the word "bell" in class 30. The Board sustained the PTO's objection to the hit list, since a mere list is insufficient to make the registrations of record. [The Examining Attorney had pointed out this problem to Applicant, but Applicant never bothered to submit copies of the registrations].

The 10 third-party registrations it did submit were of little import, since there was no proof of actual use of the registered marks. Moreover, "third-party registrations will not aid an applicant to register its mark if it is likely to cause confusion with the cited registration." In any event, these registrations do not cover croutons or stuffing, and so they do not show that "bell" marks "have been routinely registered for the products at issue." [TTABlog query: Suppose KEITH BELL, MARC BELL, BETH BELL, and BILL BELL were all registered by different owners for croutons or stuffing. Then would the third-party registrations have made a difference?]

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

Text Copyright John L. Welch 2008.

TTAB Affirms Section 2(e)(1) and 2(a) Refusals of "NEUROBOTICS" for Augmented Surgical Goods and Services

Applicant Neurobotics, Inc. struck out in its attempt to register the mark NEUROBOTICS for augmented surgical control systems and related consulting and engineering services. The Board affirmed the PTO's alternative Section 2(e)(1) and Section 2(a) refusals to register, finding the mark to be merely descriptive of the goods and services or, alternatively, deceptively misdescriptive and deceptive therefor. In re Neurobotics, L.L.C., Serial Nos. 78596887 and 785969571 (August 8, 2008) [not precedential].


Examining Attorney Amy E. Hella relied on various Internet webpages referring to the new field of "neurobotics" and on excerpted articles discussing the use of robots in surgery, maintaining that "[t]he term 'neurobotics' is used by third parties to describe a new field of science regarding the fusion of neuroscience and robotics for augmenting human capabilities." "[A]pplicant’s goods are augmented surgical interfaces and systems for assisting surgeries and for allowing the operator to control the physical positioning of surgical equipment, etc." She further contended that Applicant’s "services design and develop 'medical apparatus providing enhanced surgical capabilities,' and 'medical systems in the nature of augmented surgical equipment.'"

Applicant asserted that its mark has no significance with respect to its goods and services because its equipment "does not utilize artificial intelligence as a substitute for a human operator, and accordingly is not 'robotic.'" Moreover, "although the term 'neurosurgical' would be descriptive of the purpose of the equipment developed by Applicant, deletion of the "surgical' portion of that term clearly requires any consumer viewing the mark to take a mental step, just as the Examining Attorney did, before associating 'NEUROBOTICS' with equipment for performing surgical procedures, and in particular, neurosurgical procedures."

The Board, however, sided with the PTO:

"Applicant’s identification of its goods which is replete with surgical instruments designed to augment the surgeon’s capabilities falls squarely within the definition of neurobotics in this record: The Fusion of Neuroscience and Robotics for Augmenting Human Capabilities."

Moreover, Applicant's own patent describes surgical goods that fall within the field of "neurobotics" in that they are directed at integrating human and robotic capabilities.

The Board ruled that the Examining Attorney had made "a prima facie case, which has not been rebutted by the applicant, that the term NEUROBOTICS is merely descriptive of a significant feature of applicant’s goods and services, namely, devices and design services that mimic human neurological control structures and logic to create surgical robots that augment the human surgeon’s capabilities." [Strike one!]

Turning to the alternative refusals, and assuming that applicant’s goods and services do not include biomimetic apparatus designed to augment human capability, then the term “neurobotics” is misdescriptive of them. Applicant argued, however, that its customers are sophisticated and are not likely to be misled. According to Applicant, "there is no reason to believe that physicians and hospitals would even know of the purported 'emerging field' of 'neurobotics.'" But the Board found that at least some potential purchasers "would be familiar with this term and understand its value with regard to the goods and services and, thus, would be deceived." Therefore, the mark is deceptively misdescriptive under Section 2(e)(1). [Strike two!]

As to Section 2(a) deceptiveness, the additional question was whether the misdescription would likely affect the purchasing decision. Applicant's own patent indicates that "the biomimetic feature of the goods and its augmentation of the surgeon’s capability would be highly desirable." Furthermore, the PTO's evidence referring to the use of robotics in surgery supports a finding that robotics in surgery is desirable. Therefore the mark is deceptive. [Strike three! You're outta here!]

In sum, the umpire - I mean the Board - affirmed all three refusals.

Text Copyright John L. Welch 2008.

TTAB Deems "Ultra Violet Devices" Generic for ... Guess What?

Not surprisingly, the Board affirmed a genericness refusal of the term Ultra Violet Devices for "air and water purification units utilizing ultraviolet technology," and in the alternative affirmed the PTO's conclusion that the term, even if merely descriptive, lacks secondary meaning. In re Ultra Violet Devices, Inc., Serial No. 78589646 (August 5, 2008) [not precedential].

website
Applying the two-part Marvin Ginn test, the Board first addressed "the genus question" by rejecting Applicant's contention that the genus is "air and water purifiers" and accepting Examining Attorney Ronald McMorrow's view that the genus is the same as Applicant's identification of goods. The Board noted that here, unlike in Marvin Ginn [FIRE CHIEF not generic for magazines], "the evidence does establish that the Ultra Violet Devices mark identifies a class of goods."

In any case, the Board observed, even if it adopted Applicant's genus, Ultra Violet Devices would still be generic: "The fact that the genus is conceptually broader than the identification of goods does not inexorably lead to the conclusion that Ultra Violet Devices is not generic." See, e.g., In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) [ATTIC generic for automatic fire sprinklers].

Turning to the second prong of the Marvin Ginn test, the Board found that the "voluminous evidence" submitted by the Examining Attorney was "more that sufficient" to prove that Ultra Violet Devices is generic for Applicant's goods. The Board rejected various feeble contentions made by Applicant, including its assertion that "devices" is a broad term that somehow negates the generic character of Ultra Violet Devices.

The Board then chose to consider the issue of acquired distinctiveness, assuming arguendo that Ultra Violet Devices is not generic but highly descriptive. Applicant pointed to its use of the term for fourteen years, to five examples of its advertisements in journals, and to installation of one million of its systems around the world. However, the Board concluded that fourteen years of use is insufficient proof in view of the highly descriptive nature of the term. As to the advertisements, there was no evidence as to frequency, names of publication, or number of potential purchasers reached. The reference to one million installations appears in an advertisement, with no confirmation that those sales took place in the United States. Even if the sales were in the United States, however, the evidence would still be insufficient.

"Conspicuous by its absence is any evidence showing the recognition of Ultra Violet Devices as a mark by relevant consumers. Considering how highly descriptive applicant's mark is, direct evidence that the use and promotion of the mark has had an impact resulting in consumer recognition of the mark would have been far more probative than a mere declaration of 14 years of use and copies of some advertisements which merely report sales/installations."

And so, the Board ruled that Applicant's evidence of secondary meaning "falls far short of what would be required to show acquired distinctiveness in this case."

Text Copyright John L. Welch 2008.

TTABlog Photo Day

I took a one-day trip to Alexandria, Virginia yesterday to present a final argument before the TTAB. So I thought I'd take a TTABreak today. Back Monday.


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Applying Doctrine of Foreign Equivalents, TTAB Finds "AMMIRAGLIA" and "FLAGSHIP" Confusingly Similar for Booze

Affirming a Section 2(d) refusal, the Board found Applicant's mark AMMIRAGLIA for "wines, sparkling wines, liqueurs," likely to cause confusion with the registered mark FLAGSHIP for vodka. The Board concluded that AMMIRAGLIA means flagship in Italian, and it found no evidence that AMMIRAGLIA would not be translated by the ordinary American purchaser who is knowledgeable in the English and Italian languages. In re Marchesi de’ Frescobaldi Societa’ Agricola S.p.A., Serial No. 79021733 (August 11, 2008) [not precedential].


Relying on five third-party registrations that cover both vodka and wine or liqueurs , the Board found the goods of the parties to be related. Applicant did not contest this issue. The Board further found that the goods travel in the same channels of trade to the same classes of consumers.

Applicant focused its argument on the differences in the marks and contended that AMMIRAGLIA is an obscure word in the Italian language, with several possible meanings, and would not be translated into the English language. The Examining Attorney maintained that there was no evidence either that AMMIRAGLIA is an obscure term or that it is subject to numerous translations.He argued that the evidence of record “clearly shows that AMMIRAGLIA translates exactly to "flagship."

The Board observed that "while the doctrine of foreign equivalents is not an absolute rule, it is accepted that 'words from modern languages are generally translated into English.'" The Board found that that Italian is a modern language that is not obscure. "We further find that every translation made of record ... agrees that AMMIRAGLIA means flagship." Moreover, Applicant provided no evidence to support its contention that AMMIRAGLIA would be unlikely to be translated by the ordinary American purchaser who is knowledgeable in the English and Italian languages.

"The fact that the marks AMMIRAGLIA and FLAGSHIP have the same meaning, resulting in a highly similar overall commercial impression, is sufficient for us to conclude that confusion is likely, despite the differences in their appearance and sound."

The Board then turned to a second 2(d) refusal of Applicant's mark and reversed the refusal, finding AMMIRAGLIA not confusingly similar to the word-and-design mark shown immediately below, again for vodka. Here the identity of AMMIRAGLIA and FLAGSHIP "is outweighed in the context of the additional material in the mark, in particular the Cyrillic Russian characters, other English wording, and design elements."

As a result, confusion is not likely, and the second refusal cannot stand.

Text Copyright John L. Welch 2008.

Divided TTAB Panel Finds "ALAVERT" and "WAL-VERT" Confusingly Similar for Antihistamines

A divided Board panel sustained Wyeth's opposition to registration of the mark WAL-VERT for "antihistamines and allergy relief preparations," finding it likely to cause confusion with Opposer's registered mark ALAVERT for allergy relief and antihistamine preparations. Although Walgreen sells its WAL-VERT product only in its own stores, in packaging that bears the Walgreen house mark and displayed on store shelves next to the ALAVERT product, the panel majority was constrained to consider Walgreen's mark and goods as stated in its application, without any such real-life restrictions. Wyeth v. Walgreen Co., Opposition No. 91165912 (August 5, 2008) [not precedential]. [N.B. This decision was vacated by order of the Board on April 21, 2010 (here)].


ALAVERT and WAL-VERT are chemically identical (loratadine being the main ingredient). Walgreen acknowledged that the "VERT" suffix is derived from the ALAVERT mark. The panel majority concluded that Applicant selected the "VERT" element "because potential purchasers were familiar with opposer's ALAVERT mark and product due to the success of the ALAVERT product."

Walgreen argued that confusion is unlikely because it sells its WAL-VERT product only in its own stores, and uses its house mark and company name repeatedly on the packaging. But the Board pointed out that the opposed application contains no such limitations.

Walgreen contended that ALAVERT is a weak and descriptive mark because if "creates the impression that the product 'acts to avert allergies.'" The Board dismissed this contention "out of hand," since it constitutes an improper attack on the validity of a pleaded registration. Instead the panel found the mark to be a coined term that is at most suggestive, and is a "strong mark conceptually." It is also "commercially strong" in view of its "impressive" sales and related advertising and promotional efforts.

The Board agreed with Applicant that the goods are not purchased on "impulse," but rather with a certain degree of care, as with any medication. However, they are relatively inexpensive goods, sold to a large segment of the general public, including some who are less sophisticated.

As to the lack of actual confusion, the panel majority found that there may not have been a "true opportunity for confusion," since the Walgreen product is sold only in its own stores and side-by-side with the Wyeth product. The opposed application, however, contains no such restrictions on sales.

Turning to the marks, the majority noted that "AL" is used in other marks for allergy medications and is weaker than the VERT component, which appears to be "strong in the field." The two marks have "common suggestive meanings" regarding their role in averting allergies. Under typical marketplace conditions, the Board concluded, potential purchasers "are likely to believe that the owner of the ALAVERT mark is associated with the WAL-VERT product in some fashion."

Weighing the relevant duPont, the panel majority (Judges Walsh and Mermelstein) ruled that confusion is likely and it sustained the opposition.

In dissent, Judge Drost stated his view that, comparing the marks in their entireties, the dissimilarities in their sound, appearance, meaning, and commercial impression outweigh the similarities. Moreover, he would give great significance to the lack of actual confusion because there was a "significant opportunity for confusion."

TTABlog comment: In the real world, I don't think there is any appreciable likelihood of confusion between these two marks, given the way Walgreen packages its product and sells it only in its own stores. On the other hand, the TTAB does not deal with the real world but with an artificial world in which one looks only at the marks and goods as stated in the opposed application. If you want the real world, go to the courts. There, I think Walgreen would prevail.

Text Copyright John L. Welch 2008.

TTAB Rules that Registration and Use of "GOGAMERS.COM" as a Domain Name Does Not Establish Priority

Two video game websites went to battle before the TTAB and, when the virtual dust had settled, Applicant Game-Xpert, Inc. grabbed the victory. Game-Xpert sought registration of its GOGAMER.COM logo shown immediately below, for "computerized on-line retail store and distributorship services featuring computer game software." Opposer Gamers, Inc. alleged likelihood of confusion with its previously used marks GAMERS and GOGAMERS.COM for video game sales. Applicant responded by maintaining that "Gamers" is at least merely descriptive of Opposer's services, that Opposer had not proven acquired distinctiveness, and that Opposer had not used the terms as trademarks. Gamers, Inc. v. Game-Xpert, Inc., Opposition No. 91164969 (August 6, 2008) [not precedential].


Of course, to succeed on a likelihood of confusion claim, one must first prove priority. Applicant Game-Xpert established through testimony and evidence a first use date of December 18, 2001 for its logo mark. That date was earlier than the date alleged in its application, but Game-Xpert provided the requisite clear and convincing evidence to establish the earlier date. Game-Xpert registered its domain name <gogamer.com> in 1999, and its website was operational as of December 18, 2001, displaying the logo mark in the upper left hand corner of its home page.

Opposer registered its domain name <gogamers.com> on July 17, 1998, but initially the top of the web page displayed the mark GAMERS. The term "gogamers.com" appeared as the web address in the lower left corner of the page. Eventually, Opposer displayed the GOGAMERS.COM mark at the top of the page, but the earliest documentary evidence of that usage was dated 2005.

The Board noted "while a domain name may attain trademark status, its use as an address does not support trademark use." Although trade name usage is sufficient to establish priority in an inter partes dispute (even though not sufficient to support an application to register), priority based on trade name use is grounded in Section 2(d) of the Trademark Act: "... or a mark or trade name previously used in the United States...."

"There is no equivalent provision for domain name registration or use; nor is a domain name, per se, similar to a trade name; it is more in the nature of a street address. Therefore, domain registration and use as a web address in and of themselves do not serve to establish priority. See Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 50 USPQ2d 1545, 1555 (9th Cir. 1999)."

Opposer also sought to establish priority through its use of the ID "gogamers.com" on eBay. The Board, without deciding whether priority may be based on an eBay user ID, concluded that Opposer's testimony was ambiguous and its documentary evidence failed to show use earlier than 2005.

The Board ruled that Applicant has priority vis-a-vis Opposer's GOGAMERS.COM mark. And so Opposer's 2(d) claim based on that mark was blown away.


Turning to Opposer's assertion of rights in the mark GAMERS, the Board first denied Applicant's claim that GAMERS is generic for on-line retail sale of computer and video games. However, it found that GAMERS is merely descriptive. Therefore, Opposer would have to establish acquired distinctiveness before Applicant's priority date in order to prevail under Section 2(d).

Opposer claimed first use in 1993 at its store in Omaha, Nebraska, and use on-line in 1998. Its current annual revenues are about $8 million and its sells in all fifty states. However, in light of the highly descriptive nature of the mark, the Board found this evidence insufficient to prove secondary meaning. Opposer did not establish the level of annual sales prior to 2001, nor did it provide evidence of extensive advertising or of the number of visitors to its website.

In any case, GAMERS is entitled to "very little scope of protection" in the video game field. As a result, the differences between GAMERS and Applicant's GOGAMER.COM logo mark are sufficient to distinguish the marks, despite their use for identical services.

The Board therefore dismissed the opposition.

TTABlog note: The Board focused on the webpage printouts for the two sites, and did not mention the appearance of the domain address in the browser bar or in the title bar displayed at the very top of the screen page, above the browser bar. Presumably appearance of the term in the browser bar would be deemed merely use as a web address, but what about the title bar? For this blog, the title bar reads "The TTABlog®." Is that a trademark use?

Text Copyright John L. Welch 2008.

Heavner and Luepke Review "The Top Fifteen Mistakes of Foreign Applicants"

In the latest issue of The Trademark Reporter, B. Brett Heavner and Marcus H.H. Luepke present an informative discussion of the "15 most common mistakes" made by foreign applicants, offering "practical solutions for avoiding these pitfalls." All this in their article, Avoiding Trademark Pitfalls in the "Land of the Unlimited Possibilities": The Top Fifteen Mistakes of Foreign Applicants in the U.S. Trademark Office.


As one might expect, the fundamental difference between our use-based system and foreign registration-based systems leads to several of the pitfalls, including inadequate searching by some foreign applicants (who ignore common law marks), overly-broad identifications of goods and services, and vulnerability to attacks based on fraud or lack of bona fide intent.

In the TTAB realm, foreign applicants, according to the authors, may be unprepared for oppositions, cancellations, and infringement litigation. Not surprisingly, the requirement to providing discovery may be particularly annoying to those not familiar to with U.S. litigation practice.

Heavner and Luepke recommend that foreign applicants consult with U.S. trademark counsel to ensure that these 15 pitfalls may be side-stepped. It's hard to argue with that proposition.

[A thank you to The Trademark Reporter for granting permission to provide a link to the this article. Copyright © 2008 the International Trademark Association, and reprinted with permission from The Trademark Reporter®, 98 TMR 974 (July-August 2008).]

Text Copyright John L. Welch 2008.

"DAYTONA" Trademark Licensee Denied Second Bite at TTAB Apple

HBP, Inc. made a return trip to the Board in order to challenge registration of the mark DAYTONA THUNDERWEAR for women's clothing, but it ran into a TTABrick wall. The Board granted Respondent's motion for judgment on the ground of res judicata, ruling that HBP's claim was barred because of its earlier failed opposition to the same mark. HBP, Inc. v. Becker Designs, Inc., Cancellation No. 92046543 (July 17, 2008) [not precedential].


On December 16, 2005, in HBP, Inc. v. Becker Designs, Inc., Opposition No. 91154068 (TTABlogged here), the Board dismissed HBP's opposition because of failure to prove standing and priority of use.

"Opposer has not introduced any evidence or testimony to establish any relationship to the record owner of the registrations or its right to rely on such registrations. We, therefore, conclude that opposer has not established its standing herein and, thus, cannot prevail on its claim of priority and likelihood of confusion."

The Board further observed that, even if HBP had established its standing (by proving its exclusive license), it provided no evidence of its own use of the registered marks. Since HBP is not the owner of the pleaded registrations, it could not rely merely on the registrations, but was required to prove prior use.


In this cancellation proceeding, HBP attempted to correct those errors. But Respondent Becker asserted that the requisite elements of claim preclusion had been satisfied: the parties are the same; the claims in both proceedings are the same (i.e., 2(d) likelihood of confusion between the same marks for the same goods), and the Board's 2005 decision constitutes a judgment on the merits.

HBP contended that the opposition was dismissed on procedural grounds and not on the merits, and it argued that it "should not be penalized ... for its failure to properly make the pleaded registrations of record in the opposition."

The Board concluded that res judicata does apply because the earlier judgment was on the merits: "courts have long held that even default judgments give rise to res judicata." The Board's finding that HBP failed to prove its standing and priority of use "constituted a decision on the merits of the case."

As to the contention that HBP was being penalized for failing to make its registrations properly of record, the Board observed that HBP was represented by counsel, who should have known the consequences of failing to prove standing and priority.

The Board therefore dismissed the petition for cancellation.

TTABlog query: Is it possible for one to prove priority without proving standing?

Text Copyright John L. Welch 2008.

"SPICE SHOT" Merely Descriptive of Ammunition, Says TTAB, Affirmingly

Brett W. Holm of Chaska, Minnesota, took a shot at registering the mark SPICE SHOT for "ammunition for firearms" [SHOT disclaimed], but he missed the target. The Board affirmed a Section 2(e)(1) refusal, finding the mark merely descriptive because the ammunition is comprised of spices formed into pellets (so that, according to his website, one may simultaneously shoot, kill, and season a bird). In re Holm, Serial No. 76661768 (July 30, 2008) [not precedential].


Examining Attorney Anne Gustason relied on dictionary definitions of "spice" and "shot," and on Holm's own website, where he promotes a product called "Season Shot." One might say that Holm shot himself in the foot with statements like this:

"Season Shot is made of tightly packed seasoning bound by a fully biogradable [sic] product. The seasoning is actually injected into the bird on impact seasoning the meat on impact from the inside out. When the bird is cooked the seasoning pellets melt into the meat spreading the flavor to the entire bird. Forget worrying about shot breaking your teeth [TTABlog comment: I hate when that happens!] and start wondering about which flavor shot to use!" [TTABlog query: How about chocolate if you're hunting moose?]

Holm argued that "spice" and "shot" have many possible meanings. He lamely asserted that purchasers might go through the following mental exercise:

"Are SPICE SHOT goods medical or narcotics injections having fragrant odors? Are applicant's good photographic exposures of scandalous material? Are SPICE SHOT goods small servings of undiluted liquor."

That argument was a dud, the Board pointing out that the determination of mere descriptiveness is not a guessing game conducted in the abstract. One must consider the meaning of the mark in relation to the specific goods in question.

Here, the Board found that, in the composite mark, "spice" and "shot" retain their ordinary meanings. Of course, the fact that Holm may be the first or only user of SPICE SHOT does not avoid mere descriptiveness.

The Board concluded that purchasers "will immediately understand the mark SPICE SHOT as describing the fact that the ammunition is made of spice. They will not have to undertake a multiple step reasoning process to understand from the mark something about the product. The term SPICE SHOT tells consumers exactly what the product is."

And so the Board affirmed the refusal to register.

TTABlog suggested improvement: If you put the SPICE SHOT ammo on the end of a flare, and then fired away, you could shoot, kill, spice, and cook all in one blast.

Text Copyright John L. Welch 2008

TTAB Affirms Two Genericness Refusals: "CONFERENCECALL.COM" and "CORPORATE PRO BONO" for ... Guess What?

Two genericness cases illustrate the proposition that a term may be generic for services if it names the "key aspect" or "central focus" of the services. In In re West Corp., Serial No. 78739755 (July 31, 2008) [not precedential], the Board found CONFERENCECALL.COM to be generic for "telecommunications services, namely audio and video teleconferencing." And in In re Pro Bono Institute, Serial No. 78762830 (July 22, 2008) [not precedential], it deemed CORPORATE PRO BONO generic for support services for entities providing charitable legal services.


In the first case, Examining Attorney Michael G. Lewis submitted dictionary definitions and encyclopedia entries for "conference call," as well as Internet website evidence indicating that the term "is used to refer to audio or video teleconferencing." The evidence, including West's own website, "established that conducting a 'conference call' is the focus, or a key focus, of applicant's audio or video teleconferencing services."

"Because the term 'conference call' names a key aspect of applicant's teleconferencing services, the term is generic for such services."

The addition of the TLD ".com" adds nothing of source-identifying significance. See In re Hotels.com, 87 USPQ2d 1100 (TTAB 2008). Therefore, the Board affirmed the refusal.

West also argued that the term was at most descriptive and had acquired distinctiveness. The Board, for completeness, considered that argument, but found West's proofs inadequate, particularly given the highly descriptive nature of the term. West had enjoyed "a degree of business success," but the record was "completely devoid of evidence that the relevant classes of purchasers of applicant's services recognize CONFERENCECALL.COM as a distinctive source for such services."

In the second case, Examining Attorney Linda Lavache relied on definitions of "corporate" and "pro bono," as well as numerous Lexis/Nexis articles containing references to "corporate pro bono."


Applicant argued that it is not a law firm and it does not render pro bono legal services. The Board, however, found that the evidence "clearly demonstrates that CORPORATE PRO BONO is generic for applicant's services."

"Although applicant itself is not providing the legal services, the term 'corporate pro bono' identifies the central focus or subject matter of its services, that is, establishing or helping corporate counsel or corporate legal departments establish and manage programs to provide corporate pro bono. A term that names the central focus or subject matter of the services is generic for the services themselves."

The Board relied on In re Reed Elsevier Properties Inc., 82 USPQ2d 1378 (Fed. Cir. 2007), in which the applicant argued that LAWYERS.COM was not generic because Applicant was not offering legal services. The CAFC agreed with the Board that "a central and inextricably intertwined element of [the claimed] genus is information about lawyers and information from lawyers."

Moreover, the evidence showed that CORPORATE PRO BONO is used by third parties not only to refer to the provision of legal services, but to refer generically "to the same type of services that applicant provides." Therefore the Board affirmed the genericness refusal.

Again, the Board considered Applicant's acquired distinctiveness claim, but found that Applicant had not met its burden of proof. There was "at least a question" as to whether Applicant was the "substantially exclusive" user of ther term, and no evidence that participants in Applicant's program recognize CORPORATE PRO BONO "as a mark uniquely associated with applicant." Applicant feebly pointed to its ownership of registrations for PRO BONO INSTITUTE, PRO BONO CHALLENGE, and LAW FIRM PRO BONO CHALLENGE, but of course these marks are not the legal equivalents of CORPORATE PRO BONO and are irrelevant to the issue of whether the latter term has acquired distinctiveness.

Text Copyright John L. Welch 2008.

TTAB Finds "RAMBLER" Mark Abandoned for Autos, but Sustains 2(d) Opposition to "RAMBLER" for Autos

Pro se applicant Anthony S. Pimpo was thwarted in his attempt to register the mark RAMBLER for automobiles and parts. Although the old Nash mark has been abandoned for decades with regard to automobiles, the Board found that use of the mark on licensed goods (like key rings, calendars, and owner's manuals) beginning in 1995 provided a sufficient basis for a likelihood of confusion finding. Chrysler LLC v. Pimpo, Opposition No. 91171962 (July 30, 2008) [not precedential].


Opposer's predecessor-in-interest began using the mark RAMBLER for autos in 1900, but manufacturing stopped in 1969. There was no evidence of record of any plans to resume use of the mark for automobiles.

Opposer pointed to "the reintroduction of 'heritage' brands in the automotive industry, and the existence of several car enthusiast clubs dedicated to the RAMBLER automobile." But the Board saw no evidence of any plans to reintroduce the RAMBLER auto, and it observed that the existence of enthusiasts' clubs does not alone overcome the statutory presumption of abandonment after nearly 40 years of nonuse.

As to Opposer's argument that the RAMBLER mark enjoys "residual goodwill" and is therefore not abandoned, the Board found the evidence insufficient. "Here, the period of almost four decades of nonuse on automobiles presents a persuasive case for abandonment."


Turning to the issue of licensing, the Board considered "all the pieces of the puzzle" and concluded that Opposer had established a priority date earlier than Applicant Pimpo's 2005 filing date. Opposer's testimony regarding licensing was a bit of a mess, but the Board ruled that Opposer "has priority of use, at the very least with respect to key rings, calendars, decals, specification sheets and owner's manuals, all relating to RAMBLER automobiles."

Next the Board found these licensed, collateral products to be sufficiently related to automobiles "so that consumers would ascribe a single source to the products."

"In the present case, we cannot ignore the fact that purchasers of opposer's licensed goods or applicant's automobile may be buying such goods because they know of the earlier RAMBLER automobile, and these purchasers would view both types of goods as originating from the same source, namely the manufacturer of the old line of RAMBLER automobiles."

And so the Board sustained the opposition.

TTABlog comment: So there is not enough residual goodwill to avoid abandonment of the RAMBLER mark for automobiles, but there apparently is enough to cause consumers to associate ancillary goods with the old automobile. I guess one can eat his cake and have it too.

IP expert Pam Chestek provides her thoughts on "heritage" licensing at her new blog called Property, Intangible (here).

Text Copyright John L. Welch 2008.

USC Bests USC in TTAB 2(d) Confusion Bowl

The Trojans of USC (California) topped the Gamecocks of USC (South Carolina) in a Section 2(d) opposition proceeding involving their respective SC logos. The Board explicated its reasoning in an exhausting 93-page decision penned by Judge Charles Grendel. This posting will provide a highly-condensed version of the Board's duPont analysis and its discussion of the priority issues. University of Southern California v. The University of South Carolina, Opposition No. 91125615 (August 1, 2008) [not precedential].


Carolina sought registration of the logo mark shown above for "clothing, namely, hats, baseball uniforms, T-shirts, and shorts." California relied on two registrations, one for the standard-character SC mark for various goods, including clothing, and the other for the logo shown on the left immediately below for various goods, also including clothing. It also relied on common law rights in the logo shown on the right immediately below. The Board logically dealt with the three pleaded marks one at a time.


The SC Standard Character Registration: As to California's incontestable, standard character SC registration, the goods in classes 6, 18, and 14 were limited to "goods being offered and sold to persons through university authorized channels of trade," while the goods in class 25 were (significantly) restricted to "goods offered and sold at university-controlled outlets." The Board found the Carolina mark to be confusingly similar to the SC mark, but as to the goods, it deemed confusion unlikely because of the trade limitation on the class 25 goods in the pleaded SC registration. Although it must presume that Carolina's goods move in all normal channels of trade, "California's Class 25 trade channel limitation eliminates any possibility that purchasers might encounter Carolina's Class 25 goods in California's trade channels, or vice versa."

However, the Board found confusion likely between Carolina's clothing and California's non-clothing goods: keyrings, tote bags, back packs, towels, blankets, and the like. The Board deemed these goods to be related based upon third-party registration evidence and on the parties' own sale of apparel and non-apparel items under their respective marks. The "authorized channels" limitation on the non-apparel items in the registration, the Board ruled, meant that California's goods could move (and indeed did move) in the same channels as those of Carolina.

The SC Logo Registration: This registration contained no restrictions on trade channels. The Board found the clothing items closely related or identical to those of the opposed application. Noting that, when goods are identical a lesser degree of similarity is needed to support a finding of likely confusion, the Board ruled that the marks are "sufficiently similar" to result in source confusion.

The Common Law SC Logo: California's assertion of common law rights hinged on its proof of priority. Carolina asserted that it has been using "SC" since the university was founded in the early nineteenth century. It argued that "the State of South Carolina has used and been referred to as 'SC' since pre-Revolutionary War times, and that because Carolina is an agency of the State of South Carolina, it is entitled to rely upon any such use of 'SC' by the state for purposes of determining priority in this case."

California claimed use of "SC" in connection with its educational services and athletic goods for more than 100 years, and maintained that Carolina's asserted rights were lost as a result of several periods of non-use over the past century.

The Board, however, observed that the issue here is not the SC abbreviation, but the specific design mark that Carolina seeks to register. It found that Carolina "has no legally equivalent mark the prior use of which it can tack onto its proven and constructive 1997 date of first use."

The Board found that Carolina's priority rights date back only to 1997 (ironically, when it re-adopted a throwback mark that it had stopped using in the 1950's). Carolina had used in 1991 an interlocking SC mark that looked just like the registered California logo above, but that earlier mark was not "legally identical" to the applied-for logo, and therefore use of that mark could not be tacked on. [Note that the Board found the California registered logo to be confusingly similar to the Carolina applied-for logo, but that is a different, more relaxed test than that for "tacking."] In any case, California established common law rights dating back before 1991.

The Board then found the marks confusingly similar for the same reasons as set forth regarding the other two California marks.

Carolina's Counterclaim for Cancellation: Finally, Carolina sought cancellation of California's logo registration on Section 2(d) grounds. However, the Board found no evidence that Carolina had used any "SC" mark between 1982 and 1991, and as a result its priority date was "reset to 1991." Moreover, the logo mark adopted in 1991 was abandoned in 1998 in favor of the applied-for mark. Finally, Carolina's reliance on use of "SC" by the State of South Carolina was unavailing, because the Board found such usage to be "purely informational" and irrelevant to the priority claim at issue. Thus Carolina failed to beat California's 1994 priority date for the registered mark, and its counterclaim failed.

In sum, the Board sustained the opposition and dismissed the counterclaim for cancellation.

Text Copyright John L. Welch 2008.

TTAB Affirms Mere Descriptiveness Refusal of "ITALIAN SUSHI" for ... Guess What?

In another one of those futile ex parte appeals that leads one to ask "why bother?", the Board affirmed a Section 2(e)(1) mere descriptiveness refusal of the mark ITALIAN SUSHI for "food items consisting of seafood ... and cheese ... and prosciutto combined with other ingredients served in a roll and ring form for on or off premises sales." In re Alfredo International Inc., Serial No. 76659790 (July 22, 2008) [not precedential].


Examining Attorney Daniel Brody relied on dictionary definitions of "Italian" and "sushi," as well as on 16 Internet articles, restaurant reviews, and menu items employing the term "Italian sushi" as a "type of food that combines Italian-style food with sushi-style presentation." For example, a New York Times restaurant review observed that:

"Italian sushi is best forgotten. This jarring cross-cultural mistake, consisting of a warm roll enclosed in a rubbery ring of calamari, won no converts at our table."

Applicant lamely argued that "an imaginative step is required to understand ITALIAN SUSHI to mean an Italian form of sushi." Not so, said the Board.

Sayonara! Arrivederci!

Text Copyright John L. Welch 2008.

Precedential No. 39: Evidentiary Errors Lead to Dismissal of 2(d) Opposition for Failure to Prove Priority

In this train wreck of a Section 2(d) proceeding, Opposer Life Zone Inc. failed to properly introduce its trademark registrations and failed to provide evidence establishing common law rights in its marks from a date prior to Applicant's filing date. The Board therefore dismissed the opposition for lack of priority. Life Zone Inc. v. Middleman Group, Inc., 87 USPQ2d 1953 (TTAB 2008) [precedential].


Among numerous evidentiary errors, Opposer attempted to submit ordinary copies of its registrations by way of Notice of Reliance. That ran afoul of Rule 2.122(d) as then applicable, because only status-and-title copies could be introduced via Notice of Reliance. [The rule was changed last year to permit the submission of "a current printout of information from the electronic database records of the USPTO showing the current status and title of the registration"with the original pleading].

Both parties annoyed the Board by submitting "extensive evidentiary attachments" to their respective briefs. Although exhibits to briefs are not prohibited by the Rules (See 2.120(c)), "the Board will usually ignore them, because they comprise either untimely evidence or unnecessary copies of timely evidence." In other words, the Board does not want to waste its time figuring out whether a particular exhibit to a brief is just a copy of evidence already introduced.

Opposer's Notice of Reliance also included a printout of its website, which would be inadmissible without authenticating testimony - except that Applicant stated that it would rely on this Exhibit, and so it was admissible

Opposer's brochure, radio ads, radio interviews, newsletters, and seminar materials were all inadmissible by way of Notice of Reliance because they were not "printed publications" under Rule 2.120(e). Written testimonials from customers (even if in affidavit form) were inadmissible via Notice of Reliance, and they were also inadmissible on hearsay grounds.

Applicant's denials of Opposer's admission requests are not admissible: Rule 2.120(j)(3)(i) permits introduction of admissions, but not denials. ["the denial of a request for admission established neither the truth nor the falsity of the assertion, but rather leaves the matter for proof at trial."]

Applicant faced similar problems of proof. Internet search summary results for the term "LifeZone," as well as pages from several websites, were not admissible by notice of reliance. And pages from it marketing materials were not printed publications, and thus were likewise inadmissible.

Opposer's rebuttal testimony was improper and was stricken because it was not confined to evidence rebutting Applicant's case. "A plaintiff may not present its case-in-chief in rebuttal merely because the defendant denies that the plaintiff has made its case during its case-in-chief."

What remained of Opposer's evidence was not enough to establish priority. Although Applicant admitted Opposer's use of its mark on some goods, "it is ultimately of no help to opposer, because opposer has not proven (nor has applicant admitted) when such use commenced." [Emphasis in original].

And so, the Board concluded that Opposer failed to prove priority, prompting dismissal of the proceeding.

TTABlog comment: Rule 2.120 is a bit long, but it is worth reading now and then.

Text Copyright John L. Welch 2008.

TTAB Reverses 2(d) Refusal, Finds "CLIMAX" and "JELLY CLIMAX MAXIMIZER" Not Confusingly Similar for Vibrators

Despite overlapping goods purchased by the same ordinary consumers and moving through the same presumed channels of trade, the Board reversed a refusal to register the mark CLIMAX for adult sexual aids, finding it not likely to cause confusion with the registered mark JELLY CLIMAX MAXIMIZER & Design for vibrators [JELLY CLIMAX disclaimed]. In re Vast Resources, Inc., dba Topco Sales, Serial No. 78692514 (July 31, 2008) [not precedential]


The Examining Attorney focused on the size of the word CLIMAX in the registered mark, while the Applicant pointed to the disclaimer of "JELLY CLIMAX." Apparently concluding that size doesn't matter in this context, the Board found the term MAXIMIZER to be the dominant portion of the registered mark.

The sound of the marks is, of course, "quite dissimilar." As to appearance,the word CLIMAX is "the largest and most distinctive stylistically." However, "given the fact that it is the second of two adjectives modifying the term 'Maximizer,' we cannot agree that the word 'Climax' retains such an elevated status when one is looking to identify the most salient feature of the composite for purposes of discerning commercial impression and connotation." [TTABlog query: CLIMAX is an adjective?]


With regard to connotation, the Board disagreed with the PTO's view that "the meaning prospective consumers acquainted with both marks would draw from registrant's mark is that registrant's listed product offers 'the more intense or maximized' experience available from the respective CLIMAX products." According to the Board, however, the word CLIMAX is suggestive in Applicant's mark but descriptive in Registrant's:

"When used alone by applicant in the context of adult sex toys, the word CLIMAX appears suggestive of the ultimate, intended effect of the goods. However, within the three-word phrase, “Jelly Climax Maximizer,” the word “Climax” is merely descriptive inasmuch as it modifies the word “Maximizer,” and tells the prospective purchaser precisely what the product does. We find this to be true despite the relatively large, stylized letters in which the word “Climax” is presented."

The Board concluded that these marks "are somewhat weak as applied to these goods, and when viewed in their entireties, we find that the respective marks are not confusingly similar."

TTABlog comment: The Board says that the word CLIMAX "appears suggestive of the ultimate intended effect of the goods." Isn't it, in fact, descriptive thereof? How did Applicant avoid a mere descriptiveness refusal? If it isn't, why is it disclaimed in the registered mark.

The strange disclaimer of JELLY CLIMAX in the registration clearly skewed the analysis here. I can see why JELLY is descriptive, but why is JELLY CLIMAX as a phrase descriptive? And if JELLY CLIMAX is descriptive for vibrators, doesn't MAXIMIZER just add another descriptive or laudatory word?

Frankly, in the real world, I think the marks are confusingly similar. The consuming public doesn't know what is or isn't disclaimed in a mark, and would see these two marks as members of the CLIMAX family.

Text Copyright John L. Welch 2008.

New Legislation Aims to Cure Possible Defect in Appointment of Some TTAB Judges

The Patently O patent law blog reports here that the U.S. House and Senate have passed "A bill to amend title 35, United States Code, and the Trademark Act of 1946 to provide that the Secretary of Commerce, in consultation with the Director of the United States Patent and Trademark Office, shall appoint administrative patent judges and administrative trademark judges, and for other purposes." [Library of Congress information here].


This legislation is, of course, intended to solve a problem pointed out by Professor John Duffy regarding the appointment of judges at the Board of Patent Appeals and Interferences ("BPAI"). The Constitution requires that "inferior officers" be appointed by no one lower than "Heads of Departments." According to Duffy, administrative patent judges qualify as "inferior officers," but a number of BPAI judges may have been appointed after 2000 by the Director of the USPTO, who arguably is not the "head" of a department.

In a posting last May on this blog (here), I opined that the appointments of as many as half of the current TTAB judges may suffer from the same flaw.

The new bill provides that henceforth BPAI and TTAB judges will be appointed by the Secretary of Commerce in consultation with the PTO Director. It further provides that the Secretary of Commerce may deem the appointment of a BPAI or TTAB judge who, "before the date of the enactment of this subsection, held office pursuant to an appointment by the Director to take effect on the date on which the Director initially appointed the ... judge."

Finally the bill provides a "Defense to Challenge of Appointment" as follows: "It shall be a defense to a challenge to the appointment of an administrative [patent or trademark] judge on the basis of the judge's having been originally appointed by the Director that the [patent or trademark] judge so appointed was acting as a de facto officer."

Presumably, President Bush will sign the bill into law.

TTABlog comment: It remains to be seen whether this legislation will solve the problem vis-a-vis decisions that were rendered by panels that included improperly appointed judges. If the judges were unconstitutionally-appointed, are the decisions they rendered therefore null and void? Can a judge be retroactively appointed by the Secretary of Commerce to cure the defect? I suspect we will find out one of these days.

Text Copyright John L. Welch 2008.

TTAB Posts August 2008 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled seven (7) hearings for the month of August, 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.


August 12, 2008 - 10 AM: In re TRUMPF GmbH + Co. KG, Serial No. 79021358 [Section 2(d) refusal of TruWeld for industrial machine tools and lasers for laser welding, on the ground of likely confusion with the registered mark TRU-WELD for "fastening devices including welding studs and shear connectors." (Note: The Board set aside its March 25, 2008 decision (here) and scheduled this oral argument because it had not acted on Applicant's timely request for argument.)]

August 14, 2008 - 10 AM: In re Cargo Cosmetics Corp., Serial No. 77002927 [Section 2(d) refusal of PURSEGLOSS for lipstick, lip gloss, and lip balm, in light of the registered mark PURSE POWDER for cosmetic face powder].


August 14, 2008 - 2 PM: In re Daktronics, Inc., Serial No. 76391084 [Genericness refusal to register, on the Supplemental Register, the designation SPORTS WIRE for "electronic transmission of sports information onto electronic displays and scoreboards"].

August 19, 2008 - 2 PM: Health Ventures Partners v. Evans, Cancellation No. 92045171 [Section 2(d) petition for cancellation of a registration for NATURE'S CORE for "nutritional supplements" in view of the registered mark NATURE'S CODE for "vitamins and nutritional supplements"].

August 20, 2008 - 2 PM: Igloo Prods. Corp. v. Brantex, Inc., Opposition No. 91095892 [[Section 2(e)(1) opposition alleging mere descriptiveness of and lack of acquired distinctiveness for KOOL PAK for insulated carrying cases, tote bags, and carrying bags].


August 21, 2008 - 2 PM: The Black Dog Tavern Co. v. Juras, Oppositions Nos. 91152364 and 91153557 [Section 2(d) and fraud-based oppositions to registration of the marks YELLOW DOG NANTUCKET in standard character and design form for various clothing items, in view of the registered mark THE BLACK DOG and a Dog Design mark for clothing and other goods and services].

August 27, 2008 - 10 AM: In re Zheng Cai, Serial No. 78821249 [Section 2(d) refusal of TAI CHI GREEN TEE & Design for "Woolong tea, Black tea; beverages made of Woolong tea and Black tea; Green tea, beverage made of green tea," as likely to cause confusion with the registered mark TAI CHI & Design for herbal teas].


Text Copyright John L. Welch 2008.

"LIFETIME WARRANTY" Merely Descriptive of Clothing, Says TTAB, Not Surprisingly

When I first saw this decision, I thought it involved Ray Allen of the World Champion Boston Celtics. But it's not In re Ray Allen, it's In re Allen, as in Virgel M. Allen of Santa Clara, California. The latter Allen threw up an air ball in his attempt to register the mark LIFETIME WARRANTY for various clothing items. Examining Attorney Howard Smiga blocked his shot at registration by issuing a Section 2(e)(1) mere descriptiveness refusal. The Board affirmed. In re Allen, Serial No. 78240344 (July 31, 2008) [not precedential].

Ray Allen
The PTO relied on dictionary definitions and Internet web pages to show various meanings of "lifetime warranty," and on Applicant's own statement regarding his goods that "at a date after the initial sale, the consumer may exchange the initial product for a similar product of similar quality but having a different design on it - regardless of the condition of the initial product at the time of the exchange."

Applicant feebly argued that the phrase has "no significance to consumers of textiles and clothing because such goods are not 'durable goods,' i.e., goods designed to be used repeatedly over a long period." As to other uses of the term, he stated that the "only significance of the term ‘LIFETIME WARRANTY’ to the average consumer of goods in other industries and trades that use this term is to satisfy the consumer that the products will be replaced if defective or worn out before the period of warranty expires.”

For the Board, this was pretty much a slam dunk:

"Even if (as applicant contends) clothes wear quickly and have such a short life span, we are unconvinced that his mark LIFETIME WARRANTY is somehow incongruous with the idea of providing a “lifetime warranty” on such goods. We see no reason why consumers will not believe that they are receiving some guarantee as to the quality of the clothes upon viewing the mark LIFETIME WARRANTY. Applicant’s argument is also belied by his own statement that he intends to allow exchanges of the clothes during the consumer’s lifetime. And, although his warranty may differ from other warranties inasmuch as he intends to allow for exchanges for reasons other than defects, his mark LIFETIME WARRANTY would still be readily perceived by consumers of clothes as describing a key feature or characteristic of the clothes, i.e., that they are being sold with a guarantee."

The Board therefore affirmed the refusal.

TTABlog comment: If you were contemplating filing the appeal in this case, what would you have estimated the chances of success to be? One in ten? Maybe less? About the same as sinking a half-court shot, blindfolded, during a time-out at a Celtics game?

Text Copyright John L. Welch 2008.