TTABlog Quarterly Index: July - September 2008

Here's the latest quarterly index. Prior indices are available via the links in the right-hand column. The TTABlog will celebrate its fourth anniverary in the next quarter. The very first posting appeared on November 8, 2004, and featured the inimitable Leo Stoller. I think we'll be hearing more about Leo soon, what with his numerous pending CAFC appeals and petitions for certiorari. Oh, and by the way, e-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update from Feedblitz.

Boston Public Garden(click on photo for larger picture)
Section 2(a) - Deceptiveness:

• TTAB Affirms Section 2(e)(1) and 2(a) Refusals of "NEUROBOTICS" for Augmented Surgical Goods and Services
• TTAB Agrees that "BIOSILK" is Deceptive for Clothing

Section 2(a) - Disparagement:

• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging

Section 2(a) - False Association:

• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging

Section 2(a) - Scandalous:

• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging

Section 2(d) - Likelihood of Confusion:

• "HAIR OF THE DOG" and "LES CHEVEUX DU CHIEN" for Clothing Not Confusingly Similar, Says TTAB
• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging
• Affirming 2(d) Refusal of "17" for Clothing, TTAB Rejects Attempt to Limit Goods in Cited Registration
• Precedential No. 40: "SAM EDELMAN" Confusingly Similar to "EDELMAN" for Handbags, Says TTAB
• TTAB Finds "BOYD'S" and "BOYDS" Confusingly Similar for Clothing, Despite Applicant's Attempt to Limit Its Trade Channels
• TTAB Affirms 2(d) Refusal of "PROTIVA" for Smart Cards over "PROTEVA" for Computers
• Finding "BELL'S & Design" and "OLA BELL'S" Confusingly Similar for Stuffing, TTAB Affirms 2(d) Refusal
• Applying Doctrine of Foreign Equivalents, TTAB Finds "AMMIRAGLIA" and "FLAGSHIP" Confusingly Similar for Booze
• Divided TTAB Panel Finds "ALAVERT" and "WAL-VERT" Confusingly Similar for Antihistamines
• TTAB Rules that Registration and Use of "GOGAMERS.COM" as a Domain Name Does Not Establish Priority
• TTAB Finds "RAMBLER" Mark Abandoned for Autos, but Sustains 2(d) Opposition to "RAMBLER" for Autos
• USC Bests USC in TTAB 2(d) Confusion Bowl
• TTAB Reverses 2(d) Refusal, Finds "CLIMAX" and "JELLY CLIMAX MAXIMIZER" Not Confusingly Similar for Vibrators
• TTAB Affirms 2(d) Refusal of "CINDERELLA" for Peanut Butter over Disney Registration for Related Goods
• "SEXY 'N SASSY" Confusingly Similar to "SEXY HAIR" for Hair Care Products, Says TTAB, Unconvincingly
• TTAB Finds "ZABA'S" for Restaurant Services Confusingly Similar to "ZABAR'S" for Catering and Retail Store Services
• Fame Factor Fuels Victory in TTAB 2(d) Opposition Against "ROAD RUNNER" for Batteries

Section 2(e)(1) - Deceptive Misdescriptiveness:

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

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

• My Goodness? TTAB Reverses Mere Descriptiveness Refusal of "MY HORSE PLAYER" for Handicapping Software
• "GANGA" Merely Descriptive of Department Store Services, Says TTAB, Equivalently
• TTAB Quickly Affirms Mere Descriptiveness Refusal of "7SECONDS" for Hair Detangler
• "DISPENSE-A-PILL" Merely Descriptive of Pill Dispenser, Says TTAB, Painlessly
• TTAB Affirms Section 2(e)(1) and 2(a) Refusals of "NEUROBOTICS" for Augmented Surgical Goods and Services
• "SPICE SHOT" Merely Descriptive of Ammunition, Says TTAB, Affirmingly
• TTAB Affirms Mere Descriptiveness Refusal of "ITALIAN SUSHI" for ... Guess What?
• "LIFETIME WARRANTY" Merely Descriptive of Clothing, Says TTAB, Not Surprisingly
• TTAB Reverses Mere Descriptiveness Refusal of "SAFETY JOGGER" for Work Shoes
• Divided TTAB Panel Reverses Mere Descriptiveness Refusal of "CRAZY GOOD" for Toaster Pastries

Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive:

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

Section 2(e)(5) - Functionality:

• TTAB Reverses Functionality Refusal of Shape of Traffic Signal Bracket, but Affirms Nondistinctiveness Refusal

Section 2(f) - Acquired Distinctiveness:

• TTAB Reverses Functionality Refusal of Shape of Traffic Signal Bracket, but Affirms Nondistinctiveness Refusal
• Transferred Distinctiveness Leads TTAB to Reverse Mere Descriptiveness Refusal of "NANOCRYSTAL COLLOIDAL DISPERSION"

Section 10: Illegal Assignment of ITU:

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

Fraud:

• TTAB Finds Fraud in Section 8 Declaration, Cancels Registration of Italian Wine Company
• Precedential No. 35: Despite Amendment of Application, TTAB Sustains Fraud Claim in "GRAND CANYON WEST" Opposition

Genericness:

• "OIL FREE JOJOBA" Generic for Cosmetics, Says TTAB
• TTAB Deems "Ultra Violet Devices" Generic for ... Guess What?
• TTAB Affirms Two Genericness Refusals: "CONFERENCECALL.COM" and "CORPORATE PRO BONO" for ... Guess What?

Goods in Trade:

• Finding Customized Tapestry Ordering Kits Not to be Goods in Trade, TTAB Affirms Refusal to Register "WOVEN MOMENTS"

George Washington(click on photo for larger picture)
Laches:

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

Lack of Bona Fide Intent:

• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging

Procedural Issues:

• TTABlog Practice Pointer: Properly Submit Evidence or Lose Your Opposition
• Precedential No. 39: Evidentiary Errors Lead to Dismissal of 2(d) Opposition for Failure to Prove Priority
• Appellant Petitions Commissioner for New Hearing, Claims PTO Argument Was Inaudible and Unintelligible
• Precedential No. 38: TTAB Dismisses Opposition as Untimely - Electronic Payment Incomplete and Faxed Filing Ineffective
• Precedential No. 37: Judge Rogers Beams as Section 2(d) Case is Tried Without Discovery
• Precedential No. 34: TTAB Okays Stipulation Between Red Sox and "RAD SEX" Applicant to Waive Initial Disclosures

Res Judicata:

• "DAYTONA" Trademark Licensee Denied Second Bite at TTAB Apple

Specimen of Use:

• Specimens Don't Match Drawing, So TTAB Affirms Refusal to Register "AT C-LEVEL" for Magazines
• TTAB Finds "DIGITALBOOK" Trademark Specimen Unacceptable
• Precedential No. 36: Finding Specimen Doesn't Match Drawing, TTAB Affirms Refusal of "UPPER 90" for Clothing
• TTAB Affirms Rejection of Catalog Page as Trademark Specimen of Use

(click on photo for larger picture)
Other:

• Design Patent Owners Will Worship CAFC's Egyptian Goddess Decision
• TTAB Comes to Boston: October 24, 2008
• Supreme Court To Consider Certiorari Petition Re Constitutionality of PTO Judicial Appointments
• Genericness Survey Results Posted at Pamela Chestek's Blog
• TTABlog Test Time: So You Think You Know Genericness?
• TTAB Posts September 2008 Hearing Schedule
• Heavner and Luepke Review "The Top Fifteen Mistakes of Foreign Applicants"
• New Legislation Aims to Cure Possible Defect in Appointment of Some TTAB Judges
• TTAB Posts August 2008 Hearing Schedule
• Tenth Circuit Applies MedImmune in Trademark Declaratory Judgment Action
• TTAB Posts July 2008 Hearing Schedule

Text and Photographs Copyright John L. Welch 2008.

TTAB Reverses Functionality Refusal of Shape of Traffic Signal Bracket, but Affirms Nondistinctiveness Refusal

There are two major hurdles to registering a product configuration as a trademark: functionality and nondistinctiveness. I wrote an article on this topic a few years ago, cleverly entitled, "Trade Dress and the TTAB: If Functionality Don’t Get You, Nondistinctiveness Will." In the Board's latest product configuration case, Applicant Pelco Products, Inc. cleared the functionality hurdle, only to trip over the distinctiveness barrier. In re Pelco Products, Inc., Serial No. 78485818 (September 19, 2008) [not precedential].


Pelco sought to register the design or product configuration shown above for "brackets made of metal for attaching traffic signals to mast arms." The mark consists of the configuration of the bracket, and "resides in the contours of the opposing faces of the two members."

Functionality: Applying the four-part set out by the CAFC in Valu Engineering, the Board first examined several utility patent proffered by the Examining Attorney but was not persuaded that they demonstrate "that the shape of the proposed mark has practical or functional value." Pelco's advertising for the product did not tout the design for its "desirable, utilitarian qualities." The existence of alternative designs that "appear to work 'equally' well'" undercut the PTO's functionality argument. And there was no evidence that Applicant's design "results from a simple or cheaper method of manufacturing." In sum, the PTO failed to meet its burden of proving functionality, and the Board therefore reversed the Section 2(e)(5) refusal.


Distinctiveness: Product designs cannot be inherently distinctive; so said the Supreme Court in Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000). Pelco sought registration under Section 2(f), but the PTO found its evidence insufficient to prove acquired distinctiveness.

The Board noted that the burden to prove acquired distinctiveness "is heavier in this case because it involves product configurations." In re Ennco Display Systems, Inc., 56 USPQ2d 1279, 1283 (TTAB 2000). It reviewed Pelco's sales and advertising figures, and Pelco's 16 declarations from "independent distributors ... installers, and ... a contractor," but found them insufficient to established acquired distinctiveness. Although Pelco has used its design for more than twenty years,

"there is simply insufficient evidence that consumers view applicant's design as an indicator of the source of applicant's goods or that applicant has even encouraged consumers to consider the design as its trademark. The fact that applicant has sold and advertised its products with the design does not indicate that any consumers distinguish its goods based on the design."

The Board pointed out that "this is not a case where applicant has established that 'look for' advertising or promotion is not needed because there is an industry practice of using flourishes on brackets by manufacturers to distinguish their products." Compare In re The Black & Decker Corp., 81 USPQ2d 1841 (TTAB 2006) [shape of key head had acquired distinctiveness]. [TTABlogged here].

The Board therefore affirmed the refusal to register on the ground that the design is not inherently distinctive and lacks acquired distinctiveness.

Text Copyright John L. Welch 2008.

"HAIR OF THE DOG" and "LES CHEVEUX DU CHIEN" for Clothing Not Confusingly Similar, Says TTAB

In an interesting application of the doctrine of foreign equivalents, the Board reversed a Section 2(d) refusal of the mark HAIR OF THE DOG for "clothing, namely, shirts, t-shirts, pants, shorts, headwear, hats, socks, sleepwear and dresses," finding it not likely to cause confusion with the registered mark LES CHEVEUX DU CHIEN "for custom manufacture of clothing, personal accessories in the nature of jewelry, stoles, scarves, linens, and home décor items." The Board found the mark "clearly different in appearance and pronunciation," and further that the marks would not be understood "as having the same idiomatic meaning." In re Innovative Technologies Corp. of America, Inc., Serial No. 78691831 (September 15, 2008) [not precedential].


The cited registration contains a translation of the mark as HAIR OF THE DOG. But "it is far from clear that the resulting phrase has the same meaning in French as it does in English." The Board found that the "most likely commercial impression of THE HAIR OF THE DOG (in English) is a reference to the hangover cure," i.e., the consumption of an alcoholic beverage to relieve a hangover. However, a French speaker, according to the Board, "will likely see the mark LES CHEVEUX DU CHIEN and perceive it literally as a statement about a dog's hair."

"... 'hair of the dog' in English has two meanings, one literal and one idiomatic. Having found that the latter is the predominant meaning and the one most applicable to applicant's mark, it is clear that a mechanical, word-for-word translation does not answer the question at hand: do the marks at issue - considered as a whole - mean the same thing?"

Turning to the Larousse French-English dictionary, the Board noted the following definition:

"phr: ... to have a [hair] of the dog (that bit you) reprendre un verre (pour faire passer sa guele de bois); here, a [hair] of the dog is what you need bois ça, il faut guérir le mal par le mal...."

Thus, the Board observed, the phrase "hair of the dog" does not translate into "les cheveux du chien" in French.

The Board distinguished In re Thomas, 79 USPQ2d 1021 (TTAB 2006), in which MARCHE NOIR and BLACK MARKET were deemed equivalent: there the evidence showed that the marks have the same idiomatic meaning in both languages.


The Board therefore concluded that the PTO had not demonstrated a likelihood of confusion, and it reversed the refusal.

TTABlog comment: Maybe I'm barking up the wrong tree, but I did not know the idiomatic meaning of HAIR OF THE DOG. Maybe the idiomatic meaning is its primary meaning, but how many people know the idiom? What about the rest of us who think HAIR OF THE DOG means dog hair? Ok, I admit I don't speak French, but if I did ...?

P.S. A quick, informal survey of a dozen people in my office found only one who knew the idiomatic meaning.

Text Copyright John L. Welch 2008.

TTAB Finds Fraud in Section 8 Declaration, Cancels Registration of Italian Wine Company

Granting Petitioner Sierra's cross-motion for summary judgment and sustaining its cancellation petition, the Board found that Registrant Montelvini S.p.A. committed fraud on the USPTO when it filed its Section 8 Declaration of Use. Registrant verified that its registered mark MONTELVINI VENEGAZZU & Design (shown below) was in use on "wines, spirits, and liqueurs," when in fact it was not in use on liqueurs. Sierra Sunrise Vineyards v. Montelvini S.p.A., Cancellation No. 92048154 (September 10, 2008) [not precedential].


Montelvini's registration issued under Section 44(e), based on its Italian counterpart registration. When it came time to file the Section 8 Declaration, its US counsel inquired whether Respondent was still using the mark "in connection with the goods listed in the Certificate of Registration" and asked for two specimens of the mark as currently used in the U.S. The Declaration was signed and filed electronically by Respondent's U.S. counsel and was submitted without deletion of any of the original goods. However, the mark had not been used on liqueurs.

Montelvini here claimed that "there was a failure on the part of the Italians to appreciate the USPTO's requirement to demonstrate specific actual use of the mark on each of the various goods contained within the larger class." The Board was not moved. "Respondent had an obligation to work with its legal counsel to ensure that no false statements were made before the USPTO. *** Clearly, respondent should have known that its allegation of use of its registered mark in connection with 'liqueurs' in U.S. interstate commerce was false."

The Board was likewise not persuaded by Montelvini's assertion that "language and cultural differences in the U.S. and European viewpoint of wine in relation to other alcoholic beverages contributed to the submission of a false statement." It pointed out that "[Respondent's president] was obligated to confirm the meaning and accuracy of the statements contained in the application before signing the declaration and prior to submission to the USPTO." Quoting Hachette Filipacchi Presse v. Elle Belle, LLC, 85 USPQ2d 1090, 1094 (TTAB 2007) [precedential].

Montelvini's motion to amend the registration was denied, since deletion of goods upon which the mark has not been used "does not remedy an alleged fraud upon the Office" in the maintenance of a registration.

TTABlog comment: This was a rather straightforward decision under current TTAB fraud precedent. What this case does underscore, however, is that foreign trademark owners who obtain registrations under Section 44 (and 66) are particularly in jeopardy on the fraud issue. The idea that the mark must have been used on all the goods in a registration is, shall we say, foreign to them. For a discussion of the problem, see Section I of this article.

Text Copyright John L. Welch 2008.

Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging

The Boston Red Sox were not amused when New Yorker and self-proclaimed "humorist" Brad Francis Sherman attempted to register the mark SEX ROD in the stylized form shown here, for 136 clothing items (including infantwear, baby bibs, and girdles). The TTAB also failed to appreciate the humor. The Board sustained the Club's opposition, finding that Sherman lacked a bona fide intent to use the mark, and further that the mark is both scandalous and disparaging under Section 2(a). However, the Board dismissed the Red Sox claims of likelihood of confusion and 2(a) false connection. Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, 88 USPQ2d 1581 (TTAB 2008) [precedential].


Lack of Bona Fide Intent: Applicant Sherman stated on discovery that he had no documentation to support his claimed intention to use the mark. This absence of documentation was sufficient, under Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993), to shift the burden of proof to Sherman. He asserted that one can launch an "online apparel business" virtually overnight [using, for example, Cafe Press] and at almost no cost and without "forward planning." The Board found that testimony "simply not credible." Such testimony "detracts from, rather than supports, the bona fide nature of applicant's intention."

Scandalousness: Applicant Sherman contended that SEX ROD is a parody of the RED SOX stylized mark, comprising an "elegant and symmetrical transposition" of RED SOX, a subtle play on words that "enhances the humor." According to Sherman, "the elegance of the execution mitigates any perceived vulgarity of the resulting turn of phrase." In his view, the mark "represents the at once clever yet sophomoric sense of humor that prevails in those venues in which apparel bearing the SEX ROD Stylized mark would likely be worn, e.g., ballparks, sports bars, and university campuses."

The Board, however, noted that the marketplace includes all public places where clothing would be worn or purchased. Sherman's mark would convey "not a sexually suggestive connotation as applicant contends, but rather a sexually explicit message to the viewer." Use of the term on children's and infant clothing "makes the term particularly lurid and offensive." Whether Sherman intended the mark to be humorous, or whether some people would see it as humorous, is immaterial. A substantial portion of the public would see it as vulgar. [TTABlog note: For Marc Randazza's comments on this issue, see the blog posting here at his blog, The Legal Satyricon]

Disparagement: As to disparagement, the Board observed that the stylized RED SOX logo has been in use for more than 70 years and has received extensive public exposure in all forms of visual media. Indeed, Sherman admitted that this logo "is identified and associated with opposer." The Board concluded that "many consumers, and in particular Red Sox fans, upon seeing the mark displayed on a t-shirt or a jersey, will recognize it as referring to the Red Sox symbol." Sherman admitted that his mark is intended to refer to opposer, and that admission is "strong evidence that he will accomplish his purpose, and that the mark will be perceived by the public as referring to opposer."

The Board then found that Sherman's mark "would be viewed as a sexually vulgar version of the club's symbol and as making an offensive comment on or about the club." Sherman pointed out that the Red Sox were "popularly know[n] as 'Idiots' just three years ago due to the edgy image that they portrayed both on and off the field, often with the tacit consent of the Club." The Red Sox admitted that its players and fans referred to the team "affectionately" as the "idiots" and that the Club has used such suggestive phrases as "You Have RED SOX Envy" on t-shirts. But, the Board noted, there is a difference between "good-natured ribbing and applicant's crude, overtly sexual mark." Because his mark is offensive and its offensive message will be associated with the opposer, the mark is disparaging under the Statute.

[Fellow Massachusetts denizen Pam Chestek comments at her Property, intangible blog (here)].

Likelihood of Confusion: Despite the fame of the RED SOX mark, the presumed identity of trade channels and classes of consumers, the nature of many of the goods as "impulse purchase" items, and the visual similarity of the marks, the Board found the marks SEX ROD and RED SOX too different in sound and meaning to permit a finding of likely confusion. "The fact that ... Applicant's mark may evoke or bring to mind opposer's mark does not itself necessarily compel a finding of likelihood of confusion as to source." In fact, the vulgar and disparaging nature of Sherman's mark makes it less likely that confusion of source will occur: consumers are not likely to believe that the Red Sox have sponsored or approved Sherman's goods.

Section 2(a) False Association: For the same reasons that the Board found the marks dissimilar for Section 2(d) purposes, the Board concluded that Sherman's mark "is not a close approximation of opposer's identity." Again, given the disparaging nature of the mark, "the public would not believe that opposer, a famous and reputable organization, would be associated with a mark that disparages itself."

And so the Board sustained the opposition on three of the five pleaded grounds.

TTAB comment: As I've said before, the "lack of bona fide intent" attack is becoming increasingly important. Foreign trademark owners who rely on Section 44 and 66 should be particularly concerned about challenges to their applications and registrations on the ground that their required assertion of a bona fide intention to use their marks in commerce cannot be supported. For more discussion, see Section II of this article.

Text Copyright John L. Welch 2008.

Design Patent Owners Will Worship CAFC's Egyptian Goddess Decision

In an eagerly-awaited en banc ruling, the U.S. Court of Appeals for the Federal Circuit has banished the "point of novelty" test as a "second and free-standing requirement for design patent infringement," finding it inconsistent with the Supreme Court's Gorham v. White ordinary observer test. In addition, the CAFC ruled that, rather than describe a patented design in words, "the preferable course ordinarily will be for a district court not to attempt to 'construe' a design patent claim by providing a detailed verbal description of the claimed design." Egyptian Goddess, Inc. v. Swisa, Inc., 88 USPQ2d 1658 (TTAB 2008). [precedential].


Revisiting the Litton Systems case, often cited as the genesis of a separate "point-of-novelty" test, the CAFC gave it a different reading:

"We think, however, that Litton and the predecessor cases on which it relied are more properly read as applying a version of the ordinary observer test in which the ordinary observer is deemed to view the differences between the patented design and the accused product in the context of the prior art."

Thus, instead of a being analyzed in a separate test, the prior art designs are to be taken into account as part of the Gorham v. White ordinary observer analysis:

"When the differences between the claimed and accused design(s) are viewed in light of the prior art, the attention of the hypothetical ordinary observer will be drawn to those aspects of the claimed design that differ from the prior art. And when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer."

The court noted that this approach avoids "some of the problems created by the separate point of novelty test." For example, under the point of novelty approach, "the more novel the design, the more points of novelty that are identified, the more opportunities there are for a defendant to argue that its design does not infringe because it does not copy all of the points of novelty, even though it may copy most of them and even though it may give the overall appearance of being identical to the claimed design." In other words:

"unlike the point of novelty test, the ordinary observer test does not present the risk of assigning exaggerated importance to small differences between the claimed design and accused designs relating to an insignificant feature simply because that feature can be characterized as a point of novelty."

Moreover, the court ruled that the "burden of production" of relevant prior art is on the accused infringer, rather than on the patentee, as the point of novelty test required.

Turning to the question of whether trial courts should conduct claim construction in design patent cases, the court pointed out that although it has held that trial courts "have a duty to conduct claim construction in design patent cases," it has not prescribed any particular form for that claim construction. It here emphasized that the trial court's decision "regarding the level of detail to be used in describing the claim design" is within the court's discretion. The trial court should, however, "recognize the risks entailed" in a verbal description of the claimed design, "such as the risk of placing undue emphasis on particular features." Finally, the court noted, that courts should not read the claim construction requirement as necessitating "a detailed verbal description of the claim, as would typically be true in the case of utility patents."

As to the facts of the case at hand, the Board affirmed the district court's summary judgment ruling of noninfringement, concluding that "no reasonable fact-finder could find that EGI met its burden of showing, by a preponderance of the evidence, that an ordinary observer, taking into account the prior art, would believe the accused design to be the same as the patented design."


TTABlog comment: Design patent owners will applaud this ruling because it moves away from a troublesome verbal approach to design patents to a more patentee-friendly visual approach. When a court details a claimed design in words, a defendant can always describe its accused design with different words, positing differences in the designs where no real differences exist.

Likewise, requiring a patentee to prove up the prior art and list the points of novelty gives a defendant an opportunity to focus on what listed items are missing in the accused design, rather than looking at the design as a whole.

Prior TTABlog postings on the subject of design patents are here, here, and here.

Text Copyright John L. Welch 2008.

TTAB Comes to Boston: October 24, 2008

The Trademark Trial and Appeal Board (TTAB) will travel to Boston on Friday, October 24, 2008, to hear final arguments in an inter partes case, as part of a Boston Patent Law Association (BPLA) program to be held at Northeastern University School of Law (NUSL). The hearing will be preceded and followed by commentary and discussion from a panel of distinguished lawyers on various trademark and TTAB topics. The program will run from 1:30 PM to 5:00 PM, with a reception afterward. Further details may be found here.

SPEAKERS AND PANELISTS
Professor Stacey Dogan - Northeastern University School of Law.
Professor Dogan teaches and writes about IP and antitrust law, focusing on the digital and online environments. Her recent articles address trademark issues in the Internet context, right of publicity law, and the liability of Internet intermediaries for user copyright infringement.


Amy B. Spagnole - Hinckley, Allen & Snyder LLP.
Amy is a partner specializing in trademark and copyright law and IP licensing. A frequent author and speaker on trademark and other IP issues, she is an adjunct faculty member at Suffolk University Law School, teaching a course in Trademarks and Unfair Competition.

David J. Byer - K&L Gates LLP.
David is a partner whose practice focuses on trademark and copyright law. He represents clients in litigation and dispute resolution, licensing, portfolio and brand development, and transactions. A frequent speaker on IP issues, David is a former adjunct faculty member at Boston Univ. School of Law.

Ann Lamport Hammitte - Lowrie, Lando & Anastasi, LLP.
Ann is a partner specializing in trademark protection and enforcement, copyright law, and intellectual property litigation, both civil and administrative. She is a contributing editor to Allen’s Trademark Digest and a member of the Editorial Board of The Trademark Reporter.

Mark D. Robins - Nixon Peabody LLP.
Mark is a partner focusing on intellectual property litigation, including trademark matters before the TTAB and the courts. He has published extensively and spoken frequently on trademark and other intellectual property subjects and is co-chair of the BPLA Trademarks and Unfair Competition Committee.

John L. Welch - Lowrie, Lando & Anastasi, LLP.
John L. is Of Counsel to the firm, and practices intellectual property law in all its forms. A frequent author and lecturer on TTAB topics, he is the founder and publisher of The TTABlog, a contributing editor to Allen’s Trademark Digest, and a Member of the Editorial Board of The Trademark Reporter. He is co-chair of the BPLA Trademarks and Unfair Competition Committee.

"OIL FREE JOJOBA" Generic for Cosmetics, Says TTAB

Finding the term OIL FREE JOJOBA to be generic for "skin and body soaps, essential oils for personal use, cosmetics, and hair lotions, all containing one or more chemically modified jojoba extracts," the Board granted a petition for cancellation of Respondent Desert Whale's Supplemental Registration. [TTABlog note: I provided some assistance to Petitioner in this matter, and so I will make no editorial comments regarding the decision]. International Flora Technologies, Ltd. v. Desert Whale Jojoba Co., Cancellation No. 92045327 (September 17, 2008) [not precedential].

male jojoba flowers
The Board found the genus of the goods to be "properly described ... by the identification of goods," and the relevant public to be ordinary members of the general public.

According to the Board, it was "clear from the evidence, including the evidence of respondent's own use, that 'oil-free' is used to identify a product or an ingredient of a product that is free from oil." The evidence further showed that "oil-free jojoba" names a type of plant extract.

"It is also clear that the term 'oil-free jojoba' identifies a central characteristic of respondent's cosmetics and personal care products, as it is a principal ingredient of those goods. Marks which identify a key characteristic of goods or services have been held unregistrable for the goods or services." [Citing, inter alia, In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) [ATTIC generic for sprinklers used in attics].

The Board concluded that OIL FREE JOJOBA "is a generic term for the broad category of cosmetics and personal care products that fall within the narrower category or subcategory of cosmetics that contain oil-free jojoba."

Text Copyright John L. Welch 2008.

Supreme Court To Consider Certiorari Petition Re Constitutionality of PTO Judicial Appointments

The SCOTUS blog reports here that on September 29, 2008, the U.S. Supreme Court will take up the Petition for a Writ of Certiorari filed in Translogic Technology, Inc. v. Dudas (Docket No. 07-1303) . The issues: "Whether the director of the Patent and Trademark Office lacked constitutional authority to appoint members of the Board of Patent Appeals and Interferences (BPAI), and, if so, whether the board's decision below must be vacated as a result." Links to the briefs may be found at the SCOTUS blog posting.


The TTABlog previously reported (here and here) on this controversy and its potential impact on the TTAB. The same legislation (The Intellectual Property and Communications Reform Act of 1999, 113 Stat. 1501 et seq.) that gave the Director of the USPTO the power to appoint BPAI judges also gave him or her the power to appoint TTAB judges. (See Section 4716 and see 15 U.S.C. Sec. 17(b)). It is that legislation that is at the heart of the Supreme Court case.

Text Copyright John L. Welch 2008.

Genericness Survey Results Posted at Pamela Chestek's Blog

Pamela Chestek has posted (here) the results of her recent genericness survey regarding ice cream designations/terms/names/marks. I am not at all knowledgeable about ice cream, and so I will have no comments for the moment. But Pam provides plenty of commentary in the posting at her Property, intangible blog.


By the way, Pam, neapolitan is generic, isn't it?
.

Affirming 2(d) Refusal of "17" for Clothing, TTAB Rejects Attempt to Limit Goods in Cited Registration

On this, the 17th of September, the lesson is a basic one: the Board will not read into a cited registration, limitations on the goods or services based upon real world evidence. That's why this decision is a candidate for our WYHA (Would you have appealed) collection of cases. Despite Applicant's attempt to limit the cited goods, the Board affirmed a Section 2(d) refusal to register the mark 17 in the Stylized form shown here, for various clothing items, including shirts,"related to the field of professional automobile racing," finding the mark likely to cause confusion with the registered mark SEVENTEEN for "shirts." In re Roush Fenway Racing, LLC, Serial No. 75932713 (September 3, 2008) [not precedential].


Applicant lamely argued that its goods are marketed to "middle-aged male race fans," while Registrants shirts are aimed at "teenage girls interested in fashion." However, the Board pointed out once again that the determination of likelihood of confusion must be based on the goods recited in the cited registration, rather than what the evidence shows the goods to be.

Although Applicant's goods are restricted to clothing "related to the field of professional auto racing," this does not take Applicant's goods "out of the purview of those in the cited registration because registrant's 'shirts' encompass such goods."

In view of the identity of "shirts" in the application and registration, it was unnecessary for the Board to consider the remaining clothing items in the application. The channels of trade for Registrant's shirts is presumed to encompass all normal channels of trade for shirts, including those for Applicant's goods.

Applicant feebly asserted that the purchasers of its goods "are sophisticated, knowledgeable consumers who purchase these items with care." However, its assertion was unsupported in the record. Moreover, the purchasers of such clothing items may or may not exercise care, and in any case even sophisticated purchasers are not immune to confusions when the marks are "as similar as these marks ... and the goods with which they are used are legally the same."

As to the marks, "Applicant's contentions that these two marks have different connotations pertaining either to automobile racing or fashion are not well taken." Again, "[e]xtrinsic evidence that may tend to limit the scope of registrant's goods is essentially a collateral attack on the cited registration, which is not appropriate in this context, nor is the evidence probative of the registrability of applicant's mark."

The Board found that the marks "have substantially similar commercial impressions" and that the stylization of Applicant's mark is not a distinguishing factor. First, Applicant's mark is in a "non-distinctive font style," and second, Registrant's mark is in standard character format and conceivably could be displayed in the same letter style as Applicant's mark.

In short, Applicant's attempt to read marketplace limitations into Registrant's identification of goods was thwarted by black-letter TTAB precedent.

Text Copyright John L. Welch 2008.

Finding Customized Tapestry Ordering Kits Not to be Goods in Trade, TTAB Affirms Refusal to Register "WOVEN MOMENTS"

Finding that Applicant was seeking to register a marketing technique or method for its custom imprinting services, the TTAB affirmed a refusal to register the mark WOVEN MOMENTS for "kits consisting primarily of a box, an order form, a mailer, and an authorization key code, sold together as a unit, for use in submitting an image and obtaining blanket throws and tapestries bearing the image." The Board ruled that these kits are not "goods in trade" and it therefore affirmed the refusal under Sections 1, 2, and 45 of the Trademark Act. In re The Manual Woodworkers & Weavers Inc., Serial No. 76653876 (September 5, 2008) [not precedential].


Examining Attorney Michael P. Keating aptly pointed out the key question: whether the subject mark "is being used to identify goods that are sold or transported in commerce or that have utility to others." He contended that Applicant's kits "do not give purchasers or consumers the ability to obtain custom imprinted blanket throws and tapestries from any sources other than applicant. *** [T]he kits are only incidental items use by applicant in the ordinary course of business."

Applicant argued that the kits "move in commerce," that a consumer who possesses a kit has a product that entitles him or her to receive a tapestry product at no extra charge, and further that the kits are "bought, sold, exchanged and gifted by consumers as part of a trade in kits."

The Board observed that "a necessary prerequisite to the establishment of rights in, and the registration of, a term as a trademark is that the subject matter to which the term is applied must be goods. *** [I]ncidental items that an applicant uses in conducting its business (such as letterhead, invoices and business forms), as opposed to items sold and transported in commerce for use by others, are not 'goods in trade.'"

Moreover, simply affixing a mark to an item that is transported in commerce does not mean that the mark is used on "goods." The item must "have utility to others as the type of product named in the application." Although Applicant's kit comprises items that are sold in commerce, the kits are not goods in trade.

"There is no evidence that applicant is a manufacturer of boxes, order forms, mailers and/or authorization key codes (otherwise referred to by applicant as “redemption keys”) or that applicant is engaged in selling its kits for purposes other than providing a means by which purchasers of applicant’s custom imprinting services and/or custom imprinted blanket throws and tapestries can provide proof of purchase of such blanket throws and tapestries to applicant and submit their desired image to applicant for imprinting."

Nothing in the record convinced the Board that consumers recognize the kits -- even if sold by third parties, given as gifts, or resold -- as good in trade, "as opposed to means to acquire applicant's customized printing services."

The Board concluded that Applicant is seeking to register "a marketing technique or method for its custom printing services and/or its custom imprinted tapestries and blanket throws." But a technique is "only a way of doing something, and by itself is not an activity for the benefit of others." Consequently, the Board concluded that Applicant's kits are not goods in trade, and it affirmed the refusal.

Text Copyright John L. Welch 2008.

Transferred Distinctiveness Leads TTAB to Reverse Mere Descriptiveness Refusal of "NANOCRYSTAL COLLOIDAL DISPERSION"

The Board reversed a refusal to register the mark NANOCRYSTAL COLLOIDAL DISPERSION under Section 2(f) for "pharmaceutical preparations, namely, adjuvant preparations sold as a component of a full line of pharmaceuticals, and ingredients and components thereof, namely ultra-small particle formulations" [COLLOIDAL DISPERSION disclaimed], finding that the distinctiveness of Applicant's prior registration for the mark NANOCRYSTAL for the same goods will transfer to this new application. In re Elan Pharma Int'l Ltd., Serial No. 78517591 (September 5, 2008) [not precedential].


Rule 2.41(a) provides that ownership of a Principal Registration of "the same mark" may be accepted as prima facie proof of acquired distinctiveness. An applicant who invokes this rule is seeking to "tack" the use of the registered mark to its use of the applied-for mark in order to show that the new mark has acquired distinctiveness.

"Thus, the analysis used to determine whether applicant's present mark is 'the same mark' as its previously registered mark, for purposes of the rule, is the analysis used in tacking cases, i.e., whether the marks are legal equivalents. *** To meet the legal equivalents test, the marks must be indistinguishable from one another or create the same, continuing commercial impression such that the consumer would consider both as the same mark."

The Board observed that Applicant's prior registration for NANOCRYSTAL issued on the Principal Register without a showing of acquired distinctiveness, and that the registration is more than five years old. Furthermore, in the applied for mark the term COLLOIDAL DISPERSION is disclaimed, and from the PTO's evidence that term appears to be highly descriptive. Consequently, the Board concluded that "the mark NANOCRYSTAL COLLOIDAL DISPERSION creates the same, continuing commercial impression as the previously registered NANOCRYSTAL marks such that it is the legal equivalent thereof. Therefore, the marks are 'the same' for purposes of Trademark Rule 2.41(b)."

Moreover, the goods in one of Applicant's two prior registrations for NANOCRYSTAL are identical to those of the instant application. Coupling that with the further evidence that the applied-for mark mark has been in continuous and exclusive use for twelve years, the Board concluded that the new mark has acquired distinctiveness.

Therefore, the Board reversed the refusal to register.

TTABlog comment: So now this Applicant will presumably have a registration for NANOCRYSTAL that is more than five-years old (and thus immune to a descriptiveness attack) and a 2(f) registration for NANOCRYSTAL COLLOIDAL DISPERSION, with COLLOIDAL DISPERSION disclaimed, both registrations being for the same goods. What does the second registration add, if anything, to what Applicant already had in the first registration?

By the way, note the entry for NANOCRYSTAL at Wikipedia. Do you think Applicant Elan Pharma may have had some input into this entry?

Text Copyright John L. Welch 2008.

My Goodness? TTAB Reverses Mere Descriptiveness Refusal of "MY HORSE PLAYER" for Handicapping Software

Does addition of the word "MY" make an otherwise merely descriptive mark inherently distinctive? Maybe, maybe not, said the Board, but it did the trick in In re Scott McKeever, Serial No. 78919885 (September 10, 2008) [not precedential]. The Board reversed a Section 2(e)(1) refusal of the mark MY HORSE PLAYER, finding the mark not merely descriptive of horse handicapping software and related Internet services.


The PTO maintained that MY HORSE PLAYER is comprised of merely descriptive components that retain their descriptive meaning when combined. HORESEPLAYER is defined as "one who regularly bets on horses" and is therefore descriptive of the intended users of McKeever's goods and services. Furthermore, according to the PTO, both HORSE and PLAYER are individually descriptive of a feature of the goods and services: HORSE means horse, and PLAYER means someone who bets on horses. The word MY "serves only as the possessive pronoun identifying the particular customers chosen 'horse player,' or mode of assistance in handicapping a horse race."

McKeever submitted 37 third-party registrations on the Principal Register for marks that include the term MY with disclaimed matter [e.g., MY WEB, MY ARABIC TEACHER]. The PTO countered with 40 registrations in which MY is combined with descriptive or generic terms, and which registrations reside on the Supplemental Register, or under 2(f) on the Principal Register [e.g., MY FIRST KEYBOARD]. The only conclusion the Board could draw from these registrations is that "sometimes 'MY' marks have been found to be descriptive and sometimes they have not."

McKeever further argued that its mark is incongruous, and the Board agreed. "The term HORSE PLAYER means a person who places bets on horses, but is used here in connection with a thing that can be used by a horseplayer to assist in betting choices."

"There are at least two mental steps that one seeing the mark must make to connect it with a significant feature of the goods or services: 1) the viewer must understand that the mark does not refer to the user, that the goods or services are a software program or online service [TTABlog comment: when considering mere descriptiveness, one is supposed to consider the mark in the context of the goods and services; so isn't this a given?]; and 2) the goods or services do not allow a user to place bets or play horses, but assist in handicapping or deciding how to place bets on horses."

As to the PTO's argument that the mark describes the intended use of the goods and services, that might be true if the mark were just HORSE PLAYER, said the Board. However, adding the word MY, "turning the user into the mechanism, creates a unitary phrase with sufficient incongruity to require some thought in divining the nature of the goods and services and, thus, the mark does not immediately convey that information."

The Board pointed out that it was not finding "that the inclusion of the word MY will always make an otherwise merely descriptive mark inherently distinctive." That depends on the fact of the particular case.

Nothing that there is a "thin line" of distinction between suggestive and merely descriptive, and resolving any doubt in Applicant McKeever's favor, the Board reversed the refusal.

TTABlog comment: Suppose the mark were MY H-O-R-S-E PLAYER for software for playing the basketball game of H-O-R-S-E on the computer. Would this be merely descriptive? I think so. What if MY HORSE PLAYER were used as a mark for a computer program that allows the user to play the role of a horse on a virtual farm? Forget it. I'm not going there. Besides, I'm from the South Side of Chicago, and I don't do farms.

Text Copyright John L. Welch 2008.

Precedential No. 40: "SAM EDELMAN" Confusingly Similar to "EDELMAN" for Handbags, Says TTAB

In its first precedential decision in more than a month, the Board affirmed a Section 2(d) refusal to register the mark SAM EDELMAN for luggage, handbags, and other Class 18 goods, finding it likely to cause confusion with the registered mark EDELMAN for handbags, luggage trunks, and other Class 18 goods. Applicant's ownership of a registration for the SAM EDELMAN mark for footwear was of no help, and its arguments regarding sophistication of purchasers and the right of an individual to use his own name fell on deaf ears. In re SL&E Training Stable, Inc., 88 USPQ2d 1216 (TTAB 2008) [precedential].


Because the goods of the parties are in part identical, the Board presumed that they travel in the same trade channels to the same classes of customers. As to the marks, the Board found that "[b]ecause the marks share the surname 'Edelman,' which is the only element in the registered mark and is a clearly recognizable and prominent element in applicant’s mark, ... there are strong similarities between the marks in terms of appearance, sound, meaning and commercial impression." Moreover, consumers may see the EDELMAN mark as an abbreviated form of SAM EDELMAN.

Applicant contended (without evidence) that consumers of handbags are sophisticated, but the Board noted that he goods in the application and registration are not restricted in any way, and could be sold in discount stores to the unsophisticated consumer.

Applicant also argued that there is no likelihood of confusion because of "a strong public policy to allow individuals to use their names," especially where applicant has "built a reputation in the relevant industry." The Board found no such public policy in CAFC, TTAB, or CCPA precedent, but rather a more compelling policy of avoiding a likelihood of confusion. "Thus, the fact that SAM EDELMAN is an individual’s name does not give applicant an unfettered right to use that name if it conflicts with a previously registered mark." [TTABlog aside: we're talking about registration here, not use, so what's the relevance of this argument anyway?]

As to the supposed renown of Sam Edelman, Applicant submitted seven article referring to him. The Board was not impressed: "These articles are evidence that Sam Edelman was referenced in seven articles. However, they do not prove that Sam Edelman is well-known in the fashion industry." Even if he were, the Board noted, it is not clear how that would decrease the likelihood of confusion.

Finally, Applicant pointed to its registration of SAM EDELMAN for footwear, and contended that the footwear identified in its registration "is related to the products identified in its application, and therefore justifies the registration of the application at issue." In other words, the PTO is somehow estopped from refusing to register the mark for class 18 goods. Not so, said the Board.

"'[t]his Office should not be barred from examining the registrability of a mark when an applicant seeks to register it for additional goods as it does here, even when the additional goods are closely related to those listed in a prior registration.' In re Sunmarks Inc., 32 USPQ2d at 1472. This Board has the authority and duty to decide an appeal from a final refusal to register, and this duty may not be delegated by adopting the conclusion reached by another examining attorney on a different record."

Balancing the relevant du Pont factors, the Board found confusion likely, and so it affirmed the refusal to register.

Text Copyright John L. Welch 2008.

TTABlog Practice Pointer: Properly Submit Evidence or Lose Your Opposition

What simple lesson can be gleaned from the following two Section 2(d) oppositions? Both went off the road at the testimony stage because the Opposer failed to get any evidence properly into the record. Lesson learned? Read the Rules of the Road, i.e., the Trademark Rules, before heading down TTAB Boulevard.


In the first case, H. Michael Bishop v. Marina Flournoy, Oppositions Nos. 91175625 and 91175737 (September 5, 2008) [not precedential], Opposer Bishop did not file testimony or a notice of reliance during his testimony period. He did file a trial brief, to which he attached evidence. Not considered, said the TTAB, since the evidence was not properly submitted during Bishop's assigned testimony period. And so, since Bishop had no properly-submitted evidence, the Board dismissed the oppositions for failure to prove standing or any pleaded ground for relief.

In the second case, Reece R Halpern v. Grand Media, LLC, Opposition No. 91165362 (September 4, 2008) [not precedential], Opposer Halpern submitted only his own affidavit with exhibits during his testimony period. Halpern, an attorney, argued that he misread the requirements for submitting evidence and that "not accepting his affidavit and exhibits exalts form over substance." The Board was not sympathetic. It granted Applicant's motion to strike that evidence, since testimony must be taken by oral deposition, absent a stipulation permitting affidavit testimony. See Rules 2.123(a) and (b).

The Board then considered the evidence submitted by Applicant during its testimony period "to determine whether it has established or admitted the elements of Opposer's case." The Board observed that:

"In this regard, representations made by opposer’s co-counsel during cross examination of applicant’s witnesses do not establish facts upon which opposer can rely; and exhibits shown by opposer’s co-counsel to applicant’s witnesses are without proper foundation and authentication for purposes of establishing any elements of opposer’s case."

Concluding that Opposer Halpern had not established any of the elements of his case, the Board dismissed his opposition.

Text and Photograph Copyright John L. Welch 2008.

TTAB Finds "BOYD'S" and "BOYDS" Confusingly Similar for Clothing, Despite Applicant's Attempt to Limit Its Trade Channels

Continuing our WYHA? (Would you have appealed?) series of decisions, here's another one to consider for inclusion. The Board affirmed a Section 2(d) refusal to register the mark BOYD'S for various items of wearing apparel "offered and sold through authorized dealers," finding the mark likely to cause confusion with the registered mark BOYDS for men's and women's clothing and for related retail services. In re Boyd Coddington’s Hot Rods & Collectibles, Inc., Serial No. 78913114 (August 28, 2008) [not precedential].


There wasn't much room for disagreement about the similarity of the marks; that factor weighed "heavily" in favor of a likelihood of confusion finding. Likewise, the "similarity and nature of the goods and services" favored such a finding. So what was left to argue about? Not much.

Applicant Boyd Coddington's pointed to the restriction on its channels of trade in the identification of goods: clothing "offered and sold through authorized dealers." It argued that this restriction eliminates any likelihood of confusion:

"[Applicant] may control which dealers are classified as authorized dealers. The authorized dealers diminish confusion by clarifying and illustrating the differences between the goods sold in connection with the Proposed Mark and the goods sold in connection with the Cited Mark. In particular, the authorized dealers explain that the good originate from different sources. Consequently, any likelihood of confusion is significantly diminished, if not completely eliminated." [TTABlog comment: was there any chance that the Board would buy this bloviation?]

The Board had two major problems with Applicant's restriction argument: first, the restriction "does not specify a distinct channel of trade" (e.g., hot rod dealers), and so the authorized dealers may be clothing retailers who compete with the registrant. Second, as the Board observed in a footnote, even if there such a narrower restriction had been included, there is still no restriction on registrant's channels of trade, which could include, for example, hot rod dealers.

The Board therefore concluded that the channels of trade must be considered similar, and in light of the "essentially identical" marks and the similar goods and services, it affirmed the 2(d) refusal.

TTABlog note: The late Boyd Coddington, I have learned, was a famous hot rod designer and the star of the television show American Hot Rod.

Text Copyright John L. Welch 2008.

"GANGA" Merely Descriptive of Department Store Services, Says TTAB, Equivalently

Returning to our "Would you have appealed?" series of decisions, contemplate this double-header. The Board applied the doctrine of foreign equivalents in affirming Section 2(e)(1) refusals of GANGA and GANGA $5 & UNDER, finding the marks merely descriptive of retail department store services. In re M6 Ventures LLC, Serial Nos. 78911566 and 78911613 (August 20, 2008) [not precedential].


(ganga)
Applicant M6 Ventures (located in San Diego) admitted that "ganga" means "bargain," but argued that "ganga" also means "gang" in "Spanglish" and that many other Spanish phrases mean "bargain." Therefore "it is unlikely that American buyers familiar with Spanish would assume that [the mark GANGA] has a descriptive of generic meaning or significance."

The Board first agreed with Examining Attorney Mary D. Munson-Ott that the word "bargain" is merely descriptive of Applicant's services. Not surprisingly, Internet excerpts showed use of the word "bargain" in connection with retail store services, and a number of third-party registrations contain disclaimers of "bargain" for retail store services. A dictionary definition of "bargain" added to the pile. Clearly, consumers would understand that the word "bargain" describes a "significant feature of such stores, namely, that they feature discounted or low price merchandise."

There was no real dispute that "ganga" means "bargain" , nor any argument by Applicant that "ganga" is an obscure Spanish term. The fact that "ganga" may have different meanings in other contexts is not controlling.

Likewise, the mark GANGA $5 & UNDER [$5 & UNDER disclaimed] is merely descriptive of the services: "it forthwith conveys an immediate idea of a feature of such services, namely, that
at least some of the merchandise sold therein retails for five dollars and under."

TTABlog note: Maybe if Applicant had shown that one or more gangs had opened department stores, its argument about the meaning of "ganga" might not have been so quickly discounted. But would "ganga" have been merely descriptive in that case, too?

Anyway, for other meanings of "ganga," see the entries in the Urban Dictionary and in Wikipedia.

Text Copyright John L. Welch 2008.

TTABlog Test Time: So You Think You Know Genericness?

At her Property, intangible blog, Pamela Chestek here invites readers to participate in a genericness survey (Teflon-style) regarding ice cream designations/terms/names/marks. Do you think you know genericness when you see it? Ok. Explain the difference between the In re Gould test and the American Fertility test. All set? Then take this quiz: which of the follow ten terms were found by the Board to be generic? Good luck. You'll need it.

1. THE BEEF JERKY OUTLET for "retail services featuring meat products." In re American Food Co., Serial Number 76101362 (September 29, 2004).



2. LENS for "retail store services featuring contact eyewear products rendered via a global computer network."In re Lens.com, Inc., 83 USPQ2d 1444 (TTAB 2007).


3. VIRUSSCAN for computer software for protecting and securing the integrity of data, computer software, and computers and computer networks. In re Network Associates Technology, Inc., Serial No. 76426050 (January 25, 2005).


4. DENTISTRY FOR THE QUALITY CONSCIOUS for dental services. Fox v. Hornbrook , Opposition No. 91121292 (Aug. 25, 2004).



5. MICRO COTTON for bath linen, towels, napkins, clothing items, and related goods. In re Sharadha Terry Prods. Ltd., Serial Nos. 78027603 and 78027605 (September 1, 2005).


6. FRESH ORGANICS for fresh fruits and vegetables, unprocessed cereals, and the like, and for retail health food store services. In re Nutraceutical Corp., Serial No. 78975072 (March 13, 2006).



7. DIGITAL INSTRUMENTS for "scientific and technological research for others and development of products for others, namely, atomic force microscopes and scanning tunneling microscopes, in the field of metrology." In re Veeco Instruments, Inc., Serial No. 76383240 (March 22, 2006).


8. SING-A-LONG for "karaoke players." In re Mana-Tee Concepts USA, LLC, Serial No. 76518416 (August 24, 2005).



9. INSTANT MESSENGER for electronic messaging services. In re America Online, Inc., 77 USPQ2d 1618 (TTAB 2006).



10. TEACHER'S INSURANCE PLAN for "Insurance services, namely underwriting insurance in the fields of property, casualty and automobile insurance; Insurance claims administration and processing; insurance consultation and insurance brokerage services." In re Direct Response Corp., Serial No. 76121702 (March 8, 2005).

TTABlog Answers? Here's a hint. All the odd-numbered cases came out the same way, and all the even-numbered cases came out the opposite way.

For a discussion of In re Gould, American Fertility, and the Board's approach(es) to genericness, see pages 11-15 of this article (which I wrote a few years ago but still makes sense). Also see the comments included in the TTABlog postings for the cases above.

Text Copyright John L. Welch 2008.

TTAB Quickly Affirms Mere Descriptiveness Refusal of "7SECONDS" for Hair Detangler

Continuing with our "Would you have appealed?" series of decisions, consider if you will the attempt by Unite Eurotherapy to register the mark 7SECONDS for "hair detangler." The Board affirmed a Section 2(e)(1) refusal to register, finding the mark merely descriptive of the goods. In re Unite Eurotherapy, Inc., Serial No. 78936716 (August 20, 2008) [not precedential].

Examining Attorney Evelyn W. Bradley contended that 7SECONDS is merely descriptive of a "significant aspect of applicant’s product, namely, that it detangles hair in 7 seconds." She submitted website evidence showing hair detanglers and referring to the number of seconds for which the stuff should remain on the user's hair.

Applicant argued, of course, that the mark is at most suggestive of the goods, lamely contending that prospective purchasers "would have no idea what 7SECONDS refers to." It feebly asserted that "the number seven has numerous religious, cultural, mathematical and psychological connotations and, thus, the mark 7SECONDS is subject to multiple connotations; and that, because of the merger of the numeral 7 and the word SECONDS into a single word with no spaces, viewers will not examine the mark for literalness and, accordingly, the mark creates a unique, non-descriptive mark."

Unfortunately for Applicant, however, it submitted its own promotional documents, which included the following description of the product: "Within 7 seconds your tangles will be gone and your hair will start to feel alive again."

The Board had no trouble untangling itself from Applicant's arguments, finding them to be "unconvincing and inaccurate." It observed, once again, that a mark must be considered in the context of the goods, not in the abstract.

"[A]ny potential purchaser of applicant's hair detangler is likely to understand that the term 7SECONDS refers to the amount of time necessary for detangling; as the term is in fact merely descriptive, it is axiomatic that competitors may need to use the phrase; the mere fact that the number '7' may have multiple connotations does not mean that, in the context of this mark for the identified goods, it has any connotation other than denoting the number of seconds it takes to achieve results."

And so, the Board affirmed the refusal, stating that it had "no doubt" about its conclusion.

Text Copyright John L. Welch 2008.