TTAB Finds "Tick, Tick ... Boom!" to be the Title of a Single Work, Affirms Refusal to Register

Agreeing with Examining Attorney Natalie Polzer, the Board affirmed a refusal to register the mark TICK, TICK ... BOOM! for musical recordings, entertainment services in the nature of a musical play, and songbooks and sheet music, finding the mark to be the title of a single work and therefore unregistrable. In re Skeeziks, LLC, Serial No. 78435362 (September 26, 2008) [not precedential].


The law is clear that the title of a single work is not registrable, and this rule applies to musical recording, printed publications, and live theatrical productions. Applicant argued that its purported mark "is not the title of a single work and that the mark identifies a series of distinct creative works."

In support of its argument, Applicant submitted copies of two copyright registrations for "two substantial [sic] distinct plays with Applicant's mark as the title." According to Applicant, "since copyright law is applicable to the determination of whether works are both creative and distinctive, ... [the] copyright registrations are probative and substantially demonstrate that Applicant has used its mark as the title of at least two distinct creative works."

The Board gave Applicant's argument a bad review. First, it noted that "copyright registrations are not evidence of use of the term in commerce." Second, it was not convinced that "the determination under copyright law that a work is a derivative work is the equivalent of a series for purposes of trademark registration."


The Examining Attorney maintained that "applicant's copyright registrations point to the fact that the applicant's play has undergone creative adaptations as part of the creative process but remains a single musical play entitled Tick, Tick ... Boom!"

The Board agreed, concluding that the second copyright registration "does not evince a series of plays," but rather indicates merely that some material was added to the original as part of the overall creative process.

Moreover, the Copyright Act's definition of a derivative work supports the Examining Attorney's position, as does TMEP Section 1202.08(c), which states that a series "is not established when only the format of the work is changed and use of the title on unabridged and abridged versions of the same work does not establish a series."

The Board therefore affirmed the refusal to register.

Text Copyright John L. Welch 2008.

"NO BROKEN GLASS" Symbol Fails to Function as a Trademark for Lighting Fixtures, Says TTAB

The Board affirmed a refusal to register the design shown below, for electric lighting fixtures, on the ground that the purported mark, as used by Applicant, would be perceived as merely informational and not as a source indicator. In re Halogen Lighting Products, Serial No. 78426018 (September 29, 2008) [not precedential].


Examining Attorney Sandra Manios argued that the specimens of use show the design used in connection with the wording "NO BROKEN GLASS," and thus the design functions only "to inform consumers that applicant's goods contain glass that will not break."

specimen of use
Applicant argued that the PTO has registered numerous other marks using the international prohibition symbol, and further that the proposed mark "is source indicative by creating an incongruity due to the complex design the broken wine glass [sic] and the relation of the design to Applicant's subject electric lighting fixture goods."

The Board pointed out once again that it is not bound by the actions of examining attorneys in assessing different marks for different goods. It must decide each case on its own merits.

As to the purported incongruity of the design, the Board failed to see the light:

"The fallacy in applicant's argument arises from the assumption that the depiction of a broken wine glass as part of a symbol on a box of applicant's goods would convey no relevant information to its customers."

The PTO's evidence established that, when used on a box, the image of a wine glass, or a broken wine glass, indicates that the goods inside are fragile. Moreover, the "international prohibition symbol," when combined with another symbol, means "no" or "not" with respect to the other symbol's meaning. Thus, the meaning of Applicant's design is "quite clear."


Applicant's proposed mark "readily, and without further thought or reasoning - conveys the information that the goods are not fragile," i.e., that the glass elements will not break. The durability of applicant's goods is a "central characteristic and a selling point of these goods."

The Examining Attorney demonstrated that the symbols comprising applicant's design have a recognized meaning, while Applicant failed to present evidence that, as used by Applicant, the symbols would be understood differently.

The Board therefore concluded that the design in question would be perceived as merely informational, and not as a trademark. It therefore affirmed the refusal to register under Section 1, 2, and 45 of the Trademark Act.

TTABlog wisecrack: Perhaps the Applicant might add this symbol adjacent the applied-for mark:

Text Copyright John L. Welch 2008.

Fame of "MICHELOB" Mark and Survey Evidence Lead Board to Sustain 2(d) Opposition to "MAMBO MICHELADA" for Beer

The fame of the MICHELOB mark and Opposer's survey results led the Board to sustain Anheuser-Busch's Section 2(d) opposition to registration of the mark MAMBO MICHELADA for beer and syrup for making beer beverages. Anheuser-Busch, Incorporated v. Mambo Seafood #1, Inc., Opposition No. 91160250 (September 22, 2008) [not precedential].


The goods involved are in part identical and, because neither the application nor Opposer's registrations have any limitations on channels of trade, the Board presumed that the goods travel in the same normal channels to the same classes of purchasers. Consumers would be expected to exercise only ordinary care in purchasing these relatively inexpensive goods. Therefore these du Pont factors weigh "heavily" in Opposer's favor.

Since 1993, Anheuser-Busch has sold more than 16 billion dollars worth of beer under its MICHELOB marks in this country. MICHELOB brand beers have ranked in the top 15 beers in sales since 1977. Opposer has spent more than $800 million to promote its MICHELOB beers since 1993. And the MICHELOB mark enjoys a 96% brand awareness among adults. Consequently, the Board found, and Applicant did not dispute, that the mark MICHELOB is famous for beer. Again, this factor weighs heavily in Opposer's favor, particularly since fame plays a "dominant role" in the likelihood of confusion analysis.


Turning to the marks, the Board first noted, for the zillionth time, that when the goods are identical, the degree of similarity in the marks necessary to support a finding of likely confusion decreases. Moreover, "as the fame of a mark increases, the degree of similarity between the marks necessary to support a conclusion of likely confusion declines." [TTABlog question: How low can it go?]

Comparing the marks MICHELOB and MAMBO MICHELADA, the Board found, contrary to the parties' respective linguistics experts, that neither MAMBO nor MICHELADA is dominant in Applicant's mark. The experts disagreed as to how the marks would be pronounced, but the Board pointed out once again that "there is no 'correct' pronunciation of a trademark because it is impossible to predict how the public will pronounce a particular mark." [TTABlog query: how about the pronunciations of CAT and KAT, or DOG and DAWG?].

The Board did agree with Applicant, however, that the marks have different meanings: MICHELOB is a coined term, while MICHELADA in Spanish means "my freezing one" or "my frosty one."

Nonetheless, the Board concluded that the marks "share sufficient similarities to engender similar overall commercial impressions," and that the "similarities between the marks in appearance, sound, and commercial impression outweigh the differences." [ TTABlog observation: hard to swallow that one.]

The Board then turned to Anheuser-Busch's survey evidence: a mall intercept survey employing the Ever-Ready format [wherein the survey asked "Who do you think puts out the lamp shown her?" and "What makes you think so?] Its survey expert concluded that 43% of "purchasers and likely purchasers of beer mistakenly believe that MAMBO MICHELADA beer is made, put out or approved or sponsored by Anheuser-Busch because of the MAMBO MICHELADA name." The Board found the survey reliable, and that the level of confusion "is significant and certainly weighs in opposer's favor." [TTABlog comment: game, set, and match.]

Finally, the Board noted but discounted the lack of proof of any actual confusion, because most consumers, even in Houston (where Applicant's restaurants are located), have not been exposed to Applicant's mark.

Weighing all the relevant du Pont factors, the Board sustained the opposition.

Text Copyright John L. Welch 2008.

Precedential No. 46: TTAB Affirms 2(d) Refusals of "RSI" Design Mark for Ink Jet Printers

In a less than scintillating decision, the Board affirmed two Section 2(d) refusals of the mark RSI & Design (shown below) for ink jet printers and related paraphernalia, finding the mark likely to cause confusion with the mark RSI in standard character form, owned by different registrants, one for "printing machines" and the other for document imaging services. In re RSI Systems, LLC, 88 USPQ2d 1445 (TTAB 2008) [precedential].


RSI for "printing machines": As to the marks, the Board not surprisingly found the letters RSI to be a prominent feature of Applicant's mark, and it concluded that "the literal portions of the marks are legally identical and the marks in their entirety are very similar in sound, appearance, meaning, and commercial impression."

As to the goods, Applicant argued that the term "printing machines" is "so broad and all inclusive as to be meaningless" and that the Board should consider "extrinsic evidence showing that the description of the goods has a specific meaning." The Board, however, disagreed, deeming the term "printing machines" to be neither so vague as to require extrinsic evidence nor virtually meaningless.

The Board then found that Applicant's goods not only are theoretically related to printing machines, but the "actual goods that are involved here underscore the relatedness of the goods." It observed that the goods "are in different international classes and therefore they are unlikely to be identical," but agreed with Examining Attorney Katherine Stoides that "printing machines are closely related to applicant's ink jet printers." For example, Registrant's promotional materials state that its printers allow for high speed printing, including labels, and Applicant's printers are also intended for printing labels.

"Prospective purchasers familiar with registrant's printing machines and its options and variations in printing capability are likely to assume that applicant's ink delivery system and ink jet cartridges likewise originate from the same source."

RSI for "document imaging services": Turning to the second registration, "Applicant's software for processing images and the '680 registrant's imaging services that convert documents from one medium to another are very similar. Consumers familiar with the registrant's ... services are likely to assume that registrant is now the source of software that performs some of the same functions."

Purchaser of these goods and services are also likely to be "similar, if not overlapping." The channels of trade are likely to be similar because the goods and services "are likely to be advertised in similar publications where purchasers with multiple printing and document imaging needs would look for products and services."

Applicant's "sophisticated purchasers" argument was rejected by the Board, since "even careful purchasers are likely not immune from source confusion" when the marks are substantially identical. Likewise, as to Applicant's argument regarding the lack of any evidence of actual confusion, the Board pointed out that lack of actual confusion "carries little weight."

The Board therefore affirmed both refusals to register.

Text Copyright John L. Welch 2008.

TTAB Affirms 2(a) Refusal of "COCAINE" as Scandalous for Soft Drinks

Marc Randazza, at The Legal Satyricon blog, discusses (here) the TTAB's recent ruling that the mark COCAINE (in the form shown below) for "carbonated and non-carbonated soft drinks and energy drinks” is scandalous and therefore unregistrable under Section 2(a). In re James T. Kirby, Serial No. 77006212 (September 22, 2008). [not precedential].


Marc sums up his view of the case thusly: "Despite the abject stupidity of this decision, I can’t necessarily blame the TTAB for rendering its decision. ... the Applicant had ample opportunity to refute the examiner’s evidence. [His] counsel was obviously unfamiliar with the particular land mines that await those who choose to litigate before the TTAB, and he unfortunately stepped on a couple of them."

Text Copyright John L. Welch 2008.

Precedential No. 45: TTAB Denies Petitioner's Motion to Amend, Grants Respondent's Motion for Judgment on the Pleadings

Media Online Inc. got the bum's rush when it petitioned to cancel a registration for the mark EL CLASIFICADO ONLINE for Internet advertising services. The Board denied its cross-motion to amend its petition to add two claims, and then granted Respondent's motion for judgment on the pleadings. Media Online Inc. v. El Clasificado, Inc., 88 USPQ2d 1285 (TTAB 2008) [precedential].


Petitioner's Cross-Motion to Amend: The Board first dealt with and denied Petitioner's cross-motion to amend its petition to add claims of descriptiveness and fraud. Rule 15(a), Fed. R. Civ. P., states that leave to amend pleadings should be "freely given when justice so requires," but if the amendment would be prejudicial to the other party, leave will be denied. The timing of the motion to amend is a "major factor" in the calculus.

Here, the Board found that Petitioner unduly delayed in filing its motion. "The new claims appear to be based on facts within petitioner's knowledge at the time the petition to cancel was filed." Petitioner waited more than seven months, and until Respondent filed its motion for judgment, before seeking leave to amend. It relied on dictionary definitions and Respondent's website pages, which evidence it could have obtained prior to filing the petition for cancellation.

Petitioner argued that it delayed because the parties were engaged in settlement negotiations and because it was "surprised" by Respondent's assertion of the "affirmative defense" of priority first raised in its motion for judgment. The Board observed, however, that the parties never suspended proceedings for settlement talks, and that priority is an issue simply by virtue of Petitioner's original assertion of its 2(d) claim and so the issue could not be a surprise.

Moreover, Respondent would be prejudiced were Petitioner permitted to add claims. "It is incumbent upon petitioner to identify all claims promptly in order to provide respondent with proper notice." Otherwise, respondent would have to expend increased time, effort, and money to defend the case.

The Board therefore concluded that petitioner unduly delayed in bringing its motion to amend and was not unfairly surprised when Respondent sought judgment on the original claim.

Moreover, the Board noted that Petitioner's proposed fraud claim is futile because it fails to plead particular facts as required by Rule 9(b), Fed. R. Civ. P.

Respondent's Motion for Judgment on the Pleadings: The Petition for Cancellation was based on Section 2(d). Petitioner claimed first use of its marks on November 27, 1999. Respondent, however, filed the application that yielded its registration on November 4, 1999, and is entitled to rely on that date as its constructive first use date under Section 7(c).

Thus Respondent has priority as a matter of law, and the Board granted Respondent's motion under Rule 12(c), Fed. R. Civ. P.

Text Copyright John L. Welch 2008.

"GOTHAM BATMEN" Strike Out: TTAB Finds Fraud, Sustains Opposition on Summary Judgment

In a case similar to Medinol, the Board sustained DC Comics' opposition to registration of the marks GOTHAM BATMEN in standard character and design form [GOTHAM disclaimed], ruling that Applicant Gotham City Networking committed fraud on the USPTO when it falsely amended its use-based application to specify certain entertainment services for which it had never used the mark. DC Comics v. Gotham City Networking, Inc., Opposition No. 91175853 (September 24, 2008) [not precedential].


Applicant originally sought to register its marks for "recreational services in the nature of sports teams," but via examiner's amendment changed that to "entertainment services in the nature of softball, baseball, basketball and hockey games." Discovery revealed, however, that Applicant had used the mark only in connection with softball games.

Applicant claimed that the error was an "inadvertent mistake" and "immaterial." The Board was not impressed. It pointed out, once again, that "[s]tatements regarding the use of the mark on goods and services are certainly material to issuance of a registration." Moreover,

"It is irrelevant that registrations have yet to issue for applicant's marks. The timing of the misrepresentation is immaterial. Whether the false statements alleging use of the mark in commerce occur at the time of filing the application, during the examination process, or at a later point during the USPTO's review of the statement of use, the result is the same -- an application results in a registration improperly accorded legal presumptions in connection with goods and/or services on which the mark is not used."

The Board pointed out that Applicant's counsel (a co-founder of Applicant and a member of its softball team) authorized the examiner's amendments "when [Applicant] knew or should have known that it did not use the involved marks in connection with all the recited services, as amended, as of the filing dates of the applications."

"Thus, as in Medinol, a material representation of fact with regard to use of the mark on particular services was made by applicant and that statement was relied upon by the USPTO in determining applicant's right to registration."

Applicant's claim of inadvertence did not change the finding of fraud, since "proof of specific intent is not required, rather, fraud occurs when an applicant or registrant makes a false material representation that the applicant or registrant knew or should have known was false."

The Board therefore deemed the applications void ab initio.

TTABlog comment: In footnote 4, in a blatant bit of obiter dictum, the Board notes that "a misstatement in an application as to the goods or services on which a mark has been used does not rise to the level of fraud where an applicant amends the application prior to publication." For that proposition, the Board cites Universal Overall Co. v. Stonecutter Mills Corp. 154 USPQ 104 (CCPA 1967). Curiously, it does not cite its own recent precedential decision in University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465 (TTAB 2008), wherein two panel members ruled that such an amendment prior to publication merely raises a presumption that the applicant lacked the intent to commit fraud. Only the third panel member said that the fraud is completely cured by such an amendment. So what exactly is the law on this point?

I note again that Universal Overall is a questionable foundation for the "pre-publication amendment cures fraud" idea. In that case, Applicant did not list a number of goods, only to admit that it had used the mark on only one of them. Instead, applicant misidentified its goods as various clothing items when it fact it was selling textile fabrics. The point is, it was selling the goods involved but it just misidentified them. In the instant case, Applicant claimed to be using the mark for four services, when in fact it had used the mark only for one. Moreover, at the time Universal Overall was decided, an applicant did not have the option to file an intent-to-use application. Maybe the CCPA was looking more leniently to an applicant who could not file other than on a use basis. Maybe the availability of the intent-to-use filing basis should result in a stricter application of the fraud doctrine once an applicant chooses the Section 1(a) basis and verifies that all the listed goods and/or services are in actual use.

In any case, it certainly appears that the Board is inclined to allow fraud to be cured if an amendment is filed before publication. This approach, of course, looks to whether the USPTO has relied on the false statement -- i.e., whether the USPTO has deemed the application ready for publication. But it ignores the reliance by third-parties who search pending applications on the USPTO database and who, based on a false identification that has not yet been corrected, decide not to adopt a particular mark for particular goods or services. And, of course, this "liberal cure" approach makes the original verification in the application rather meaningless.

Text Copyright John L. Welch 2008.

Precedential No. 44: TTAB Sustains 2(e)(3) Opposition to "HAVANA CLUB" for Cigars Made From Cuban Seed Tobacco

The Board sustained a Section 2(e)(3) opposition to registration of the mark HAVANA CLUB for "cigars made from Cuban seed tobacco" [HAVANA disclaimed], finding the mark to be primarily geographically deceptively misdescriptive. The key issue was whether Applicant's goods should be deemed to originate from Havana, Cuba, even though they will be made elsewhere. Corporacion Habanos, S.A. v. Anncas, Inc., 88 USPQ2d 1785 (TTAB 2011) [precedential].


Opposer submitted a copy of its U.S. trademark registration for the mark HABANOS UNICOS DESDE 1492 for cigars and related products. Its Commercial Vice-President testified that the company currently uses its mark in advertising in United States and intents to sell Cuban cigars in this country as soon as the law allows. The Department of Treasury confirmed that Cuban entities are permitted to oppose registration of new trademarks "where these actions relate to protection of a trademark in which Cuba ... has an interest." Despite the fact that Opposer, a Cuban entity, "does not and cannot engage in any business in the United States due to the embargo on Cuban goods," the Board concluded that Opposer has a "real interest" in the outcome of this proceeding, and thus has standing.

Turning to the merits of the 2(e)(3) claim, the pertinent elements were set out in In re California Innovations Inc., 66 USPQ2d 1853, 1856-57 (Fed. Cir. 2003):

(1) the primary significance of the mark is a generally known geographic location;
(2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark (i.e., that a goods/place association exists), when in fact the goods do not come from that place; and
(3) the misrepresentation would be a material factor in the consumer’s decision to purchase the goods.

Applicant Anncas did not dispute that the primary significance of HAVANA CLUB is a generally known location. [And it's not Havana, Illinois - ed.] As to the second element, Anncas did not dispute that there is a goods/place association between cigars and Havana. However, the "central issue" in the case was this: "whether applicant's 'cigars made from Cuban seed tobacco' should be deemed to originate from Havana, Cuba, although they will be made elsewhere."

The uncontroverted testimony of Opposer's witnesses established that "Cuban seed tobacco" is descended from tobacco seed taken decades ago from Cuba, and that there is little or no connection between the characteristics of 'cigars made from Cuban seed tobacco' and genuine Cuban cigars. Even Applicant's witness admitted that he has no information that cigars from "Cuban seed tobacco" share any qualities or characteristics with cigars made in Cuba. The Board therefore concluded that there was an "insufficient connection between Cuban seed tobacco ... and Havana to support a finding that cigars made from Cuban seed tobacco come from or originate in Havana." And so, for purposes of the second element, the goods do not come from the place named in the applied-for mark.

Moving to the third element of the 2(e)(3) test, Opposer established that cigars are a principal product of Havana, and that the desirability of cigars from Havana is well-known. Therefore the association of Applicant's products with Havana "undoubtedly would be material" to the purchasing decision.

The Board therefore affirmed the Section 2(e)(3) refusal.

Text Copyright John L. Welch 2008.

Precedential No. 43: Absent TTAB Order, No Sanction for Failure to Provide Initial Disclosures

The TTAB denied Applicant's motion for sanctions for Opposer's failure to make initial disclosures. The Board ruled that the proper course was for Applicant to file a motion to compel and then, if Opposer did not comply with a resulting Board Order, to seek sanctions. Kairos Institute of Sound Healing, LLC v. Doolittle Gardens, LLC, 88 USPQ2d 1541 (TTAB 2008) [precedential].


Rule 2.120(a)(2) requires that initial disclosures be made on or before thirty days after discovery opens. Here, Opposer Kairos Institute failed to provide initial disclosures by the appointed date, and Applicant Doolittle filed a motion for sanctions (including dismissal of the opposition). [Three days later, Opposer served its initial disclosures.]

Doolittle claimed that dismissal was an appropriate sanction under Rule 2.120(g)(1). However, the Board noted, that rule applies if a party fails to comply with a Board order relating to disclosure. Rule 2.120(g)(2) authorizes sanctions under (g)(1) if a party fails to make initial disclosures and informs the other party that such disclosures will not be made. Here, (g)(2) did not apply because Kairos did not say it would not provide the disclosures (and in fact, it did provide them).

The question then became whether Kairos failed to comply with a Board order under 2.120(g)(1). The Board said no. Initial disclosures are essentially treated the same as discovery responses. "A motion for sanctions is only appropriate if a motion to compel these respective disclosures has already been granted."

Although the notice of institution sets a deadline for initial disclosures, "it does not constitute an 'order of the Trademark Trial and Appeal Board relating to disclosure' within the contemplation of Trademark Rule 2.120(g)(1). A notice of institution is merely a scheduling order, whereas the type of order that is contemplated as a prerequisite to a motion for sanctions under Trademark Rule 2.120(g)(1) is an order granting or denying a motion to compel or a motion for a protective order."

The Board therefore denied Doolittle's motion for sanctions.

Text Copyright John L. Welch 2008.

"ZIP AND STEAM" Merely Descriptive of Cooking Pouches, Says TTAB, Not Surprisingly

Here's another WYHA decision for our collection. Would you have appealed the TTAB's Section 2(e)(1) mere descriptiveness refusal of ZIP AND STEAM for "cooking containers, namely, plastic cooking bags and pouches?" The Board affirmed the refusal in In re SteamFast Europe Limited, Serial No. 76636092 (September 24, 2008) [not precedential].


Examining Attorney Andrea D. Saunders relied on website pages showing that "bags such as applicant's zip and are often described as having a zipper enclosure, and that food can be cooked by steaming it." Applicant conceded that its bags closed by zipping, but it took issue with the descriptiveness of the word "steam."

"[A]pplicant argues that the bag or pouch is not steamed, 'rather steam is generated within the bag which cooks the contents by steam.' *** In applicant's words, the 'goods are microwave steam cooking bags that can be filled with food to be cooked by the home user and then closed and placed in a microwave oven.'"

Finding Applicant's argument to be mostly hot air, the Board agreed with the PTO that STEAM describes a "key feature or characteristic" of the identified goods: "to generate steam for cooking the contents of the container."

The question, then, was whether the combination of ZIP and STEAM presents a "unique or incongruous" combination? [TTABlog comment: what does "unique" have to do with it? Even "unique" terms can be merely descriptive.] Not surprisingly, the Board answered in the negative.

Text Copyright John L. Welch 2008.

TTABlog Flotsam and Jetsam: Issue No. 12

Every 18 months or so, just like clockwork, I gather enough small items to fill a "Flotsam and Jetsam" posting. So let's empty the bin! [The signs in the photos are from East Cambridge].


Randazza on SEX ROD: Marc Randazza provides his comments on the recent RED SOX v. SEX ROD decision at his blog, The Legal Satyricon (here). As you may have guessed, Marc was not pleased with the Board's finding that SEX ROD is a vulgar term. Says Marc: "Unfortunately, for the time being, it seems that the USPTO is governed by Victorian morality, and it intends to make sure that we don't forget it."

TTAB Comes to Boston: Don't forget, the TTAB is coming to Boston one week from today to hear the IRONMAN opposition. Details here.


TTABlogger Road Trip: Yours truly will be speaking on November 7th at the California Bar's 33rd Annual IP Institute, held in Rancho Mirage. I'll be talking about ... guess what? [Details here].

Other Blogs: Seattle Trademark Lawyer reports here that the TTAB is seeking two new judges. Leo won't apply, will he? The Trademark Blog is now allowing comments: how's that working out, Marty? And Pam Chestek's new Property, intangible blog is picking up steam.


Civil Procedure Review? My son Peter sent me this rap video on the Federal Rules of Civil Procedure, from Berkeley Law School. I guess they teach law differently on the left coast. BTW: that guy dancing looks kind of familiar. [Caveat: language not safe for work!]

Text and photos Copyright John L. Welch 2008.

"FASHION TOOLS" Merely Descriptive of Fashion Information Website, Says TTAB, Unconvincingly

In an unconvincing, but mercifully brief, decision, the Board affirmed a Section 2(e)(1) refusal to register the mark FASHION TOOLS, finding it merely descriptive of "providing a website featuring information and content in the fields of personal relationships, dating and fashion." In re Integrity News Media, Inc., Serial No. 77292701 (October 6, 2008) [not precedential].

leather punch
The Examining Attorney relied on dictionary definitions of "tool," "information," and "resource" in arguing that in contending that information and content are "tools." Several third-party registrations for "a variety of services," included disclaimers of "tools" or resided on the Supplemental Register. And a few Lexis/Nexis excerpts showed use of "tool" in connection with news or information.

Applicant, appearing pro se, argued that the PTO was applying an overly-broad definition of "tool," and that simply because information and content may be "used" does not mean that "tool" is a proper descriptor.

According to the Board, however, the word "tool" is "regularly used to refer to the use of various types of information. Because applicant's website contains fashion information, the website itself is a tool for those persons seeking fashion information. As such, FASHION TOOL is merely descriptive in connection therewith."

Finding that no "exercise of imagination, cogitation, mental processing or gathering of further information" is required for customers to "readily perceive the merely descriptive nature of the term FASHION TOOLS as it pertains to applicant's services," the Board affirmed the refusal.

TTABlog comment: One has to wonder whether an attorney could have presented a better case on behalf of Applicant. For example, this Applicant attempted to submit third-party registrations for marks including the term "tool," but it/he completely screwed it up.

I can see the word "tool" being descriptive when used in connection with a website providing financial tools, like calculators, interest charts, tax rate tables, and the like: i.e., mathematical tools. But I don't see "tools" as being descriptive of fashion information. It seems to me that the case was nowhere near as clear-cut as the Board made out.

P.S.: See definition of "tools" at the Urban Dictionary (here). [HT: Pam C.]

Text Copyright John L. Welch 2008.

TTAB Invokes Bogus Telescope Analogy, Affirms Mere Descriptiveness Refusal of "WIKINVEST" for Financial Website

Ok, I admit it. I'm still miffed over the TTAB's ruling that the mark THE TTABLOG is not inherently distinctive. The Board blindly applied its "telescoping" theory to find mere descriptiveness, ignoring the fact that the parts of a telescope slide smoothly together, while the words "TTAB" and "blog" do not. I ask again, exactly how do you pronounce TTABLOG? Is there any competitive need for someone else to use THE TTABLOG? Do you not think that consumers immediately recognize THE TTABLOG as a mark just because the "telescoping" doesn't fit? These same arguments apply to the Board's robotic affirmance of the PTO's mere descriptiveness refusal to register WIKINVEST for financial information services. In re Nvest, Inc., Serial No. 77154507 (October 8, 2008) [not precedential].


According to the Board, "Applicant has telescoped the words 'wiki' AND [TTABlog query: why all caps on the AND?] 'invest' to create the single word 'wikinvest.'" [TTABlog query: how do you pronounce that?] The Board then cited the SUPEROPE (for wire rope) and BEEFLAKES (for thinly sliced beef) cases as precedents, because those two "telescoped" marks were found to be merely descriptive.

Do you notice any difference between SUPEROPE or BEEFLAKES, on the one hand, and WIKINVEST and TTABLOG on the other? SUPEROPE and BEEFLAKES comprise two words that slide together nicely. There's no problem with pronunciation of the compound term. Even assuming that the SUPEROPE and BEEFLAKES cases were decided correctly (and I think not), they are distinguishable from the case at hand.

Of course, WIKI (which everyone pronounces as "wickee") and INVEST are descriptive of Applicant's services. But take a look at the PTO's evidence regarding the public's supposed understanding of the term WIKINVEST -- flimsy at best.

I continue to maintain that TTABLOG, and WIKIVEST as well, require some thought and imagination -- cause some slight hesitation -- before a consumer recognizes the meaning of the terms. Or maybe the consumers recognize the meaning while at the same time recognizing the awkward spelling and pronunciation that provides distinctiveness. How are these two marks any less distinctive than SUGAR AND SPICE, the oft-cited example of a distinctive, double entendre mark? Doesn't SUGAR AND SPICE immediately convey information about bakery goods? How much hesitation does a consumer experience when encountering SUGAR AND SPICE for bakery goods? Does the consumer first think he or she is buying a nursery rhyme instead of a pumpkin cupcake?

Why would any third party need to use the term WIKINVEST for a investment wiki? Why would any competitor of mine need to use the term TTABLOG for a blog about the TTAB? Why doesn't the Board give the applicant the benefit of the doubt in these cases, at least when the two words involved do not neatly "telescope" into a single word?

TTABlog comment: THE TTABlog is registered under Section 2(f). My valiant but futile attempts to convince the PTO and then the Board that the mark is inherently distinctive are chronicled here, here, here, and here.

Text Copyright John L. Welch 2008.

TTABlog Guest Comment: Michael E. Hall on "The Continuing Saga of STEELBUILDING.COM"

On October 15th, the Board will hear oral argument in In re Steelbuilding.com, Inc., Serial No. 78680792, in which the Applicant challenges the PTO's genericness and mere descriptiveness refusals of STEELBUILDING.COM for "computerized online retail services in the field of pre-engineered metal buildings and roofing systems." Former PTO Examining Attorney Michael E. Hall finds the PTO's approach in this case rather surprising, and he explains why in his article entitled "The Continuing Saga of STEELBUILDING.COM" (pdf here).


As Mr. Hall points out, the current appeal involves the same applicant, the same mark, and the same services that were at issue in both the CAFC’s 2005 precedential decision in In re Steelbuilding.com, 75 U.S.P.Q.2d 1420 (Fed. Cir. 2005) (Steelbuilding I), and the Board’s 2007 non-precedential decision in In re Steelbuilding.com, Inc., consolidated Serial Nos. 76280389 and 76280390 (December 12, 2007) (Steelbuilding II). In Steelbuilding I, the Federal Circuit found that the Applicant’s mark STEELBUILDING.COM was not generic for services identical to those in the current application. Subsequently, in Steelbuilding II, the Board reversed a disclaimer requirement for STEELBUILDING.COM for virtually the same services because it found that the term had acquired distinctiveness. Mr. Hall states that:

The PTO’s brief in the present case essentially argues that (1) “additional evidence” in this application should result in a different outcome, and (2) the Federal Circuit’s holding in Steelbuilding I was disingenuous. However, the “additional evidence” upon which the PTO ostensibly relies in this appeal – third-party registrations and two third-party domain names similar to Applicant’s mark – does not really address the evidentiary problems the Federal Circuit perceived in Steelbuilding I. As to the Federal Circuit’s other reasons for reversing the genericness refusal in Steelbuilding I, the PTO’s brief is self-contradictory in places, ignores Steelbuilding I in other places, and in the end simply disagrees with the Federal Circuit. In short, the PTO is, for all intents and purposes, now asking the Board to “reverse” its primary reviewing court.

TTABlog note: The author practices trademark law in northern Virginia at the Law Office of Michael E. Hall. He may be reached at michaelemersonhall@gmail.com.

Text Copyright John L. Welch 2008.

TTAB Will Hear "IRONMAN" 2(d) Opposition in Boston, October 24th

There are still seats available to "The TTAB Comes to Boston," a program presented by the Boston Patent Law Association (BPLA) on Friday afternoon, October 24, 2008, at Northeastern University School of Law (NUSL). The Board will hear final arguments in Ironman Magazine v. World Triathlon Corporation, Opposition No. 91167894. Briefs and other papers may be found here. Details of the program are here.


Northeastern Univ. School of Law is located at 400 Huntington Avenue, a few blocks down and across the street from the MFA. Take the Green Line to the Northeastern stop (E Train - Heath Street), or the Orange Line to the Ruggles Station, which will put you on the NU campus about one block from the law school. [HT: Ben S.] (Map here).
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Precedential No. 42: TTAB Reverses 2(a) False Connection Refusal of "MARIA CALLAS" for Jewelry

Ruling that the PTO failed to carry its burden of proof, the Board reversed a Section 2(a) "false connection" refusal of the mark MARIA CALLAS for jewelry and other goods. In order to establish this Section 2(a) bar to registration of a now-deceased natural person's name, the PTO must show, inter alia, that there are heirs or other successors who are entitled to assert that person's right to the use of the designation. Here, the "contradictory" evidence led the Board to give the Applicant the benefit of the doubt. In re MC MC S.r.l., 88 USPQ2d 1378 (TTAB 2008) [precedential].

Maria Callas
The PTO maintained that: "(1) the name in the proposed mark, MARIA CALLAS, is the same as the name of the famous, deceased opera singer Maria Callas, (2) the proposed mark would be recognized as being the same as that of the singer Maria Callas, (3) no one associated with the deceased singer Maria Callas, her heirs and/or her estate is connected with the goods sold by applicant, and (4) the fame and reputation of the singer Maria Callas is such that consumers of applicant’s goods will presume a connection between her and the applicant’s goods."

Applicant argued that Section 2(a) was not satisfied because there is no estate vested with rights to control use of the MARIA CALLAS name or persona. Specifically, it contended that “the cumulative evidence of record establishes that the rights of privacy and publicity in the name 'Maria Callas' have extinguished with the death of the opera singer in 1977 and her legal heirs thereafter." The Examining Attorney responded that the evidence she submitted established that there is an estate of Maria Callas “which appears to authorize releases and re-releases of Maria Callas’ intellectual property, including her music.”

The Board turned to In re Wielinski, 49 USPQ2d 1754, 1758 (TTAB 1998), for guidance:

"A natural person’s right to the use of a designation which points uniquely to his or her persona may not be protected under Section 2(a) [TTABlog query: How does Section 2(a) protect a right to use?] after his or her death unless heirs or other successors are entitled to assert that right. [citations omitted]. The person with whom the marks are said to falsely suggest a connection must have rights in its name or identity which are prior to those of the applicant [citation omitted]. In order to possess rights, such person, or someone to whom those rights have been transferred, must exist."

The Board therefore observed that it "must find whether or not there is someone (this may be a natural person, estate, or juristic entity) with rights in the name 'Maria Callas.'" It concluded that Applicant had rebutted the PTO's prima facie case under Section 2(a) by presenting evidence that no such entity exists. But the Examining Attorney responded with evidence to support her position that “heirs or successors” with rights in the name and/or person actually do exist.

Based on the totality of the evidence of record, the Board expressed its "doubt as to whether there is any successor in interest entitled to assert rights, as contemplated under Section 2(a), to the Maria Callas name or persona. In other words, it is unclear whether the rights that Ms. Callas once possessed in her name or persona devolved to anyone. The record is replete with contradictory information on this point."

Because the burden of proof is on the PTO to establish that applicant’s mark falsely suggests a connection with the particular name or persona, the Board sided with Applicant: "In view of the significant doubt remaining as to whether anyone currently possesses rights in the name 'Maria Callas,' and resolving such doubt in applicant’s favor, we find that the examining attorney has not met her burden in establishing the false suggestion of a connection refusal under Section 2(a)."

The Board noted that, if there are heirs or successors to the name, they may institute an opposition or cancellation proceeding. Moreover, a Section 2(a) claim is not time-barred under Section 14 of the Trademark Act.

Text Copyright John L. Welch 2008.

Walgreen Seeks District Court Review of TTAB's "WAL-VERT" Decision

Walgreen has filed a complaint (here) in the United States District Court for the Northern District of Illinois, seeking de novo review (under 15 U.S.C. Sec. 1071(b)) of the TTAB's August 5, 2008 decision in Wyeth v. Walgreen Co., Opposition No. 91165912 (August 5, 2008) [not precedential].[TTABlogged here]. [HT: Pharmalot blog].


A divided TTAB 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.

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: Many years ago, when I was a kid growing up in Chicago, we called it "Walgreen's." Was that just a youthful indiscretion on my part, or was the name changed to drop the apostrophe "s"?

PS: Readers tell me that Walgreen uses the name Walgreens on its stores, without the apostrophe. I guess I could have looked, since I live about one block from a Walgreen(s). Apparently, I don't pay that much attention to trademarks.

Text Copyright John L. Welch 2008.

TTAB Rules That "SHINNECOCK" Marks for Cigarettes Suggest a False Connection with the Shinnecock Indian Nation

Finding that the two marks shown below, for cigarettes, falsely suggest a connection with the Shinnecock Indian Nation, the TTAB affirmed the PTO's Section 2(a) refusals to register. The Board rejected Applicant's assertion that the PTO's refusals were based on racial discrimination against Applicant, a sole proprietorship owned by a Native American named Jonathan K. Smith. In re Shinnecock Smoke Shop, Serial Nos. 78918061 and 78918500 (September 10, 2008) [not precedential].


Section 2(a), in pertinent part, bars registration of a mark that "may ... falsely suggest a connection with persons, living or dead, [or] institutions ...." There are four elements to such a refusal:

• (1) the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution;
• (2) the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution;
• (3) the person or institution named by the mark is not connected with the activities performed by applicant under the mark; and
• (4) the fame or reputation of the person or institution is such that, when the mark is used with the applicant's goods or services, a connection with the person or institution would be presumed.

Here, the Shinnecock Indian Nation is an "institution" for purposes of Section 2(a). See In re White, 73 USPQ2d 1713 (TTAB 2004). The Board noted that Applicant made no argument and offered no evidence regarding the four elements listed above. The Board recognized, however, that the PTO has the burden of proof, and so it proceeded with its review of the PTO's evidence.

As to the first prong of the test, the Board found that the marks consist of or comprise matter, namely the word SHINNECOCK, that is the "same as or a close approximation of" the tribe's name.

As to the second, the word SHINNECOCK would be recognized as such because it points uniquely and unmistakably to the tribe. The tribe is referred to as "the Shinnecocks" in news articles, and the record was devoid of any other meaning for the term.

As to the third, the Board found that the tribe is not connected with the activities performed by Applicant under the mark. Although Applicant is a member of the tribe, membership alone is not sufficient: "[t]here must be a specific commercial connection between applicant and the tribe, evidencing the tribe's endorsement or sponsorship of applicant's sale of cigarettes."

As to the fourth prong, "the fame and reputation of the Shinnecock tribe is such, and the nature of applicant's particular goods (cigarettes) is such, that applicant's use of its SHINNECOCK mark on cigarettes will lead purchasers to mistakenly presume that a commercial connection exists between the tribe and applicant and applicant's cigarettes." Cigarette purchasers are aware that the Shinnecocks market cigarettes, and a consumer who sees Applicant's cigarettes sold under Applicant's marks will presume the existence of a commercial connection between Applicant and the tribe. The phrase MADE UNDER SOVEREIGN AUTHORITY that appears in the marks would "reinforce and exacerbate" this mistaken presumption.

The Board thus found that all four elements of the Section 2(a) refusal had been established.

Nonetheless, Applicant contended that the PTO's refusal to register the mark was based on racial discrimination, i.e., because applicant is a Native American. He pointed to a number of existing third-party registrations owned by "non-Indians": e.g., SHINNECOCK for golf equipment; CHEROKEE for horse trailers; GERONIMO for tires; etc. Applicant argued that the only difference between this case and the issuance of the registrations is that he is a Native American.

The Board, however, even assuming that these registrations are indeed owned by non-Indians and were issued without the consent of the tribal entities named in the marks, was unpersuaded. First, it is reasonable to assume that these registrations "were issued not because the applicant's therein were non-Indians, but rather because the elements of a Section 2(a) refusal were not or could not be proven by the Office." In particular, Applicant ignored the fourth element, which requires that the mark be considered in relation to the goods. The goods of the third-party registrations, the Board noted, do not appear to be the type of goods that purchasers would associate with the named Indian tribes or personages.

Moreover, even if all the third-party registrations "were issued inappropriately and should have been refused under Section 2(a), such errors by the Office would not justify the issuance of a registration to applicant in this case," nor do they constitute a denial of Applicant's constitutional rights to due process and equal protection. Applicant's claim of racial discrimination by the Office is "unsupported by that facts" and, according to the Board, is "unavailable in any event" under In re Boulevard Entertainment Inc., 67 USPQ2d 1475 (Fed. Cir. 2003):

"The fact that, whether because of administrative error or otherwise, some marks have been registered even though they may be in violation of the governing statutory standard does not mean that the agency must forgo applying that standard in all other cases. The TTAB's decision in this case therefore does not violate the constitutional principles that Boulevard invokes." Id. at 1480.

And so the Board affirmed the refusals to register.

Text Copyright John L. Welch 2008.

TTAB Pulls Plug on "ELECTRIC" for Watches, Affirms 2(e)(1) Mere Descriptiveness Refusal

Well, here we are again with a candidate for our WYHA file (Would You Have Appealed?). The Board affirmed a Section 2(e)(1) refusal of the mark ELECTRIC for watches and watch bands, finding it merely descriptive of watches. Applicant Electric Visual Evolution argued that "the term 'electric' is not commonly used by the general public to describe a source of power for watches," but the PTO's evidence demonstrated otherwise. In re Electric Visual Evolution, LLC, Serial No. 78868409 (September 19, 2008) [not precedential].


Examining Attorney Simon Teng maintained that “[t]he word ‘electric’ immediately conveys to consumers that Applicant’s watches run on electricity.” Applicant argued that ELECTRIC is not merely descriptive because (1) consumers are unlikely to associate the term “electric” with watches and watchbands and (2) the word “electric” has multiple meanings, including “emotionally charged” or “exciting.” According to Applicant:

"The average consumer is unlikely to associate the term 'electric' with watches and watch bands. The average consumer associates watches with mechanical wind-up operation, batteries, motion or even solar power, but not electricity. If asked what powers their watch, consumers are more likely to answer 'battery' not 'electric' or 'electricity.' The term 'electric' is not commonly used by the general public to describe a source of power for watches, nor is the term 'electricity.' When further questioned, consumers would secondarily concede that batteries are electric."

Unfortunately for Applicant, the PTO's website pages and news articles demonstrated that, time and again, the term "electric watch" is used to describe or name watches that are powered by electricity. Applicant's argument, on the other wrist, was unsupported by evidence.

The Board was also not persuaded by applicant’s assertion that the PTO evidence was "outdated or makes only historical references to electric watches." The website evidence was dated 2006 and 2007 and the newspaper articles were published in 2006, 2005 and 2004. Moreover, the websites "show companies advertising for the sale and repair of electric watches and the newspaper articles show references by the authors to electric watches."

Because the mark ELECTRIC is descriptive as to watches, the Board was not required to consider whether it was descriptive of watch bands, because "registration is properly refused if the mark sought to be registered is descriptive of any of the goods."

Text Copyright John L. Welch 2008.

TTAB Reverses Mere Descriptiveness Refusal of "MASTER PLUMBER" for Plumbing Products

Reversing three Section 2(e)(1) refusals to register, the Board found the mark MASTER PLUMBER not merely descriptive of a variety of plumbing items, including sump pumps, garbage disposals, toilet repair parts, faucets, and ventilating ducts. It concluded that the goods "appear to be goods which 'do-it yourselfers' or others who are not master plumbers could and would purchase," and that these purchasers would see the mark as merely suggestive. In re True Value Company, Serial Nos. 78841512, 78841539, and 78841557 (September 19, 2008) [not precedential].


The PTO contended that "master plumber" is an accepted designation for a professional, licensed plumber, and that the subject mark thus describes "an intended user of the goods."

True Value maintained that, for purposes of a mere descriptiveness refusal, a mark must describe an "appreciable number" of individuals to whom the goods or services are directed. It pointed to numerous articles that "tout applicant's goods as being targeted to 'do-it-yourself homeowners.'" [TTABlog query: hearsay?]. Accordingly, True Value argued that the mark does not describe an appreciable number of its intended customers, but is instead merely suggestive of the "professional quality that a do-it-yourself homeowner can obtain from applicant's products." It pointed to several cases that distinguish between "goods targeted to professionals, and goods targeted to a general consumer who wishes to have professional-style results."

The Board sided with True Value. It acknowledged "the existence of a group of possible consumers known as 'master plumbers,'" but the question was whether this was an "appreciable number." According to the Board, True Value submitted probative evidence to the contrary.

"Furthermore, there is nothing in the identification of goods in these applications which limits the class of consumers to 'master plumber,' nor is there anything inherent in the nature of the listed items which would limit their use to 'master plumbers.'" [TTABlog comment: this begs the question, doesn't it? Why isn't there a limitation in the identification of goods that says "intended for do-it-yourself homeowners"?]

The Board then jumped to the conclusion that "'do-it-yourselfers' would likely constitute the overwhelming majority of purchasers, and these purchasers would likely to perceive the suggestive meaning of the mark."

Recognizing the "fine line" between suggestive and descriptive marks, and noting that an applicant is entitled to the benefit of doubt under Section 2(e)(1), the Board reversed the refusal.

TTABlog comment: As an occasional do-it-yourself homeowner, I have tackled a few, minor plumbing projects. But how many homeowners would tackle installation of a garbage disposal, a toilet tank, a spa water pump, or ventilating ducts? Not me. I'd call a master plumber. There's an old saying where I come from: A homeowner who tries to fix his own plumbing has a fool for a plumber. Or something like that.

PS: DW asks whether, under local building codes, installation of some of these items can be done legally by someone other than a licensed plumber?

Text Copyright John L. Welch 2008.

Reminder: 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 Ironman Magazine v. World Triathlon Corporation, Opposition No. 91167894, 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.

TTAB Administers 2(e)(4) Kiss of Death to "SIMMONS COMICS GROUP" for Comic Books

Finding Applicant's evidence insufficient to show that Kiss guitarist Gene Simmons is a renowned historical figure for purposes of Section 2(e)(4), the Board affirmed a surname refusal of SIMMONS COMICS GROUP for comic books ["COMICS GROUP" disclaimed]. In re Gene Simmons Comics Group, Serial No. 78905279 (September 19, 2008) [not precedential].


The Board applied its usual 2(e)(4) analysis, finding that SIMMONS is a "very common surname" (ranking 92nd out of some 89,000 surnames in the 1990 census data), that the name of someone (Gene Simmons) associated with Applicant has that surname, and that Simmons has the "look-and-feel" of a surname.

Applicant argued that SIMMONS has a recognized meaning other than as a surname because Gene Simmons is "a very well know celebrity," i.e., "the world famous bass player for the musical group KISS." Therefore, Applicant argued, SIMMONS will not be perceived primarily as a surname "because of the mark's association with Gene Simmons, ... and the other SIMMONS trademarks owned by Applicant" [including GENE SIMMONS TONGUE for a magazine]. In support of its argument regarding the fame of Mr. Simmons, Applicant referred to the entry for "Gene Simmons" in Wikipedia.


The Board observed that "decisions concerning historical names draw a line between names which are so widely recognized that they are almost exclusively associated in terms of their commercial impressions with the historical figures, and names which are semihistorical in character." Quoting In re Pickett Hotel Company, 229 USPQ 760, 761 (TTAB 1996).

Here, the evidence was insufficient to prove that the term SIMMONS would be "almost exclusively" associated with Gene Simmons. [TTABlog comment: To me, SIMMONS brings to mind Simmons College, right near Northeastern University School of Law, the site of the upcoming "TTAB Comes to Boston" event]. Moreover, to the extent that Gene Simmons is well known, "his renown is primarily in relation to the musical group, Kiss."

"There is no evidence that the surname SIMMONS would be recognized by purchasers as identifying Gene Simmons in the completely different and unrelated context of comic books. In this regard, we point out that applicant's registrations for comic books are not proof of any exposure of the registered marks to the purchasing public; nor do they demonstrate that anyone associates the name SIMMONS for comic books with Gene Simmons."

In short, on this record, Gene Simmons has not been shown to be an historical figure of the magnitude of DA VINCI, SOUSA, and M.C. ESCHER.

The Board therefore concluded that SIMMONS would be perceived primarily as a surname. Addition of the "highly descriptive, if not generic," phrase COMICS GROUP to SIMMONS "does nothing to overcome the surname meaning of the mark SIMMONS COMICS GROUP as a whole."

And so the Board affirmed the Section 2(e)(4) refusal.

Text Copyright John L. Welch 2008.

TTAB Posts October 2008 Hearing Schedule

In addition to the October 24th hearing set for Boston (link here), the Trademark Trial and Appeal Board has scheduled nine (9) hearings for the month of October, as listed below. These 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.


October 7, 2008 - 2 PM: In re Kohr Brothers, Inc., Serial No. 78954992 [Final refusal based upon Applicant's failure to comply with the PTO's requirement that it disclaim "BROS. ORIGINAL ORANGEADE SUPREME" in the mark KOHR BROS. ORIGINAL ORANGEADE SUPREME for frozen custard shakes.]


October 14, 2008 - 11 AM: Certified Printers, Inc. v. Crouser and Associates, Inc., Opposition No. 91167709 [Section 2(d) opposition to the mark shown below for various goods and services related to printing, based upon Opposer's prior use of the mark CERTIFIED PRINTERS for copying and printing services.]


October 14, 2008 - 2 PM: In re Houston Shutters, LLC, Serial No. 78896946 [Section 2(d) refusal to register ROCKWOOD for shutters and blinds in view of the registered mark ROCK WOOD for furniture, wholesale distribution of furniture, and industrial design of furniture.]


October 14, 2008 - 2 PM: In re OPay, Inc., Serial No. 78795221 [Section 2(d) refusal to register the mark *123 for international telephone calling card services, on the ground of likely confusion with various registered marks containing the term 123, for telecommunication services.]

October 15, 2008 - 10 AM: In re Steelbuilding.com, Inc., Serial No. 78680792 [Genericness and mere descriptiveness refusals of STEELBUILDING.COM for "computerized online retail services in the field of pre-engineered metal buildings and roofing systems."]

October 16, 2008 - 2 PM: Ballet Tech Foundation, Inc. v. The Joyce Theater Foundation, Inc., Oppositions Nos. 91180789 and 92042019 [Dispute over ownership of the mark JOYCE for dance theater and charitable fund raising services].

October 23, 2008 - 2 PM: Venice Simplon-Orient Express Inc. v. Hoffman, Oppositions Nos. 91095769 et al. [Section 2(a)[false connection], Section 2(d), and dilution-based oppositions to registration of ORIENT-EXPRESS & Design for "cigars and smoking tobacco" and for "perfumes, cologne, eau de toilette, eau de parfum, and eau de cologne," based upon Opposers' several registered marks comprising or containing the term ORIENT-EXPRESS for various goods and services, including railway passenger services, ashtrays, silver-plated flatware, playing cards, clothing, and champagne.]


October 29, 2008 - 2 PM: In re Taylor Wines Pty Ltd., Serial No. 78854872 [Section 2(d) refusal of the mark shown below left for wine, in light of the registered mark shown below right, for wines.]


October 30, 2008 - 2 PM: Osho Friends International v. Osho International Foundation, Oppositions Nos. 91121040 et al. [Nine oppositions consolidated with one cancellation proceeding directed to various marks containing the word OSHO for educational services and other goods and services relating to the mystic OSHO, baed upon various grounds, including genericness, mere descriptivenss, fraud, lack of ownership, abandonment, false association, and primarily merely a surname.]

Osho
Text Copyright John L. Welch 2008.