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TTABlog Guest Comment: Michael E. Hall on "The PTO’s Dubious New Trademark Rule 2.85(f) Concerning Identifications in Madrid Applications"

On November 17, 2008, the USPTO issued its latest "Miscellaneous Changes to Trademark Rules of Practice," 73 CFR 67759 et seq. (pdf here). According to the PTO, these changes are intended "to clarify certain requirements for applications, intent to use documents, amendments to classification, requests to divide, and Post Registration practice; to modernize the language of the rules; and to make other miscellaneous changes. For the most part, the rule changes are intended to codify existing practice, as set forth in the Trademark Manual of Examining Procedure."


Former Examining Attorney Michael E. Hall strenuously takes issue with one of the rule changes, in the article presented below (pdf here).

The PTO’s Dubious New Trademark Rule 2.85(f) Concerning
Identifications in Madrid Applications

by Michael E. Hall

The holder of an international registration issued by WIPO’s International Bureau (“IB”) may seek an extension of protection to the United States under Section 66(a) of the Trademark Act. See generally T.M.E.P. § 1904 et seq. The USPTO has taken the position that if such a Madrid application contains an identification of goods/services that is indefinite according to the USPTO’s standards for specificity in identifications, the USPTO will require the Madrid applicant to provide a definite identification that is within the scope of the international class assigned by the IB to those goods/services. The USPTO rewrote the relevant sections of the 5th edition of the T.M.E.P., issued in September 2007, to reflect its position (e.g., T.M.E.P. § 1904.02(b)) and issued Examination Guide 3-08 in July 2008 to further explain its position.

On November 17, 2008, the USPTO published its Notice of Final Rulemaking (pp. 67762-63 deal with this issue), indicating that it has re-designated Trademark Rule 2.85(g) as 2.85(f), and that new Rule 2.85(f) provides as follows:

Classification schedules shall not limit or extend the applicant’s rights, except that in a section 66(a) application, the scope of the identification of goods or services for purposes of permissible amendments (see § 2.71(a)) is limited by the class, pursuant to § 2.85(d).

This new rule, effective January 16, 2009, replaces old Rule 2.85(g), which provided that, “Classification schedules shall not limit or extend the applicant’s rights.” In its own words, the USPTO is amending the old rule “to note an exception that in section 66(a) applications, the scope of the identification of goods or services for purposes of permissible amendments is limited by the class.” (p. 67763, column 3)

In its response to comments submitted by Fross Zelnick asking the USPTO to reconsider, the USPTO justifies its position (p. 67762, column 3) by suggesting that its hands are tied by the provisions of the Madrid Protocol:

Under Article 3(2) of the Madrid Protocol, the IB controls classification in an international registration. Under section 70(a) of the Trademark Act and Articles 6(3) and 6(4) of the Protocol, a section 66(a) application and any resulting registration remains part of and dependent upon the international registration. Since the international registration is limited to those classes that the IB has assigned, no legal basis exists for registration of the mark as to goods/services that fall outside these classes under U.S. standards.

Fross Zelnick also suggested that the USPTO permit Madrid applicants to amend their identifications in the same manner as other applicants, but implement a “pseudo classification” system similar to TESS’ current “pseudo mark” search field. In response, the USPTO again made its “no legal basis” argument (p. 67763, column 1):

The Office is developing such a system, to ensure that relevant marks in section 66(a) applications will be found in a search of Office records, even if the IB and USPTO classifications differ. However, that does not change the fact that no legal basis exists for registration of the mark in the United States as to goods/services that do not fall within the class(es) that the IB has assigned. Thus, even if a pseudo-classification system is implemented for search purposes, amendment of the classification in a section 66(a) application will still be prohibited.

In short, the USPTO’s position is that “[u]nder Article 3(2) of the Madrid Protocol, the IB controls classification” and “[s]ince the international registration is limited to those classes that the IB has assigned, no legal basis exists for registration of the mark as to goods/services that fall outside these classes under U.S. standards.”

The USPTO’s “no legal basis” argument, however, is flatly contradicted by Article 4(1)(b) of the Madrid Protocol, which explicitly states: “The indication of classes of goods and services provided for in Article 3 shall not bind the Contracting Parties with regard to the determination of the scope of the protection of the mark.” Article 3(2) of the Madrid Protocol, seized upon by the USPTO in articulating its position, concerns international applications forwarded to the IB by an Office of origin. In pertinent part, Article 3(2) provides that, “The indication of classes given by the applicant shall be subject to control by the International Bureau, which shall exercise the said control in association with the Office of origin. In the event of disagreement between the said Office and the International Bureau, the opinion of the latter shall prevail.”

Accordingly, while the USPTO is correct that Article 3(2) does provide that the IB controls classification, Article 4(1)(b) squarely states that the IB’s classification of goods and services “shall not bind the Contracting Parties with regard to the determination of the scope of the protection of the mark.” It is remarkable that the USPTO does not even mention Article 4(1)(b) when it asserts that “no legal basis exists for registration of the mark as to goods/services that fall outside [the IB-assigned] classes under U.S. standards.”

The USPTO also cites WIPO’s Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol in support of its position (p. 67763, column 2):

When a particular product or service identified in an international application could be classified in more than one class, but only one of the applicable classes has been indicated, the IB assumes ‘‘that the reference is only to the product or service falling in the identified class.’’ Guide to the International Registration of Marks under the Madrid Agreement and Protocol, Para. B.II.23.02 (Jan. 2008), available on the IB Web site at http://www.wipo.int/madrid/en/guide/index.html. Therefore, the Office believes that the scope of permissible amendment of an indefinite identification must be limited by the IB-assigned class.

However, the USPTO has really plucked the quoted passage from the Guide out of context, as the complete passage shows. Section 23.02 of the Guide concerns whether the IB will issue a notice of irregularity to an Office of origin with respect to an international application, and in its entirety provides as follows (emphasis added):

If the International Bureau considers that the goods and services are not grouped in the appropriate class or classes, or if they are not preceded by the number of the class or classes, or if that number is not correct, it will make its own proposal, which it notifies to the Office of origin and copies to the applicant. Where a particular product or service could be classified in more than one class but only one of the applicable classes has been indicated, the International Bureau will not regard this as an irregularity. It will be assumed that the reference is only to the product or service falling in that class. Such an interpretation does not, however, bind a designated Contracting Party with regard to the determination of the scope of the protection of the mark.

Thus, like Article 3(2) above, Section 23.02 of the Guide deals with the interaction between an Office of origin and the IB. Section 23.02 explains that for the purpose of determining whether to issue a notice of irregularity to an Office of origin concerning the classification in an international application from that Office of origin, “[i]t will be assumed that the reference is only to the product or service falling in that class” and therefore no notice of irregularity will be issued to the Office of origin. However, lest there be any confusion, the very next sentence goes on to specifically state, complete with a cross-reference to Article 4(1)(b) in the margin next to the text, that “[s]uch an interpretation does not, however, bind a designated Contracting Party with regard to the determination of the scope of the protection of the mark.”

So, as for the USPTO’s assertion that there would be “no legal basis” for registration of a mark as to goods/services that fall outside the IB-assigned classes, the Madrid Protocol certainly does not seem to compel any such result, notwithstanding the USPTO’s strained attempts to conclude otherwise. However, may the USPTO take the position, embodied in its new Trademark Rule 2.85(f), that for Madrid applicants the scope of the identification of goods or services for purposes of permissible amendments is limited by the class?

Section 30 of the Trademark Act permits the Director to “establish a classification of goods and services, for convenience of Patent and Trademark Office administration, but not to limit or extend the applicant’s or registrant’s rights.” (emphasis added) Section 41 of the Trademark Act provides that, “The Director shall make rules and regulations, not inconsistent with law, for the conduct of proceedings in the Patent and Trademark Office under this chapter.” Is the USPTO’s new Trademark Rule 2.85(f), which explicitly limits a Madrid applicant’s rights based upon classification, even arguably consistent with Section 30 of the Trademark Act? In other words, since the IB controls classification and the USPTO may not use that classification to restrict an applicant's rights, does it not follow that the USPTO must permit a Madrid applicant to amend its indefinite identification even if the amended goods/services would ordinarily be classified by the USPTO in a class other than that assigned by the IB?



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.

TTAB addendum: Thilo Agathe commented (here) in June on the proposed rule change: "I would submit that the result is inconsistent with the intent of the Madrid Protocol as well as the implementing legislation."

Text Copyright John L. Welch 2008.

TTAB Reverses 2(b) Refusal of Mark Containing Portion of Canadian Flag

In its first decision under Section 2(b) in decades, the Board reversed a refusal to register the mark shown immediately below, for painting services, finding that it does not contain a simulation of the flag of Canada or an insignia of Canada. In re Certa ProPainters, Ltd., Serial No. 77046679 (November 14, 2008) [not precedential].


Section 2(b) bars the registration of a mark that "consists of or comprises the flag or coat of arms or other insignia of ... any foreign nation, or any simulation thereof." [TTABlog comment: the phrase "or any simulation thereof" refers to flag, coat of arms, or insignia, not to the foreign nation. Perhaps the provision could have been better drafted.]

The term "other insignia" has not been given a broad scope, but "is considered to include only those emblems and devices that also represent such authority and that are of the same general class and character as flags or coats of arms." Incorporation of individual feature or distorted features that merely suggest flags, coats of arms, or other insignia do not bar registration.

The Board found PTO Examination Guide 2-07 helpful:

"A refusal must be issued if the design would be perceived by the public as a flag, whether or not other matter appears with or on the flag. The examining attorney should consider the following factors, in regard to both color and black-and-white drawings, to determine whether the design is perceived as a flag: 1) color; 2) presentation of the mark; 3) words or the designs on the drawing; 4) use of the mark on the specimens.

"Generally a refusal should be made where a black-and-white drawing contains unmistakable features of the flag, or contains features of the flag along with indicia of a nation..."

In 1965, the Canadian Parliament adopted the flag depicted below as the Canadian national flag.


The Board noted that Applicant's mark "does not include the entirety of the actual Canadian flag." But is it a "simulation"? Answering that question requires "a first impression gathered from a view of such mark without a careful analysis and side-by-side comparison with the [actual flag]."

Although the subject mark includes "a majority of the flag's features" but not the 1:2:1 ratio of the stripes or bars, the Board must "balance these considerations against the overall visual impression made by the mark."

The Board observed that "the maple leaf and bar design does not look like the Canadian flag or a simulation of the flag." "[T]he view must still provide substantial, additional details to complete the image of the flag of Canada." In the Board's view, the design "only suggests the Canadian flag, and is not a simulation of the flag."

"Applicant's mark simply suggests the Canadian origin of its services in the same manner that a red, white and blue design with stars suggests an American product." [TTABlog note: Applicant is a Massachusetts company, so how are its services of Canadian origin?]

The Board noted that its decision is in accord with the Examination Guide, which states that "[m]arks containing elements of flags in stylized or incomplete form are not refused under Section 2(b)." Registration should not be refused, according to the Guide, if "[a] significant feature is missing of changed." As examples, the following are registrable:

obscured by other matter
significant feature changed
In Applicant's mark, the Canadian flag is "significantly changed" and the missing flag portion is replaced by wording. Therefore in this regard the mark does not run afoul of Section 2(b).

The PTO also maintained that the mark includes an official insignia of Canada: the 11-pointed maple leaf. The Board, however, found that the leaf design is not an "insignia" that is prohibited by Section 2(b). There was no evidence that this design, per se, has been adopted by Canada as an "insignia" to represent the government. Although it may serve as a national symbol of Canada (like the Statue of Liberty serves as a symbol of the USA), it does not qualify for protection as an "insignia" under Section 2(b).

The Board therefore reversed the refusal to register.

Text Copyright John L. Welch 2008.

Precedential No. 50: TTAB Grants Motion to Compel Proper Initial Disclosures

In another annoying but precedential procedural ruling, the Board granted Petitioner Influance, Inc.'s motion to compel, finding Respondent Elaina Zuker's initial disclosures to be inadequate under FRCP 26(a)(1)(A)(i). Influance, Inc. v. Elaina Zuker, 88 USPQ2d 1859 (TTAB 2008) [precedential].


Respondent Zuker listed witnesses and documents (here), but did not state the address or telephone number of the witnesses or the subject matter about which each has information. As to the listed documents, Zuker did not provide their location (nor, alternatively, did she produce copies of the documents).

Moreover, as to form, Respondent's disclosures were unsigned (in violation of FRCP 26(g)), and did not bear the case number or the caption.

Respondent was ordered to provide adequate initial disclosures, in proper form, within thirty days of the Order.

Text Copyright John L. Welch.

Precedential No. 49: Failure to Serve Notices of Opposition Leads to Swift TTAB Dismissal

Opposer Schott AG shot itself in the AG when it failed to serve its notices of opposition on Applicant L'Wren Scott, as required by Rule 2.101. The Board granted Applicant's motion to dismiss and denied Schott's cross-motion for leave to amend its notices of opposition and to serve the notices. Schott AG v. L’Wren Scott, 88 USPQ2d 1862 (TTAB 2008) [precedential].


Opposer Schott timely filed its oppositions by first-class mail. The oppositions were instituted, but Applicant moved to dismiss for failure to comply with the service requirements of Rule 2.101. Neither notice included a certificate of service. [See footnote 3: had Opposer filed electronically via ESTTA, it would have had to confirm that it had forwarded copies of the notices to Applicant.] Counsel for Applicant submitted a declaration stating that he never received either notice and was not aware of any attempt to serve the papers. The Board agreed that Schott clearly failed to satisfy the requirements of the Rule.

Schott argued that the purpose of this Rule is to facilitate early settlement discussions, not to prevent timely-filed oppositions. The Board agreed that service by the Opposer may have the effect of aiding settlement, but the primary purpose of the Rule is "increased efficiency, particularly in an era when many Board proceedings filed through the ESTTA system can be instituted automatically by the ESTTA system."

Schott also urged that FRCP 15 is usually applied liberally to permit amendment of pleadings, particularly prior to answer. The Board pointed out, however, that a notice of opposition may be amended as of right only if the original notice of opposition was properly served. Here, the oppositions were a nullity, and there are no proper notices to amend.

The Board therefore dismissed each of the oppositions.

Text Copyright John L. Welch 2008.

Precedential No. 48: TTAB Resolves Procedural Spat Over Discovery Conference

In this annoying but precedential decision, the Board resolved a brouhaha between the parties over their failure to hold the required Rule 2.120 discovery conference. Opposer moved for sanctions and Applicant then moved to dismiss. Guthy-Renker Corp. v. Michael Boyd, 88 USPQ2d 1701 (TTAB 2008) [precedential].


The parties wrangled over whether Mr. Kroll or Mr. Schindler was the proper attorney contact for Applicant, which one Opposer's counsel should have contacted, and when. The Board ordered that (1) Applicant appoint one counsel of record, (2) the parties clarify whether they will accept service of papers by electronic transmission, and (3) the parties hold the required discovery conference on or before December 14, 2008.

Text Copyright John L. Welch 2008.

TTABlog Recommended Reading: "U.S. Declarations of Use for Madrid-Based Registrations"

The November 15, 2008 INTA Bulletin includes a helpful article on "U.S. Declarations of Use for Madrid-Based Registrations," by Joseph F. Schmidt, Julie A. Katz, and Michele S. Katz (pdf here). The authors point out that the deadlines for Section 71 Declarations of Use are based on the date of issue of the U.S. Extension of Protection and not on the International Registration date. As a consequence, the 10-year renewal for a Madrid Extension of Protection (which is based on the I.R. date) will not be due at that same time as the 10-year Declaration of Use. 

 

A foreign owner unfamiliar with the particulars of U.S. law may be surprised that maintenance of its U.S. Extension of Protection requires more than just timely renewal of the corresponding International Registration. The article also points out that (unlike the Section 8 Declaration) there is no six-month grace period for the Section 71 Declaration of Use. As to the 10-year Declarations of Use, it must be filed within the six-month period before the 10th anniversary, or within a three-month grace period thereafter. [NB: The law was changed in 2010 to provide a six-month grace period in both cases. TTABlogged here]. 

I note that, although the Madrid provisions came into effect in the U.S. in November 2004, the first U.S. Extension of Protection under the Madrid Protocol provisions was issued on February 1, 2005 [See TTABlog posting here]. And so the first Section 71 Declaration of Use for a Madrid-based U.S. Extension of Protection will be due no earlier than February 1, 2010, and could be filed as late February 1, 2011. 

I do take issue with one assertion made in the article, in its discussion of the Incontestability Declaration (Section 73). The article states that "One of the benefits of incontestability is that it limits the grounds on which a proceeding to cancel a registration may be filed." I believe, however, that incontestability has nothing to do with TTAB proceedings. It is Section 14 that serves as a 5-year statute of limitations that cuts off certain grounds for cancellation, regardless of whether the registration in question has been made incontestable. 

For further discussion of this point, see the TTABlog posting here.  

Text Copyright John L. Welch 2008.

Three New Members Appointed to Trademark Public Advisory Committee (TPAC)

COMMERCE SECRETARY GUTIERREZ NAMES NEW MEMBERS TO TRADEMARK PUBLIC ADVISORY COMMITTEE
November 18, 2008


Washington, D.C. - U.S. Commerce Secretary Carlos M. Gutierrez recently named three new members to the Trademark Public Advisory Committee (TPAC). They will serve three-year terms on the committee, which was created by the 1999 American Inventors Protection Act to advise the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) on the management of trademark operations, respectively, including goals, performance, budget and user fees. The committee has nine voting members who are appointed by and serve at the pleasure of the Secretary of Commerce.

Makan Delrahim is a shareholder at Brownstein Hyatt Farber Schreck and is a member of the Litigation and Government Relations groups (Washington, D.C.). Mr. Delrahim’s law firm focuses on antitrust, public policy, intellectual property and international trade. He previously served as a member of the U.S. Attorney General’s Task Force on Intellectual Property. Mr. Delrahim is a frequent commentator and author on competition law and intellectual property issues. He previously served as staff director and chief counsel of the Senate Judiciary Committee working as legal and policy advisor for then-Chairman Orrin G. Hatch (R-UT). Mr. Delrahim is experienced in class action litigation and patent law reform, copyright legislation as well as the USA Patriot Act.

Mary Boney Denison is a founding partner of Manelli Denison & Selter PLLC in Washington, D.C. Her practice focuses on trademark prosecution and litigation. Ms. Denison was selected as a "Washington DC Super Lawyer 2007," placing her in the top five percent of Washington, D.C. area lawyers. Her law firm advises clients on strategic international intellectual property decisions; trade secret and trademark litigation (common law and registered marks); trademark cancellation and opposition proceedings before the Trademark Trial and Appeal Board. She has been a member of the International Trademark Association (INTA) for many years and has served on its board of directors. She currently serves as Chair of the USPTO subcommittee for INTA.

Timothy J. Lockhart is Partner in Charge, Intellectual Property Group, Willcox & Savage P.C. in Norfolk, VA. He supervises a group of lawyers and staff personnel in counseling clients on copyrights, patents, trade secrets, and trademarks, including registration, enforcement, licensing, and litigation. Mr. Lockhart is a member, Board of Directors, Hampton Roads Technology Council, and a member, Bulletin Committee, International Trademark Association. He teaches Continuing Legal Education (CLE) courses on intellectual property law. He is a member of the Virginia State Bar and the District of Columbia Bar and retired from the U.S. Navy Reserve with the rank of Captain.

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Fame of "KOHLER" Mark for Faucets Keys TTAB 2(d) Victory over "KOHLER HOMES"

Fame was the name of the game in Kohler Co.'s Section 2(d) opposition to the marks KOHLER HOMES for "custom construction of homes" [HOMES disclaimed] and KOHLER ASSOCIATES ARCHITECTS for "architectural design" [ASSOCIATES ARCHITECTS disclaimed]. The Board found those marks likely to cause confusion with the registered marks KOHLER and THE BOLD LOOK OF KOHLER for plumbing fixtures and fittings, bath tubs, sinks, and the like. Kohler Co. v. Kohler Homes, Opposition No. 91152287 (November 4, 2008) [not precedential].


Opposer Kohler proved sales of more than $18 billion and advertising expenditures of more than $150 million. Its affiliates operate some 600 showrooms across the country. It has sold some of its products for 70 years, and sinks and bathtubs for more than 100 years.

The Board therefore concluded that the mark KOHLER "is famous in connection with bathroom fixtures and within the home construction industry generally for purposes of our likelihood of confusion analysis, and is entitled to broad protection." Fame "plays a dominant role" in the likelihood of confusion analysis, and this factor "weighs heavily" in Opposer's favor.

As to the marks, the Board not surprisingly found that the dominant portion of Applicant's marks is the word KOHLER. As to THE BOLD LOOK OF KOHLER, the word KOHLER "figures prominently in creating the commercial impression of this mark as it identifies what has the 'bold look.'"

In short, the Board found that Applicant's marks are similar to Opposer's, and this factor favors Opposer.


As to the goods and services involved, the Board found that the classes of customers overlap:

"[T]he relevant public for opposer's goods and applicant's architectural design services are homeowners, commercial building owners, contractors and builders, and the relevant public for opposer's goods and applicant's custom construction of homes services are current or future homeowners."

The parties promote their respective goods and services in home design magazines and journals, and in newspapers. Opposer provides support, educational programs, and design tools to builders, architects, designers, and homeowners. Thus Opposer has established itself as more that just a seller of fixtures: it is closely associated with the home construction, renovation, and remodeling industries. Applicant provides design services as part of its architectural services, and assists customers in choosing bathroom fixtures. In fact, it has installed Opposer's fixtures for its customers.

The Board noted that when a famous mark is involved, "special care is necessary to appreciate that products [and services] not closely related may nonetheless be confused as to source by the consumer because of the fame of the mark."

The Board therefore found that, under these circumstances, the similarity of the goods and services favors a finding of likely confusion as to both of Applicant's marks.

Opposer offered a mall intercept survey purporting to show confusion at a level greater than 30%. However, the Board gave the limited weight to these results, since mall intercept surveys are not based on a random sample. Moreover, the number of participants in this survey was small.

Applicant argued that confusion is unlikely because its customers are discriminating. The Board found, however, that even if that were true, "the similarity of the marks and the goods and services outweigh any purchaser sophistication." Moreover, even sophisticated purchasers are not immune to source confusion.

Finally, Applicant contended that there are numerous uses of KOHLER by third parties, and so Opposer's mark cannot be considered particularly strong. However, many of the uses proffered by Applicant were for goods or services not similar to Opposer's goods. Moreover, Applicant provided no information as to the "extent to which purchasers and prospective purchasers are exposed to [those marks] or their familiarity with them."

Weighing the relevant du Pont factors, the Board found confusion likely and sustained the opposition.

TTABlog note: Applicant seemed to avoid making the common but useless argument that, because its principal is named Mark Kohler, it has the right to use the name Kohler.

Opposer tried to make some actual confusion hay out of Mr. Kohler's testimony that customers sometimes ask if he is connected with Opposer. Also Mr. Kohler stated that when he meets a prospective customer, he tries "to make it clear that we're not associated with [opposer] so we don't have that confusion in the very beginning of sales." The Board discounted the significance of these encounters because "Mr. Kohler's last name is the same as opposer's mark" and therefore the testimony is not conclusive as to whether anyone was actually confused. Query: does the Board's explanation make sense?

Text Copyright John L. Welch 2008.

TTAB Says "INTERNET AUTO RENT & SALES" Not Generic, But Merely Descriptive and Lacks Acquired Distinctiveness

In this TTAB triple header, the Board considered the issues of genericness, mere descriptiveness, and acquired distinctiveness in connection with the term INTERNET AUTO RENT & SALES for "retail store services featuring new and used vehicles" and "leasing and rental of new and used vehicles" [AUTO RENT & SALES disclaimed]. It answered no, yes, and no. In re Internet Auto Rent & Sales, Serial No. 76516353 (November 7, 2008) [not precedential].


Genericness: Ruling that the CAFC's American Fertility "phrase" test is controlling, the Board found no evidence that the public has used the phrase INTERNET AUTO RENT & SALES, and "almost no evidence that the public has even used the term INTERNET AUTO RENT." Quoting American Fertility:

"The Board cannot simply cite definitions and generic uses of the constituent terms of a mark, or in this case, a phrase within the mark, in lieu of conducting an inquiry into the meaning of the disputed phrase as a whole to hold a mark, or a phrase within ... the mark, generic."

The Board concluded that the PTO had not shown by clear evidence that the term INTERNET AUTO RENT & SALES is a generic term for the identified services.

Descriptiveness: Based on Applicant's own website, the Board found that INTERNET AUTO RENT & SALES is merely descriptive of the services. The website allows a user to request a quote and to fill out a credit application online, displays photos of available autos, and provides a coupon that offers "an additional $100 off your already low Internet price" if the customer asks for the "Internet department."

"Applicant is providing quotes, locating vehicles, and beginning the financing process on the Internet. Therefore, the term 'Internet' is at least merely descriptive of applicant's services that utilize the Internet."

Various Internet websites evidenced the use of the term "Internet Auto Sales," and other websites demonstrated that vehicles are rented and sold on the Internet by the same establishments.

Applicant feebly argued that "Internet" has multiple meanings and is a "completely random term" for its business. The Board, to the contrary, concluded that "Internet" has a "well-recognized meaning," one that consumers will understand as describing a key feature of Applicant's services. It was "convinced" that Applicant's mark merely describes Applicant's services "inasmuch as applicant's services include renting or selling automobiles and other vehicles through the use of the Internet."

Acquired Distinctiveness: Applicant claimed use of its mark since 1996, with more that $1 million in advertising expenditures and tens of millions of dollars in annual sales.

The Board noted that, for a "highly descriptive" term, five years of use is not, by itself, sufficient to show acquired distinctiveness. As to the advertising and sales figures, the Board was unable to determine "whether these activities have had any impact on purchasers." Increased sales may reflect the popularity of the product rather than recognition of the mark. In short, the evidence did not provide "any details about the success of its advertising to show that the purchasing public has come to recognize applicant's term as a trademark/service mark for its services."

Conclusion: The Board affirmed the refusal to register under Section 2(e)(1), affirmed the rejection of Applicant's 2(f) evidence as insufficient, and reversed the genericness refusal. It then granted Applicant's conditional amendment to the Supplemental Register.

Text Copyright John L. Welch 2008.

Precedential No. 47: "BOBBLE POPS" Merely Descriptive of Candy, Says TTAB, Colorfully

In a colorfully illustrated opinion crafted by Judge Bucher (whose "trademark" is the deft use of Photoshop), the Board affirmed a Section 2(e)(1) refusal to register the mark BOBBLE POPS [BOBBLE disclaimed], finding the mark merely descriptive of candy. In re Leonhardt, 109 USPQ2d 2091 (TTAB 2008) [precedential].


Applicant's counsel lamely argued that the mark is merely suggestive, but Examining Attorney Yat-sye I. Lee provided a substantial wad of evidence that, she maintained, "clearly demonstrates that the commercial impression of applicant's alleged mark, examined in its entirety in relation to applicant's identified goods, immediately conveys information about the bobble head feature and lollipop genus of applicant's candy."

The record showed that Applicant Leonhardt sells a "lollipop candy featuring a bobble head device." [See, e.g., the specimen of use pictured above.] "[A]pplicant's lollipop stick consists of the character's feet and legs, the hard candy is the torso, and the bobble head portion is a reusable cover."

The Examining Attorney relied on a dictionary definition of lollipop ["a piece of hard candy on a stick"], on various Internet screenshots showing use of the terms "pop" or "pops" interchangeably with "lollipop" or "lollipops," and on webpages showing use of "pops" generically to refer to "an array of various types of candy on a stick."

Applicant's counsel contended that the word "pop" is a shortened form of "popular," as in "pop culture" or "pop art." But the Board would not be taken for a sucker: it pointed out that the mark is not to be considered in the abstract, but rather in the context in which it is used. Here, "the purchaser of lollipops would immediately understand that this term describes lollipops." [Emphasis in original].

Applicant stuck into the record a dozen third-party registrations for candy, wherein the marks included the word "pop" or "pops" without disclaimer or 2(f) evidence, but the Board was unshaken, noting that the Board must assess the case before it on the facts at hand. Moreover, "[a] cursory review suggests that the marks in at least some of the registrations are not analogous to the instant case, either because the marks may have been considered unitary and therefore not in need of a disclaimer, or because the goods may not be lollipops at all." The Examining Attorney countered with a dozen registrations in which "pop" or "pops" is disclaimed.

Noting that the word "bobble" is disclaimed in the subject mark, the Board had no doubt that both terms in the mark are descriptive of the identified candy. It rejected Applicant's assertion that the mark "would be perceived as suggestive, at worst, given the alternative connotation of 'popular' sports stars, actors and characters featured on the bobble heads."


Nor did the Board see the mark as a "double entendre," since there was no evidence that the word "pops" is used to refer to popular sports stars, actors, or the like. "Recognizing that the trade dress on the goods refers to the instant goods as a 'collectible bobble and lollipop,' consumers would not perceive any novel or incongruous meaning for the combination of the words 'Bobble" and 'Pops.'"

And so the Board gave the nod to the PTO and affirmed the refusal.

TTABlog comment: This is definitely another one for our WYHA collection. Seldom do we see a WYHA that is deemed precedential, and I do wonder why the Board granted this decision that elevated status. Was it the Photoshopping?

Out of curiosity, I conducted a GOOGLE brand search on Mr. Leonhardt, and found that he is the named inventor in two published utility patent applications, one entitled "Bobble Head Candy" (pdf here) and the other "Novelty Candy Device" (pdf here).

In the former application, Leonhardt states that his invention relates to "candy pop devices," refers to a prior art device as including "a candy stick on which a pop is secured," and begins claim 1 with the following preamble: "1. An improved novelty candy lollipop ('pop') device comprising a body and a head portion ..."

In the latter application, he again states that a particular prior art device includes a "candy stick on which a pop is secured," and further notes that this "pop can be formed directly on one or more appendages of the body instead of using the stick." [TTABlog query: on the arms, perhaps?]

If the Examining Attorney had proffered these two patent applications, would the PTO and the Board have needed to spend so much time in establishing that "pops" means "lollipops?"

Text Copyright John L. Welch 2008.

Announcing the TTABlog Trademark Jobs Blog

The TTABlog Trademark Jobs blog (admittedly modeled after the Patent Jobs by Patently-O website) will provide free listings of trademark-related job opportunities. I was spurred into launching this blog, which I have been contemplating for many months, by a message I received today from a very capable attorney, a friend of mine, who asked if I were aware of any available positions. Since many trademark practitioners read this blog, perhaps the affiliated jobs blog will be of assistance to potential employers and employees.
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TTAB Delivers Split Decision in "IRONMAN" v. "IRON WOMAN" 2(d) Opposition

It took a mere 10 years from the filing of the opposition to the Board's decision in World Triathlon Corp. v. Traditional Medicinals, Inc., Opposition No. 91110391 (November 3, 2008) [not precedential]. The Board sustained World Triathlon's challenge to registration of the mark IRON WOMAN for "dietary and nutritional supplements" [IRON disclaimed], finding it likely to cause confusion with Opposer's registered mark IRONMAN TRIATHLON NUTRITION for "food and vitamin supplements" [NUTRITION disclaimed]. However, the Board dismissed the opposition as to Applicant Traditional Medicinal's "herb teas," finding confusion unlikely with respect to Opposer's mark IRONMAN TRIATHLON for bottled water.


Opposer started out on the wrong feet, first failing to establish its claim of fame for its IRONMAN and IRONMAN TRIATHLON marks. It proved use of the marks since 1979, annual broadcasting of its triathlon event by ABC since 1980, and publicity in various media. But it offered "little, if any, evidence to show the level of brand awareness" of the marks. "Indeed, it is unclear to what extent, if any, opposer's goods and services are recognized among the general public." The Board concluded, however, that the marks have "achieved at least some recognition and strength in the sports market."

Next, Opposer failed to establish a family of marks. It claimed to own a family of "IRON-gender/age formative marks" for a variety of goods and services, but it did not demonstrate that the marks in the family have been used and advertised in a way to create "common exposure and therefore recognition of common ownership based upon a feature common to each mark." Consequently, the Board considered Opposer's mark individually, concentrating on the registrations that "recite goods most similar to applicant's": IRONMAN TRIATHLON NUTRITION & Design for food and vitamin supplements, and IRONMAN TRIATHLON for bottled water.


As to the marks, the Board found IRON WOMAN to be "highly similar in appearance and sound to the dominant IRONMAN portion" of Opposer's marks.

"Both applicant's mark and those of opposer convey the sense of persons possessed of strong body, will, and resolve, i.e., men and women of iron. The mere difference in gender between the parties' marks is insufficient to create significantly different commercial impressions given the overall similarities in the marks. The marks respectively suggest men and women with wills and bodies of iron, and thus are similar in connotation and convey highly similar overall commercial impressions."

The Board concluded that the similarities between the marks outweigh their differences.

As to the goods, the parties' supplements are "closely related, if not virtually identical," and thus the channels of trade would overlap. Although Applicant argued that its customers are sophisticated, the Board observed that the goods are "not so highly specialized as to exclude casual purchase." In any case, even sophisticated purchasers are not immune to source confusion.

However, Opposer's bottled water is "not so closely related to" herb teas. Opposer provided no evidence to support its contention that the goods are related or typically emanate from a common source.

Finally, Applicant pointed to various third-party registrations for IRON-formative marks, but most were for goods and services "far removed" from the goods at issue here, and so the Board deemed Opposer's marks to be "entitled to more than a narrow scope of protection that would be afforded a weaker or less distinctive mark."

The Board concluded that confusion is likely as to the class 5 supplement marks, but not likely as to the bottle water/herb teas marks.

Text Copyright John L. Welch 2008.

TTAB Reverses 2(d) Refusal, Finds "PORTIA SUMMA" and "SUMMA VINEYARDS" Not Confusingly Similar for Wine

The Board reversed a Section 2(d) refusal to register the mark PORTIA SUMMA & Design (shown below) for "alcoholic beverages, namely, wines," finding it not likely to cause confusion with the registered mark SUMMA VINEYARD for wine [VINEYARD disclaimed]. In re Bodegas Portia, S.L., Serial No. 79032493 (November 7, 2008) [not precedential].


Not surprisingly, the Board found the goods to be "virtually identical." [TTABlog comment: I would be so bold as to say that they are identical!] Applicant lamely argued that its wine originates in Spain while Registrant's comes from California, and that consumers would distinguish between the wines based on labeling, etc. The Board pointed out, however, that there are no restrictions in Applicant's or Registrant's identification of goods, and so it must be presumed that the goods travel in the same, normal channels of trade, to the same classes of customers.

Surprisingly, the Board did not drag out the black letter rule that, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Perhaps that's because the Board was heading in the other direction.

It found the word PORTIA to be the dominant portion of Applicant's mark and, coupled with the distinctive design element, this "renders applicant's mark notably dissimilar from that of registrant in appearance." Obviously the marks differ in sound. As to overall impression, the Board noted that Applicant's mark suggests "the notion that Portia is the highest, whereas registrant mark connotes the highest vineyard." [TTABlog suggestion: Or maybe that Portia is the highest she's every been?]

Applicant supplied website evidence showing a few uses of the term SUMMA in the context of wine: e.g., Summa Quies Vineyard, Summa Cum Laude Old Vine Zinfandel. Although noting that the probative value of this evidence is limited since there is no proof of the extent of use of these terms, the Board nonetheless found that the evidence suggests that "SUMMA is not unique to registrant in the field of wine, and is used by others to identify their wineries, wines, and wine tasting events." [TTABlog complaint: I think this evidence should have no probative value, given the lack of proof regarding use of these third-party marks].

Based in part on the "relative weakness" of SUMMA, and on various differences between the marks, the Board found them sufficiently dissimilar that confusion is not likely.


TTABlog observation: An argument could be made that consumers might think that "Portia" is a sub-brand from the Summa Vineyard. That's why the word "Summa" is in a subordinate position. In short, I think this case was a bit closer than the Board made it out to be. But I'm not going to wine about it.

Text Copyright John L. Welch 2008.

"CHÊNE DES DOMAINES DE FRANCE" Geographically Descriptive of Wood from France, Knot Registrable, Says TTAB

In another WYHA (Would you have appealed?) decision, the Board affirmed a Section 2(e)(2) refusal to register the mark CHÊNE DES DOMAINES DE FRANCE for wood and forestry products, finding the mark to be primarily geographically descriptive. In re Office National des Forets, Serial No. 79015738 (October 31, 2008) [not precedential].


Applicant provided an English translation of the mark as "Oak of the National Forests in France." The Board swiftly found the primary significance of the mark to be a place generally known to the public: i.e., France, or even the National Forests of France. The addition of the word "oak" did nothing to avoid the refusal.

The Board next found that the public would make a goods/place association because consumers "would naturally assume that wood and wood products identified by the mark at issue originate in France, in general, and in the National Forests of France, specifically."

Applicant admitted that its good do indeed come from the place named in the mark. It feebly argued that the geographical term in the mark merely suggests "a quality or style of product," but the Board found that the mark immediately conveys to consumers "both the goods and the geographical location from which they derive."

The Board therefore affirmed the refusal.

French translation of above synopsis, via Babelfish:

Dans un autre WYHA (vous auriez en appelé ?) la décision, le conseil a affirmé une section 2 (e) (2) refus pour enregistrer le DES DOMAINES De FRANCE de marque CHÊNE pour des produits en bois et de sylviculture, trouvant la marque pour être principalement géographiquement descriptif. Dans DES national Forets de bureau re, numéro périodique 79015738 (le 31 octobre 2008) [non précédentiel].

Le demandeur a fourni une traduction en anglais de la marque en tant que « chêne des forêts nationales en France. » Le conseil a vite trouvé la signification primaire de la marque pour être un endroit généralement connu du public : c.-à-d., la France, ou même les forêts nationales de la France. L'addition du mot « chêne » n'a fait rien à éviter le refus.

Le conseil après a constaté que le public ferait des marchandises/association d'endroit parce que les consommateurs « supposeraient naturellement que les produits en bois et en bois identifiés par la marque à l'issue proviennent de la France, généralement et dans les forêts nationales de la France, spécifiquement. »

Le demandeur a admis que ses bons viennent en effet de l'endroit appelé dans la marque. Elle a faiblement argué du fait que le toponyme dans la marque suggère simplement « une qualité ou un modèle de produit, » mais le conseil ait constaté que la marque donne immédiatement aux consommateurs « les marchandises et l'endroit géographique dont ils dérivent. »

Le conseil a donc affirmé le refus.

Text Copyright John L. Welch 2008.

TTAB Sustains 2(a) Refusal of "P. MAURIAT" for Musical Instruments

The Board affirmed a Section 2(a) refusal to register the mark P. MAURIAT in the design form shown below, for "musical instruments," finding that the mark falsely suggests a connection with the late musician, Paul Mauriat. In re Hsieh, Serial No. 78367205 (October 29, 2008) [not precedential].


Examining Attorney Anthony M. Rinker relied on Internet websites identifying Paul Mauriat as "the last big star of the space age pop era," on evidence that Paul Mauriat recordings are still available, and on Applicant's own website, which displayed photographs of Paul Mauriat, and outlined Applicant's plan to sell musical instruments based on Paul Mauriat's lifestyle.


Applicant Ming-Shan Shieh contended that a Section 2(a) refusal applies to a deceased individual only if "there is no longer anyone entitled to assert a proprietary right." However, in a motion for an extension of time to file his reply brief, Applicant had explained that he was in negotiations with Mauriat's widow and heir for her consent to use and register the subject mark. "Suffice it to say, there is no basis for applicant to contend that a Section 2(a) false suggestion of a connection refusal does not apply because Paul Mauriat has no heirs."

Applicant further argued that the treble clef design is the dominant portion of his mark and did not point to a specific individual. The Board, nonetheless, found the mark to be a close approximation of the name Paul Mauriat.

Applicant next contended that consumers familiar with Paul Mauriat "would know that Paul Mauriat does not sell musical instruments." However, the Board found Applicant's website to be "strong evidence that his mark points uniquely and unmistakably to Paul Mauriat. Indeed, it is hard to imagine any evidence more persuasive of that fact."

The Board found the PTO's Internet and Wikipedia evidence sufficient to establish the fame or renown of Paul Mauriat for Section 2(a) purposes. Moreover, based on Applicant's website, the Board "may draw an inference that applicant intends to create a connection with Paul Mauriat."

The Board therefore concluded that the subject mark falsely suggests a connection with Paul Mauriat, and it affirmed the refusal to register.

TTABlog comment: Suppose Applicant Hsieh had not revealed his contacts with the widow Mauriat? How would the PTO be able to prove that Mauriat left an heir or successor? Compare the MARIA CALLAS case (here), where a Section 2(a) refusal was reversed because the PTO was unable to meet its burden to show that there were heirs or other successors entitled to assert rights in the MARIA CALLAS mark.

Text Copyright John L. Welch 2008.

TTABlog Paper: "TTAB Year in Review" (California Edition)

Greetings from the Left Coast. Actually, after the election, one might say that there are two Left Coasts. I'm in California to give a talk on the "TTAB Year in Review" before the California Bar's IP Law Section (Paper here). Principal topics: fraud, bona fide intent to use, Section 2(e)(4) surname refusals, and the doctrine of foreign equivalents.


I still hold a bit of a grudge against California. My family moved from the South Side of Chicago in 1959, the year the Dodgers beat the White Sox in the World Series. Here we are nearly 50 years later, and in the past three years, the White Sox won the World Series, and the Governor of Massachusetts and the President-Elect are both White Sox fans from the South Side of Chicago. Now that's change I can believe in!
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TTABlog Celebrates Fourth Anniversary!

The TTABlog is four-years old today. Thank you for reading.

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TTAB Cancels "THE COLD WAR MUSEUM" Registration, Respondents Fail to Prove Acquired Distinctiveness

The Board granted a petition to cancel a registration for the mark THE COLD WAR MUSEUM for "museum services," finding the mark merely descriptive and lacking in acquired distinctiveness. Respondents, whose registration issued under Section 2(f), failed to submit evidence of acquired distinctiveness in this proceeding, and consequently the Board ruled in Petitioner's favor. Cold War Air Museum, Inc. v. The Cold War Museum, Inc. and Francis Gary Powers, Jr., Cancellation No. 92047391 (October 20, 2008) [not precedential].


Petitioner, operator of the Cold War Air Museum, was accused of infringing the subject mark, and therefore it had standing to bring this petition for cancellation.


Genericness: Petitioner first alleged, unsuccessfully, that THE COLD WAR MUSEUM is generic for Respondents' services. The Board applied the CAFC's American Fertility test, which requires that, in evaluating a phrase for genericness, the Board "must determine whether there is sufficient evidence of genericness of 'the meaning of the disputed phrase as a whole.'"

"While the evidence shows that 'cold war' would be understood as meaning the struggle between the United States and the Soviet Union in the period 1945-1991, there is insufficient evidence that the relevant public understands 'THE COLD WAR MUSEUM' as a whole to refer to the museum services offered by respondent." [I.e., to the genus of services - ed.].

Mere Descriptiveness: Because the subject registration was obtained under Section 2(f), it is a given that the mark is merely descriptive. Moreover, the record established that "cold war" is a recognized term, and that "COLD WAR MUSEUM" would be immediately understood by consumers to mean that Applicant's museum "contains artifacts and information relating to the cold war." Accordingly, Petitioner met its burden to make a prima facie case that the mark THE COLD WAR MUSEUM "is highly descriptive, and that it has not acquired distinctiveness." The burden then shifted to Respondents to establish acquired distinctiveness.

Acquired Distinctiveness: Because Respondents' mark is highly descriptive, "respondents must present a heightened showing of acquired distinctiveness to meet their burden." Although Respondents submitted evidence during prosecution to support their 2(f) claim, they did not submit any evidence in this proceeding. That was a major misstep: although the application file is considered part of the record, "the allegations made, and documents and other things filed in connection with the application, are not evidence in [an] inter partes proceeding ...."

Petitioner submitted some of Respondents' interrogatory answers, but the statements therein were insufficient to establish acquired distinctiveness. The Board therefore granted the petition and cancelled the subject registration.

TTABlog postscript: Reconsideration denied here.

Text Copyright John L. Welch 2008.

TTAB Judge G. Douglas Hohein Passes Away

Judge G. Douglas Hohein died this past weekend at his home in Alexandria, Virginia. Judge Hohein was appointed a TTAB Judge in 1990. He spent his entire professional career with the USPTO, twenty-seven of those years with the TTAB.

Funeral arrangements for have been made with the Everly-Wheatley Funeral Home, 1500 W. Braddock Rd., Alexandria Virginia. Visitation for family and friends is scheduled for 6 - 8 pm., next Wednesday, November 12, at the funeral home. A funeral service will be held the following morning, Thursday, November 13. Burial will follow at Columbia Gardens Cemetery, Arlington, Virginia.
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Webpage Specimen for "ONE NATION UNDER GOD" Charity Bracelets Fails to Pass TTAB Muster

Finding the requirements of Lands' End and Dell unfulfilled, the Board affirmed a refusal to register the mark ONE NATION UNDER GOD for "charity bracelets," rejecting Applicant's specimen of use (an electronic catalog webpage) as unacceptable. In re Sones, Serial No. 78717427 (September 30, 2008) [not precedential].


Examining Attorney Michael G. Lewis maintained that, under Lands' End Inc. v. Manbeck 24 USPQ2d 1314 (E.D. Va. 1992) and In re Dell, Inc., 71 USPQ2d 1725 (TTAB 2004), a webpage may be an acceptable specimen for a product if it (1) includes a picture of the relevant goods; (2) shows the mark associated with the goods; and (3) contains the necessary ordering information. Applicant's website, however, failed to include a picture of the goods (see below).

click on picture for larger image
Applicant Sones argued that the PTO was misapplying the two precedents because they do not require a picture. In Lands' End, he asserted, the court "focused on the fact that the catalog page contained a description of the goods," and similarly in Dell, the TTAB focused at least as much on the written description as on the picture.

Finally, Sones contended that the specimen's description of the goods as "CHARITY BRACELET CHOICE OF BLUE OR RED" renders a picture unnecessary because charity bracelets are ubiquitous and purchasers would clearly understand what the goods are.

The Board was not persuaded. "[C]ontrary to applicant's arguments, the picture of the goods in the catalog in Lands' End and the display of the product at the website in Dell were important factors in the holdings in those cases."

Here, there is no picture of the goods on Applicant's webpage. "In the absence of a picture of the goods, the mark does not appear on the webpage in a manner in which the mark is associated with the goods. * * * [T]he purported ubiquitousness of charity bracelets does not obviate the requirement for a picture of applicant's particular charity bracelets."

The Board therefore affirmed the refusal to register.

Text Copyright John L. Welch 2008.

TTAB Finds "BOMBJAMMER" Generic for ... Guess What?

The Board affirmed a refusal to register the term BOMBJAMMER, on the Supplemental Register, for "instruments comprised of transmitters and other electronic devices for use as countermeasures against radio-linked explosives," finding the term to be generic and thus incapable of functioning as a trademark. In re Homeland Security Strategies, Inc., Serial No. 78590586 (October 21, 2008) [not precedential].


Examining Attorney William H. Dawe, III, submitted "clear and convincing evidence" of genericness in the form of dictionary definitions of "bomb" and "jammer," NEXIS articles showing use of the phrase "bomb jammer" in connection with the involved genus of goods, and third-party websites showing use of "bomb jammer" vis-a-vis jamming devices.

Applicant Homeland Security Strategies argued mainly that there are other terms that may be used for this genus of products: e.g., jammers, ref jammers, and IED jammers. The Board pointed out, however, that the existence of other generic terms is immaterial: a product may have more than one generic name, and all generic names for a product belong in the public domain.


The Board ruled that the PTO had established a prima facie of genericness, which Applicant failed to rebut.

Text Copyright John L. Welch 2008.

"IS YOUR MORTGAGE CONTRIBUTING TO YOUR WEALTH?" Fails to Function as a Service Mark, Says TTAB

The Board wasted little time in affirming a refusal to register the phrase IS YOUR MORTGAGE CONTRIBUTING TO YOUR WEALTH? for "mortgage brokerage services," finding that the phrase as used by Applicant Capital Financial Advisors, Inc. fails to function as a service mark. In re Capital Financial Advisors, Inc., Serial No. 76661472 (October 24, 2008) [not precedential].

click on picture for larger image
Applicant feebly argued that the phrase does indeed serve as a mark "because it was separately displayed and used in conjunction with" its services. The Board was unimpressed:

"... the mere fact that the subject matter sought to be registered appears as a distinct phrase or slogan, separate and apart from other matter, does not make it a service mark. [It] must be used in a manner calculated to project to purchasers or potential purchasers a single source or origin of the services."

The "critical" determination is whether the phrase would be perceived as a mark or merely as an informational phrase. That required a look at the specimens of use.

The Board found that the "primary significance" of the phrase "is likely to be perceived as advertising copy or a promotional tool to grab the consumer's attention, but it would not be perceived as indicating the source of any services. It "would not be perceived by persons reading the advertisement any differently from the way they would perceive any other information or advertising" about the services.

In short, consumers "would not attribute any service mark significance" to the phrase, and so the Board affirmed the refusal to register.

Text Copyright John L. Welch 2008.

TTAB Posts November 2008 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled eight (8) hearings for the month of November, 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.


November 6, 2008 - 10 AM: Stuart Spector Designs, Ltd., et al. v. Fender Musical Instruments Corp., Consolidated Oppositions Nos. 91161403, etc. [Sixteen consolidated oppositions to registration of the three product configuration marks shown below, for guitars, on the grounds of mere descriptiveness and genericness.]


November 18, 2008 - 11 AM: In re Erbel AG, Serial No. 76589789 [Section 2(d) refusal to register the mark K10 for detergents and cleaning agents not for use in commercial and industrial kitchens, in view of the registered mark KAY-10 for "concentrated sanitizer for commercial and industrial use on kitchen utensils and other food contact surfaces."]

November 19, 2008 - 10 AM: In re D.L. Ryan Companies, Ltd., Serial No. 78690250 [Section 2(d) refusal of RYAN iDIRECT for "promoting goods and services of others by direct marketing techniques and use of computer database information," in view of the registered mark IDIRECT for "marketing and advertising services, namely, promoting the goods and services of others by direct mail campaigns."]

November 19, 2008 - 11 AM: In re The New Zealand King Salmon Co. Ltd., Serial No. 76664911 [Section 2(d) refusal of the mark REGAL & Design [below left] for salmon, on the ground of likelihood of confusion with the registered mark REGAL & Design [below right] for crab meat.]


November 20, 2008 - 10 AM: In re United Steel, Paper and Forestry, Rubber, Manufacturing, Energy, Allied Industrial and Service Workers International Union AFL-CIO.CLC, Serial No. 78815310 [Section 2(e)(1) mere descriptiveness refusal of the mark STEELWORKERS for indicating membership in a labor organization.]

November 20, 2008 - 2 PM: In re The Boler Company, Serial No. 77059048 [Section 2(d) refusal of QUAANTUM for "trailer suspension systems, incorporating wheel end systems," in view of the registered mark QUANTUM for tires.]


November 25, 2008 - 10 AM: In re Midwestern Pet Foods, Inc., Serial No. 78876346 [Section 2(e)(1) mere descriptiveness refusal of CHED'R'WEDGES for "pet food; pet treats."]

November 25, 2008 - 10:30 AM: In re Midwestern Pet Foods, Inc., Serial No. 76554967 [Section 2(e)(1) refusal of PORTERHOUSE STEAK TREATS for "pet food; pet treats" on the ground of mere descriptiveness or, alternatively, deceptive misdescriptiveness; Section 2(d) refusal on the ground of likelihood of confusion with the registered mark STEAK TREATS for "pet food."]


Text Copyright John L. Welch 2008.