TTAB Dimisses 2(d) Opposition for Lack of Evidence: Opposer's Notice of Reliance Mailed to Wrong PTO Address

Another Section 2(d) opposition went off the track when an opposer failed to submit evidence properly into the record. Here, Opposer El Dorado Park Self Service attempted to file a Notice of Reliance, but mailed it to the old PTO address in Arlington, Virginia, rather than the new address in Alexandria. It arrived at the PTO after El Dorado's testimony period had closed and therefore was untimely. And in any case, the evidence that Opposer tried to submit, a telephone directory advertisement, did not show its supposed mark "TOO MUCH STUFF?" used as a source indicator. The Board therefore dismissed the opposition. El Dorado Park Self Storage v. Yelenich, Opposition No. 91159837 (January 18, 2008 [not precedential].


El Dorado did not take testimony but did submit by mail its Notice of Reliance on the last day of its testimony period. However, in addition to improperly including many documents that were not the proper subject matter for a Notice of Reliance, El Dorado addressed the Notice to the PTO's old Arlington, Virginia address. The PTO did not actually receive the notice until three days later. Applicant Yelenich moved for an order striking the Notice as untimely, and for judgment based upon Opposer's failure to submit evidence. Opposer did not contest the motion.

The Board agreed with Applicant Yelenich that the Notice of Reliance was untimely, noting the statement in the TMEP that the certificate of mailing requirements are strictly enforced. It dismissed the opposition under Rule 2.132(a) because El Dorado had not offered any evidence.

Moreover, the Board observed that, even if El Dorado could be permitted to amend the mailing certificate to state the correct mailing address, or even if its testimony period could be reopened to make its Notice of Reliance timely, El Dorado would still fail to meet its burden of proof. The only proper evidence included in its Notice of Reliance was a telephone directory listing (shown above) displaying the phrase "Too Much Stuff?" On its face, however, the directory listing "fails to show ... that as displayed the term 'Too Much Stuff?' functions as a service mark which would be perceived by purchasers and prospective customers of opposer's services as identifying and distinguishing its alleged self-storage services."

"Instead, as used therein, such term appears simply to ask consumers the rhetorical question of whether they have accumulated 'too much stuff' and hence would need to rent space for their 'stuff' in self-storage facilities of the kind offered under the mark and the associated logo 'EL DORADO PARK SELF STORAGE.'"

The Board thus delivered an alternative knockout punch to the already defeated Opposer.

Text Copyright John L. Welch 2008.

Mesmerized by Fame of "VANITY FAIR" Mark, TTAB Sustains 2(d) Opposition to "VANITY INSANITY" for Clothing

Here's the scenario: famous mark holder versus pro se applicant in a TTAB 2(d) opposition. Take a guess as to who wins? Not Applicant Kelly C. Hainline. Like the lady who backed into the airplane propeller, it was "dis-as-ter" when she tried to register the marks VANITY INSANITY, VANITY & SANITY, and VANITY N SANITY for clothing and athletic apparel. The Board found the marks likely to cause confusion with the famous mark VANITY FAIR, registered for underwear, pajamas, and like clothing items. Vanity Fair, Inc. v. Hainline, Oppositions Nos. 91163354, 91166973, and 91166975 (January 15, 2008) [not precedential].

Vanity Fair argument?
The Board began its analysis with the fifth du Pont factor, the fame of the mark. The record evidence showed that the VANITY FAIR mark has been used for 90 years, and that Opposer's sales and advertising figures [filed under seal] are "very substantial and certainly large enough to support a finding of fame." Indeed, the Board found that the VANITY FAIR mark has achieved a "significant degree of fame." And of course, fame "weighs heavily in favor of a finding of likelihood of confusion."

Turning to the goods, the Board observed that the applications and Opposer's registrations, respectively, include lingerie, loungewear, sleepwear, and underwear. Therefore, the second du Pont factor weighs in Opposer's favor. As to the third factor, the Board must presume that the goods travel in all normal trade channels to all normal classes of consumers. Thus this factor, too, favored Opposer. Likewise, the fourth factor, the conditions under which the goods are purchased, favored Opposer, since the goods are ordinary consumer items purchased with only ordinary care.

Finally, the Board turned to the first du Pont factor, the similarity of the marks. The Board deemed the word VANITY to be the dominant feature of all the marks: "The other words in the respective marks also contribute to the marks' commercial impression and we have given them due consideration, but we deem VANITY to be the most prominent feature of the marks and we therefore accord it the most significant weight in our comparison of the marks." [Game, set, and match - ed.]

Moreover, "the similarity in appearance and sound which results from the presence of VANITY in both marks outweighs the difference between the marks which result from the presence of the different additional wording." And although the marks are "somewhat dissimilar in connotation," the presence of the word VANITY gives them similar commercial impressions.

In sum, because Opposer's VANITY FAIR mark is famous, it is entitled to a "very broad scope of protection." "Given the long use and fame of opposer's VANITY FAIR mark, potential purchasers are likely to view applicant's mark beginning with the word VANITY as whimsical, contemporary variations on opposer's mark," and so confusion is likely.

The Board therefore sustained the three oppositions.

TTABlog comment: Does anyone believe that, in the real world, a half-way intelligent person would find these marks confusingly similar? Oops, I forgot. We're not dealing with the real world here. My bad.

Why is VANITY the dominant portion of all the marks? What about the alliteration of VANITY SANITY? What about the recognized meaning of the two-word phrase VANITY FAIR?

The lesson for Opposers, once again, is this: take the time and make the effort to prove that your mark is as strong as possible. The likelihood of your success in a 2(d) opposition will increase exponentially.

TTABlog postscript: The CAFC affirmed this decision in a nonprecedential dated December 5, 2008.

Text Copyright John L. Welch 2008.

Precedential No. 1: TTAB Reverses Mere Descriptiveness Refusal of "SUGAR No. 11" For Futures Exchange Services and Finds Specimen of Use Acceptable

In its first precedential decision of 2008, and an unusually dull ruling at that, the Board reversed the PTO's Section 2(e)(1) refusals to register the marks SUGAR NO. 1 1 , SUGAR NO. 14, and COTTON NO. 2 [SUGAR and COTTON disclaimed], finding the marks not merely descriptive of "financial services, namely, futures exchange and related commodity trading services." In addition, the Board reversed the PTO's refusal of registration based on the ground that Applicant's specimens fail to show use of each mark in connection with the identified services. In re ICE Futures U.S., Inc., 85 USPQ2d 1664 (TTAB 2008) [precedential].


Mere Descriptiveness: The PTO argued that the words SUGAR and COTTON identify the type of commodity being traded, and the wording NO. 2, NO. 11, and NO. 14 identify the contract numbers that the applicant provides for its future exchanges. Applicant pointed out that investors trade, buy, or sell contracts from each other, according to the established rules set forth by the SUGAR NO. 11, SUGAR NO. 14, and COTTON NO. 2 contract terms.

Applicant ICE asserted that none of the more than 100 commodity exchanges worldwide offer services concerning the SUGAR NO. 11, SUGAR NO. 14, or COTTON NO. 2 contracts. Those services are exclusively associated with Applicant. And the numbers 2, 11, and 14 are arbitrary.

The Board noted that "While the full marks identify contracts with detailed, uniform terms, the record established that applicant created those terms for its exclusive use in the rendering of its services." Third-party references to those terms "shows a consistent, explicit association with applicant."

The Board found that the marks "do not identify a commodity applicant sells, as the Examining Attorney argues." Furthermore, there is no evidence that others need to use these terms to compete. Accordingly, the marks are not merely descriptive of the services.

Specimens of Use: Applicant's specimens of use comprised printouts from its website discussing the trading specifics (hours, ticket symbol, etc.). "At the top of the page appears a link to the contract specifications for futures trading associated with the Subject Marks." Below the link is a header that states, e.g., FUTURES CONTRACT ON SUGAR NO. 14 (DOMESTIC)." [See below].

Click on photo for larger picture
The Examining Attorney argued that the term SUGAR NO. 14, for example, appearing on the specimen merely identified the name of the contract and did not function as a source indicator for the services.

The Board ruled that these specimens were sufficient, "based on the context of use and the history of applicant's exclusive use in the industry."

"In the cases we consider here, when we view the full context of the use of the marks, including the "futures contract" wording, we conclude that the inclusion of this wording would not interfere with the perception of the marks as service marks for futures exchange services by relevant consumers. While the marks may also identify the futures contracts, again contracts which, on this record, are unique to applicant, the contracts are an integral and essential component of the identified services, that is, the operation of a futures exchange."

According to the Board, "the connection between the marks and services is evident and need not be stated explicitly as the Examining Attorney implies." The prominent use of the marks in the corresponding regulations further confirms their service mark status. [Huh? - ed.] Again acknowledging long and exclusive use of the marks, the Board concluded that the specimens show use of the marks as source indicators.

TTABlog comment: Wow, was the Board determined to rule in favor of Applicant, or what? Apparently if one uses a term long enough, and exclusively, the requirements for proper specimens of use go out the window. How in the heck are Applicant's specimens of use proper for its services? The specimens refer to the contracts and the terms. Is a contract a service? I just don't see it.

Text Copyright John L. Welch 2008.

PTO Letters of Protest: Is "CYBERLAW" Registrable?

In Blawg Review #144, Kevin A. Thompson reports that a Washington, D.C. lawyer named Eric Menhart has filed an application to register the term CYBERLAW as a service mark for various legal services (Serial No. 77341910). Mr. Menhart has been so bold as to send a cease-and-desist letter to another blogger. Many have protested, including Mr. Thompson, whose own blog is called Cyberlaw Central. They believe the term "Cyberlaw" is generic, or at least descriptive, of legal services involving Internet issues.

Kevin A. Thompson
Just to throw in my own two cents, I agree with the protesters, and I recommend that each one file a Letter of Protest with the PTO. Several years ago (here), I wrote a posting about Letters of Protest, the supposed "mark" then in question being PODCAST (Serial No. 78564869).]

Letters of protest are discussed at Section 1715 of the Trademark Manual of Examining Procedure. A Letter of Protest may be sent to: Letters of Protest, ATTN Trademark Administrator, 600 Dulany Street, MDE-4B89, Alexandria, Virginia 22314-5793. The letter should not be send directly to the Examining Attorney.

As to the contents of the letter, Section 1715.01 (a)(1) sets forth several "Issues Appropriate As Subject of Letter of Protest." The first of three of the "most common areas of protest" is applicable here:

"(1) A third party files an objection to the registration of a term because it is allegedly generic or descriptive. The objection must be accompanied by evidence of genericness or descriptiveness. The evidence should be objective, independent, factual evidence that the examining attorney can use to support the suggested refusal. Personal opinions are subjective and may be self-serving, and are not forwarded to the examining attorney. If the protest is granted, the examining attorney is informed that an objection to registration has been filed on the ground that the mark is generic or descriptive, and is given a copy of any factual evidence submitted with the letter of protest."

The fee required for filing a letter of protest: nothing. The satisfaction to be gained from voicing your objection: priceless!

Text Copyright John L. Welch 2008.

TTAB Reverses Ornamental Refusal of Embossed Design on Tire; PTO Fails to Make Prima Facie Case

The Board reversed an "ornamental" refusal to register the design mark shown below for vehicle tires, finding that the PTO Examining Attorney had failed to make a prima facie case that the mark is merely ornamental and does not function as a trademark (Sections 1, 2, and 45 of the Trademark Act). In re Tire Mart, Inc., Serial No. 78292388 (January 22, 2008) [not precedential].


Applicant's specimens (see below) show the lightning bolt design molded into the outside shoulder of the tire and extending onto the sidewall. The groups of three lighting bolts is repeated some 15 to 20 times around the tire. The Board pointed out that the issue of functionality (Section 2(e)(5)) was not raised by the PTO.


The fact that a mark may be "visually pleasing" or ornamental odes not mean it cannot be registered. The question for the Board was "whether applicant's mark is inherently distinctive; in other words, whether - as used on the specimens - the mark is an indication of source notwithstanding any aesthetic qualities it may have."

Recognizing that its conclusion is "somewhat subjective," the Board found that the PTO's evidence and argument does not support the refusal.

The Examining Attorney submitted pictures of other tires with various tread designs to demonstrate that "tire tread consists of many designs that resemble recognized objects." The Board, however, could find no "designs resembl[ing] objects" on the PTO's pictures, and it noted Applicant's argument that its embossed mark is not "tread" in the sense of tire lugs. The specimens showed that the molded design has a "considerably lower profile than the adjacent tread." Moreover, the mark does not appear "where the rubber meets the road."

The Board did agree with the PTO that Applicant's evidence of use of the mark on collateral gods was entitled to little weight, since it did not address the issue of whether consumers would view the lightning bolt design as a source indicator for tires.

On the other hand, the PTO did not provide any evidence that Applicant's design or similarly-placed designs "are widely-viewed as mere ornamentation in the tire industry" (unlike, for example, whitewall on tires). In short, there was essentially no evidence one way or the other as to whether Applicant's design would be perceived as a trademark. Because the PTO had the burden of proof to make at least a prima facie case to support its refusal, the Board reversed.

Text Copyright John L. Welch 2008.

Finding Acquired Distinctiveness and Substantial Exclusivity Lacking, TTAB Cancels Registration for the Color Gold for Fluorescent Lamps

In a rare "color" case, the Board granted the consolidated petitions of three companies for cancellation of the registration for a mark comprising the single color gold applied to the end caps of fluorescent lamps. It ruled that the subject mark had not acquired distinctiveness under Section 2(f) and that Respondent's use of the mark had not been substantially exclusive. H & H Indus. Inc. v. LTG, Ltd., Cancellations Nos. 92042050, 92042382, and 92042496 (January 11, 2008) [not precedential].

The Petitioners contended that Respondent "has not enjoyed substantially exclusive use of the color gold due both to petitioners' use of the identical designation on the end caps of various types of fluorescent lamps as well as third-party use of the identical or similar designations therefor." They further contended that Respondent failed to show customer recognition of the color gold as a source identifier for its lamps.

Respondent bore the burden of persuasion on the issue of acquired distinctiveness, a "difficult" burden for a color mark. Evidence developed after registration, as well as pre-registration evidence, must be considered.

Turning first to the sufficiency of Respondent's 2(f) evidence, the Board noted that sales figures indicated a "substantial degree of success," but evidence was lacking as to Respondent's market share or sales ranking. Moreover, sales figures show only the popularity of the product, not that consumers view the gold end caps as a trademark.

Respondent's marketing materials were directed to its sales representatives, not customers, and it was "not clear therefrom that such end caps are displayed as a trademark so much as a feature of respondent's lamps." Furthermore, the materials display numerous products under a variety of marks, and so it is unclear how much of the advertising expenditures relate to the products with gold end caps.

Respondent submitted 28 form affidavits during prosecution, which affidavits the Board found unpersuasive: they were cursory in nature and lacked basic information regarding the bases for the statements made; they were made by "regular customers for various lengths of time," rather than the average purchaser of fluorescent tubes; and the affiants did not state that they recognized the gold end caps as a trademark.

Given the heavy burden to prove acquired distinctiveness for a color mark, Respondent's proofs were insufficient to convince the Board that the public recognizes the color gold as a trademark for Respondent's products.

Turning to the issue of exclusivity of use, the cumulative effect of the use of the color gold by the Petitioner, as well as numerous third-party uses, led the Board to rule that Respondent's use "fails to qualify as 'substantially exclusive' as required under Section 2(f)." The Board rejected the contention that only uses commenced prior to Respondent's adoption of the gold color are probative on this issue. Moreover, even though there was little evidence as to the "precise extent" of the third-party use, "such users are too numerous to ignore."


In sum, the Board concluded that Respondent's use of its alleged color mark "has not been substantially exclusive," and that the evidence of acquired distinctiveness was insufficient to support a registration under Section 2(f).

TTABlog query: When is the last time the Board upheld the validity of a single color registration? I think it may have been in Newborn Bros. v. Dripless, Inc., Opposition No. 91113471 (August 16, 2002) [not precedential], involving the color yellow for a caulking gun. On the 2(f) issue, the Board there found "particularly significant" Applicant’s “extensive ‘image’ advertising and promotion stressing the color 'yellow' in a trademark sense.”

Text Copyright John L. Welch 2008.

TTAB Rule of Thumb: Introduce No Evidence, Lose Your Opposition

One may safely posit the following rule: an Opposer who fails to introduce evidence will lose at the TTAB. Healix Infusion Therapy, Inc. fell victim to that rule in its opposition to registration of the mark HELIX for computer software in the healthcare field. Healix claimed likely confusion with its registered mark HELIX for healthcare-related cost management and record maintenance services. However, it failed to introduce its registrations into the record and offered no evidence whatsoever. Ergo, it lost. Healix Infusion Therapy, Inc. v. Cerner Corp., Opposition No. 91170997 (January 10, 2008) [not precedential].


Opposer Healix pleaded ownership of one registration and three pending applications; by the time of trial, the applications had issued to registration. But none of Opposer's four registrations were offered in evidence.

Healix argued that, even though it did not comply with Rule 2.122(d), the Board should take judicial notice of its registrations. No, said the Board. It does not take judicial notice of registrations. See In re Duofold Inc., 184 USPQ 638 (TTAB 1974).

Healix also urged that Applicant Cerner had admitted Opposer's ownership in its answer to the notice of opposition. Cerner, however, stated that it was "without information sufficient to admit or deny the allegations ..., and therefore denies same." Healix boldly asserted that Applicant "could have quickly verified, through the USPTO's records, the truth of opposer's allegations ... and that by denying such allegations without attempting to verify them, applicant's answer is 'evasive' and therefore constitutes an admission." Again the Board said no way. Applicant's answer followed FRCP Rule 8(b), and was a proper denial. Moreover, it was not Applicant's job to verify Opposer's ownership; it was Opposer's obligation to follow Rule 2.122(d).


Having failed to introduce any evidence as to ownership of its registrations, Healix did not establish its standing to oppose. The Board therefore dismissed the proceeding with prejudice.

TTABlog comment: Here's a question for you: Why shouldn't the Board take judicial notice of the PTO records? Amended Rule 2.122(d) allows a party to submit a pleaded registration by attaching ordinary copies from the PTO database regarding status and title. Why not just take judicial notice of that information? Or at least create a rebuttable presumption that the PTO information is correct?

Text Copyright John L. Welch 2007.

The Ten Worst TTAB Decisions of 2007? [Part 2 of 2]

Here for your reading pleasure is the second batch of the "ten worst" Board decisions of last year. The first five were TTABlogged here yesterday. As you read these postings, please bear in mind that it takes a skilled carpenter to build a barn, but any jackass can knock it down. Or so they say. I've never actually confirmed this.


The Children's Inn at NIH v. Bhandari, Opposition No. 91120549 (December 17, 2007) [not precedential]. Applicant Vinod Bhandari's eight-year quest for registration of the mark KIDS INN for hotel, motel, and restaurant services ended in futility at the TTAB. Although in 1999 the Board had ruled, in an ex parte appeal, that Bhandari's mark was not confusingly similar to the registered mark CHILDREN'S INN for "lodging services for use of children and their families who are patients at NIH," the Board here sustained the opposition subsequently filed by The Children's Inn at NIH. However, because the NIH's registration was not renewed, it had to rely on its common law rights (arising from a single facility on the NIH grounds). The Board noted that Applicant Bhandhari's recitation of services was broadly worded, and therefore that it must assume those services would include "offering lodging to families that travel to Maryland for treatment at NIH." It then astonishingly ruled that these consumers "would exercise nothing more than ordinary care in making their decisions regarding nearby lodging in connection with a family's visit to NIH." The Board found that the marks convey the same meaning and, given the notoriety of the CHILDREN'S INN AT NIH, that confusion was likely. [If your child were ill and a patient at NIH, would you use only ordinary care in choosing lodging for your family? Would you not notice the difference between the CHILDREN'S INN at NIH and KIDS INN? - ed.] (TTABlogged here).

The Children's Inn at NIH
In re Deutsche Telekom AG, Serial No. 78492246 (March 7, 2007) [not precedential]. Missapplying Knight Textiles, the Board reversed a Section 2(d) refusal of the mark T-MOBILE NEWS EXPRESS for various telecommunication and information technology services ["news express" disclaimed], finding it not likely to cause confusion with the registered mark NEWSEXPRESS for electronic telecommunication services. Even though the marks are used for "closely related, if not identical services, marketed in the same trade channels and to the same classes of consumers," the Board found that the dissimilarity of the marks "outweighs the other factors." The PTO cogently argued that Applicant "has simply taken registrant’s nearly identical mark, NEWSEXPRESS, and added its T-Mobile house mark to it," but the Board found that the addition of Applicant's house mark is sufficient to avoid a likelihood of confusion, citing Knight Textile. But there, the record included 23 third-party registrations for clothing items in which the marks included the word ESSENTIALS. Those third-party registrations corroborated the dictionary definition of "essentials," leading the Board to find the mark NORTON McNAUGHTON ESSENTIALS not confusingly similar to the registered mark ESSENTIALS for clothing. Here, however, there was no similar evidence regarding the term NEWSEXPRESS, and yet the Board effectively stripped that registration of any strength. (TTABlogged here).


In re Cheezwhse.com, Inc., Serial Nos. 78711311 and 78730624 (October 29, 2007) [not precedential]. Despite a questionable evidentiary record, the mark NAPOLEON BRIE (in standard character and design form) for cheese [BRIE disclaimed] met its Waterloo at the TTAB. The Board, relying primarily on third-party registration evidence to show the relatedness of the goods, affirmed a Section 2(d) refusal in view of the registered mark NAPOLEON for "edible oils, namely, salad oil, olive oil processed vegetables, namely, cocktail onions, baby corn, stir-fry vegetables, hearts of palm, artichokes; processed seafood, namely, anchovies, oysters, mussels and sardines; and processed olives, vinegar, capers and pasta." The PTO submitted ten third-party registrations “for marks for goods that include cheese and many or all of the registrant’s identified goods,” as well as two websites that provide recipes using cheese and one or more of Registrant’s goods, and a third website offering “gift tins, with the featured tin including ‘brie cheese’ and ‘gourmet olives.’” The Board sided with the PTO, even though the Examining Attorney offered no evidence (e.g., websites) that the relevant goods are actually being offered under the same mark, even though the evidentiary value of recipes is minimal at best [e.g., eggs and peanut butter may be used in the same recipe (for peanut butter cookies?), so does that make them related for Section 2(d) purposes?], and even though it was unclear that the cheese and the olives sold in the gift tin bore the same mark. (TTABlogged here).


Allergan, Inc. v. BioCentric Labs., Inc., Opposition No. 91161603 (August 20, 2007) [not precedential]. ]. Swept away by the fame of the BOTOX trademark, the Board sustained an opposition to registration of the mark SEATOX for "cosmetic[s]." According to the Board, consumers "may believe … that SEATOX identifies a related product emanating from opposer, perhaps an adjunct or complementary product with a formulation that includes a sea-based ingredient." Sales of the BOTOX product approached $1.7 billion in the period 1999-2004, and advertising expenditures were in the $10 to 20 million range. Applicant admitted that "[e]verybody has heard of BOTOX." Accordingly, the Board found the mark to be famous for Section 2(d) purposes. And, of course, fame plays a dominant role in the Board's du Pont analysis. The only wrinkle that the Board encountered was the evident dissimilarity of the marks. Not to worry! "The marks BOTOX and SEATOX are similarly constructed, two-syllable coined terms. The marks are similar in sound and appearance in that both begin with a single syllable and end in a TOX-suffix." "[A]ny specific differences … are outweighed by the similarities, especially in light of the absence on this record of any instances of third-party use of similar marks." [Thus, in effect, Opposer owns the phantom mark *TOX - ed.] (TTABlogged here)


Tabor v. LaBarba, Opposition No. 91166743 (June 14, 2007) [not precedential] and In re Sigma Alimentos, S.A. de C.V., Serial Nos. 78572313 and 78572318 (July 3, 2007) [not precedential]. In these two decisions, the TTAB found bottled water related to soy shake mix, and spring water related to "soy based beverages not being milk substitutes," for Section 2(d) purposes. In the first, the Board relied on six third-party registrations of questionable evidentiary value (and as usual, with no actual proof of use of the marks), and on a “study reported in several online locations showing that healthy beverages include lots of water and several servings of nonfat, fortified soy beverages.” Finally, the Board feebly noted several advertisements and online ordering forms from supermarkets “showing all kinds of non-alcoholic beverages listed together, e.g., alphabetically by type.” From this it was clear to the Board that the goods move in the same general channels of trade and may be seen as alternative, healthy bottled beverages. In the second, the Board found the products related because Opposer's soy mix product "is to be blended with water." By that odd logic, one would find sugar and coffee to be related products, as well as tea and honey, tea bags and water, water and coffee, and so on ad nauseam. (TTABlogged here and here).


Text Copyright John L. Welch 2007-08.

The Ten Worst TTAB Decisions of 2007? [Part 1 of 2]

Every year, as a prologue to the "10 Worst" list, I remind readers that no one is perfect, not even yours truly. After all, Babe Ruth failed to hit safely 65% of the time and Michael Jordan missed about half his shots. So is it any wonder that, out of the 500 or so final decisions issued by the TTAB in 2007, there were a few that were "off the mark," so to speak? I list below (the first five of) what I consider to be the Board's ten worst decisions of last year. [Part 2 of this two-part posting will appear tomorrow]. Obviously, these are subjective judgments, and some of you may disagree with one or more of my selections. I can live with that.


In re PNC Bank, N.A., Serial No. 78492942 (January 16, 2007) [not precedential]. In this dubious decision, the Board found the mark GREEN BRANCH not to be merely descriptive of banking, financial, investment, and insurance services, and it therefore reversed the PTO's Section 2(e)(1) refusal to register. The PTO reasonably contended that the mark describes financial and banking service offered in branches that have environmentally-friendly features, pointing to Applicant's own press release "referencing 'green branch' in connection with environmentally friendly buildings," to dictionary definitions of "green," and to a newspaper article using the terms "green branch," "green offices," and "green bank branches" in referring to Applicant. PNC argued that the term GREEN BRANCH has a wide range of "potential meanings' and that its identified services "do not imply or suggest environmental protection." The Board sided with PNC, oddly observing that "the rendering of such services in environmentally friendly or ecologically efficient facilities does not affect the basic principles of the financial and banking business." Despite the PTO’s evidence, the Board ruled that the connection between the mark GREEN BRANCH and banking services "is too indirect or remote to find the mark merely descriptive." (TTABlogged here).


B.V.D. Licensing Corp. v. Right Ascension, Inc., Opposition No. 91169355 (December 14, 2007) [not precedential]. When one party does all the work and the other neither submits evidence nor files a brief, the resulting decision may be as unsatisfactory as this one. The Board sustained a Section 2(d) opposition to registration of the mark DVD EMPIRE for shirts, finding it likely to cause confusion with the marks B.V.D. and BVD, registered for underwear, t-shirts, shirts, and shorts. The Board found the BVD marks to be famous for, at a minimum, men's underwear. Moreover, the goods are in part identical and would be purchased without great care, and the channels of trade and class of purchasers the same. But what about the differences in the marks? No need to get your shorts in a twist! Because the goods are identical, a lesser degree of similarity in the marks is required to support a finding of likely confusion. Taking into account the fame of Opposer's mark, the Board found that "the points of similarity outweigh the dissimilarities." "We first observe that the term DVD is the dominant element in applicant's mark. It is the first word in the mark and, as opposer notes, EMPIRE has a certain laudatory quality to it inasmuch as it connotes a degree of supremacy, rendering it less influential as the source identifier in applicant's mark."[What about the plain meaning of DVD as digital video disk? - ed.] Moreover, "B" and "D" are visually similar and are somewhat phonetically similar. And Applicant's mark could be displayed in the manner in which Opposer's mark is displayed. [That's if you hide the word EMPIRE - ed.]. Both BVD and DVD are arbitrary with regard to shirts, and a one-letter difference is not sufficient to distinguish between two other otherwise identical letter combinations. Therefore the Board found confusion likely and it sustained the opposition. (TTABlogged here).


Scheder v. Touristik Arbeitsgemeinschaft Romantische Strabe GbR, Cancellation No. 92045257 (June 19, 2007) [not precedential]. In a puzzling decision granting Respondent Touristik's motion for summary judgment, the Board dismissed a petition for cancellation of a registration for the mark ROMANTIC ROAD for tourism promotion services in class 35, finding the mark not to be primarily geographically descriptive under Section 2(e)(2). Petitioner claimed that the phrase "Romantic Road" describes a particular region in Southern Germany, but the Board found that Petitioner failed to overcome Registrant's prima facie case that ROMANTIC ROAD functions primarily as a mark. Registrant's evidence established that the term ROMANTIC ROAD was coined in 1950 by a group of tourist boards in Germany. Petitioner Scheder offered maps, road signs, websites, Internet search results and documents, all "purporting to show that ROMANTIC ROAD identifies a physical location." The Board oddly found that ROMANTIC ROAD "has become a known travel destination. Thus, Registrant has set out a prima facie case that ROMANTIC ROAD functions primarily as a mark." Somehow unable to find a genuine issue of material fact in dispute, the Board granted Registrant's motion. (TTABlogged here).


Riviana Foods Inc. v. Romero-Nunez, Opposition No. 91167098 (July 24, 2007) [not precedential]. Relying on questionable evidence and an equally questionable interpretation of the case law, the Board sustained a Section 2(d) opposition to registration of the mark EL MAGO for restaurant services, finding the mark likely to be confused with the identical mark registered for rice and rice mixes. "[O]pposer's goods and applicant's services must be presumed to include rice and rice mixes on the one hand and restaurants on the other with the same theme or flavoring." [Huh? - ed.] The Board unconvincingly distinguished Jacobs v. Int’l Multifoods Corp. and its progeny, which hold that "to establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and restaurant services." It relied on several articles from printed publications "all discussing the growing trend among restaurants to license the use of their marks on food items" [hearsay? - ed.] and pointed to third-party registrations "in which the same mark is used to identify restaurant services and a variety of food products." Finally, the Board concluded that the involved goods must be presumed "to be marketed to the same class of consumers, i.e., the general public, through the same media outlets such as television, radio, internet, and printed advertisements." (TTABlogged here).


In re Eolith Co., Serial No. 78139104 (February 9, 2007) [not precedential]. Applicant Eolith’s appellate gamble paid off when the Board reversed the PTO’s refusal to register EL DORADO for "computer electronic games; automatic slot machines" (class 9). The PTO maintained that Applicant's specimen did not show use of the mark in connection with the goods identified, but instead showed an arcade game, properly in Class 28. There was no debate that Applicant's product was not an "electronic computer game;" the Board noted that "its operation by gamers appears to be primarily mechanical." [The user, more than likely a child, controls a crane built into the machine to rake coin-like medals off a pile (see below).] Dictionary definitions of "slot machine" were in disagreement. The PTO’s definitions restricted "slot machines" to coin operated "vending machines." Applicant's dictionary and two judicially-noticed references defined "slot machines" as broadly encompassing machines operated by dropping a coin into a slot. Casting aside common sense, the Board determined that the majority of the definitions "do not restrict 'slot machines' to 'vending machines,’” and that the specimen “is sufficient evidence of use of the mark for the identified goods, i.e., 'automatic slot machines.'" (TTABlogged here).



Text Copyright John L. Welch 2007-08.

TTAB Finds "OLD TIMER" and "OLD TIMERS' HOCKEY CHALLENGE" for Clothing Too Dissimilar, Reverses 2(d) Refusal

Old Timers games are usually slow, dragged-out affairs, but that's not the case if Judge Grendel is the referee. His six-page decision brought a quick and successful conclusion to the appeal of Taylor Brands from the PTO's Section 2(d) refusal of the mark OLD TIMER for various outdoor apparel items. The Board found the mark not confusingly similar to the mark shown immediately below, registered for various clothing items. In re Taylor Brands, LLC, Serial No. 78565933 (December 17, 2007) [not precedential].


The Board began its analysis with the second du Pont factor: the similarity of the goods. It didn't take long to find the goods identical in part, and otherwise closely related (except, perhaps, for Applicant's fishing waders).

Moreover, the Board presumed (as it must) that the goods move in the same, normal trade channels of trade to the same, normal classes of purchasers. Thus the third factor also pointed in favor of a finding of likelihood of confusion.

As to the fourth factor, the sophistication of the purchasers, that call too went against Applicant, since the involved clothing items include "ordinary, inexpensive goods purchased by ordinary consumers who would exercise only a normal degree of care in making their purchasing decisions."

With things looking bad for Applicant, the Board turned to the first du Pont factor, the similarity of the marks. Here, Applicant rallied for victory. The Board found that "the visual and aural differences which result from the presence of the design element and additional wording in the cited registered mark outweigh the similarity in appearance and sound which result from the present of OLD TIMER or OLDTIMERS' in the two marks."

The Board also found that the marks differ in connotation and overall commercial impression. The similarity of the words OLD TIMER and OLDTIMERS' is "greatly outweighed by the presence in the cited registered mark of the words HOCKEY CHALLENGE and the hockey puck design element."

"The cited registered mark specifically calls to mind a hockey game or exhibition featuring a reunion of once-active but now-retired former hockey players. The words OLD TIMER in applicant's mark have no such connotation (much less a specific connotation)."

Balancing all the du Pont factors, the Board found the marks "sufficiently dissimilar that no confusion is likely to result even in the marks are used on identical or closely related clothing items which may be purchased on impulse."

Text Copyright John L. Welch 2008.

TTABlog Flotsam and Jetsam: Issue No. 11

It's been more than 18 months since the last "Flotsam and Jetsam" posting. But with a temporary lull in the Board's issuance of decisions, now is a good time to catch up on a few recent, newsworthy items.


TTAB's ACR Program: Bill Heinze, at his I/P Updates blog, reports here on the TTAB's new "Accelerated Case Resolution" (ACR) program, which offers parties the chance to streamline the inter partes process so that the Board may render a final decision on what is largely a stipulated record. "In order to take advantage of ACR, the parties must stipulate that, in lieu of trial, the Board can resolve any issues of material fact." The Board promises to render a written decision within fifty (50) days of the filing of the briefs. [The Board's notice may be found here.]


Georgetown Law School TTAB Event: At her 43(B)log, Professor Rebecca Tushnet announces (here) that Georgetown Law School will host a reception on Tuesday, January 22nd, 4 to 6pm, in honor of the publication of Jeffrey A. Handleman's "Guide to TTAB Practice."



TTABlogger Road Trip: Yours truly will be speaking at the Practicing Law Institute's Program snappily entitled "Navigating Trademark Practice Before the PTO 2008: From Filing Through the TTAB Hearing," held in New York City on February 21-22, 2008. [Brochure here].
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The Top Ten TTAB Decisions of 2007® [Part 2 of 2]

In Part 1 of this posting, which appeared here yesterday, the TTABlog presented half (or maybe six-elevenths) of the Top Ten TTAB Decisions of 2007. The remaining five are summarized below. The decisions are not necessarily listed in order of importance, although they may be. I leave that for the reader to decide.


Bose Corp. v. Hexawave, Inc., Opposition No. 91157315 (November 6, 2007) [not precedential]. Opposer Bose lost the fraud battle but won the war in its Section 2(d) opposition to registration of the mark HEXAWAVE for various electronic devices, including amplifiers and tuners. The Board sustained Applicant Hexawave's fraud claim as to one of Bose's pleaded registrations, but went on to find the HEXAWAVE mark likely to cause confusion with Bose's famous WAVE and ACOUSTIC WAVE marks for audio products that include amplifiers and tuners. The claim of fraud against Bose centered on the renewal in 2001 of its registration for the mark WAVE for, inter alia, audio tape recorders. Although Bose stopped offering audio tape recorders in 1996-97, it did not delete those goods when it filed for renewal, claiming that shipment of returned products after repair satisfied the use requirement. The Board noted that Bose offered no case support for its theory that "transporting" a product back to its owner after repair constitutes use of a trademark on the product as contemplated by Section 45 of the Trademark Act. Finding that it was not reasonable for Bose to believe that this shipment of goods that it no longer owned constituted "use" under the Act, the Board (rather harshly) ruled that Bose had committed fraud. (TTABlogged here).

CNL Tampa Int'l Hotel Partnership, LP v. Palazzolo, Opposition No. 91163724 (March 7, 2007) [not precedential]. The TTAB dismissed a Section 2(d) opposition to registration of the mark PELAGIA for "clothing, namely shirts," finding the mark not likely to cause confusion with the identical mark for restaurant services. Opposer claimed that clothing "is within the natural scope of expansion for restaurant services." Its only proof of relatedness of these goods and services, however, was a collection of 102 third-party registrations each encompassing both restaurant services and clothing. The Board noted that third-party registrations "may have some probative value to the extent that they serve to suggest that the listed goods and/or services are of a type that may emanate from a single source," but the Board refused to draw the inference that these goods and services are "legally related products" requiring a finding of likelihood of confusion. It noted that acceptance of Opposer's argument would be tantamount to creating a per se rule "that the same or similar marks for restaurant services and clothing is likely to cause confusion." Taken to the "absurd extreme," if third-party registrations alone were sufficient to prove relatedness of goods and services, "then virtually all consumer products and services would be related." (TTABlogged here).


Hormel Foods Corp. v. Spam Arrest, LLC, Cancellation No. 92042134 (November 21, 2007) [not precedential]. The Board dismissed Hormel's petition for cancellation of a registration for the mark SPAM ARREST for "computer software, namely software designed to eliminate unsolicited commercial electronic mail," finding that Hormel had failed to prove likelihood of confusion and dilution vis-à-vis its famous mark SPAM. Likelihood of Confusion: Respondent conceded the fame of the SPAM mark for purposes of Section 2(d), and also conceded that Hormel owns a family of SPAM marks. It was undisputed that "spam" is a generic term for unsolicited commercial e-mail. "This dichotomy between the fame of petitioner’s trademark and the generic meaning of the same term" was crucial to the Board’s 2(d) determination. Although the Board gave "great weight" to the fame of the SPAM mark, "that fame does not extend to computer software." Dilution: The Board found that Hormel had proven SPAM to be famous for canned meat but failed to prove that its mark is "distinctive" for dilution purposes – i.e., "that the mark has become the principal meaning of the word." Hormel's dilution by tarnishment claim was given short shrift, being based on a few Internet postings dissing Respondent's software. And so, Hormel's petition for cancellation was scraped off the Board's plate and into the trash can. (TTABlogged here).


In re Valenite Inc., 84 USPQ2d 1346 (TTAB 2007) [precedential]. In view of the "prevalence of online retailing" and the specialized nature of Applicant's products, the Board found that Applicant's home webpage constituted a "display associated with the goods" and therefore was a proper specimen of use for the mark VALPRO for tools for power operated metal cutting machines. Applicant relied on Lands' End Inc. v. Manbeck, 24 USPQ2d 1314 (E.D. Va. 1992) and In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004) in arguing that the webpage is a display associated with the goods (Rule 2.56(b)(1)). The Examining Attorney maintained that the specimen of use failed because "the mark is not associated with the goods" and "sufficient ordering information" is lacking. The word VALPRO appears at the top middle of the webpage, to the right of a picture of some of Applicant’s tools. [see below]. A link to an online catalog is provided, along with a toll free number and web links to customer service, technical support, and Applicant’s "Technical Resource Center." The Board found that the webpage satisfies Lands' End and Dell because it (1) includes a picture of the goods; (2) shows the mark near enough to associate the mark with the goods; and (3) contains information necessary to order the goods. (TTABlogged here).

Specimen webpageClick on photo for larger picture
Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856 (TTAB 2007) [precedential]. The Board granted Respondent's motion for summary judgment, permitting amendment of its registered mark and finding Petitioner's claims of abandonment, naked licensing, and fraud to be without merit. Respondent convinced the Board to strike from the record a Google "hit list" search summary retrieved via the "Wayback Machine" because it was not properly authenticated. The Board pointed out that Internet materials "may be admissible as evidence in connection with a summary judgment motion, if competent and relevant, provided that they are properly authenticated by an affidavit or declaration pursuant to FRCP 56(e). See TBMP Section 528.04(e)(2d ed. rev. 2004)." Petitioner argued that concerns about authentication no longer exist in view of the availability of the Internet Archive and its "Wayback Machine" feature. According to Petitioner, the "Wayback Machine" shows "each date on which a website has undergone a significant change." The Board, however, observed that the "Wayback Machine" suffers from a serious evidentiary flaw: "What may be insignificant to the archivers for the 'Wayback Machine' may have significance from the standpoint of evidentiary value in a trademark proceeding. Thus, changes to a website, or in this case the excerpts taken from a website that appear in a Google search summary, may not appear in the Internet Archive." (TTABlogged here ).

"The Top Ten TTAB Decisions of 20**" is a Registered Trademark of John L. Welch. Text Copyright John L. Welch 2007-08.

The Top Ten TTAB Decisions of 2007® [Part 1 of 2]

The TTAB issued 500 or so final decisions in 2007, as well as numerous interlocutory rulings. Sixty-six of its decisions and rulings were deemed precedential (listed in yesterday's posting here). Once again, yours truly has unabashedly chosen the ten decisions that he believes are the year's most important and/or interesting. Five are precedential decisions and five (or six) are not. Perhaps the precedential rulings are the more important because they constitute binding precedent, but the non-precedential rulings at a minimum have educational and/or entertainment value. Or at least I hope so. [This posting is in two parts, the first five (or six) decisions being listed below].


Hurley Int'l LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007). [precedential]. Extending its Medinol jurisprudence to a pending application, the TTAB found fraud because Applicants' mark was not in use in commerce in connection with all of the recited entertainment services when the Voltas filed their used-based application. But in dictum, the Board pointed practitioners to a possible escape route out of the fraud quagmire. The Voltas pleaded innocence, claiming that they misunderstood the requirements of Section 1(a), did not comprehend the legal meaning of "use in commerce," and "honestly believed that their ownership of the same mark in Australia and their use in commerce of such mark in Australia justified their Section 1(a) filing in the U.S." They noted that Applicant Paul Volta suffered a "major coronary infarct" in November 2003 [after the application was published and opposed], and further that they have been "defending themselves and have no legal representation as such." The Board was totally unsympathetic and it agreed with Opposer that "this case is similar to the Medinol case." "[P]roof of specific intent is not required." Significantly, Applicants' "asserted misunderstanding regarding the meaning of 'use' was not reasonable." The Board therefore deemed the application void ab initio and entered summary judgment in Opposer's favor. In a noteworthy footnote, however, the Board cited Universal Overall Co. v. Stonecutter Mills Corp., 154 USPQ 104 (CCPA 1967) in observing that a false statement corrected prior to an application's publication does not constitute fraud. (TTABlogged here).


Intel Corp. v. Emeny, Opposition No. 91123312 (May 15, 2007) [not precedential]. In a rare ruling on "intent to use" that may cause trademark practitioners to re-think their approach to ITU applications, the Board sustained an opposition to registration of the mark IDEAS INSIDE for on-line ordering and distribution services for a host of goods (including more that 200 items of clothing, from "anoraks" to "wrestling uniforms"), search engine services, and digital transmission services. Applicant Steven Emeny, appearing pro se, failed to produce any objective evidence of a bona fide intent to use his mark: no evidence of any business plans, nor any evidence of a single business contact with any potential partner who would supply the goods that Applicant would sell. Moreover, the application (like eight others filed by Emeny and later abandoned) included "an unreasonably broad listing of goods and services," and on cross-examination, Emeny admitted that he wanted to "make sure that nobody else [can] take advantage of those marks." The Board observed, ominously, that under Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993), the "failure to produce any objective evidence of an intent to use is sufficient basis for ruling in Intel’s favor." (TTABlogged here).


In re Joint-Stock Company "Baik", 84 USPQ2d 1921 (TTAB 2007) [precedential]. Judge Seeherman's concurring opinion was the highlight of this decision reversing a Section 2(e)(4) refusal of the mark BAIK for vodka. The Board found that the PTO failed to establish a prima facie case that BAIK is primarily merely a surname. Based upon the PTO’s evidence, essentially comprising 456 hits from a Verizon database, the Board saw BAIK as an "extremely rare surname," with no evidence that anyone with that surname has achieved any notoriety. As to other meanings of the term, the PTO pointed to "negative dictionary evidence," while Applicant argued that BAIK is an arbitrary Russian-sounding word "similar to Baikal, a Russian lake in Siberia" and to "the Baikal mountain range in Siberia," and that the public sees BAIK as a "fanciful Russian term used in a trademark sense." The Board agreed with Applicant. It was not convinced that "the similarity of Baik to other obscure surnames somehow results in Baik having the 'look and feel' of a surname." Judge Seeherman thoughtfully questioned the appropriateness of the "look and feel" factor, opining that registration should not be refused just because a mark “is similar in sound or appearance to other surnames." She urged that the refusal of a surname should focus on how many people have that same surname and would thus be affected by registration of the surname. (TTABlogged here).


In re IP Carrier Consulting Group, 84 USPQ2d 1028 (TTAB 2007) [precedential]. The TTAB adopted the same stance as the Trademark side of the USPTO on admissibility of Wikipedia evidence: admissible, but its weight may vary depending on corroborating sources. The PTO refused registration under Section 2(e)(1) of the marks ipPCS and ipPIPE for telecommunications services featuring a device that allows Internet transmission of images and video. Applicant submitted the Wikipedia entry for "Internet Service Provider" to show that a common abbreviation for "Internet Provider" is "ISP." The Board observed that "[t]here are inherent problems regarding the reliability of Wikipedia entries because Wikipedia is a collaborative website that permits anyone to edit the entries." On the other hand, the Board also noted that Internet evidence is "generally admissible and may be considered for purposes of evaluating a trademark." It determined that it will consider Wikipedia evidence "so long as the non-offering party has an opportunity to rebut that evidence…," but the "better practice" is to corroborate that information. Although there was corroborating evidence for Applicant’s definition in the form of a dictionary listing, the Board nonetheless found that "IP" means "Internet Provider" and/or "Internet Protocol," and it deemed the two marks to be merely descriptive. (TTABlogged here).


New York State Dept. of Economic Development v. Stewart, Opposition No. 91162024 (March 13, 2007) [not precedential] and New York State Dept. of Economic Development v. I Love Santa Barbara, Inc., Opposition No. 91165648 (October 31, 2007) [not precedential]. The TTAB dismissed two Section 2(d) oppositions brought by the State of New York in connection with the familiar, registered I♥NY mark, because New York failed to prove its case in each instance. New York took no testimony and submitted mere photocopies of its registrations, rather than status-and-title copies, by way of notice of reliance. In the first, the Board ruled that New York had failed to establish priority, and in the second New York failed to prove both standing and priority. What makes New York’s mistake particularly unfathomable is the fact that, in each case, the Board, in denying New York's summary judgment motion, gave notice to New York that mere photocopies of the registrations were not sufficient for purposes of Rule 2.122(d). [As of August 31, 2007, ordinary photocopies from the PTO database are sufficient under Rule 2.122(d) when submitted with an original pleading, but that new rule applies only to proceedings commenced on or after that date]. (TTABlogged here and here).


[Part 2 of this two-part posting will appear tomorrow.]

"The Top Ten TTAB Decisions of 20**" is a Registered Trademark of John L. Welch. Text Copyright John L. Welch 2007-08.

TTAB Issued 66 Precedential Decisions in 2007 (Make That 67!)

The TTAB issued 66 precedential decision in calendar 2007, topping last year's total by nine. Set out below is a compilation of those precedential rulings, categorized according to subject matter. [The accompanying photographs were taken in the vicinity of my office; they are not meant as commentary on the Board or its decisions, precedential or otherwise.] [TTABlog explanatory note: the 67th decision came to my attention in February 2008, necessitating a revision of the heading to this posting].


Section 2(a) - Suggesting a False Connection:

• Precedential No. 22: TTAB Cancels Registration of "MARC CHAGALL" for Vodka, under Section 2(a)

Section 2(d) - Likelihood of Confusion:

• Precedential No. 58: TTAB Affirms Disclaimer Requirement of "TOGGS" and 2(d) Refusal of "ZOGGS TOGGS" over "TOG & Design" for Swimsuits
• Precedential No. 54: TTAB Finds "VTUNES.NET" Confusingly Similar to Famous "ITUNES" Mark, Enters Judgment Summarily
• Precedential No. 48: Based on Third-Party Registrations, TTAB Finds Banking and Real Estate Brokerage to be Related
• Precedential No. 45: TTAB Finds "DR. AIR" Confusingly Similar to "DR. SCHOLL'S" and "AIR-PILLO" in Combination
• Precedential No. 36: TTAB Finds Paper Towel Designs Confusingly Similar, Sustains 2(d) Opposition
• Precedential No. 34: Section 2(d) Opposer Fails to Prove Priority as TTAB Rejects Analogous Use Argument
• Precedential No. 31: TTAB Finds "RATED R SPORTSWEAR" Confusingly Similar to the Famous "RATED R" Movie Certification Mark
• Precedential No. 29: TTAB Finds "ASSOCIATION OF THE UNITED STATES ARMY" Logo Confusingly Similar to "U.S. ARMY" Logo, Sustains 2(d) Refusal
• Precedential No. 28: "CLUB PALMS MVP" Confusingly Similar to "MVP" for Casino Services, TTAB Rules
• Precedential No. 27: Board Finds Family of "HOG" Marks, Sustains 2(d) Opposition to "DIRT HAWG" and "WATER HAWG" for Wet and Dry Vacuums
• Precedential No. 23: Nike Blocks WNBA's Shot at Registration of "S and Star Design"
• Precedential No. 21: LEADING JEWELERS Bests JEWELERS GUILD in TTAB 2(d) Tussle
• Precedential No. 20: Chicago Bears Rebound, De-Claw "12th BEAR" in 2(d) Opposition
• Precedential No. 19: TTAB Finds "BODYMAN" Cartoon Mark Not Confusingly Similar to "BOD MAN" for Men's Fragrances
• Precedential No. 16: "BHD & Design" for Clothing Confusingly Similar to Famous "BVD" Mark, Says TTAB
• Precedential No. 14: Strength of "PROQUEST" Mark Leads to Conquest of "INQUEST" in 2(d) Opposition
• Precedential No. 13: Peruvian Owner of "PARDO'S CHICKEN" Invokes Pan American Convention to Establish Priority in 2(d) Opposition
• Precedential No. 11: TTAB Finds "ARDENBEAUTY" for Cosmetics Confusingly Similar to "ARDEN B" for Clothing
• Precedential No. 10: TTAB Sustains Opposition of "MISS UNIVERSE" to "MR. GAY UNIVERSE"
• Precedential No. 7: "BARBARA'S" Bests "BARB'S BUNS BAKERY, INC." in TTAB 2(d) Bake-Off
• Precedential No. 5: TTAB Reverses 2(d) Refusal Due to Weakness of Marks and Differences in Goods
• Precedential No. 4: Petitioner's Prior Use Analogous to Trademark Use Leads to TTAB Cancellation of "THE CRAFTSMAN ALS IK KAN" Registrations
• Precedential No. 2: Finding Door Hardware and Toilets Related, TTAB cancels “DEVONSHIRE” Registration
• Citable No. 1: Finding Hotels and Casinos Related, TTAB Grants 2(d) Summary Judgment in "CABANA BAR" Case

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

• Precedential No. 58: TTAB Affirms Disclaimer Requirement of "TOGGS" and 2(d) Refusal of "ZOGGS TOGGS" over "TOG & Design" for Swimsuits
• Precedential No. 9: TTAB Says "Hail, No" to "CAESAR!CAESAR!" for Salad Dressings
• Precedential No. 3: TTAB Finds “THEATL” Merely Descriptive of Publications About Atlanta

Section 2(e)(2) - Primarily Geographically Descriptive:

• Precedential No. 66: TTAB Finds "YOSEMITE BEER" Geographically Descriptive, Affirms 2(e)(2) Refusal

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

• Precedential No. 50: Section 2(f) Grandfather Clause Does Not Shield Geographically Deceptive Mark from Section 2(a) Refusal
• Precedential No. 8: TTAB Finds "YBOR GOLD" Primarily Geographically Deceptively Misdescriptive of Cigars

Section 2(e)(4) - Primarily Merely a Surname:

• Precedential No. 62: TTAB Affirms Surname Refusal of "VOSE & SONS" for Pianos
• Precedential No. 60: "J. J. YELEY" Not Primarily Merely A Surname, Says TTAB
• Precedential No. 56: TTAB Reverses Surname Refusal of "BAIK" for Vodka
• Precedential No. 24: TTAB Rejects Historical Figure Contention, Affirms Surname Refusal of "WATSON"

Section 2(f)- Acquired Distinctiveness:

• Precedential No. 65: Parties Stipulate to Record, TTAB Finds "ULTIMATE POLO" Lacking in Acquired Distinctiveness for Shirts
• Precedential No. 39: Proof of Acquired Distinctiveness Falls Short for "ALPINE SPRING WATER"
• Precedential No. 26: TTAB Finds Certification Mark Specimens Adequate, but "CRNA" Lacking in Acquired Distinctiveness
• Precedential No. 12: Kellogg Fails to Rebut 2(f) Claim in "CINNAMON TOAST CRUNCH" Opposition

Declaration/Oath:

• Precedential No. 59: Declaration Must be Signed by Declarant

Dilution:

• Precedential No. 35: GULP! 7-11 Loses 2(d)/Dilution Opposition to "GULPY" for Animal Water Dishes

Fraud/Nonuse:

• Precedential No. 55: Wine Not? TTAB Gives Registrant a Break, Denies Fraud Claim
• Precedential No. 41: Service Mark Application with False Use Claim is Void ab initio
• Precedential No. 30: Registrant's Misunderstanding No Excuse, TTAB Finds Fraud and Cancels "ELLE BELLE" Registration for Clothing
• Precedential No. 6: TTAB Finds Fraud, Grants Summary Judgment in "THE SIGN" Opposition

Functionality:

• Precedential No. 57: TTAB Finds the Color Purple to be Functional for Sandpaper

Genericness:

• Precedential No. 33: "DORSAL NIGHT SPLINT" Generic For Orthopedic Splints Worn at Night, Says TTAB
• Precedential No. 32: "LENS" Generic for Internet Sale of Contact Lenses, Says TTAB

Goods in Trade:

• Precedential No. 52: TTAB Affirms Refusal of Product Configuration Mark for Boxes as Mere Packaging and Not Goods in Trade

Identification of Goods:

• Precedential No. 63: "Park Trailers" Sufficiently Definite for Identification of Goods
• Precedential No. 49: TTAB Reverses Indefiniteness Refusal, Affirms 2(d) Refusal of "PAPER DOLL PROMOTIONS" for Custom Costumes

Laches/Estoppel/Acquiescence:

• Precedential No. 47: TTAB Dismisses Cancellation Petition on Laches and Acquiescence Grounds
• Precedential No. 37: Cancellation Respondent's Laches Claim Survives Section 8 Cancellation of its Registration
• Precedential No. 25: Is IZZY'S Cancellation Petition Barred By Laches? It Isn't, Says TTAB

Ownership:

• Precedential No. 43: TTAB Cancels Registration on the Ground of Non-ownership

Procedural Matters:

• Lost and Found: 2007 TTAB Precedential Decision Rejects Belated Supplemental Discovery Responses
• Precedential No. 67 (2007): Finding Two-Days' Notice Insufficient, TTAB Strikes Opposer's Testimony and Dismisses Opposition
• Precedential No. 65: Parties Stipulate to Record, TTAB Finds "ULTIMATE POLO" Lacking in Acquired Distinctiveness for Shirts
• Precedential No. 64: TTAB Finds Opposer's 2(d) and Lack of Bona Fide Intent Claims to be Adequately Pled
• Precedential No. 61: TTAB Finds Six-Days Notice of Testimony Deposition to be Reasonable
• Precedential No. 53: TTAB Strikes "Wayback Machine" Evidence, Enters Summary Judgment Okaying Amendment of "AQUA STOP" Registration
• Precedential No. 44: TTAB Says Wikipedia Evidence is Admissible, but Should Be Corroborated
• Precedential No. 42: TTAB Lets Respondent off the Hook, Accepts Late-Served Admission Responses
• Precedential No. 40: Petition to Cancel Registration on Ground that Portion of Mark is Generic is Time-Barred by Section 14(3)
• Precedential No. 38: TTAB Dismisses Cancellation Petitioner's Inadequately Pleaded Section 14(3) "Misrepresentation of Source" Claim
• Precedential No. 18: TTAB Interlocutory Ruling Re Amendment of Opposed Application

Specimen of Use/Mutilation:

• Precedential No. 53: TTAB Strikes "Wayback Machine" Evidence, Enters Summary Judgment Okaying Amendment of "AQUA STOP" Registration
• Precedential No. 51: TTAB Affirms Rejection of Specimen of Use and 2(d) Refusal of "CORAZON BY CHICA" for Jewelry
• Precedential No. 46: Following Dell, TTAB Says Website Printouts Suffice as Trademark Specimens
• Precedential No. 26: TTAB Finds Certification Mark Specimens Adequate, but "CRNA" Lacking in Acquired Distinctiveness
• Precedential No. 17: TTAB Reverses Another Mutilation Refusal
• Precedential No. 15: "CONDOMTOY CONDOM" Fails TTAB Specimen Test

Text and photographs Copyright John L. Welch 2007-08.

TTABlog Hat Tip: Two Blog Anniversaries

Here's a tip of the fedora to trademark blogger Ron Coleman, whose Likelihood of Confusion blog has reached its third anniversary. I just wish I could write as well as Ron. And kudos to Marc Randazza. His consistently entertaining and enlightening The Legal Satyricon blog recently celebrated its first birthday.

Coleman
Randazza.

TTAB Finds "FYBY" for Silkscreening Services Confusingly Similar to "FUBU" Clothing Mark

Another pro se trademark crusader kicked the TTABucket in his lonely quest for the Holy Grail of trademark registration. The Board deep-sixed the application of Guy R. Wilson, Jr., of Hoschton, Georgia, to register the mark shown immediately below, for "silk screen painting on clothing." It found his mark likely to cause confusion with Opposer's mark FUBU, used and registered for various clothing items. GTFM, Inc. v. Wilson, Opposition No. 91170761 (December 27, 2007) [not precedential].


The Board began by finding that Applicant's mark is dominated by the letters FYBY. [Applicant Wilson shot himself in the foot right at the git-go when he conceded same in his answer to the notice of opposition.] The design of Wilson's mark was not sufficient to distinguish it from the mark FUBU.

"[I]t is not unrealistic to assume that consumers may not keep in mind the precise letters of the mark, and thus be able to do differentiate FYBY from FUBU"

In addition, the marks have similar meanings and commercial impressions. Opposer's mark stands for "For Us, By Us." However, Opposer submitted evidence showing that FUBU is also understood as having a "secondary meaning" of "for you, by you." That, the Board noted, is a similar connotation to the phrase "FOR Y'ALL BY Y'ALL" in Wilson's mark.

The Board concluded that the marks are similar in appearance, sound, meaning, and commercial impression.

Turning to the goods and services, the Board observed that there are no limitations on the services in the applied-for application, and that Opposer's goods are broadly identified in its registrations. Therefore the Board presumed that Wilson's silkscreening painting services are available to all potential consumers of clothing, and move [sic] in the same channels of trade and are sold to the same customers.

Moreover, silkscreen painting services are related to Opposer's clothing items because "clothing, particularly t-shirts and sweatshirts, often display designs that are created by the consumer, affixed by silkscreen, and then sold back to the consumer." [TTABlog query: in which case, the consumer would have to be rather doltish to be confused into thinking that FYBY is FUBU.]

Therefore, applying the DaVinci Code -- I mean balancing the du Pont factors -- the Board found confusion likely and affirmed the 2(d) refusal.

TTABlog comment: Applicant Wilson neither submitted evidence nor filed a brief. It's too bad he didn't put up a bigger fight here, because the Board's decision is not all that convincing. He could have been a Dennis the Menace, instead of poor old Mr. Wilson.

Text Copyright John L. Welch 2008.

"LEGSTICK" Confusingly Similar to Famous "L'EGGS" Mark for Hosiery, Says TTAB

Essentially ruling that Applicant Amine Mahmoud had no leg to stand on, the Board sustained a Section 2(d) opposition to registration of the mark LEGSTICK for various clothing items, including hosiery and panty hose. It found the mark likely to cause confusion with the famous mark L'EGGS, registered and previously used for hosiery and panty hose. Sara Lee Corp. v. Mahmoud, Opposition No. 91162134 (December 27, 2007) [not precedential].


The Board began its du Pont analysis by finding that the goods overlap, and therefore that the channels of trade and the classes of purchasers are presumably the same. Moreover, hosiery and panty hose are ordinary consumer items that are purchased without much deliberation. That took care of factors 2, 3, and 4.

As to the fifth factor, the Board found the mark L'EGGS to be famous for Section 2(d) purposes. Opposer has used the mark for more than thirty-five years, its products are sold at more than 40,000 retailers, sales over the years have totaled more than $12 billion, marketing expenditures exceeded $2 billion, Opposer claims a 57% share of the sheer hosiery market, its products have been the subject of numerous media stories, and the mark enjoys very high brand awareness. As a famous mark, L'EGGS is entitled to "a very broad scope of protection." Indeed, fame is a "dominant factor" in the du Pont analysis.

For the last leg of its journey to judgment, the Board considered the similarity or dissimilarity of the marks. The Board noted that when identical goods are involved, a lesser degree of similarity in the marks is necessary to support a likelihood of confusion claim. Moreover, when the opposer's mark is famous, the degree of similarity necessary is also diminished. [TTABlog query: how low can it go?].

The Board noted that "legs" and "leg" are fairly suggestive for the goods, "but any such inherent suggestiveness of opposer's mark is mitigated by and must be considered in conjunction with the exceedingly high degree of fame the mark has achieved." Although finding it a "close question." the Board ruled that the first du Pont factor weighs in Opposer's favor.

The Board's finding as to similarity was corroborated by the results of Opposer's survey: 17.7% of the survey respondents believed that LEGSTICK hosiery is "put out by L'eggs," and that result constituted "probative evidence which supports a likelihood of confusion." Twenty-eight of the thirty-nine respondents who believed "L'eggs" to be the source of LEGSTICK hosiery identified the presence of "legs" or "leg" as the reason for their belief.

The Board concluded that factors two through five so heavily favored Opposer that "the only way we could ultimately conclude that there is no likelihood of confusion would be if we were to find, in applicant's favor, that applicant's mark is so utterly dissimilar to opposer's mark that the first du Pont factor outweighs all of the other factors in the likelihood of confusion analysis." That the Board could not do.

And so it sustained the opposition.

Text Copyright John L. Welch 2008.

Deeming "CREATINE-D2T" a Unitary Mark, TTAB Dismisses Opposition Demanding Disclaimer of "CREATINE"

In a rather unusual inter partes case, the Board dismissed on summary judgment an opposition to registration of the mark CREATINE-D2T for dietary supplements, rejecting Opposer's assertion that the term CREATINE must be disclaimed. Ultimate Nutrition, Inc. v. Nxcare, Inc., Opposition No. 91176206 (January 4, 2008) [not precedential].


Opposer pointed out that it disclaimed the word CREATINE in its own registration for the mark CREATINE SUPREME for dietary supplements, and it asserted that CREATINE is generic.

The Board assumed, without deciding, that CREATINE is either generic or merely descriptive for dietary supplements. It observed that descriptive and generic terms in a mark are unregistrable and therefore subject to disclaimer "unless the matter is merged together with distinctive elements of the mark in such a manner that the resulting composite is 'unitary' and can not be divided into separable elements."

"When a compound word mark is formed by hyphenating two words or terms, one of which would be unregistrable alone, the mark is deemed unitary and no disclaimer is necessary."

The Board found that Applicant’s mark "consists of a compound word mark comprised of the terms CREATINE and DT2 physically connected by a hyphen." It pointed out that none of the terms in applicant's mark stand alone, unlike Opposer's mark. "Based upon all relevant factors, the components in applicant’s mark, including the hyphen, merge in such a way that CREATINE loses its separate, descriptive significance, forming a compound mark with a single, unitary significance."

The Board further observed that registration of CREATINE-D2T "is recognition of applicant’s rights in the entire mark, and neither creates nor recognizes rights in any components of the mark apart from each other."

And so, the Board granted Applicant's motion for summary judgment and dismissed the opposition with prejudice.

Text Copyright John L. Welch 2008.

Sophisticated Purchasers, Differences in Financial Services Lead TTAB to Reverse 2(d) Refusal of "BRIDGER CAPITAL" over "BRIDGER COMMERCIAL FUNDING"

"Notwithstanding the similarities between the marks, the significant differences between the nature of the services [together with] the high level of sophistication of purchasers tip the scales in favor of a finding of no likelihood of confusion." That's the reason the Board reversed a Section 2(d) refusal of the mark BRIDGER CAPITAL for "hedge fund services for high-net-worth investors" [CAPITAL disclaimed]. The Board found the mark not likely to cause confusion with the registered mark BRIDGER COMMERCIAL FUNDING for commercial lending services for the commercial mortgage and financial asset management industries" [COMMERCIAL FUNDING disclaimed]. In re Bridger Management, LLC, Serial No. 78516349 (December 28, 2007) [not precedential].

Jim Bridger
The Board noted that the cited mark is registered on the Supplemental Register, leading Applicant to claim that BRIDGER is merely descriptive of "bridge loans" offered through commercial lending services. Even assuming that were true, the Board observed, BRIDGER is still the dominant feature of both marks. And even if BRIDGER is arbitrary in Applicant's mark but descriptive in the registered mark, the difference in meaning is "outweighed by the identity in sound and appearance." And the marks in their entireties "engender substantially similar overall commercial impressions."

As to the services, the Board found that, although some financial institutions render both investment management and commercial lending services, hedge funds "are a distinct type of investment vehicle." The PTO "failed to provide even one example of a single entity providing both hedge fund and commercial lending services."

Moreover, "it is immediately apparent ... that the services are rendered to highly sophisticated purchasers": applicant's to high net worth individuals and entities; registrant's to banks and similar financial institutions.

"The nature of the services clearly requires that any of the involved financial transactions are made only with care and deliberation after investigation. *** [T]he customers are sophisticated and certainly will know with whom they are dealing."

Observing that it is not concerned with "mere theoretical possibilities of confusion" but with "the practicalities of the commercial world," the Board reversed the refusal to register.

TTABlog note: Jim Bridger, depicted above, had nothing to do with this case. But the word "Bridger" brought to mind the old Johnny Horton song about the legendary frontiersman. Besides, who wants to see a picture of a hedge fund?

Text Copyright John L. Welch 2008.

TTAB Rejects Parody Claim; Finds "IVY LEAGRO" Confusingly Similar to Famous "IVY LEAGUE" Marks

Boola Boola! The Council of Ivy Group Presidents frustrated Brown graduate Robert R. L. Gray in his attempt to register the mark IVY LEAGRO for goods in classes 16 (printed publications) and 25 (clothing), and for information services in the field of education (class 41). The Board found his mark likely to cause confusion with the marks IVY LEAGUE and THE IVY LEAGUE registered and used for paper products, clothing, and educational services. Council of Ivy Group Presidents v. Gray, Opposition No. 91161051 (December 28, 2007) [not precedential].


The Board began its analysis by finding that Opposer's marks are famous for purposes of the fifth du Pont factor, and it observed that this fame "must be accorded dominant weight in our likelihood of confusion analysis."

Turning to the marks, the Board noted that Applicant Gray "coined the term IVY LEAGRO while an undergraduate student ... as a reference to himself and other African-American students at Ivy League schools." Applicant's expert, a professor of linguistics, testified that "as a result of the coined nature of 'LEAGRO' and the unfamiliarity of the 'RO' suffix, consumers will be easily able to distinguish applicant's mark from those of opposer." He further opined that "because IVY LEAGRO connotes the term NEGRO with its numerous racial overtones, applicant's mark is not likely to be confused with those of opposer."

The Board pointed out, however, that Applicant did not present any evidence regarding the consumer impression of Applicant's mark, but rather submitted only his own testimony and that of his expert, who, "it may be presumed, possesses superior knowledge that that of the average consumer regarding the derivation of words and the impression conveyed thereby." The Board instead found the marks to be highly similar in appearance, sound, connotation, and commercial impression, and that this du Pont factor "heavily favors" Opposer.

"With regard to the marks’ respective connotations, applicant testifies that his mark connotes, among other things, 'the unique experience and values of African-American students within the white-dominated culture of the modern Ivy League.' In other words, applicant's mark conveys a sense of the values and experiences of certain students at opposer’s constituent schools. Thus, it appears that 'Ivy Leagros' form part of a larger group known as 'Ivy Leaguers.'As a result, the marks IVY LEAGRO and IVY LEAGUE and THE IVY LEAGUE convey highly similar connotations, and convey highly similar overall commercial impressions."

As to the goods and services, the Board wasted little time in finding them to be closely related and their channels of trade and potential customers the same.

Applicant submitted a number of third party registrations for marks incorporating the words "Ivy and/or "League," as well as printouts from various websites. However, there was no evidence that the registered marks are actually in use, and no evidence concerning the extent to which those third-party marks are used in commerce.

Finally, Applicant Gray asserted parody as a "defense" to Opposer's 2(d) claim. The Board, however, pointed out that parody is not a defense, but "is simply another factor which is relevant to our analysis of likelihood of confusion because parody is merely another way of arguing that confusion is not likely." Gray himself had "difficulty articulating the meaning of IVY LEAGRO:" "It was a joke." "It was kinda funny/kinda uncomfortable, like a clown crying."

It was not clear to the Board that Applicant uses his mark to parody opposer or any of its goods or services. "[W]e conclude that applicant is using his IVY LEAGRO mark to poke fun and satirize something else in society, including race relations, and privilege versus marginalization in America." According to Professor McCarthy, that is not "parody" of a trademark.

In any case, Applicant did not submit any evidence to support his claim of parody, and therefore the Board refused to consider the parody "factor."

Balancing all the pertinent du Pont factors, the Board sustained the opposition. It declined to reach Opposer's claim of likelihood of dilution.

Text Copyright John L. Welch 2008.

TTAB Cancels "FEBAL USA" Registrations Obtained Fraudulently for U.S. Distributor

Mariner Ventures, Inc. committed fraud in the procurement of two registrations for the mark FEBAL USA for furniture because it knew that it was not the owner of the marks when it applied for registration. The Board therefore granted the petitions for cancellation filed by the Italian manufacturer. Febal Cucine, S.p.A. v. Mariner Ventures, Inc., Cancellation No. 92042704 [not precedential].


Although Petitioner Febal Cucine had not used the mark FEBAL in the United States, it had standing to bring this proceeding because it was not a "mere interloper": it marketed goods in many countries, it was interested in expanding to the USA, and it entered into an agreement with an entity related to Respondent at the same time that Respondent filed a trademark application to register the FEBAL USA mark. The evidence supported "a conclusion that respondent's use was made solely to block petitioner's planned expansion into the United States."

The fraud issue was complicated by the fact that Petitioner dealt with one company, Febal U.S.A., LLC, while another, Respondent Mariner, filed the trademark applications in this country. Petitioner and Febal U.S.A. eventually entered into an exclusive distributorship agreement for the United States.

The law presumes that, absent an agreement otherwise, the foreign manufacturer owns the mark rather than the U.S. distributor. Here, in fact, the agreement between Petitioner and Febal U.S.A. "makes it clear that Febal U.S.A., LLC had no right to register the FEBAL mark without petitioner's consent." Therefore, Febal U.S.A. "could not have filed and truthfully asserted that it was the owner of the mark FEBAL USA or that it could obtain a trademark registration for the mark."

However, Mariner Ventures, Inc., filed the applications, not Febal U.S.A. Petitioner asserted that the signatories of the exclusive distribution agreement "arranged through respondent to apply for the marks at issue here." The Board agreed. It noted that Febal U.S.A. and Mariner have the same address, and that the person who executed various of Mariner's application papers attended the meeting at which the agreement was signed, and identified herself on several papers as the Secretary or the Registered Agent of Febal U.S.A. In addition, Mariner submitted to the PTO a magazine story regarding its products, but the story refers to "Febal USA," not Mariner.

"The evidence of record convinces us that Mariner Ventures, Inc. worked in tandem with Febal U.S.A., LLC to register trademarks that Febal U.S.A. could not register itself because it was a distributor, which did not have any rights to register the mark.

"[A] party cannot both negotiate an exclusive distributorship agreement with petitioner and work with another entity to register that same mark that it was prohibited from registering in its own name."

Therefore the statements made by Respondent in its applications that Mariner Ventures was the owner of the marks, were made knowingly, were false, and were material to the applications because the PTO would not have published the marks for opposition nor registered them had it known that Mariner was not the owner. That constitutes fraud on the PTO.

Text Copyright John L. Welch 2008.

"KIDS INN" and "CHILDREN'S INN" Confusingly Similar, At Least According to the TTAB

Vinod Bhandari must have thought he was home free when he convinced the TTAB in 1999 to reverse a Section 2(d) refusal of his application to register the mark KIDS INN for hotel, motel, and restaurant services. The PTO had refused registration on the ground of likelihood of confusion with the registered mark CHILDREN'S INN, owned by NIH, for "lodging services for use of children and their families who are patients at NIH," but the Board found the likelihood of confusion to be de minimis. Unfortunately for Mr. Bhandari, however, when his application was published for opposition, The Children's Inn at NIH opposed. Eight years later, the Board sustained the opposition on Section 2(d) grounds. So ends another valiant pro se tilt at the TTAB windmill. The Children's Inn at NIH v. Bhandari, Opposition No. 91120549 (December 17, 2007) [not precedential].

The Children's Inn at NIH
The Board noted the earlier ex parte decision, but since the decision was marked "not citable as precedent," the panel was "not bound by it." [TTABlog query: Even if the 1999 decision had been dubbed precedential, what difference would that have made? Why would NIH be bound by a decision in an ex parte matter in which it played no part?] In any case, there were "additional facts" of record in this case, namely the "notoriety" of Opposer's mark, that compel a different result.

Meanwhile, Opposer's registration was cancelled in November 2007 for failure to renew. NIH therefore had to rely on its common law rights. Observing that the registration was issued under Section 2(f), the Board found the mark CHILDREN'S INN to be merely descriptive of Opposer's services. However, it ruled that the record established acquired distinctiveness prior to Bhandari's filing date.

As to likelihood of confusion, the Board noted that Applicant's recitation of services was broadly worded, and therefore the Board must assume those services would include "offering lodging to families that travel to Maryland for treatment at NIH." According to the Board, these consumers "would exercise nothing more than ordinary care in making their decisions regarding nearby lodging in connection with a family's visit to NIH." [TTABlog comment: Ordinary care? You have a sick child, you're looking for a place for the family to stay while he or she is at NIH, and you exercise only ordinary care? Preposterous!]

As to the marks, the Board found that KIDS and CHILDREN "convey identical meanings, that is, an inn catering to youngsters," and they therefore engender the same overall commercial impression. These factors outweigh the differences in sound and appearance.

Opposer claimed fame, but the Board was not persuaded "to bestow the exalted status of 'famous' on opposer's mark." However, it found that "opposer's mark possesses a degree of strength with a corresponding scope of protection that encompasses applicant's similar mark for similar services." [TTABlog query: Huh?]

Finally, the Board noted that when opposer's facility is filled to capacity, families are "bumped" and require lodging in the neighborhood of NIH. The Board must assume that Bhandari may open a hotel or motel in close proximity to NIH. Given the notoriety of Opposer's mark, the Board found confusion likely, and it sustained the opposition.

TTABlog comment: I agree with the outcome in the Board's 1999 decision: I think the likelihood of confusion is de minimis. In 1999, Opposer had a registration, but in 2007 it had to rely only on its common law rights. The now-cancelled registration was for the word mark CHILDREN'S INN, but Opposer's common law rights are arguably narrower, in my view, and are limited by the fact that Opposer's sole facility is on the NIH campus: thus the name CHILDREN'S INN AT NIH.

I believe consumers use great care in choosing hospitals for their children. Coupling that factor with the clear differences in spelling and pronunciation of the marks and the limited scope of Opposer's common law rights, I think the opposition should have been dismissed.

Text Copyright John L. Welch 2008.

Fourth Circuit Rules that Foreign Company Must Appear in the USA for TTAB Testimony Pursuant to E.D.Va. Subpoena

In a surprising and dubious decision, a divided panel of the U.S Court of Appeals for the Fourth Circuit has ruled that a foreign corporation must obey a subpoena issued by the U.S. District Court for the Eastern District of Virginia, pursuant to a Rule 30(b)(6) notice in a TTAB proceeding, and must appear in Virginia to give trial testimony. Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., 85 USPQ2d 1385 (4th Cir. 2007), cert. denied, ___ U.S. ___ (May 27, 2008).


The procedural posture of the case is, to say the least, rather complicated. Applicant Rosenruist, a Portuguese corporation, filed an ITU application to register the mark VIRGIN GORDA for bags, umbrellas, and clothing. Virgin Enterprises opposed on Section 2(d) grounds. When its testimony period rolled around, Virgin sought to take Rosenruist's testimony under Rule 30(b)(6), but Rosenruist refused to appear voluntarily in the USA, Virgin filed a motion to compel, seeking a deposition of Rosenruist in Portugal. The Board denied the motion, noting that according to the TBMP, a foreign party may be compelled to appear for an oral deposition only through the procedures of the Hague Convention or via the issuance of letters rogatory to Portuguese authorities.

Virgin then served a Rule 30(b)(6) deposition subpoena on Rosenruist, seeking to depose a representative of Applicant. The subpoena was served in the USA on one of the Virginia-based lawyers designated by Rosenruist as its representative under 15 U.S.C. Sec. 1051(e), and it required the corporation to appear in McLean, Virginia. [Rosenruist did not challenge Virgin's right to seek trial testimony via Rule 30(b)(6)].

Rosenruist moved to quash the subpoena, arguing (1) that the district court lacked the authority to subpoena a foreign resident for a deposition in the USA, (2) that Virgin was seeking to circumvent proper TTAB procedures, and (3) that even if the subpoena were valid, service of the subpoena on counsel was ineffective. The district court denied the motion and then imposed sanctions on Rosenruist when it failed to attend the deposition. However, the district court denied Virgin's motion seeking to compel Rosenruist to produce a corporate designee for the deposition, because there was no individual residing within the district whom Rosenruist could designate as its witness. This ruling was based on the magistrate judge's conclusion that "witness," as used in 35 U.S.C. Sec. 24 [which grants district courts the authority to issue subpoenas in PTO proceedings], applies only to natural persons. The district court judge adopted the magistrate's ruling.

35 U.S.C. §24. Subpoenas, witnesses.

The clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent and Trademark Office, shall, upon the application of any party thereto, issue a subpoena for any witness residing or being within such district, commanding him to appear and testify before an officer in such district authorized to take depositions and affidavits, at the time and place stated in the subpoena. The provisions of the Federal Rules of Civil Procedure relating to the attendance of witnesses and to the production of documents and things shall apply to contested cases in the Patent and Trademark Office.

The 4th Circuit panel majority noted that the validity of the subpoena (whether the district court had personal jurisdiction over Rosenruist) was not properly before the appellate court because Rosenruist did not appeal that issue.

The panel majority reversed the district court's ruling that the term "witness" in Section 24 encompassed only natural persons. As to the TTAB's procedures, the majority observed that the TBMP is not authoritative, but is merely a manual of useful information: it does not provide "authoritative interpretative guidance" for Section 24. The PTO Rules allow the use of 30(b)(6) depositions and permit the taking of trial testimony by oral examination. Thus Virgin was not seeking to expand the procedures provided by the PTO.

The court of appeals therefore reversed the district court's order denying Virgin's motion to compel Rosenruist to obey the subpoena, and it remanded the case to the district court for appropriate further action.

Dissenting Circuit Judge Wilkinson did not mince words in disagreeing with the majority view:

"The majority’s holding that this subpoena is enforceable is problematic for many reasons. It fails to properly apply the statute, 35 U.S.C. § 24, that is directly relevant to its decision, and it reaches a result that is bound to embroil foreign trademark applicants in lengthy, procedurally complex proceedings. It inverts longstanding canons of construction that seek to protect against international discord, and it disregards the views of the PTO whose proceedings 35 U.S.C. § 24 is designed to aid."

"... the bottom line is that the majority enforces the subpoena. In so doing, the majority creates a standard that is in fact a national one: the PTO is located in the Eastern District of Virginia; applications for trademark registration are filed there; and subpoena enforcement will frequently be sought in that district. Indeed, for any foreign corporation without a pre-existing United States presence, the majority’s decision will be controlling. For this reason, among others, I think this decision is unfortunate. The decision to extend the subpoena power under 35 U.S.C. § 24 to foreign companies situated similarly to Rosenruist is one that is plainly before this court, and its importance warrants full discussion."

Judge Wilkinson believes that the majority ignored that requirement of Section 24 that limits the court's subpoena powers to those "residing or being" with the judicial district. Applicant Rosenruist cannot be described as "residing or being" within the Eastern District of Virginia. The fact that Rosenruist filed a trademark application may be a contact with the jurisdiction, but it does not establish a physical presence or sustained contact akin to a presence there. And the appointment of a domestic representative is a contact too minimal to render a company subject to such judicial compulsion.

Moreover, Judge Wilkinson believes that the majority incorrectly interpreted the procedural posture of the case, and that the validity of the subpoena is a proper subject for review. The majority also ignored "cautionary canons of interest that apply to statutes bearing upon other nations' interests and international norms." And in interpreting the scope of Section 24, the majority ignored the views of "the most relevant expert agency" on the issue: the TTAB.

TTABlog comment: Wow! This case begs for en en banc hearing. It is difficult to believe that a foreign corporation can be forced by a federal court subpoena to appear for a deposition in the United States just because it filed a trademark application. I don't think Section 24 allows it, nor do I think that a federal court has the power.

Many questions come to mind: Will Rosenruit seek reconsideration en banc? Supreme Court review? Will the TTAB follow this ruling? Will it seek to have the language of Section 24 clarified by Congress? Will TTAB practitioners start cranking out Rule 30(b)(6) deposition notices at a furious clip? Who will write the definitive article analyzing this decision?


Text Copyright John L. Welch 2008.

TTAB Posts January 2008 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled three hearings for the month of January, as listed below. The hearings will be held in the East Wing of the Madison Building. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.


January 9, 2008 - 2 PM: In re Phillips Farms, LLC, Serial No. 78669171 [Section 2(e)(1) mere descriptiveness refusal of the mark PETIT-PETITE for wine].

Petite Syrah
January 10, 2008 - 2 PM: Digi Int'l, Inc. v. Digipos Systems, Inc., Opposition No. 91163719 [Section 2(d) opposition to registration of the mark DIGIPOS for "computer hardware, peripheral equipment and software for use in controlling point-of-sale transactions, and managing point-of-sale information and all retail store management procedures," based up the registered mark DIGI and variations thereof for computer software and hardware].

January 30, 2008 - 10 AM: In re RIC Investments, LLC, Serial No. 78651809[Section 2(d) refusal of the mark SOOTHIE for baby bottles, baby bottle nipples, teething rings, and baby bottle brushes, in view of the registered mark SOOTHIES for glycerin pad to ease nipple pain during breast feeding.]

Text Copyright John L. Welch 2008.