Finding Safety Goggles and Binoculars Related, TTAB Affirms 2(d) Refusal of "SEAHAWK"

Third-party registrations and website evidence convinced the Board that Applicant's safety eyewear and goggles are related to binoculars for Section 2(d) purposes, leading to an affirmance of the PTO's refusal to register the mark SEAHAWK for the former in view of the identical mark registered for the latter. In re Cabot Safety Intermediate Corporation, Serial No. 78903884 (January 12, 2009) [not precedential].


Because the marks are identical, the Board found that the first du Pont factor weighed "heavily in favor of a finding of likelihood of confusion." The real focus of the Board's attention was, of course, the relatedness of the goods.

Examining Attorney Michael A. Wiener submitted more that a dozen third-party registrations that included both binoculars and safety goggles or protective eyewear. Following In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993) the Board ruled that these registrations "serve to suggest that the goods are of a type which may emanate from a single source." In addition, Mr. Wiener submitted evidence of "websites that offer for sale both binoculars and safety goggles in close proximity," and evidence of "third-party manufacturers of binoculars and safety goggles, who use the same mark on both." The Board found the PTO's evidence "highly probative that the goods listed in the application and the cited registration are related."

Applicant Cabot Safety feebly asserted that its custumers "are sophisticated" and would recognize the differences in the marks as used. It contended that "employers who may be required by law to provide protective eyewear ... would be presumed to exercise a higher degree of care in their purchase than would ordinary consumers." But the Board saw things differently:

... the applicable standard of care is that of the least sophisticated consumer. Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004). The record shows binoculars being offered for sale for as little as $19.93, and protective eyewear being offered at $9.69. Moreover, with identical marks and related goods, even a careful, sophisticated consumer of optical devices is not likely to note the difference of source. Cunningham v. Laser Golf Corp., 222 F.3d 943, 948-949 (Fed. Cir. 2000). Accordingly, the fourth du Pont factor weighs in favor of finding a likelihood of confusion.

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

Text Copyright John L. Welch 2009.

Ron Coleman Ponders the TTAB's "HEEB" Decision

Ron Coleman, at his renowned Likelihood of Confusion blog, has posted his thoughts (here) on the TTAB's recent HEEB decision (TTABlogged here). The reader will recall that the Board affirmed a Section 2(a) disparagement refusal of the mark HEEB for clothing and entertainment services, noting that there are differing views on the question, but finding that a substantial composite of the Jewish community would view the term as disparaging.


In short, Mr. Coleman contrasts the PTO's willingness to register terms that were once considered derogatory in the sexual orientation realm, with the Office's approach "when it comes to trademarks for kikes, shvartsers and the rest of us."

Text Copyright John L. Welch 2009.

"MERCURY" for Vodka and Distilled Spirits Likely to Confuse: TTAB Affirms 2(d) Refusal

It's time for another WYHA? case. Suppose your application to register MERCURY for vodka is refused registration under Section 2(d) in view of the identical mark registered for distilled spirits. Would You Have Appealed? Applicant Mercury-2 LTD did, and the result must have been dispiriting. In re Mercury-2 LTD, Serial No. 78729582 (January 12, 2009) [not precedential].


Examining Attorney Christina M. Sobral stirred the PTO's drink, submitting evidence that vokda is a type of distilled spirit: e.g., a dictionary definition of "vodka" as "an unaged, colorless, distilled spirit, originally made in Russia." Thus facing marks that are identical and goods that overlap, Applicant was left with little to argue.

Nonetheless, it came up with a few lame attacks on the refusal. First, it argued that "the differences in trade dress will avoid confusion, because the bottle it uses is different from the bottle registrant uses." Of course, in its 2(d) analysis, the Board must look at the applied-for mark and the registered mark, not on what the current trade dress may be.

Next, Applicant asserted that the registrant is actually selling gin, not vodka. [See photo above - ed.] That real-world argument loses every time:

Section 7(b) of the Statute provides, in part, that a certificate of registration of a mark is prima facie evidence of the registrant’s exclusive right to use the mark on the goods specified in the registration. Thus, the question of likelihood of confusion must be determined based on an analysis of the mark as applied to the goods and/or services recited in applicant’s application vis-à-vis the goods and/or services recited in the cited registration, rather than what the evidence shows the goods and/or services to be.

Finally, Applicant amusingly claimed that "the term MERCURY is diluted for alcoholic beverages," but the Board found no properly-submitted evidence in support of that contention.

Therefore, with the marks literally identical and the goods legally identical, the Board affirmed the 2(d) refusal.

Text Copyright John L. Welch 2009.

Stylized "FRANCO FERRARI" Confusingly Similar to "FERRARI" and "FRANCO FERRARO," Says TTAB, Frankly

Rejecting Applicant's feeble contention that its mark (shown below) is a "distinctive design mark," the Board affirmed the PTO's Section 2(d) refusals to register, finding the mark likely to cause confusion with the registered marks FERRARI and FRANCO FERRARO, all for clothing and/or fabrics in classes 24 and 25. In re Franco Ferrari, S.r.l., Serial No. 76545104 (January 8, 2009) [not precedential].


The Board agreed with Examining Attorney John Hwang that Applicant Franco Ferrari, S.r.L. was seeking to register the words FRANCO FERRARI in a stylized font, and that Applicant's mark "is not so extreme or highly stylized that the wording in the mark is unrecognizable or that it is essentially a design mark which conveys a distinct impression separate from the words."

First, the mark is displayed as a signature is displayed, on one line, and looks like a signature. Second, an elevated dot appears on the right side of the mark in the position where the dot on a lower case letter “i” would appear. Third, several letters are recognizable in the mark, such as the letters "a," "o," "f"and “i,” which signal consumers that the letters spell something, and that the mark is not a design. Once the purchaser perceives the letters in the mark, the purchaser will try and determine what the wording is. Fourth, the mark does not resemble anything except a signature and contains no geometric shapes or patterns.

Further undermining Applicant's lame contention that its mark is a "design mark" were its argument that its mark is different in sound from FERRARI, its identification of the mark as "FRANCO FERRARI" in its original application papers, and its statement during prosecution that "Applicant is using the trademark as a signature in stylized type." The Board not surprisingly concluded that the mark is a stylized depiction of the words FRANCO FERRARI, and not a design.


Moreover, the stylized lettering of Applicant's mark "does not serve to distinguish applicant's mark from the cited marks." Because the cited marks are in standard characters, they are not limited to depiction in any particular form.

As to the FRANCO FERRARO citation, "[i]n view of the broadest possible modes of display we must accord registrant's mark, including a display similar to that of applicant's mark," the Board found the marks to be "highly similar in sound, appearance, meaning and commercial impression."

With regard to the FERRARI citations, "[e]ven with the addition of FRANCO to FERRARI, the meaning and commercial impression of applicant's mark remains the same as the meaning and commercial impression of registrant's marks, i.e., as a name. The addition of FRANCO merely emphasizes that FERRARI is an individual's name, rather than a place or some other thing." Thus despite the addition of FRANCO, the Board found the marks to be similar.

Next, Applicant argued that "it is entitled to registration because the FERRARI marks registered despite the existence of the FRANCO FERRARO registration," but the Board was unmoved. First, the Board is not bound by prior examination decisions, and second, "applicant's mark is closer to FRANCO FERRARO and to FERRARI than FERRARI is to FRANCO FERRARO." [TTABlog query: What if someone tried to register FERRARO FERRARI?]

In one last gasp, Applicant contended that it sells its goods to the "finest high fashion retailers in the United States," suggesting that care is exercised by purchasers. The Board pointed out, however, that the goods identified in the application are not limited to "high fashion goods" but encompass even inexpensive clothing items. [TTABlog query: I wonder if Applicant's goods ever find their way into Filene's Basement?]

Weighing the relevant du Pont factors, the Board found confusion likely, and it affirmed the refusals to register.

Text Copyright John L. Welch 2009.

Opposer Lays Egg at TTAB: Fails to Prove Priority in Edible Bird's Nest 2(d) Tussle

Royal King's Section 2(d) opposition to registration of the mark ROYAL NEST & Design (shown immediately below) for "edible bird's nests" never took flight because Opposer failed to prove priority. Opposer provided no evidence of priority, failing to properly introduce its registrations into the record and offering inconclusive admissions by Applicant. Royal King, Inc. v. TJ Seven Incorporation, Opposition No. 91178271 (January 12, 2009) [not precedential].


Standing: Proof of standing does not require proof of prior rights, and so Opposer Royal King satisfied the standing requirement by submitting a PTO office action in which its application to register the mark shown below was refused under Section 2(d) in light of the here-opposed application.


Priority: Royal King pleaded several registrations in its notice of opposition but failed to introduce the registrations into evidence in compliance with Rule 2.122(d). It attached copies of some of the registrations to its trial brief, but that was "too little, too late." Not only does the Board not consider evidence submitted for the first time with a final brief, but even if timely submitted, the mere copies were not "status-and-title copies" as required by the applicable version of the Rule. [TTABlog note: The reader will recall that Rule 2.122(d) was changed effective August 31, 2007, to allow submission of electronic records of the registrations with the initial pleading].

Royal King pointed to its requests for admissions, to which Applicant did not respond, thereby making the requests admitted. But those admissions were of no help in proving prior use, nor in proving that Royal King's registrations are valid and subsisting.

The only reference to the pleaded registrations is in Request for Admission No. 5, which asks applicant to: “Admit that Applicant is aware of the existence of the following registrations for ROYAL KING and marks that include ROYAL KING, and the design: [followed by list of pleaded registrations].” At best, this may be deemed to establish status, but it certainly does not establish opposer’s title to any of the pleaded registrations.

The Board concluded that Opposer had failed to prove priority, and so it dismissed the opposition.

Text Copyright John L. Welch 2009.

Cosmopolitan Magazine Overwhelms "COSMO.COM" Applicant in TTAB 2(d) Opposition

Hearst Communications kicked the living you-know-what out of Applicant Charles Browning Wilson in his attempt to register the mark COSMO.COM for "providing on-line information on available entertainment in various cities." Opposer relied on 31 registrations for marks comprising or containing COSMOPOLITAN or COSMO, established its COSMOPOLITAN mark as famous for magazines, and proved actual confusion. The Board sustained the opposition under Section 2(d). Hearst Communications, Inc. v. Charles Browning Wilson, Opposition No. 91120453 (January 16, 2009) [not precedential].


Fame: Because fame plays the role of dominatrix in the likelihood of confusion analysis, the Board first considered this du Pont factor. The mark COSMOPOLITAN has been in use for magazines for more than a century. In 1998 the monthly circulation averaged 2.6 million copies in the USA, and since 1991 Opposer has published more than 500 million copies of magazines under the marks COSMOPOLITAN and COSMO GIRL. Annual advertising expenditures exceeded $16 million.

The Board therefore found the COSMOPOLITAN mark famous for magazines, and this factor "weighs heavily in Opposer's favor." As to Opposer's other goods and services, the mark "may enjoy some renown," but the Board was not prepared to say the mark is famous therefor.

Family of Marks: Sorry, Hearst, but you didn't prove a family of marks: "the mere fact of adoption, use and/or registration of several marks incorporating COSMOPOLITAN or COSMO ... does not in itself prove that a family of marks exists." Lacking was evidence that "a family of marks has been promoted together." [Tip from the TTABlog: If you want to establish a family of marks, you might try using various given names with your mark: like Mary COSMO, Fred COSMO, Grandpa COSMO].

Comparing the Marks: The Board focused on Hearst's marks COSMOPOLITAN.COM for online computer services and on its famous COSMOPOLITAN mark for magazines. It noted also that Opposer often uses COSMO in connection with its goods and services, and that third parties refer to Opposer and its mark as "Cosmo." The Board concluded that, "simply put," consumers will perceive COSMO.COM as similar to Opposer's marks COSMOPOLITAN and COSMOPOLITAN.COM.

Comparing Goods and Services: Applicant Wilson's services are identical to Opposer's "computer services, namely providing an interactive on-line computer database featuring portions of various magazines and articles in the fields of ... entertainment news," and Applicant's services are closely related to Opposer's magazine. And so this factor pointed in Opposer's direction.

Trade Channels and Conditions of Sale: Because the parties' on-line computer services are identical, the Board must presume that they are rendered in identical channels of trade to the same consumers. These ordinary consumers would exercise only ordinary care in making their purchasing decisions. As to Opposer's magazines, portions appear on its website and so wind up "in the hands of the same consumers" as Applicant's services.

Actual Confusion: Opposer submitted evidence of many misdirected emails produced by Applicant in response to discovery requests. The emails concerned subscription matters or comments regarding the magazine. Applicant contended that these emails constituted hearsay and in any case showed mere carelessness, not confusion. The Board sided with Opposer:

"Applicant himself states that '[i]t is safe to assume that these individuals simply guessed ... that the cosmo.com domain name was the property of Opposer.' That is exactly the point. Given the fame of the COSMOPOLITAN mark for magazines, and that opposer operates a website, coupled with the fact that opposer's famous mark is often shortened to COSMO, it is not surprising that consumers have misdirected emails to applicant. There is no indication that consumers misdirected emails as a result of carelessness; rather we can only conclude that there is a perceived connection between opposer and applicant."

This evidence of actual confusion is "probative and indicative of a likelihood of confusion." It is not hearsay because it is not offered to prove the truth of the consumers' statements therein.

Conclusion: The Board concluded that the du Pont factors, "on balance," favor a finding of likelihood of confusion. [TTABlog comment: "on balance" with a heavy evidentiary thumb on Opposer's side of the scale."]

TTABlog postscript: I was going to [try to] say something clever about "Charlie Wilson's War," but I shan't.

Text Copyright John L. Welch 2009.

Finding Dissimilarity of "BIOMARINE" and "BIOMARIS" Marks Dispositive, TTAB Dismisses 2(d) Opposition

Despite overlapping goods and presumably identical trade channels, the Board dismissed a Section 2(d) opposition to registration of the mark BIOMARINE & Design for non-medicated skin care preparations, finding it not likely to cause confusion with the registered mark BIOMARIS for skin cleansing creams and related products. In a mere eight pages, the Board ruled that the marks are just too dissimilar to support Opposer's Section 2(d) claim. Walter Brachmann Gmbh & Co. KG v. Pro-Life Importacao E Exportacao LTDA, Opposition No. 91177890 (January 6, 2009) [not precedential].


Opposer chalked up a cosmetic victory in a skirmish involving its submission of a European Community Decision of the Office for Harmonization in the Internal Market. The Board agreed that the decision constitutes an official record admissible via notice of reliance. However, it pointed out that the OHIM decision "has no preclusive effect upon the instant case, and has little or no probative value in reaching our likelihood of confusion determination herein."


When it came to the comparison of the marks, however, Opposer ran out of luck. It argued that the marks "share the first seven letters in the same order" and thus "are substantially identical visually and in the commercial impressions they engender and they are most similar aurally." The Board disagreed:

Applicant's mark is highly distinctive visually, having a wave design within the letter "O." Although opposer is correct in noting that the marks are identical as to the first seven letters, the two marks sound different in their entireties. As to connotations, applicant's term "biomarine" has a readily recognizable meaning, i.e., a combination of "bio-" (biological) and "marine" (sea). The record demonstrates no readily apparent connotation associated with opposer's "Biomaris" mark.

The Board therefore concluded that the marks are "dissimilar as to their commercial impressions" and it dismissed the opposition.

TTABlog comment: Hmmm. The marks seem kinda similar to me. Notably absent from the decision is the often-cited maxim that "when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion."

Text Copyright John L. Welch 2009.

Outback Steakhouse Fails to Prove Relatedness of Bottled Water and Beer; TTAB Dismisses 2(d) Opposition

A half-baked, watered-down effort by Outback Steakhouse led to a Section 2(d) setback as the Board dismissed an opposition to registration of the mark AUSTRALIAN OUTBACK RAIN & Design (shown below left) for "bottled drinking water" [AUSTRALIAN OUTBACK disclaimed], finding it not likely to cause confusion with the registered marks OUTBACK for beer and baked goods and OUTBACK STEAKHOUSE & Design (below right) for beer. Outback Steakhouse of Florida, Inc. and OS Asset, Inc. v. Waterworldwide Pty Ltd., Opposition No. 91161384 (January 7, 2009) [not precedential].


Opposers' problems began when they pleaded 25 registrations but properly introduced only three into the record. They claimed that their marks are "commercially strong" and have "extensive recognition and renown," but they relied solely on "purported facts and anecdotal evidence gleaned from the news articles submitted via their notice of reliance." The Board, however, cannot accept such printed publications as proof of the facts stated therein: the articles are hearsay and serve merely as evidence that the content appeared and the public was exposed to that content. Therefore, the Board was unable to find that Opposers' marks are famous for purposes of Section 2(d).

Comparing the parties' marks, the Board found that, with respect to Opposers' OUTBACK mark, the similarities of the marks slightly favored Opposers. However, as to Opposers' logo mark, the parties' marks have different commercial impressions and overall are not similar.

As to the goods, the Board noted that it "would be remiss if [it] did not point out that there is absolutely no evidence in the record on this subject." Instead, Opposer relied on previous Board decisions finding a likelihood of confusion between either restaurant services and beverages, or alcoholic and non-alcoholic beverages. "Such reliance is misplaced. First, restaurant services are not at issue in this case. Second, it is well-settled that each case must be decided on its own set of facts of record."

Nonetheless, the Board took notice that "both beer and bottled drinking water are beverages which may be sold in the same retail stores to the general consuming public." However, there is no per se rule that alcoholic and non-alcoholic products are related products. The goods are "very different inasmuch as beer is an alcoholic beverage (sold in controlled circumstances to those of legal age) and bottled water is more akin to soft drinks or health beverages." There was no evidence of record that these products emanate from the same source, nor that consumers would expect them to.

As to Opposers' baked goods, the differences between those goods and bottled water "are too great to find a likelihood of confusion in the absence of any evidence to support such a conclusion."

And so this du Pont factor weighed in favor of Applicant.

Finally, as to channels of trade, the goods of both parties may be found in the same retail stores, but "our cases caution that little can be concluded merely from the fact that two items can both be found in retail outlets such as a grocery store or served in a restaurant. *** Should we follow that reasoning, we would come to the same conclusion in nearly every case involving food items and/or beverages." The Board concluded that this factor is neutral or slightly favors Opposers.

Balancing all the relevant du Pont factors, the Board ruled that Opposers had failed to demonstrate that Applicant's bottled water is sufficiently related to Opposers' beer (let alone baked goods) that confusion is likely. And so it dismissed the opposition.

Text Copyright John L. Welch 2009.

TTAB Dismisses Tootsie Roll's "MISTER FLUFFY" Opposition for Failure to Establish Priority

Tootsie Roll swung and missed in its opposition to registration of the mark MISTER FLUFFY for candy. Tootsie's own registrations for FLUFFY STUFF and FLUFFY STUFF COTTON CANDY POPS were not properly submitted and it failed to prove prior common law use. Ergo, the Board dismissed the opposition. Tootsie Roll Industries LLC v. Cormorant Group LLC, Opposition No. 91178031 (January 6, 2009) [not precedential].


Standing: The threshold issue for the Board was Tootsie's standing: Tootsie alleged ownership of the two registrations, as well as common law rights. It attempted to submit its registrations with a Notice of Reliance but provided only ordinary copies rather than the status-and-title copies required by Rule 2.122. The Board therefore refused to consider the two registrations.

"If opposer had introduced acceptable evidence of its ownership of the asserted registrations, that would have been adequate to show standing."

The Board then looked to Tootsie's requests for admissions. Applicant had failed to answer, and so the requests were deemed admitted. One request made reference to "Opposer's Marks FLUFFY STUFF and FLUFFY STUFF COTTON CANDY POPS," and the Board construed that language as sufficient to show that Tootsie owns those two marks. It thus concluded that Tootsie had made "the minimal showing necessary to establish its interest in the case, and thus its standing. "


Priority: Of course, an opposer must establish priority in order to prevail on a Section 2(d) claim. "Here, too, if opposer had introduced acceptable evidence of its ownership of the asserted registrations, priority would not be an issue. See King Candy Co. v. Eunice King's Kitchen, Inc., 182 USPQ 108, 110 (CCPA 1974)."

The only other evidence of record consisted of the admissions. However, "[c]onspicuous by its absence from the admissions is any mention of opposer's use of the FLUFFY STUFF or FLUFFY STUFF COTTON CANDY POPS marks prior to the filing date of the opposed application."

Therefore, Tootsie failed to prove priority and the Board dismissed its likelihood of confusion claim.

TTABlog Practice Pointer: Read Rule 2.122(d). As shown here, failure to comply may be fatal to your claim.

TTABlog comment: Barack Obama will be sworn in today as Presidential No. 44, and I'm blogging about MR. FLUFFY? There something out of kilter here.


Text Copyright John L. Welch 2009.

Precedential No. 1: Section 66(a) Applicant Wins TTAB Priority Contest in "FRUITOLOGY" 2(d) Dispute

In a priority battle involving two applications to register the mark FRUITOLOGY for "overlapping or legally identical goods," the Board found that the Section 66(a) application filed by French company Danone had priority over the Section 1(b) application of Texas company, Precision Formulations. The Board therefore granted summary judgment to Danone in its opposition and granted Danone's motion to dismiss in the other opposition. Compagnie Gervais Danone v. Precision Formulations, LLC, 89 USPQ2d 1251 (TTAB 2009) [precedential].


Precision's filing date of February 21, 2007 for its ITU application was its constructive first use date. The question was: could Danone beat that date?

As to Danone's application under Section 66, the applicable filing date was May 22, 2007, the date of issuance of its International Registration. See TMEP Sec. 1904.1(b). As to its constructive first use date, Section 66(b) provides that a Section 66(a) application:

...shall constitute constructive use of the mark, conferring the same rights as those specified in section 7(c), as of the earliest of the following:
(1) The international registration date, if the request for extension of protection was filed in the international application.
(2) The date of recordal of the request for extension of protection, if the request for extension of protection was made after the international registration date.
(3) The date of priority claimed pursuant to section 67.

Under Section 67, "an applicant is entitled to claim a date of priority when it holds an international registration, makes a request for extension of protection (application) to the U.S., includes a claim of priority based on a right of priority under Article 4 of the Paris Convention for the Protection of Industrial Property, and the date of the international registration is within six months of the filing date of the application underlying the international registration."

Danone's International Registration claimed convention priority based upon a French application filed on December 6, 2006, and issuing on May 11, 2007.

Therefore Danone is entitled to a priority date of December 6, 2006. The Board consequently granted summary judgment to Danone on its Section 2(d) likelihood of confusion claim.

Danone's motion to dismiss Precision's opposition added another wrinkle. Precision had pleaded that it first used its mark in February 2007 and that Danone had filed an "intent-to-use application" on May 22, 2007. When Danone moved to dismiss for failure to state a claim, Precision argued that, because its notice of opposition must be construed in a light most favorable to it, the Board must accept as true its allegations regarding filing dates and priority.

Danone argued that its underlying application is "incorporated by reference" in the notice of opposition and therefore is "available to the Board for consideration on the motion."

The procedural problem was this: the Board could not consider documents outside the pleadings, so as to treat this motion as a motion for summary judgment, because in proceedings commenced after November 1, 2007, the TTAB Rules do not permit motions for summary judgment until the party has made its initial disclosures (except for motions asserting claim or issue preclusion or lack of subject matter jurisdiction).

However, on a motion to dismiss for failure to state a claim, the Board may look at other facts, including the filing date, filing basis, priority date, etc., in an application that is the subject of the opposition. Moreover, although the Board must accept as true all "well-pleaded allegations," here Precision's assertion that Danone filed an "intent-to-use" application is incorrect and "not well pleaded." Danone filed a request for extension of protection under Section 66(a), not a Section 1(b) application.

[T]he Board is under no obligation to accept such allegations as true. The Board will not take as true any allegations contradicting facts in the record.

The Board concluded that Precision's allegations "do not establish a claim of priority over Danone's effective filing date of December 6, 2006, which date is claimed in the subject application filed under Section 66 of the Trademark Act." Therefore "the allegations do not allege such facts that, if proved, would establish that Precision is entitled to the relief sought."

And so, the Board granted Danone's motion to dismiss Precision's opposition.

Note that both of Danone's motions were granted contingent upon its application maturing to registration. See Sections 66(b) and 7(c).

Text Copyright John L. Welch 2008.

After Careful Meditation, TTAB Finds "OSHO" Generic for ... Guess What?

The Board granted a petition for cancellation of three registrations for the term OSHO for goods and services related to religion, philosophy, and science, on the ground that the term is generic. It found that the "primary significance of OSHO is as a religious movement, and not as a source identifier for goods or services." Osho Friends International v. Osho International Foundation, Opposition Nos. 91121040, 91150372, et al., Cancellation No. 920319321 (January 13, 2009) [not precedential].

Osho
Indian mystic and spiritual teacher Rajneesh Chandra Mohan adopted the name "Osho" just before his death in 1990. He urged his followers to spread his teaching as broadly as possible, and to that end they opened meditation centers and camps that offered his meditation techniques. These centers operated independently, and Osho "gave each center a name as a gift and a certificate bearing such name." He requested that the centers use "Osho" as part of their names "so people would recognize them as meditation centers based upon his teachings and ideas."

Plaintiff is an association of individuals and centers involved in spreading the teachings of Osho. They seek to make descriptive or generic use of the term OSHO for many of the products and services that are the subject of Defendant's registrations and applications.

The parties agreed that Osho never owned or used OSHO as a mark. In fact he expressed the view that meditations do not lend themselves to trademark protection:

Maharishi Mahesh Yogi has copyrighted transcendental meditation and just underneath in a small circle you will find written TM – that means trademark!

For ten thousand years the East has been meditating and nobody has put trademarks upon meditations. And above all, that transcendental meditation is neither transcendental nor meditation … just a trademark.

I told [my secretary] to reply to these people, "You don't understand what meditation is. It is nobody’s belonging, possession. You cannot have any copyright. Perhaps if your country gives you trademarks and copyrights on things like
meditation, then it will be good to have a copyright on stupidity. That will help the whole world to be relieved … Only you will be stupid and nobody else can be stupid; it will be illegal."

Defendant pointed out that there are no dictionary definitions for OSHO, but the Board noted that this may simply reflect the small number of individuals who are followers of Osho. Plaintiff submitted reference books and other publications using OSHO as a generic term for a religious and meditative movement. Competitors and others use OSHO generically, and Defendant itself uses OSHO as a generic term.

The Board therefore concluded that OSHO is generic because it "is understood by the public to refer to these meditation techniques as well as the meditative and religious movement that developed around them."

We recognize that OSHO does not present a clear case of a generic noun, but rather often appears as a generic adjective. Certain of the evidence referenced above points to use of OSHO as a generic noun for a religious or meditative movement. More commonly, however, the term OSHO appears as an adjective, directly naming the most important or central aspect or purpose of defendant's goods and services, that is, that they are based upon the religious and meditative teachings of the mystic Osho. As such, this term is generic and should be freely available for use by competitors.

The Board therefore granted the petition to cancel Defendant's three registrations for the mark OSHO alone.

Plaintiff also challenged, on the ground of mere descriptiveness, one application for OSHO alone, and one registration and eight applications for OSHO-containing marks [e.g., OSHO ACTIVE MEDITATIONS, OSHO ZEN TAROT, OSHO KUNDALINI MEDITATION, etc.] The Board granted the petition for cancellation and sustained all nine oppositions, finding that the involved goods and services "are based upon the meditative techniques as well as the meditative and religious movement arising from the teachings of the mystic Osho."

And so the term OSHO remains free for use by all followers of the late Indian mystic.

Text Copyright John L. Welch 2009.

TTAB Finds Confusion Likely Between "IRON MAN" for Bodybuilding Magazines and "IRONMAN" for Nutritional Supplements

In October 2008, the Board held oral argument in Boston in this case, and the attendees were treated to a spirited argument and discussion. This posting will not attempt to cover every issue raised, but instead will hit the high points of the 30-page decision, in which the Board sustained a Section 2(d) opposition to registration of the mark IRONMAN in the design form shown below, for nutritional supplements and related goods, finding the mark likely to cause confusion with Opposer's common law mark IRON MAN for magazines. Ironman Magazine v. World Triathlon Corporation, Opposition No. 91167894 (January 12, 2009) [not precedential].


The Board noted that "this case presents a somewhat unusual situation in that the parties involved have both used similar marks for a number of years. *** However, through the years both parties, and in particular applicant, have expanded the goods and services in connection with which they use their marks, and the marks themselves have undergone some changes."

Although there are obvious differences between the goods:

Opposer has shown that nutritional supplements are related to bodybuilding magazines. The readers of bodybuilding magazines are interested in nutrition and nutritional supplements, and opposer's magazine and ancillary publications contain articles on or are devoted to nutrition, including discussing and endorsing nutritional supplements. Many of the advertisements in the magazine are for nutrition products. Thus, the magazine and nutritional supplements are complementary in nature, and the purchasers are the same.

Moreover, opposer produces both magazines and nutritional supplements, thereby showing that both products can emanate from a single entity. It is true that opposer does not use the same mark for its supplements as it does for its magazine, but this is not because customers would not associate both types of products with a single source. On the contrary, it is because the mark IRON MAN for supplements is likely to cause people to view the goods as emanating from the publisher of IRON MAN magazine that opposer has chosen to use a different mark for its supplements, in order not to jeopardize its advertising revenue from third-party supplement manufacturers.

The Board found Opposer's mark to be "strong and well-known" in the world of bodybuilding. Applicant submitted substantial evidence as to the fame of its IRONMAN marks, but this evidence is irrelevant to the fifth du Pont factor, the fame of the prior [i.e., opposer's] mark. Applicant failed to point to any case in which the fame of the junior user's mark is a factor in favor of a finding that confusion is unlikely.

The Board viewed the marks as "extremely similar." Although Applicant's mark includes a dot over the "M", the word IRONMAN is clearly the dominant portion of the mark.

... even if some consumers recognize the combination of the M and the dot as forming an abstract design of a human figure, the design merely reinforces the meaning of the word IRONMAN, a significance that is equally applicable to opposer's mark IRON MAN for a magazine for bodybuilders. Therefore, the marks convey the same commercial impression, and the design element in applicant's mark does not serve to distinguish the marks.

Applicant attempted to show that its IRONMAN & Design mark is famous, but its evidence was unconvincing. The evidence did not show that "the IRONMAN with Dot design is well-known for nutritional supplements, and it is for nutritional supplements that applicant is attempting to register its mark."

Even if we could say that the IRONMAN with Dot design had achieved fame for triathlon contest exhibitions, and while the fame of a mark may give it a greater scope of protection against later users, a later user may not build up its mark in order to take away rights from an earlier user, or use the fame the later user has built up in one area to expand into goods that are related to those of an earlier user, thereby limiting the scope of protection to which that earlier user is entitled.

In sum, the "slight differences in appearance do not outweigh the identical sound, connotation and commercial impression of the marks."

As a final note, the Board brushed aside Opposer's argument that Applicant's use of its mark "could result in safety issues that are outside opposer's control." Pharmaceuticals raise such concerns, but nutritional supplements do not fall into that category.

Considering all the relevant evidence, the Board found confusion likely. As required, it resolved any doubts in favor of opposer, "which began using its mark approximately 70 years prior to applicant's use of its mark on the identified goods."

Text Copyright John L. Welch 2009.

"CHARLESTON GATE" Merely Descriptive of Jewelry Copying Charleston Gate Designs, Says TTAB, Not Surprisingly

In another gem of a case that warrants addition to our WYHA? collection, the Board affirmed a Section 2(e)(1) refusal to register the mark CHARLESTON GATE, finding it to be merely descriptive of "jewelry, namely, earrings, necklaces, pins, slides, rings, bracelets, pendants, charms, key rings." In re B. Gould Jewelry, Inc., Serial No. 78836910 (December 22, 2008) [not precedential].


Examining Attorney Michael A. Wiener maintained that the mark is merely descriptive because the goods "contain the designs of the famous gates of Charleston, South Carolina, or replications thereof." He provided substantial evidence indicating that "Charleston, South Carolina, is famous for the design of the large hand-crafted gates built over centuries that dot the city. The term 'CHARLESTON GATE' refers to those gates and the renowned designs of those gates." Various third-party websites offer jewelry based on the designs of the Charleston gates, at least one of the websites featuring Applicant's goods.

Applicant B. Gould Jewelry did not deny that its designs "are interpretations of wrought iron structures located in Charleston South Carolina." However, it feebly contended that "[t]he goods are not a gate; the goods do not comprise a gate; no part of the goods is a gate; the goods do not, and could not function as, or be used as, a gate. The jewelry has no feature or characteristic associated with gates that are in common use."


The Board slammed the gate on Applicant's appeal:

"The evidence establishes that CHARLESTON GATE identifies the designs applicant employs in its jewelry. The evidence also establishes that relevant consumers will recognize CHARLESTON GATE as identifying those designs. Indeed, applicant’s own marketing is based on this assumption. The evidence belies applicant's claim that these designs are obscure and unknown to potential purchasers. In this regard, it is applicant’s own use of CHARLESTON GATE which is most probative of the descriptive significance of the mark in relation to the goods."

In short, "it is clear that the mark merely describes the designs which are the essential feature of the goods, jewelry." The Board therefore affirmed the refusal to register.

Text Copyright John L. Welch 2009.

USPTO Issues Annual Report for Fiscal 2008

On November 17, 2008, the USPTO issued its Performance and Accountability Report for Fiscal Year 2008 (downloadable here). The Report states that "For the third year in a row, Trademarks has met and exceeded all of its agency performance goals." (p. 5)


The accompanying press release provides the following summary of the Trademark operation:

• Trademarks ended its year with first action pendency at three months. Trademarks has maintained its first action pendency within the 2.5 to 3.5 month range for more than 18 months, a historic first. Disposal pendency was also maintained at record low levels, ending the year with 11.8 months pendency for cases without inter partes or suspended cases and at 13.9 months for all disposals. This disposal pendency is the lowest in 20 years.


• This year saw a record number of applications filed electronically--approximately 268,000 applications comprising 390,000 classes. This represented a record rate of filing; 96.9 percent of all applications were filed electronically.


• Quality remained high throughout the year with a first action compliance rate of 95.8 percent and a final action compliance rate of 97.2 percent. Both measures exceeded performance expectations.

In a section entitled "Fiscal Year 2008 USPTO Workload Tables" (beginning at page 114), the Report provides a raft of data regarding the PTO's operations, including:

• Summary of Trademark Examining Activities (p.129)
• Trademark Applications Filed for Registration and Renewal and Trademark Affidavits Filed (p. 130)
• Summary of Pending Trademark Applications (p. 131)
• Trademarks Registered, Renewed, and Published Under Section 12(c) (p. 132)
• Trademark Applications Filed by Residents of the United States (p. 133)
• Trademarks Registered to Residents of the United States (p. 134)
• Trademark Applications Filed by Residents of Foreign Countries (p. 135)
• Trademarks Registered to Residents of Foreign Countries (p. 137)
• Summary of Contested Trademark Cases (p. 139)
• Actions on Petitions to the Commissioner of Patents and Trademarks (p. 140)
• Cases in Litigation (p. 141)
• Top 50 Tradmark Applicants (p. 144)
• Top 50 Trademark Registrants (p. 144)

With regard to our favorite tribunal, the Report states:

"As in past years, the USPTO was heavily involved in shaping IP law and policy through precedential decisions issued by the Agency's Boards and through domestic litigation. The Trademark Trial and Appeal Board (TTAB) issued more than 50 decisions affecting Agency practice and substantive law of trademark registration." (pp. 26-27)

The Board disposed of about 12,000 cases in FY 2008 (795 at final hearing) and received about the same number of new filings. (See Table 23 at page 139).

Text Copyright John L. Welch 2009.

Appeal of "BANANA CHAIR" 2(e)(1) Refusal Bears Fruit at TTAB

In a rare unillustrated opinion authored by Judge Bucher, the Board reversed a Section 2(e)(1) refusal to register the mark BANANA CHAIR, finding it not merely descriptive of "furniture, chair." The Board concluded that "[a]lthough the chair has a curved shape that may suggest the shape of a banana, the chair does not in fact look like a banana, and the term Banana Chair does not imediately and directly describe the shape." In re Future First LLC, Serial No. 78769110 (December 22, 2008) [not precedential].


The Examining Attorney contended that "banana chair" is the "common commercial name for a curved, legless rocking chair that is not associated with any one particular source." The PTO's evidence, however, was not convincing. It was unclear whether some of the website evidence was actually referring to Applicant's chair. And use of the term "banana chair" by "an individual posting a comment on a blog or other online forum ... without proper capitalization is not evidence that he or she believes the term is a common commercial name, nor is it evidence that readers of the posting regard it as such."

Given the ability of Internet search engines to retrieve many uses of almost any term, we cannot find on the basis of these isolated uses of "banana chair" as a common commercial name by individuals on blogs or public access sites such as Craig's List that this term is clearly the name of these types of chairs.

Nor does Applicant's chair look like a banana (as may readily be seen by the illustrations provided here by the TTABlogger).


Interestingly, the Board pointed out that its decision stemmed solely from the record evidence before it. "We make no comment on what the result might be on a different record, such as what might be adduced in an inter partes proceeding." [TTABlog query: is the BANANA CHAIR application ripe for a bunch of oppositions?]

And so the Board reversed the refusal.

Text Copyright John L. Welch 2009.

"HYBRID HEAVE" Not Merely Descriptive of Deep-Water Energy Storage System, Says TTAB

Concluding that the term "hybrid" provides little, if any, useful information regarding Applicant's goods, and that the term "heave" is at most indirectly related to the goods, the Board jettisoned a Section 2(e)(1) refusal to register the mark HYBRID HEAVE, finding the mark not merely descriptive of an "energy storage and recovery system for active heave comprised primarily of a machine flywheel and a motor-generator for generating electricity" in class 7. In re Williams, Serial No. 77100894 (December 30, 2008) [not precedential].


Applicant's goods are used in offshore shipboard drilling operations, using flywheels to store energy. The Examining Attorney argued that HYBRID refers to the fact that the goods combine two or more technologies, and that HEAVE refers to the environment in which the goods are used: i.e., the ocean heaving up and down.

The Board gave the PTO's argument the old heave-ho, instead finding reasonable Applicant's assertion that:

"potential purchasers would perceive HYBRID, as used here, as suggesting 'clean energy at sea' or something similar, based on the general use of hybrid in relation to motor vehicles and other goods. Also, we likewise find reasonable applicant's argument that potential purchasers would find the combination of HYBRID and HEAVE in the mark incongruous, if not nonsensical."

Indeed, the Board found, "HYBRID makes no sense as a modifier of HEAVE. Any attempt to make sense of the combination of terms in the mark would require complex, multistage mental process."

Moreover, the Board assumed that "the potential purchasers of these expensive and sophisticated systems are themselves technically sophisticated," and are "more likely to perceive the HYBRID HEAVE mark as incongruous or nonsensical."

Accordingly, the Board reversed the refusal.

Text Copyright John L. Welch 2009.

TTAB Brew-Ha-Ha: Panel Divides on Grounds for "MOCCA" Refusal

It was a tempest in a coffeepot, as the TTAB panel agreed and disagreed over the registrability of the mark MOCCA for "a coffee product, namely coffee beans, and not including ground-coffee derived coffee." The panel members agreed that the mark is merely descriptive of the goods, but split on the issue of likelihood of confusion with the registered mark MOCA & Design, shown immediately below, for "coffee and coffee derivatives" [MOCA disclaimed]. The majority reversed the Section 2(d) refusal to register, with Judge Rogers dissenting. In re Barrie House Coffee Co., Inc., Serial No. 76678951 (December 18, 2008) [not precedential].


Mere Descriptiveness: Somewhat puzzled by the Applicant's convoluted identification of goods, the Board concluded that its goods, when ground down to their essence, are coffee beans. Examining Attorney Jaclyn N. Kidwell provided dictionary definitions and webpages referring to the term "mocha" as a dark coffee made from Arabian beans. Observing that Applicant's mark MOCCA is "merely a misspelling or the phonetic equivalent of the descriptive or generic term," and noting that a misspelling "is no more registrable than the descriptive or generic word itself" absent some play on words or unique presentation, the Board affirmed the Section 2(e)(1) refusal.



Likelihood of Confusion: The factor in dispute was the similarity of the marks. Because the words MOCCA and MOCA are highly descriptive of the goods, the panel majority ruled that "purchasers will be able to distinguish the marks because the common elements are so highly descriptive that consumers will perceive the terms MOCCA and MOCA as ordinary descriptive speech, not as trademarks."

There is no reason to believe, and there is no evidence on the point, that consumers are likely to perceive the word MOCA in the registered mark as anything other than a type, not a brand, of coffee. To hold otherwise gives registrant the exclusive right to use the word 'Moca' when it is a privilege that it holds in common with all others, including applicant.

The panel majority (Judges Bergsman and Wellington) found the marks "not similar in terms of their appearance, sound, meaning and commercial impression," and it/they therefore reversed the Section 2(d) refusal to register.

Judge Rogers, in dissent, asserted that the word MOCA in the cited mark, even though disclaimed, "is still a significant element of the mark," and he noted that even weak marks are entitled to protection against registration of similar marks for identical goods. Moreover, he pointed out, any doubt on the question of likelihood of confusion should be decided in favor of the registrant.

In sum, Judge Rogers would have affirmed the Section 2(d) refusal.

TTABlog comments: Judge Rogers relies heavily on the recent RSI Systems case (TTABlogged here), where the disclaimer of RSI in the applicant's mark did not prevent a finding of likely confusion. But there it was the applicant who was trying to avoid a Section 2(d) finding by means of a disclaimer; the term RSI was not disclaimed in the cited registrations. Here, significantly, it was the registrant who disclaimed rights in MOCA. Judge Rogers' approach would, it seems, render that disclaimer meaningless.

One might note that Applicant's attorney was the frequent TTAB appellate advocate, Myron Amer. It appears that Mr. Amer appeals every final refusal, no matter how formidable the challenge. His briefs on appeal are usually about three pages long, so presumably his clients feel that it's a shot worth taking. Here are two of his cases for your consideration, one a victory, one a defeat.

Text Copyright John L. Welch 2009.

TTAB Issued 55 Precedential Decisions in 2008

The TTAB issued fifty-five (55) precedential decsions in 2008, a slight drop-off from last year's total of 67. Its fraud ruling in University Games (No. 27) and its rulings on the applicant's lack of bona fide intent in the ENYCE (16) and SEX ROD (41) cases may have been the most noteworthy. In the MOSKOVSKAYA vodka case (6), the Board clarified the meaning of "ordinary American purchaser" under the doctrine of foreign equivalents. And in a half-dozen or so procedural rulings, it dealt with various aspects of the TTAB rules as amended in 2007.


Section 2(a) - Disparagement:

• Precedential No. 52: TTAB Affirms 2(a) Disparagement Refusal of "HEEB" for Clothing and Entertainment Services
• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging

Section 2(a) - Suggesting a False Connection:

• Precedential No. 42: TTAB Reverses 2(a) False Connection Refusal of "MARIA CALLAS" for Jewelry
• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging
• Precedential No. 23: Finding a (2)(a) False Connection, TTAB Cancels "TWIGGY" Registration for Clothing

Section 2(a) - Scandalous:

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

Section 2(d) - Likelihood of Confusion:

• Precedential No. 46: TTAB Affirms 2(d) Refusals of "RSI" Design Mark for Ink Jet Printers
• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging
• Precedential No. 23: Finding a (2)(a) False Connection, TTAB Cancels "TWIGGY" Registration for Clothing
• Precedential No. 40: "SAM EDELMAN" Confusingly Similar to "EDELMAN" for Handbags, Says TTAB
• Precedential No. 37: Judge Rogers Beams as Section 2(d) Case is Tried Without Discovery
• Precedential No. 21: TTAB Finds "LA PEREGRINA" and "THE PILGRIM" Confusingly Similar for Jewelry Per Doctrine of Foreign Equivalents
• Precedential No. 18: TTAB Dismisses "SPORTSMAN'S WAREHOUSE" Cancellation Petition, Finding No Likelihood of Confusion and No Fraud
• Precedential No. 17: Finding the Marks Entirely Different, TTAB Grants Judgment on the Pleadings in 2(d) Opposition
• Precedential No. 16: TTAB Sustains Opposition to ITU Application, Applicant Lacked Bona Fide Intent
• Precedential No. 10: TTAB Sustains "VITAMILK" 2(d) Opposition, Again Rejects a Morehouse Defense

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

• Precedential No. 54: "DEC" Merely Descriptive of Nuclear Decay Batteries, Says TTAB
• Precedential No. 47: "BOBBLE POPS" Merely Descriptive of Candy, Says TTAB, Colorfully
• Precedential No. 32: Double Entendre Argument Remedies "THE FARMACY" 2(e)(1) Refusal, Says TTAB
• Precedential No. 29: TTAB Affirms 2(e)(1) Refusal of Japanese Term Meaning "Walking" for Footwear
• Precedential No. 1: TTAB Reverses Mere Descriptiveness Refusal of "SUGAR No. 11" For Futures Exchange Services and Finds Specimen of Use Acceptable

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

• Precedential No. 4: TTAB Affirms Triple Refusal of "NORMANDIE CAMEMBERT" for Cheese

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

• Precedential No. 44: TTAB Sustains 2(e)(3) Opposition to "HAVANA CLUB" for Cigars Made From Cuban Seed Tobacco
• Precedential No. 12: TTAB Sustains 2(e)(3) Opposition to "GUANTANAMERA" for Non-Cuban Cigars, Folk Song Notwithstanding
• Precedential No. 6: TTAB Clarifies Doctrine of Equivalents, Affirms 2(e)(3) Refusal of "MOSKOVSKAYA" for Vodka
• Precedential No. 4: TTAB Affirms Triple Refusal of "NORMANDIE CAMEMBERT" for Cheese

Section 2(f) - Acquired Distinctiveness:

• Precedential No. 8: Applicant Fails to Prove Acquired Distinctiveness for Sunglass Frame Product Design

Abandonment:

• Precedential No. 22: Finding Old "LASALLE" Automobile Mark Abandoned, TTAB Dismisses General Motors' Opposition for Lack of Priority

Failure to Function:

• Precedential No. 31: TTAB Reviews Specimen Brochure, Affirms Failure-to-Function Refusal
• Precedential No. 26: Specimens of Use Display Web Address, Not Service Mark Use
• Precedential No. 20: TTAB Finds Stitching Design on Jean Pockets Merely Ornamental

Fraud:

• Precedential No. 35: Despite Amendment of Application, TTAB Sustains Fraud Claim in "GRAND CANYON WEST" Opposition
• Precedential No. 27: Correction of Error in Goods Prior to Publication Creates Rebuttable Presumption of No Fraud, Says TTAB
• Precedential No. 18: TTAB Dismisses "SPORTSMAN'S WAREHOUSE" Cancellation Petition, Finding No Likelihood of Confusion and No Fraud
• Precedential No. 13: FRAUD! TTAB Cancels Four Registrations on Summary Judgment: Attorney Signed False Statements of Use

Genericness:

• Precedential No. 24: TTAB Affirms Genericness Refusal of "BOND-OST" for Cheese
• Precedential No. 15: TTAB Again Affirms Genericness Refusal of "HOTELS.COM" for ... Guess What?
• Precedential No. 11: TTAB Finds "REDUCER" Generic for Flow Meters

Lack of Bona Fide Intent:

• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging
• Precedential No. 16: TTAB Sustains Opposition to ITU Application, Applicant Lacked Bona Fide Intent

Ownership:

• Precedential No. 53: TTAB Decides Ownership Dispute over "JOYCE" for Dance Theater and Charitable Services

Pan American Convention:

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

Phantom Mark:

• Precedential No. 25: TTAB Affirms Refusal of Mark Having a Phantom Element

Procedural Issues:

• Precedential No. 55: TTAB Denies Cross-Motions for Summary Judgment Because Briefs Exceeded Page Limit
• Precedential No. 51: TTAB Dismisses Morehouse and Laches Defenses, Denies Summary Judgment in 2(d) Opposition
• Precedential No. 50: TTAB Grants Motion to Compel Proper Initial Disclosures
• Precedential No. 49: Failure to Serve Notices of Opposition Leads to Swift TTAB Dismissal
• Precedential No. 48: TTAB Resolves Procedural Spat Over Discovery Conference
• Precedential No. 45: TTAB Denies Petitioner's Motion to Amend, Grants Respondent's Motion for Judgment on the Pleadings
• Precedential No. 43: Absent TTAB Order, No Sanction for Failure to Provide Initial Disclosures
• Precedential No. 39: Evidentiary Errors Lead to Dismissal of 2(d) Opposition for Failure to Prove Priority
• Precedential No. 38: TTAB Dismisses Opposition as Untimely - Electronic Payment Incomplete and Faxed Filing Ineffective
• Precedential No. 34: TTAB Okays Stipulation Between Red Sox and "RAD SEX" Applicant to Waive Initial Disclosures
• Precedential No. 17: Finding the Marks Entirely Different, TTAB Grants Judgment on the Pleadings in 2(d) Opposition
• Precedential No. 9: TTAB Issues Non-Ultimate Sanctions for Failure To Comply With Board Order Compelling Document Production
• Precedential No. 7: TTAB Dismisses 2(d) and Dilution Opposition for Lack of Evidence and Inadequate Pleading
• Precedential No. 5: TTAB Dismisses Opposition for Opposer's Failure to Serve Prior to Filing
• Precedential No. 3: NFL Thrown for a Loss as TTAB Denies Request to Extend Discovery
• Precedential No. 2: TTAB Issues Sanctions For Discovery Abuses

Res Judicata/Collateral Estoppel:

• Precedential No. 19: TTAB Grants Summary Judgment Against Applicant Enjoined From Use and Registration of His Mark

Rule 2.61(b) - PTO Demand for Information:

• Precedential No. 4: TTAB Affirms Triple Refusal of "NORMANDIE CAMEMBERT" for Cheese

Single Artistic Work:

• Precedential No. 33: TTAB Affirms Refusal of "FREEDOM STONE" for Cornerstones as Title of a Single Work

Specimens of Use/Drawing:

• Precedential No. 36: Finding Specimen Doesn't Match Drawing, TTAB Affirms Refusal of "UPPER 90" for Clothing
• Precedential No. 33: TTAB Affirms Refusal of "FREEDOM STONE" for Cornerstones as Title of a Single Work
• Precedential No. 28: TTAB Finds Drawings OK, But Packing Label Specimen Fails to Show Service Mark Use
• Precedential No. 14: TTAB Affirms Three Refusals: Website Specimens Fail to Show Trademark Use
• Precedential No. 1: TTAB Reverses Mere Descriptiveness Refusal of "SUGAR No. 11" For Futures Exchange Services and Finds Specimen of Use Acceptable

Use in Commerce:

• Precedential No. 30: TTAB Grants Summary Judgment in Opposition Because Applicant Was Contractually Prohibited From Using Subject Mark

Text and Photographs Copyright John L. Welch 2008-9.

TTAB Posts January 2009 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled nine (9) hearings for the month of January, as listed below. These hearings will be held in the East Wing of the Madison Building. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.


January 6, 2009 - 2 PM: In re Steve Dworman Enterprises, Inc., Serial No. 76674485 [Section 2(d) refusal of IT REALLY WORKS for "TV and film production for others to make infomercials" in view of the registered mark IT WORKS for "preparing and placing advertisements for others, business marketing consulting services, and developing promotional campaigns for businesses"].


January 7, 2009 - 2 PM: In re The Boler Company, Serial No. 77059048 [Section 2(d) refusal of QUAANTUM for "trailer suspension systems, incorporating wheel end systems," in view of the registered mark QUANTUM for tires.]



January 13, 2009 - 11 AM: Nextel Communications, Inc. v. Motorola, Inc. , Opposition No. 91164353 [Opposition to registration of a sensory mark comprising an electronic chirp consisting of a tone at 1800 Hz played at a cadence of 24 ms ON, 24 ms OFF, 24 ms ON, 24 ms OFF, 48 ms ON, for two-way radios. Opposer Nextel contends that the tone serves as a trademark of Nextel, not Motorola]. [See the Board's February 2008 decision (TTABlogged here), sustaining Nextel's opposition to Motorola's application to register a 911 Hz chirp on the ground that it failed to function as a trademark.]


January 14, 2009 - 10 AM: Wal-Mart Stores, Inc. v. Loufrani, Oppositions Nos. 91150278, 91154632, and 91152145 [Two Wal-Mart oppositions to registration of the SMILEY & Design mark shown below left (face design disclaimed) for hundreds of identified goods and services, on the grounds of likely confusion with Opposer's previously-used design mark (below right) and failure to function as a mark (lack of inherent distinctiveness); Loufrani opposition to registration of the design mark shown below right for "retail department store services" on the grounds of abandonment and failure to function as a service mark].


January 14, 2009 - 2 PM: In re Cochran, Serial No. 78897985 [Section 2(e)(1) mere descriptiveness refusal of MANAGED AUDIT for "computer software for corporate taxpayers to manage federal, state and other regulatory audit processes"].

January 15, 2009 - 10 AM: In re Ben How, LLC, Serial No. 78918570 [Section 2(d) refusal of the mark I.O. METRO & Design for "retail furniture stores" in view of the registered mark METRO for "furniture, namely, upholstered seating, wooden tables, desks, cabinets, and chairs, and office furniture"].


January 15, 2009 - 11 AM: In re Investec Bank Limited , Serial No. 78477240 and 78979119 [Section 2(d) refusals to register the mark INVESTEC & Design for commercial banking; financing services; insurance services, and agency and brokerage services for bonds and securities, in view of the registered mark INVESTECH for financial research, analysis, and consulting services].


January 15, 2009 - 2 PM: In re Murray, Serial No. 77029078 [Section 2(d) refusal to register the mark shown below for "real estate listing" in view of the registered marks HASSLE FREE LISTING for "real estate advertising services" and HASSLE-FREE HOME SELLING for "real estate agency services"].


January 22, 2009 - 2 PM: In re OpBiz, LLC, Serial No. 77055011 [Section 2(d) refusal of HEART for "cocktail lounges; restaurant, and bar services" in light of the registered mark KOKORO for restaurant services].


Text Copyright John L. Welch 2009.