Mark Your Calendar: "MEET THE BLOGGERS V" is Set For Seattle INTA

Mike Atkins, of the Seattle Trademark Lawyer blog, will host the fifth annual "MEET THE BLOGGERS" get-together during the 2009 INTA Annual Meeting in Seattle. Don't miss the opportunity to meet the world's greatest trademark bloggers on Monday evening, May 18th, from 6 to 9 PM at the offices of Graham & Dunn. See Mike's posting (here) to rsvp. I'll see you there.

The offices of Graham & Dunn, on Pier 70 in lovely Puget Sound.
TTABlog query: Who, if anyone, owns the rights to the mark MEET THE BLOGGERS? I coined the term in 2005, and Marty Schwimmer and I hosted the first two events (San Diego and Toronto) under that title. Ron Coleman joined us for the third, in Chicago. And Jeremy Phillips (IPKAT) was responsible for the Berlin meeting. [Ms. Chestek! Ms. Pamela Chestek! Please pick up the white courtesy phone. We have a trademark ownership question!]

The Big Three in Chicago, 2007
TTABlog update: Ron Coleman at his Likelihood of Confusion blog, gives me some grief here regarding the MEET THE BLOGGERS "mark." When I picked that name, the Ben Stiller movie "Meet the Fockers" was still kicking around, and I thought "Bloggers" made a nice replacement for "Fockers." Five years later, MEET THE BLOGGERS doesn't look so clever. It just lies there like a dead tuna on a Seattle pier.

Text Copyright John L. Welch 2009.

Montana Senator Again Blocks "LAST BEST PLACE" Registrations

Montana Senator Max Baucus announced (here) on February 25th that he has once again included language in the fiscal year 2009 Omnibus appropriation bill that would prohibit the PTO from expending any funds toward registration of the mark LAST BEST PLACE. Former Senator Conrad Burns of the Big Sky State first championed in 2006, when Congress included a provision in the Department of Commerce appropriations bill that prohibited the use of any department funds to "register, issue, transfer or enforce any trademark of the phrase 'Last Best Place.'" After an unfavorable ruling at the district court level that the provision improperly circumvented the Lanham Act, the United States Court of Appeals for the Fourth Circuit ruled in 2007 that Congress had properly acted to prevent registration of the mark and that the PTO had likewise acted properly in cancelling two registrations and suspending four applications and two oppositions proceedings involving the mark. [TTABlogged here]. Last Best Beef, LLC v. Dudas, 84 USPQ2d 1699 (4th Cir. 2007).


Montanans are obviously highly protective of the slogan “Last Best Place,” which is commonly used to describe the state. Senator Burns asserted that the mark THE LAST BEST PLACE “belongs to the State of Montana.” Senator Baucus and his cohort, Senator David Tester, agree:

"Trying to trademark 'The Last Best Place' is as ludicrous as someone trying to patent a Montana sunset," Baucus said. "If I have to insert this provision for the next 20 years, I will because that is how important this saying is to our state."

"When you walk down a main street in any Montana town, or have a good conversation at a coffee shop, you know Montana truly is 'The Last Best Place,' Baucus said. "And folks should be free to use that to describe our great state."

"As a third generation Montana farmer, I know that folks in our state treasure our status as The Last Best Place,” said Tester. "Montana’s slogan isn’t for sale."

TTABlog comment: Maybe you're wondering, what about the mark FIRST BEST PLACE? One Barry Conger of Columbia Falls, Montana owns an application (Serial No. 77/143,958) to register that mark. He has just filed a Statement of Use claiming use of the mark for an enormous list of clothing items and a raft of wide-ranging business services. Do you think the Montana Senators will object to his mark?

Text Copyright John L. Welch 2009.

"DRUMLINE LIVE" Merely Descriptive of Musical Performances, Says TTAB

It's time to add another WYHA case to our collection. Would you have appealed the mere descriptiveness refusal of DRUMLINE LIVE for "entertainment services in the nature of live musical performances"? Applicant Halftime Live LLC did just that, but the arguments it drummed up fell on deaf ears. In re Halftime Live LLC, Serial No. 77144094 (February 6, 2009) [not precedential].


Examining Attorney Mark Sparacino relied on Internet evidence and a Wikipedia entry for "drumline" in maintaining that a drumline is "a group of percussion instruments usually played as part of a marching ensemble." He reasoned that, since Applicant's recitation of services covers "live" musical performance, DRUMLINE LIVE is merely descriptive of Applicant's musical performances.

Applicant feebly argued the PTO erroneously assumed that applicant’s services consist solely of live drumline performances, when its "live musical performances involve a large and diverse touring group of vocalists, musicians and other entertainers, and many of the performances do not include percussion instruments." Applicant also contended (with a straight face? - ed.) that the term “drum” has meanings other than a musical instrument: e.g., (1) any of the cylindrical blocks that form the shaft of a column (2) a round wall or structure that supports a dome.

The Board first pointed out that the mark must be considered in the context of the recited services, not in the abstract, and so other meanings of the word "drum" in different contexts are irrelevant. In other words, "the question is whether someone who knows what the goods or services are will understand the mark to convey information about them."

The Board concluded that DRUMLINE LIVE "immediately conveys that applicant’s identified services involve live drumline performances."

As to Applicant's argument about the participants in its live musical performances, the Board noted that mere descriptiveness must be determined on the basis of the goods or services as identified in the application, and not on the basis of what applicant’s actual goods or services might be."

The "live musical performances" identified in the application must be presumed to include live drumline performances, as a drumline is a type of musical performance. That applicant's actual performances include performers other than percussionists, and frequently exclude percussion instruments, is not dispositive and does not negate the descriptiveness of DRUMLINE LIVE as used in connection with applicant's services as broadly recited in the application. In view of the foregoing, we find that DRUMLINE LIVE is merely descriptive of applicant’s recited services.

And so, the Board affirmed the Section 2(e)(1) refusal.

TTABlog note: Suppose Applicant's recitation of services had read "entertainment services in the nature of live musical performances that do not include percussionists." Would DRUMLINE LIVE be deceptively misdescriptive under Section 2(e)(1) or deceptive under 2(a)?

Section 2(e)(1) deceptive misdescriptiveness requires (1) that the mark misdescribe the services and (2) that purchasers are likely to believe the misrepresentation. Section 2(a) adds the third requirement that the misrepresentation be material to the purchasing decision. If the services do not in fact include percussionists, how could any purchaser of the services believe that they did? Wouldn't it be quite evident that there were no percussionists?

Not so fast! See the TTAB's precedential decision in In re Alp of South Beach, Inc., 79 USPQ2d 1009 (TTAB 2006) [TTABlogged here], in which a divided Board panel held the mark CAFETERIA for "restaurants providing full service to sit-down patrons, excluding cafeteria-style restaurants" to be deceptive under Section 2(a), despite Applicant's argument that customers would realize they were not about to dine in a cafeteria once they saw applicant's full-service restaurant:

"we find that the existence of pre-sale deception does not depend upon whether or not a sale is completed as a result of the deception. The mere fact that one may have decided to go to applicant's restaurant in order to patronize a true cafeteria, based solely upon applicant's choice of a deceptively misdescriptive name for a restaurant, is sufficient to meet the test of the final prong of the Budge test for deceptiveness." (slip op., pp. 19-20).

Thus if one decided to check out the DRUMLINE LIVE show thinking it included percussionists and then, upon arriving at the show learned that it did not, the mark would arguably still be deceptively misdescriptive of or deceptive for the services on a sort-of "initial interest confusion" theory.

Text Copyright John L. Welch 2009.

TTABlog Special Report: Two TTAB Fraud Decisions Now Await CAFC Review

TTAB practitioners should keep their eyes on two TTAB fraud decisions now on appeal at the U.S. Court of Appeals for the Federal Circuit, because one or both may provide some welcome CAFC guidance on this vexing issue. In each case, the American Intellectual Property Law Association (AIPLA) has filed an amicus brief arguing that the TTAB's fraud standards are inconsistent with the elements of common law fraud set out by the CAFC in prior rulings. The AIPLA asserts that the Board has wrongly replaced the "critical element of deceptive intent" with a loose "knew or should have known" standard that fails "to capture only mental states characterized by recklessness or deceptive intent," resulting in essentially a "strict liability regime." And as to the issue of materiality, the Board fails to consider whether the "non-used" goods or services are so closely related to the other goods or services in the challenged application or registration that the erroneous inclusion of the "non-used" items "had any significant impact on the public."


In Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (TTAB 2007) [not precedential], the TTAB’s fraud jurisprudence may have reached its high (or low) point. The Board found that Bose had committed fraud in its 2001 renewal of a registration for the mark WAVE for, inter alia, audio tape recorders and players. [TTABlogged here] [AIPLA amicus brief here].

Bose acknowledged that it stopped manufacturing and selling audio tape recorders and players in 1996-97. Nonetheless, it did not delete those goods from the WAVE registration when filing for renewal. Bose contended that the renewal was proper "because owners of audio tape recorders and players continue to send their previously purchased goods to opposer for repair services and upon completion of the repair services opposer 'transports' them back to the owner." Bose acknowledged that it did not re-label or make any alteration to the products, apart from the technical repair. 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. The Board acknowledged that a sale of goods is not necessary to establish trademark use; shipment of samples and prototypes may suffice, but the entity causing the shipment must be the owner of the goods at the time of transportation. Here, "the scenario presented by opposer does not constitute use sufficient to maintain a registration for goods."

The question then became "whether it was reasonable for opposer to believe that it did." The Board found that it was not, because Bose "could not point to case law that supports" its interpretation of the statute.

[W]e do not find it reasonable to believe that an application of a mark at some point in the past to goods which have been sold, still serves to constitute use when those goods, now owned by another, are subsequently shipped again in connection with a repair service.

The Board therefore ruled that Bose committed fraud in maintaining its registration.

The AIPLA brief asserts that there were no findings that Bose "acted with an intent to deceive (or so recklessly as to be equivalent to an intent to deceive), that audio tape recorders and players are so different or unrelated to the other goods in Bose's registration that including them in the renewal expanded the scope of the registration in any material way, or that such inclusion injured anyone." Consequently, the AIPLA asserts, fraud was not established.


In Grand Canyon West Ranch, LLC v. Hualapai Tribe, 88 USPQ2d 1501 (TTAB 2008) [precedential], the Board found fraud despite the Tribe’s amendment of its application for the mark GRAND CANYON WEST to delete the "unused" services before Opposer made its fraud claim, and despite the fact that those services had been added to the application in an unverified response to the Examining Attorney’s proposed recitation. [TTABlogged here]. [AIPLA amicus brief here].

In an earlier ruling, the Board had sustained in part the opposition of Grand Canyon West Ranch on the ground of non-use of the subject mark for some of Applicant’s services, and it granted Applicant's motion to deleted those "unused" services. At that point Opposer
had not pleaded fraud, and in fact had affirmatively stated that it was not seeking summary judgment on the ground of fraud. Grand Canyon West Ranch, LLC v. Hualapai Tribe, 78 USPQ2d 1696 (TTAB 2006) [precedential]. Only after the Board’s first decision – i.e., after the motion to amend was granted and the application was amended – did Grand Canyon move to add a fraud claim. Nonetheless, the Board found fraud, pointing out that Applicant had not sought to amend its application until after it was opposed.

The Tribe argued that the offending language was added during prosecution, when Applicant's attorney inadvertently agreed to the identification proposed in an examiner's amendment. It also argued that the "examiner's amendment is unlike the verified statement of goods in an affidavit of continued use ... or a statement of use." The Board was not sympathetic:

The accuracy of the information applicant provided in agreeing to the examiner's amendment was no less critical to the application than the information applicant provided in the application as filed. The integrity of the registration system rests on the accuracy of the information provided in either form. Applicants must ensure that all information they provide is true and accurate whether or not it is verified.

The Board therefore sustained the fraud claim (but noted that its ruling does not affect any common law rights the Hualapai Tribe may have, nor does it prohibit the Tribe from filing a new application to register its mark for the pared-down list of services).

As in the Bose case, The AIPLA brief contends that there were no findings that the Hualapai Tribe "acted with an intent to deceive (or so recklessly as to be equivalent to an intent to deceive), that the types of transportation or services at issue are so different or unrelated to the other services in the Hualapai's application that including them expanded the scope of the application in any material way, or that such inclusion injured anyone." Again, the AIPLA asserts that fraud was not established.

[The Las Vegas Trademark Attorney blog provides the latest twist in the GRAND CANYON WEST tale, in a posting here]


Text Copyright John L. Welch 2008-9.

Precedential No. 3: TTAB Dismisses Claim Invoking Unsatisfiable Santiago Trademark Convention

In a case of first impression, Opposer Franpovi, S.A., a joint-stock company of the Dominican Republic, invoked the Santiago Convention in seeking to block registration of the mark POLLOS VICTORINA (standard characters, but in the color red) for restaurant services. The Board ruled that Opposer did not and indeed could not satisfy the requirements of that treaty, and so it granted summary judgment to Applicants, dismissing this particular claim. Franpovi, S.A. v. Rosalinda Wessin and Daniel Pena, 89 USPQ2d 1637 (TTAB 2009) [precedential].


Opposer alleged that it owns valid registrations in the Dominican Republic for the mark POLLOS VICTORINA for restaurant services, that it is entitled to prevent Applicants' registration under the Convention for the Protection of Commercial, Industrial and Agricultural Trade Marks and Commercial Names ("the Santiago Convention"), 44 Stat. 2494, April 28, 1923, and that it has filed a U.S. application for its mark POLLOS VICTORINA SABOR A TI (which, in English, means VICTORINA CHICKEN FLAVOR TO YOU). Applicants Wessin and Pena admitted that they were aware of Opposer's rights in the Dominican Republic when they filed their application.

The Board noted that the Santiago Convention was ratified by the United States in 1925 and went into force in 1926, after ratification by one-third of the signatory States. However, most parties thereafter joined the General Inter-American Convention for Trade-Mark and Commercial Protection, 46 Stat. 2907, Feb. 20, 1929 (the "Pan-American Convention"), which superseded the Santiago Convention as to the contracting parties. The United States joined the Pan-American Convention, but the Dominican Republic did not. Therefore, the Santiago Convention has not been replaced by the Pan-American Convention as between the USA and the Dominican Republic.

In order to invoke the Santiago Convention for purposes of an opposition proceeding, however, a person must meet several Convention requirements, one of which is to apply for protection through its home state to one of the "Inter American Bureaus." Opposer could not meet that condition because "there is no longer a functioning IAB with which to apply for protection." An IAB was opened in Havana, Cuba, but it ceased functioning in 1949. A second Bureau was contemplated in Brazil, but it was never opened. The Board observed that the functioning of the Bureau "is integral to the treaty's purpose" because without the IAB notification system, "all marks would automatically be subject to protection in all member States of the Santiago Convention merely upon registration thereof in the applicant's home country."

The Board pointed out that, in contrast, the Pan-American Convention requires prior notification of a party's rights, either by filing with a Bureau or directly with the state in which the foreign national desires to assert its rights. Moreover, the Pan-American Convention contains an additional safeguard: a knowledge requirement, designed to protect national rights against foreign registrants.

In short, "the rights established by the Santiago Convention cannot be exercised by a potential plaintiff because it cannot fulfill the condition of application to the IAB." Therefore the Board granted Applicant's motion for summary judgment as to the Santiago Convention claim.

Opposer had also made a claim under the "well-known marks" doctrine, and the Board allowed that claim to go forward, making "no determination regarding the sufficiency or applicability of this claim."

TTABlog notes: Two recent oppositions involving successful claims under the Pan-American Convention may have spurred the Opposer here to invoke the Santiago Convention: one by a Peruvian company (TTABlogged here) and one by a Cuban company (TTABlogged here).

However, as the Board noted, the Pan-American Convention and the Santiago Convention are two different animals. It appears that Opposer Sanpovi would have satisfied the requirements of the Pan-American Convention, had only the Dominican Republic bothered to ratify it. Instead, Opposer was left with the Santiago Convention, which seems to be a dead letter, at least in this context.

It is interesting to note that there is some confusion about what countries are members of these treaties. The confusion seems to arise because more countries signed the treaties than actually went forward and ratified them. For example, it appears that 19 countries signed the Pan-American Convention, but only 10 became members. The INTA website claims that there are 19 members to this Convention, but the TMEP (Appendix B) and the TTAB put the number at 10:

The United States participated in a number of International Conferences of American States with respect to trademarks during the early twentieth century. These conferences resulted in several multi-lateral trademark conventions. The United States is party to three trademark conventions resulting from these conferences. The United States is a party with Bolivia and Ecuador to the Buenos Aires Convention, 1910; with Brazil, the Dominican Republic and Uruguay to the Santiago Convention, 1923; and with Colombia, Cuba, Guatemala, Haiti, Honduras, Nicaragua, Panama, Paraguay and Peru to the Washington Convention, 1929. This latter convention is formally named the "General Inter-American Convention for Trade Mark and Commercial Protection of Washington, 1929," and it is known informally as the "Washington Convention" and also as the "Pan American Convention of 1929." British-American Tobacco Co. v. Philip Morris Inc., 55 USPQ2d 1585, 1587-88 (TTAB 2000).

Text Copyright John L. Welch 2009.

TTAB Reverses 2(d) Refusal of "QUAANTUM" for Trailer Suspension Systems Over "QUANTUM" for Tires

Because the PTO failed to establish that the goods are related for Section 2(d) purposes, and because the relevant purchasers will exercise a high degree of care, the Board reversed a refusal to register the mark QUAANTUM for "trailer suspension systems, incorporating wheel end systems," finding it not likely to cause confusion with the registered mark QUANTUM for tires. In re The Boler Company, Serial No. 77059048 (February 17, 2009) [not precedential].


Not surprisingly, the Board found the marks at issue to be "virtually indistinguishable." The decision consequently hinged on the similarity or dissimilarity of the goods. Applicant Boler argued that it sells suspension systems for tractor trailers, but the Board once again pointed out that the Section 2(d) determination is based upon the goods as identified in the application and cited registration, regardless of what the record may reveal the actual goods to be. Likewise, registrant's goods are not limited, and encompass tires for trailers.

The PTO submitted 11 third-party registrations in an effort to show the relatedness of the goods, but only two included trailer suspension systems and tires. Two websites showed trailer suspension systems and tires sold by the same retailer, but not under the same mark. The Board found this evidence insufficient to establish that "purchasers encountering trailer suspension systems and tires under the same or similar marks would conclude that they originate from the same source."

Boler contended that trailer suspension systems are purchased by knowledgeable purchasers because the system must be carefully selected based upon a number of factors, including the make, model, and intended use of the trailer. Although Boler did not explain how trademarks affect the purchasing decision, the Board concluded that consumers will exercise a "high degree of care when selecting a trailer suspension system, and consequently pay attention to the source of the product."

A trailer suspension system is an unusual and complex product. Therefore, the purchase thereof involves considerable planning and a reasonably focused need for the product. It will be bought and sold by knowledgeable people. Undoubtedly, it will be a relatively expensive purchase.

The Board noted that, while any trailer owner may purchase tires for a trailer, "the only overlap in customers would be the careful, sophisticated purchasers of applicant's products." [TTABlog query: the purchasers may be careful buying the expensive and complicated suspension system, but will they be as careful when purchasing a much less complicated and less expensive tire?]

Balancing the relevant du Pont factors, the Board found confusion unlikely, but noted that "on a different and more complete record," a different result might be reached.

Robert "Tractor" Traylor
Text Copyright John L. Welch 2009.

Applicant Gets Benefit of the Doubt: "GREEN INDIGO" Not Merely Descriptive of Clothing, Says TTAB

The Board reversed a Section 2(e)(1) refusal to register the mark GREEN INDIGO, finding it not merely descriptive of "bottoms; [and] tops." Noting that there is a "thin line of demarcation between a suggestive and a merely descriptive designation," the Board saw the lack of evidence of descriptive use of the phrase in the clothing industry as indicative that the mark is only suggestive. In re Jones Investment Co. Inc., Serial No. 77249189 (January 21, 2009) [not precedential].

India Indigo Dye Lump
The PTO maintained that the mark "describes a specific characteristic of the goods, namely that they may come in the colors GREEN or INDIGO." Applicant argued that the words "green" and "indigo" have other meanings and when combined in its mark, are incongruous.

Applicant pointed to the existence of "green," environmentally-aware clothing, and it contended that "indigo" plays on the "earthy-vibe" conveyed by the mark as a whole, since indigo is a dye made from plants. [Note that the identification of goods is not limited to environmentally-aware clothing - ed.].

The Board agreed with the PTO that the two words have commonly-understood meanings that are merely descriptive of clothing, but it sided with Applicant regarding the incongruity of the combination:

A consumer must engage in mature thought or follow a multi-stage reasoning process to determine any specific attributes of applicant’s product: first, a consumer must connect the term "green" to a color, an environmental message or youth, and then must connect "indigo" to either a plant or a dye, let alone color. After making these respective connections, the consumer is then forced to make some sense out of the various meanings conveyed by the incongruous combination of the two terms. This need to resort to imagination renders the mark only suggestive.

The Board found nothing in the record indicating that others in the clothing field would need to use the term GREEN INDIGO to describe their goods. It agreed with Applicant that the mark would not preclude others from using "green" or "indigo" in a descriptive manner."

Noting that any doubts on mere descriptiveness are to be resolved in favor of Applicant, the Board reversed the refusal.

TTABlog comment: One thing that troubles me about this decision is the fact that Applicant's goods are not limited to "environmentally-aware" clothing. If someone looked at an ordinary top sold under the mark GREEN INDIGO, wouldn't that someone think of the two colors first? And even if some segment of the population would think environmental, there must be a vast number of consumers who would never think, looking at an ordinary top, that "green" means environmentally-aware.

Anyway, are you aware that the mark GREEN is registered for footwear? See the TTABlog posting here. Will the owner of the GREEN registration oppose GREEN INDIGO? Dare it?

Text Copyright John L. Welch 2009.

Reminder: TPAC Webcast Set for Tomorrow, February 20th

The Trademark Public Advisory Committee (TPAC) will webcast its February 20th meeting, according to the PTO's Announcement here. The meeting is scheduled to run from 9 AM to 12 noon at PTO Headquarters.


As part of the agenda, a representative of the TTAB will participate in:

1. Discussion of the speed of opposition and cancellation proceedings in the TTAB, and how to proceed on this issue.

2. Discussion of recent developments concerning the Medinol line of cases.

.

TTAB Okays Single DVD as Specimen for Ongoing TV Series, "EVERYBODY I EVER SLEPT WITH"

Pointing out that the PTO seemingly confused the use of the mark on a promotional DVD, which is a single work and an acceptable specimen, with a mark being the title of a single work, the Board reversed a refusal to register the mark EVERYBODY I EVER SLEPT WITH for “providing on-going television programs in the field of romance." In re Atlas Media Corp., Serial No. 76655719 (January 27, 2009) [not precedential].


The PTO refused to register on the ground that the mark is used only as the title of a single work. It therefore does not function as a service mark and is not registrable, under established law.

However, the Board found it "clear from both the recitation of services" and from Applicant's declaration stating that "the DVD … is a promotional communication to obtain advertisers of the television program…" and that “the content of the DVD has images of selected reference-identified EVERYBODY I EVER SLEPT WITH ongoing television exemplary broadcasts," that applicant uses the mark EVERYBODY I EVER SLEPT WITH to identify a series of television broadcasts. So, the Board concluded, it is not the title of only a single work or episode.

It appears that the examining attorney has confused the use of the mark on the promotional DVD, which is a single work and an acceptable specimen, with a mark being the title of a single work, which it is not because it identifies an ongoing television series. Accordingly, the refusal is not well taken.

The Board therefore reversed the not-well-taken refusal.

TTABlog comment: Frequent appellate advocate Myron Amer brought this successful appeal. Somewhat interestingly, last summer he lost an appeal from a refusal to register FREEDOMSTONE for building stones, the Board finding that FREEDOMSTONE is the name of a single artistic work: the cornerstone for the Freedom Tower building under construction at the World Trade Center site in New York City. [TTABlogged here].

Text Copyright John L. Welch 2009.

It Don't Come Easy: TTAB Affirms 2(d) Refusal of "RINGO" for Clothing

Ex-Beatles drummer Ringo Starr paid his dues (the appeal fee) and sang the blues, as the TTAB affirmed a Section 2(d) refusal to register his mark RINGO for various clothing items "all depicting the name and image of a famous entertainer." Despite that limitation and despite the fame of Ringo, the Board found his mark likely to cause confusion with the identical mark registered for men's, women's, and children's clothing. In re Richard Starkey aka Ringo Starr, Serial No. 78821116 (January 27, 2009) [not precedential].


The Board took judicial notice that Applicant is a "famous entertainer who performs under the stage name 'Ringo Starr.'" But that proved to be little help from his friends.

Applicant's counsel argued that the express limitation in the application stating that the goods depict "the name and image of a famous entertainer" served to distinguish the goods and the channels of trade, but the Board heard the beat of a different drummer. It found Ringo's goods to be legally identical or closely related to those of the cited registration. The Registrant's goods were not restricted in any way, and could include clothing depicting the name and image of a famous entertainer. As to trade channels, neither the application or registration contained any restrictions, and so the Board must assume that the goods are marketed in all normal channels of trade for such goods.

Ringo's counsel presented no evidence for the feeble assertion that Ringo's goods "would only be sold in places where rock music fans congregate and purchase special (not ordinary) clothing." Moreover, even if that were true, there was no evidence that Registrant's clothing would not also be sold in "places where rock music fans congregate." [The malt shop? - ed.]

Next, Ringo's counsel lamely claimed that the purchasers of Ringo's goods "are dedicated and therefore knowledgeable fans of applicant and his music ('Ringo-philes') who wish to collect or own merchandise (or clothing) 'commemorating Applicant, his music career and concert tours.'" The Board, however, could not conclude that "'Ringo-philes' would be the only purchasers of the goods at issue here, and that the potential purchasers of the goods would not include ordinary consumers."

As to the marks, the Board observed that they are similar, if not identical, in connotation and commercial impression: both identify and refer to the famous entertainer, Ringo Starr.

Ringo argued that "his fame and renown must be taken into account in [the] likelihood of confusion analysis." He asserted that, "due to his fame, purchasers will automatically understand, prior to purchasing applicant’s goods, that RINGO refers to applicant and that applicant, not registrant, is the source of applicant’s goods."

However, the Board pointed out, Ringo's fame as an entertainer "does not entitle him to register RINGO for goods which are the same as or similar to the goods already covered in registrant's prior registration. Applicant's fame therefore is not a factor in our likelihood of confusion analysis in this case." [The Board pointed out in a footnote that "fame can never weigh against a finding of likelihood of confusion."]

In another footnote, the Board maintained that even if it were to consider Ringo's fame and were to agree that purchasers will understand RINGO to refer to Applicant, there would still be likelihood of confusion in that purchasers of Registrant's clothing would mistakenly believe that Ringo was the source of same. [Reverse confusion, or "noisufnoc" - ed.].

And so, the Board affirmed the 2(d) refusal to register.

Registrant's specimen of use
TTABlog note: Doesn't this case remind you of the TWIGGY case (TTABlogged here), in which Twiggy succeeded on a Section 2(a) false association claim, cancelling TJ Maxx's registration for the mark TWIGGY for clothing. Here, however, Ringo faces a ten-year old registration. Is a Section 2(a) claim still viable?

BTW: Two days after this decision, Mick Jagger got some satisfaction by winning a straightforward Section 2(d) opposition to registration of the mark JAGGER for clothing. (here).

Text Copyright 2009 John L. Welch.

Someone Should Tell the New York Times that "Trademark" is not a Verb

Today's New York Times crossword puzzle gave me a bit of a shock! Clue 37 across: "Trademarked citrus." That's an ugly word usage if there ever was one. As we all know, "trademark" is not a verb. It's a noun. Perhaps the clue should have been "Registered trademark for a citrus?"

UGLI fruit sections
UGLI is a registered trademark of Cabel Hall Citrus Limited of the Cayman Islands. See Reg. No. 2,046,884. The fruit is a cross between a grapefruit and a tangerine.

Text Copyright John L. Welch 2009.

Long, Strange Trip Ends in Split TTAB 2(d) Decision for "ORIENT-EXPRESS" Applicant

Fifteen years after filing his application, Stuart S. Hoffman's attempt to register the mark ORIENT EXPRESS & Design (shown immediately below) for cigars and smoking tobacco was derailed by the TTAB when it sustained Section 2(d) oppositions brought by the French railway SNCF and by VSOE, the owner of the ORIENT-EXPRESS railway line. The Board, however, gave the green light to Hoffman's 1997 application to register the same mark for perfume and cologne. Unlike a trip on the Orient-Express, the Board's journey to that result was neither romantic nor exciting, but the TTABlog shall summarize it nonetheless. Societe Nationale des Chemins de Fer Francais and Venice Simplon-Orient Express, Inc. v. Stuart S. Hoffman, Oppositions Nos. 91095769, 91097079, 91109552, 91109821 (February 9, 2009) [not precedential].


SNCF owns several registered marks that consist of or contain the term ORIENT-EXPRESS:

• VENICE SIMPLON-ORIENT-EXPRESS for railway passenger services.
• COLLECTION VENICE SIMPLON-ORIENT-EXPRESS for goods in eleven classes, including ashtrays.
• VENICE SIMPLON ORIENT-EXPRESS & Design for railway passenger services.
• ORIENT EXPRESS HOTELS for hotel and restaurant services.
• ORIENT-EXPRESS for trains and for transportation services.
• ORIENT-EXPRESS for ship transportation services.

Opposer VSOE is licensed to provide goods and services under the marks.

Opposers claimed that the their marks are famous, but their proofs fell short. Although Opposers provided revenue figures, the numbers related to worldwide sales, not US revenues. This is particularly significant since Opposers' "primary activities are admittedly performed outside the United States." Moreover, Opposers did not provide a context for the revenue figures -- e.g., market share.

The Board found that the dominant portion of all the marks is the term ORIENT-EXPRESS. Opposers' testimony established that, despite the appearance of the term VENICE SIMPLON in several of the marks, the services are "frequently known and referred to as simply 'Orient-Express.'" The Board noted that this is "consistent with previous cases in which we have noted the propensity of consumers to shorten trademarks." [This testimony seems a bit self-serving, don't you think? Was there any corroborative documentation? - ed.] The Board concluded:

While we consider the marks in their entireties, and we have not ignored the design element included in applicant’s mark, the visual and aural similarities between applicant’s mark and opposers’ are undeniable. Both prominently feature the term “ORIENT-EXPRESS,” and thus look and sound substantially alike.

The Board also found that the marks have similar meanings: as to the services marks, the term "ORIENT-EXPRESS" means "rapid transportation to the 'orient,' i.e., the east." As to the other marks, the term is purely arbitrary.

In sum, the Board dubiously found that Applicant's mark is "substantially similar to Opposer's marks." [I agree, provided that you ignore the VENICE SIMPLON part - ed.]

click on image for larger picture
Turning to the goods and services, the Board found that Applicant's cigars and smoking tobacco are "clearly related" to the "ashtrays" of Opposers' registration [for COLLECTION VENICE SIMPLON-ORIENT EXPRESS]. "Ashtrays are related in purpose to cigars and smoking tobacco, and are intended to be used at the same time for complementary purposes." [ashtray:cigar as crusher:automobile. Therefore crushers and automobiles are related for Section 2(d) purposes? - ed.]

As to perfume and cologne, however, the Board was unable to find a "significant relationship" to any of the goods or services in Opposers' registrations. Opposers argued that the registrations of record cover a broad range of goods and services, and therefore that the public "is more likely to be confused by the use of the mark on different goods and services." The Board, however, noted that this may be true when a mark is shown to be in wide use, but here Opposers provided "little evidence of their current use of their marks in U.S. commerce."

Balancing all the du Pont factors, the Board sustained the opposition to the cigar/tobacco application, but dismissed the opposition to the perfume/cologne application.

TTABlog comment: Is there any doubt as to why Hoffman chose the ORIENT-EXPRESS mark, with the French design appended? Opposers argued that Hoffman "intentionally sought to trade on the goodwill or reputation associated with [o]pposer's marks, violating Section 1052(a)." Unfortunately for Opposers, however, they failed to plead Section 2(a) in their notices of opposition, and so the Board refused to consider the issue.

Suppose the Opposers sought review by way of civil action under 15 U.S.C. Section 1071(b). Would they be able to introduce the Section 2(a) issue? Consider the TTABlog posting (here).

Note that Opposer VSOE included a claim for dilution in its oppositions. The Board tossed that overboard, observing that since VSOE failed to prove fame for its 2(d) claim, it could not possibly meet the higher standard for fame applicable to a dilution claim.

Text Copyright John L. Welch 2009.

Finding "A-HOLE PATROL" Scandalous for Online Social Club Screening, TTAB Affirms 2(a) Refusal

Applicant JibJab found itself in a hole after the PTO's Section 2(a) refusal of A-HOLE PATROL for an "Online social club that screens jokes submitted by users to control offensive and inappropriate content." JibJab's effort at self-extrication through TTAB appeal yielded only the Board's agreement with Examining Attorney Gina Hayes that the mark is scandalous and therefore unregistrable. In re Jibjab Media, Inc., Serial No. 78951377 (February 4, 2009) [not precedential].


The PTO relied on dictionary definitions of "asshole" and "A-hole" [I won't bother to repeat them here, since you know them when you see them - ed.] to show that A-HOLE means asshole and is therefore scandalous.

JibJab pulled several arguments out of its arsenal, but none were successful. First, it agreed that "asshole" is not "appropriate as a trademark," butt it contended that A-HOLE is a more polite and "sanitized" substitute. Second, it asserted that A-HOLE has an alternate meaning as "a shorthand reference to 'analog hole.'" Third, it pointed to a third-party registration for the mark shown here (for calendars, decals, caps, and t-shirts), as well as to numerous third-party registration for marks containing the word "ass." And fourth, its Director of Operations averred that JibJab has never received a complaint about the mark during two years of use.

The Board observed that a showing that a mark is "vulgar" suffices to establish that it "consists of or comprises immoral ... or scandalous matter" within the meaning of Section 2(a). The mark must be considered in the context of the marketplace for the goods, and the determination must be made from the standpoint of a "substantial composite of the generic public (although not necessarily a majority) and "in the context of contemporary attitudes ... keeping in mind changes in social mores and sensitivities."

The Board perceptively concluded that JibJab uses A-HOLE as a slang term "to refer to a detestable person, and not an anatomical feature." The referenced single use of A-HOLE as shorthand for "analog hole" was unclear in meaning and unpersuasive, and in any case was irrelevant to the meaning of A-HOLE here. Thus this case is distinguishable from the BLACK TAIL decision [In re Mavety, 31 USPQ2d 1923 (Fed. Cir. 1994) [BLACK TAIL not scandalous for adult magazines], where the term at issue had both a vulgar and a non-vulgar meaning. [Can you state them? - ed.].

Moreover, the Board concluded that A-HOLE is not a sanitized term. It may be less vulgar than "asshole," the Board conceded, but that does not make it a "non-vulgar, non-scandalous term."

The third-party registration for the A HOLE design mark was cancelled, and therefore is not evidence of anything "except that it issued." Also, the highly stylized presentation "suggests that A HOLE as it appears therein may allow for a broader range of interpretation than the term A-HOLE as it appears in applicant's A-HOLE PATROL mark." [Any thoughts as to what those other interpretations might be? - ed.]. The "ass"-formative registrations were dismissed as irrelevant because the marks did not include the term ASSHOLE or A-HOLE.

Finally, as to JibJab's contention regarding the lack of complaints despite receipt of one million hits per day at its website, the Board "appreciated the irony that the services offered under applicant's A-HOLE PATROL mark are intended to control and excise from applicant's Internet humor site materials that are offensive ...." Nonetheless, the record and the law support a finding that "applicant's mark consists in part of a term that is considered vulgar by a substantial portion of the general public, not simply users of applicant's website." [One might argue that, paraphrasing Charles Dickens, if that's what the law says, then the law is a ass! - ed.].

TTABlog note: At least the Board is consistent: See its 2005 decision in In re Zaharoni, Serial No. 76351811 (January 4, 2005) [not citable] [affirming a Section 2(a) refusal of "THE COMPLETE A**HOLE'S GUIDE TO ..." for "series of books providing information relating to advice, counseling, self-help, and humor."] [TTABlogged here].

What about the following mark: the letter "A" in a circle? Would it pass Section 2(a) muster? What if it were followed by the word PATROL? Please discuss amongst yourselves.

TTABlog postscript: Marc Randazza, at his blog, The Legal Satyricon, takes a dim view of this decision (here).

Text Copyright John L. Welch 2009.

Frank Herrera Launches Cigar Law blog

Florida's Frank Herrera has launched the Cigar Law blog, where he discusses "Trademarks and Other Matters Of Interest to the Cigar Industry." Frank keeps an eye on PTO applications and TTAB filings, as well as on cigar trademarks in the real world.


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Joyce Theater Seeks Federal Court Review of TTAB Ownership Decision

Pamela Chestek, at her Property, Intangible blog, reports (here) that the Joyce Theater Foundation had filed a complaint in the United States District Court for the Southern District of New York, under 15 U.S.C. Sec. 1071(b) of the Trademark Act, seeking review of the Board's decision in Ballet Tech Foundation, Inc. v. The Joyce Theater Foundation, Inc., 89 USPQd 1262 (TTAB 2008) [precedential]. Finding that the landlord (Ballet Tech Foundation, Inc.) is the owner the marks and that the tenant (The Joyce Theater Foundation, Inc.) used the marks under an implied license, the Board sustained an opposition to one application, and granted a petition for cancellation of five registrations, for the mark JOYCE (in various forms) for dance theater and charitable fund raising services.

Joyce Theater8th Avenue and 19th Street, New York City
The original TTABlog posting may be found here, and Pamela Chestek's comments on the Board decision are here.

Pam knows a lot about trademark ownership, as evidenced by her article, "Who Owns the Mark? A Single Framework for Resolving Trademark Disputes," in the May-June 2006 Trademark Reporter (pdf here).

TTABlog comment: One advantage of seeking review by way of civil action, rather than via appeal to the CAFC, is the opportunity to add new evidence, since the civil action is supposed to provide a trial de novo. Perhaps the Foundation hopes to bolster the evidentiary record in the district court.

Text Copyright John L. Welch 2009.

Nordstom's Aggressive TTAB Conduct Irks Many in the Blogosphere

Michael Atkins, at his Seattle Trademark Lawyer blog, picks up on the story (here) circulating on the Internet regarding Seattle-based Nordstrom, Inc.'s aggressive TTAB strategy vis-a-vis the registered mark BECKONS for various clothing items.


The unhappy registrant, forced to fight for its registration, complained to the Commissioner of Trademarks:

"We filed for a trademark so that we could reasonably secure ourselves from someone else using that name. If your office cannot protect us from this, why would we, or anyone, file an application? The law is supposed to be accessible to all people. Just because Nordstrom has money and we do not does not give them the right to use the name for which we have the trademark…. [T]he cost to work through the TTAB will easily exceed $70,000 just to fix the problem The Trademark Office made in the first place. We understand that we must stand behind and police our trademark. How is this possible for a small company to stand up to a behemoth like Nordstrom for $70,000? Your office has ensured our demise."

Perhaps TPAC will address this question at its Feb. 20th meeting (see prior posting).

Text Copyright John L. Welch 2009.

TPAC Webcast Set for February 20th; Agenda Includes Fraud Discussion

The Trademark Public Advisory Committee will webcast its February 20th meeting, according to the PTO's Announcement here. The meeting is scheduled to run from 9 AM to 12 noon at PTO Headquarters.


As part of the agenda, a representative of the TTAB will participate in:

1. Discussion of the speed of opposition and cancellation proceedings in the TTAB, and how to proceed on this issue.

2. Discussion of recent developments concerning the Medinol line of cases.

Note that TPAC requests that all presentations be submitted in writing at least two weeks prior to this meeting!
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Finding Two "MILLER'S" Marks for Restaurant Services Confusingly Similar, TTAB Affirms 2(d) Refusal

Miller's Pub, on South Wabash in Chicago, failed to overcome the PTO's Section 2(d) refusal to register the mark MILLER'S in stylized form (shown below, left) for bar and restaurant services. Apparently it was not "Miller's Time," because the Board found the mark likely to cause confusion with the mark MILLER'S & Design, registered for a "full service restaurant" (below, right). In re Twenty Three East Adams Street Corp., Serial No. 76978795 (January 29, 2009) [not precedential].

Applicant started out behind the proverbial 8-ball, since the involved services are identical or overlapping, leading the Board to conclude that the channels of trade are also identical or overlapping. Moreover, when the services overlap, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

As to the marks, Examining Attorney Renee McCray maintained, quite rationally, that because the marks contain the identical word MILLER'S, they are confusingly similar in appearance, sound, connotation, and commercial impression.


Applicant argued that MILLER is a surname, that there was no 2(f) showing of acquired distinctiveness in the cited registration (Applicant did includ a Section 2(f) claim), and therefore that "a proper comparison of the marks must focus on the display or stylization [of the marks] and not on the word MILLER'S as such." The Board rejected that argument: it may not presume that the word MILLER'S in the registered mark is not protected: "Applicant's argument that we should accord the cited registration something less than full effect is an impermissible attack on the registration."


The Board therefore agreed with the PTO that the word MILLER'S is the dominant element in both marks. Nothing in the stylization or the design of the marks dictates otherwise, despite Applicant's creative, but futile, contention that:

"The connotation and commercial impression of the cited registration is that of a family oriented seafood restaurant in view of the depiction of a funny man riding a swordfish. To the contrary, the connotation and commercial impression of Applicant's mark is that of a more sophisticated, adult oriented British Isle pub-style restaurant."

Applicant next argued that the registered mark is weak and entitled to a limited scope of protection in view of third-party registrations containing the word MILLER'S for restaurant services: ANA MILLERS' PIES; BILL MILLER BAR-B-Q; MILLER'S ROAST BEEF; CHERRY MILLER'S CAFE; MILLER'S CROSSING; AND PETE MILLER'S. The Board noted that each of these marks does include some additional wording, and therefore the regsitrations are not persuasive of a lack of likely confusion here.

Finally, Applicant contended that "potential purchasers of restaurant services are sophisticated and this fact would preclude confusion in this case." That argument, understandably, went nowhere.

And so, the Board affirmed the refusal to register.

TTABlog note: I dined on barbecued ribs at Miller's Pub the last time I was in Chicago. [Inexplicably, I am not included among the Pub's Celebrities]. I wouldn't call it a sophisticated dining experience. It is difficult to feel sophisticated when gnawing on a rib. Anyway, I took this photo of the pub, not too successfully, during my cab ride to the airport.


Text and photograph Copyright John L. Welch 2008-2009.

TTAB Finds "FERROLABS" and "FERRO TEC" for Ferrofluidic Fluids Not Confusingly Similar

Despite an overlap of goods, channels of trade, and classes of customers, the Board dismissed an opposition to registration of the mark FERROLABS & Design for ferrofluids and related goods, finding it so dissimilar from the registered marks FERRO TEC & Design , FERROSOUND, FERRODRIVE, and FERROFLUIDIC for ferrofluids, that confusion is not likely. Ferrotec (USA) Corporation and Ferrotec Corporation v. Ferro Labs, Inc., Opposition No. 91174110 (January 29, 2009) [not precedential].


The Board first rejected Opposers' claim to ownership of a family of FERRO marks, for two reasons: (1) the supposed "family feature," FERRO, is descriptive of ferrofluids and related products and thus cannot support a "family," and (2) Opposers failed to prove that the four registered FERRO-formative marks have been widely used and promoted together so as to create "public recognition coupled with an association of common origin predicated on the term FERRO."

The Board next nixed Opposers' claim of fame for the marks FERRO TEC and FERROFLUIDIC. Ferrotec submitted sales and advertising figures (in confidence), but provided no context for the numbers. Secondly, the figures were not divided out for each mark. In short, Opposers failed "to demonstrate that the successful marketing of opposers' FERRO TEC and FERROFLUIDIC products translates into widespread recognition of each of these marks among the relevant purchasers."

However, the Board found the goods of the parties to be partly identical and therefore presumed that they travel to the same classes of customers through the same normal channels of trade. But it also found that the goods "are not the types of products that are purchased by ordinary consumers," a factor favoring Applicant.


But the deciding issue for the Board was the dissimilarity of the marks. The Board first noted once again that when the goods are identical, a lesser degree of similarity is necessary between the marks to support a finding of likely confusion. Because FERRO is a descriptive term as to certain of the involved goods, the Board found that FERRO is not the dominant feature of any of the parties' marks, and its mere presence in Applicant's mark and in Opposers' marks, without more, does not warrant a finding of likely confusion.

Comparing the marks in their entireties as to appearance, sound and meaning, the Board ruled "that their dissimilarities outweigh their similarities, and that the marks likewise are dissimilar rather than similar in terms of their overall commercial impressions."

And so the Board dismissed the opposition.

Text Copyright John L. Welch 2009.

TTAB No-Brainer? "BRAIN STATE CONDITIONING" Merely Descriptive of Neurofeedback Training

The Board wasted little brainpower in affirming a Section 2(e)(1) refusal to register the mark BRAIN STATE CONDITIONING, finding it merely descriptive of "training services in the field of neurofeedback." In re Brain State Technologies, L.L.C., Serial No. 77092018 (January 21, 2008) [not precedential].


Examining Attorney Angela Gaw relied on various technical articles, two patents, and several dictionary entries in maintaining that "[b]ecause the Applicant's services measure the present condition of the user's brainwave activity or a fluctuating situation due to an external stimulus, the term [BRAIN STATE CONDITIONING] is merely descriptive of neurofeedback services."

Applicant Brain State Technologies contended that the PTO's evidence "was in the nature of scholarly works" and so did not show how relevant purchasers would perceive the phrase. Applicant asserted that the word "state" has various meaning, and "may refer to a geographic region, such as the state of New York." [TTABlog comment: New York is the "brain state"? That's not the anatomical reference that Bostonians make.] According to Applicant, the word "state" does not convey any information regarding the services.

The Board one again pointed out that a mark is not to be viewed in the abstract when being evaluated for mere descriptiveness: "In other words, the question is not whether someone presented only with the mark could guess what the products and services are. Rather, the question is whether someone who knows the products and services will understand the mark to convey information about them."

It ruled that word "state" does not provide a commercial impression separate from the unitary term "brain state."

[A] patient seeking neurofeedback training is going to perceive the mark BRAIN STATE CONDITIONING as directly imparting the information that the services involve “conditioning” (i.e., modifying) their “brain state” (i.e., mental state).

Therefore, the Board found BRAIN STATE CONDITIONING to be merely descriptive of Applicant's services, and it affirmed the refusal to register.

Text Copyright John L. Welch 2009.

"CHED 'R' WEDGES" Merely Descriptive of Pet Treats, Says TTAB

Would you have appealed this one? The PTO refused to register the mark CHED 'R' WEDGES for "pet food; pet treats," finding the mark merely descriptive under Section 2(e)(1). What argument could you come up with on appeal? In In re Midwestern Pet Foods, Inc., Serial No. 78876346 (January 30, 2009) [not precedential], Applicant gave it a shot but was barking up the wrong tree.

Deanna
Examining Attorney Jean H. Im maintained that "CHED 'R' is the equivalent to the word 'cheddar' in both sound and meaning, and describes the flavor of the goods." Moreover, pet food and treats "may be wedge-shaped." She concluded, rather logically, that "the two items combined as a unitary mark convey the commercial impression of pet food and pet treats that are cheddar flavored and wedge-shaped, or put another way, are cheddar flavored wedges."

Ok, so what does Applicant argue? Of course, one starts by asserting that the mark "is merely suggestive." Then what? Here, Applicant tried the following:

[T]he mark is "characterized by an alliterative, lilting cadence and growling sound elements formed between ‘CHED’ and ‘R’...[that] brings to mind the growl of a dog and also creates a pun on that fact that many American families treat their pets like members of the family ... the customer is purchasing this product in order to treat their pet to foods that could be enjoyed by humans.

The Board was not impressed.

The PTO's evidence included third-party websites advertising pet food and pet treats containing cheddar cheese or having cheese flavoring. Applicant's identification of goods is broad enough to encompass such goods.

Thus, upon viewing applicant's mark which is the phonetic equivalent of cheddar wedges, in connection with pet food and pet treats, consumers will immediately understand that the mark merely describes the type of food or treats, namely, that
they are wedge-shaped food or treats with cheddar cheese flavoring. No mental leap is required here.

Finally, as evidence for the mark's supposed suggestiveness, Applicant pointed to existing, third-party registrations for CHED'R'BITES for snack food, CHED-R-CUP for cheese sauce, and LIV'R'CRUNCH for pet food and treats. The Board, however, stated for the umpteenth time that "prior actions of examining attorneys in assertedly analogous situations are not binding." The Board must make its determination based on the record before it, "regardless of prior decisions by different examining attorneys."

And so the Board affirmed the refusal to register.

Tanner

TTABlog comment: Reader FT would have appealed, because he believes that the TTAB's view of mere descriptiveness is out-of-whack: "The owner of the CHED 'R' WEDGES mark has created a unique commercial impression that should be protectable under the Lanham Act. The test in cases like this should not be whether people immediately know what the goods are; the test should be whether anyone else needs to use this mark to describe their goods. I don't think that anyone needs to use CHED 'R' WEDGES; they can use CHEDDAR WEDGES."

Good point, FT! I made a similar argument in trying to convince the Board that the mark THE TTABLOG is inherently distinctive (here). Perhaps the CAFC will have an opportunity to look at this case.

Text and Photograph Copyright John L. Welch 2001, 2007, 2009.

Precedential No. 2: TTAB Rules That, For a Multi-Class Registration, Fraud Must Be Considered Class-by-Class

The Board has now addressed one of the open issues concerning fraud, ruling that with regard to a multi-class registration, fraud committed in fewer than all the classes requires cancellation as to only those classes, and not as to all classes in the registration. Last March, the Board said the same thing in dictum in Herbaceuticals, Inc. v. Xel Herbaceuticals, Inc., 86 USPQ2d 1572 (TTAB 2008) [precedential] [TTABlogged here], but now it's official. G&W Laboratories, Inc. v. G W Pharma Limited, 89 USPQ2d 1571 (TTAB 2009) [precedential].


In this Section 2(d) opposition, Opposer Labs relied on two registrations for the mark G & W, each registration including two classes: class 5 (suppositories and the like) and class 35 (distributorships in the field of suppositories and the like). Applicant GW Pharma counterclaimed for cancellation of the two registrations in their entireties on the ground of fraud, alleging that Labs had never used the marks on the class 35 services.

After the counterclaim was filed, Opposer Labs filed the requisite Section 8 Declaration for each of the registrations, but it deleted the class 35 services. Labs then moved to dismiss Pharma's counterclaims as to class 35 as moot, and as to class 5 as failing to state a claim upon which relief may be granted. Pharma countered that its fraud claim as to class 35 is not moot because one cannot cure fraud by deleting goods from a Section 8 declaration, and that its class 5 fraud claim is proper because, according to Pharma, fraud in one class requires cancellation of the entire registration.

The Board denied Labs' motion to dismiss the class 35 fraud claim as moot: "It is settled that fraud cannot be cured merely by deleting from the registration those goods or services on which the mark was not used at the time of the signing of a use-based application or a Section 8 affidavit."

As to class 5 fraud claim, however, the Board granted the motion to dismiss, finding Pharma's theory to be incorrect: "The line of cases to have considered fraud since Medinol has involved single class applications or registrations. These cases have consistently held that fraud as to any goods or services in a single class will lead to a finding that the application or registration is void in the class in which fraud has been committed." But the Board has "not had occasion to consider whether fraud in less than all classes of a multiple-class registration will subject the entire registration to cancellation for fraud."

The Board reasoned that a multi-class registration is like a series of one-class registrations:

"An applicant for a trademark registration may file for registration in more than one class by filing a single application. See Trademark Rule 2.86. Such an application requires, for each class, payment of the application filing fee and submission of dates of use and a specimen of use for each class before the application will proceed to registration. Id. Thus, a multiple-class application can be viewed as a series of applications for registration of a mark in connection with goods or services in each class, combined into one application. As a general matter, the filer of such an application is in the same position it would be had it filed several single-class applications instead."

The Board therefore held that that "each class of goods or services in a multiple class registration must be considered separately when reviewing the issue of fraud, and judgment on the ground of fraud as to one class does not in itself require cancellation of all classes in a registration."

Consequently, the Board dismissed Pharma's counterclaim as to the class 5 goods, granted the counterclaim as to the class 35 services, and re-set the testimony dates.

Text Copyright John L. Welch 2009.

Canada Federal Court Refuses to Import US Fraud Doctrine into Canadian Trademark Law

The Canadian Trademark Blog reports here that the Federal Court in Canada "recently made clear that Canadian law does not recognize a rule equivalent to the U.S. doctrine of fraud on the trademark office, pursuant to which any material misstatement in the processing of a registration renders the entire resulting registration void."


Ron Coleman, at his Likelihood of Confusion blog (here), is so pleased with the Canadian decision that he seems almost ready to move north: "is it too much to hope that Canada’s approach will cool some fevered thinking on 'fraud' next time around here, too?"

Text and Photograph Copyright John L. Welch 2006, 2009.

The Top Ten TTAB Decisions of 2008 ® [Part 2 of 2]

In Part 1 of this posting, which appeared yesterday, the TTABlog presented half of my annual top ten list. The remaining five cases 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.


In re Heeb Media, LLC, 89 USPQ2d 1071 (TTAB 2008) [precedential]. Despite Applicant’s claim that the Jewish community neither objects to nor views Applicant's use of the mark HEEB as disparaging, the Board affirmed a Section 2(a) refusal of the mark for clothing and entertainment services. Applying the two-part Harjo test (In re Squaw Valley Development Co., 80 USPQ2d 1264, 1267 (TTAB 2006)), the Board first found that HEEB "means a Jewish person and that HEEB has no other meaning pertinent to clothing or entertainment services." The second question was whether HEEB would be perceived as disparaging. Applicant argued that "the context in which Applicant uses the term 'heeb' is the exact opposite of derogatory and is rather as a symbol of pride and progressive identity among today's Jews." Based on the evidence of record, the Board concluded that HEEB "is considered to be disparaging by a substantial composite of the referenced group, regardless of context, including in connection with applicant's identified goods and services." "While applicant may intend to transform this word, the best that can be said is that it is still in transition." The Board therefore affirmed the refusal to register. [TTABlogged here] [Ron Coleman commentary here].



Lesley Hornby a/k/a Lesley Lawson a/k/a Twiggy v. TJX Companies, Inc., 87 USPQ2d 1411 (TTAB 2008) [precedential]. Finding that, at the time of Respondent’s trademark registration in 2000, the mark TWIGGY pointed uniquely to Petitioner Lesley Hornby a/k/a Twiggy, the Board granted her Section 2(a) petition for cancellation of TJX’s registration for TWIGGY for children's clothing. The Board found that Twiggy not only was an international sensation in the 1960s, but that through her various entertainment activities and promotional efforts she has "built on the extraordinary initial reputation and celebrity" so that she and her name Twiggy "had sufficient fame and reputation in 1999 and 2000" that "purchasers of children's clothing would, upon seeing the mark TWIGGY on such goods, presume an association with her." The Board denied TJX's laches defense and dismissed Twiggy’s Section 2(d), dilution, and fraud claims. As to laches, TJX failed to prove that Twiggy’s delay in seeking cancellation caused detriment. Twiggy's likelihood of confusion and dilution claims were dismissed because she stopped selling goods in the USA in about 1970, seven years before TJX's filing date. As to fraud, Twiggy alleged that TJX submitted a false declaration when it "was fully aware that applying a celebrity’s name to clothing may be likely to cause confusion, to cause mistake or to deceive." The Board, however, found no case law supporting Twiggy's contention that the language of the declaration requires an applicant to reveal third-party use other than trademark use, and no proof that TJX made a knowingly false statement. Moreover, the Examining Attorney issued the Section 2(a) refusal in the first office action, and so any failure by TJX to identify Twiggy in its declaration was not material. [TTABlogged here].



General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179 (TTAB 2008) [precedential]. Rejecting the claim of General Motors that it still owns rights in the mark LASALLE, the Board dismissed an opposition to registration of the identical mark for motor vehicles, including automobiles. Applicant was entitled to rely on the filing date of its foreign priority application as its constructive first use date: December 15, 2003. The first question for the Board, then, was whether General Motors possesses common law trademark rights from a date prior to Applicant's priority date. General Motors admitted that it has not produced any vehicles under the LASALLE mark since 1940. Moreover, the Board found no evidence "that convinces us that, after a sixty-five year hiatus, [GM] has any serious intent to reintroduce a LASALLE vehicle that was last marketed prior to America’s involvement in World War II." Furthermore, the Board could not find that the General Motors mark enjoys any residual goodwill. Taken as a whole, the evidence showed that GM stopped using the LASALLE mark in 1940. Although it subsequently licensed the mark, along with hundreds of other marks, GM failed to establish that it "actually used the mark on any goods prior to applicant’s priority date." [TTABlogged here]. [Cf. Chrysler LLC v. Pimpo, Opposition No. 91171962 (July 30, 2008) [not precedential] [TTABlogged here].



Railrunner N.A., Inc. v. New Mexico Department of Transportation and New Mexico Mid-Region Council of Governments, Opposition No. 91172851 (July 17, 2008) [not precedential]. Finding that Applicant New Mexico Mid-Region Council of Governments ("MRCOG") had violated Section 10 of the Trademark Act when it assigned its ITU application for the mark NEW MEXICO RAILRUNNER to the New Mexico Department of Transportation, the Board sustained this opposition. The Board observed that Section 10 of the Trademark Act in essence provides that, "prior to the filing of an allegation of use, ... an intent-to-use ('ITU') applicant may not transfer its application to another, unless it also transfers with it at least that part of applicant’s business to which the mark pertains." Moreover, according to the Board, an applicant must already be "providing the goods or services recited in the application." [TTABlog note: That does not seem correct. Suppose the recited goods or services are related to the business transferred. Isn't that good enough?]. MRCOG had not filed an Amendment to Allege Use; the assignment document made no reference to the transfer of any part of the business, and the record was devoid of documentary evidence of such a transfer. "While we have not previously required any particular formality for such a business transfer, we simply cannot imagine a transfer of a railroad business, with its attendant assets and liabilities - or any part of it - absent written documents." The Board therefore granted summary judgment to Opposer. [TTABlogged here].


In re Holm, Serial No. 76661768 (July 30, 2008) [not precedential]. Brett W. Holm of Chaska, Minnesota, spices up our list with his badly-aimed shot at registering the mark SPICE SHOT for "ammunition for firearms" [SHOT disclaimed]. The Board affirmed a Section 2(e)(1) refusal, finding the mark merely descriptive because the ammunition is comprised of spices formed into pellets (so that, according to his website, one may simultaneously shoot, kill, and season a bird). One might say that Holm shot himself in the foot with statements like this:"The seasoning is actually injected into the bird on impact seasoning the meat on impact from the inside out. When the bird is cooked the seasoning pellets melt into the meat spreading the flavor to the entire bird. Forget worrying about shot breaking your teeth [TTABlog comment: I hate when that happens!] and start wondering about which flavor shot to use!" [TTABlog query: How about chocolate if you're hunting moose?] Holm completely missed the target with his argument that "spice" and "shot" have many possible meanings, lamely asserting that purchasers might go through the following mental exercise:"Are SPICE SHOT goods medical or narcotics injections having fragrant odors? Are applicant's good photographic exposures of scandalous material? Are SPICE SHOT goods small servings of undiluted liquor." The Board saw that argument as a dud, pointing out that the determination of mere descriptiveness is not a guessing game conducted in the abstract: one must consider the meaning of the mark in relation to the specific goods in question. Here, the Board found that, in the composite mark, "spice" and "shot" retain their ordinary meanings and that the term SPICE SHOT tells consumers exactly what the product is." [TTABlog suggested improvement: If you put the SPICE SHOT ammo on the end of a flare and then fire away, you could shoot, kill, spice, and cook all in one blast.] [TTABlogged here].



"The Top Ten TTAB Decisions of 20**" is a Registered Trademark of John L. Welch. Text Copyright John L. Welch 2008-9.