Wednesday, February 04, 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.


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