Test Your TTAB "Eyeball"-Ability on Two Eagle Design Marks for Clothing

The Board focused its eagle eyes on the two design marks shown below, Applicant's mark shown on the left and Opposers' on the right, both for various clothing items. Applicant S.A.S.C.O. Trading claimed the color red for its mark, while Opposers did not claim any color for theirs. How would you decide this Section 2(d) opposition? Retail Royalty Company and American Eagle Outfitters, Inc. v. S.A.S.C.O. Trading Inc., Opposition No. 91173803 (July 10, 2009) [not precedential].


The goods of the parties were in part identical and the trade channels and classes of purchasers overlapped. The goods are relatively inexpensive and are purchased without a great deal of care. All of these du Pont factors weighed in Opposers' favor. There was no evidence of actual confusion (a neutral factor here), and no evidence of use of any third-party eagle marks in the clothing field. The Board concluded that Opposers' eagle mark is strong and well-known.

So what about the marks? The Board applied the "eyeball test," explained thusly by Professor McCarthy:

Because a picture is worth a thousand words, there is little in the way of guidelines to determine the visual similarity which will cause a likelihood of confusion of buyers. Obviously, for picture and design marks (as opposed to word marks), similarity of appearance is controlling. There is no point in launching into a long analysis of the judicial pros and cons regarding visual similarity of marks. Regarding visual similarity, all one can say is "I know it when I see it."

The Board knew it when it saw it, finding the overall commercial impressions of the marks to be "highly similar."

Both marks consist of flying eagle designs depicted in silhouette form. Also, in both marks the eagles are facing to the left, with outstretched wings, and with feet thrust forward as if landing.

Although there are specific differences in the marks, these differences are "not likely to be recalled by purchasers seeing the marks at different times."

Under actual marketing conditions, consumers do not have the luxury of side-by-side comparison of the marks, and furthermore, we must consider the recollection of the average purchaser, who normally retains a general, rather than a specific, impression of trademarks. Thus, the purchaser's fallibility of memory over a period of time must also be kept in mind.

In view of the "marked resemblances" between the marks, the Board found that this du Pont favored Opposers.

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

TTABlog comment: I think Applicant's mark looks like a flying, mutant grasshopper, while Opposer's mark is clearly smaller and is not red and looks like an eagle. Maybe I need new glasses.

TTABlog query: What's the difference between a grasshopper and an eagle? A grasshopper eats flies, but an eagle flies to eat.

Text Copyright John L. Welch 2009.

TTAB Finds "BRAIN GAMES" Merely Descriptive of Puzzle Books, Lacking in Acquired Distinctiveness

It was close to a no-brainer for the Board in its affirmance of a refusal to register the mark BRAIN GAMES for "printed publications, namely, books and magazines containing games, puzzles and other cognitive exercises." The Board found the mark merely descriptive under Section 2(e)(1), and lacking in acquired distinctiveness under Section 2(f). In re Publications International, Ltd., Serial No. 77103024 (July 6, 2009) [not precedential].


Mere Descriptiveness: Examining Attorney Michael J. Souders relied on Internet websites showing descriptive use of the term "brain games" in connection with various cognitive and mental exercise games, and in connection with services to help improve learning and memory skills. He maintained urged that "brain games" is used to describe "a genre of games designed to improve one's cognitive abilities and exercise the mind." The Board agreed.

Here, very little exercising of the brain is needed for consumers to understand the highly descriptive nature of "brain games" when it is used on "printed publications, namely, books and magazines containing games, puzzles and other cognitive exercises."

Applicant IPL did not contest the Examining Attorney's evidence or analysis, but instead merely pointed to a third-party registration for the mark MIND GAMES that IPL contended is "no less descriptive" than its mark. The Board, once again, pointed out that each application must be considered on its own facts and record evidence. [The Board also noted that MIND GAMES may be a double entendre, whereas BRAIN GAMES is not.]

Acquired Distinctiveness: The Board began its Section 2(f) analysis by noting that "[t]he greater the degree of descriptiveness, the greater the evidentiary burden on the user to establish acquired distinctiveness."

Applicant IPL's evidence was rather feeble: a photograph of a display at the Frankfurt Book Fair; one letter received by Applicant; a sales catalog, two thousand copies of which were distributed at trade shows; sale of 1,681,139 copies of the books since November 2006; advertising expenditures of $50,000 for the Frankfurt fair; and revenues of $5,743,981.

The Board found that this evidence fell "far short" of establishing "that purchasers of applicant's goods recognize BRAIN GAMES as a distinctive source indicator for such goods." Given the "highly descriptive" nature of the mark, "substantially more evidence" would be needed.

The Board noted that the sales and revenue figures (which "appear to be substantial, on their face") were based on unsupported representations of counsel, and in any case were not placed in context vis-a-vis Applicant's share of the market. In any case, gross sales and revenue figures may indicate commercial success of the product, but not necessarily secondary meaning of the trademark.

And so the Board affirmed the mere descriptiveness refusal.

TTABlog comment: I think this case falls above the WYHA line, but just barely.

Text Copyright John L. Welch 2009.

WYHA? TTAB Affirms Mere Descriptiveness Refusal of "LOCAL LABEL" for Clothing

Marylander Curtis A. Brubaker, Jr., failed to overcome a Section2(e)(1) mere descriptiveness refusal of the mark LOCAL LABEL for "hats; polo shirts; shirts; short-sleeved or long-sleeved t-shirts." The two arguments that this local Applicant tried on for size were sure TTAB losers, which is why this case is a candidate for our WYHA label. In re Curtis A. Brubaker Jr., Serial No. 78797601 (July 8, 2009) [not precedential].

Maryland state flag
Examining Attorney Steven Foster relied on dictionary definitions of "local" and "label," on excerpts from newspapers downloaded from NEXIS, and on Internet webpages, in arguing that "when viewed in connection with applicant's goods, the words 'LOCAL LABEL' merely describe clothing items sold near their location of manufacture or design." The Board found that evidence "highly persuasive."

Applicant Brubaker lamely asserted that "the average consumer would be hard-pressed to name what goods, or types of goods, etc., are described by the mark 'LOCAL LABEL.'" Of course, as the Board has pointed out a million times, that is not the correct approach to a mere descriptiveness determination:

"The question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them." In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).

Brubaker contended that the existence of a (now-expired) third-party registration for the mark LOCAL BRAND for clothing items supports registration of his mark, since that mark has "a nearly identical meaning." No way, said the Board:

... it is well settled that each case must be considered on its own merits and the Board is not bound by decisions of examining attorneys in other applications. In re Nett Design Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).

Two strikes, and Brubaker was out. The Board affirmed the refusal.

TTABlog comment: Well, if it were your money and your decision, Would You Have Appealed?

Text Copyright John L. Welch 2009.

TTAB Affirms Section 2(e)(5) Functionality Refusal of Bird Feeder Design

Another purported product configuration mark kicked the TTABucket as the Board affirmed a Section 2(e)(5) refusal to register the product design shown below for a "bird feeder," finding it to be de jure functional. Alternatively, the Board found that if the design is considered not functional, Applicant Woodlink's evidence of acquired distinctiveness is insufficient to support registration under Section 2(f). In re Woodlink, Ltd., Serial No. 78971622 (July 17, 2009) [not precedential].


Woodlink's described its mark as "a configuration of a bird feeder that comprises a cylindrical feeding tube and a top and bottom base." The Board noted that this broad description "encompasses virtually any bird feeder of the 'tube feeder' type."

As usual when considering functionality, the Board looked to the factors set forth in In re Morton-Norwich Prods., Inc., 213 USPQ 9, 15-16 (CCPA 1982):

(1) the existence of a utility patent disclosing the utilitarian advantages of the design;
(2) advertising materials in which the originator of the design touts the design's utilitarian advantages;
(3) the availability to competitors of functionally equivalent designs; and
(4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

The Board observed that the functional aspects of Woodlink's design "are apparent from a simple examination of the specimen" (below): the tube of wire mesh holds the feed and keeps it dry, and provides a perch or the birds. The wire also protects the feed from rodents. The bulbous top protects the feed from the elements and from rodents, while the base provides another perch. [So the design is at least de facto functional; but is it de jure functional? That is the question.]


Utility Patents: The Board found two third-party patents to be of relevance because they disclose the use of a bulbous top and a mesh tube, and it concluded that these patents are "clear evidence that applicant's [design] is functional." [TTABlog comment: why aren't these statements made in third-party patents merely hearsay? Why automatically give the statements credence just because they appear in a patent?] The Board found that, as in TrafFix, these patents provide "strong evidence" that the produce design is functional. [TTABlog comment: Actually, TrafFix says that a utility patent is strong evidence of functionality if the feature in question is claimed in the patent. What was claimed in the patents cited by the Board?]

Advertising: Woodlink's own advertising touted the utilitarian advantages of the design: "One of the most versatile and squirrel-proof feeders available." [TTABlog comment: Doesn't sound that bad to me.]

Alternative Designs: Woodlink argued that there are numerous alternative designs, but the Board concluded that "the sum of the features incorporated in applicant's [design] result in an overall design which is functionally superior."

Simpler of Cheaper Method of Manufacture: Woodlink asserted that its design does not result in a "comparatively simple or cheap method of manufacturing the product." But the Board pointed out that even if the design is no more expensive than others, the functional advantage of Woodlink's product afford it a competitive advantage.

And so the Board affirmed the functionality refusal.

Acquired Distinctiveness: For the sake of completeness, the Board considered Woodlink's claim of acquired distinctiveness, assuming arguendo that its design is not de jure functional.

Woodlink relied on its long use and repeat sales of its product, and on eleven affidavits from retailers. However, it provided no information regarding the amount of its sales, and the claim of 23 years of use without more is not enough to meet the "especially high" burden of proof applicable in this case due to the breadth of Woodlink's claimed mark. As to the form affidavits, they contain legal conclusions and are not directly from the ultimate purchasers of the goods; 0verall, they are insufficient to show acquired distinctiveness.

Therefore, the Board rejected Woodlink's Section 2(f) claim.

TTABlog comment: . Frankly, this was not the greatest opinion the Board has ever written. The distinction between de facto and de jure functionality was not clearly delineated nor clearly applied.

Sure the wire mesh performs a function, but is a tube shape better than a hexagon or an octagon or some other shape? Sure the top performs a function, but is the shape of the top in Woodlink's design better than other shapes? More easy to manufacture? Just because each of the elements of the feeder performs a function does not necessarily mean that the shape of each element is de jure functional. Think, for example, of a chair. Every chair is de facto functional because it performs a function. But is a particular chair shape de jure functional? That depends on whether the shape gives the owner a competitive advantage unrelated to any source-identifying significance.

Judge Rich made the point thusly in Morton-Norwich:

We wish to make it clear -- in fact, we wish to characterize it as the first addition to the Deister "truisms" -- that a discussion of “functionality” is always in reference to the design of the thing under consideration (in the sense of its appearance ) and not the thing itself. One court, for example, paraphrasing Gertrude Stein, commented that "a dish is a dish is a dish." Hygienic Specialties Co. v. H. G. Salzman, Inc., 302 F.2d 614, 621, 133 USPQ 96, 103 (2d Cir. 1962). No doubt, by definition, a dish always functions as a dish and has its utility, but it is the appearance of the dish which is important in a case such as this, as will become clear.

In short, the Board did little to spell out the functional advantages of this particular design. It seems to me that the design in question is indeed so simple as to be the cheapest way to provide the particular utilitarian features of a bird feeder.

Text Copyright John L. Welch.

Precedential No. 30: TTAB Okays Warranty Services for Applicant's Goods Sold Under Third-Party Marks

The Board reversed a refusal to register the service mark HOP for "providing warranties to consumers and retailers on power-operated outdoor products, namely, power-operated chainsaws, edgers, ...." The Examining Attorney maintained that warranting one’s own products is an activity that is merely incidental or ancillary to the sale of the goods, and therefore is not a service within the meaning of the Trademark Act. Applicant Husqvarna, however, convinced the Board that its warranty services involve not only its own goods, but also goods sold through third parties under their marks. In re Husqvarna Aktiebolag, 91 USPQ2d 1436 (TTAB 2009) [precedential].


The question on appeal, then, was "whether applicant's activities, as set forth in its identification of services, constitute a service for which a service mark registration may be issued." The criteria for making this determination are now set out in Section 1301.01(a) of the TMEP: "(1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service."

The Board noted the general rule stated in In re Sun Valley Waterbeds, Inc., 7 USPQ2d 1825 (TTAB 1988):

With respect to those cases which pertain to warranties, the general rule which emerges is that guaranteeing or warranting the performance of the goods of one's own manufacture is not normally considered a service within the contemplation of the Lanham Act unless, for example, the guaranty is offered or charged for separately from the goods, or is sufficiently above and beyond what is normally expected so that the warranty is raised to the status of a separate service activity.

Applicant Husqvarna explained that some of the products it manufactures are sold under its HUSQVARNA trademark, but others may be sold under the marks of third-parties (e.g. CRAFTSMAN products from Sears). Other than the HOP mark that identifies the warranty services, Applicant's trademarks do not appear on the goods. And so, Applicant urged, the consumer would regard the third-party seller as the manufacturer of the product, not Applicant. Thus "the provider of the service is different from the entity identified as selling the product to the consuming public."

The Board accepted Applicant's distinction:

Because purchasers would make a distinction between the provider of the warranty and the provider of the goods, the warranty services are not merely ancillary to the sale of the goods. Just as the sources of the goods and the warranty would be understood to be separate, the warranty services would be viewed as separate and distinct as well, and not as merely incidental to the sale of the goods.

Husqvarna also identified retailers as the beneficiaries of its services, including companies for whom it private-labels goods, the retailers then selling the goods under their own brands. These retailers would know that Applicant is the source of both the goods and the warranty services, so the distinction above would not apply. However, Husqvarna handles the warranty claims, provides a call-in center, settles claims with consumers, and provides support to the consuming public. Since these activities avoid the need for the retailers to provide a warranty, they constitute a service that applicant renders to retailers.

And so the Board reversed the refusal to register.

TTABlog note: This was an I-T-U application and the Board observed that "if the specimens applicant submits with its statement of use fail to show that the mark is used for services as described by applicant, it would be appropriate for the examining attorney, at the time he examines the statement of use, to refuse registration on this basis."

TTABlog comment: Maybe the Board should have affirmed unless Applicant amended its recitation of services to state that the services are rendered in connection with goods sold by others without using a trademark of Applicant?

Text Copyright John L. Welch 2009.

Ohio State Bar IP Seminar: Dreitler and True on Fraud

On July 31st, Joe Dreitler and Mary R. True of Bricker & Eckler (Columbus, Ohio) will discuss fraud on the PTO, at the Ohio State Bar Association symposium in Cleveland entitled "Intellectual Property Today: Why protecting IP is more important that ever." (brochure here). Registration begins at 8:00 AM. [That's in Cleveland, not Columbus.]


You may expect Joe and Mary to provide some lively commentary on the fraud and bona fide intent issues: they believe that many existing registrations were obtained fraudulently, and they will tell you why. Here's their summary of the talk:

Thou Shalt Not Lie or Put Thy Head in the Sand: Fraud on the U.S. Patent and Trademark Office in Trademark Matters

Rule 1.1 requires a lawyer to be competent and Rule 3.3 requires candor toward the tribunal. These Rules of Professional Conduct are important to keep in mind while prosecuting trademark applications. Not only can a lawyer face discipline from the U.S. Patent and Trademark Office and the disciplinary system of Ohio, but also the client can lose valuable legal rights.

TTABlog note: I have spoken to and corresponded with Joe Dreitler about these issues, and he has very interesting historical insights coupled with strong views. He is a bona fide trademark expert, as his resume will attest.

Text Copyright John L. Welch 2009.

CAFC Affirms TTAB's Genericness Refusal of "HOTELS.COM"

The U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's judgment in the HOTELS.COM case, in which the Board found (here) the term to be generic for "providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network." (TTABlogged here). In re Hotels.com, L.P., 91 USPQ2d 1532 (Fed. Cir. 2009).


The Board relied on definitions, websites, and similar "hotel" domain names, in finding that hotels are the "focus" of Applicant's services. It further found that the composite term HOTELS.COM connotes nothing more for trademark purposes than the common meanings of the component words: i.e., the ".com" suffix indicates that Applicant operates a commercial website via the internet that provides information about hotels, but it adds nothing to indicate source.

Applicant submitted sixty-four declarations from customers, vendors, and competitors, stating that "the term HOTELS.COM is not the common, generic name of any product, services, or field of study." The Board gave no weight to these declarations, in part because they were identical in form. The court found the total rejection of this evidence to be unwarranted, but nevertheless it ruled that the declarations "do not negate the TTAB's ultimate conclusion."

Applicant also submitted a Teflon-type survey purportedly showing that 76% of respondents regarded HOTELS.COM as a brand name. The TTAB was "skeptical'' of the survey, reasoning that "consumers may automatically equate a domain name with a brand name." It concluded that the survey questions "radically skew[ed] the results of the survey in applicant's favor" and "did not adequately reflect the difference between a brand name and a domain name."

The court, bearing in mind that genericness must be established by clear evidence, sided with the Board:

... on the entirety of the evidence before the TTAB, and with cognizance of the standard and burden of proof borne by the PTO, the TTAB could reasonably have given controlling weight to the large number of similar usages of “hotels” with a dot-com suffix, as well as the common meaning and dictionary definition of “hotels” and the standard usage of “.com” to show a commercial internet domain. We conclude that the Board satisfied its evidentiary burden, by demonstrating that the separate terms “hotel” and “.com” in combination have a meaning identical to the common meaning of the separate components. The Board’s finding that HOTELS.COM is generic was supported by substantial evidence.

And so the court affirmed the refusal of registration.


TTABlog note: I asked my go-to guy on surveys, Hal Poret, for his comments on Applicant's survey. He said this:

I agree with the TTAB and court that the classic Teflon format is problematic in the case of "dot.com" marks because people know that only one company can use a particular domain name and many would therefore assume that any "dot.com" name designates a particular source and is not a "common" name. When I have done surveys for dot.com marks, I have attempted to address this problem by incorporating a discussion of domain names into the traditional Teflon introduction and by having most or all of the terms in a Teflon survey be dot.com marks. By doing so, the respondent cannot simply assume all dot.com names shown are brands. The "brand" percentage for the tested dot.com mark can then be placed on a spectrum including true dot.com brands like amazon.com and truly generic sounding names like lawyers.com. However, a more open-ended approach to testing genericness may be more compelling for certain dot.com marks. For instance, if respondents had been asked to name particular companies or brands that offer hotel or travel-related services over the internet, and a high percentage had named HOTELS.COM (which seems conceivable), this may have been more convincing proof that HOTELS.COM is perceived as a brand.

TTABlog question: As a practical matter, what would a service mark registration give the Applicant that ownership of the domain name does not?

Text Copyright John L. Welch 2009.

Precedential No. 29: TTAB Strikes Testimony of Witness Not Identified in Pre-Trial Disclosure

Under Trademark Rule 2.121(e), a party must identify, no later that 15 days before the opening of its testimony period, each witness "from whom it intends to take testimony, or may take testimony if the need arises." Here, Petitioner failed to comply with that Rule, and so the Board struck the testimony of Petitioner's president. Jules Jurgensen/Rhapsody, Inc. v. Peter Baumberger, 91 USPQ2d 1443 (TTAB 2009) [precedential].


Respondent's counsel attended the deposition (by telephone) and cross-examined the witness under protest, reserving the right to object to the acceptance of his testimony. This comported with Rule 2.121(e)(3), which provides that if pretrial disclosures with regard to a witness are improper or inadequate:

an adverse party may cross-examine that witness under protest while reserving the right to object to the receipt of the testimony in evidence. … A motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure may seek exclusion of the entire testimony, when there was no pretrial disclosure…. [emphasis by Board]

Petitioner did not provide an explanation as to why did not identify the witness, but merely asserted that the testimony was "critical" to its case. Not good enough, said the Board:

Because Mr. Clayman is the type of surprise witness that pretrial disclosure practice is intended to discourage, respondent's motion to strike is granted.

TTABlog note: Rule 2.121(e) came into effect as of November 1, 2007. Proceedings commenced before that date are not subject to this rule. [See TTAB chart here].

Text Copyright John L. Welch 2009.

Prepositional Difference in Marks Not Enough to Avoid 2(d) Refusal, Says TTAB

The Board affirmed a Section 2(d) refusal to register the mark FOR EVERY WALK OF LIFE THERE IS ALWAYS ONE for various clothing items, finding it likely to cause confusion with the registered mark FOR EVERY WALK IN LIFE for some of the same clothing items. Applicant Nine Dots argued that the "OF" in its mark yields a different meaning that the "IN" in the cited mark, but the Board disagreed. In re Nine Dots LLC, Serial No. 77377797 (June 26, 2009) [not precedential].


The crucial issue was, of course, the similarity of the marks. Applicant argued that the marks have different connotations:

The cited mark is a clever play on the products which may be used "for every walk in life." Each time one walks and dons shoes the registrant’s products will be used. The Applicant’s mark on the other hand has a completely different meaning and connotation which is figurative. The phrase “walk of life” does not pertain to the physical act of walking but rather refers to an occupation, profession or social class.

The Board found two problems with Applicant's argument. First, consumers are unlikely to notice the slight difference between the prepositions used in the marks, particularly when encountering the marks at different times. Second, Examining Attorney Kristin E. Carlson provided newspaper evidence to show that "walk in life" can be used in a manner similar to the expression "walk of life." [E.g., "Who is your audience? Everyday people from all walks in life." Indianapolis Star, April 27, 2009.]

Moreover, although Applicant contended that the cited mark is a "clever play on the products," the Board pointed out that registrant's goods are actually footwear accessories, not shoes, as well as shirts, vest, pants, etc. "Therefore, the meaning and commercial impression of the expressions 'Walk of Life' and 'Walk in Life' can be the same.

The addition of the slightly laudatory phrase "There is always one" to Applicant's mark does not distinguish the marks. The marks "have almost identical beginnings," and "[m]any potential purchasers are likely to believe that registrant has now simply added an additional phrase to its mark."

Finally, the Board noted that, because many of the good involved are identical, the marks "do not need to be as close for there to be confusion."

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

TTABlog comment: I guess you can say the Applicant here was left in Dire Straits.

Text Copyright John L. Welch 2009.

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TTAB Grants Request for Reconsideration; Hell Freezes Over; Cubs Win World Series

Okay, I exaggerated a bit. At least regarding the TTAB. Most requests for reconsideration are lame or feeble, or both. Here, the Board granted Applicant O'Rourke-Nicaud's request for reconsideration of a the Bpard's affirmance of a final refusal to register the mark shown below [GYM disclaimed], for health club services, on the ground of mere descriptiveness or deceptive misdescriptiveness. Prior to the Board's decision, Applicant had belatedly requested remand of the application to the Examining Attorney in order to amend the application to seek registration on the Supplemental Register. In re O’Rourke-Nicaud Ventures, L.L.C., Serial No. 77035443 (June 30, 2009) [not precedential].


The request for remand was filed "very late" in the appeal process: after briefing had been completed. Applicant explained that it had to wait until it had used the mark before it could seek the amendment to the S.R. It had indicated to the Examining Attorney that it was attempting to begin use of the mark but was delayed by the downturn in the economy. Applicant requested suspension of the application, but the Examining Attorney refused that request, and the appeal ensued. The Board sympathized with O'Rourke-Nicaud:

In view of the totality of the circumstances, including the fact that the amendment to the Supplemental Register is intended to obviate the refusal of registration, we find that applicant has shown the necessary good cause. [See TBMP Section 1209.04.]

The Board suspended the appeal and remanded the case to the Examining Attorney to consider applicant’s amendment to the Supplemental Register and its Amendment to Allege Use. The Board took no position as to whether registration of the mark on the Supplemental Register is appropriate.

TTABlog comment: What do you think? Will the Examining Attorney allow registration on the S.R.? Or will he or she deem the alleged mark to be generic? Is the gym really open 24/7?

Text Copyright John L. Welch 2009.

"SKINNY CEREAL" Merely Descriptive of Cereal Products, Says TTAB

Peace Mountain Natural Beverages, owner of the registered marks SKINNY WATER, SKINNY JUICE, SKINNY COLA, SKINNY TEA, SKINNY CAPS, and SKINNY SHAKE [each with the second word disclaimed], failed to fatten its trademark portfolio with registration of its mark SKINNY CEREAL for "nutriceuticals for use as a dietary supplement in the form of cereal products and cereal-based snack foods" and for "breakfast cereal, snack food, namely, cereal based snack food, processed cereal-derived food products to be used as a breakfast cereal, snack food or ingredient for making food." The Board affirmed a refusal to register under Section 2(e)(1), finding the mark merely descriptive of the goods. In re Peace Mountain Natural Beverages Corp., Serial No. 77326673 (June 30, 2009) [not precedential].

Oliver asks for more
Examining Attorney Mary D. Munson-Ott relied on dictionary definitions of skinny (low-fat) and cereal, and on websites showing the use of “skinny” descriptively in connection with diet foods and beverages. She maintained that "consumers clearly understand ‘skinny’ to mean that the goods are lower in fat, lower in calories, or lower in some other ingredient or attribute that has a negative connotation in today's weight-conscious society."

Applicant contended that the word "skinny" has multiple meanings and that, with respect to the present mark, "the public cannot determine if applicant's mark is indicating a product which is low-fat, just slender, minimal or a thin product or a product which resembles skin." [I thought the last one, didn't you? - ed.]

The Board pointed out for the zillionth time that the meaning of a mark must be considered in the context of the goods at issue, not in the abstract:

It is settled that "[t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, 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 the mark is merely descriptive because it "immediately informs prospective customers that applicant's cereal and cereal products are low-fat and/or low-calorie, or otherwise will allow the consumers of applicant’s cereal and cereal products to achieve or maintain a skinny or thin body."


Applicant pointed to its six registered skinny marks, and to allowed applications for SKINNY SMOOTHIE and SKINNY JAVA [second word disclaimed in each], but the Examining Attorney responded that "trademark rights are not static, and eligibility for registration must be determined on the basis of the facts and evidence in the record at the time registration is sought." The Board agreed with the Examining Attorney:

As the late Judge Rich observed: "Rights in this field do not stay put. They are like ocean beaches; they shift around. Public behavior may affect them." Rich, "Trademark Problems As I See Them--Judiciary," 52 Trademark Rep. 1183, 1185 (1962). [An odd title, don't you think? -ed.]

The Board observed that the meaning of "skinny" has evolved over time and "has taken on a merely descriptive meaning today when used in connection with foods and beverages, that is, that the food or beverage is low-calorie and/or low-fat." Moreover, the Board noted for the zillionth time that "each case must be decided on its own facts. We are not privy to the files in applicant’s registrations and applications. In any event, we are not bound by the prior actions of examining attorneys."

And so it affirmed the refusals to register.

TTABlog comment: Ouch! That's a kick in the pants to the entire SKINNY family.

Text Copyright John L. Welch 2009.

D. Mass Judge Considers Scope of Design Patent Markman Hearing Post-Egyptian Goddess

Design patent fans will find interesting a recent Markman order issued by Judge Douglas P. Woodlock of our federal district court here in Boston. Judge Woodlock construed the claim of U.S. Design Patent No. D-469,840, entitled "Air Gun Sight," keeping in mind the CAFC's recent decision in Egyptian Goddess, Inc. v. Swisa, Inc., 88 USPQ2d 1658 (TTAB 2008) that cautioned against "the dangers of detailed verbal constructions." DePaoli v. Daisy Mfg. Co., Civil Action No. 07-cv-11778-DPW (July 14, 2009).


The single claim of the '840 design patent, as usual, simply read: "The ornamental design for [an] air gun sight, as shown and described." The patent includes two figures or drawings.

Plaintiff DePaoli offered a minimalist claim construction: "an ornamental design for [an] air gun sight, as shown and described in Figures 1 and 2 of the patent." Defendant Daisy, not surprisingly, proposed a much more complicated construction:

The ornamental design for [an] air gun sight as shown, which includes an elevation control housing and LED housing at the rear end of a tube holder and a ramp extending the distance between the sighting tube and the LED housing. The elevation control housing and the LED housing step up from the sides of the tube holder. The ramp is not flat, drops below the sides of the tube holder, and the stand that mounts the sighting tube onto the tube holder is not part of the ramp. Controlling elevation through the use of an elevation control screw is a functional feature that is not covered by the design.

The court first dealt with a "threshold question": "whether claim construction is the appropriate stage for the court to resolve the limiting effect of prosecution history and functionality on the scope of a design patent's claims."

The court reviewed the handful of district court decisions that addressed the issue of the proper approach to claim construction post-Egyptian Goddess, and concluded that functionality and prosecution history estoppel should not be included in the claim construction analysis:

To provide the jury with a verbalized construction of the ‘840 design patent’s claims which directs their attention to the two illustrations in the patent and then describes only those elements that are implicated by prosecution history and functionality would place undue emphasis on those few elements. This is precisely the danger against which the Egyptian Goddess court cautioned.

The court therefore adopted Plaintiff DePaoli's simple claim construction, ruling that the court would address the functionality and estoppel issues "if and when they are raised at some later stage of the proceedings, such as resolution of motions for summary judgment or as part of the jury instructions."

TTABlog note: My previous discussion of Egyptian Goddess here.

Text Copyright John L. Welch 2009.

Precedential No. 28: TTAB Affirms 2(e)(5) Functionality Refusal of Bicycle Spoke Design

After an exhaustive analysis, including a review of several pertinent utility patents, the Board affirmed a Section 2(e)(5) refusal of the product configuration mark shown below for "bicycle wheels," finding the design to be functional. In re Rolf Dietrich, 91 USPQ2d 1622 (TTAB 2009) [precedential].


Applicant Dietrich described his alleged mark as follows:

The mark consists of a spoke pattern in a bicycle wheel comprising a hub, shown in phantom lines in the center of the drawing, and a rim, shown in phantom line around the perimeter of the drawing, as viewed from the side along the axis of rotation of the wheel. The spoke pattern appears to consist of a first set of pairs and a second set of pairs of parallel spokes that are spaced apart, wherein each pair of spokes from the first set appears to intersect an adjacent pair of spokes from the second set to define diamond shaped regions between the rim and the hub of the wheel.

The Board began its functionality analysis by observing that a product feature is functional and cannot serve as a trademark "if the feature is essential to the use or purpose of the article or if it affects the cost or quality of the article." TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001), citing Qualitex Co. v. Jacobson Products, Inc., 514 U.S. 159, 34 USPQ2d 1161 (1995), quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982).

Once again, the Board turned to the approach of In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982), which set forth four factors to be considered in determining whether a product design is functional:

(1) the existence of a utility patent that discloses the utilitarian advantages of the design;
(2) the touting by the originator of the design in advertising material of the utilitarian advantages of the design;
(3) facts showing the unavailability to competitors of alternative designs; and
(4) facts indicating that the design results from a relatively simple or cheap method of manufacturing the product.

Utility Patents: In response to Examining Attorney Angela Micheli's request for information, Dietrich submitted 10 utility patents relating to paired-spoke bicycle wheels.

The Board pointed out that it is proper, or purposes of determining functionality, to look not only at the utility patent claims but to the specification or disclosure as well. Third-party patents may provide evidence as well.

After a 15-page, detailed discussion of the patents and of spoked-wheel construction, the Board found it clear that " each of the features which combine to produce the design of the applied-for wheel design, in particular, offset, tangentially laced, paired spokes, and paired flange holes, are covered by one or more utility patents, and that these features clearly 'affect...the quality' of applicant's bicycle wheel." In fact, Mr. Dietrich admitted that the subject spoke pattern "is within the scope of his patents."

Nevertheless, Dietrich contended that the subject design constitutes an "arbitrary flourish" on the wheel design: "arranging the spokes so that, when the wheel is viewed from the side, '...[t]he spoke pattern appears to consist of a first set of pairs and a second set of pairs of parallel spokes that are spaced apart...' is not essential to anything having to do with building a wheel for a bicycle or to how that wheel will perform."

The Board, however, disagreed with Applicant's approach: "The question is not whether the design when viewed from a particular angle causes the wheel to work, but rather whether the arrangement of the spokes that produces or results in the design when viewed at that angle causes the wheel to work."

The applied-for design is dictated by the underlying functional aspects of the physical design of applicant’s wheels, which clearly 'affect the quality' of applicant's bicycle wheels. The spokes in the wheel are laced that way because the wheel works better that way, notwithstanding that the resulting pattern when viewed from a certain angle may also happen to have visual symmetry or appeal.

In light of the "strong weight" to be accorded to utility patent evidence under TrafFix, the Board found the patents sufficient to establish a prima facie case that the subject design is functional.


Touting: Dietrich's website and advertising "specifically touts applicant's paired spoking technology, regardless of the particular pattern used." Moreover, there was no evidence of record that applicant or anyone else promotes the spoking pattern of a bicycle wheel for its visual appeal. The Board concluded that this factor is either neutral or it supports a finding of functionality.


Alternative Designs: The Board pointed out that the existence of other designs "does not detract from the functional character of applicant's particular spoking design." In any case, Dietrich's design is patented and "apparently performs better;" moreover, his advertising suggests that his "wheel designs" perform better than other wheel designs." Finally, many of the third-party designs may be functional as well.

Simple or Cheap Method of Manufacture: The Board noted the statement in one of applicant's patents that a wheel embodying the subject design, i.e., with offset pairing, "is much easier to produce" than a wheel with exact pairing. In any case, even if Dietrich's design were more costly to produce, it still affects the "quality" of the design. And, as stated in TrafFix, a product feature is functional "when it affects the cost or quality of the article."

And so the Board concluded that the purported mark is functional and unregistrable under Section 2(e)(5).

TTABlog comment: I was going to take a bike ride this afternoon, but reading this decision sapped all my energy.

You will remember the golf putter head decision of a few months ago (TTABlogged here). It seems clear that, once a product is covered by a utility patent, a trademark applicant is going to have a heck of a time convincing the Board that the product design somehow qualifies for a trademark registration.

Text Copyright John L. Welch 2009.

WYHA? TTAB Finds "Dirt Drifters" Merely Descriptive of -- Guess What?

Applicant Shawn Esposito hit a TTABrick wall in his attempt to register the mark DIRT DRIFTERS for "television show production services." The Board found the mark merely descriptive under Section 2(e)(1). Esposito took small consolation from the Board's reversal of a second refusal concerning his response to the PTO's request for information under Rule 2.61(b). In re Esposito, Serial No. 77248477 (June 30, 2009) [not precedential].

Applicant's specimen of use
Mere Descriptiveness: Examining Attorney Brian Pino contended that DIRT DRIFTERS "merely describes drifters that perform drifting techniques on dirt; the applicant’s services feature such performances." He relied on a Wikipedia definition of "drifting:"

Drifting refers to a driving technique and to a motor sport involving the use of the technique. A car is said to be drifting when the rear slip angle is greater than the front slip angle, and the front wheels are pointing in the opposition direction to the turn (e.g., the car is turning left, wheels are pointed right), and the driver is controlling these factors.

And he submitted a carload of evidence showing that (1) drifting is a motor sport; (2) drifters participate and compete in drifting competitions and exhibitions; and (3) dirt drifting is drifting on dirt roads.

Esposito conceded that “[d]irt drifting is a technique used in the sport,” but maintained that the sport is known as Rally-X or Rally-Cross, not dirt drifting.

The Board, however, concluded that the term "dirt drifters," means "people who compete and participate in dirt drifting activities." Since Esposito services are broad enough to include [and do include] television shows about dirt drifting, the mark is merely descriptive of the services.

Rule 2.61(b) Requirement: When the dust settled, Esposito had won a small battle, though he had lost the war. The Board reversed the refusal based upon the PTO's contention that Esposito had not fully responded to a request for information.

In response to the Examining Attorney’s inquiry as to the significance of the words "dirt,” “drifters,” and “dirt drifters,” Esposito provided the following information:

1. “Dirt drifting” is a technique used in Rally-X or Rally-Cross;
2. “Dirt drifting” is not the name of the sport; and,
3. Racers are called Rally-X drivers, not “dirt drifters” or “drifters.”

The Board found that Esposito had fully complied with the request for information and, therefore, the refusal to register the mark on this ground was not sustainable.

TTABlog comment: I have to say that "dirt drifting" just doesn't have any appeal to me as a spectator sport. How do you tell who wins?

Text Copyright John L. Welch 2009.

Test Your TTAB Judge-Ability

Here's another chance to prove your qualifications for a TTAB judgeship. Pro se Applicant GITZIT, Inc. sought to register the mark GITZIT for "fishing lures." Opposer J.L. Pennington claimed likelihood of confusion, and he proved prior use of the identical mark for the identical goods. Are you hooked? J.L. Pennington v. GITZIT, Inc., Opposition No. 91172981 (June 30, 2009) [not precedential].


The Board's opinion is 5 pages long. Can you match that?
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Fraud! TTAB Enters Judgment on the Pleadings Against Applicant Who Admitted Non-Use of Its Mark

Here's a new, albeit not particularly significant, decision for our fraud collection. Applicant Mellbeck Ltd, acting pro se, filed an application [under Sections 1(a) and 44(e)] to register the mark shown below for a "laundry list" of more than fifty clothing items. In its answer to the Notice of Opposition, Mellbeck, a British company, admitted that it does not sell all the goods in this country. Opposer Esprit moved for judgment on the pleadings based on that admission and on a further admission made by Mellbeck in its opposition to the motion. The Board granted the motion, bringing to a halt this PTO train wreck. Esprit IP Limited v. Mellbeck Ltd, Opposition No. 91189412 (June 25, 2009) [not precedential].


Applicant's Motion to Amend: The Board first considered Mellbeck's motion to amend its application to list a mere 14 items of clothing. However, the new list included only one item ("hats") that appeared in the original identification. For that reason the Board denied the motion, but it also noted that even if the motion were granted, that would not cure Mellbeck's fraud. See Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003). [If you want to cure, you have to do it before the application is challenged - ed.]

Opposer's Motion for Judgment on the Pleadings: Mellbeck admitted in its answer that it "does not sell in the US" all of the goods listed in its application. It "further clarifies this admission by its statement in response to the motion for judgment on the pleadings that the identification of goods in the application was set forth in error." Mellbeck moved to amend the identification, it said, to list 14 items "that should have been listed at the outset."

By setting forth an identification of goods for more than fifty goods, when applicant was not using the mark on all of these goods, and indeed may have been actually using the mark only on one of those identified goods, applicant made a material misrepresentation of fact that the U.S. Patent and Trademark Office relied upon in determining applicant's right to a registration.

Mellbeck's assertion that the original identification was set forth "in error" was of no help, since it "knew or should have known that it was not using the involved mark on the vast majority of the identified goods." Likewise of no import were the facts that Mellbeck was not represented by an attorney, and had no prior experience in United States trademark matters. See Hurley International LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007).

Therefore, the Board entered judgment sustaining the opposition.

TTABlog comment: It seems to me the Board went beyond the pleadings when it looked at Mellbeck's response to Opposer's motion. As pointed out in footnote 3, The Board couldn't convert the motion to one for summary judgment because the parties had not held the required discovery conference and Opposer had not served its initial disclosures. So the Board chose the dubious "judgment on the pleadings" route.

Did Mellbeck really admit that it was not using the mark on some of the goods at the time it filed its application? It admitted in its answer that it "does not sell in the US all of the apparel items listed in the application," but what about on the filing date? Was it not selling all the items then? When it said it made an "error" in the original list, what exactly did that mean? Could it mean that Mellbeck erroneously included in the original application goods on which it was using the mark, but would soon be phasing out?

Did the Board make an improper leap in logic in order to clear this train wreck off the TTAB tracks?

Text Copyright John L. Welch 2009.

Precedential No. 27: U.S. CUSTOMS Logo Barred by Sections 2(a) and 2(b)

On Jun 26, 2009, the Board re-designated its recent decision in In re Peter S. Herrick, P.A., 91 USPQ2d 1505 (TTAB 2009) as precedential. [TTABlogged here]. Until this re-designation, perhaps the most lasting aspect of the case was my coining of the term "trifusal" to describe the PTO's final action.

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WYHA? "STEAM N' MASH" Merely Descriptive of Processed Potatoes, Says TTAB

Well, what do you think of this one? Applicant ProMark Brands, Inc. sought to register the marks ORE-IDA STEAM N' MASH and STEAM N' MASH for "processed potatoes," but Examining Attorneys Kathleen H. Lorenzo and Inga Marie Ervin said no. In the former case, Lorenzo demanded a disclaimer of STEAM N' MASH, and in the latter Ervin refused registration, both on the ground of mere descriptiveness. The Board required just over six pages to issue its affirmances. In re ProMark Brands Inc., Serial Nos. 77266099 and 77266087 (June 15, 2009) [not precedential].


In each case, the Examining Attorney relied on definitions of "steam" and "mash," excerpts from numerous websites using the terms "steam" and/or "mash" in describing the preparation of potatoes, and an excerpt from ProMark's own website referring to its STEAM N' MASH potatoes with text describing how easy it is to steam and mash processed potatoes.

ProMark feebly argued that the Examining Attorneys had improperly dissected the mark, and that the mark is at most suggestive. It submitted copies of its own and third-party registrations that include the word "steam" and/or "mash," some of which did not include disclaimers or Section 2(f) claims. And it pointed out [why, one wonders? - ed.] that other foods may be steamed and mashed.

The Board agreed with the Examining Attorneys. Applicant's own website was particularly probative, as were the third-party websites. With regard to the third-party registrations, they do not compel a different result since each case must be decided on its own factual record. Moreover, those registrations and the website excerpts show that "steam" and "mash" have "commonly understood meanings in connection with food preparation, particularly potatoes."

The Board therefore affirmed the refusals.

TTABlog comment: I note that the apostrophe in Applicant's mark seemed to cause the Board some trouble. At page 2, it appears after the N, but at pages 3, 4 and 5 it jumped before the N, and at page 6, it jumps from before to after the N.

Anyway, shouldn't there have been two apostrophes: 'N' ?

I tried to think up a possible double entendre argument for STEAM N' MASH (or STEAM 'N MASH), but couldn't come up with one. Any ideas?

Text Copyright John L. Welch 2009.

TTAB Says No and No to "NAP OF THE CARIBBEAN" Double Entendre Argument

The TTAB turned a double play in affirming Section 2(d) and 2(e)(1) refusals of the mark NAP OF THE CARIBBEAN for "telecommunications services, namely, providing central connection points for telecommunication network carriers." [It wasn't a Tinker to Evers to Chance double play, but Hairston-Grendel-Rogers]. Applicant Centennial argued that the mark is a double entendre (can you guess the supposed other meaning?), but the Board was not on board. In re Centennial Communications Corp., Serial No. 76283603 (July 2, 2009) [not precedential].


Mere Descriptiveness: Examining Attorney Karen Bush relied on an entry for "NAP" at the Acronym Finder, on a Wikipedia entry for "Caribbean," and on several Internet websites, in maintaining that NAP stands for "network access point" and CARIBBEAN identifies a geographic location. She concluded that NAP OF THE CARIBBEAN immediately describes a feature, function, or purpose of Centennial's services.

... the telecommunication services ... provide central connection points for telecommunication network carriers. The central communication points are network access points located in the Caribbean; in other words the services are a NAP OF THE CARIBBEAN.

Centennial feebly argued that the Examining Attorney had improperly dissected the mark and that NAP OF THE CARIBBEAN creates a double entendre:

... the term "nap" means a short sleep or period of relaxation and the term "Caribbean" means a destination with a reputation where one can go to unwind or relax; ... when combined, the phrase NAP OF THE CARIBBEAN "connotes a laid-back, relaxed, easy-going type of impression."

The Board agreed with the Examining Attorney. As to the double entendre argument, the Board was not laid-back at all:

... in each of the double entendre cases cited by applicant, the secondary interpretations that make each expression a double entendre consist of an association that the public would make quite readily. In this case, we are not convinced that purchasers would readily associate a short sleep or period of relaxation with NAP OF THE CARIBBEAN. There is nothing of record to indicate that visitors to the Caribbean “nap” any more than visitors to other regions of the world, or that, even if the record did establish this point, ... prospective purchasers of applicant’s services would be aware of the purported practice.

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

Likelihood of Confusion: The Board also found Centennial's mark likely to cause confusion with the registered mark NAP OF THE AMERICAS [NAP disclaimed] for various telecommunications services. Centennial did not disagree that these services overlap with its services. It asserted that the purchasers of the services are sophisticated, and the Board was not wholly dismissive, while noting that although the purchasers of the services would be knowledgeable, that does not mean that "they would be immune from confusion as to source or sponsorship." This factor weighs "slightly against a finding of likelihood of confusion."

Centennial again relied on its double entendre argument to distinguish the marks, but the Board had discerned no double meaning and it concluded that the marks have similar connotations. Moreover, the Board found that the marks "engender similar overall commercial impressions."

... it is reasonable to conclude that purchasers familiar with registrant's mark will view NAP OF THE CARIBBEAN as identifying a more specialized telecommunication service from registrant which serves to link the Caribbean to other parts of the world.

Centennial urged that NAP OF THE AMERICAS is merely descriptive and therefore entitled to a narrow scope of protection. The Board asserted that this argument "constitutes a collateral attack upon the validity of the registered mark and as such can only be entertained in the context of a petition to cancel. Furthermore, the issuance of the cited registration under Section 2(f) of the Trademark Act indicates that the mark shown therein had become distinctive of the registrant's services in commerce prior to the issuance of the registration." [TTABlog comment: Since when is a party precluded from arguing that a registered mark is weak and entitled to a narrow scope of protection?]

The Board noted, however, that NAP stands for "network access point," and it certainly has descriptive significance. However, it has the same meaning in both marks, and the Board's finding of confusing similarity "is not based solely on the commonality of the term NAP, but on the overall structure of the marks, and the overlapping geographical connotations."

The Board affirmed the 2(d) refusal.


TTABlog comment: In baseball, a player who is hitting under .200 is said to be below the Mendoza line. Do you think this case falls above (i.e., worth appealing) or below the WYHA line? Should the WYHA line, like the Mendoza line, be set at 20% chance of success? 10% ? 5% ? 0% ?

Text Copyright John L. Welch 2009.

TTAB Dismisses 2(d) Opposition: Marks Similar but Goods and Services, Trade Channels, and Purchasers Too Different

Despite the strength of General Cable's "Roleaux" mark (below right), and the similarity between that mark and National Rural's design mark (below left), the Board dismissed this Section 2(d) opposition. It found National Rural's services so different from General's goods and services, the channels of trade and classes of customers so different, and the potential purchasers so knowledgeable and careful, that confusion is not likely. General Cable Technologies Corporation v. National Rural Electric Cooperative Association, Opposition No. 91165554 (June 25, 2009) [not precedential].


National Rural sought to register its mark for "promoting the interests of electric cooperatives by promulgating standards for uniform data formatting for facilitating the transfer of data between software applications." General Cable relied on its registered "Roleaux" design mark for wires, cables, and related products and services.

General Cable claimed that its mark is famous, but despite use of the mark since 1927, more than $5 billion in sales of wire and cable during the period 2003-2007, extensive advertising, and ranking as the largest supplier of energy cable in the United States, its proof fell short. The problem was that General Cable primarily displays the "Roleaux" mark adjacent the words "General Cable," and there was no evidence that the design has any renown independent of the trade name. The Board did, however, find that the mark to be "strong and distinctive."


As to the marks, the Board spent little energy in finding them to be similar in overall impression ("intersecting arcs forming a circular triangle").

As to the goods/services, on their faces, General Cable's products and services and National Rural's services (essentially trade association services for electric utilities in the nature of promulgating data transfer services) are different in character and use. Although both sell their goods/services to electric cooperatives, "that does not change the distinctly different character and use of their goods and services." The Board found no evidence that the goods and services of the parties "will come to the attention of the same types of actual or potential consumers or users suggesting a common origin."

The Board noted that Opposer and Applicant attend the same trade shows and place advertisements in the same publications, and at one show the involved marks were displayed at adjacent booths. General Cable claimed that the channels of trade and classes of consumers are identical.

The problem with opposer's argument is that opposer presumes that the same people who buy wire and cable for an electric cooperative are also involved with the software used by electric cooperatives. There is no evidence regarding the organization of electric cooperatives that establishes that the persons in charge of information technology are also responsible for purchasing wire and cable. Considering the obvious complexity involved in distributing electricity and managing an electric cooperative, it is inconceivable that the individuals in charge of information technology are also involved with the purchasing of wire and cable.

Indeed, the Board found no evidence that the same people in charge of information and technology are the same people who purchase wire and cable. Therefore, it concluded that the channels of trade and classes of consumers are different, despite the fact that the involved goods and services are marketed to electric cooperatives through the same media.

Turning to the degree of consumer care, the Board found that the involved purchasers exercised "careful consideration" and are "knowledgeable about the goods and services and their source."

Finally, the lack of any reported incidents of actual confusion, according to the Board, supported its finding that the trade channels and classes of customers are different.

Balancing the relevant du Pont factors, the Board found no likelihood of confusion, and it therefore dismissed the opposition.

TTABlog comment: I don't find the marks to be that similar, do you? Applicant's mark reminds me of a stylized drawing of an atom or molecule or something of that ilk. Opposer's mark reminds me of a camera lens.

Three years ago, National Rural was on the losing end of another inter partes battle over two design marks, when it sought to cancel a registration for the mark shown below left, based on its mark shown below right. The Board found the similarity between the marks to be "not great," in large part because of the inclusion of the word SUZLON in the challenged mark. (TTABlogged here).


Text Copyright John L. Welch 2009.

Antler Trade Dress Fails to Function as a Trademark for Ammunition, Says TTAB

The Board affirmed a refusal to register the design shown below as a trademark for ammunition, finding that it fails to function as a source indicator. Applicant Alliant fired a blank with its claim that the design is inherently distinctive, the Board concluding that the design is not so unique that it would automatically be perceived as a trademark. In re Alliant Techsystems Inc., Serial No. 78546549 (July 2, 2009) [not precedential].


The Board applied the "time-tested" analysis of Seabrook Foods, Inc. v. Barwell Foods, Ltd., 196 USPQ 289 (CCPA 1977) in determining whether Alliant's trade dress is inherently distinctive. In essence, according to Prof. McCarthy, the question is whether the design "is so unique, unusual or unexpected in this market that one can assume without proof that it will automatically be perceived by customers as an indicia of origin -- a trademark."

Alliant urged that the design "creates a separate commercial impression upon the buyer as it emerges out of a background and hits the buyer in the eye in such a way that it is easily recognizable by consumers as a source indicator." According to Alliant, its design is "suggestive of a high-technology, high-energy molecular reaction through the use of vibrant colors (red, orange and yellow) complimented (sic) by linear, dotted, and swirling patterns and framed by uniquely positioned deer antlers."


Examining Attorney Dayna J. Browne relied on product packaging of several competitors in the ammunition industry, including some showing "a variety of pictorial representations of deer, ranging from full body deer to deer silhouettes to a deer head with antlers. No matter the type of representation, the deer is always displayed with antlers." Other packaging showed the use of colors like red, yellow, and orange, "presumably to suggest an explosion caused by the ammunition."

The Board noted Alliant's statement that the product "is made specifically for deer hunting," and that the design is always used with Alliance's mark FUSION. While it conceded that the colors of Alliance's packaging are "very bright," the Board found that brightness alone is not sufficient "to transform the packaging into an inherently distinctive trademark for applicant's goods." It concluded that

... the combination of the swirling bright colors and the deer antlers, as described in the description of the mark, is not so unique or unexpected in the ammunition market to conclude that the design automatically is perceived as a trademark for applicant's ammunition.

Alliant's design, said the Board, "is essentially a mere decorative or ornamental background for the display of its mark FUSION." The fact that the design covers the entire packaging added to the Board's view "that buyers will not perceive the design as a source indicator."

And so the Board affirmed the refusal to register under Sections 1, 2, 3, and 45 of the Trademark Act.

TTABlog comment: Applicant Alliant has been using the mark for more than four years. Do you think that, a year from now, the five-year presumption may be enough to get this design registered under Section 2(f)? Or will more be required?

Note that the competitor packaging included deer with antlers. What if one showed a deer without antlers? Would that be inherently distinctive? Or does one not shoot antler-less deer?

Text Copyright John L. Welch 2009.

CAFC Rules on Whether "SEED TO PLATE" Design Marks are Confusingly Similar

In a nonprecedential disposition, the U.S. Court of Appeals for the Federal Circuit ruled today on whether the two marks shown below, both for services related to "growing crops as food," are likely to cause confusion. In re Northland Organic Foods Corp., Appeal No. 2009-1139 (Fed. Cir. July 8, 2009). What do you think?


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Another WYHA? TTAB Affirms 2(e)(4) Surname Refusal of "MERIWETHER" for Cabinetry

The Board affirmed a Section 2(e)(4) refusal to register the mark MERIWETHER for cabinetry, finding it to be primarily merely a surname. Applicant Masco argued that the mark has non-surname significance as the first name of explorer Meriwether Lewis, but that argument, unlike Lewis, went nowhere. In re Masco Builder Cabinet Group, Serial No. 77309908 (June 15, 2009) [not precedential].

Meriwether Lewis
Examining Attorney Dominic J. Ferraiuolo proffered more than 300 listings for persons with the surname MERIWETHER in the United States ("not an especially rare surname," observed the Board). The mark has the "look and sound" of a surname, the Board opined, and "does not look like a coined term or an acronym, nor anything else but a surname."

Based on these findings, we find, prima facie, that MERIWETHER is primarily merely a surname. MERIWETHER, depicted in standard character form, looks like a surname, and it in fact is a surname.

The next question was whether this prima facie case was overcome by any recognized non-surname meaning or significance.

Masco contended that MERIWETHER has non-surname significance as (1) the first name of Meriwether Lewis of the Lewis and Clark Expedition, and (2) as the name of the Meriwether National Golf Club, near Portland, Oregon.

The Board noted that Masco's evidence showed that MERIWETHER is not merely a surname, but the question is "what the primary significance of the mark would be to the purchasing public." The Board pointed out that "[t]he mere existence of non-surname meanings does not preclude a finding that the mark is merely a surname."

The Wikipedia entry for "Meriwether Lewis" (here) discusses his role in the famous Expedition, but there was no evidence that consumers are aware that Lewis' first name was Meriwether, "much less any evidence that they would recognize or refer to Meriwether Lewis by his first name." Lewis is not an historical figure of such renown that consumers, seeing the word MERIWETHER, would think it referred to Lewis, rather than perceiving it primarily as a surname.

As to the Meriwether National Golf Club, even assuming that the club was not named after someone with the surname MERIWETHER, there was no evidence that this golf club is well-known to consumers, even golf fans. This non-surname significance is "much too obscure to support a finding that it, rather than the surname of significance of MERIWETHER, is the primary significance of MERIWETHER."

The Board concluded that there are no recognized non-surname meanings of MERIWETHER that eclipse its surname significance, and so it affirmed the refusal.

TTABlog comment: The golf course evidence was obviously feeble, but the Meriwether Lewis argument wasn't much better. Would you have given it a shot on appeal? What do you think a survey would have shown as to people's perception of the word MERIWETHER? Given that, as H.L. Mencken said, the average American is below average, I think one in ten thousand would say "Meriwether Lewis."

Text Copyright John L. Welch 2009.