Precedential No. 36: "MTOWN CLOTHING" and "MOTOWN" Confusingly Similar for Clothing, Croons TTAB

Perhaps Applicant Charles O'Rourke cried "the tears of a clown" when the TTAB sustained this Section 2(d) opposition to his application to register the mark MTOWN CLOTHING & Design for clothing [CLOTHING disclaimed]. The Board found confusion likely with the mark MOTOWN, registered for musical recordings and previously used for clothing. UMG Recordings, Inc., substituted for Universal Music Group v. Charles O’Rourke, 92 USPQ2d 1042 (TTAB 2009)


Post-Trial Registration Inadmissible: The Board first dealt with a procedural issue (one that probably led to the Board's deeming this otherwise straightforward case as precedential) regarding Opposer UMG's belatedly-issued registration for the mark MOTOWN for various clothing items. UMG pleaded ownership of the relevant application in its notice of opposition, and O'Rourke admitted UMG's ownership. UMG placed a copy of the application in evidence via its notice of reliance. In its main brief, UMG requested that the Board take judicial notice of the registration if it issued before final decision. O'Rourke argued in its final brief that UMG did not have a registration for clothing, but he did not specifically object to UMG's request.

After briefing was completed, the registration did issue, and UMG submitted a "status and title copy" along with another request for judicial notice. The Board, however, pointed out that it does not take judicial notice of USPTO records, and it refused to allow the registration into evidence. [What if the registration issued after the testimony period had ended but before final briefing? Too late, I think - ed.]

Likelihood of Confusion: UMG established prior use of the MOTOWN mark for clothing. It also proved the fame of the MOTOWN mark in the music industry. In the face of that evidence, only several "miracles" could bring victory to O'Rourke. [Do you "second that emotion"?]


UMG established that various clothing items bearing the marks MOTOWN and M MOTOWN have been sold since 2003 at a retail shop at the Detroit Metro Airport, three years before O'Rourke's constructive first use date. The mark MOTOWN has also been licensed to the Motown Historical Museum since 1988, and to the Motown Cafe Orlando since 1999.

The Board found that "the similarities in the marks, the use of the marks for many identical items, and the overlap in channels of trade and classes of consumers are the most significant" du Pont factors here. [I.e., the same classes of consumers would "shop around" in the same trade channels.]

O'Rourke lamely argued that his MTOWN mark has a different connotation because the M in his mark "is an abbreviation for the 'Middle' in 'Middletown,' New Jersey" and therefore "connotes hometown pride in that place and in other towns whose names begin with the letter M." The Board, however, found it unlikely that consumers outside applicant's hometown will equate MTOWN with Middletown, New Jersey. "In short, may consumers may find the marks to have the same or very similar connotations."

The Board took particular notice of the commercial impressions made by the marks.

[T]he record is replete with evidence showing that both parties’ marks tend to be emblazoned across the fronts of items such as shirts and caps. Indeed, applicant essentially argues that his goods are bought to be worn as displays of hometown pride. When used in this way, the marks have very similar commercial impressions, and both are used in ways that turn a spotlight on the letter M. Overall, while the marks may have some dissimilarities as to sound or appearance, their connotations and overall commercial impressions are likely to be the same for many consumers.

Lastly, the Board noted that the MOTOWN marks are famous in the music industry, and that the licensed operations "may utilize decor and displays of memorabilia that draw an association between opposer's history in the music industry and the items marketed" in those locations. [And maybe they don't - ed.]

Opposer’s mark is famous for musical recordings and performances, and opposer has demonstrated that such fame has been exploited by its use of the mark on collateral products, including clothing. *** As a result, consumers familiar with opposer’s famous music industry marks, including the various MOTOWN and M MOTOWN marks, when subsequently confronted with clothing items adorned with applicant’s mark would likely conclude it was another variation on the marks used by or authorized by opposer for such goods.

And so, considering the relevant du Pont factors, the Board not surprisingly sustained the opposition.

TTABlog comment: Do you think it's easy trying to work in Smokey Robinson song titles into a post about a TTAB case? "Ooh baby baby" it's not. What do you do with "tracks of my tears," "you really got a hold on me," and "going to a go-go"?

Text Copyright John L. Welch 2009.

Precedential No. 35: Finding Mutilation, TTAB Affirms Refusal of Applicant's Two Bottle Mark

Applicant Pharmavite LLC got nowhere fast in its attempt to register the mark shown to the right (comprising a drawing of two overlapping bottles) for dietary supplements. The Board agreed with Examining Attorney Daneen J. Hetzel that the applied-for mark "is not a substantially exact representation of the mark as shown in applicant's specimen" (immediately below), as required by Trademark Rule 2.51(a). In re Pharmavite LLC, 91 USPQ2d 1778 (TTAB 2009) [precedential].


The Board recognized that the determination in a mutilation case is "somewhat subjective." The essential issue was whether "the alleged mark in applicant's drawing creates a distinct commercial impression separate and apart from the words and designs appearing on the bottles."

The Board observed that the bottle on the left "with applicant's word and design marks is in the shape of a 'generic' dietary supplement bottle. The bottle on the right, with the RX symbol, is in the shape of a 'generic' prescription medicine bottle."

The commercial impression the Two Bottle Design, as shown on the specimen, projects is that of applicant’s own bottle for its dietary supplements with its registered word and design marks and of a prescription bottle, identified by the RX symbol. The Two Bottle Design mark shown in the specimen may suggest some, presumably positive, association between applicant's dietary supplements and prescription medications.

The Board saw no basis for concluding that purchasers "would perceive the 'mark' as shown in the drawing, the mere outlines of the bottles, in the mark shown in the specimen."

We conclude that these indicia, applicant’s word and design marks and the RX symbol, are sufficiently apparent that potential purchasers will see them. More importantly, we conclude that potential purchasers will not only see these elements but that they will perceive them as the defining essence of the Two Bottle Design. That is, applicant’s word and design marks and the RX symbol are essential to the commercial impression of the Two Bottle Design. Therefore, on this record, we conclude that the outline of the two generic bottle shapes shown in the drawing does not create a separate and distinct commercial impression.

And so the Board further concluded that the alleged mark "is not a substantially exact representation of the mark as show in applicant's specimen," and it affirmed the refusal.

TTABlog comment: If these mutilation cases are so subjective, why make this one precedential?

Text Copyright John L. Welch

TTAB Accepts "BIG BOY" Restaurants Concurrent Use Agreement

The Board accepted the concurrent use agreement (found here) entered into by the parties in Frisch's Restaurants, Inc. v. Big Boy Restaurants International, LLC, Concurrent Use No. 94002189 (August 11, 2009). It ruled that Applicant Frisch's Restaurants is entitled to registration of the mark BIG BOY for "tartar sauce and pies" and for "restaurant, drive through and carryout services" for the states of Indiana and Kentucky, and for certain counties in Tennessee and Ohio. And it ordered that 16 registrations owned by Big Boy Restaurants International be restricted to the rest of the United States.


The Board observed that "while stipulated agreements are not binding on the Board, there can be no better assurance of the absence of a likelihood of confusion, mistake, or deception than the parties' careful consideration of their commercial interests."

By the consented motion and agreement, the parties inform the Board that registrant expressly consented to applicant's concurrent use application; that neither party will use or advertise its marks in the other party's territory; that applicant will always display the name "Frisch's" in close proximity to each display of its mark on packaging, in marketing materials and displays, and in signage in applicant's territory; that the parties do not believe that there is a likelihood of confusion caused by the parties' respective uses of their marks; that the parties do not know of any instances of actual confusion caused by the parties' respective uses of their marks to date; and that the parties' entry into various agreements, including the earlier agreements executed in 2001, will minimize or eliminate the possibility of any confusion that might otherwise be caused by the parties' respective uses of their marks.

TTABlog note: The Wikipedia version of the BIG BOY story may be found here. As to not advertising in the other party's territory, I guess websites don't count as advertising.

TTABlog Postscript: Another concurrent use agreement was approved by the Board yesterday in Beach Mart, Inc. v. Beach Mart, Inc., Concurrent Use No. 94002100 (August 26, 2009).

Text Copyright John L. Welch 2009.

"NO FRIGGIN CLUE" Confusingly Similar to "CLUE" for Video Games, Says TTAB

The Board sustained Hasbro's opposition to registration of the mark NO FRIGGIN CLUE for, inter alia, computer and video games, finding it likely to cause confusion with the "well-known and strong" mark CLUE registered for board games and computer and video games. The Board recognized that the marks are "somewhat, but not strongly, similar" and admitted that this is a "close case," but it resolved any doubt in favor of the prior registrant. Hasbro, Inc. v. Braintrust Games, Inc., Opposition No. 91169603 (August 24, 2009) [not precedential].


Hasbro argued that its CLUE mark is famous, based on its history and length of use (60 years), the marketing of CLUE-branded products, and the success of the brand in the marketplace. In addition to the classic board game, Hasbro has licensed use of the mark for a number of variations of the game, and has published the game in a number of electronic formats. Both a movie and a Broadway show have been produced under license, as have ancillary goods such as greeting cards, clothing, and casino games.

Applicant successfully argued that Hasbro failed to explain the significance of its sales and advertising figures or how these figure "measure up to its competitor's figures." The Board pointed out that, in view of the "extreme deference that is accorded to a famous mark," one who claims its mark is famous "must clearly prove it." Hasbro failed to carry that burden. However, the Board found that the mark CLUE is "a well-known and strong mark, and enjoys considerable renown." This factor "significantly supports a finding of likelihood of confusion, and entitles the mark to an enhanced scope of protection."

As to the goods, Applicant argued that its games are "trivia-related," whereas the CLUE games are not. The Board pointed out, however, that there was no such restriction in the opposed application or in the CLUE registrations, and the Board's Section 2(d) determination is based on the identification set forth in the application and registrations, "regardless of what the record may reveal as to the actual nature of the goods."

The Board found the goods of the parties to be in part identical (e.g., "video game software") and in part closely related, a factor that "strongly supports a finding of likelihood of confusion." Likewise, the overlapping goods are presumed to travel in the same channels of trade to the same classes of purchasers.

Turning to the marks, the Board observed once again that, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board found that the term CLUE has the same connotation in each mark:

With respect to games in general and both applicant’s and opposer’s games in particular, a “clue” is something which points the way to the correct answer. In the case of applicant’s game, that would be the correct answer to the trivia question at hand. In the case of opposer’s games, a “clue” is an aid to solving the mystery at hand. In other words, the term CLUE and its concept are central to both of the parties’ goods. Here, while both parties’ use of the term CLUE is somewhat suggestive, both marks use the term to suggest the same thing.

The Board pointed out that Applicant's mark incorporates Hasbro's mark in its entirety, and it concluded that "this similarity would not be lost on consumers viewing the respective marks on identical goods ..., particularly in light of the renown of opposer's mark."

While the marks are clearly not identical, we find that applicant’s mark and opposer’s mark are similar in appearance and sound to the extent that they both comprise the term CLUE. This factor lends some support to a finding of likelihood of confusion.

The Board pooh-poohed Applicant's feeble third-party registration evidence and its "lack-of-actual-confusion" argument.

Concluding that, on balance, confusion is likely, the Board observed that "[t]his is admittedly a close case. Nonetheless, to the extent we have any doubt, we must resolve that doubt in favor of opposer, the prior registrant."


Tip From the TTABlog: It pays to spend the time and effort to prove that your mark is strong. The stronger the mark, the broader the protection. I don't agree that the marks here are sufficiently similar, and I would have ruled in favor of Applicant. But the key to Hasbro's win was the strength of its mark.

Text Copyright John L. Welch 2009.

Finding Clothing and Jewelry Related, TTAB Affirms 2(d) Refusal of "TIANA"

Daffy Duck, meet Mucky Duck. The Board affirmed an opposition to Disney's application to register the mark TIANA for various clothing items, finding the mark likely to cause confusion with the identical mark registered for "jewelry, diamonds." The third-party registration evidence "overwhelmingly" favored Examining Attorney Stephen Aquila's position regarding the relatedness of women’s dresses, shirts, skirts and sweaters, on the one hand, and jewelry, on the other hand. In re Disney Enterprises, Inc., Serial No. 77235868 (August 12, 2009) [not precedential].

Princess Tiana
Of course the fact that Disney's and Registrant's marks are identical "weighs heavily against the applicant." When the marks are identical, "it is only necessary that there be a viable relationship between the goods in order to support a likelihood of confusion."

The Board agreed with Disney that there is no per se rule that clothing and jewelry/diamonds are related goods. However, Disney's dresses, shirts, skirts, and sweaters "are sufficiently related to Registrant's 'jewelry' that confusion is likely."

Both Disney and the Examining Attorney submitted third-party registrations on the issue of relatedness of the goods. The Examining Attorney proffered 24 use-based registrations in which the identifications of goods include both clothing and jewelry. Disney introduced 16 registrations (i.e., eight instances) in which "registrations issued to different entities for similar marks, one covering clothing or shoes, and the other covering jewelry and/or diamonds."

The Board observed that, under In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988) and In re Albert Trostel & Sons. Co., 29 USPQ2d 1783 (TTAB 1993), third-party registrations have "some probative value to the extent that they may serve to suggest that [the] goods ... are of a type which may emanate from a single source."

It found that the third-party registration evidence "overwhelmingly favors the examining attorney's position." Disney's registrations included only two sets that cover women's clothing and jewelry (as opposed to hosiery or shoes or clothing and diamonds). In any case, the Board pointed out once again that "the determination of registrability of particular marks by the trademark examining attorneys cannot control the result in another case involving different marks." The Board also noted that women's clothing and jewelry are complementary. It therefore concluded that the du Pont factor of the similarity of the goods favors a likelihood of confusion finding.

The goods of the parties would travel through the same trade channels (e.g., department stores) to the same classes of purchasers, and they encompass inexpensive items that would be purchased by ordinary consumers.

Finally, Disney argued that TIANA is a weak mark because it is both a personal name and is a foreign term suggestive of the cut of Registrant's diamonds. The Board disagreed that the mark is weak, but in any case pointed out that "even weak marks are entitled to protection where confusion is likely."

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

TTABlog comment: Princess Tiana is the main character in the upcoming Disney movie, The Princess and the Frog. According to Wikipedia, this film "will mark the return of traditional hand-drawn animation for Disney." The story revolves around Tiana, a waitress living in the French Quarter of New Orleans during the Jazz Age, and a prince named Naveen who has been transformed into a frog by an evil voodoo magician called Dr. Facilier.

Seriously, though, what do you think of this refusal? Are you moved by the third-party registration evidence? Do you think that by using third-party registrations, one could find clothing related to almost anything under the sun? If the Disney goods are marketed in connection with the movie, do you think a court would find a likelihood of confusion with TIANA brand jewelry? Reverse confusion?

Text Copyright John L. Welch 2009.

On Summary Judgment, TTAB Finds "SUPER HERO" Applicant Lacked Bona Fide Intent

The Board entered summary judgment against pro se Applicant Michael Craig Silver in his attempt to register the mark SUPER HERO for various skin care products. Based on Silver's discovery responses and discovery deposition testimony, Opposers established a prima facie case that Applicant lacked a bona fide intent to use the mark on the goods at the time he filed his application. Silver failed to come forward with sufficient evidence to rebut Opposer's case. DC Comics and Marvel Characters, Inc. v. Michael Craig Silver, Opposition No. 91176744 (August 21, 2009) [not precedential].


Standing: Opposers established their standing via two declarations asserting (rather vaguely) that Opposers license their marks, including SUPER HERO and SUPER HEROES, in connection with various products and services, including cosmetics and toiletries. That was enough to clear the minimal hurdle posed by the standing requirement.

Bona fide Intent: Silver stated on deposition that he had not formed a business at the time he filed his application; had no experience in marketing or manufacturing these goods; was unaware of any FDA regulations regarding same; and had no specific education that would equip him to develop such products. Moreover, he had not engaged a chemical engineer or a marketing firm since the filing.

Silver did not produce any documents in response to Opposers' numerous document requests seeking marketing and advertising materials, sales documents, and market studies. In fact, he stated that he "has no documents concerning any effort to exploit or commercialize any product under SUPER HERO."

The Board therefore found that Opposers had met their initial burden to establish that there existed no genuine issue of material fact regarding Silver's lack of a bona fide intent.

Silver provided four documents with his brief in opposition to the motion: three were undated and the fourth concerned the mark TEXASTEA. He did not submit a declaration or affidavit. Even though these four documents were not produced during discovery, the Board considered them anyway out of "an abundance of caution," but it found them to have little impact:

... applicant's evidence indicates, at most, that applicant has considered use of the involved mark for the identified goods and has confidence in his ability to bring such goods to market at some point in the future; however, these documents do not rebut opposers' showing that there is no genuine issue of material fact that applicant did not possess the requisite intent to use the mark on the identified goods when he filed his application.

Moreover, Silver's argument in his brief that he had the ability to bring the goods to market were directly contradicted by his deposition testimony, stating that he had no experience or training in the relevant field.

The Board therefore ruled in favor of Opposer and sustained the opposition.

TTABlog comment: I'm going out on a limb by predicting that this bona fide intent issue is going to be the next big thing in TTAB jurisprudence. I said as much in my post on the Honda v. Winkelmann case (here).

Text Copyright John L. Welch 2009.

TTAB Tosses Out Bankrupt Opposition to "SECRETS OF THE MILLIONAIRE MIND"

Opposer Learning Annex was schooled by the TTAB in its opposition to registration of the mark SECRETS OF THE MILLIONAIRE MIND for tapes and CDs, various printed materials, and educational services relating to self-improvement and wealth accumulation: (A) Opposer neglected to prove its standing; (B) Opposer failed to establish that the subject mark is merely descriptive under Section 2(e)(1); and (C) Opposer wrongly asserted that the mark is unregistrable as the title of a single work, since "the application is based on intention to use the mark in commerce and this record does not establish that applicant will not use this proposed mark in connection with its International Class 9 goods on a series of creative works." Learning Annex Holdings, LLC v. True Power International, Ltd., Opposition No. 91168283 (July 27, 2009) [not precedential].


Standing: In a mere descriptiveness opposition, the opposer need only establish that it is a competitor of applicant. Opposer Learning Annex failed to clear that minimal hurdle. It alleged in its notice of opposition that it is a competitor of applicant, but True Power denied those allegations, leaving Opposer to its proof. Opposer introduced "no direct evidence, testimonial or otherwise, to establish that it is 'engaged in the sale of goods or educational services related to self-improvement and wealth accumulation' or in any other business for that matter."

Therefore, Learning Annex failed to establish its standing to bring this opposition. Nonetheless, the Board proceeded, for the sake of completeness, to address Opposer's claims.

Mere Descriptiveness: Learning Annex relied on dictionary definitions of "secret," "millionaire," and "mind" in contending that SECRETS OF THE MILLIONAIRE MIND "describes exactly what the applicant provides in its educational goods and services: the secrets of wealthy people."

Applicant, of course, argued that the mark is merely suggestive and that a multi-stage reasoning process is necessary to determine any specific attributes of its products and services.

The Board ruled that Learning Annex had failed to meet its burden to prove mere descriptiveness by a preponderance of the evidence. It found the meaning and significance of the mark to be "not so immediately and directly informative as to be merely descriptive."

The phrase SECRETS OF THE MILLIONAIRE MIND may be suggestive of the subject matter of the goods and services but there is something of an atmospheric quality to the phrase SECRETS OF THE MILLIONAIRE MIND that diminishes the immediacy of any information it imparts as to the goods and services. We add that there is no evidence in the record to support opposer’s allegations that the particular phrase or similar phrases are commonly used by third parties in the relevant industry.

Title of a Single Work: Learning Annex argued that "Applicant is seeking, through the 'backdoor,' to trademark the name of its best-selling book Secrets of the Millionaire Mind, authored by T. Harv Eker," and that the title of a single work is not registrable.

Applicant pointed out that its application is based on intent-to-use, and Applicant is therefore not foreclosed from developing another book in a series, or other goods and services as listed in the application. Moreover, Opposer ignored other identified goods and services like the cards, and the seminar.

Of course, the Board pointed out that "[t]he title of a single creative work is not registrable on either the Principal or Supplemental Register unless the title has been used on a series of creative works." Herbko Int'l v. Kappa Books, Inc., 64 USPQ2d 1375, 1378 (Fed. Cir. 2002). Books, sound recordings, DVDs, and audio CDs are usually single creative works.

The issue of whether a mark is the title of a single work is tied to the specimen of use. Here,
the "single work" claim would arguably apply only to the class 9 goods. But, as Applicant argued, this is an I-T-U application and the record did not establish that Applicant will not use the mark on a series of creative works.

Therefore this "single work" claim was also a loser.

TTABlog comment: On the same day as this decision, the Board affirmed a refusal to register the alleged mark CRITTERS FOR COMPANY for children's books on the ground that the phrase was merely the title of a single work. Applicant filed the application as an I-T-U, but when it filed its SOU, the Examining Attorney entered the "single work" refusal. In re Alphacritters, Inc., Serial No. 76573434 (July 27, 2009) [not precedential].


Text Copyright John L. Welch 2009.

WYHA? TTAB Finds "WOW PRINTABLE COUPONS" Confusingly Similar to "WOW! MARKETING"

Applicant Elena Potoupa sought to register the mark WOW PRINTABLE COUPONS for promotional services featuring online downloadable coupons ["PRINTABLE COUPONS" disclaimed], but Examining Attorney Marcie R. Frum Milone refused registration under Section 2(d) in view of the registered mark WOW! MARKETING for advertising and marketing services and for dissemination of advertising online ["MARKETING" disclaimed]. Potoupa appealed. Would You Have Appealed? In re Elena Potoupa, Serial No. 78770813 (August 6, 2009) [not precedential].


The Board agreed with the Examining Attorney that the services involved are "essentially the same." Potoupa argued that she could find no use of Registrant's mark on the Internet and thus there could be no confusion, but the Board pointed out that this allegation is in essence an impermissible collateral attack on cited registrations.

Turning to the marks, the Board found the word WOW to be the dominant portion of each mark. Applicant focused on the specific differences between the marks, but the Board pointed out that these differences are "of no significance because ... our analysis is not a side-by-side comparison of the marks; rather, the focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks." Therefore, the Board found the marks to be "substantially similar."

And so the Board affirmed the refusal.

Elena Potoupa
TTABlog comment: Wow! What can I say? Perhaps Ms. Potoupa should consider a petition for cancellation?

Text Copyright John L. Welch 2009.

Re-Test Your TTAB Judge-Ability: Can You Handle Another Nut Case?

Here we go again! Another chance to prove that you are TTAB judicial material. Applicant Sunland, Inc., sought to register the mark SUNLAND for processed nuts and nut butters, raw nuts, peanut butter, and raw peanuts. The Examining Attorney refused registration under Section 2(d), finding a likelihood of confusion with the registered mark SUN-LAND for "raisins, dried fruits, preserved fruits." Applicant argued on appeal that "[a] purchaser of raisins and dried fruits at a store knows fruits from nuts." How would you rule? In re Sunland, Inc., Serial Nos. 77310231 and 77307289 (August 7, 2009) [not precedential].


Of course, the two block-letter marks are "virtually identical." Sunland's assertion that Registrant uses its mark in an "inconspicuous manner on its packaging" was inappropriate, since Registrant's rights in its mark cannot be restricted based on applicant's assertions as to how the mark is used, nor can the marks at issue be distinguished based on how Applicant uses its mark.

Sunland oddly contended that the marks would be pronounced differently, but as the Board has proclaimed many times, "there is no correct pronunciation of a trademark." [What about BLACK CAT for firecrackers? - ed.] In any case, "the presence or absence of a hyphen is hardly sufficient under these circumstances to distinguish the marks."


Turning to the goods, they of course need not be identical in order to support a finding that confusion is likely. "They need only be related in such a way that the circumstances surrounding their marketing would result in relevant consumers mistakenly believing that the goods originate from or are associated with the same source." Moreover, when the marks are virtually identical, a lesser degree of relatedness between the goods is necessary to support a likelihood of confusion.

The Examining Attorney maintained that the goods are "closely related because they are both natural snack products commonly sold by the same companies, they travel in the same channels of trade and are compl[e]mentary goods commonly packaged and/or sold together." He relied on numerous third-party, use-based registrations for marks covering both types of goods, as well as Internet website evidence indicating that specialty retailers offer both types of goods under the same mark.

Sunland pointed to Registrant's deletion of "roasted nuts" from its registration, claiming that this evidenced Registrant's express abandonment of any rights in its mark for nuts. The Board disagreed, and in fact noted that the original inclusion of nuts in the registration supported the relatedness of the goods because it shows that "historically companies have sold both types of goods under the same mark."

The Board had "no hesitation in concluding that the goods identified in the applications and the cited registration are closely related." Did you hesitate?

TTABlog comment: I suspect that, based on third-party registration evidence, one can show that any snack item is related to any other snack item for likelihood of confusion purposes. The same holds for any two beverages, any two items of clothing, any two cosmetic items, etc. So don't we in effect have certain per se rules for the relatedness of these goods? Should the PTO allow broad descriptions in identifications of goods, like clothing, snack food, and beverages?

Text Copyright John L. Welch 2009.

TTAB Reverses "ANDIAMO" 2(d) Refusal: Insufficient Proof that Wine and Restaurant Services are Related

Reversing a Section 2(d) refusal to register the mark ANDIAMO for wine, the Board found the mark not likely to cause confusion with the identical mark registered for restaurant services. The law requires "something more than that similar or even identical marks are used for food products and for restaurant services." Here, the "something more" was lacking. In re Wente Bros. dba Tamas Estates, Serial No. 77314718 (August 6, 2009) [not precedential].


The CCPA's decision in Jacobs v. International Multifoods Corp., 212 USPQ 641 (CCPA 1982), set forth the "something more" requirement.

The Examining Attorney contended that restaurants commonly serve wine and that wineries commonly feature restaurants (as does Applicant's winery). Applicant pointed out the lack of evidence that "it is common in the industry for restaurants to offer and sell private label wine named after the restaurant or that either party's wines are served in the other's restaurants."

The Board reviewed the "something more" cases, noting that the requirement has been met in various ways but that "the facts in this case are much less persuasive."

The only evidence of record to show that the goods are related is the simple picture of a bottle of wine along with other food items in a flyer about registrant's takeout services and the fact that applicant has a restaurant with a different name at its winery. We find that this evidence is not enough to show the "something more" required by Jacobs.

The Board recognized that some consumers may patronize the ANDIAMO restaurant and then may go to applicant's winery and eat at The Restaurant at Wente Vineyards. They may order a bottle of ANDIAMO wine and believe that the sources of the wine and the restaurant services are related. However, the Trademark Act requires likelihood of confusion, not the mere possibility of confusion. The CAFC's Coors Brewing decision requires significant evidence of relatedness:

It is not unusual for restaurants to be identified with particular food or beverage items that are produced by the same entity that provides the restaurant services or are sold by the same entity under a private label. Thus, for example, some restaurants sell their own private label ice cream, while others sell their own private label coffee. But that does not mean that any time a brand of ice cream or coffee has a trademark that is similar to the registered trademark of some restaurant, consumers are likely to assume that the coffee or ice cream is associated with that restaurant. The Jacobs case stands for the contrary proposition, and in light of the very large number of restaurants in this country and the great variety in the names associated with those restaurants, the potential consequences of adopting such a principle would be to limit dramatically the number of marks that could be used by producers of foods and beverages.

And so the Board reversed the refusal to register.

TTABlog comment: I don't have a quibble with the outcome here, but it's worth pointing out that these food/restaurant "something more" cases are all over the lot. Check out this one and this one, by way of example.

Text Copyright John L. Welch 2009.

TTAB Affirms Refusal: Applicant Failed to Comply with Rule 2.61(b) Requirement for Additional Specimens

Pursuant to Rule 2.61(b), Examining Attorney Y.I. Lee required that pro se Applicant Kent G. Anderson provide additional specimens for his class 1 and class 3 goods because of the wide range of unrelated articles listed in his application. Anderson didn't. Ms. Lee refused registration. Anderson Appealed. He lost. In re Anderson, Serial No. 76497832 (August 4, 2009) [not precedential].


Anderson sought to register the mark TOMORROW for, inter alia, photographic chemicals, unprocessed artificial resins and plastics used in agriculture, manure, and food preservative compositions in class 1; and for more than 100 items in class 3, including after-shave gel, baby oil, boot cream, dish detergents, and grooming preparations for pets. The Examining Attorney rejected Anderson's specimens as inadequate to show use of the mark with the identified goods, and she also required that Anderson submit additional specimens because "the listed Class 1 goods and Class 3 goods, as recited in the Statement of Use, are long and contain numerous unrelated goods." She argued that:

The only Class 1 specimens provided during prosecution were of "photographic chemicals" and "additive fuel treatment." Photographic chemicals and fuel additives are unrelated to artificial resins and plastics used in agriculture, as well as manure, fire extinguishing compositions, food preservative compositions, and tanning agents for use in the manufacture of leather.
***
Applicant's identification of goods of Class 3 goods is extremely long and contains a wide variety of goods that are also unrelated. Applicant did not provide any other specimens other than mouthwash and lipstick. These are not related to adhesive removers, adhesives for attaching artificial fingernails or eyelashes, non-medicated pet shampoo, pre-moistened cosmetic wipes, or tailors’ wax, to name a few. Applicant did not provide specimens demonstrating use of the mark with any of the other Class 3 goods listed in the identification.

The Board assumed arguendo that the particular specimens submitted by Anderson were themselves acceptable, but it proceeded to affirm the refusal to register based on Anderson's failure to comply with the requirement that he submit additional specimens.

... this small number of specimens fails to demonstrate use of the applied-for mark for the wide range of goods listed in Classes 1 and 3.

And so the refusal to register was affirmed.

TTABlog comment: Hooray for the Examining Attorney and the Board. I think that, in this digital camera age, the PTO should require a specimen for every item listed in the application. See my post called "Fraud and the Digital Camera."

Text Copyright John L. Welch 2009.

Precedential No. 34: Applicant's Cancelled Registration for Identical Mark No Help, TTAB Affirms 2(d) Refusal of "DAVEY" for Water Pumps

In a lengthy, comprehensive, and perhaps record-breaking du Pont analysis, the Board affirmed a Section 2(d) refusal to register the mark DAVEY for "electric motors for machines; waterpumps with fluid flow or pressure control for domestic, industrial and commercial use; and parts and fittings therefor." It found the mark likely to cause confusion with the identical mark registered for "air compressors and parts therefor." Usually, everyone is completely exhausted by the time the seventh or eighth du Pont factor is reached, but the Board rumbled on through factors eleven, twelve, and thirteen, and the last one turned out to be perhaps the most interesting. In re Davey Products Pty Ltd., 92 USPQ2d 1198 (TTAB 2009) [precedential].


This post will not regurgitate all the details of the Board's analysis regarding the single digit factors. Suffice it to say that (factor 1) the identity of the marks weighed heavily in favor of the Section 2(d) refusal. The Board found the goods to be related (2) , since Registrant's air compressors and parts therefor "actually encompass[,] applicant's 'electric' motors for machines." Third-party Internet evidence and third-party registrations bolstered that finding.

The Internet evidence also showed that (3) the normal trade channels for the goods are the same or overlapping. There was no evidence to suggest (4) that the goods are so expensive or that purchasers are so careful that the likelihood of confusion would be significantly mitigated.

As to (5), there was no evidence that the cited mark is famous, but such evidence is "not particularly significant in the context of an ex parte proceeding." Also, there was no evidence of third-party use of similar marks on similar goods (6). These two factors were neutral.

Applicant asserted that it was unaware of any incidents of actual confusion (7, 8) during ten years of contemporaneous use. However, such evidence is hard to come by, and the Board has no way of knowing whether Registrant is aware of actual confusion. Nor was there evidence indicating that there has been a significant opportunity for actual confusion to have occurred. Therefore these two factors were neutral.

Jumping to (11), the Board considered the extent to which applicant "has a right to exclude others from use of its mark on its [sic] goods." Applicant's cancelled registration provided no presumption of an exclusive right to use the mark, and its asserted common law rights based on ten years of use do not yield "any significant right to exclude others from use of the mark." This factor was therefore neutral.

Under (12), the Board found that the potential for confusion cannot be deemed to be de minimis, since the goods involved are of the type that would be marketed to and purchased by significant numbers of purchasers. It deemed this factor neutral, at best.

Finally, the Board reached miscellaneous factor 13, which covers "any other established fact probative of the effect of use." The Board here considered Applicant's arguments regarding the assignment and the file histories of the two registrations cited: DAVEY registration discussed heretofore, and a second registration for DAVEY QUIETFLO for "air compressors," which the Board deemed relevant to the factor 13 discussion.

Applicant owned a registration for its applied-for mark for the same identified goods, but that registration was cancelled under Section 8 in 2006. When that registration issued in 2000, both of the cited registrations existed on the Trademark Register. Neither of the two registrations were cited in 2000 to bar Applicant's registration. Thus the three registrations co-existed on the Register from 2000-2006. Applicant now argued that it was merely seeking to return to the status quo that existed prior to the Section 8 cancellation of its registration.

The Board, as usual, pointed out that it is not bound by decisions of the prior Trademark Examining Attorney, but instead must decide the case on the record before it. The now-cancelled registration is not entitled to any of the Section 7(b) statutory presumptions. The Board concluded that these facts "weigh in applicant's favor to a degree, but they are not determinative."

It then considered the tangled ownership histories of the two cited registrations. For most of their existence they were owned by different entities, leading Applicant to argue that the two cited registrations are more similar to each other than is its mark, and that "if the two cited registrations can have co-existence on the Register for most of their existence, then applicant's mark likewise can co-exist and should be registered." Nothing doing, said the Board: the co-existence of two confusingly similar marks on the Register and owned by different owners (which marks arguably should not have been registered over each other) "does not relieve the Board of its duty to determine the registrability of the applicant's mark on the record before it, nor does it justify the addition to the Register of what may be yet another confusingly similar mark." [Moreover, the cited registrations were owned by the same person when the second registration issued, which would explain why one was issued over the other.] Again, these facts weigh in Applicant's favor to a degree, but they are not determinative in the overall analysis.

Weighing the pertinent factors, the Board concluded that a likelihood of confusion exists, and it affirmed the Section 2(d) refusal.

TTABlog comment: Whew! That was exhausting! I left out the procedural part of the decision, in which the Board rejected Applicant's complaint about Examining Attorney Alicia P. Collins's submission of further evidence when she denied Applicant's request for reconsideration. According to the Board, Applicant could have suspended its appeal and ask for remand to the Office if it wanted to challenge that evidence.

Text Copyright John L. Welch 2009.

Test Your TTAB Judge-Ability with this Section 2(d) Nut Case

How would you decide this section 2(d) opposition to registration of the marks AUSTINUTS in standard character and design form, for dry roasted nuts, in view of the registered mark AUSTIN, in standard character and design form, for crackers and cookies? The record showed that Applicant sells gift baskets that include nuts, cookies and crackers, and that Opposer's mark is very strong for cookies and crackers. Is this a tough nut to crack? AQFTM, Inc. v. Austinuts, Inc., Oppositions Nos. 91166551 and 91166552 (August 6, 2009) [not precedential].


The Board didn't think so. It found the parties goods to be snack foods that are related for Section 2(d) purposes, as evidenced by Applicant's own gift baskets. Applicant's claim that its products are "gourmet items" was immaterial, since there was no such limitation in its identification of goods.

As required, the Board presumed that the goods are sold in all of the normal channels of trade to the usual classes of purchasers for such goods. There was some overlap in the channels of trade, namely in grocery stores. The products are bought by ordinary consumers who would exercise no more than ordinary care when purchasing the products.

As to the marks, the Board found AUSTIN to be clearly the dominant portion of Opposer's marks, and AUSTINUTS to be the dominant portion of Applicant's mark, the peanut design merely describing the goods and reinforcing the "nuts" portion of the mark.

The parties argued at length about the pronunciation of Applicant's mark, but the Board once again asserted that "there is no 'correct' pronunciation of a trademark." [How about BLACK CAT for firecrackers? - ed.] Applicant claimed its mark to be a made-up word, but the Board found it to be "clearly a telescoped form of the two words AUSTIN and NUTS and is likely to be so perceived and pronounced by purchasers."

It is essentially insignificant whether purchasers pronounce the words distinctly as "Austin Nuts" or slur the double letter "N" to enunciate a single word, "Austinuts." In this regard, the "nuts" portion of the marks is generic in connection with applicant's identified goods and the "Austin" portion is dominant within the telescoped word.

Although Applicant is located in Austin, Texas, there was no evidence of "any material connection between the word AUSTIN and opposer's goods" or that AUSTIN is "primarily geographically descriptive and, hence, weak in connection with opposer's identified goods."

The Board concluded that, although the marks have differences, when considered in their entireties "they are similar in appearance, connotation and commercial impression." Neither the telescoping of "Austin" and "nuts" nor the design elements serve to distinguish the marks.

The Board therefore sustained the opposition.

TTABlog comment: I just don't think of roasted nuts as being related to cookies and crackers. Moreover, being an advocate of the distinctiveness of telescoped marks, I'm not sure I would have found the marks sufficiently similar. I think the odd spelling of AUSTINUTS, like TTABlog, gives the mark a certain distinctiveness. But maybe I'm just nuts.

Text Copyright John L. Welch 2009.

Recommended Reading: David S. Welkowitz on "Famous Marks Under the TDRA"

The latest issue of The Trademark Reporter includes an excellent article by Professor David S. Welkowitz of Whittier Law School, entitled "Famous Marks Under the TDRA," 99 Trademark Reporter 983 (July-August 2009). What a pleasure it is to read such a well-written, informative, and thought-provoking work.


Professor Welkowitz's goal is to "explain the proper role of fame in our understanding of the role of dilution as part of trademark protection." He points out that the concept of fame was introduced into the dilution discussion during the deliberations over the Trademark Law Revision Act (TLRA) in 1987. The term "famous" found its way into the Federal Trademark Dilution Act (FTDA) in 1995, although it was defined only indirectly.

An express definition "famous" appeared in the Trademark Dilution Revision Act (TDRA) in 2006: "a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner." 15 U.S.C. Sec. 1125(c)(2)(A)(1). The TDRA added four factors to assist the courts in applying the definition of "famous."

Professor Welkowitz discusses why this concept was injected into dilution law, what the TDRA definition means, and how it has been and should be applied. And he places the history of dilution law into historical perspective with regard to its role in the expansion of trademark protection in past century.

Highly recommended reading.

TTABlog note: Again, a thank you to The Trademark Reporter for granting permission to provide a link to this article. The article is Copyright © 2009 the International Trademark Association and is reprinted with permission from The Trademark Reporter®, 99 TMR 983 (July-August 2009).

Text Copyright John L. Welch 2009.

TTAB Okays Web Page Specimen for Sausage Links

The PTO Examining Attorney rejected Applicant Odom's specimen of use, consisting of a web page displaying the design mark shown below, for "fresh sausage rolls, links and patties; fresh souse; frozen sausage ball appetizers." According to the Examining Attorney, the design is not so prominently displayed in the website that customers will easily associate the mark with the products." The Board reversed, finding that Applicant's use of the mark was consistent with the Lands’ End decision and with subsequent Board precedent. In re Odom's Tennessee Pride Sausage, Inc., Serial No. 76581899 (July 28, 2009) [not precedential].


In the Examining Attorney's view, appearance of the mark in the bottom corner of the web page was not "sufficiently near the picture of the goods to associate the mark with the goods."

Applicant's specimen(click on picture for larger image)
The Board concluded that the Examining Attorney "fails to see the forest for the trees."

While applicant’s mark does appear at the bottom of the page near text including the boiler-plate legal notices and standard buttons providing links, such as “Home” and “About Us,” the Farm Boy design mark stands out from this text. The mark is substantially larger and more prominent; it is in no sense boiler-plate or standard; and most importantly, as the Examining Attorney acknowledges, it is recognizable as a design mark, although the Examining Attorney argues that it is only a service mark.

As to the proximity of the mark to the goods, Applicant asked a good question: "[H]ow much 'nearer' to the photographs and information regarding Applicant's products sold online could Applicant's mark be?" The Board agreed that the mark and goods are close enough:

[W]e note that the entire page is devoted to applicant’s products. All of the products pictured are within the scope of the goods identified in the application. Reading down the page, the mark appears prominently and immediately beneath the product displays. Also, there is no real dispute as to the fact that the web page satisfies the other elements of Lands' End, that is, the page includes pictures of the goods and provides both information regarding the goods and the means to order the goods. Accordingly, we conclude that applicant’s specimen is acceptable.

And so the Board reversed the refusal.

TTABlog comment: For a discussion of webpage and catalog specimens of use, go here.

Text Copyright John L. Welch 2009.

Precedential No. 33: TTAB Designates Section 2(d) Alligator Decision as Precedential

For some reason, the Board reached back to April 2009 and re-designated its dueling alligator Section 2(d) decision as precedential. It found the design mark shown below left to be likely to cause confusion with the admittedly-famous Lacoste alligator mark shown on the right, both for various, and partly identical, clothing items. Applicant Maxoly, Inc. feebly argued that its mark symbolizes the "Cuban culture" and that its clothing is "directed to the Cuban Community," but the Board found those arguments to be a crock. Lacoste Alligator S.A. v. Maxoly, Inc., 91 USPQ2d 1594 (TTAB 2009) (re-designated as precedential, July 31, 2009). [precedential].



Although Lacoste's evidence of fame was "far from impressive," the Board found its mark to be famous in view of Applicant's admission of fame in its answer to the notice of opposition: "it would be unduly prejudicial to require more evidence from opposer in light of applicant's admission."

Maxoly's assertion regarding its goods being directed to the Cuban Community was, of course, irrelevant, since there was no such restriction in its application.

With the goods identical in part and Lacoste's mark deemed famous, you can guess how the comparison of the marks came out: the Board found that "the similarities of the designs outweigh the differences."

The trademark designs of the parties are readily discernable as alligators or crocodiles. Because of the fame of opposer's alligator designs, the addition of the words "Colba Island" is not sufficient to distinguish applicant’s mark from opposer's marks. With little opportunity for a side-by-side comparison and the fallibility of human recall, consumers encountering applicant's mark may mistakenly believe that applicant's clothing products are a new line for opposer.

Maxoly contended that the crocodile design of its mark mirrors the "reptile shape of Cuba," and so "represents, identifies and symbolizes 'Cuban Heritage' and "Cuban Culture' in clothing." The Board pointed out, however, that Maxoly is seeking a national registration; its identified products are not limited to the Cuban community. "[T]here is nothing to suggest that the vast majority of consumers will recognize applicant's entire mark, including the word[s] COLBA ISLAND, as representing Cuban Heritage."


Finally, the Board pointed out that even if Maxoly's mark represents the national symbol of Cuba, "that status does not make the mark registrable if it is likely to cause confusion with a previously registered mark." To state the obvious:

Section 2(a) of the Trademark Act of 1946, 15 U.S.C. Sec. 1042(a), does not automatically confer registrability on a mark because it comprises a national symbol. Section 2(a simply prohibits the registration of marks that disparage or falsely suggest a connection with national symbols.

And so the Board sustained the opposition.

TTABlog comment: Suppose Maxoly files a new application for this mark, limiting the goods to clothing sold to the Cuban community. Would that eliminate the likelihood of confusion? Does Lacoste not sell its clothing bearing the "ubiquitous French amphibian" to the Cuban community?

Text Copyright John L. Welch 2009.

Recommended Reading: Joe Dreitler on "Why the TTAB Got It Right in Medinol"

Joe Dreitler is a bona fide trademark expert, and he has strong views on the Lanham Act's "use" requirement and the TTAB's fraud doctrine. I know, because Joe sends me his comments whenever I discuss a fraud case. I recently persuaded him to set out his thoughts on the current state of fraud jurisprudence, and he provides an important historical perspective on the subject in his article, "Why the TTAB Got it Right in Medinol." (pdf here).


Joe asserts that the Medinol decision is significant "because it laid down a bright line, objective standard for fraud."

Indeed, given this background and clear language of the statute and legislative intent in 1988 to change the Lanham Act to:

1) require section 44 applicants to have a bona fide intent to use the mark on every good and service for which they apply; and
2) require every applicant to have made bona fide commercial use on each and every good in their use based application, statement of use, section 8 declaration and renewal application,

it is hard to imagine how the TTAB could have done anything other than cancel the NEUROVASX registration for “medical devices, namely, stents and catheters.”

He finds it "regrettable" that the AIPLA, passed a board resolution in 2007 critical of Medinol, and then filed "what can charitably be called a disingenuous amicus curiae brief in the appeal to the CAFC of Bose Corp. v. Hexawave Inc., 88 USPQ2d 1332 (TTAB 2007), involving fraud based upon signing a sworn statement of use when there was no use of the mark for certain goods or services." [See TTABlog here].

If trademark owners are allowed to file false, sworn declarations of use with the USPTO and not automatically have their trademark registrations cancelled, what type of system does the U.S. have? Do we have a “permissive” use system? If the Federal Circuit agrees with AIPLA’s position we are back at a quasi token use system – which is exactly opposite to the language and legislative intent of the TLRA of 1988.

I'm sure you will find Joe's provocative article both interesting and informative. I certainly did.
.

Precedential No. 32: TTAB Okays Service of Opposition by Mail to Applicant's Address, Not the Correspondence Address of Record

The intense, dark cloud hanging over this opposition was lifted by the Board's merciful ruling that Opposer Lindt's service of its Notice of Opposition on Applicant Karlo Flores by mail at his address, rather than at the address of record (his attorney's), was acceptable under the circumstances at hand. Chocoladefabriken Lindt & Sprungli AG v. Karlo Flores, 91 USPQ2d 1698 (TTAB 2009) [precedential].


Lindt filed a notice of opposition under Section 2(d) to registration of the mark 73% INTENSE DARK for chocolate and chocolate bars, relying on its previous use of INTENSE DARK for candy. The problem arose because Lindt had served the notice of opposition by mailing it to Applicant Flores' address, rather than to the "correspondence address of record" stated in the TARR database. See 37 C.F.R. § 2.101(a).

Flores' answer included an affirmative defense that Lindt had failed to make proper service under Rule 2.101. Six days later, Lindt mailed a copy of the notice of opposition to Flores’ attorney at the correspondence address of record.

One month later, Flores moved to dismiss under FRCP 12(b), but his motion was untimely because a motion to dismiss for improper service of process must be filed before or with the answer. However, because Lindt did not object to this untimeliness, the Board chose to consider the motion on the merits.

The Board observed that, under Rule 2.101, "an opposition is commenced only when two conditions are fulfilled: (1) opposer makes sufficient efforts to serve the notice of opposition and (2) the Board is notified of the service at the time the notice of opposition is filed." Here, the Board received notice of the filing via ESTTA. The question, then, was "whether opposer's failure to serve the complaint on applicant's 'correspondence address of record,' as that phrase is used in Trademark Rule 2.101(a), nullifies the opposition."

There was no dispute that Lindt initially served Flores at his business address of record, and not at his "correspondence address," which was his attorney’s address. Lindt's subsequent service of the notice on the attorney occurred after the opposition period had expired.

The Board ruled that Lindt's actions were "sufficient to comply with Trademark Rule 2.101." It pointed to its recent decision in The Equine Touch Foundation, Inc. v. Equinology Inc., ___ USPQ2d ___, Cancellation No. 92050044 (TTAB 2/10/2009,) wherein it accepted as sufficient service in a cancellation proceeding, "service on respondent's counsel rather than, as required, on respondent." [TTABlogged here].

Just as the Board in The Equine Touch Foundation recognized that there is a distinction between a complete lack of actual service and defective but curable actual service, so too do we recognize this distinction. The purpose of service in a Board proceeding is to provide notice of the action.

The Board took a lenient position because Lindt had timely served Flores, but had merely mailed the paper to Applicant rather than his attorney. Flores clearly received notice, since he filed an answer. Lindt then promptly cured the technical defect by mailing a copy of the notice to Flores' attorney.

Under the circumstances, the opposition may go forward on the pleadings of record. Opposer need not re-serve a copy of the complaint on applicant’s counsel.

And so, the Board ruled that the proceeding may go forward.

TTABlog comment: Equine Touch was a cancellation proceeding, a different breed from an opposition. There, had the petition been thrown out for improper service, the petitioner still had time to file a new petition for cancellation.

Here, the opposition period had expired by the time Lindt made proper service, so Lindt could not have timely re-filed the opposition. [Of course, it could later petition for cancellation if a registration ever issued]. So this is a somewhat bigger act of TTAB mercy than was Equine Touch.

One wonders whether it wouldn't be better if, as in the old days, the Board served the opposition papers. After all, under current procedure, when an opposition is filed the Board immediately sends out an initiation order to the parties. Why not make that the initial service of the notice of opposition?

Text Copyright John L. Welch 2009.

Finding Proof of Acquired Distinctiveness Insufficient, TTAB Affirms Refusal to Register the Color Maroon for Steel Anchors

If you want to register a color mark, you'd better show up at the TTAB with some pretty darn good proof of acquired distinctiveness. Applicant General Technologies gave it a shot, claiming trademark rights in the color maroon for "maroon plastic encapsulated steel anchors for multi-strand post-tension systems" and for "maroon plastic encapsulated steel anchors for monostrand post-tension systems." But its Section 2(f) proofs failed to satisfy the "substantial" burden of proving acquired distinctiveness for a color mark. In re General Technologies, Inc., Serial Nos. 77052472 and 77052485 (July 23, 2009) [not precedential].


Of course, the Supreme Court has told us that a single color cannot be an inherently distinctive mark. Applicant based its 2(f) claim on use of its alleged mark for 10 years, on the assertion that several third-parties use other colors for similar devices, and on the facts that Applicant displays the color maroon at its website and owns two Supplemental Registrations for these very same marks.

The Board observed that "the burden of proving that a color mark has acquired distinctiveness is substantial." Given the nature of the products, it concluded that ten years of use of the color, by itself, is not enough. Applicant failed to provide sales or advertising figures, and nothing in the record showed the color maroon being promoted as a source indicator. Nor did Applicant submit any articles or publicity identifying or recognizing its maroon anchors. And the Board pointed out that Applicant cannot base its claim of acquired distinctiveness on its Supplemental Registrations. [No kidding! - ed.].


Finding itself about to be marooned on the island of nonregistrability, General Technologies tried one more argument: that the maroon mark "would distinguish Applicant's goods from those of others, and indicate the source of the goods, in the hypothetical scenario where a building, bridge, or other structure collapses. *** Indeed, engineers investigating such events would undoubtedly be familiar with the maroon color mark of Applicant."

The Board pointed out that "this unsupported argument is more directed to applicant's intent regarding its use of the maroon color rather than to consumer perception." [In other words, where's the proof? - ed.]

Finally, the Board distinguished this case from the Owens-Corning pink insulation case, where the evidence included marketing expenditures of more than $42 million in connection with Pink Panther advertisements featuring the slogan "[a]dd another layer of pink," and another $11 million for displays, brochures, and other promotional items that highlighted the "pink" color as applied to the goods.

And so the Board affirmed these two refusals to register.

TTABlog comment: I'm not a big fan of the color maroon. The sports teams at my high school (Champaign, Illinois) were called the "Maroons," and they were cheered on by a furry, shapeless mascot called "Max the Maroon." It was rather embarrassing, but then isn't that what high school is all about?

Text Copyright John L. Welch 2009.

Precedential No. 31: In an Accelerated Decision, TTAB Sustains Schick Opposition to "SLICK ULTRA PLUS" for Disposable Razors

One suspects that this rather straightforward Section 2(d) decision was deemed precedential because the parties agreed to resolve the matter via the Board's Accelerated Case Resolution (ACR) procedure. The Board found Green Planet's mark SLICK ULTRA PLUS for disposable razors likely to cause confusion with the famous, registered mark SCHICK for "razors and razor blades," and so it sustained the opposition. Eveready Battery Company, Inc. v. Green Planet, Inc., 91 USPQ2d 1511 (TTAB 2009) [precedential].


On February 9, 2009, after the Board had denied Schick's motion for summary judgment, the parties signed on to ACR and agreed to "forego trial and proceed directly to briefing the case on the merits." They stipulated to Schick's priority, agreed that the summary judgment evidence would serve in lieu of trial evidence, and allowed submission of additional evidence with each party's trial brief. In less than six months, they had a decision.

The key issue, of course, was the similarity of the marks. The goods were in part identical and otherwise closely related, the channels of trade and classes of customers legally identical, and the purchasers or these low cost, ordinary consumer items likely to exercise "less care in their purchasing decisions" and "more likely to be confused as to the source of the goods."

The Board next considered the fame of the SCHICK mark, noting that "a strong mark ... casts a long shadow which competitors must avoid." [So, would you say that a generic term casts no shadow at all? - ed.] The record showed that the SCHICK mark has been in use for razors since 1926, that from 2000-2008, Opposer sold more than $2 billion of its razors and razor blades, and annually sold $100 million of its disposable razors alone. From 2001 to 2007, it spent $300 million in advertising through national magazines and radio and television shows. Consequently, the Board concluded that, for Section 2(d) purposes, SCHICK is a famous mark.


As to the marks, the Board again stated that when the goods are identical, a lesser degree of similarity between the marks is required to support a finding of likely confusion. [Toss in the fame of the SCHICK mark, and Green Planet's chances of winning were somewhere between slim and none.] It found the word SLICK to be the dominant portion of Applicant's mark, pointing to evidence of third-party use of PLUS in the razor field and noting that ULTRA has a laudatory meaning and is highly suggestive. As to appearance:

Although the interior letters “CH” and “L” are different, these differences are not likely to be noticed by consumers who may purchase razor blades, an inexpensive item, without great care, and who, because of their familiarity with the famous SCHICK mark, are likely to “misread” SLICK in a quick glance at the mark. Because of the highly similar nature of the first word of applicant’s mark and the entirety of opposer’s famous mark, the similarities in appearance between SCHICK and SLICK ULTRA PLUS outweigh the differences.

The Board noted that the marks have different connotations but found that "the similarities in appearance and sound outweigh their differences in meaning." Moreover, the marks "convey similar commercial impressions."

Considering the relevant du Pont factors, the Board sustained the opposition.

TTABlog comment: ACR seems to be a good way to wrap up a case once the summary judgment route has been tried. What does each party really give up? The chance to cross-examine the other party's witnesses during the trial period. What's to gain? Saved time and expenses and a quicker resolution.

Text Copyright John L. Welch 2009.

TTAB Posts August 2009 Hearing Schedule

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


August 4, 2009 - 10 AM: Tempur-Pedic International, Inc., et al. v. Denver Mattress Co., LLC, Opposition No. 91169165 [Opposition to registration of the mark SWEDISH LUXURY for mattress, box springs, furniture, and related retail services ("SWEDISH" disclaimed), grounded on Section 2(d) [likelihood of confusion with the registered mark SWEDISH SLEEP SYSTEM for identical or related goods and services (SLEEP SYSTEM disclaimed)], and Section 2(e)(3) [primarily geographically deceptively misdescriptive]].


August 4, 2009 - 2 PM: In re World's Finest Chocolate, Inc., Serial No. 78582690 [Section 2(d) refusal to register the mark MOCHACCINO MELTAWAYS (MOCHACCINO disclaimed) for candy in view of the registered mark CAPPUCCINO MELTAWAYS for candies].


August 5, 2009 - 10 AM: In re Zinpro Corporation, Serial No. 77419601 [Section 2(d) refusal to register the mark PERFORMINS for "dietary supplements, namely, vitamin and mineral supplements for human consumption," in view of the registered mark PERFORMANCE for "nutritional food supplement for human consumption"].

August 5, 2009 - 10:30 AM: In re Tires, Tires, Tires, Inc., Serial No. 77091459 [Refusals to register the term TIRES TIRES TIRES for "retail tire store" on the ground of genericness or, alternatively, mere descriptiveness].


August 11, 2009 - 11 AM: In re White Rock Distilleries, Inc., Serial No. 77093221 [Section 2(d) refusal to register the mark VOLTA for "energy vodka infused with caffeine," in view of the registered mark TERZA VOLTA for "sparkling fruit wine, sparkling grape wine, sparkling wine and wines]".


August 20, 2009 - 2 PM: In re Gilbert Hospital, LLC, Serial No. 77070847 [Section 2(d) refusal of DOOR TO DOC IN 31 MINUTES for "hospital services, namely, emergency services and acute care services," based upon the registered marks DOOR TO DOC and 60 TO 0 DOOR TO DOC for "consultation services in the field of health care, namely, providing assistance to health care facilities by improving the flow and overall care quality of patients in emergency room and ambulatory care facilities"].


August 25, 2009 - 10 AM: United Industries Corporation d/b/a Spectrum Brands v. OMS Investments, Inc., Opposition No. 91158240 [Opposition to registration of ANT-STOP for "pesticides for domestic use," on the grounds of abandonment and likelihood of confusion with an alleged family of "STOP" marks for lawn and garden products].


August 26, 2009 - 11 AM: In re In re JLG Industries, Inc., Serial No. 76651189 [Section 2(d) refusal to register a color mark (orange and cream) shown left below, in view of the registered color mark (orange) shown below right, both for "golf clubs"].


August 27, 2009 - 2 PM: In re FPS Food Processing Systems, B.V., Serial No. 79014310 [Section 2(d) refusal to register the mark POWERVISION for "agricultural sorting and selection systems comprised of computer hardware, computer software, and cameras," in view of the identical mark registered for "machine vision systems, namely an inspection camera, computer hardware and computer software used for manufacturing and industrial automation, and user manuals sold therewith"].

Text Copyright John L. Welch 2009.