TTABlog Flotsam and Jetsam No. 13

It's time for another edition of "Flotsam and Jetsam," wherein I provide timely tidbits for the TTABar.


Acting Chief Judge: Judge Gerard F. Rogers will serve as Acting Chief Judge of the TTAB, pending the appointment of a new Chief. Judge Rogers was appointed to the TTAB in 1999. He has served at the PTO as a Trademark Examining Attorney (1987-90); Assistant to the Assistant Commissioner for Trademarks (1990-92); and TTAB Staff Attorney (1992-99). [The current roster of TTAB judges may be found here.]


New TMEP edition: By notice in the October 23, 2009 Federal Register, the PTO announced that the sixth edition of the Trademark Manual of Examining Procedure is now available (here). "The sixth edition incorporates USPTO trademark practice and relevant case law reported prior to September 1, 2009."

New PTO Rules: Effective December 28, 2009, new rules will govern the requirements for signature of documents,for recognition of representatives, and for establishing and changing the correspondence address in trademark cases. Federal Register notice here.

Bose Brown-Bag in Boston: The Boston Patent Law Association and the Boston Bar Association will co-host a brown-bag luncheon at noon on November 19, 2009 at the Bar Association headquarters. The topic: "Trademark Fraud on the USPTO: A New Landscape." Yours truly will moderate a panel consisting of Mark Robins of Nixon, Peabody, and Amy Brosius of Fish & Richardson. Details here.


.

TTAB Reverses "RADIUS" 2(d) Refusal, PTO Read Registrant's Services Too Broadly

The Board reversed a Section 2(d) refusal of the mark RADIUS & Des. for "research services in the fields of pharmaceuticals and medicines," finding it not likely to cause confusion with the registered mark RADIUS for "product design and development services for others." The Examining Attorney maintained that registrant's services presumably encompass the design and development of pharmaceuticals for others and therefore are related to Applicant's research services. Not so fast, said the Board. In re Radius Health, Inc., Serial No. 78797031 (October 27, 2009) [not precedential].


Applicant Radius Health contended that its services are readily distinguishable from those of the cited registration because the latter do not encompass the design and development of pharmaceuticals for others:

"The phrase 'research and development' has a commonly understood meaning when used in the context of commerce. It typically refers to 'future-oriented, longer-term activities in science or technology, using similar techniques to scientific research without predetermined outcomes and with broad forecasts of commercial yield."

On the other hand, registrant "is in the business of designing and developing tangible products. Product design has been defined as 'the idea, generation, concept development, testing and manufacturing of a physical object or service.'"

Applicant submitted several Wikipedia excerpts, and the Board took judicial notice of a definition of "product design" as "[t]he determination and specification of the parts of a product and their interrelationship so that they become a unified whole."

Because the meaning of registrant's recitation of services was unclear, the Board looked to extrinsic evidence to determining its meaning. It concluded that "product design and development" does not appear to include the design and development of pharmaceuticals for others.

"So as to be perfectly clear, we have considered the evidence of record to shed light on the significance of the identification of services in the cited registration; not to improperly limit the scope thereof."

Moreover, the Board concluded that the trade channels and classes of purchasers are distinct, and found it reasonable to assume that the purchasers of Applicant's services would be sophisticated.

And so, even though the marks are "highly similar," the Board found that confusion is not likely due to the differences between the respective services, the differences in trade channels and classes of customers, and the sophistication of the purchasers of applicant's services.

TTABlog comment: A nice example of how to limit the scope of a cited registration without running afoul of the rule that prohibits one from reading limitations into the registration based on the real world evidence of what the registrant is actually doing.

Text Copyright John L. Welch 2009.

Precedential No. 43: TTAB Enters Partial Summary Judgment in 2(d) "VUDU" Opposition

Applicant Vudu, Inc. failed to ward off completely Hewlett-Packard's motion for summary judgment aimed at the mark VUDU for goods and services in classes 9, 35, 38, 41, and 42, relating to the broadcast, storage, and playback of video content. H-P relied on its registered mark VOODOO in standard character and design form (shown immediately below), for personal and gaming computers in class 9, and for computer manufacture and design services in classes 40 and 42. The Board found confusion likely as to Applicant's class 9 goods, but genuine issues of material fact prevented entry of summary judgment as to its services. Hewlett-Packard Development Company, L.P. v. Vudu, Inc., 92 USPQ2d 1630 (TTAB 2009) [precedential].


There was no real dispute as to the similarity of the marks VUDU and VOODOO. Applicant's arguments about the different ways in which the party's marks are displayed was, of course, irrelevant. Therefore, the key issue was: guess what?

Class 9: Applicant's class 9 goods included "computer software for use in computers for the transmission, storage and playback of audio and video content." H-P's registration was "not limited to specific types of personal and gaming computers or to specific channels of trade" and so the Board presumed that H-P's goods "encompass computers which would use applicant's computer software for use in computers for the transmission, storage and playback of audio and video content." Applicant Vudu did not contest the assertion that consumers could use its software in H-P's computers.

Vudu lamely argued that there is no relationship between its set-top boxes and H-P's computers because "the set-top boxes have a specialized application, and allow consumers to stream high quality video content to their televisions." The Board observed that while this restriction "may be implicit in the identification of other goods or services in applicant's identification, but it is not reflected in the identification of the computer software ...." In short, as the Board observed for the millionth time, the determination of likelihood of confusion must be based on the goods as identified in the application, regardless of what the record may reveal as to the particular nature of the goods.

The Board therefore granted H-P's summary judgment motion as to Vudu's class 9 goods.


Classes 35, 38, 41, 42: The Board found that Vudu's recited services "have no obvious relationship to the goods and services in the pleaded registration." In fact, H-P "presented no evidence on this point," but merely alleged that consumers could find both parties' services on the Internet. "However, countless products and services can be found on the Internet and in the circumstances of this proceeding, this is not sufficient to show the absence of a genuine issue as to the relatedness of the goods and services."

And so the Board denied the other four-fifths of the summary judgment motion.

TTABlog comment: What makes this decision precedential, I wonder?

This case reminds me of a joke I once made. A friend a mine asked me if I wanted to watch a zombie movie on television, and I replied, "I Haiti that kind of movie, but I'll watch if voodoo." LOL !!! Sometimes I just crack me up.

Text Copyright John L. Welch 2009.

TTAB Chief Judge J. David Sams to Step Down November 1st

After 34 years with the U.S. Patent and Trademark Office, including 28 years at the TTAB, Chief Judge J. David Sams will retire on November 1, 2009. Judge Sams joined the PTO as a trademark examining attorney in 1975. From 1979 to 1981, he served as chief legal assistant to the Assistant Commissioner for Trademarks. He was appointed to the Trademark Trial and Appeal Board in 1981 and was named its Chairman in 1986. His title was changed to Chief Administrative Trademark Judge in 1993.

In addition to his management responsibilities, Judge Sams has participated in a number of important TTAB rulings during his tenure as Chief Judge, including the O.J. Simpson standing case (Ritchie v. Simpson); the Board's first dilution ruling (Toro v. Torohead); the FIDO LAY case (Recot v. M.C. Becton); and the "Redskins" disparagement case (Harjo v. Pro-Football, Inc.).

When asked for comments about Chief Judge Sams, one TTAB Judge who has worked with David for thirty years called him a respected boss, able colleague, loyal friend, and consummate professional.
.

Precedential No 42: TTAB Denies Fraud Summary Judgment Motion Due to Inadequate Pleading of Claim

The Board has now populated the post-Bose fraud landscape with another precedential decision, this one aimed at the proper pleading of a fraud claim. It points out that allegations made solely on information and belief "must be accompanied by a statement of facts upon which the belief is founded." Moreover, "[a] pleading of fraud must also include an allegation of intent." Asian and Western Classics B.V. v. Lynne Selkow, 92 USPQ2d 1478 (TTAB 2009) [precedential].


Petitioner Asian and Western contended that summary judgment was proper because "there was no use of the mark on some of the goods [bracelets] set forth in the registration" when Ms. Selkow filed her Section 8 and 15 declaration. The Board looked at the relevant pleading and found that, in light of Bose, the fraud claim was insufficiently pleaded.

FRCP 9(b) requires that the elements of fraud be pleaded with particularity. [What are the elements of fraud? a false statement, knowingly made, with intent to deceive, which was relied upon by the injured party to its detriment. ed.]

Petitioner alleged the following regarding fraud:

3. Petitioner is informed and believes that Selkow did not have bona fide use in commerce of the KL Design Mark at either the time the application for registration was filed or the date of the registration.

4. Petitioner is informed and believes that despite not having any bona fide use of the mark in commerce, Selkow submitted false statements to the trademark office attesting to such use when she filed her application for registration. Selkow knew or should have known that the statements were false, and thus the registration was obtained fraudulently and should be cancelled.

The Board quoted the CAFC's decision in Exergen Corp. v. Wal-Mart Stores Inc., 91 USPQ2d 1656 (Fed. Cir. 2009) [a patent case] in observing that "[p]leadings of fraud made on 'information and belief,' when there is no allegation of ‘specific facts upon which the belief is reasonably based’ are insufficient." "[T]o satisfy Rule 9(b), any allegations based on 'information and belief' must be accompanied by a statement of facts upon which the belief is founded"” The Board then cited Kowal v. MCI Comm’n Corp., 16 F.3d 1271 (D.C. Cir. 1994) for the following point: "[P]leadings on information and belief [under Rule 9(b)] require an allegation that the necessary information lies within defendant's control, and … such allegations must also be accompanied by a statement of the facts upon which the allegations are based."

Here, Petitioner’s fraud allegations are based solely on information and belief and fail to meet the particularity requirement of FRCP 9(b): "they are unsupported by and statement of facts providing the information upon which petitioner relies or the belief upon which the allegation is founded (i.e., known information giving rise to petitioner's stated belief, or a statement regarding evidence that is likely to be discovered that would support a claim of fraud)."

Moreover, citing Bose, the Board pointed out that "[a] pleading of fraud on the USPTO must also include an allegation of intent." A statement that the applicant or registrant "knew or should have known" that the statement was false or misleading is not sufficient "because it implies mere negligence and negligence is not sufficient to infer fraud or dishonesty."

The Board then pointed to Crown Wallcovering Corp. v. The Wall Paper Mfrs. Ltd., 188 USPQ 141, 144 (TTAB 1975) for its statement that "in order to state a claim upon which relief can be granted on the ground of fraud, it must be asserted that the false statement complained of were made willfully in bad faith with the intent to obtain that to which the party making the statements would not otherwise have been entitled."

In light of the inadequacy of the pleading, the Board dismissed Petitioner’s summary judgment motion as moot, since one cannot obtain summary judgment on an inadequately pleaded claim. Petitioner was allowed 20 days to file and serve a proper pleading.

Finally, taking one last kick at the summary judgment motion, the Board pointed out that, even if it were considered on the merits, the motion must fail because "genuine issues remain at least with respect to respondent’s intent to commit fraud on the USPTO."

"A party making a fraud claim is under a heavy burden because fraud must be ‘proven to the hilt’ by clear and convincing evidence, leaving nothing to speculation, conjecture, or surmise; any doubt must be resolved against the party making the claim. *** The factual question of intent is particularly unsuited to disposition on summary judgment."

TTABlog comment: So the question is, in the fraud context, what kind of facts must be pleaded in order to support a statement made on "information and belief?" In the ordinary (non-TTAB) case, the pleader is the victim of the fraud and so is able to set forth specific facts that constituted the fraud. In these TTAB fraud cases, the pleader is not the victim of the fraud and is not likely to have first-hand knowledge of the pertinent facts. Even after investigation, it will likely not be completely clear that a false statement regarding use has been made to the PTO. So it seems to me that in most instances, a fraud claim will be made after discovery is taken and the (perhaps suspected) facts emerge.

Text Copyright John L. Welch 2009.

Thoughts from the TTABlog: Fraud in the Post-Bose Era

I was recently asked by World Trademark Review to provide a short article on how the Bose decision has thus far impacted TTAB practice. My current thinking is set out below, admittedly based on limited information.


Fraud in the post-Bose era
The CAFC's decision in In re Bose Corporation, 91 USPQ2d 1938 (Fed. Cir. 2009) brought an abrupt end to the reign of Medinol, when fraud was a favored avenue of attack in Trademark Trial and Appeal Board inter partes proceedings. Once a party discovered that the other side had filed its use-based application or maintained its registration for a mark that was not in use for all the listed goods or services, it was a sure ticket to summary judgment for fraud. The attacking party did not have to prove that its adversary intended to deceive the US Patent and Trademark Office (USPTO), but only that the adversary "knew or should have known" that its statement regarding use was false.

After Bose, "knew or should have known" is not enough. But it will be a rare case indeed when a party will find proof that the other side intended to deceive the USPTO. What then is left of the fraud doctrine? How does a party plead and prove fraud in the post-Bose era? Two recent TTAB interlocutory rulings provide an indication that it will not be easy.

In Societe Cooperative Vigneronne Des Grandes Caves Richon-Lezion and Zicron-Jacob Ltd v Albrecht-Piazza LLC, Opposition No. 91190040 (September 20, 2009), the TTAB required the applicant-counterclaimant to amend its fraud-based petition for cancellation in light of Bose. The TTAB would not accept a “knew or should have known” allegation, observing that “pleadings of fraud made ‘on information and belief’ where there is no separate indication that the pleader has actual knowledge of the facts supporting a claim of fraud … are insufficient.”

The TTAB pointed to the requirement of FRCP 9(b) that the pleadings "contain explicit rather than implied expression of the circumstances constituting fraud." Moreover, there must be some "separate indication that the pleader has actual knowledge of the facts supporting a claim of fraud."

So how does one plead a fraud claim post-Bose? It appears that one must expressly allege that the adversary knew that the statement was false and intended to deceive the USPTO. What specific facts may be alleged to support that allegation? One might set forth the facts surrounding the pleader’s investigation into the use or non-use of the mark in question, but that would not seem to fit the bill.

Indeed, a party may have to refrain from pleading a fraud claim until after discovery has revealed sufficient facts to satisfy the pleading requirement. This may be particularly problematic when an application filed under the Madrid Protocol is being opposed. Under Trademark Rule 2.107(b), a notice of opposition filed against a Section 66(a) (of the Lanham Act) application may not be amended to add grounds for opposition. How then, without discovery, can one meet the pleading requirement for fraud?

The TTAB drove its own stake through the heart of Medinol in its first precedential ruling on fraud since Bose. In Enbridge Inc v Excelerate Energy Limited Partnership, Opposition 91170364 (October 6 2009), Opposer Enbridge moved for summary judgment on the ground of fraud, claiming that Applicant Excelerate had never used the applied-for mark for various services recited in its use-based application. Excelerate admitted that it had never used the mark for one of the listed services, the transmission of oil, but the TTAB denied the motion because there existed genuine issues of material fact regarding whether Excelerate "knowingly made this representation of use with the intent to deceive the USPTO."

Excelerate characterized "the statement in its application that it provided 'transmission of oil' as 'an inadvertent, honest mistake'" and maintained that its subsequent amendment of its recitation of services [after the opposition was filed] "corrected its error in good faith." That was enough for the TTAB. It ruled that "[a]t a minimum, whether applicant knowingly made this representation of use with the intent to deceive the USPTO remains a genuine issue of fact to be determined at trial."

The TTAB pointed out that "[u]nless a party alleging fraud can point to clear and convincing evidence that supports drawing an inference of deceptive intent, it will not be entitled to judgment on a fraud claim." Once Excelerate (not unexpectedly) claimed innocence, it was up to the opponent, Enbridge, to provide proof of Excelerate’s intent to deceive the USPTO. Of course, had Enbridge known that the Medinol standard for proof of fraud would be jettisoned, it perhaps might have changed its approach to the case in seeking the now-required proof.

It seems clear that proving a fraud claim on summary judgment may have become an historical relic. In Medinol, the TTAB entered summary judgment sua sponte on the ground of fraud. But in the post-Bose era, one will need to find the proverbial "smoking gun" before the TTAB will enter summary judgment for fraud.

Applicants and registrants would still be wise to conduct "fraudits" of their existing applications and registrations to see if there might be any problems regarding use of their marks. An amendment to correct any false statement of use would surely bolster a claim of innocent mistake should an application or registration ever be challenged on the ground of fraud.

Text Copyright John L. Welch 2009.

Test Your TTAB Judge-Ability On This Section 2(d) Refusal

Trinity Episcopal Church of Baton Rouge, Louisiana, sought to register the mark TRINITY & Des. (shown below left) for "charitable fun raising." The Examining Attorney refused registration on the ground of likelihood of confusion with the registered mark TRINITY CLASSIC & Des. for "charitable fund-raising services to raise funds for foster care services, residential treatment, and education programs for children" (shown below right). Applicant appealed. How would you decide this one? In re Trinity Episcopal Church of Baton Rouge, Serial No. 78978631 (October 7, 2009) [not precedential].


The Examining Attorney maintained that the word "Trinity" dominates both marks. Applicant contended that its mark includes "a most prominent design dating back centuries, symbolizing both the three crosses of Calvary (where Jesus Christ was crucified) as well as the Holy Trinity (Father, Son and Holy Spirit)." Moreover, the word "classic" appears in more than one hundred registrations for marks for golf tournaments, and thus, in the cited mark, denotes a golf tournament.

The Board agreed that "Trinity" is the strongest source-identifying term in both marks, but "the design features of these marks cannot be dismissed quite as easily as the Trademark Attorney has done."

As to appearance, the religious icon is the most prominent feature of Applicant's mark. The term "Trinity" reinforces this strong religious symbology. The cited mark includes an "equally-arresting" design, consisting of secular and contemporary imagery. In addition to these differences in appearance, the marks "create different connotations and commercial impressions." Applicant's mark has an "overwhelming-religious feel," while the cited mark, based on its history of ownership and use, connotes a "youth services provider," and the word "classic" (coupled with the putter and golf ball) suggests a golf tournament.

The Board noted that the Section 2(d) determination depends on the facts of record, including "the nature and impact of the marks as well as the marketing environment in which a purchaser normally encounters them." Applying that principle, the Board found that the marks here convey "overall very different commercial impressions."

And so, the Board reversed the refusal.

TTABlog comment: Are there no churches that sponsor golf tournaments?

Text Copyright John L. Welch 2009.

Stephen W. Feingold: "Why You Should Think Twice Before Accepting a 2(f) Registration"

Steve Feingold took some heat when his client, Chippendales USA, Inc., recently sought to register its "Cuffs & Collar" costume mark on the basis of inherent distinctiveness. [TTAB decision, now on appeal, TTABlogged here; appellate brief here]. Chippendales already owned a more-than-five-years-old Section 2(f) registration for the same mark, so what was the point? Steve answers his critics here.



WHY YOU SHOULD THINK TWICE BEFORE ACCEPTING A 2(f) REGISTRATION
By
Stephen W. Feingold
Partner
Kilpatrick Stockton LLP

We have all been there. The Examiner has rejected your client’s application to register a mark on the ground of mere descriptiveness under § 2(e)(1). Assuming that it will take approximately five hours of lawyer time (including research to find the most compelling cases to counter the Examining Attorney’s argument) and two hours of paralegal time, this exercise is going to cost the client at least $3,000. Then when you consider the time you will spend explaining the issue and the pros and cons to the client, well, the cost is more likely closer to $5,000. Of course, you cannot even promise the client it is going to win, though if you do lose you know that your chances on appeal to the TTAB on this issue are slim.

These factors naturally push an attorney to consider filing a Section 2(f) amendment. If the mark has been in use for a while you may even be able to get the Examining Attorney to accept a simple declaration stating how long the mark has been in use. Who would not want to save the client more than $3,000 in fees, not to mention the embarrassment of predicting you will be able to overcome the examiner’s argument only to have to explain later that all litigation is risky and the other time-honored consolations muttered by the losing attorney for years? And, realistically, the truth is that most trademark registrations are never enforced so there is a good chance that the whole question of whether the 2(f) notation has any meaning will never come up, at least not until you are long gone.

I think that there are some very important reasons why a client and counsel who sincerely believe that the subject mark is not descriptive should fight hard to prove that fact to the examining attorney., without falling back on acquired distinctiveness under Section 2(f).

First, according to § 1212.02(b) of the TMEP, the claim of acquired distinctiveness, once entered on the certificate of registration, is an admission that the mark is not inherently distinctive. It is true that during the pendency of the examination one can claim both inherent and acquired distinctiveness without any admission. But once entered on the certificate of registration there is no reason to believe that the 2(f) notation would not act as an admission. For instance, while Section 24 of the Lanham Act expressly provides that registration on the Supplemental Register is not an admission that the mark does not have acquired distinctiveness, there is no similar provision with respect to a 2(f) registration

Remember, one of the most important likelihood-of-confusion factors is the strength of the mark. Savvy trademark lawyers know that strength can refer to two things: conceptual strength and market strength. Unfortunately, this distinction sometime gets lost in the case law and a good lawyer can always find cases suggesting that the fact that a mark is conceptually weak makes it a “weak” mark. Plus weak marks have far narrower zones of protection than strong marks. Conversely, strong marks are presumed to have much more protection power. For instance, in one case I argued right after the passage of the FTDA, a judge found that because a particular mark was “strong” it was also famous and therefore subject to dilution protection. It was no doubt cases such as that one are what caused the Second Circuit to later adopt a rule that dilution protection under the FTDA extended only to marks which were inherently distinctive. Of course, that ruling was overturned by the most recent amendment to the Federal Trademark Dilution Act, but who knows when a similar bright line rule might be adopted in some other context? In fact, it appears that Google will not enforce its takedown policy with respect to key words if it believes the mark at issue is not inherently distinctive.

I have also heard others argue that whatever limitations there are disappear after the registrant files a Section 15 declaration of incontestability. After all, once that declaration is on file your mark is no longer subject to attack in court as being descriptive without secondary meaning. That argument misses the point. The defendant can still argue that the zone of protection for your mark depends on the establishment of secondary meaning for any goods not within the four corners of the identification of goods or services. A similar question was recently considered by the Southern District in Victoria Secrets Brand Management v. Sexy Hair Concepts, 2009 WL 955795 (S.D.N.Y. 2009), which found that the fact that a mark was incontestable did not preclude consideration of the descriptiveness of the mark and its secondary meaning in determining the scope of protection for that mark.

But the most compelling reasons to fight the 2(f) battle are to avoid the headaches and additional cost your client will incur every time you seek to enforce your client’s rights in any area outside the four corners of the identification of goods and services. The infringer is going to demand evidence of acquired distinctiveness with regard to those additional goods/services You will reject that argument, but it takes time and money and, in my experience, the willingness to go to court to fight this battle at least a couple of times so your client can point to some consent judgments (or better) in its favor.

When you consider the cost of establishing this record of enforcement (which will easily run in excess of $10,000), you will recognize that fighting this battle with the USPTO will be a relative bargain.

Of course, this discussion presumes that your client’s mark is in fact inherently distinctive and that you have strategies for establishing that fact before the PTO. It never makes sense to fight a losing battle. But if you believe your client has a decent shot at winning, this is a battle that I strongly believe should be fought.

Precedential No. 41: Applicant Loses Third-Party Registration Battle, TTAB Finds Floor Tiles and Roof Tiles Related.

Applicant G.B.I. Tile and Stone, Inc., ran into a brick wall in its attempt to register the mark CAPRI COLLECTION for "stones, ceramic floor tiles, porcelain floor tiles" [COLLECTION disclaimed]. The Board found the mark likely to cause confusion with the registered mark CAPRI for “roofing tiles and trim.” The key issue was the relatedness of the goods, and Applicant’s third-party registration evidence showing that there are registrations for floor tiles that do not include roofing tiles, and vice versa, was not persuasive. In re G.B.I. Tile and Stone, Inc., 92 USPQ2d 1366 (TTAB 2009) [precedential].

grotta azzurra
Not surprisingly, the Board found the marks to be 'very similar in sound, appearance, meaning, and commercial impression."

Applicant argued that the goods "differ in nature and are not used for the same purpose," and "do not compete." The Board observed, however, that the goods need not be "identical or even competitive" in order to find confusion likely. "It is enough if there is a relationship between them such that persons encountering them under their respective marks are likely to assume that they originate at the same source or that there is some association between their sources."

Examining Attorney Patty Evanko submitted numerous use-based third-party registrations showing that "applicant's and registrant's goods are registered by a single entity under a common mark." Under Mucky Duck, these registrations "may have some probative value to the extent that they serve to suggest that such goods and services are of a type which may emanate from a single source." The Examining Attorney also provided Internet evidence "that roofing tiles and floor tiles originate from a common source."

Applicant submitted hundreds of third-party registrations in arguing that there are "third party roofing tile manufacturers who sell roofing tiles and do not sell floor tiles," and vice versa.

The Board noted that an applicant may submit sets of third-party registrations (to counter the Examining Attorney’s Mucky Duck evidence) to show that the Office has registered the same mark to different parties for the goods at issue. Here, however, Applicant did not submit paired registrations for the same mark. It provided registrations that list one item or the other, but not both. That evidence was given "much less weight."

There is no requirement for goods to be found related that all or even a majority of the sources of one product must also be the sources of the other product. *** Second, the mere fact that some goods are not included in a registration’s identification of goods does not establish that the owner of the mark has not registered the mark for those goods in another registration…. Third, the law recognizes that trademark owners have different marks that are used as a house mark, a mark for a line of products, and a mark for specific items.

In short, Applicant's evidence did not rebut the Examining Attorney’s evidence regarding the relatedness of the goods.

Applicant argued that the purchasers of the goods are both different and sophisticated. The Board pointed out, however, that there was evidence that the purchasers of roofing tiles and flooring tiles overlap: both products would be marketed to architects, general contractors, building owners, and individuals who are construction or remodeling a home. And even if the purchasers are likely to be somewhat careful, they are still susceptible to confusion when very similar marks are used on related goods.

Finally, noting that any doubt must be resolved in favor of applicant, the Board affirmed the refusal to register.

TTABlog comment: When facing a Mucky Duck-based refusal, note the weasely language in that case about "my have probative value" and may "serve to suggest." So don't be afraid to blast away at the Duck. See, for example, this TTABlog posting.

Text Copyright John L. Welch 2009.

New USPTO Director David Kappos Comments on Fraud and Other TM Issues

David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, spoke at the AIPLA Annual Meeting in Washington, DC on October 15, 2009. His full remarks may be found here. Many of his comments dealt with patent-related issues, but he also had a few things to say about the trademark side of the PTO:

• We’ve started on an ambitious project to modernize our TM IT systems. Our goal is for practitioners to be able to keep dockets on-line, have real time access to application and registration files, receive reminders and updates from the USPTO and have web services tailored to a practitioners’ level of expertise.


• We’re working with the Trademark Public Advisory Committee on outreach to the community to hear what functions you would like on the site.


• In another positive step for Trademarks, the CAFC decision in the Bose case ended what I think was a too aggressive and too broad interpretation of fraud on the TM office. The CAFC have given us good guidance in the Bose decision. Now we need to apply this guidance in the context of our use-based TM system.


• As a practical matter, the Office is seeing an increasing number of applications with huge lists of good and services, in both use and intent-to-use cases. Examining attorneys have a limited set of legal and practical tools to deal with such applications. And a use-based trademark system falls apart if the statements of use are unreliable.


• I have asked our TM management to engage trademark owners and the trademark bar in discussions on this matter. We look forward to reaching a long-term solution that works for the Office and the applicant community.

The Director's last two comments are the ones I find most interesting. Is it time to require a specimen of use for every item listed in the Section 1(a) identification of goods/services?
.

TTAB Reverses Section 2(e)(2) Refusal of "CATALINA ISLAND GRANOLA": Goods/Place Association Lacking

The Board reversed a Section 2(e)(2) refusal of CATALINA ISLAND GRANOLA & Des. for "granola" [GRANOLA disclaimed], because the record failed to establish that purchasers would make a goods/place association between Catalina Island and granola. In re Zeller, Serial No. 77544307 (September 30, 2009) [not precedential].


The Examining Attorney maintained that the primary significance of "Catalina Island" is a generally-known geographic place, that Applicant is located there, and that purchasers would believe that her granola originates from Catalina Island.

Applicant Kathleen Hill Zeller argued that the "main effect of the mark is to suggest a certain lifestyle and relaxation associated with Catalina Island." She stated that the goods do not originate from there, and she asserted that consumers would not be likely to make a goods/place association between the goods and the Island.

The Board first observed that the addition of the word GRANOLA "does not convert a geographically descriptive term into a non-geographic term."

Next, it found that the primary significance of CATALINA ISLAND is geographic. The record was devoid of evidence to support Applicant's contention that the public would associate "Catalina Island" with a leisurely lifestyle. "[T]he fact that 'hordes' of tourists flock to Catalina Island every year is not evidence of how they perceive the term 'Catalina Island.'"


Finally, the Board considered whether the public would believe that the goods originate on Catalina Island. Ordinarily, when the geographical place is neither obscure or remote, a goods/place association may be presumed when the goods come from the place named in the mark. Here, "the record is devoid of any evidence that Catalina Island is a well-known geographic location, from which we could assume that a wide variety of goods and services originate." In fact, the record showed that the Island "has no agricultural concerns and little to no manufacturing or other industrial industries."

The Examining Attorney argued that Applicant is located in Avalon, a city on the Island; that although Applicant stated that she will not manufacture granola on the Island, Applicant has not excluded the sale of granola on the Island; and that goods such as granola often originate from and are sold in popular tourist destinations.

Applicant argued that the fact that her address is Catalina Island is of no import, and that there is no proof that granola is manufactured there.

The Board agreed with Applicant that "merely living on Catalina Island is not necessarily enough to establish a goods/place relationship." Nor is the location of a corporate headquarters enough. The Board saw "no evidence regarding applicant's presence on Catalina Island, save applicant's acknowledgment that her address is in Avalon, a city on Catalina Island. This falls short of establishing that the origin of applicant's goods is Catalina Island such that there is a goods/place association between CATALINA ISLAND in granola."

The burden was on the Examining Attorney to provide evidence to establish a goods/place association. However, there was no competent evidence that granola originates on Catalina island. Applicant declared that her goods will not originate there. "The notion that granola could be manufactured on Catalina Island is too speculative."

Finally, the fact that Applicant's goods will be sold on the Island is not enough to support the refusal. The Island "would have to be associated with granola in such a way that the consuming public would be likely to assume that CATALINA ISLAND was the place in which the granola originates or is somehow connected."

And so the Board reversed the refusal.

TTABlog comment: If I saw a package of Catalina Island Granola, I would think it originated from Catalina Island. California has great fruits and vegetables. Why wouldn't it have great granola? What do you need to produce granola? Major equipment? A factory? No, just a mixing bowl.

Text Copyright John L. Welch 2009.

TTAB Sustains Nike's Section 2(e)(2) Opposition to "B-MORE" for Clothing

The Board just said "NO" to the application of Baltimorean Gregory A. Bordes's attempt to register the mark B-MORE for "clothing, namely shirts, sweatshirts, athletic jerseys, shorts, and hats." It granted Nike's motion for summary judgment under Section 2(e)(2), finding the mark to be primarily geographically descriptive of the goods. Nike, Inc. v. Gregory A. Bordes, Opposition No. 91178960 (September 30, 2009) [not precedential].


Nike Has Standing: Bordes asserted that Nike did not have "sufficient interest in the use of the term 'B MORE' as a geographically descriptive term for its own goods to form a basis to oppose applicant’s application." He maintained that Nike "does not use and is not in a position to use the term 'B MORE' to describe the origin of any of its goods and services inasmuch as opposer’s goods and services do not originate from Baltimore, Maryland." Bordes further argued that Nike is the junior user of the mark and therefore cannot have standing to oppose.

Nike pointed to its evidence that it has used the term "B-MORE" in connection with "products developed and marketed as part of an endorsement relationship with Carmelo Anthony, a professional basketball player who grew up in Baltimore, Maryland."


The Board ruled in favor of Nike, finding that its use of B-MORE "in connection with certain athletic apparel" established its standing. Nike did not have to prove priority because "the issue is geographic descriptiveness and not likelihood of confusion." Moreover, Nike "does not need to show it is using the mark." "It is enough to show such interest as will justify the conclusion that damage to it will ensue if the use of such term by it or its customers to describe their goods is denied." [A rather cryptic discussion by the TTAB - ed.]

Nike Proves Geographical Descriptiveness: Nike argued that "dictionaries and reference works, as well as everyday speech and writing, define B-MORE as a geographic reference to the city of Baltimore, Maryland." Applicant admitted in discovery that "the term B-MORE is derived, in part, from the slang nickname for the city of Baltimore, Maryland, and that applicant’s business is based in Baltimore, Maryland," and he stated much the same during prosecution of his application before the USPTO.

Nike pointed to the USPTO's treatment of the term as descriptive in other cases, and it offered the declaration of a linguistics expert, who averred that "that the primary significance of the meaning of B-MORE to the general public in the United States, including consumers of apparel, is as a geographic description of the city of Baltimore, Maryland."

Applicant Bordes maintained that there remained genuine issues of material fact in dispute that precluded the entry of summary judgment. He offered his own expert and other evidence purporting to show that B-MORE "is not generally known throughout the country as being geographically equivalent to the City of Baltimore." He pointed out that his goods "are not principally manufactured in the City of Baltimore and are not identified in applicant’s marketing as being a product of Baltimore." And he contended that he "chose the B-MORE mark because of its susceptibility to multiple meanings, including the aspirational message 'Be more!'."

The Board observed that "A term is deemed to be primarily geographically descriptive, and thus unregistrable under Trademark Act Section 2(e)(2), 15 U.S.C. § 1052(e), where it is shown that (1) the primary significance of the term sought to be registered is that of a geographical place and, if so, that (2) purchasers would make a goods/place or services/place association between the goods or services at issue and the geographical place named in the mark, i.e., they would believe that the goods or services originate in that place."

It found the evidence "overwhelming" that "the general consuming public or, at a minimum, the residents of Baltimore, Maryland, and the surrounding metropolitan area, would perceive the primary significance of the term B-MORE to be a geographic designation for the city of Baltimore, Maryland."

Although Applicant's expert "suggests that the salient association of the phrase B-MORE is likely to be to the aspirational phrase 'Be more!,' the Board does not find that such evidence creates a genuine issue of material fact." "[T]he test is whether the mark is primarily geographically descriptive, not solely a geographic designation."

The Board next found, based on Bordes's own statements, that there was no genuine dispute as to the fact that Applicant's business is located in Baltimore. Therefore, a goods/place association is presumed.

And so the Board concluded that is primarily geographically descriptive of the identified goods.

Board Discards Bogus Affirmative Defenses: Applicant's laches defense was jettisoned because laches is inapplicable in opposition proceedings. His assertion of judicial estoppel failed because Bordes presented no evidence of any other action or proceeding involving the same issue, nor any evidence that Nike ever tried to register the term B-MORE. And as to Applicant's unclean hands defense, he provided no proof whatsoever.

Finally, the Board found Bordes's purported affirmative defense that "registration of applicant’s mark is consistent with prior registrations" to be "vague;" it failed to "give rise to a valid defense under any recognizable theory." In any case. Bordes "failed to provide any clarification of said defense or any affirmative proof in support thereof."

Therefore, the Board granted Nike's motion for summary judgment.

TTABlog comment: If I see the word BOSTON on a shirt, I don't assume that it was made in Boston. Any clown from nowheresville could sell shirts with BOSTON on the front.

When I see B-MORE, I don't even think of Baltimore, let alone think the shirt was made in Baltimore. I though it meant "Be More." Perhaps the Board should have given more weight to the double entendre angle here?

Text Copyright John L. Welch 2009.

TTABlog Special Report: Who Files the Most Oppositions, Cancellations, and Extension Requests?

Did you ever wonder who are the most frequent inter partes filers at the TTAB (now that Leo Stoller has been sidelined)? Well, here are two lists generated by Chris Shiplett of TTAB Across the Board. The first sets forth this year's top 20 filers of oppositions, cancellations, and requests for extension of time to oppose. The second lists removes the extension requests.

OPPOSITIONS, CANCELLATIONS, OR EXTENSION REQUESTS FILED FROM 2009-01-01 THROUGH 2009-10-12:

Kellogg North America Company 163
Blue Cross and Blue Shield Association 153
Johnson & Johnson 103
Apple Inc. 103
NFL Properties LLC 80
Apex, LLC 72
E. & J. Gallo Winery 66
Franklin Loufrani 62
TeleTracking Technologies, Inc. 41
OMS Investments, Inc. 41
Sazerac Company, Inc. 37
Citigroup Inc. 37
The Smiley Company SPRL 37
Facebook, Inc. 36
The Susan G. Komen Breast Cancer Foundation, Inc. 36
VeriSign, Inc. 34
Frito-Lay North America, Inc. 34
Avon Products, Inc. 33
Vanity Fair, Inc. 33
Zuffa, LLC 32


OPPOSITIONS AND CANCELLATIONS FILED FROM 2009-01-01 THROUGH 2009-10-12:

Kellogg North America Company 55
Apple Inc. 30
Johnson & Johnson 29
E. & J. Gallo Winery 23
Apex, LLC 21
Hansen Beverage Company 20
philosophy, inc. 16
OMS Investments, Inc. 15
Shurfine Foods, Inc. 15
Cytosport, Inc. 14
CFA Institute 13
Frito-Lay North America, Inc. 13
Avon Products, Inc. 13
Karsten Manufacturing Corporation 12
VeriSign, Inc. 12
Guthy-Renker LLC 12
Archie Comic Publications, Inc. 12
Major League Baseball Properties, Inc. 11
The Susan G. Komen Breast Cancer Foundation, Inc. 11
Abbott Laboratories 10

If you have any questions or comments regarding these lists, please contact Chris Shiplett at "ttabacrosstheboard at gmail.com".
.
TTABlog note: Leo Stoller holds the record for extension requests, a record that may stand for years to come. He filed around 1,750 requests for extension of time to oppose, in a six-month period in 2005-2006. See the TTABlog story here. You will recall that the Board sanctioned Stoller on June 14, 2006 for "misuse of the TTAB's procedures." [TTABlogged here].

Text Copyright John L. Welch 2009.

TTABlog Back in the Trenches: a Six-Pack of Miscellaneous TTAB Papers

Here’s another half-dozen recent Board papers, unearthed via TTAB Across the Board. Nothing earth-shaking in this random collection, but it’s useful, I think, to take a look at some of these miscellaneous papers in order to develop a better feel for the practicalities of Board practice. Do you agree?


Motion to Strike Trial Testimony is Premature: During its testimony period, Applicant moved to suspend, and to strike as irrelevant certain trial testimony and evidence of Opposer. It hoped to avoid the expense of addressing the involved issue in its testimony period and in its final brief. The Interlocutory Attorney held a telephone conference and then denied the motion because it was a substantive attack on the evidence, not procedural one; she pointed out that a ruling on trial evidence must await final hearing. Hunt Control Systems, Inc. v. Koninklijke Philips Electronics N.V., Opposition No. 91173417.

Two Errors Cancel Out: Motion to strike late-filed reply brief denied, the Interlocutory Attorney noting that movant had failed to include a certificate of service with its trial brief. Neither paper will be stricken for non-compliance with the Board’s rules." Bell’s Brewery, Inc. v. Bell Hill Vineyards, Opposition No. 91177980.

No Need to Withdraw Twice :: Law firm’s motion to withdraw as counsel was granted in May 2006. Interlocutory Attorney declines to consider second motion to withdraw. Arturo Santana Gallego v. Santana's Grill, Inc., Cancellations Nos. 92043152, 92043160, and 92043175.

Amendment to Identification of Goods Must be by Motion: In its answer to the Notice of Opposition, Applicant proposed an amendment to its identification of goods. Interlocutory Attorney points out that such an amendment can be made only on motion, the determination of which (unless filed with consent) will be deferred until final decision. The Sisters of Bon Secours in the United States, Incorporated v. Project 7, Inc., Opposition No. 91191243.

Priest Accuses TTAB of Libel: Father Weiss sent this “Letter of Protest” to the Director, accusing the TTAB of libel. Vista Alegre Atlantis, S.A. v. Daniel A. Weiss, Opposition No. 91177170.

Certificate of Service, please!: Applicant neglects to include certificate of service with answer (Rule 2.119), but the Board, in order to expedite the matter, forwards a copy to opposer’s counsel. Thompson & Co. of Tampa, Inc. v. American Cigarette Company, Inc., Opposition No. 91192089.

Text Copyright John L. Welch 2009.

CAFC Holds Argument In Appeal From "THE COLD WAR MUSEUM" Cancellation

The CAFC held oral argument today in The Cold War Museum, Inc. v. Cold War Air Museum, Inc., Appeal No. 2009-1172. [mp3 file here]. The TTAB granted a petition to cancel a registration for the mark THE COLD WAR MUSEUM for "museum services," finding the mark merely descriptive and lacking in acquired distinctiveness. Respondents, whose registration issued under Section 2(f), failed to submit evidence of acquired distinctiveness in this proceeding, and consequently the Board ruled in Petitioner's favor. [TTABlogged here]. Appellant argued that it didn't have to submit evidence of acquired distinctiveness, because the PTO file (and the Section 2(f) evidence) therein was automatically part of the record under Trademark Rule 2.122(b). [From the oral argument, it sounds like the TTAB will be reversed].



.

Test Your TTAB Eye-Ball Ability on Two Triangle Design Marks for Clothing

Take a look at the two design marks shown immediately below, for overlapping lists of clothing items. Would you find confusion likely? Keep in mind that when the goods are identical (even in part), a lesser degree of similarity in the marks is necessary to support a determination of likelihood of confusion. And also remember that the marks will seldom be viewed side-by-side by consumers, whose recollection of design marks is "often of a general and hazy nature." The Board's decision is here: L.A. Gear, Inc. v. Calcados Ferracini Ltda., Opposition No. 91168866 (September 23, 2009) [not precedential].


Applicant pointed out in "painstaking detail" the differences between its "triangle mark" and Opposer's "stylized exclamation point," and it argued that Opposer "minimizes the importance of the 'five-sided base' when comparing the marks."

The Board, however, found the marks to be "very similar in appearance," engendering "very similar overall commercial impressions." It agreed with Opposer's "eyeball" comparison of the marks:

Both marks consist of a line that inclines upward from left to right and tapers in thickness as it inclines upward. In each case the slope of the line is at an angle approximately 40º from the horizontal. In both marks, the line is not entirely straight, but incorporates a slight curve. Each mark has the overall appearance of an elongated triangle.

According to the Board, both marks "essentially present diagonal strokes; the slight break present in opposer's mark may not even be noticed by consumers."

And so the Board concluded that "[t]he similarity between the design marks weighs in favor of likelihood of confusion."

Opposer L.A. Gear attempt to prove its mark famous, but its proofs fell short. Applicant pointed to 15 third-party registrations for "line or triangle devices" for footwear and apparel. The Board, however, noted that Applicant provided no evidence regarding use of those marks, and in any case each of those marks is "less similar to opposer's mark than is applicant's mark."

Applicant also pointed to the lack of actual confusion but the Board found that argument to be "of little value" because the record lacked evidence relating to the extent of use of Applicant's mark and the existence of "meaningful opportunities for instances of actual confusion to have occurred." Of course, in any case, proof of actual confusion is not needed to establish likelihood of confusion.

Finally, under the 13th du Pont factor, the Board noted that the parties used their respective marks on shoes in identical fashion, and both in red.

The Board therefore sustained the opposition.

TTABlog comment: I wonder how many different versions of elongated triangles, tapered stripes, slashes, etc., are in use in the market today for running shoes? Is it even legal to sell a running shoe that doesn't display an elongated triangle, tapered stripe, slash, or the like?

Text Copyright John L. Welch 2009.

Precedential No. 40: Applying Bose, TTAB Denies Fraud-Based Summary Judgment Motion Due to Factual Issues Regarding Intent

In this Section 2(d), 2(e)(1) and dilution-based opposition, Opposer Enbridge, Inc. moved for summary judgment on the ground of fraud, claiming that Applicant Excelerate had never used the applied-for mark ENERGY BRIDGE for various services recited in the subject use-based application. Excelerate admitted that it had never used the mark for one of the listed services, the transmission of oil, but disputed the lack-of-use charge as to other services. The Board applied the CAFC's fraud standard set out in In re Bose Corporation, 91 USPQ2d 1938 (Fed. Cir. 2009), in denying the motion because there existed genuine issues of material fact regarding whether Applicant "knowingly made this representation of use with the intent to deceive the USPTO." Enbridge, Inc. v. Excelerate Energy Limited Partnership, 92 USPQ2d 1537 (TTAB 2009) [precedential].


In Bose, the Federal Circuit "held that fraud occurs when an applicant knowingly makes a false, material representation with the intent to deceive the USPTO. The standard for finding intent to deceive is stricter than the standard for negligence or gross negligence, and evidence of deceptive intent must be clear and convincing." Moreover, "there is no fraud if a false misrepresentation is occasioned by an honest misunderstanding or inadvertence without a willful intent to deceive." And "[u]nless a party alleging fraud can point to clear and convincing evidence that supports drawing an inference of deceptive intent, it will not be entitled to judgment on a fraud claim."

Excelerate characterized "the statement in its application that it provided 'transmission of oil' as 'an inadvertent, honest mistake,'" and maintained that its subsequent amendment of its recitation of services [after the opposition was filed] "corrected its error in good faith." [Note: these assertions made by Excelerate appear in its opposition brief, without any citation to supporting testimony or affidavit evidence. - ed.]. That was enough for the Board:

Based on the record before us, and applying the standard set forth in In re Bose, we conclude that opposer has failed to meet its burden of establishing that there is no genuine issue that applicant had the intent to deceive the USPTO when it stated in its application that it was using its ENERGY BRIDGE mark for “transmission of oil” as of the filing date of the application. At a minimum, whether applicant knowingly made this representation of use with the intent to deceive the USPTO remains a genuine issue of fact to be determined at trial.

The Board also found that genuine issues of material fact precluded summary judgment on the issue of fraud with respect to Excelerate's use of its mark in connection with the "production of energy." As to these services, Excelerate did not admit non-use of the mark.

We conclude that opposer has failed to meet its burden of establishing the absence of a genuine issue that applicant had the intent to deceive the USPTO when it stated in its application that it was using its ENERGY BRIDGE mark for “production of energy” as of the filing date of the application. In addition, the record does not support the conclusion that there is no genuine issue that applicant had the requisite intent to deceive when it asserted use of its mark in connection with the services, as amended on January 23, 2007. At a minimum, whether applicant knowingly made either of these representations of use with the intent to deceive the USPTO remains a genuine issue of fact to be determined at trial.

Moreover, because the record was "unclear with respect to the meaning of 'production of energy,' a genuine issue exists as to a pivotal element of the fraud claim, namely, whether applicant’s statement that it was using its mark in connection with 'production of energy' was, in fact, false."

And so the Board denied Opposer's summary judgment motion.


TTABlog comment: Another stake has been driven through the Medinol decision. There, you will recall, the Board entered summary judgment sua sponte on the ground of fraud. The pendulum has now swung pretty much to the other extreme. You'll now need the proverbial "smoking gun" to get summary judgment on the ground of fraud.

Text Copyright John L. Welch 2009.

Precedential No. 39: TTAB Reverses 2(d) Refusal of "VOLTA" for Caffeine-Laced Vodka

Reversing a Section 2(d) refusal, the TTAB found the standard character mark VOLTA for "energy vodka infused with caffeine" not likely to cause confusion with the registered mark TERZA VOLTA & Design (shown below) for "sparkling fruit wine; sparkling grape wine; sparkling wine; wines." The Board concluded that the marks are dissimilar in appearance, sound, connotation, and commercial impression, and it ruled that the Examining Attorney had failed to establish that the goods are related. In re White Rock Distilleries, Inc., 92 USPQ2d 12982 (TTAB 2009) [precedential].


The Marks: The Board found that term TERZA "clearly dominates over the term VOLTA in the registered mark." Moreover, although the Board must consider all reasonable manners of display of Applicant's VOLTA mark, it is "not reasonable to assume that [the] VOLTA mark would be presented with the design element appearing in registrant's mark."

As to connotation, the Board found that "neither mark has any meaning as applied to the respective goods." While VOLTA may have some suggestive meaning with regard to Applicant's goods [a play on the word "volt," suggesting a "rush" from the caffeine in Applicant's vodka], it has no such meaning for wines. [Even sparkling wines? -ed..

The Goods: Noting that there is no per se rule that all alcoholic beverages are related for 2(d) purposes, the Board found that the Examining Attorney had failed to establish the relatedness of the involved goods: "There is no evidence that vodka, much less applicant's specific type of vodka, and wine emanate from a single source under a single mark."

The Board concluded that, although "the respective goods travel in the same channels of trade to the same class of purchasers, confusion is unlikely because the marks are too dissimilar and the goods have not been shown to be related."


TTABlog comment: Or course, vodka and wine are often found to be related goods, when appropriate and sufficient evidence is of record. For example, see this case, and this one.

I wonder why this decision was deemed precedential? Perhaps because of the discussion regarding the marks. Or maybe its the other part of the decision, which demonstrates that the Board demands proper record evidence even when the supposed conclusion (that vodka and wine are related) seems pre-ordained.

Text Copyright John L. Welch 2009.

WYHA? Is "SCENT STRIPES" Merely Descriptive of Plastic Garbage Bags?

Suppose your client filed an application to register SCENT STRIPES for plastic garbage bags and the like. Examining Attorney Doritt Carroll cites definitions of the two words, your client's product packaging "touting that applicant’s bags feature scented stripes," and a statement by your client's Director that the products "are scented." She issues a final refusal to register on the ground of mere descriptiveness under Section 2(e)(1). Would you have appealed? In re Intellectual Property Development Corporation Pty Ltd., Serial No. 77206766 (September 15, 2009) [not precedential].


Applicant feebly argued that the mark is not descriptive but merely suggestive because "it requires imagination and thought to reach a conclusion that the goods are bags for household use." It relied on third-party registrations for marks that include the word SCENT, and on a statement from its Director that the mark has no significance or meaning in the trade. The Board was not moved.

Severely undermining the foundation of applicant's argument ... are applicant's Director's statement that "applicant's products are scented," and applicant's very own use of the term "stripes" on its packaging for kitchen garbage bags ....

The third-party registration evidence was once again not persuasive, since the Board is not "privy to the files in these registrations," and is "not bound by the prior actions of examining attorneys."

Applicant's argument about the need for "thought and imagination" to conclude that its products are scented bags was way off the mark. The Board pointed out once again 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 applied-for mark "immediately informs prospective customers that [Applicant's] bags have scented stripes that help to eliminate odors." And so it affirmed the Section 2(e)(1) refusal.

TTABlog comment: Suppose the mark included the design of a skunk. Could Applicant then claim that SCENT STRIPES is a double entendre? Would that argument pass the smell test?

Text Copyright John L. Welch 2009.

Trade Channels and Purchasers Too Different, TTAB Reverses 2(d) Refusal of "DOOR TO DOC IN 31 MINUTES"

Finding the channels of trade and classes of purchasers to be "distinct," the Board reversed a Section 2(d) refusal to register DOOR TO DOC IN 31 MINUTES for "hospital services, namely, emergency services and acute care services," finding it not likely to cause confusion with the registered marks DOOR TO DOC and 60 TO 0 DOOR TO DOC [in standard character and design forms] 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." For completeness, the Board also went on to find that the marks "are not similar." In re Gilbert Hospital, LLC, Serial No. 77070847 (September 22, 2009) [not precedential].


The Board found "highly persuasive" Applicant's arguments that its services are marketed to the general public (potential patients), and that these persons are not potential customers for the health care facility consultation services recited in the registrations. The Examining Attorney did not fare so well: "The Examining Attorney strains to posit a circumstance where the trade channels might overlap or intersect, but he fails in this effort."

[W]e have no evidence that a potential patient might somehow mistakenly contact the registrant instead of applicant in attempting to access health care services. Even if such a mistake were to occur, we question whether the mistake would be the result of trademark confusion. Such a mistake would not necessarily indicate that the individual believed that either applicant or registrant was the source of both types of services. Therefore, we reject this argument.

For the sake of completeness, the Board also considered the marks. The DOOR TO DOC registration resides on the Supplemental Register, and its "apparent weakness" and the additional element IN 31 MINUTES serve to distinguish it from the applied-for mark. The other registered marks are even further distinguished by the addition of 60 to 0.

And so the Board reversed the Section 2(d) refusal.


TTABlog comment: If applicant's customers comprise the general public, wouldn't they include the health care professionals who purchases registrant's services? Isn't there some overlap in customers?

Text Copyright John L. Welch 2009.

Finding Lack of Bona Fide Intent, TTAB Sustains "MONT BLANC" Opposition

The TTAB entered summary judgment in favor of Opposer Montblanc in this opposition to registration of the mark MONT BLANC for one hundred thirty-two electronic items in Class 9. The Board found that Applicant United Brands lacked a bona fide intention to use the mark for the identified goods as of the application filing date. United's subjective statements of intent were unsupported by any documentary evidence or other objective proof. Montblanc-Simplo GmbH v. United Brands International, Inc., Opposition No. 91185637 (September 29, 2009) [not precedential].

Mont Blanc
After taking discovery, Opposer Montblanc moved for leave to amend its notice of opposition to add an additional ground for opposition: that at the time of filing the opposed application, Applicant lack of a bona fide intent to use the mark MONT BLANC in commerce for the identified goods. Opposer simultaneously moved for summary judgment on that ground.

As to the motion to amend, the Board found it timely because it was based primarily on information discovered during the deposition of applicant’s representative on May 1, 2009, and the motion was filed fewer than three weeks later. United did not show that it would be prejudiced by the granting of the motion.

With regard to the summary judgment motion, Opposer asserted that United failed to produce any documents demonstrating any preparation for using the mark in commerce; that United lacks experience with the various "high-tech" computer-related and technical goods identified in its application; and that United "has filed multiple applications for famous marks which share many of the same goods." [viz., BOSS, CATERPILLAR, DIESEL, PUMA, and TTABLOG. Well, actually only the first four.]

Applicant's representative testified on deposition that United's only preparation to use the MONT BLANC mark in commerce was "to create mock-up web pages for a website, but that applicant had not yet even secured a web address and that such mock-up web pages had been destroyed and proof thereof was not available."

United maintained that it had and has the requisite intent to use the mark, but that it has been unwilling to bring the products to market pending resolution of these proceedings.

The Board noted that "as a general rule, the factual question of intent is particularly unsuited to disposition on summary judgment."

However, the Board has held that the absence of any documentary evidence regarding an applicant’s bona fide intention to use a mark in commerce is sufficient to prove that an applicant lacks such intention as required by Section 1(b) of the Trademark Act, unless other facts are presented which adequately explain or outweigh applicant’s failure to provide such documentary evidence. See Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993), cited in Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 USPQ2d 1660, 1662 (TTAB 2009). See also Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1586 (TTAB 2008).

The Board found that Opposer had made a prima facie case, which United failed to rebut.

Applicant has countered the motion and the documentary evidence produced by opposer with statements of subjective intent and unsupported statements that applicant "has taken steps and continues to take steps … pending resolution of this proceeding." *** This is not sufficient to raise a genuine issue of material fact.

Moreover, the Board found it probative that United "has not demonstrated that it has any experience in the field of electronics manufacturing or sales, despite the listing of 132
goods in that field."

In conclusion, the Board found "no evidence of applicant's bona fide intent to use the mark MONT BLANC in commerce with the goods identified in the involved application. That is, there is no genuine issue that applicant did not at the time it filed its application, nor does it now, have a bona fide intention to use the mark MONT BLANC."


TTABlog comment: The original notice of opposition raised Section 2(d) and dilution claims. After the Board entered summary judgment on the lack-of-bona fide-intent claim, it gave Montblanc 20 days to decide whether it wants to go forward with these two claims. If not, they "will be dismissed." This seems to me to be an unusual approach for the Board to take.

For example, when an Opposer pleads Section 2(d) and dilution and proves the former claim, the Board will simply decline to reach the dilution claim, sustaining the opposition on the 2(d) ground. The Board does not ask whether the Opposer wants to dismiss or pursue the dilution claim.

What should Montblanc do here? If the Board is talking about dismissal without prejudice, then that should not be a problem. But I understand that may not be what the Board is proposing. Why should Montblanc dismiss the claims with prejudice? But why waste the Board's time and the parties' time by continuing with the other two claims? Would a motion for suspension, pending appeal of the third claim, be appropriate?

TTABlog postscript: The Board dismissed the claims without prejudice (here).

Text Copyright John L. Welch 2009.