Joe Dreitler Expounds On "The Dangers Posed by Bose," But CAFC Chief Judge Michel Sees No Problem

The editors of World Trademark Review have kindly allowed me to provide TTABlog readers with Joe Dreitler's latest article: "The Dangers Posed by Bose," December-January 2010 World Trademark Review 13- 17 (Issue 23). (Subscribe to WTR here). CAFC Chief Judge Paul Michel, author of the court's Bose opinion, responds to the criticism and explains "why the court came to the decision it did." [Also included is a side-bar entitled "Fraud in the post-Bose era" by someone named John L. Welch].


Mr. Dreitler (whose article entitled "Why The TTAB Got It Right In Medinol" was published at the TTABlog on August 7, 2009) maintains that the CAFC, in overturning Medinol,

"equated fraud in trademark oppositions with fraud in patent infringement lawsuits. In so doing, the court rode roughshod over the principles of use of a mark implemented by the Trademark Law Revision Act of 1988 and sanctioned the development of a US Trademark Register filled with deadwood and falsely obtained registrations."

Joseph Dreitler; Chief Judge Paul Michel
Judge Michel asserts that "[t]he concern that this decision allows people to be careless during the application process is easy to exaggerate and is being exaggerated." According to the Judge,

"First, the application must be supported by a sworn affidavit. When a lawyer takes an affidavit under oath he or she is putting his or her reputation on the line. If the lawyer knowingly provides false information in an affidavit he or she is liable to criminal prosecution for perjury. Second, the USPTO can disbar any attorney and refuse to allow that attorney to appear before it ever again. Third, lawyers who specialize in trademark work are repeat advocates before the USPTO so the worst thing a lawyer can do is lie or exaggerate as he or she will quickly gain a reputation for being someone that cannot be trusted." [TTABlog comment: I believe that most trademark applications are verified not by the lawyer, but by the applicant]

Judge Michel also asserts that "the key cases on which the court relies are trademark cases, not patent cases. The decision is firmly grounded in trademark law."

As previously noted (here), the USPTO is pondering what to do in view of Bose. The first question I have is: just how big a problem is this?

Text Copyright John L. Welch 2009.

Boston Red Sox Oppose Stylized "SA" Mark for Clothing

Yesterday's post featured the New York Yankees, so let's give the Boston Red Sox equal time, shall we? The Red Sox have opposed registration of the mark shown below, for clothing, claiming likelihood of confusion, false association, and failure to use the mark on all the goods. Now what marks do you think the Red Sox rely on? Boston Red Sox Baseball Club Limited Partnership v. Visual Impact Products, LLC, Opposition No. 91189914.


According to the notice of opposition, the Red Sox "have used marks that consist of or incorporate the letters S and/or B and the words RED SOX and/or BOSTON, alone or with other word and/or design elements, in a particular, distinctive, stylization associated with the Club":



In short, the Red Sox contend that the letters in the stylized SA mark look too much like the letters S and B in the RED SOX marks! Seems like BS to me. What do you think?

Text Copyright John L. Welch 2009.

New York Yankees Oppose "BASEBALLS EVIL EMPIRE" For Clothing

In a case reminiscent of last year's SEX ROD opposition [TTABlogged here], the New York Yankees have opposed registration of the mark BASEBALLS EVIL EMPIRE (in standard character form) for clothing, claiming that the mark is disparaging, or suggests a false connection, or is likely to cause confusion. The notice of opposition contains no citations to the Trademark Act, but presumably the Yankees are relying on Sections 2(a) and 2(d). New York Yankees Partnership v. Evil Empires, Inc., Opposition No. 91192764.


Non-use? The Yankees got off to a rocky start by alleging that "Applicant did not use the BASEBALLS EVIL EMPIRE mark for the goods covered in the Application in United States commerce prior to its constructive first use date of July 7, 2008." Actually, the opposed application is based on intent-to-use, not actual use, but what the heck?

Disparagement: The Yankees brag that they have been "commonly and extensively referred to by the press, media, fans and the public by the designation the 'Evil Empire,'" pointing out that this term "was originally coined by the CEO of the BOSTON RED SOX club, an arch rival of the YANKEES Club, as a derogatory reference to Opposer." Nonetheless, say the Yankees, "the BASEBALLS EVIL EMPIRE mark will be understood to refer to the Club, and, upon information and belief, is clearly intended to do so, and thus may disparage Opposer, or bring Opposer into contempt or disrepute among a significant segment of the consuming public."

Likelihood of Confusion: On the other hand, maybe the term EVIL EMPIRE isn't so bad: "[C]ertain Yankees fans [the really obnoxious ones - ed.] have embraced the 'Evil Empire' designation, viewing it as a badge of honor reflecting the Club’s success, and other supporters in the press and media have also made ongoing use of the designation EVIL EMPIRE to identify the Club and tout its accomplishments." According to Opposer, "[t]his widespread public usage of the designation EVIL EMPIRE, alone and with other words conjuring up a force to be reckoned with, such as “EVIL EMPIRE STRIKES BACK,” inures to the benefit of the Club as significant usage on its behalf." Therefore, according to the Yankees, the opposed mark BASEBALLS EVIL EMPIRE is likely to cause confusion as to the source of Applicant's good.

False Connection: Finally, the Yankees throw in a Section 2(a) claim, strangely alleging that Opposer "would be further injured by the granting of a certificate of registration to Applicant because Applicant’s BASEBALLS EVIL EMPIRE mark would falsely suggest a connection between Applicant and Opposer." [Isn't it use of the mark that will cause the false suggestion of a connection, not the granting of the registration? - ed.]

Let's keep our eyes on this one. How do you think it will come out? Should Applicant's failure to include an apostrophe in the word "Baseball's" be a ground for opposition?

Text Copyright John L. Welch 2009.

TTAB Summarily Cancels "PLAID" Registration Under Section 2(d)

When the marks are identical and the services nearly so, you've got a shot at summary judgment under Section 2(d). That's what transpired in this cancellation proceeding involving a registration for the mark PLAID for various advertising, marketing, and design services. The Board found that mark likely to cause confusion with the identical mark previously-used by Petitioner for branding, design, advertising and marketing services. Respondent attempted to stir up several genuine issues of fact, but the Board found them immaterial to its ruling. Plaid Inc. (a New York corporation) v. Plaid, Inc. (a Connecticut corporation), Cancellation No. 92049221 (November 23, 2009) [not precedential].


What was left to argue about, you might ask? Respondent contended (without evidence) that Petitioner used the mark PLAID only as a trade name, not as a service mark. But even if true, the Board observed, that would not create a genuine issue of material fact as to standing or priority because "a trade name lacking any independent trademark or service mark significance may bar registration of a trademark or service mark that is confusingly similar to that trade name."

Next, Respondent asserted that its mark is used primarily with the Internet and social media, whereas Petitioner's mark is primarily used in print, but the Board pointed out that, even taking into account those alleged limitations, there is still an overlap in channels of trade.

Respondent contested Petitioner's assertion of fame, but even if that raised a genuine issue of material fact, the Board found it unnecessary to consider fame in reaching its decision. [Doesn't that mean it wasn't a "material" issue of fact? - ed.]

Finally, the Board turned to the issues of actual confusion and third party use of similar marks for similar services. It concluded that even if it assigned no value to Petitioner's evidence of actual confusion, and it deemed Petitioner's mark to be weak, there would still be a likelihood of confusion. After all, even a weak mark is "entitled to protection against an identical mark used for identical services which travel in similar channels of trade."

And so the Board granted the petition for cancellation.

TTABlog note: This is a good lesson on how to fend off attempts to de-rail a summary judgment motion: think about materiality!

Text Copyright John L. Welch 2009.

Major League Baseball Opposes Don Mattingly Logo

Okay, all you baseball fans out there! Here's one for the Hot Stove League. Major League Baseball has opposed two applications filed by Mattingly Hitting Products, Inc. to register the logo shown below left for "baseball and softball equipment, namely, bats, gloves, mitts, bat cases, bat bags, and batting gloves" and "clothing, namely, shirts, pants, athletic uniforms, caps and hats." MLB claims a likelihood of confusion with its "Silhouetted Batter Logo," registered for the same goods (below right). Major League Baseball Properties, Inc. v. Mattingly Hitting Products, Inc., Opposition No. 91177266.


Will Mattingly strike out or hit a home run? What say you? How do you like this affirmative defense: "Opposer may have failed to mitigate losses and damages"?

Don Mattingly
Text Copyright John L. Welch 2009.

TTAB Tosses "WEW" Specimen Out of PTO Ring

Pointing out that it is "not enough that the mark and the services both appear in the same specimen," the Board upheld a refusal to register the mark WEW for "pay-per-view and on-demand television transmissions of live wrestling exhibitions." Examining Attorney Judy Helfman had refused registration under Sections 1, 3 and 45 of the Trademark Act on the ground that the specimen does not show use of the mark for the identified services as required by Trademark Rule 2.56. The Board agreed. In re The Wrestling Zone, Inc., Serial No. 77561949 (November 2, 2009) [not precedential].


The Board agreed with the Applicant that "video-on-demand" states a service and that the specimen "refers" to the service. But stripped down to its bare essentials, the problem was this: "the specimen must not only contain a reference to the service, but also the mark must be used on the specimen to identify the service and its source."

The poster is an advertisement for services, but not for a video-on-demand service. It is an advertisement for an entertainment event, and the mark WEW as used in the advertisement identifies the nature of the entertainment, i.e., WOMENS EROTIC WRESTLING and a NUDE STREET FIGHT. The reference to video-on-demand on the specimen is used only in an informational sense to notify the public of the options available for viewing the wrestling event.

The Board concluded that the mark "would be perceived by the public only as identifying applicant's entertainment services, and not as identifying the form in which the entertainment is transmitted to the public, that is by means of video-on-demand. Thus, the required direct association between the mark WEW and the video-on-demand service cannot be made."

And so the Board affirmed the refusal.

Text Copyright John L. Welch 2009.

TTAB's Loufrani v. Wal-Mart "SMILEY" Case Lands In Chicago Federal Court

Ryan Gile, at his Las Vegas Trademark Attorney blog, reports (here) on Franklin Loufrani's civil action under 15 U.S.C. § 1071(b)(1) seeking judicial review of the TTAB's March 2009 decision in Wal-Mart Stores, Inc. v. Franklin Loufrani, Oppositions Nos. 91150278, 91154632, and 91152145 (March 20, 2009) [not precedential]. [TTABlogged here]. The Board sustained Wal-Mart's opposition to registration of the SMILEY & design mark shown below left, and dismissed Loufrani's opposition to Wal-Mart's version shown below right.


Plaintiffs (Loufrani and his assignee, The Smiley Company SPRL), ask the U.S District Court for the Northern District of Illinois to (1) declare its mark to be distinctive, (2) reverse and vacate the portion of the TTAB’s order finding a likelihood of confusion, (3) direct the PTO to issue a Notice of Allowance for Plaintiff’s applications, and (4) reverse and vacate the portion of the TTAB’s decision that found that Wal-Mart's mark had acquired distinctiveness.

Wal-Mart responded with a six-count counterclaim. Count I seeks a declaratory judgment pursuant to 28 U.S.C. § 2201(a) that the TTAB’s decision was correct. Additionally, Wal-Mart seeks declaratory judgments that any use or licensing of the Loufrani Mark would constitute trademark infringement under Section 43(a) of the Lanham Act (Count II), Section 32 of the Lanham Act (Count III), and the common law (Count IV), and would violate the Illinois Uniform Deceptive Trade Practices Act (Count V) and the Illinois Consumer Fraud and Deceptive Business Practices Act (Count VI).

Plaintiff ("Smiley") unsuccessfully moved to dismiss five of the six counts:

"Smiley moves to dismiss Counts II-VI of Wal-Mart’s Counterclaim on three grounds. First, Smiley alleges that these Counts present no case or controversy as required by the Declaratory Judgment Act, 28 U.S.C § 2201, and Article III, Section 2 of the United States Constitution. Second, Smiley moves to dismiss Counts II through IV based on the limited scope of this Court’s review of the TTAB decision, arguing that for this Court to decide the issue of trademark infringement would constitute an advisory opinion. Finally, Smiley moves to dismiss Count VI because Wal-Mart failed to plead that it suffered actual damages as required by the Illinois Consumer Fraud and Deceptive Business Practices Act, 815 ILL. COMP. STAT. 505/1 et seq. (2007)."

On November 12, 2009, Judge Virginia M. Kendall denied Plaintiff's motion to dismiss five of the six counts of Wal-Mart's counterclaim. (Memorandum and Opinion here). As more fully explained in Ryan Gile's post, the Court concluded that the case presents a substantial controversy as to the issue of likelihood of confusion underlying all counts of Wal-Mart’s Counterclaim, that court has jurisdiction to hear Wal-Mart's infringement claims, and that Wal-Mart need not plead actual damages for purposes of a claim for declaratory judgment under the Illinois statute.

Text Copyright John L. Welch 2009.

TTAB Rejects Another Fraud Claim for Inadequate Pleading

The Board yesterday rejected another fraud claim for failing to meet the strict pleading requirements of Rule 9(b), Fed. R. Civ. P. Ayush Herbs, Inc. v. Hindustan Lever Ltd. Co., Opposition No. 91172885 (November 19, 2009) [not precedential]. The Board also threw in Rule 11, Fed. R. Civ. P., and Trademark Rule 11.18 as a warning shot for future pleaders.

Here, applicant’s counterclaim is insufficient because it does not set forth facts supporting its allegation that “opposer has never used or has not continuously used for five consecutive years its AYUSH HERBS mark for candy products of any kind and possibly other products, such as skin lotion,” which is made only “on information and belief” and which appears to constitute nothing more than two alternative allegations with no particular basis in facts known to applicant or which it is likely to find support following investigation or discovery. It is also insufficient because it uses the “should have known” language, clearly decried in Bose; and because there is no allegation that opposer’s statements were made with intent to deceive the USPTO.

If applicant uncovers facts during discovery which it ascertains provide a basis for a counterclaim of fraud that can be pleaded in compliance with Federal Rules 9 and 11 and USPTO Rule 11.18, then applicant may move to amend its pleading to reassert such claim. [p. 13].

Text Copyright John L. Welch 2009.

Recommended Blog: Rich Stim's "Dear Rich: Nolo's Patent, Copyright & Trademark Blog"

Rich Stim answers those questions that your next-door-neighbor or your mother-in-law asks you about IP: can I copy this? can I market that? And he does it with unfailing good humor! Check it out here.

TTABlog Answers the Question: What is the Oldest Pending TTAB Case?

Well, at least I try to answer the question, with the help of Chris Shiplett at TTAB Across the Board. He reports that the oldest pending TTAB case is United Black Fund v. National Black United Fund, Inc., Cancellation No. 92013503. That case was commenced on September 9, 1982, and has been suspended since May 10, 1984.


The reason for the suspension is the pendency of a civil action in the United States District Court for the District of Maryland. According to a paper filed by the parties in 2002, the lawsuit was administratively closed by the court (at some earlier time) "to give the parties the opportunity to resolve their differences." So it sounds like the court won't be doing anything to move the lawsuit along.

The most recent TTAB paper filed by the parties (December 8, 2008) states:

The parties to this action remain in contact, conduct negotiations that lead to compromises satisfactory to both parties, and continue in their attempts to resolve what remaining differences they may have. To reopen the matter before the Trademark Trial and Appeal Board at this time will cause harm to both parties. Therefore, National Black United Fund respectfully requests that these proceedings before the Trademark Trial and Appeal Board remain suspended.

So the next time you have trouble getting an extension out of the TTAB, you might point to this case. After all, what's the rush?

Text Copyright John L. Welch 2009.

TTAB Finds Flashlight Casing Not De Jure Functional but Lacking in Distinctiveness

The Board reversed in part and affirmed in part a refusal to register the product configuration mark shown on the right, for "portable lighting equipment, namely flashlights." It jettisoned the Section 2(e)(5) functionality refusal, but affirmed the refusal to register on the ground that Applicant failed to establish that the product shape has acquired distinctiveness. In re Brayco Products, Ltd., Serial No. 77296052 (November 16, 2009) [not precedential].

Applicant Brayco described its mark as "the configuration of an elongated oval light casing having one end featuring a similarly formed transparent window for covering an array of lights beneath the transparent window." As we know, to achieve registrability, a product shape must clear two hurdles: Section 2(e)(5) functionality and acquired distinctiveness. [See "Trade Dress and the TTAB: If Functionality Don't Get You, Nondistinctiveness Will," Allen's Trademark Digest, vol. 18, no. 5 (November 2004)].

Functionality: Applying the CCPA's Morton-Norwich test, the Board first found that there are no relevant utility patents that reference the applied-for design. The Examining Attorney contended that the Brayco's advertising "touts" that the product design allows the flashlight to simultaneously function as both a flashlight and a floodlight." The Board reviewed Brayco's advertising and concluded that:

While applicant’s advertising and promotional materials promote the thin shape and “dual-mode multifunction” capability of the product, there is nothing in applicant’s advertising and promotional materials that associates the product design with utilitarian advantages offered by applicant’s product: that is, there is nothing that indicates that the elongated cylindrical oval design produces a superior flashlight or that the elongated cylindrical oval design offers utilitarian advantages.

The Board ruled that the Examining Attorney had failed to show that "the flashlight's touted features of being 'pocketable,' 'thin shaped' and ergonomic are attributed to the elongated oval shape."

As to the availability of alternative designs, Brayco submitted evidence showing many flashlights and portable lights, including multi-functional products, that shared a cylindrical shape similar to the applied-for design. Because there are alternative designs, "the elongated oval design applicant seeks to register does not appear to be essential to competition."

And finally, as to ease or economy of manufacture, Brayco stated that the expense of manufacturing its design "is at least comparable to, if not more expensive, than alternative competitive designs."

Balancing these factors, the Board found that the design is not functional.


Acquired Distinctiveness: The Supreme Court told us in Wal-Mart that product designs cannot be inherently distinctive. Moreover, an applicant faces a "heavy burden" to prove distinctiveness for a product design.

The Board sided with the Examining Attorney, who pointed out that Brayco offered no evidence of sales, advertising expenditures, or other indicia of consumer recognition. In fact, it appears that Brayco is in a "start-up" mode. The Board concluded, not surprisingly, that Brayco's evidence of attendance at nine trade shows, numerous sales presentations, and a few sales and some customer interest during the little more than a year that the product has been on the market, was insufficient to prove acquired distinctiveness.

The Board therefore affirmed the refusal to register for lack of proof of acquired distinctiveness.

TTABlog comment: When was the last time a product shape made it past the Board to registration? I think it was the key-head shape in In re The Black & Decker Corp., 81 USPQ2d 1841 (TTAB 2006) [TTABlogged here], but there the only issue was acquired distinctiveness.

Text Copyright John L. Welch 2009.

TPAC Meeting This Friday Will Explore Ramifications of Bose Decision

The Trademark Public Advisory Committee (TPAC) will hold a public meeting on Friday morning, November 20, 2009, at USPTO Headquarters, Madison Auditorium, Concourse Level, 600 Dulany Street, Alexandria, VA 22314. The meeting will be run from 9:00 AM to 12:30 PM and will be webcast.[Agenda here]. An important area for discussion will be the ramifications of the CAFC's fraud decision in Bose for PTO and TTAB operations.


TTAB Acting Chief Judge Gerard Rogers will discuss TTAB matters beginning at 10:15 AM:

• Discussion of current TTAB speed statistics and case volume statistics.
• Status report on getting TBMP up to date, easily searchable and in HTML.
• Report on current status of Accelerated Case Review: 1. What is the current level of usage? 2. Will or should there be developed more procedures or structure available to potential users of ACR?
• What steps has the TTAB taken, and what steps (if any) does it plan to take, in the wake of the Federal Circuit decision in In re Bose Corp.

Beginning at 10:35, Trademark Commissioner Lynne Beresford will have an hour to address a number of topics, including:

Discussion of what steps the Trademark Operation should take, if any, in the wake of the Federal Circuit decision in In re Bose Corp, to minimize the amount of “deadwood” on the trademark registers. (“Deadwood” is mark registrations for marks on which the mark was not in use in commerce as of use declaration.) Non-exclusive ideas for discussion:

1. Should any special action be taken regarding applications claiming a large number of goods/services?

2. Should proof of mark usage be required on each item of goods/services?

3. Should there be a procedure by which a third party can require an interim proof of use of a mark by a mark registrant on some or all goods/services covered in a registration?

Text Copyright John L. Welch 2009.

AUSTINUTS Seeks Review of TTAB 2(d) Decision in Austin Federal District Court

Austinuts, Inc. has filed a complaint (here) in the U.S. District Court for the Western District of Texas (Austin Division), seeking Section 1071(b) review of the TTAB's decision in AQFTM, Inc. v. Austinuts, Inc., Oppositions Nos. 91166551 and 91166552 (August 6, 2009) [not precedential]. [TTABlogged here].


The Board found confusion likely between the mark AUSTINUTS in standard character and design form (above left) for dry roasted nuts, likely to cause confusion with the registered mark AUSTIN, in standard character and design form (above right), for crackers and cookies.

Rather than appeal to the CAFC, Austinuts decided to take the case to its hometown court and ask for a jury trial. Seems like a good idea to me.


Text Copyright John L. Welch 2009.

CAFC Affirms TTAB's Dismissal of "BINT ALARAB" Cancellation on Res Judicata Ground

The U.S. Court of Appeals for the Federal Circuit has affirmed the decision of the TTAB (here) dismissing a petition for cancellation of a registration for the mark BINT ALARAB for rice. The Board had ruled that the petition was barred by res judicata and it denied petitioner's request for time to take discovery regarding a newly-posed claim of fraud. American Rice, Inc. v. Dunmore Properties S.A., Appeal No. 2009-1313 (Fed. Cir. November 16, 2009. (not precedential).


Petitioner ARI first sought cancellation of the registration in 2003 (on dilution and Section 2(d) grounds), but after the answer was filed it withdrew the petition without Dunmore's consent. The Board dismissed the proceeding with prejudice.

In 2007, ARI filed a virtually-identical petition for cancellation, and Dunmore moved for judgment on the ground of res judicata (claim preclusion). ARI then amended its petition to add a claim for fraud in obtaining the registration, and it asked for time to take discovery.

The Board denied the request regarding discovery and granted ARI's summary judgment motion on the ground of res judicata. ARI appealed.

The CAFC pointed out that two of the three requirements for claim preclusion were undisputed: the parties remain the same and there was an earlier judgment on the merits of the claim. The third requirement was in dispute: whether the second petition is based on the same set of transactional facts as the first.

The court noted that the second petition (as filed) and the first are identical (except for a single, non-material change in one phrase), Therefore the court ruled that the two petitions arise out of the same transactional facts, and thus the second petition is barred by res judicata.

As to the subsequently-added fraud claim, ARI asserted that Dumore falsely executed a declaration when it applied for the BINT ALARAB mark because it claimed to have the exclusive right to use the mark despite knowledge of ARI's mark ABU BINT. Not good enough, said the court:

In short, ARI now alleges nothing concerning Dunmor's alleged fraud that was not already known to it at the time it filed its first Petition for Cancellation. Moreover, these allegations arise from the same series of transactional facts as its other claims in the 2003 Petition alleging confusion and dilution and could have been raised by ARI in its Petition at that time.

The court observed that claim preclusion extends to claims and defenses that could have been raised in a prior action, as long as they arise from the same transactional facts as the original claims. Because ARI could have litigated the fraud claim in its 2003 petition, it is barred by res judicata.

As to ARI's request for discovery, the Board found that ARI failed to demonstrate any need for discovery that was reasonably related to obtaining facts essential to opposing Dunmore's motion for summary judgment. ARI contended that it needed discovery with respect to facts occurring after withdrawal of its first petition, but it failed to explain how "the nature of those facts (whatever they might be) will assist in overcoming the res judicata bar of the 2007 petition."

The court therefore affirmed the Board's decision.

TTABlog comment: ARI's attempt to find facts that would support a new fraud claim was pretty lame. After Bose, a party better have its ducks in a row before crying "fraud." One can't expect the Board or the court to permit a fishing expedition for a possible fraud claim.

Text Copyright John L. Welch 2009.

Supreme Court Denies Petition for Certiorari in Harjo v. Pro-Football, Inc.

The U.S. Supreme Court today denied the Petition for a Writ of Certiorari filed by Susan S. Harjo et al., seeking review of the decision of the U.S. Court of Appeals for the D.C. Circuit in Pro-Football, Inc. v. Harjo, 90 USPQ2d 1593 (D.C. Cir. 2009). [copy of Petition here (431 pages)].

Susan S. Harjo
In its May 15, 2009, the Court of Appeals focused on a single issue, affirming the ruling of the U.S. District Court for the District of Columbia that laches barred the attempt of Native American Mateo Romero to cancel six registrations for the mark REDSKINS (or variations thereof) owned by the Washington Redskins for football entertainment services. [A summary of the various proceeding may be found here at the TTABlog].

Text Copyright John L. Welch 2009.

Fraud Brown-Bag Luncheon: November 19th 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 at 16 Beacon Street. 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.


The Boston Bar Association provides lunch for a suggested donation of $7.00, or you may bring your own lunch (in a brown bag). You may register at the BBA website (link above) or by calling the BBA at 617-778-2040 ext. 3.
.

A Medinol-like Fraud Case in California Worth Watching

The Seattle Trademark Lawyer blog (here) reports on a federal district court action in California that is worth keeping an eye on. Defendant Wine Group alleged that Plaintiff One True Vine's pleaded registration for the mark LAYER CAKE for "white wine, red wine" was invalid on the ground of fraud because (as Plaintiff admitted) the mark had never been used for white wine. Plaintiff contended that it did not realize that its Statement of Use included “white wine, red wine” and not merely “wine.” One True Vine, LLC v. The Wine Group LLC, Civil Action No. C 09-1328 (MHP) (N.D. Cal. November 3, 2009).


Plaintiff moved to amend its pleaded registration to delete "white wine." Defendant opposed. The court granted the motion to amend, but noted that the amendment of the registration did not let Plaintiff off the hook for a potential finding of fraud.

Defendant does not argue that such an amendment would materially alter the character of the mark. Rather, defendant argues that the motion is “both too late and too early.” According to defendant, the proposed amendment is too late because plaintiff has failed to amend the registration in the past—and because plaintiff has already asserted the existing registration in the TTAB and in this court, as the basis for its infringement claim. Defendant points to no authority, however, suggesting the existence of a time limit on the court’s authority to correct the register pursuant to the Lanham Act.

Defendant also argues that the proposed amendment is too early. This is so, according to defendant, because defendant’s counterclaim to cancel plaintiff’s registration has not yet been adjudicated. Defendant is apparently concerned that such an amendment will in some way moot or invalidate its counterclaim. Yet plaintiff cannot nullify a claim that it procured its trademark through fraud on the USPTO by now amending its trademark registration. If, as defendant alleges, plaintiff committed fraud on the USPTO, a post hoc amendment of the trademark register does not serve to moot or rectify such fraud. Granting the instant motion does not render the counterclaim moot. Accordingly, there is no reason not to amend the register to correct what all agree is erroneous information.

This factual situation looks a lot like the facts in Medinol v. Neuro Vasx: two listed items in the identification of goods, use on only one of the two, a claim of inadvertent mistake. Of course, the Board found fraud in Medinol under the TTAB's "should have known" standard that was recently rejected by the CAFC in Bose.

What standard will the court apply? How will defendant prove fraud? Is it enough for plaintiff to say that the error was inadvertent? Suppose the two listed goods were wine and nuclear reactors, and the Registrant claimed that the inclusion of "nuclear reactors" was inadvertently overlooked? Suppose plaintiff here had never sold any white wine at all under any label? What if Defendant showed that plaintiff had made the same error in other registrations?

Well, let's see what happens.

Text Copyright John L. Welch 2009.

Precedential No. 46: TTAB Finds Two "ANTHONY'S" Marks Confusingly Similar for Pizza Restaurants

Sustaining a Section 2(d) opposition and granting a petition for cancellation, the Board found the mark ANTHONY'S COAL-FIRED PIZZA, in standard character and design form (below), for "restaurant services, namely, eat-in and take-out coal oven pizza and other items" [COAL-FIRED PIZZA disclaimed] likely to cause confusion with the registered mark ANTHONY'S PIZZA & PASTA for restaurant services [PIZZA & PASTA disclaimed]. Despite the demonstrated weakness of "Anthony's" as a formative, the Board concluded that the other slices of the du Pont pie outweighed the weakness wedge. Anthony’s Pizza & Pasta International, Inc. v. Anthony’s Pizza Holding Company, Inc., 95 USPQ2d 1271 (TTAB 2009) [precedential].


Hearsay Objection: Defendant's witness testified regarding her conversations with third-party users of "Anthony's" in connection with restaurant services. Plaintiff objected on the ground of hearsay. The Board overruled the objection with regard to her testimony that "she heard the person answer the telephone as 'Anthony's." As for the rest of her testimony regarding conversations with third parties [e.g., how long the restaurant had been open or what kind of food it serves], that was hearsay because it was offered to prove the truth of the statements and was not based on something "she knows or experienced."

Priority: Plaintiff relied on the filing date of the application that issued as its registration (December 15, 2000). Defendant did not open an ANTHONY'S COAL-FIRED PIZZA restaurant until July 10, 2002. However, Defendant tried to tack on its prior use of the mark ANTHONY'S RUNWAY 84 since 1983 or 1984. The Board had two problems with that: (1) Defendant failed to amend its pleading pursuant to an earlier Board order to make that claim; and (2) the marks were not legally equivalent anyway. And so tacking was not allowed.

Strength of Plaintiff's Mark: Defendant's main argument was that "Anthony's" is an extremely weak formative, and so consumers will look to other portions of the marks to distinguish them. Its testimony, third-party registrations, and telephone listings led the Board to concluded that the name 'Anthony's has been "extensively adopted, registered and used for restaurant services, in particular for Italian restaurant and pizzerias, and therefore 'Anthony's' has a significance in this industry. Thus, the evidence corroborates the testimony that 'Anthony's' suggests an Italian restaurant or even a New York style Italian restaurant." Consequently, Plaintiff's mark should be given "a restricted scope of protection."

Similarity of the Marks: The Board found "Anthony's" to be the dominant element in Defendant's marks. It concluded that consumers will focus on the name "Anthony's" and that the remaining words are "not sufficient to distinguish defendant's mark from plaintiff's mark."


Plaintiff's Third-Party Consent Agreement: Prior to filing its application to register, Plaintiff entered into a consent agreement with the Army and Air Force Exchange Service, owner of a registration for ANTHONY'S PIZZA THE WORLD'S GREATEST and Design for restaurant services. By the agreement, the Service agreed to use its mark only on military bases, while plaintiff would not do so.

Defendant maintained that Plaintiff is barred from challenging its marks because (1) the agreement shows an acknowledgment that two ANTHONY'S restaurants could co-exist, and Plaintiff cannot change positions on that point, and (2) in its application Plaintiff verified that no other confusingly similar marks existed, thereby conceding that the two ANTHONY's marks were sufficiently different for Section 2(d) purposes. The Board did not agree.

The Board pointed out that "file wrapper estoppel" does not apply in trademark cases, and that Plaintiff's opinion regarding the two marks does not rise to the level of an admission against interest. Moreover, entry into a coexistence agreement when Plaintiff believed that the different channels of trade would prevent confusion "epitomizes the type of circumstance in which the Federal Circuit has encouraged such agreements." As it turned out, Plaintiff was incorrect in its belief, and actual confusion did occur: that actual confusion is relevant to the Board's decision here.

Balancing the Factors: The Board concluded that, although the evidence of third-party registration and use of ANTHONY'S is a significant factor, it was outweighed by the other du Pont factors, and therefore the Board sustained the opposition and granted the cancellation petition.

TTABlog comment: So, Tony, you wanna open a pizza joint and call it "Anthony's"? Fuggedaboudit!

Text Copyright John L. Welch 2009.

TTAB Affirms Genericness Refusal of "GOJI BERRY" for - Guess What?

Pro se Applicant Bradley Dobos of Eastsound, Washington, made a fruitless attempt to register the term GOJI BERRY for "fruit, namely, raw and unprocessed berry only indigenous to several regions in the Himalayas" in International Class 31 [BERRY disclaimed]. The Board agreed with Examining Attorney Margaret Power that GOJI BERRY "is primarily used and understood by the relevant public as a generic name for a type of berry from the Himalayas." In re Bradley Dobos, Serial No. 76680112 (October 13, 2009) [not precedential].


The Board first found that the genus of goods was "berries from the Himalayas." It noted that Applicant Dobos did not limit his goods to any particular type of berry, so "if the relevant purchasing public would find GOJI to be the name of even one type of berry from the Himalayas, then the refusal must be affirmed, for it is not necessary that the term describe all berries indigenous to the region."

To show the public's understanding of the term, the Examining Attorney relied on Internet website evidence and a Wikipedia entry for "Wolfberry" stating: "[Wolfberry] is also known as Chinese wolfberry, goji berry ... Unrelated to the plant's geographic origin, the names Tibetan goji and Himalayan goji are in common use in the health food market for products from this plant."

Dobos argued that he coined the term "Goji" several decades ago and that others have subsequently used the term improperly or "fraudulently" to refer to berries. He claimed that he began to "import and distribute these berries calling them Goji Berry," and in 2003 learned that others were selling as Goji berries "the Chinese Wolfberry of the same botanical family as the Goji, but of lesser medicinal value." Dobos asserted that "the sole purpose of [his] application to register is to protect consumers from fraudulent products."

Dobos did not deny that third parties are using the term "Goji" as a generic reference to berries from the Himalayas, but he asserted that "the only authentic [Goji] berries come from my company." In his appeal brief, Dobos appeared to concede that GOJI is now generic.

Even putting aside Applicant's concession of genericness, the Board found that the evidence overwhelmingly established that the term GOJI BERRY is generic.

Applicant submitted third party declarations, but they too indicated generic use of GOJI. And, the Board pointed out, even if Dobos coined the term GOJI and was first to use the term in connection with Lyceum berries from the Himalayas, "it is evident that the term has been subsequently adopted by others in the relevant field as the generic name for berries from the Himalayas."


The Board noted that Dobos had failed to produce any evidence that he attempted to police his alleged trademark rights, or that use by others has been found to be improper or unlawful. And it is irrelevant that Dobos is the only source for "goji berries" so long as others use the term as a generic reference to the berries.

And so the Board sustained the genericness refusal.

TTABlog comment: Maybe Dobos should have gone to the FTC rather than the USPTO if he wanted to stop the improper use of the term.

Text Copyright John L. Welch 2009.

Test Your TTAB Judge-Ability: Is This Stylization of "JUMBOZ" Inherently Distinctive?

There was no debate that the word "Jumboz" is at least merely descriptive of "processed sunflower seeds." In fact, two years ago the TTAB affirmed a genericness refusal of JUMBOZ for the same goods. [TTABlogged here]. But what about the stylized version shown below? Is it registrable on the Principal Register (with a disclaimer of JUMBOZ?) In other words, is the design inherently distinctive? You be the judge. In re Dakota Natural Foods, Inc., Serial No. 77356614 (October 23, 2009) [not precedential].


The test to be applied is set forth in Seabrook Foods, Inc. v. Bar-Well Foods Limited, 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977):

In determining whether a design is arbitrary or distinctive this court has looked to whether it was a “common” basic shape or design, whether it was unique or unusual in a particular field, whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods, or whether it was capable of creating a commercial impression distinct from the accompanying words. (footnotes omitted).

The Board reviewed a number of prior decisions in making its determination. It noted that the two marks shown immediately below were found to have inherently distinctive stylization that made them eligible for the Principal Register despite the descriptiveness of the word portions:



But it also observed that the following marks were found not to be sufficiently distinctive to merit a Principal Registration:







So what do you think, Judge Anonymous?

TTABlog quiz: What college athletic program uses the nickname "Jumbos"? Answer here.

Text Copyright John L. Welch 2009.

CAFC Affirms TTAB Genericness Ruling re "MATTRESS.COM" for -- Guess What?

The CAFC has affirmed the TTAB's decision in In re Dial-A-Mattress Operating Corp., Serial No. 78976682 (November 13, 2009) [not precedential], in which the Board affirmed a refusal to register the term MATTRESS.COM on the Supplemental Register, for "online retail store services in the field of mattresses, beds and bedding," on the ground of genericness. In re 1800Mattress.com IP, LLC, 92 USPQ2d 1682 (Fed. Cir. 2009) [precedential].


Whether a term is generic is a factual determination, and so the CAFC reviewed the Board's finding for substantial evidence. "Substantial evidence is 'more than a mere scintilla' and 'such relevant evidence as a reasonable mind would accept as adequate' to support a conclusion."

It was agreed that the genus of services is "online retail store services in the field of mattresses, beds, and bedding," and so the term in question is generic "if the relevant public understands MATTRESS.COM to refer to such online retailers."

There was no dispute that "mattress" and ".com" are both generic. The Board then considered the term MATTRESS.COM as a whole, "and determined that the combination added no new meaning, relying on the prevalence of the term 'mattress.com' in the website addresses of several online mattress retailers that provide the same services as Dial-A-Mattress. Such reliance is permissible to illuminate what services the relevant public would understand a website operating under the term 'mattress.com' to provide."

Because websites operate under the term “mattress.com” to provide mattresses, and they provide them online, the Board properly concluded that the relevant public understands the mark MATTRESS.COM to be no more than the sum of its constituent parts, viz., an online provider of mattresses. Indeed, the Board’s reasoning tracked our later reasoning in In re Hotels.com.

The CAFC therefore found substantial evidence to support the Board’s conclusion that "[c]onsumers would see MATTRESS.COM and would immediately recognize it as a term that denotes a commercial website rendering retail services featuring mattresses."

Appellant argued that MATTRESS.COM is not generic because the relevant public would not use that term to refer to online mattress retailers, but he court was not moved: "The test is not only whether the relevant public would itself use the term to describe the genus, but also whether the relevant public would understand the term to be generic."

Finally, the CAFC agreed the ".com ending to MATTRESS.COM does not evoke "the quality of comfort in mattresses and that the mark is not a mnemonic." Applicant presented no evidence that the relevant public finds such a double entendre in the term MATTRESS.COM and no evidence that it acts as a mnemonic.

And so the CAFC affirmed the Board's decision.

TTABlog comment: It annoys me that the CAFC refers to MATTRESS.COM as a "mark." If it's generic, it's not a mark.

Text Copyright John L. Welch 2009.

CAFC Hears Oral Argument in "CRASH DUMMIES" Appeal

On Friday, November 6, 2009, the U.S. Court of Appeals for the Federal Circuit heard oral argument [mp3 here] in an appeal from the TTAB's decision in Mattel, Inc. v. The Crash Dummy Movie, LLC, Opposition No. 91159002 (November 25, 2008) [not precedential]. [TTABlogged here]. In this Section 2(d) opposition, the goods were in part identical (action figures) and the marks either identical (CRASH DUMMIES) or highly similar (THE INCREDIBLE CRASH DUMMIES). Confusion was likely, but Applicant contended that Opposer had abandoned the mark. Mattel won at the Board level.

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TTABlog Celebrates Fifth Anniversary

It all started on November 8, 2004, with an item about (who else) Leo Stoller. Nearly 1500 posts and a million hits later, here we are. Thanks for reading! And a special thanks to all commenters!

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CAFC Hears Oral Argument in Southern Cal v. South Carolina "SC" Trademark Dispute

On November 4, 2009, the U.S. Court of Appeals for the Federal Circuit heard oral argument in an appeal from the TTAB's decision in University of Southern California v. The University of South Carolina, Opposition No. 91125615 (August 1, 2008) [not precedential]. [mp3 here]. At the Board level, the Trojans of USC (California) topped the Gamecocks of USC (South Carolina) in this Section 2(d) opposition proceeding involving their respective SC logos. [TTABlogged here]. Sounds like USC will win.


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CAFC Reverses TTAB's "COLD WAR MUSEUM" Decision Regarding Evidence of Record in Cancellation Proceeding

The U.S. Court of Appeals for the Federal Circuit yesterday reversed the TTAB's decision in Cold War Air Museum, Inc. v. The Cold War Museum, Inc. and Francis Gary Powers, Jr., Cancellation No. 92047391 (October 20, 2008) [not precedential]. [TTABlogged here]. The Board had cancelled a registration for the mark THE COLD WAR MUSEUM for "museum services," finding the mark merely descriptive and lacking in acquired distinctiveness. Respondent Cold War Museum, whose registration issued under Section 2(f), failed to submit evidence of acquired distinctiveness during the cancellation proceeding, and consequently the Board ruled in Petitioner's favor. The CAFC ruled that Respondent was not required 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). And so the CAFC reversed. [mp3 of oral argument here]. The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 92 USPQ2d 1626 (CAFC 2009) [precedential].


The CAFC observed that Rule 2.122(b) provides that the record in a cancellation proceeding automatically includes the file of the registration at issue:

(b) Application files. (1) The file . . . of each registration against which a petition or counterclaim for cancellation is filed forms part of the record of the proceeding without any action by the parties and reference may be made to the file for any relevant and competent purpose.

It found this Rule to be "clear and unambiguous."

The entire registration file—including any evidence submitted by the applicant during prosecution—is part of the record in a cancellation "without any action by the parties." Therefore, a party seeking to cancel a Section 2(f) registration must rebut the applicant’s evidence of distinctiveness made of record during prosecution to satisfy its ultimate burden of proof.

Moreover, the CAFC pointed out that Petitioner Air Museum did not even argue the issue of acquired distinctiveness in its petition for cancellation [it argued only mere descriptiveness, which is "irrelevant to the validity of a Section 2(f) registration"], and so Petitioner failed to rebut the registration's presumption of validity. The CAFC therefore ruled that the the Board erred as a matter of law in concluding that Air Museum had established a prima facie case that the mark had not acquired distinctiveness.

Air Museum, as the party seeking cancellation, bore the burden of persuasion as well as the initial burden of establishing a prima facie case. If Air Museum had satisfied its initial burden sufficient to establish a prima facie case that the registration had not acquired distinctiveness, the burden of production would have shifted to the Cold War Museum. However, Air Museum failed to present any evidence or argument of lack of distinctiveness, and therefore the Board erred in finding that any "burden" was shifted to the Cold War Museum.

TTABlog comment: Does this mean that a declaration submitted during prosecution is now admitted into evidence in a subsequent cancellation proceeding, even though it would ordinarily be inadmissible hearsay?

Text Copyright John L. Welch 2009.

Precedential No. 45: "TIRES TIRES TIRES" Generic for, or Merely Descriptive of, Tire Store Services

This applicant's attempt to register the designation TIRES TIRES TIRES for "retail tire stores" got no traction with the TTAB. The Board affirmed two alternative refusals to register: genericness and Section 2(e)(1) mere descriptiveness. In re Tires, Tires, Tires, Inc., 94 USPQ2d 1153 (TTAB 2009) [precedential]


Genericness: Applicant maintained that TIRES TIRES TIRES is a unitary phrase and therefore that, to prove genericness, Examining Attorney Timothy J. Finnegan must provide evidence of use of TIRES TIRES TIRES as a whole, citing the CAFC rulings in American Fertility and Dial-A-Mattress.

[W]here the proposed mark is a phrase (such as “Society for Reproductive Medicine”), the board “cannot simply cite definitions and generic uses of the constituent terms of a mark”; it must conduct an inquiry into “the meaning of the disputed phrase as a whole.”

The Board disagreed.

There is no valid reason to require an examining attorney to demonstrate that a designation composed solely of a repeating word has been used by others, when the examining attorney has demonstrated that the repeated term is generic and that the repetition does not result in a designation with a different meaning. Here, “tires” and “tires tires tires” have the same meaning. So does “tires tires” as well as “tires tires tires tires.” [What about five or more of them, to the point of annoyance? -ed.]

The Board then perused the evidence and found that the Examining Attorney had established that relevant retailers do use the term "tires" to identify the items they sell. Since "[a] term that names the central focus or subject matter of the services is generic for the services themselves," the Board affirmed the genericness refusal.

Mere Descriptiveness: For the sake of completeness, and assuming that TIRES TIRES TIRES is not generic, the Board considered the Section 2(e)(1) issue, including Applicant's claim of acquired distinctiveness under Section 2(f). The Board began by ominously noting that "[t]ypically, more evidence is required where a mark is so highly descriptive that purchasers seeing the matter in relation to the named goods or services would be unlikely to believe that it indicates source in any one entity."

Applicant submitted four declarations, claiming use of TIRES TIRES TIRES for more than twenty years, operation of three service centers in two different cities, promotional expenditures of $100k to $200k per year, and public identification of the phrase with Applicant.

Not enough, said the Board. "[G]given the highly descriptive nature of the designation TIRES TIRES TIRES, we would need substantially more evidence (especially in the form of direct evidence from customers) than what applicant has submitted in order to find that the designation has become distinctive of applicant's services."

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

TTABlog note: Little Caesar's owns three registrations for PIZZA! PIZZA! How do you like them apples? See discussion here.

I suspect that if Applicant did a survey in its trading area, the survey results might well point to Applicant. Would that have helped, or would that just be de facto secondary meaning that would not suffice to defeat the genericness refusal?

Text Copyright John L. Welch 2009.

Precedential No. 44: TTAB Decides "CAB CALLOWAY" Priority Dispute, Rules that Personal Names Are Inherently Distinctive

An intra-family fracas regarding the service mark CAB CALLOWAY for retail music store and entertainment services was won by the late band leader's grandson, Christopher Brooks. He proved prior rights in the mark THE CAB CALLOWAY ORCHESTRA for musical recordings and entertainment services, and therefore the Board found confusion likely under Section 2(d) and sustained his opposition against a corporation formed by Calloway's widow and daughters. Christopher Brooks v. Creative Arts By Calloway, LLC, 93 USPQ2d 1823 (TTAB 2009) [precedential].

Prior Litigation/Judicial Estoppel: Creative Arts sued Brooks for trademark infringement a decade or so ago, and lost. The court ruled that Creative Arts could not prevail because any trademark assignment to it was invalid because Cab Calloway "was not operating a going concern at the time of his death [in 1994], precluding the transfer of a mark." In that lawsuit, Brooks argued that Creative had to prove secondary meaning for the mark CAB CALLOWAY because "personal names must have secondary meaning." Here, Creative asserted that Brooks was now judicially estopped from claiming that CAB CALLOWAY is an inherently distinctive mark. The Board sided with Brooks, ruling that the statements made by Brooks in the litigation were statements of law and not admissions of fact. "Prior statements of law are not admission of fact, and cannot serve as admissions against interest." Moreover, the Board found that judicial estoppel is not applicable because the parties are before a different tribunal that applies different legal standards to determine different rights. Personal Name Marks: The parties stipulated that the sole issue before the Board was priority: whether Brooks could establish prior rights in THE CAB CALLOWAY ORCHESTRA prior to Creative's filing date of July 23, 1999. The record showed that Brooks first used his mark in December 1998 and gave at least three more performances prior to July 23, 1999. Creative argued that this usage was not sufficient to establish rights in the mark because under the common law "personal names must have secondary meaning" and Brooks' evidence was insufficient. The Board observed that, for registration purposes, the USPTO views personal names as inherently distinctive and registrable on the Principal Register. See In re Yeley, 85 USPQ2d 1150 (TTAB 2007) [J.J. Yeley identifies an individual and, therefore, is not primarily merely a surname]. [TTABlogged here].

"We see no logical basis for holding that a personal name mark which is inherently distinctive for registration purposes must nonetheless be shown to have acquired secondary meaning before it can be relied upon by an opposer in an opposition proceeding."

And so the Board held that "when a plaintiff is asserting prior rights based on a personal name, not a surname, the personal name trademark is inherently distinctive." [Joe Smith is inherently distinctive? -ed.] Trade Name Use: The Board also found that the record "supports use as a trade name" prior to Creative's use because Brooks "developed a trade identify" in THE CAB CALLOWAY ORCHESTRA. Brooks contended that "to serve as a bar to registration, a trade name need not be inherently distinctive, nor must it have acquired any secondary meaning." Brooks had argued that an opposer need not have a "superior right" in the trade name in order to prevail. The Board disagreed, but in any case it concluded that personal names are inherently distinctive and that Brooks "has established its 'superior right' through prior trade name use." Cab Calloway And so the Board sustained the opposition. Text Copyright John L. Welch 2009.

TTAB Posts November 2009 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled five (5) hearings for the month of November, 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.] Briefs and other papers for these cases may be found at TTABVUE via the links provided.


November 4, 2009 - 2 PM: Teletech, Inc. v. TeleTech Holdings, Inc., Opposition No. 91174132 [Section 2(d) opposition to registration of the mark TELETECH for software, customer relationship management services, telecommunications services, and education and programming services, in view of the registered mark TELETECH INC. & Des. and the common-law mark TELETECH for engineering and consulting services in the field of telecommunications].


November 10, 2009 - 10 AM: Directed Electronics, Inc. v. Cobra Electronics Corporation, Opposition No. 91162506 [Opposition to registration of the mark COBRA.for vehicle alarm systems on the grounds of lack of bona fide intent and likelihood of confusion with Opposer's snake-branded vehicle security, vehicle remote start, and vehicle tracking products].


November 12, 2009 - 10 AM: Bose Corporation v. PWC Industries, Inc., Opposition No. 91182396 [Section 2(d) opposition to registration of FULL WAVE AUDIO for "marine waterproof audio amplifier, and waterproof stereo speakers," on the ground of confusingly similarity with the registered marks WAVE and ACOUSTIC WAVE for loudspeaker systems and other electronic goods].

November 12, 2009 - 11 AM: Edwards Lifesciences Corporation v. VigiLanz Corporation, Opposition Nos. 91154210 [Section 2(d) opposition to registration of VIGILANZ for "near real-time computer monitoring system comprised of a software application and database that anticipates and detects possible adverse drug events, and alerts healthcare providers to adverse drug events" in light of the registered mark VIGILANCE for heart monitors].


November 12, 2009 - 2 PM: In re Paul D. Miller, Serial No. 77332676 [Section 2(d) refusal to register the mark COMMANDER-IN-CHIEF for "Equipment sold as a unit for playing board games" in view of the nearly-identical mark COMMANDER IN CHIEF for playing cards].



Text Copyright John L. Welch 2009.